EXHIBIT 10.21
Confidential treatment has been requested for portions of this exhibit. The copy
filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [*]. A complete version of this exhibit has been
filed separately with the Securities and Exchange Commission.
Development and Technology License Agreement
Between
Samsung Electronics Co., Ltd.
Samsung Main Bldg. 250 2Ka
Taepyungro, Chungku, Seoul Korea
and
Metawave, Inc.
10735 Willows Road NE
Redmond, WA 98073-9769, USA
Section 1 Preamble
1.1 This Agreement, made and entered into as of the eighth day of February
2001, by and between Samsung Electronics Co., LTD., a Korean corporation with
its principal place of business in Samsung Main Bldg. 250 2Ka, Taepyungro
Chungku Korea, (hereinafter called "Samsung") and Metawave Inc., a Delaware
corporation with its principal place of business at 10735 Willows Road NE P.O.
Box 97069, Redmond, WA 98073-9769, USA (hereinafter called "Metawave").
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Section 2 Definitions
2.1 As used herein, the following terms shall have the meanings set forth
below:
a) "Prototype System" means [*].
b) "Prototype System Development" means the engineering services provided by
Metawave to Samsung to design the system specific components for [*].
c) "Prototype Components" means the deliverable components from Metawave as
defined in Annex A attached hereto.
d) "Commercial System Development" means the engineering services provided by
Metawave to Samsung to design the system specific components for a
commercial system incorporating Metawave's technology for Adaptive Antenna
Array capability based on the Samsung standard product.
e) "Commercial System" means the [*].
f) "Deliverable Items" means the Products and Services (hereinafter defined) to
be delivered by Metawave to Samsung pursuant to this Agreement, of which is
detailed and described in Annex A attached hereto.
g) "ASIC" means an application specific integrated circuits to be used with or
in the deliverable products under this Agreement.
h) [*] means Metawave [*] consisting of Metawave [*] and associated control and
processing software necessary to provide the [*].
i) "RF Front End" means the physical antenna array elements, tower mounted RF
distribution box, and phase matched cables connecting the antenna array
elements to the RF distribution box.
j) "Prototype System Test Plan" means the mutual developed and approved BTS
performance test plan defining the verification test methods and procedures
used to establish the performance of the modified prototype Samsung AAA BTS
products.
k) "Commercial System Test Plan" means the mutual developed and approved BTS
performance test plan defining the verification test methods and procedures
used to establish the performance of the modified Samsung Commercial system
AAA BTS products.
l) "Subsidiaries" means, with respect to any party, any entity which is under
the control of such party by means of at least [*] ownership of the entity,
whether directly or indirectly, or has been specifically included in this
section below.
Metawave shall approve subsidiaries of Samsung in which Samsung has less
than 40% ownership to be included in this agreement, such approval shall not
be unreasonably withheld.
m) "AAA" means Adaptive Antenna Array
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n) "Beamforming" means the process by which antenna patterns for both receive
and transmit antenna patterns are electronically generated.
o) "Samsung Products" means Samsung's Adaptive Antenna Array enhanced BTS
commercial products incorporating [*] and smart Antenna technology.
p) "Samsung Components" means [*] and or equivalent components, to be
included and used as part of and within the Samsung Products, that have been
exclusively designed by or for Samsung (which design is owned and used
exclusively by Samsung).
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Section 3 Effective Date of Agreement
3.1 The effective date of this Agreement (hereinafter called "EDA") shall be
the date when the Agreement has been signed by both Metawave and Samsung.
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Section 4 Services
4.1 Subject to the terms and conditions set forth herein, Metawave shall render
to Samsung the following services according to the schedule as set forth
herein (hereinafter collectively called "Services"):
a) [*].
b) [*].
4.2 Services shall include materials, fabrication, design support, system
integration support, field test support, documentation and associated
technology services in accordance with Annex A and Annex E attached hereto.
4.3 Details of Services are described in Annex A and Annex E attached hereto.
The Annexes constitute a part of this Agreement. If any Annexes are
contrary to this Agreement, this Agreement shall prevail.
4.4 Metawave represents and warrants that it has the full right and authority
to enter into and perform any and all applicable provisions of this
Agreement and further represents and warrants that there are no contracts,
regulations or restrictions that will prevent it from performing the
Services pursuant to this Agreement.
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Section 5 Delivery
5.1 Metawave at its [*] shall provide under this Agreement all the necessary
[*] to perform the Services.
