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Exhibit
10.57
Pursuant to 17 CFR
240.24b-2, confidential information has been omitted
in
places marked
“[***]” and has been filed separately with the
Securities and
Exchange Commission
pursuant to a Confidential Treatment Application
filed
with the
Commission.
Master Development and
Licensing Agreement
Between
Elektrobit,
Inc.
And
TerreStar Networks
Inc.
Table of
Contents
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| 1. |
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Definitions |
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2 |
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| 2. |
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Development and Licensing Terms |
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6 |
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| 3. |
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TerreStar Resources |
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11 |
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| 4. |
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Project Management |
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12 |
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| 5. |
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Acceptance Procedure |
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14 |
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| 6. |
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Ownership of Work Product |
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14 |
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| 7. |
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Elektrobit Representations and Warranties |
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17 |
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| 8. |
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TerreStar Representations and Warranties |
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19 |
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| 9. |
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Indemnification |
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21 |
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| 10. |
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Confidential Information |
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24 |
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| 11. |
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Limitation of Liability |
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24 |
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| 12. |
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Term;
Termination |
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24 |
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| 13. |
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Audit
Rights |
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26 |
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| 14. |
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General Provisions |
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Master Development and
Licensing Agreement
This Master Development and
Licensing Agreement (the “ Agreement ”) is
entered into this 10th day of August, 2007 (the “
Effective Date ”) between Elektrobit, Inc., a Delaware
corporation having offices at 22745 29th Drive SE, Suite 200,
Bothell, Washington 98021 (“ Elektrobit ”), and
TerreStar Networks Inc., a Delaware corporation having offices at
12010 Sunset Hills Road, Suite 600, Reston, Virginia 20190 (“
TerreStar ”).
Recitals
WHEREAS, Elektrobit is
a research and development company specializing in the design and
development of wireless communication products and related
technologies; and
WHEREAS, TerreStar
wishes to engage Elektrobit to provide certain services in order to
design and develop one or more Reference Phones (as hereinafter
defined) integrating satellite and terrestrial technology, and
Elektrobit is willing to provide such services, all as set forth in
the attached Statement of Work(s) and on the terms and conditions
set forth herein; and
WHEREAS, the Parties
desire to establish provisions governing their licensing of the
Reference Phone following its development.
NOW THEREFORE, for
good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, the Parties agree as
follows:
Agreement
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1.1. |
“ Background Rights ” shall mean all
patents, patent applications, copyrights, trade secrets, mask works
or other proprietary rights owned by a Party, or under which a
Party has the right to grant licenses, which are included in or
with, or necessary for, the Deliverables, or any portion thereof,
created, conceived or first reduced to practice on or before the
Effective Date. |
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1.2. |
“ Business Day ” shall mean any Monday
through Friday that is not a Federal holiday as determined by the
U.S. Office of Personnel Management. |
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1.3. |
“ Certification ” shall mean successful
completion of the Certification Test Plan set forth in the
applicable SOW. |
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1.4. |
“ Change ” shall mean any modification or
change to this Agreement or a SOW, including, without limitation,
any modification or change that may be made pursuant to
Section 4 (Project Management). |
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1.5. |
“ Deliverables ” shall mean all materials,
in whatever form, generated by Elektrobit Personnel with respect to
each Project as described in the applicable Statement of Work,
including, without limitation, the Reference Phone and
Documentation, and any other item identified as a deliverable in
the applicable SOW, including the Reference Design. |
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1.6. |
“ Design Charges ” shall mean the aggregate
amount payable by TerreStar to Elektrobit hereunder for
Elektrobit’s design services, including Reimbursable
Expenses. |
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1.7. |
“ Documentation ” shall mean all
annotations, engineering notes, logs, reports, written assessments,
recommendations, training manuals, and other written materials, in
whatever form, generated by Elektrobit with respect to each Project
as described in the applicable Statement of Work. |
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1.8. |
“ Ecosystem ” shall have the meaning
ascribed to it in the applicable Statement of Work. |
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1.9. |
“ Elektrobit End Customer ” shall mean a
Person that acquires an End Product manufactured by Elektrobit or
by an Elektrobit Sublicensee. |
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1.10. |
“ Elektrobit Personnel ” shall mean all
Elektrobit employees, agents, and independent contractors (at
whatever tier) of Elektrobit, and any other person directly or
indirectly utilized by Elektrobit to perform the activities under
this Agreement. |
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1.11. |
“ Elektrobit Sublicensee ” shall mean a
third party to whom Elektrobit sublicenses the Reference Phone
Rights for the purposes of manufacturing End Products. |
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1.12. |
“ End Customer ” shall mean either an
Elektrobit End Customer or TerreStar End Customer, as the context
requires. |
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1.13. |
“ End Product ” shall mean a hybrid
satellite-terrestrial based handset incorporating any Reference
Phone Rights. |
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1.14. |
“ Fixed Fee Project ” shall mean a Project
for which the total Design Charges are specified in the applicable
Statement of Work. |
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1.15. |
“ Governmental Authority ” shall mean any
government or political subdivision or any agency, authority,
bureau, commission, department or instrumentality of either, or any
court, tribunal, grand jury or arbitrator, in every case whether
foreign or domestic. |
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1.16. |
“ Hughes ” shall mean Hughes Network Systems
LLC. |
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1.17. |
“ Hughes Technology ” shall mean the
satellite-based telecommunications technology to be furnished by
Hughes for the Project, all as described in the applicable
SOW. |
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1.18. |
“ Intellectual Property Rights ” shall mean
all patents (including without limitation all patent applications,
provisionals, inventors’ certificates, substitutions,
extensions, reissues, renewals and other similar filings),
inventions (whether or not patentable), industrial designs, utility
models, trademarks and service marks regardless of whether they
have been registered or otherwise formalized, trade secrets,
licenses, formulas, logos, domain names, trade dress, techniques,
knowledge, methods, processes, discoveries, copyrights, mask works,
rights in designs (including design registrations and design
rights), and rights in know-how, in each case whether registered or
unregistered and including applications for grant of any of the
foregoing and all rights or forms of protection having equivalent
or similar effect to any of the foregoing which may now or at any
time hereafter exist anywhere in the world. |
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1.19. |
“ Milestone(s) ” shall mean the phases for
the Project as set forth in the applicable SOW. |
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1.20. |
“ Milestone Date ” shall mean the target
date set forth in the applicable SOW for completion of a
Milestone. |
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1.21. |
“ Milestone Payment ” shall mean the
percentage of the Design Charges for a Fixed Fee Project due upon
the completion of a particular Milestone, as specified in the
applicable SOW. |
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1.22. |
“ Party ” or “ Parties ”
shall mean Elektrobit, TerreStar, or both Elektrobit and TerreStar,
as the context permits. |
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1.23. |
“ Person ” shall mean an individual,
corporation, partnership, limited liability company, unincorporated
organization, voluntary association, joint stock company, business
trust joint venture, Governmental Authority or any other
entity. |
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1.24. |
“ Project ” shall mean a development project
described in a Statement of Work, including specified phases for
such project. |
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1.25. |
“ Properly Payable ” shall have the meaning
specified in Section 2.1.4. |
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1.26. |
“ Proprietary Information ” means software,
firmware, hardware, technology and know-how, and other proprietary
or Intellectual Property Rights embodied therein, that is owned or
licensed by and proprietary to a Party and not generally available
to the public, including without limitation, plans, analyses, trade
secrets, patent rights, copyrights, trademarks, inventions, fees
and pricing information, operating procedures, procedure manuals,
processes, methods, computer applications, programs and designs,
and any processed or collected data. To ensure that any information
or technology that is proprietary to a Party is deemed Proprietary
Information, a Party should label such material
“confidential” or “proprietary” however,
the failure to label such property or information confidential or
proprietary shall not otherwise invalidate the treatment of such
information as Proprietary Information hereunder, if, due to the
nature of the information or the circumstances under which it was
disclosed, the receiving Party should understand it to be
proprietary or confidential. |
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1.27. |
“ Reference Design ” shall mean the design
for the Reference Phone provided by Elektrobit under this
Agreement. |
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1.28. |
“ Reference Phone ” shall have the meaning
set forth in the applicable SOW, and such term shall include the
Reference Design. |
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1.29. |
“ Reference Phone Rights ” shall mean, for
each Project, the Reference Design and all specifications, designs,
discoveries, inventions, products, modifications, computer
programs, technical information, toolings, molds, procedures,
processes, improvements, developments, drawings, notes, documents,
information and materials made, conceived, reduced to practice or
developed by Elektrobit Personnel that are embodied within the
Deliverables, including associated documentation, and the
Intellectual Property Rights related thereto, in each case as
developed by Elektrobit Personnel hereunder. |
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1.30. |
“ Reimbursable Expenses ” shall mean
pre-approved, reasonable costs and expenses incurred by Elektrobit
in performing services hereunder, including, without limitation,
pre-approved, reasonable travel expenses, materials costs and fees
or royalties for approved third party licenses in accordance with
Section 2.4.5, all at cost, without mark-up of any
kind. |
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1.31. |
“ Selected Chipset ” shall have the meaning
specified in the applicable SOW. |
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1.32. |
“ Selected Chipset Supplier ” shall have the
meaning specified in the applicable SOW. |
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1.33. |
“ Services ” shall mean the services and
work to be performed by Elektrobit under this
Agreement. |
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1.34. |
“ SOW ” or “ Statement or Work
” shall mean any statement of work that describes a
particular Project and is either attached to this Agreement as
Exhibit A or executed by each Party’s
authorized representative. References to the applicable SOW in this
Agreement shall refer to the SOW describing the relevant
Project. |
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1.35. |
“ Specifications ” means the specifications
for the Reference Phone set forth in the applicable
SOW. |
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1.36. |
“ Sublicense Agreement ” shall mean a
sublicense agreement whose form and terms the Parties have approved
for use in their respective licensing of the Reference Phone
Rights. |
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1.37. |
“ Telecommunication Standard ” shall mean a
standard adopted by a recognized standard-setting body, including,
but not limited to, ETSI, ITU, UMTS, or CTIA. |
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1.38. |
“ TerreStar Data ” shall mean data,
information and materials provided by or on behalf of TerreStar to
Elektrobit for purposes of this Agreement, which includes (but is
not limited to) circuit designs, the Specifications and any other
specifications, information regarding TerreStar’s satellite
and terrestrial services and or other systems, equipment, software,
hardware, technology, research, development and other similar
information disclosed or submitted to Elektrobit by or on behalf of
TerreStar pursuant to the applicable SOW or otherwise in the
performance of this Agreement. |
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1.39. |
“ TerreStar End Customer ” shall mean a
Person that acquires an End Product manufactured by TerreStar or by
a TerreStar Sublicensee. |
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1.40. |
“ TerreStar-Furnished Item ” shall mean any
item expressly identified as a “TerreStar-Furnished
Item” in the applicable SOW or identified by TerreStar on the
applicable Third Party IP List. |
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1.41. |
“ TerreStar Sublicensee ” shall mean a third
party to whom TerreStar sublicenses the Reference Phone Rights for
the purposes of manufacturing End Products. |
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1.42. |
“ Third Party Contract ” shall mean an
agreement between TerreStar and a third party granting TerreStar
the right to make Third Party Contributions available to Elektrobit
in connection with this agreement. |
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1.43. |
“ Third Party Contributions ” shall mean the
third party technology, designs, software and hardware components
and other items and materials, and any Intellectual Property Rights
therein, employed by Elektrobit in providing the Deliverables or
otherwise necessary in the use of any Deliverable. “Third
Party Contributions” do not include any such items developed
by Elektrobit Personnel. |
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1.44. |
“ T&M Project ” shall mean a Project for
which the Design Charges are calculated on a time and materials
basis. |
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| 2. |
Development and Licensing Terms. |
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2.1. |
Reference Phone Development; Payments |
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2.1.1 |
Overview. Elektrobit shall develop for TerreStar one or
more hybrid satellite-terrestrial based Reference Phones as
provided herein and as detailed in the SOW(s). Projects shall be
priced as T&M Projects or Fixed Fee Projects as the Parties
agree and as set forth in the applicable SOW. |
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2.1.2 |
Design Charges for T&M Projects. For each T&M
Project, Elektrobit estimates, in good faith, that it can perform
the Services for an amount not to exceed the amount specified in
the applicable SOW (the “ NTE Price ”).
