Exhibit 10.4
SUBSCRIBER EQUIPMENT
TECHNOLOGY AGREEMENT
(Design)
This Subscriber
Equipment Technology Agreement (“AGREEMENT”) is
effective as of September 30, 2002 by and between Motorola Inc., a
Delaware corporation, acting though its Commercial Government
Industrial Solutions Sector, with principal offices located at 1303
East Algonquin Road, Schaumburg, IL 60196 (“MOTOROLA”),
and SE Licensing LLC, a Delaware limited liability company, with
offices located at 1600 Wilson Boulevard, Suite 1000, Arlington, VA
22209 (“SEL”). MOTOROLA and SEL may be referred to
individually as “party” and jointly as the
“parties.”
BACKGROUND
WHEREAS, MOTOROLA has
valuable technology, including but not limited to computer
software, know-how and experience with respect to the design,
manufacture and testing of subscriber equipment that operates on
the Iridium system; and
WHEREAS, MOTOROLA has
been performing certain tasks related to furnishing Iridium
subscriber handset products and accessories to Iridium Satellite
LLC (“ISLLC”) pursuant to Section 5 of the Transition
Services, Products and Asset Agreement (as amended, supplemented or
otherwise modified from time to time, “TRANSITION
AGREEMENT”) dated as of 11 December 2000 and signed by
MOTOROLA, Iridium Holdings LLC and ISLLC; and
WHEREAS, MOTOROLA and
SEL mutually desire to enter into a non-exclusive license agreement
under which MOTOROLA would grant to SEL certain rights in and to
the SUBSCRIBER EQUIPMENT DESIGN INFORMATION defined herein and
based on the terms and conditions set forth herein;
NOW, THEREFORE, in
consideration of the mutual covenants and undertakings set out
herein and other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, MOTOROLA and SEL
agree as follows:
AGREEMENT
ARTICLE I. DEFINITIONS
Capitalized terms used
in this AGREEMENT have the meanings set forth in the Background
section of this AGREEMENT or as defined elsewhere in this
AGREEMENT.
Section 1.1
“AFFILIATE”
means, with respect to any PERSON, a PERSON that, directly or
indirectly is controlled by, controls, or is under common control
with such PERSON. As used in the preceding sentence,
“control” shall mean and include, but not necessarily
be limited to, (i) the ownership of 10% or more of the voting
securities or other voting interests of any PERSON, or (ii) the
possession, directly or indirectly, of the power to direct or cause
the direction of the management and policies of such PERSON,
whether through the ownership of voting securities, by contract or
otherwise.
Section 1.2
“AUTHORIZED
TRANSFEROR” means Gary Dindia, Eric Ravn-Hansen, Dan Strong
or any other MOTOROLA employee designated as an AUTHORIZED
TRANSFEROR in writing to SEL by Robert J. McCall.
Section 1.3
“DUAL MODE
EQUIPMENT” means SUBSCRIBER EQUIPMENT that is operable in
both a satellite communications mode and a terrestrial
communications mode.
Section 1.4
“INTELLECTUAL
PROPERTY CLAIM” means an intellectual property claim against
MOTOROLA or an AFFILIATE of MOTOROLA relating in any way to the
IRIDIUM SYSTEM, the MOTOROLA INTELLECTUAL PROPERTY RIGHTS (as
defined in this AGREEMENT or as defined in the IPR AGREEMENT), the
IRIDIUM TECHNICAL INFORMATION (as defined in the IPR AGREEMENT),
the SUBSCRIBER EQUIPMENT DESIGN INFORMATION, or any other
technology, products or information licensed or provided in
accordance with this AGREEMENT or the IPR AGREEMENT.
Section 1.5
“INTELLECTUAL
PROPERTY RIGHTS” means copyrights, patents (other than design
patents), database rights and trade secret rights, including any
registrations and applications with respect to any of the
foregoing. INTELLECTUAL PROPERTY RIGHTS does not include rights in
design patents, trademarks, trade dress or registerable industrial
designs and the like rights involving trade identity.
