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Exhibit
10.54
S ECOND A
MENDED AND R ESTATED I
NTELLECTUAL P ROPERTY A
SSIGNMENT AND L ICENSE
A GREEMENT (the “ Second Amended and
Restated Agreement ”), dated November 21, 2006 and
effective as of October 01, 2006 (the “ Effective
Date ”) by and between ATC Technologies, LLC, a Delaware
limited liability company (“ Technologies ”) and
TerreStar Networks Inc., a Delaware corporation (“
TerreStar ”).
I
NTRODUCTION
WHEREAS , Technologies
and TerreStar each are parties to the Amended and Restated
Intellectual Property Assignment and License Agreement dated
May 11, 2005 by and between Technologies and TerreStar (the
“First Amended and Restated Agreement”); and
WHEREAS , Technologies
and TerreStar each have undergone corporate transitions resulting
in reduced common ownership and control as between Technologies and
TerreStar; and
WHEREAS , Technologies
and TerreStar have agreed to certain changes to the agreements
reflected and memorialized in the First Amended and Restated
Agreement; and
WHEREAS, the Parties
have decided to terminate the Management Services & Shared
Facilities Agreement between Mobile Satellite Ventures, LP
(“MSV LP”) and TerreStar dated May 11, 2005,
contemporaneous herewith; and
WHEREAS , the Parties
have decided to terminate the Amended and Restated Cost Sharing
Agreement between Technologies and TerreStar dated May 11,
2005, contemporaneous herewith, and include certain provisions in
this Second Amended and Restated Agreement relating to the sharing
of certain costs by and between the Parties; and
WHEREAS , Technologies
and TerreStar desire to amend and restate the First Amended and
Restated Agreement as provided herein.
In consideration of the
mutual benefits to be derived from this Second Amended and Restated
Agreement and of the other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the
Parties, intending to be legally bound, do hereby agree as
follows:
ARTICLE I.
D
EFINITIONS
1.1 Defined Terms .
Capitalized terms used and not otherwise defined in this Agreement
shall have the meanings set forth below in this
Section 1.1.
(a) “ Accused
Party ” has the meaning set forth in
Section 6.2.
(b) “ Affiliate
” means, with respect to any Person, any other Person
controlling, controlled by or under common control with such
Person, whether by ownership or control of voting securities, by
contract or otherwise. Notwithstanding the foregoing and for
purposes of this Agreement, TerreStar Networks (Canada) Inc. shall
be deemed to be an Affiliate of TerreStar and Mobile Satellite
Ventures (Canada) Inc. and Mobile Satellite Ventures Holdings
(Canada) Inc. shall be deemed to be an Affiliate of Technologies
and MSV.
(c) “ Affiliated
Sublicensee” means an Affiliate of TerreStar to which
TerreStar may have granted rights under and pursuant to the First
Amended and Restated Agreement.
(d) “ Ancillary
Terrestrial Component ” has the meaning set forth in 47
C.F.R. §25.201 (2005).
(e) “ Collaboration
Period ” means the period from and including May 11,
2005, through and including October 01, 2006, the Effective
Date of this Second Amended and Restated Agreement.
(f) “ Confidential
Information ” has the meaning set forth in
Section 4.1.
(g) “ Disclosure
Requirements ” has the meaning set forth in
Section 4.3(a).
(h) “ Effective
Date ” has the meaning set forth in the
preamble.
(i) “ Feeder
Links ” means the radio links that transmit a
user’s messages in both directions between a satellite and
its gateway earth station, thereby connecting a Mobile Satellite
Service network with a public switched telephone network, provided
that the domestic telecommunications authority in the country in
which such links are operated has allocated and continues to
allocate the frequencies used by those links for such prescribed
purposes.
(j) “ Insolvency
Event ” has the meaning set forth in
Section 9.2(c).
(k) “ Intellectual
Property ” means (i) all Patents, Know-How, and
Marks and (ii) all domestic and foreign copyrights (registered
or unregistered), mask works, works of authorship in any form or
media, and all other intellectual property or proprietary rights of
any kind, other than any registered and unregistered U.S. and
foreign trade names, trademarks, trade dress, service marks, logos
and internet domain names, together with all applications related
thereto and all goodwill associated therewith.
(l) “
Inter-Satellite Service Links ” means links by which
satellites in a constellation may communicate with each other,
provided that the domestic telecommunications authority in
the country in which such links are operated has allocated and
continues to allocate the frequencies used by those links for such
prescribed purposes.
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(m) “ L-Band
” means the frequency band residing at 1626.5-1660.5 MHz
(Earth-to-space), 1668-1675 MHz (Earth-to-space) and 1518-1559 MHz
(Space-to-earth), as allocated for Mobile Satellite Service by the
International Telecommunications Union (“ITU”) for
Regions 1, 2 and 3, as those regions are defined by ITU Radio
Regulations, provided that notwithstanding the above, none of the
frequencies described in this subsection shall be considered to be
“L-Band” frequency in a given country unless that
country’s domestic telecommunications authority has allocated
and continues to allocate such frequency for Mobile Satellite
Services uses.
(n) “ Legal
Requirements ” means the laws, statutes, rules, and
similar regulations, applicable to the relevant Intellectual
Property.
