EXHIBIT 99.1
SECOND AMENDED AND RESTATED INTELLECTUAL PROPERTY
ASSIGNMENT AND LICENSE AGREEMENT (the "Second
Amended and Restated Agreement"), dated November
21, 2006 and effective as of October 01, 2006 (the
"Effective Date") by and between ATC Technologies,
LLC, a Delaware limited liability company
("Technologies") and TerreStar Networks Inc., a
Delaware corporation ("TerreStar").
INTRODUCTION
WHEREAS, Technologies and TerreStar each are parties to the Amended and
Restated Intellectual Property Assignment and License Agreement dated May 11,
2005 by and between Technologies and TerreStar (the "First Amended and Restated
Agreement"); and
WHEREAS, Technologies and TerreStar each have undergone corporate
transitions resulting in reduced common ownership and control as between
Technologies and TerreStar; and
WHEREAS, Technologies and TerreStar have agreed to certain changes to the
agreements reflected and memorialized in the First Amended and Restated
Agreement; and
WHEREAS, the Parties have decided to terminate the Management Services &
Shared Facilities Agreement between Mobile Satellite Ventures, LP ("MSV LP") and
TerreStar dated May 11, 2005, contemporaneous herewith; and
WHEREAS, the Parties have decided to terminate the Amended and Restated
Cost Sharing Agreement between Technologies and TerreStar dated May 11, 2005,
contemporaneous herewith, and include certain provisions in this Second Amended
and Restated Agreement relating to the sharing of certain costs by and between
the Parties; and
WHEREAS, Technologies and TerreStar desire to amend and restate the First
Amended and Restated Agreement as provided herein.
In consideration of the mutual benefits to be derived from this Second
Amended and Restated Agreement and of the other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, the Parties,
intending to be legally bound, do hereby agree as follows:
ARTICLE I.
DEFINITIONS
1.1 Defined Terms. Capitalized terms used and not otherwise defined
in this Agreement shall have the meanings set forth below in this Section 1.1.
(a) "Accused Party" has the meaning set forth in Section 6.2.
(b) "Affiliate" means, with respect to any Person, any other
Person controlling, controlled by or under common control with such Person,
whether by ownership or control of voting securities, by contract or otherwise.
Notwithstanding the foregoing and for purposes of this Agreement, TerreStar
Networks (Canada) Inc. shall be deemed to be an Affiliate of TerreStar and
Mobile Satellite Ventures (Canada) Inc. and Mobile Satellite Ventures Holdings
(Canada) Inc. shall be deemed to be an Affiliate of Technologies and MSV.
(c) "Affiliated Sublicensee" means an Affiliate of TerreStar to
which TerreStar may have granted rights under and pursuant to the First Amended
and Restated Agreement.
(d) "Ancillary Terrestrial Component" has the meaning set forth
in 47 C.F.R. ss.25.201 (2005).
(e) "Collaboration Period" means the period from and including
May 11, 2005, through and including October 01, 2006, the Effective Date of this
Second Amended and Restated Agreement.
(f) "Confidential Information" has the meaning set forth in
Section 4.1.
(g) "Disclosure Requirements" has the meaning set forth in
Section 4.3(a).
(h) "Effective Date" has the meaning set forth in the preamble.
(i) "Feeder Links" means the radio links that transmit a user's
messages in both directions between a satellite and its gateway earth station,
thereby connecting a Mobile Satellite Service network with a public switched
telephone network, provided that the domestic telecommunications authority in
the country in which such links are operated has allocated and continues to
allocate the frequencies used by those links for such prescribed purposes.
(j) "Insolvency Event" has the meaning set forth in Section
9.2(c).
(k) "Intellectual Property" means (i) all Patents, Know-How,
and Marks and (ii) all domestic and foreign copyrights (registered or
unregistered), mask works, works of authorship in any form or media, and all
other intellectual property or proprietary rights of any kind, other than any
registered and unregistered U.S. and foreign trade names, trademarks, trade
dress, service marks, logos and internet domain names, together with all
applications related thereto and all goodwill associated therewith.
(l) "Inter-Satellite Service Links" means links by which
satellites in a constellation may communicate with each other, provided that the
domestic telecommunications authority in the country in which such links are
operated has allocated and continues to allocate the frequencies used by those
links for such prescribed purposes.
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(m) "L-Band" means the frequency band residing at 1626.5-1660.5
MHz (Earth-to-space), 1668-1675 MHz (Earth-to-space) and 1518-1559 MHz
(Space-to-earth), as allocated for Mobile Satellite Service by the International
Telecommunications Union ("ITU") for Regions 1, 2 and 3, as those regions are
defined by ITU Radio Regulations, provided that notwithstanding the above, none
of the frequencies described in this subsection shall be considered to be
"L-Band" frequency in a given country unless that country's domestic
telecommunications authority has allocated and continues to allocate such
frequency for Mobile Satellite Services uses.
(n) "Legal Requirements" means the laws, statutes, rules, and
similar regulations, applicable to the relevant Intellectual Property.
(o) "Marks" means all registered and unregistered U.S. and
foreign trade names, trademarks, trade dress, service marks, logos and internet
domain names, together with all applications related thereto and all goodwill
associated therewith, except to the extent that any such trade name, trademark,
trade dress, service mark, logo, internet domain name, or applications that
relate thereto and all goodwill associated therewith are used to identify
Technologies or TerreStar or their respective Affiliates as the provider of a
particular product or service.
(p) "Mobile Satellite Service" has the meaning set forth in 47
C.F.R. ss.25.201 (2005).
(q) "MSV LP" has the meaning set forth in the Whereas
provisions.
(r) "MSV LP Agreement" means that Amended and Restated
Intellectual Property Assignment and License Agreement dated May 11, 2005
entered into by and between Technologies and MSV LP.
(s) "MSV LP Intellectual Property" means the Intellectual
Property assigned or licensed to Technologies pursuant to the MSV LP Agreement.
(t) "MSV LP L-Band Services" means communications services that
are provided or proposed to be provided using solely (i) the L-Band as allocated
for such purposes in the applicable country and in accordance with all
corresponding authorizations and all applicable laws, rules and regulations, so
long as such services consist only of a Mobile Satellite Service (MSS) or a
Mobile Satellite Service with an Ancillary Terrestrial Component (ATC), as
defined herein, and (ii) Feeder Links, Inter-Satellite Service Links and
Tracking, Telemetry & Command Spectrum for the sole purpose of supporting the
MSS and/or ATC services set forth in subclause (i).
(u) "MSVI" means MSV International, LLC, an affiliate of MSV LP
and Technologies.
(v) "MSVI Agreement" means that Amended and Restated
Intellectual Property Assignment and License Agreement dated May 11, 2005
entered into by and between Technologies and MSVI.
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(w) "MSVI Intellectual Property" means the Intellectual
Property assigned or licensed to Technologies pursuant to the MSVI Agreement.
(x) "Non-Accused Party" has the meaning set forth in Section
6.2.
(y) "Old Assignment Agreement" means the Assignment Agreement
by and among Mobile Satellite Ventures LLC, Telcom Satellite Ventures Inc. and
Rajendra Singh, dated as of January 8, 2001.
(z) "Party" or "Parties" means each of TerreStar and
Technologies individually, or both TerreStar and Technologies collectively, as
the case may be.
(aa) "Patents" means all domestic, foreign and international
patents and patent applications, and all provisionals, divisionals, renewals,
continuations, continuations-in-parts, reissues, re-examinations and extensions
thereof, and all patents and pending applications claiming the benefit of a
priority date of any of the foregoing under domestic, foreign or international
conventions, laws or regulations, and all U.S. and foreign patents which may be
granted thereon and all reissues, reexaminations and extensions thereof.
(bb) "Permitted Sublicensees" means the Affiliated Sublicensees
and the Third Party Sublicensees to which TerreStar may have granted rights
under and pursuant to the First Amended and Restated Agreement.
(cc) "Person" means any individual, trust, corporation,
partnership, limited liability company, joint venture or other business
association or entity, court, governmental body or governmental agency.
