License and Distribution Agreement - Motorola Inc. and Lynx Real-Time Systems Inc.
LICENSE AND DISTRIBUTION AGREEMENT
This License and Distribution Agreement ("Agreement") is established between
Motorola, Inc., a Delaware corporation, by and through its Commercial,
Government and Industrial Solutions Sector, with offices at 1301 E. Algonquin
Road, Schaumburg, Illinois 60196 ("Motorola") and Lynx Real-Time Systems, Inc.,
a California corporation, with offices at 2239 Samaritan Drive, San Jose,
California 95214 ("Company").
WHEREAS, Motorola is in the business of designing, developing,
manufacturing, selling and licensing communications system equipment and
licensing software for the operation of communications systems on a worldwide
WHEREAS, Company is in the business of manufacturing and distributing
certain software products; and
WHEREAS, Motorola has been licensed under Company's shrink wrap Development
license to develop Company's software to create derivative products which will
be implemented into Motorola's products to create Motorola's radio systems site
WHEREAS, Motorola desires to distribute, on a non-exclusive basis, certain
software, and Company desires to provide software to support Motorola's line of
communication products; and
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
(a) "Confidential Information" means confidential or proprietary data or
information of either party which is disclosed in oral, written,
graphic, machine recognizable, sample or any other form, by one party
to the other party and which is clearly designated or marked as
confidential or proprietary. In order for information disclosed
orally to be considered Confidential Information, it must be
identified as confidential at the time of disclosure and shall be
confirmed in writing by the disclosing party within thirty (30) days
after such disclosure.
(b) "Customer Product" means the radio systems site controller in which
Motorola incorporates Software.
(c) "Customer(s)" means, individually or collectively, as applicable, all
entities, their successors and assigns, in the chain of distribution,
sale and use of Customer Products, including without limitation,
Motorola affiliates, Motorola subsidiaries, Motorola joint ventures,
third party licensees, resellers, agents, representatives,
distributors, system operators and end-users.
(d) "Documentation" means all product technical, and user documentation
and any succeeding changes thereto, including, without limitation,
all specifications as set forth in Company's product manuals;
installation, maintenance, operating and Customer manuals,
instructions and diagnostics; system administrative materials;
configuration guides provided by Company with its standard product.
CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH
THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE
(e) "Exhibits" means the documents attached hereto and incorporated by
this reference, as may be amended from time to time by agreement of
the parties. Exhibits include, without limitation, the following:
Exhibit A --Software License Maintenance Fees
(f) "License Fees" means the net license fees for Software as set forth in
(g) "Modification" means a revision, new function or minor change to the
Products intended to correct errors or non-conformance with
Documentation and provided as a change in the then-current release of
the Customer Products.
(h) "Software Specifications" means the Documentation provided by Company
which accompanies the Software and which provides a technical
description of the Software's functionality.
(i) "Software" means the software (including firmware), in binary form
only solely owned or solely controlled by Company as described on
Exhibit A and all Modifications and future releases thereof. The
parties may mutually agree in writing to amend Exhibit A from time to
(j) "Sale or Selling". All references in this Agreement to the "sale" or
"selling" of products shall mean the granting of a license to use such
Software or Software Copies. All references in this Agreement to the
"purchase" of products shall mean the obtaining of a license to use
2. Invoicing and Payment
(a) Payment. Motorola shall pay fees, if any, and royalties within forty-
five (45) days of the date of invoice. Upon execution of this
Agreement, Company will invoice Motorola for all applicable fees as
defined in Exhibit A. In addition, Company shall invoice Motorola for
additional Licensed Software ordered by Licensee and for any other
amounts due to Company hereunder as such amounts are incurred.
Motorola agrees to pay all such invoices in full per the terms of the
invoice. Any amounts due under any invoice not received by Company
within such period shall be subject to a service charge of one an one
half percent (1-1/2%) per month, or the maximum charge permitted by
law, whichever is less.