Elektrobit shall perform all such Services hereunder on a time and
materials basis as described in the applicable SOW, and TerreStar
shall, as partial consideration therefor, pay to Elektrobit the
Design Charges; provided that TerreStar shall have no obligation to
make any payment to Elektrobit in excess of the NTE Price.
Elektrobit shall have no obligation to continue performing such
Services to the extent the cost of materials plus the applicable
hourly rates multiplied by the number of hours worked (the “
Work Effort ”) exceeds the NTE Price, provided that,
no later than the date on which Elektrobit submits the first
invoice following the date it becomes aware that the Work Effort
will exceed the NTE Price, Elektrobit notifies TerreStar and
provides a revised estimate for performing the Services for the
applicable T&M Project, in writing, to TerreStar’s
Project Manager. Elektrobit shall also provide TerreStar with a
revised estimate if at any time Elektrobit believes that the
estimated price of such Services will be greater than the NTE
Price. Elektrobit shall proceed with such Services to the extent
that TerreStar approves, in writing, an increase in the NTE
Price. |
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2.1.3 |
Design Charges for Fixed Fee Projects. For each Fixed
Fee Project, Elektrobit shall perform all Services for an amount
specified in the applicable SOW, and TerreStar shall, as partial
consideration therefor, pay to Elektrobit the Design
Charges. |
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2.1.4 |
Invoicing
and Payment. Elektrobit will invoice TerreStar monthly for the
Design Charges, based on (i) for T&M Projects, Services
rendered (to be invoiced at the hourly rates specified in the
applicable SOW) as such invoiced amount is adjusted in accordance
with Section 4.5 and Reimbursable Expenses incurred during the
immediately preceding month, and (ii) for Fixed Fee Projects,
the Milestone Payment for each Milestone for which all Deliverables
were accepted in accordance with the terms of Section 5
(Acceptance Procedure) during the immediately preceding month. All
invoices, or portions thereof, not subject to a good faith dispute
will be payable within [***] of receipt (the “Original Due
Date”); provided that TerreStar’s right to withhold a
disputed amount shall be conditioned on TerreStar submitting to
Elektrobit a written explanation of its reason for disputing any
invoice, or portion thereof, prior to the Original Due Date of the
disputed invoice. The EMOC shall attempt to resolve such disputes
in an expedited manner and in accordance with Section 14.7. If
the Parties cannot resolve such dispute within [***] from the
Original Due Date of the disputed invoice, TerreStar shall pay the
disputed amount to Elektrobit pending the ultimate resolution of
the dispute. An invoice, or portion thereof, shall be deemed
“ Properly Payable ” (i) on its Original
Due Date, if it is not disputed by TerreStar as hereinabove
provided on or prior to its Original Due Date, (ii) [***]
after, and to the extent that, a dispute described above is
resolved in Elektrobit’s favor, or (iii) [***] after the
Original Due Date if a dispute described above has not yet been
resolved. Nothing in this Agreement shall restrict TerreStar from
disputing any invoice after its due date; however, TerreStar shall
not be permitted to withhold
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payments that it disputes
after the due date. Any Properly Payable amount so invoiced to
TerreStar hereunder, as well as any other properly payable amount
payable hereunder by either Party to the other, that is not paid
when due will bear interest at a rate per annum equal to [***]
percent ( [***] %) or, if less, the maximum rate permitted by
applicable law (the “ Applicable Rate ”), from
the due date (which, in the case of disputed invoices resolved in
favor of Elektrobit and undisputed invoices, shall be the Original
Due Date) until the date of payment. Elektrobit shall refund to
TerreStar any amount subject to a good faith dispute and paid by
TerreStar to Elektrobit pending the resolution of such dispute, to
the extent the amount paid by TerreStar is ultimately determined to
not be payable to Elektrobit. Elektrobit shall refund such amount
to TerreStar within [***] of such resolution, with interest at the
Applicable Rate, from the date paid by TerreStar until the refund
date.
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2.1.5 |
Suspension for Late Payment. Without limiting any other
right or remedy that may be available to Elektrobit hereunder or
under applicable law, in the event that (a) TerreStar shall
fail to pay any Properly Payable portion of the Design Charges by
the due date for such payment, and such failure shall continue for
more than [***] following such due date, and (b) the aggregate
then-overdue amount of such Design Charges payable by TerreStar
exceeds [***], then Elektrobit shall have the right, on
[***]’ notice, to suspend performance of its Services until
all overdue Properly Payable amounts have been paid, and the time
for delivery of all remaining Deliverables will be extended by the
period that said payments were overdue. |
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2.1.6 |
Subcontracting. Elektrobit shall not directly or
indirectly subcontract the performance of any material portion of
the Services to any third party without the prior written approval
of TerreStar, except that such approval shall not be required if
the subcontractor is another entity that is a majority owned direct
or indirect subsidiary of Elektrobit Corporation. Notwithstanding
any such approval or other permitted subcontracting, Elektrobit
shall at all times remain solely responsible and liable for:
(i) performance of the Services by all Elektrobit Personnel in
conformity with the terms and conditions of this Agreement and the
applicable Statement of Work, and (ii) all acts and omissions
of Elektrobit Personnel. |
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2.2. |
Milestones. The following provisions will govern the
delivery of Deliverables hereunder. |
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2.2.1 |
Milestone Dates. Elektrobit will, except as otherwise
provided in this Agreement, use commercially reasonable efforts to
comply with the schedule of Milestone Dates set forth in the
applicable SOW. |
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2.2.2 |
Notice and Submission. Elektrobit will provide written
notice to TerreStar on completion of a Milestone and submit at the
same time the applicable Deliverables for such Milestone to
TerreStar. TerreStar shall verify the acceptability of the
Deliverables for each Milestone in accordance with the terms of
Section 5 (Acceptance Procedure). |
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2.3. |
Statement of Work Changes. |
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2.3.1 |
Notification. Elektrobit will promptly notify TerreStar
in writing of any circumstances it becomes aware of that will
impact a Milestone Date. |
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2.3.2 |
Process. Any Changes shall be implemented and approved
solely in accordance with the terms of Sections 4.2 (Changes) and
4.3 (Directed Change). |
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2.3.3 |
Supplier Changes. TerreStar may wish to select
particular components from specified suppliers to be integrated
into the Reference Phone. Components that are required to be
integrated into the Reference Phone must be identified in the
applicable SOW. Should TerreStar decide to change component
suppliers for the Reference Phone, significant change to the
applicable SOW might be required. |
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2.4. |
Reference Phone Licensing. |
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2.4.1 |
Overview. Following completion of the final Milestone in
a Project, acceptance of the Project’s Reference Phone by
TerreStar and acquisition by the Parties of joint ownership in the
Project’s Reference Phone Rights as provided in
Section 6.1, the Parties will have the right to license such
Reference Phone Rights to third parties as hereinafter provided.
Notwithstanding any ownership or other rights possessed by either
party in such Reference Phone Rights, neither Party shall have the
right to license any Reference Phone Rights prior to the
acquisition by the Parties of joint ownership in such Reference
Phone Rights as provided in Section 6.1. |
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2.4.2 |
Rights of Each Party. Each Party hereby grants the other
Party, [***] , an irrevocable, perpetual, nontransferable,
royalty-bearing (as hereafter provided), worldwide right and
license, under the Reference Phone Rights, with the right to grant
sublicenses, (i) to make, have made, use, sell, import, have
sold, lease and have leased products that would infringe any
Reference Phone Rights but for such license grant and (ii) to
copy, modify, distribute, use, perform and make derivative works of
the Reference Phone Rights. [***] Notwithstanding the foregoing,
Elektrobit hereby grants to TerreStar the right to
[***] |
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2.4.3 |
Use of Sublicense Agreement. The Parties will license
the Reference Phone Rights to their respective Sublicensees in
accordance with the Sublicense Agreement. |
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2.4.3.1. |
Each Party shall have the right to charge such royalties or
fees to its respective Sublicensees and to modify the warranties
and indemnification provisions of the Sublicense Agreement with its
Sublicensees, as such Party chooses. |
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2.4.3.2. |
Each Party acknowledges and agrees that in licensing the
Reference Phone Rights to its Sublicensees, such Party (the
“Sublicensor Party”) acts solely at its own risk and as
between the Parties, shall have sole liability and responsibility
under and in connection with Sublicense Agreements entered into by
it, including, without limitation, in respect of any warranties
given or indemnification obligations undertaken in or pursuant to
such Sublicense Agreement, and will indemnify, defend and hold
harmless the other Party from and against any and all Losses (as
hereinafter defined) asserted against such other Party by the
Sublicensor Party’s Sublicensees or others under, in
connection with, or by virtue of a Sublicense Agreement between the
Sublicensor Party and its Sublicensees, except with respect to
claims for which the other Party is obligated to indemnify the
Sublicensor Party pursuant to Section 9.3. |
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2.4.3.3. |
Except as set forth in Sections 9.1 and 9.2, or unless
otherwise agreed in writing, neither Party shall be responsible for
obtaining any third party licenses required in order for the other
Party to exercise its respective rights under this
Section 2.4, or for the cost thereof. |
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2.4.4 |
Royalties. Each Party shall pay or cause to be paid to
the other the royalties hereinafter set forth based on its use or
licensing of the Reference Phone Rights. Such royalties will be
payable irrespective of whether a Party receives royalty payments
from its Sublicensees. Subject to its performance of its payment
obligations hereunder, each Party shall be entitled to retain any
royalties or other amounts it receives from its respective
Sublicensees. |
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2.4.4.1. |
TerreStar Royalty Obligations. |
[***]
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[***]
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2.4.4.2. |
Elektrobit Royalty Obligations. |
[***]
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[***]
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2.4.4.3. |
Payment. Any on-going royalty payments will be due and
payable within [***] after the end of each calendar
quarter. |
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2.4.5 |
Use of Undisclosed Third Party Intellectual Property. In
the event that Elektrobit determines that it would be useful or
desirable to incorporate a Third Party Contribution (other than an
item identified as a “ Third Party Contribution
” or “ TerreStar-Furnished Item ” in the
applicable SOW) into a Deliverable or to use such Third Party
Contribution in the performance of the Services, Elektrobit shall
so inform TerreStar in writing (including any restrictions and
payment obligations associated with such Third Party Contribution)
and shall not incorporate or use such Third Party Contribution
without TerreStar’s prior written consent. |
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2.5. |
Opportunity to Bid. TerreStar will use commercially
reasonable efforts to provide Elektrobit with an opportunity to
submit a bid or proposal in response to any request for proposal or
request for quote that TerreStar may issue to other third parties
for the purchase of End Products. |
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2.6. |
Coordination. To the extent they may legally do so, the
Parties will use reasonable efforts to coordinate their respective
marketing efforts to as to minimize confusion among customers or
potential customers and to ensure cohesive
communication. |
Unless otherwise specified in
the applicable Statement of Work, TerreStar shall be responsible
for the following:
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3.1. |
Assistance. TerreStar shall make available to
Elektrobit, in a timely manner, necessary and advisable resources
identified as “ TerreStar-Furnished Items ” in
the applicable Statement of Work. Unless specified otherwise in the
applicable SOW, TerreStar shall make available (at
TerreStar’s expense) to Elektrobit the following resources in
connection with the Project: (a) appropriate subject matter
experts for interviewing as to business processes, systems,
requirements, and other relevant subjects; and (b) appropriate
TerreStar Data, as identified in the applicable Statement of Work
or otherwise agreed in writing by the Parties. Elektrobit shall not
provide access to or use of the TerreStar-Furnished Items to any
third party other than an authorized subcontractor, consultant
and/or agent of Elektrobit for purposes of performing the Services.
