Software Site License Agreement

Exhibit 10.1

2006 SOFTWARE LICENSE AGREEMENT

This 2006 Software License Agreement (the “ Agreement ”) is made and entered into by and between ACCESS Systems Americas, Inc. (previously known as PalmSource, Inc.), a Delaware corporation (and a wholly-owned subsidiary of ACCESS Co., Ltd.) with a place of business located at 1188 East Arques Avenue, Sunnyvale, CA 94085 (“ ASA ”), and Palm, Inc., a Delaware corporation with a place of business located at 950 Maude Avenue, Sunnyvale, CA 94085 (“ Palm ”), and Palm Ireland Investment, a company organized and existing under the laws of The Republic of Ireland and formerly known as Palm Ireland Investment with its registered office at 25-28 North Wall Quay, International Financial Services Centre, Dublin 1, Ireland (“ Palm Ireland ”). This Agreement is executed by the parties on December 5, 2006 (the “ Effective Date ”), and, subject to Section 6.1(b)(iv), is effective as of the Effective Date. As used herein, the term “party” means either of ASA or Palm and “parties” means both ASA and Palm.

RECITALS

A. WHEREAS, ASA, Palm, Palm Ireland and PalmSource Overseas Limited (a company organized and existing under the laws of Cayman Islands, with its registered office at West Wing Building, Harbour Drive, George Town, Grand Cayman, Cayman Islands, British West Indies (“ PalmSource Cayman ”)) (collectively, the “ Original Parties ”) executed a software license agreement (the “ Original Agreement ”) on May 9, 2002, effective as of December 3, 2001 (the Original Effective Date ”).

B WHEREAS, the Original Parties amended and restated the provisions of the Original Agreement by entering into an Amended and Restated Software License Agreement dated June 4, 2003 and effective as of the Original Effective Date (the “ ARSLA ”).

C WHEREAS, the Original Parties amended and restated the provisions of the ARSLA by entering into a Second Amended and Restated Software License Agreement (the “ SARSLA ”) dated May 23, 2005 (the “ SARSLA Execution Date ”) and effective as of the Original Effective Date.

D. WHEREAS, the Original Parties desire to terminate the SARSLA, all under the terms and conditions as set forth herein.

E. WHEREAS, ASA, Palm and Palm Ireland desire to enter into a new software license agreement, all under the terms and conditions as set forth herein.

AGREEMENT

NOW, THEREFORE, in consideration of the mutual promises of the parties, and for other good and valuable consideration, receipt of which is hereby acknowledged, it is agreed by and between the parties as follows:

1. Definitions

1.1 “ Acceptance Criteria ” means the criteria set forth in Exhibit C (Palm Acceptance Criteria).

1.2 “ Acceptance Date ” means the date on which Palm accepts the Deliverables pursuant to Section 6.1(b).

1.3 “ Acceptance Period ” has the meaning set forth in Section 6.1(b)(1).

1.4 “ Affiliate ” means any entity Controlled by, Controlling, or under common Control with an entity where “Control” means possessing directly or indirectly: (a) ownership or control of fifty percent (50%) or more of the voting rights or rights to elect the board or other governing body of such entity; or (b) the power to direct the affairs of such entity.

1.5 “ API ” means the set of documented access methods through which the programmatic services provided by software are made available to licensees and application developers. Such access methods include, without limitation, header files, events, network communications, macro and scripting languages, function calls and library routines.

1.6 “ Authorized Physical Means ” means use of the Garnet Technology on any of the following: (a) the legitimate physical premises of Palm; (b) the legitimate physical premises of a Palm Partner; (c) through such other secure remote access pursuant to Section 14.4 to the Garnet Technology, which shall at all times remain stored and maintained at such premises; (d) outside of the physical premises of Palm in the case of use by Palm (but not a Palm Partner) provided that the Garnet Technology is stored on a password protected system and used in a private, secure location, and any Source Materials are protected by industry-standard encryption technology; or (e) outside of the physical premises of a Palm Partner in the case of use by such Palm Partner solely with respect to the Object Code version of the Garnet Software and provided that the Object Code version of the Garnet Software is stored on a password protected system and used in a private, secure location.

1.7 “ ASA Trademarks ” means the ASA trademarks as set forth in Exhibit H (ASA Trademarks).

1.8 “ Assert ” means to bring an infringement or misappropriation action of any nature before any legal, judicial, arbitration, administrative, executive or other type of body or tribunal that has or claims to have authority to adjudicate such action in whole or in part regarding the use, making, having made, demonstration, selling, offering for sale, importation or other disposition of the product or service that is the subject of the assertion.

1.9 “ Change of Control ” means, with respect to a given entity, any transaction or series of related transactions that constitute: (a) the sale or lease of all or substantially all of an entity’s business or assets; (b) any merger, consolidation, share exchange, recapitalization, business combination or other transaction resulting in the exchange of the outstanding shares of an entity for securities or consideration issued, or caused to be issued, by the acquiring corporation or its subsidiary, unless the stockholders of such entity as of the date prior to the closing date of such transaction (or series of related transactions) hold more than fifty percent

 

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(50%) of the voting securities in the surviving corporation in such transaction computed on a fully diluted basis; or (c) any person having acquired beneficial ownership or the right to acquire beneficial ownership of, or any “group” (as such term is defined under Section 13(d) of the United States Securities Exchange Act of 1934) having been formed that beneficially owns or has the right to acquire beneficial ownership of, fifty percent (50%) or more of the outstanding voting securities of an entity.

1.10 “ Confidential Information ” means that information of any party or any of its Affiliates (“ Disclosing Party ”) which is disclosed to any other party or any of such other party’s Affiliates (“ Receiving Party ”) pursuant to this Agreement in written form and marked “Confidential,” “Proprietary” or similar designation, or if orally disclosed, that information which the Receiving Party should reasonably discern, by an objective examination of the disclosure and the surrounding facts and circumstances, to be confidential in nature. Confidential Information shall include, but not be limited to, trade secrets, know-how, inventions, techniques, processes, algorithms, software programs, schematics, designs, contracts, customer lists, financial information, product plans, sales and marketing plans and business information.

1.11 “ Derivative Work ” means any work of authorship that incorporates or contains modifications to any pre-existing work of authorship, including without limitation any revision, modification, translation (including compilation or recapitulation by computer), abridgement, condensation, expansion, or any other form in which such pre-existing work may be recast, transformed or adapted, and that, if prepared without authorization, would constitute a copyright infringement of such pre-existing work.

1.12 “ Dispute ” means any dispute, controversy or claim between ASA and Licensee in connection with or related to this Agreement.

1.13 “ Garnet Additional Applications ” means, collectively, the Garnet Product Software-specific versions of each of the following software applications previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm: (a) the PS MultiMail Pro/SE Software (as defined in the SARSLA), (b) the PS MultiMail Deluxe Software (as defined in the SARSLA), and (c) the Graffiti Legacy Software (as defined in the SARSLA). The Garnet Additional Applications shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.14 “ Garnet Additional Applications Documentation ” means all documentation for the Garnet Additional Applications previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm. The Garnet Additional Applications Documentation shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.15 “ Garnet Desktop Applications ” means the desktop applications previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm that mirror the functionality of the Garnet Device Applications designed and tested to run on Microsoft Windows. The Garnet Desktop Applications shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

 

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1.16 “ Garnet Desktop Documentation ” means all documentation for the Garnet Desktop Software previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm. The Garnet Desktop Documentation shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.17 “ Garnet Desktop Installation CD Files ” means the artwork, guided tour files, and other files and related elements of the ASA installation CD for the Garnet Product Software, previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm, that contains the files needed to develop and build an installer for the Microsoft Windows version of the Garnet Desktop Applications and Garnet Desktop HotSync Manager and Garnet HotSync Conduits to automate the installation on a desktop computer running a version of Microsoft Windows as its operating system. The Garnet Desktop Installation CD Files shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.18 “ Garnet Desktop HotSync Manager ” means the desktop-based software components for the Garnet Desktop Software, previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm, that expose and utilize the APIs and protocols by which a device can synchronize data and applications with the Garnet Desktop Applications. The Garnet Desktop HotSync Manager shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.19 “ Garnet Desktop Software ” means, collectively, the Garnet Desktop Applications, the Garnet Desktop HotSync Manager, the Garnet HotSync Conduits and the Garnet Desktop Installation CD Files.