(b) Reports. Motorola shall, within thirty (30) days of the end of each
calendar quarter, deliver to Company a report detailing the number of
copies of each Licensed Software made and the number of such copies
distributed by Motorola during the previous calendar quarter, and
setting forth the aggregate royalties due and owing to Company
thereon. A check for the amount of aggregate royalties owed shall
accompany the report. All payments hereunder will be in U.S. Dollars,
without deductions of any kind. Payments made by Motorola under this
Agreement will be non-refundable to Motorola.
(c) Royalty Report Certification. At Company's request, which shall not
be more than once per calendar year, Motorola shall provide a
certification by one of its corporate officers, that they have
reviewed the licenses purchased during the previous period (which
shall be not more than three (3) years) and that the Motorola officer
certifies that to the best of his knowledge, the royalty reports
accurately reflect the number of licenses of the Licensed Software
sold by Motorola and that Motorola has properly paying, or is paying
the royalties to Company in accordance with this Agreement.
(d) The prices set forth in Exhibit A for the Software do not include
applicable sales, use, excise or similar taxes. To the extent Company
is required by law to collect such taxes,
one hundred percent (100%) thereof shall be added to invoices and paid
in full by Motorola, unless Motorola is exempt from such taxes and
furnishes Company with a certificate of exemption therefor.
(i) Company warrants that it is the true and lawful owner or
licensee of the Software licensed hereunder and that it has
clear title to said Software. Company further warrants that it
has full power and authority to license the Software licensed to
Motorola hereunder and to convey all other rights and licenses
granted to Motorola under this Agreement, including any third
party intellectual property rights relating to the Software.
(ii) Company warrants that the Software does not include any key,
code, date, serial number or any other signal or routine that
automatically triggers the shutdown of Software operation.
Company warrants that the Software is free from viruses and
(iii) COMPANY FURTHER WARRANTS THAT, FOR A PERIOD OF NINETY (90)
DAYS FROM THE EFFECTIVE DATE, THE MEDIA ON WHICH THE LICENSED
SOFTWARE IS FURNISHED UNDER NORMAL USE WILL BE FREE FROM
DEFECTS IN MATERIALS AND WORKMANSHIP. COMPANY'S ENTIRE
LIABILITY, AND LICENSEE'S EXCLUSIVE REMEDY, UNDER THIS
WARRANTY WILL BE, AT COMPANY'S OPTION, TO REPLACE THE MEDIA.
EXCEPT FOR THE EXPRESS LIMITED WARRANTIES STATED IN THIS
SECTION, THE LICENSED SOFTWARE IS PROVIDED "AS IS." COMPANY
MAKES NO WARRANTIES OR CONDITIONS, EXPRESS, IMPLIED,
STATUTORY, OR OTHERWISE, AND COMPANY SPECIFICALLY DISCLAIMS
ANY IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE. ANY DEFECTS IN THE LICENSED SOFTWARE
SHALL BE CORRECTED BY COMPANY IN ACCORDANCE WITH THE
SUPPORT AGREEMENT EXECUTED AND IN PLACE BETWEEN THE
PARTIES. COMPANY DOES NOT WARRANT THAT USE OF THE LICENSED
SOFTWARE WILL BE UNINTERRUPTED OR ERROR FREE, WILL MEET
MOTOROLA'S REQUIREMENTS, OR THAT THEY WILL OPERATE WITH THE
COMBINATION OF HARDWARE AND SOFTWARE SELECTED BY
(b) Year 2000 Compliance
Company represents and warrants, in addition to all other
representations and warranties, that until July 31, 2001, the Software
supplied will be: (i) free from any error(s) or defect(s) relating to
date data (including leap year calculations); (ii) will not generate
any invalid and/or incorrect date-related results; and (iii) such date
data will not impair the performance, output or accuracy of Motorola's
systems or products to the extent that Company's Software is
responsible for the performance, output or accuracy of the Motorola
4. Intellectual Property Rights
(a) All patents, copyrights, mask works, circuit layout rights, design
rights, trade secrets and other proprietary rights in the Software and
Company's Confidential Information are and shall remain the exclusive
property of Company or its licensor.