(o) “ Marks
” means all registered and unregistered U.S. and foreign
trade names, trademarks, trade dress, service marks, logos and
internet domain names, together with all applications related
thereto and all goodwill associated therewith, except to the extent
that any such trade name, trademark, trade dress, service mark,
logo, internet domain name, or applications that relate thereto and
all goodwill associated therewith are used to identify Technologies
or TerreStar or their respective Affiliates as the provider of a
particular product or service.
(p) “ Mobile
Satellite Service ” has the meaning set forth in 47
C.F.R. §25.201 (2005).
(q) “ MSV LP
” has the meaning set forth in the Whereas
provisions.
(r) “ MSV LP
Agreement ” means that Amended and Restated Intellectual
Property Assignment and License Agreement dated May 11, 2005
entered into by and between Technologies and MSV LP.
(s) “ MSV LP
Intellectual Property ” means the Intellectual Property
assigned or licensed to Technologies pursuant to the MSV LP
Agreement.
(t) “ MSV LP L-Band
Services ” means communications services that are
provided or proposed to be provided using solely (i) the
L-Band as allocated for such purposes in the applicable country and
in accordance with all corresponding authorizations and all
applicable laws, rules and regulations, so long as such services
consist only of a Mobile Satellite Service (MSS) or a Mobile
Satellite Service with an Ancillary Terrestrial Component (ATC), as
defined herein, and (ii) Feeder Links, Inter-Satellite Service
Links and Tracking, Telemetry & Command Spectrum for the
sole purpose of supporting the MSS and/or ATC services set forth in
subclause (i).
(u) “ MSVI
” means MSV International, LLC, an affiliate of MSV LP and
Technologies.
(v) “ MSVI
Agreement ” means that Amended and Restated Intellectual
Property Assignment and License Agreement dated May 11, 2005
entered into by and between Technologies and MSVI.
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(w) “ MSVI
Intellectual Property ” means the Intellectual Property
assigned or licensed to Technologies pursuant to the MSVI
Agreement.
(x) “ Non-Accused
Party ” has the meaning set forth in
Section 6.2.
(y) “ Old Assignment
Agreement ” means the Assignment Agreement by and among
Mobile Satellite Ventures LLC, Telcom Satellite Ventures Inc. and
Rajendra Singh, dated as of January 8, 2001.
(z) “ Party
” or “ Parties ” means each of TerreStar
and Technologies individually, or both TerreStar and Technologies
collectively, as the case may be.
(aa) “ Patents
” means all domestic, foreign and international patents and
patent applications, and all provisionals, divisionals, renewals,
continuations, continuations-in-parts, reissues, re-examinations
and extensions thereof, and all patents and pending applications
claiming the benefit of a priority date of any of the foregoing
under domestic, foreign or international conventions, laws or
regulations, and all U.S. and foreign patents which may be granted
thereon and all reissues, reexaminations and extensions
thereof.
(bb) “ Permitted
Sublicensees ” means the Affiliated Sublicensees and the
Third Party Sublicensees to which TerreStar may have granted rights
under and pursuant to the First Amended and Restated
Agreement.
(cc) “ Person
” means any individual, trust, corporation, partnership,
limited liability company, joint venture or other business
association or entity, court, governmental body or governmental
agency.
(dd) “ S-Band
” means (i) in International Telecommunications Union
(“ITU”) Regions 1 and 3, as defined in ITU Radio
Regulations , the frequency band residing at 1980-2010 MHz
(Earth-to-space) and 2170-2200 MHz (space-to-Earth); (ii) in
ITU Region 2, excluding the United States but otherwise as defined
in ITU Radio Regulations , the frequency band residing at
1930-1970 MHz (Earth-to-space on a secondary basis), 1980-2025 MHz
(Earth-to-space), 2120-2160 MHz (space-to-Earth on a secondary
basis), and 2160-2200 MHz (space-to-Earth); and (iii) in the
United States, the frequency band residing at 2000-2020 MHz
(Earth-to-space) and 2180-2200 MHz (space-to-Earth), as allocated
for Mobile Satellite Service under the Federal Communications
Commission’s Table of Frequency Allocations codified at 47
C.F.R. § 2.106; and provided that notwithstanding the
above, none of the frequencies described in this subsection shall
be considered to be an “S-Band” frequency in a given
country unless that country’s domestic telecommunications
authority has allocated and continues to allocate such frequency
for Mobile Satellite Service uses.
(ee) “ Second
Amended and Restated Agreement ” has the meaning set
forth in the preamble.
(ff) “
Technologies ” has the meaning set forth in the
preamble.
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(gg) “ Technologies
Collaboration Intellectual Property ” means (i) the
MSVI Intellectual Property, (ii) the MSV LP Intellectual
Property, and (iii) all other Intellectual Property developed,
acquired or licensed by Technologies or any Affiliate of
Technologies during the Collaboration Period.
(hh) “ Technologies
Intellectual Property ” means: (i) all Technologies
Collaboration Intellectual Property and (ii) all Intellectual
Property developed, acquired, or otherwise owned by Technologies or
any Affiliate of Technologies at any time within ten
(10) years following the Effective Date of this Second Amended
and Restated Agreement.
