GigaBeam Proprietary and Confidential
XXXXX INDICATES MATERIAL THAT
WAS OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT
WAS REQUESTED. ALL SUCH
OMITTED MATERIAL WAS FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE
COMMISSION.
Exhibit 10.21
AMENDED AND RESTATED
STRATEGIC ALLIANCE AGREEMENT
This
Amended and Restated Strategic Alliance Agreement (the
"Agreement")
is entered into as of the
10th day of December, 2004 ("Effective Date"), by and
between Sophia Wireless Inc.,
a Delaware C-corporation ("Sophia"), and GigaBeam
Corporation, a Delaware
corporation ("GigaBeam").
RECITALS
WHEREAS,
GigaBeam and Sophia have previously executed and entered in
that
certain Strategic Alliance
Agreement, dated February 6, 2004 (the "Strategic
Alliance Agreement"), that
provided for a strategic alliance to enable GigaBeam
to market and distribute a
wireless communications system utilizing a frequency
range of 57 GHz through 100
GHz and incorporating components procured from
Sophia and that certain First
Amendment to the Strategic Alliance Agreement,
dated April 22, 2004 (the
"First Amendment") that clarified certain warrants
issued by GigaBeam to Sophia;
and
WHEREAS,
Sophia and GigaBeam now wish to further amend and restate
the
Strategic Alliance Agreement
to further define the development of technology by
Sophia and the license of
that technology by GigaBeam.
AGREEMENT
NOW,
THEREFORE, in consideration for the parties' mutual covenants
set
forth below, and for other
good and valuable consideration, the parties agree as
follows:
DEFINITIONS
"Product"
means any GigaBeam product incorporating Designed
Product.
"Designed
Product" means any product developed by Sophia as specified
by
GigaBeam in a mutually
agreeable Statement of Work (as hereinafter defined) for
manufacture, license and use
in E-band point-to-point radios deployed by
GigaBeam.
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"Exclusivity" for the Designed Product will be defined in the
negotiated
Statement of Work.
"Intellectual Property Rights" means all past, present, and future
rights
of the following types, which
may exist or be created under the laws of any
jurisdiction in the world:
(i) rights associated with works of authorship,
including exclusive
exploitation rights, copyrights, moral rights, and mask
work
rights; (ii) trademark and
trade name rights and similar rights; (iii) trade
secret rights; (iv) patent
and industrial property rights; (v) other proprietary
rights in Inventions of every
kind and nature; and (vi) rights in or relating to
registrations, renewals,
extensions, combinations, divisions, and reissues of,
and applications for, any of
the rights referred to in clauses (i) through (v)
of this sentence.
"Inventions" means any and all useful ideas, concepts,
methods,
procedures, processes,
improvements, inventions and discoveries, whether or not
patentable, that are (i) in
the case of patentable inventions, conceived in the
course of the performance of
activities conducted in connection with the
development and manufacture
of Designed Product or Products and reduced to
practice either actually or
constructively and (ii) in the case of unpatentable
inventions, conceived and
made or used in the course of the performance of
activities conducted in
connection with the development and manufacture of
Designed Product or Products,
in each case under this Agreement.
"Joint
Invention" means any Invention that (i) is jointly reduced
to
practice (under the patent
laws of the United States) by Sophia and GigaBeam
during any collaborative
meetings or conferences between the Parties regarding
development or improvement of
Designed Product, (ii) is necessary to use in any
Designed Product, and (iii)
relates to any process, procedure, or equipment for
manufacturing any Designed
Product.
"Joint
Technology" means the Joint Inventions and any
Intellectual
Property Rights related
thereto.
"Pre-Existing Technology" means any and all useful ideas,
concepts,
methods, procedures,
processes, improvements, inventions and discoveries,
whether or not patentable,
and any Intellectual Property Rights thereto, that
are owned or controlled by
Sophia or by Gigabeam or Gigabeam's other Alliance
Partners as of the Effective
Date.
1. Responsibilities of
Parties
1.1
Designed Product
Development
1.1.1 From time to time during the term of this Agreement,
the
parties may set forth in writing a description of the
general
functional and technical requirements of certain
Designed
Products that GigaBeam desires for Sophia to develop under
the
terms of this Agreement. For purposes of this Agreement,
any
such document executed specifically indicating that it
is
subject to this Agreement and which is executed by
authorized
representatives of both parties shall be referred to as
a
"Statement of Work" or "SOW" with respect to the
relevant
Designed Product described therein. To the extent that
any
term or condition of a Statement of Work modifies or
conflicts
with this Agreement, the Statement of Work shall take
precedence as it relates to the Designed Product defined
in
that particular Statement of Work. The Parties agree that
the
initial Statement of Work under this Agreement is set forth
in
Exhibit A (the "Initial Statement of Work").
