{"id":42906,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/technology-license-and-reseller-agreement-3com-corp-and-com21.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"technology-license-and-reseller-agreement-3com-corp-and-com21","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/technology-license-and-reseller-agreement-3com-corp-and-com21.html","title":{"rendered":"Technology License and Reseller Agreement &#8211; 3Com Corp. and Com21 Inc."},"content":{"rendered":"<pre>\n                    TECHNOLOGY LICENSE AND RESELLER AGREEMENT\n\n\n        This Technology License and Reseller Agreement is entered into by and\nbetween 3Com Corporation, a California corporation with a principal place of\nbusiness at 5400 Bayfront Plaza, Santa Clara, California 95052 ('3Com'), and\nCom21, Inc., a Delaware corporation with a principal place of business at 1991\nLandings Drive, Mountain View, California 94043 ('Com2l'). The effective date of\nthis Agreement shall be the date last executed below ('Effective Date').\n\n\n                                    RECITALS\n\n        A. Com2l and 3Com intend to enable and drive deployment of broadband\nservices over Hybrid Fiber Coax (HFC) networks. The companies believe that\ncombining the parties' respective core competencies will enable the faster\nintroduction of HFC communications products to the market. Com2l's HFC\nexperience coupled with 3Com networking experience and broad product offering\nwill result in a more robust solution.\n\n        B. Com2l or its suppliers are the owners of certain subscriber equipment\ntechnology related to broadband services over Hybrid Fiber Coax (HFC) networks,\nas more particularly described in Exhibit A (Com2l Technology).\n\n        C. 3Com wishes to obtain a non-exclusive license for such technology in\norder to develop, manufacture and market cable modems based on the Com2l\nTechnology. Com2l is willing to grant 3Com a technology license upon the terms\nand conditions set forth below.\n\n        D. Com2l intends to develop a data over cable headend distribution\nsystem with assistance from 3Com. The first generation of such headend will\ncomply with the Specifications (as defined below) attached to this Agreement as\nExhibit B (Specifications). Com2l will permit 3Com to resell such headend on the\nterms and conditions set forth herein.\n\n        E. The parties also envision that 3Com will make an equity investment in\nCom2l, under terms and conditions to be negotiated and documented in agreements\nseparate from this Agreement.\n\n                                    AGREEMENT\n\n        NOW, THEREFORE, the parties agree as follows:\n\n1.      DEFINITIONS\n\n        1.1 'Com2l Technology' means the Com2l first generation cable modem\ntechnology (known as 'P3' and to be defined in the Design Package) (excluding\nuse of the expansion bus for optional plug-in modules) including, without\nlimitation, system design, behavioral code,\n\n                                        1\n\n\n\n\n\nASICs and firmware, know-how, trade secrets rights, copyright rights, mask work\nrights and, if any, rights under Com21 Patents owned, acquired, developed by or\nlicensed to Com21 and embodied in a cable modem product meeting the\nSpecifications. Com21 Technology also includes the technology necessary to\ninterface the 3Com Products to the Com21 Headend, and such other technology as\ndescribed on Exhibit A (Com21 Technology).\n\n        1.2 'Com21 Headend' means the headend controller unit to be developed by\nCom21, and all enhancements, upgrades and new versions thereof. The first\ngeneration Com21 Headend shall implement the Specifications as they exist as of\nthe Effective Date together with such changes to the Specifications as the\nparties mutually agree in writing.\n\n        1.3 'Specifications' means the document entitled 'The Com21 Community\nProtocol for HFC Networks, Revision 1.04 Branch 01 (V1.04.01), attached hereto\nas Exhibit B (Specifications) and to be included in the Design Package. Updates\nand revisions to the Specifications will be identified by a new branch index.\n3Com shall be provided reasonable notice of and be permitted to attend Com21's\nmeetings regarding updates and\/or revisions to the Specifications.\n\n        1.4 'Com21 Mongoose Product' means Com21's modem ASIC (currently known\nas Mongoose) implementing the media access control and other modem functions,\nbut excluding use of the expansion bus for optional plug-in modules, (i) as\ndescribed in the Com21 modem design specification attached as Exhibit C (Com21\nMongoose Product Specification), which specification may be changed from time to\ntime by Com21, in its sole discretion, with written notice to 3Com and (ii)\nmeeting certain criteria to determine the acceptability of the Com21 Mongoose\nProduct to be agreed to by the parties, which criteria shall be set forth in a\ndescription attached to this Agreement as Exhibit D (Com21 Mongoose Product\nAcceptance Criteria). The Com21 Mongoose Product Specification shall be provided\nby Com21 within sixty (60) days of the Effective Date. The Com21 Mongoose\nProduct Acceptance Criteria shall be mutually agreed to by the parties within\nsixty (60) days of the Effective Date.\n\n        1.5 'Com21 P4 Product' means Com21's second generation modem ASIC\n(currently known as P4) implementing the media access control and other modem\nfunctions to be developed with AMD pursuant to a strategic partner relationship.\n\n        1.6 'Com21 Patents' means all U.S. patents (and any foreign\ncounterparts), pending patent applications and any reissues, continuations,\ndivisions or extensions of such patents or applications, as to which Com21 is\nthe patentee or as to which Com21 has the right to grant the license herein and\nwhich are necessary to practice the rights to the Com21 Technology, Com21\nMongoose Product and Com21 Headend interfaces which are granted herein.\n\n        1.7 'Confidential Information' means that information of either party\n('Disclosing Party') which is disclosed to the other party ('Receiving Party')\npursuant to this Agreement,\n\n                                        2\n\n\n\n\n\nin written form and marked 'Confidential' or if disclosed orally, the Disclosing\nParty shall indicate that such information is confidential at the time of\ndisclosure and send a written summary of such information to the Receiving Party\nwithin thirty (30) days of disclosure and mark such summary 'Confidential.'\nConfidential Information shall include, but not be limited to, trade secrets,\nknow-how, inventions, techniques, processes, algorithms, software programs,\nschematics, designs, contracts, customer lists, financial information, sales and\nmarketing plans and business information. References to 3Com as a Receiving\nParty or a Disclosing Party shall also include all present and future subsidiary\nand parent companies of 3Com.\n\n        1.8 'Design Package' means the information and materials necessary to\ndevelop cable modem products compatible with the Com21 Headend and the\nSpecifications. As set forth in detail in Section 5 (Design Package), the\ndescription of the Design Package shall be attached to this Agreement as Exhibit\nE (Design Package) when it is completed.\n\n        1.9 '3Com Patents' means all U.S. patents (and any foreign\ncounterparts), pending patent applications and any reissues, continuations,\ndivisions or extensions of such patents or applications, as to which 3Com is the\npatentee or as to which 3Com has the right to grant the license herein and which\nare necessary to practice the rights to the 3Com Technology which are granted\nherein.\n\n        1.10 '3Com Product' means the cable modem products developed by 3Com\nunder the terms of this Agreement. 'First Generation 3Com Product' means the\nfirst version of the commercially available low-cost data over cable 3Com\nProduct developed by 3Com as described in Section 2.3(a)(iii), 'Derivative 3Com\nProducts' means all 3Com Products other than the First Generation 3Com Product.\n\n        1.11 '3Com Technology' shall mean the technology, including know-how,\ntrade secrets, copyrights and, if any, 3Com Patents, owned, acquired or\ndeveloped by or licensed to 3Com and embodied in the First Generation 3Com\nProduct.\n\n2.      LICENSES\n\n        2.1 Development and Manufacturing License. Subject to the terms and\nconditions of this Agreement, Com21 hereby grants to 3Com a non-exclusive,\nnon-transferable, worldwide, royalty bearing license under the Com21 Technology\nand Com21 Mongoose Product to (a) design, develop, make or have made, use,\nmarket, sell, modify, lease and support 3Com Products, (b) design, develop, make\nor have made, use, market, sell, modify, lease and support derivative cable\nmodem products based upon the 3Com Products, (c) sublicense its rights in the\nCom21 Technology embodied in the Com21 Mongoose Product only granted in (a)\nabove, subject to the restrictions set forth in Section 2.3 (3Com Restrictions)\nbelow and (d) reproduce and translate the materials in the Design Package\npursuant to the terms hereof as necessary for the exercise of the rights granted\nin clauses (a) and (b) of this Section 2.1 (Development and Manufacturing\nLicense).\n\n\n\n\n*Certain information on this page has been omitted and filed separately with the\n Commission. Confidential treatment has been requested with respect to the\n omitted portions.\n\n\n                                        3\n\n\n\n\n\n        2.2 Trademark License. Com21 hereby grants to 3Com a worldwide,\nnonexclusive, limited license to use the Com21 trademarks, and the respective\nstylistic marks, listed on Exhibit F (Com21 Trademarks) and such other mutually\nagreeable Com21 marks (collectively, the 'Com21 Trademarks') in conjunction with\nthe distribution of the 3Com Products and in 3Com advertising, promotional and\nprinted materials for the 3Com Products. 3Com has provided to Com21 a copy of\nthe 3Com Trademark Guidelines. 