(dd) "S-Band" means (i) in International Telecommunications
Union ("ITU") Regions 1 and 3, as defined in ITU Radio Regulations, the
frequency band residing at 1980-2010 MHz (Earth-to-space) and 2170-2200 MHz
(space-to-Earth); (ii) in ITU Region 2, excluding the United States but
otherwise as defined in ITU Radio Regulations, the frequency band residing at
1930-1970 MHz (Earth-to-space on a secondary basis), 1980-2025 MHz
(Earth-to-space), 2120-2160 MHz (space-to-Earth on a secondary basis), and
2160-2200 MHz (space-to-Earth); and (iii) in the United States, the frequency
band residing at 2000-2020 MHz (Earth-to-space) and 2180-2200 MHz
(space-to-Earth), as allocated for Mobile Satellite Service under the Federal
Communications Commission's Table of Frequency Allocations codified at 47 C.F.R.
ss. 2.106; and provided that notwithstanding the above, none of the frequencies
described in this subsection shall be considered to be an "S-Band" frequency in
a given country unless that country's domestic telecommunications authority has
allocated and continues to allocate such frequency for Mobile Satellite Service
uses.
(ee) "Second Amended and Restated Agreement" has the meaning set
forth in the preamble.
(ff) "Technologies" has the meaning set forth in the preamble.
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(gg) "Technologies Collaboration Intellectual Property" means
(i) the MSVI Intellectual Property, (ii) the MSV LP Intellectual Property, and
(iii) all other Intellectual Property developed, acquired or licensed by
Technologies or any Affiliate of Technologies during the Collaboration Period.
(hh) "Technologies Intellectual Property" means: (i) all
Technologies Collaboration Intellectual Property and (ii) all Intellectual
Property developed, acquired, or otherwise owned by Technologies or any
Affiliate of Technologies at any time within ten (10) years following the
Effective Date of this Second Amended and Restated Agreement.
(ii) "Technologies Patents" means all Patents included in the
Technologies Intellectual Property.
(jj) "Term" has the meaning set forth in Section 9.1.
(kk) "TerreStar" has the meaning set forth in the preamble.
(ll) "TerreStar - HNS Contract" means that certain contract
between TerreStar and Hughes Network Systems, LLC dated December, 2005, for the
TerreStar S-Band Satellite Beam Access Subsystem, as such contract may be
amended by modification or by successor contracts entered into by TerreStar and
Hughes Network Systems, LLC.
(mm) "TerreStar Collaboration Intellectual Property" shall have
the same meaning as Collaboration Intellectual Property under the First Amended
and Restated Agreement and as such shall mean all Intellectual Property
developed, acquired, used or licensed by TerreStar or a Permitted Sublicensee
during the Collaboration Period under the First Amended and Restated Agreement
(and in the case of any Third Party Sublicensees, such Intellectual Property is
developed, acquired, used or licensed pursuant to its rights or obligations
under, or otherwise in connection with, the applicable sublicense agreement).
(nn) "TerreStar Intellectual Property" means: (i) all TerreStar
Collaboration Intellectual Property and (ii) all Intellectual Property
developed, acquired, or otherwise owned by TerreStar or any Affiliate of
TerreStar at any time within ten (10) years following the Effective Date of this
Second Amended and Restated Agreement.
(oo) "TerreStar Know-How" means all information, including all
trade secrets, know-how, unpatented technical information, software (other than
commercially available, off-the-shelf software) and other forms of code,
databases, data, manuals, formulae, specifications, data and procedures for
experiments and tests, flow charts, apparatus plans, drawings and sketches,
designs, ideas, discoveries, inventions, devices, methods and techniques which
arise out of the TerreStar - HNS Contract.
(pp) "TerreStar Patents" means all Patents included in the
TerreStar Intellectual Property.
(qq) "TerreStar S-Band Services" means solely the communications
services that are provided or proposed to be provided using solely (i) the
S-Band as allocated for such purposes in the applicable country and in
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accordance with all corresponding authorizations and all applicable laws, rules
and regulations, so long as such services consist only of a Mobile Satellite
Service (MSS) or a Mobile Satellite Service with an Ancillary Terrestrial
Component (ATC), as defined herein, and (ii) Feeder Links, Inter-Satellite
Service Links and Tracking, Telemetry & Command Spectrum for the sole purpose of
supporting the MSS and/or ATC services set forth in subclause (i).
(rr) "Third Party" means any Person who is not a Party.
(ss) "Third Party Sublicensee" means a Third Party sublicensee
to which TerreStar may have granted rights under and pursuant to the First
Amended and Restated Agreement.
(tt) "Tracking, Telemetry & Command" means the radio links which
provide data on satellite functions via a two-way telemetry link between a
satellite and a controlling earth station or control center, provided that the
domestic telecommunications authority in the country in which such links are
operated has allocated and continues to allocate the frequencies for such
prescribed purposes.
1.2 Descriptive Headings; Certain Interpretations.
(a) Descriptive headings are for convenience only and shall not
control or affect the meaning or construction of any provision of this Second
Amended and Restated Agreement.
(b) Except as otherwise expressly provided in this Second
Amended and Restated Agreement, the following rules of interpretation apply to
this Second Amended and Restated Agreement: (i) the singular includes the plural
and the plural includes the singular; (ii) "or" and "any" are not exclusive and
"include" and "including" are not limiting; (iii) a reference to any agreement
or other contract includes permitted supplements and amendments; (iv) a
reference to a law includes any amendment or modification to such law and any
rules or regulations issued thereunder; (v) a reference to a person includes its
permitted successors and assigns; (vi) the words "hereby," "herein," "hereunder"
and words of similar import refer to this Second Amended and Restated Agreement
as a whole (including any Schedules and Exhibits) and not merely to the specific
section, paragraph or clause in which any such word appears; and (vii) a
reference in this Second Amended and Restated Agreement to an Article, Section,
Exhibit or Schedule is to the Article, Section, Exhibit or Schedule of this
Second Amended and Restated Agreement.
(c) This Second Amended and Restated Agreement has been
negotiated and executed in the English language. Translations of this Second
Amended and Restated Agreement in foreign languages are for convenience only and
will have no force and effect on the legal interpretation of this Second Amended
and Restated Agreement.
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ARTICLE II.
ALLOCATION OF COSTS
2.1 Allocation of Costs. Beginning as of the Effective Date and
continuing for a period of ten (10) years therefrom, MSV LP, on the one hand,
and TerreStar, on the other hand, shall fund and share equally (50%/50%) the
costs and expenses incurred under or in connection with the preparation, filing,
prosecution, examination and maintenance of Patents including, but not limited
to outside counsel fees and expenses and other directly related expenses by one
party in a given calendar year only to the extent that such costs and expenses
exceed the costs and expenses incurred by the other party in the same calendar
year under or in connection with the preparation, filing, prosecution,
examination and maintenance of Patents including, but not limited to outside
counsel fees and expenses and other directly related expenses (such excess costs
and expenses referred to as "Patent Expenses").
2.2 Notwithstanding the foregoing, MSV LP shall not be liable to
TerreStar, pursuant to this Article II during any calendar year, for any Patent
Expenses incurred by TerreStar in a given calendar year, to the extent that
fifty percent (50%) of the amount of Patent Expenses incurred by TerreStar over
and above those Patent Expenses incurred by MSV LP in the same calendar year
exceed one million dollars ($1,000,000).
2.3 Notwithstanding the foregoing, TerreStar shall not be liable to
MSV LP, pursuant to this Article II during any calendar year, for any Patent
Expenses incurred by MSV LP in a given calendar year, if and to the extent that
fifty percent (50%) of the amount of Patent Expenses incurred by MSV LP over and
above those Patent Expenses incurred by TerreStar in the same calendar year
exceed one million dollars ($1,000,000).
