{"id":42692,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/product-manufacture-and-license-agreement-utstarcom-inc-and.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"product-manufacture-and-license-agreement-utstarcom-inc-and","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/product-manufacture-and-license-agreement-utstarcom-inc-and.html","title":{"rendered":"Product Manufacture and License Agreement &#8211; UTStarcom Inc. and Tollgrade Communications Inc."},"content":{"rendered":"<pre>\n                    PRODUCT MANUFACTURE AND LICENSE AGREEMENT\n\n                                 BY AND BETWEEN\n\n                                 UTSTARCOM, INC.\n\n                                       AND\n\n                         TOLLGRADE COMMUNICATIONS, INC.\n\n                               DATED: MAY 13, 1997\n\n\n\n\n                    PRODUCT MANUFACTURE AND LICENSE AGREEMENT\n\n         THIS AGREEMENT, dated as of May 14, 1997 is entered into by and between\nUTSTARCOM, INC., a _____________________ corporation with an office at 33 Wood\nAvenue South, 8th Floor, Iselin, New Jersey 08830 (herein called 'UTStarcom'),\nand TOLLGRADE COMMUNICATIONS, INC., a Pennsylvania corporation with its\nprincipal offices at 493 Nixon Road, Cheswick, Pennsylvania 15024 (herein called\n'Tollgrade').\n\n         WHEREAS, UTStarcom has developed certain UTStarcom Licensed Know-How,\nas defined herein, which would enable Tollgrade to produce versions of the\nProduct, as defined herein, that would be compatible with UTStarcom's System, as\ndefined herein; and\n\n         WHEREAS, Tollgrade desires the right and license to use the UTStarcom\nLicensed Know-How and apply the same to production of the Product; and\n\n         WHEREAS, UTStarcom is willing to grant, and represents that it has the\nright to grant, such right and license to Tollgrade under all of the terms and\nconditions of this Agreement.\n\n         NOW, THEREFORE, the parties, in consideration of the premises and\nmutual covenants contained herein, intending to be legally bound, do hereby\nagree as follows:\n\nSECTION 1. DEFINITIONS.\n\n         For purposes of this Agreement, each of the terms identified below\nshall have the meaning set forth.\n\n         1.1 'CONFIDENTIAL INFORMATION' shall have the meaning set forth in\nSection 6.\n\n         1.2 'EFFECTIVE DATE' means the date as described in Section 4.1 hereof.\n\n         1.3 'PARTY' shall mean either UTStarcom or Tollgrade, as the case may\nbe, and 'Parties' shall mean both of them.\n\n         1.4 'PRODUCT' means that switchable MCU-Registered Trademark- \nproduct for [*], designed and manufactured by Tollgrade and to which \nTollgrade will apply the UTStarcom Licensed Know-How in order to produce \nversions of such products compatible with UTStarcom's System.\n\n         1.5 'PURCHASE PRICE' shall have the meaning set forth in Section 3\nhereof. All amounts are denominated in U.S. dollars.\n\n         1.6 'TERM' shall have the meaning set forth in Section 4.1 hereof.\n\n         1.7      'TERRITORY' means [*].\n\n\n[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION.  CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS.\n\n\n                                       1\n\n\n\n\n         1.8 'TOLLGRADE LICENSED KNOW-HOW' shall include but not be limited to\ntechnical information, interface component, intellectual property (including any\nexisting patents owned by or licensed to Tollgrade which Tollgrade has a right\nto license, and any patents granted pursuant to applications now pending,\nincluding any and all reissues and patent applications to be filed in the United\nStates or other countries), hardware, software, firmware, discoveries,\ninventions, copyrights, trade methods, technology, designs, plans, drawings,\nbusiness secrets, samples, schematics, blueprints, formulations, test\ninstructions and processes relating to Tollgrade's MCU-Registered Trademark- \nproducts and related information that will be used by Tollgrade in connection\nwith its development and production of the Product hereunder.\n\n         1.9 'UTSTARCOM LICENSED KNOW-HOW' shall include but not be limited to\ntechnical information, interface components, intellectual property (including\nany existing patents owned by or licensed to UTStarcom which UTStarcom has a\nright to license, and any patents\/ranted pursuant to applications now pending,\nincluding any and all reissues and patent applications to be filed in the United\nStates or other countries), hardware, software, firmware, discoveries,\ninventions, copyrights, trade methods, technology, designs, plans, drawings,\nbusiness secrets, samples, schematics, blueprints, formulations, test\ninstructions and processes relating to UTStarcom's System.