Section 1.6
“IPR
AGREEMENT” means the Intellectual Property Rights Agreement
dated 11 December, 2000, entered into by MOTOROLA and
ISLLC.
Section 1.7
“IRIDIUM
SUBSCRIBER EQUIPMENT” means only the Satellite Series Model
9505 version of the L-Band Transceiver (LBT), the Satellite Series
Model 9505 portable unit or the Satellite Series Model 9520 mobile
unit, as applicable.
Section 1.8
“IRIDIUM
SYSTEM” means the completely integrated satellite-based
digitally-switched first generation telecommunication system once
owned by Iridium Operating LLC and acquired by ISLLC as of 11
December 2000. This term includes added spare satellites and
repaired or replaced components of the SPACE SEGMENT, SYSTEM
CONTROL SEGMENT and GATEWAY SEGMENT (as each are defined in the IPR
AGREEMENT). IRIDIUM SYSTEM also includes (i) any upgraded,
enhanced, or additional computer software incorporated into the
SPACE SEGMENT, SYSTEM CONTROL SEGMENT, GATEWAY SEGMENT or other
components of the IRIDIUM SYSTEM other than SUBSCRIBER EQUIPMENT;
(ii) any upgraded, enhanced, or additional hardware components of
the GATEWAY SEGMENT; and (iii) those upgraded, enhanced, or
additional hardware components of the SPACE SEGMENT or the SYSTEM
CONTROL SEGMENT that are not significantly modified from their
original form. IRIDIUM SYSTEM does not include and shall in no
event be interpreted to include (i) any SUBSCRIBER EQUIPMENT, (ii)
a SECOND GENERATION IRIDIUM SYSTEM or any other satellite system;
or (iii) any TERRESTRIAL WIRELESS SYSTEM(S) or any SUBSCRIBER
EQUIPMENT or other equipment for use in connection with any
TERRESTRIAL WIRELESS SYSTEM.
Section 1.9
“MANUFACTURING
LICENSE AGREEMENT” means that certain Subscriber Equipment
Technology Agreement (Manufacturing) dated as of even date
herewith, by and between MOTOROLA and SEL.
Section 1.10
“MOTOROLA
INTELLECTUAL PROPERTY RIGHTS” means the INTELLECTUAL PROPERTY
RIGHTS owned by MOTOROLA arising out of SUBSCRIBER EQUIPMENT DESIGN
INFORMATION. MOTOROLA INTELLECTUAL PROPERTY RIGHTS includes rights
or licenses which MOTOROLA has received from its AFFILIATES and
from unaffiliated third parties, but only to the extent that (i)
such rights or licenses are necessary for the manufacture of
IRIDIUM SUBSCRIBER EQUIPMENT, (ii) MOTOROLA has the right to grant
to SEL rights and licenses under such AFFILIATE’S or third
party’s INTELLECTUAL PROPERTY RIGHTS without cost to MOTOROLA
or, if there is a cost, such cost is paid by SEL, and (iii) SEL has
obtained the necessary
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consents pursuant to
Section 2.7. MOTOROLA INTELLECTUAL PROPERTY RIGHTS specifically
excludes any INTELLECTUAL PROPERTY RIGHTS relating to TERRESTRIAL
WIRELESS SYSTEMS, automotive technologies, two-way radios and
systems, semiconductor manufacturing, semiconductor structures, or
semiconductor manufacturing processes.
Section 1.11
Intentionally
Omitted.
Section 1.12
“PERSON”
means an individual, corporation, partnership, limited liability
company, unincorporated association, trust, joint venture or other
organization or entity, including any nation or government, foreign
or domestic, any state or other political subdivision thereof and
any agency or other entity exercising executive, legislative,
judicial, regulatory or administrative functions of government,
including, without limitation, all taxing authorities.
