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EXHIBIT 10.28
ENGINEERING SERVICES AGREEMENT NO. 20-03-003
THIS AGREEMENT made as of the 2nd day of October, 2000 by and between Unisphere
Networks Inc., a corporation incorporated under the laws of Delaware, with its
principal office located at One Executive Drive, Chelmsford, MA 08124
(hereinafter called "USI") and Siemens Information and Communication Networks,
Inc., a corporation incorporated under the laws of Delaware, with its principal
office located at 900 Broken Sound Parkway, Boca Raton, Florida, United States
of America 33487 (hereinafter called "Siemens"). Collectively, the
aforementioned participants to this Agreement shall be called the "Parties", or
singularly, as the "Party".
WHEREAS, USI desires to enter into a time and material contract for engineering
services (hereinafter called "Services"); and
WHEREAS, Siemens desires to provide such Services on a time and material basis;
NOW THEREFORE, in consideration of the mutual promises contained herein and
other valuable consideration, the receipt and adequacy of which is hereby
acknowledged, the Parties agree as follows:
ARTICLE 1 - PROJECTS
1.1 This Agreement covers the prices for time and material development
Services anticipated for two (2) projects:
1.1.1 "LOCAL NUMBER PORTABILITY" (LNP), a software feature enhancement; and
1.1.2 "DIGITAL TONE MODULE VERSION 1 (DTM1)", an application module for the
USI SMX-2100 product, comprised of hardware and embedded software
supporting Channel Associated Signaling and echo cancellation.
1.2 Siemens shall follow the development procedures as directed by USI.
Such procedures shall be provided to Siemens prior to the acceptance
and commencement of any project hereunder. When no procedures exist,
Siemens personnel will use Siemens procedures where appropriate or will
use sound engineering judgement to identify an appropriate course of
action.
1.3 Siemens furnished personnel for performance of Services shall be
subject to Siemens' direction and control.
1.4 Siemens will provide, at no additional cost to USI, appropriate office
and lab facilities at Siemens' facilities to house and support Siemens'
personnel performing the Services.
1.5 USI shall provide all necessary hardware and software development
tools, documentation, training, SMX-2100 switches, personal computers,
test equipment, and emulation equipment.
USI shall provide timely technical support to Siemens personnel for the
projects. Any materials and/or equipment furnished by USI shall be
deemed bailed to Siemens, and title thereto shall at all times remain
in USI.
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1.6 This technical support shall include training, dependent hardware and
software designs, periodic design reviews, software configuration
management, and maintenance for USI development tools and processes.
All support, tools, equipment or information delivered by USI is
provided "AS IS", with no warranty whatsoever.
1.7 Upon the earlier of USI's request or completion of the projects under
this Agreement, Siemens will return all USI supplied capital equipment,
documentation, software, etc, to USI at USI's expense.
1.8 The delivery schedule for the LNP project will be determined through
ongoing discussions between the responsible engineering managers.
Regardless of content, Siemens' commitment for engineering services
will not extend beyond April 30, 2000.
1.9 The delivery schedule for the DTM1 project will be determined through
ongoing discussions between the responsible engineering managers.
Regardless of content, Siemens' commitment for engineering services
will not extend beyond July 31, 2000. The electronic mail message
entitled "DTM1 Schedules and Deliverables", dated March 29, 2000, sent
by Brad Bridges (responsible engineering manager at Siemens) to Steve
Converse (responsible engineering manager at USI) documents the most
recent content and delivery schedule agreement. The final content of
the DTM1 project will be determined between the parties prior to July
31, 2000.
1.10 Siemens may agree to provide technical support for the products
delivered under this Agreement under terms and conditions to be
mutually agreed and set forth in a separate agreement to be executed
between the parties.
1.11 Delivery of software under the projects shall include both source and
object code, and shall include the final version and all intermediate
versions along with all data, codes or other information generated by
Siemens under this Agreement or necessary for use by USI to exercise
its rights hereunder, including without limitation all routines and
subroutines, program materials, flowcharts, notes, outlines, formulae,
processes, algorithms and ideas.
ARTICLE 2 - TIME AND MATERIAL PRICES
2.1 During the term of this Agreement, Siemens will provide USI Services at
a rate of $77.95 per Staff-hour, which shall be fixed for the term of
this Agreement. "Staff-hour" shall mean an hour of engineering labor.
