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EXHIBIT 10.8
LICENSE AGREEMENT
BETWEEN
AWARE, INC.
AND
WESTELL, INC.
This Agreement is made and entered into this 5th day of September 1994,
(the "Effective Date") by and between Aware, Inc. (hereinafter referred to as
"AWARE") a corporation duly organized under the laws of the Commonwealth of
Massachusetts with offices at One Memorial Drive, Cambridge MA and Westell, Inc.
(hereinafter referred to as "WESTELL") a corporation duly organized under the
laws of Illinois, with offices at 75 Executive Drive, Aurora, IL 60504
(hereinafter referred to as "LICENSEE" or "WESTELL").
WITNESSETH
WHEREAS, AWARE is the owner of certain rights, title and interest in the
PROGRAM (as later defined herein) and the TRADEMARK (as later defined herein)
and has the right to grant licenses thereunder;
WHEREAS, WESTELL desires to obtain a license to sell hardware incorporating
the PROGRAM, and
WHEREAS, WESTELL and AWARE have entered into a separate DEVELOPMENT
AGREEMENT, a copy of which is attached here to as Appendix A and incorporated
herein.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
1 - DEFINITIONS
For the purposes of this Agreement, the following words and phrases shall
have the following meanings;
1.1 "PROGRAM(s)" shall mean the software developed by AWARE (and all
associated documentation) pursuant to the DEVELOPMENT AGREEMENT.
1.2 "LICENSED PRODUCT(s)" shall mean any product(s) that incorporate the
PROGRAM(s) or any part thereof.
1.3 "COPYRIGHT(s)" shall mean AWARE's copyrights in the PROGRAM(s).
1.4 "INTELLECTUAL PROPERTY RIGHTS" shall mean any and all rights associated
with the PROGRAMS including the COPYRIGHTS and any rights associated with the
TRADEMARKS.
1.5 "TERRITORY" shall mean the world.
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1.6 "TRADEMARK(s)" shall mean the AWARE trademark(s).
1.7 Asymmetric Digital Subscriber Line (ADSL) transceiver systems shall
mean devices that are capable of transmitting and receiving high speed data over
copper telephone lines.
1.8 "FIELD OF USE" shall mean Asymmetric Digital Subscriber Line
transceivers.
1.9 "GROSS PROFIT" shall mean the Gross Sales price of the LICENSED
PRODUCTS less discounts, less direct labor, less labor overhead, less direct
material and less material overhead costs. All such costs and discounts to be
calculated in conformity with generally accepted accounting principles.
2 - GRANT
2.1 AWARE hereby grants to WESTELL an exclusive license for one year and
two weeks from Milestone 4 as described in Paragraph 4 of the Development
Contract and a perpetual non-exclusive license thereafter to the INTELLECTUAL
PROPERTY RIGHTS in the TERRITORY to:
a. make, use, sell, have made and distribute LICENSED PRODUCT(s)
b. use, at WESTELL's option the TRADEMARK in conjunction with the
manufacture, use, sale and distribution of the LICENSED
PRODUCT(s), and
c. use and reproduce the PROGRAM(s) in conjunction with (a) and
(b) above.
2.2 The license granted hereunder shall not be construed to confer any
rights upon LICENSEE by implication, estoppel or otherwise, as to any
intellectual property not specifically included in COPYRIGHT(s).
3 - ROYALTIES
3.1 For the rights, privileges and license granted hereunder, WESTELL shall
pay a license fee and royalties to AWARE in the manner herinafter provided to
the end of the term of the COPYRIGHT(s) or until this Agreement shall be
terminated:
a. [redact]
3.2 Royalty payments shall be paid in United States dollars in Cambridge,
Massachusetts, or at such other place as AWARE may reasonably designate. If any
currency conversion shall be required in connection with the payment of
royalties hereunder, such
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conversion shall be made by using the exchange rate prevailing at the Chase
Manhattan Bank (N.A.) on the last business day of the calendar quarterly
reporting period to which such royalty payments relate.
a. [redact]
4 - AWARE REPRESENTATIONS AND WARRANTIES
4.1 AWARE represents and warrants that it shall be the legal owner of the
PROGRAMS and all COPYRIGHTS associated therewith.