(ii) “ Technologies
Patents ” means all Patents included in the Technologies
Intellectual Property.
(jj) “ Term
” has the meaning set forth in Section 9.1.
(kk) “ TerreStar
” has the meaning set forth in the preamble.
(ll) “TerreStar
– HNS Contract” means that certain contract between
TerreStar and Hughes Network Systems, LLC dated December, 2005, for
the TerreStar S-Band Satellite Beam Access Subsystem, as such
contract may be amended by modification or by successor contracts
entered into by TerreStar and Hughes Network Systems,
LLC.
(mm) “ TerreStar
Collaboration Intellectual Property ” shall have the same
meaning as Collaboration Intellectual Property under the First
Amended and Restated Agreement and as such shall mean all
Intellectual Property developed, acquired, used or licensed by
TerreStar or a Permitted Sublicensee during the Collaboration
Period under the First Amended and Restated Agreement (and in the
case of any Third Party Sublicensees, such Intellectual Property is
developed, acquired, used or licensed pursuant to its rights or
obligations under, or otherwise in connection with, the applicable
sublicense agreement).
(nn) “ TerreStar
Intellectual Property ” means: (i) all TerreStar
Collaboration Intellectual Property and (ii) all Intellectual
Property developed, acquired, or otherwise owned by TerreStar or
any Affiliate of TerreStar at any time within ten (10) years
following the Effective Date of this Second Amended and Restated
Agreement.
(oo) “ TerreStar
Know-How ” means all information, including all trade
secrets, know-how, unpatented technical information, software
(other than commercially available, off-the-shelf software) and
other forms of code, databases, data, manuals, formulae,
specifications, data and procedures for experiments and tests, flow
charts, apparatus plans, drawings and sketches, designs, ideas,
discoveries, inventions, devices, methods and techniques which
arise out of the TerreStar – HNS Contract.
(pp) “ TerreStar
Patents ” means all Patents included in the TerreStar
Intellectual Property.
(qq) “ TerreStar
S-Band Services ” means solely the communications
services that are provided or proposed to be provided using solely
(i) the S-Band as allocated for
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such purposes in the applicable country
and in accordance with all corresponding authorizations and all
applicable laws, rules and regulations, so long as such services
consist only of a Mobile Satellite Service (MSS) or a Mobile
Satellite Service with an Ancillary Terrestrial Component (ATC), as
defined herein, and (ii) Feeder Links, Inter-Satellite Service
Links and Tracking, Telemetry & Command Spectrum for the
sole purpose of supporting the MSS and/or ATC services set forth in
subclause (i).
(rr) “ Third
Party ” means any Person who is not a Party.
(ss) “ Third Party
Sublicensee ” means a Third Party sublicensee to which
TerreStar may have granted rights under and pursuant to the First
Amended and Restated Agreement.
(tt) “ Tracking,
Telemetry & Command ” means the radio links
which provide data on satellite functions via a two-way telemetry
link between a satellite and a controlling earth station or control
center, provided that the domestic telecommunications
authority in the country in which such links are operated has
allocated and continues to allocate the frequencies for such
prescribed purposes.
1.2 Descriptive Headings;
Certain Interpretations.
(a) Descriptive headings are
for convenience only and shall not control or affect the meaning or
construction of any provision of this Second Amended and Restated
Agreement.
(b) Except as otherwise
expressly provided in this Second Amended and Restated Agreement,
the following rules of interpretation apply to this Second Amended
and Restated Agreement: (i) the singular includes the plural
and the plural includes the singular; (ii) “ or
” and “ any ” are not exclusive and
“ include ” and “ including ”
are not limiting; (iii) a reference to any agreement or other
contract includes permitted supplements and amendments; (iv) a
reference to a law includes any amendment or modification to such
law and any rules or regulations issued thereunder; (v) a
reference to a person includes its permitted successors and
assigns; (vi) the words “ hereby ,” “
herein ,” “ hereunder ” and words
of similar import refer to this Second Amended and Restated
Agreement as a whole (including any Schedules and Exhibits) and not
merely to the specific section, paragraph or clause in which any
such word appears; and (vii) a reference in this Second
Amended and Restated Agreement to an Article, Section, Exhibit or
Schedule is to the Article, Section, Exhibit or Schedule of this
Second Amended and Restated Agreement.
(c) This Second Amended and
Restated Agreement has been negotiated and executed in the English
language. Translations of this Second Amended and Restated
Agreement in foreign languages are for convenience only and will
have no force and effect on the legal interpretation of this Second
Amended and Restated Agreement.
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ARTICLE II.
A LLOCATION
OF C OSTS
2.1 Allocation of Costs.
Beginning as of the Effective Date and continuing for a period of
ten (10) years therefrom, MSV LP, on the one hand, and
TerreStar, on the other hand, shall fund and share equally
(50%/50%) the costs and expenses incurred under or in
connection with the preparation, filing, prosecution, examination
and maintenance of Patents including, but not limited to outside
counsel fees and expenses and other directly related expenses by
one party in a given calendar year only to the extent that such
costs and expenses exceed the costs and expenses incurred by the
other party in the same calendar year under or in connection with
the preparation, filing, prosecution, examination and maintenance
of Patents including, but not limited to outside counsel fees and
expenses and other directly related expenses (such excess costs and
expenses referred to as “Patent Expenses”).