Elektrobit shall ensure that no lien, encumbrance, pledge or other
interest whatsoever attaches to the TerreStar-Furnished Items.
Failure or delay of TerreStar to provide TerreStar-Furnished Items
shall not constitute a breach of this Agreement, but shall only
excuse Elektrobit from the performance of its obligations under
this Agreement to the extent affected thereby. |
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3.2. |
TerreStar
Background Rights. TerreStar hereby grants, to the extent it
has the right to do so, to Elektrobit a non-exclusive,
non-transferable, irrevocable, perpetual, royalty-bearing (as
provided for in this Section 3.2 with respect to Third Party
Intellectual Property Rights and Section 2.4.4), worldwide and
unlimited right and license, with the
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right to grant
sublicenses, to utilize the TerreStar Background Rights in
connection with the activities contemplated by this Agreement.
Notwithstanding the foregoing, to the extent TerreStar Background
Rights consist of third party Intellectual Property Rights, such
license shall be subject to any additional restrictions, conditions
and third party license fees required or imposed by such third
party. TerreStar shall notify Elektrobit in writing if any
TerreStar Background Rights contain third party Intellectual
Property Rights, including notification of all applicable
restrictions, conditions, and third-party license fees or that no
such restrictions, conditions, and third-party license fees apply,
as the case may be (the “TerreStar Third Party IP
List”), or if any TerreStar Background Rights are otherwise
subject to restrictions, conditions, and third-party license fees.
Without limiting Section 9.2, nothing in this Agreement shall
require TerreStar to acquire additional rights to third-party
Intellectual Property Rights.
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3.3. |
Restrictions on TerreStar Background Rights. This
Section 3.3 shall serve as the written notice of the following
restrictions required in Section 3.2, and no additional notice
shall be required: (i) Elektrobit shall not exercise the
license rights granted in Section 3.2 above, with respect to
any TerreStar Background Rights, in connection with developing,
implementing, providing or maintaining mobile satellite service or
mobile satellite service with an ancillary terrestrial component,
in either case using the L-band; and (ii) Elektrobit shall
exercise the license rights granted in Section 3.2 above, with
respect to any Intellectual Property Rights identified by TerreStar
as being owned by ATC Technologies, LLC, solely in connection with
developing, implementing, providing or maintaining mobile satellite
service or mobile satellite service with an ancillary terrestrial
component, in either case solely using the S-band in connection
with services offered by TerreStar to its customers. |
| |
4.1. |
Executive
Management Oversight Committee. Each Party shall appoint two
individuals (each, a “ Project Manager ”) who,
from the Effective Date, shall serve as the representatives for
each such Party on the Executive Management Oversight Committee
(“ EMOC ”) under this Agreement. The EMOC
(a) shall have overall responsibility for managing and
coordinating the performance of the Parties under this Agreement
and the SOWs, including, but not limited to, using reasonable
efforts to resolve any disputes between the Parties regarding the
terms of this Agreement and the SOWs and the performance of the
Parties under this Agreement and the SOWs in accordance with the
terms of Section 14.7 (Dispute Resolution); and (b) shall
be responsible for approving and making any Changes (as set forth
below in Section 4.2 (Changes)). Each Project Manager is
authorized to act for and on behalf of such Party with respect to
all matters
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relating to this Agreement
and the SOWs. Approval by the EMOC on any matter shall require
approval by all participating Project Managers, which must in any
event include at least one Project Manager from each Party. The
initial Project Managers for TerreStar and Elektrobit shall be
designated in writing by the Parties upon execution of this
Agreement. Any Party may change its Project Manager(s) upon
reasonable notice to the other Party.
|
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4.2. |
Changes. All Changes shall be controlled using a formal
change control process to be adopted by the EMOC (the “
Change Control Process ”). Except as set forth in
Section 4.3, no Changes will be implemented without
(a) approval of the EMOC in accordance with the Change Control
Process and (b) a written agreement setting forth and defining
the specific Changes approved by the EMOC and any mutually agreed
change to the NTE Price. Elektrobit shall propose and perform the
changed Services in a manner that minimizes TerreStar’s costs
and any schedule delays. For Changes to T&M Projects,
Elektrobit shall provide an estimate of the amount of any cost
increase or decrease, which shall be determined to reflect the
increase or decrease in the estimated cost of materials and the
applicable hourly rates multiplied by the increase or decrease in
the estimated number of hours required. The amount of any price
increase or decrease due to a Change to a Fixed Fee Project shall
be determined in a manner consistent the methodology used to
determine the initial Design Charges of such Fixed Fee
Project. |
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4.3. |
Directed Change. The Parties shall attempt to reach
agreement as to any adjustment to the NTE Price and/or Design
Charges (in each case, if applicable), schedule and other terms and
conditions due to a Change requested by TerreStar. However, if the
Parties fail to agree to any such adjustment, then TerreStar may
direct Elektrobit to proceed with the requested Change, in which
case, Elektrobit shall proceed with the Change as so directed, and
the Parties shall continue to negotiate the adjustments to the
Agreement. Pending completion of such negotiations or dispute
resolution, TerreStar shall compensate Elektrobit for the Services
on a time and materials basis, based on the actual cost to
Elektrobit of any additional materials required and the applicable
hourly rates multiplied by the hours worked pursuant to the
directed Change. |
| |
4.4. |
Feasibility Issues. Notwithstanding any other provision
of this Agreement, the Parties acknowledge that the Project
presents development risks. Elektrobit shall, from time to time,
advise the EMOC of any such risks or issues it encounters or
anticipates in the performance of the Services. The Change Control
Process will be used to implement modifications to the applicable
SOW to take any such risks or issues into account. |
| |
4.5. |
Job Activity Forecasting. The EMOC shall meet monthly,
or more often as agreed by the Parties, to review
Elektrobit’s submitted forecast of job activities for the
upcoming month and to review job activities accomplished by
Elektrobit during the prior month. The EMOC may adjust job activity
forecasts that have previously been submitted by Elektrobit and
reviewed by the EMOC at any time to account for new information,
development risks, or issues. For T&M Projects, if the job
activities accomplished in a given month do not meet the forecast
for such month, TerreStar may withhold from its payment for such
month an amount equitably determined by the EMOC, taking into
account the effort expended on the forecasted job activities and
information, the proportion and relative importance of the
forecasted job activities accomplished, development risks, or
issues first made known to the Parties during the relevant month or
continuing development risks or issues, until Elektrobit
accomplishes such job activities or the EMOC determines that such
payment should no longer be withheld. TerreStar’s
disagreement with a determination of the EMOC concerning whether,
or what portion, TerreStar may withhold from its payment for such
month shall be the basis of a good faith dispute pursuant to
Section 2.1.4. |
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The following acceptance
procedure shall apply to the Deliverables:
| |
5.1. |
Acceptance Period for Deliverables. Upon receipt of each
Deliverable from Elektrobit pursuant to Section 2.2.2,
TerreStar shall have [***] in which to examine such Deliverable
(the “ Acceptance Period ”). If the Deliverable
complies in all material respects with the Acceptance Test Plan set
forth in the applicable Statement of Work, TerreStar shall notify
Elektrobit of its acceptance of the Deliverable. |
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5.2. |
Cure Period. If any Deliverable fails to comply in all
material respects with the Acceptance Test Plan set forth in the
applicable Statement of Work, TerreStar shall notify Elektrobit in
writing of the non-compliance, and shall provide Elektrobit with
available information concerning such non-compliance (a “
Notice of Non-Compliance ”). Upon receipt of a Notice
of Non-Compliance, Elektrobit shall have [***] to cure the
deviations identified in the Notice of Non-Compliance. Elektrobit
shall resubmit the corrected Deliverable to TerreStar as soon as
commercially and technically practicable, and TerreStar shall be
afforded a further Acceptance Period in accordance with this
Section 5 (Acceptance Procedure). If TerreStar furnishes to
Elektrobit one or more further Notices of Non-Compliance, the
foregoing process will be repeated as necessary; provided that any
non-compliance that exists following the cure period for the third
and any subsequent Notice of Non-Compliance shall be deemed a
Material Breach for purposes of Section 12.2.2.1 (Termination
for Cause – Material Breach). |
| |
5.3. |
Acceptance. In the event that (a) TerreStar
notifies Elektrobit that it has accepted any Deliverable,