2.4 Invoicing.
(a) On an annual basis and no later than the 15th day of
February of each year during the Term, MSV LP shall provide to TerreStar and
TerreStar shall provide to MSV LP, a summary of all Patent Expenses (including
any back-up documentation supporting such summary, upon request by the Receiving
Party) that each has incurred in the previous year. (In each case, the Party
receiving the summary of Patent Expenses shall be referred to hereinafter as the
"Receiving Party.") The Receiving Party shall review the summary of Patent
Expenses and back up documentation, if any, provided by the other Party, setting
forth the Patent Expenses incurred by the other Party during the preceding year,
and shall identify any expenses included in such summary that the Receiving
Party does not believe are properly identified as Patent Expenses. The Receiving
Party shall provide a notice of objection within twenty (20) calendar days of
receipt of the summary of Patent Expenses. If no notice of objection is received
by the other Party within such period, the Receiving Party shall be deemed to
have accepted the summary of Patent Expenses and all expenses set forth therein.
If a notice of objection is provided within the requisite period, the Parties
shall work together to reach an amicable agreement regarding any questioned
expenses in order to facilitate payment of Patent Expenses in accordance with
Section 2.4 (b) below.
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(b) With regard to all undisputed Patent Expenses, the Party
incurring the lesser amount of Patent Expenses during the preceding year (the
"Remitting Party"), based upon a comparison of the summaries of unquestioned
Patent Expenses exchanged between the Parties, shall make payment, within thirty
(30) calendar days of the receipt of the summary of Patent Expenses, to the
other Party, of an amount equal to fifty percent (50%) of the amount by which
the other Party's Patent Expenses exceed the Remitting Party's Patent Expenses
for the previous year, up to the maximum liability of $1 million set forth in
Sections 2.2 and 2.3 above.
ARTICLE III.
LICENSE GRANTS
3.1 Technologies Patents. Subject to the Legal Requirements and
Section 10.2, Technologies hereby grants to TerreStar, and TerreStar accepts, a
perpetual (as described in Section 9.3(a)), world-wide, royalty-free, fully paid
up, non-exclusive, non-transferable in whole or in part, non-assignable right
and license under the Technologies Patents (a) to practice the methods claimed
in the Technologies Patents for the sole purpose of developing, operating,
implementing, providing and maintaining TerreStar S-Band Services; and (b) to
make, have made, use, sell, and import products or systems or perform services,
in either case that are claimed in the Technologies Patents for the sole purpose
of developing, operating, implementing, providing and maintaining TerreStar
S-Band Services, provided that in the event that a royalty or other payment is
due as a result of the license granted in this Section 3.1, the Parties agree to
reasonably allocate the costs between them.
3.2 TerreStar Patents and TerreStar Know-How. Subject to the Legal
Requirements and Section 10.2, TerreStar hereby grants to Technologies, and
Technologies accepts, a perpetual (as described in Section 9.3(a)), worldwide,
royalty-free, fully paid up, non-exclusive, non-transferable in whole or in
part, non-assignable right and license under the TerreStar Patents and the
TerreStar Know-How (a) to practice the methods claimed in the TerreStar Patents
or disclosed in the TerreStar Know-How for the sole purpose of developing,
operating, implementing, providing and maintaining the MSV LP L-Band Services;
and (b) to make, have made, use, sell, and import products or systems or perform
services, in each case that are claimed in the TerreStar Patents or disclosed in
the TerreStar Know-How for the sole purpose of developing, operating,
implementing, providing and maintaining MSV LP L-Band Services, provided that in
the event that a royalty or other payment is due as a result of the license
granted in this Section 3.2, the Parties agree to reasonably allocate the costs
between them.
3.3 Sublicenses.
(a) Subject to Section 3.3(c), Section 10.2 and the other terms
and conditions of this Second Amended and Restated Agreement, TerreStar shall
have the right to grant sublicenses, with the right to further sublicense, under
and in accordance with the licenses granted in Section 3.1 for the sole purpose
of developing, operating, implementing, providing and maintaining TerreStar
S-Band Services throughout the world. Any sublicense granted by TerreStar or
TerreStar sublicensees pursuant to this section shall be on terms and conditions
no less restrictive than those set forth herein and in a form substantially
similar to that attached hereto. To the extent not prohibited by U.S. law with
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respect to a government sublicense and within thirty (30) days of its execution,
TerreStar shall provide to Technologies an accurate and complete written copy of
any sublicense granted by TerreStar pursuant to this section (redacted in order
to protect confidential or sensitive information, but in all cases with
sufficient information to allow Technologies to determine that such sublicense
is in accordance with the intellectual property provisions of this Second
Amended and Restated Agreement). If and to the extent that TerreStar is
prohibited by U.S. law from providing a copy of the sublicense agreement with
respect to a government sublicense to Technologies, TerreStar will provide a
summary of the intellectual property provisions of the sublicense agreement
sufficient to allow Technologies to determine that such sublicense is in
accordance with the intellectual property provisions of this Second Amended and
Restated Agreement.
(b) Subject to Section 3.3(d), Section 10.2 and the other terms
and conditions of this Second Amended and Restated Agreement, Technologies shall
have the right to grant sublicenses, with the right to further sublicense, under
and in accordance with the licenses granted in Sections 3.2 for the sole purpose
of developing, operating, implementing, providing and maintaining MSV LP L-Band
Services throughout the world. Each sublicense to be granted by Technologies or
a sublicensee under this Section 3.3 shall be subject to the prior written
consent of TerreStar and shall be on terms and conditions no less restrictive
than those set forth herein and in a form substantially similar to that attached
hereto. To the extent not prohibited by U.S. law with respect to a government
sublicense and within thirty (30) days of its execution, Technologies shall
provide to TerreStar an accurate and complete written copy of any sublicense
granted by Technologies pursuant to this section (redacted in order to protect
confidential or sensitive information, but in all cases with sufficient
information to allow TerreStar to determine that such sublicense is in
accordance with the intellectual property provisions of this Second Amended and
Restated Agreement). If and to the extent that Technologies is prohibited by
U.S. law from providing a copy of the sublicense agreement with respect to a
government sublicense to TerreStar, Technologies will provide a summary of the
intellectual property provisions of the sublicense sufficient to allow TerreStar
to determine that such sublicense agreement is in accordance with the
intellectual property provisions of this Second Amended and Restated Agreement.
(c) TerreStar hereby guarantees the performance of all
sublicensees to which it has granted sublicenses in accordance with Section
3.3(a) above, and shall be responsible for, and shall indemnify, defend and hold
harmless Technologies and its Affiliates and their officers, directors,
employees, personnel and agents from and against, any and all claims, damages
and other costs arising from, (i) any sublicensee's breach of the terms of its
sublicense agreement or (ii) any sublicensee's violation, misappropriation, use
or misuse of Technologies Patents. TerreStar shall be entitled to prompt notice
by Technologies of any claim possibly leading to an indemnification obligation
under this provision and, at TerreStar's sole expense, to participate in any
defense or settlement of any claims relating thereto and to assume control of
such defense and settlement with counsel of its own choosing. Technologies shall
reasonably cooperate with TerreStar, at TerreStar's sole expense, in connection
with any such defense or settlement. The grant of any sublicense shall not
relieve TerreStar of its obligations under this Second Amended and Restated
Agreement, except to the extent they are satisfactorily performed by such
sublicensee.
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(d) Technologies hereby guarantees the performance of all
sublicensees to which it has granted sublicenses in accordance with Section
3.3(b) above, and shall be responsible for, and shall indemnify, defend and hold
harmless TerreStar and its Affiliates and their officers, directors, employees,
personnel and agents from and against, any and all claims, damages and other
costs arising from, (i) any sublicensee's breach of the terms of its sublicense
agreement or (ii) any sublicensee's violation, misappropriation, use or misuse
of TerreStar Patents and TerreStar Know-How. Technologies shall be entitled to
prompt notice by TerreStar of any claim possibly leading to an indemnification
obligation under this provision and, at Technologies' sole expense, to
participate in any defense or settlement of any claims relating thereto and to
assume control of such defense or settlement with counsel of its own choosing.
TerreStar shall reasonably cooperate with Technologies, at Techologies' sole
expense, in connection with any such defense or settlement. The grant of any
sublicense shall not relieve Technologies of its obligations under this Second
Amended and Restated Agreement, except to the extent they are satisfactorily
performed by such sublicensee.