\n\n         1.10     'UTSTARCOM'S SYSTEM' means UTStarcom's AN-2000 carrier system.\n\nSECTION 2. DEVELOPMENT; DELIVERABLES AND GRANT.\n\n         2.1 DEVELOPMENT. Set forth on Exhibit A attached hereto and made a part\nhereof is the schedule for development, review and field testing of the Product.\nThe schedule includes each Parties' responsibilities in the development effort,\nincluding deliverables of components required for development and production.\nTollgrade shall use its best efforts to incorporate the UTStarcom Licensed\nKnow-How into the Product to produce a version of such Product that will be\ncompatible with UTStarcom's System. The Parties shall use their best efforts to\ncomply with the scheduling requirements of Exhibit A, but shall not be liable\nfor their failure to do so.\n\n         2.2 UTSTARCOM DELIVERABLES. Set forth on Exhibit A are certain\ndeliverables to be provided by UTStarcom, including one fully operational\nend-to-end AN-2000 system with documentation (referred to as 'System 1') and a\nsecond such AN-2000 system with six remote terminal banks (referred to as\n'System 2'). It will be necessary for Tollgrade to use System 1 during the\ndevelopment and testing phases of this Agreement. UTStarcom agrees to provide\nSystem 1 to Tollgrade [*], for Tollgrade's use during the development phase.\nSystem 1 will be returned to UTStarcom by Tollgrade upon completion of\ndevelopment and testing. It will be necessary for Tollgrade to use System 2\nduring the production phase of this Agreement. UTStarcom agrees to lend System 2\nto Tollgrade for a period of [*] from the delivery date. At the end of such [*]\nperiod, Tollgrade shall have the option to purchase System 2 from UTStarcom [*],\nor return System 2 to UTStarcom [*] to Tollgrade. Tollgrade shall not be\nresponsible for reasonable wear and tear to System 1 or System 2 as a result of\nTollgrade's proper use for development, testing or production. UTStarcom shall\nalso provide, [*], face plates for the Product. At UTStarcom's option, Tollgrade\nwill install the face plates, provided that UTStarcom notifies Tollgrade with\nits order for Product that it desires for the faceplates to be installed by\nTollgrade and UTStarcom provides Tollgrade with the necessary faceplates at that\ntime. If UTStarcom does not so notify Tollgrade, the Product will be shipped to\nUTStarcom without faceplates for installation by UTStarcom.\n\n         2.3 GRANT. Subject to the terms of this Agreement and commencing on the\nEffective Date; UTStarcom hereby grants to Tollgrade a [*] right and license to\nuse and practice the\n\n\n\n[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION.  CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS.\n\n\n                                       2\n\n\n\n\nUTStarcom Licensed Know-How in order to incorporate such UTStarcom Licensed\nKnow-How into the manufacture, design, engineering and service of the Product in\nthe Territory. Tollgrade shall have the right to manufacture, design and\nengineer the Product in the Territory. Unless otherwise agreed, the license set\nforth herein shall not include, and, except as otherwise specifically provided\nherein, UTStarcom shall exclusively reserve for itself, the right to market or\nsell the Product in the Territory under UTStarcom's private label. UTStarcom\nrepresents and warrants to Tollgrade that it shall, at all times when Product is\navailable for marketing or sale under this Agreement, use its best efforts to\nmarket and sell the Product in the Territory. Other than the Product, Tollgrade\nshall not design or manufacture any other AN-2000-compatible units without the\nprior written consent of UTStarcom. However, Tollgrade shall not be restricted\nor construed in anyway from applying the Tollgrade Licensed Know-How in other\napplications to systems manufactured by other system vendors in modified or\nsimilar form, or from using such Tollgrade Licensed Know-How, unmodified by the\nUTStarcom Licensed Know-How, in any other application whatsoever.\n\n         2.4 FUTURE IMPROVEMENTS OF UTSTARCOM LICENSED KNOW-HOW. To the extent\nany improvements to the UTStarcom Licensed Know-How are developed after the\nEffective Date and such improvements are not provided to Tollgrade, the Parties\nhereto acknowledge and agree that Tollgrade shall not be responsible or liable\nfor any incompatibility of the Product with UTStarcom's System as modified by\nsuch future improvements to the UTStarcom Licensed Know-How.