CONFIDENTIAL PORTIONS OF THIS
DOCUMENT HAVE BEEN REDACTED AND
FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION
EXHIBIT 10.64
GENERAL DYNAMICS
Decision Systems
Software License
Agreement
BETWEEN
General Dynamics Decision
Systems, Inc.
8201 E. McDowell Road
Scottsdale, Arizona 85257
(Hereinafter “Decision Systems”,
“Buyer” or “Licensee”)
AND
InterDigital Communications
Corporation
781 Third Avenue
King of Prussia, Pennsylvania
19406-1409
(Hereinafter “InterDigital”,
“Licensor” or “Seller”)
Contract Number:
680901
This Agreement contains the entire agreement of
the Parties and supersedes any and all prior agreements,
understandings and communications between the Parties related to
the subject matter of this Agreement. No amendment or modification
of this Agreement shall bind either Party unless it is in writing
and is signed by Buyer’s Authorized Contract Representative
and Seller’s Authorized Contract Representative.
IN WITNESS OF THIS AGREEMENT, the parties hereto
have executed this Agreement, through duly authorized officials,
effective upon the last date of signature hereto.
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General
Dynamics Decision Systems, Inc.
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InterDigital
Communications Corporation
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By:
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/s/ Ron Taylor
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By:
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/s/ Howard E. Goldberg
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Name:
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Ron Taylor
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Name:
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Howard E. Goldberg
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Title:
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Vice President & General Manager
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Title:
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President & CEO
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Date:
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12/20/04
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Date:
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December 21, 2004
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Page 1 of 22
SOFTWARE
LICENSE AGREEMENT
This Software License Agreement, including the
Exhibits, Schedules and Appendices attached hereto (collectively,
this “Agreement”) is entered into this 21
st
day of December, 2004
(“Effective Date”), between General Dynamics Decision
Systems Inc., a Delaware corporation, with offices at 8201 E.
McDowell Road, Scottsdale, AZ 85257 (“Licensee”), and
InterDigital Communications Corporation, a Pennsylvania
corporation, with offices located at 781 Third Avenue, King of
Prussia, PA 19406 (“Licensor”). Licensee and Licensor
may each be referred to individually as a “Party” or
collectively as “Parties” to this Agreement.
WHEREAS, General Dynamics Decision Systems has entered
into a U.S. Government contract with Lockheed Martin Missile and
Space Systems Division for the Ground Transport Segment of the
Mobile User Communication System (MUOS) that also includes the
development of user equipment that will operate in conjunction with
the Ground Transport Segment technical solution;
WHEREAS, InterDigital Communications Corporation has
developed a UMTS 3GPP WCDMA communications solution that General
Dynamics Decision Systems desires to license for integration into
the User Equipment;
WHEREAS, InterDigital Communications Corporation is
willing to grant certain rights to its software products to General
Dynamics Decision Systems in consideration of the promises and
payments as hereinafter set forth.
NOW, THEREFORE,
in consideration of the promises and
mutual covenants contained herein and for other good and valuable
consideration, the receipt and sufficiency of which is hereby
mutually acknowledged, the Parties hereto agree as
follows:
1 Definitions
The capitalized terms within this Agreement and
its associated Appendices shall have the following
meanings:
Acceptance
– Means that the Licensed
Software and associated Deliverables meet the acceptance criteria
described within the Statement of Work.
Affiliate
– Means a legal entity that
directly or indirectly through one or more intermediaries controls
a Party, or is controlled by a Party, or is under common control
with a Party. For the purposes of this definition,
“control” shall be understood as the possession,
directly or indirectly, of the power to direct or cause the
direction of the management and policies of a legal entity, whether
through ownership of voting stock, by contract or
otherwise.
Background Intellectual
Property –
Means all Intellectual Property which is either (1) owned or
controlled by the Parties prior to the Effective Date, or (2) owned
or controlled by the Parties contemporaneously with the Effective
Date, but not arising from any services provided or activities
conducted pursuant to this Agreement.
Commercial Off-the-Shelf
(COTS) – Means
any item available or offered for general sale by any third party,
which accomplishes a function required in the execution or support
of the capabilities described in the Statement of Work attached
hereto.
2
Deliverable
– Means Licensor’s
Source Code, documentation, services, training and ancillary items
that will be delivered to Licensee in accordance with this
Agreement.
Delivery
– Means receipt of
Licensor’s Source Code, documentation, services, training and
ancillary items that will be delivered to Licensee in accordance
with this Agreement.