(e) Notwithstanding anything herein to the contrary, in the
event a royalty or other payment is due, as a result of any sublicense granted
by TerreStar or by any sublicensee of TerreStar, or otherwise as a result of the
actions of TerreStar or a sublicensee of TerreStar, under the Old Assignment
Agreement (in particular, without limitation, Section 3.1 thereof), TerreStar
shall be solely responsible for all such royalty and other payment obligations
and all costs, fees, payments, claims, or other expenses and obligations
(including audit and reporting obligations) relating to such royalty or other
payment obligations. Without limitation to the foregoing, TerreStar (i) shall,
upon prompt written notice to TerreStar of any claim received by Technologies or
its Affiliates in respect thereof, indemnify Technologies and its Affiliates and
their officers, directors, employees, personnel and agents and shall hold
Technologies and its Affiliates and their officers, directors, employees,
personnel and agents harmless from and in respect of any such royalty and other
payment obligations and all other costs, fees, payments, claims and other
expenses and obligations (including audit and reporting obligations) relating
thereto, and (ii) shall promptly provide Technologies and its Affiliates, upon
request, with all information relating to such royalty and other payment
obligations and all other costs, fees, payments, claims and other expenses and
obligations (including audit and reporting obligations) relating thereto and
otherwise cooperate and assist Technologies and its Affiliates with any
inquiries or activities relating to any of the foregoing; provided, however,
that TerreStar shall be entitled, at TerreStar's sole expense, to participate in
any defense or settlement of any claims relating thereto and to assume control
of such defense or settlement with counsel of its own choosing; and provided
further, that Technologies and its Affiliates shall reasonably cooperate with
TerreStar, at TerreStar's sole expense, in connection with any such defense or
settlement. For the avoidance of doubt, the provisions of this Second Amended
and Restated Agreement are intended solely to govern the terms of any agreements
between the parties and not in any way to modify the obligations under the Old
Assignment Agreement.
(f) Except as expressly set forth in this Section 3.3, neither
TerreStar nor Technologies or any sublicensee of either shall license or
sublicense any rights or licenses granted hereunder.
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3.4 Cooperation. Each Party will use commercially reasonable efforts
to take or cause to be taken all action, and do or cause to be done all things
reasonably necessary, proper or advisable under applicable laws and regulations,
or reasonably requested by the other Party, to consummate, make effective,
perfect, record, and enforce the licenses and rights granted by this Second
Amended and Restated Agreement including, without limitation, upon the other
Party's request, giving such oaths, executing (or causing its Affiliates to
execute) any additional instruments necessary to effectuate the rights
contemplated under this Second Amended and Restated Agreement and filing the
same with the appropriate government entity (including, without limitation, the
United States Patent and Trademark Office).
3.5 License Obligations and Restrictions. The rights and licenses
granted hereunder are conditioned on, and subject to the following:
(a) TerreStar shall not use or disclose any Technologies
Patents beyond the grant of rights and licenses in Sections 3.1 and 3.3, and
TerreStar shall comply with all the obligations and restrictions set forth in
Article IV. Technologies shall not use or disclose any TerreStar Patents or
TerreStar Know-How beyond the grant of rights and licenses in Sections 3.2 and
3.3, and Technologies shall comply with all the obligations and restrictions set
forth in Article IV.
(b) TerreStar shall comply with and adhere to (i) any and all
usage guidelines pertaining to the Technologies Patents (including by way of
example, patent marking guidelines, software usage guidelines and trademark
usage guidelines) that may be delivered by Technologies to TerreStar, from time
to time, as well as any modifications or changes thereto upon written notice to
TerreStar thereof. Technologies shall comply with and adhere to (i) any and all
usage guidelines pertaining to the TerreStar Patents and TerreStar Know-How
(including by way of example, patent marking guidelines, software usage
guidelines and trademark usage guidelines) that may be delivered by TerreStar to
Technologies, from time to time, as well as any modifications or changes thereto
upon written notice to Technologies thereof.
(c) TerreStar shall comply with all applicable laws, rules and
regulations, including the Legal Requirements and any other rules, regulations,
guidelines, or other applicable requirements of any governmental or regulatory
authorities, that may be in effect from time to time. Without limiting the
foregoing, TerreStar further agrees that it will not export, directly or
indirectly, any technical information licensed or otherwise provided by
Technologies under this Second Amended and Restated Agreement or any products
using such technical information to a location or in a manner that, at the time
of export, requires an export license or other governmental approval, without
first obtaining the written consent to do so from the appropriate agency or
other governmental entity in accordance with applicable law. Technologies shall
comply with all applicable laws, rules and regulations, including the Legal
Requirements and any other rules, regulations, guidelines, or other applicable
requirements of any governmental or regulatory authorities, that may be in
effect from time to time. Without limiting the foregoing, Technologies further
agrees that it will not export, directly or indirectly, any technical
information licensed or otherwise provided by TerreStar under this Second
Amended and Restated Agreement or any products using such technical information
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to a location or in a manner that at the time of export requires an export
license or other governmental approval, without first obtaining the written
consent to do so from the appropriate agency or other governmental entity in
accordance with applicable law.
3.6 Reservation of Rights. Except for the licenses explicitly
granted herein, and subject to Section 3.7, Technologies shall retain all of its
rights, title and interests, in and to Technologies Intellectual Property.
Except for the licenses explicitly granted herein and subject to Section 3.7,
TerreStar shall retain all of its rights, title and interests, in and to
TerreStar Intellectual Property.
3.7 Certain Prohibition on the Practice of Licensed Intellectual
Property and New Licenses.
(a) Technologies shall have no right, express or implied, to
grant any license, express or implied, under the Technologies Intellectual
Property licensed to TerreStar hereunder for purposes of developing, operating,
implementing, providing or maintaining any communications services in the S-Band
without the prior written consent of TerreStar.
(b) TerreStar shall have no right, express or implied, to grant
any license, express or implied, under, the TerreStar Intellectual Property
licensed to Technologies hereunder for purposes of developing, operating,
implementing, providing or maintaining any communications services in the
L-Band, without the prior written consent of Technologies.
(c) All sublicenses granted by either Party or their
sublicensees under this Second Amended and Restated Agreement shall be no
broader than and shall be in strict accordance with the licenses and the
corresponding restrictions and limitations thereon as set forth in this Second
Amended and Restated Agreement.
ARTICLE IV.
CONFIDENTIALITY AND NON-USE
4.1 Treatment of Confidential Information. Each Party agrees that
during the Term and thereafter, that it shall (a) maintain in confidence the
Confidential Information of the other Party to the same extent that it maintains
its own proprietary industrial information of similar kind and value, but using
not less than a reasonable standard of care, (b) not disclose such Confidential
Information to any Third Party without prior written consent of the other Party,
except for disclosures made in accordance with Section 4.3, and (c) not use such
Confidential Information for any purpose except those contemplated by this
Agreement. In furtherance of the foregoing, any employees to whom either Party
discloses any Confidential Information of the other Party must be bound in
writing, prior to any such disclosure, by obligations of confidentiality and
non-use at least equivalent in scope to those set forth in this Article IV. As
used herein, "Confidential Information" shall mean the Intellectual Property and
all tangible embodiments thereof, and all other information provided by or on
behalf of either Party to the other Party in connection with the discussions and
negotiations pertaining to, or in the course of performing, this Agreement.
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4.2 Exclusions. The obligations set forth in Section 4.1 above shall
not apply with respect to any portion of Confidential Information which the
receiving Party can demonstrate, by contemporaneous written records or other
competent proof:
(a) was already known to the receiving Party, other than under
an obligation of confidentiality or non-use, at the time of disclosure to that
Party; provided, however, that this exception shall not apply to any
Intellectual Property that was licensed by one Party to the other Party
hereunder;
(b) was part of or became part of the public domain (or has
been published in the public domain) through no fault of the receiving Party; or
(c) was disclosed to the receiving Party, other than under an
obligation of confidentiality or non-use, by a Person who had no obligation not
to disclose such information to others; or
(d) was independently discovered or developed by the receiving
Party after the expiration of the Collaboration Period without the use of any of
the other Party's Confidential Information.