(b) All patents, copyrights, mask works, circuit layout rights, design
rights, trade secrets and other proprietary rights in Motorola's
Confidential Information are and shall remain the exclusive property
of Motorola or its licensors.
(c) Any intellectual property rights resulting from an addition or change
to the Software if made exclusively by Motorola shall be the exclusive
property of Motorola.
5. License Grants
(a) Company grants, under this license, Motorola a perpetual, worldwide,
non-exclusive right to use, distribute, market, sell or sublicense the
Derivative Products, which are embedded in the Customer Product, as
set forth herein. Motorola shall not directly resell or sublicense the
Licensed Software in its entirety to other parties.
(b) Company grants Motorola a perpetual worldwide, non-exclusive right to
grant to others perpetual, worldwide, non-exclusive sublicenses to
use, and copy for backup and archival purposes the Software with
Customer Products provided that such sublicensees agree to be bound by
terms and conditions no less restrictive than those contained herein.
(a) From time to time during the performance of this Agreement, the
parties may deem it necessary to provide each other with Confidential
Information. The parties agree:
(i) To maintain the confidentiality of such Confidential Information
and not disclose same to any third party, except as authorized
by the original disclosing party in writing.
(ii) To restrict disclosure of Confidential Information to employees
and contractors who have a "need to know," provided that a
party's employees and contractors are bound by terms of
nondisclosure no less restrictive than those contained herein.
Such Confidential Information shall be handled with the same
degree of care which the receiving party applies to its own
confidential information but in no event less than reasonable
(iii) To take precautions necessary and appropriate to guard the
confidentiality of Confidential Information, including informing
its employees and contractors who handle such Confidential
Information that it is confidential and not to be disclosed to
(iv) That Confidential Information is and shall at all times remain
the property of the disclosing party. No use of any Confidential
Information is permitted except as otherwise expressly provided
herein and no grant under any proprietary rights is hereby given
or intended, including any license implied or otherwise.
(b) Notwithstanding anything other provisions of this Agreement,
Confidential Information shall not include any information that:
(i) Is or becomes publicly known through no wrongful act of the
receiving party; or
(ii) Is, at the time of disclosure under this Agreement, already
known to the receiving party without restriction or disclosure;
(iii) Is, or subsequently becomes, rightfully and without breach of
this Agreement, in the receiving party's possession without any
obligation restricting disclosure; or
(iv) Is independently developed by the receiving party without breach
of this Agreement; or
(v) Is explicitly approved for release by written authorization of
the disclosing party; or
(vi) Is required to be disclosed pursuant to court order or order of
governmental authority, provided that the receiving party shall
use reasonable efforts to provide the disclosing party advance
notice of any such disclosure and to permit the disclosing party
to intervene in any relevant proceedings to protect the
disclosing party's interests.
(c) The receiving party acknowledges that Confidential Information may
contain information that is proprietary and valuable to the disclosing
party and that unauthorized dissemination or use of the Confidential
Information may cause irreparable harm to the disclosing party.
Therefore, the receiving party shall take appropriate action, by
instruction, agreement or otherwise, with any employee or contractor
permitted access to the Confidential Information so as to enable it to
hold the Confidential Information in confidence or otherwise satisfy
its obligations under this Agreement.
(d) Each party's obligations under this Agreement to keep confidential and
restrict use of the other party's Confidential Information shall
survive the expiration or termination of this Agreement for a period
of three (3) years.
(e) Except as may be required by applicable law, neither party shall
disclose to any third party the contents of this Agreement or any
amendments hereto without the prior written consent of the other
(f) Company acknowledges that Motorola and/or third party software vendors
are, or may be developing, software applications similar in
functionality to those developed hereunder by Company. Company agrees
that the receipt of Confidential Information by Motorola from Company
shall in no way prohibit Motorola and/or third party software vendors
from developing such applications, provided that the provisions of
this Section 8 regarding the ownership, protection and security of
Company's Confidential Information have not been breached.