Delivery
Schedule –
Means the delivery schedule attached hereto as Exhibit
A.
Foreground Intellectual
Property –
Means all Intellectual Property that is conceived, or made, or
reduced to a tangible medium of expression during any services
provided or any activities conducted pursuant to this
Agreement.
Intellectual
Property –
Means intellectual property including, but not limited to,
inventions, patents, trademarks, software, copyrights, trade
secrets, know-how, and other similar forms of intangible property
or Proprietary Information.
JTRS
– Mean the Joint Tactical
Radio System program that will provide to government users a family
of software programmable radios designed around a software
communications architecture. For the purposes of this agreement,
JTRS includes the Licensee’s Digital Modular Radio (DMR)
program.
Licensed
Software – [**]
MUOS
– Means Mobile User Objective
System
MUOS Program
– Means the MUOS program as
described by the U.S. Government Solicitation Request No.
N00039-03-R-0023.
Object Code
– Means computer-programming
code in a form not readily perceivable by humans and suitable for
machine execution without the intervening steps of interpretation
or compilation.
Open Source
– Means software generally
available in the public domain for use by any entity, is typically
available for “free”, and does not restrict
Licensee’s rights to the Licensed Software.
Proprietary
Information –
Means information that the Disclosing Party, at the time of
disclosure, identifies in writing or other permanent records as
Proprietary Information by means of a proprietary legend, marking,
stamp, or positive written notice identifying the information to be
proprietary. Permanent records include information stored in
electronic form on disk, tape, or other storage media. Such
electronic information will be adequately marked if a legend
indicating the information is proprietary displays when the
information originally runs on a computer system and when the
information is printed from its data file. In order for information
disclosed orally or visually by a party to this Agreement to be
Proprietary Information protected hereunder, the Disclosing Party
shall identify the information as proprietary at the time of
disclosure and, within thirty (30) days after such
** Material has been omitted and filed
separately with the Commission.
3
visual or oral disclosure, reduce
the subject matter of the disclosure to writing, properly stamped
with the proprietary legend, marking, stamp or other positive
written notice and submit it to the Receiving Party; provided
however, the Disclosing Party may make advance written notification
as to the confidential nature of such oral or visual Proprietary
Information.
Software (SW)
– Means the generally accepted
term understood for computer programming instructions and can apply
to either Source Code or Object Code.
Source Code
– Means computer programming
code in human readable form that is not suitable for machine
execution without the intervening steps of interpretation or
compilation.
Terminal Unit
– Means a MUOS or JTRS
compatible end user terminal device with which Licensor’s
software will be utilized.
Update
– Means a revision, bug fix,
or minor change to the Licensed Software intended to correct errors
or non-conformance with specifications or standards and provided as
a change in the release where the problem/need was
identified.
Upgrade
– Means a new feature or
features (additional functionality) provided in a new release of
the Licensed Software but shall not include any feature identified
as omitted in Appendix D of the SOW.
UMTS
– Means Universal Mobile
Telecommunications System as defined by International
Telecommunications Union (ITU) for Third Generation (3G) mobile
communications.
Verification
– Means confirmation that
Licensor’s software product was tested at Licensor’s
facility in accordance with Licensor’s testing process and
that the software compiles and meets all requirements described in
the SOW.
WCDMA
– Means Wideband Code Division
Multiple Access.
1.1 License
Grant
[**] The proprietary/confidential information
documentation will include a special rights legend setting forth
the aforementioned rights. Notwithstanding anything to the contrary
in this Agreement, neither the Licensee, U.S. Government, nor any
other transferee is granted any right to use, modify, reproduce,
release, perform, display or disclose Licensed Software for any
commercial purposes or the right to authorize others to do so. No
right is granted herein for sales of WCDMA or other wireless
devices of any kind for commercial use including without limitation
sales to operators, resellers or end users.
** Material has been omitted and filed
separately with the Commission.
4
1.2 Statement of Work
(SOW)
The SOW shall govern all technical requirements
of the Deliverables/Milestones, and acceptance of the
Deliverables/Milestones listed in Exhibit A in addition to
describing the ancillary deliverables required by Licensor under
the terms of this Agreement. All Deliverables described within the
SOW, including the Licensed Software, shall be provided in
electronic format. Licensee shall accept or reject each Delivery as
described in Exhibit A and the SOW.
1.3 Updates and
Upgrades
Licensor shall deliver all Updates and Upgrades
during the period of software maintenance as described in Exhibit
B, SOW.
