AMENDED AND RESTATED STRATEGIC ALLIANCE AGREEMENT

 

                                           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