2.2 Notwithstanding the
foregoing, MSV LP shall not be liable to TerreStar, pursuant to
this Article II during any calendar year, for any Patent Expenses
incurred by TerreStar in a given calendar year, to the extent that
fifty percent (50%) of the amount of Patent Expenses incurred
by TerreStar over and above those Patent Expenses incurred by MSV
LP in the same calendar year exceed [***Redacted***]
.
2.3 Notwithstanding the
foregoing, TerreStar shall not be liable to MSV LP, pursuant to
this Article II during any calendar year, for any Patent Expenses
incurred by MSV LP in a given calendar year, if and to the extent
that fifty percent (50%) of the amount of Patent Expenses
incurred by MSV LP over and above those Patent Expenses incurred by
TerreStar in the same calendar year exceed [***Redacted***]
.
2.4 Invoicing.
(a) On an annual basis and no
later than the 15th day of February of each year during the Term,
MSV LP shall provide to TerreStar and TerreStar shall provide to
MSV LP, a summary of all Patent Expenses (including any back-up
documentation supporting such summary, upon request by the
Receiving Party) that each has incurred in the previous year. (In
each case, the Party receiving the summary of Patent Expenses shall
be referred to hereinafter as the “Receiving Party.”)
The Receiving Party shall review the summary of Patent Expenses and
back up documentation, if any, provided by the other Party, setting
forth the Patent Expenses incurred by the other Party during the
preceding year, and shall identify any expenses included in such
summary that the Receiving Party does not believe are properly
identified as Patent Expenses. The Receiving Party shall provide a
notice of objection within twenty (20) calendar days of
receipt of the summary of Patent Expenses. If no notice of
objection is received by the other Party within such period, the
Receiving Party shall be deemed to have accepted the summary of
Patent Expenses and all expenses set forth therein. If a notice of
objection is provided within the requisite period, the Parties
shall work together to reach an amicable agreement regarding any
questioned expenses in order to facilitate payment of Patent
Expenses in accordance with Section 2.4
(b) below.
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(b) With regard to all
undisputed Patent Expenses, the Party incurring the lesser amount
of Patent Expenses during the preceding year (the “Remitting
Party”), based upon a comparison of the summaries of
unquestioned Patent Expenses exchanged between the Parties, shall
make payment, within thirty (30) calendar days of the receipt
of the summary of Patent Expenses, to the other Party, of an amount
equal to fifty percent (50%) of the amount by which the other
Party’s Patent Expenses exceed the Remitting Party’s
Patent Expenses for the previous year, up to the maximum liability
of $1 million set forth in Sections 2.2 and 2.3 above.
ARTICLE III.
L ICENSE G
RANTS
3.1 Technologies
Patents . Subject to the Legal Requirements and
Section 10.2, Technologies hereby grants to TerreStar, and
TerreStar accepts, a perpetual (as described in
Section 9.3(a)), world-wide, royalty-free, fully paid up,
non-exclusive, non-transferable in whole or in part, non-assignable
right and license under the Technologies Patents (a) to
practice the methods claimed in the Technologies Patents for the
sole purpose of developing, operating, implementing, providing and
maintaining TerreStar S-Band Services; and (b) to make, have
made, use, sell, and import products or systems or perform
services, in either case that are claimed in the Technologies
Patents for the sole purpose of developing, operating,
implementing, providing and maintaining TerreStar S-Band Services,
provided that in the event that a royalty or other payment
is due as a result of the license granted in this Section 3.1,
the Parties agree to reasonably allocate the costs between
them.
3.2 TerreStar Patents and
TerreStar Know-How . Subject to the Legal Requirements and
Section 10.2, TerreStar hereby grants to Technologies, and
Technologies accepts, a perpetual (as described in
Section 9.3(a)), worldwide, royalty-free, fully paid up,
non-exclusive, non-transferable in whole or in part, non-assignable
right and license under the TerreStar Patents and the TerreStar
Know-How (a) to practice the methods claimed in the TerreStar
Patents or disclosed in the TerreStar Know-How for the sole purpose
of developing, operating, implementing, providing and maintaining
the MSV LP L-Band Services; and (b) to make, have made, use,
sell, and import products or systems or perform services, in each
case that are claimed in the TerreStar Patents or disclosed in the
TerreStar Know-How for the sole purpose of developing, operating,
implementing, providing and maintaining MSV LP L-Band Services,
provided that in the event that a royalty or other payment
is due as a result of the license granted in this Section 3.2,
the Parties agree to reasonably allocate the costs between
them.
3.3 Sublicenses
.