3Com shall use the Com21 Trademarks in the manner\nspecified in the 3Com Trademark Guidelines for proper usage of 3Com trademarks.\nThe 3Com Trademark Guidelines may be modified from time to time by 3Com, in its\nsole discretion, with written notice of such modification to Com21. in the event\nCom21 implements its own trademark guidelines or policies, 3Com agrees to comply\nwith such guidelines or policies. If compliance with a Com21 policy or guideline\nis not reasonably feasible, 3Com shall notify Com21 in writing and propose an\nalternative procedure for Com21's approval, which will not be unreasonably\ndenied. Upon Com21's request, 3Com shall provide Com21 with free samples of the\n3Com advertising and promotional materials and reasonable numbers of the 3Com\nProduct manufactured and distributed by 3Com on which such trademarks are used\nto ensure that Com21's quality standards are maintained.\n\n        2.3    3Com Restrictions.\n\n               (a) Notwithstanding the foregoing licenses granted to 3Com in\nthis Section 2 (Licenses), (i) 3Com shall not have the right to sublicense to\nany third party (except to 3Com present and future subsidiaries) the Com21\nTechnology licensed from Com21 before the second anniversary of the Effective\nDate or until the Com21 P4 Product is available, provided, however, Com21 agrees\nto support 3Com's discussions with third party manufacturers or vendors of\nphysical layer semiconductors regarding the inclusion of the Com21 Technology,\nor any portion thereof, into such third party's products, (ii) until the third\nanniversary of the Effective Date, 3Com shall not sell or make available for\nsale as stand-alone products (i.e., not integrated into a card or system level\nproduct) semiconductor chips designed by or on behalf of 3Com based on the Com21\nTechnology and (iii) 3Com will constrain the development and design of the First\nGeneration 3Com Product to low-cost, data over cable modems based on the Com21\nTechnology using RF technology compatible with the Com21 Headend.\n\n               (b) As of the Effective Date, 3Com currently does not intend to\nenter the market for Headend Controller Units for the future foreseeable (no\nmore than two years from the Effective Date). 3Com agrees to notify Com21 in\nwriting within a reasonable time in the event 3Com decides (which decision shall\nbe in 3Com's sole discretion) to begin development of a Headend Controller Unit.\n\n        For purposes of this Section 2.3(b) only, 'Headend Controller Unit'\nshall mean that piece of equipment that physically connects the cable modem to\nthe Headend via a hybrid fiber\/coax or all coax network and is comprised of the\nfollowing: Upstream and downstream physical layer connections, Media Access\nController (MAC), management interface that manages the MAC and physical layers\nand provides application management and traffic scheduling and interface to\nother equipment in the Headend.\n\n\n*Certain information on this page has been omitted and filed separately with the\n Commission. Confidential treatment has been requested with respect to the\n omitted portions.\n\n                                        4\n\n\n\n\n\n        For purposes of this Section 2.3(b) only, a 'Headend' shall mean the\noffice\/wiring equipment that is directly connected to the cable modem via a\nhybrid fiber\/coax or all coax network. A Headend that is capable of offering\ndata services can be comprised of the following equipment: Headend Controller\nUnit, switches, routers, network management, servers and other equipment that\nmay be necessary or desirable to offer data services (such as hubs, adapters,\nand CSU\/DSUs). The equipment outlined above may be in the form of separate\nsystems connected together via standard or proprietary interfaces. Alternatively\nthe functions may be contained in a single system or chassis comprised of cards\nor plug-in-modules.\n\n        2.4 Com21 Restriction. Com21 currently intends for 3Com to be its\nprimary cable modem Partner. As of the Effective Date, Com21 currently does not\nintend to enter into an agreement containing technology rights similar to the\nCom21 Technology rights granted in this Agreement with any other company for the\nfuture foreseeable (no more than two years from the Effective Date). Com21\nagrees to notify 3Com in writing within a reasonable time in the event 3Com\ndecides (which decision shall be in Com21's sole discretion) to enter into such\nan agreement.\n\n        2.5 3Com License to Com21. If Com21 desires, 3Com will grant to Com21 a\nnon-exclusive, non-transferable, worldwide, royalty-bearing license under the\n3Com Technology to (a) make or have made, use, market, sell, modify, lease and\nsupport the First Generation 3Com Products and (b) design, develop, make or have\nmade use, market, sell, modify, lease and support derivative cable modem\nproducts based upon the First Generation 3Com Products. Com21 shall pay to 3Com\na reasonable royalty to be negotiated, and Sections 3.4 (Reports) and 4 (Payment\nTerms) shall apply to Com21 on a reciprocal basis. If Com21 desires, 3Com agrees\nto negotiate in good faith terms and conditions favorable to Com21 for Com21 to\nOEM the First Generation 3Com Product. Upon Com21's election of the license\ngranted under this Section 2.5 (3Com License to Com21) and finalization of the\nterms of such license, 3Com shall provide to Com21 a design package comprising\nthe information and materials necessary to develop the First Generation 3Com\nProduct (the '3Com Design Package') and the parties shall work together in good\nfaith to develop criteria to determine if such materials and information shall\nbe deemed acceptable.\n\n        2.6 No Other Licenses. Except as specifically and unambiguously set\nforth in this Agreement, no other licenses are granted by Com21 or 3Com to the\nother party.\n\n3.      LICENSE FEES, ROYALTIES AND REPORTS\n\n        3.1 License Fee and Royalties. 3Com shall pay to Com21 the license fees\nand royalties as set forth in this Section 3.1 (License Fee and Royalties).\n\n               (a) Provided Com21 delivers to 3Com the existing portions of the\nDesign Package pursuant to Section 5.2 (Delivery) below, within thirty (30) days\nof the Effective Date, 3Com shall pay to Com21 a one-time license fee of One\nMillion Dollars ($1,000,000).\n\n\n*Certain information on this page has been omitted and filed separately with the\n Commission. Confidential treatment has been requested with respect to the\n omitted portions.\n\n                                        5\n\n\n               (b) Concurrent with the payment described in Section 3.1(a), 3Com\nshall also pay to Com21 a pre-paid, non-refundable (except in the event of a\nrefund pursuant to Section 5.4 (Remedies for Rejection and Termination) below)\nroyalty of One Million Dollars ($1,000,000) for the first 100,000 units of the\n3Com Products to be sold by 3Com.\n\n               (c) Until the earlier to occur of (i) the public availability of\nthe Com21 P4 Product in production quantities or (ii) December 31, 1998, 3Com\nshall pay to Com21 a per unit royalty of [*] for units of 3Com Products for\nwhich royalties are due in excess of one hundred thousand (100,000) sold by\n3Com. Thereafter, no further royalties on 3Com Products shall be owed by 3Com to\nCom21.\n\n               (d) Notwithstanding clauses (b) and (c) above, no royalty shall\nbe due with respect to units of the 3Com Products for 3Com internal use, alpha\nor beta units, demonstration units, consigned units, repair or replacement of\nany 3Com Products, or the sale of spare parts on the performance of warranty\nwork for any 3Com Products.\n\n        3.2 Mongoose Availability. If, on or before August 31, 1996, the Com21\nMongoose Product meeting the criteria to be agreed to by the parties and\ndescribed in Exhibit C (Com21 Mongoose Product Specification) and Exhibit D\n(Com21 Mongoose Product Acceptance Criteria) is delivered by Com21 and which\nmeets or is later found to meet the Com21 Mongoose Product Acceptance Criteria\ndescribed in Exhibit D (Com21 Mongoose Product Acceptance Criteria), 3Com shall\npay to Com21 within thirty (30) days of acceptance by 3Com an additional\nextended license fee of One Million Dollars ($1,000,000). If, after August 31,\n1996 but on or before December 31, 1996, the Com21 Mongoose Product meeting the\ncriteria to be agreed to by the parties and described in Exhibit C (Com21\nMongoose Product Specification) and Exhibit D (Com21 Mongoose Product Acceptance\nCriteria) is delivered by Com21 and which meets or is later found to meet the\nCom21 Mongoose Product Acceptance Criteria described in Exhibit D (Com21\nMongoose Product Acceptance Criteria), said license fee shall be Five Hundred\nThousand Dollars ($500,000). If said Com21 Mongoose Product meeting said\ncriteria is not delivered by Com21 until January 1, 1997 or later, 3Com shall\nnot be obligated to make any license fee pursuant to this Section 3.2 (Mongoose\nAvailability); however, Com21 shall remain obligated to provide the Com21\nMongoose Product as provided this Agreement. Com21 shall provide 3Com a\nreasonable number of samples of the Com21 Mongoose Product (including but not\nlimited to behavioral code) as it exists as of August 31, 1996 (regardless of\nwhether the Com21 Mongoose Product meets said criteria) and as it exists as of\nthe other dates set forth in this Section 3.2 (Mongoose Availability) until it\nmeets said criteria. 3Com agrees that COM 21 shall have no obligation to make\nany modification or enhancement to the Com21 Mongoose Product to accommodate any\nchange in the 3Com Product.\n\n        3.3 Most Favored Customer. Com21 represents and warrants that at the\ndate of this Agreement the license fees set forth herein do not exceed those\ncharged to any other customer of Com21 licensing the Com21 Technology or\ntechnology similar or equivalent thereto. If at any time, Com21 offers lower\nprices to any other customer for such similar or equivalent technology on\nsimilar terms or on terms less favorable to Com21, taken as whole, Com21 shall\nimmediately\n\n\n\n\n\n*Certain information on this page has been omitted and filed separately with the\n Commission. Confidential treatment has been requested with respect to the\n omitted portions.