|
EXHIBIT 10.17
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS
OF THIS EXHIBIT. THE CONFIDENTIAL PORTIONS HAVE BEEN REDACTED AND
ARE DENOTED BY A TRIPLE ASTERISK (***). THE CONFIDENTIAL PORTIONS
HAVE BEEN SEPARATELY FILED WITH THE COMMISSION.
AMENDED AND RESTATED
LICENSE AGREEMENT
BY AND BETWEEN
TRACE TECHNOLOGIES L.L.C. AND SNAPTRACK,
INC.
THIS AMENDED AND RESTATED LICENSE AGREEMENT
, collectively referencing that certain prior
license agreement entered as of August 20, 1999, and as amended, by
and between STI and Locate Networks, Inc. (the " Agreement
") is made and entered into as of January 16, 2006 (the "
Effective Date ") by and between SnapTrack, Inc. ("
STI " or " SnapTrack "), a California corporation
with its registered business office at 5775 Morehouse Drive, San
Diego, California 92121, and Trace Technologies L.L.C., ("
Trace "), a Nevada limited liability company with its
principal place of business located at 4538 South 140 th
Street, Omaha, Nebraska 68137. STI and Trace may individually be
referred to as a "party" and collectively as the "parties" in this
Agreement. Except as is expressly and otherwise provided herein,
this Agreement supersedes and replaces as of and after the
Effective Date the prior License Agreement made and entered as of
August 20, 1999, as amended, by and between STI and Trace
Technologies L.L.C., as successor-in-interest to substantially all
of the assets of Locate Networks, Inc. (the " Prior License
").
BACKGROUND
WHEREAS , Trace is in the
business of designing, developing, marketing and selling
proprietary wireless communication devices, including a location
pager device for use and operation on ReFLEX networks, in
conjunction with related location services.
WHEREAS , STI is developing
software and related technology based on its proprietary Assisted
Global Positioning System (" A-GPS ") technology.
WHEREAS , as part of the
acquisition by Trace of substantially all of the assets of Locate
Networks, Inc. on June 1, 2004, the License Agreement that was made
and entered as of August 20, 1999, as amended, by and between STI
and Locate Networks, Inc., was assigned by Locate Networks, Inc. to
Trace as the successor-in-interest to substantially all of the
assets of Locate Networks, Inc.
WHEREAS , the parties desire to
further delineate and set forth the terms and conditions under
which Trace will continue to: (i) license the use of STI’s
A-GPS Software to design, develop, market and sell such wireless
communication devices for use in performing paging operations on
ReFLEX networks, and (ii) obtain from STI maintenance and technical
support and engineering services for the STI Server Software in
connection with its use with such wireless communication
devices.
Trace/STI Amended and Restated License
Agreement
Proprietary and Confidential
NOW, THEREFORE, in
consideration of the agreements contained herein and for such other
good and valuable consideration, the receipt and sufficiency of
which is hereby acknowledged, the parties hereby agree as
follows:
AGREEMENT
In consideration of the agreements contained
herein, the parties agree as follows:
1. Definitions . As used herein:
" Affiliate " means any entity that
controls, is controlled by, or under common control with a party,
where "control" means the direct or indirect beneficial ownership
of more than fifty percent (50%) of the outstanding voting
interests of such entity (but only so long as such entity meets
these requirements).
" Authorized Distributors " means third
parties authorized by Trace, pursuant to a written agreement
between Trace and such third party, to distribute Wireless
Devices.
" Authorized Licensee " means any person
or entity to which STI has licensed for distribution to third
parties the Client Program under a written license agreement with
STI.
" Authorized Manufacturers " means third
parties that manufacture Wireless Devices on behalf of
Trace.
" Authorized Service Centers " means third
parties that install and host the Server Software on servers for
the benefit of Trace and in accordance with the provisions of
Section 2(b).
" Client Program " means, in object code
format only, the STI software, logic designs, and net lists that
were or are provided by STI to an Authorized Licensee and, when
installed in the Wireless Device, help analyze GPS data and enable
communications between the Wireless Device and the Server Software
to provide position location information to Subscribers.