1.3.1 Updates
Licensor shall inform Licensee of
Updates to the Licensed Software between Upgrades and make the
Updates available for Licensee for the period of software
maintenance. Licensee may use Updates when received. Licensor shall
provide Licensee with instructions on installation, testing and use
of the Updates.
Licensor shall conduct a
Verification of each software Update release before it is delivered
to Licensee. If so requested by Licensee, Licensor shall assist
Licensee in Verification of Updates.
1.3.2 Upgrades
Licensor shall deliver Upgrades to
the initial Licensed Software provided to Licensee as described
within Exhibit B, SOW.
Licensor shall document and deliver
to Licensee all Upgrades made to the Licensed Software as specified
in the [**] standard during the period of maintenance described in
the SOW. This shall be documented in product revision information
reports. If so requested by Licensee, Licensor shall assist
Licensee in Verification of Upgrades.
1.4 Points of
Contact
Subject to the provisions of this Agreement,
Licensor shall make available to Licensee resources for product
support in accordance with Section 5.3 of the SOW.
1.5 Intellectual Property
Rights
Licensor, and its Affiliates or their licensors
retain ownership of the Licensed Software including all patents,
copyrights, and other intellectual property rights.
1.5.1 [**]
** Material has been omitted and filed
separately with the Commission.
5
1.5.2 Licensee agrees that (1)
no license, right or interest in any trademark, trade name, or
service mark of Licensor, its Affiliates or its licensors or any
third party is granted under this Agreement; (2) Licensee is not
permitted and shall not remove or destroy any of the Licensed
Software’s proprietary, trademark or copyright legends or
markings and (3) all existing copyright, patent, trademark, or
other intellectual property rights related to the Licensed Software
shall continue to remain the sole property of Licensor and its
Affiliates or their licensors.
1.5.3 The following provisions
will apply with respect to any and all Intellectual Property used
or developed for use by either Party in the performance of this
Agreement.
1.5.3.1 Background Intellectual
Property Ownership
Each Party shall continue to own all
of its respective Background Intellectual Property. No licenses are
granted under such Background Intellectual Property except as may
be expressly granted herein.
1.5.3.2 Foreground Intellectual
Property Ownership
[**]
1.5.3.3 Joint Development
Intellectual Property Ownership
[**]
1.6 Intellectual Property
Indemnity
Notwithstanding anything to the contrary in this
Agreement or elsewhere, Licensor shall not indemnify or defend
Licensee, its Affiliates or customer, the U.S. Government and / or
any other person or entity for any claims against any or all of
them concerning United States or foreign patents, which claims are
asserted against the Licensed Software alone or in combination with
hardware or other software.
1.7 Patent Non-Assertion
Grant
Licensor, on behalf of itself and its
Affiliates, successors and assigns, hereby agrees not to bring any
claim, action or proceeding against Licensee, its Affiliates,
customer (Lockheed Martin), or the U.S. Government (collectively,
“Grantees”) based on patent claims contained within
Licensor’s patents that cover the [**] technology
incorporated in the Licensed Software delivered by Licensor,
directed to a Grantee’s making, using, selling, providing or
otherwise distributing Licensed Software, alone or embedded within
a Terminal Unit, produced for U.S. Government use. Notwithstanding
anything to the contrary in this Agreement, no right is granted
herein (i) for any wireless technology not included in the Licensed
Software, (ii) for sales of WCDMA devices or other wireless devices
for commercial use including, without limitation, sales to
operators, resellers or end users, nor (iii) for features,
functions or methods of operation not included in the Licensed
Software as delivered by Licensor.
1.8 Intellectual Property
Exclusions
[**]
** Material has been omitted and filed
separately with the Commission.
6
1.9 Copyright
Notices
With reference to any backup copies Licensee
makes of the Licensed Software, Licensee agrees to reproduce all
copyright notices, and other restrictive legends, appearing thereon
and to include the same on all copies it makes in whole or in part.
Such copyright notices may appear in any of several forms,
including machine-readable form and Licensee agrees to reproduce
such notice in each form in which it appears, to the extent it is
physically possible to do so.
1.10 Government License
Rights and Access
[**]
1.11 Term and
Termination
1.11.1 Term.
Licensee shall use the Licensed
Software from the date received only for the purposes stated in
Section 1.1 for a period of [**], unless terminated as provided
herein.