1.20 “ Garnet Development Environment ” means the development and debugging tools relating to the Garnet OS Software previously delivered to Palm under the SARSLA (unless otherwise specified in Exhibit A (ASA Deliverables) as being delivered for the first time hereunder) and redelivered under this Agreement as a courtesy to Palm. Licensee may in its sole discretion use certain additional commercially available development tools relating to the Garnet Product Software for implementation; provided that such tools are not licensed under this Agreement and Licensee shall be independently responsible for obtaining any rights for such development tools. The Garnet Development Environment shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.21 “ Garnet Device Applications ” means, collectively, the following device applications, previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm, that are contained in separate ROM components and included in the sample ROM images contained in the Garnet OS Software: Datebook, Address Book,

 

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Memo, ToDo, Calculator, Setup, CardInfo, Dial and Sms Messenger. The Garnet Device Applications shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.22 “ Garnet Device HotSync Manager ” means the device-based software components for the Garnet Product Software, previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm, that expose and utilize the APIs and protocols by which a device can synchronize data and applications with the Garnet Desktop Applications. The Garnet Device HotSync Manager shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.23 “ Garnet Documentation ” means, collectively, the Garnet Additional Applications Documentation, Garnet Desktop Documentation, Garnet End-User Documentation, Garnet Technical Documentation, and Garnet Platform Reference Guide.

1.24 “ Garnet End-User Documentation ” means the end-user documentation kit (in English only), previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm, designed and tested to run on the Microsoft Windows operating system and any additional desktop operating systems supported by the Garnet Product Software. The Garnet End-User Documentation shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.25 “ Garnet HAL/DAL ” means the processor-specific software components, previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm, which abstract a device’s hardware by exposing standard APIs and protocols to that hardware to the Garnet OS Software system and application layers. The Garnet HAL/DAL shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.26 “ Garnet HotSync Conduits ” means the device-based software components for the Garnet Product Software, previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm, that expose and utilize the APIs and protocols by which the device can synchronize data and applications with the Garnet Desktop Applications. The Garnet HotSync Conduits shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.27 “ Garnet OS Compatible Product ” has the meaning set forth in Section 5.1.

1.28 “ Garnet OS Software ” means the ASA proprietary software kernel, system services as identified in the Garnet Technical Documentation, certain debugger and ROM development tools, sets of APIs and other software code (including device drivers) that provide access to the services of the hardware on the device on which such software code is installed and that (a) for version 5.4.0 of Palm OS, were previously delivered to Palm under the SARSLA and are redelivered under this Agreement as a courtesy to Palm, and (b) for certain enhancements to

 

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or modifications of version 5.4.0 of Palm OS, were previously developed for delivery to Palm under the MPSA, are commonly referred to as version 5.4.9 even though they do not constitute a separate release, and are redelivered under this Agreement as a courtesy to Palm. The Garnet OS Software shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.29 “ Garnet Platform Reference Guide ” means documentation that describes the hardware configuration for the reference platform as required by the Garnet Product Software previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm. The Garnet Platform Reference Guide shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.30 “ Garnet Product Software ” means, collectively, the Garnet OS Software, the Garnet Device Applications, the Garnet Device HotSync Manager, the Garnet HAL/DAL, the Garnet Development Environment, the Garnet Additional Applications, and the PRC Tools in each case in Object Code or Source Code form as set forth in Exhibit A (ASA Deliverables).

1.31 “ Garnet ROM Image ” means the frozen, executable binary image containing the final software to be flashed into an embedded ROM memory chip for a Palm Product that (a) includes the executable binary image of the Garnet OS Software, in whole or in part, together with significant value-added software of Licensee; and (b) is specific to a particular model of Palm Product and is not designed for use on any other product.

1.32 “ Garnet ROM Image EULA ” means the ROM Image License Terms attached hereto as Exhibit R (Garnet ROM Image License Terms).

1.33 “ Garnet SDK ” means ASA’s commercially available software development kit, previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm, for the following: the Garnet OS Software, the Garnet Device Applications, the Garnet Device HotSync Manager, and the Garnet HotSync Conduits. The Garnet SDK shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.34 “ Garnet Software ” means, collectively, the Garnet Desktop Software and the Garnet Product Software.

1.35 “ Garnet Technical Documentation ” means any technical documentation, previously delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm, for the Garnet Product Software that is made generally available by ASA to assist its licensees in developing mobile computing, communication or other hardware devices running the Garnet Product Software as the primary operating system. The Garnet Technical Documentation shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.36 “ Garnet Technology ” means, collectively, the Garnet SDK, the Garnet Software and the Garnet Documentation.

 

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1.37 “ Garnet Test Harness ” means the API test harness portion of the Garnet Development Environment that is identified as the Garnet Test Harness in Exhibit A (ASA Deliverables), as of the Effective Date.

1.38 “ Garnet Third-Party Software ” means, collectively, the [**] delivered to Palm under the SARSLA and redelivered under this Agreement as a courtesy to Palm: [**]. The Garnet Third-Party Software shall include those items identified [**] and any additional materials delivered by ASA [**] that meet the foregoing definition.

1.39 “ Header Files ” means the version of the following header files contained in the Garnet Product Software, in each case solely in the form delivered to Licensee by ASA: [**]

1.40 “ Intellectual Property Rights ” means all worldwide: (a) patents, patent applications, and patent rights; (b) rights associated with works of authorship, including copyrights, copyright applications, copyright restrictions, mask work rights, mask work applications, and mask work registrations; (c) rights relating to the protection of trade secrets and confidential information; (d) rights analogous to those set forth herein and any other proprietary rights relating to intangible property; and (e) divisions, continuations, renewals, reissues, and extensions of the foregoing (as applicable) now existing or hereafter filed, issued, or acquired.

1.41 “ Legacy Software ” means version 5.2.x of the PS Product Software (as defined in the SARSLA) in Palm’s possession as of the Effective Date. The Legacy Software shall include those items identified as such in Exhibit A (ASA Deliverables) and any additional materials delivered by ASA under Section 12.1 that meet the foregoing definition.

1.42 “ Licensee ” means, collectively, Palm and, subject to Section 18.8(b), its Subsidiaries.

1.43 “ Licensee Development Kit Agreement ” means the license agreement (which may be in “click-through” form) pursuant to which Licensee makes the Licensee Development Kit available to developers of applications for Palm Products.

1.44 “ Licensee Development Kit ” means Palm’s commercially available software development kit for developers of applications or services for Palm Products.

1.45 “ Licensee Garnet Modifications ” means, except for any HotSync Manager Modification and any Garnet Error Correction, any and all Derivative Works of all or any part of the Garnet Technology made by or for Licensee pursuant to a license set forth in this Agreement that expressly authorizes the development of a Derivative Work.

1.46 “ MPLA ” means that certain Master Patent Ownership and License Agreement by and between Palm and ASA effective as of December 3, 2001.

[**]	Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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1.47 “ MPLA Amendment ” means that certain amendment to the MPLA by and between Palm and ASA effective as of the Operative Date.

1.48 “ MPSA ” means the Master Professional Services Agreement between ASA and Palm effective August 20, 2003.

1.49 “ More Favorable Terms ” means terms in a new agreement or set of new agreements entered into in a single transaction between ASA and a third party where such terms, taken as a whole, are more favorable to such third party than the terms granted to Palm collectively in this Agreement and in the MPLA (as amended by the MPLA Amendment).

1.50 “ New Version ” means a new release of the applicable software for which the number to the left of the decimal point is increased. For example, Garnet Desktop Software version 5.0 would be a New Version following Garnet Desktop Software version 4.x.

1.51 “ Object Code ” means computer programming code in executable binary form.

1.52 “ Open Source Software ” means any software or software component, module or package that (a) requires as a condition of distribution of such software or any derivative thereof or modification thereto, that such software, derivative or modification (i) be disclosed or distributed in Source Code form; (ii) be licensed for the purpose of making derivative works; or (iii) cannot be redistributed under terms inconsistent with those applicable to the rights under which the licensee is entitled to use or modify the original software; or (b) by virtue of containing, being derived in any manner (in whole or in part) from, or statically or dynamically linking to or against any software described in clause (a) of this definition, becomes software that falls under clause (a) of this definition. By means of example and without limitation, any software or software components, modules or packages licensed or distributed under any of the following licenses constitute Open Source Software: the GNU General Public License (GPL) or Lesser General Public License (LGPL), the Artistic License, the Mozilla Public License (MPL), the Common Public License, the Sun Community Source License (SCSL), and the Sun Industry Standards Source License (SISSL).