" Client Software " means, in object code
format only, the STI software, logic designs, and net lists that
were provided by STI to Trace on or prior to the Effective Date and
accepted by Trace and, when installed in the Wireless Device, help
analyze GPS data and enable communications between the Wireless
Device and the Server Software to provide position location
information to Subscribers.
" Client Technology " shall mean that
certain client software described on Exhibit
B .
" Communications Interface Protocol "
means the detailed STI protocol which defines the way the Client
Software or Client Program interacts with the Server Software, as
modified from time to time by STI upon written notice to
Trace.
Trace/STI Amended and Restated License
Agreement
Proprietary and Confidential
-2-
" Confidential Information " of a party
means any information disclosed by that party to the other party
pursuant to this Agreement which is in written, graphic, machine
readable or other tangible form and is marked "Confidential,"
"Proprietary" or in some other manner to indicate its confidential
nature. Confidential Information may also include oral information
disclosed by one party to the other pursuant to this Agreement,
provided that such information is designated as confidential at the
time of disclosure. Notwithstanding the foregoing, (i) all
information STI provides to Trace that relates to the Software or
the Engineering Services shall be deemed STI’s Confidential
Information, and (ii) all information Trace provides to STI that
relates to the Wireless Device, Wireless Services or other Trace
products or services shall be deemed Trace’s Confidential
Information.
" DSP " means a digital signal
processor.
" DSP Implementation " means an
implementation of Client Software which (a) includes a DSP, (b)
fully conforms to the Communications Interface Protocol, and (c)
requires the use of the Server Software on a server that is remote
from a Wireless Device.
" End User " means any third party,
including but not limited to a Subscriber, which obtains a Wireless
Device solely for its own personal or business use and not for
further commercial distribution or resale.
" End User License " means an end user
license agreement which contains, among others, the end user
restrictions set forth on Exhibit A .
" Enhancements " means accuracy
improvements, speed improvements, and/or the addition of new
functionality to the Server Software, but excluding any New
Implementations. For purposes of interpretation of this Agreement,
"improvements" shall include bug fixes, error corrections, and
minor new releases signified by an increase in the number to the
right of the decimal point of the Server Software, but shall
exclude New Implementations.
" Engineering Services " means technical
training, design consulting, document creation, implementation,
testing, and engineering development services that STI may provide
under this Agreement, including, without limitation, such services
that STI may provide in accordance with Section 4(b)
below.
" First Level Technical Support " means
support which Trace will provide directly to End Users, Authorized
Distributors, Authorized Service Centers, and Authorized
Manufacturers, including, without limitation, answering questions,
resolving technical difficulties related to the Wireless Devices
and Wireless Services that Trace is capable of resolving without
the assistance of STI, and providing on-site technical support to
Authorized Distributors, Authorized Service Centers, and Authorized
Manufacturers.
" Intellectual Property Rights " means any
trade secrets, patents, copyrights, trademarks, know-how, moral
rights and other intellectual property rights existing under the
laws of any governmental authority, domestic or foreign including
all applications and registrations relating to any of the
foregoing.
Trace/STI Amended and Restated License
Agreement
Proprietary and Confidential
-3-
" MMGPS Implementation " means an
implementation of a Client Program which (a) is based on Verilog
RTL core receiver position engine software, (b) fully conforms to
the Communications Interface Protocol, and (c) requires the use of
the Server Software on a server that is remote from a Wireless
Device.
" Necessary IP " means all patent and
patent application entitled to an effective filing date occurring
at any time prior to the expiration or earlier termination of this
Agreement and which are essential or useful to the development,
manufacture, use, sale, importation, disposal or distribution of
licenses or other rights to the Software or a Client Program in
order to comply with the location services portion of the
specifications of any wireless communications standard adopted for
any air interface anywhere in the world.