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In consideration for payment by GigaBeam to Sophia of
the
Non-Recurring Engineering/Licensing Fees as contemplated
in
Section 3.1, Sophia will exercise reasonable efforts to
develop Designed Product meeting the technical and
target
delivery schedule requirements set forth in the Initial
Statement of Work.
In addition, Sophia agrees to exercise commercially
reasonable
efforts to develop Designed Products meeting the general
requirements set forth in the applicable Statement of
Work
(i.e. other than the Initial Statement of Work) that may
be
subsequently executed by the parties, for such period(s)
of
time as the parties set forth therein .
1.1.2 Upon completion of any prototypes as contemplated in
the
preceding Section 1.1.1, Sophia will so notify GigaBeam
(the
date of such notice, the "Testing Commencement") and make
a
number of units of such prototype available (in such
quantity
as required by the applicable SOW) for mutual testing by
the
parties for purposes of confirming that such
prototype(s)
conform to the requirements of the applicable SOW in all
material respects. In the event that any such Design
Product
fails to conform in any material respect to such
requirements,
GigaBeam will provide written notice to Sophia
identifying
with specificity the relevant non-conformity, and Sophia
will
thereafter undertake commercially reasonable efforts to
correct such non-conformity within a reasonable time, and
the
parties will repeat such process as appropriate. If,
despite
such commercially reasonable efforts, Sophia is unable
or
fails to cause such Designed Product to conform to the
requirements of the applicable SOW in all material
respects
within the time period identified in such SOW, the
parties
will consult with one another in good faith regarding how
to
proceed.
1.2
[This subsection
reserved.]
1.3
GigaBeam.
GigaBeam shall perform the following duties during the term of
this
Agreement:
1.3.1 GigaBeam will Designate a Chief Technical Officer ("CTO")
and
Vice President or Director of Engineering to provide
consultation regarding all design and development work.
GigaBeam will be responsible for overall decisions with
respect to final design and production of the Product.
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1.3.2 Except as may otherwise be provided in the
applicable
Statement of Work, as between the parties, GigaBeam will
bear
all responsibility for assembly and testing of any
Product,
including the contracting and management of any outsourcing
or
supply channels of any Product or components thereof,
including the Designed Product, and the manufacturing
and
repair of any Product, including the Designed Product.
1.3.3 As between the parties, GigaBeam will bear all
responsibility
for any and all sales, marketing, installation and
after-sales
service of any Product including, but not limited to,
entering
into arrangements with value added resellers,
distributors,
agents, installers and providers of after-sales service.
1.4
Sophia
Sophia will designate a program manager to interface with
GigaBeam's
representatives. The two counterparts will meet and develop
detailed
implementation plans with the following objectives in
mind:
1.4.1 As between the parties, Sophia will bear responsibility
for
development associated with any Designed Product.
1.4.2 Sophia will exercise reasonable efforts to consult in
good
faith with third party companies identified by GigaBeam
to
improve the design, performance, manufacturability and
reduce
the cost of any Designed Product.
1.4.3 For purposes of manufacturing any Designed Product and
for
purposes related to technical support of GigaBeam in the
assembly of Products, Sophia will assist GigaBeam in
transferring the technical design to GigaBeam's contract
manufacturer.
2. [This section
reserved.]
3. Payment
3.1 In
consideration for Sophia's performance of certain
research
and
development related to Designed Product, GigaBeam will
pay
to Sophia all fees identified as "Non Recurring
Expenses/License Fee" in the applicable Statement of
Work,
which fees will be due and payable in accordance with
such
Statement of Work, provided that if the relevant Statement
of
Work fails to state when such payments are due and no
separate
written agreement has been signed with respect thereto,
all
such amounts under any particular Functional
Requirements
Statement shall be due and payable within thirty (30) days
of
the date of Sophia's invoice.
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4. Term and
Termination.
This
Agreement shall be effective as of the Effective Date and
shall
automatically terminate on the third anniversary of the Effective
Date
hereof
unless extended by mutual written agreement of the
parties
provided,
however, that the Agreement may be terminated for any of
the
following
reasons:
a.)
Upon the
occurrence of any material breach by either party of the
terms and conditions of this Agreement and failure to cure
such
material breach within 30 days after receipt of written notice
from
the other party the non-breaching party may, at its
option,
terminate this Agreement upon written notice; provided however
that
the cure period shall
be only 10 days after receipt of notice if the
material breach arises from failure by GigaBeam to pay amounts
due
according to Section 3.
b.)
[This subsection
reserved.]
c.)
