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EXHIBIT 10.12
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
SOFTWARE LICENSE AGREEMENT
(STANDARD)
This Agreement is entered into as of the 25th day of February, 1998 (the
"effective date"), by and between TRILLIUM DIGITAL SYSTEMS, INC., a California
corporation ("TRILLIUM"), having its principal office at 12100 Wilshire Blvd.,
Suite 1800, Los Angeles, California, USA 90025-7118, and facsimile number
+1-310-442-1162 and
CASTLE NETWORKS INC.
a corporation organized under the laws of Delaware
("LICENSEE"), having its principal office at:
235 Littleton Road #2
Westford, Massachusetts 01886
and facsimile number +1-978-392-9032.
TRILLIUM is in the business of developing and marketing communications software
and expertise and is willing to make available to LICENSEE, and LICENSEE desires
to obtain a license to use certain computer software and related documentation
on the terms and conditions set forth in this Agreement,
For good and valuable consideration, the receipt and adequacy of which are
hereby acknowledged, the parties hereby agree as follows:
1. DEFINITIONS
For purposes of this Agreement:
1.1. "Designated Equipment" shall mean the equipment specified in
Exhibit A attached hereto, as amended from time to time by
TRILLIUM and LICENSEE ("Exhibit A"), as being the equipment
upon which a Licensed Program is run.
1.2. "Documentation" shall mean the documentation listed on Exhibit
A and including all Updates thereof.
1.3. "Licensed Program" shall mean each program in software form
specified in Exhibit A (collectively, the "Licensed
Programs"), and shall specifically include any Updates and
Upgrades to such program furnished to LICENSEE by TRILLIUM
under this Agreement for use in connection with or replacement
of such program.
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1.4. "Maintenance Service" shall mean the maintenance services
defined in Exhibit D attached hereto ("Exhibit D").
1.5. "Object Form" shall mean any machine translated version of the
Source Form in binary form suitable for execution by computer
equipment, or any intermediate binary form derived from Source
Form which can be made executable by computer equipment.
1.6. "Public Release" shall mean, in respect of a Licensed Program,
an Update or Upgrade of such Licensed Program that is made
available by TRILLIUM to its licensees generally, and shall
mean, in respect of Documentation, an Update of such
Documentation that is made available by TRILLIUM to its
licensees generally.
1.7. "Source Form" shall mean, in respect of a Licensed Program,
the original form on any media of such Licensed Program in the
language as delivered by TRILLIUM to LICENSEE, or any
translation or modification thereof which substantially
preserves its original identity.
1.8. "Update" shall mean, in respect of any Licensed Program, a
Public Release of a new version of such Licensed Program which
corrects errors in the previous version of such Licensed
Program, and shall mean, in respect of Documentation, a Public
Release of a new version of such Documentation.
1.9. "Upgrade" shall mean, in respect of a Licensed Program, a
Public Release of a new version of such Licensed Program which
adds features or functionality which differs from the
specifications of the previous version of such Licensed
Program as set forth in the Documentation relating to such
previous version.
1.10. "Use" shall mean the copying or duplicating of any portion of
a Licensed Program from storage units or media into equipment
for processing, or the utilization of any form of a Licensed
Program in the course of the operation of the Designated
Equipment.
2. LICENSE GRANT
2.1. Use of Source Form for Development. TRILLIUM hereby grants to
LICENSEE for the term of this Agreement a non-exclusive,
non-assignable license to copy, Use, and modify the Source
Form and Object Form Licensed Programs specified in Exhibit A
herein for the purpose of adapting or incorporating such
Licensed Programs for operation in connection with Designated
Equipment or modifying the Licensed Programs to correct errors
or add features or functionality. No license is granted to use
any Licensed Program on any configuration of equipment which
is different from the configuration specified in Exhibit A as
the "Designated Equipment". LICENSEE shall respect TRILLIUM'S
proprietary rights and copyrights and shall not use such
Licensed Program except for the purposes for which it is being
made available as set forth
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in this Agreement and shall not create similar like programs
based, in whole or in part, on TRILLIUM'S proprietary rights
and copyrights.
2.2. Right to Grant Sublicenses. If the license type specified in
Exhibit B attached hereto ("Exhibit B") is a Single Use Buyout
license, then TRILLIUM hereby grants LICENSEE for the term of
this Agreement a non-exclusive, non-assignable right to grant,
and to grant others (including distributors of the Designated
Equipment) the right to grant, non-exclusive, non-assignable,
sublicenses to Use the Object Form on the Designated
Equipment, provided that such sublicensees are bound by terms
and conditions that axe as protective of TRILLIUM'S rights as
the terms and conditions of this Agreement, including, without
limitation those terms and conditions set forth in Exhibit C
attached hereto (or, in the case of agreements with
distributors, terms and conditions as protective of TRILLIUM'S
rights as the terms and conditions of this Agreement).
Notwithstanding anything to the contrary contained elsewhere
in this Agreement, no other type of license, if any, granted
hereby entitles LICENSEE to grant any sublicense.
2.3. Right to Use Documentation. TRILLIUM hereby grants LICENSEE
for the term of this Agreement a non-exclusive, non-assignable
right to duplicate and use the Documentation, but only for
LICENSEE'S own internal use, subject to the restrictions
imposed under Paragraph 9, in connection with its Use of the
Licensed Programs. No other duplication or use is permitted,
unless expressly approved in writing by TRILLIUM prior to such
duplication or use. Notwithstanding the foregoing provisions
of this Paragraph, LICENSEE may incorporate any part of the
Functional Specification portion of the Documentation into its
own end-user documentation, provided that LICENSEE includes in
such documentation a valid notice to the effect that TRILLIUM
owns the copyright to the Functional Specification portion of
such documentation, with all rights reserved.
2.4. Sublicenses to the Government. LICENSEE represents and
warrants to TRILLIUM that LICENSEE is not an agency,
department or unit of any governmental or quasi-governmental
entity and is not procuring any Licensed Program as part of or
in connection with any government contract or subcontract. If
LICENSEE grants any sublicense hereunder to any agency,
department or unit of any government or quasi-governmental
authority, LICENSEE shall take whatever actions and
precautions are necessary in order to preserve and protect all
ownership and other rights of TRILLIUM in the Licensed
Programs, Documentation and related materials and the
sublicense shall contain whatever provisions, notices and,
legends may be necessary in order to limit the rights acquired
under such sublicense to rights that are no greater than those
permitted by Paragraph 2.2 to be granted under such
sublicense. In furtherance of the foregoing, if LICENSEE
grants any sublicense hereunder to any agency, department or
unit of the United States Government, such notices and legends
shall include without limitation the following (in respect of
at least the Licensed Programs):
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The software and related materials licensed hereby
are classified as "restricted computer software" as
defined in clause 52.227-19 of the Federal
Acquisition Regulation ("FAR") and were developed
entirely at private expense for nongovernmental
purposes, are commercial in nature and have been
regularly used for nongovernmental purposes, and, to
the extent not published and copyrighted, are trade
secrets and confidential and are provided with all
rights reserved under the copyright laws of the
United States. The Government's rights to the
software and related materials are limited and
restricted as provided in clause 52.227-19 of the
FAR.
TRILLIUM reserves the right to update the foregoing legend as
applicable laws and regulations change.
2.5. Sublicense Enforcement. LICENSEE agrees to enforce its rights
under any sublicense granted by LICENSEE under this Agreement
and, upon the request of TRILLIUM, to enforce the rights of
TRILLIUM with respect to any such sublicense and to cooperate
with TRILLIUM in any action by TRILLIUM to enforce its rights
(and/or by TRILLIUM in LICENSEE'S name to enforce LICENSEE'S
rights) with respect to any such sublicense, including without
limitation by providing to TRILLIUM all information and
assistance TRILLIUM considers reasonably useful to pursue such
action.
2.6. Territory. TRILLIUM'S grant to LICENSEE in this Paragraph 2
shall be worldwide, subject to the provisions of Paragraph 15.
2.7. No Other License. Notwithstanding any other provision of this
Agreement, no license or right is granted to LICENSEE by
implication, estoppel or otherwise, except the licenses and
rights expressly granted in this Paragraph 2.
3. DELIVERABLES
3.1. Source Form Programs. TRILLIUM shall deliver to LICENSEE,
effective at TRILLIUM'S shipping point by delivery to a common
carrier, in accordance with the delivery schedules as
specified in Exhibit A, one copy of the Source Form of the
Licensed Programs listed in Exhibit A. Such programs will be
in machine readable form and may be examined and/or modified
with any ASCII text editor.
3.2. Documentation. TRILLIUM shall deliver to LICENSEE, effective
at TRILLIUM'S shipping point by delivery to a common carrier,
in accordance with the delivery schedules specified in Exhibit
A, the Documentation. All Documentation shall be provided in
the English language. The Documentation is sufficient to
provide reasonably qualified personnel a technical
understanding of the Licensed Programs and to enable
reasonably qualified personnel to perform the portation of the
Licensed Programs into the Designated Equipment and to allow
modification and enhancement of the Licensed Programs by
reasonably qualified personnel who did not originally develop
the Licensed Programs.
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3.3. Training, TRILLIUM shall provide to LICENSEE, free of any
additional charge, training courses, for the number of hours
as specified in Exhibit B, at TRILLIUM'S headquarters for a
group of LICENSEE personnel not to exceed ten (10) persons.
LICENSEE shall bear the cost of travel time and travel,
lodging and related expenses of its staff for the period of
training. At LICENSEE'S option, TRILLIUM will provide training
at one (1) of LICENSEE'S sites at LICENSEE'S expense,
including but not limited to travel time and travel, lodging
and related expenses of TRILLIUM personnel who provide such
training. Such training courses, in all events, shall be on
such day or days as is mutually acceptable to the parties
hereto, but in no event shall TRILLIUM have any obligation to
furnish any such training courses after the date that is three
(3) months after the date of delivery of the Licensed
Programs. TRILLIUM will provide LICENSEE training course
materials for the Licensed Programs at no additional charge.
Arrangements for additional training may be provided at the
expense of the LICENSEE upon terms and conditions to be agreed
upon by TRILLIUM and LICENSEE.
3.4. Media. The media used for delivery of machine readable items
shall be the media mutually agreed upon by TRILLIUM and
LICENSEE prior to the time of delivery or, failing such
agreement, as selected by TRILLIUM. Title in and to the media
used for delivery of machine readable items shall be owned by
LICENSEE.
3.5. Partial Shipments. Notwithstanding any other provision of this
Agreement, if TRILLIUM delivers the Licensed Programs in more
than one shipment, the acceptance period, payment terms, and
warranty period applicable to a particular Licensed Program
shall be measured from the date of delivery of that Licensed
Program, provided, however, that TRILLIUM may adjust the
warranty period applicable to any Licensed Programs included
in any shipments that follow the initial shipment by giving
LICENSEE appropriate credits in a manner similar to the manner
set forth in Paragraph 7.4 (regarding Licensed Programs
subsequently licensed by amendment to this Agreement) so that
some or all Licensed Programs have warranty service and
Maintenance Service periods that end on the same dates.
4. ACCEPTANCE
4.1. Acceptance. Each Licensed Program and the related
Documentation shall be deemed accepted by LICENSEE thirty (30)
days after delivery unless, within such thirty (30) day
period, LICENSEE delivers to TRILLIUM a notice of rejection in
accordance with this Paragraph 4.1. The sole criterion for
rejection of any Licensed 'Program or related Documentation
shall be its failure to conform in all material respects to
the specifications referenced in paragraph 2 of Exhibit A or
the requirements of Paragraph 3.2. Any notice of rejection
shall be valid only if (i) it is delivered to TRILLIUM within
such thirty (30) day period and (ii) it specifies in
reasonable detail each of the specifications to which such
Licensed
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
Program fails to conform, or each requirement to which such
Documentation fails to conform, and the basis for LICENSEE'S
assertion of nonconformance.
4.2. Rejection and Cure Procedure. If LICENSEE timely and
rightfully rejects a delivered Licensed Program, TRILLIUM
shall have thirty (30) days from the date of rejection to cure
any nonconformance described in LICENSEE'S valid notice of
rejection and to deliver to LICENSEE a version of the Licensed
Program or Documentation that conforms in all material
respects to such specifications or a written statement, as
applicable, providing the cure after which the provisions of
Paragraph 4.1 shall again apply, calculated from the date of
delivery of the new version of the Licensed Program or
Documentation. If the new version of such Licensed Program is
again timely and rightfully rejected by LICENSEE, LICENSEE
may, as its sole and exclusive remedy (notwithstanding any
other provision of this Agreement), declare this Agreement
terminated, in which event the provisions of Paragraph 13.2
shall apply and TRILLIUM will promptly refund to LICENSEE all
license fees paid by LICENSEE with regard to such rejected
Licensed Program; otherwise, LICENSEE shall afford TRILLIUM
another cure period to correct the nonconformance and the
provisions of Paragraph 4.1 shall again apply.
5. PAYMENT
5.1. Payment Terms For Deliverables. As payment for the license
grants and deliverables specified in this Agreement for each
Licensed Program, LICENSEE agrees to pay TRILLIUM the license
fee amount specified in Exhibit B for such Licensed Program.
The license fees for each such Licensed Program as specified
in Exhibit B shall be paid:
5.1.1. [**] within thirty (30) days after delivery of the
Licensed Program as provided in Paragraph 3.1.; and
5.1.2. [**] within thirty (30) days after acceptance of the
Licensed Program as provided in Paragraph 4.
5.2. Payment Terms For Maintenance. The fees for Maintenance
Service specified in Exhibit B are due and payable within
thirty (30) days of the date of each invoice therefor.
5.3. Currency. Unless otherwise agreed in writing by TRILLIUM, all
payments under this Agreement shall be made in United States
Dollars at the TRILLIUM office specified in Paragraph 16 (as
the same may subsequently be changed in accordance with such
Paragraph). All payments will be made in the form of a check
or wire transfer.
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5.4. Records. LICENSEE agrees to keep all usual and proper records
and books of accounts and all usual and proper entries therein
relating to sublicense of the Licensed Programs hereunder.
Upon reasonable notice, TRILLIUM or its duly appointed
representative shall have the right to audit LICENSEE'S
manufacturing and shipment records related to the Licensed
Programs for any period of time at any time. These
examinations shall occur during normal business hours at
LICENSEE'S place of business and shall not occur more
frequently than two times per year.
5.5. Administrative Service Charge. In addition to its other rights
hereunder, including the right to terminate, TRILLIUM shall
charge, and LICENSEE agrees to pay, an administrative service
charge of one and one-half percent (1.5%) of the unpaid amount
of any invoice per month (or fraction thereof), but not to
exceed the maximum rate permitted by applicable law, from the
due date of the invoice until the deft paid for any invoice
not timely paid in accordance with the terms of this
Agreement. This administrative service charge is intended to
defray part of TRILLIUM'S costs in processing and handling
late payments.
6. WARRANTY
6.1. Product Warranty. TRILLIUM warrants (i) that the Licensed
Programs will perform substantially to the specifications
referenced in Paragraph 2 of Exhibit A at the time of delivery
and for a period of six (6) months following delivery and (ii)
that the media used for delivery of the Licensed Programs and
Documentation will be free from defects in materials and
workmanship at the tune of delivery and for a period of thirty
(30) days following delivery.
6.2. Remedy. During the warranty period specified in clause (i) of
Paragraph 6.1., TRILLIUM shall correct any errors in the
Licensed Programs so that the Licensed Programs perform in all
material respects to the specifications referenced in
Paragraph 2 of Exhibit A. TRILLIUM shall repair or replace, at
its discretion, without charge at TRILLIUM'S facility all
defective media used for delivery of the Licensed Programs and
Documentation which are returned for inspection to such
facility within the warranty period specified in clause (ii)
of Paragraph 6.1, provided that such inspection discloses that
the defects are not the result of misuse, improper handling,
negligence, accident or otherwise attributable to LICENSEE'S
acts or omissions.
6.3. Definition of Services. During the warranty period specified
in clause (i) of Paragraph 6.1, TRILLIUM shall provide to
LICENSEE the Maintenance Services defined in Exhibit D for one
(1) LICENSEE site in relation to one (1) type of Designated
Equipment.
