Exhibit 10.6

 

 

STRATEGIC COOPERATION AGREEMENT BETWEEN ANALOG DEVICES, INC. AND WORLDSPACE, INC. FOR THE DEVELOPMENT AND MARKETING OF WORLDSPACE-READY ANALOG DSP PLATFORMS

 

This Strategic Cooperation Agreement (“Agreement”) is made this 5^th day of November 2003 (the “Effective Date”), by and between Analog Devices, Inc., (“Analog”), a Delaware corporation with its principal offices at One Technology Way, Norwood, Massachusetts 02062-9106, and WorldSpace, Inc. (“WorldSpace”), a Maryland corporation with its principal offices at 2400 N Street, NW, Washington, D.C., 20037, referred to collectively below as the Parties.

 

RECITALS

 

WHEREAS, WorldSpace is a digital direct radio satellite communication company providing free-to-air and subscription audio, data and multimedia services; and

 

WHEREAS, WorldSpace has licensed the manufacture of fixed/portable satellite receivers which incorporate specially designed STARMAN^™ chipsets capable of decoding the WorldSpace satellite digital signals; and

 

WHEREAS, WorldSpace has specified a new generation of mobile receivers intended to enable the seamless reception of the WorldSpace satellite digital signals combined with their terrestrially retransmitted replicas, based on an enhanced waveform format, and

 

WHEREAS, WorldSpace intends to offer a subscription-based hybrid satellite/terrestrial service to mobile receivers in selected markets within the coverage of its satellites and with the adequate complement of terrestrial retransmitters;

 

WHEREAS, WorldSpace desires to encourage companies interested in implementing the mobile receiver solution for the development and marketing of products enabled to receive mobile services,

 

WHEREAS, Analog is a global leader in the design, development and manufacture of Digital Signal Processor’s (DSP), RF IC’s, Mixed-Signal processing technology and related technology used in various signal processing and other technology applications around the world;

 

WHEREAS, Analog designs, develops, manufactures, markets, sells, and licenses certain proprietary integrated circuits, software, hardware, electronic reference designs, and related technology;

 

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WHEREAS, Analog desires to implement the WorldSpace Mobile Receiver solution on their DSP chip-based platforms,

 

WHEREAS, the Parties have collaborated in the design and development of a mobile receiver solution based on the WorldSpace hybrid satellite/terrestrial architecture, utilizing Analog’s commercially available Blackfin DSP Processor and standard electronic components, and targeted at OEM Equipment suppliers and associated vendors, under the terms of a non-binding Memorandum of Understanding dated November 26, 2002; and

 

WHEREAS, the Parties intend to establish a strategic cooperation agreement for the development, marketing and distribution of DSP-based mobile receiver solutions to potential customers such as receiver and other consumer electronics product manufacturers.

 

In consideration of the foregoing, the Parties set forth herein the principles that underlie such definitive agreement:

 

1. DEFINITIONS

 

For the purpose of this Agreement, the following terms when used with a capital initial letter shall have the respective meanings set forth below.

 

1.1 “WorldSpace System” shall mean a satellite-based digital audio, data, messaging and/or video broadcasting system using time division multiplex (“TDM”) downlink and PSK modulation, comprising 3 satellites with 3 beams per satellite, 2 TDM carriers with opposite circular polarization per beam, 96 primary rate channels with 16 Kbps per carrier, equivalent to a maximum of 1728 broadcast channels, which uses source coding schemes as specified in the WorldSpace Format and/or the WorldSpace Mobile Format.

 

1.2 “WorldSpace Format” shall mean the TDM bit stream structure as defined in WorldSpace DAVB Digital Format Requirements document WST-PMO-DDS-002-000000 Issue 8 (or the actual release).

 

1.3 “WorldSpace Mobile Format” shall mean the WorldSpace DAVB Digital Format as enhanced to improve satellite reception in a mobile environment, augmented by specifications of the terrestrial retransmission component, and including an Over-Air Authorization Channel, attached hereto, and made part hereof as Appendix 1.

 

1.4 “WorldSpace Mobile Receiver” shall mean a device, accepting one program bit stream, either from a WorldSpace satellite or from the terrestrial retransmission system, or from a

 

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suitable combination of both, according to the WorldSpace Mobile Format and that provides access to the digital broadcast channel data bits.

