Cooperation Agreement - Intel Corp. and Liberate Technologies
This Amended and Restated Cooperation Agreement (the 'Agreement') between Intel
Corporation with an address of 2200 Mission College Blvd. Santa Clara, CA 95052
('lntel') and Liberate Technologies (formerly Network Computer, Inc.) with an
address of 1000 Bridge Parkway, Redwood Shores, CA 94065 ('Liberate') is
effective as of July 1, 1999. This Agreement amends, restates, and supercedes
in its entirety the Cooperation Agreement between Intel and Liberate dated
January 31, 1999.
Intel is developing reference designs for certain computing devices described in
Exhibit A-2. Intel seeks the counsel, advice, and input of Liberate. Intel is
further willing to provide Liberate with certain assistance in the development
of its software as described below. Liberate is developing a reference design
for a computing device described in Exhibit A-2. The parties further wish to
cooperate in the development and promotion of a specification for certain
computing devices described in Exhibit A-2.
Therefore the parties hereby agree as follows:
1.1. Capitalized terms used herein shall have the meanings ascribed to
them in Exhibit A-1.
2. INTEL OBLIGATIONS
2.1. REFERENCE DESIGN DEVELOPMENT: Intel intends to create or have
created certain Reference Designs as described in Exhibit A-2.
The parties intend that these Reference Designs shall provide
alternative designs as mutually agreed so that products could be
built in conformance with certain standards or specifications as
described in Exhibit A-2, subject to Intel's approval.
2.2. MARKETING ASSISTANCE: Intel will consider including Liberate and
OEMs who agree to build products which are fully compliant with
the Intel Reference Design in marketing programs as more fully
described in Exhibit B.
2.3. Intel shall provide to Liberate (i) a reasonable number of units
of prototypes that implement the Intel Reference Design, (ii)
reasonable engineering support to assist Liberate in meeting its
development obligations hereunder, and (ii) a reasonable number of
copies of the necessary software development kit(s) and reasonable
support for the optimizations required in Section 3.1.1.
3. LIBERATE OBLIGATIONS
3.1. LIBERATE SOFTWARE DEVELOPMENT: Liberate's obligations under this
Section 3.1 shall be limited to the twelve (12) man-years
described in Section 6.1 below. Any Liberate obligation under
this Section 3.1 may be fulfilled by Liberate, or an Liberate
contractor that is pre approved in writing by Intel, and that is
bound by confidentiality obligations at least as strict as those
of Section 13.
3.1.1. Optimization of Liberate Software: Liberate shall use
commercially reasonable efforts to develop and optimize the
Liberate Software to be compatible with the Reference
Design and according to Exhibit A, subject to Intel's
obligation under Section 2.1 above. 70 man months will be
charged to the 12 man-year maximum set forth above for the
work under this Section 3.1.1.
3.1.2. Translation and Localization of Liberate Software:
Liberate will translate and localize the Liberate Software
as provided in Section III of Exhibit A. No more than 56
man-months from this Agreement will be charged to the 12
man-year maximum set forth above, and Liberate shall have
no obligation under this Agreement to expend more than 56
man months on such translation and localization,
even if that is insufficient to complete the task.
3.1.3. Other NRE Projects: Liberate and Intel will discuss the
feasibility of certain additional NRE projects described in
Exhibit C. If the parties agree that such projects are
feasible, then the parties will negotiate a statement of
work pursuant to Section 4.4. If the parties do not agree
that Liberate will complete such additional projects, or if
such additional projects do not exhaust the NRE reserved
for this Section 3.1.3, then the parties will negotiate in
good faith to identify and complete other projects using
the NRE reserved for this Section 3.1.3. 18 man-months,
plus any man-months not actually used for the work required
by Section 3.1.2, will be reserved for the work to be done
under this Section 3.1.3.
3.1.4. Liberate Reference Design: Liberate shall designate
sufficient engineering resources to create or have created
a Reference Design as described in Exhibit A-2. Such
Reference Design shall include the features set forth on
Exhibit A and Exhibit A-2. The amount of NRE to be charged
to the 12 man-year maximum for the work to be completed
under this Section 3.1.4 has been included in the man
months reserved for Section 3.1.1.
3.1.5. Prototypes and Other Items: Liberate will provide Intel
with a reasonable number of prototypes based on the
Liberate Reference Design at a price no greater than
Liberate's cost for the prototypes. In addition, Liberate
shall provide a reasonable number of copies of the
necessary hardware and software development kit(s) and
reasonable support for the demonstration, testing,
debugging and support in porting of the Liberate Software
as required by this Agreement.