1.53 “ Operative Date ” has the meaning set forth in Section 7.1(b).

1.54 “ Palm Partner ” means any third party contractor, carrier distribution partner, mobile virtual network operator (MVNO) partner, or channel distribution partner of Licensee.

1.55 “ Palm Powered Logo ” means the mark depicted in Section 1 of Exhibit H (ASA Trademarks) as licensed by ASA to its licensees (including without limitation Licensee) in connection with its licensing of the Garnet Technology, or such successor “ingredient” brand or brands as ASA may elect to license to its licensees in connection with its licensing of the Garnet Technology, which may consist solely of the Palm “medallion” for so long as ASA holds a license to use and sublicense others the right to use the Palm “medallion.”

1.56 “ Palm Product ” means any hardware product that is now or in the future, either designed or created by or for Palm (or any of its Subsidiaries) and distributed by or for Palm (or any of its Subsidiaries).

 

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1.57 “ Permitted Third Party ” means any third party, provided that [**] Permitted Third Party shall exclude [**]

1.58 “ POPM Software ” means all versions of the software commonly referred to by the parties as the PalmSource Optimized Power Management Software (or POPM) that are a part of the Garnet Software.

1.59 “ PRC Tools ” means the Source Code and Object Code forms of the ASA software tools known as PRCInfo and ROMcompare.

1.60 “ Separation Date ” means 12:01 a.m., Pacific Standard Time, December 3, 2001.

1.61 “ Similarly Situated ” means: (a) any company (i) that designs, manufactures, or distributes mobile telephones, PDAs, or handheld computers and (ii) whose distribution of such products, measured in volume of units, is at least seventy-five percent (75%) of the average number of units of Licensee Products (as defined in the SARSLA) distributed by Palm per year in the three-year period immediately prior to the Acceptance Date, when such company’s distribution of such products is measured in the one-year period immediately prior to entering into an agreement or series of agreements in a single transaction pursuant to which ASA grants to such third party a license to the Garnet Technology and a license under all of the patents defined under the MPLA (as amended by the MPLA Amendment) as the PalmSource Patents; [**]

1.62 “ Source Code ” means fully documented human-readable source code form of computer programming code, including programmer’s notes and materials and documentation, sufficient to allow a reasonably skilled programmer to understand the design, logic, structure, functionality, operation and features and to use, operate, maintain, modify, support and diagnose errors.

1.63 “ Source Code Attachment ” means a document executed by the parties that identifies certain Source Code to which Licensee has the rights set forth in the SARSLA.

1.64 “ Source Materials ” means, collectively, (a) the Source Code for any Garnet Technology, (b) Source Code for any Garnet Error Corrections or HotSync Manager Modifications, (c) comments included in any such Source Code, (d) any other technical documentation related to non-public aspects of the Source Code for the Garnet Technology that ASA has provided in writing to any Licensee and that ASA has marked or otherwise clearly identified as “Source Materials” or “Confidential” or with a similar legend, and (e) that any Licensee has obtained through ASA’s PalmSource Licensee Information Portal (“ PLIP ”) website.

[**]	Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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1.65 “ Subsidiary ” means a corporation, partnership, joint venture, or other entity in which a party has at least a fifty percent (50%) economic interest, and where:

(a) at least fifty percent (50%) of such entity’s outstanding shares of securities (representing the right to vote for the election of directors or other managing authority of such entity) are now or hereafter come under the direct or indirect ownership or control of a party; or

(b) such entity does not have outstanding shares of securities, but at least fifty percent (50%) of the ownership interest representing the right to make the decisions for such corporation, partnership, joint venture, or other entity is now or hereafter comes under the direct or indirect ownership or control of a party;

but such corporation, partnership, joint venture, or other entity shall be deemed to be a Subsidiary only so long as such economic interest and such ownership or control exists.

1.66 “ Substantially the Same Scope ” means any license, or set of licenses, which includes licenses to a material portion of the Garnet Technology and a license to substantially all the PalmSource Patents as listed in the MPLA (as amended by the MPLA Amendment), provided that such licenses grant rights at least as broad as those granted to Licensee under this Agreement and the MPLA (as amended by the MPLA Amendment) and subject the licensee to obligations no more restrictive than those imposed on Licensee under this Agreement and the MPLA (as amended by the MPLA Amendment).

1.67 “ Trademark Agreements ” means, collectively, (a) that certain Amended and Restated Trademark License Agreement (“ ASA Trademark License Agreement ”) by and between ASA and Palm Trademark Holding Company, LLC (“ Holding ”), (b) that certain Amended and Restated Trademark License Agreement by and between Licensee and Holding (“ Licensee Trademark License Agreement ”) and (c) that certain Purchase Agreement among Licensee, ASA and Holding (“ Purchase Agreement ”), each agreement executed as of the SARSLA Execution Date.

1.68 “ Update ” means a new release of the applicable software or other deliverable provided hereunder consisting of a bug fix, workaround, or patch to correct any reproducible error in such software for which the number to the right of the second decimal point is increased.

1.69 “ Upgrade ” means a new release of the applicable software or other deliverable provided hereunder for which, for reason of additional functionality, the number to the right of the decimal point is increased.

2. SARSLA

2.1 SARSLA Termination . The Original Parties hereby agree that, effective on the Operative Date, the SARSLA is and shall be terminated in its entirety without further notice. The date on which the SARSLA terminates shall be referred to in this Agreement as the “ SARSLA Termination Date .” In the event a Final Rejection Notice is delivered to ASA pursuant to Section 6.1(b) (or Palm is deemed to have rejected the Deliverables under such Section), then the SARSLA shall continue in full force in effect without the modifications provided for in this Agreement including without limitation the modifications set forth in Section 2.2.

 

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2.2 SARSLA Survival .

(a) Notwithstanding Section 2.1, the respective rights, obligations and duties of the parties under the following sections of the SARSLA shall survive termination of the SARSLA: Sections 2.3(d), 2.9(e), 5, 6.1, 6.2 (to the extent such right has not been exhausted already as of the SARSLA Termination Date), 6.4, 9.2, 9.8(c), 10, 12, 13, 14, 15, 16.4(a), 16.4(e)(ii), 16.6 and 17; provided, however, that:

(i) subject to Section 7.3, Licensee shall have no royalty payment obligation with respect to shipments of Licensee Products (as defined in the SARSLA) after December 2, 2006 including, without limitation, any obligation to make any minimum payments set forth in the SARSLA; and

(ii) with respect to Section 16.4(e)(ii) of the SARSLA, ASA shall have no obligation to provide Licensee with maintenance, technical or other support during the Wind-Down Period.

(b) Palm shall be required to make all payments required under the SARSLA through and including the last day of the Contract Year that began on December 3, 2005, including payments for royalties, support and maintenance, source code access, and Java minimum payments.

(c) Notwithstanding Section 2.1 and solely with respect to Legacy Products (as defined in this Section), the respective rights, obligations and duties of the parties under Section 16.4(e)(ii) of the SARSLA shall survive termination of the SARSLA; provided, however, that (i) the [**] shall be[**]; (ii) for [**] Licensee shall [**] and (iii) Licensee shall [**] As used herein, a “ Legacy Product ” means any Licensee Product (as defined in the SARSLA) set forth on Exhibit D (Legacy Products).

(d) Notwithstanding anything herein or in the SARSLA to the contrary, [**] Licensee retains its rights to use Source Code provided under such Source Code Attachments in accordance with the SARSLA and the applicable Source Code Attachment, and each party’s rights in any Derivative Works of such Source Code made under such Source Code Attachments shall be as set forth in Section 10 (Proprietary Rights) of the SARSLA and in the respective Source Code Attachments. Set forth in Exhibit P (Obligations Under Source Code Attachments) is a list of the Source Code Attachments to the SARSLA indicating that Palm has complied with its delivery obligations thereunder.