 

1.5 “Platform” shall mean the WorldSpace-Ready Analog DSP Platform consisting of an Analog DSP chip, manufactured by Analog or its Subcontractor(s) and associated components, configured and programmed to process information or data according to the WorldSpace Mobile Format and that:

 

i)

Demodulates and decodes the selected satellite TDM stream to recover the prime rate channels;

 

ii)

Decodes the Over the Air Authorization Channel signal for selective enabling or disabling of received signals;

 

iii)

Demodulates and decodes satellite signals terrestrially retransmitted over Multi-Carrier Modulated waveforms;

 

iv)

Performs suitable combining of received satellite and terrestrial signals to provide seamless reception of audio, data and video signals; and

 

v)

Provides other outputs needed to support the features mutually agreed to with selected Consumer Electronics Products manufacturers.

 

1.6 “WorldSpace Intellectual Property Rights” shall mean the patents and patent applications, anywhere in the world, and all continuations, continuations-in-part, divisions, reissues, reexaminations, substitutions, additions and extensions thereof, and all supplementary protection certificates, relating to the WorldSpace Format, WorldSpace Mobile Format, the WorldSpace System and the WorldSpace Receiver technology that WorldSpace owns. WorldSpace Intellectual Property Rights are set forth in Appendix 2.

 

1.7 “FhG Intellectual Property Rights” shall mean the patents and patent applications, anywhere in the world, and all continuations, continuations-in-part, divisions, reissues, reexaminations, substitutions, additions and extensions thereof, and all supplementary protection certificates, that are owned by Fraunhofer Gesellschaft zur Förderung der Angewandten Forschung e.V. (“FhG”), and used in the WorldSpace Format, WorldSpace Mobile Format and the WorldSpace Receiver technology. FhG Intellectual Property Rights are set forth in Appendix 3.

 

1.8 “Analog Intellectual Property Rights” shall mean the patents and patent applications, anywhere in the world, and all continuations, continuations-in-part, divisions, reissues, reexaminations, substitutions, additions and extensions thereof, and all supplementary protection certificates, that are owned by Analog, and shall also mean all software and technical data developed specifically to enable operation of the Platform. Current Analog Intellectual Property Rights are set forth in Appendix 4.

 

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1.9 For avoidance of doubt, the Platform is to be created from a combination of Intellectual Property Rights from WorldSpace, Analog and FhG, which will be owned by Analog in accordance with Section 1.8 with underlying perpetual licenses from WorldSpace and FhG to Analog to the extent necessary for implementation of the Platform. Each such party shall be free to transfer its own Intellectual Property Rights to third parties for the purpose of implementing WorldSpace System reception and not in conflict with this Agreement.

 

1.10 “Customer” shall mean those who (i) wish to purchase and license the Platform from Analog or its designated distributors and (ii) are licensed by WorldSpace or its designate to manufacture and distribute WorldSpace Mobile Receivers.

 

1.11 “Work” shall mean the acts necessary and appropriate to develop and license the Platform.

 

1.12 “Intellectual Property Rights” shall mean patents, trademarks, service marks, mask works, copyrights, and applications for any of the foregoing, know how, confidential information, trade secrets and any other similar rights throughout the world.

 

1.13 “Platform Documentation” shall mean the documentation of the design of the Platform, a bill of materials, data book and any related documentation to which the parties shall from time to time deem appropriate to include as support material for the Platform.

 

1.14 “Licensee Party” shall mean, with reference to either Party’s Intellectual Property or Marks, the Party that is licensing such Intellectual Property or Marks from the Licensing Party hereunder.

 

1.15 “Licensing Party” shall mean, with reference to any Intellectual Property or Marks, the Party that owns such Intellectual Property or Marks and that is licensing them to the Licensee Party hereunder.

 

1.16 “Marks” shall mean the trademarks and service marks of either Party and such other marks as said Party may adopt from time to time.

 

2. TERMS OF COOPERATION AGREEMENT

 

2.1 WorldSpace hereby agrees to grant to Analog a worldwide, non-exclusive, non-transferable, royalty-free, indivisible license under the WorldSpace Intellectual Property Rights, and a non-exclusive, non-transferable, royalty-free, indivisible sublicense under the FhG Intellectual Property Rights for which WorldSpace has acquired an exclusive license, to (i) use, copy and incorporate the WorldSpace Intellectual Property and the FhG Intellectual Property into the Platform, (ii) make, have made, use offer to sell, transfer or dispose of the WorldSpace

 

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Intellectual Property and the FhG Intellectual Property solely as incorporated in the Platform to customers and potential customers (“Customers”), and (iii) use, internally, any WorldSpace Information, for the purpose of designing, using, making, having made and supporting the Platform.

 

2.2 WorldSpace shall provide to Analog all the information on the WorldSpace Intellectual Property Rights and information to the extent available to WorldSpace on the FhG Intellectual Property Rights relevant and necessary in the performance of the Work and perform the necessary tests to evaluate the Platform for proper implementation of the WorldSpace Mobile reception functions in accordance with the WorldSpace Mobile Format specifications.

