<PAGE>
EXHIBIT 10.2.1
*** TEXT OMITTED AND
FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SECTIONS 200.80(b)(4)
and 230.406
COOPERATION AGREEMENT
This Cooperation Agreement (this "Agreement"), effective as of the
date of the
last signature hereto (the "Effective Date"), is entered into by
and among
ORBCOMM Inc. (hereinafter referred to as "ORBCOMM") having its
offices and place
of business at 21700 Atlantic Boulevard, Dulles, VA 20166, Stellar
Inc.
(hereinafter referred to as "Stellar") having its offices and place
of business
at 21700 Atlantic Boulevard, Dulles, VA 20166 and Delphi
Corporation, acting by
and through its Delphi Electronics & Safety Division
(hereinafter referred to as
"Delphi"), having its principal place of business at One Corporate
Center, P.O.
Box 9005, Kokomo, Indiana 46904-9005. ORBCOMM, Stellar and Delphi
are herein
sometimes referred to individually as a "Party" or collectively as
the
"Parties".
RECITALS
WHEREAS, ORBCOMM owns and operates a multiple low earth orbit
satellite-based
two-way data communication network (the "System") and is licensed
to operate in
most developed countries and many developing countries; and
WHEREAS, Stellar, a majority owned subsidiary of ORBCOMM, is the
designer and
supplier of modulator/demodulators ("Moderns") used for
transmitting and
receiving data streams carried by the System; and
WHEREAS, Delphi Is a manufacturer of electronic products who
supplies automotive
original equipment manufacturers ("OEM"s) with hardware that
enables two-way
data services and other mobile communications means; and
WHEREAS, Delphi wishes to manufacture or have manufactured for
Stellar certain
Modems used for transmitting and receiving Data carried by the
System;
WHEREAS, the Parties believe by combining their considerable and
complimentary
skills that the existing Modems can be improved upon to create a
more
comprehensive and competitive solution to the need for reliable low
cost two-way
data connectivity in fixed and mobile applications can be created;
and
WHEREAS, the Parties intend to cooperate to create and provide such
solutions to
worldwide industrial companies, while creating for each Party a
valuable and
sustainable business opportunity; and
WHEREAS, the Parties wish to set forth the details of their
agreement to
cooperate to achieve the above objectives.
Page 1 of 24
<PAGE>
THEREFORE, the Parties mutually agree as follows:
ARTICLE 1. DEFINITIONS
1.1 Affiliate
As used in this Agreement, "Affiliate" shall mean any corporation,
partnership,
trust or other business entity, which directly or indirectly
controls, is
controlled by, or is under common control with a Party. For the
purposes of
defining an Affiliate, "control" means ownership of at least fifty
percent (50%)
of the shares or other equity interest having power to elect
directors or
persons performing a similar function.
1.2 Background
Intellectual Property
As used in this Agreement, "Background Intellectual Property" of a
Party means
the Intellectual Property of a Party which is owned or controlled
by the Party
before the Effective Date of this Agreement or which is otherwise
independently
created by a Party completely outside of the Project primarily for
use outside
the Project and which is useful in performing the Project.
1.3 Delphi Field
As used in this Agreement, "Delphi Field" shall mean passenger
vehicle;
recreational vehicle and truck OEMs; passenger vehicle and
recreational vehicle
aftermarkets; and sellers of products to all such markets.
1.4 Foreground
Intellectual Property
As used in this Agreement, "Foreground Intellectual Property" means
Intellectual
Property resulting directly from and developed, conceived or
created by the
employees or contractors of a Party (or their respective
Affiliates) during the
performance of the Project or the Cooperation.
1.5 Intellectual
Property
As used in this Agreement, "Intellectual Property" shall mean all
rights in
ideas, inventions, works of authorship, know-how, trade secrets,
pending patent
applications, patents, copyrights, or other proprietary
information.
Page 2 of 24
<PAGE>
1.6 Licensed
Product
As used in this Agreement, "Licensed Product" means a Product
incorporating
Background Intellectual Property of a Party and covered by the
terms of the
Cross License Agreement described in Paragraph 4.2 hereof and
incorporated in
this Agreement as Attachment 1 hereof.
1.7 Existing Stellar
Product
As used in this Agreement, "Existing Stellar Product" means Modems
identified in
Attachment 2 hereto that incorporate Background Intellectual
Property of
Stellar.
1.8 Project
As used in this Agreement, "Project" means the work conducted
according to a
Scope of Work document (as defined below) under the terms of this
Agreement.
1.9 Stellar Field
As used in this Agreement, "Stellar Field" shall mean two-way
narrow-band
messaging for use on the ORBCOMM satellite network.
1.10 New Product
As used in this Agreement, "New Product" shall mean Modems and
devices for
applications that require two-way data communications that are
developed
pursuant to the Project or the Cooperation.
1.11 Territory
As used in this Agreement, "Territory" shall mean the regions in
which Orbcomm
has secured regulatory approval from the appropriate governing
bodies and
Stellar has the required regulatory approvals for Existing Stellar
Products
and/or New Products.