(a) Subject to
Section 3.3(c), Section 10.2 and the other terms and
conditions of this Second Amended and Restated Agreement, TerreStar
shall have the right to grant sublicenses, with the right to
further sublicense, under and in accordance with the licenses
granted in Section 3.1 for the sole purpose of developing,
operating, implementing, providing and maintaining TerreStar S-Band
Services throughout the world. Any sublicense granted by TerreStar
or TerreStar sublicensees pursuant to this section shall be on
terms and conditions no less restrictive than those set forth
herein and in a form substantially similar to that
attached
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hereto. To the extent not prohibited by
U.S. law with respect to a government sublicense and within thirty
(30) days of its execution, TerreStar shall provide to
Technologies an accurate and complete written copy of any
sublicense granted by TerreStar pursuant to this section (redacted
in order to protect confidential or sensitive information, but in
all cases with sufficient information to allow Technologies to
determine that such sublicense is in accordance with the
intellectual property provisions of this Second Amended and
Restated Agreement). If and to the extent that TerreStar is
prohibited by U.S. law from providing a copy of the sublicense
agreement with respect to a government sublicense to Technologies,
TerreStar will provide a summary of the intellectual property
provisions of the sublicense agreement sufficient to allow
Technologies to determine that such sublicense is in accordance
with the intellectual property provisions of this Second Amended
and Restated Agreement.
(b) Subject to
Section 3.3(d), Section 10.2 and the other terms and
conditions of this Second Amended and Restated Agreement,
Technologies shall have the right to grant sublicenses, with the
right to further sublicense, under and in accordance with the
licenses granted in Sections 3.2 for the sole purpose of
developing, operating, implementing, providing and maintaining MSV
LP L-Band Services throughout the world. Each sublicense to be
granted by Technologies or a sublicensee under this
Section 3.3 shall be subject to the prior written consent of
TerreStar and shall be on terms and conditions no less restrictive
than those set forth herein and in a form substantially similar to
that attached hereto. To the extent not prohibited by U.S. law with
respect to a government sublicense and within thirty (30) days
of its execution, Technologies shall provide to TerreStar an
accurate and complete written copy of any sublicense granted by
Technologies pursuant to this section (redacted in order to protect
confidential or sensitive information, but in all cases with
sufficient information to allow TerreStar to determine that such
sublicense is in accordance with the intellectual property
provisions of this Second Amended and Restated Agreement). If and
to the extent that Technologies is prohibited by U.S. law from
providing a copy of the sublicense agreement with respect to a
government sublicense to TerreStar, Technologies will provide a
summary of the intellectual property provisions of the sublicense
sufficient to allow TerreStar to determine that such sublicense
agreement is in accordance with the intellectual property
provisions of this Second Amended and Restated
Agreement.
(c) TerreStar hereby
guarantees the performance of all sublicensees to which it has
granted sublicenses in accordance with Section 3.3(a) above,
and shall be responsible for, and shall indemnify, defend and hold
harmless Technologies and its Affiliates and their officers,
directors, employees, personnel and agents from and against, any
and all claims, damages and other costs arising from, (i) any
sublicensee’s breach of the terms of its sublicense agreement
or (ii) any sublicensee’s violation, misappropriation,
use or misuse of Technologies Patents. TerreStar shall be entitled
to prompt notice by Technologies of any claim possibly leading to
an indemnification obligation under this provision and, at
TerreStar’s sole expense, to participate in any defense or
settlement of any claims relating thereto and to assume control of
such defense and settlement with counsel of its own choosing.
Technologies shall reasonably cooperate with TerreStar, at
TerreStar’s sole expense, in connection with any such defense
or settlement. The grant of any sublicense shall not relieve
TerreStar of its obligations under this Second Amended and Restated
Agreement, except to the extent they are satisfactorily performed
by such sublicensee.
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(d) Technologies hereby
guarantees the performance of all sublicensees to which it has
granted sublicenses in accordance with Section 3.3(b) above,
and shall be responsible for, and shall indemnify, defend and hold
harmless TerreStar and its Affiliates and their officers,
directors, employees, personnel and agents from and against, any
and all claims, damages and other costs arising from, (i) any
sublicensee’s breach of the terms of its sublicense agreement
or (ii) any sublicensee’s violation, misappropriation,
use or misuse of TerreStar Patents and TerreStar Know-How.
Technologies shall be entitled to prompt notice by TerreStar of any
claim possibly leading to an indemnification obligation under this
provision and, at Technologies’ sole expense, to participate
in any defense or settlement of any claims relating thereto and to
assume control of such defense or settlement with counsel of its
own choosing. TerreStar shall reasonably cooperate with
Technologies, at Technologies’ sole expense, in connection
with any such defense or settlement. The grant of any sublicense
shall not relieve Technologies of its obligations under this Second
Amended and Restated Agreement, except to the extent they are
satisfactorily performed by such sublicensee.