5.2 Metawave shall perform Services and deliver to Samsung the Deliverable
Items pursuant to Annex A attached hereto according to the following
delivery schedule("Schedule"):
Delivery
Item No. Description (Months AEDA)/1/
-------- ----------- ------------
Basic Agreement
1. AAA Prototype System Development per Annex A [*]
2. Quantity [*] per Annex A [*]
3. Quantity [*] per Annex A [*]
4. [*] per Annex A [*]
5. Prototype Integration Test Support per Annex A [*] following
Completion of Item 1
6. Prototype Field Trials Test Support per Annex A [*] following
Completion of Item 5
7. Prototype documentation per Annex A [*] following
Completion of Item 6
8. Commercial Product AAA System Development per Annex E TBD
9. Commercial Product Integration Support per Annex E TBD
10. Commercial AAA Product Documentation per Annex E TBD
11. [*] TBD
5.3 The delivery point of Deliverable Items shall be [*] Sunnyvale, California
(Incoterms 1990). Metawave shall pack all Deliverable Items for air freight
shipping. Metawave shall ship all documentation to Samsung via FEDEX or
equivalent service.
5.4 Metawave represents and warrants that the documentation to be submitted to
Samsung pursuant to this agreement shall [*]
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/1/ Months After EDA
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Section 6 Prototype Component Verification
6.1 Within [*] after the delivery of the prototype components from Metawave,
Samsung shall integrate the components into the prototype system, and
conduct a test which determines through a mutually agreed test procedure,
that the Metawave Prototype components (hereinafter called "Prototype
Components"), meet the requirements pursuant to Annex A attached hereto.
6.2 Samsung shall determine whether the Prototype System including the Metawave
Prototype components conforms to the Performance Targets specified in Annex
A attached hereto (hereinafter called "Specifications"), and satisfactory
integration in its system and submit a written report to Metawave within
[*] after completion by Samsung of the Prototype Verification Test. [*]
6.3 In the event that Samsung rejects the Prototype components by reasonable
judgment within the [*] period set forth in Section 6.2 hereof, the parties
shall spend the [*] to discuss a mutually agreeable solution. If the
parties cannot agree on a solution during such period, Samsung may, at its
sole discretion, terminate this Agreement subject to Section 23.2 hereof.
Section 6.2 above shall apply mutatis mutandis to the any revised Prototype
Verification Testing conducted by Samsung.
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Section 7 Completion of the Prototype System
7.1 Within [*] after the completion of the field trial, Samsung shall submit to
Metawave a field test report (hereinafter called "Field Test Report") which
describes the result of the field trials of the prototype Systems
(hereinafter called "Field Trials"), pursuant to Annex A attached hereto.
In the event Samsung was not able to submit a Field Test report in the
above time limit, and Metawave agrees that the cause was reasonable, such
time limit shall be adjusted by mutual agreement.
7.2 Samsung and Metawave shall examine the Field Test results to determine
whether the Prototype System conforms to the requirements, and Samsung
shall submit a written acceptance or rejection to Metawave within [*] after
review of the Field Test Results. If no written rejection is submitted by
Samsung within the said [*] period, the development shall be deemed
completed on the expiration date of such period.
7.3 In the event that Samsung rejects the Field Test Results due to the
Metawave Prototype System's components non-conformity to the Specifications
within the [*] period set forth in Section 7.2 hereof, the parties shall
spend the next [*] to discuss a mutually agreeable solution. If the parties
cannot agree on a solution during such period, Samsung may, at its sole
discretion, terminate this Agreement subject to Section 24.4 hereof.
Section 7.2 above shall apply mutatis mutandis to the revised Field Test
Results developed by Samsung.
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Section 8 Price
8.1 In consideration for the faithful performance and completion of the
Services by Metawave hereunder, Samsung shall pay the fees as follows:
Item No. Description Price (U.S.D.)
------- ----------- --------------
Basic Agreement Prototype
1. Prototype System Development per Annex A $[*]
2. Quantity [*] per Annex A $[*]
3. Quantity [*] per Annex A $[*]
4. Prototype Components Documentation per Annex A [*]
5. Prototype Integration and Test Support per Annex A $[*]
6. Prototype Field Trials Support per Annex A $[*]
Prototype Agreement Price (Items 1 through 6) $[*]
Basic Agreement Commercial Development
7. Commercial System Development per Annex E [*]
8. Commercial System Documentation per Annex E [*]
---------
Commercial Agreement Price (Items 7 and 8) $ [*]
Options
9. In House Engineering Support (per man week) $[*]
10. Field Support (per man day) $[*]
11. Field Support Travel (per man trip) $[*]
Software [*]
12. Software [*] $[*]
13. Annual Maintenance Fee $[*]
8.2 The Price of item 7 in section 8.1 shall be based on Metawave's reasonable
standard and customary rates for the scope of services defined and agreed
as part of the commercial system development.
8.3 Samsung may exercise option items 9, 10 and 11 by notifying Metawave in
writing of the level of required effort and duration. Option items 9, 10
and 11 shall remain valid and exercisable by Samsung until [*] After EDA.
8.4 The fees specified in this Section 8 (item 1 to 11) shall be deemed to
cover all the compensation and expenses to be paid or reimbursed by Samsung
to Metawave in connection with the performance of Services by Metawave
under this Agreement, including the Services provided as option.
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8.5 The parties agree that the price of items 5 and 6 assumes subsistence costs
and travel cost based on field testing at Samsung facilities in Korea. When
a field trial location has been selected, prices for travel and subsistence
shall be adjusted as mutually agreed based on Metawave's reasonable
standard and customary rates.