(b) the applicable Acceptance Period expires without TerreStar
providing a Notice of Non-Compliance, or (c) Elektrobit is
unable to reproduce the asserted material deviations listed on the
Notice of Non-Compliance and so notifies TerreStar, then TerreStar
shall be deemed to have accepted the Deliverable. A failure by
TerreStar to discover or notify Elektrobit of defects within the
Acceptance Period shall not negate Elektrobit’s applicable
representations or warranties under Section 7 (Elektrobit
Representations and Warranties). |
| 6. |
Ownership of Work Product. |
| |
6.1. |
Work Product; Ownership. Upon completion of each
Reference Phone and final acceptance thereof by TerreStar in
accordance with the terms hereof, and subject to
(a) TerreStar’s payment in full of the Properly Payable
Design Charges payable to Elektrobit under this Agreement,
(b) Section 6.2 (Existing Intellectual Property), and
(c) Section 6.3 (Third Party Contributions) all Reference
Phone Rights will be owned jointly by the Parties as hereinafter
provided. |
| |
6.1.1 |
Assignment of Joint Ownership; Procedures. Subject to
(a) TerreStar’s payment in full of the Properly Payable
Design Charges due to Elektrobit under this Agreement,
(b) Section 6.2 (Existing Intellectual Property), and
(c) Section 6.3 (Third Party Contributions), Elektrobit
hereby assigns an equal, undivided right, title and interest in and
to the Reference Phone Rights, the Reference Phone, its design and
all Intellectual Property Rights therein, including, without
limitation, any patents issuing thereon, without the duty to
account to the other, except for payment of the royalties pursuant
to Section 2.4.4. The Parties intend that not later than
Elektrobit’s delivery of the final Deliverable under the SOW
annexed hereto as Exhibit A, the EMOC adopt rules governing the
matters set forth in Sections 6.1.1.1 through 6.1.1.4 below, with
such sections to apply until the adoption of such
rules. |
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6.1.1.1. |
Patent Prosecution and Maintenance. Prior to filing of a
patent application or interference or opposition proceeding for any
jointly owned invention covered hereby, each Party agrees to submit
such applications and filings to the other Party for review,
together with an estimate of the third party costs associated with
such action in the relevant jurisdiction. The receiving Party shall
have [***] to review such application and filing and provide either
(i) corrections thereto, (ii) other comments, which the
preparing Party agrees to consider in good faith, and
(iii) whether the reviewing Party desires to share equally in
the third party costs for filing, prosecuting and maintaining the
applicable patent in the relevant jurisdiction. If the reviewing
Party agrees to share in such third party costs, the filing party
shall be responsible for payment of such costs to the applicable
third parties and shall invoice the other Party at the end of each
quarter for [***] percent ( [***] %) of such costs, which invoice
shall include reasonable back-up documentation evidencing such
costs. In the event that such third party costs exceed the estimate
provided to the reviewing Party by more than [***] percent ( [***]
%) of such estimate, the reviewing Party may withdraw from the
prosecution and shall not be obligated to pay more than [***]
percent ( [***] %) of the previously estimated cost. If the
reviewing Party notifies the other Party that it does not desire to
share in such costs or withdraws from the prosecution pursuant to
the preceding sentence, Section 6.1.1.4 shall apply. Each
Party shall provide the other Party with copies of all filings,
office actions, draft responses and final responses by patent
counsel and all communication and correspondence to and from the
applicable patent office with respect to the Reference Phone
Rights, as soon as reasonably possible. The Parties may, by a
written agreement signed by the authorized representatives of each
Party, modify the allocation of costs and rights associated with
prosecuting and maintaining Reference Phone Rights. |
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6.1.1.2. |
Enforcement. The Parties shall act in good faith to
inform each other of any infringement of the Reference Phone Rights
of which it becomes aware and shall provide any available evidence
thereof. Each Party shall have the right, but not the obligation to
enforce at its own expense the Reference Phone Rights; however, no
settlement, consent judgment or other voluntary final disposition
of such suit with regard to infringement may be entered into
without the consent of the other Party, which shall not be
unreasonably withheld. Each Party agrees to join any such action as
a plaintiff, at the enforcing Party’s request. Prior to
commencing an infringement enforcement action with respect to
Reference Phone Rights, the initiating Party shall notify the other
Party and inquire as to whether the second Party desires to share
equally in the expenses of the infringement action. If the second
Party agrees to equally share in the expenses of the enforcement
action, then, (i) if the Parties prevail, the Parties shall
share equally in the recovery and damages resulting from the
infringement claim, after reimbursement of the actual costs
incurred in connection with such infringement action (the “
Enforcement Costs ”), and (ii) if the Parties do
not prevail, the Parties shall share equally in the Enforcement
Costs. The Parties may, by a written agreement signed by the
authorized representatives of each Party, modify the allocation of
costs and awards resulting from enforcement actions. |
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6.1.1.3. |
Defense. If a third party commences a declaratory
judgment action alleging invalidity or noninfringement of any
Reference Phone Rights, the Parties agree to cooperate in the
defense of the patent and, unless a Party provides written notice
to the contrary to the other Party, to share equally the costs of
such defense. If a Party declines to share in the costs of such
defense, Section 6.1.1.4 shall apply. |
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6.1.1.4. |
Sharing of Costs Declined. If a Party declines to share
the costs of filing, prosecuting and maintaining the applicable
patent in the relevant jurisdiction pursuant to
Section 6.1.1.1 or the costs of defending a declaratory
judgment action under Section 6.1.2, the filing or defending
Party shall bear such costs and, if the patent is granted or the
defending Party prevails, respectively, then (x) if the
declining Party is TerreStar, TerreStar shall assign its ownership
rights in the patent in the relevant jurisdiction to Elektrobit and
shall retain the license granted in Section 2.4.2, subject to
payment of the royalties specified in Section 2.4.4.1, and
(y) if the declining Party is Elektrobit, Elektrobit shall
assign its ownership rights in the patent in the relevant
jurisdiction to TerreStar and shall retain the license granted in
Section 2.4.2, subject to payment of the royalties specified
in Section 2.4.4.2 . |
| |
6.1.2 |
Marking Requirement. Each Party shall mark, or have
marked, their products subject to the Reference Phone Rights with
all applicable patent numbers, patent pending notices, copyright
notices, confidentiality markings and other customary intellectual
property notices. |
| |
6.2. |
Existing Intellectual Property. Notwithstanding anything
in Section 6.1 (Work Product; Ownership), Elektrobit shall
retain all right, title and ownership to any Background Rights or
any Intellectual Property Rights that it or its agents, affiliates,
or subcontractors may create outside the scope of this Agreement;
provided, however, that, subject to
(a) TerreStar’s payment in full of the Properly Payable
Design Charges due to Elektrobit under this Agreement (unless this
Agreement is terminated by TerreStar pursuant to
Section 12.2.2), (b) Section 6.2 (Existing
Intellectual Property), and (c) Section 6.3 (Third Party
Contributions), Elektrobit hereby grants to TerreStar a
non-exclusive, non-transferable, irrevocable, royalty- bearing (as
provided for in Section 2.4.4), worldwide and unlimited right
and license to the Background Rights, with the right to grant
sublicenses to others, (i) to make, have made, use, sell,
import, have sold, lease, and have leased End Products that would
otherwise infringe any of the Background Rights and (ii) copy,
modify, distribute, use, perform and make derivative works of the
Background Rights solely in connection with such End
Products. |
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6.3. |
Third Party Contributions. Notwithstanding anything in
Section 6.1 (Work Product; Ownership), to the extent the
Deliverables include any Third Party Contributions, neither
ownership of nor any interest in such Third Party Contributions is
transferred to TerreStar, except for such rights as are provided
for under any agreement with the owners/licensors of such Third
Party Contributions. Nothing in this Section 6.3 shall limit
Elektrobit’s obligations under Section 2.4.5. |
| |
6.4. |
Required
Third Party Licenses. The Parties acknowledge and agree that
the development Services may require licenses of intellectual
property from third parties, including, without limitation, Hughes
and the Selected Chipset Supplier. The Parties have sought to list
in the applicable SOW all Third Party Contributions they anticipate
requiring for the development phase. Elektrobit believes, in good
faith, having undertaken due diligence, that it can provide the
Deliverables, compliant with the
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Specifications, without
requiring the use of Third Party Contributions other than those
identified as “Third Party Contributions” or
“TerreStar-Furnished Items” in the applicable Statement
of Work. If additional Third Party Contributions are required,
Section 2.4.5 shall apply.