(e) Notwithstanding anything
herein to the contrary, in the event a royalty or other payment is
due, as a result of any sublicense granted by TerreStar or by any
sublicensee of TerreStar, or otherwise as a result of the actions
of TerreStar or a sublicensee of TerreStar, under the Old
Assignment Agreement (in particular, without limitation,
Section 3.1 thereof), TerreStar shall be solely responsible
for all such royalty and other payment obligations and all costs,
fees, payments, claims, or other expenses and obligations
(including audit and reporting obligations) relating to such
royalty or other payment obligations. Without limitation to the
foregoing, TerreStar (i) shall, upon prompt written notice to
TerreStar of any claim received by Technologies or its Affiliates
in respect thereof, indemnify Technologies and its Affiliates and
their officers, directors, employees, personnel and agents and
shall hold Technologies and its Affiliates and their officers,
directors, employees, personnel and agents harmless from and in
respect of any such royalty and other payment obligations and all
other costs, fees, payments, claims and other expenses and
obligations (including audit and reporting obligations) relating
thereto, and (ii) shall promptly provide Technologies and its
Affiliates, upon request, with all information relating to such
royalty and other payment obligations and all other costs, fees,
payments, claims and other expenses and obligations (including
audit and reporting obligations) relating thereto and otherwise
cooperate and assist Technologies and its Affiliates with any
inquiries or activities relating to any of the foregoing;
provided , however , that TerreStar shall be
entitled, at TerreStar’s sole expense, to participate in any
defense or settlement of any claims relating thereto and to assume
control of such defense or settlement with counsel of its own
choosing; and provided further , that Technologies and its
Affiliates shall reasonably cooperate with TerreStar, at
TerreStar’s sole expense, in connection with any such defense
or settlement. For the avoidance of doubt, the provisions of this
Second Amended and Restated Agreement are intended solely to govern
the terms of any agreements between the parties and not in any way
to modify the obligations under the Old Assignment
Agreement.
(f) Except as expressly set
forth in this Section 3.3, neither TerreStar nor Technologies
or any sublicensee of either shall license or sublicense any rights
or licenses granted hereunder.
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3.4 Cooperation . Each
Party will use commercially reasonable efforts to take or cause to
be taken all action, and do or cause to be done all things
reasonably necessary, proper or advisable under applicable laws and
regulations, or reasonably requested by the other Party, to
consummate, make effective, perfect, record, and enforce the
licenses and rights granted by this Second Amended and Restated
Agreement including, without limitation, upon the other
Party’s request, giving such oaths, executing (or causing its
Affiliates to execute) any additional instruments necessary to
effectuate the rights contemplated under this Second Amended and
Restated Agreement and filing the same with the appropriate
government entity (including, without limitation, the United States
Patent and Trademark Office).
3.5 License Obligations
and Restrictions . The rights and licenses granted hereunder
are conditioned on, and subject to the following:
(a) TerreStar shall not use
or disclose any Technologies Patents beyond the grant of rights and
licenses in Sections 3.1 and 3.3, and TerreStar shall comply with
all the obligations and restrictions set forth in Article IV.
Technologies shall not use or disclose any TerreStar Patents or
TerreStar Know-How beyond the grant of rights and licenses in
Sections 3.2 and 3.3, and Technologies shall comply with all the
obligations and restrictions set forth in Article IV.
(b) TerreStar shall comply
with and adhere to (i) any and all usage guidelines pertaining
to the Technologies Patents (including by way of example, patent
marking guidelines, software usage guidelines and trademark usage
guidelines) that may be delivered by Technologies to TerreStar,
from time to time, as well as any modifications or changes thereto
upon written notice to TerreStar thereof. Technologies shall comply
with and adhere to (i) any and all usage guidelines pertaining
to the TerreStar Patents and TerreStar Know-How (including by way
of example, patent marking guidelines, software usage guidelines
and trademark usage guidelines) that may be delivered by TerreStar
to Technologies, from time to time, as well as any modifications or
changes thereto upon written notice to Technologies
thereof.
(c) TerreStar shall comply
with all applicable laws, rules and regulations, including the
Legal Requirements and any other rules, regulations, guidelines, or
other applicable requirements of any governmental or regulatory
authorities, that may be in effect from time to time. Without
limiting the foregoing, TerreStar further agrees that it will not
export, directly or indirectly, any technical information licensed
or otherwise provided by Technologies under this Second Amended and
Restated Agreement or any products using such technical information
to a location or in a manner that, at the time of export, requires
an export license or other governmental approval, without first
obtaining the written consent to do so from the appropriate agency
or other governmental entity in accordance with applicable law.
Technologies shall comply with all applicable laws, rules and
regulations, including the Legal Requirements and any other rules,
regulations, guidelines, or other applicable requirements of any
governmental or regulatory authorities, that may be in effect from
time to time. Without limiting the foregoing, Technologies further
agrees that it will not export, directly or indirectly, any
technical information licensed or otherwise provided by TerreStar
under this Second Amended and Restated Agreement or any products
using such technical information to a
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location or in a manner that at the time
of export requires an export license or other governmental
approval, without first obtaining the written consent to do so from
the appropriate agency or other governmental entity in accordance
with applicable law.
3.6 Reservation of
Rights . Except for the licenses explicitly granted herein, and
subject to Section 3.7, Technologies shall retain all of its
rights, title and interests, in and to Technologies Intellectual
Property. Except for the licenses explicitly granted herein and
subject to Section 3.7, TerreStar shall retain all of its
rights, title and interests, in and to TerreStar Intellectual
Property.
3.7 Certain Prohibition on
the Practice of Licensed Intellectual Property and New Licenses
.
(a) Technologies shall have
no right, express or implied, to grant any license, express or
implied, under the Technologies Intellectual Property licensed to
TerreStar hereunder for purposes of developing, operating,
implementing, providing or maintaining any communications services
in the S-Band without the prior written consent of
TerreStar.
(b) TerreStar shall have no
right, express or implied, to grant any license, express or
implied, under, the TerreStar Intellectual Property licensed to
Technologies hereunder for purposes of developing, operating,
implementing, providing or maintaining any communications services
in the L-Band, without the prior written consent of
Technologies.