" New Implementations " means a new major
release of the Server Software, signified by an increase in the
number to the left of the decimal point, that incorporates
significant new functionality, new methods, or new techniques of
implementing STI’s A-GPS or other technology within the
Server Software and which STI may develop and offer to its server
licensees for use in the performance of assisted position location
determination. New Implementations may be subject to incremental
fees and/or modified support terms.
" Project Plan " means the project plan,
set forth on Exhibit B of the Prior License, which
establishes a timetable for the parties to develop detailed
specifications, resource requirements, schedules, and milestones
related to the integration of the Software into Wireless
Devices.
" Server Software " means, in object code
format only, STI location server software that (a) is installed on
a server that is remote from the Wireless Devices, (b) assists in
determining the location of the Wireless Devices, and (c)
communicates with Wireless Devices using the Communications
Interface Protocol.
" Software " means the Client Software,
Server Software, and WARN Software.
" Subscriber " means a person who obtains
a Wireless Device and who has authorized access to the Wireless
Service.
" WARN " means the wide area reference
network of A-GPS receivers which provide satellite information and
differential corrections for a wide geographic area.
" WARN Software " means STI wide area
reference network software, in object code format only, which
manages and consolidates data from a wide area network for use by
the Server Software.
" Wireless Device " means a paging device
(i) on which the DSP Implementation of the Client Software or the
MMGPS Implementation of the Client Program is installed, and (ii)
which (a) communicates with the server on which the Server Software
is installed via the Wireless Network to transmit position location
data or assistance information to and/or from such paging device
and (b) is not capable of transmitting or receiving voice data or
voice communications.
" Wireless Network " means the two-way
paging ReFLEX networks.
Trace/STI Amended and Restated License
Agreement
Proprietary and Confidential
-4-
" Wireless Service " means wireless
location services, which in any way incorporate the Software or
utilize output of the Software to offer location dependent
applications or data to Subscribers, and which Trace offers through
the Wireless Network.
2. License
Rights
(a) Client
Software License . Subject to the terms, conditions, and
restrictions of this Agreement, without the right to sublicense
except as explicitly set forth herein, STI hereby grants to Trace a
nonexclusive, perpetual, irrevocable, nontransferable (except as
set forth in Section 14(b)) license under STI’s Intellectual
Property Rights in the DSP Implementation of the Client Software,
to (i) modify the Client Software only as necessary to integrate
the Client Software with the Wireless Devices, provided that such
changes do not alter the core functionality of the Client Software,
(ii) make (or have made by Authorized Manufacturer(s) only) and
sell (either directly or through Authorized Distributors) Wireless
Devices, (iii) sublicense to End Users the right to use the Client
Software as embedded on the Wireless Devices, (iv) use the Client
Software solely as is necessary to provide First Level Technical
Support, and (v) sublicense to third parties the right to modify
the Client Software only as necessary to integrate the Client
Software with the Wireless Devices, provided that such changes do
not alter the core functionality of the Client Software, and
further provided that such third party signs an agreement with
Trace which contains terms substantially similar to those set forth
on Exhibit C .
(b) Server
Software License . Subject to the terms, conditions, and
restrictions of this Agreement, STI hereby grants Trace a
nonexclusive, perpetual, irrevocable, nontransferable (except as
set forth in Section 14(b)) license, without the rights to
sublicense except as explicitly set forth herein, under STI’s
Intellectual Property Rights in the Server Software, to (i)
internally test and develop Wireless Devices for use with the
Server Software, (ii) sublicense to Authorized Service Centers only
the right to install, host and use internally the Server Software
on servers owned and controlled by Trace or such Authorized Service
Centers solely as is necessary to enable Trace to provide Wireless
Services for use on or with Wireless Devices to Subscribers, and
(iii) use internally the Server Software solely as is necessary to
provide First Level Technical Support.
(c) Trademarks . Subject to the terms, conditions and
restrictions of this Agreement, STI hereby provides on behalf of
QUALCOMM Incorporated the right to use the QPoint Ô trademark of
QUALCOMM Incorporated subject to and in accordance with the
provisions contained in Exhibit D to this Agreement.