[**]	Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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(e) Notwithstanding anything herein or in the SARSLA to the contrary, in no event shall the covenant not to assert set forth in Section 10.6(c) of the SARSLA apply to any Intellectual Property Rights of Licensee arising out of Licensee’s exercise of the rights and licenses granted to Licensee herein. For the avoidance of doubt, any Derivative Works of the Garnet Technology made by or for Licensee after the Operative Date shall be deemed to have been made pursuant to Licensee’s exercise of the rights and licenses granted to Licensee under this Agreement and not under the SARSLA regardless of whether such Garnet Technology may have been licensed to Licensee under the SARSLA.

3. Garnet Technology

3.1 Garnet Product Software .

(a) License . ASA hereby grants to Licensee a royalty-free, fully paid-up, worldwide, non-exclusive, perpetual, irrevocable (subject only to ASA’s rights in Section 17.2), non-sublicensable (except to the extent necessary for Palm Partners to exercise Licensee’s rights pursuant to Section 3.1(b)), non-transferable (except as permitted under Section 18.8) license under ASA’s Intellectual Property Rights embodied in the Garnet Product Software to:

(i) use the Garnet Product Software and create Derivative Works of the Garnet Product Software, in whole or in part, solely through Authorized Physical Means, to have made by any Palm Partner, or use or make any Palm Product;

(ii) sell, offer for sale, or import any Palm Product used, made or had made pursuant to Section 3.1(a)(i);

(iii) use, reproduce, and create Derivative Works of the Garnet Product Software, in whole or in part, solely through Authorized Physical Means, to (A) develop, build and test new versions of the Garnet Product Software, (B) develop, build and test any Palm Product that will include or use, in whole or in part, any Garnet Technology, and (C) develop or provide any services related to Palm Products;

(iv) distribute the Garnet Product Software (other than the Garnet Development Environment and PRC Tools), including new instances thereof, in whole or in part, and Derivative Works thereof, in each case in Object Code form and either bundled with any Palm Product or on a standalone basis for customer installation on or use with any Palm Product and pursuant to an end user license agreement containing terms consistent with and at least as protective of the Garnet Product Software as are the terms set forth in Exhibit G (Minimum Terms and Conditions of End User License); and

(v) make, have made, use, reproduce, and distribute the Garnet ROM Image to third party developers or Palm Partners, solely for the purpose of having such third party developers or Palm Partners develop or provide software products or services for use in or with Palm Products or other third party products designed to operate on or with a version of Garnet Technology to the extent permitted under Section 3.1(c).

(b) Palm Partners . Licensee shall have the right to authorize any Palm Partner to exercise Licensee’s rights set forth in Sections 3.1(a), 3.2(a), 3.2(b)(A), 3.2(b)(B) (provided,

 

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however, that in no event shall a Palm Partner be authorized to distribute any Modified Garnet SDK), 3.3, 3.4(a), 3.4(b) and 3.5 solely in support of Licensee’s business. Prior to granting any authorization under this Section 3.1(b) to any of the entities listed on Exhibit Q (Restricted Contractors), Licensee shall be required to obtain the prior written approval of ASA (such agreement not to be unreasonably withheld). From time to time, pursuant to the mutual written agreement of ASA and Palm (such agreement not to be unreasonably withheld), entities specified on Exhibit Q (Restricted Contractors) may be removed and entities not specified on Exhibit Q (Restricted Contractors) may be added.

(c) Garnet ROM Image Restrictions . The following restrictions shall apply with respect to the exercise by Licensee of its rights under Section 3.1(a)(v):

(i) Licensee shall have the right to distribute copies of the Garnet ROM Image solely for use by third party developers (including Palm Partners) in developing or providing software products or services for use in or with Palm Products or other third party products designed to operate on or with a version of Garnet Technology, and for no other purpose.

(ii) Each copy of the Garnet ROM Image distributed by Licensee must be distributed subject to the terms of a written agreement, the terms of which shall be consistent with and at least as protective of the Garnet ROM Image as are the terms of the Garnet ROM Image EULA. Licensee shall use commercially reasonable efforts to have the written agreements be valid and enforceable, and shall use commercially reasonable efforts to employ signed written agreements in jurisdictions where Licensee knows click through or other unsigned agreements are not valid and enforceable.

(iii) Licensee shall not permit the distribution or re-distribution of any Garnet ROM Image by any third party, including, but not limited to, persons who license such Garnet ROM Image under the terms of a written agreement, the terms of which shall be consistent with and at least as protective of the Garnet ROM Image as are the terms of the Garnet ROM Image EULA.

(d) Header Files Restrictions . Subject to Section 3.2(b), Licensee may distribute Header Files only as part of the Licensee Development Kit pursuant to a Licensee Development Kit Agreement. Licensee may grant its developer licensees a license to use the Header Files solely to develop applications for Palm Products pursuant to a Licensee Development Kit Agreement, provided that any such Licensee Development Kit Agreement shall prohibit the developer licensee from modifying the Header Files or distributing the Header Files in Source Code form.

(e) Garnet Error Corrections . Within five (5) business days after distributing to any third party any error correction of the Garnet Product Software developed by or on behalf of Licensee, Licensee shall deliver such error correction to ASA in Source Code form together with all related documentation (including programmer’s notes) (each such correction and its related documentation, a “ Garnet Error Correction ”). Each Garnet Error Correction shall be owned exclusively by ASA and shall be deemed to be a part of the Garnet Product Software under this Agreement. Licensee will have no obligation to provide ASA with any Licensee

 

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Garnet Modifications and will own all rights to such Licensee Garnet Modifications, subject to ASA’s rights in the underlying Garnet Technology; provided, however, that if Licensee elects to provide any such Licensee Garnet Modifications to ASA, Licensee will grant ASA a license to such Licensee Garnet Modifications that is the same in scope and restrictions as the license granted to Licensee with respect to the Garnet Product Software under this Agreement.

3.2 Garnet SDK .

(a) ASA hereby grants to Licensee a royalty-free, fully paid-up, worldwide, non-exclusive, perpetual, irrevocable (subject only to ASA’s rights in Section 17.2), non-sublicensable (except to the extent necessary for Palm Partners to exercise Licensee’s rights pursuant to Section 3.1(b)), non-transferable (except as permitted under Section 18.8 (Assignment)) license under ASA’s Intellectual Property Rights embodied in the Garnet SDK to use and reproduce the Garnet SDK, solely through Authorized Physical Means, and to distribute the Garnet SDK in Object Code form (except for such header files as are required to use the Object Code form of the Garnet SDK and such sample Source Code as is provided by ASA as part of the Garnet SDK) pursuant to the end user license agreement set forth in Exhibit S (Pass-Through SDK Terms and Conditions). Except as expressly authorized in Section 3.2(b), Licensee shall not make any changes or extensions to the Garnet SDK and shall distribute the Garnet SDK solely in the form provided by ASA to Licensee. Notwithstanding the foregoing, and except as set forth in Section 3.2(b), Licensee shall have the right to publicly distribute new or additional APIs that are proprietary to Licensee to developers through Licensee’s own software development kit.

(b) Licensee will have the right to: [**] in any manner to [**]; [**] pursuant to a written license agreement that: (i) is consistent with and at least as protective [**] as are the terms set forth in Exhibit S (Pass-Through SDK Terms and Conditions); and (ii) [**]. If Licensee becomes aware of [**] Licensee will [**]. If such [**] within a reasonable period, Licensee shall [**] Licensee shall keep and maintain sufficient records to enable Licensee to produce a report that will contain a reasonable amount of information to enable an independent third party auditor selected by ASA and reasonably acceptable to Licensee (the “ SDK Auditor ”) [**] determine: (x) [**]; (y) whether or not [**]; and (z) whether the [**] comply with the provisions of this Section 3.2(b) [**] Any such audit shall be performed during Licensee’s normal business hours, no more frequently than twice per calendar year, and shall be performed in such a manner as to avoid unreasonable interference with Licensee’s business operations. Prior to performing such audit, Licensee shall have the right to require [**] to enter into a written confidentiality agreement with Licensee protecting the confidential information of [**] and Licensee contained [**][**] any information obtained in the course of performing the audit other than the fact that the SDK Auditor has reasonably determined: [**] Should the audit determine that [**] or [**] and either Licensee agrees or the results of the arbitration procedure set forth in Section 7.3(d) confirm that such allocation [**], then Licensee shall bear the expense of such

 

[**]	Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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audit and immediately [**] ASA will [**] and Licensee will [**] Upon the written request of ASA, Licensee will confirm [**] or deny whether [**]. Licensee will use commercially reasonable efforts to reserve the right to make such a disclosure [**]

(c) Except as expressly authorized under Section 3.2(b), in no event may [**] for the Garnet Product Software.