7. Limitation of Liability and General Indemnity
(a) IN NO EVENT SHALL EITHER MOTOROLA OR COMPANY, WHETHER AS A RESULT OF
BREACH OF CONTRACT, TORT (INCLUDING NEGLIGENCE) OR OTHERWiSE, HAVE ANY
LIABILITY TO EACH OTHER OR ANY THIRD PARTY FOR ANY INDIRECT, SPECIAL,
INCIDENTAL OR CONSEQUENTIAL DAMAGES.
(b) Company and Motorola agree to indemnify and hold harmless the other
from any and all claims, damages, expenses, suits, losses or liability
for any death, injury, damage caused by, or arising from or connected
with this Agreement due to or occasioned by the other party, its
officers, employees, agents or representatives.
(a) Right to Terminate. Motorola may terminate this Agreement upon written
notice to the Company if:
(i) The Company breaches a material obligation under this Agreement
and such breach continues uncured for a period of thirty (30)
days after notice or, if the breach is not one which is capable
of being cured within thirty (30) days and the Company has
commenced to cure the breach within such time and continues to
do so diligently and in good faith, then the Company shall be
granted an extension for a reasonable period of time at the
discretion of Motorola.
(ii) The direct or indirect ownership or control of the Company that
exists on the date of this Agreement changes in any material
manner that adversely affects the rights of Motorola, including
the acquisition of ownership or control by a competitor of the
Company or Motorola. In such event, the Company shall cooperate
with Motorola to conduct an orderly termination of the
(iii) The Company ceases to conduct business in the normal course,
becomes insolvent, enters into suspension of payments,
moratorium, reorganization or bankruptcy, makes a general
assignment for the benefit of creditors, admits in writing its
inability to pay debts as they mature, suffers or permits the
appointment of a receiver for its business or assets, or avails
itself of or becomes subject to any other judicial or
administrative proceeding that relates to insolvency or
protection of creditors' rights.
(b) Rights and Obligations at Termination. Upon expiration or termination
of this Agreement for any reason:
(ii) Each party will promptly cease using and destroy or return to
the other party all items that contain any Confidential
Information (as defined herein) of the other party, except
Motorola may retain one copy of Confidential Information for the
sole and express purpose of supporting then-existing Customers.
(ii) Unless otherwise provided for herein, Motorola and Customers
shall continue to have the right to use Software in object code
form associated with the Software sold hereunder.
(iii) Company shall invoice Motorola for any outstanding sums which
may be owing from any Order, unless Motorola terminates for
material breach as set forth herein in which event Motorola
shall have the right to offset any damages against any sums
owing to Company.
9. Intellectual Property Indemnification
Company agrees to indemnify and hold harmless Motorola, its successors,
assigns and Customers from any and all expenses, liabilities or other
losses arising from or by reason of any actual or claimed infringement of
any patents, trademarks, maskworks, copyrights or other intellectual
property rights and to defend any suits based thereon with respect to the
use, license or sale of Software or Customer Products by Motorola or the
Customers. If the use of any portion of the Software developed hereunder is
enjoined as a result of such suit, then Company, at no expense to Motorola
and the Customers, shall either procure the right for Motorola and
Customers to continue using the Software or replace or modify same so that
they become non-infringing and are of equivalent or superior functionality.
If neither of the foregoing alternatives are available on terms which are
acceptable to Motorola, Motorola may return all or any part of the Software
at Motorola's sole option, for no less than a full refund of the license
fees paid thereof. Company agrees that its obligations to indemnify, as set
forth in this Section 11, shall survive the term of this Agreement.
10. Cumulative Remedies
Except as otherwise provided herein, if either company breaches this
Agreement, the non-breaching party shall have the right to assert all legal
and equitable remedies available. Each party agrees that the non-breaching
party shall be entitled to equitable relief, including temporary and
permanent injunctive relief without the proving of damage by non-breaching
party to protect any of the non-breaching party's interests and rights.
11. Term and Renewal
This Agreement shall commence as of the Agreement date and shall be for an
initial term of three (3) years, and may be renewed by the parties for
successive terms of two-years each, provided that each party executes a
written consent as to each two year renewal period sixty (60) days in
advance of the expiration date of the previous term.
