{"id":42892,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/technical-license-and-assistance-agreement-utstarcom-inc-and2.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"technical-license-and-assistance-agreement-utstarcom-inc-and2","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/technical-license-and-assistance-agreement-utstarcom-inc-and2.html","title":{"rendered":"Technical License and Assistance Agreement &#8211; UTStarcom Inc. and Mitsubishi Electric Corp."},"content":{"rendered":"<pre>\n                                   AMENDMENT#1\n                  TO TECHNICAL LICENSE AND ASSISTANCE AGREEMENT\n\nThis Amendment is dated and entered into as of 21st day of February, 2000 by \nand between UTStarcom, Inc., a Delaware corporation with its place of \nbusiness at 1275 Harbor Bay Parkway, Alameda, CA 94502, USA (hereinafter \nreferred to as 'UTStarcom') and Mitsubishi Electric Corporation, acting \nthrough its Mobile Communication Business Division, a Japanese corporation \nwith offices at 8-1-1 Tsukaguchi-honmachi, Amagasaki, Hyogo 661-8661, Japan \n(hereinafter referred to as 'Mitsubishi'). UTStarcom and Mitsubishi may \ncollectively be referred to as the 'Parties'. Each may also be referred to \nindividually as a 'Party'.\n\nWHEREAS, The Parties entered into a contractual relationship on November 2nd, \n1999 (documented as the 'TECHNICAL LICENSE AND ASSISTANCE AGREEMENT' \n---hereinafter referred to as 'Agreement') for UTStarcom to develop PHS \n(Personal Handyphone System) handsets based on Mitsubishi's technology which \nis essential to or helpful in the development of PHS handset.\n\nWHEREAS, UTStarcom desires to obtain from Mitsubishi additional license to \nmanufacture and sell PHS handsets for itself, and\n\nWHEREAS, The Parties wish to amend certain licensing and other terms of the \nAgreement.\n\nNOW, THEREFORE, in consideration of the premises and of the mutual covenants \nand conditions herein contained, the Parties mutually agree as follows:\n\n\n\n[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS UNDER 17.C.F.R. SECTIONS 200.80(b)(4), 200.83 AND \n230.406.\n\n\n\n\n\n\n1. 2. GRANT OF LICENSE\n\n1.1  Article 2.1 (1) is hereby deleted in its entirety, and the following \nsentence is added:\n\n'(1) Subject to the terms and conditions of this Agreement, Mitsubishi hereby \ngrants to UTStarcom a [*] license to use the \nLicensed Technology for the term of this Agreement for the purpose of\n\n     (i)  using or making UTStarcom's PHS handset within the territory of the\n          [*] and\n\n     (ii) selling UTStarcom's PHS handset on a [*]\n\n1.2  Article 2.3 is hereby added to the Agreement as follows:\n\n'2.3 SUPPLY OF PHS HANDSET\n\nFor purposes of resale or Mitsubishi internal use, at the request of \nMitsubishi, UTStarcom shall supply PHS handsets made by UTStarcom hereunder \nin accordance with mutually acceptable negotiated terms, prices, delivery \ntimes and conditions established at the time of purchase. Such prices, \ndelivery times, terms and conditions shall not be [*]\n\n2. 6. DISCLAIMER OF WARRANTY AND LIABILITY\n\n2.1 Article 6(1) is hereby amended by added by inserting the words \n'NON-INFRINGEMENT OF ANY THIRD PARTY'S RIGHT ' between the word 'TITLE,' and \nthe word 'ARISING' on the fifth (5th) line.\n\n2.2 Article 6(1) is hereby amended by added by inserting the words 'USE, MAKE \nOR SELL' between the word 'DEVELOP' and the word 'UTSTARCOM'S' on the ninth \n(9th) line.\n\n\n[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS UNDER 17.C.F.R. SECTIONS 200.80(b)(4), 200.83 AND \n230.406.\n\n\n\n\n2.3 Article 6 (2) is hereby deleted in its entirety, and the following \nsentence is added:\n\n'(2) Notwithstanding the forgoing, for the period of one [*] or [*] after the \ndate when UTStarcom's PHS handset come onto the market, whichever comes \nearlier, if a technical problem of the Licensed Technology is found, the \nParties will confer in order to find a mutually agreeable solution of the \nproblem.'\n\n2.4 Article 6(4) is hereby added to the Agreement as follows:\n\n'(4) UTStarcom understands there may be a possibility of claims of \nintellectual property infringement related to this Agreement against \nUTStarcom. UTStarcom shall be responsible for taking all necessary steps to \navoid and settle such claims of infringement at its own risk and expense.'\n\n3. 8. TERM\n\nArticle 8 is hereby deleted in its entirety, and the following sentence is \nadded:\n\n'8.TERM\nThe term of this Agreement shall commence on the Effective Date and will \ncontinue until the date upon which this Agreement is terminated in accordance \nwith Article 9.'\n\n4. 9. TERMINATION\n\nArticle 9.4 is hereby amended in its entirety as follows by adding Article \n2.3 as a survival clause of the Agreement:\n\n'9.4 SURVIVAL\nThe provisions of Articles 2.3, 4, 5, 6, 7, 8, 10, and 11 hereof shall \nsurvive any termination of this Agreement.'\n\n\n[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS UNDER 17.C.F.R. SECTIONS 200.80(b)(4), 200.83 AND \n230.406.\n\n\n\n\nIN WITNESS WHEREOF, the Parties hereto have caused this Amendment to be \nexecuted by their respective duly authorized representatives as of the date \nfirst above written. All copies of this Amendment, signed by both Parties, \nshall be deemed originals.\n\n\nMITSUBISHI                           UTSTARCOM\n\nBy:                                By:\n   -------------------------------    ----------------------------\nName:                              Name:\n     -----------------------------      --------------------------\nTitle:                             Title:\n      ----------------------------       -------------------------\nDate:                              Date:\n     -----------------------------      --------------------------\n\n\n\n[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY \nWITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT \nTO THE OMITTED PORTIONS UNDER 17.C.F.R. SECTIONS 200.80(b)(4), 200.83 AND \n230.406.\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-42892","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\/42892","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=42892"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42892"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42892"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42892"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}