3.2. REFERENCE DESIGN DEVELOPMENT SUPPORT: Liberate shall designate
reasonable engineering support to assist Intel in Intel's
development of the Intel Reference Design. Liberate shall provide
existing systems, services, and tools which Intel reasonably
requires for its Intel Reference Design development efforts
hereunder, including access to Liberate's internal test
facilities. Liberate shall provide such assistance at no cost to
3.3. REFERENCE DESIGN REVIEW: Liberate shall evaluate draft versions
of the Intel Reference Design and provide timely suggestions for
improvement. Intel shall be free to incorporate Liberate's
suggestions into the Intel Reference Design.
3.4. TRADE SECRETS: Liberate shall not assert any trade secret claim
related to the Intel Reference Design that is incorporated into
the Intel Reference Design as a result of Liberate's suggestions
hereunder or as a result of Liberate's work under Sections 3.2 and
3.3. Intel shall not assert any trade secret claim related to the
Liberate TV Navigator that is incorporated into the Liberate TV
Navigator as a result of Intel's assistance hereunder.
4. MUTUAL OBLIGATIONS
4.1. MARKETING: Intel and Liberate shall participate in joint customer
calls as mutually agreed and Intel shall showcase Liberate
Software publicly in Intel's discretion. Liberate shall showcase
the Intel Reference Design publicly in Liberate's discretion. The
parties shall each assign a marketing manager to implement a joint
marketing program to evangelize the capabilities of the Intel
Reference Design and the Liberate Software. Such marketing
program shall be mutually agreed upon by the parties.
4.2. TRADESHOWS: Intel and Liberate shall participate together at
consumer-oriented trade shows such as Comdex, CES and CeBIT,
provided Intel allocates booth space for Liberate at such trade
shows. Such allocation shall be in Intel's sole discretion but
will not be unreasonably withheld.
4.3. TRADEMARKS: Should Intel or Liberate wish to utilize each
other's respective logos on marketing collateral regarding the
devices described in Exhibit A-2, such party shall request
approval by the other.
4.4. STATEMENTS OF WORK: The parties will work together to complete
statements of work describing the work to be done under this
Agreement. Such statements of work will include detailed
technical information, feature requirements, tools requirements,
and other information necessary to provide a comprehensive
description of the end product. The statements of work will be
completed and provided to Intel by Liberate no later than the
dates listed in the schedule in Exhibit D.
4.5. PROMOTION: Following timely and satisfactory completion of the
Intel Reference Design, both parties agree to consider actively
promoting the Intel Reference Design (including the Liberate
Software) to OEMs and network operators as described in Exhibit B.
5.1. The parties' ownership rights shall be as described in Exhibit E.
6.1. DEVELOPMENT FUNDING: Intel agrees to fund the software team with
the amount set forth in Exhibit F in engineering funds to cover up
to 12 man years of Liberate Software development effort through
6.2. PAYMENT TO INTEL: In consideration of Intel's development funding
hereunder, Liberate agrees to pay to Intel a payment as described
in Exhibit F.
6.3. All Liberate payment obligations under this section 6 shall cease
upon the four year anniversary of the initial commercial shipment
of an implementation of the Reference Design.
6.4. Reports and Payment. Within thirty (30) days following the end of
each calendar quarter, Liberate shall wire transfer the full
amount of payment due with respect to such quarter to an account
specified by Intel. Simultaneously with paying such payments,
Liberate shall submit a report, in a form reasonably acceptable to
Intel, which shall be certified by an authorized representative of
Liberate and which will state, by Liberate Software, the number of
each such product sold or otherwise disposed of during such
quarter, the Net Revenues attributed thereto and the payments due
to Intel thereon.
6.5. Withholding Tax. All payments shall be made free and clear
without deduction for any and all present and future taxes imposed
by any taxing authority. In the event that Liberate is prohibited
by law from making such payments unless such deductions are made
or withheld therefrom, then Liberate shall pay such additional
amounts as are necessary in order that the net amounts received by
Intel, after such deduction or withholding, equal the amounts
which would have been received if such deduction or withholding
had not occurred. Liberate shall promptly furnish Intel with a
copy of an official tax receipt or other appropriate evidence of
any taxes imposed on payments made under this Agreement, including
taxes on any additional amounts paid. In cases involving taxes or
duties imposed by any taxing authority on or with respect to this
Agreement other than (1) taxes referred to above and (2) income
taxes imposed on Intel for payments received from Liberate under
this Agreement, including but not limited to sales and use taxes,
stamp taxes, value added taxes, property taxes, the costs of such
taxes or duties shall be borne by Liberate. In the event that such
taxes or duties are legally imposed initially on Intel or Intel is
later assessed by any taxing authority, then Intel will be
promptly reimbursed by Liberate for such taxes or duties plus any
interest and penalties suffered by Intel. This clause shall
survive the termination of the Agreement.