Specific aspects or details of Confidential Information shall not be deemed to
be within the public domain (or published in the public domain) or otherwise
subject to an exclusion in this Section 4.2 merely because the Confidential
Information is described or otherwise embraced by more general information in
the public domain (or published in the public domain) or in the possession of
either Party. Further, any combination of Confidential Information shall not be
considered in the public domain (or published in the public domain) or otherwise
subject to an exclusion in this Section 4.2 merely because individual elements
of such Confidential Information are in the public domain (or published in the
public domain) or in the possession of the other Party unless the combination
and its principles are in the public domain (or published in the public domain)
or otherwise subject to an exclusion in this Section 4.2.
4.3 Authorized Disclosure. Either Party may disclose Confidential
Information of the other Party to the extent that such disclosure is:
(a) Made in response to a valid order of a court of competent
jurisdiction or other supra-national, federal, national, regional, state,
provincial or local governmental or regulatory body of competent jurisdiction;
provided, however, that the disclosing Party shall first have given notice to
the other Party and given the other Party a reasonable opportunity to quash such
order and to obtain a protective order requiring that the other Party's
Confidential Information and documents that are the subject of such order be
held in confidence by such court or agency or, if disclosed, be used only for
the purposes for which the order was issued; and provided further that if a
disclosure order is not quashed, the other Party's Confidential Information
disclosed in response to such court or governmental order shall be limited to
that information which is legally required to be disclosed in response to such
court or governmental order (such notice, procedures and requirements set forth
in this Section 4.3(a) shall be referred to as the "Disclosure Requirements");
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(b) Made by either Party to a regulatory authority as required
in connection with any filing, application or request for approval; provided,
however, that reasonable measures shall be taken to assure confidential
treatment of such information;
(c) Made by either Party to existing or potential acquirers or
merger candidates, investment bankers, existing or potential investors, venture
capital firms or other financial institutions or investors for purposes of
obtaining financing, or Affiliates, each of whom prior to disclosure must be
bound in writing by obligations of confidentiality and non-use at least
equivalent in scope to those set forth in this Article IV; provided, however,
that the disclosing Party shall first have given notice to the other Party
thereof, including to whom any such disclosures are made; and provided further
that no Person receiving information pursuant to this subsection shall disclose
any Confidential Information to any Person without the prior written consent of
the other Party, unless such disclosure is made in response to a valid order of
a court of competent jurisdiction or other supra-national, federal, national,
regional, state, provincial or local governmental or regulatory body of
competent jurisdiction and such Person has complied with the Disclosure
Requirements; or
(d) Made by either Party or a sublicensee, in connection with
the exercise of its rights or the performance of its obligations under this
Agreement or a sublicense agreement, to sublicensees but only to the extent such
sublicensees need to know such Confidential Information in order to exercise
their rights or perform their obligations under their respective sublicense
agreements, each of whom prior to disclosure must be bound in writing by
obligations of confidentiality and non-use at least equivalent in scope to those
set forth in this Article IV; provided, however, no sublicensee other than
disclosure by a Party to a sublicensee that is an Affiliate shall disclose any
Confidential Information to any Person without the prior written consent of the
owner of such Confidential Information, unless such disclosure is made in
response to a valid order of a court of competent jurisdiction or other
supra-national, federal, national, regional, state, provincial or local
governmental or regulatory body of competent jurisdiction and such sublicensee
has complied with the Disclosure Requirements.
(e) Public Statements Regarding Agreement. The Parties agree
that this Agreement may be disclosed by each of them, consistent with applicable
legal requirements, and to existing or potential acquirers or merger candidates,
investment bankers, existing or potential investors, venture capital firms or
other financial institutions or investors for purposes of obtaining financing,
or for other purposes in connection with their respective businesses. The
Parties agree, however, that they may not issue a press release regarding the
Agreement without the prior written approval of the other Party, and that each
Party will provide each other a copy for prior approval of any language
summarizing or characterizing the Agreement to be included in any public
disclosure. The Parties agree it is critical to each of them and their
respective businesses to ensure that the public characterization of this
Agreement is both accurate and appropriate, and will use their best efforts to
ensure that the obligations hereunder are fully understood and complied with.
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ARTICLE V.
OWNERSHIP AND MAINTENANCE OF INTELLECTUAL PROPERTY RIGHTS
5.1 Ownership.
(a) As between TerreStar and Technologies, subject to the
license grants in Article III, Technologies shall own and retain all right,
title and interests in and to all Technologies Intellectual Property and
TerreStar shall own and retain all right, title and interests in and to all
TerreStar Intellectual Property.
(b) Both Parties acknowledge and agree that Article II of the
First Amended and Restated Agreement is and shall be considered by the Parties
to be null and void ab initio and without legal effect now and at all times in
the past and the future. Accordingly, both Parties acknowledge and agree that no
rights in or to TerreStar Collaboration Intellectual Property were transferred
or assigned, at any time, to Technologies pursuant to the First Amended and
Restated Agreement. In this regard and without limiting the foregoing, both
Parties acknowledge and agree that all TerreStar Collaboration Intellectual
Property is now and has been, at all times prior to the Effective Date of this
Second Amended and Restated Agreement, including, but not limited to at all
times during the Collaboration Period, owned by TerreStar, TerreStar's Permitted
Sublicensees or Third Party licensors licensing Intellectual Property to
TerreStar.
5.2 Prosecution and Maintenance.
(a) (i) TerreStar acknowledges and agrees that, as between
Technologies and TerreStar, Technologies shall have the exclusive right to file
for, obtain, maintain, register, prosecute and extend intellectual property
protection for any and all Technologies Intellectual Property, to the extent
such protections are available under the applicable Legal Requirements.
(ii) In the event that Technologies elects to abandon any
such Technologies Intellectual Property, Technologies may, at its option, notify
TerreStar in writing in advance of the due date of any payment or other
administrative action that is required to maintain such intellectual property,
and may, at its option, grant TerreStar or an Affiliate of TerreStar, the right
to make such payment or take such administrative action, at its expense, and to
the extent possible, in its own name and with sole ownership rights; provided,
however, that any such rights that may be granted to TerreStar or an Affiliate
of TerreStar in accordance with this Section 5.2(a) shall be subject to any
prosecution, maintenance and other rights granted by Technologies to other
Persons under any and all separate agreements, arrangements and understandings.
(b) (i) Technologies acknowledges and agrees, that, as
between TerreStar and Technologies, TerreStar shall have the exclusive right to
file for, obtain, maintain, register, prosecute and extend intellectual property
protection for any and all TerreStar Intellectual Property, to the extent such
protections are available under the applicable Legal Requirements.
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(ii) TerreStar agrees to take all reasonable efforts to
have Patent applications prepared and filed with the U.S. Patent and Trademark
Office directed to all features, designs, and functionality that TerreStar may
reasonably believe to be novel and non-obvious including, by way of example, in
connection with TerreStar's emergency/public safety developments and
applications.
(iii) In the event that TerreStar elects to abandon any
TerreStar Intellectual Property, TerreStar may, at its option, notify
Technologies in writing in advance of the due date of any payment or other
administrative action that is required to maintain such intellectual property,
and may, at its option, grant Technologies or an Affiliate of Technologies the
right to make such payment or take such administrative action, at its expense,
and to the extent possible, in its own name and with sole ownership rights;
provided, however, that any such rights that may be granted to Technologies or
an Affiliate of Technologies in accordance with this Section 5.2(b) shall be
subject to any prosecution, maintenance and other rights granted by TerreStar to
other Persons under any and all separate agreements, arrangements and
understandings.
