Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
TERMINATION AGREEMENT AND MUTUAL RELEASES
This Termination Agreement and Mutual Releases (the "Agreement"),
effective as of October 8, 2001 (the "Effective Date"), is entered into by and
among GEOWORKS CORPORATION ("Geoworks"), TELCORDIA TECHNOLOGIES, INC., formerly
known as Bell Communications Research, Inc. ("Telcordia"), GOAMERICA, INC.
("GoAmerica") and [**].
WHEREAS, Telcordia and GoAmerica's wholly-owned subsidiary, GoAmerica
Communications Corp. (GoAmerica and GoAmerica Communications Corp. are
hereinafter collectively referred to as "GoAmerica"), entered into an Agreement
for License of Software and the Provision of Ancillary and Maintenance Services
dated October 21, 1996 (the "License Agreement");
WHEREAS, Telcordia, GoAmerica and [**] entered into a Settlement
Agreement and Mutual Releases (the "Settlement Agreement") dated April 22, 1999
(sometimes referred to as the "Effective Date of the Settlement Agreement"
below);
WHEREAS, Telcordia and GoAmerica entered into Amendment No. 1 to the
License Agreement on April 22, 1999 and entered into Amendment No. 2 to the
License Agreement dated April 18, 2000 (the License Agreement, Amendment No. 1
and Amendment No. 2 are hereinafter collectively referred to as the "License
Agreement");
WHEREAS, on July 24, 2000, Telcordia assigned substantially all of the
assets of its AirBoss business unit to Geoworks NJ Corporation (formerly known
as AirBoss Acquisition Corporation), a wholly owned subsidiary of Geoworks
Corporation (collectively, "Geoworks"),
WHEREAS, the License Agreement expired by its terms on April 21, 2001;
WHEREAS, a dispute has arisen among Telcordia, Geoworks and GoAmerica
concerning the License Agreement and the Settlement Agreement and the parties
now wish to settle all disputes existing among them; and
WHEREAS, neither this Agreement, nor the negotiations leading up to
this Agreement, nor the payment of any consideration in this Agreement shall be
taken to be an admission of any kind by any party hereto;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein and for other good and valuable consideration,
receipt of which is hereby acknowledged, the parties agree as follows:
1. DEFINITIONS
Except as set forth below or as otherwise defined herein, all
capitalized terms shall have the respective meanings set forth in the License
Agreement. For purposes of this Agreement, the following terms shall have the
following meanings:
1.0 "AirBoss Technology" shall mean the following as it existed on the
Effective Date of the Settlement Agreement: the AirBoss HDML and HTML
Microbrowser, the AirBoss Mobile Application Toolkit (ABMAT), AirBrowse,
AirMail, and the client and server based transport designed to be used in
conjunction with AirBoss HDML and HTML Microbrowser, the AirBoss Mobile
Application Toolkit (ABMAT), AirBrowse, AirMail and those portions of the server
based software designed to be used with the foregoing technology, and all
related documentation.
1.1 "Go.Web HDML Content Viewer" shall mean the software application
which operates on the RIM 950 Pager as it existed on the Effective Date of the
Settlement Agreement.
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1.2 "Go.Web HTML Content Viewer" shall mean the software application
based on the RIM 950 Interactive Pager as it existed on the Effective Date of
the Settlement Agreement.
1.3 "Go.Web Technology" shall mean the Go.Web HDML Content Viewer, the
Go.Web HTML Content Viewer, the client and server based transport designed to be
used in conjunction with the Go.Web HDML Content Viewer and the Go.Web HTML
Content Viewer and those portions of the server based software designed to be
used with the foregoing technology as it existed on the Effective Date of the
Settlement Agreement, and all related documentation.
1.4 "Intellectual Property" shall mean (a) any and all inventions,
developments, improvements, discoveries, know-how, concepts and ideas, whether
patentable or not in any jurisdiction and whether or not reduced to practice,
(b) any and all patents and patent applications (including without limitation
reissues, reexaminations, continuations, divisions, continuations-in-part,
extensions, revisions and counterparts thereof in any jurisdiction), patent
disclosures, revalidations, industrial designs, industrial models and utility
models, (c) any and all trademarks, service marks, certification marks, logos,
trade dress, trade names, corporate names, brand names, domain names and all
other indicia of origin (whether registered or unregistered), and including all
goodwill associated therewith and all applications and registrations therefor in
any jurisdiction and any extension, modification or renewal of any such
application or registration, (d) any and all copyrights, copyright registrations
and applications for registration of copyrights in any jurisdiction, and any
renewals or extensions thereof, (e) any and all writings and other works of
authorship, whether copyrighted, copyrightable or not in any jurisdiction, such
works including, without limitation, computer programs and software (including
source code, object code, data, databases and documentation therefor), together
with all translations,
3
adaptations, derivations and combinations thereof, (f) any and all mask works
and other semiconductor chip rights and registrations thereof, (g) any and all
non-public information, trade secrets and proprietary or confidential
information (including without limitation ideas, research and development,
know-how, formulas, compositions, manufacturing and production processes and
techniques, technical data, designs, drawings, specifications, customer and
supplier lists, pricing and cost information and business and marketing plans
and proposals) and rights in any jurisdiction to limit the use or disclosure
thereof by any person, (h) any and all other intellectual property or
proprietary rights, (i) any and all agreements, licenses, immunities, covenants
not to sue and the like relating to any of the foregoing, (j) any and all copies
and tangible embodiments of any of the foregoing (in whatever form or medium),
and (k) any and all claims or causes of action arising out of or related to any
infringement or misappropriation of any of the foregoing.