(c) All sublicenses granted
by either Party or their sublicensees under this Second Amended and
Restated Agreement shall be no broader than and shall be in strict
accordance with the licenses and the corresponding restrictions and
limitations thereon as set forth in this Second Amended and
Restated Agreement.
ARTICLE IV.
C
ONFIDENTIALITY AND N
ON -U SE
4.1 Treatment of
Confidential Information . Each Party agrees that during the
Term and thereafter, that it shall (a) maintain in confidence
the Confidential Information of the other Party to the same extent
that it maintains its own proprietary industrial information of
similar kind and value, but using not less than a reasonable
standard of care, (b) not disclose such Confidential
Information to any Third Party without prior written consent of the
other Party, except for disclosures made in accordance with
Section 4.3, and (c) not use such Confidential
Information for any purpose except those contemplated by this
Agreement. In furtherance of the foregoing, any employees to whom
either Party discloses any Confidential Information of the other
Party must be bound in writing, prior to any such disclosure, by
obligations of confidentiality and non-use at least equivalent in
scope to those set forth in this Article IV. As used herein,
“ Confidential Information ” shall mean the
Intellectual Property and all tangible embodiments thereof, and all
other information provided by or on behalf of either Party to the
other Party in connection with the discussions and negotiations
pertaining to, or in the course of performing, this
Agreement.
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4.2 Exclusions . The
obligations set forth in Section 4.1 above shall not apply
with respect to any portion of Confidential Information which the
receiving Party can demonstrate, by contemporaneous written records
or other competent proof:
(a) was already known to the
receiving Party, other than under an obligation of confidentiality
or non-use, at the time of disclosure to that Party;
provided , however , that this exception shall not
apply to any Intellectual Property that was licensed by one Party
to the other Party hereunder;
(b) was part of or became
part of the public domain (or has been published in the public
domain) through no fault of the receiving Party; or
(c) was disclosed to the
receiving Party, other than under an obligation of confidentiality
or non-use, by a Person who had no obligation not to disclose such
information to others; or
(d) was independently
discovered or developed by the receiving Party after the expiration
of the Collaboration Period without the use of any of the other
Party’s Confidential Information.
Specific aspects or details of
Confidential Information shall not be deemed to be within the
public domain (or published in the public domain) or otherwise
subject to an exclusion in this Section 4.2 merely because the
Confidential Information is described or otherwise embraced by more
general information in the public domain (or published in the
public domain) or in the possession of either Party. Further, any
combination of Confidential Information shall not be considered in
the public domain (or published in the public domain) or otherwise
subject to an exclusion in this Section 4.2 merely because
individual elements of such Confidential Information are in the
public domain (or published in the public domain) or in the
possession of the other Party unless the combination and its
principles are in the public domain (or published in the public
domain) or otherwise subject to an exclusion in this
Section 4.2.
4.3 Authorized
Disclosure. Either Party may disclose Confidential Information
of the other Party to the extent that such disclosure
is:
(a) Made in response to a
valid order of a court of competent jurisdiction or other
supra-national, federal, national, regional, state, provincial or
local governmental or regulatory body of competent jurisdiction;
provided , however , that the disclosing Party shall
first have given notice to the other Party and given the other
Party a reasonable opportunity to quash such order and to obtain a
protective order requiring that the other Party’s
Confidential Information and documents that are the subject of such
order be held in confidence by such court or agency or, if
disclosed, be used only for the purposes for which the order was
issued; and provided further that if a disclosure order is
not quashed, the other Party’s Confidential Information
disclosed in response to such court or governmental order shall be
limited to that information which is legally required to be
disclosed in response to such court or governmental order (such
notice, procedures and requirements set forth in this
Section 4.3(a) shall be referred to as the “
Disclosure Requirements ”);
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(b) Made by either Party to a
regulatory authority as required in connection with any filing,
application or request for approval; provided ,
however , that reasonable measures shall be taken to assure
confidential treatment of such information;
(c) Made by either Party to
existing or potential acquirers or merger candidates, investment
bankers, existing or potential investors, venture capital firms or
other financial institutions or investors for purposes of obtaining
financing, or Affiliates, each of whom prior to disclosure must be
bound in writing by obligations of confidentiality and non-use at
least equivalent in scope to those set forth in this Article IV;
provided , however , that the disclosing Party shall
first have given notice to the other Party thereof, including to
whom any such disclosures are made; and provided further
that no Person receiving information pursuant to this subsection
shall disclose any Confidential Information to any Person without
the prior written consent of the other Party, unless such
disclosure is made in response to a valid order of a court of
competent jurisdiction or other supra-national, federal, national,
regional, state, provincial or local governmental or regulatory
body of competent jurisdiction and such Person has complied with
the Disclosure Requirements; or
(d) Made by either Party or a
sublicensee, in connection with the exercise of its rights or the
performance of its obligations under this Agreement or a sublicense
agreement, to sublicensees but only to the extent such sublicensees
need to know such Confidential Information in order to exercise
their rights or perform their obligations under their respective
sublicense agreements, each of whom prior to disclosure must be
bound in writing by obligations of confidentiality and non-use at
least equivalent in scope to those set forth in this Article IV;
provided , however , no sublicensee other than
disclosure by a Party to a sublicensee that is an Affiliate shall
disclose any Confidential Information to any Person without the
prior written consent of the owner of such Confidential
Information, unless such disclosure is made in response to a valid
order of a court of competent jurisdiction or other supra-national,
federal, national, regional, state, provincial or local
governmental or regulatory body of competent jurisdiction and such
sublicensee has complied with the Disclosure
Requirements.