|
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6.5. |
Assistance. Each Party agrees to cooperate with the
other in the procurement and maintenance of the rights in and to
the Deliverables as described in this Section 6 (Ownership of
Work Product) and elsewhere in this Agreement, and to execute, when
requested, such documents as may be deemed reasonably necessary to
carry out the purposes of this Section 6 (Ownership of Work
Product) and this Agreement. |
| 7. |
Elektrobit Representations and Warranties. |
Elektrobit represents and
warrants, to and for the benefit of TerreStar, as
follows:
| |
7.1. |
Compliance with Specifications. As of acceptance of the
Deliverables in accordance with Section 5.3 (Acceptance)
following completion of the final Milestone, Elektrobit’s
contributions to the Deliverables shall for a period of [***] after
the first commercial sale of an End Product incorporating any
portion of such Deliverables to an End User, or if less, [***] from
Certification, in all material respects, be free from material
adverse defects and errors and shall meet the
Specifications. |
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7.2. |
Right to Convey. The licenses and rights granted by
Elektrobit hereunder will be free of any claims, liens or
conflicting rights granted by Elektrobit in favor of any third
party. |
| |
7.3. |
Performance Warranty. The Services will be performed in
a workmanlike manner, in conformity with the professional standards
for comparable services in the industry and in compliance with this
Agreement. |
| |
7.4. |
No Viruses. The Deliverables will contain no computer
program(s) or computer code that intentionally corrupts computing
systems, software, and/or computer networks, including any
so-called “worms” or “viruses”, at the time
of delivery, and prior to delivery Elektrobit will have taken
reasonable precautions to ensure that the Deliverables are free of
any such computer program(s) or computer code, including the use of
up-to-date, industry-standard virus checking software. |
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7.5. |
Corporate Warranties. Elektrobit is a validly existing
corporation in good standing under the laws of the jurisdiction in
which it was incorporated, and it is duly qualified and in good
standing to conduct the business contemplated by this Agreement in
all jurisdictions in which the business conducted (or to be
conducted); Elektrobit has the power and authority to enter into
and to perform the obligations of this Agreement, and the execution
and performance of this Agreement by Elektrobit does not, and shall
not, violate any agreements, rights or obligations between
Elektrobit and any third party; Elektrobit is and shall remain in
compliance with all applicable licenses, permits and regulatory
requirements; and this Agreement has been duly and validly executed
and delivered by Elektrobit and, without further action,
constitutes a valid and legally binding obligation of
Elektrobit. |
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7.6. |
Non-Infringement. Elektrobit’s contributions to
the Deliverables shall not, to Elektrobit’s knowledge,
infringe third party Intellectual Property Rights; provided
, however , that to Elektrobit’s knowledge the
Deliverables may incorporate technology that is part of a
Telecommunication Standard and Elektrobit makes no representation
or warranty that the Deliverables will not infringe third party
patents that are necessarily infringed by implementing the
Telecommunication Standard. |
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7.7. |
Disclaimer of Other Warranties. EXCEPT AS EXPRESSLY
PROVIDED IN THIS SECTION 7 (Elektrobit Representations and
Warranties) OR IN THE APPLICABLE STATEMENT OF WORK AND IDENTIFIED
THEREIN AS EXPRESS WARRANTIES, ELEKTROBIT MAKES NO OTHER
WARRANTIES, WHETHER EXPRESS, IMPLIED, STATUTORY, OR OTHERWISE,
INCLUDING, WITHOUT LIMITATION, WARRANTIES OF MERCHANTABILITY,
TITLE, NON-INFRINGEMENT OR FITNESS FOR A PARTICULAR
PURPOSE. |
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7.8. |
TerreStar Remedy for Breach of Warranty. In the event a
breach of the representations and warranties set out in
Section 7.1 (Compliance with Specifications) is discovered by
TerreStar, TerreStar agrees to provide Elektrobit prompt written
notice of TerreStar’s discovery of such breach, including
reasonably available details of the nature of such errors, defects
or failures of the Deliverables. TerreStar agrees to provide
reasonable cooperation to Elektrobit in connection with diagnosing
and remedying any such error, defect or failure of the Deliverables
that may be discovered. Elektrobit shall, as its sole obligation
and TerreStar’s sole remedy, correct at its own expense any
defect, error, failure to meet the Specifications, or other
condition giving rise to a breach of any warranty set out in
Section 7.1 (Compliance with Specifications) within [***] or,
if Elektrobit can demonstrate that it is not feasible to provide
such correction within [***], as soon as feasible, after Elektrobit
becomes aware of such condition. If the correction of such
condition includes modification of software, Elektrobit shall make
such software available to all End Customers as a user upgrade at
no charge. Elektrobit shall not be deemed to be in breach of the
representations and warranties set out in Section 7.1
(Compliance with Specifications) to the extent that any errors,
defects or failures are caused by (i) the TerreStar Data or
any Third Party Contributions (excluding Third Party Contributions
incorporated into the Deliverables by Elektrobit Personnel without
TerreStar’s consent in accordance with Section 2.4.5),
it being agreed that Elektrobit’s sole obligation in respect
of such Third Party Contributions shall be as set forth in
Section 7.9 below; (ii) TerreStar’s or any
TerreStar End Customer’s or TerreStar Sublicensee’s
negligence or misuse; (iii) any alteration or repair by any
third party not approved in writing by Elektrobit (unless TerreStar
retained the third party in response to Elektrobit’s failure
or refusal to comply with the warranty); or (iv) any operation
of the Deliverables outside of environmental specifications set
forth in the applicable SOW. |
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7.9. |
Covenants Regarding Third Party Contributions.
Elektrobit shall (i) use reasonable commercial efforts to
cause any warranties with respect to Third Party Contributions
provided by Elektrobit to run in favor of TerreStar,
(ii) provide reasonable assistance to TerreStar in enforcing
such warranties, or if such warranties do not run in favor of
TerreStar, at TerreStar’s reasonable request and at its
expense, seek available remedies for breach of warranty with
respect to such Third Party Contributions, and (iii) use
reasonable commercial efforts to implement work-arounds to overcome
any defects in Third Party Contributions (other than
TerreStar-Furnished Items). |
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7.10. |
Compliance with Laws. |
| |
7.10.1 |
General. Elektrobit shall perform its obligations under
this Agreement in accordance with all applicable national, federal,
provincial, state and local statutes, laws, rules and regulations,
and in accordance with the conditions of all applicable permits and
licenses. Without limiting the generality of the
foregoing,
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Elektrobit agrees that, to
the extent applicable, it will not assign any individual to perform
Services within the United States who is an unauthorized alien
under the Immigration Reform and Control Act of 1986 or its
implementing regulations. In the event any Elektrobit Personnel
performing Services within the United States are discovered to be
unauthorized aliens, Elektrobit will immediately remove such
individuals from performing Services and replace such individuals
with individuals who are not unauthorized aliens.
|
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7.10.2 |
Anti-Corruption. Without limiting the generality of
Section 7.10.1, none of Elektrobit, any subsidiary or
affiliate thereof, or their respective officers, directors,
employees or agents shall take any action that would violate
applicable anti-bribery and anti-corruption measures, including but
not limited to the FCPA. |
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7.10.3 |
Export Compliance. Without limiting the generality of
Section 7.10.1, Elektrobit shall not, directly or indirectly,
take any action that would cause TerreStar to be in violation of
U.S. anti-boycott laws under the U.S. Export Administration Act
(“ EAA ”) or as in effect pursuant to the
International Emergency Economic Powers Act (“
IEEPA ”), the U.S. Internal Revenue Code, the Export
Administration Regulations (“ EAR ”), the Arms
Export Control Act (“ AECA ”) (as implemented by
the International Trade in Arms Regulations (“ ITAR
”)), or any other regulation thereunder. Elektrobit shall
not, without prior written authorization from the Department of
Commerce, the Department of State or other agency of the U.S.
Government having jurisdiction, export or re-export, directly or
indirectly, any U.S. source technical data (as defined in
accordance with applicable regulation) or any products utilizing
any such data, to any country for which at the time of export or
re-export, an export license or other governmental approval is
required by an applicable statute or regulation. |
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7.10.4 |
Remedies. Elektrobit shall indemnify TerreStar for any
civil or criminal liability resulting from non-compliance with any
provisions of Section 7.10 by Elektrobit, any subsidiary or
affiliate thereof, and any of their respective officers, directors,
employees and agents. Failure of Elektrobit to comply with
Section 7.10 may result in immediate termination of this
contract for cause by TerreStar at its election. |
| 8. |
TerreStar Representations and Warranties;
Covenants. |
TerreStar represents and
warrants, to and for the benefit of Elektrobit as
follows:
| |
8.1. |
Corporate Warranties. TerreStar is a validly existing
corporation in good standing under the laws of the jurisdiction in
which it was incorporated, and it is duly qualified and in good
standing to conduct the business contemplated by this Agreement in
all jurisdictions in which the business conducted (or to be
conducted); TerreStar has the power and authority to enter into and
to perform the obligations of this Agreement, and the execution and
performance of this Agreement by TerreStar does not, and shall not,
violate any agreements, rights or obligations between TerreStar and
any third party; TerreStar is and shall remain in compliance with
all applicable licenses, permits and regulatory requirements; and
this Agreement has been duly and validly executed and delivered by
TerreStar and, without further action, constitutes a valid and
legally binding obligation of TerreStar. |
| |
8.2. |
Right to Convey. The licenses and rights granted by
TerreStar hereunder will be free of any claims, liens or
conflicting rights granted by TerreStar in favor of any third
party. |
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8.3. |
Non-Infringement. The TerreStar Data, TerreStar
Background Rights, TerreStar-Furnished Items or Third Party
Contributions provided by TerreStar to Elektrobit, each as licensed
under this Agreement, shall not, to the knowledge of TerreStar,
infringe third party Intellectual Property Rights; provided
, however , that to TerreStar knowledge any of the foregoing
items may incorporate technology that is part of a
Telecommunication Standard and TerreStar makes no representation or
warranty that the such items will not infringe third party patents
that are necessarily infringed by implementing the
Telecommunication Standard. |
| |
8.4. |
Disclaimer of Other Warranties. EXCEPT AS EXPRESSLY
PROVIDED IN THIS ARTICLE 8 (TerreStar Representations and
Warranties), TERRESTAR MAKES NO OTHER WARRANTIES, WHETHER EXPRESS,
IMPLIED, STATUTORY, OR OTHERWISE, INCLUDING, WITHOUT LIMITATION,
WARRANTIES OF MERCHANTABILITY, TITLE, NON-INFRINGEMENT OR FITNESS
FOR A PARTICULAR PURPOSE. |
| |
8.5. |
Assertion of Warranty Rights on Behalf of Elektrobit.
With respect to all Third Party Contracts that are executed after
the execution of the applicable SOW, TerreStar shall use reasonable
commercial efforts to cause any warranties with respect to Third
Party Contributions provided by TerreStar to run in favor of
Elektrobit. At Elektrobit’s reasonable request and expense,
TerreStar shall, on Elektrobit’s behalf, seek available
remedies for breach of warranty with respect to Third Party
Contributions provided by TerreStar, to the extent TerreStar is
permitted to do so under the Third Party Contract. In the event of
a claim against Elektrobit that an item on the TerreStar Third
Party IP List infringes the Intellectual Property Rights of a third
party, TerreStar shall use commercially reasonable efforts to
flow-through and enforce the indemnification obligations, if any,
in the applicable Third Party Contract with respect to such claim.
TerreStar shall provide to Elektrobit the terms and conditions of
any indemnification and warranty provision in the Third Party
Contract, subject to any confidentiality provisions pertaining to
the Third Party Contract. |
| |
8.6. |
Compliance with Laws. |
| |
8.6.1 |
General. TerreStar shall perform its obligations under
this Agreement in accordance with all applicable national, federal,
provincial, state and local statutes, laws, rules and regulations,
and in accordance with the conditions of all applicable permits and
licenses. |
| |
8.6.2 |
Anti-Corruption. Without limiting the generality of
Section 8.6.1, none of TerreStar, any subsidiary or affiliate
thereof, or their respective officers, directors, employees or
agents shall take any action that would violate applicable
anti-bribery and anti-corruption measures, including but not
limited to the FCPA. |
| |
8.6.3 |
Export
Compliance. Without limiting the generality of
Section 8.6.1, TerreStar shall not, directly or indirectly,
take any action that would cause Elektrobit to be in violation of
U.S. anti-boycott laws under the U.S. Export Administration Act
(“ EAA ”) or as in effect pursuant to the
International Emergency Economic Powers Act (“
IEEPA ”), the U.S. Internal Revenue Code, the Export
Administration Regulations (“ EAR ”), the Arms
Export Control Act (“ AECA ”) (as implemented by
the International Trade in Arms Regulations (“ ITAR
”)), or any other regulation thereunder. TerreStar shall not,
without prior written authorization from the Department of
Commerce, the Department of State or other agency of the U.S.
