Product and Market Development Agreement
Advertising or Marketing Agreement
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Product and Market Development Agreement
Advertising or Marketing Agreement
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Product and Market Development Agreement
This Agreement (“ Agreement ”) is entered into and made effective as of December 4, 2008 (the “ Effective Date ”) by and between LG Innotek Co., Ltd., a Korean corporation with offices at 20, Yeouido-dong, Yeongdeungpo-gu, Seoul, Korea (“ LGIT ”) and ParkerVision, Inc., a Florida corporation with offices at 7915 Baymeadows Way, Suite 400, Jacksonville, Florida 32256 (“ ParkerVision ”).
WHEREAS, ParkerVision has developed and patented technology that is designed to address certain limitations in applying traditional approaches to RF transmission, reception, and power amplification, and
WHEREAS, LGIT desires to develop in conjunction with ParkerVision, and ParkerVision desires to develop in conjunction with LGIT, ParkerVision RF Components (as defined below) to meet the market requirements for handset and data card products, and
WHEREAS, LGIT also desires to have ParkerVision supply, and ParkerVision desires to supply, ParkerVision RF Components that LGIT will design into LGIT RF Products (as defined below) for application into handset and data card products, and
WHEREAS, the parties desire to market and promote LGIT RF Products to the mobile communications community, including mobile handset and data card OEMs, and chipset suppliers internationally.
NOW, THEREFORE, in consideration of the foregoing premises and of the performance of the mutual covenants herein, the parties agree as follows:
1.1 “ Confidential Information ” has the meaning set forth in Section 10.1.
1.2 “ Development Tools ” means the ParkerVision development tools described in the Statement of Work.
1.3 “ Improvements ” means any improvement, including without limitation variations, optimizations, enhancements, modifications, or derivatives obtained, developed, created, synthesized, designed, derived or resulting from, based upon or otherwise generated (whether directly or indirectly, or in whole or in part).
1.4 “ Intellectual Property Rights ” means patents, certificates of invention, utility models, design rights and similar invention rights, copyrights, trade secret rights, mask work rights, and any other intangible property or proprietary rights (other than trademarks, trade names, service marks and trade dress rights) recognized anywhere in the world under any state or national statute or treaty or common law right, including without limitation all applications and registrations with respect to any of the foregoing.
1.5 “ ParkerVision RF Components ” means integrated circuits based on the Specifications in an SOW.
1.6 “ ParkerVision Software ” means any software or firmware provided by ParkerVision to LGIT, including software included within any Development Tools that may be provided under this Agreement, or any software or firmware loaded onto ParkerVision RF Components.
1.7 “ LGIT RF Products ” means RF products to be manufactured and sold by LGIT that incorporate the ParkerVision RF Components.
1.8 “ Specifications ” means the specifications for the ParkerVision RF Components, such specifications to be jointly developed by the parties pursuant to an SOW, executed by both parties, and attached as an Exhibit to an SOW.
1.9 “ SOW ” means a Statement of Work for development of a ParkerVision RF Component containing the Specifications, tasks, deliverables, target delivery dates and payments. The SOW under this Agreement is set forth in Exhibit A attached hereto and may be modified by mutual written agreement.
2. PARKERVISION RESPONSIBILITIES
2.1 Development Plan . Subject to the terms and conditions set forth in the SOW, ParkerVision shall use commercially reasonable efforts to develop the ParkerVision RF Components to meet the Specifications in accordance with the schedule set forth in the SOW. ParkerVision shall, monthly or if requested by LGIT from time to time during the term of this Agreement, submit to LGIT a written progress report (“ Progress Report ”) documenting the work ParkerVision has completed during the period between each Progress Report. The Progress Report shall be in sufficient detail to clearly indicate the progress made toward achieving the objectives and milestones set forth herein and specified by LGIT, and achieving compliance with the Specifications and any other requirements of the SOW for the work to be performed by ParkerVision hereunder.
2.2 License Grant . ParkerVision hereby grants LGIT, for the term of this Agreement, a nonexclusive, royalty-free, and nontransferable license, under ParkerVision’s Intellectual Property Rights, to use and reproduce any ParkerVision Software and use any other items provided by ParkerVision hereunder as may be reasonably necessary solely for the purposes of fulfilling LGIT’s specific development tasks under the SOW and to incorporate the ParkerVision RF Components into LGIT RF Products.