\n\n\n                                        6\n\n\n\n\n\n\n\n\n\nnotify 3Com and offer such more favorable license fees to 3Com effective as of\nthe date such prices were offered to such other customer.\n\n        3.4 Reports. 3Com shall keep adequate records to verify all reports and\npayments to be made to Com21 pursuant to this Agreement for a period of three\n(3) years following the date of such reports and payments. Com21 shall have the\nright to select an independent certified public accountant mutually agreeable to\nthe parties, whose fees are not contingent on the results of the inspection and\nwho agrees in writing to maintain the confidentiality of the information\nprovided to it, to inspect no more frequently than annually the records of 3Com\non reasonable notice and during regular business hours to verify the reports and\npayments required hereunder. If such inspection should disclose any\nunderpayment, 3Com shall promptly pay Com21 such amount. The entire cost of such\ninspection shall be borne by Com21; provided, however, that if 3Com is\ndetermined by such audit to have underpaid royalties by five percent (5%) or\nmore, then the reasonable cost of such audit shall be home by 3Com.\n\n4.      PAYMENT TERMS\n\n        4.1 Payment. Per-unit royalties under Section 3.1(c) above shall accrue\nupon shipment to a customer of 3Com Products by 3Com and shall be payable\nquarterly, within thirty (30) days after the first day of the month following\nthe 3Com fiscal quarter in which royalties accrued. Each royalty payment shall\nbe accompanied by a statement of all units shipped during the relevant period\nfor which a royalty is due. Payments and statements shall be sent to Com21 at\nthe address set forth at the beginning of this Agreement or such other address\nas Com21 may designate in writing.\n\n        4.2 Taxes. In addition to any other payments due under this Agreement,\n3Com agrees to pay, indemnify and hold Com21 harmless from any sales, use,\nexcise, import or export, value added or similar tax or duty, any other tax not\nbased on Com21's net income, and all governmental permit fees, license fees,\ncustoms fees and similar fees which Com21 may incur in respect of this\nAgreement.\n\n5.      DESIGN PACKAGE\n\n        5.1 Definition of Design Package. Promptly following the Effective Date,\nthe parties shall work together to determine and describe the materials and\ninformation necessary to develop cable modem products compatible with the Com21\nHeadend and the Specifications, and the criteria to determine if such materials\nand information shall be deemed acceptable. The description of the Design\nPackage shall be attached to this Agreement as Exhibit E (Design Package) when\nit is completed. Com21 shall provide 3Com with updated versions of the Design\nPackage as it evolves during the course of design reviews by the parties.\n\n        5.2 Delivery. On the Effective Date, Com21 shall deliver to 3Com all\nthen existing portions of the Design Package. In addition, Com21 shall use\ncommercially reasonable efforts to provide 3Com with the deliverables described\nin the Design Package in accordance with the\n\n                                        7\n\n\n\n\n\nmilestone schedule set forth therein. Because Com21's performance is dependent\nin part on 3Com's performance, any dates or time periods relevant to performance\nby Com21 hereunder shall be appropriately and equitably extended to account for\nany delays due to 3Com.\n\n        5.3 Acceptance. 3Com shall have twenty (20) days after receipt of each\ndeliverable in the Design Package (the 'Acceptance Period') to examine such\ndeliverable to determine that it substantially conforms with the Specifications\nin Exhibit B (Specifications) and as described in Exhibit A (Com21 Technology).\n3Com may reject a deliverable only if the deliverable fails in some material\nrespect to meet the Specifications in Exhibit B (Specifications) and as\ndescribed in Exhibit A (Com21 Technology). 3Com shall promptly notify Com21 if\nit rejects such deliverable with a written summary of the reason for rejection.\nIf no written rejection is received by Com21 within the Acceptance Period, such\ndeliverable shall be deemed accepted. Should the delivery of the deliverable be\nrejected by 3Com, Com21 shall use commercially reasonable efforts to correct the\ndeliverable to conform with the associated specifications and redeliver such\ncorrected deliverable to 3Com within twenty (20) days of receipt of rejection.\n3Com will have twenty (20) days after receipt of the redelivered deliverable to\naccept the deliverable. The foregoing acceptance\/rejection\/correction provisions\nshall apply to a redelivered deliverable, provided, however, that upon the third\nor any subsequent rejection, either party may terminate this Agreement by thirty\n(30) days notice unless the deliverable is accepted during the notice period.\nCom21 shall not be obligated to correct any failure caused by something other\nthan the deliverable.\n\n        5.4 Remedies for Rejection and Termination. If this Agreement is\nterminated pursuant to Section 5.3 (Acceptance) above, the parties agree to\nnegotiate in good faith the effect of such termination with respect to the\nrefund by Com21 of any amounts already paid by 3Com under Section 3 (License\nFees, Royalties and Reports) above, the portions of the Design Package, if any,\nto be retained by 3Com and 3Com's right, if any, in such Design Package portions\nand license fees in connection therewith. If the parties fail to agree on such\nterms within thirty (30) days of the effective date of termination, Com21 shall\nrefund all amounts already paid by 3Com under Section 3 (License Fees, Royalties\nand Reports) and 3Com shall have no rights in the Com21 Technology, the Com21\nMongoose Product or the Design Package.\n\n6.      SUPPORT\n\n        6.1 Design Support. Com21 will provide 3Com with a reasonable number of\nman-hours of Com21 R&amp;D, manufacturing and quality assurance engineers for\nsupport by telephone, fax or if requested by 3Com, at 3Com Santa Clara site,\nprovided Com21's current timetable for commercialization is not adversely\nimpacted. Com21 and 3Com shall designate representatives to serve as contacts\nfor such support. If additional support is requested by 3Com, Com21 shall\nprovide, at Com21's sole discretion, such service at reasonable times and places\nand at a rate equal to Com21's then current standard fee therefor (currently\n[$150]\/hour at Com21 facilities). Com21 shall provide 3Com with reasonable\nadvance notice of Com21 design reviews relating to Com21 cable modem products\nand permit a 3Com representative to attend.\n\n\n\n\n\n*Certain information on this page has been omitted and filed separately with the\n Commission. Confidential treatment has been requested with respect to the\n omitted portions.\n\n\n\n                                        8\n                                   \n                                           \n\n\n\n\n\n\n        6.2 Customer Support. The parties agree to work together to develop and\nfacilitate the call handling processes to provide seamless customer support and\ntechnical service to end users and service providers. Each party shall be solely\nresponsible for support of its products.\n\n        6.3 3Com Support.\n\n        3Com shall provide Com21 with a reasonable number of man-hours of the\nfollowing types of assistance:\n\n                      (a)    Chip design expertise;\n\n                      (b)    DVT facilities;\n\n                      (c)    Physical layer certification assistance;\n\n                      (d)    ATM switching technology;\n\n                      (e)    Network management;\n\n                      (f)    Low-cost volume manufacturing expertise; and\n\n                      (g)    Other consulting advice.\n\nCom21 shall provide to 3Com all the necessary technology to interface the 3Com\nProducts to the Com21 Headend.\n\n7.      MARKETING\n\n3Com and Com21 intend to jointly develop a marketing campaign to successfully\npromote communication over HFC and remove adoption barriers for both MSOs and\nend users. 3Com and Com21 shall jointly promote the Specifications to drive\nindustry standards. The parties envision that they initially would both market\nthe 3Com Product. The parties will work together to leverage their respective\nrelationships with MSOs to establish the superiority of the system solution they\njointly develop. The parties will work together to include each other products,\nas appropriate and applicable, in their respective advertising, public relations\nactivities, tradeshows, product literature and manuals, and World Wide Web\nsites.\n\n8.      STANDARDS\n\nThe parties acknowledge and agree that it is in their mutual interests to\npromote the 'The UPSTREAMS Protocol for HFC Networks' proposal, based on IEEE\n802 contribution IEEE P802.14\/95-152R1 (the 'Proposal') including subsequent\nrevisions, generated as required to promote acceptance in the standards bodies,\nand ATM Forum contribution ATMF\/95-1435R1, for acceptance in industry standards\nwith relevant standards bodies. The parties shall use\n\n                                        9\n                                   \n                                           \n\n\n\n\n\nreasonable efforts to collaborate on such promotion.\n\nThe parties further agree that other companies or consortia may participate in\nefforts to promote the Proposal, as needed to build consensus within the\nrelevant standards bodies, and that additional contributors shall not be\nprecluded from being added to The Proposal in the future.\n\nThe Proposal shall be made freely available, but intellectual property rights\n(including, without limitation, patent rights) included or referenced in the\nProposal shall be released or licensed in accordance with the policies of the\nrelevant standards body. Each shall retain all ownership of and title to\nintellectual property rights in contributions it makes to the Proposal.