8.6 [*].
8.7 Samsung shall pay to Metawave [*] in accordance with item 13 above. The [*]
shall be due beginning [*] following the initial delivery of the software
[*] as defined in item 8.6, and thereafter [*] as long as this license
agreement is in effect. This fee shall provide for up to [*] for the [*]
provided under and in accordance with section 11 of this License Agreement.
Samsung shall have the right to terminate the software [*] support by
providing written notification Metawave [*] prior to the beginning of the
annual term of renewal. In the event that Samsung terminates the software
[*] support Metawave shall no longer be responsible for supporting Samsung
[*] configuration.
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Section 9 Payments
9.1 Payment for Items 1 through 6 of Section 8.1 hereof shall be made in
accordance with the following schedule:
[*]
* AEDA means After Effective Date of Agreement
9.2 Payment for items 7 and 8 of Section 8.1 shall be made as follows:
[*]
9.3 The [*] for the Prototype Agreement Price defined in Section 8.1 hereof
(hereinafter called "Agreement Price") shall be made by Samsung to Metawave
[*] following the signing of this Agreement and after Samsung's receipt of
appropriate invoice issued by Metawave. Payment shall be made in U.S.
dollars [*]. All other payments under Section 9.1 hereof, except as
otherwise specifically agreed upon between the parties hereto in writing
shall be made within [*] after Samsung's receipt of appropriate invoice
issued by Metawave. Payments of the amounts specified in section 9.1 shall
be made in U.S. dollars [*]
9.4 If Samsung's payment as specified in section 9 is delayed and such [*]
9.5 If for fault of Samsung, the start of the Prototype Field Trials are [*]
9.6 If for fault of Samsung the start of the Field Trials is delayed or the
duration of the Field Trials is extended for more than [*],[*] as specified
under the Agreement shall be paid forthwith.
9.7 [*] shall bear and pay all United States taxes that may be imposed on
payments made to Metawave according to the terms of this agreement. [*]
shall pay all other fees and taxes.
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Section 10 Samsung Furnished Equipment and Services
10.1 Samsung shall furnish to Metawave for use in connection with and under the
terms of this Agreement, the equipment and services described in Annex B
attached hereto, together with such related data and information as
Metawave may request and as may reasonably be required for the intended
use of such equipment (hereinafter called "Samsung Furnished Equipment and
Services").
10.2 Title to the equipment to be delivered pursuant to Section 10.1 above
shall remain with Samsung. Upon delivery of the equipment specified in
item 10.1 above, Metawave shall assume risk of loss for such equipment
excluding normal wear and failures do to normal operation while the
equipment is at Metawave's facilities. Title to such equipment shall not
be affected by the incorporation or attachment thereof of any property not
owned by Samsung.
10.3 The schedule of the performance of the Services are based upon the
expectation that Samsung Furnished Equipment and Services will be
furnished by Samsung at the times stated in Annex B attached hereto. In
the event the Samsung Furnished Equipment and Services are not delivered
to Metawave by such time or times, the schedule of the performance of the
Services, or the applicable price therefore or both shall be mutually
adjusted accordingly.
10.4 At the completion of Metawave's obligation under the terms of this
Agreement or upon earlier termination of this Agreement, Samsung furnished
equipment shall be returned to Samsung, FOB Metawave's Facilities.
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Section 11 Intellectual Property and License
11.1 Intellectual Property Ownership
11.1.1 As between Metawave and Samsung any and all intellectual property rights
(including, without limitation, patent, copyright, and trade secret)
relating to Adaptive Antenna Array and [*] previously developed by
Metawave or relating to proprietary information provided to Samsung by
Metawave during the course of this Agreement to assist in the
development or delivery of the deliverable items under the terms of this
Agreement, are the sole property of Metawave, including but not limited
to the intellectual property and patents listed in Annexes A and D
("Metawave Intellectual Property").
11.1.2 As between Samsung and Metawave any and all intellectual property
rights (including, without limitation, patent, copyright and trade
secret) relating to CDMA technology previously developed by Samsung or
relating to proprietary information provided to Metawave by Samsung
during the course of this Agreement to assist in the development or
delivery of the deliverable items under the terms of this Agreement,
are the sole property of Samsung ("Samsung Intellectual Property").
11.1.3 The foregoing notwithstanding, in the event that Metawave and
Samsung jointly develop intellectual property relating to the
technology described in Annexes A, D and E during the course of the
Services ("Jointly Developed Intellectual Property"), where Jointly
Developed Intellectual Property as referred to herein consists only of
[*].
11.1.4 As between Samsung and Metawave any and all future intellectual
property rights (including, without limitation, patent, copyright and
trade secret) relating to the adaptation, modification, improvement, or
alteration of the [*] technology, including the development of a [*]
for use with air interfaces other than the [*] wireless interface
standards, by Metawave are the sole property of Metawave ("Future
Developed Intellectual Property").