ARTICLE 2. ROLES AND RESPONSIBILITIES OF THE PARTIES
2.1 General Objectives
of this Agreement
The Parties intend that: i) Delphi will manufacture or have
manufactured
Existing Stellar Products for Stellar; and ii) the Parties will
form a
cooperative business relationship that would include product
development,
licensing of key enabling technologies and buy/sell
Page 3 of 24
<PAGE>
arrangements that would define and make available for sale, modems
for two-way
satellite data communications for fixed and mobile applications
(the
"Cooperation").
2.2 Joint Roles of the
Parties Under this Agreement
a.
Define
requirements, such as features, functions, timing, target
pricing and the source and amount of development funding for
New
Products, in the form of Scope of Work (SOW) documents.
b.
Form an on-going
business direction group (the "Steering Committee")
to do, among other things:
1) Coordinate
and review activities undertaken under the
Cooperation;
2) Arrange for
technical information exchanges and consultation
related to meeting the business objectives of the Cooperation;
and
3) Resolve joint
business issues related to the Cooperation that may
arise.
2.3 Roles of Delphi
Under this Agreement
a.
Participate as a
member of the Steering Team.
b.
Provide
commercially reasonable resources and effort to meet the
business objectives of the Cooperation.
c.
Provide the
relevant technical expertise for the design, development,
validation of New Products, including
1) Circuit board layout
2) Interconnection means
3) Embedded software
4) ASIC designs
5) Antennas
6) Product packaging
7) Human / machine interface, as required
8) Product validation
d.
Manufacture the
Existing Stellar Products and the New Products
consistent with automotive requirements for quality and
reliability.
e.
Support Stellar
by having manufactured and/or manufacturing Existing
Stellar Products.
f.
Sell New
Products hardware to Stellar under a separate supply
agreement, between Stellar and Delphi.
g.
Sell New
Products for use in existing Delphi products, applications
and existing OEM customer base.
h.
Licensee of
technology (as defined below) from Stellar
i.
Licensor of
technology to Stellar, if required
Page 4 of 24
<PAGE>
j.
Marketing
partner to ORBCOMM for ORBCOMM services to Delphi's customer
base.
k.
Disclose and
document the Foreground Intellectual Property with the
same level of detail and degree of completeness that is
customarily
and reasonably required by the automotive electronics industry.
l.
Document
manufacturing; assembly, calibration, testing, repair and
troubleshooting procedures as well as other knowledge otherwise
required to manufacture New Products and Existing Stellar
Products
with the same level of detail and degree of completeness that
is
customarily and reasonably required by the automotive
electronics
industry.
2.4 Roles of Stellar
under this Agreement
a.
Participate as a
member of the Steering Team.
b.
Provide
commercially reasonable resources and effort to meet the
business objectives of the Cooperation.
c.
Provide
necessary technical information and consultation to enable
Delphi to design and develop New Products that are compatible
with
System requirements.
d.
Provide
no-charge access to Delphi to Stellar's development and
simulation tools for New Product development purposes.
e.
License to
Delphi, under reasonable commercial terms, relevant
intellectual property such as messaging protocols,
encryption/decryption, and related subject areas to enable Delphi
to
manufacture and
sell New Products.
f.
Provide
application and development support of New Products with
resellers.
g.
Perform type
certification of New Products in the US, Canada, Mexico
and the European Union (ETSI).
h.
Provide
technical support and warranty service for Stellar and ORBCOMM
resellers.
i.
Participate in
joint marketing activities with, as deemed appropriate
by Stellar in its sole discretion, in support of the objectives of
the
Cooperation.
2.5 Roles of ORBCOMM
under this Agreement
a.
Participate as a
member of the Steering Team.
b.
Participate in
joint marketing activities with Delphi, as deemed
appropriate by ORBCOMM in its sole discretion, in support of
the
objective of the Cooperation.
Page 5 of 24
<PAGE>
ARTICLE 3. COMMERCIAL ISSUES RELATED TO PRODUCT DEVELOPMENT AND
PURCHASING
3.1 New Product
Development
Each New Product that is identified by the Steering Committee as
being desirable
and reasonably included in the business objectives of the
Cooperation will be
incorporated into an SOW signed by all Parties, as set forth in
Article 2.2 a
hereof, and made part of this Agreement. The terms of this
Agreement will apply
to work done under such SOW.
3.2 Purchases of New
Modems by Stellar
The Parties agree that Delphi will be given the first right of
refusal following
termination of this Agreement to supply Stellar with New Products
developed
under the Cooperation on no less favorable terms than Stellar can
obtain from
other suppliers.
3.3 Delphi is Sole
Supplier of New Products to Stellar
With the exception set forth in Section 3.4 hereof, Delphi shall be
the sole
supplier of New Products to Stellar during the term of this
Agreement, subject
to Delphi's ability to continuously provide competitive quality,
delivery,
service and technology and further subject to Delphi's ability to
meet
negotiated annual price points for such products.
3.4 Exception to
Delphi's Sole Supplier Status
Notwithstanding the provisions of Section 3.3 hereof, European
Datacomm Holdings
N.V. shall have the right to manufacture the Existing Stellar
Products solely
for its own use.