Section 1.13
“SATELLITE
SUBSCRIBER EQUIPMENT” means, collectively and individually,
IRIDIUM SUBSCRIBER EQUIPMENT and other SUBSCRIBER EQUIPMENT that is
operable on the IRIDIUM SYSTEM. SATELLITE SUBSCRIBER EQUIPMENT
specifically excludes any SUBSCRIBER EQUIPMENT that is operable on
a TERRESTRIAL WIRELESS SYSTEM.
Section 1.14
“SECOND
GENERATION IRIDIUM SYSTEM” means (i) a complete satellite
system that replaces in full the SPACE SEGMENT (as defined in the
IPR AGREEMENT) of the existing, first generation IRIDIUM SYSTEM or
that uses an air interface different from that described in Air
Interface Specification document, SPC-E-0003.SYS; or (ii) a
satellite system that does not completely replace the SPACE SEGMENT
of the existing, first generation IRIDIUM SYSTEM but comprises a
derivative of the existing, first generation IRIDIUM SYSTEM that
includes upgraded or enhanced hardware components that are
significantly modified from their original form.
Section 1.15
“SUBSCRIBER
EQUIPMENT” means, collectively and individually, voice
subscriber terminals (whether or not data capable) and paging
equipment.
Section 1.16
“SUBSCRIBER
EQUIPMENT DESIGN INFORMATION” means TECHNICAL INFORMATION but
only to the extent that such TECHNICAL INFORMATION is: (i) within
MOTOROLA’s possession or control and reasonably available for
transfer; (ii) capable of being provided by MOTOROLA to SEL without
violation of any law or contractual obligation; (iii) capable of
being provided by MOTOROLA to SEL without impeding MOTOROLA’s
rights and licenses to continue to use the same (to the extent
MOTOROLA desires to continue to use the same) and without incurring
any cost to MOTOROLA (or if there is such a cost, such cost is paid
by SEL); and (iv) provided by MOTOROLA to SEL as evidenced by a
distribution letter from an AUTHORIZED TRANSFEROR in substantially
the form attached hereto as Exhibit A-1. Subject to the foregoing,
SUBSCRIBER EQUIPMENT DESIGN INFORMATION shall include the
information and materials identified in Exhibit A-2.
Section 1.17
“TECHNICAL
INFORMATION” means information and material, including
confidential and trade secret information (in whatever form) and
computer software, developed by or on behalf of MOTOROLA’s
Personal Communications Sector or other commercial business units
relating to SATELLITE SUBSCRIBER EQUIPMENT.
Section 1.18
“TERM”
shall have the meaning set forth in Section 7.1.1.
Section 1.19
“TERRESTRIAL
WIRELESS SYSTEM(S)” means any terrestrial wireless
communication system or equipment not incidental to a space-based
commercial satellite communication system and any service provided
using such a system or equipment. For the avoidance of
doubt,
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TERRESTRIAL WIRELESS
SYSTEM(S) specifically includes any equipment compatible with air
interfaces for any of the following terrestrial wireless
communication systems: IS-95 (CDMA), IS-136 (US TDMA), GSM, W-CDMA,
CDMA2000 and iDen and future generations or evolutions of such
systems.
ARTICLE II. GRANTS
Section 2.1
License.
2.1.1
MOTOROLA grants to SEL
a non-exclusive, non-transferable, worldwide license under MOTOROLA
INTELLECTUAL PROPERTY RIGHTS during the TERM to use and modify the
SUBSCRIBER EQUIPMENT DESIGN INFORMATION solely to design, make and
use SATELLITE SUBSCRIBER EQUIPMENT for use solely in connection
with the IRIDIUM SYSTEM. If ISLLC or Iridium Constellation LLC
(“ICLLC”) deploys a SECOND GENERATION IRIDIUM SYSTEM
that is backwards compatible with the SATELLITE SUBSCRIBER
EQUIPMENT designed, made and used pursuant to the license of this
Section 2.1.1, the license of this Section 2.1.1 further includes
the use of such SATELLITE SUBSCRIBER EQUIPMENT solely in connection
with such SECOND GENERATION IRIDIUM SYSTEM.