11.1.5 As between Samsung and Metawave any and all future intellectual
property rights (including, without limitation, patent, copyright and
trade secret) relating to CDMA technology developed by Samsung or
relating to proprietary information provided to Metawave by Samsung
during the course of this Agreement to assist in the development or
delivery of the deliverable items under the terms of this Agreement,
are the sole property of Samsung ("Samsung Future Intellectual
Property").
11.2 Intellectual Property License:
11.2.1 License During Development:
11.2.1.1 During the time from the effective date of this Agreement through
completion of the development set forth in Section 7 (hereafter called
Prototype System Development), as
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between Metawave and Samsung, Metawave shall have [*] under the
Metawave Intellectual Property, and Jointly Developed Intellectual
Property, including the [*], except that Samsung shall have the [*] in
accordance with the terms and conditions of this Agreement.
11.2.1.2 During the Prototype System Development, as between Metawave and
Samsung, Samsung shall have [*], except that Metawave shall have the
[*] associated with the technology described in Annex B in performing
the services set forth in Section 4 and Annexes A and E.
11.2.2 Post Development License:
11.2.2.1 Following completion of the prototype development set forth in Section
7 hereof (hereinafter called Prototype System Completion) and full
payment as provided for in Section 9, [*].
11.2.2.2 Following the [*] and full payment as provided for in Section 9,
payment of the [*] in the amount and within the time as set forth in
Section 12.1, and for such time as the royalty obligations as set
forth in Sections 12.2-12.5 are met, [*].
The Samsung Products and Samsung Components utilizing the [*].
11.2.3 Following the [*] and full payment as provided for in Section 9,
Metawave at Samsung's request and payment of the Initial License Fee,
in the amount and within the time as set forth in Section 12.1, and
for such time as the royalty obligations set forth in Sections 12.2-
12.5 are met shall grant to Samsung and its Subsidiaries, a [*].
11.3 All rights, title, and interest in any updates, developments,
enhancements, or modifications made to the [*]. Samsung agrees that it
will promptly notify Metawave of, and communicate full information in
writing covering, any such Samsung Improvements and hereby grants to
Metawave a [*] to use such Samsung Improvements. Samsung may use such
Samsung Improvements only in accordance with the terms and conditions
of the license set forth in sections 11 of this Agreement.
11.4 Should Metawave grant to any third party other than a Subsidiary of
Metawave or of which Metawave is a Subsidiary, a [*], in order to [*]
in this Agreement, Metawave shall [*]. In the case where Metawave has
granted a [*].
Such [*] shall only be effective, however, if Samsung shall, within
[*] referred to in (i) above, advise Metawave that it accepts all
terms and
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conditions of the [*]. The provisions above, shall not apply in
respect to any [*] by Metawave resulting from a [*] provided in this
Agreement, or the [*].
Samsung shall have the right to request [*]. Selection of an
independent party, who has [*] for such a review, shall be subject to
mutual agreement by Samsung and Metawave, and in no case shall the
party be an employee, contractor or affiliate of either company. [*].
Following a review of the agreement the reviewer shall provide Samsung
and Metawave with an assessment of whether the [*].
11.5 In that Metawave has disclosed or may disclose, through the term of
this agreement certain U.S. patent applications to Samsung, Samsung
agrees to protect these patent applications from unauthorized
disclosure to any third party outside of Samsung and its Subsidiaries
pursuant to section 21 hereof.
11.6 In that Metawave has developed and holds certain copy rights to and
for software relating the [*] for mobile communications applications,
that Metawave will provide to Samsung, Samsung agrees to protect this
software from unauthorized disclosure to any third party outside of
Samsung and its Subsidiaries.
11.7 Metawave shall deliver to Samsung appropriate information, which is
sufficient for Samsung to exercise the rights set forth in Section
11.2, including providing Samsung with an appropriate and reasonable
technical support.
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Section 12 Royalty
12.1 Following successful completion of the Prototype System capacity
verification test, Samsung shall [*] set forth in Section 11.2.2.2
hereof and Samsung shall pay to Metawave an Initial License Fee payment
of [*] within [*] following the Prototype System Completion, and there
after Samsung shall pay royalties as set forth in Section 12.2 hereof.
12.2 The Amount of Royalty will be determined according to the following
sections as applicable to the specific applications by Air Interface
standard.
12.2.1 The amount of royalty for applications relating to [*] shall be as
follows: [*].
12.2.2 The amount of royalty for all other mobile wireless air interface
standards for Samsung Products and Samsung Components which utilize
Metawave's licensed intellectual property the amount of royalty shall be
as follows: Metawave and Samsung shall agree on a [*].
12.3 If Samsung purchases or licenses a product or products from a third
party supplier for use with Samsung Products which incorporates the [*],
under this Agreement, so that the [*] herein.