2.2 At no time shall Siemens charge uncompensated overtime to USI.
2.3 Siemens will provide a monthly Staff-hour ramp to USI, which shall be
utilized as an estimate for the current month. Siemens will keep
written records and make reports about work performed, as may be
reasonably requested by USI. Upon termination or expiration of this
Agreement, Siemens will deliver to USI, at its request, all such
records. Thereafter Siemens will make no further use or utilization of
any such material without the prior written consent of USI, except as
required by law or generally accepted accounting and record principles.
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2.4 During the term of this Agreement Siemens staff years to be billed
shall not exceed eighteen (18). The number of staff years anticipated
to complete the projects has been estimated by Siemens, and has been
the basic consideration under which this Agreement has been entered
into by the parties. The electronic mail messages entitled "DTM1
Estimates", dated "June 28, 1999" sent from Brad Bridges (Siemens) to
Mike Regan (USI), and "RE: DTM1 Support/Needs", dated "June 29, 1999"
from Mike Regan (USI) to Brad Bridges (Siemens) document the basic
considerations for the DTM1 project. The basic considerations for the
LNP project have been determined through verbal discussions between
Siemens and USI engineering management. Any additional staff year
requirements must have prior approval of USI. Siemens shall have no
obligation to provide Services in excess of 18 staff years. Should
Siemens agree to provide Services over the 18 staff years, such
Services shall be provided only on a time and material basis. Siemens
also shall have no obligation to provide a minimum of 18 staff years of
service. The final delivery content and schedule for the projects will
determine the actual staff year effort expended.
Siemens enters into this Agreement as, and shall continue to be, an
independent contractor. Under no circumstances shall Siemens look to
USI as Contractor's employer, nor as a partner, agent, or principal.
Siemens shall not be entitled to any benefits accorded to USI' s
employees including, without limitation, workers compensation,
disability insurance, vacation or sick pay or the right to participate
in the USI 401(k) Retirement Savings Plan or Employee Stock Purchase
Plan. Siemens specifically waives the right to receive any such
benefits or participate in any such plans for the term of this
Agreement or while the parties agree that Siemens is providing services
to USI as a contractor, even if Siemens later becomes or is designated
an employee of USI.
2.5 The price of any materials used in the performance of or delivered
under this Agreement shall be the cost of the materials to Siemens plus
a fee of five percent (5%) of such material cost.
ARTICLE 3 - PAYMENT TERMS
3.1 Siemens shall invoice on a monthly basis. Such invoice will include the
number of hours worked per individual per week and all other reasonable
information to support the amount billed.
3.2 USI shall pay each undisputed invoice within thirty (30) days of
receipt thereof. USI shall have seven (7) business days from date of
receipt of invoice to dispute any charges after which time such charges
will be understood as accepted.
3.3 Any additional charges such as travel and materials utilized by Siemens
as a result of this Agreement shall be billed separately to USI. All
such charges shall be approved in advance by USI and paid within thirty
(30) days of receipt of invoice.
3.4 USI will pay for all travel and travel expenses required of Siemens
staff during this Agreement. Travel must be approved in advance by USI.
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3.5 USI will pay for all other incidental costs incurred by Siemens staff
which are directly related to and necessary for the completion of the
projects. Expenses in excess of $1,000 must be approved in advance.
Expenses are to be submitted directly to USI on a form to be mutually
agreed.
ARTICLE 4 - INTELLECTUAL PROPERTY RIGHTS
4.1 USI shall own all intellectual property and inventions created in the
process of performing work under this Agreement. Subject to the limited
grant-back provisions set forth in Section 4.2 below, Siemens hereby
irrevocably assigns to USI all right, title and interest in and to all
ideas, inventions, discoveries, improvements and other know-how or
rights that are discovered, developed, created or conceived by Siemens
in performing its work under this Agreement, and all intellectual
property rights therein, including without limitation any and all
copyrights, patent rights or trade secrets (hereinafter collectively
"Intellectual Property").
4.2 USI hereby grants to Siemens a fully paid-up, royalty-free,
non-exclusive, worldwide, irrevocable license to use, make, have made
and sell and sublicense Intellectual Property associated with LNP and
Intellectual Property associated with the following aspects of the
DTM1:
(i) the Echo Cancellation Daughtercard; and
(ii) all application and control software developed by Siemens
for the DTM1 MPC8260 processor; and
(iii) all application and control software developed by Siemens for
the DTM1 Digital Signal Processor(s) (Section 4.2 collectively
hereinafter the "Grantback License").