3.3 Garnet Development Environment License . ASA hereby grants to Licensee a royalty-free, fully paid-up, worldwide, non-exclusive, perpetual, irrevocable (subject only to ASA’s rights in Section 17.2), non-sublicensable (except to the extent necessary for Palm Partners to exercise Licensee’s rights pursuant to Section 3.1(b)), non-transferable (except as permitted under Section 18.8) license under ASA’s Intellectual Property Rights embodied in the Garnet Development Environment to use and reproduce the Garnet Development Environment, solely through Authorized Physical Means, in order to make, develop, manufacture, test, maintain, and support Palm Products that contain, in whole or in part, the Garnet Software.

3.4 Garnet Desktop Software .

(a) License . ASA hereby grants to Licensee a royalty-free, fully paid-up, worldwide, non-exclusive, perpetual, irrevocable (subject only to ASA’s rights in Section 17.2), non-sublicensable (except to the extent necessary for Palm Partners to exercise Licensee’s rights pursuant to Section 3.1(b)) license under ASA’s Intellectual Property Rights embodied in the Garnet Desktop Software to:

(i) distribute the Garnet Desktop Software in Object Code form, in whole or in part, with any Garnet OS Compatible Product pursuant to an end user license agreement containing minimum terms consistent with and at least as protective of the Garnet Desktop Software as are those terms set forth in Exhibit G (Minimum Terms and Conditions of End User License);

(ii) distribute the Garnet Desktop Software in Object Code form, in whole or in part, on a stand-alone basis for customer installation on any hardware for use with any Garnet OS Compatible Product pursuant to an end user license agreement containing minimum terms consistent with and at least as protective of the Garnet Desktop Software as are those terms set forth in Exhibit G (Minimum Terms and Conditions of End User License);

(iii) use the Garnet Desktop Software, in whole or in part, solely through Authorized Physical Means, in connection with providing any related services to end users, operators or other licensees of any Garnet OS Compatible Product; and

(iv) sublicense to enterprise end users (“ Enterprise Customer ”) the right to use and reproduce the Garnet Desktop Software in Object Code form for the internal use

 

[**]	Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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by their personnel who are end users of Garnet OS Compatible Products or are the internal technical support personnel of the Enterprise Customer charged with providing support to the Enterprise Customer for such use or to third parties providing outsourcing services on the Enterprise Customer’s behalf, but in all cases solely pursuant to a signed, written agreement with such Enterprise Customer, with no right to further sublicense (other than to third parties providing outsourcing services on the Enterprise Customer’s behalf and that have executed a written agreement with the Enterprise Customer that complies with the terms of this Section 3.4(a)(iv)); provided that Licensee provides ASA with written notice identifying the Enterprise Customer within one calendar quarter after entering into such an agreement and provided the terms of any such agreement between either Licensee and the Enterprise Customer or the Enterprise Customer and the third party providing such outsourcing services shall be consistent with and at least as protective of the Garnet Desktop Applications as are (i) the terms and conditions Licensee uses for its own software products, and (ii) the minimum terms and conditions set forth in Exhibit T (Minimum Terms and Conditions of Enterprise Site License).

(b) Garnet Desktop HotSync Manager .

(i) ASA hereby grants to Licensee a royalty-free, fully paid-up, worldwide, non-exclusive, perpetual, irrevocable (subject only to ASA’s rights in Section 17.2), non-sublicensable (except to the extent necessary for Palm Partners to exercise Licensee’s rights pursuant to Section 3.1(b))license under ASA’s Intellectual Property Rights embodied in the Garnet Desktop HotSync Manager to use, modify and create Derivative Works of the Source Code for the Garnet Desktop HotSync Manager (each such Derivative Work, a “ HotSync Manager Modification ”), where such use, modification and creation is done solely through Authorized Physical Means, and to distribute HotSync Manager Modifications in Object Code form to end users of Palm Products that incorporate, in whole or in part, the Garnet Product Software, provided that: (i) no HotSync Manager Modification may violate the data compatibility requirements defined in Section 5.3; (ii) Palm will provide to ASA timely reports that summarize Palm’s quality assurance of any HotSync Manager Modification with respect to those data compatibility requirements; and (iii) Palm may require end users of Palm Products that incorporate, in whole or in part, the Garnet Product Software to install the HotSync Manager Modification to ensure that such Palm Product will synchronize with the Garnet Desktop Software. If ASA determines that any HotSync Manager Modification violates the data compatibility requirements defined in Section 5.3, and Palm agrees with ASA’s conclusion in this matter (or the dispute resolution process has concluded that such HotSync Manager Modification violates such data compatibility requirements), Palm shall make all commercially reasonable efforts to develop and implement an error correction to resolve the problem and to provide notification of the correction and make such correction generally available to the public within three (3) months, and where possible provide notification of the availability of such error correction to registered users of affected Palm Products. ASA will own all HotSync Manager Modifications (to which Licensee will have the same license and with respect to which Licensee will be subject to the same restrictions as are contained in this Section 3.4(b)), and Palm will deliver to ASA the Source Code and Object Code for any HotSync Manager Modification within five (5) business days after release thereof to customers or to end users. Palm and ASA may mutually agree to modify the Garnet Desktop Software, for example, to make a non-backward compatible change to the HotSync manager component thereof.

 

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(ii) Licensee will be required to use 7.x as the version number for any HotSync Manager Modification distributed hereunder. If Licensee exhausts the 7.x version number, the parties shall discuss in good faith alternate version numbering requirements for the HotSync Manager Modifications.

(c) Updates to Garnet Desktop Software . ASA acknowledges and agrees that Palm may from time to time request that ASA update the Garnet Desktop Software under mutually agreed upon specifications and timing on a professional services basis. For example, such requests for updates may include a request to modify the Garnet Desktop Software to enable it to operate with new versions of Microsoft Windows. In the event of such a request from Palm, ASA shall negotiate with Palm in good faith the terms and conditions (including timing of performance and specifications for the work) under which ASA would provide such updates to the Garnet Desktop Software and, provided after using commercially reasonable efforts to come to agreement the parties agree upon the scope and timing of such services, ASA will provide such services at the rates previously negotiated with Palm under the MPSA. If the parties identify in any Statement of Work relating to such services that any update to the Garnet Desktop Software developed by ASA is specific to Palm Products and shall not be distributed by ASA to a third party for a specified time period, ASA will not distribute such update to any third party until after the termination of such time period.

(d) Garnet Desktop Software Option . For a period of ten (10) years after the Operative Date, Licensee shall have the right, in exchange for a one-time payment of US $3 Million (payable upon the execution of the Garnet Desktop Source Code License (as defined below) and subject to refund within thirty (30) days of receipt of the Source Code for the Garnet Desktop Software if such Source Code fails to meet the acceptance criteria agreed to by the parties in the Garnet Desktop Source Code License) to receive from ASA the Source Code for the Garnet Desktop Software. If Licensee notifies ASA that it wishes to exercise such option, the parties will negotiate in good faith the terms of a source code license agreement (the “ Garnet Desktop Source Code License ”) that permits Licensee to use the Source Code for the Garnet Desktop Software to the same extent Licensee is authorized to use, and subject to comparable rights, licenses and restrictions (including, without limitation, compatibility obligations) imposed upon Licensee’s use of, the Garnet Technology under the terms of this Agreement.

(e) Mac OS Desktop Software . Licensee shall have the same rights and licenses hereunder with respect to the latest release of the PS Desktop Software (as defined in the SARSLA) available as of the Effective Date for the Macintosh operating system (“ Mac OS Desktop ”) that is in Palm’s possession as of the Effective Date as are granted to Licensee in Section 3.4(a). Licensee acknowledges and agrees that the Mac OS Desktop is provided “AS IS,” and ASA shall have no obligation to re-deliver to Palm the Mac OS Desktop.