2. OBLIGATIONS OF GOAMERICA
2.1 In consideration of the licenses conferred by Geoworks pursuant to
the Patent License attached as Exhibit A as well as the other benefits and
promises described below, GoAmerica shall pay to Geoworks the sum of
$1,750,000.00 (the "Payment"). The first $1,000,000.00 of the Payment shall be
paid to Geoworks by wire transfer by October 9, 2001, and the remaining
$750,000.00 of the Payment shall be paid to Geoworks by wire transfer in
installments as follows: $250,000.00 by October 31, 2001, $250,000.00 by
November 30, 2001 and $250,000.00 by December 31, 2001.
2.2 GoAmerica hereby consents to Telcordia's assignment of the License
Agreement and GoAmerica and [**] hereby consent to Telcordia's assignment
of the Settlement Agreement to Geoworks, effective July 24, 2000.
4
2.3 GoAmerica represents and warrants that as of the Effective Date it
has:
a. ceased all use of the Software and Documentation;
b. ceased licensing or furnishing the Client Software to End Users
and Enterprise Entities;
c. returned to Geoworks all copies of the Software and
Documentation or destroyed the same, except for those portions
of the Documentation necessary for maintenance of the Client
Software sublicensed to End Users and Enterprise Entities; and
d. instructed the Escrow Agent to return all copies of the
escrowed materials to Geoworks.
2.4 As among the parties, GoAmerica acknowledges and agrees that
Geoworks or Telcordia is the sole and exclusive owner of all right, title and
interest in and to all Intellectual Property throughout the world in respect of
the AirBoss Technology.
3. OBLIGATIONS OF GEOWORKS AND TELCORDIA
3.1 Geoworks and Telcordia represent and warrant that each has returned
to GoAmerica or destroyed all Confidential Information of GoAmerica in either's
possession prior to the Effective Date.
3.2 As among the parties, Geoworks acknowledges and agrees that
GoAmerica is the sole and exclusive owner of all right, title and interest in
and to all Intellectual Property throughout the world in respect of the Go.Web
Technology.
5
3.3 Geoworks agrees that it will never challenge or contest directly or
indirectly GoAmerica's ownership of or its right to make, have made, use, sell
or license its Go.Web Technology worldwide, nor assert any right or interest in
the Go.Web Technology.
3.4 Telcordia agrees that it does not have nor will it assert any
Intellectual Property rights or interest in the Go.Web Technology.
3.5 Geoworks agrees that it will never commence or support, financially
or otherwise, directly or indirectly, any lawsuit or other proceeding in respect
of the Go.Web Technology against GoAmerica.
3.6 Concurrently with the execution of this Agreement, Geoworks and
GoAmerica shall execute a license granting GoAmerica rights under U.S. Patent
No. [**] and U.S. Patent No. [**] ("Patent License"). A copy of the Patent
License is attached hereto as Exhibit A and incorporated herein by reference.
4. TERMINATION OF OBLIGATIONS
The parties agree that, with the exception of Sections 6.3, 6.4, 6.5,
7, 8, 9, 10.6, 11 and 12 of the License Agreement and Sections 9, 11, 12, 13 and
14 of the Settlement Agreement, all existing and future obligations of the
parties under the License Agreement and the Settlement Agreement are hereby
terminated to the extent that they have not previously expired. Specifically,
GoAmerica shall have no further obligation to report to Geoworks or Telcordia
pursuant to Section 5.10 of the License Agreement; nor shall any additional or
future royalties be payable to Geoworks or Telcordia by GoAmerica.