(d) Reserved
Rights and Restrictions . Except for the limited rights and
licenses granted to Trace under this Agreement, STI retains all STI
right, title, and interest in and to the Software and all copies
thereof, and all STI Intellectual Property Rights related thereto.
Trace will not, and is not licensed to (i) use the Server Software
with software (other than the Client Software) which has
functionality similar to the functionality of the Client Software,
or (ii) use the Client Software with software (other than the
Server Software) which has functionality similar to the
functionality of the Server Software. Except as explicitly set
forth in this Section 2, Trace shall not, directly or through any
person or entity, in any form or manner, copy, distribute,
reproduce, incorporate, modify, create future derivative works of,
use or allow access to the Software or decompile, reverse engineer,
reverse translate, disassemble or otherwise attempt to derive
source code from the Software.
Trace/STI Amended and Restated License
Agreement
Proprietary and Confidential
-5-
(e) ***
(f) Backup
Copies . Trace may make and maintain a copy of the Software
in machine-readable, object code format, and a copy of the related
documentation, solely for nonproductive backup purposes.
3. Trace
Responsibilities
(a) Marketing . Trace shall use commercially reasonable
efforts to market, promote, and distribute the Wireless Devices and
to market and promote the Wireless Service.
(b) End User
Licensing . Trace will include a copy of an End User License
with each Wireless Device sold to End Users.
(c) Authorized
Manufacturers, Service Centers, and Distributors . Trace
will not sublicense the Server Software to an Authorized Service
Center, or the Client Software to an Authorized Manufacturer,
without the prior written consent of STI, which consent shall not
be unreasonably withheld or delayed; provided, that such consent
shall not be required for Authorized Service Centers or Authorized
Manufacturers located in the United States, Canada, or the European
Union. Trace shall (i) ensure that each Authorized Manufacturer,
Authorized Service Center, and Authorized Distributor acknowledges
in writing, adheres to, and does not perform any act inconsistent
with, the terms and conditions of this Agreement, (ii) use
commercially reasonable efforts to ensure that Authorized
Manufacturers, Authorized Service Centers, and Authorized
Distributors do not reverse engineer, decompile, disassemble, or
modify the Software, and (iii) execute a non-disclosure agreement
at least as protective of STI as the provisions of Section 9 of
this Agreement prior to discussing or sublicensing the Client
Software to Authorized Manufacturers or the Server Software to
Authorized Service Centers.
(d) Non-Use of
Open Source . Neither Trace nor any Authorized Service
Centers shall incorporate, link, distribute or use any third party
software or code in conjunction with any Software in such a way
that: (i) creates, purports to create or has the potential to
create, obligations with respect to the Software, including,
without limitation, the distribution or disclosure of any source
code; or (ii) grants, purports to grant, or has the potential to
grant to any third party any rights to or immunities under any of
STI’s Intellectual Property Rights, including, without
limitation, any rights which may exist in or relate to the
Software. Without limiting the generality of the foregoing, Trace
shall not incorporate, link, distribute or use the Software with
any code or software licensed under the GNU General Public License
("GPL"), Lesser General Public License ("LGPL"), Mozilla, and/or
any other open source license, in any manner that could cause or
could be interpreted or asserted to cause the Software (or any
modifications, enhancements or revisions thereto) to become subject
to the terms of the GPL, LGPL, Mozilla and/or such other open
source license. Trace shall also cause each of its Authorized
Service Centers to agree and covenant in writing not to
incorporate, link, distribute or use the Software with any code or
software licensed under the GPL, LGPL, Mozilla, and/or any other
open source license, in any manner that could cause or could be
interpreted or asserted to cause the Software (or any
modifications, enhancements or revisions thereto) to become subject
to the terms of the GPL, LGPL, Mozilla and/or such other open
source license, and to recognize SnapTrack as an intended third
party beneficiary of this obligation with the right to enforce such
obligation against such Authorized Service Centers.