12.4 Net sales price as used in Section 12.2 hereof means the price charged
to customers for the [*] (to include [*] and corresponding software)
manufactured or sold by Samsung and/or its Subsidiaries, less freight,
insurance charges and sales tax, if any, directly applicable to such
[*].
12.5 Samsung shall make the royalty payments within [*] of the end of the
[*] for all Samsung Products and Samsung Components sold during [*] and
shall also provide a report which details how the royalty was
calculated.
12.6 Samsung shall maintain records and books of its sales subject to the
royalty set forth in Section 12.2 above, and shall permit, during
Samsung's usual business hours, not more frequently than annually,
inspection by an certified public accountant appointed by Metawave of
the records and books to the extent which is necessary to verify the
amounts of the royalty.
12.7 The license granted pursuant to the terms and conditions of this
Agreement, shall [*], provided that the obligations of Samsung pursuant
to section 12 are met. [*].
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12.8 Samsung shall have the option to terminate this License Agreement
following [*]. In the event that Samsung elects to terminate this
license agreement, Samsung will provide to Metawave a written notice of
intention to terminate and shall cease to include deliver utilize or
distribute products or components utilizing or incorporating the
Metawave licensed technology.
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Section 13 Future Development
13.1 After the Pre-Production System Completion, Samsung may at its option,
ask Metawave to modify the interface or functions of the [*] and or
antenna array technology developed or provided under this Agreement.
Metawave shall provide a reasonable proposal to accomplish the
modification, following agreement on the scope of the modifications
Metawave shall undertake such modifications.
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Section 14 Samsung's Purchase of Metawave Components
14.1 Upon the payment of the royalty Fee's set forth in Section 12.1 hereof,
by Samsung, and at such time as Metawave receives a purchase order, [*].
Other terms and conditions applicable to such sale will be negotiated
between the parties hereto and will be set forth in a separate agreement
purchase order.
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Section 15 Disclaimer of Agency
15.1 Neither party shall be, nor hold itself out to be, an agent or
representative of the other party for any purpose whatsoever and neither
party shall have the right or authority to create or assume any obligation
or responsibility of any kind, express or implied, in the name of or on
behalf of the other party or to bind the other party in any way or for any
purpose whatsoever.
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Section 16 Indemnification
16.1 Metawave shall indemnify and hold Samsung harmless from any and all
claims and liabilities for injury to or death of any person or for damage
to or destruction of any property resulting from any and all act or
omissions of Metawave's employees, agents or subcontractors.
16.2 Samsung shall indemnify and hold Metawave harmless from any and all
claims and liabilities for injury to or death of any person or for damage
to or destruction of any property resulting from any and all act or
omissions of Samsung's employees, agents or subcontractors.
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Section 17 Infringement
17.1 Metawave agrees to defend, indemnify and hold harmless Samsung and its
respective directors, shareholders, officers, agents, employees,
successors and assigns from and against any and all claims, demands,
suits, actions, judgments, damages, costs, losses, expenses (including
reasonable attorneys' fees) and other liabilities arising from, in
connection with, or related in any way to, directly or indirectly the
Deliverable Items, when used within the scope of this Agreement, infringe
any patent (including application), or any copyright, trademark or trade
secret; provided that Samsung provides Metawave with (i) prompt written
notice of such claim or action, (ii) proper and full information and
reasonable assistance to defend and/or settle any such claim or action at
Metawave's expense. In the event that the Deliverable Items, or a part
thereof, are held, or in Metawave's sole opinion, may be held to
constitute an infringement, Metawave, at its option and expense, may
either (x) modify the Deliverable Items so they become non-infringing,
(y) replace the Deliverable Items with functionally equivalent non-
infringing materials reasonably acceptable to Samsung or (z) accept
return of the Deliverable items and return to Samsung the commercial
fees, including without limitation any royalty and development fee.
Accept return of the Deliverable Items and return to Samsung the fees
then already received. Notwithstanding the foregoing, Metawave will have
no liability if the alleged infringement arises from combinations of the
Deliverable Items with non-Metawave programs or products, unless such
combination is authorized in advance in writing by Metawave.
17.2 THE FOREGOING STATES THE ENTIRE LIABILITY AND OBLIGATIONS OF METAWAVE AND
THE EXCLUSIVE REMEDY OF SAMSUNG, WITH RESPECT TO ANY ALLEGED OR ACTUAL
INFRINGEMENT OF PATENTS, COPYRIGHTS, TRADE SECRETS, TRADEMARKS OR OTHER
INTELLECTUAL PROPERTY RIGHTS BY THE DELIVERABLE ITEMS.
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Section 18 Taxes and Duties
18.1 [*] shall be responsible for any and all taxes, duties or fees in
connection with this Agreement, imposed and collected by United States
Governmental Authorities for Services performed by [*] hereunder.
18.2 Notwithstanding Section 18.1 hereof, [*] shall be responsible for the
payment of all other taxes, duties, or fees in connection with this
Agreement so far as they are applicable outside the United States, except
for the income tax withheld at source in Korea to the extent such
withholding tax is creditable against the income tax of Metawave in the
United States. [*] shall be responsible for the reporting and payment
of all taxes, duties, or fees resulting in importing Samsung Furnished
Equipment and Services to the United States in connection with this
Agreement.