6.6. Late Payment. Liberate agrees that any payments required under
the terms of this Agreement which are not paid when due will
accrue interest at the prime lending rate established by Citibank,
New York, commencing forty-five (45) days after the due date as
established by this Agreement. The right to collect interest on
such late payments shall be in addition to any other rights that
Intel may have.
6.7. Audit Rights. Liberate agrees to make and to maintain until the
expiration of three (3) years after each payment under this
Agreement is due, sufficient books, records and accounts regarding
Liberate's manufacturing and sales activities in order to
calculate and confirm Liberate's royalty obligations hereunder.
Intel shall have the right not more than once every twelve (12)
months to have an independent certified public accountant
reasonably acceptable to Liberate, examine such books, records and
accounts, upon reasonable notice and during Liberate's normal
business hours, to verify Liberate's reports on the amount of
payments made to Intel under this Agreement. If any such
examination discloses a shortfall or overpayment in the fees due
to Intel hereunder, the appropriate party shall reimburse the
other party for the full amount of such shortfall or overpayment.
Should the audit discover any errors or omissions by Liberate
which result in Liberate underpaying Intel by more than five
percent (5%) of the amounts due with respect to any particular
quarter being audited, Liberate shall reimburse Intel for the
costs of such audit.
7.1. This Agreement does not grant Liberate or Intel any license under
any of the other party's patents, copyrights, trademarks or other
intellectual property rights in any materials provided by such
7.2. The parties shall negotiate in good faith an OEM license agreement
granting Intel the right to distribute the Liberate Software in
conjunction with hardware in conjunction with hardware
implementing the Reference Design. Liberate shall place the
source code for Liberate Software in escrow for Intel's access in
the event of Liberate's bankruptcy, subject to the terms of the
separate escrow agreement dated November 6, 1997.
8. PUBLIC RELATIONS
8.1. Any press releases or announcements by either party related to
this Agreement must be approved by the other party in writing
prior to publication.
9. PROGRAM MANAGEMENT
9.1. Each party will appoint a program manager to serve as the primary
contact for the respective parties. The program managers will
prepare a joint monthly report in order to monitor progress of the
Agreement. Further, quarterly executive reviews will be held
between the two parties.
10. WARRANTY DISCLAIMER
10.1. ALL MATERIALS AND PRODUCTS PROVIDED BY EITHER PARTY TO THE
OTHER HEREUNDER ARE PROVIDED 'AS IS' WITHOUT WARRANTY OF ANY
KIND. EACH PARTY SPECIFICALLY DISCLAIMS IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE AND ANY
WARRANTY AGAINST INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHT
OF ANY THIRD PARTY OR ANY WARRANTY ARISING OUT OF ANY PROPOSAL OR
11. LIMITATION OF LIABILITY
11.1. IN NO EVENT SHALL INTEL OR LIBERATE HAVE ANY LIABILITY TO
THE OTHER PARTY, OR ANY THIRD PARTY, FOR ANY INDIRECT,
SPECULATIVE, CONSEQUENTIAL, INCIDENTAL AND SPECIAL DAMAGES
HEREUNDER INCLUDING WITHOUT LIMITATION, DAMAGES DUE TO LOST
PROFITS, LOSS OF ANTICIPATED USE, OR THE INABILITY TO USE ANY OF
THE MATERIALS PROVIDED BY EITHER PARTY TO THE OTHER HEREUNDER,
UNDER ANY CAUSE OF ACTION OR THEORY OF LIABILITY, AND WHETHER OR
NOT THE OTHER PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGE. THE PARTIES ACKNOWLEDGE THAT THESE LIMITATIONS ON
POTENTIAL LIABILITIES WERE AN ESSENTIAL ELEMENT IN SETTING
CONSIDERATION UNDER THIS AGREEMENT.