4.2 AWARE represents and warrants that the INTELLECTUAL PROPERTY RIGHTS
shall not be subject to any liens, claims or entitlements on the part of any
third party. AWARE represents and warrants that its employees are, and shall be,
the original authors of the PROGRAMS.
4.3 AWARE represents and warrants that it does not know of any patents,
copyrights or trade secrets or other proprietary rights which belong to third
parties which will be infringed by the PROGRAMS after development by AWARE.
4.4 AWARE represents and warrants that it will provide full support for its
software at AWARE's cost including bug fixes consistent with standard software
industry practices for three years from date of each release.
5- REPORTS AND RECORDS
5.1 WESTELL shall keep full, true and accurate books of account containing
all particulars that may be necessary for the purpose of showing the amounts
payable to AWARE hereunder. Said books of account shall be kept at WESTELL's
principal place of business or the principal place of business of the
appropriated division of WESTELL to which this Agreement relates. Said books and
the supporting data shall be open at all reasonable times for one (1) year
following the end of the calendar year to which they pertain, to the inspection
of AWARE or its agents of the purpose of verifying WESTELL's royalty statement
or compliance in other respects with this Agreement. Records of any year may be
inspected only once. However, should such inspection lead to the discovery of a
greater than ten percent (10%) discrepancy in reporting, LICENSEE agrees to pay
the full cost of such inspection and to allow a re-inspection of the records of
the prior three(3) years. All records to be inspected shall be kept confidential
pursuant to the AWARE/WESTELL Confidentiality Agreement of 25 June, 1993.
5.2 WESTELL, within sixty (60) days after March 31, June 30, September 30
and December 31, of each year, shall deliver to AWARE true and accurate reports,
giving such particulars of the business conducted by WESTELL during the
preceding three-month period under
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this Agreement as shall be pertinent to a royalty accounting hereunder. These
shall include at least the following:
a. descriptions of LICENSED PRODUCTS;
b. number of LICENSED PRODUCTS sold by or for LICENSEE:
c. total royalties due.
5.3 With each such report submitted, WESTELL shall pay to AWARE the
royalties due and payable under this Agreement. If no royalties shall be due,
WESTELL shall so report.
5.4 The royalty payments set forth in this Agreement and amounts due under
Paragraph 3 shall, if overdue, bear interest until payment at a per annum rate
thrice percent (2%) above the prime rate in effect at the Chase Manhattan BAnk
(N.A.) on the due date. The payment of such interest shall not foreclose AWARE
from exercising any other rights it may have as a consequence of the lateness of
any payment.
6 - COPYRIGHT
6.1 WESTELL acknowledges that title to the PROGRAM(s) (including copyright)
shall remain with AWARE and that any copies of the LICENSED PRODUCTS and related
documentation, or portions thereof, made by WESTELL shall include an AWARE
copyright notice thereon the following form: "Copyright 199-, Aware, Inc. All
Rights Reserved". The notice shall be affixed to all copies or portions thereof
in such manner and location as to give reasonable notice of AWARE's claim of
copyright. WESTELL shall at all times hereafter protect the PROGRAM, and all
related technical information, data and materials supplied by AWARE, from
transfer using measures at least as strong as those used by WESTELL in
protecting its own proprietary software.
7 - TRADEMARK
7.1 WESTELL agrees that it is critical that the goodwill associated with
the TRADEMARK(s) be protected and enhanced and, toward this end, WESTELL shall
not during the term of this Agreement or thereafter intentionally:
a. attach the title or any rights of AWARE in or to the
TRADEMARK(s);
b. apply to register or maintain any application or registration of
the TRADEMARK(s) or any other mark confusingly similar thereto in
any jurisdiction, domestic or foreign;
c. use any colorable imitation of any of the TRADEMARK(s), or any
variant form including variant design forms, logos, colors, or
type styles of the TRADEMARK(s) not specifically approved by
AWARE;
d. misuse the TRADEMARK(s):
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e. take any action that would bring the TRADEMARK(s) into public
disrepute;
f. use the TRADEMARK(s), or any mark or name confusingly similar
thereto, in its corporate or trade name; or
g. take any action that would tend to destroy or diminish the
goodwill in the TRADEMARK(s).