1.11.2 Termination
Except where there is an exclusive
remedy under this Agreement either Party may terminate this
Agreement should the other Party breach any material provision of
this Agreement or take any action in derogation of either
Party’s rights to the Licensed Software licensed hereunder
subject to the following provisions.
1.11.2.1 Termination for
Default by Licensor
Licensee may terminate this
Agreement by written notice to Licensor if: (i) Licensor fails to
deliver the Licensed Software within the time specified by this
Agreement or any written extension provided by Licensee and does
not cure the failure within [**] after receipt of written notice
from Licensee specifying the failure; (ii) Licensor fails to
perform any other material provision of this Agreement or fails to
make progress, so as to endanger performance of this Agreement and,
does not cure the failure within [**] after receipt of written
notice from Licensee specifying the failure; or (iii) in the event
Licensor declares bankruptcy, suspends its business operations, or
initiates any reorganization and/or arrangement for the benefit of
its creditors. [**] The rights and remedies provided Licensee in
this clause are in addition to any other right or remedies provided
by law or in equity.
** Material has been omitted and filed
separately with the Commission.
7
1.11.2.2 Termination for
Default by Licensee
If Licensee materially breaches any
provision of this Agreement, including any Appendix or Exhibit,
Licensor may terminate the Agreement upon written notice thereof.
Termination shall be effective upon notice unless such breach is
curable, in which case Licensee shall have a period of [**] from
the date of delivery of written notice to cure such breach. In
addition to any other rights available at law or in equity, in the
event of a Termination for Default, Licensor shall be entitled to
retain all monies previously paid hereunder. Upon termination,
Licensee shall: (i) cease all use of the Licensed Software for any
purpose whatsoever, and (ii) immediately destroy or return to
Licensor all Proprietary Information then in Licensee’s
possession.
1.11.2.3 Termination for
Convenience
If the U. S. Government terminates
for convenience the portion of the MUOS Program that includes
GDDS’s role then Licensee may terminate this Agreement for
its convenience. [**]
2 Warranty
Licensor warrants that the Licensed Software
under normal use shall perform the functions specified in its
documentation (to be developed by Licensor). If the Licensed
Software does not conform to its documentation such that its
functional performance is reasonably affected and Licensor is
notified in writing within [**]. THIS WARRANTY IS EXCLUSIVE AND IN
LIEU OF ALL OTHER WARRANTIES WHETHER STATUTORY, EXPRESS, OR IMPLIED
(INCLUDING ALL WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE).
3 Liability
IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY
SPECIAL, INCIDENTAL, PUNITIVE, INDIRECT OR CONSEQUENTIAL DAMAGES,
(INCLUDING LOSS OF ECONOMIC ADVANTAGE, BUSINESS, PROFITS, DATA OR
INACCURACY OF DATA), IN CONNECTION WITH OR ARISING OUT OF THIS
AGREEMENT OR FROM USE OF LICENSED SOFTWARE, WHETHER OR NOT EITHER
PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES AND
REGARDLESS OF THE FORM OF ACTION OR LEGAL THEORY (WHETHER IN
CONTRACT OR IN TORT, INCLUDING STRICT TORT LIABILITY, OR BASED ON A
WARRANTY) UNDER WHICH THE LIABILITY MAY BE ASSERTED.
4 Schedule and Delivery and
Payment
4.1 Payment/Delivery
Schedule
[**]
** Material has been omitted and filed
separately with the Commission.
8
4.2 Deliveries
Deliverables, price and payments under this
Agreement are set forth in Exhibit A. Licensor shall deliver the
Licensed Software and associated Deliverables to Licensee in
accordance with the Delivery Schedule specified in Exhibit
A.
4.3 Schedule
Remedies
Licensor shall strictly adhere to the Delivery
Schedule specified in Exhibit A. In the event of any anticipated or
actual delay, Licensor shall: (i) promptly notify Licensee in
writing of the reasons for the delay and the actions being taken to
overcome or minimize the delay; and (ii) provide Licensee with a
written recovery schedule within [**] of the missed Milestone.
Licensor shall not deliver Deliverables prior to the scheduled
delivery dates unless authorized by Licensee.
4.4 [**]
[**]
4.5 Place of
Delivery
Deliverables described within this Agreement
shall be delivered F.O.B. (Destination), General Dynamics Decision
Systems, Inc., 8201 E. McDowell Road, Scottsdale, AZ 85257, or as
otherwise mutually agreed to by the parties.
4.6 Payment
Terms
All payments by Licensee will be [**]. At
Licensor’s discretion, late payments may be subject to
intere