Government having jurisdiction, export or re-export, directly or
indirectly, any U.S. source technical data (as defined in
accordance
|
- 20 -
| |
with applicable
regulation) or any products utilizing any such data, to any country
for which at the time of export or re-export, an export license or
other governmental approval is required by an applicable statute or
regulation.
|
| |
8.6.4 |
Remedies. TerreStar shall indemnify Elektrobit for any
civil or criminal liability resulting from non-compliance with any
provisions of Section 8.6 by TerreStar, any subsidiary or
affiliate thereof, and any of their respective officers, directors,
employees and agents. Failure of TerreStar to comply with
Section 8.6 may result in immediate termination of this
contract for cause by Elektrobit at its election. |
| |
9.1. |
Indemnification by Elektrobit. |
| |
9.1.1 |
Indemnification Obligation. Subject to
Section 9.1.2, Elektrobit agrees that it shall indemnify,
defend and hold TerreStar, and its affiliates, and any of their
employees, officers, contractors and agents (the “
TerreStar Indemnitees ”) harmless from and against any
and all fees, damages, expenses, liability or losses arising from
any claim, suit, action, including those described in
Section 9.3 below, (including reasonable attorney’s
fees) (each a “ Loss ” and collectively, “
Losses ”) arising from: |
| |
(a) |
any breach of the representation and warranty set forth in
Section 7.6 (Non-Infringement); |
| |
(b) |
an allegation that any Service or Deliverable provided by
Elektrobit hereunder, or the exercise of any rights conferred by
Elektrobit pursuant to this Agreement with respect to any
Deliverable, infringes or misappropriates any (i) third
party’s copyright, trade secret, or mask work, to the extent
incorporated into the Service or Deliverable by Elektrobit
Personnel; (ii) Intellectual Property Right created or
developed by one or more Elektrobit Personnel; or (iii) patent
of a third party, regardless of when such patent
issued; |
| |
(c) |
Elektrobit’s use of any third party Intellectual Property
Rights incorporated in the TerreStar Background Rights in violation
of any restrictions, conditions and third party license fees
required or imposed by the third party licensor and that are set
forth in this Agreement or that are otherwise communicated to
Elektrobit in writing (provided that this indemnification
obligation shall apply only to Losses arising from
Elektrobit’s use of the infringing item subsequent to
Elektrobit’s receipt of such notice); |
| |
(d) |
an injury (including death) of any person or damage to tangible
personal or real property proximately caused by an act or omission
of Elektrobit or any Elektrobit Personnel; or |
| |
(e) |
breach of the representation and warranty set forth in
Section 7.5 (Corporate Warranties); |
or any claim, suit, action by
any Elektrobit Personnel, except to the extent such claim arises
from the willful misconduct of TerreStar.
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| |
9.1.2 |
Exceptions; Process. Elektrobit shall not be obligated
to indemnify the TerreStar Indemnitees under Section 9.1.1(a)
or (b) to the extent that such Loss results from (i) any
TerreStar Data, TerreStar Background Rights or TerreStar-Furnished
Items; (ii) any Third Party Contributions to the extent
TerreStar consents to the incorporation of such Third Party
Contribution in the Deliverable, pursuant to Section 2.4.5;
(iii) any alteration or repair by any third party not approved
in writing by Elektrobit (unless TerreStar retained the third party
in response to Elektrobit’s failure or refusal to comply with
its warranty obligations); or (iv) implementing the
Telecommunication Standard where a commercially reasonable
non-infringing implementation is not available and provided that,
if Elektrobit had knowledge of the potential infringement, that
Elektrobit informed TerreStar of the potential infringement,
received EMOC’s written consent to the inclusion of the
potentially infringing item, and reasonably assisted
TerreStar’s efforts to obtain license rights to avoid such
infringement. TerreStar shall notify Elektrobit promptly of any
third party claim in connection with the foregoing, shall give
Elektrobit sole control of the defense or settlement of the claim
(provided that Elektrobit shall not settle such claim without the
prior written consent of TerreStar, which shall not be unreasonably
withheld), and shall cooperate reasonably with Elektrobit in
connection therewith (at Elektrobit’s reasonable expense), in
the defense or settlement of such claim. If any Deliverable, or any
portion of the Deliverables, is found in any indemnified claim to
infringe the rights of any third party and its use is enjoined, or
in Elektrobit’s reasonable opinion is likely to be enjoined,
Elektrobit will, at its option and expense, either procure for the
TerreStar Indemnitee a license or right to continue to use the
Deliverables or the applicable portion of the Deliverables, replace
the Deliverables or applicable portion with a non-infringing
product or portion, or modify the Deliverables or infringing
portion to become non-infringing. Elektrobit shall have no
liability for settlements made without Elektrobit’s express
written consent. Should TerreStar desire to have its own counsel
participate in any such action, the cost of such counsel shall be
exclusively TerreStar’s. |
| |
9.2. |
Indemnification by TerreStar. |
| |
9.2.1 |
Indemnification Obligation. Subject to
Section 9.2.2, TerreStar agrees that it shall indemnify,
defend and hold Elektrobit, its affiliates, and any of their
employees, officers, contractors and agents (the “
Elektrobit Indemnitees ”) harmless from and against
any and all Losses arising from: |
| |
(a) |
any breach of the representation and warranty set forth in
Section 8.3 (Non-Infringement); |
| |
(b) |
an allegation that any TerreStar Data, TerreStar Background
Rights or TerreStar-Furnished Items provided by TerreStar to
Elektrobit hereunder, or the exercise of any rights conferred by
TerreStar with respect to such TerreStar Data, TerreStar Background
Rights or TerreStar-Furnished Items pursuant to this Agreement with
respect to the Reference Phone Rights, infringes or misappropriates
any third party Intellectual Property Right; |
| |
(c) |
an allegation
that Elektrobit’s use of a TerreStar-Furnished Item infringes
or misappropriates a Third Party Intellectual Property Right, to
the extent such infringement or misappropriation is based on the
violation of a restriction or condition or non-payment of a
third-party license fee imposed on TerreStar by its licensor of
such TerreStar-Furnished Item, where
|
- 22 -
| |
TerreStar did not notify
Elektrobit of such restriction, condition or third-party license
fee, or where no Elektrobit Project Manager (or more senior
personnel) or Elektrobit Personnel working on a Project who report
directly to an Elektrobit Project Manager (or more senior
personnel) was otherwise actually aware of such restriction,
condition or third-party license fee, at the time of such
infringement or misappropriation;
|
| |
(d) |
an injury (including death) of any person or damage to tangible
personal or real property proximately caused by an act or omission
of TerreStar or any TerreStar personnel; or |
| |
(e) |
breach of the representation and warranty set forth in
Section 8.1 (Corporate Warranties); |
or any claim, suit, action by
any TerreStar personnel, except to the extent such claim arises
from the willful misconduct of Elektrobit.
| |
9.2.2 |
Exceptions; Process. TerreStar shall not be obligated to
indemnify the Elektrobit Indemnitees under Section 9.2
(a) or (b) to the extent that such Loss results from
(i) any alteration or repair to any TerreStar Data,
TerreStar-Furnished Items or Third Party Contributions provided by
TerreStar to Elektrobit by any third party not approved in writing
by TerreStar; (ii) any activity or circumstance for which
Elektrobit is obligated to indemnify TerreStar under
Section 9.1; (iii) any item on the TerreStar Third Party
IP List, but only to the extent the underlying claim is based on
infringement or misappropriation alleged to occur after the
applicable End Product is first manufactured for commercial use, in
which case TerreStar’s sole obligation shall be as set forth
in Section 8.5; or (iv) implementing the
Telecommunication Standard where a commercially reasonable
non-infringing implementation is not available and provided that,
if TerreStar had knowledge of the potential infringement, that
TerreStar informed Elektrobit of the potential infringement and
received EMOC’s written consent to the inclusion of the
potentially infringing item. Elektrobit shall notify TerreStar
promptly of any third party claim in connection with the foregoing,
and shall give TerreStar sole control of the defense or settlement
of the claim (provided that TerreStar shall not settle such claim
without the prior written consent of Elektrobit, which shall not be
unreasonably withheld), and shall cooperate reasonably with
TerreStar in connection therewith (at TerreStar’s reasonable
expense), in the defense or settlement of such claim. If any
TerreStar Background Right, as licensed under this Agreement,
TerreStar Data or TerreStar-Furnished Item or Third Party
Contribution provided by TerreStar to Elektrobit, to the extent
used by Elektrobit hereunder, is found in any indemnified claim to
infringe the rights of any third party and its use is enjoined, or
in TerreStar’s reasonable opinion is likely to be enjoined,
TerreStar will, at its option and expense, either procure for the
Elektrobit Indemnitee a license or right to continue to use the
infringing item or the applicable portion of the infringing item,
replace the infringing item or applicable portion with a
non-infringing product or portion, modify the infringing item or
infringing portion to become non-infringing, or modify or terminate
this Agreement pursuant to Sections 4.2 or 12.2.1, respectively.
TerreStar shall have no liability for settlements made without
TerreStar’s express written consent. Should Elektrobit desire
to have its own counsel participate in any such action, the cost of
such counsel shall be exclusively Elektrobit’s. |
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9.3. |
Indemnification of Third Parties. The indemnification
obligations of each Party arising in Sections 9.1 and 9.2 shall
include claims, suits, and actions against the indemnified Party by
its Sublicensees or other third parties, seeking indemnification
against a claim by a third party alleging misappropriation or
infringement to the extent the indemnifying Party would be
responsible were such claim brought directly against the
indemnified Party. Such obligation of the indemnifying Party shall
extend only to the other Party, and not directly to such
Sublicensee or other third party. |
| 10. |
Confidential Information. |
Confidentiality
Agreement. Notwithstanding any provision herein to the
contrary, the Parties agree that the terms and conditions of that
certain Reciprocal Non-Disclosure Agreement between the Parties
dated as of [***] (the “ Confidentiality Agreement
”), remain in full force and effect and shall survive
termination of this Agreement for any reason.