6.4. Limitation. EXCEPT AS PROVIDED IN THIS PARAGRAPH 6 AND
PARAGRAPH 10.1, TRILLIUM MAKES NO OTHER WARRANTIES, EXPRESS OR
IMPLIED, INCLUDING WITHOUT LIMITATION, WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A
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PARTICULAR PURPOSE WITH REGARD TO ANY PRODUCT, SERVICE OR
RELATED MATERIALS PROVIDED UNDER THIS AGREEMENT.
6.5. Fee for Additional Sites and Equipment. Warranty service will
be provided for one (1) LICENSEE site in relation to one (1)
type of Designated Equipment without additional charge except
as provided in Exhibit D. Warranty service for more than one
(1) LICENSEE site, or in relation to additional types of
Designated Equipment, will be provided only upon terms and
conditions to be agreed upon by TRILLIUM and LICENSEE.
7. MAINTENANCE
7.1. Definition of Maintenance Service. During any period of
Maintenance Service for which LICENSEE has paid, TRILLIUM will
provide to LICENSEE the services defined in Exhibit D.
7.2. Period of Maintenance Service. By checking the applicable box
on Exhibit B, LICENSEE may purchase Maintenance Service for
the Licensed Programs for one (1) LICENSEE site in relation to
one (1) type of Designated Equipment for the first year
following the end of the warranty period specified in clause
(i) of Paragraph 6.1 for the fees specified in Exhibit B. If,
on the other hand, LICENSEE checks the box on Exhibit B to
decline to order the first year of Maintenance Service at the
time LICENSEE executes this Agreement (or otherwise fails to
check the applicable box to purchase such Maintenance
Service), then, subject to acceptance in writing by TRILLIUM,
LICENSEE may subsequently purchase Maintenance Service for the
Licensed Programs for fees to be quoted by TRILLIUM at the
time such Maintenance Service is ordered (which fees may vary
from the fees set forth in Exhibit B). The minimum period for
which LICENSEE may purchase Maintenance Service is one (1)
year for one (1) site in relation to one (1) type of
Designated Equipment. Maintenance Service periods greater than
one (1) year are available in one (1) year increments. The
rates shown in Exhibit B cover Maintenance Service for the
Licensed Programs for one (1) LICENSEE site for one (1) type
of Designated Equipment for the first year following the end
of the warranty period specified in clause (i) of
Paragraph 6. 1. Maintenance Service for more than one (1)
site, or in relation to additional types of Designated
Equipment, will be provided only upon terms and conditions to
be agreed upon by TRILLIUM and LICENSEE. If there is, at any
time, more than one Licensed Program under this Agreement and
LICENSEE desires to purchase Maintenance Service for any of
the Licensed Programs, TRILLIUM reserves the right to require
LICENSEE to purchase Maintenance Service for all Licensed
Programs which are variants of one another or are otherwise
related to one another as a condition to purchasing
Maintenance Service for any of such variant or otherwise
related Licensed Programs.
7.3. Renewal. Maintenance Service is renewable annually, TRILLIUM
will endeavor to notify LICENSEE two (2) months prior to the
expiration of the
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warranty period specified in clause (i) of Paragraph 6.1 or
any then-current Maintenance Service period. Whether or not
TRILLIUM has so notified LICENSEE, at any time prior to or
within thirty (30) days after the expiration date of the.
warranty period specified in clause (i) of Paragraph 6.1 or
any them-current Maintenance Service period LICENSEE may renew
the Maintenance Service for the ensuing year (commencing on
such expiration date). Any renewal order shall be subject to
acceptance in writing by TRILLIUM, and, if LICENSEE fails to
renew the Maintenance Service within such period of time,
LICENSEE shall pay the applicable fees for Maintenance Service
for the ensuing year plus, on a prorated basis, all fees that
would have been payable from the day following the original
expiration date to the date of renewal, and the renewal fees
shall be as quoted by TRILLIUM at the time of LICENSEE'S order
(and may vary from the fees specified in Exhibit B).
7.4. Addition of New Programs. Upon payment of the applicable
license fees for any new Licensed Program licensed by
amendment to this Agreement, LICENSEE shall be entitled to six
(6) months of warranty service in respect of such new Licensed
Program under Paragraph 6 of this Agreement. If a new Licensed
Program is licensed by amendment to this Agreement at a time
when LICENSEE is entitled to warranty service or Maintenance
Service from TRILLIUM for one or more Licensed Programs
previously licensed under this Agreement, TRILLIUM, in lieu of
providing the six (6) months of warranty service for the new
Licensed Program under Paragraph 6, may give LICENSEE credit
for the six (6) month warranty service period otherwise
applicable to such new Licensed Program in the following
manner, so that some or all Licensed Programs have warranty
service and Maintenance Service periods that end on the same
dates:
7.4.1. If the previously-licensed Programs are still covered
by warranty service, LICENSEE will be entitled to
warranty service on the new Program for the remainder
of such warranty service period and, to the extent of
the unused portion of the credit, LICENSEE will be
entitled to a prorated Maintenance Service fee credit
which may be applied toward the ensuing year of
Maintenance Service.
7.4.2. If the previously-licensed Programs are covered by
Maintenance Service, and if more than six (6) months
remain in the period of Maintenance Service for the
previously-licensed Programs, TRILLIUM will give
LICENSEE credit for six (6) months of Maintenance
Service for the new Program and may require that
LICENSEE pay a prorated Maintenance Service fee for
the new Program to cover the remainder of the
Maintenance Service period.
7.4.3. If the previously-licensed Programs are covered by
Maintenance Service, and if less than six (6) months
remain in the period of Maintenance Service for the
previously-licensed Programs, LICENSEE will be
entitled to Maintenance Service on the new Program
for the remainder of such Maintenance Service period
and, to
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the extent of the unused portion of the credit,
LICENSEE will be entitled to a prorated Maintenance
Service fee credit which may be applied toward the
ensuing year of Maintenance Service.
8. RIGHTS OF TRILLIUM
8.1. Rights Retained By Trillium. Nothing in this Agreement shall
prohibit TRILLIUM in any manner from using, developing,
marketing, licensing or otherwise disposing of TRILLIUM'S
Licensed Programs or concepts embodied therein anywhere in the
world; nor shall anything herein be construed to grant to
LICENSEE or any sublicensee any rights in or to any other
present or future products of TRILLIUM whether or not similar
to Licensed Programs.
8.2. Proprietary Rights. All information and material, including
but not limited to the Licensed Programs and Documentation,
supplied by TRILLIUM hereunder is owned by TRILLIUM and/or its
licensors and is proprietary in nature. LICENSEE (i) shall
respect such claim of proprietary right, (ii) shall protect
such information at least to the extent that it protects its
own proprietary information, (iii) shall not use such
information except for the purposes for which it is being made
available under this Agreement and (iv) shall not reproduce,
print, disclose, or otherwise make said information available
to any third party, in whole or in part, in whatever form,
except for the purpose for which it is being made available as
set forth in this Agreement.
8.3. Preservation of Notices. TRILLIUM shall retain title and
copyrights to the Licensed Programs, Documentation and related
materials that are provided by TRILLIUM to LICENSEE. The
Source Form Licensed Programs and Documentation contain
copyright notices, proprietary notices arid restricted rights
legends. LICENSEE shall retain all such notices on all copies
thereof (whether full or partial), and LICENSEE agrees to
reproduce and include in all copies (whether full or partial)
of the Object Form Licensed Programs all such notices and
legends contained in the Source Form Licensed Programs.
8.4. Rights Retained By Licensee. Nothing in this Agreement shall
prohibit LICENSEE in any manner from using, developing,
marketing, licensing or otherwise disposing of any software
independently developed by LICENSEE or any third party.
LICENSEE shall own all modifications made by it to the
Licensed Programs, except for error corrections and feature
enhancements to any Licensed Program, Documentation or related
materials disclosed or suggested to TRILLIUM in the course of
training, warranty service or Maintenance Service provided by
TRILLIUM, which corrections and enhancements shall be owned by
TRILLIUM (unless solely specific to LICENSEE'S application).
9. CONFIDENTIALITY
9.1. Source Form and Documentation. THE SOURCE FORM LICENSED
PROGRAMS AND DOCUMENTATION THAT ARE THE SUBJECT OF THIS
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AGREEMENT ARE CONFIDENTIAL AND PROPRIETARY TO TRILLIUM.
LICENSEE shall not use, reproduce, duplicate, copy or
otherwise disclose, distribute or disseminate any Source Form
Licensed Program or Documentation or related materials or
information provided under this Agreement or in the course of
the training provided under this Agreement, in any form or
media, other than as expressly provided for in this Agreement.
9.2. Confidential Information. For purposes of this Agreement,
"Confidential Information" of a party (the "Discloser") shall
mean any information which is disclosed to the other party
(the "Recipient") during the term of this Agreement that
relates in any way to any Licensed Program and which (i) is in
written, recorded, electronic, graphical or other tangible
form and marked confidential and/or proprietary or with a
similar legend or other notation denoting the confidential
nature of the information or proprietary interest of the
Discloser, or (ii) is disclosed orally and is identified
orally as confidential and/or proprietary at the time of
disclosure and is identified as confidential or proprietary by
the Discloser in a writing delivered to the Recipient prior to
or within thirty (30) days after the time of disclosure; and
"Confidential Information" shall include all notes, memoranda,
analyses, compilations, studies, and other documents and
records prepared by or for the Recipient, which contain or
otherwise reflect or are generated by using any Confidential
Information. TRILLIUM "Confidential Information" shall in all
events include but not be limited to the Licensed Programs,
Documentation and related materials and information.
Notwithstanding the foregoing, "Confidential Information"
shall not include any information which (a) is in the public
domain at the time of disclosure or becomes public domain
information other than through a breach of this Agreement, (b)
has been lawfully acquired by the Recipient from an Unrelated
Party, (c) is already in the Recipient's possession from an
Unrelated Party at the time of disclosure (as evidenced by the
Recipient's business records), or (d) is demonstrated by the
Recipient to have been independently developed by the
Recipient. For purposes hereof, the term "Unrelated Party"
shall mean a person who is not the Discloser, not an
affiliate, employee or agent of the Discloser, and not a
person known by the Recipient to be prohibited from disclosing
the Confidential Information to the Recipient by any
contractual, legal or fiduciary obligation.
9.3. Confidentiality and Use Restrictions. The Recipient shall not
use any of the Discloser's Confidential Information other than
to carry out the purposes of this Agreement and as expressly
permitted by this Agreement. The Recipient (i) shall treat the
Discloser's Confidential Information as confidential and
proprietary, using at a minimum the same degree of care as it
uses for its own trade secrets, but in no event less than
reasonable care; (ii) shall not disclose or afford access to
any such Confidential Information to any person who has not
executed a confidentiality agreement with the Recipient
protecting such information, having terms no less stringent
than those in this Agreement; (iii) shall not disclose or
afford access to any such Confidential Information to any
person who does not have a specific need to know such
information for the purpose of this Agreement; and (iv) shall
use its best efforts to ensure that such persons to whom the
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Recipient discloses or affords access to any such Confidential
Information shall not disclose any such Confidential
Information to any other person or use, any such Confidential
Information other than to carry out the purposes of this
Agreement and as expressly permitted by this Agreement (and,
in any event, shall be liable to the Discloser for any breach
of the provisions of this clause (iv) of this Paragraph by any
person to whom the Recipient discloses or affords access to
any such Confidential Information); provided, however, that
the Recipient may disclose Confidential Information as
compelled by legal, judicial or administrative proceeding if
the Recipient gives the Discloser reasonable prior notice to
enable the Discloser to seek a protective order or other
relief to prevent or limit disclosure of such Confidential
Information and the Recipient cooperates with the Discloser in
such effort.
10. INDEMNIFICATION AGAINST INFRINGEMENT
10.1. Indemnity. TRILLIUM represents and warrants that it has the
sufficient right, title and interest in the Licensed Programs
to enter into this Agreement. TRILLIUM agrees, at its own
expense, to indemnify and defend LICENSEE and hold LICENSEE
harmless against any loss, suit, claim, liability, expense
(including without limitation reasonable attorney's fees) or
proceeding brought against LICENSEE alleging that any use of
the Licensed Programs as delivered by TRILLIUM infringes any
patent, copyright or trademark or any trade secrets of any
third parties, provided that LICENSEE (i) promptly notifies
TRILLIUM in writing of any such suit, claim or proceeding,
(ii) allows TRILLIUM at its expense, to direct the defense of
such suit, claim or proceeding, (iii) gives TRILLIUM all
information and assistance TRILLIUM considers reasonably
useful to defend such suit, claim or proceeding, and (iv) does
not enter into any settlement of any such suit, claim or
proceeding without TRILLIUM written consent.
10.2. Remedies. Following written notice of a suit, claim or
proceeding or a threat of suit, claim or proceeding requiring
indemnification under Paragraph 10.1 above, TRILLIUM shall, at
its sole option, either (i) procure for LICENSEE the right to
use the Licensed Programs as furnished hereunder, or (ii)
replace or modify the Licensed Programs to make the same
non-infringing, or (iii) return to LICENSEE the license fees
applicable to the infringing Licensed Program and to accept
return of the infringing Licensed Program and related
documentation without further liability of TRILLIUM. If
TRILLIUM elects to replace or modify the Licensed Program,
such replacement shall substantially meet the specifications
for the Licensed Program as set forth in its Documentation.
10.3. Limitation. TRILLIUM shall have no liability for any claim
that TRILLIUM lacks right, title and interest to the Licensed
Programs or for any claim of violation of copyright, patent,
trade secret or other intellectual property right, if such
claim is based on LICENSEE'S modification or combination of
the Licensed Programs with non-TRILLIUM hardware or software,
including without limitation the Designated Equipment, if such
claim would have been
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13
avoided had the Licensed Program not been modified, combined
or integrated with the Designated Equipment and/or
non-TRILLIUM software programs.
LICENSEE shall indemnify and defend TRILLIUM and its
affiliates and hold them harmless from and against any loss,
suit, claim, liability, expense (including without limitation
reasonable attorney's fees) or proceeding arising under this
Paragraph 10.3 provided that TRILLIUM (i) promptly notifies
LICENSEE in writing of any such loss, suit, claim, liability,
expense (including without limitation reasonable attorney's
fees) or proceeding, (ii) allows LICENSEE, at LICENSEE'S
expense, to direct the defense of such suit, claim or
proceeding, (iii) gives LICENSEE full information and
assistance necessary to defend such suit, claim or proceeding,
and (iv) does not enter into any settlement of any such suit,
claim or proceeding without LICENSEE'S consent.
11. LIMITATION OF LIABILITY
TRILLIUM'S aggregate liability to LICENSEE and its sublicensees under,
arising out of or related to any provision of this Agreement, or at law
or in equity (including without limitation pursuant to any claim for
indemnification), or any transaction contemplated by this Agreement,
shall be limited to the amount of the license fees actually paid by
LICENSEE to TRILLIUM under this Agreement. TRILLIUM'S limitation of
liability is cumulative with all of TRILLIUM'S payments to LICENSEE in
satisfaction of TRILLIUM'S liabilities under this Agreement being
aggregated to determine satisfaction of the limit.
IN NO EVENT SHALL TRILLIUM BE LIABLE FOR ANY INDIRECT, SPECIAL, OR
CONSEQUENTIAL DAMAGES IN CONNECTION WITH OR ARISING OUT OF THIS
AGREEMENT, WHETHER BASED ON BREACH OF CONTRACT, TORT (INCLUDING
NEGLIGENCE), PRODUCT LIABILITY, OR OTHERWISE, AND WHETHER OR NOT IT HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE.
12. INDEMNIFICATION
LICENSEE shall indemnify and defend TRILLIUM and its affiliates and
hold them harmless from and against any loss, suit, claim, liability,
expense (including without limitation reasonable attorney's fees),
proceeding or damage to persons or property arising out of or related
to the use or possession of the Licensed Programs or any Documentation
or related materials by LICENSEE or any of its sublicensees, provided
that such loss, suit, claim, expense, proceeding or, damage (i) is not
the subject of indemnity by TRILLIUM under Paragraph 10.1 or (ii) was
not caused solely by the negligence of TRILLIUM or of TRILLIUM
employees or representatives.