4.3 The Grantback License is expressly subject to the following
exclusions, conditions and limitations:
(i) USI grants no rights to any third party software, hardware or
technology pursuant to the Grantback License, and Siemens agrees that
if any third party rights or licenses are required in order to enable
Siemens to exploit the Grantback License, Siemens shall be solely
responsible for securing such rights or licenses directly with the
applicable third party(ies); and
(ii) Notwithstanding anything which may be construed to the contrary in
this Agreement, in no event shall the Grantback License confer upon
Siemens any right, title or interest in or to the SMX-2100 hardware or
software, the NMC-SMX (Sentry) Element Management System hardware or
software, or any intellectual property rights therein.
4.4 Siemens agrees, at USI's expense, to assist in the preparation and
prosecution of any patent or copyright application and to execute and
cause its employees to execute all applications for patents and/or
copyrights, domestic and foreign, assignment and other papers necessary
to secure and enforce rights related to work performed under this
Agreement. Siemens agrees to obtain or has obtained written assurances
from its employees and
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contract personnel of their agreement to the terms hereof. If Siemens
delivers products or designs containing intellectual property owned by
Siemens and not created during the performance of this Agreement,
Siemens hereby grants USI a fully-paid, royalty-free, non-exclusive,
worldwide, irrevocable license to use and to sublicense such
intellectual property for use only in the LNP and DTM1 products. USI
shall continue to retain all rights in any intellectual property it
provided to Siemens to perform the work under this Agreement and
Siemens does not acquire any rights in such intellectual property.
ARTICLE 5 - CONFIDENTIAL INFORMATION
5.1 Each Party shall maintain the confidentiality of the other Party's
confidential information and shall not, without the other Party's prior
written consent, (a) use such confidential information in any manner
not authorized under this agreement, or (b) disclose any such
confidential information in any form to any person, except to its
employees whose access is necessary in connection with the performance
of this Agreement. "Confidential Information" means any business or
technical information of either Party, that (a) is provided to the
other Party in connection with this Agreement, (b) concerns the Party's
business, methods, plans, designs, procedures, systems operations, or
technology, research, marketing, sales, customer or financial data, and
(c) has been identified in writing as being proprietary to a Party or
marked "proprietary" or "confidential" or, if disclosed orally, is
confirmed subsequently in writing to be confidential or proprietary.
Confidential Information does not include any information that is or
becomes publicly disclosed by a Party or lawfully by a non-party to
this Agreement or which is disclosed pursuant to legal process provided
that prompt notice is provided to the disclosing party so as to enable
the disclosing party to seek relief from the disclosure.
5.2 Siemens shall use USI supplied hardware, software and supporting
documentation only for the purpose of developing the products described
in this agreement. Unless otherwise mutually agreed as set forth in a
written modification to this Agreement signed by both parties, USI does
NOT grant rights for any other use.
ARTICLE 6 - WARRANTIES AND DISCLAIMER
6.1 With the exception of willful misconduct, or negligent assembly or
design, all deliverables under this Agreement will be delivered "AS IS"
without warranty of any kind. Siemens' sole obligation and USI's sole
remedy in the event of breach of this warranty shall be the replacement
or repair of defective hardware and the redesign in accordance with
standard design procedures of the affected software. SIEMENS
SPECIFICALLY DISCLAIMS ALL EXPRESS OR IMPLIED WARRANTIES, INCLUDING THE
WARRANTIES OF MERCHANTABILITY, FITNESS FOR ANY PARTICULAR PURPOSE, AND
FREEDOM FROM PATENT AND COPYRIGHT INFRINGEMENT.