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Section 19 Limitation of Liability
19.1 IN NO EVENT, SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY IN CONNECTION
WITH THIS AGREEMENT OR FROM MANUFACTURE, INSTALLATION, MAINTENANCE, REPAIR
OR USE OF THE EQUIPMENT FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL
DAMAGES INCLUDING BUT NOT LIMITED TO LOSS OF PROFITS OR REVENUE, LOSS OF
USE OF THE EQUIPMENT OR ANY ASSOCIATED EQUIPMENT, COST OF SUBSTITUTE
EQUIPMENT, OR DOWN TIME COSTS.
19.2 EXCEPT FOR THE OBLIGATION OF METAWAVE UNDER SECTION 17.1 HEREOF, NEITHER
PARTY'S LIABILITY ON ANY CLAIM ARISING FROM THIS AGREEMENT, OR FROM THE
MANUFACTURE, DELIVERY, INSTALLATION, INSPECTION, OPERATION OR USE OF ANY
EQUIPMENT COVERED BY OR FURNISHED UNDER THIS AGREEMENT, SHALL IN NO CASE
EXCEED THE TOTAL AMOUNT PAID OR PAYABLE BY SAMSUNG TO METAWAVE FOR THE
DEVELOPMENT COSTS AS STATED HEREIN.
19.3 THE PROVISIONS OF THIS SECTION SHALL SURVIVE TERMINATION OF THIS
AGREEMENT, EXCEPT IN THWE CONDITION IF THIS AGREEMENT IS TERMINATED DUE TO
EITHER PARTIES' MATERIAL BREECH.
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Section 20 Licenses and Visas
20.1 Samsung shall assist Metawave in obtaining any permits, licenses and any
other documents including visas, required for the performance of the
Services. Samsung shall assist if requested for customs clearances of
equipment and tools required for installation or service of the
Deliverable Items to Korea or third countries. Samsung shall assist
Metawave in obtaining any and all permits, clearances, visas and approvals
for Metawave's representatives in connection with their entry into and
departure from Korea or third countries for the purpose of performance of
the Services.
20.2 The obligation of Metawave to provide the Deliverable Items,
documentation, or any media in which any of the foregoing is contained, as
well as any other technical assistance shall be subject in all respects to
such United States laws and regulations as shall from time to time govern
the license and delivery of technology and products abroad by persons
subject to the jurisdiction of the United States, including the Export
Administration Act of 1979, as amended, any successor legislation, and the
Export Administration Regulations issued by the Department of Commerce,
Bureau of Export Administration. Samsung warrants that it will comply with
the Export Administration Regulations and all other applicable United
States laws and regulations governing re-exports of Deliverable Items in
effect from time to time.
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Section 21 Proprietary Information
21.1 As used herein, "Confidential Information" means any and all technical or
business information disclosed hereunder by a party hereto (hereinafter
called "Disclosing Party") to the other party (hereinafter called
"Receiving Party") which (i) if disclosed in written or other tangible
form, is conspicuously marked as "Confidential" or "Proprietary" at the
time of the disclosure, and (ii) if disclosed orally or visually, is
specifically designated as proprietary or confidential at the time of the
disclosure and summarized in writing conspicuously marked as
"Confidential" or "Proprietary" by Disclosing Party and delivered to
Receiving Party within twenty (20) days after the disclosure. The
Receiving Party will keep secret and not disclose to any third party,
including but not limited to any governmental agency or office for any
purpose except as specifically set forth below, and not use any
Confidential Information of the Disclosing Party for any purpose other
than in association with performance of duties and obligations under this
Agreement. The Receiving Party shall protect the Confidential Information
of the Disclosing Party by using the same degree of care, but no less than
a reasonable degree of care, as it uses to safeguard its own confidential
information or proprietary information of a like nature from unauthorized
use, disclosure, or dissemination. The Receiving Party will not reverse
engineer, decompile, or disassemble any software disclosed to Receiving
Party by the Disclosing Party. The Receiving Party may disclose
Confidential Information of the Disclosing Party in accordance with valid
judicial or other governmental orders, or in order to procure any
necessary governmental approvals required by such Receiving Party to
effectuate the purposes for which the Confidential Information was
disclosed, provided Receiving Party shall give Disclosing Party reasonable
notice prior to such disclosure.
21.2 The confidentiality obligations and restrictions imposed on Receiving
Party hereunder shall not extend to any Confidential Information that
Receiving Party can demonstrate:
a) was in the public domain at the time of its disclosure;
b) was known to Receiving Party at the time of its disclosure;
c) is independently developed by Receiving Party at any time;
d) becomes part of public domain through no fault of Receiving Party; or
e) is disclosed by Disclosing Party to a third party without restrictions
on such third party's rights to disclose or use the same.