13. TERMINATION
13.1. Termination Events. This Agreement shall terminate:
13.1.1. Upon mutual agreement of the parties hereto; or
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14
13.1.2. If either party commits a breach of any provision of
this Agreement, the party committing the breach (the
"defaulting party") shall be deemed in default and
the other party (the "non-defaulting party") may
terminate this Agreement, including all rights
granted herein (and without liability on the part of
the terminating party for terminating this Agreement,
and without prejudice to the terminating party's
other rights and remedies), upon thirty (30) days
written notice to the defaulting party. Such
termination shall become effective at the end of such
thirty (30) day period (or such later date, if any,
as may be expressly provided in such notice) unless
the defaulting party shall cure, all aspects of the
default to the reasonable satisfaction of the
non-defaulting party and so notify the non-defaulting
party of the cure in writing within such thirty (30)
day period; or
13.1.3. Without liability on the part of the terminating
party for terminating this Agreement, and without
prejudice to the terminating party's other rights and
remedies, by either party by notice given at any time
if at any time (i) the other party commences
dissolution or liquidation proceedings or ceases to
carry on its business, (ii) a receiver or similar
officer is appointed for such other party and is not
discharged within ninety (90) days, or (iii) such
other party makes an. assignment for the benefit of,
or a composition with, its creditors, or another
arrangement of similar import, or if proceedings
under any bankruptcy or insolvency law are commenced
against it and are not discontinued within ninety
(90) days.
13.2. Certain Obligations Upon Termination. If this Agreement is
terminated, LICENSEE, on the effective date of termination,
shall immediately discontinue the Use of each Licensed Program
and Documentation and related materials, and any and all parts
thereof. Within five (5) days after the date of termination,
LICENSEE shall deliver to TRILLIUM every original copy and
reproduction (in any form or media) of each Licensed Program
and all Documentation and related materials and TRILLIUM
Confidential Information; provided that, notwithstanding the
other terms of this Paragraph 13.2, LICENSEE may retain one
(1) copy of the Licensed Programs for use solely in supporting
its then-existing sublicensees (if there are any such
sublicensees). In lieu of such delivery, if TRILLIUM permits,
every original copy and reproduction (in any form or media) of
each Licensed Program, and all Documentation and related
materials, and other Confidential Information of TRILLIUM
shall be destroyed by LICENSEE, who shall then provide
TRILLIUM with written certification that LICENSEE has complied
with this provision. Termination of this Agreement shall not
abridge the right of continued use on the part of LICENSEE'S
sublicensees who have rightfully received the Object Form of
the Licensed Programs under a sublicense granted by LICENSEE
as permitted by this Agreement; provided, however, that all
further rights on the part of LICENSEE to use Source Form or
Object Form, or to distribute or sublicense Licensed Programs
shall be canceled upon termination. Termination of this
Agreement shall also terminate the rights of all other
persons, to whom LICENSEE has
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15
granted any right to sublicense under Paragraph 2, to grant
additional sublicenses after the date of termination, and,
upon such termination, LICENSEE shall promptly notify each
such sublicensee accordingly.
13.3. Unpaid Amounts. Immediately upon termination of this
Agreement, any earned but unpaid fees shall become immediately
due and payable by LICENSEE to TRILLIUM.
13.4. Unshipped Orders. Immediately upon termination of this
Agreement, all unshipped orders may be canceled by either
party without liability to either party.
13.5. Survival of Provisions. The following provisions shall survive
any termination or expiration of this Agreement:
Paragraph 5 Payment
Paragraph 8 Rights of Trillium
Paragraph 9 Confidentiality
Paragraph 10 Indemnification Against Infringement
Paragraph 11 Limitations of Liability
Paragraph 12 Indemnification
Paragraph 13 Termination
Paragraph 14 Assignments
Paragraph 15 Export Controls
Paragraph 16 Notices
Paragraph 17 General Provisions
13.6. Term. The term of this Agreement shall be perpetual and shall
not terminate or expire unless and until this Agreement is
terminated in accordance with its provisions.
14. ASSIGNMENTS
The rights and obligations of LICENSEE under this Agreement may not be
assigned or delegated (by operation of law or otherwise) by LICENSEE
without the prior written consent of TRILLIUM except for an assignment
of this entire Agreement to an affiliate of LICENSEE that does not
compete with TRILLIUM and only if such assignment is incident to a
transfer of the business that includes the Designated Equipment as
specified in Exhibit A, and in all cases, any assignment may be made
only upon ninety (90) days prior written notice to TRILLIUM and shall
be effective only upon the execution by the proposed assignee of an
assignment agreement acceptable in form and substance to TRILLIUM,
which shall include without limitation the proposed assignee's
assumption of and agreement to be bound by all of the terms and
conditions of this Agreement and all amendments thereto. TRILLIUM'S
rights and obligations under this Agreement may with notice to the
LICENSEE be assigned and/or delegated by TRILLMIM to any affiliate of
TRILLIUM or incident to the transfer of the business of TRILLIUM to
which this Agreement relates. TRILLIUM may upon notice given at any
time to LICENSEE assign its rights to receive fees and other monies
hereunder. Subject to the
Page 15
16
limitations on assignment contained in the foregoing provisions of this
Paragraph, this Agreement shall be binding upon and inure to the
benefit of the successors and assigns of the parties hereto.
15. EXPORT CONTROLS
The Licensed Programs are subject to United States Government export
controls. LICENSEE agrees not to use, export, import, re-export,
transfer or otherwise dispose of the Licensed Programs except in
compliance with United States and foreign government requirements.
16. NOTICES
Any notice required or desired to be given with respect to this
Agreement shall be in writing and shall be deemed delivered when sent
by registered or certified mail, return receipt requested (if being
sent from within the USA to an address within the USA), or by confirmed
facsimile transmission (regardless of the points of sending and
receipt), or by overnight express courier (such as FedEx) marked for
the earliest possible delivery (regardless of the points of sending and
receipt), in each case addressed to the other party as set forth below,
or to such other address as that party may have specified by prior
notice to the other given in the manner herein provided:
LICENSEE: Castle Networks Inc.
235 Littleton Road #2
Westford, Massachusetts 01886
Attn: Mike Regan
Facsimile No.: +1-978-392-9032
TRILLIUM: Trillium Digital Systems, Inc.
12100 Wilshire Blvd., Suite 1800
Los Angeles, California, USA 90025-7118
Attn: Contract Administration
Facsimile No: +1-310-442-1162
If no address is given for LICENSEE in this Paragraph, then the
office, address of LICENSEE first set forth above shall be the address
for notices to LICENSEE.
17. GENERAL PROVISIONS
17.1. Agreement Prevails. In the event that any provision of any
purchase order, receipt, invoice, or other document issued by
either party is inconsistent with the provisions of this
Agreement, then the terms of this Agreement will prevail. In
the event of a conflict in the provisions of the body of this
Agreement and any exhibits or other attachments hereto, the
provisions of the body of this Agreement shall govern.
17.2. Taxes. Fees shown in Exhibit B are exclusive of all sales, use
and other taxes and all other governmental charges and
assessments. Any tax TRILLIUM may be
Page 16
17
required to collect or pay upon the transactions contemplated
by this Agreement, other than taxes based on the income of
TRILLIUM and any foreign withholding taxes, shall be paid by
LICENSEE, or in lieu thereof, LICENSEE shall provide a tax
exemption certificate acceptable to the taxing authorities. On
transactions occurring outside the United States, in whole or
in part, all required import/export duties, license and other
fees shall be payable by LICENSEE in addition to the stated
payments to TRILLIUM. If LICENSEE is required to withhold any
foreign withholding taxes from amounts payable to TRILLIUM
under this Agreement, LICENSEE shall advise TRILLIUM of such
requirement at the time of signing this Agreement, shall
timely remit such foreign withholding taxes to the appropriate
taxing authority, and shall deliver to TRILLIUM proof of each
such remittance (in a form acceptable to the U.S. Internal
Revenue Service so that TRILLIUM can claim applicable U.S.
federal tax credits) within sixty (60) days of such
remittance.
17.3. Shipping. Shipment will be made as specified in Exhibit A. In
the absence of specific written instructions from LICENSEE,
TRILLIUM will select the carrier but shall not thereby assume
any liability in connection with shipment; nor shall the
carrier be construed to be the agent of TRILLIUM. Title to and
risk of loss of all physical media used for delivery of
machine readable items to be delivered hereunder shall pass to
LICENSEE at TRILLIUM'S shipping point upon delivery to the
carrier. All shipping and handling charges shall be paid by
LICENSEE.
17.4. Force Majeure. Neither party shall be considered in breach or
default under this Agreement for any delay or failure in
performance (other than the payment of money) resulting from
acts beyond the control of such party. Such acts shall include
but not be limited to acts of God, labor conflicts, acts of
war or civil disruption, act of terrorism, governmental
regulations imposed after the fact, public utility failures,
industry wide shortages of labor or material, or natural
disaster.
17.5. Complete Agreement. This Agreement (including the exhibits
attached hereto and referenced herein) contains the entire
agreement between the parties with respect to the subject
matter hereof. No other prior or contemporaneous agreements,
representations, warranties, or other matters, oral or
written, actually or purportedly agreed to or represented by
or on behalf of either party by any of its employees or
agents, or contained in any sales material or brochures, shall
be deemed to bind the parties with respect to the subject
matter hereof. The terms of this Agreement may be altered only
in a writing signed by both parties, except as otherwise
expressly set forth in this Agreement for changes to certain
exhibits to this Agreement.
17.6. Waivers. The failure or delay of either party at any time to
exercise any right under any provision of this Agreement shall
not limit or operate as a waiver thereof, nor shall the single
or partial exercise thereof preclude or limit any other or
further exercise thereof, nor shall the waiver of any breach
of any provision be
Page 17
18
a waiver of any other or further breach of any provision or a
waiver of the provision itself or of any other provision of
this Agreement.
17.7. Applicable Law and Construction. This Agreement shall be
governed by and construed in accordance with the laws of the
State of California, USA, excluding the conflict of laws
principles thereof. Neither this Agreement nor any provision
of this Agreement shall be construed against either party due
to the fact that this Agreement or such provision was drafted
by such party. In construing this Agreement, the headings
shall not be considered part of this Agreement, but are for
convenience of reference only. Wherever the context of this
Agreement dictates, the plural shall be read as the singular
and the singular as the plural.
17.8. Severability. If any provision of this Agreement is held by a
court or arbitrator of competent jurisdiction not enforceable
to its full extent then such provision shall be enforced to
the maximum extent permitted by law, and the parties hereto
consent and agree that such scope may be modified by such
court or arbitrator accordingly and that the whole of such
provision of this Agreement shall not thereby fail, but that
the scope of such provision shall be curtailed only to the
extent necessary to conform to the law.
17.9. Disputes. In the event any dispute arises under, it connection
with or relating to this Agreement or any transaction
contemplated thereby, whether to enforce any of the terms or
conditions of this Agreement or otherwise, the prevailing
party in any suit, arbitration or other proceedings shall, as
an additional item of damages, recover its reasonable
attorneys' fees and court costs, arbitration costs or costs of
such other proceedings as maybe fixed by any court, arbitrator
or other judicial or quasi-judicial body having jurisdiction
thereof, including without limitation any costs incurred in
any appeal and in any collection effort, whether or not such
litigation or proceedings proceed to a final judgment or
award.
17.10. Arbitration. Any claim, controversy, or dispute of whatever
nature arising out of or related to this Agreement or its
formation shall be resolved by final and binding arbitration
administered by the American Arbitration Association ("AAA")
according to the Commercial Arbitration Rules ("Rules") of the
AAA, except as modified herein. The arbitration shall be
conducted by a single arbitrator chosen from a list of
attorneys who are members of the AAA's large complex case
panel and who are also knowledgeable in the area of software
licensing and the software industry. If the parties cannot
agree on an arbitrator within thirty (30) days from the filing
of a demand for arbitration with the AAA, the arbitrator shall
be chosen pursuant to Rule 13 of the Rules. The costs and
administrative expenses of arbitration, including the
arbitrator's fees, shall be shared equally by the parties. The
arbitration shall be conducted in the City of Los Angeles,
California. In rendering any award, the arbitrator shall apply
and follow applicable principles of the substantive law of
California. The parties shall be entitled to conduct full
discovery as permitted by the California Discovery Act,
C.C.P.ss.2016 et seq., and any amendment thereto or successor
statutes. The period for conducting and completing discovery
shall be limited to three months from the date of the
Page 18
19
arbitrator's appointment. The arbitration shall be completed
within six months from the date of the arbitrator's
appointment. To the extent otherwise available under
applicable law, either party may seek provisional relief from
any court of competent jurisdiction as to any matter that is
subject to arbitration under this Agreement. Judgment on the
award rendered by the arbitrator may be entered in any court
having jurisdiction thereof. The parties consent to the
jurisdiction of the state and federal courts located in Los
Angeles County, California for all judicial proceedings.
17.11. Provisional Relief. The parties agree that any breach of this
Agreement by LICENSEE would result in irreparable harm to
TRILLIUM, the extent of which would be difficult and/or
impracticable to assess, and that money damages would not be
an adequate remedy for such breach. Accordingly, TRILLIUM
shall be entitled to immediate equitable and other provisional
relief, including without limitation specific performance of
this Agreement and a temporary restraining order and/or
preliminary and/or permanent injunction, as a remedy for such
breach in addition to all other remedies available to TRILLIUM
at law or in equity and without prejudice to any such other
remedies.
17.12. Further Acts. Each party to this Agreement agrees to execute
and deliver all documents and to perform all further acts and
to take any and all further steps that may be requested by the
other party and are reasonably necessary to carry out the
provisions of this Agreement and the transactions contemplated
hereby.
17.13. Counterparts. This Agreement or any amendment hereto may be
executed in several counterparts and, as executed, shall
constitute one agreement binding on all the parties hereto,
notwithstanding that all of the parties are not signatory to
the original or the same counterpart.
17.14. Language. All amendments of this Agreement, notices and
communications between the parties, and all material supplied
under this Agreement by either party to the other shall be in
the English language.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed by their respective duly authorized representative as of the date first
above written.
LICENSEE: TRILLIUM:
Company: CASTLE NETWORKS INC. TRILLIUM DIGITAL SYSTEMS, INC.
Signature: /s/ Michael D. Regan /s/ Richard D. [Illegible]
--------------------- -------------------------
Name: Michael D. Regan Richard D. [illegible]
Title: Director - SW ENG C.O.D.
Date: 2/25/98 February 25, 1998
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20
Attachments: Exhibit A - Licensed Programs
Exhibit B - License and Maintenance Fees
Exhibit C - Sample End User License Agreement
Exhibit D - Maintenance Service
Exhibit E - Trillium Action Request
Exhibit F - Trillium Standard Rates
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EXHIBIT A
LICENSED PROGRAMS
1. LICENSED PROGRAMS:
The Licensed Programs are:
- -------------------------------------------------------------------------------------------------
Part No. Options Name Version Ship Date
- -------------------------------------------------------------------------------------------------
1000027 -- MTP Level 2 - CCITT 88 & 92, Latest 1 Week ARO
ANSI 88 & 92, Peoples
Republic of China
- -------------------------------------------------------------------------------------------------
1000028 -- MTP Level 3 - CCITT 88 & 92 Latest 1 Week ARO
- -------------------------------------------------------------------------------------------------
1000028 12 MTP Level 3 - ANSI 88 & 92 Latest 1 Week ARO
- -------------------------------------------------------------------------------------------------
1000029 -- ISUP - CCITT 88 & 92 Latest 1 Week ARO
- -------------------------------------------------------------------------------------------------
1000029 12 ISUP - ANSI 88 & 92 Latest 1 Week ARO
- -------------------------------------------------------------------------------------------------
1020031 21 VxWorks/Tornado System Latest 1 Week ARO
Services - General
- -------------------------------------------------------------------------------------------------
1000100 -- Motorola MPC860 SCC Driver Latest 1 Week ARO
- -------------------------------------------------------------------------------------------------
1068001 01 MOS Binary - Microsoft Visual Latest 1 Week ARO
C++ V2.1 for WindowsNT
- -------------------------------------------------------------------------------------------------
If used above:
"ARO" means "after receipt of order", which contemplates receipt of
LICENSEE's purchase order and a fully-signed Software License Agreement
acceptable to TRILLIUM.
"Latest" means the version that is the current Public Release.