\n\n9.      COM21 HEADEND DEVELOPMENT AND RESALE BY 3COM\n\n        9.1 Development. Com21 shall use commercially reasonable efforts to\ndesign and develop the first generation Com21 Headend in accordance with a\nmutually agreeable schedule. The parties agree to meet to discuss the status and\ndirection of Com21's design and development of the Com21 Headend and to assess\nhow 3Com could assist to accelerate and enhance such design and development.\n\n        9.2 Resale by 3Com. The parties agree that 3Com shall be permitted to\nresell the Com21 Headend pursuant to the terms and conditions of a reseller\nagreement, entitled 'Headend Distribution Agreement', to be agreed upon and\nentered into by the parties. Com21 shall escrow the designs for the Com21\nHeadend for release to enable 3Com to manufacture the Com21 Headend under\ncertain conditions as more specifically set forth in the Technology Escrow and\nManufacturing License, attached hereto as Exhibit G, (Technology Escrow and\nManufacturing License), to be incorporated into and made a part of the Headend\nDistribution Agreement.\n\n        9.3 Com21 Headend Integration within 3Com Platform. The parties agree to\nwork together to develop by December 31, 1996 a mutually agreeable plan (a) to\nmake the Com21 Headend compatible for integration within a 3Com platform such as\nthe Trinity or ONcore architectures (which architecture shall be designated by\n3Com) or (b) to provide the necessary technology and specifications for such\nintegration. The parties agree that they shall perform such plan.\n\n10.0    3COM NIC TECHNOLOGY\n\n        3Com shall develop certain network interface card (NIC) technology and\nmake products incorporating such technology available to Com21 on mutually\nagreeable terms as follows:\n\n        10.1 Low-Cost NICS. 3Com shall provide a low cost network interface card\n(NIC) to be independently resold by Com21 and 3Com. This NIC would enable PC\nusers to connect a cable modem to their PCs. 3Com intends to develop the needed\nsoftware to make the installation relatively easy and user friendly.\n\n                                       10\n                                   \n                                           \n\n\n\n\n        10.2 NIC Drivers. 3Com shall develop NIC PC drivers to enable high\nperformance and efficient communication between the 3Com Products and the PC.\nThis could utilize 3Com technology such as the PACE technology.\n\n        10.3 Management Software. 3Com shall develop software to enable remote\nconfiguration and management of PC parameters over the HFC infrastructure such\nas AMP and DRMON.\n\n11.     PROPRIETARY RIGHTS\n\n        11.1 Title. Com21 shall be the sole and exclusive owner of the Design\nPackage, Com21 Technology, Com21 Headend, Com21 Mongoose Product, all\nmodifications and derivative works (produced by Com21) thereof, the Com21\nTrademarks and all proprietary and intellectual property rights therein\nthroughout the world. Except for the Design Package, Com21 Technology, Com21\nHeadend and Com21 Mongoose Product, modifications and derivative works (produced\nby Com21) thereof and the Com21 Trademarks embodied in the First Generation 3Com\nProduct, 3Com shall be the sole and exclusive owner of the 3Com Technology and\nother technology embodied in the 3Com Products. 3Com agrees to sell to Com21 for\nresale as a Com21 branded product any 3Com Product embodying a modification or\nderivative work (produced by 3Com) of the Design Package, Com21 Technology or\nCom21 Mongoose Product at prices that are not higher than those 3Com charges any\nother customer of such product or product containing similar or equivalent\ntechnology at similar volumes. Technology that is made, conceived of or reduced\nto practice by the parties jointly in the course of development under this\nAgreement shall be jointly owned, without accounting to each other, both parties\nhaving the right to design, develop, make or have made, use, market, sell,\nmodify, sublicense, lease and support products using the technology arising out\nof or obtained with respect to such joint development. To the extent necessary\nto bring about the joint ownership of the jointly developed technology, each\nparty hereby assigns to the other party an undivided ownership interest in their\nrespective technology in the jointly developed technology. Each party shall use\nreasonable efforts to enable the other to use third party technology\nincorporated into the Com21 Technology and\/or the Com21 Mongoose Product (in the\ncase of Com21) or the 3Com Technology (in the case of 3Com) under terms and\nconditions similar to the terms and conditions such party has received from said\nthird parties, whether by means of a sublicense or directly from the third\nparty.\n\n        11.2 Patents. Except as otherwise provided below, 3Com agrees at its\nelection and own expense (i) to file in the United States Patent and Trademark\nOffice (the 'PTO') applications ('Applications') for Letters Patents covering\nthe jointly developed technology, (ii) to diligently prosecute the Applications\nand (iii) to maintain in force any patents issuing therefrom. 3Com agrees to\npromptly supply Com21 with a complete copy of each Application and all\ncommunications received from, or sent to, the PTO concerning the Applications.\n3Com agrees to submit to Com21 for consideration and advice all responses to PTO\ncommunications before filing them, and to give due consideration to Com21's\nadvice with respect to such responses. The filing and prosecution of foreign\npatent applications shall be subject to mutual agreement of the\n\n                                       11\n\n\n\n\n\n\nparties. If, 3Com elects not to seek patent protection for any invention of the\njointly developed technology, 3Com shall so notify Com21 in writing and Com21\nmay, in its sole discretion and at its sole expense, file an Application for\nLetters Patent covering such invention and Com21 agrees to diligently prosecute\nall such Applications it elects to file. If, at any time, 3Com intends to allow\nany Application or any patent lapse, become abandoned or forfeited without\nhaving first filed a substitute, 3Com shall (a) notify Com21 in writing of its\nintention at least sixty (60) days before the date on which the application or\npatent is due to lapse or become abandoned or forfeited and (b) if requested by\nCom21, promptly assign the entire right, title and interest in and to that\napplication or patent to Com21. Com21 shall be under no obligation to prosecute\nor maintain in force any application or patent assigned to it, provided Com21\nshall notify 3Com in writing of its intention not to prosecute or maintain any\nsuch application or patent at least sixty (60) days before the date on which the\napplication or patent is due to lapse or become abandoned or forfeited.\n\n        11.3 Notices. Each party agrees that it will cause to appear on the\ncontainer or label for each unit of the products manufactured hereunder\nappropriate patent and copyright notices and proprietary data legends as\ncontained in the Design Package or Com21 Technology delivered by Com21 or First\nGeneration 3Com Product or 3Com Technology delivered by 3Com, as the case may\nbe, pursuant to this Agreement or as otherwise reasonably required by the other\nparty.\n\n12.     WARRANTY\n\n        12.1 Com21 Warrant. Com21 warrants to 3Com that for a period of ninety\n(90) days after receipt by 3Com of the Design Package (the 'Warranty Period')\nthe media on which Com21 delivers the Design Package to 3Com shall be free of\ndefects in material and workmanship. Com21 shall replace any such defective\nmedia promptly following receipt of written notice from 3Com of such defects\nduring the Warranty Period. Com21 further represents and warrants to 3Com that\nthe Com21 Technology and materials contained in the Design Package provided to\n3Com will be sufficient to permit 3Com (assuming 3Com has R&amp;D and manufacturing\nskill and know-how typical of manufacturers of computer products similar to\ncable modem products) to develop the 3Com Product to be compatible with the\nCom21 Headend and to conform in all material respects to the Specifications.\nEXCEPT FOR THE FOREGOING LIMITED WARRANTIES AND AS SET FORTH IN SECTION 13\n(INDEMNIFICATION), COM21 MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, AS\nTO ANY MATTER WHATSOEVER. IN PARTICULAR, ANY AND ALL WARRANTIES OF\nMERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE ARE EXPRESSLY EXCLUDED.\n\n        12.2 3Com Warranty to Com21. 3Com warrants to Com21 that for a period of\nninety (90)days after receipt by Com21 of the 3Com Design Package (the '3Com\nWarranty Period') the media on which 3Com delivers the 3Com Design Package to\nCom21 shall be free from defects in material and workmanship. 3Com shall replace\nany such defective media promptly following receipt of written notice from Com21\nof such defects during the 3Com Warranty Period. 3Com further represents and\nwarrants to Com21 that the 3Com Technology and materials contained in\n\n                                       12\n                                   \n                                           \n\n\n\n\n\nthe 3Com Design Package provided to Com21 will be sufficient to permit Com21\n(assuming Com21 has R&amp;D and manufacturing skill and know-how typical of\nmanufacturers of computer products similar to cable modem products) to develop\nthe First Generation 3Com Product. EXCEPT FOR THE FOREGOING LIMITED WARRANTIES\nAND AS SET FORTH IN SECTION 13 (INDEMNIFICATION), 3COM MAKES NO WARRANTIES,\nEXPRESS, IMPLIED OR STATUTORY, TO COM21 AS TO ANY MATTER WHATSOEVER. IN\nPARTICULAR, ANY AND ALL WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A\nPARTICULAR PURPOSE ARE EXPRESSLY EXCLUDED.