Upon the
occurrence of bankruptcy or reorganization under
bankruptcy
laws, cessation of operations, or assignment for the benefit
of
creditors of either party, the other party may terminate
this
Agreement upon written notice.
d.)
This Agreement
may be terminated by mutual written agreement of both
parties to terminate.
Notwithstanding the foregoing, upon the occurrence of a material
breach by
either
Party (the "Breaching Party"), which is not cured within
the
appropriate cure period, or other event giving rise to a right for
either
Party to
terminate this Agreement, without limiting any other rights
or
remedies
available, the Party which is not in material breach
(the
"Non-Breaching Party"), which has the right to terminate this
Agreement
may, at
its option, terminate its own obligations of exclusivity
under
Section 8,
such that Section 8 remains binding against the Breaching
Party
for the
remainder of the term but shall thereafter no longer be
binding
against
the Non-Breaching Party
5. Ownership of
Technology and Intellectual Property
5.1
Ownership of
GigaBeam Technology. Without limiting the obligations
of Section 8, GigaBeam will own and hold all right, title
and
interest in and to (i) all Inventions and Intellectual
Property
Rights, other than Joint Technology or Sophia Technology (as
defined
below), embodied in or practiced by any Product developed
and/or
sold under this Agreement or embodied in or practiced by any
process
or machine in connection with the manufacture of any such
Product,
and (ii) all Inventions and Intellectual Property Rights
therein
(other than
Joint Technology or Sophia Technology) that are derived
from Confidential Information of GigaBeam and (iii) all
Pre-Existing
Technology and derivatives or improvements thereof (all of
the
foregoing, collectively, "GigaBeam Technology"). In the event
that,
by operation of law or otherwise, GigaBeam may not be deemed
the
owner of any GigaBeam Technology, Sophia agrees to assign and
does
hereby assign to GigaBeam all rights or interests, if any,
that
Sophia may have therein, and Sophia agrees to undertake
such
measures as reasonably request to evidence or give effect to
the
foregoing provisions of this Section 5.1, including, by way
of
example, by executing further registrations or documentation
for
such purposes.
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5.2
Ownership of
Joint Technology.
(a) All Joint Technology will be owned jointly by Gigabeam
and
Sophia, and each party will retain full ownership under any
patents
and any trade secret rights therein, with full ownership rights
in
any field and, subject to the licenses granted in Section 5.4
below,
the right to sublicense without the consent of the other
party,
without obligation to account to the other party. The laws of
the
United States with respect to joint ownership of inventions
will
apply in all jurisdictions giving force and effect to
this
Agreement.
(b) The parties will keep written records describing
each
collaborative meeting between the parties and identifying any
Joint
Inventions resulting therefrom. The parties will distribute
such
records to each other at the end of each meeting but in any event
no
later than one month following the meeting, for review by the
other
party. Each such record will be final and binding on the
parties
unless receiving party provides written notice to distributing
party
of its good faith dispute with such written record within 30 days
of
receipt. In the event of any such good faith dispute that
the
parties are unable to resolve, such record will reflect
such
unresolved dispute. All reports created under this Section
5.2(b)
shall be clearly marked as "Confidential" and shall be subject
to
the confidentiality provisions of this Agreement.
5.3
Ownership of
Sophia Technology. Without limiting the obligations of
Section 8, Sophia will own and hold all right, title and interest
in
and to (i) all Inventions and Intellectual Property Rights
(other
than Joint Technology or GigaBeam Technology) embodied in
or
practiced by any Designed Product developed under this
Agreement,
(ii) all Inventions and Intellectual Property Rights therein
that
are derived from Confidential Information of Sophia, and (iii)
all
Pre-Existing Technology and derivatives or improvements thereof
(all
of the foregoing, collectively, "Sophia Technology"). In the
event
that, by operation of law or otherwise, Sophia may not be deemed
the
owner of any Sophia Technology, GigaBeam agrees to assign and
does
hereby assign to Sophia all rights or interests, if any,
that
GigaBeam may have therein, and GigaBeam agrees to undertake
such
measures as Sophia may reasonably request to evidence or give
effect
to the foregoing provisions of this Section 5.3, including, by
way
of example, by executing further registrations or documentation
for
such purposes.
5.4
Licenses to
Joint Inventions.
(a) Sophia hereby grants to GigaBeam, and GigaBeam
hereby
accepts, an exclusive (even as to Sophia) and perpetual,
worldwide,
royalty-free right and license, with the right to sublicense,
under
Sophia's interest in the Joint Technology to exploit the
Joint
Inventions for any purpose in the Exclusivity during and after
the
term of this Agreement. Sophia rese