21.3 Upon the Disclosing Party's request, the Receiving Party shall return all
copies of the Confidential Information, except for the Deliverable Items,
to the Disclosing Party or make such other disposition thereof as is
directed or approved by the Disclosing Party.
21.4 Neither party will, without the other party's prior written consent:
(i) make any news release, public announcement, denial or confirmation of
this Agreement or its subject matter; or
(ii) in any manner advertise or publish the fact of this Agreement.
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Any permission given by one party regarding the above, or regarding any other
publicity or use of the other party's name, may be revoked at any time.
Neither party will unreasonably withhold or revoke such permission. Not
withstanding the foregoing, Metawave may disclose the terms of this Agreement
to financial institutions, venture capital funds, and/or investors as may be
required for the purpose of raising the necessary capital to support
Metawave's business objectives (subject to confidentiality restrictions
defined in this agreement).
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Section 22 Force Majeure
22.1 Metawave shall not be liable where the performance under the Agreement is
obstructed or delayed due to causes beyond the reasonable control or
without any fault or negligence on the part of Metawave. Such causes shall
include, but shall not be limited to, acts of God, fires, floods,
explosions, serious accidents, strikes, lockouts, or other similar labor
actions, riots, civil commotions, mobilizations, threat or existence of
war, blockades, embargoes, requisitions of vessels, epidemics or
quarantine restrictions, acts of any government, government priorities,
allocation regulations or orders affecting materials, facilities, or
conditions dangerous to the health or safety of Metawave personnel, loss,
destruction, or damage to equipment, delay in the delivery of materials
from third parties, delay in transportation, acts of Samsung, or from any
other causes beyond the reasonable control of the Metawave. Should
excusable delays attributable to any of the above causes occur, the date
for delivery shall be correspondingly extended by a period equal to that
of the delay. Metawave shall inform Samsung each time within [*]of the
commencement as well as the termination of the Force Majeure.
22.2 If Force Majeure has lasted [*] after notice as specified above and a
mutually agreeable solution has not been found, the parties may either
consider the means by which this Agreement may be terminated in whole or
in part subject to a mutual agreement or renegotiate terms along lines
mutually acceptable to both parties.
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[*] Confidential Treatment Request
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Section 23 Termination
23.1 Until the Prototype System Completion, Samsung shall be entitled but not
bound to terminate this Agreement for its convenience at any time by
giving notice to Metawave. Metawave will have [*] from the time of notice
of termination to efficiently stop all work activities. In the event that
Samsung terminates this Agreement pursuant to this Section 23.1, Samsung
shall promptly reimburse Metawave for:
[*]
23.2 In the event that Samsung terminates this Agreement in accordance with
Section 6.3 hereof, Metawave will have [*] from the time of notice of
termination to efficiently stop all work activities. Samsung is not
required to make further payment other than what is already due as of the
notice of termination.
23.3 If there is a "change of control" at Metawave, then Metawave shall provide
Samsung no less than [*] written notice prior to the effective date of any
change in control or ownership of Metawave. For the purposes hereof, a
"change in control" will include (i) a sale, merger or liquidation of
Metawave, (ii) the acquisition by, and/or transfer to, a third party of
50% or more of the outstanding capital stock of Metawave and/or (iii) a
sale or transfer of all, substantially all or a substantial portion of the
assets of Metawave. [*].
23.4 If the Prototype System Completion is not made within [*] after EDA, and
such delay is not caused by Samsung's breach of this Agreement or Force
Majeure, [*] under terms 23.1b. Metawave will have [*] from the time of
notice of termination to efficiently stop all work activities. Samsung is
not required to make further payment other than what is already due as of
the notice of termination.
23.5 If either party hereto commits any breach of the terms of this Agreement
and such breach is not corrected within [*] after receipt of notice from
the other party specifying the nature of the breach, the other party may
terminate this Agreement forthwith, without any compensation and liability
to the breaching party.
23.6 If either party hereto shall file a petition in bankruptcy or make a
general assignment for the benefit of creditors or otherwise acknowledge
insolvency or if either party shall be adjudged a bankrupt or go or be
placed into a complete liquidation, or if a receiver shall be appointed
for the business of either party, or if either party shall cease major
part of its business, the other party may terminate this Agreement
forthwith, without any compensation and liability to such party.
23.7 In the event that this Agreement is terminated [*],[*] as defined in this
agreement. [*].
23.8 In the event that this Agreement terminates, both Parties agree to keep in
confidence the confidential information received as defined in section 21,
and to protect and safeguard the same by taking measures at least equal to
its own confidential information. Both Parties agree not to divulge or
disclose, either directly or indirectly, in whatever form or by whatever
means, the confidential information or any part thereof to third parties
without the prior written approval of the disclosing Party.
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[*] Confidential Treatment Request
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Section 24 Liquidated Damages
24.1 [*].