(e) Public Statements
Regarding Agreement . The Parties agree that this Agreement may
be disclosed by each of them, consistent with applicable legal
requirements, and to existing or potential acquirers or merger
candidates, investment bankers, existing or potential investors,
venture capital firms or other financial institutions or investors
for purposes of obtaining financing, or for other purposes in
connection with their respective businesses. The Parties agree,
however, that they may not issue a press release regarding the
Agreement without the prior written approval of the other Party,
and that each Party will provide each other a copy for prior
approval of any language summarizing or characterizing the
Agreement to be included in any public disclosure. The Parties
agree it is critical to each of them and their respective
businesses to ensure that the public characterization of this
Agreement is both accurate and appropriate, and will use their best
efforts to ensure that the obligations hereunder are fully
understood and complied with.
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ARTICLE V.
O WNERSHIP
AND M AINTENANCE OF I
NTELLECTUAL P ROPERTY R
IGHTS
5.1 Ownership.
(a) As between TerreStar and
Technologies, subject to the license grants in Article III,
Technologies shall own and retain all right, title and interests in
and to all Technologies Intellectual Property and TerreStar shall
own and retain all right, title and interests in and to all
TerreStar Intellectual Property.
(b) Both Parties acknowledge
and agree that Article II of the First Amended and Restated
Agreement is and shall be considered by the Parties to be null and
void ab initio and without legal effect now and at all times in the
past and the future. Accordingly, both Parties acknowledge and
agree that no rights in or to TerreStar Collaboration Intellectual
Property were transferred or assigned, at any time, to Technologies
pursuant to the First Amended and Restated Agreement. In this
regard and without limiting the foregoing, both Parties acknowledge
and agree that all TerreStar Collaboration Intellectual Property is
now and has been, at all times prior to the Effective Date of this
Second Amended and Restated Agreement, including, but not limited
to at all times during the Collaboration Period, owned by
TerreStar, TerreStar’s Permitted Sublicensees or Third Party
licensors licensing Intellectual Property to TerreStar.
5.2 Prosecution and
Maintenance .
(a) (i) TerreStar
acknowledges and agrees that, as between Technologies and
TerreStar, Technologies shall have the exclusive right to file for,
obtain, maintain, register, prosecute and extend intellectual
property protection for any and all Technologies Intellectual
Property, to the extent such protections are available under the
applicable Legal Requirements.
(ii) In the event that
Technologies elects to abandon any such Technologies Intellectual
Property, Technologies may, at its option, notify TerreStar in
writing in advance of the due date of any payment or other
administrative action that is required to maintain such
intellectual property, and may, at its option, grant TerreStar or
an Affiliate of TerreStar, the right to make such payment or take
such administrative action, at its expense, and to the extent
possible, in its own name and with sole ownership rights;
provided , however , that any such rights that may be
granted to TerreStar or an Affiliate of TerreStar in accordance
with this Section 5.2(a) shall be subject to any prosecution,
maintenance and other rights granted by Technologies to other
Persons under any and all separate agreements, arrangements and
understandings.
(b) (i) Technologies
acknowledges and agrees, that, as between TerreStar and
Technologies, TerreStar shall have the exclusive right to file for,
obtain, maintain, register, prosecute and extend intellectual
property protection for any and all TerreStar Intellectual
Property, to the extent such protections are available under the
applicable Legal Requirements.
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(ii) TerreStar agrees to take
all reasonable efforts to have Patent applications prepared and
filed with the U.S. Patent and Trademark Office directed to all
features, designs, and functionality that TerreStar may reasonably
believe to be novel and non-obvious including, by way of example,
in connection with TerreStar’s emergency/public safety
developments and applications.
(iii) In the event that
TerreStar elects to abandon any TerreStar Intellectual Property,
TerreStar may, at its option, notify Technologies in writing in
advance of the due date of any payment or other administrative
action that is required to maintain such intellectual property, and
may, at its option, grant Technologies or an Affiliate of
Technologies the right to make such payment or take such
administrative action, at its expense, and to the extent possible,
in its own name and with sole ownership rights; provided ,
however , that any such rights that may be granted to
Technologies or an Affiliate of Technologies in accordance with
this Section 5.2(b) shall be subject to any prosecution,
maintenance and other rights granted by TerreStar to other Persons
under any and all separate agreements, arrangements and
understandings.
5.3 Delivery of
Information. Each Party shall, without additional compensation
and at such Party’s sole expense, disclose and make available
to the other Party, in whatever form such other Party may
reasonably request, information in its possession relating to
(a) if the disclosing Party is TerreStar, the Intellectual
Property licensed by TerreStar to Technologies pursuant to Article
III and (b) if the disclosing Party is Technologies, the
Technologies Patents licensed by Technologies to TerreStar pursuant
to Article III, promptly after the Effective Date and thereafter as
promptly a
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