________________________
***
Confidential material redacted and filed separately with the
Commission
Trace/STI Amended and Restated License
Agreement
Proprietary and Confidential
-6-
4. STI
Responsibilities
(a) Delivery of
Software . Trace acknowledges and agrees that STI has
fulfilled all of its obligations as of the Effective Date to
deliver the Software deliverables set forth on Exhibit E to
Trace. Upon written request by Trace, STI will provide Trace during
the term of this Agreement with (i) any Enhancements to the Server
Software that STI may make available to its other server licensees,
subject to the payment by Trace of amounts due under this Agreement
for such Enhancements, and (ii) any New Implementations of the
Server Software that STI may make available to any of its
licensees, subject to the payment by Trace of any incremental fees
and/or agreement to any modified support and/or other terms
applicable generally to licensees receiving such New
Implementations.
(b) Engineering
Services . From time to time, Trace may propose in writing
to STI Engineering Services which Trace desires STI to provide to
Trace. Such proposal will contain detailed specifications of the
Engineering Services, which Trace desires STI to provide. Within
thirty (30) days after receiving such Trace proposal and if STI is
willing to perform such engineering services, STI will inform Trace
in writing of the terms, conditions and pricing under which STI
will perform such Engineering Services, and will include estimates
of STI’s time and materials rates, as well as travel expenses
anticipated to be incurred with respect to the provision of such
Engineering Services. If STI is willing to provide such Engineering
Services to Trace, and Trace desires to acquire such Engineering
Services, STI and Trace will mutually agree in writing upon the
terms, conditions and pricing under which STI will provide such
Engineering Services to Trace.
(c) SnapWarn
Service Feed . During the period in which STI has available
to it access to A-GPS reference receiver network services from a
third party for sale to other parties, and subject to the payment
by Trace of all amounts due under this Agreement, STI will provide
Trace with access to STI’s commercial, A-GPS reference
receiver network services in North America for use with the Server
Software that is licensed by STI to Trace under this Agreement (the
" SnapWarn Service Feed ").
(d) New
Implementations . Trace acknowledges that STI may choose to
seek and obtain additional fees and charges, or modified license or
support terms, for the New Implementations that STI may develop. If
STI develops any such New Implementations and chooses to make them
available to any of STI’s other Server Software licensees,
then STI will make such New Implementations available to Trace
under this Agreement, subject, however, to the payment by Trace to
STI, on a timely basis when due, of all then-current additional
fees and charges which apply to such New Enhancements generally and
the agreement by Trace to any modified license, support or other
terms that apply to such New Enhancements generally. If any such
New Enhancements are made available by STI to Trace, then they will
be deemed to be part of the Software licensed to Trace under the
license provisions in this Agreement.
5. Prices and
Payment
(a) Fees .
In consideration of STI’s delivery of the Software and
provision of service and support as provided under this Agreement,
Trace will pay STI the fees set forth on Exhibit F .
Trace/STI Amended and Restated License
Agreement
Proprietary and Confidential
-7-
(b) Late
Payments . All amounts which Trace does not pay on a timely
basis as required by this Agreement shall be subject to a late
charge equal to one and one-half percent (1.5%) per month (or, if
less, the maximum allowed by applicable law). In the event that any
payment due hereunder is not received by STI within thirty (30)
days of the date on which it is due as provided in Exhibit F ,
and STI has provided Trace notice and thirty (30) days to cure such
deficiency and Trace has failed to do so, STI reserves the right to
suspend performance until such delinquency is corrected.
(c) Payment
Method . All payments by Trace hereunder shall be made by
wire transfer to such bank account as shall be designated by STI in
writing.
(d) Taxes
. Trace will be responsible for the billing, collecting and
remitting of sales, use, value added, and other comparable taxes
reasonably determined by Trace to be due with respect to the sale
or distribution of the Wireless Devices and/or the Wireless
Services. STI shall not be liable for any taxes, including without
limitation income taxes, withholdings, value added, franchise,
gross receipts, sales, use property or similar taxes, duties,
levies, fees, excises or tariffs incurred in connection with the
development, manufacture, sale, or distribution of the Wireless
Devices and/or the Wireless Services. Trace takes full
responsibility for all such taxes, including penalties, interest
and other additions thereon. Trace shall not be liable for any
taxes, including without limitation income taxes, withholdings,
value added, franchise, gross receipts, sales, use property or
similar taxes, duties, levies, fees, excises or tariffs reasonably
determined by STI to be due with respect to the license to Trace of
the Client Software and Server Software hereunder, except to the
extent such taxes, duties, levies, fees, excises or tariffs are
incurred in connection with the development, manufacture, sale, or
distribution of the Wireless Devices and/or the Wireless Services.