 

2.3 Analog agrees to use its best commercial efforts to design and test the Platform, which shall meet the technical specifications and specific provisions set forth in the WorldSpace Mobile Format attached hereto and made a part hereof as Appendix 1 and according to the Work. The Parties will mutually agree on features to incorporate into the Platform that would prevent unauthorized or fraudulent duplication of a WorldSpace Mobile Receiver(s) and/or its individually unique addressability functionality.

 

2.4 The Parties acknowledge that a Technical Support Services and/or a license agreement (whichever may be appropriate under the circumstances) is required between FhG and Analog for necessary technical information, know how and support for development of the Platform. This Agreement shall be contingent upon and subject to Analog entering into such license agreement with FhG, to which WorldSpace hereby consents. This contingency shall be satisfied by December 15, 2003 unless extended by mutual agreement. Further, Analog agrees to supply all personnel, materials, facilities and other resources, including Subcontractors, necessary to perform the Work in accordance with the requirements of this Agreement.

 

2.5 The Parties agree that the Platform shall be the exclusive property of Analog, subject to any underlying ownership rights of WorldSpace and FhG in each of their Intellectual Property Rights and the licenses granted in Section 2.1. Both Parties also agree that the Platform shall be made available in suitable format to licensees of WorldSpace Mobile Receiver manufacturing pursuant to an Analog Customer Platform Licensing Agreement, and that such Platform could be tailored by agreement of the parties to meet specific requirements of individual licensees. Terms of the Customer Platform Licensing Agreement are made a part hereof as Appendix 5.

 

2.6 The Parties agree to identify for Customers any known licenses from third party vendors that may be required to decode audio, data and video formats (such as MP3 Pro or AAC+) as specified in the WorldSpace Mobile Format Specifications. Notwithstanding the foregoing, Customers shall be responsible for obtaining any licenses necessary to utilize the Platform.

 

2.7 Analog agrees to assist WorldSpace demonstrating the Platform with WorldSpace Mobile services to Customers.

 

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2.8 The Parties agree to market the Platform to receiver and other consumer electronics equipment-manufacturing Customers. Both Parties also agree to share available market data related to such Customers.

 

2.9 Analog agrees to promote the Platform for WorldSpace Mobile products in a reasonable number of marketing campaigns, catalogues, trade shows, etc. as deemed appropriate by Analog which Analog uses to promote the suite of applications planned by Analog using DSP devices.

 

2.10 The Parties agree that WorldSpace shall assume responsibility for collecting any royalties towards Intellectual Property applicable to the WorldSpace Mobile Receiver implementation from WorldSpace Mobile Receiver licensees.

 

2.11 The Parties shall schedule meetings on a regular basis to review the progress of this cooperative Work being performed under this Agreement, including design validation reviews and certification reviews as well as sales and marketing planning.

 

2.12 Trademarks

 

2.12.1 During the term of this Agreement, the Licensing Party grants to the Licensee Party the non-exclusive, non-transferable right to use the Licensing Party’s Marks (the “Licensor Marks”), solely in connection with the advertising and promotional materials for the Platform and subject to the restrictions and guidelines contained herein.

 

2.12.2 Each Licensee Party’s right to use and reproduce one or more of the Licensor Marks shall be subject to adherence to the Licensing Party’s guidelines with respect to the size, place, and manner of use of the Licensor Marks, including without limitation advertisements, sales literature, user documentation, and promotional materials (“Promotional Materials”). Licensee Party shall use the Licensor Marks only in a manner that complies in all material respects with the Licensing Party’s trademark policies and guidelines in effect from time to time.

 

2.12.3 The Licensing Party shall submit or make available online to Licensee Party representations of the Licensor Marks together with guidelines for their use, and Licensee Party shall submit to the Licensing Party layouts of the intended use of such Marks in connection with the Platform and all related Promotional Materials. Licensee Party shall not disseminate any such material without the Licensing Party’s prior written approval.

 

2.12.4 Any goodwill associated with the use by Licensee Party of any of the Licensor Marks shall inure to the benefit solely of the Licensing Party. Licensee Party shall not contest the validity of any of the Licensor Marks or the Licensing Party’s exclusive ownership thereof.

 

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Licensee Party shall not adopt, use, or register, any of the Licensor Marks, or any word or mark confusingly similar to them in any jurisdiction.

 

2.12.5 Notwithstanding anything in this Agreement to the contrary, no licenses are granted, and no act or acts hereunder shall be construed as or result in conveying any license to either Party or to any third party, expressly or by implication, estoppel or otherwise excepting the license here