12. Export Controls
Motorola shall obtain all export licenses and other government
authorizations necessary for the shipment of any Products with such
assistance from Company as Motorola may reasonably request. Motorola shall
at its sole cost and expense obtain all export licenses and other
government authorizations necessary with the reasonable assistance of
All notices required to be given by one party to the other under this
Agreement shall be deemed properly given if reduced to writing and
personally delivered, transmitted by registered or certified post to the
address shown below with return receipt requested and postage prepaid, or
by telex or facsimile with correct answerback received. All notices shall
be effective upon receipt or at such time as delivery is refused by
addressee upon presentation.
Motorola shall send notices as follows:
Lynx Real-Time Systems, Inc.
2239 Samaritan Dr.
San Jose, CA 95124
Attention: Contracts Administration
Company shall send notices as follows:
Commercial, Government and Industrial Solutions Sector
1301 E. Algonquin Road
Schaumburg, IL 60196
Attention: Contracts Department
14. Compliance with Laws
(a) Company represents and warrants that the Products supplied hereunder
are produced and delivered in accordance with all applicable laws,
rules and regulations, including but not limited to those laws, rules
and regulations governing product safety.
(b) Company agrees that it will take all actions required by law in order
to ensure that all employees are authorized to work in the United
States of America in accordance with the Immigration Reform and
Control Act of 1986, as amended.
(c) Executive Order #11246, as amended relative to Equal Employment
Opportunity and all other applicable laws, rules and regulations
including Title VII of the Civil Rights Act of 1964, are incorporated
herein. In addition all laws, rules and regulations applicable to the
hiring of disabled veterans of the Vietnam Era and to the hiring of
individuals with physical or mental handicaps are incorporated herein
by this specific reference.
15. Force Majeure
Neither party shall be liable for delays in delivery or performance when
caused by any of the following which are beyond the actual control of the
delayed party: (i) acts of God, (ii) acts of the public enemy, (iii) acts
or failure to act by the other party, (iv) acts of civil or military
authority, (v) governmental priorities, strikes or other labor
disturbances, (vi) hurricanes, (vii) earthquakes, (viii) fires, (ix)
floods, (x) epidemics, (xi) embargoes, (xii) war, and (xiii) riots. In the
event of any such delay, the date of delivery or performance shall be
extended for a period equal to the effect of time lost by reason of the
16. Amendment or Waiver
No provision of this Agreement shall be deemed waived, amended, or modified
by either party unless such waiver, amendment or modification is in writing
and signed by the party against whom it is sought to be enforced.
In the event any one or more of the provisions of this Agreement is held to
be unenforceable under applicable law, (i) such unenforceability shall not
affect any other provision of this Agreement; (ii) this Agreement shall be
construed as if said unenforceable provision had not been contained herein;
and (iii) the parties shall negotiate in good faith to replace the
unenforceable provision by such as has the effect nearest to that of the
provision being replaced.
18. Governing Law and Alternative Dispute Resolution (ADR)
(a) The validity, performance, and all matters relating to the effect of
this Agreement and any amendment hereto shall be governed by the laws
of the State of Illinois.
(b) Motorola and Company agree to attempt to settle any claim or
controversy arising out of this Agreement through consultation and
negotiation in good faith and spirit of mutual cooperation. Any
dispute between the parties relating to this Agreement will first be
submitted in writing to a panel of two senior executives of Company
and Motorola, who will promptly meet and confer in an effort to
resolve such dispute. Each party's executive will be identified by
notice to the other party, and may be changed at any time thereafter
by notice to the other. Any agreed decisions of the executives will be
final and binding on the parties. In the event the executives are
unable to resolve any dispute within thirty days after submission to
them, either party may then refer such dispute to mediation in
accordance with Subsection 20(c). In no event will any ADR procedures
be used to resolve any dispute related to patent validity or
(c) If those attempts fail, then the dispute will be mediated by a
mutually acceptable mediator to be chosen by Motorola and Company
within forty-five (45) days after written notice by either party
demanding mediation. Such mediation shall be conducted in the State of
Illinois. Neither party may unreasonably withhold consent to the
selection of a mediator, and Motorola and Company will share the costs
of the mediator equally. Each party shall pay its own attorneys' fees.