5.3 Delivery of Information. Each Party shall, without additional
compensation and at such Party's sole expense, disclose and make available to
the other Party, in whatever form such other Party may reasonably request,
information in its possession relating to (a) if the disclosing Party is
TerreStar, the Intellectual Property licensed by TerreStar to Technologies
pursuant to Article III and (b) if the disclosing Party is Technologies, the
Technologies Patents licensed by Technologies to TerreStar pursuant to Article
III, promptly after the Effective Date and thereafter as promptly as possibly
consistent with its normal business practices. Without limiting the foregoing,
each Party's designated representatives shall meet from time to time and, in any
event, whenever reasonably requested by the other Party, to discuss the
Intellectual Property licensed pursuant to this Second Amended and Restated
Agreement. Notwithstanding the foregoing, neither Party shall be required to
furnish to the other Party any information that such Party receives or has
received from Third Parties, which information such Party may not lawfully
disclose or the utilization of which requires the payment of royalties by such
Party to Third Parties, except when such utilization is permissible with the
payment of an appropriate royalty by the other Party. Neither Party shall be
required to furnish to the other Party any information that such Party develops
for, or in cooperation with, Third Parties to the extent that such Party may not
lawfully disclose such information to the other Party.
5.4 Excluded Intellectual Property. Notwithstanding any of the
foregoing, neither Party shall have obligations under this Article V with
respect to any Intellectual Property not expressly licensed to the other Party
pursuant to this Second Amended and Restated Agreement.
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ARTICLE VI.
INFRINGEMENT OF PATENTS
6.1 Notice of Infringement; Cooperation.
(a) If either Party suspects or determines that any
Intellectual Property of the other Party licensed hereunder is being infringed,
misused, violated or misappropriated by a Third Party's activities, it shall
promptly notify the other Party in writing and provide such other Party with any
evidence of such infringement, misuse, violation or misappropriation that is
reasonably available. As between the Parties to this Second Amended and Restated
Agreement, the licensor of the Intellectual Property under this Second Amended
and Restated Agreement shall have the exclusive right, in its sole discretion,
to enforce the Intellectual Property that it has licensed hereunder and
otherwise seek to terminate or remove such actual or suspected infringement,
misuse, violation or misappropriation. In the event that the licensor of the
Intellectual Property under this Second Amended and Restated Agreement elects
not to so enforce its Intellectual Property or otherwise seek to terminate or
remove such infringement, misuse, violation or misappropriation, then the other
Party may elect to proceed with such enforcement or such termination or removal
of any such infringement, misuse, violation or misappropriation (as applicable),
at its expense and, to the extent possible, in its own name, subject to prior
written approval of the licensor of the Intellectual Property, which approval
shall not be unreasonably withheld. The licensor of the Intellectual Property
shall reasonably cooperate with the other Party in connection with such
activities consented to in writing by the licensor of the Intellectual Property;
provided, however, that any right that may be granted to the other Party to
enforce any such Intellectual Property is subject to any enforcement rights
granted by the licensor of the Intellectual Property to other Persons under any
and all separate agreements.
(b) The Party not enforcing the Intellectual Property shall
provide reasonable assistance to the enforcing Party, including providing access
to relevant documents and other evidence, making its employees available at
reasonable business hours, and joining the action to the extent reasonably
necessary to allow the enforcing Party to maintain the action, establish
jurisdiction or standing, or otherwise seek or recover damages or obtain other
relief.
(c) Any amounts recovered pursuant to this Section 6.1, shall
be retained by the enforcing Party (after reimbursing the other Party for their
reasonable expenses incurred pursuant to Section 6.1(b)).
6.2 Infringement of Third Party Intellectual Property. Each Party
(the "Accused Party") shall promptly notify the other Party (the "Non-Accused
Party") of any pending or threatened claim that (a) such Accused Party is
infringing, violating, misappropriating, or misusing the intellectual property
rights of a Third Party if such alleged infringement, violation,
misappropriation, or misuse is reasonably likely to have resulted from such
Accused Party's exercise of its rights or performance of its obligations
hereunder, or (b) any of the Parties' Intellectual Property licensed hereunder,
or the Parties' rights thereto, are wholly or partially invalid, unenforceable,
should be shortened in duration or are otherwise compromised in priority or
effectiveness. The Non-Accused Party shall have the right to join the suit;
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provided that within thirty (30) days after receipt of written notice of the
claim, the Non-Accused Party shall notify the Accused Party of its election to
join such suit with respect to any pending or threatened claim under clause (a)
or (b) of the preceding sentence. If the Non-Accused Party elects to join such
suit, then the Parties shall cooperate in the defense and settlement of any such
claim. Such defense and settlement shall be conducted jointly by the Parties and
they shall share any resulting expenses on an equal basis. The Accused Party and
shall keep the Non-Accused Party reasonably informed of the status of any suit
with respect to any pending or threatened claim as described herein.
6.3 Excluded Intellectual Property. Notwithstanding any of the
foregoing, neither Party shall have any obligations under this Article VI with
respect to any Intellectual Property not licensed to the other Party pursuant to
Section 3.1 or Section 3.2.
ARTICLE VII.
DISCLAIMER OF REPRESENTATIONS AND WARRANTIES AND LIABILITY
7.1 Warranties.
(a) Each Party represents and warrants to the other Party that
neither the execution, delivery or performance of this Second Amended and
Restated Agreement nor the consummation of the transactions contemplated herein
will result in a violation or breach of, or constitute a default, under any
other contract, agreement or obligation entered into previously by that Party.
(b) Each Party further represents and warrants that it will
not, in the future, diminish, frustrate or otherwise void or make unenforceable
the rights transferred hereunder including, but not limited to, by the grant of
intellectual property rights to a Third Party.
(c) Nothing in this Section 7.1 shall prohibit or prevent a
Party from obtaining financing or pledging its Intellectual Property as
collateral in accordance with a financing arrangement.
7.2 EXCLUSION OF WARRANTIES AND LIMITATIONS.
(a) WITH THE EXCEPTION OF THE WARRANTIES SET FORTH IN SECTION
7.1 ABOVE, TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW, EACH PARTY MAKES
NO WARRANTIES AND HEREBY DISCLAIMS ANY AND ALL REPRESENTATIONS AND WARRANTIES
WITH RESPECT TO ITS INTELLECTUAL PROPERTY, INCLUDING ANY EXPRESS, STATUTORY OR
IMPLIED WARRANTY OF TITLE, NO ENCUMBRANCES, QUIET ENJOYMENT, NON-INFRINGEMENT,
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, ACCURACY, SYSTEM INTEGRATION,
WARRANTIES ARISING THROUGH COURSE OF DEALING OR USAGE OF TRADE OR WITH RESPECT
TO THE VALIDITY, ENFORCEABILITY, DURATION, PRIORITY, OR EFFECTIVENESS OF ANY OF
ITS INTELLECTUAL PROPERTY.
(b) NEITHER PARTY SHALL HAVE ANY LIABILITY WHATSOEVER TO THE
OTHER PARTY FOR OR ON ACCOUNT OF: (A) ANY PERSONAL INJURY OR DAMAGE TO TANGIBLE
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PERSONAL PROPERTY SUSTAINED BY THE OTHER PARTY; OR (B) ANY DAMAGE ASSESSED OR
ASSERTED BY A THIRD PARTY AGAINST THE OTHER PARTY, OR ANY OTHER LIABILITY
INCURRED OR IMPOSED UPON THE OTHER PARTY AS A RESULT OF ANY THIRD PARTY CLAIM,
ARISING OUT OF, IN CONNECTION WITH, OR RESULTING FROM THE PERFORMANCE OR BREACH
OF THIS AGREEMENT OR THE EXERCISE BY THE OTHER PARTY OF THE RIGHTS GRANTED
HEREUNDER.
(c) EXCEPT FOR EITHER PARTY'S OBLIGATIONS TO PAY ANY AMOUNTS
HEREUNDER AND FOR A PARTY'S CLAIM FOR DAMAGES THAT ARE DIRECTLY AND PROXIMATELY
CAUSED BY THE OTHER PARTY'S WILLFUL MISCONDUCT, IN NO EVENT SHALL EITHER PARTY'S
LIABILITY UNDER THIS SECOND AMENDED AND RESTATED AGREEMENT EXCEED THE AGGREGATE
AMOUNT OF $10,000,000.