7.2 All use by WESTELL of the TRADEMARK(S) shall inure to the benefit of
AWARE.
7.3 WESTELL agrees to cooperate fully with AWARE in securing and
maintaining the goodwill of AWARE in the TRADEMARK(s).
7.4 All LICENSED PRODUCTS shall be designed and manufactured to the quality
standards inherent in WESTELL's product portfolio.
7.5 WESTELL agrees that it shall mark the LICENSED PRODUCTS to indicate the
rights of AWARE in the TRADEMARK(s), including registration status of the
TRADEMARK(s) and that the products are manufactured pursuant to license.
8 - INFRINGEMENT AND INDEMINITIES
8.1 Subject to the limitations in Paragraph 8.5 below Aware agrees to
indemnify and defend WESTELL against all claims or suits against WESTELL for
infringement of third party intellectual property rights based on the
manufacture, use or sale by WESTELL of hardware or software incorporating
INTELLECTUAL PROPERTY RIGHTS licensed under this Agreement, such indemnity to
include payment of all expenses and of any award against WESTELL, whether by
judgment or settlement, as a result of such claim or suit. The indemnity of this
section shall be conditioned on WESTELL giving Aware prompt notice of any such
claim or suit, on Aware having sole control over the defense and settlement of
any such claim or suit and on such claim or suit not being based primarily on
changes or enhancements made by WESTELL or WESTELL customers. Any settlement
made by Aware shall not, without WESTELL's prior written consent, interfere with
the right of WESTELL and its customers to continue to make, use and sell or
otherwise dispose of products licensed under this Agreement. To the extent an
injunction may issue against WESTELL or an WESTELL customer preventing the
making, using or selling of any product licensed hereunder, Aware agrees to use
its best efforts to develop an alternative, noninfringing product which is
equivalent to the enjoined product both functionally and in terms of costs.
8.2 Each of Aware and WESTELL agrees to notify the other promptly in
writing when it learns of any patents, copyrights or other proprietary rights
belonging to third parties which are allegedly being infringed by the
manufacture, use, sale or other disposition of products licensed under this
Agreement.
8.3 In the event Aware is unable or unwilling to provide the indemnity
indicated in Section 8.1a above, WESTELL shall have the right to escrow
royalties otherwise payable under this Agreement and to apply such escrowed
royalties against costs incurred by WESTELL in defending any claim or suit of
the type specified in Section 8.1 and/or in the settlement thereof or the
payment of any judgment or award resulting therefrom. Any funds remaining in
such escrow
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on the completion of all claims and action and the payments of all expenses,
award and the like resulting therefrom shall be promptly paid to Aware. To the
extent WESTELL is at any time obligated to pay royalties for the continued right
to sell products licensed under this Agreement as a result of infringement of
third party intellectual property rights based on the manufacture, use or sale
by WESTELL of hardware or software developed and/or provided by Aware under this
agreement, WESTELL shall have the right to deduct from the royalties payable by
WESTELL to Aware under this Agreement any amounts so paid by WESTELL.
8.4 Aware's liability under this Section 8 shall be limited to the fees and
royalties paid and payable by WESTELL under the agreement and subject to escrow.
9 - PRODUCT LIABILITY
9.1 WESTELL shall at all times during the term of this Agreement and
thereafter, indemnify, defend an hold AWARE, its officers, employees and
affiliates, harmless against all claims and expenses, including legal expenses
and reasonable attorneys' fees, arising out of the death of or injury to any
person or persons or out of any damage to property and against any other claim,
proceeding, demand, expense and liability of any kind whatsoever resulting from
the production, manufacture, sale, use, lease, consumption or advertisement of
the LICENSED PRODUCT(s) and/or LICENSED PROCESS(s) arising from any obligation
of LICENSEE hereunder.