\n\n         2.5 TOLLGRADE LICENSED KNOW-HOW. Subject to the restrictions of \nSection 5 hereof and the other terms of this Agreement, and commencing on the \nEffective Date, Tollgrade hereby grants to UTStarcom a [*] right and license \nto use the Tollgrade Licensed Know-How in the market, sale and support of the \nProduct in the Territory under UTStarcom's private label, subject to the \nconfidentiality restrictions set forth in Section 6 hereof. Nothing herein \nshall be interpreted to allow UTStarcom to use the Tollgrade Licensed \nKnow-How for any purpose other than in connection with the market, sale and \nsupport of the Product in the Territory. In addition, UTStarcom may not \nsublicense its rights under this Agreement without Tollgrade's prior written \nconsent.\n\n         2.6 PRODUCT SUPPORT. Following development of the Product, Tollgrade\nshall provide UTStarcom with [*] of service and training for up to [*], [*].\nTollgrade will provide UTStarcom with additional training or presentations at\nthe cost of [*], plus reimbursement for reasonable travel expenses, to\nbe scheduled as mutually agreed by the Parties. Any training, service and\npresentations to be provided by Tollgrade at the cost outlined above shall be\nonly within [*]. Any training, service and presentations required outside of the\ncontinental United States shall be separately negotiated by the Parties. Any\nrepair or other support services provided to UTStarcom by Tollgrade, outside of\nthose required by warranty, shall be charged at Tollgrade's standard charges for\nsuch services.\n\n         2.7 CERTIFICATIONS OR APPROVALS. UTStarcom will obtain, at its sole\ncost and expense, any certifications or approvals required for the sale,\nmarketing or utilization of the Produce by UTStarcom or its customers.\n\n\n\n[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION.  CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS.\n\n                                       3\n\n\n\n\n\nSECTION 3. ORDERING, PURCHASE AND PAYMENT.\n\n         3.1 FORECASTS. During the manufacturing phase of this Agreement, and \nfor the remainder of the Term, UTStarcom will provide Tollgrade with \nquarterly forecasts which will specify expected monthly volumes of Product \nthat UTStarcom anticipates ordering from Tollgrade for the next quarter. In \npreparing and submitting such forecasts, UTStarcom acknowledges that \nTollgrade will be relying on such forecasts in planning capital, labor and \nany other expenditures necessary to meet the anticipated volumes. As a \nresult, Tollgrade must ship to UTStarcom only that number of Product on a \nmonthly basis which is within [*] of the monthly forecasted volumes. (For \nexample, if the monthly forecast is [*], but UTStarcom submits purchase \norders for [*], Tollgrade will only be obligated to ship up to [*] for that \nmonth.) In the event that UTStarcom submits orders for a number of Product \nwhich exceeds [*] of the monthly forecast, Tollgrade and UTStarcom will work \ntogether to negotiate a mutually acceptable delivery schedule.\n\n         3.2 ORDERING. UTStarcom will, from time to time, cause its United\nStates based operations to submit purchase orders to Tollgrade, which purchase\norder will specify the number of units of Product to be shipped and the delivery\naddress, which shall be within the United States. The Parties agree that the\nTollgrade terms and conditions of sale, including any special payment or credit\nterms that may be imposed on a going-forward basis by Tollgrade, shall apply to\nany sale hereunder, notwithstanding the terms of the UTStarcom purchase order.\nTo the extent that UTStarcom can establish a credit and payment history with\nTollgrade that is reasonably satisfactory to Tollgrade, Tollgrade may permit\npayment terms of net 30 with possible lot size limitations. If the Tollgrade\npayment or credit terms conflict with the terms of this Agreement, then the\nterms of this Agreement shall control. Subject to the limitations of Section 3.1\nabove, within thirty (30) days after receipt of the purchase order, Tollgrade\nwill ship the Product to the location specified. All shipments will be F.O.B.\nshipping point designated as Tollgrade's, business address in Cheswick,\nPennsylvania.\n\n         3.3 NON-RECURRING ENGINEERING CHARGES. UTStarcom shall pay to Tollgrade\ncertain Non-recurring Engineering Charges ('NRE') for its development efforts,\nas specified below:\n\n                  3.3.1 CONTRACT SIGNING. Upon execution of this Agreement by\n         the Parties, but no later than May 14, 1997, prior to release of\n         prototypes UTStarcom will pay to Tollgrade an NRE in the amount of [*].