6
5. MUTUAL RELEASES
5.1 Geoworks hereby agrees to and do for and on its own behalf and on
behalf of its respective predecessors, successors, and assigns, and all of their
respective directors, stockholders, officers, employees and agents, release,
acquit and forever discharge GoAmerica and all of its past and present
corporations, partnerships, subsidiaries, affiliates, successors and assigns and
all of their respective partners, shareholders, directors, officers, agents,
employees, including without limitation [**], attorneys, representatives,
resellers, distributors and direct and indirect subscribers and customers, of
and from any and all claims, demands, actions, suits, causes of action,
controversies, debts, costs, expenses, accounts, damages, judgments, losses and
liabilities whatsoever, in law or equity, known or unknown, whether or not
concealed or hidden, which were or could have been asserted by Geoworks or
Telcordia against GoAmerica prior to the Effective Date in connection with the
License Agreement, Settlement Agreement and/or Go.Web Technology. Geoworks is
not presently aware of any facts that would give rise to a claim or action
against GoAmerica. This release does not apply to any continuing obligations of
GoAmerica or [**] under this Agreement.
5.2 GoAmerica hereby agrees to and do for and on its own behalf and on
behalf of its predecessors, successors, and assigns and all of their respective
directors, stockholders, officers, employees and agents, release, acquit and
forever discharge Geoworks and Telcordia and all of their respective past and
present corporations, partnerships, subsidiaries, affiliates, successors and
assigns and all of their respective partners, shareholders, directors, officers,
agents, attorneys and representatives, of and from any and all claims, demands,
actions, suits, causes of action, controversies, debts, costs, expenses,
accounts, damages, judgments, losses and liabilities whatsoever, in law or
equity, known or unknown, whether or not concealed or hidden, which
7
were or could have been asserted by GoAmerica against Geoworks or Telcordia
prior to the Effective Date in connection with the License Agreement or
Settlement Agreement and/or Go.Web Technology. GoAmerica is not presently aware
of any facts that would give rise to a claim or action against Geoworks or
Telcordia. This release does not apply to any continuing obligations of Geoworks
or Telcordia under this Agreement.
5.3 Telcordia hereby agrees to and do for and on its own behalf and on
behalf of its respective predecessors, successors, and assigns, and all of their
respective directors, stockholders, officers, employees and agents, release,
acquit and forever discharge GoAmerica and all of its past and present
corporations, partnerships, subsidiaries, affiliates, successors and assigns and
all of their respective partners, shareholders, directors, officers, agents,
employees, including without limitation [**], attorneys, representatives,
resellers, distributors and direct and indirect subscribers and customers, of
and from any and all claims, demands, actions, suits, causes of action,
controversies, debts, costs, expenses, accounts, damages, judgments, losses and
liabilities whatsoever, in law or equity, known or unknown, whether or not
concealed or hidden, which were or could have been asserted by Telcordia against
GoAmerica prior to the Effective Date in connection with the License Agreement,
Settlement Agreement and/or Go.Web Technology. Telcordia is not presently aware
of any facts that would give rise to a claim or action against GoAmerica. This
release does not apply to any continuing obligations of GoAmerica or [**] under
this Agreement, or to any continuing obligations of [**] created under his
Intellectual Property Agreement with Telcordia.
5.4 [**] hereby agrees to and does release, acquit and forever
discharge Geoworks and Telcordia and all of their respective past and present
corporations, partnerships, subsidiaries, affiliates, successors and assigns and
all of their respective partners, shareholders, directors,
8
officers, agents, attorneys and representatives, of and from any and all claims,
demands, actions, suits, causes of action, controversies, debts, costs,
expenses, accounts, damages, judgments, losses and liabilities whatsoever, in
law or equity, known or unknown, whether or not concealed or hidden, which were
or could have been asserted by [**] against Geoworks or Telcordia prior to the
Effective Date in connection with the License Agreement or Settlement Agreement
and/or Go.Web Technology. [**] is not presently aware of any facts that would
give rise to a claim or action against Geoworks or Telcordia. This release does
not apply to any continuing obligations of Geoworks or Telcordia under this
Agreement or of Telcordia under its Intellectual Property Agreement with [**].
6. MUTUAL OBLIGATIONS, WARRANTIES AND REPRESENTATIONS
6.1 Each party to this Agreement represents and warrants to the others
that:
(a) the person signing this Agreement on its behalf has the
requisite power and authority to enter into this Agreement, and all necessary
corporate and other action to enter into this Agreement has been taken;
(b) this Agreement has been duly executed and delivered by it and
constitutes its legal, valid and binding obligations, enforceable in accordance
with the terms set forth herein; and
(c) it has made such investigation of the facts pertaining to this
Agreement as it deems necessary and has received all such information as it
deems necessary and appropriate to enter into this Agreement.
9
6.2 This Agreement is not intended and shall not be construed or deemed
an admission adverse to any of the parties hereto of (a) any liability to or any
person and/or entity, (b) the commission of any act or wrong, or (c) any
violation of any law or regulation.