\n\n        12.3 Customer Warranty . Each party shall be solely responsible for\ncustomer warranty of any and all products manufactured by such party pursuant to\nthis Agreement.\n\n13.     INDEMNIFICATION\n\n        13.1 Com21 Indemnification of 3Com. Com21 shall indemnify and hold\nharmless 3Com, its officers, directors, employees and agents against any claims,\nactions or demands alleging that the Com21 Technology, Com21 Mongoose Product or\nDesign Package, including all updates thereto (if any) provided to 3Com by\nCom21, infringe on any U.S. copyrights, U.S. patents, trade secrets or other\nproprietary rights of any third parties.\n\n               (a) This obligation is contingent upon (i) 3Com giving prompt\n        written notice to Com21 of any such claim, action or demand, (ii) 3Com\n        allowing Com21 to control the defense and related settlement\n        negotiations and (iii) 3Com fully assisting, at Com21 expense, in the\n        defense.\n\n               (b) Com21 shall have no obligation hereunder for any such claims,\n        actions or demands to the extent such claims, actions or demands result\n        from:\n\n               (1) The 3Com Product, or portions or components thereof, made in\n        accordance with 3Com's specifications; or\n\n               (2) Com21 Technology, Com21 Mongoose Product or Design Package\ncombined with processes, materials or products not supplied, created, developed\nlicensed by Com21; or\n\n               (3) The modification or attempted modification of the Com21\nTechnology, Com21 Mongoose Product or Design Package by parties other than Com21\nor the use or distribution of such modified Com21 Technology, Com21 Mongoose\nProduct or Design Package or\n\n               (4) 3Com's continued alleged infringing activity after being\nnotified thereof or after being informed of modifications that would have\navoided the infringement.\n\nTHE FOREGOING STATES 3COMS SOLE AND EXCLUSIVE REMEDY WITH\n\n                                       13\n                                   \n                                           \n\n\n\n\n\nRESPECT TO CLAIMS OF INFRINGEMENT OF PROPRIETARY RIGHTS OF ANY KIND.\n\n        13.2 3Com Indemnification of Com21. 3Com shall indemnify and hold\nharmless Com21, its officers, directors, employees and agents against any\nclaims, actions or demands alleging that the First Generation 3Com Products or\n3Com Technology infringe on any U.S. copyrights, U.S. patents, trade secrets or\nother proprietary rights of any third parties.\n\n               (a) This obligation is contingent upon (i) Com21 giving prompt\nwritten notice to 3Com of any such claim, action or demand, (ii) Com21 allowing\n3Com to control the defense and related settlement negotiations and (iii) Com21\nfully assisting, at 3Com expense, in the defense.\n\n               (b) 3Com shall have no obligation hereunder for any such claims,\nactions or demands to the extent such claims, actions or demands result from:\n\n                      (1) The Com21 Technology, Com21 Mongoose Product or Design\n        Package, unless (i) the 3Com Product, or portion or component thereof,\n        is made in whole or in part in accordance with 3Com's specifications or\n        (ii) Com21 technology, Com21 Mongoose Product or Design Package is\n        combined with materials, processes or products not supplied, created,\n        developed or licensed by Com21;\n\nor\n\n                        (2) The modification or attempted modification of the\n               First Generation 3Com Product or 3Com Technology by parties other\n               than 3Com or the use or distribution of such modified First\n               Generation 3Com Product or 3Com Technology\nor\n\n                      (3) Com21's continued alleged infringing activity after\n               being notified thereof or after being informed of modifications\n               that would have avoided the infringement.\n\nTHE FOREGOING STATES COM21'S SOLE AND EXCLUSIVE REMEDY WITH RESPECT TO CLAIMS OF\nINFRINGEMENT OF PROPRIETARY RIGHTS OF ANY KIND.\n\n14.     CONFIDENTIALITY\n\n        14.1 Confidential Information. Each party acknowledges that in the\ncourse of the performance of this Agreement, it may obtain the Confidential\nInformation of the other party. The Receiving Party (as defined in Section 1.7\n(Confidential Information)) shall, at all times, both during the term of this\nAgreement and thereafter for a period of [*], keep in confidence and trust all\nof the Disclosing Party's (as defined in Section 1.7 (Confidential Information))\nConfidential Information received by it. The Receiving Party shall not use the\n\n                                       14\n                                   \n                                           \n\n*Certain information on this page has been omitted and filed separately with the\n Commission. Confidential treatment has been requested with respect to the\n omitted portions.\n\n\n\n\n\n\nConfidential Information of the Disclosing Party other than as expressly\npermitted under the terms of this Agreement or by a separate written agreement.\nThe Receiving Party shall take all reasonable steps to prevent unauthorized\ndisclosure or use of the Disclosing Party's Confidential Information and to\nprevent it from failing into the public domain or into the possession of\nunauthorized persons. The Receiving Party shall not disclose Confidential\nInformation of the Disclosing Party to any person or entity other than its\nofficers, employees, consultants and subsidiaries who need access to such\nConfidential Information in order to effect the intent of this Agreement and who\nhave entered into written confidentiality agreements which protect the\nConfidential Information of the Disclosing Party. The Receiving Party shall\nimmediately give notice to the Disclosing Party of any unauthorized use or\ndisclosure of Disclosing Party's Confidential Information. The Receiving Party\nagrees to assist the Disclosing Party to remedy such unauthorized use or\ndisclosure of its Confidential Information.\n\n        14.2 Exceptions to Confidential Information. The obligations set forth\nin Section 14.1 (Confidential Information) shall not apply to the extent that\nConfidential Information includes information which (a) is already known to the\nReceiving Party at the time of disclosure, which knowledge the Receiving Party\nshall have the burden of proving; (b) is, or, through no act or failure to act\nof the Receiving Party, becomes publicly known; (c) is received by the Receiving\nParty from a third party without restriction on disclosure; (d) is independently\ndeveloped by the Receiving Party without reference to the Confidential\nInformation of the Disclosing Party, which independent development the Receiving\nParty will have the burden of proving; (e) is approved for release by written\nauthorization of the Disclosing Party; or (f) is required to be disclosed by a\ngovernment agency to further the objectives of this Agreement or by a proper\norder of a court of competent jurisdiction; provided, however that the Receiving\nParty will use its reasonable efforts to minimize such disclosure and will\nconsult with and assist the Disclosing Party in obtaining a protective order\nprior to such disclosure.\n\n        14.3 Remedies. Each party acknowledges and agrees that any breach of\nthis Section 14 (Confidentiality) by a party's unauthorized use or disclosure of\nthe Com21 Technology, the 3Com Technology or the Design Package, as the case may\nbe, would cause irreparable injury to the other party for which monetary damages\nare not an adequate remedy. Accordingly, in addition to other available\nremedies, the non-breaching party will be entitled to obtain appropriate\ninjunctive relief and other equitable remedies in the event of such breach.\n\n15.     LIMITATION OF LIABILITY\n\n        EXCEPT FOR A BREACH OF SECTION 14 (CONFIDENTIALITY), NEITHER PARTY SHALL\nHAVE ANY LIABILITY FOR INCIDENTAL, CONSEQUENTIAL, INDIRECT, SPECIAL OR PUNITIVE\nDAMAGES OR LIABILITIES OF ANY KIND OR FOR LOSS OF REVENUE, LOSS OF BUSINESS OR\nOTHER FINANCIAL LOSS OR FOR ANY COST OF PROCUREMENT OF SUBSTITUTE GOODS,\nSERVICES OR TECHNOLOGY ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT,\nINCLUDING WITHOUT LIMITATION IN CONNECTION WITH THE MANUFACTURE, SALE,\nINSTALLATION, USE, PERFORMANCE, FAILURE OR\n\n                                       15\n                                   \n                                           \n\n\n\n\n\nINTERRUPTION OF THE PRODUCT(S) LICENSED HEREUNDER, REGARDLESS OF THE FORM OF THE\nACTION, WHETHER IN CONTRACT, TORT (INCLUDING NEGLIGENCE) STRICT PRODUCT\nLIABILITY OR OTHERWISE, EVEN IF ANY REPRESENTATIVE OF A PARTY HERETO HAS BEEN\nADVISED OF THE POSSIBILITY OF SUCH DAMAGES.\n\n16.     EXPORT CONTROLS\n\n        Each party agrees that it will not knowingly, without prior\nauthorization, if required, of the Office of Export Administration, U.S.\nDepartment of Commerce 14th and Constitution Ave., N.W., Washington, D.C. 20230,\nexport or reexport (as defined in Section 779.1(b)-(c) of the Export\nAdministration Regulations - 'Regulations' - and any amendments thereto) the\ntechnical data relating to the Com21 Mongoose Product, Com21 Headend, 3Com\nProduct, Com21 Technology or 3Com Technology or the direct products of such\ntechnical data to Afghanistan, the People's Republic of China or to any Group Q,\nS, W, Y or Z country specified in Supplement No. 1 to Section 770 of the\nRegulations as amended from time to time.\n\n17.     TERM AND TERMINATION\n\n        17.1 Term. This Agreement shall be effective from the Effective Date for\na period of five (5) years, unless earlier terminated in accordance with its\nterms. Thereafter, this Agreement shall automatically be renewed on its\nanniversary dates for successive one (1) year terms subject to a party providing\nwritten notice to the other party no later than sixty (60) days prior to any\nsuch anniversary date of such party's intent not to renew in which event this\nAgreement shall terminate at the end of the then current term; provided that, in\nthe event of Com21's failure to renew, the Licenses granted to 3Com under\nSection 2 (Licenses) above shall continue in full force in perpetuity.