| 11. |
Limitation of Liability. |
EXCEPT FOR (i) EACH
PARTY’S INDEMNIFICATION OBLIGATIONS IN RESPECT OF ITS BREACH
OF ITS REPRESENTATION AND WARRANTY OF NON-INFRINGEMENT;
(ii) VIOLATIONS OF THE CONFIDENTIALITY AGREEMENT;
(iii) BREACH OR VIOLATION OF ITS RESPECTIVE OBLIGATIONS UNDER
SECTION 2.4.3; AND (iv) GROSS NEGLIGENCE OR WILLFUL
MISCONDUCT, IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER
PARTY FOR ANY INDIRECT, SPECIAL, CONSEQUENTIAL, PUNITIVE OR SIMILAR
DAMAGES OF ANY KIND OR NATURE WHATSOEVER, INCLUDING WITHOUT
LIMITATION, LOSS OF PROFITS OR OTHER ECONOMIC LOSS, EVEN IF SUCH
PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. IN
ADDITION, EXCEPT FOR (i) EACH PARTY’S INDEMNIFICATION
OBLIGATIONS UNDER SECTIONS 9.1.1(a), 9.1.1(b), 9.2.1(a), 9.2.1(b),
AND 9.2.1(c) FOR LIABILITY THAT ARISES AFTER COMMERCIAL
AVAILABILITY OF END PRODUCTS; (ii) ELEKTROBIT’S
INDEMNIFICATION OBLIGATIONS UNDER SECTION 9.1.1(c);
(iii) EXPRESS PAYMENT OBLIGATIONS DUE FROM ONE PARTY TO THE
OTHER HEREUNDER; (iv) VIOLATIONS OF THE CONFIDENTIALITY
AGREEMENT; (v) FOR BREACH OR VIOLATION OF ITS RESPECTIVE
OBLIGATIONS UNDER SECTION 2.4.3; AND (vi) GROSS NEGLIGENCE OR
WILLFUL MISCONDUCT, IN NO EVENT SHALL EITHER PARTY’S
AGGREGATE LIABILITY TO THE OTHER UNDER OR IN CONNECTION WITH THIS
AGREEMENT EXCEED US$3,000,000. IN NO EVENT SHALL EITHER
PARTY’S AGGREGATE LIABILITY TO THE OTHER UNDER THIS AGREEMENT
IN CONNECTION WITH ITS INDEMNIFICATION OBLIGATIONS UNDER SECTIONS
9.1.1(a), 9.1.1(b), 9.2.1(a), 9.2.1(b), AND 9.2.1(c) FOR LIABILITY
THAT ARISES AFTER COMMERCIAL AVAILABILITY OF END PRODUCTS EXCEED
THE LESSER OF (x) US$30,000,000 AND (y) THE GREATER OF
(a) THE AGGREGATE OF ALL UP-FRONT AND PER-DEVICE ROYALTIES
PAID BY THE INDEMNIFIED PARTY TO THE INDEMNIFYING PARTY AND
(b) US$3,000,000.
| |
12.1. |
Term. The term (“ Term ”) of this
Agreement shall commence on the Effective Date and shall continue
in force until completion of all Projects, unless sooner terminated
in accordance with Section 12.2 (Termination). |
| |
12.2. |
Termination. The Parties may terminate this Agreement as
follows: |
| |
12.2.1 |
Termination Without Cause. Subject to Section 12.3
(Early Termination Fee), TerreStar may terminate this Agreement or
any SOW at any time without cause by giving Elektrobit at least
[***] prior written notice specifying the date of termination.
Elektrobit shall, upon receipt of such notice, comply with any
reasonable instructions of TerreStar with regard to the
discontinuance or reduction of services. |
- 24 -
| |
12.2.2 |
Termination for Cause. Without prejudice to other
remedies, either Party may terminate this Agreement immediately
upon the occurrence of one or more of the following: |
| |
12.2.2.1. |
Material Breach. In the event that either of the Parties
breaches any material provision of this Agreement and fails to cure
the same within [***] after receipt of written notice from the
other Party (with the exception of a failure to pay amounts due and
owing hereunder, where the cure period shall be [***].
Notwithstanding the foregoing, in no event shall an Event of Delay
be considered a breach of this Section 12.2.2.1 (Material
Breach). |
| |
12.2.2.2. |
Insolvency. In the event a Party shall become insolvent,
shall file or has filed against it a petition in bankruptcy, shall
have a receiver appointed to handle its assets or affairs, or shall
make or attempt to make an assignment for the benefit of
creditors. |
| |
12.3. |
Early Termination Fee. In the event TerreStar terminates
this Agreement or any SOW without cause pursuant to
Section 12.2.1 (Termination Without Cause), TerreStar shall
pay to Elektrobit an early termination fee as specified in the
applicable SOW(s). |
| |
12.4. |
Effect of Termination. |
| |
12.4.1 |
Payment of Amounts Due. Elektrobit shall invoice
TerreStar, and TerreStar shall pay within [***] of receipt of such
invoice, all amounts due to Elektrobit on or before the date of
termination or expiration and not yet paid to Elektrobit, including
amounts not previously invoiced for services rendered and expenses
incurred through the expiration or termination date. |
| |
12.4.2 |
Return of Proprietary Information. Except as may be
required in order to exercise a license hereunder that survives
termination, each Party shall return to the other all copies of
documents or other embodiments of Proprietary Information of the
other Party, retaining no copies thereof, it being agreed that all
of such Proprietary Information shall be the exclusive property of
the other Party. |
| |
12.4.3 |
Continuation of Project . In the event that TerreStar
terminates this Agreement pursuant to Section 12.2.1
(Termination Without Cause) or Elektrobit terminates this Agreement
pursuant to Section 12.2.2 (Termination for Cause), Elektrobit
shall be free to complete the Project and complete the development
of, and to make, have made, use, sell, import, have sold, lease and
have leased, End Products, without any obligation to TerreStar. In
the event TerreStar terminates this Agreement pursuant to
Section 12.2.2 (Termination for Cause), notwithstanding
Section 6.1., Elektrobit assigns exclusive ownership in the
Reference Phone Rights to TerreStar, and Elektrobit shall
immediately deliver to TerreStar all Deliverables in its possession
(including all work in process), and TerreStar, directly or through
its designee, shall be free to complete the Project and complete
the development of, and to make, have made, use, sell, import, have
sold, lease and have leased, End Products, without any obligation
to
|
- 25 -
| |
Elektrobit; provided,
however, that, Elektrobit shall have the option, exercisable by
written notice to TerreStar prior to the effective date of such
termination, to retain its joint ownership (as set forth in
Section 6.1.1) of the Reference Phone Rights and all
Deliverables (including all work in process), and to pay to
TerreStar damages for the breach giving rise to the termination,
and in such event, (i) Elektrobit, directly or through its
designee, shall be free to complete the Project and complete the
development of, and to make, have made, use, sell, import, have
sold, lease and have leased, End Products, subject to its
obligation to pay royalties to TerreStar pursuant to
Section 2.4.4, and (ii) the royalties payable by
TerreStar to Elektrobit pursuant to Section 2.4.4 shall be
equitably adjusted in light of the work completed by Elektrobit
prior to such termination.
|
| |
12.5. |
Survival. Notwithstanding anything else in this
Agreement, the rights and obligations of the Parties under the
following Sections shall survive the termination or expiration of
this Agreement: Section 2.4 (Reference Phone Licensing);
Section 6.1 (Ownership of Work Product), Section 6.2
(Existing Intellectual Property), Section 7.9.8 (Remedies),
Section 7.9.9 (Remedies), Section 9 (Indemnification);
Section 10 (Confidential Information); Section 11
(Limitation of Liability), Section 13 (Audit Rights) and
Section 14 (General Provisions). |
| |
13.1. |
Audit Rights. At either Party’s written request,
not more frequently than once annually, the other Party shall
furnish such Party with a certificate executed by an officer or
other authorized representative of such Party verifying, in
reasonable detail, the amount of all royalties, if any, owed to
such Party by the other Party pursuant to Section 2.4
(Reference Phone Licensing). At either Party’s expense and
upon reasonable prior notice to the other Party and not more
frequently than once annually (unless a discrepancy is discovered),
a Party may cause a certified public accountant to audit the other
Party’s compliance with the terms of Section 2.4
(Reference Phone Licensing). Each Party agrees to make available to
the other Party’s certified public accountant, subject to
reasonable confidentiality restrictions, such of its records and
other materials as such accountant reasonably may require in order
to perform any such audit. Any such audit shall be conducted during
regular business hours at the facilities of the Party being audited
and shall not unreasonably interfere with its business activities.
If an audit reveals that a Party has underpaid amounts due to the
other under Section 2.4 (Reference Phone Licensing) such Party
shall be invoiced for such underpaid fees plus interest thereon at
the prevailing U.S. dollar prime rate from the initial date such
amounts otherwise would have been due. If the amount of the
underpayment exceeds [***]% of the total license fees owed to the
auditing Party under Section 2.4 (Reference Phone Licensing),
the Party found to have underpaid shall reimburse the auditing
Party’s third party costs for conducting the audit. If an
audit reveals that a Party has overpaid amounts due to the other,
the recipient of the overpayment shall promptly refund the
overpayment. |
| |
14.1. |
Relationship of the Parties. Nothing contained herein
shall be construed as creating any agency, partnership, or other
form of joint enterprise between the Parties. Neither Party is
authorized to make any representation, contract, or commitment on
behalf of the other Party. |
| |
14.2. |
Amendments. This Agreement shall not be amended or
modified except by a subsequently dated written amendment approved
in accordance with the terms of Section 4.2 (Changes) and
signed by an authorized representative on behalf of each of the
Parties. |
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14.3. |
Notices. All notices and requests required or made under
this Agreement must be in writing and will be deemed given
(i) if personally delivered, on the day of such delivery,
unless such day is not a Business Day, in which case the next
Business Day (ii) if mailed postage prepaid, certified or
registered mail, on the fifth Business Day after such mailing, and
(iii) if sent by recognized overnight delivery service, the
next Business Day, to: |
If to TerreStar
:
|
|
|
| TerreStar Networks Inc. |
|
|
| Attn.: |
|
[***] |
|
|
[***] |
|
|
12010
Sunset Hills Road |
|
|
Suite
900 |
|
|
Reston,
VA 20190 |
|
|
Tel:
[***] |
|
|
Fax:
703-476-7143 |
With a copy to:
|
|
|
| TerreStar Networks Inc. |
|
|
| Attn.: |
|
[***] |
|
|
[***] |
|
|
12010
Sunset Hills Road |
|
|
Suite
900 |
|
|
Reston,
VA 20190 |
|
|
Tel:
[***] |
|
|
Fax:
703-476-7143 |
- 27 -
If to Elektrobit:
|
|
|
| Elektrobit, Inc. |
|
|
| Attn.: |
|
[***] |
|
|
[***] |
|
|
22745
29th Drive SE |
|
|
Suite
200 |
|
|
Bothell,
Washington 98021 |
|
|
Tel:
[***] |
|
|
Fax:
(425) 686 3102 |
With a copy to:
|
|
|
| Brown Rudnick Berlack Israels LLP |
|
|
| Attn.: |
|
Michael
J. Student |
|
|
Seven
Times Square |
|
|
New York,
NY 10036 |
|
|
Tel:
(212) 209-4800 |
|
|
Fax:
(212) 209-4801 |
| |
14.4. |
Assignment. Except as otherwise expressly provided for
in this Agreement, neither this Agreement nor any rights (including
but not limited to ownership of the Deliverables or any rights
thereunder) or obligations of any Party hereunder may be assigned
or transferred by either Party without the prior written approval
of the other Party; provided, however , that either Party
may, on prior written notice to the other but with no requirement
to obtain such other Party’s approval, assign this Agreement,
and all rights hereunder, to any entity that controls, is
controlled by or is under common control with the assigning Party.