\n\n                  3.3.2 PROTOTYPE ACCEPTANCE. Provided that Tollgrade has\n         delivered acceptable prototype units to UTStarcom by the date specified\n         on Exhibit A, UTStarcom will pay to Tollgrade a second NRE in the\n         amount of [*] on or before [*].\n\n                  3.3.3 PILOT RELEASE. Within [*] following Tollgrade's Pilot \n         Release date (projected to be near [*]), UTStarcom will pay to \n         Tollgrade a third NRE in the amount of [*].\n\n\n\n[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION.  CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS.\n\n\n                                       4\n\n\n\n\n         3.4 MINIMUM PURCHASE COMMITMENT. UTStarcom agrees that, following \ncompletion of successful field testing, UTStarcom shall purchase from \nTollgrade at least [*] of the Product, with [*] to be ordered and delivered \non or before [*] and an additional [*] to be ordered and delivered on or \nbefore [*]. The purchase price for these [*] of Product shall be [*] (herein \nreferred to as the 'Initial Purchase Price'), and UTStarcom agrees that it \nshall pay cash in advance or upon delivery for the purchase of these [*]. In \nthe event that UTStarcom fails to purchase this minimum quantity hereunder, \nUTStarcom agrees that it shall pay to Tollgrade, within [*] of [*], a sum \nequal to the Initial Purchase Price for these units; [*].\n\n         3.5 PURCHASE PRICE AND PAYMENT. During the Term of the Agreement,\nUTStarcom shall pay to Tollgrade, for each unit of Product purchased hereunder,\na price as follows:\n\n                  3.5.1 PURCHASE PRICE. In the event that UTStarcom meets the\n         minimum volume commitment for purchase of Product, as specified in\n         Section 3.4, UTStarcom shall be entitled to purchase, until [*], an \n         additional [*] of Product at the Initial Purchase Price. After [*], \n         UTStarcom shall pay Tollgrade an amount equal to [*] per Product for \n         each unit of Product purchased from Tollgrade (herein referred to as \n         the 'Purchase Price').\n\n         3.6 RESTOCKING CHARGE. For any unit of Product returned to Tollgrade \nby UTStarcom (other than units returned as a result of warranty claims), \nTollgrade will, to the extent UTStarcom has already paid the Purchase Price \nfor such Product, refund to UTStarcom [*] of the Purchase Price for such \nunit. To the extent UTStarcom has not yet paid the Purchase Price for such \nreturned Product at the time of return, Tollgrade will credit to UTStarcom \nthe [*] fee. The [*] remainder of the Purchase Price is a restocking charge \nwhich will not be refunded or credited to UTStarcom, but will be retained by \nTollgrade.\n\n         3.7 INTEREST. If any fee, charge or payment payable under this\nAgreement is not paid on the due date thereof, it shall bear interest from the\ndue date until the date paid at a rate equal to [*].\n\nSECTION 4. TERM AND TERMINATION.\n\n         4.1 EFFECTIVE DATE AND TERM. The Effective Date of this Agreement shall\nbe as of the date last signed below. The initial term of this Agreement shall\ncommence as of the Effective Date and shall continue for an initial two (2) year\nperiod, and shall automatically be renewed thereafter on a year-to-year basis,\nunless the Agreement is terminated as provided below in Section 4.2. Following\nthe initial term of the Agreement, Tollgrade shall be entitled to modify its\nprices upon each annual renewal, with sixty (60) days prior written notice to\nUTStarcom.\n\n         4.2 TERMINATION. Each of UTStarcom and Tollgrade shall be entitled to\nterminate this Agreement at any time, upon ninety (90) days prior written notice\nto the other Party.\n\n\n[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION.  CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS.\n\n\n                                       5\n\n\n\n\n         4.3 UTSTARCOM'S OBLIGATIONS IN THE EVENT OF TERMINATION. In the event\nUTStarcom terminates this Agreement during any period that UTStarcom is subject\nto the minimum volume requirement specified in Section 3.4 above, UTStarcom\nshall remain obligated to purchase such minimum requirements in accordance with\nthe terms of Section 3.4, or in the absence of such purchase, pay the sums\nspecified therein, and shall remain obligated under any outstanding orders. In\nthe event UTStarcom terminates this Agreement or abandons the development effort\nprior to successful field testing of the Product, UTStarcom shall pay to\nTollgrade a termination fee equal to [*] less any amounts paid to\nTollgrade by UTStarcom for NRE as defined in Section 3.3 of the Agreement,\npayable within sixty (60) days of such termination or abandonment. Therefore,\nupon payment in full by UTStarcom of all NRE amounts due under the Agreement,\nUTStarcom will not be required to pay this termination fee if it terminates the\nAgreement. The Parties agree that this sum is a reasonable estimate of the\ndamages that would be suffered by Tollgrade in the event of such termination or\nabandonment, and is not intended as a penalty.