By mutual agreement, however, Motorola and Company may postpone
mediation until each has completed some specified but limited
discovery regarding the dispute. The parties may also agree to replace
mediation with some other form of ADR, such as neutral fact-finding or
(d) Any dispute which cannot be resolved between the parties through
negotiation, mediation or other form of ADR within six months of the
date of the initial demand for ADR by one of the parties will then be
submitted to a court of competent jurisdiction. The use of any ADR
procedures will not be construed under the doctrines of laches, waiver
or estoppel to affect adversely the rights of either party. Nothing in
this Section will prevent either party from resorting to judicial
proceedings if (a) good faith efforts to resolve the dispute under
these procedures have been unsuccessful, or (b) interim relief from a
court is necessary to prevent serious and irreparable injury to that
party or to others.
(e) Performance by the parties under this Agreement shall not be suspended
during the pendency of any dispute unless the parties otherwise agree.
Neither this Agreement nor any right hereunder may be transferred, assigned
or delegated by Company without the prior written consent of Motorola. Any
attempted assignment, delegation or transfer shall be void.
Neither party shall issue a press release or make any similar public
announcement regarding the transactions contemplated by this Agreement
without the other party's prior written consent to the specific language
and intended distribution of such press release or announcement.
Failure or delay on the part of Motorola to exercise any right, power or
privilege hereunder shall not operate as a waiver thereof.
Each party hereto represents and warrants that (i) it has obtained all
necessary approvals, consents and authorizations of third parties and
governmental authorities to enter into this Agreement and to perform and
carry out its obligations hereunder, (ii) the persons executing this
Agreement on its behalf have express authority to do so, and, in so doing,
to bind the party thereto; (iii) the execution, delivery, and performance
of this Agreement does not violate any provision of any bylaw, charter,
regulation, or any other governing authority of the party; and (iv) the
execution, delivery and performance of this Agreement has been duly
authorized by all necessary partnership or corporate action and this
Agreement is a valid and binding obligation of such party, enforceable in
accordance with its terms.
23. Survival of Provisions
The parties agree that where the context of any provision indicates an
intent that it shall survive the term or termination of this Agreement,
then it shall so survive.
24. Entire Agreement
This Agreement and Exhibits hereto constitute the entire understanding
between the parties concerning the subject matter hereof and supersede all
prior discussions, agreements and representations, whether oral or written
and whether or not executed by Motorola and Company, including any terms
and conditions contained on any purchase orders or other documents which
Motorola may use when purchasing the Software or any other Company products
or services. No
modification, amendment or other changes may be made to this Agreement or
any part thereof unless reduced to writing and executed by authorized
representatives of both parties.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed as of
February ____, 2000 ("Agreement Date").
MOTOROLA, INC. COMPANY
By: /s/ Greg Townsend By: /s/ Bhupi Singh
Name: GREG TOWNSEND Name: BHUPI SINGH
(Print - Block Letters) (Print - Block Letters)
Title: VP & GENERAL MANAGER Title: V.P. FINANCE & CFO
(Print - Block Letters) (Print - Block Letters)
Date 1/28/00 Sales Representative JIM
Quote # 6R-LUF Effective From 1/28/00
Rev # 1 Valid Through 2/29/00
1 Kernel-Only -Mot PowerPC L-K2-PPC-301 [*] $[*] [*]% $[*] $[*]
Note: Note: Unit pricing presented is given for quantity one(1). The discounted
price reflects quantity [*] piece purchase.
2 TCP/IP Run Time -Mot PowerPC L-TCP-PPC-301 [*] $[*] [*]% $[*] $[*]
Note: Note: Unit pricing presented is given for quantity one(1). The discounted
price reflects quantity [*] piece purchase.
Payment Method: Products $0.00
Name: Tax $0.00
CC#: Exp Date: Freight Charges
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.