3.5 Documentation . ASA hereby grants to Licensee a royalty-free, fully paid-up, worldwide, non-exclusive, perpetual, irrevocable (subject only to ASA’s rights in Section 17.2), non-sublicensable (except to the extent necessary for Palm Partners to exercise Licensee’s rights pursuant to Section 3.1(b)) license: (a) to use, reproduce and create Derivative Works of the Garnet Documentation, solely through Authorized Physical Means, to develop, build and test any Palm Product that will include or use, in whole or in part, any Garnet Technology; (b) to distribute the Garnet End-User Documentation (including localized foreign language versions thereof and other Derivative Works thereof) to the end user of any Palm Product that incorporates all or any portion of the Garnet Product Software or Garnet Desktop Software.

 

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3.6 Garnet Third-Party Software .

(a) Continued Rights . Until midnight PST on the day before the first anniversary of the Acceptance Date (the “ Cut-Off Date ”), Licensee will continue [**] with respect to the Garnet Third-Party Software (and documentation for the Garnet Third-Party Software) subject to the restrictions with respect to the Garnet Third-Party Software (and documentation for the Garnet Third-Party Software) set forth in the SARSLA; [**]. Licensee will (i) reimburse ASA at a rate of US [**] per-unit basis for any fees or royalties payable by ASA to the providers of the Garnet Third-Party Software [**] attributable to the exercise by Licensee of such rights between December 4, 2006 and the Cut-Off Date and (ii) provide to ASA information that is reasonably necessary (but in no event broader than the information Licensee is required to provide under the SARSLA) for ASA to calculate such amounts. Licensee shall [**] as a direct result of [**] and (ii) [**] entered into by or based on [**] provided that Licensee is [**] Attached as Exhibit E (Garnet Third-Party Software) is a list setting forth, to the best of ASA’s knowledge, [**] (provided, however, that ASA will have no obligation to disclose to Licensee any confidential term, [**]). All licenses to software of ACCESS Co., Ltd., whether or not such software is delivered as a part of the Garnet Product Software, shall be [**] A complete list of all such software that is customarily delivered as part of the Garnet Technology as provided by ASA to Licensee is attached hereto as Exhibit F (ACCESS Software). [**]

(b) Java Software . Licensee shall at all times adhere to the guidelines for use of the logo known as the “Java Powered Logo” as such guidelines are communicated by ASA to Licensee from time to time. [**]

3.7 Prohibition on Open Sourcing .

(a) At no time during [**] following the Acceptance Date shall ASA sell, offer to sell, license or distribute as Open Source Software all or substantially all of the Garnet Software, or sell, offer to sell, license or distribute as Open Source Software all or substantially all of the Garnet Software code for any feature, functionality, library, module or component of the Garnet Software; provided, however, that ASA shall not be restricted and may from time to time use fragments or lines of code (provided that such fragments or lines of code shall not themselves constitute a material portion of such feature, functionality, library, module or component) of the Garnet Software in building other software, which permitted fragments or lines of code may be sold, offered for sale, licensed or distributed as Open Source Software without restriction.

(b) Subject to Section 3.7(a), during [**] following the Acceptance Date, ASA shall distribute or otherwise disclose the Garnet Software, in whole or in part, solely to

 

[**]	Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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third parties who are subject to written obligations of confidentiality at least as protective of the Garnet Software as are the protections set forth in the ASA technical non-disclosure agreement, a copy of which is attached as Exhibit J (ASA Technical Non-Disclosure Agreement); provided, however, that any such third party shall at a minimum be subject to written obligations of confidentiality with respect to the Garnet Software that are reasonably restrictive.

(c) If ASA breaches the restrictions in Section 3.7(a) or Section 3.7(b), Palm shall be entitled to a one-time payment of [**] as Palm’s sole and exclusive remedy. ASA shall pay such amount to Palm within thirty (30) days of the date on which ASA agrees (or the dispute resolution process has concluded) that ASA has breached the restrictions in Section 3.8(a) or Section 3.8(b). Notwithstanding anything to the contrary herein, in no event will such payment terminate or otherwise affect the licenses granted to Licensee under this Agreement, which licenses shall continue in full force and effect in accordance with their terms.

(d) Licensee will not (i) modify the Garnet Software, nor combine the Garnet Software with any other software, in any manner that would convert a material portion of the Garnet Software into Open Source Software or (ii) convert a material portion of Garnet Software code for any feature, functionality, library, module or component of the Garnet Software as Open Source Software; unless such material portion of the Garnet Software code in (i) above or such material portion of such feature, functionality, library, module or component of the Garnet Software in (ii) above has already been converted into Open Source Software by or for ASA or with ASA’s approval.

(e) Attached as Exhibit K (ASA Open Source Software) is a complete list of any Garnet Software code that ASA believes it may have already used in a manner which would subject such Garnet Software code to the requirements of any Open Source Software license. In no event shall the sale, offering for sale, licensing or other distribution of such Garnet Software code by ASA be deemed to be a violation of Section 3.7(a).

(f) Attached as Exhibit L (Palm Open Source Software) is a complete list of any software Palm incorporates or has incorporated into Palm Products that Palm believes it may have already used in a manner which would subject any Garnet Software code to the requirements of any Open Source Software license. In no event shall the sale, offering for sale, licensing or other distribution of such Garnet Software code by Palm be deemed to be a violation of Section 3.7(d).

3.8 Operation of License . The provisions of the Section 3 shall not become operative until the Operative Date. Until the Operative Date, the sole and exclusive license granted by ASA to Licensee under this Agreement is the license set forth in Section 6.4. For the avoidance of doubt, with respect to a Palm Product, the licenses in this Section 3 granted under ASA’s Intellectual Property Rights shall not apply to any software, hardware or other technology in such Palm Product other than the Garnet Technology and Derivative Works thereof created pursuant to the terms of this Agreement.

 

[**]	Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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4. General Rights and Restrictions

4.1 No Reverse Engineering . Licensee shall not reverse compile, disassemble or otherwise attempt to derive the Source Code to any portion of the Garnet Technology provided by ASA solely in Object Code form. In addition, Licensee shall not authorize any third party to reverse compile, disassemble or otherwise attempt to derive the Source Code to any portion of the Garnet Technology.

4.2 Source Materials . Licensee shall have no right to disclose any Source Materials to any third party except to Palm Partners pursuant to Section 3.1(b), and only if such Palm Partner is bound by non-disclosure obligations at least as protective of ASA as Licensee’s obligations under Section 14.

4.3 Applicability to Open Source Software . Notwithstanding anything herein to the contrary, the restrictions on use, modification, reproduction and distribution do not apply to any portion of the Garnet Technology that is Open Source Software or documentation for Open Source Software. Licensee’s rights and obligations with respect to such Garnet Technology shall be as set forth in the applicable license for such Open Source Software, which shall be identified either in the documentation provided for such Garnet Software or in the header files for such Garnet Software.

4.4 No Other Licenses . Except as specifically set forth in this Agreement, no other licenses are granted by ASA to Licensee or Licensee to ASA, by implication, estoppel or otherwise.

4.5 End-User Licensing . Licensee agrees that: (a) each copy of the Garnet Software distributed by Licensee hereunder to an end user will be accompanied by a copy of Licensee’s standard end user software license; (b) the terms of such license will be drafted so as to apply to the Garnet Software and shall be at least as protective of the Garnet Software as are the terms and conditions Licensee uses for its own software products that are not licensed as Open Source Software; and (c) if such Garnet Software is contained in or is intended for use with a Garnet OS Compatible Product, such license will contain minimum terms consistent with and at least as protective as those terms set forth in Exhibit G (Minimum Terms and Conditions of End User License). Licensee agrees to include in such terms and conditions for use of the Garnet Software outside of the United States any country-specific provisions reasonably needed to comply with the foregoing, and agrees to use its commercially reasonable efforts to enforce the terms and conditions applicable to the Garnet Software contained in such license.

4.6 Breach by Contractors or Subsidiaries . If any Palm Partner or any Subsidiary of Licensee fails to comply with any applicable terms and conditions of this Agreement, Licensee shall be liable for any damages incurred by ASA to the same degree that Licensee would be responsible for such damages if Licensee had breached this Agreement. With respect to Palm Partners and Licensee Subsidiaries, Licensee will enforce the terms and conditions required under this Agreement and will promptly notify the breaching entity of any breach. If a Palm

 

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Partner or Subsidiary of Licensee fails to cure any breach within thirty (30) days after such notice, then Licensee shall terminate the rights granted to such Palm Partner or Licensee Subsidiary under this Agreement unless otherwise agreed by ASA in writing.