\n\nSECTION 5. TOLLGRADE'S PRODUCTS.\n\n         Notwithstanding, anything that may be implied herein, but subject to\nthe limited license grated to UTStarcom to use Tollgrade Licensed Know-How as\nspecified in Section 2.4 above, any of Tollgrade's technical information,\ncomponents or other intellectual property that are used in the manufacture,\ndevelopment, engineering, sale Or marketing of the Product, or that encompass\nany component of or are derived from the benefit of the UTStarcom Licensed\nKnow-How, shall remain the sole and exclusive property of Tollgrade. UTStarcom\nshall not disassemble, alter, reverse engineer or change the Product in any\nmanner whatsoever while such Product is in the possession of UTStarcom.\nUTStarcom shall also obtain a covenant to this effect to the benefit of\nTollgrade from any third party end user of the Product. In the event there is\nany malfunction or otherwise is a need to alter, change or disassemble the\nProduct, UTStarcom shall immediately notify Tollgrade prior to taking any such\naction for resolution of the matter.\n\nSECTION 6. CONFIDENTIALITY.\n\n         6.1 CONFIDENTIAL INFORMATION. Each of Tollgrade and UTStarcom agree to\nhold the other's ideas, inventions, proprietary technical information, trade\nsecrets, know-how and confidential business information, including the UTStarcom\nLicensed Know-How and the Tollgrade Licensed Know-How ('Confidential\nInformation'), in confidence and each such Party shall not use or disclose such\nConfidential Information to third parties except as provided in this Agreement.\nThe Parties will use their best efforts to have all Confidential Information be\nin writing and suitably identified. Said information shall be treated by each\nParty as it would treat its own Confidential Information.\n\n         6.2 EXCEPTIONS. Not included within the restrictions set forth above\nshall be information: (a) published or otherwise made available to the public\nother than by a breach of this Agreement by the receiving Party; (b) known to a\nParty hereto before disclosure by the other Party; (c) rightfully received by a\nParty hereunder from an independent third party without restrictions on\ndisclosures; (d) approved in writing for release by the disclosing Party, or\nknown to or independently developed by the receiving Party without reference to\nsuch information; (e) furnished to a third party by the disclosing Party without\na similar restriction on the third party's right to publish or disseminate; or\n(f) disclosed pursuant to a\n\n\n[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION.  CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS.\n\n\n                                       6\n\n\n\n\ncourt order, provided the other Party receives prior written notification of\nsuch court order and is given the opportunity to restrict or stop such\ndisclosure.\n\n         6.3 RETURN OF DOCUMENTS. Upon termination of this Agreement, the\nreceiving Party shall turn over to the disclosing Part, all plans,\nspecifications, drawings, documents, or other writings and recorded materials of\nany kind embodying the disclosing Party's Confidential Information.\n\nSECTION 7. REPRESENTATIONS, WARRANTIES AND INDEMNIFICATION.\n\n         7.1 WARRANTIES AND DISCLAIMER. Each unit of Product sold hereunder will\nbe accompanied by Tollgrade's [*] limited warranty. Defective components will be\nrepaired or replaced at Tollgrade's option. OTHER THAN AS SPECIFICALLY PROVIDED\nHEREIN, TOLLGRADE SPECIFICALLY DISCLAIMS ANY AND ALL OTHER WARRANTIES, WHETHER\nEXPRESS, IMPLIED OR STATUTORY, INCLUDING THE WARRANTIES OF MERCHANTABILITY,\nMARKETABILITY OR FITNESS FOR A PARTICULAR PURPOSE.\n\n         7.2 NO CONFLICT. Tollgrade and UTStarcom warrant that they have the\nright to enter into and perform this Agreement. This Agreement neither\ncontradicts nor constitutes a breach of any other agreement or obligation to\nwhich Tollgrade or UTStarcom is subject.