3.5 Purchasing
Agreement between Stellar and Delphi
Delphi's sales of Modems to Stellar will be made according to
Stellar's standard
purchasing terms and conditions, as modified by a purchase
agreement governing
commercial terms including, but not limited to warranty, delivery
schedules,
payment terms, pricing, volume forecasts and related topics.
3.6 Recovery of
Delphi's Engineering Expenses
If Delphi requests non-recurring engineering (NRE) funding for a
Project and if
Stellar agrees to provide such NRE, the Parties will discuss and
mutually agree
upon the amount of NRE that Stellar will provide prior to the start
of such
Project. Delphi will amortize such agreed-upon amount of NRE in the
selling
price of the New Product developed under such Project. The amount
of
amortization per unit of New Product sold will be based upon the
number of units
committed by Stellar and their customers in a
Page 6 of 24
<PAGE>
purchase order issued to Delphi. If the committed volumes in the
purchase order
are not achieved, then Delphi shall be entitled to be paid the
remaining balance
of the unamortized NRE upon completion of such purchase order.
ARTICLE 4. INTELLECTUAL PROPERTY
4.1 Ownership of
Background Intellectual Property
Each Party is and remains the owner of its Background intellectual
Property.
4.2 Cross Licensing of
the Parties' Background Intellectual Property and Solely
Owned Foreground Intellectual Property.
Subject to Section 4.3, the Parties understand and agree that a
Party may
require a license to the other Party's Background Intellectual
Property in order
to make, have made, use and sell Existing Stellar Products and New
Products, if
such Existing Stellar Product or New Product incorporates such
other Party's
Background Intellectual Property. The Parties further agree that a
commercially
reasonable royalty would be due to the licensor by the licensee in
such
circumstances except if Delphi makes Licensed Products for sale to
Stellar, in
which case no royalty would be due by Delphi if such Licensed
Products are sold
to Stellar. The terms for such cross license are set forth in
Attachment 1
hereof.
4.3 Joint Ownership of
Foreground Intellectual Property
Foreground Intellectual Property shall be jointly owned by the
Parties for all
applications thereof, without any accounting required by one Party
to the other,
including the right to grant non-exclusive licenses, provided that
during and
after the term of this Agreement: i) Stellar shall not use, shall
cause its
Affiliates not to use, and shall not grant the right to any third
party to use,
the Foreground Intellectual Property or the other Party's
Background
intellectual Property for applications outside the Stellar Field or
sell New
Products outside the Stellar Field; and ii) Delphi shall not use,
shall cause
its Affiliates not to use, and shall not grant the right to any
third party to
use, the Foreground Intellectual Property or the other Party's
Background
Intellectual Property for applications outside the Territory
outside the Delphi
Field or sell Existing Stellar Products or New Products outside the
Territory
outside the Delphi Field; and iii) the Parties may together, but
not
individually, grant to European Datacomm Holdings N.V or its
Affiliates the
right to manufacture or sell New Products. The Parties shall
cooperate with one
another as necessary to apply for patents or otherwise take steps
to protect
Foreground Intellectual Property, including deciding which
inventions to apply
for protection on, selecting the countries for registration,
selecting the Party
that submits and is responsible for preparing the application, and
sharing of
costs (which shall be in equal proportions,
Page 7 of 24
<PAGE>
unless otherwise agreed). No Foreground Intellectual Property may
be transferred
to any third party without the foregoing restrictions on such use
being
conditions of such transfer. Any transfer of Foreground
Intellectual Property
without such conditions shall be void.
4.4 Patent
Applications for Foreground Intellectual Property
If one of the Parties does not wish to share the costs for filing a
patent
application in a particular country for a jointly owned invention,
then the
filing Party shall bear all the costs for that particular patent
application,
and the Party not wishing to share in such costs shall assign its
rights in such
application to the filing Party. The assigning Party and its
Affiliates shall
retain a perpetual, nonexclusive, royalty-free license in and to
any patent
issuing from such patent application or continuation,
continuation-in-part,
divisional, extension, reissue, reexamination or foreign
counterparts of such
patent application.
ARTICLE 5. NON-DISCLOSURE
Without limiting the generality of Article 4, information disclosed
by one Party
to the other Party under this Agreement shall be considered
confidential and
proprietary if in writing and clearly marked with a Confidential,
or similar
legend. Both Parties to this Agreement agrees to protect such
proprietary
information from disclosure to third parties for five (5) years
from the date of
such disclosure, using the same degree of care each Party uses in
respect to
information of its own that it does not want disclosed to third
parties.
However, this Agreement does not impose any obligation on a Party
receiving
information under this Agreement if that Party can document:
(a)
is already known to
such Party at the time first received from the
disclosing Party; or
(b)
is publicly known
through no wrongful act of such Party; or
(c)
is received by such
Party from a third party without similar
restriction and without breach of this Agreement; or
(d)
is independently
developed by such Party without access to the
disclosed information; or
(e)
is approved for
release by written authorization of the Party which
originally disclosed such information; or
(f)
is disclosed pursuant
to an order of Court, provided that the
receiving Party gives the disclosing Party prompt notice of a