4.7 Inspection Rights . Licensee agrees to use all commercially reasonable efforts to secure for itself the right to inspect the books, records and facilities of any Palm Partners that Licensee authorizes under Section 3.1(b) or Permitted Third Parties relating to the manufacture of any Palm Product that contains the Garnet Technology, to ensure the implementation of appropriate security procedures to protect ASA’s Confidential Information. In no case shall Palm secure lesser rights relating to the Garnet Technology than that which Palm secures for any of its own technology. Licensee will exercise such rights in the event of an audit under Section 14.4(d) and will deliver the results of such inspection to the ASA Auditor (as defined in Section 14.4(d)) as part of the Source Materials Use Report (as defined in Section 14.4(d)).

5. Compatibility Testing, Branding & Private Label Products

5.1 Palm Product Compatibility . If any instantiation of an application is capable of using the Garnet Product Software in order to execute, and such instantiation runs on a particular Palm Product using the Garnet Product Software in whole or in part, such Palm Product (each a “ Garnet OS Compatible Product ”) must meet the compatibility requirements as specified below (“ Palm OS API Compatibility ”).

(a) Licensee will be required to use 5.6.x as the version number for any portion of the Garnet Product Software contained in any Garnet OS Compatible Product. In the event Licensee exhausts the 5.6.x version number, the parties shall discuss in good faith alternate version numbering for the portion of the Garnet Product Software contained in any Garnet OS Compatible Product.

(b) Licensee will ensure that Garnet OS Compatible Products pass the Garnet Test Harness, except for: (i) written exceptions that are then in effect; and (ii) agreed upon exceptions as noted in Exhibit M (Exceptions to Palm OS API Certification). All such exceptions will remain in force so long as the licenses granted in this Agreement remain in effect. The parties may propose changes to this requirement, as has been the practice in the past. Such changes will require the written consent of both parties, which neither party will unreasonably withhold. Any new APIs issued by ASA may not be made part of the Garnet Test Harness for compatibility certification purposes without Palm’s prior written consent. The Garnet Test Harness may be changed (other than for the purpose of making routine bug fixes that have no effect on compliance) only by written consent of Palm and ASA.

(c) Licensee will be required to have each Garnet OS Compatible Product certified for Palm OS API Compatibility. However, Licensee will be authorized to self-certify Garnet OS Compatible Products for Palm OS API Compatibility provided that it does so in good faith and provides copies of the test results to ASA promptly after completion. ASA has the right to confirm any such self-certification; provided, however, that Licensee shall not have any obligation to delay shipment of any Garnet OS Compatible Product pending completion by ASA of any such confirmation. Licensee will provide ASA with all necessary hardware and software (in Object Code only) to confirm such self-certifications. With respect to any Garnet OS

 

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Compatible Product that is provided to any carrier, Licensee shall perform such self-certification, and will deliver the results of such self-certification to ASA, prior to Licensee providing such Garnet OS Compatible Product to the carrier for final certification or, if earlier, for commercial distribution.

5.2 Remedial Plans for Palm Products .

(a) Smartphones . If any Garnet OS Compatible Product that is a smartphone fails to pass any compatibility confirmation performed by ASA under Section 5.1(c), and Licensee agrees that such Garnet OS Compatible Product has failed (or the dispute resolution process has concluded that such Garnet OS Compatible Product has failed), Licensee shall be subject to the following:

(i) Licensee shall make all commercially reasonable efforts to develop and implement an error correction to correct the incompatibility prior to Licensee providing such Garnet OS Compatible Product to a carrier for final certification or, if earlier, for commercial distribution; provided, however, that Licensee shall not have any obligation to delay shipment of any Garnet OS Compatible Product pending completion and implementation of such error correction.

(ii) If Licensee is not able to develop and implement an error correction as specified in Section 5.2(a)(i), Licensee shall develop an error correction to correct the incompatibility and shall provide the error correction within six (6) months to the carrier through customary processes for implementation by the carrier. Licensee’s obligations to correct the incompatibility for such Garnet OS Compatible Product shall end with the provision of the correction to the carrier and Licensee’s use of all commercially reasonable efforts to request and persuade the carrier to implement such error correction as promptly as possible.

(iii) Licensee agrees that, in any event, it shall include that correction in the next new product release, where new product is defined as any product which arises from a separate development cycle from the original incompatible product.

(b) Handhelds . If any Garnet OS Compatible Product that is a handheld (but is not a smartphone) fails to pass any compatibility confirmation performed by ASA under Section 5.1(c), and Licensee agrees that such Garnet OS Compatible Product has failed (or the dispute resolution process has concluded that such Garnet OS Compatible Product has failed), Licensee shall be subject to the following:

(i) Licensee shall make all commercially reasonable efforts to develop an error correction to correct the incompatibility and shall provide notification of the error correction and make such correction generally available to the public within three (3) months, and where practical provide notification of the availability of such error correction to registered users of such Garnet OS Compatible Product; provided, however, that Licensee shall not have any obligation to delay shipment of any Garnet OS Compatible Product pending completion and implementation of such error correction.

(ii) Licensee’s obligations to correct the incompatibility for such Garnet OS Compatible Product shall end with the provision of the correction to the general public and, where practical, providing notification of the availability of such error correction to registered users of such Garnet OS Compatible Product.

 

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(iii) Licensee agrees that, in any event, it shall include that correction in the next new product release, where new product is defined as any product which arises from a separate development cycle from the original incompatible product.

(c) Technical Assistance from ASA . If any Garnet OS Compatible Product fails to pass any compatibility confirmation performed by ASA under Section 5.1(c) and Licensee agrees that such Garnet OS Compatible Product has failed (or the dispute resolution process has concluded that such Garnet OS Compatible Product has failed), and Licensee is unable to correct the applicable error after using all commercially reasonable efforts to do so, Licensee may obtain technical assistance from ASA with respect to such incompatibility issue for a fee pursuant to a mutually-agreed professional services agreement. If ASA agrees to perform such professional services, Licensee’s obligations hereunder to correct the incompatibility shall be suspended until the parties either jointly develop a correction or agree that such a correction is infeasible; provided that if ASA develops a practicable, functionally equivalent solution that that is not detrimental to Licensee’s users or business, that can be implemented on a commercially reasonable basis, and Licensee elects not to implement such a solution, Licensee’s obligation hereunder to correct the incompatibility shall no longer be suspended. If ASA does not agree to perform such professional services, or is unable to adequately correct the incompatibility, Licensee shall no longer be obligated to correct such incompatibility.

5.3 Data Compatibility .

(a) In addition to compatibility with the Garnet Test Harness, for any Palm Product which synchronizes PIM data using the HotSync protocol for the Garnet Desktop Software, or which Licensee represents to customers as being compatible with Garnet Desktop Software (each such Palm Product, a “ Desktop-Compatible Product ”), such Desktop-Compatible Product must satisfy the following data compatibility requirements (and no other data compatibility requirements will apply): [**] Notwithstanding the foregoing, the parties acknowledge that exceptions have been granted to this requirement, and agree to the following:

(i) [**]

(ii) [**]

(b) Should any Desktop-Compatible Product with a first commercial ship date that occurs after the first anniversary of the Acceptance Date fail to meet the foregoing data compatibility requirements, and Palm agrees that such Desktop-Compatible Product has failed (or the dispute resolution process has concluded that such Palm Product has failed), then with respect to such Desktop-Compatible Product, Palm shall be subject to the remedial plan described in Section 5.2(b).

 

[**]	Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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5.4 Application Compatibility . The parties will use commercially reasonable efforts to identify in writing, no later than ninety (90) days after the Acceptance Date, no more than twenty (20) applications, which list can change only by mutual agreement, on which the parties will use commercially reasonable efforts to agree to conduct compatibility tests from time to time in the ordinary course as regards major functions, and to share such results in a consultative manner to seek fixes, etc. However, failures of such applications to launch and perform their major functions will not be deemed a compatibility failure for either party for the purposes of this Agreement.