"Beta" means a version that is not a Public Release.
2. DOCUMENTATION:
The following documentation shall be supplied with each Licensed
Program:
- Functional Specification
- Service Definition
- Portation Guide
- Training Manual
- Software Test Sample
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22
3. OPERATING ENVIRONMENT (FOR TRILLIUM REFERENCE PURPOSES ONLY)
Compiler: GNU FROM WIND RIVER SYSTEMS
Compiler Platform: WINDOWS NT
Runtime Processor: POWER PC 860/603
Runtime Operating System: Vx Works
4. LICENSEE'S "DESIGNATED EQUIPMENT": LICENSEE's self contained
Public Switched Telephone
Network (PSTN) voice gateway
product, current development
codename is "Atlas," which is a
23" proprietary NEBS compliant
chassis with multiple shelves
and proprietary busses, running
VxWorks and using PowerPC and
PowerQUICC processors. This
definition covers versions of
the "Atlas" product which vary
only in their size and
scalability. Prior to the first
commercial sale or use of this
product, LICENSEE shall notify
TRILLIUM of the formal model
name and/or model number of
this product, which shall be
then specified in this
definition by an amendment to
this Agreement.
Page 22
23
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
EXHIBIT B
LICENSE AND MAINTENANCE FEES
1. LICENSE AND MAINTENANCE FEES:
The license and maintenance fees for each of the Licensed Programs are:
- -------------------------------------------------------------------------------------------------------
Part No. Options Name License License Maintenance Fee Training
Type Fee (1) (Annual) (2) (Hours)
- -------------------------------------------------------------------------------------------------------
1000027 -- MTP Level 2 - CCITT 88 & 92, SUB $[**] $[**] [**]
ANSI 88 & 92, Peoples
Republic of China
- -------------------------------------------------------------------------------------------------------
1000028 -- MTP Level 3 - CCITT 88 & 92 SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------------
1000028 12 MTP Level 3 - ANSI 88 & 92 SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------------
1000029 -- ISUP - CCITT 88 & 92 SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------------
1000029 12 ISUP - ANSI 88 & 92 SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------------
1020031 21 VxWorks/Tornado System SUB $[**] $[**] [**]
Services - General
- -------------------------------------------------------------------------------------------------------
1000100 -- Motorola MPC860 SCC Driver SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------------
1068001 01 MOS Binary - Microsoft Visual UNB $[**] $[**] [**]
C++ V2.1 for WindowsNT
- -------------------------------------------------------------------------------------------------------
The total license and maintenance fees are:
(1) Total License Fees: $[**]
(2) Total Maintenance Fees (Annual): $[**]
If Maintenance Services art requested for more than one (1) LICENSEE
site, or more than one (1) type of Designated Equipment, additional
maintenance fees may be charged.
2. MAINTENANCE SERVICE: (check applicable box)
[ ] By checking this box, LICENSEE orders Maintenance Service for
the Licensed Programs for the first year following the end of
the applicable warranty period.
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24
TRILLIUM will invoice LICENSEE for the applicable fees for
such Maintenance Service (as specified above) at the
appropriate time.
[ ] By checking this box, LICENSEE declines to order Maintenance
Service for the Licensed Programs for the first year following
the end of the applicable warranty period. LICENSEE may
subsequently order Maintenance Service as provided in this
Agreement, but the fees for such Maintenance Service will be
as quoted by TRILLIUM at the time such Maintenance Service is
ordered and may vary from the fees set forth above.
3. LICENSE TYPE DEFINITIONS:
Single Use Buyout ("SUB") - License granted per terms of this Agreement
to Use Source Form and sublicense an unlimited number of copies of
Object Form with the Designated Equipment as specified in Exhibit A.
There is a one time fee with no per Object Form royalty due.
Unsupported Binary ("UNB") - License granted per terms of this
Agreement to Use Object Form, but does not grant right to distribute
copies of Object Form. Up to two (2) copies of the Object Form may be
Used in the LICENSEE'S facilities for test purposes. No warranty,
training, documentation, maintenance or other services will be provided
for the Object Form. LICENSEE shall not reproduce, print, sublicense,
duplicate, reverse engineer, decompile, distribute, disclose, or
otherwise make the Object Form available to any third party, in whole
or in part, in whatever form.
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25
EXHIBIT C
SIMPLE END USER LICENSE AGREEMENT
This agreement grants a limited license to the Purchaser of Equipment ("END USER
LICENSEE") to use the object code (the "Licensed Program") embodied in the
following software or firmware (the "Designated Equipment") solely in connection
with the Designated Equipment listed. Installation and use of such Designated
Equipment constitutes END USER LICENSEE'S acceptance of the Terms and Conditions
contained herein.
1. DEFINITIONS
1.1 "Designated Equipment" shall refer to: [INSERT DESCRIPTION OF THE
DESIGNATED EQUIPMENT HERE].
1.2 "Use" shall mean the copying or duplication of any portion of a
Licensed Program from storage units or media into the equipment for
processing or the utilization of any Licensed Program in the course
of the operation of the Designated Equipment.
2. LICENSE GRANT
Use of Object Licensed Program with Designated Equipment. LICENSOR hereby
grants END USER LICENSEE a non-exclusive, non-transferable, except as
provided in Paragraph 5, license to Use in machine readable form (i.e.,
object form) the Licensed Program solely on the Designated Equipment. No
license is granted to Use any Licensed Program on any configuration of
equipment which is different from or less than the configuration indicated
in Paragraph 1.1.
3. PROPRIETARY RIGHTS
The Licensed Program is owned by LICENSOR and/or its licensors and is
proprietary in nature. END USER LICENSEE shall respect such proprietary
rights and shall not use such Licensed Program except for the purposes for
which it is being made available as set forth in this agreement and shall
not reproduce, print, sublicense, duplicate, reverse engineer, distribute,
disclose, or otherwise make the Licensed Program available to any third
party, in whole or in part, in whatever form. END USER LICENSEE shall take
all actions required to maintain control of the Licensed Program including
securing written records, agreements, and other reasonable measures with
its employees and agents to satisfy its obligations under this agreement.
4. LIMITATIONS
4.1. No Warranty. LICENSOR AND ITS LICENSORS MAKE NO WARRANTIES, EXPRESS
OR IMPLIED, INCLUDING WITHOUT LIMIATION, WARRANTIES OR
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE WITH REGARD TO
ANY LICENSED
26
PROGRAM OR RELATED MATERIALS TO BE FURNISHED TO END USER LICENSEE.
4.2. Limitations on Liability. In no event shall LICENOSR or its
licensors be liable for any indirect, special or consequential
damages in connection with or arising out of the existence,
furnishing, failure to furnish, failure to furnish, or use of any
Licensed Program and/or related material and/or device. LICENSOR and
its licensors shall have no liability for any claim of copyright or
patent infringement based in (i) Use of other than a current
unaltered release of the Licensed Program available from LICENSOR if
such infringement would have been avoided by the use of such current
unaltered release of the Licensed Program, or (ii) Use or
combination of the Licensed Program with programs not supplied by
LICENSOR and which Use or combination results in the infringement of
any patent or copyright.
5. TRANSFER OF LICENSE
This license may only be transferred in connection with the transfer of
all of the Designated Equipment; provided all copies of the Licensed
program are delivered to the transferee and no copies or related materials
are retained by END USER LICENSEE and provided further that the transferee
agrees to be bound by all the Terms and Conditions of this End User
License Agreement.
[Note: Also add any provisions required by Paragraphs 2.2 and 2.4 of the
Software License Agreement.]
27
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
EXHIBIT D
MAINTENANCE SERVICE
Maintenance Service with respect to Licensed Programs entitles LICENSEE to
receive Updates and Upgrades of the Licensed Programs, technical bulletins and
Documentation Updates as they become Public Releases. Maintenance Service also
entitles LICENSEE to receive telephone, FAX or e-mail technical support of
LICENSEE'S use of the Licensed Programs.
1. Error Corrections, TRILLIUM shall use reasonable efforts to correct any
documented reproducible program errors in a Source Form Licensed Program
within a reasonable time, and to use due diligence to rectify such errors
that have been notified in writing by LICENSEE; provided, however, that
such program errors have not been introduced through modifications made by
LICENSEE.
Such service, with respect to a given program error, will be provided
after TRILLIUM receives a request in writing from LICENSEE on TRILLIUM'S
form of Action Request as set forth in Exhibit E. TRILLIUM reserves the
right, from time to time, to modify the form utilized for this purpose as
may be reasonable and necessary and so shall notify LICENSEE in such
event.
If LICENSEE reports a program error to TRILLIUM, LICENSEE shall give
TRILLIUM reasonable access to the Designated Equipment, a copy of the
Licensed Program as being used by LICENSEE and all relevant Documentation
and records, and shall provide all reasonable assistance as TRILLIUM may
request, including without limitation sample output and other diagnostic
information to assist TRILLIUM in providing the Maintenance Service.
Three classes of program errors are provided for, and TRILLIUM shall
respond under this Agreement as follows:
1.1. CRITICAL. Program errors that cause software crashes, or similar
events. The maximum time from notification to initiation of TRILLIUM
response shall be [**].
1.2. MODERATE. Program errors that do not cause software crashes or for
which a work-around is possible. The maximum time from notification
to initiation of TRILLIUM response shall be less than [**].
1.3. NON-CRITICAL. Program Documentation errors. The maximum time from
notification to initiation of TRILLIUM response shall be less than
[**].
2. Product Update. For every error found by LICENSEE, and properly reported
to TRILLIUM, or found by TRILLIUM in a Source Form Licensed Program,
TRILLIUM will undertake to:
28
2.1. Incorporate an error correction in the next Public Release of that
specified Licensed Program which initially contained the error; and
2.2. Supply LICENSEE, subject to the applicable provisions of this
Agreement, the latest Public Release of the Licensed Program
containing such error correction no later than four (4) calendar
months after the program error has been reported to or by TRILLIUM.
3. PRODUCT UPGRADE. Should TRILLIUM make any Upgrade of a Licensed Program,
TRILLIUM will undertake to:
3.1. Inform LICENSEE of any such Upgrade; and
3.2. Supply LICENSEE, subject to the applicable provisions of this
Agreement, the latest Public Release of the Licensed Program
containing such Upgrade.
4. TRILLIUM'S SUPPORT TO LICENSEE EXCLUSIVELY. LICENSEE shall be solely
responsible for directly supporting and providing maintenance of all or
any part of the Licensed Programs and documentation as provided to
LICENSEE'S customers. TRILLIUM shall have no obligation to provide any
direct consultation or warranty or maintenance support to LICENSEE'S
customers with respect to all or any part of the Licensed Programs or
other subject matter of this Agreement.
5. LICENSE GRANTS TO UPDATES OR UPGRADES. Any rights and obligations of
LICENSEE as to Source Form and Object Form of the Licensed Programs and
Documentation shall extend to any Updates or Upgrades thereof upon
delivery thereof by TRILLIUM to LICENSEE. TRILLIUM shall have no
responsibility under this Agreement to correct any alleged error if
LICENSEE fails to incorporate any Update or Upgrade of a Licensed Program
that TRILLIUM has provided to LICENSEE.
6. LIMITATIONS. If TRILLIUM is requested, pursuant to the applicable
provisions of this Agreement, to correct an error and such error is found
to be caused by LICENSEE'S negligence, modification by LICENSEE, LICENSEE
supplied data, operator error or misuse, or any other cause not inherent
in the Source Form Licensed Programs, LICENSEE agrees to pay for such
support services on a time and material basis at TRILLIUM'S then
prevailing standard rates, as specified in Exhibit F, when invoiced by
TRILLIUM. Under no circumstances does TRILLIUM warrant or represent that
every error can or will be corrected.
29
EXHIBIT E
TRILLIUM ACTION REQUEST
Licensee Name:
------------------------------------------------------------------
Contact Name:
-------------------------------------------------------------------
Address:
------------------------------------------------------------------------
Phone: Fax:
-------------------------------------- -----------------------------
Best Time to Contact:
-----------------------------------------------------------
Date Problem Observed: Date Problem Reported:
---------------------- ------------
Requested Priority: Critical Moderate Non-critical
---------- ---------- ---------
Product Name:
-------------------------------------------------------------------
Product Part No.: Product Version:
-------------------------- ---------------------
Describe Configuration:
---------------------------------------------------------
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
Describe Problem:
---------------------------------------------------------------
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
Describe Attached Materials:
----------------------------------------------------
- --------------------------------------------------------------------------------
Date Received: Date Closed: Report Number:
------------- ---------------- ------------
30
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
EXHIBIT F
TRILLIUM STANDARD RATES
These rates are referenced in Paragraph 6 of Exhibit D to this Agreement.
1. TRILLIUM'S standard rates at the date of this Agreement are:
PERSONNEL CLASS HOURLY RATE
Principal $[**]
Senior MTS $[**]
MTS $[**]
Assoc. MTS $[**]
Technician $[**]
Clerical $[**]
MTS = Member of Technical Staff
2. PERSONNEL CLASS DEFINITIONS:
Clerical An employee who performs mainly non-professional,
clerical work (e.g., documentation, filing, shipping,
etc.)
Technician An employee involved in non-professional, technical
activities (e.g., setting up of test equipment, repair
submodules, assisting in debugging and testing, creating
test submodules, etc.)
Associate MTS Typically an employee with a professional degree (e.g.,
BS or MS) but minimal work experience, whose work
requires detailed supervision.
MTS Typically an employee with a professional degree and 1-4
years of work experience who is able to produce basic
software modules to specifications and test them
independently.
Senior MTS An MTS with at least five years experience who is
able to manage a complete project from inception to
completion with minimal management direction.
Principal A senior architect who participates in the design of the
overall Trillium software architecture, and has a full
visibility of the complete product line.
31
In addition to payment for personnel services, TRILLIUM will be reimbursed
for all reasonable expenses including, but not limited to: approved
travel, shipping, supplies and rental equipment.
These rates are subject to change at the sole option of Trillium.
32
Amendment No. 1 to Agreement dated 2/25/98
LICENSE AGREEMENT AMENDMENT
This License Agreement Amendment is entered into as of April 30, 1998 (the
"effective date"), by and between TRILLIUM DIGITAL SYSTEMS, INC., a California
corporation having its principal office at 12100 Wilshire Blvd., Suite 1800, Los
Angeles, California, USA 90025-7118 (hereinafter referred to as "TRILLIUM"), and
CASTLE NETWORKS INC, a Massachusetts corporation having its principal office at
235 Littleton Road #2, Westford, Massachusetts 01886 (hereinafter referred to as
"LICENSEE").
TRILLIUM and LICENSEE previously entered into that certain Software License
Agreement, dated as of February 25,1998 (the "License Agreement"), under which
TRILLIUM granted LICENSEE Single Use Buyout ("SUB") licenses for certain
TRILLIUM products and which is currently in effect between the parties. TRILLIUM
and LICENSEE now desire to modify certain terms of the License Agreement as
described below.
TRILLIUM and LICENSEE hereby amend the License Agreement as follows:
1. The parties hereby amend Paragraph 4.1 of the License Agreement in its
entirety to read as follows:
4.1 Acceptance. Each Licensed Program and the related
Documentation shall be deemed accepted by LICENSEE thirty (30)
days after, delivery (or sixty (60) days with respect to Part
Numbers 1000027(Option --), 1000028 (Option --), 1000028
(Option 12), 1000029 (Option --), 1000029 (Option 12), 1020031
(Option 21), 1000100 (Option --) and 1068001 (Option 01))
unless, within such period, LICENSEE delivers to TRILLIUM a
notice of rejection in accordance with this Paragraph 4.1. The
sole criterion for rejection of any Licensed Program or
related Documentation shall be its failure to conform in all
material respects to the specifications referenced in
paragraph 2 of Exhibit A or the requirements of Paragraph 3.2.
Any notice of rejection shall be valid only if (i) it is
delivered to TRILLIUM within such thirty (30) day period (or
sixty (60) day period with respect to Part Numbers
1000027(Option --), 1000028 (Option --), 1000028 (Option 12),
1000029 (Option --, 1000029 (Option 12), 1020031 (Option 21),
1000100 (Option --) and 1068001 (Option 01)) and (ii) it
specifies in reasonable detail each of the specifications to
which such Licensed Program fails to conform, or each
requirement to which such Documentation fails to conform, and
the basis for LICENSEE's assertion of nonconformance.