\n\n         7.3 UTSTARCOM REPRESENTATION AND WARRANTY. UTStarcom represents and\nwarrants that in the event the UTStarcom Licensed Know-How is being infringed,\nor is being used, as the case may be, by a third party other than Tollgrade and\nsuch third party has no right to do so, UTStarcom shall take all such actions as\nare necessary and appropriate to enjoin such unauthorized infringement or use.\nUTStarcom represents and warrants that (i) use of the UTStarcom Licensed\nKnow-How by Tollgrade for the manufacture, marketing and sale of the Product,\nand (ii) the performance by UTStarcom under this Agreement, will not infringe\nupon any upon the patent rights, trade secrets, or any other proprietary\nconfidential information of a third party. UTStarcom warrants that the UTStarcom\nLicensed Know-How shall be of the same form and content as used by UTStarcom in\nthe UTStarcom System, and except for inadvertent error, will be in accordance\nwith the most recent practice at UTStarcom at the time of delivery.\n\n         7.4 UTSTARCOM INDEMNITY. UTStarcom shall, at its sole expense, defend\nand hold Tollgrade, its officers, directors, shareholders, employees, agents,\naffiliate corporations, successors and assigns, free and harmless from all\nlosses, costs and damages in respect to any claim, action or suit, or for any\nclaim arising out of any such action or suit for infringement upon any patent or\nproprietary rights of a third party or based on the use of the UTStarcom\nLicensed Know-How, or for actively inducing infringement, or for contributory\ninfringement arising out of the performance of any action by Tollgrade under\nthis Agreement; provided, however, that Tollgrade may be represented in any such\naction or suit by attorneys of its own selection, at Tollgrade's expense. In the\nevent that any injunction shall be obtained against the use of the UTStarcom\nLicensed Know-How, or against the design or manufacture of the Product by\nTollgrade, in addition to its above obligations, UTStarcom shall, at the option\nof Tollgrade and at UTStarcom's expense, procure for Tollgrade the right to\ncontinue using said UTStarcom Licensed Know-How and design and manufacturing of\nthe Product under the infringed patent or proprietary rights, or modifying said\nUTStarcom Licensed Know-How to become non-infringing.\n\n\n[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION.  CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS.\n\n\n                                       7\n\n\n\n\n         7.5 TOLLGRADE INDEMNITY. Tollgrade shall, at its sole expense, defend\nand hold UTStarcom, its officers, directors, shareholders, employees, agents,\naffiliate corporations, successors and assigns, free and harmless from all\nlosses, costs and damages in respect to any claim, action or suit, or for any\nclaim arising out of any such action or suit for infringement upon any patent or\nproprietary rights of a third party or based on the use of any of Tollgrade's\ncomponents, or for actively inducing infringement, or for contributory\ninfringement arising out of the performance of any action by UTStarcom under\nthis Agreement; provided, however, that UTStarcom may be represented in any such\naction or suit by attorneys of its own selection, at UTStarcom's expense. In the\nevent that any injunction shall be obtained against the use of the Tollgrade\ncomponents, or against the marketing or sale of the Product by UTStarcom, in\naddition to its above obligations, Tollgrade shall, at the option of UTStarcom\nand at Tollgrade's expense, procure for UTStarcom the right to continue using\nsaid Tollgrade components and marketing and sale of the Product under the\ninfringed patent or proprietary rights, or modifying said Tollgrade components\nto become non-infringing.\n\n         7.6 NOTICE OF CLAIM. Each Party shall promptly inform the other about\nany claims under patent rights of third parties and shall impart all details\nreferring thereto, and the indemnifying Party shall have the right and\nobligation to defend against said claims as provided in and subject to Sections\n7.4 and 7.5 above.\n\n         7.7 EXCLUSIVE REMEDY. The provisions in Sections 7.4 and 7.5 above set\nforth the sole and exclusive rights and obligations of UTStarcom and Tollgrade\nwith respect to any infringement or claim of infringement as to the Product.\n\nSECTION 8. GENERAL PROVISIONS\n\n         8.1 NO CONSEQUENTIAL DAMAGES. In no event shall either Party be liable\nfor special, indirect, incidental, or consequential damages, whether arising\nfrom or based upon breach of warranty, breach of contract, tort, including\nnegligence, indemnity or any other cause or basis whatsoever.