10- ASSIGNMENT
10.1 This agreement is not assignable and any attempt to do so shall be
void.
11 - TERMINATION
11.1 Should WESTELL fail to make any payment whatsoever due and payable to
AWARE hereunder unless contested in good faith, this Agreement shall terminate
effective on thirty(30) days' notice, unless WESTELL shall make all such
payments to AWARE within said thirty(30) day period. Upon the expiration of the
thirty (30) day period, if WESTELL shall not have made all such payments to
AWARE, the rights, privileges and license granted hereunder shall automatically
terminate.
11.2 Upon any material breach, breach or default of this Agreement by
WESTELL, other than that set out in Paragraph 11.1, this Agreement shall
terminate and the rights, privileges and license granted hereunder effective on
ninety (90) days' notice to WESTELL. Such termination shall become automatically
effective unless WESTELL shall have cured any such material breach or default
prior to the expiration of the ninety (90) day period.
11.3 Upon a material breach, defined as a breach of Paragraph 4.4 of this
agreement or a violation by AWARE of the exclusivity section of paragraph 7 of
the Development Contract, and such breach or default is not cured by AWARE
within ninety (90) days after notice by WESTELL to AWARE, then all fees paid by
WESTELL are due back from AWARE.
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11.4 Upon violation of the exclusivity section of paragraph 7 of the
Development Contract by WESTELL, WESTELL is still obligated for payment to AWARE
of the next milestone as defined in section 4 of the Development Agreement.
11.5 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination.
12 - PAYMENT, NOTICES AND OTHER COMMUNICATIONS
12.1 Any payments, notice or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such party
by certified first class mail, postage prepaid, addressed to it at its address
below or as it shall designate by written notice given to the other party:
In the case of AWARE
Robert P. Mosher
Chief Financial Officer
Aware, Inc.
One Memorial Drive
Cambridge, MA 02142
In the case of WESTELL
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13 - MISCELLANEOUS PROVISIONS
13.1 This Agreement shall be construed, governed, interpreted and applied
in accordance with the laws of the Commonwealth of Massachusetts, U.S.A., except
that questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
13.2 The parties hereto acknowledge that this Agreement and Development
Contract executed simultaneously herewith sets forth the entire Agreement and
understanding of the parties hereto as to the subject matter hereof, and shall
not be subject to any change or modification except by the execution of a
written instrument subscribed to by the parties hereto.
13.3 No provision of the Agreement is intended to conflict with any law,
and the provisions should be construed in a manner that will uphold their
validity. In the event that any provision is found to be contrary to any law, it
shall be deemed unenforceable, and the parties or the court shall substitute a
lawful provision in its place which is equitable and which, to the extent
possible, reflects the original intent of the parties. Unless it would be
inequitable to do so, all other
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provisions of the Agreement shall remain in full force and effect.
13.4 The failure of either party to assert a right hereunder or to insist
upon compliance with any term or condition of this agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
13.5 In no event shall either party be liable for special, incidental or
consequential damages due to any cause whatsoever. No suit or action shall be
brought against one party by the other more than one year after the related
cause of action has accrued, or in the case of an indemnifiable claim, more
than one year after receipt of notice of the claim. In no event shall the
accrued total liability of any party from any lawsuit, claim, warranty or
indemnity exceed the aggregate sum paid hereunder by WESTELL to AWARE.
IN WITNESS WHEREOF, the parties duly execute this Agreement the day and
year set forth below.
/s/ Howard L. Resnikoff Dated: 14 October 94
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Howard L. Resnikoff
Chief Executive Officer
Aware, Inc.
/s/ William V. Rodey Dated: 10/7/94
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William V. Rodey
Westell, Incorporated
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