2. The parties hereby amend Paragraph 9.2 of the License Agreement in its
entirety to read as follows:
9.2 Confidential Information. For purposes of this Agreement,
"Confidential Information" of a party (the "Discloser") shall
mean any information which is disclosed to the other party
(the "Recipient") during the term of this Agreement that
relates in any way to any Licensed Program and which (i) is in
written,
-1-
33
Amendment No. 1 to Agreement dated 2/25/98
recorded, electronic, graphical or other tangible form and
marked confidential or with a similar legend or other notation
denoting the confidential nature of the information or
proprietary interest of the Discloser, or (ii) is disclosed
orally and is identified orally as confidential and/or
proprietary at the time of disclosure and is identified as
confidential or proprietary by the Discloser in a writing
delivered to the Recipient prior to or within thirty (30) days
after the time of disclosure; and "Confidential Information"
shall include all notes, memoranda, analyses, compilations,
studies, and other documents and records prepared by or for
the Recipient, which contain any Confidential Information.
TRILLIUM "Confidential Information" shall in all events
include but not be limited to the Licensed Programs,
Documentation and related materials and information.
Notwithstanding the foregoing, "Confidential Information"
shall not include any information which (a) is in the public
domain at the time of disclosure or becomes public domain
information other than through a breach of this Agreement, (b)
has been lawfully acquired by the Recipient from an Unrelated
Party, (c) is already in the Recipient's possession from an
Unrelated Party at the time of disclosure (as evidenced by the
Recipient's business records), or (d) is demonstrated by the
Recipient to have been independently developed by the
Recipient. For purposes hereof, the term "Unrelated Party"
shall mean a person who is not the Discloser, not an
affiliate, employee or agent of the Discloser, and not a
person known by the Recipient to be prohibited from disclosing
the Confidential Information to the Recipient by any
contractual, legal or fiduciary obligation.
3. The parties hereby amend Paragraph 10.1 of the License Agreement in its
entirety to read as follows:
10.1 Indemnity. TRILLIUM represents and warrants that it has the
sufficient right, title and interest in the Licensed Programs
to enter into this Agreement. TRILLIUM agrees, at its own
expense, to indemnify and defend LICENSEE and hold LICENSEE
harmless against any loss, suit, claim, liability, expense
(including without limitation reasonable attorney's fees) or
proceeding brought against LICENSEE alleging that any use of
the Licensed Programs as delivered by TRILLIUM infringes any
patent, copyright or trademark or any trade secrets of any
third parties, provided that LICENSEE (i) promptly notifies
TRILLIUM in writing of any such suit, claim or proceeding,
(ii) allows TRILLIUM at its expense, to direct the defense of
such suit, claim, or proceeding, (iii) gives TRILLIUM all
information and assistance TRILLIUM reasonably considers
useful to defend such suit, claim or proceeding, and (iv) does
not enter into any settlement of any such suit, claim or
proceeding without TRILLIUM written consent
-2-
34
Amendment No. 1 to Agreement dated 2/25/98
4. The parties hereby amend Paragraph 11 of the License Agreement in its
entirety to read as follows:
TRILLIUM's aggregate liability to LICENSEE and its sublicensees under,
arising out of or related to any provision of this Agreement, or at law
or in equity (including without limitation pursuant to any claim for
indemnification), or any transaction contemplated by this Agreement,
shall be limited to the amount of the license: fees actually paid by
LICENSEE to TRILLIUM under this Agreement. TRILLIUM's limitation of
liability is cumulative with all of TRILLIUM's payments to LICENSEE in
satisfaction of TRILLIUM's liabilities under this Agreement being
aggregated to determine satisfaction of the limit.
IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY INDIRECT, SPECIAL, OR
CONSEQUENTIAL DAMAGES IN CONNECTION WITH OR ARISING OUT OF THIS
AGREEMENT, WHETHER BASED ON BREACH OF CONTRACT, TORT (INCLUDING
NEGLIGENCE), PRODUCT LIABILITY, OR OTHERWISE, AND WHETHER OR NOT IT HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE.
5. The parties hereby amend Paragraph 12 of the License Agreement in its
entirety to read as follows:
LICENSEE shall indemnify and defend TRILLIUM and its affiliates and
hold them harmless from and against any loss, suit, claim, liability,
expense (including without limitation reasonable attorney's fees),
proceeding or damage to persons or property arising out of or related
to the use or possession of the Licensed Programs or any Documentation
or related materials by LICENSEE or any of its sublicensees, provided
that such loss, suit, claim, expense, proceeding or damage (I) is not
the subject of indemnity by TRILLUM under Paragraph 10.1 and only to
the extent (ii) that such loss, suit, claim expense, proceeding or
damage was not caused by the negligence of TRILLIUM or of TRILLUM
employees or representatives.
6 The parties hereby amend Paragraph 14 of the License Agreement in its
entirety to read as follows:
14. Assignments
The rights and obligations of LICENSEE under this Agreement
may not be assigned or delegated (by operation of law or
otherwise) by LICENSEE without the prior written consent of
TRILLIUM (which consent shall not be unreasonably withheld)
except for an assignment of this entire Agreement to an
affiliate of LICENSEE that does not compete directly with
TRILLIUM and only if such assignment is incident to a transfer
of the business that includes the Designated Equipment as
specified in Exhibit A, and in all cases, any assignment may
be made only upon thirty (30) days prior written notice to
TRILLLIUM and shall be effective only upon the execution by
the proposed assignee of an assignment agreement acceptable in
form and substance to TRILLIUM, which
-3-
35
shall include without limitation the proposed assignee's
assumption of and agreement to be bound by all of the terms
and conditions of this Agreement and all amendments thereto.
TRILLIUM'S rights and obligations under this Agreement may
with notice to the LICENSEE be assigned and/or delegated by
TRILLIUM to any affiliate of TRILLIUM or incident to the
transfer of the business of TRILLIUM to which this Agreement
relates. TRILLIUM may upon notice given at any time to
LICENSEE assign its rights to receive fees and other monies
hereunder. Subject to the limitations on assignment contained
in the foregoing provisions of this Paragraph, this Agreement
shall be binding upon and inure to the benefit of the
successors and assigns of the parties there.
7. General. All provisions of the License Agreement not specifically
modified by this Amendment remain in full force and effect.
IN WITNESS THEREOF, the parties hereto have caused this Amendment to be executed
by heir respective duly authorized representative as of the date first above
written.
Company: Castle Networks Trillium Digital Systems, Inc.
Signature: /s/ Michael D. Regan /s/ Richard O. Whalen
-------------------------- --------------------------
Name: Michael D. Regan Richard O. Whalen
-------------------------- --------------------------
Title: Director CEO
-------------------------- --------------------------
Date: April 24, 1998 April 30, 1998
-------------------------- --------------------------
-4-
36
Amendment No. 2 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities
and Exchange Commission. Asterisks denote omissions.
LICENSE AGREEMENT AMENDMENT
This License Agreement Amendment is entered into as of December 31, 1998 (the
"effective date"), by and between TRILLIUM DIGITAL SYSTEMS, INC., a California
corporation having its principal office at 12100 Wilshire Blvd., Suite 1800, Los
Angeles, California, USA 90025-7118 (hereinafter referred to as "TRILLIUM"), and
CASTLE NETWORKS INC., a Massachusetts corporation having its principal office at
68 Tadmuck Road, Westford, Massachusetts 01886 (hereinafter referred to as
"LICENSEE").
TRILLIUM and LICENSEE previously entered into that certain Software License
Agreement, dated as of February 25, 1998 (the "License Agreement"), under which
TRILLIUM granted LICENSEE Single Use Buyout ("SUB") licenses for certain
TRILLIUM products and which was amended by the first amendment thereto to modify
certain terms of the License Agreement. Such license is currently in effect
between the parties. TRILLIUM and LICENSEE now desire to add SUB licenses for
the additional TRILLIUM products to the License Agreement as described below.
TRILLIUM and LICENSEE hereby amend the License Agreement as follows:
1. By this amendment, the parties hereby add to the License Agreement the
additional TRILLIUM product described in Exhibit I of this Amendment,
subject to the payment of the additional license fees described in
Exhibit II of this Amendment. Exhibits I and II hereto shall be
incorporated into and amend Exhibits A and B, respectively, to the
License Agreement.
2. The parties hereby amend the definition of "Designated Equipment" in
Paragraph 4 of Exhibit A to the License Agreement, in its entirety, to
read as the new Paragraph 4 of Exhibit I attached herein.
3. The parties hereby amend Paragraph 5.4, in its entirety, to read as
follows:
5.4 Records. LICENSEE agrees to keep all usual and proper
records and books of accounts and all usual and
proper entries therein relating to sublicense of the
Licensed Programs hereunder. Upon reasonable notice,
TRILLIUM or its duly appointed representative shall
have the right to audit LICENSEE'S manufacturing and
shipment records related to the Licensed Programs for
any period of time at any time. These examinations
shall occur during normal business hours at
LICENSEE'S place of business and shall not occur more
frequently than two times per year. LICENSEE shall
have the right to remove customer-identifying
information from such records (such as customer names
and addresses) and all such records shall be
considered Confidential Information as defined in
Paragraph 9.
Page 1
37
Amendment No. 2 to Agreement dated 2/25/98
4. The parties hereby amend Paragraph 8.3, in its entirety, to read as
follows:
8.3 Preservation of Notices. TRILLIUM shall retain title
and copyrights to the Licensed Programs,
Documentation and related materials that are provided
by TRILLIUM to LICENSEE. The Source Form Licensed
Programs and Documentation contain copyright notices,
proprietary notices and restricted rights legends.
LICENSEE shall retain all such notices on all copies
thereof (whether full or partial), and LICENSEE
agrees to reproduce and include in all copies
(whether full or partial) of the Object Form Licensed
Programs all such notices and legends contained in
the Source Form Licensed Programs.
5. The parties hereby amend the address of LICENSEE in Paragraph 16 of the
License Agreement to be as follows until changed in accordance with the
provisions of that Paragraph:
LICENSEE: Castle Networks, Inc.
68 Tadmuck Road
Westford, MA 01886
Attn: Contract Administration
Facsimile No.: +1-978-392-9032
6. General. All provisions of the License Agreement not specifically
modified by this Amendment remain in full force and effect.
IN WITNESS THEREOF, the parties hereto have caused this Amendment to be executed
by their respective duly authorized representative as of the date first above
written.
LICENSEE: TRILLIUM:
Company: CASTLE NETWORKS, INC. TRILLIUM DIGITAL SYSTEMS, INC.
Signature: /s/ Michael D. Regan /s/ Richard O. Whalen
------------------------ -------------------------------
Name: Michael D. Regan Richard O. Whalen
------------------------ -------------------------------
Title: VP Engineering
------------------------ -------------------------------
Date: 12/31/98 December 31, 1998
------------------------ -------------------------------
Attachments: Exhibit I; Exhibit II
Page 2
38
Amendment No. 2 to Agreement dated 2/25/98
AMENDMENT EXHIBIT I
LICENSED PROGRAMS
- --------------------------------------------------------------------------------
Part No. Options Name Version Ship Date
- --------------------------------------------------------------------------------
1000133 -- Fault Tolerance/High Latest 1 Week ARO
Availability
- --------------------------------------------------------------------------------
1000145 -- PSF - MTP Level 3 (FT/HA) Latest 1 Week ARO
- --------------------------------------------------------------------------------
1000146 -- PSF - ISUP (FT/HA) Latest 1 Week ARO
- --------------------------------------------------------------------------------
4. LICENSEE'S "DESIGNATED EQUIPMENT":
LICENSEE'S C2100 Service Mediation Platform, a self-contained Public Switched
Telephone Network (PSTN) voice gateway product, which is a 23" proprietary NEBS
compliant chassis with multiple shelves and proprietary busses, running VxWorks
and using PowerPC and PowerQUICC processors however, LICENSEE may produce
versions of this product which vary only in their size and scaleability so long
as each version is substantially similar in functionality to the C2100 model.
Page 3
39
Amendment No. 2 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities
and Exchange Commission. Asterisks denote omissions.
AMENDMENT EXHIBIT II
LICENSE AND MAINTENANCE FEES
- ----------------------------------------------------------------------------------------------
Part No. Options Name License License Main- Training
Type Fee (1) tenance (Hours)
Fee
(Annual)
(2)
- ----------------------------------------------------------------------------------------------
1000133 -- Fault Tolerance/High SUB $[**] $[**] [**]
Availability
- ----------------------------------------------------------------------------------------------
1000145 -- PSF - MTP Level 3 (FT/HA) SUB $[**] $[**] [**]
- ----------------------------------------------------------------------------------------------
1000146 -- PSF - ISUP (FT/HA) SUB $[**] $[**] [**]
- ----------------------------------------------------------------------------------------------
(1) Total License Fees: $[**]
(2) Annual Maintenance Fees: $[**]
Page 4
40
Amendment No. 3 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities
and Exchange Commission. Asterisks denote omissions.
LICENSE AGREEMENT AMENDMENT
This License Agreement Amendment is entered into as of July 12, 1999 (the
"effective date"), by and between TRILLIUM DIGITAL SYSTEMS, INC., a California
corporation having its principal office at 12100 Wilshire Blvd., Suite 1800, Los
Angeles, California, USA 90025-7118 (hereinafter referred to as "TRILLIUM"), and
CASTLE NETWORKS INC., A WHOLLY-OWNED SUBSIDIARY OF SIEMENS AG, a Massachusetts
corporation having its principal office at 1 Executive Drive, Chelmsford,
Massachusetts 01824 and facsimile number +1-978-392-9632 (hereinafter referred
to as "LICENSEE").
TRILLIUM and LICENSEE previously entered into that certain Software License
Agreement, dated as of February 25, 1998 (the "License Agreement"), under which
TRILLIUM granted LICENSEE Single Use Buyout ("SUB") licenses for certain
TRILLIUM products and which was amended by the first amendment thereto to modify
certain terms of the License Agreement and, which was amended by a second
amendment thereto, dated December 31, 1998, to add SUB licenses for additional
TRILLIUM products and, which was amended by an. Such license is currently in
effect between the parties. TRILLIUM and LICENSEE now desire to add SUB licenses
for the additional TRILLIUM products to the License Agreement as described
below.
TRILLIUM and LICENSEE hereby amend the License Agreement as follows:
1. By this amendment, the parties hereby add to the License Agreement the
additional TRILLIUM product described in Exhibit I of this Amendment,
subject to the payment of the additional license fees described in
Exhibit II of this Amendment. Exhibits I and II hereto shall be
incorporated into and amend Exhibits A and B, respectively, to the
License Agreement.
2. The parties hereby amend the address of LICENSEE in Paragraph 16 of the
License Agreement to be as follows until changed in accordance with the
provisions of that Paragraph:
LICENSEE: Castle Networks, Inc., a wholly-owned subsidiary of
Siemens AG
1 Executive Drive
Chelmsford, MA 01824
Attn: Contract Administration
Facsimile No.: +1-978-392-9632
3. General. All provisions of the License Agreement not specifically
modified by this Amendment remain in full force and effect.
41
IN WITNESS THEREOF, the parties hereto have caused this Amendment to be executed
by their respective duly authorized representative as of the date first above
written.
LICENSEE: TRILLIUM:
Company: CASTLE NETWORKS, INC. TRILLIUM DIGITAL SYSTEMS, INC.