2.1.2
SEL shall not have the
right to sell, import or otherwise market SATELLITE SUBSCRIBER
EQUIPMENT under this AGREEMENT. Effective upon (a) ISLLC accepting
delivery of and paying in full for all subscriber products
manufactured by or on behalf of MOTOROLA for ISLLC pursuant to the
TRANSITION AGREEMENT (the “PURCHASE COMPLETION DATE”)
and (b) SEL demonstrating an engineering prototype of SATELLITE
SUBSCRIBER EQUIPMENT designed pursuant to the license of Section
2.1.1, such SATELLITE SUBSCRIBER EQUIPMENT shall be deemed to be
“DESIGNED EQUIPMENT” under the MANUFACTURING LICENSE
AGREEMENT and the sale, importation or marketing thereof shall be
governed by the relevant provisions of the MANUFACTURING LICENSE
AGREEMENT.
2.1.3
(1)
MOTOROLA grants to SEL
a non-exclusive, non-transferable worldwide license under MOTOROLA
INTELLECTUAL PROPERTY RIGHTS during the TERM to use and modify the
SUBSCRIBER EQUIPMENT DESIGN INFORMATION solely to modify the
software and firmware contained in IRIDIUM SUBSCRIBER EQUIPMENT
manufactured by or on behalf of MOTOROLA for ISLLC for use solely
in connection with the IRIDIUM SYSTEM and to sell and otherwise
market such modified IRIDIUM SUBSCRIBER EQUIPMENT.
(b)
SEL acknowledges and
agrees that in the event that SEL modifies or has modified any
IRIDIUM SUBSCRIBER EQUIPMENT or any Satellite Series Model 9500
equipment manufactured by or on behalf of MOTOROLA (whether through
modification of or to SUBSCRIBER EQUIPMENT DESIGN INFORMATION or
otherwise), notwithstanding anything herein or in any materials
delivered with the IRIDIUM SUBSCRIBER EQUIPMENT or the Satellite
Series Model 9500 equipment to the contrary, all warranties offered
by MOTOROLA covering such modified IRIDIUM SUBSCRIBER EQUIPMENT or
Satellite Series Model 9500 equipment shall terminate immediately
upon such modification. In furtherance of the foregoing, SEL
covenants and agrees that it will indemnify, defend, protect and
hold harmless MOTOROLA from and against all losses, damages,
liabilities, actions, suits, proceedings, demands, assessments,
adjustments, costs and expenses (including reasonable
attorneys’ fees and expenses of investigation) incurred by
MOTOROLA as a result of or arising from any warranty
claim
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asserted by any PERSON
relating to any modified IRIDIUM SUBSCRIBER EQUIPMENT or modified
Satellite Series Model 9500 equipment.
2.1.4
MOTOROLA grants to SEL
a non-exclusive, non-transferable, worldwide license under MOTOROLA
INTELLECTUAL PROPERTY RIGHTS during the TERM and subject to the
confidentiality provisions herein, to reproduce, modify and prepare
derivative works of documents and software constituting part of the
SUBSCRIBER EQUIPMENT DESIGN INFORMATION solely in connection with
the exercise of the rights granted in Sections 2.1.1, 2.1.2, 2.1.3
and 2.1.5.