12. TERM AND TERMINATION
12.1. Unless otherwise terminated hereunder, this Agreement shall
continue until the four (4) year anniversary of the initial
commercial shipment of an implementation of the Reference Design
by Intel or an Intel licensee. In the event either party breaches
a material term of this Agreement, the other party may terminate
this Agreement upon sixty (60) days written notice to the
breaching party unless such breaching party cures the material
breach set forth in such written notice during the sixty (60) day
period following receipt of such written notice. Sections 1, 3.4,
5, 6, 7.1, 10, 11, 12, 13, and 14 shall survive any termination
or expiration of this Agreement.
13.1. Until any component of the Intel Reference Design is
published by Intel as a final Reference Design, Liberate shall
maintain the Intel Reference Design in confidence with at least
the same degree of care that it uses to protect its own
confidential and proprietary information, but no less than a
reasonable degree of care under the circumstances and will
neither disclose nor copy the Intel Reference Design except as
necessary for its employees with a need to know. Any copies which
are made will be marked 'confidential'. Unless the parties agree
otherwise, this obligation of confidentiality will expire five
(5) years from the date of disclosure to Liberate. Liberate will
not, however, be liable for the disclosure of any information
a) rightfully in the public domain other than by Liberate breach
of a duty:
b) rightfully received from a third party without any obligation
of confidentiality; or
c) rightfully known to Liberate without any limitation on use or
disclosure prior to its receipt from Intel; or
d) independently developed by employees of Liberate without
access to the disclosed information; or
e) rightfully disclosed as required by law.
13.2. Intel shall maintain the Liberate Software in confidence
with at least the same degree of care that it uses to protect its
own confidential and proprietary information, but no less than a
reasonable degree of care under the circumstances and will not
disclose the Liberate Software except as necessary for its
employees with a need to know. Unless the parties agree
otherwise, this obligation of confidentiality will expire five
(5) years from the date of disclosure to Intel. Intel will not,
however, be liable for the disclosure of any information which
a) rightfully in the public domain other than by Intel breach of
b) rightfully received from a third party without any obligation
of confidentiality; or
c) rightfully known to Intel without any limitation on use or
disclosure prior to its receipt from Liberate; or
d) independently developed by employees of Intel without access
to the disclosed information; or
e) rightfully disclosed as required by law.
13.3. Neither party may disclose the content of this Agreement
without the prior written consent of the other party.
14.1. All notices and requests required or made under this
Agreement must be in writing and will be deemed given if
personally delivered, including delivery by overnight messenger,
or if mailed postage prepaid, certified or registered mail to the
addresses listed above or to such other address as may be
noticed. All notices shall be marked to the attention of the
General Counsel of the respective party.
14.2. Nothing in this Agreement will be construed to make us
partners or joint ventures or to make either of us liable for the
obligations, acts, omissions, or activities of the other.
14.3. This Agreement will not restrict either party from
developing, acquiring and marketing any products, services, and
materials that are competitive with the products, services or
materials described herein. Nor shall this Agreement prevent
either party from working with others to develop specifications
or technologies similar to those described herein.
14.4. Any change, modification or waiver to this Agreement must be
in writing and signed by an authorized representative of each
party. Such changes, modifications or waivers cannot be approved
by the project manager.
14.5. This Agreement is the entire agreement between us with
respect to matters contained herein, and supersedes all prior or
contemporaneous agreements and negotiations with respect to those
matters. No waiver of any breach or default shall constitute a
waiver of any subsequent breach or default.
14.6. In the event any material or product provided by either
party hereunder is exported from the United States or
exported/re-exported from a foreign destination by either party,
such party shall ensure that such distribution and
export/re-export is in compliance with all laws, regulations,
orders or other restrictions of the US Export Administration
Regulations. Each party agrees that neither it nor any of its
subsidiaries will export/re-export any such material or products
directly or indirectly to any country for which the United States
government or any agencies thereof requires an export license or
other government approval without first obtaining such license or
14.7. Regardless of which of us may have drafted this Agreement,
no rule of strict construction shall be applied against either of
us. If any provision of this Agreement is determined by a court
to be unenforceable, we will deem the provision to be modified to
the extent necessary to allow it to be enforced to the extent
permitted by law, or if it cannot be modified, the provision will
be severed and deleted from this Agreement, and the remainder of
the Agreement will continue in effect.
14.8. Any claim arising under or relating to this Agreement shall
be governed by the internal substantive laws of the State of
California or federal courts located in California without regard
to principles of conflict of laws.
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14.9. This Agreement may be executed in counterparts, each of
which shall be deemed an original, but both of which together
shall constitute one and the same instrument.
INTEL CORPORATION LIBERATE TECHNOLOGIES
Printed Name Printed Name