24.2 Amounts to which Samsung may be entitled under this Section 24 are
intended to be Samsung's exclusive remedy for damages caused by Metawave's
delay in delivery of any items or materials to be delivered to Samsung
hereunder.
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[*] Confidential Treatment Request
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Section 25 Technology Warranty
19.2 Metawave Warrants that the technology provided under the terms of this
Agreement shall [*]
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[*] Confidential Treatment Request
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Section 26 Regulations
26.1 At all times during the performance of their obligations hereunder the
parties shall in all respects comply with any applicable laws, regulations
and orders of governmental authorities and agencies having competent
jurisdiction.
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Section 27 Non-Assignability
27.1 This Agreement and any rights or obligations hereunder shall not be
assigned by either party without the written consent of the other party,
except in the event of a sale of all or substantially all of a party's
assets or stock, in which case no consent shall be required.
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Section 28 Waiver
28.1 No waiver of the terms and conditions of this Agreement or the failure of
either party strictly to enforce any such term or condition on one or more
occasions shall be construed as a waiver of the same or any other term or
condition of this Agreement on any other occasion.
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Section 29 Severability
29.1 If any term or provision of this Agreement is determined to be invalid or
unenforceable for any reason, it shall be adjusted rather than voided, if
possible, to achieve the intent of the parties to extent possible. In any
event, all other terms and provisions shall be deemed valid and
enforceable to the maximum extent possible.
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Section 30 Governing Law
30.1 The validity and construction of this Agreement shall be governed by the
laws of the state of California. The parties hereto shall endeavor to
settle all disputes, controversies or differences which may arise between
them out of or in relation to or in connection with this Agreement
amicably by mutual consultation. In the event that the parties fail to
reach an amicable settlement within [*] after the occurrence of such
disputes, controversies or differences, such disputes, controversies or
differences shall be finally settled by arbitration in [*]. Such
arbitration will be held in accordance with the Rules of [*]. The
arbitration shall be conducted in English language. The number of
arbitrators shall be [*] and they shall be appointed in accordance
with the said rules.
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[*] Confidential treatment has been requested with respect to the omitted
portions.
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Section 31 Notices
31.1 All notices required or permitted to be made hereunder shall be delivered
by postage prepaid, registered airmail or by facsimile addressed to the
party for whom intended at the following address or at such other address
as the intended recipient previously shall have designated by written
notice:
If to Samsung:
[*]
18th Floor,
Samsung Plaza Building
263, Seohyeon-Dong, Bundang-Gu
Sungnam-Si, Kyungki-Do, Korea
463-050 Bundang P.O. Box 32
If to Metawave
[*]
1684 Dell Avenue
Campbell, CA 95070 USA
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[*] Confidential Treatment Request
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Section 32 Headings
32.1 The headings to the Sections in this Agreement are inserted for
convenience of reference only and shall not affect the construction of
this Agreement.
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Section 33 Entire Agreement
33.1 All prior negotiations between the parties hereto shall be merged in this
Agreement. This Agreement constitutes the entire agreement between the
parties with respect to the subject matter hereof, and there are no
understandings or representations of any kind except as expressly set
forth herein. This Agreement cannot be altered, changed, supplemented or
amended except by written instrument or instruments signed by the parties
hereto.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
in duplicate by their authorized representatives as of the day and year first
written above.
Samsung Electronic Corporation Ltd. Metawave Communications Corporation
By /s/ Yw Chung By /s/ Robert Hunsberger
-------------------------------- ---------------------------------
Title Director Title Chief Executive Officer
------------------------------ ------------------------------
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Annex A
[*]
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[*] Confidential Treatment Request
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Annex B
SAMSUNG Furnished Items and Services
Months
Item Description Quantity AEDA*
- ----- ----------- -------- -------
1 [*] [*] [*]
2 [*] [*] [*]
3 [*] [*] [*]
4 [*] [*] [*]
* Months After Effective Date of Agreement
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[*] Confidential Treatment Request
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Annex C
Metawave Component Prices
Metawave will sell [*] units to Samsung in accordance with Section 15, at the
following prices:
Per [*] for quantities from [*] [*]
Metawave shall provide technical support for the products and services delivered
in accordance with the terms of this agreement. In the event that any Product
does not function in accordance with the Specifications, Metawave shall provide
technical assistance to resolve issues according to the following table:
- --------------------------------------------------------------------------------------
Level Description Metawave Required
Resolution Time
- --------------------------------------------------------------------------------------
Severity 1 [*] [*]
- --------------------------------------------------------------------------------------
Severity 2 [*] [*]
- --------------------------------------------------------------------------------------
Severity 3 [*] [*]
- --------------------------------------------------------------------------------------
Severity 4 [*] [*]
- --------------------------------------------------------------------------------------
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[*] Confidential treatment has been requested with respect to the omitted
portions.
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Annex D
[*]
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[*] Confidential Treatment Request
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Annex E
[*]
- ----------------------------------
[*] Confidential Treatment Request
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Annex F
[*]
- ----------------------------------
[*] Confidential Treatment Request
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