(d) EXCEPT FOR CLAIMS ARISING FROM OR RELATING TO A PARTY'S
BREACH OF ITS CONFIDENTIALITY OBLIGATIONS UNDER THIS SECOND AMENDED AND RESTATED
AGREEMENT, IN NO EVENT SHALL EITHER PARTY, ITS AFFILIATES OR EACH OF THEIR
OFFICERS, DIRECTORS, PERSONNEL, EMPLOYEES OR AGENTS BE LIABLE FOR ANY
CONSEQUENTIAL, INDIRECT, INCIDENTAL, PUNITIVE, SPECIAL OR EXEMPLARY LOSS, DAMAGE
OR EXPENSE RELATING TO THIS SECOND AMENDED AND RESTATED AGREEMENT WHATSOEVER,
WHETHER ARISING IN CONTRACT, TORT, OR OTHERWISE, INCLUDING, WITHOUT LIMITATION,
DAMAGES FOR LOSS OF BUSINESS PROFITS, BUSINESS INTERRUPTION, LOSS OF BUSINESS
INFORMATION, AND THE LIKE, ARISING OUT OF THIS SECOND AMENDED AND RESTATED
AGREEMENT.
ARTICLE VIII.
REMEDIES
8.1 Technologies Remedies. TerreStar acknowledges and agrees that
the provisions, obligations and restrictions set forth in Articles III and IV
and Section 5.3 of this Second Amended and Restated Agreement are reasonable and
necessary to protect the legitimate interests of Technologies and that
Technologies would not have entered into this Agreement in the absence of such
restrictions, and that any violation or threatened violation of any provision of
Article III or IV or Section 5.3 of this Second Amended and Restated Agreement
may result in irreparable injury to Technologies. TerreStar also acknowledges
and agrees that in the event of a violation or threatened violation of any
provision of Article III or IV or Section 5.3, Technologies shall be entitled to
seek preliminary and permanent injunctive relief, without the necessity of
proving irreparable injury or actual damages and without the necessity of having
to post a bond, as well as to an equitable accounting of all earnings, profits
and other benefits arising from any such violation. The rights provided in the
immediately preceding sentence shall be cumulative and in addition to any other
rights or remedies that may be available to Technologies. Nothing in this
Section 8.1 is intended, or should be construed, to limit Technologies' right to
seek preliminary and permanent injunctive relief or any other remedy for a
breach of any other provision of this Second Amended and Restated Agreement.
8.2 TerreStar Remedies. Technologies acknowledges and agrees that
the provisions, obligations and restrictions set forth in Articles III and IV
and Section 5.3 of this Second Amended and Restated Agreement are reasonable and
necessary to protect the legitimate interests of TerreStar and that TerreStar
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would not have entered into this Second and Amended and Restated Agreement in
the absence of such provisions, and that any violation or threatened violation
of Articles III and IV and Section 5.3 of this Second Amended and Restated
Agreement may result in irreparable injury to TerreStar. Technologies also
acknowledges and agrees that in the event of a violation or threatened violation
of Articles III and IV and Section 5.3 of this Second Amended and Restated
Agreement, TerreStar shall be entitled to seek preliminary and permanent
injunctive relief, without the necessity of proving irreparable injury or actual
damages and without the necessity of having to post a bond, as well as to an
equitable accounting of all earnings, profits and other benefits arising from
any such violation. The rights provided in the immediately preceding sentence
shall be cumulative and in addition to any other rights or remedies that may be
available to TerreStar. Nothing in this Section 8.2 is intended, or should be
construed, to limit TerreStar's right to seek preliminary and permanent
injunctive relief or any other remedy for a breach of any other provision of
this Second Amended and Restated Agreement.
ARTICLE IX.
TERM AND TERMINATION
9.1 Term. The term of this Second Amended and Restated Agreement
(the "Term") shall commence on the Effective Date and shall continue for a
period of ten (10) years following its execution, unless terminated earlier in
accordance with Section 9.2 below.
9.2 Termination. This Second Amended and Restated Agreement may be
terminated:
(a) By the mutual written consent of the Parties hereto;
(b) By either Party in the event that the other Party fails to
perform or otherwise breaches any of its material obligations hereunder, which
material breach is not cured within ninety (90) days after delivery of written
notice to the breaching Party of such breach by the other Party;
(c) By either Party, upon written notice to the other Party,
if, at any time, the other Party shall file in any court or agency pursuant to
any statute or regulation of any state, country or jurisdiction, a petition in
bankruptcy or insolvency or for reorganization or for an arrangement or for the
appointment of a receiver or trustee of that Party or of its assets, or if such
other Party proposes a written agreement of composition or extension of its
debts, or if such other Party shall be served with an involuntary petition
against it, filed in any insolvency proceeding, and such petition shall not be
dismissed within sixty (60) days after the filing thereof, or if such other
Party shall propose or be a party to any dissolution or liquidation, or if such
other Party shall make an assignment for the benefit of its creditors (each, an
"Insolvency Event");
9.3 Effects of Termination.
(a) Licenses. The licenses granted pursuant to Sections 3.1 and
3.2 and the sublicenses granted by the Parties hereto pursuant to and in
accordance with those licenses shall survive the termination of this Second
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Amended and Restated Agreement and perpetually continue, on a license-by-license
and sublicense-by-sublicense basis, until the date of the expiration of the
applicable Patent under which the license or sublicense was granted.
(b) Return of Information and Materials. Upon termination of
this Agreement by either Party pursuant to Section 9.2, each Party, at the
request of the other Party, shall return, and shall cause and require all
sublicensees to return, or at the election of such other Party, destroy, and
cause and require all sublicensees to destroy, and thereafter provide such other
Party written certification evidencing such destruction, all data, files,
records and other materials in its possession or control relating to such other
Party's Intellectual Property, or containing or comprising such other Party's
Intellectual Property and, in each case, to which the returning Party or the
sublicensees, as applicable does not retain rights hereunder.
(c) Accrued Rights. Termination of this Second Amended and
Restated Agreement for any reason shall be without prejudice to any rights that
shall have accrued to the benefit of a Party prior to such termination. Such
termination shall not relieve a Party from obligations that are expressly
indicated to survive the termination of this Second Amended and Restated
Agreement.
(d) Survival. Subject to Section 9.3(a), the respective rights
and obligations of the Parties set forth in Articles III, IV, V, VI, VII, VIII
and X and Sections 2.2, 2.3 and 9.3 shall survive the termination of this Second
Amended and Restated Agreement.
ARTICLE X.
MISCELLANEOUS PROVISIONS
10.1 Notices. All notices, requests and other communications to any
Party hereunder shall be in writing and sufficient if delivered personally or
sent by facsimile (with confirmation of receipt), overnight courier or by
registered or certified mail, postage prepaid, return receipt requested,
addressed as follows:
If to TerreStar, to:
TerreStar Networks Inc.
12010 Sunset Hills Road, Sixth Floor
Reston, Virginia 20190
Attn: General Counsel
Fax No.: (703) 707-2472
If to Technologies, to:
Mobile Satellite Ventures LP
10802 Parkridge Boulevard
Reston, Virginia 20191-5416
Attn.: General Counsel
Fax No.: (703) 390-2700
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or to such other address or facsimile number as the Party to whom notice is to
be given may have furnished to the other Party in writing in accordance
herewith. Each such notice, request or communication shall be effective on the
earlier of (a) the date received; (b) the date of transmission by facsimile if
confirmed by the sending machine as received on a business day by the recipient
machine and if the notice is also sent within one (1) business day by another
method permitted by this Section 10.1; (c) the fifth (5th) business day
following the date on which such communication is posted by registered or
certified mail, postage prepaid, return receipt requested; (d) one (1) business
day after deposit with an overnight courier located within the country of the
recipient of such notice with next business day delivery specified and prepaid;
or (e) two (2) business days after deposit with an international courier located
outside the country of the address of the recipient of such notice with
international rush delivery specified and prepaid.