STI takes full responsibility for all such taxes, including
penalties, interest and other additions thereon.
(e) Withholding
Taxes . If, after a determination by foreign tax
authorities, any taxes are required to be withheld on payments made
by Trace to STI, Trace may deduct such taxes from the amount owed
STI and pay them to the appropriate taxing authority; provided
however, that Trace shall promptly secure and deliver to STI an
official receipt for any such taxes withheld or other documents
necessary to enable STI to claim a U.S. foreign tax credit, and
further provided that Trace will promptly notify STI of and refund
to STI the full amount of any reimbursements received by Trace for
such taxes. Trace will use commercially reasonable efforts to
ensure that any taxes withheld are minimized to the extent possible
under applicable law. Notwithstanding the foregoing, if Trace
should make any assignment of this Agreement to a foreign entity as
set forth under Section 14(b), then all payments to STI under this
Agreement shall be made by such entity without deduction or offset
for any withholding taxes imposed by foreign tax
authorities.
(f) Reports . Within thirty (30) days after the end of each
month during the term of this Agreement, Trace shall provide STI
with reports of (i) the number of Wireless Devices sold by Trace or
Authorized Distributors during such month, and (ii) the number of
Subscribers who had authorized access to the Wireless Service at
any time during such month.
Trace/STI Amended and Restated License
Agreement
Proprietary and Confidential
-8-
(g) Audit
Rights . Trace shall maintain full and complete records of
distribution of Wireless Devices and the provision of Wireless
Service by Trace, including without limitation copies of the
reports described in Section 5(f), for at least three (3) years
after the termination or expiration of this Agreement. STI shall,
at any time during the period when Trace is obliged to maintain
such records, be entitled to audit such records, as well as the
computers which track access to and usage of the Wireless Service
by Subscribers, upon thirty (30) days written notice, in order to
confirm the accuracy of the reports described in Section 5(f);
provided, that STI may conduct no more than one such audit in any
twelve (12) month period. Any such audit shall be performed at
STI’s expense during normal business hours with a minimum of
two (2) business days advance written notice, and shall be
conducted in such a manner as not to unreasonably interfere with
Trace’s normal business operations; provided, that the cost
of such audit shall be promptly paid by Trace if such audit reveals
an underpayment by Trace of more than five percent (5%) of the
amounts payable by Trace to STI in any twelve (12)-month
period.
6. Intentionally
Left Blank.
7. Support
(a) Warranty
Support . STI shall provide warranty support during the
Warranty Period directly to Trace as set forth in Section
11.
(b) STI Technical
Support to Trace . Subject to payment by Trace of all of the
applicable then-current and mutually agreed upon fees and its
compliance with all other material provisions of this Agreement,
STI will provide to Trace technical support, and those Enhancements
that STI normally provides to others in connection with such
support, all in accordance with the provisions set forth on
Exhibit G .
(c) End User
Support. Trace shall be responsible for all First Level
Technical Support.
8. Proprietary
Rights
(a) Retention of
Ownership . Each party shall retain ownership of its
respective Intellectual Property Rights that (i) its employees have
developed or may in the future develop or (ii) it has acquired or
will acquire in the future from others. *
Confidential material redacted and
filed separately with the Commission **
(b) Cross License
Rights . Trace hereby grants, on behalf of itself and its
Affiliates, to STI an irrevocable, perpetual, non-exclusive,
royalty-free, fully paid-up, worldwide right and license under the
Necessary IP of Trace and its Affiliates to (i) make and have made
the Software, and (ii) use, offer to sell, sell, import and
otherwise dispose of
|