Signature: /s/ Michael D. Regan /s/ Martin Kovacich
----------------------- -----------------------------
Name: Michael D. Regan Martin Kovacich
Title: VP Engineering CFO
Date: 7/12/99 7/12/99
Attachments: Exhibit I; Exhibit II
42
Amendment No. 3 to Agreement dated 2/25/98
AMENDMENT EXHIBIT I
LICENSED PROGRAMS
- ----------------------------------------------------------------------------------------
Part No. Options Name Version Ship Date
- ----------------------------------------------------------------------------------------
1000030 01 SCCP - Connectionless-CCITT Latest 1 Week ARO
88 & 92
- ----------------------------------------------------------------------------------------
1000030 12 SCCP - ANSI 88 &92 Latest 1 Week ARO
- ----------------------------------------------------------------------------------------
1000031 -- TCAP - CCITT 88 & 92 Latest 1 Week ARO
- ----------------------------------------------------------------------------------------
1000031 12 TCAP - ANSI 88 & 92 Latest 1 Week ARO
- ----------------------------------------------------------------------------------------
1000093 01 INAP - Base Latest 1 Week ARO
- ----------------------------------------------------------------------------------------
1000093 15 INAP - AINGR - SSP Latest 1 Week ARO
- ----------------------------------------------------------------------------------------
1000093 16 INAP - AINGR - SCP Latest 1 Week ARO
- ----------------------------------------------------------------------------------------
1000093 17 INAP-IP Latest 1 Week ARO
- ----------------------------------------------------------------------------------------
1068003 01 MTSS-Windows NT Latest 1 Week ARO
Binary-User
Space
- ----------------------------------------------------------------------------------------
43
Amendment No. 3 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities
and Exchange Commission. Asterisks denote omissions.
AMENDMENT EXHIBIT II
LICENSE AND MAINTENANCE FEES
- -------------------------------------------------------------------------------------------------
Part No. Options Name License License Maintenance Training
Type Fee (1) Fee (Annual) (Hours)
(2)
- -------------------------------------------------------------------------------------------------
1000030 01 SCCP - Connectionless- SUB $[**] $[**] [**]
CCITT 88 & 92
- -------------------------------------------------------------------------------------------------
1000030 12 SCCP - ANSI 88 & 92 SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------
1000031 -- TCAP - CCITT 88 & 92 SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------
1000031 12 TCAP - ANSI 88 & 92 SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------
1000093 01 INAP - Base SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------
1000093 15 INAP - AINGR - SSP SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------
1000093 16 INAP - AINGR - SCP SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------
1000093 17 INAP-IP SUB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------
1068003 01 MTSS-Windows NT
Binary-User Space UNB $[**] $[**] [**]
- -------------------------------------------------------------------------------------------------
(1) License Fees: $[**]
One-time, 10% discount $([**])
TOTAL LICENSE FEES: $[**]
(2) Annual Maintenance Fees: $[**]
44
Amendment No. 4 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities
and Exchange Commission. Asterisks denote omissions.
LICENSE AGREEMENT AMENDMENT
This License Agreement Amendment is entered into as of July 28, 1999 (the
"effective date"), by and between TRILLIUM DIGITAL SYSTEMS, INC., a California
corporation having its principal office at 12100 Wilshire Blvd., Suite 1800, Los
Angeles, California, USA 90025-7118 (hereinafter referred to as "TRILLIUM"), and
CASTLE NETWORKS INC., a wholly-owned subsidiary of Siemens AG, a Massachusetts
corporation having its principal office at 1 Executive Drive, Chelmsford,
Massachusetts 01824 and facsimile number +1-978-392-9632 (hereinafter referred
to as "LICENSEE").
TRILLIUM and LICENSEE previously entered into that certain Software License
Agreement, dated as of February 25, 1998 (the "License Agreement"), under which
TRILLIUM granted LICENSEE Single Use Buyout ("SUB") licenses for certain
TRILLIUM products and which was amended by the first amendment thereto to modify
certain terms of the License Agreement and, which was amended by a second
amendment thereto, dated December 31, 1998, to add SUB licenses for additional
TRILLIUM products and, which was amended by a third amendment, dated July 12,
1999 to add SUB and UNB licenses for additional TRILLIUM products. Such license
is currently in effect between the parties. TRILLIUM and LICENSEE now desire to
add Temporary Development Use ("TDU") licenses for additional TRILLIUM products
to the License Agreement for Use on new Designated Equipment, as described
below.
TRILLIUM and LICENSEE hereby amend the License Agreement as follows:
1. By this amendment, the parties hereby add to the License Agreement the
additional TRILLIUM product described in Exhibit I of this Amendment
for Use on the certain Designated Equipment defined in Exhibit I,
subject to the payment of the additional license fees and other terms
described in Exhibit II of this Amendment. Exhibits I and II hereto
shall be incorporated into and amend Exhibits A and B, respectively, to
the License Agreement.
2. The parties hereby acknowledge and agree that the previously existing
Designated Equipment in the License Agreement shall henceforth be
referred to as "Designated Equipment Number 1" and, that Designated
Equipment No. 2 is defined and added to this Agreement as described in
Paragraph 4 of Exhibit I.
3. The parties hereby delete Paragraph 5.1.2. of the License Agreement
and, amend Paragraph 5.1.1. of the License Agreement, which shall
henceforth read as follows:
5.1.1 ** (**%) within thirty (30) days of delivery, as
described in Paragraph 3.1.
4. The parties hereby add Paragraph 8.5 to the License Agreement, which
shall read as follows:
45
Amendment No. 4 to Agreement dated 2/25/98
8.5 Publicity Rights. The parties agree to work together in good
faith to issue a public press release related to this
Agreement. Such press release shall be pre-approved by both
parties in writing. LICENSEE agrees to include TRILLIUM in any
published list of telecommunications protocol providers (if
and when such list is published), in its public website,
publications (including newsletters and trade journals), press
releases and the like and, LICENSEE agrees that TRILLIUM shall
have the right to publicize its relationship with LICENSEE,
and reference LICENSEE as a user of TRILLIUM products, in its
public website, publications (including newsletters and trade
journals), press releases and the like.
5. General. All provisions of the License Agreement not specifically
modified by this Amendment remain in full force and effect.
IN WITNESS THEREOF, the parties hereto have caused this Amendment to be executed
by their respective duly authorized representative as of the date first above
written.
LICENSEE: TRILLIUM:
Company: CASTLE NETWORKS, INC. TRILLIUM DIGITAL SYSTEMS, INC.
Signature: /s/ Michael D. Regan /s/ Martin Kovacich
----------------------- ---------------------------
Name: Michael D. Regan Martin Kovacich
----------------------- ---------------------------
Title: VP Engineering CFO
----------------------- ---------------------------
Date: 7/28/99 7/28/99
Attachments: Exhibit I; Exhibit II
-2-
46
Amendment No. 4 to Agreement dated 2/25/98
AMENDMENT EXHIBIT I
LICENSED PROGRAMS
- ---------------------------------------------------------------------------------------------
Part No. Options Name Version Ship Date
- ---------------------------------------------------------------------------------------------
1000172 -- H.323 Gateway and Gatekeeper Latest 1 Week ARO
- ---------------------------------------------------------------------------------------------
1000152 -- RTP/RTCP Latest 1 Week APR
(Scheduled for
August 28, 1999)
- ---------------------------------------------------------------------------------------------
1068001 02 MOS Binary - Sun C for Solaris 2.X Latest 1 Week ARO
- ---------------------------------------------------------------------------------------------
"APR" shall mean After Product Release
4. LICENSEE'S Designated Equipment:
DESIGNATED EQUIPMENT NO. 1:
For the TRILLIUM products licensed under the original Software License
Agreement, dated February 25, 1998 and the TRILLIUM products licensed under
Amendments No. 1, 2 and 3 thereto, the "Designated Equipment" shall be defined
as follows:
LICENSEE'S C2100 Service Mediation Platform, a self-contained Public Switched
Telephone Network (PSTN) voice gateway product, which is a 23" proprietary NEBS
compliant chassis with multiple shelves and proprietary busses, running VxWorks
and using PowerPC and PowerQUICC processors however, LICENSEE may produce
versions of this product which vary only in their size and scalability so long
as each version is substantially similar in functionality to the C2100 model.
DESIGNATED EQUIPMENT NO. 2:
For the TRILLIUM products referred to as Part Nos. 1000172 (Option --) and
1000152 (Option --), and licensed under Amendment No. 4 to the License
Agreement, dated July 28, 1999, the "Designated Equipment" shall be defined as
follows:
LICENSEE'S Media Gateway controller (O/S, processor, bus, form factor, model
number and model names shall be identified in writing prior to commercialization
of this product).
-3-
47
Amendment No. 4 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities
and Exchange Commission. Asterisks denote omissions.
AMENDMENT EXHIBIT II
LICENSE AND MAINTENANCE FEES
DESIGNATED EQUIPMENT NO. 2:
- -------------------------------------------------------------------------------------------------------
Part No. Options Name License License Fee Maintenance Training
Type (1) Fee (Hours)
- -------------------------------------------------------------------------------------------------------
1000172 -- H.323 Gateway and Gatekeeper TDU $[**]* $[**] [**]
- -------------------------------------------------------------------------------------------------------
1000152 -- RTP/RTCP TDU $[**]* $[**] [**]
- -------------------------------------------------------------------------------------------------------
1068001 02 MOS Binary - Sun C for UNB $[**] [**] [**]
Solaris 2.X
- -------------------------------------------------------------------------------------------------------
* Notwithstanding anything to the contrary in this agreement, the parties agree
that the terms and pricing granted to LICENSEE under this Amendment shall be
considered Confidential Information and shall otherwise not be disclosed to any
third party without the express written permission of TRILLIUM.
(1) Licensee Fees: $[**]
One-time [**]% promotional discount on ($[**])
Part No. 1000172/-
TOTAL LICENSE FEES: $[**]
---------------------------------------------------
(2) Annual Maintenance Fees: $[**]
3. LICENSE TYPE DEFINITIONS:
Temporary Development Use ("IDU") - Temporary (short-term) license granted per
terms of this Agreement to Use Source Form for the specific term set forth in
the Software License Agreement but does not grant any right to sublicense copies
of Object Form with the Designated Equipment as specified in Exhibit A. Up to
two (2) copies of the Object Form may be created and Used in LICENSEE's
facilities for test purposes. There is a one time fee with no per Object Form
royalty due.
CONVERSION AND EXPIRATION OF TDU LICENSES UNDER THIS AMENDMENT.
The TDU licenses granted under this amendment shall expire on September 26, 1999
("Expiration Date") unless the parties otherwise 1) mutually agree in writing to
extend the term
-4-
48
Confidential Materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote omissions.
Amendment No. 4 to Agreement dated 2/25/98
of such licenses or, 2) LICENSEE and TRILLIUM have entered into a commercial
royalty-fee bearing license which converts the TDU License Type from TDU to
Royalty ("ROY"). LICENSEE shall receive a [**]% credit of the TDU fees payable
under this agreement towards the applicable Technology Access Fees payable under
a ROY License Type, if the conversion of the TDU licenses occurs prior to the
Expiration Date however, such credit shall be reduced by 10% for each month or
fraction thereof that the TDU licenses are extended or not otherwise converted
by LICENSEE.
-5-
49
Amendment No. 5 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities and Exchange
Commission. Asterisks denote omissions.
LICENSE AGREEMENT AMENDMENT
This License Agreement Amendment is entered into as of September 10, 1999 (the
"effective date"), by and between TRILLIUM DIGITAL SYSTEMS, INC., a California
corporation having its principal office at 12100 Wilshire Blvd., Suite 1800, Los
Angeles, California, USA 90025-7118 (hereinafter referred to as "TRILLIUM"), and
CASTLE NETWORKS INC., A WHOLLY-OWNED SUBSIDIARY OF SIEMENS AG, a Massachusetts
corporation having its principal office at 1 Executive Drive, Chelmsford,
Massachusetts, USA 01824 and facsimile number +1-978-392-9632 (hereinafter
referred to as "LICENSEE").
TRILLIUM and LICENSEE previously entered into that certain Software License
Agreement dated as of February 25, 1998, under which TRILLIUM granted LICENSEE
Single Use Buyout ("SUB") licenses for certain TRILLIUM products, which was
amended by a first amendment thereto, dated as of April 30,1998, to modify
certain terms of the Software License Agreement, and which was amended by a
second amendment thereto, dated as of December 31, 1998, to add SUB licenses for
additional TRILLIUM products, and which was amended by a third amendment
thereto, dated as of July 12, 1999, to add SUB and UNB licenses for additional
TRILLIUM products, and which was amended by a fourth amendment thereto, dated as
of July 28, 1999, to add Temporary Development Use ("TDU") licenses for
additional TRILLIUM products for Use on a new Designated Equipment. Such
Software License Agreement, as amended, is currently in effect between the
parties ("License Agreement"). LICENSEE now desires to acquire an additional SUB
license for an additional TRILLIUM product as described below.
TRILLIUM and LICENSEE hereby amend the License Agreement as follows:
1. By this amendment ("Amendment"), the parties hereby add to the License
Agreement the additional TRILLIUM product described in Exhibit I of
this Amendment for Use on the certain Designated Equipment defined in
Exhibit I, subject to the payment of the additional license fees and
other terms described in Exhibit II of this Amendment. Exhibits I and
II hereto shall be incorporated into and amend Exhibits A and B,
respectively, to the License Agreement.
2. The parties hereby amend Paragraph 4 of Exhibit A to the License
Agreement in its entirety to read as set forth on the new Paragraph 4
of Exhibit I attached hereto.
3. General. All provisions of the License Agreement not specifically
modified by this Amendment remain in full force and effect.
1
50
Amendment No. 5 to Agreement dated 2/25/98
IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be executed
by their respective duly authorized representative as of the date first above
written.
LICENSEE: TRILLIUM:
Company: CASTLE NETWORKS, INC. TRILLIUM DIGITAL SYSTEMS, INC.
Signature: /s/ Michael D. Regan /s/ Martin [illegible]
------------------------- ------------------------------
Name: Michael D. Regan Martin [illegible]
------------------------- ------------------------------
Title: VP Engineering V.P. Finance & Administration
------------------------- ------------------------------
Date: 9/22/99 9/22/99
------------------------- ------------------------------
Attachments: Exhibit I; Exhibit II
2
51
Amendment No. 5 to Agreement dated 2/25/98
AMENDMENT EXHIBIT I
LICENSED PROGRAMS
- --------------------------------------------------------------------------------
Part No. Options Name Version Ship Date
- --------------------------------------------------------------------------------
Multi-threaded System
1000138 -- Services - Solaris Latest 1 Week ARO
- --------------------------------------------------------------------------------
4. LICENSEE'S DESIGNATED EQUIPMENT:
DESIGNATED EQUIPMENT NO. 1:
For the TRILLIUM products referred to as Part Nos. 1000027 (Option --), 1000028
(Options -- and 12), 1000029 (Options -- and 12), 1020031 (Option 21), 1000100
(Option --) and 1068001 (Option 01), licensed under the original Software
License Agreement dated as of February 25, 1998, and the TRILLIUM products
referred to as Part Nos. 1000133 (Option --), 1000145 (Option --) and 1000146
(Option --), licensed under Amendment No. 2 to the License Agreement dated as of
December 31, 1998, and the TRILLIUM products referred to as Part Nos. 1000030
(Options 01 and 12), 1000031 (Options -- and 12), 1000093 (Options 01, 15, 16
and 17) and 1068003 (Option 01), licensed under Amendment No. 3 to the License
Agreement dated as of July 12, 1999, the "Designated Equipment" shall be defined
as follows:
LICENSEE'S C2100 Service Mediation Platform, A self-contained Public
Switched Telephone Network (PSTN) voice gateway product, which is a 23"
proprietary NEBS compliant chassis with multiple shelves and proprietary
busses, running VxWorks and using PowerPC and PowerQUICC processors
however, LICENSEE may produce versions of this product which vary only
in their size and scaleability so long as each version is substantially
similar in functionality to the C2100 model.
DESIGNATED EQUIPMENT NO. 2:
For the TRILLIUM products referred to as Part Nos. 1000172 (Option --) and
1000152 (Option --), licensed under Amendment No. 4 to the License Agreement
dated as of July 28, 1999, and the TRILLIUM product referred to as Part No.
1000138 (Option --), licensed under Amendment No. 5 to the License Agreement
dated as of September 10, 1999, the "Designated Equipment" shall be defined as
follows:
LICENSEE'S Media Gateway controller (O/S, processor, bus, form factor,
model number and model names shall be identified in writing prior to
commercialization of this product).
3
52
Amendment No. 5 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities and
Exchange Commission. Asterisks denote omissions.
AMENDMENT EXHIBIT II
LICENSE AND MAINTENANCE FEES
- -----------------------------------------------------------------------------------------------
Maintenance
Part No. Options Name License License Fee (2) Training
Type Fee (1) (Annual) (Hours)
- -----------------------------------------------------------------------------------------------
Multi-threaded System
1000138 -- Services - Solaris SUB $[**] $[**] [**]
- -----------------------------------------------------------------------------------------------
(1) License Fees: $[**]
(2) Annual Maintenance Fees: $[**]
Total Current Fees Due: $[**]
4
53
Amendment No. 6 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities and
Exchange Commission. Asterisks denote omissions.