\n\n        17.2 Termination Due to Bankruptcy, etc. In the event a party (i)\nbecomes insolvent; (ii) voluntarily files a petition under applicable bankruptcy\nor insolvency laws which such party fails to have released within thirty (30)\ndays after filing, (iii) has filed against it a petition under applicable\nbankruptcy or insolvency laws which such party fails to have released within\nninety (90) days (thirty (30) days if such party fails to contest the petition\nin good faith) after filing; (iv) proposes any dissolution, composition or\nfinancial reorganization with creditors or if a receiver, trustee, custodian or\nsimilar agent is appointed or takes possession with respect to all or\nsubstantially all property or business of such party; or (v) such party makes a\ngeneral assignment for the benefit of creditors, the other party may terminate\nthis Agreement by giving a termination notice, which termination shall become\neffective ten (10) days after mailing.\n\n        17.3 Right to Terminate. Either party shall have the right to terminate\nthis Agreement if the other party is in material breach of any term or condition\nof this Agreement and fails to remedy such breach within thirty (30) days\n(twenty (20) days in the case of a\n\n                                       16\n                                   \n                                           \n\n\n\n\n\nbreach of a payment obligation) after receipt of written notice of such breach\ngiven by the non-breaching party; provided, however, that a breach of the\nobligations set forth in Section 14 (Confidentiality) shall be grounds for\nimmediate termination by the non-breaching party of this Agreement.\n\n        17.4 Obligations Upon Termination caused by 3Com Breach. Upon the\ntermination of this Agreement caused by 3Com's material breach of this\nAgreement:\n\n               (a) 3Com's obligations to pay all sums due hereunder shall be\naccelerated and all such sums shall be due and payable on the date of\ntermination or expiration;\n\n               (b) The licenses granted to 3Com hereunder shall terminate and\n3Com shall discontinue the use, manufacture, reproduction, distribution and\nsublicensing (as applicable of the Com21 Technology, Com21 Mongoose Product and\nDesign Package licensed from Com21;\n\n               (c) 3Com may keep one (1) copy of the Com21 Technology, Com21\nMongoose Product and Design Package to be used solely for support of its\ninstalled base of 3Com Products and 3Com shall have a limited license to the\nextent necessary for 3Com to support the installed base of 3Com Products.\n\n        17.5 Obligations Upon Termination caused by Com21 Breach. Upon the\ntermination of this Agreement caused by Com21's material breach of this\nAgreement:\n\n               (a) Com21's obligations to pay all sums due hereunder shall be\naccelerated and all such sums shall be due and payable on the date of\ntermination or expiration;\n\n               (b) The licenses granted to Com21 hereunder shall terminate and\nCom21 shall discontinue the use, manufacture, reproduction, distribution and\nsublicensing (as applicable) of the 3Com Technology and First Generation 3Com\nProduct licensed from 3Com;\n\n               (c) Com21 may keep one (1) copy of the 3Com Technology and First\nGeneration 3Com Product to be used solely for support of its installed base of\nFirst Generation 3Com Products and Com21 shall have a limited license to the\nextent necessary for Com21 to support the installed base of First Generation\n3Com Products.\n\n        17.6 Other Obligations Upon Termination. Except as otherwise provided in\nSections 17.4(c) and 17.5(c) above, upon the expiration or earlier termination\nof the Agreement, the Receiving Party shall, within fifteen (15) days of any\ntermination or expiration of this Agreement, return to the Disclosing Party or\ndestroy all full or partial copies, in whatever media, of any and all materials\nin the Receiving Party's possession which had been furnished to the Receiving\nParty by the Disclosing Party pursuant to this Agreement, and the Receiving\nParty shall warrant in writing to the Disclosing Party within thirty (30) days\nafter termination or expiration that all such materials have been returned to\nthe Disclosing Party or destroyed.\n\n                                       17\n                                   \n                                           \n\n\n\n\n\n\n        17.7 Survival. Neither the termination or expiration of this Agreement\nshall relieve either party from its obligations to pay the other any sums\naccrued hereunder. The parties agree that their respective rights, obligations\nand duties under Sections 2 (Licenses) (except as otherwise set forth in this\nSection 17 (Term and Termination)), II (Proprietary Rights), 13\n(Indemnification), 14 (Confidentiality), 15 (Limitation of Liability), and 17\n(Term and Termination), as well as any rights, obligations and duties which by\ntheir nature extend beyond the termination or expiration of this Agreement shall\nsurvive any termination or expiration and remain in effect for a period of five\n(5) years thereafter or the period specified in this Agreement, if longer.\n\n18.     MISCELLANEOUS\n\n        18.1 Notices. Any notice provided for or permitted under this Agreement\nwill be treated as having been given when (a) delivered personally, (b) sent by\nconfirmed telex or telecopy, (c) sent by commercial overnight courier with\nwritten verification of receipt, or (d) mailed postage prepaid by certified or\nregistered mail, return receipt requested, to the party to be notified, at the\naddress set forth below, or at such other place of which the other party has\nbeen notified in accordance with the provisions of this Section 18.1 (Notices).\n\n               If to 3Com:   3Com Corporation\n                             5400 Bayfront Plaza\n                             Santa Clara, CA 95052\n                             Telecopy:  (408) 764-8955\n                             Attention: PCOps Purchasing Manager\n\n        with a copy to the attention of 3Com's General Counsel at the address\n        above, and a telecopy number of (408) 764-6434.\n\n               If to Com21:  Com21, Inc.\n                             1991 Landings Drive\n                             Mountain View, CA 94043\n                             Telecopy:  (415) 254-5883\n                             Attention: President\n\n                and copy to: Brobeck, Phleger &amp; Harrison LLP\n                             Two Embarcadero Place\n                             2200 Geng Road\n                             Palo Alto, CA 94303\n                             Telecopy:  (415) 496-2885\n                             Attention: Edward M. Leonard, Esq.\n\nSuch notice will be treated as having been received upon the earlier of actual\nreceipt or five (5) days after posting.\n\n\n                                       18\n                                   \n                                           \n\n\n\n\n\n        18.2 Amendment: Waiver. This Agreement may be amended or supplemented\nonly by a writing that is signed by duly authorized representatives of both\nparties. No term or provision hereof will be considered waived by either party,\nand no breach excused by either party, unless such waiver or consent is in\nwriting signed on behalf of the party against whom the waiver is asserted. No\nconsent by either party to, or waiver of, a breach by either party, whether\nexpress or implied, will constitute a consent to, waiver of, or excuse of any\nother, different, or subsequent breach by either party.\n\n        18.3 Severability. If any provision of this Agreement is held invalid or\nunenforceable for any reason, the remainder of the provision shall be amended to\nachieve as closely as possible the economic effect of the original term and all\nother provision shall continue in full force and effect.\n\n        18.4 Governing Law. This Agreement shall be governed by and construed\nunder the laws of the United States and the State of California as applied to\nagreements entered into and to be performed entirely within California between\nCalifornia residents. The parties agree that the United Nations Convention on\nContracts for the International Sale of Goods is specifically excluded from\napplication to this Agreement.\n\n        18.5 Choice of Forum. The parties hereby submit to the jurisdiction of,\nand waive any venue objections against, the United States District Court for the\nNorthern District of California, San Jose Branch and the Superior and Municipal\nCourts of the State of California, Santa Clara County, in any litigation arising\nout of the Agreement.\n\n        18.6 Injunctive Relief. It is expressly agreed that a material breach of\nthis Agreement (except Section 14 (Confidentiality)) by a party could cause\nirreparable harm to the non-breaching party and that a remedy at law would be\ninadequate. Therefore, in addition to any and all remedies available at law, the\nnon-breaching party shall be entitled to seek an injunction or other equitable\nremedies in all legal proceedings in the event of any threatened or actual\nviolation of any or all of the provisions hereof.\n\n        18.7 Attorneys' Fees. In any action to enforce this Agreement, the\nprevailing party shall be awarded all court costs and reasonable attorneys' fees\nincurred, including such costs and attorneys' fees incurred in enforcing and\ncollecting any judgment.