2.1.5
MOTOROLA grants to SEL
a non-exclusive, non-transferable, worldwide license under MOTOROLA
INTELLECTUAL PROPERTY RIGHTS during the TERM and subject to the
conditions set forth below, to use and modify the SUBSCRIBER
EQUIPMENT DESIGN INFORMATION solely to design, make and use DUAL
MODE EQUIPMENT for use solely in connection with the IRIDIUM
SYSTEM. If ISLLC or ICLLC deploys a SECOND GENERATION IRIDIUM
SYSTEM that is backwards compatible with the DUAL MODE EQUIPMENT
designed, made and used pursuant to the license of this Section
2.1.5, the license of this Section 2.1.5 further includes the use
of such DUAL MODE EQUIPMENT solely in connection with such SECOND
GENERATION IRIDIUM SYSTEM. SEL shall not have the right to sell,
import or otherwise market DUAL MODE EQUIPMENT under this
AGREEMENT. Effective upon (a) the PURCHASE COMPLETION DATE and (b)
SEL demonstrating an engineering prototype of DUAL MODE EQUIPMENT
designed pursuant to the license of this Section 2.1.5, such DUAL
MODE EQUIPMENT shall be deemed to be “DESIGNED
EQUIPMENT” under the MANUFACTURING LICENSE AGREEMENT and the
sale, importation or marketing thereof shall be governed by the
relevant provisions of the MANUFACTURING LICENSE
AGREEMENT.
(a)
The license of this
Section 2.1.5 is limited to use of the SUBSCRIBER EQUIPMENT DESIGN
INFORMATION (or permitted modifications thereof) solely on the
satellite portion and common interface portions (such as the
display) of such DUAL MODE EQUIPMENT.
(b)
Notwithstanding any
other provision of this AGREEMENT, SEL acknowledges and agrees that
it cannot and will not disclose any SUBSCRIBER EQUIPMENT DESIGN
INFORMATION or other MOTOROLA Confidential Information to any
PERSON (or any employees of any PERSON that is not an individual)
it desires to employ, work with, or contract with for the design,
manufacture, use, sale, importation or marketing of DUAL MODE
EQUIPMENT prior to providing MOTOROLA notice of such PERSON and the
information sought to be disclosed and receiving MOTOROLA’S
written approval to disclose the requested information to the
identified PERSON (and any employees of such PERSON if such PERSON
is not an individual). MOTOROLA, in its sole discretion, has the
right to withhold approval to disclose any or all SUBSCRIBER
EQUIPMENT DESIGN INFORMATION or other MOTOROLA Confidential
Information to any PERSON.
(c)
SEL acknowledges that
the license of this Section 2.1.5 is not a license to MOTOROLA
intellectual property or under MOTOROLA proprietary rights relating
to TERRESTRIAL WIRELESS SYSTEMS and that SEL may require additional
licenses from MOTOROLA or others for the design, manufacture, use,
sale, importation or marketing of DUAL MODE EQUIPMENT.
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Section 2.2
Subject to
MOTOROLA’s prior written approval reasonably exercised and
subject to MOTOROLA’s rights and SEL’s obligations set
forth in Section 2.3, the licenses of Section 2.1 include the right
for SEL (but not for sublicensees, if any) to have made, have
reproduced and have prepared derivative works and the right to
grant sublicenses (of no greater scope than that which is granted
to SEL under this AGREEMENT and with no right to grant further
sublicenses). MOTOROLA may withhold its approval of a potential
sublicensee if in MOTOROLA’s sole discretion MOTOROLA
believes such potential sublicensee to be a direct competitor (or
an affiliate of a direct competitor) of MOTOROLA or any of its
businesses; provided, however, that if a PERSON is a direct
competitor (or an affiliate of a direct competitor) of MOTOROLA
solely as a result of the license granted to MOTOROLA by SEL
pursuant to Section 2.8 below, such PERSON shall not be deemed a
direct competitor (or an affiliate of a direct competitor) of
MOTOROLA for purposes of this Section 2.2. SEL acknowledges and
agrees that MOTOROLA’s withholding of approval of a potential
sublicensee based on such potential sublicensee being a direct
competitor (or an affiliate of a direct competitor) of MOTOROLA is
a reasonable exercise of MOTOROLA’s discretion under this
Section 2.2.
Section 2.3
MOTOROLA expressly
reserves the right to terminate SEL’s right to have made,
have reproduced and have prepared derivative works and SEL’s
right to grant sublicenses immediately with respect to a PERSON
operating thereunder if such PERSON files a lawsuit or commences an
arbitration or oth