LICENSE AGREEMENT AMENDMENT
This License Agreement Amendment is entered into as of February 11, 2000 (the
"effective date"), by and between TRILLIUM DIGITAL SYSTEMS, INC., a California
corporation having its principal office at 12100 Wilshire Blvd., Suite 1800, Los
Angeles, California, USA 90025-7118 (hereinafter referred to as "TRILLIUM"), and
UNISPHERE SOLUTIONS, INC., A WHOLLY-OWNED SUBSIDIARY OF SIEMENS AG, a Delaware
corporation having its principal office at 1 Executive Drive, Chelmsford,
Massachusetts, USA 01824 and facsimile number +1-978-392-9632 (hereinafter
referred to as "LICENSEE").
TRILLIUM and CASTLE NETWORKS, INC. ("CASTLE") previously entered into that
certain Software License Agreement dated as of February 25, 1998, under which
TRILLIUM granted LICENSEE Single Use Buyout ("SUB") licenses and an Unsupported
Binary ("UNB") license for certain TRILLIUM products, which was amended by a
first amendment thereto, dated as of April 30, 1998, to modify certain terms of
the Software License Agreement, and which was amended by a second amendment
thereto, dated as of December 31, 1998, to add SUB licenses for additional
TRILLIUM products and to modify the definition of Designated Equipment. Such
Software License Agreement, as amended, was assigned by CASTLE to CASTLE
NETWORKS, INC., A WHOLLY OWNED SUBSIDIARY OF SIEMENS AG "CASTLE/SIEMENS") via an
Assignment and Assumption of Software License Agreement dated as of April 7,
1999. Thereafter, the Software License Agreement was amended by a third
amendment thereto, dated as of July 12, 1999, to add SUB and UNB licenses for
additional TRILLIUM products, and was amended by a fourth amendment thereto,
dated as of July 28, 1999, to add Temporary Development Use ("TDU") and UNB
licenses for additional TRILLIUM products for Use on a new Designated Equipment,
and was amended by a fifth amendment thereto, dated as of September 10, 1999, to
add a SUB license for an additional TRILLIUM product. Such Software License
Agreement, as amended, is currently in effect between the parties (the "License
Agreement"). Effective as of April 12, 1999, CASTLE/SIEMENS was acquired by
LICENSEE. The parties now wish to formalize the assignment of the License
Agreement from CASTLE/SIEMENS to LICENSEE, to modify certain terms of the
License Agreement, and to convert one of the previously acquired TDU licenses to
a Royalty ("ROY") license as described below.
TRILLIUM and LICENSEE hereby amend the License Agreement as follows:
1. LICENSEE and TRILLIUM hereby acknowledge and agree that all of
CASTLE/SIEMENS' right, title and interest in and to the License
Agreement are assigned, transferred, conveyed and set over unto
LICENSEE, and that LICENSEE hereby assumes and agrees to pay and
perform and be bound by all of the duties and obligations of
CASTLE/SLEMENS under the License Agreement, and TRILLIUM hereby
consents to such assignment and assumption. LICENSEE'S representative
executing this amendment ("Amendment") has the authority and does
execute this Amendment on behalf of CASTLE/SIEMENS.
Page 1
54
Amendment No. 6 to Agreement dated 2/25/98
2. By this Amendment, the parties hereby agree that, with respect to the
TRILLIUM product described in Exhibit I of this Amendment, and subject
to the payment of the additional license fees described in Exhibit II
of this Amendment, the "License Type" is hereby converted to a ROY
license within the meaning and subject to the terms and conditions of
the License Agreement. Exhibits I and II hereto shall be incorporated
into and amend Exhibits A and B, respectively, to the License
Agreement.
3. LICENSEE represents, warrants and certifies that LICENSEE and/or its
predecessor in interest returned and/or destroyed the original and all
reproductions of the Licensed Program referred to as Part No. 1000152
(--) and all Documentation and materials related thereto, licensed
under Amendment No. 4 to the License Agreement dated as of July 28,
1999. Accordingly, all rights and payment obligations of LICENSEE with
respect to such Licensed Program and Documentation and materials
related thereto are hereby terminated.
4. The parties hereby amend Paragraph 4 of Exhibit A to the License
Agreement in its entirety to read as set forth on the new Paragraph 4
of Exhibit I attached hereto.
5. The parties hereby amend Paragraphs 2.2. and 7.2. of the License
Agreement to read as follows:
2.2. Right to Grant Sublicenses. If the license type specified in
Exhibit B attached hereto ("Exhibit B") is a Single Use Buyout
("SUB") license or Royalty ("ROY") license, then TRILLIUM
hereby grants LICENSEE for the term of this Agreement a
non-exclusive, non-assignable right to grant, and to grant
others (including distributors of the Designated Equipment)
the right to grant, non exclusive, non-assignable, sublicenses
to Use the Object Form on the Designated Equipment, provided
that such sublicensees are bound by terms and conditions that
are as protective of TRILLIUM's rights as the terms and
conditions of this Agreement, including without limitation
those terms and conditions set forth in Exhibit C attached
hereto (or, in the case of agreements with distributors, terms
and conditions as protective of TRILLIUM's rights as the terms
and conditions of this Agreement). Notwithstanding anything to
the contrary contained elsewhere in this Agreement, no other
type of license, if any, granted hereby entitles LICENSEE to
grant any sublicense.
7.2. Period of Maintenance Service. If the License Type for any
Licensed Program in Exhibit B is identified as a ROY license,
LICENSEE shall purchase Maintenance Service for such Licensed
Program for one (1) LICENSEE site in relation to one (1) type
of Designated Equipment for the first year following the end
of the warranty period specified in clause (i) of Paragraph
6.1 for the fees specified in Exhibit B, and shall continue
Maintenance Service for so long as LICENSEE continues to
sublicense the Object Form of any such Licensed Program. The
minimum period for which LICENSEE may purchase Maintenance
Service is one (1) year for one (1) site in relation to one
(1) type of Designated Equipment. Maintenance Service periods
greater than one (1) year are available in one (1) year
increments. The rates shown in Exhibit B cover Maintenance
Service for the
Page 2
55
Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
Amendment No. 6 to Agreement dated 2/25/98
Licensed Program for one (1) LICENSEE site for one (1) type of
Designated Equipment for the first year following the end of
the warranty period specified in clause (i) of Paragraph 6.1.
Maintenance Service for more than one (1) site, or in relation
to additional types of Designated Equipment, will be provided
only upon terms and conditions to be agreed upon by TRILLIUM
and LICENSEE. If there is, at any time, more than one Licensed
Program under this Agreement and LICENSEE desires to purchase
Maintenance Service for any of the Licensed Programs, TRILLIUM
reserves the right to require LICENSEE to purchase Maintenance
Service for all Licensed Programs which are variants of one
another or are otherwise related to one another as a condition
to purchasing Maintenance Service for any of such variant or
otherwise related Licensed Programs.
6. The parties hereby add Paragraphs 5.6., 5.7. and 5.8. to the License
Agreement, which shall read as follows:
5.6. Royalty Fees. If the License Type for any Licensed Program in
Exhibit B is identified as a Royalty ("ROY") license, in
addition to the Technology Access Fees described in Exhibit B,
LICENSEE shall pay TRILLIUM on a ** basis, in connection
with the sublicense, shipment or Use of the Object Form of any
Licensed Program (when included in, or distributed with, the
Designated Equipment) to an end user of LICENSEE (whether
directly from LICENSEE or through a distributor, reseller or
otherwise) royalty fees ("Royalty Fees") in the amount and on
the basis ("Royalty Basis") specified in Exhibit B. Royalty
Fees shall accrue upon the date of shipment of LICENSEE's
Designated Equipment to any third party or upon any commercial
use thereof (including without limitation any Use other than
the development and testing of the Designated Equipment itself
regardless of whether such Use is the result of any commercial
sale, trade, in-kind or other transfer from LICENSEE's place
of business).
5.7. Reports. If the License Type for any Licensed Program in
Exhibit B is identified as a ROY license, on a **
basis during the Term (commencing with the calendar quarter in
which delivery of the Object Form of such Licensed Program
first occurs), LICENSEE shall provide to TRILLIUM a report
containing the type of information described in Exhibit E to
this Agreement, including the number of all copies of the
Object Form of any Licensed Program sublicensed by LICENSEE
and/or its distributors or resellers (or others acting under
its or their authority) during the preceding ** period,
to which a copy was sublicensed during such ** period.
Such reports shall detail each configuration of Designated
Equipment and the number of microprocessors present or used
with an Object Form on a given type of Designated Equipment.
Such reports shall be delivered to TRILLIUM within thirty (30)
days after the last day of each calendar quarter.
5.8. Payment. Coincident with the ** report as provided
under Paragraph 5.1.4., LICENSEE shall pay to TRILLIUM the
amount of Royalty Fees due to TRILLIUM as shown by such
report. TRILLIUM's acceptance of any Royalty
Page 3
56
Amendment No. 6 to Agreement dated 2/25/98
Fees shall not preclude TRILLIUM from later disputing the
amount of Royalty Fees owed.
7. General. All provisions of the License Agreement not specifically
modified by this Amendment remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be executed
by their respective duly authorized representative as of the date first above
written.
LICENSEE: TRILLIUM:
Company: UNISPHERE SOLUTIONS, INC. TRILLIUM DIGITAL SYSTEMS, INC.
Signature: /s/ Michael D. Regan /s/ Martin [Illegible]
-------------------------- -----------------------------
Name: Michael D. Regan Martin [illegible]
Title: V.P. Engineering V.P. Finance & Administration
Date: 2/11/00 2/23/00
Attachments: Exhibit I
Exhibit II
Page 4
57
Amendment No. 6 to Agreement dated 2/25/98
AMENDMENT EXHIBIT I
LICENSED PROGRAMS
- --------------------------------------------------------------------------------
Part No. Options Name Version Ship Date
- --------------------------------------------------------------------------------
1000172 -- H.323 Gateway Latest Previously delivered
and Gatekeeper and accepted
- --------------------------------------------------------------------------------
4. LICENSEE'S DESIGNATED EQUIPMENT:
DESIGNATED EQUIPMENT NO. 1:
For the TRILLIUM products referred to as Part Nos. 1000027 (Option --), 1000028
(Options --and 12), 1000029 (Options -- and 12), 1020031 (Option 21), 1000100
(Option --) and 1068001 (Option 01), licensed under the original Software
License Agreement dated as of February 25, 1998, and the TRILLIUM products
referred to as Part Nos. 1000133 (Option --), 1000145 (Option --) and 1000146
(Option --), licensed under Amendment No. 2 to the License Agreement dated as of
December 31, 1998, and the TRILLIUM products referred to as Part Nos. 1000030
(Options 01 and 12), 1000031 (Options-- and 12), 1000093 (Options 01, 15, 16 and
17) and 1068003 (Option 01), licensed under Amendment No. 3 to the License
Agreement dated as of July 12, 1999, the "Designated Equipment" shall be defined
as follows:
LICENSEE'S SMX-2100 Service Mediation Platform, a self-contained Public
Switched Telephone Network (PSTN) voice gateway product, which is a 23"
proprietary NEBS compliant chassis with multiple shelves and
proprietary busses, running VxWorks and using PowerPC and PowerQUICC
processors however, LICENSEE may produce versions of this product which
vary only in their size and scaleability so long as each version is
substantially similar in functionality to the SMX-2100 model.
DESIGNATED EQUIPMENT NO. 2:
For the TRILLIUM products referred to as Part Nos. 1000172 (Option --) and
1068001 (Option 02), licensed under Amendment No. 4 to the License Agreement
dated as of July 28, 1999, and the TRILLIUM product referred to as Part No.
1000138 (Option --), licensed under Amendment No. 5 to the License Agreement
dated as of September 10, 1999, the "Designated Equipment" shall be defined as
follows:
LICENSEE'S SRX-3000 Media Gateway Controller running on a Sun
Microsystems Netra workstation using the Sun Solaris operating system,
when sold in conjunction with any of LICENSEE's five (5) SRX-HS call
metric software products.
Page 5
58
Amendment No. 6 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities
and Exchange Commission. Asterisks denote omissions.
AMENDMENT EXHIBIT II
1a. TECHNOLOGY ACCESS, ROYALTY AND MAINTENANCE FEES:
ROYALTY FEE TABLE
- -----------------------------------------------------------------------------------------------------------------------------
Maintenance
Part No. Opt Description License Technology Royalty Fee per each Simultaneous Fee Training
Type Access Fee Multimedia Call (Annual) Hours
----------------------------------------------
Capacity Capacity Capacity Capacity
of 1 to of of of
100,000 100,001 200,001 400,001
calls to to + calls
200,000 400,000
calls calls
- -----------------------------------------------------------------------------------------------------------------------------
1000172 -- H.323 ROY $[**] $[**] $[**] $[**] $[**] $[**] Previously
Gateway per call per call per call per call received
and
Gatekeeper
- -----------------------------------------------------------------------------------------------------------------------------
License/Technology Access Fees: $[**]
Less 30% discount (offered under Amendment No. 4): $([**])
Less amount previously paid towards TDU being converted: $([**])
TOTAL LICENSE FEES: $[**]
TOTAL MAINTENANCE FEES: $[**]
TOTAL CURRENT FEES: $[**]
* Note that the conversion of the license from TDU to ROY is not effective until
payment in full is received by TRILLIUM.
ROYALTY BASIS: For purposes of determining the Royalty Fees owed, each
simultaneous multimedia IP call that can be supported by a unit of the
Designated Equipment that contains, runs or is supported by the Object Form of
any Licensed Program shall be counted. The number of simultaneous multimedia
calls supported by the Designated Equipment is the maximum number of multimedia
calls that may be supported at any one time. For example, a unit of the
Designated Equipment sold in conjunction with LICENSEE's SRX-HS-2K call metric
software
Page 6
59
Amendment No. 6 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities
and Exchange Commission. Asterisks denote omissions.
product will support media gateways to a maximum of 2,000 simultaneous
multimedia calls. If the 2001st multimedia IP call is attempted, there is a busy
signal. In this case, there would be 2000 simultaneous calls capable of being
supported by the Designated Equipment and therefore the royalty fees for 2000
calls would be due, not 2001.
It is agreed that for purposes of the above, the call capacity of LICENSEE's
SRX-HS call metric software products shall be no less than:
SRX-HS-2K 2000 simultaneous multimedia calls
SRX-HS-10K 10,000 simultaneous multimedia calls
SRX-HS-50K 50,000 simultaneous multimedia calls
SRX-HS-100K 100,000 simultaneous multimedia calls
SRX-HS-500K 500,000 simultaneous multimedia calls
In the event LICENSEE enables the end-user of the Designated Equipment to expand
the capacity of the Designated Equipment by increasing the number of
simultaneous multimedia calls capable of being supported by such Designated
Equipment, the Royalty Fees for such additional calls shall be due and payable
immediately at such time that LICENSEE enables the end-user to utilize the
additional capacity.
- - The Royalty Fees and breakpoints for the Designated Equipment have been
established based upon the definitions of the Designated Equipment and related
representations provided by LICENSEE to TRILLIUM and are intended to be
non-retroactive in the sense that once a new Royalty Fee threshold is achieved
by Object Form sublicenses, it shall only apply to additional sales beyond such
breakpoint and not to previous sales. For example, if the number of simultaneous
multimedia calls supported by units of the Designated Equipment shipped by
LICENSEE amounts to 150,000, LICENSEE shall owe TRILLIUM $[**] each for the
first 100,000 simultaneous multimedia calls and $[**] each for the remaining
50,000 simultaneous multimedia calls. For purposes of determining the applicable
royalty rate, the parties shall consider the number of simultaneous multimedia
calls over the lifetime of the Designated Equipment (i.e., the counter is not
reset each year).
LICENSEE represents that it is capable of tracking and reporting the number of
simultaneous multimedia calls that can be supported by each unit of the
Designated Equipment.