10.2 Assignment. Without the prior written consent of the other Party
hereto, neither Party shall sell, transfer, assign, delegate, pledge or
otherwise dispose of, whether voluntarily, involuntarily, by operation of law or
otherwise, this Second Amended and Restated Agreement hereunder; provided,
however, that, each Party hereto may assign or transfer this Second Amended and
Restated Agreement or any license granted under this Second Amended and Restated
Agreement, in either case in whole or in part, by providing notice to the other
Party, (a) to any Affiliate of such Party or (b) to any Person with which it may
merge or consolidate, or to which it may transfer all or substantially all of
its assets to which this Second Amended and Restated Agreement relates or which
may acquire a controlling interest in such Party if, in any such event, (i) the
assigning Party (provided that it is not the surviving entity) remains jointly
and severally liable with the relevant assignee under this Second Amended and
Restated Agreement, and (ii) the relevant assignee or surviving entity assumes
in writing all of the assigning Party's obligations under this Second Amended
and Restated Agreement. Any purported assignment not permitted by this Section
10.2 shall be void and of no force and effect. Notwithstanding the foregoing,
the Parties agree that the license rights granted herein are transferable in
accordance with the provisions of Article III.
10.3 Amendments and Waivers. No modification, amendment, release or
discharge of any provision of, or consent required by, this Second Amended and
Restated Agreement, nor any consent to any departure herefrom, shall be
effective unless it is in writing and signed by all the Parties hereto, and in
any event shall be effective only in the specific instance and for the purpose
for which given. No waiver by any Party to this Second Amended and Restated
Agreement of any default, misrepresentation, breach of warranty or covenant
hereunder, whether intentional or not, shall be deemed to extend to any prior or
subsequent default, misrepresentation or breach of warranty or covenant
hereunder or affect in any way any rights arising by virtue of any prior or
subsequent occurrence of such kind.
10.4 Relationship of the Parties. Nothing contained herein shall be
deemed to create a joint venture, agency, or partnership between TerreStar and
Technologies. Neither Party, nor its agents or employees shall be deemed to be
the agent or servant of the other Party and neither Party shall have the right
or authority to enter into any contract or commitment in the name of or on
behalf of the other Party, or purport to bind the other Party in any manner
whatsoever.
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10.5 Benefits of Agreement. All of the terms and provisions of this
Second Amended and Restated Agreement shall be binding upon and inure to the
benefit of the Parties hereto and their respective successors and permitted
assigns. This Second Amended and Restated Agreement is for the sole benefit of
the Parties hereto and not for the benefit of any other person.
10.6 Severability. If any provision of this Second Amended and
Restated Agreement is held to be illegal, invalid or unenforceable under any
present or future law, and if the rights or obligations of either Party hereto
under this Second Amended and Restated Agreement will not be materially and
adversely affected thereby, (a) such provision will be fully severable, (b) this
Second Amended and Restated Agreement will be construed and enforced as if such
illegal, invalid or unenforceable provision had never comprised a part hereof,
(c) the remaining provisions of this Second Amended and Restated Agreement will
remain in full force and effect and will not be affected by the illegal, invalid
or unenforceable provision or by its severance herefrom and (d) in lieu of such
illegal, invalid or unenforceable provision, there will be added automatically
as a part of this Second Amended and Restated Agreement a legal, valid and
enforceable provision as similar in terms to such illegal, invalid or
unenforceable provision as may be possible and mutually acceptable to the
Parties hereto.
10.7 GOVERNING LAW. THIS SECOND AMENDED AND RESTATED AGREEMENT SHALL
BE GOVERNED BY AND CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE OF NEW
YORK APPLICABLE TO CONTRACTS EXECUTED AND PERFORMED IN SUCH STATE, WITHOUT
GIVING EFFECT TO THE CONFLICTS OF LAWS PRINCIPLES THEREOF TO THE EXTENT SUCH
PRINCIPLES WOULD REQUIRE OR PERMIT THE APPLICATION OF THE LAWS OF ANOTHER STATE.
10.8 Entire Agreement. This Second Amended and Restated Agreement
constitutes the entire agreement and understanding of the Parties in relation to
the subject matter hereof and supersedes all prior oral or written agreements,
understandings or arrangements between them relating to the subject matter
hereof. Neither Party shall be entitled to rely on any agreement, understanding
or arrangement which is not expressly contained herein and no change may be made
hereto except in writing signed by duly authorized representatives of all
Parties.
10.9 First Amended and Restated Agreement. The First Amended and
Restated Agreement is hereby amended in its entirety and restated herein. Upon
the execution of this Second Amended and Restated Agreement, all provisions of,
rights granted and covenants made in the First Amended and Restated Agreement
are hereby waived, released and terminated in their entirety and shall have no
further force and effect.
10.10 Force Majeure. Performance of any obligation under this Second
Amended and Restated Agreement may be suspended by any of the Parties without
liability to the extent that an act of God, war, terrorism, fire, earthquake,
explosion, governmental expropriation, governmental law or regulation or any
other occurrence beyond the reasonable control of such Party, or labor trouble,
strike, or injunction (if such labor event is not caused by the bad faith or
unreasonable conduct of such Party) delays, prevents, restricts, limits or
renders commercially infeasible the performance of this Second Amended and
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Restated Agreement. The affected Party shall invoke this provision by promptly
notifying the other Party of the nature and estimated duration of this
suspension.
10.11 SUBMISSION TO JURISDICTION. EACH OF THE PARTIES IRREVOCABLY
SUBMITS TO THE EXCLUSIVE JURISDICTION OF THE UNITED STATES DISTRICT COURT FOR
THE SOUTHERN DISTRICT OF NEW YORK LOCATED IN THE BOROUGH OF MANHATTAN, OR IF
SUCH COURT DOES NOT HAVE JURISDICTION, THE SUPREME COURT OF THE STATE OF NEW
YORK LOCATED IN THE BOROUGH OF MANHATTAN, FOR THE PURPOSES OF ANY SUIT, ACTION
OR OTHER PROCEEDING IN CONNECTION WITH THIS SECOND AMENDED AND RESTATED
AGREEMENT AND THE TRANSACTIONS CONTEMPLATED HEREBY. EACH OF THE PARTIES
IRREVOCABLY AND UNCONDITIONALLY WAIVES ANY OBJECTION TO THE LAYING OF VENUE OF
ANY ACTION, SUIT OR PROCEEDING ARISING OUT OF THIS SECOND AMENDED AND RESTATED
AGREEMENT OR THE TRANSACTIONS CONTEMPLATED HEREBY IN THE COURTS REFERRED TO
ABOVE, AND HEREBY FURTHER IRREVOCABLY AND UNCONDITIONALLY WAIVES AND AGREES NOT
TO PLEAD OR CLAIM IN ANY SUCH COURT THAT ANY SUCH ACTION, SUIT OR PROCEEDING
BROUGHT IN ANY SUCH COURT HAS BEEN BROUGHT IN AN INCONVENIENT FORUM.
10.12 Counterparts; Facsimiles. This Second Amended and Restated
Agreement may be executed in two or more counterparts, each of which shall
constitute an original, but all of which, when taken together, shall constitute
but one instrument, and shall become effective when one or more counterparts
have been signed by each Party hereto and delivered to the other Party. This
Second Amended and Restated Agreement may be executed by any Party by the
delivery by such Party by facsimile of a copy of the signature page of this
Second Amended and Restated Agreement duly executed by such Party. Any copy of
this Second Amended and Restated Agreement so executed by facsimile shall be
deemed to be an originally executed copy of this Second Amended and Restated
Agreement.
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IN WITNESS WHEREOF, the Parties hereto have caused this Second Amended and
Restated Agreement to be duly executed and delivered as of the day and year
first above written.
ATC TECHNOLOGIES, LLC
By: /s/ Alexander H. Good
---------------------
Name: Alexander H. Good
Title: Vice Chairman, CEO and President
TERRESTAR NETWORKS INC.
By: /s/ Robert H. Brumley
---------------------
Name: Robert H. Brumley
Title: President and Chief Executive Officer
[Signature page to ATC TerreStar Assignment and License Agreement]