\n\n        18.8 Force Majeure. Except for the payment of money, neither party will\nbe liable for any failure or delay in performance beyond its control under this\nAgreement due to fire, explosion, earthquake, storm, flood or other weather,\nunavailability of necessary utilities or raw materials, war, insurrection, riot,\nact of God or the public enemy, law, act, order, export control regulation,\nproclamation, decree, regulation, ordinance, or instructions of Government or\nother public authorities, strikes, lockouts or other labor disputes or shortages\nor inability to obtain material or equipment, compliance with laws or regulation\n(including, without limitation, those related to infringement) or judgment or\ndecree of a court of competent jurisdiction (not arising out of breach by such\nparty of this Agreement). In the event of the happening of such a cause,\n\n                                       19\n                                   \n                                           \n\n\n\n\n\nthe party whose performance is so affected will give prompt, written notice to\nthe other party, stating the period of time the same is expected to continue and\nwill use its best efforts to mitigate the effect of the event giving rise to the\nfailure or delay in performance.\n\n        18.9 Assignment. 3Com may assign this Agreement to any person to whom it\ntransfers all or substantially all of its proprietary rights in the 3Com Product\nand 3Com Technology. Otherwise, neither party may assign, voluntarily, by\noperation of law, or otherwise, any rights or delegate any duties under this\nAgreement (other than the right to receive payments) without the other party\nprior written consent and any attempt to do so without such consent will be void\nexcept that an assignment to an acquiror of all or substantially all of a\nparty's stock, assets or business shall not require prior written consent of the\nother party. This Agreement will bind and inure to the benefit of the parties\nand their respective successors and permitted assigns.\n\n        18.10 Relationship of the Parties. The parties to this Agreement are\nindependent contractors. There is no relationship of agency, partnership, joint\nventure, employment, or franchise between the parties. Neither party has the\nauthority to bind the other or to incur any obligation on its behalf.\n\n        18.11 Allocation of Risk. The sections on limitation of liability,\nwarranties and disclaimer of warranties allocate the risks in the Agreement\nbetween the parties. This allocation is an essential element of the basis of the\nbargain between the parties.\n\n        18.12 Publicity. Neither party shall disclose the terms of this\nAgreement without the prior approval of the other party, except that a party may\ndisclose the terms of this Agreement where required by law, provided that such\nparty makes every reasonable effort to obtain confidential treatment or similar\nprotection to the fullest extent available to avoid public disclosure of the\nterms of this Agreement. A party required by law to make disclosure of the terms\nof this Agreement will promptly notify the other party and permit the other\nparty to review and participate in the application process seeking confidential\ntreatment.\n\n        18.13 Construction of Agreement. This Agreement has been negotiated by\nthe respective parties hereto and their attorneys and the language hereof shall\nnot be construed for or against any party. The titles and headings herein are\nfor reference purposes only and shall not in any manner limit the construction\nof this Agreement, which shall be considered as a whole.\n\n        18.14 Counterparts. This Agreement may be executed in two counterparts,\neach of which shall be deemed an original, but both of which together shall\nconstitute one and the same instrument. If this Agreement is executed in\ncounterparts, no signatory hereto shall be bound until both the parties named\nbelow have duly executed or caused to be duly executed a counterpart of this\nAgreement.\n\n        18.15 Entire Agreement. This Agreement, including all Exhibits to this\nAgreement, constitutes the entire agreement between the parties relating to this\nsubject matter and supersedes all prior or simultaneous representations,\ndiscussions, negotiations, and agreements, whether\n\n                                       20\n\n\n\n\n\n\nwritten or oral.\n\n        IN WITNESS WHEREOF, the parties hereto have executed this Agreement on\nthe dates set forth below effective as of the Effective Date.\n\n    3COM CORPORATION                       COM21, INC.\n\n    By:                                      By:\n       -------------------------------          -------------------------------\n\n    Name:                                    Name:\n         -----------------------------            -----------------------------\n\n    Title:                                   Title:\n          ----------------------------             ----------------------------\n\n    Date: March 22, 1996                     Date: March 22, 1996\n         -----------------------------            -----------------------------\n\nList of Exhibits:\n\nA - Com21 Technology\nB - Specifications\nC - Com21 Mongoose Product Specification\nD - Com21 Mongoose Product Acceptance Criteria\nE - Design Package\nF - Com21 Trademarks\nG - Technology Escrow and Manufacturing License\n\n\n\n                                       21\n                                   \n                                           \n\n\n\n\n\n                                    EXHIBIT A\n\n                                 COM21TECHNOLOGY\n           [to be prepared and delivered consistent with Section 5.2]\n\n\n\n\nCable modem CATV MAC and PHY interface specifications\n\nCable modem management message protocol\n\nCable modem system design\n\nCable modem circuit design\n\nCable modem printed circuit board design\n\nCable modem diagnostic firmware\n\nCable modem operational firmware\n\nCable modem ASIC source code (RTL)\n\nCable modem specifications and test criteria\n\nCable modem mechanical design\n\n\n\n\n\n\n\n                                       22\n                                   \n                                           \n\n\n\n\n\n                                    EXHIBIT B\n\n                                 SPECIFICATIONS\n                    [to be attached at the time of execution]\n\n\n\n\n\n\n\n\n\n\n                                       23\n                                   \n                                           \n\n\n\n\n\n                                    EXHIBIT C\n\n                      COM21 MONGOOSE PRODUCT SPECIFICATION\n         [Product Specification to be attached at the time of execution]\n\n\n\n\n\n\n\n\n\n\n                                       24\n                                   \n                                           \n\n\n\n\n\n                                    EXHIBIT D\n\n                   COM21 MONGOOSE PRODUCT ACCEPTANCE CRITERIA\n\n                       [Acceptance criteria to be prepared\n                  and attached within 60 days after execution]\n\n\n                   COM21 Mongoose Product Acceptance Criteria\n                               Contract Exhibit D\n\nRevision 1.0, 6\/07\/96\nEd Boyd\nJohn Griesing\n\nThe following will be used to determine the acceptance of the Mongoose product.\nAll of the items listed in the document will be required to accept the Mongoose\nproduct at meeting the Acceptance Criteria.\n\n\n1.      Design Package\n\n        The following is the design package that 3Com expects to receive\n        relative to the Mongoose product. It is expected that this package will\n        be available in it's entirety at the time of fabrication of the final\n        Mongoose product.\n\n<font size=\"2\">-       RTL Verilog Code that compiles without errors and with all warnings\n        messages investigated.\n\n-       Verilog simulation environment with self checking test cases. A self\n        checking test case will report an error when the feature to be tested\n        fails.\n\n-       Behavioral, minimum delay netlist, typical delay netlist, and maximum\n        delay netlist simulations passing in Verilog simulation environment.\n\n-       Set of test vectors with 90% or greater test coverage.\n\n-       Simulate vectors using minimum, typical, and maximum delays.\n\n-       Simulate vectors using dynamic timing analyzer (i.e. Epilog) (optional).\n\n-       Synopsys scripts for synthesis and complete set of timing constraints\n        for synopsys.\n\n-       Synopsys static timing analysis completed without violations.\n\n\n2.      Environmental Conditions\n\n        The following conditions will be tested on the device.\n\n-       Temperature testing over operating range (0C-70C)\n\n-       Voltage margining (4.75 - 5.25 V)\n\n-       Timing Verification (per specification)\n\n\n                                       25\n                                   \n                                           \n\n\n\n\n\n-       29K Bus\n\n-       Modulator\/Demodulator\n\n-       SRAM\n\n-       MACE\n\n-       Mongoose BER (Bit Error Rate) Less than IOE-9\n\n3.      Mongoose Scenarios to be verified with final silicon.\n\n-       Ethernet Packet Bridging.\n\n        -       Send packets to learn source addresses. Verify bridging based on\n                learned addresses. Verify aging of old addresses and replacement\n                of oldest entries.\n\n        -       Send broadcast packets. Verify bridging based on ethertype table\n                and broadcast rate count.\n\n        -       Send packets directed to processor. Verify bridging based on\n                local MAC enable switch, MAC address table, and multicast\n                address table.\n\n        -       Send multicast packets. Verify bridging based on multicast\n                address table.\n\n-       MACE Interface.\n\n        -       Transmit packets with MACE underruns, max collisions, and late\n                collisions. Verify detection and recovery.\n\n        -       Receive packets that had late collisions, CRC errors, alignment\n                errors, and overruns. Verify detection and recovery. \n\n-       Determine cell and frame boundaries.\n\n        -       Verify Cell delination detection.\n\n        -       Verify Frame delination detection.\n\n        -       Generate T7EI errors. Verify detection and recovery.