2.3 No Reverse Engineering . LGIT shall not (a) reverse engineer or reconfigure the ParkerVision RF Components or any of its elements other than as reasonably required for the development of the LGIT RF Products for the purposes of this Agreement, (b) modify, translate, reverse engineer, decompile, disassemble or otherwise attempt (i) to defeat, avoid, bypass, remove, deactivate or otherwise circumvent any software protection mechanisms in the ParkerVision Software including without limitation any such mechanism used to restrict or control the functionality of the ParkerVision Software, or (ii) to derive the source code or the underlying ideas, algorithms, structure or organization from the ParkerVision Software or ParkerVision RF Components; (c) alter, adapt, modify or translate the ParkerVision Software in any way for any purpose, including without limitation error correction; or (d) distribute, rent, loan, lease, transfer or grant any rights in the ParkerVision Software or modifications thereof in any form to any person or entity.
2.4 Development Tools . Upon request of LGIT, ParkerVision shall provide to LGIT pursuant to mutually agreeable terms and conditions certain Development Tools as described in the SOW. LGIT agrees to use items delivered to it by ParkerVision solely for the purposes consistent with this Agreement, agrees not to dispose of items delivered to it by ParkerVision hereunder and/or pursuant to the SOW (by sale, transfer or otherwise) without the prior written consent of ParkerVision, and agrees not to disclose or use such items in any manner inconsistent with the limitations imposed upon such use and disclosure by ParkerVision.
2.5 Engineering Personnel . As specified in the SOW, ParkerVision shall provide a suitably qualified and reasonably staffed engineering support team with clearly defined contact points and escalation processes. Each party shall appoint one (1) project manager who will act as a general liaison with the other party for the term of this Agreement.
2.6 Support Services . After completion of each party’s tasks specified in the SOW and acceptance by LGIT of ParkerVision’s Final Deliverable (as defined below) under the SOW, ParkerVision shall provide to LGIT reasonable technical support as LGIT may request from time to time.
3. DELIVERY AND ACCEPTANCE
3.1 Deliverables . ParkerVision shall develop and deliver to LGIT the deliverables specified in the SOW in accordance with the terms and conditions of this Agreement. Subject to the terms and conditions set forth in the SOW, deliverables to be provided by ParkerVision are set forth in the SOW and may include a description of the technical approach selected for implementing the ParkerVision RF Components, a development program plan identifying program tasks, responsibilities, and schedules, the completion of development tasks, suggested development schedules with key milestones and design reviews, and the delivery of the Development Tools. ParkerVision may also provide specifications and best-practice guidelines for system level design, pursuant to the SOW.
3.2 Acceptance . ParkerVision shall, [*], deliver to LGIT the deliverables specified in the SOW at the place designated by LGIT, and shall use commercially reasonable efforts to complete the delivery by the agreed delivery schedule (“ Delivery Date ”). LGIT shall conduct acceptance testing of the deliverables (“ Acceptance Test ”) and notify ParkerVision of the results of the Acceptance Test in writing within [*] days after the delivery of the deliverables. Upon successful completion of, and closure of action items from the review and Acceptance Test of, the final deliverable in the SOW (the “ Final Deliverable ”), LGIT shall accept such Final Deliverable. If within [*] days of such review and Acceptance Test, LGIT fails to provide ParkerVision with either written notice of acceptance or written notice of rejection of the Final Deliverable, LGIT will be deemed to have accepted such Final Deliverable.
3.3 Rejection . LGIT may, in good faith and after determining that the Final Deliverable does not comply in all material respects with the Final Deliverable requirements set forth in the SOW, reject such Final Deliverable; provided that LGIT provides written documentation to ParkerVision noting the areas in which the Final Deliverable fails to comply with the requirements set forth in the SOW. If LGIT rejects, in good faith, the Final Deliverable specified in the SOW after attempts to correct by ParkerVision made within [*] months from the Effective Date, then LGIT may, at its sole option, pursue any of the following options upon provision of written notice to ParkerVision:
3.3.1 terminate this Agreement immediately;
3.3.2 continue to allow ParkerVision to correct the Final Deliverable based on the existing Specifications or based on mutually agreed revised Specifications; or
3.3.3 choose to accept the non-compliant Final Deliverable based on the existing Specifications or based on mutually agreed revised Specifications.