\n\n         8.2 LIMITATION OF LIABILITY. Tollgrade's total liability hereunder,\nwhether arising from breach of warranty, breach of contract or tort, including\nliability arising from Tollgrade's negligence, strict liability, indemnity or\nany other cause or basis whatsoever, is expressly limited to the compensation\nactually received by Tollgrade hereunder.\n\n         8.3 TRADEMARK RIGHTS. At all times that UTStarcom uses the trademark\n'MCU' or otherwise refers to the 'Metallic Channel Unit' in connection with its\nsale or support of Product hereunder, it shall acknowledge Tollgrade's\nproprietary rights therein.\n\n         8.4 NOTICES. All notices and other communications between the Parties\nprovided for in this Agreement shall be in writing and shall be deemed to have\nbeen duly given and received when delivered by hand, facsimile or mailed first\nclass, postage prepaid to the following addresses:\n\n         If to Tollgrade:           Tollgrade Communications, Inc.\n                                    493 Nixon Road\n                                    Cheswick, Pennsylvania 15024\n\n\n\n                                       8\n\n\n\n\n\n                                    Fax: (412) 274-8014\n\n                                    Attention: Christian L. Allison, \n                                               Chief Executive Officer\n\n          If to UTStarcom:          UTStarcom, Inc.\n                                    33 Wood Avenue South, 8th Floor\n                                    Iselin, New Jersey 08830\n                                    Fax: (908) 548-1099\n                                    Attention: Chang Kao\n\nor to such other address or telephone number as to which notice has been duly\ngiven.\n\n         8.5 GOVERNING LAW. This Agreement shall be governed by and construed\naccording to the laws of the Commonwealth of Pennsylvania.\n\n         8.6 ENTIRE AGREEMENT. This Agreement and all of its exhibits forming a\npart hereof, all incorporated herein by this reference, constitute the complete\nand entire statement of the agreement between the Parties hereto with respect to\nthe subject matter of this Agreement and any and all prior or contemporaneous\nproposals, negotiations, agreements, commitments and representations, oral or\nwritten, are merged herein.\n\n         8.7 AMENDMENTS. No amendment or alteration may be made to this\nAgreement in any manner other than in writing, and no such amendment or\nalteration shall be effective unless signed by a duly authorized officer of each\nof the Parties.\n\n         8.8 WAIVER. No delay or omission by either Party to exercise any right\nor power hereunder shall impair such right or power nor shall be construed to be\na waiver thereof. A waiver by either Party of any breach thereof shall not be\nconstrued to be a waiver of any succeeding breach thereof or of any other\ncovenant contained herein.\n\n         8.9 INVALIDITY. If any provision of this Agreement, or portion hereof,\nviolates applicable law, such provision or portion thereof shall be void and the\nremainder of this Agreement shall remain in full force and effect.\n\n         8.10 CAPTIONS. The sections and headings contained in this Agreement\nare for ease of reference only and shall not in any way affect the meaning or\ninterpretation of this Agreement.\n\n         8.11 INDEPENDENT CONTRACTOR. Nothing contained in this Agreement shall\nbe construed to constitute a relationship between the Parties hereto as one of\nemployer\/employee, principal\/agent, partnership, joint venture, or evidence that\neither Party intends to constitute such a relationship. Each Party hereto shall\nnot hold itself out contrary to the terms of this Section 8.11 and each Party\nshall not become liable or be bound by any representations, act, or omission\nwhatsoever of the other Party hereto contrary to the provisions of this\nAgreement.\n\n\n                                       9\n\n\n\n         IN WITNESS WHEREOF, the Parties have executed this Agreement by their\nduly authorized officers as of the date indicated below.\n\nUTSTARCOM, INC.                               TOLLGRADE COMMUNICATIONS, INC.