For purposes of this Section 14.4, “control” shall
be defined as the possession, directly or indirectly, of the power
to direct or cause the direction of the management and policies of
an entity whether through the ownership of voting securities of
such entity, by contract or otherwise. |
| |
14.5. |
Merger and Waiver. This Agreement, together with the
Confidentiality Agreement and all appendixes or exhibits attached
hereto, is the entire agreement between the Parties with respect to
the matters contained herein, and all prior or contemporaneous
agreements and negotiations with respect to those matters are
superseded by this Agreement. No waiver of any breach or default
shall constitute a waiver of any subsequent breach or
default. |
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14.6. |
No Rule of Strict Construction. Regardless of which
Party may have drafted this Agreement, no rule of strict
construction shall be applied against either Party. If any
provision of this Agreement is determined by a court of competent
jurisdiction to be unenforceable, such provision shall be deemed to
be modified to the extent necessary to allow it to be enforced to
the extent permitted by law, or if it cannot be modified, the
provision will be severed and deleted from this Agreement, and the
remainder of the Agreement will continue in effect. |
| |
14.7. |
Disputes; Choice of Law. Any differences or disputes
concerning any issues of fact between the parties arising out of
relating to this Agreement shall be, to the extent possible,
resolved by amicable settlement. First, on written demand of either
Party for dispute resolution, the EMOC shall meet face to face to
attempt to resolve such disputes. This meeting shall be scheduled
and held within [***] after the demand for dispute resolution is
delivered. Second, if the Parties are unable to resolve the
disputes through the EMOC within [***] following the EMOC face to
face meeting, then on written demand of either Party for further
dispute resolution, each Party shall appoint a senior executive
from within the Party’s organization, who shall not be a
member of the EMOC, to represent it in further face to face
discussions with the other Party’s appointed senior executive
representative, to attempt to resolve such disputes. The Parties
shall designate their respective representatives and this meeting
shall be scheduled and held within [***] after the demand for
further dispute resolution is delivered. Third, if the Parties are
unable to resolve the disputes through their respective senior
management representatives within [***] following their face to
face meeting, then either party may then seek legal remedies in the
state or federal courts located in the State, City and County of
New York, it being agreed that each Party irrevocably consents to
the exclusive jurisdiction and venue of such courts for any
dispute, action or proceeding arising under or in connection with
this Agreement. This Agreement shall be governed by the internal
substantive laws of the State of New York, without regard to
principles of conflict of laws. The U.N. Convention on Contracts
for the International Sale of Goods is hereby excluded. |
| |
14.8. |
Force Majeure. Neither Party shall be liable hereunder
by reason of any failure or delay in the performance of its
obligations hereunder on account of strikes (excluding strikes by
such Party’s personnel, including subcontractor personnel),
riots, insurrection, fires, flood, storm, explosions, acts of God,
acts of terrorism, war, governmental action, earthquakes, material
shortages or any other cause which is beyond the reasonable control
of such Party. Notwithstanding the foregoing, such cause or
condition shall not include a Party’s lack of funds, lack of
credit, or other financial inability to perform. If a Party intends
to rely on the foregoing force majeure protection, it shall timely
notify the other Party in order to permit the other Party, in its
sole discretion, to suspend or curtail its own performance under
the Agreement for such time as the failure, delay or default
continues. |
| |
14.9. |
Injunctive Relief. A breach by one Party of any of the
promises or agreements contained in this Agreement may result in
irreparable and continuing damage to the other party for which
there may be no adequate remedy at law, and the other Party is
therefore entitled to seek injunctive relief as well as such other
and further relief as may be appropriate, subject to the terms of
Section 14.7 (Disputes; Choice of Law) as to governing law,
forum and consent to jurisdiction. |
- 29 -
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14.10. |
Counterparts. This Agreement may be executed
simultaneously in two or more counterparts, each of which will be
considered an original, but all of which together will constitute
one and the same instrument. |
IN WITNESS WHEREOF ,
the Parties hereto have caused this Agreement to be executed by
their respective duly authorized representatives as of the
Effective Date.
|
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TERRESTAR NETWORKS INC. |
|
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ELEKTROBIT INC. |
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By: |
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/s/ Robert H.
Brumley
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By: |
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/s/ Pertti
Korhonen
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Name: |
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Robert H.
Brumley |
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Name: |
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Pertti
Korhonen |
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Title: |
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President
and CEO |
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Title: |
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Chief
Executive Officer
Attorney-in-fact |
- 30 -
AMENDMENT NO.
1
To the MASTER DEVELOPMENT
AND LICENSING AGREEMENT
Between TerreStar Networks
Inc. and Elektrobit, Inc.
THIS AMENDMENT NO. 1 to the MASTER
DEVELOPMENT AND LICENSING AGREEMENT between TerreStar Networks
Inc. (“TerreStar”) and Elektrobit, Inc.
(“Elektrobit”), dated August 10, 2007 (the
“Agreement”) is made this 14th day of August, 2007 by
and between TerreStar and Elektrobit (collectively, the
“Parties”).
WITNESSETH:
WHEREAS, the Parties desire
to amend the Agreement pursuant to Article 14.2 thereof, as set
forth in this Amendment No. 1;
NOW, THEREFORE, in
consideration of the premises and mutual covenants and agreements
contained in this Amendment No. 1, the Parties agree as
follows:
1. Warranty Remedy .
Section 7.8 is amended to read as follows (modification
underlined and bold):
“ 7.8 TerreStar
Remedy for Breach of Warranty . In the event a breach of the
representations and warranties set out in Section 7.1
(Compliance with Specifications) is discovered by TerreStar,
TerreStar agrees to provide Elektrobit prompt written notice of
TerreStar’s discovery of such breach, including reasonably
available details of the nature of such errors, defects or failures
of the Deliverables. TerreStar agrees to provide reasonable
cooperation to Elektrobit in connection with diagnosing and
remedying any such error, defect or failure of the Deliverables
that may be discovered. Elektrobit shall, as its sole obligation
and TerreStar’s sole remedy, correct at its own expense any
defect, error, failure to meet the Specifications, or other
condition giving rise to a breach of any warranty set out in
Section 7.1 (Compliance with Specifications) within [***] or,
if Elektrobit can demonstrate that it is not feasible to provide
such correction within [***], as soon as feasible, after Elektrobit
becomes aware of such condition. If the correction of such
condition includes modification of software, Elektrobit shall make
such software available to all End Customers as a user upgrade at
no charge. Elektrobit shall not be deemed to be in breach of the
representations and warranties set out in Section 7.1
(Compliance with Specifications) to the extent that any errors,
defects or failures are caused by (i) the TerreStar Data,
TerreStar-Furnished Items, TerreStar Background
Rights or any Third Party Contributions (excluding Third
Party Contributions incorporated into the Deliverables by
Elektrobit Personnel without TerreStar’s consent in
accordance with Section 2.4.5), it being agreed that
Elektrobit’s sole obligation in respect of such Third Party
Contributions shall be as set forth in Section 7.9 below;
(ii) TerreStar’s or any TerreStar End Customer’s
or TerreStar Sublicensee’s negligence or misuse;
(iii) any alteration or repair by any third party not approved
in writing by Elektrobit (unless TerreStar retained the third party
in response to Elektrobit’s failure or refusal to comply with
the warranty); or (iv) any operation of the Deliverables
outside of environmental specifications set forth in the applicable
SOW.”
2. Confidential Information . The
following paragraph is added to the end of Section
10:
“ Legally
Required Disclosures . Notwithstanding anything to the
contrary in this Agreement or the Confidentiality Agreement, in the
event that the Party receiving Confidential Information
(the
1
“ Receiving
Party ”) of the other Party (the “ Disclosing
Party ”) becomes legally compelled (including disclosures
necessary or in good faith determined to be reasonably necessary
under the Securities Act of 1933, as amended, and the Securities
Exchange Act of 1934, as amended) to disclose Confidential
Information of the such other Party, including this Agreement or
other supporting document(s), the Receiving Party shall, to the
extent practicable under the circumstances, provide the Disclosing
Party with written notice thereof so that the Disclosing Party may
seek a protective order or other appropriate remedy, or to allow
the Disclosing Party to request the redaction of such portions of
the Confidential Information as are not required by law to be
disclosed. In any such event, the Receiving Party will disclose
only such information as is legally required, and will cooperate
with the Disclosing Party (at the Disclosing Party’s expense)
to obtain proprietary treatment for any Confidential Information
being disclosed.”
3. Status of Contract . Except as
specifically amended, the Contract remains in full force and
effect, and is ratified and confirmed.
IN WITNESS WHEREOF, the Parties have
duly executed this Amendment No. 1 as of the date first
written above.
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| TERRESTAR NETWORKS INC. |
|
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| By: |
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/s/ Neil Hazard
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| Name: |
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Neil
Hazard |
| Title: |
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Chief
Financial Officer |
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| ELEKTROBIT, INC. |
|
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| By: |
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/s/ Veli-Matti
Ihme
|
| Name: |
|
Veli-Matti
Ihme |
| Title: |
|
Vice
President and General Manager |
2
AMENDMENT NO.
2
To the MASTER DEVELOPMENT
AND LICENSING AGREEMENT
Between TerreStar Networks
Inc. and Elektrobit, Inc.
THIS AMENDMENT NO. 2 to the MASTER
DEVELOPMENT AND LICENSING AGREEMENT between TerreStar Networks
Inc. (“TerreStar”) and Elektrobit, Inc.
(“Elektrobit”), dated August 10, 2007, as amended
(the “Agreement”) is made this 31st day of August, 2007
by and between TerreStar and Elektrobit (collectively, the
“Parties”).
WITNESSETH:
WHEREAS, the Parties desire
to amend the Agreement, as heretofore amended, pursuant to Article
14.2 thereof, as set forth in this Amendment No. 2;
NOW, THEREFORE, in
consideration of the premises and mutual covenants and agreements
contained in this Amendment No. 2, the Parties agree as
follows:
1. Signature Capacity . The line
appearing beneath the signature of Pertti Korhonen, signatory of
the Agreement on behalf of Elektrobit, is amended to read in its
entirety as follows (modification underlined and bold):
“Title:
Attorney-in-Fact .”
2. TerreStar Signature Block .
The lines appearing beneath the signature of Robert H. Brumley,
signatory of the Agreement on behalf of TerreStar, is amended to
read in its entirety as follows (modification underlined and
bold):
“Name: Robert H.
Brumley ”
“Title: President
and CEO ”
3. Status of Contract . Except as
specifically amended, the Agreement remains in full force and
effect, and is ratified and confirmed.
IN WITNESS WHEREOF, the Parties have
duly executed this Amendment No. 2 as of the date first
written above.
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| TERRESTAR NETWORKS INC. |
|
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| By: |
|
/s/ Neil Hazard
|
| Name: |
|
Neil
Hazard |
| Title: |
|
Chief
Financial Officer |
|
| ELEKTROBIT, INC. |
|
|
|