7. MISCELLANEOUS
7.1 The provisions of this Agreement are binding on the parties' lawful
successors and assigns. The obligations of Geoworks and Telcordia hereunder are
separate and not joint, that is, Telcordia shall not be liable for any breach by
Geoworks and Geoworks shall not be liable for any breach by Telcordia.
7.2 This Agreement, together with the sections of the License Agreement
and Settlement Agreement set forth in Section 4 above, constitutes the entire
agreement and understanding among the parties with respect to the subject matter
hereof and all prior discussions, representations, understandings and agreements
with respect to the subject matter hereof, express or implied, written or oral,
are superseded and merged into this Agreement.
7.3 The headings used in this Agreement are for reference purposes only
and shall not affect in any way the meaning or interpretation of this Agreement.
7.4 The parties agree that the provisions of this Agreement shall be
interpreted and enforced in accordance with the laws of the State of New Jersey.
Any dispute regarding this Agreement shall be presented first to the federal
court in New Jersey having jurisdiction. In the event of any dispute, each
party's sole recourse shall be for monetary damages and/or specific performance
of the terms of this Agreement. The prevailing party in any dispute shall be
entitled to recover its reasonable attorneys' and experts' fees. Late payments
shall bear interest at the rate of one percent per month.
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7.5 The terms and conditions of this Agreement shall not be disclosed
by any party without the prior written consent of the other parties. This
obligation is subject to the following exceptions:
(a) Disclosure is permissible if required by government or court
order, provided that the party so ordered shall take all reasonable steps (e.g.,
discovery protective order) to prevent or otherwise minimize the disclosure of
this Agreement, and shall provide prior written notice to the other parties of
the circumstances surrounding such disclosure, to enable them to seek a
protective order.
(b) Disclosure is permissible if otherwise required by law.
(c) Disclosure is permissible if required to enforce rights under
this Agreement.
(d) Each party may disclose this Agreement or its contents to the
extent reasonably necessary, on a confidential basis, to its accountants,
attorneys, financial advisors, its present or future providers of venture
capital and/or potential investors in or acquirers of such party.
7.6 If any provision of this Agreement should be adjudged to be
unreasonable, then the scope thereof shall be reduced or modified to the extent
necessary to make the provision enforceable.
7.7 In the event that any term or provision of this Agreement shall for
any reason be held to be invalid, illegal or unenforceable in any respect, this
Agreement shall continue in full force and effect, except that it shall be
interpreted and construed as if such terms and provisions, to the extent that
the same shall have been held to be invalid, illegal or unenforceable, had never
been contained herein.
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7.8 Any notice given under this Agreement shall be in writing,
addressed to the parties as indicated below, or to such other address as may
hereinafter be designated by any party to the other by notice in writing. Any
such notice shall be given personally, by certified or registered mail, postage
fully prepaid, return receipt requested. Any notice shall be deemed given on the
date of delivery, if given personally, or if given by mail, then on the date on
which the return receipt is postmarked, evidencing delivery or any inability to
deliver for any reason, provided in the event receipt is not so postmarked, then
such notice shall be deemed to have been given five (5) days after the date of
posting by the sender. Addresses for such notices are as follows:
GoAmerica, Inc. Geoworks Corp.
Chief Financial Officer Chief Financial Officer
433 Hackensack Ave 960 Atlantic Ave.
Hackensack, NJ 07601 Alameda CA 94501
with a copy to:
Virginia R. Richard, Esq.
Winston & Strawn
200 Park Avenue
New York, New York 10166
[**] Telcordia Technologies, Inc.
GoAmerica, Inc. Joseph Giordano
433 Hackensack Ave 445 South Street 1J106R
Hackensack, NJ 07601 Morristown, New Jersey 07960
7.9 No modification or amendment of any of the provisions contained in
this Agreement shall be valid unless made in writing and executed by officers of
all parties. No waiver of any of the provisions contained in this Agreement
shall be valid unless made in writing and executed by an officer of the waiving
party.
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7.10 This Agreement may be executed on facsimile copies in four
counterparts, each of which shall be deemed an original, but all of which taken
together shall constitute one and the same agreement.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their authorized representative, each signatory having the requisite
corporate authority to do so.
GoAmerica, Inc.: Geoworks Corporation:
By: /s/ Aaron Dobrinsky By: /s/ David Pepe
------------------------------ --------------------------------
Senior Vice President of
Its: Chief Executive Officer Its: Products & Services
----------------------------- -------------------------------
Date: October 8, 2001 Date: October 9, 2001
---------------------------- ------------------------------
[**]: Telcordia Technologies, Inc.:
/s/ [**] By: /s/ Joseph Giordano
- --------------------------------- --------------------------------
Date: Its: Associate General Counsel
---------------------------- -------------------------------
Date: October 5, 2001
------------------------------