\n\n        -       Corrupt\/change both frame and cell boundaries. Verify detection\n                of loss, reestablishment or connection, and graceful termination\n                to upstream transmission.\n\n-       Decryption of packet.\n\n        -       Decrypt OAM, AAL5 and raw ATM cells using all 10 keys based on\n                the VPI. Verify cell contents.\n\n-       Downstream packet routing.\n\n        -       Send OAM's packet and verify reception into queue 0.\n\n        -       Send good and bad CRC-10 in OAM packets. Verify mongoose\n                detection.\n\n        -       Send Raw ATM cells to queues I and 2. Verify cell contents.\n\n        -       Send AAL5 cells to queues 3, 4, &amp; 5. Verify cells contents.\n\n        -       Send good and bad CRC-32's with AAL5 packets. Verify mongoose\n                detection.\n\n-       Downstream grant queuing.\n\n        -       Send Acquisition grants. Verify detection, queuing, and random\n                backoff.\n\n        -       Send Contention grants. Verify detection, queuing and random\n                backoff. Verify transition for Acquisition to Active state.\n\n        -       Verify transition from Active to Idle state.\n\n        -       Send Directed grants. Verify state changes and proper queuing.\n\n        -       Overflow grant queue. Verify recovery.\n\n                                       26\n                                   \n                                           \n\n\n\n\n\n        -       Send grants with bad CRC-10's. Verify removal from queue.\n\n-       Encryption of packet.\n\n        -       Encrypt OAM, AAL5 and raw ATM cells using all 4 keys. Verify\n                cell contents.\n\n        -       Encrypt packet with decryption occurring on downstream channel.\n\n-       FEC Generation.\n\n        -       Verify FEC on upstream data. Generate bit errors and verify\n                reception at head end.\n\n-       Upstream Queues.\n\n        -       Upload multiple packets into all queues. Verify priority\n                ordering and packet boundaries.\n\n-       Upstream Cell Generation.\n\n        -       Send AAL5 Packets upstream. Verify header information, HEC,\n                CRC-32, and reassembled packet at head end.\n\n        -       Send OAM packets. Verify header information, HEC, CRC-10, and\n                payload data.\n\n        -       Send raw ATM cells. Verify data.\n\n-       Upstream traffic.\n\n        -       Verify IDLE cell Generation.\n\n        -       Verify start of frame delay.\n\n-       Ability to gracefully reset queues, MACE, and cable modem interface.\n\n-       Generate and acknowledge all interrupts.\n\n-       Read and write all processor accessible registers.\n\n4.      Test Equipment\n\nThe above testing requires the following equipment from Com21\n\n-       Latest version HCX and associated SW\n\n\n\n\n\n\n\n\n<\/font>                                       27\n                                   \n                                           \n\n\n\n\n\n                                    EXHIBIT E\n\n                                 DESIGN PACKAGE\n\n     [description of materials to be delivered consistent with Section 5.2]\n\n\n\n\n\n\n\n\n\n\n                                       28\n                                   \n                                           \n\n\n\n\n\n                                    EXHIBIT F\n\n                                COM21 TRADEMARKS\n\n                               [to be determined]\n\n\n\n\n\n\n\n\n\n\n                                       29\n                                   \n                                           \n\n\n\n\n\n                                    EXHIBIT G\n\n                   TECHNOLOGY ESCROW AND MANUFACTURING LICENSE\n\nDefinitions\n\n        'Products' means the Com21 Headend products to be sold by Com21 to 3Com\nunder the Headend Distribution Agreement, and shall include all enhancements,\nfixes, Updates, Upgrades and modifications to the Products made by or for Com21.\n'Update' shall mean a replacement of all or a portion of a Product that is\nprimarily intended to Fix an error or deficiency in the Product. 'Upgrade' shall\nmean a replacement of all or a portion of a Product that is primarily intended\nto add functionality or performance to the Product and for which a separate or\nadditional charge is made to the end user.\n\n'Technology Documentation' means all designs, drawings, specifications, test\ninformation, vendor lists, source and object code versions of the software\nincorporated into or used by Com21 to design, manufacture or maintain the\nProducts and all other data and information owned by Com21 or to which Com21 has\nthe right to grant sublicenses with respect to the design, manufacture and use\nof the Products. The Technology Documentation will include a list of third party\ntechnology, if any, in the Products to which Com21 cannot sublicense the rights\nenvisioned by the manufacturing license below, and persons at such third parties\nto contact regarding obtaining licenses. The Technology Documentation will\nfurther include a list of consultants, if any, whom Com21 reasonably believes\ncould provide technical support to 3Com in connection with 3Com's exercising of\nthe rights under the manufacturing license below. Prior to the date of first\nshipment of the Product by Com21 to 3Com, the parties will attach an exhibit to\nthe Headend Distribution Agreement that sets forth a complete list of the\nTechnology Documentation that exists as of such date. Com21 shall update such\nTechnology Documentation if it updates its own archival copy of the Technology\nDocumentation.\n\nTechnology Escrow and Manufacturing License\n\n        Within ten (10) days after the first shipment of Products from Com21 to\n3Com, Com21 shall place the Technology Documentation for all versions of the\nProducts initially agreed to be sold by Com21 to 3Com under the Headend\nDistribution Agreement in a mutually agreed upon escrow account pursuant to the\nform of escrow agreement previously provided by 3Com to Com21. Thereafter,\nwithin ten (10) days after the execution of any amendments to the Headend\nDistribution Agreement to add additional updates or versions of the Products or\nto add new Products, Com21 shall place the Technology Documentation for such\nProducts into such escrow account. 3Com shall pay any and all annual fees,\ndeposit fees, reporting fees and costs associated with such escrow, however,\nCom21 will bear its own cost of creating the deposit and all updates thereto.\nCom21 hereby grants to 3Com a worldwide, nonexclusive, fully-paid, royalty-free,\nperpetual, irrevocable license to manufacture, have manufactured, sell, repair,\nuse, develop, modify, reproduce, and distribute the Products under all\nregistered and unregistered copyrights, patents, trade secrets, mask works,\ndesigns,\n\n                                       G-1\n                                   \n                                           \n\n\n\n\ndrawings, specifications, vendor lists and all other data and other information\nowned by Com21 or to which Com21 has the right to grant sublicenses with respect\nto the design, manufacture, maintenance and use of the Products and any other\nintellectual property rights associated therewith, and to prepare and have\nprepared derivative works based thereon, and to use source code for the software\ncontained in or associated with the Products to make and have made, use,\ndevelop, modify, reproduce, distribute and sell the Products and prepare and\nhave prepared derivative works based on the Products, and to grant sublicenses\nto third parties as to any or all of the rights granted to 3Com under this\nlicense, only in the event Com21 becomes insolvent, generally fails to pay or\nadmits in writing its inability to pay its debts as they become due, (ii)\napplies for or consents to the appointment of a trustee, receiver or other\ncustodian or makes a general assignment for the benefit of its creditors, (iii)\nany bankruptcy, reorganization, debt arrangement or other case or proceeding\nunder any bankruptcy or insolvency law or other dissolutions or liquidation\nproceedings are commenced by or against Com21 and, if such case is not commenced\nby Com21, it is acquiesced in or remains undismissed for ninety (90) days, (iv)\nCom21 takes any corporate or other action to authorize, or in furtherance of,\nany of the foregoing, (v) any event occurs which would permit 3Com to terminate\nthe Headend Distribution Agreement or the Technology License and Reseller\nAgreement to which this exhibit is attached as Exhibit G (Technology Escrow and\nManufacturing License) (except as described in Section 5.3 (Acceptance) or if\n3Com elects not to renew in accordance with Section 17.1 (Term) of the\nTechnology License and Reseller Agreement), (vi) Com21 ceases, or gives notice\nthat it intends to cease, manufacturing and distributing the Products or (vii)\nCom21 is unable to meet the reasonable supply requirements of 3Com's customers.\nThe occurrence of any of the foregoing shall constitute an 'Event of Escrow\nRelease' for purposes of the Headend Distribution Agreement.\n\n\n                                       G-2\n                                   \n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[6537,7151],"corporate_contracts_industries":[9509,9510],"corporate_contracts_types":[9613,9616],"class_list":["post-42906","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-3com-corp","corporate_contracts_companies-com21-inc","corporate_contracts_industries-technology__networking","corporate_contracts_industries-technology__programming","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\/42906","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=42906"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42906"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42906"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42906"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}