\n\nBy: \/s\/ Paul Berkowitz                        By:  \/s\/ Sara M. Antol\n  --------------------------------               -----------------------------\n\nPrint Name:  Paul Berkowitz                   Print Name:  Sara M. Antol\n           -----------------------                       ---------------------\n\nTitle:       V.P. Product Planning            Title: Chief Counsel &amp; Secretary\n      ----------------------------                  --------------------------\n\nDate:        14 May 1997                      Date:        May 15, 1997\n     -----------------------------                 ---------------------------\n\n\n                                      10\n\n\n\n                                    EXHIBIT A\n\n                            SCHEDULE AND DELIVERABLES\n\n\n\n\n--------------------------------------------------------------------------------------------\n  ITEM                                       RESPONSIBLE PARTY                         DATE\n  ----                                       -----------------                         ----\n                                                                                 \n--------------------------------------------------------------------------------------------\n\n  All relevant AN-2000 interface                                                                                               \n  Information required for the Integration                                                                                     \n  of the Product                             UTStarcom                                 [*]\n--------------------------------------------------------------------------------------------\n  OEM Agreement Review                       Both Parties                              [*]\n--------------------------------------------------------------------------------------------\n  OEM Agreement Executed                     Both Parties                              [*]\n--------------------------------------------------------------------------------------------\n  Fully operational end-to-end AN-2000                                                                                         \n  system with Associated documentation                                                                                         \n  delivered to Tollgrade (System 1) for                                                                                        \n  development and testing                    UTStarcom                                 [*]\n--------------------------------------------------------------------------------------------\n  3 AN-2000 Extender Cards applicable for                                                                                      \n  testing the  Product delivered to                                                                                            \n  Tollgrade                                  UTStarcom                                 [*]\n--------------------------------------------------------------------------------------------\n  10 prototype units of Product sent to                                                                                        \n  UTStarcom in Iselin, NJ                    Tollgrade                                 [*]\n--------------------------------------------------------------------------------------------\n  Fully operational end-to-end AN-2000                                                                                         \n  system with 6 remote terminal banks                                                                                          \n  delivered to Tollgrade (System 2) for                                                                                        \n  production                                 UTStarcom                                 [*]\n--------------------------------------------------------------------------------------------\n  Product available for sale to UTStarcom    Tollgrade                                 [*]\n--------------------------------------------------------------------------------------------\n\n\n\n[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION.  CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS.\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[9205],"corporate_contracts_industries":[9516],"corporate_contracts_types":[9613,9616],"class_list":["post-42692","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-utstarcom-inc","corporate_contracts_industries-telecommunications__equipment","corporate_contracts_types-operations","corporate_contracts_types-operations__ip"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/42692","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=42692"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42692"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42692"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42692"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}