The parties acknowledge and agree that the above options in 3.3.1, 3.3.2 and 3.3.3 of this Section 3.3 (Rejection) are not mutually exclusive.
4. LGIT RESPONSIBILITIES
4.1 Development of LGIT RF Product . LGIT shall use commercially reasonable efforts to fulfill its obligations under the SOW and to incorporate the ParkerVision RF Components into the LGIT RF Products for production release.
4.2 LGIT Testing Equipment . LGIT shall provide pursuant to mutually agreeable terms and conditions certain testing equipment to ParkerVision (“ LGIT Testing Equipment ”) as specified in the SOW. ParkerVision agrees to use LGIT Testing Equipment delivered to it by LGIT solely for the purposes consistent with this Agreement, agrees not to dispose of items delivered to it by LGIT hereunder and/or pursuant to the SOW (by sale, transfer or otherwise) without the prior written consent of LGIT, and agrees not to disclose or use such items in any manner inconsistent with the limitations imposed upon such use and disclosure by LGIT.
4.3 Support . LGIT shall be responsible for providing any technical support to its end-user customers as necessary for using the LGIT RF Products.
5. JOINT RESPONSIBILITIES
5.1 Specifications . The parties agree to work together to define Specifications that will address the market requirements for incorporating ParkerVision RF Components into LGIT RF Products for application into handset and data card products.
5.2 Marketing and Promotion . The parties also agree to use commercially reasonable efforts to market and promote such LGIT RF Products to the mobile terminal industry, to identify target customers to market and promote the LGIT RF Products, and cooperate in promoting the LGIT RF Products to such potential customers as chipset vendors, mobile terminal OEMs and service providers internationally.
6. PURCHASING TERMS
6.1 Known Good Die . ParkerVision shall sell to LGIT Known Good Die (KGD) ParkerVision RF Components in the form of unpackaged integrated circuits. ParkerVision shall provide reasonable purchasing terms, once the development work under this Agreement and the SOW is successfully completed, outlining pricing and delivery information relating to the sale of ParkerVision RF Components to LGIT.
6.2 Field of Use . LGIT shall only sell ParkerVision RF Components incorporated into LGIT RF Products for use in commercial mobile handset or datacard applications employing waveform standards GSM, EDGE, WCDMA, HSPA in any combination or subset therein as defined by the 3GPP standards body.
6.3 Additional Consideration .
6.3.1 Intent . ParkerVision intends to work with LGIT to aid it in its efforts to develop and commercialize the LGIT RF Products during the term of the Agreement as set forth in this Agreement. ParkerVision intends to work with LGIT to provide it with the unique solutions defined within the SOW and the high quality technical and business support that is reasonably needed to meet both parties’ commercial objectives related to the ParkerVision RF Components developed under the terms of this Agreement. Both parties believe that the successful commercialization of the LGIT RF Product can result in LGIT becoming a leading global supplier in the market for HEDGE RF modules for mobile handset and datacard applications.
7. FEES AND PAYMENT
7.1 Expenses . Each party agrees to furnish, [*], all tools and materials necessary to perform its obligations under this Agreement and shall bear all expenses associated with such performance unless specified otherwise in the SOW or otherwise agreed by the parties.
8.1 ParkerVision .
8.1.1 ParkerVision RF Components and Development Tools . ParkerVision hereby retains all right, title and interest in and to the Intellectual Property Rights relating to the ParkerVision RF Components and any Development Tools provided under this Agreement regardless of whether developed prior to or pursuant to this Agreement. ParkerVision shall have the exclusive right to apply for or register patents, copyrights, and such other proprietary protections as it wishes with respect to the ParkerVision RF Components and any Development Tools provided under this Agreement.
8.1.2 Improvements . ParkerVision shall be the sole and exclusive owner of any and all right, title and interest in and to any Improvements to ParkerVision RF Components that may be jointly developed (i.e., jointly authored, as defined under United States Copyright Act (Title 17 of the United States Code), or jointly invented, as defined under the United States Patent Act (Title 35 of the United States Code), regardless of whether such Improvements to ParkerVision RF Components are patented or patentable) by one (1) or more employees of ParkerVision and one (1) or more employees of LGIT hereunder, and all Intellectual Proper