3. LICENSE TYPE DEFINITIONS:
Royalty ("ROY") - License granted per terms of this Agreement to Use
Source Form and sublicense an unlimited number of copies of the Object
Form on the Designated Equipment as specified in Exhibit A. There is a
one-time Technology Access Fee and a Per Object Form Royalty Fee due
for each sublicensed copy of the Object Form, the amount of which is
set forth in Exhibit B and which is payable as set forth in Paragraph
5.1 of this Agreement.
page 7
60
Amendment No. 7 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities
and Exchange Commission. Asterisks denote omissions.
LICENSE AGREEMENT AMENDMENT
This License Agreement Amendment is entered into as of March 20, 2000 (the
"effective date"), by and between TRILLIUM DIGITAL SYSTEMS, INC., a California
corporation having its principal office at 12100 Wilshire Blvd., Suite 1800, Los
Angeles, California, USA 90025-7118 (hereinafter referred to as "TRILLIUM"), and
UNISPHERE SOLUTIONS, INC., A WHOLLY-OWNED SUBSIDIARY OF SIEMENS AG, a Delaware,
corporation having its principal office at 1 Executive Drive, Chelmsford,
Massachusetts, USA 01824 and facsimile number +1-978-392-9632 (hereinafter
referred to as "LICENSEE").
TRILLIUM and CASTLE NETWORKS, INC. ("CASTLE") previously entered into that
certain Software License Agreement dated as of February 25,1998, under which
TRILLIUM granted LICENSEE Single Use Buyout ("SUB") licenses and an Unsupported
Binary ("UNB") license for certain TRILLIUM products, which was amended by a
first amendment thereto, dated as of April 30, 1998, to modify certain terms of
the Software License Agreement, and which was amended by a second amendment
thereto, dated as of December 31, 1998, to add SUB licenses for additional
TRILLIUM products and to modify the definition of Designated Equipment. Such
Software License Agreement, as amended, was assigned by CASTLE to CASTLE
NETWORKS, INC., A WHOLLY-OWNED SUBSIDIARY OF SIEMENS AG ("CASTLE/SIEMENS") via
an Assignment and Assumption of Software License Agreement dated as of April 7,
1999. Thereafter, the Software License Agreement was amended by a third
amendment thereto, dated as of July 12, 1999, to add SUB and UNB licenses for
additional TRILLIUM products, and was amended by a fourth amendment thereto,
dated as of July 28, 1999, to add Temporary Development Use ("TDU") and UNB
licenses for additional TRILLIUM products for Use on a new Designated Equipment,
and was amended by a fifth amendment thereto, dated as of September 10, 1999, to
add a SUB license for an additional TRILLIUM product, and was amended by a sixth
amendment thereto, dated as of February 11, 2000, to formalize the assignment of
the License Agreement from CASTLE/SIEMENS to LICENSEE, to modify certain terms
of the License Agreement, and to convert one of the previously acquired TDU
licenses to a Royalty ("ROY") license. Such Software License Agreement as
amended, is currently in effect between the parties (the "License Agreement").
LICENSEE now desires to acquire additional SUB licenses for additional TRILLIUM
products, as set forth below.
TRILLIUM and LICENSEE hereby amend the License Agreement as follows:
1. By this amendment, the parties hereby add to the License Agreement the
additional TRILLIUM products described in Exhibit I of this Amendment
for Use on the certain Designated Equipment defined in Exhibit I,
subject to the payment of the additional license fees and other terms
described in Exhibit II of this Amendment. Exhibits I and II hereto
shall be incorporated into and amend Exhibits A and B, respectively, to
the License Agreement.
1
61
Amendment No. 7 to Agreement dated 2/25/98
2. General. All provisions of the License Agreement not specifically
modified by this Amendment remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be executed
by their respective duly authorized representative as of the date first above
written.
LICENSEE: TRILLIUM:
Company: UNISPHERE SOLUTIONS, INC. TRILLIUM DIGITAL SYSTEMS, INC.
Signature: /s/ Michael D. Regan Illegible
-------------------------- --------------------------------
Name: Michael D. Regan Illegible
-------------------------- --------------------------------
Title: VP Engineering Illegible
-------------------------- --------------------------------
Date: 3/21/00 March 27, 2000
-------------------------- --------------------------------
Attachments: Exhibit I
Exhibit II
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62
Amendment No. 7 to Agreement dated 2/25/98
AMENDMENT EXHIBIT I
LICENSED PROGRAMS
- ----------------------------------------------------------------------------------------
Part No. Options Name Version Ship Date
- ----------------------------------------------------------------------------------------
1000144 - PSF - Q.930/Q.931 (FT/HA) Latest 1 Week ARO
- ----------------------------------------------------------------------------------------
1000009 02 Q.930/Q.931 - CCITT 88, Latest 1 Week ARO
Network Side (PRI/BRI)
- ----------------------------------------------------------------------------------------
1000009 11 Q.930/Q.931 -AT&T 4ESS Latest 1 Week ARO
(User Side - PRI, Network
Side - PRI) & 5ESS (User
Side - PRI/BRI, Network Side
- PRI/BRI)
- ----------------------------------------------------------------------------------------
1000009 12 Q.930/Q.931 - Northern Latest 1 Week ARO
Telecom DMS-1-- (User & Network
Side - PRI/BRI)
- ----------------------------------------------------------------------------------------
1000009 28 Q.930/Q.931 -National Latest 1 Week ARO
ISDN-2 (User & Network
Side - PRI)
- ----------------------------------------------------------------------------------------
4. LICENSEE's DESIGNATED EQUIPMENT:
DESIGNATED EQUIPMENT NO. 1:
For the TRILLIUM products referred to as Part Nos. 1000027 (Option --), 1000028
(Options -- and 12), 1000029 (Options -- and 12), 1020031 (Option 2 1), 1000100
(Option --) and 1068001 (Option 01), licensed under the original Software
License Agreement dated as of February 25, 1998, and the TRILLIUM products
referred to as Part Nos. 1000133 (Option --), 1000145 (Option --) and 1000146
(Option --), licensed under Amendment No. 2 to the License Agreement dated as of
December 31, 1998, and the TRILLIUM products referred to as Part Nos. 1000030
(Options 01 and 12), 1000031 (Options -- and 12),1000093 (Options 01, 15, 16 and
17) and 1068003 (Option 01), licensed under Amendment No. 3 to the License
Agreement dated as of July 12, 1999, the "Designated Equipment" shall be defined
as follows:
LICENSEE's SMX-2100 Service Mediation Platform, a self-contained Public
Switched Telephone Network (PSTN) voice gateway product, which is a 23"
proprietary NEBS compliant chassis with multiple shelves and
proprietary busses, running VxWorks and using PowerPC and PowerQUICC
processors however, LICENSEE may produce versions of this product which
vary only in their size and scaleability so long as each version is
substantially similar in functionality to the SMX-2100 model.
3
63
Amendment No. 7 to Agreement dated 2/25/98
DESIGNATED EQUIPMENT NO. 2:
For the TRILLIUM products referred to as Part Nos. 1000172 (Option --) and
1068001 (Option 02), licensed under Amendment No. 4 to the License Agreement
dated as of July 28, 1999, and the TRILLIUM product referred to as Part No.
1000138 (Option --), licensed under Amendment No. 5 to the License Agreement
dated as of September 10, 1999, and the TRILLIUM products referred to as Part
Nos. 1000144 (Option --), 1000009 (Option 02), 1000009 (Option 11), 1000009
(Option 12), and 1000009 (Option 28), licensed under Amendment No. 7 to the
License Agreement dated as of March 20, 2000, the "Designated Equipment" shall
be defined as follows:
LICENSEE's SRX-3000 Media Gateway Controller running on a Sun
Microsystems Netra workstation using the Sun Solaris operating system,
when sold in conjunction with any of LICENSEE'S five (5) SRX-HS call
metric software products.
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64
Amendment No. 7 to Agreement dated 2/25/98
Confidential Materials omitted and filed with the Securities
and Exchange Commission. Asterisks denote omissions.
AMENDMENT EXHIBIT II
LICENSE AND MAINTENANCE FEES
- -----------------------------------------------------------------------------------------------------------
Part No. Options Name License License Maintenance Training
Type Fee (1) Fee (Annual) (Hours)
(2)
- -----------------------------------------------------------------------------------------------------------
1000144 -- PSF - Q.930/Q.931 SUB $[**] $[**] [**]
(FT/HA)
- -----------------------------------------------------------------------------------------------------------
1000009 02 Q.930/Q.931 - CCITT SUB $[**] $[**] [**]
88, Network Side
(PRI/BRI)
- -----------------------------------------------------------------------------------------------------------
1000009 11 Q.930/Q.931 - AT&T 4ESS (User SUB $[**] $[**] [**]
Side - PRI, Network Side - PRI)
& 5ESS (User Side - PRI/BRI,
Network Side - PRI/BRI)
- -----------------------------------------------------------------------------------------------------------
1000009 12 Q.930/Q.931 - Northern Telecom SUB $[**] $[**] [**]
DMS-1 -- (User
& Network Side -
PRI/BRI)
- -----------------------------------------------------------------------------------------------------------
1000009 28 Q.930/Q.931 - National ISDN-2 SUB $[**] $[**] [**]
(User & Network Side - PRI)
- -----------------------------------------------------------------------------------------------------------
(1) License Fees: $[**]
(2) Annual Maintenance Fees: $[**]
Total Current Fees Due: $[**]
5
65
ASSIGNMENT AND ASSUMPTION OF
SOFTWARE LICENSE AGREEMENT
This Assignment and Assumption of Software License Agreement (this "Assignment
and Assumption") is entered into as of the 7th day of April, 1999 (the
"effective date"), by and between CASTLE NETWORKS INC., a Massachusetts
corporation having its principal office at 68 Tadmuck Road, Westford,
Massachusetts 01886 ("ASSIGNOR") and facsimile number +1-978-392-9032 and,
CASTLE NETWORKS, INC., A WHOLLY-OWNED SUBSIDIARY OF SIEMENS AG, a corporation
organized under the Federal laws of Germany (hereinafter referred to as
"ASSIGNEE"), having its principal office at Hofmannstrasse 51, 81359
Munchen, Federal Republic of Germany and facsimile number +49-89-722-33792.
WHEREAS, ASSIGNOR and TRILLIUM Digital Systems, Inc., a California corporation
having its principal office at 12100 Wilshire Blvd., Suite 1800, Los Angeles,
California 90025, USA, and facsimile number +1-310-442-9222 (hereinafter
referred to as "TRILLIUM") previously entered into that certain Software License
Agreement, dated February 25, 1998, which was amended by a first amendment
thereto, dated April 30, 1998 to modify terms and conditions and, which was
further amended by a second amendment thereto, dated December 31, 1998 to add
Single Use Buyout ("SUB") licenses and to modify the definition of Designated
Equipment. Such agreement is hereinafter referred to as the "License Agreement",
and is currently in effect between ASSIGNOR, as "LICENSEE" thereunder, and
TRILLIUM, under which ASSIGNOR has licensed a specified use of certain computer
software programs and related documentation (i.e., the "Licensed Programs") from
TRILLIUM, all as specified in the License Agreement;
WHEREAS, ASSIGNOR now desires to assign all of its rights and delegate all of
its duties under the License Agreement with respect to the Use of the Licensed
Programs to ASSIGNEE, and ASSIGNEE desires to receive such assignment of rights
and, in consideration therefor, ASSIGNEE is willing to assume all duties of
ASSIGNOR under the License Agreement with respect to the Use of the Licensed
Programs, all on the terms and conditions hereinafter set forth;
NOW, THEREFORE, for good and valuable consideration, the receipt and adequacy of
which are hereby acknowledged, the parties hereby agree as follows:
1. Subject to the receipt of TRILLIUM'S consent hereto, as evidenced by
TRILLIUM'S signature hereunder, and ASSIGNEE'S payment to TRILLIUM of
the fees identified in Exhibit I to this Agreement, ASSIGNOR hereby
assigns, transfers, conveys and sets over unto ASSIGNEE, and its
successors and assigns, all of ASSIGNOR'S right, title and interest in
and to the License Agreement, as it relates to the Use of the Licensed
Programs, for the express benefit of both ASSIGNOR and TRILLIUM,
ASSIGNEE hereby assumes and agrees to pay and perform and be bound by
all of the duties and obligations of ASSIGNOR under the License
Agreement as they relate to the Use of the Licensed Programs.
-1-
66
2. ASSIGNOR represents and warrants to ASSIGNEE and TRILLIUM that the
License Agreement is valid and binding and is in full force and effect
and has not been assigned, transferred, conveyed, pledged or encumbered
in any way by ASSIGNOR, and the parties agree that nothing contained
herein constitutes a release by TRILLIUM of ASSIGNOR or ASSIGNEE from
any duties, obligations or liabilities with respect to performance by
any "LICENSEE" under the License Agreement or otherwise.
3. From and after the effective date hereof, the address of the "LICENSEE"
and "TRILLIUM" under the License Agreement, for purposes of notices
given hereunder shall be the following address (until such address may
be changed as provided in the License Agreement):
LICENSEE: Castle Networks, Inc., a wholly-owned subsidiary of
Siemens AG
68 Tadmuck Road
Westford, MA 01886
Attn: Mike Regan
Facsimile number (978) 392-9032
TRILLIUM: Trillium Digital Systems, Inc.
12100 Wilshire Blvd, Suite 1800
Los Angeles, CA 90025
Attn: Contracts Administration
Facsimile No.: 1-310-442-1162
4. ASSIGNOR and ASSIGNEE hereby acknowledge and agree that the definition
of Designated Equipment in Paragraph 4 of Exhibit A shall remain
defined as follows:
LICENSEE'S C2100 Service Mediation Platform, a self-contained Public
Switched Telephone Network (PSTN) voice gateway product, which is a 23"
proprietary NEBS compliant chassis with multiple shelves and
proprietary busses, running VxWorks and using PowerPC and PowerQUICC
processors however, LICENSEE may produce versions of this product which
vary only in their size and scaleability so long as each version is
substantially similar in functionality to the C2100 model.
5. ASSIGNOR and ASSIGNEE hereby agree, for the express benefit of each
other and TRILLIUM, to execute and deliver all documents and to perform
all further acts and to take any and all further steps that may be
requested by each other or TRILLIUM as reasonably necessary to
effectuate the purpose of this Assignment and Assumption.
6. This Assignment and Assumption or any amendment hereto may be executed
in several counterparts and, as executed, shall constitute one
agreement binding on all the parties hereto, notwithstanding that all
of the parties are not signatory to the original or the same
counterpart.
7. All provisions of the License Agreement, which are not specifically
modified by this Assignment and Assumption shall remain in full force
and effect.
-2-
67
IN WITNESS WHEREOF, the parties hereto have caused this Assignment and
Assumption to be duly executed by their respective duly authorized
representative as of the effective date hereof.
ASSIGNOR: ASSIGNEE:
Company: Castle Networks, Inc. Castle Networks, Inc.,
a wholly-owned subsidiary
of Siemens AG
Signature: /s/ Thomas M. Burkardt /s/ Thomas M. Burkardt
------------------------ ----------------------
Name: Thomas M. Burkardt Thomas M. Burkardt
------------------------ ----------------------
Title: President and CEO President and CEO
------------------------ ----------------------
Date: March 11, 1999 March 11, 1999
Attachment: Exhibit I
-3-
68
TRILLIUM CONSENT TO
ASSIGNMENT AND ASSUMPTION OF
SOFTWARE LICENSE AGREEMENT
TRILLIUM does hereby consent to the foregoing assignment of rights and
delegation of duties under the License Agreement on the terms and conditions set
forth above. This consent shall not be deemed to be a consent to any
transactions other than those described above on the terms and conditions set
forth above or an agreement to consent to any similar or other transaction in
the future, and no provision of this consent shall be deemed to alter or modify
any term or condition of the License Agreement.
IN WITNESS WHEREOF, TRILLIUM has caused this Consent to Assignment and
Assumption of Software License Agreement to be duly executed by its duly
authorized representative as of the effective date thereof.
Company: TRILLIUM DIGITAL SYSTEMS, INC.
Signature: /s/ Richard D. Cabalan
-----------------------------
Name: Richard D. Cabalan
-----------------------------
Title C.O.O
-----------------------------
Date: March 16, 1999
-4-