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ARTICLE 7 - INDEMNIFICATION
7.1 Siemens agrees, at its expense, to defend USI in any suit, claim or
proceeding brought against USI alleging that any equipment manufactured
by Siemens or software or design created by Siemens and furnished
hereunder directly infringes any U.S. Letters Patent, copyright or
other intellectual property rights, provided Siemens is promptly
notified, given assistance required, and permitted to direct the
defense. Siemens agrees to pay any judgment based on infringement
rendered in such suit by final judgment of a court of last resort, but
Siemens shall have no liability for settlements or costs incurred
without its consent. In addition, and by way of limitation, should the
use of any such equipment or software by USI be enjoined, Siemens' only
obligation is to refund to USI the price paid for the infringing item
or design as complete damages for the loss of future use of the
infringing item or design. The foregoing states the entire liability of
Siemens for patent or copyright infringement or for any breach of
warranty of noninfringement, express or implied. The foregoing
indemnity shall not apply and USI agrees to indemnify Siemens in a
manner fully equivalent to the foregoing in any suit, claim or
proceeding brought against Siemens in which and to the extent the
alleged infringement arises from equipment, software, data or design
made to the specification or design of USI or from the modification of
the equipment, software, data or design by anyone other than Siemens or
the combination of any equipment or software purchased pursuant to this
contract with products or software supplied by USI or others.
ARTICLE 8 - LIMITATION OF LIABILITY
8.1 Each party's entire liability arising out of or in connection with this
Agreement, regardless of the form of action, whether based on contract
or tort, including negligence, including, without limitation the
furnishing, the failure to furnish or the quality of any Service, shall
in no event exceed the amount paid by USI under this Agreement. The
foregoing limitation of liability shall not apply to loss, damages or
liabilities arising out of Sections 5 or 7.1 above.
8.2 IN NO EVENT WILL EITHER PARTY BE LIABLE FOR DAMAGES HEREUNDER IN
RESPECT OF SPECIAL, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL LOSS, (EVEN
IF IT HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH LOSS) INCLUDING, BUT
NOT LIMITED TO, LOST BUSINESS REVENUE, LOSS OF PROFITS, LOSS OF DATA,
FAILURE TO REALIZE EXPECTED PROFITS OR SAVINGS OR ANY CLAIM AGAINST
CUSTOMER BY ANY OTHER PERSON.
ARTICLE 9 - NOTICES
9.1 Any notices or demands that are required by law or under the terms of
this Agreement shall be given or made by a Party in writing and shall
be given by hand delivery, facsimile or similar communication, or by
certified or registered mail, and addressed to the respective Party set
forth below. Such notices shall be deemed to have been given in the
case of facsimile or similar communications when delivered, and in the
case of certified or registered mail, five (5) days after the date when
mailed postage prepaid.
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To USI: Unisphere Networks, Inc
One Executive Drive
Chelmsford, MA 01824
Attention: Michael Regan, Vice President of Engineering
To Siemens: Siemens Information and Communication Networks, Inc.
900 Broken Sound Parkway
Boca Raton, Florida 33487
Attention: Manager of Contracts
The above addresses may be changed at any time by giving thirty (30) days
prior written notice.
ARTICLE 10 - AGREEMENT TERM
10.1 The term of this Agreement shall commence July 1, 1999 and end July 31,
2000. Siemens and USI may, subject to Article 13.1, extend the content
and duration of the noted projects or extend this Agreement for
additional projects, under terms and conditions to be mutually agreed.
ARTICLE 11 - ASSIGNMENT
11.1 Neither party shall assign or otherwise transfer its rights or
obligations under this Agreement except with prior written consent of
the other Party, such consent not to be unreasonably withheld;
provided, however, either Party may assign this Agreement to any
present or future affiliate, subsidiary, parent corporation or
successor in interest to substantially all of the business assets
without securing the consent of the other Party and may grant to any
such assignee the same rights and privileges granted under this
Agreement. Any attempted assignment not assented to in the manner as
prescribed herein shall be void.
ARTICLE 12 - CHOICE OF LAW
12.1 The laws of the Commonwealth of Massachusetts excluding its Choice of
Law rules shall govern this Agreement.
ARTICLE 13 - ENTIRE AGREEMENT
13.1 This Agreement constitutes the entire agreement between the Parties
with respect to the subject matter contained herein, superseding all
previous agreements pertaining to such subject matter, and may be
modified only by an amendment executed in writing by both Parties.
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IN WITNESS WHEREOF, the Parties have executed this Agreement by their duly
authorized representatives as of the day first above written.
UNISPHERE NETWORKS INC. SIEMENS INFORMATION AND
COMMUNICATION NETWORKS, INC.
By: /s/ Michael D. Regan By: /s/ Dieter Diehn
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Michael D. Regan
Vice President Engineering
Agreement No. 20-03-003