5.5 Branding by Palm .

(a) The parties hereby agree that Exhibit N (Frozen Branding Guidelines) contains a copy of all trademark and branding guidelines (the “ Frozen Branding Guidelines ”) that shall apply to any Garnet OS Compatible Product. The parties agree that Licensee shall be required to use either ASA’s then-current mark, or alternatively, at Licensee’s sole discretion, shall have the right to use the term “Palm OS by ACCESS” to brand and refer to the Garnet Software subject to Licensee’s compliance with the Frozen Branding Guidelines. Any change to the Frozen Branding Guidelines shall be made solely upon the mutual written agreement of the parties, except for changes that are required to comply with changes in applicable law or governmental regulations.

(b) With respect to all Garnet OS Compatible Product for which the Garnet Software provides the primary user interface (“ Stage 1 Garnet Products ”), Licensee shall conform to the Frozen Branding Guidelines.

(c) With respect to all Garnet OS Compatible Product other than Stage 1 Garnet Products, Licensee must comply with the Frozen Branding Guidelines on all splash screens, “Read Me” files, “About” files, copyright and trademark notices, “Help” files, user documentation, web site usage, and marketing collateral, but not on any hardware or packaging.

(d) With respect to all Garnet OS Compatible Products (i.e., whether or not a Stage 1 Garnet Product), ASA shall have the right to require Palm to update any reference to the then-current corporate name of the ASA and/or ACCESS entity that is the licensor of the Garnet Technology (e.g., “Palm OS powered by ACCESS”), which update shall be implemented as soon as reasonably practicable in Palm Products manufactured after Palm receives notice of such update; provided that Licensee shall not be obligated to recall or revise any Palm Products previously manufactured.

(e) ASA shall have the one-time right, at any time up to and including May 23, 2007, to update the graphical treatment of its logo.

(f) Commencing on the Acceptance Date, the Frozen Branding Guidelines will be the only trademark and branding guidelines that apply prospectively to Palm Products that include, in whole or in part, any Garnet Technology and all previous trademark and branding guidelines (including the existing ASA Compatibility Trademark Program document) will no longer apply to such Palm Products.

 

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(g) Notwithstanding the branding requirements set forth in this Section 5.5, Licensee and Palm Partners shall have the right to refer indefinitely to all Palm Products that include, in whole or in part, the Garnet Technology and pass Palm OS API Compatibility as “Palm OS compatible” and “compatible with Palm OS.”

5.6 Compatibility Requirements for Branding by ASA .

(a) Subject to Section 17.4, ASA and its licensees shall have the right to refer indefinitely to any ASA software that passes Palm OS API Compatibility (“ ASA Compatible Software ”) as “Palm OS compatible” and “compatible with Palm OS.”

(b) ASA will ensure that ASA Compatible Software passes the Garnet Test Harness, except for (i) written exceptions that are then in effect; and (ii) agreed upon exceptions as noted in Exhibit M (Exceptions to Palm OS API Certification). All such exceptions will remain in force so long as the licenses granted in this Agreement remain in effect. The parties may propose future changes to this requirement. Such changes will require the written consent of both parties, which neither party will unreasonably withhold.

(c) ASA will be required to have all ASA Compatible Software certified for Palm OS API Compatibility. However, ASA will be authorized to self-certify ASA Compatible Software for Palm OS API Compatibility provided that it does so in good faith. ASA shall provide copies of the test results for any such self-certification to Palm promptly after receipt of any request for such results from Palm.

(d) If any ASA Compatible Software fails to pass such Palm compatibility confirmation, and ASA agrees that such ASA Compatible Software has failed (or the dispute resolution process has concluded that such ASA Compatible Software has failed), ASA shall be subject to the following:

(i) ASA shall make all commercially reasonable efforts to develop an error correction to correct the incompatibility and shall provide notification of the error correction and shall provide such error correction to its licensees of such ASA Compatible Software within three (3) months; provided, however, that ASA shall not have any obligation to delay shipment of any ASA Compatible Software pending completion and implementation of such error correction.

(ii) ASA’s obligations to correct the incompatibility for such ASA Compatible Software shall end with the provision of the correction to such licensees and ASA’s use of all commercially reasonable efforts to request and persuade each such licensee to implement such error correction as promptly as possible.

(iii) ASA agrees that, in any event, it shall include that correction in the next new product release, where new product is defined as the next point release or new version of the product.

 

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(e) Failure of ASA to meet the foregoing obligations to correct incompatibilities with respect to any particular ASA Compatible Software shall result in suspension of ASA’s license to refer to such product as “Palm OS compatible” or “compatible with Palm OS” until such incompatibilities are corrected or a new version of the ASA Compatible Software is released that is compatible.

(f) Except as expressly set forth in this Section 5.6, ASA’s rights with respect to any trademarks, service marks, brands and domain names governed by the Amended and Restated Trademark License Agreement entered into between ASA and Palm Trademark Holding Company, LLC effective as of May 24, 2005 shall be solely as specified under such Amended and Restated Trademark License Agreement.

5.7 Exception to Compatibility and Branding Requirements . For the avoidance of doubt, the parties acknowledge and agree that the compatibility and branding requirements of Sections 5.1 through 5.5 shall not apply to any Palm Product that is not a Garnet OS Compatible Product.

5.8 Compromised Palm Products . Licensee shall not be required to meet the compatibility requirements set forth in this Section 5 in the case of a Palm Product which has been modified, hacked into or otherwise compromised by a third party acting without the authority of Licensee so as to circumvent Licensee’s protections from preventing a particular application from running on such Palm Product.

5.9 Disputes Regarding Compatibility . In the event of any Dispute regarding the compatibility requirements imposed under this Section 5, prior to the commencement of any attempt to resolve the dispute through the dispute resolution procedures specified in Section 18.5, members of the technical staff of the parties will work together in good faith to resolve such Dispute for a period of no more than fifteen (15) days.

5.10 Trademark License to ASA Trademarks .

(a) Subject to the terms and conditions of this Agreement and, so long as any ASA Trademark is a Palm Mark (as such term is defined in the Trademark Agreements), solely in accordance with the Trademark Agreements, ASA hereby grants to Licensee a limited, perpetual, non-exclusive, non-transferable (except as specified in Section 18.8), fully-paid, royalty-free license to use the ASA Trademarks (i) on any Palm Products which incorporate any Garnet Technology (or any Derivative Works thereof), in whole or in part, and that are in compliance with the compatibility and branding provisions set forth in this Section 5 and (ii) in connection with the distribution, promotion, marketing, permitted end user licensing and sale of such Palm Products. Any use by Licensee of the ASA Trademarks in conjunction with the distribution, promotion and marketing of Palm Products shall be in accordance with Section 5.5. The foregoing license shall remain in effect notwithstanding any change by ASA to its branding of the Garnet Technology.

(b) Notwithstanding the foregoing, Licensee shall have exclusive use of the color blue in the Palm Powered Logo, even as to ASA.

 

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(c) Licensee agrees that the overall quality of any Garnet OS Compatible Product (or any Palm Products that contains any portion of the Garnet Technology and in connection with which Licensee uses any ASA Trademark under Section 5.10(a)) and all related advertising, promotional and other related uses of the ASA Trademarks shall be consistent with industry standards, and shall in no event be lower than a reasonable standard of quality. Licensee agrees to provide such assistance as is reasonably necessary to facilitate ASA’s quality control with respect to Garnet OS Compatible Products (or any Palm Products that that contains any portion of the Garnet Technology and in connection with which Licensee uses any ASA Trademark under Section 5.10(a)). ASA shall have the right to receive free samples of all such advertising and promotional materials for such Garnet OS Compatible Products (or any Palm Products that that contains any portion of the Garnet Technology and in connection with which Licensee uses any ASA Trademark under Section 5.10(a)), and up to five (5) royalty-free sample production units of each Garnet OS Compatible Product (or any Palm Products that that contains any portion of the Garnet Technology and in connection with which Licensee uses any ASA Trademark under Section 5.10(a)) and related documentation on which such ASA Trademarks are used to ensure that the quality associated with the ASA Trademarks is maintained. Licensee shall use commercially reasonable efforts to comply with all reasonable requests from ASA to correct any deficiencies with the foregoing requirements in this Section 5.10(c).

5.11 Bluetooth SIG Certification . For any Palm Products which include the PS Bluetooth II Software, Licensee shall be responsible for obtaining certification for such PS Bluetooth II Software under the then current certification criteria promulgated by Bluetooth SIG, Inc., an entity devoted to developing, publishing and promoting the Bluetooth short-range wireless specification, (“ Bluetooth SIG Certification ”). Licensee shall not release any such Palm Produc