EXHIBIT 10.6
Agreement # H_______________
To be assigned by Echelon
LONWORKS(R)
OEM LICENSE AGREEMENT
This Agreement is entered into between ECHELON CORPORATION ("Echelon") and
_________________________________ ("Licensee") on the following terms and
conditions:
1. DEFINITIONS
(a) "LonTalk(R) Protocol" means Echelon's protocol for control networks
known as the LonTalk Protocol, as such protocol may be modified or
improved by Echelon from time to time.
(b) "Neuron(R) Chips" means semiconductor devices that are (i) generally
sold under the name Neuron Chips, (ii) designed by Echelon or
a supplier licensed by Echelon to design such devices, (iii)
implement, or are designed to be used to implement, all or part of the
LonTalk Protocol, and (iv) manufactured by Echelon or by a supplier
licensed by Echelon to manufacture such devices.
(c) "LONWORKS Applications" means equipment that incorporates Neuron Chips
and the LonTalk Protocol. LONWORKS Applications shall exclude
development systems for developing applications that use the LONTALK
Protocol.
(d) "Echelon Intellectual Property" means (i) U.S. Patent No. 4,918,690,
U.S. Patent No. 4,941,143, U.S. Patent No. 4,955,018, U.S. Patent No.
4,969,147, U.S. Patent No. 5,297,143, U.S. Patent No. 5,319,641, U.S.
Patent No. 5,420,572, U.S. Patent No. 5,500,852, U.S. Patent No.
5,513,324, U.S. Patent No. 5,519,878, and foreign patents based upon
such U.S. patents and claiming the same inventions, and (ii) Echelon
copyrights governing the LonTalk Protocol.
(e) "Neuron Chip Firmware" means only the Echelon software which, among
other things, implements the LonTalk Protocol, and which is identified
as "Neuron Chip Firmware" in the documentation and/or start up screen
for Echelon's development systems for developing applications that use
the LonTalk Protocol.
2. LICENSE
(a) Echelon grants Licensee a nonexclusive, royalty-free, fully paid
license, under Echelon Intellectual Property, to make, use and sell
LonWorks Applications. Licensee agrees that whenever a Neuron Chip is
executing instructions, the Neuron Chip Firmware shall be loaded into
it starting at address location 0 (zero). Licensee's rights to use the
LonTalk Protocol and Neuron Chips shall not extend to use of the
LonTalk Protocol in devices that duplicate the functions of all or
part of the Neuron Chips, or to use the Neuron Chips with any
communications protocol other than the LonTalk Protocol. The foregoing
limitations shall apply to all Neuron Chips incorporated by Licensee
into its LonWorks Applications, including Neuron Chips contained in
products or equipment purchased by Licensee. If Licensee desires to
implement the LonTalk Protocol for use with semiconductor devices
other than the Neuron Chip, then Licensee should request a copy of
Echelon's LonTalk Protocol License Agreement.
(b) Echelon grants Licensee a nonexclusive, royalty-free, fully paid
license to reproduce and distribute the Neuron Chip Firmware without
modification for use only with Neuron Chips; provided that Neuron Chip
Firmware is programmed into either: (i) the memory of a Neuron Chip,
or (ii) a memory device attached to the memory bus of a Neuron Chip.
Notwithstanding the foregoing, Licensee may provide a master copy of
the Neuron Chip Firmware linked with an application program on
removable media to (A) an OEM Licensee who is a contract manufacturer
for Licensee's LONWORKS Applications and (B) an OEM Licensee for whom
Licensee is designing LonWorks Applications, for use and distribution
by such OEM Licensee pursuant to the terms of such OEM Licensee's
agreement with Echelon. As used herein "OEM License" means a LonWorks
Development License Agreement or LONWORKS OEM License Agreement with
Echelon or its subsidiaries that has an agreement number preceded by
the letter "E" or a subsequent letter of the alphabet. Licensee agrees
not to modify, translate, reverse engineer, decompile, disassemble or
otherwise attempt to derive source code for the Neuron Chip Firmware
(except to the extent that such acts may not be prohibited under
applicable law).
(c) At the request of Licensee, and upon receipt of a fee of Fifty United
States Dollars (U.S. $50.00), Echelon will deliver to Licensee one (1)
copy of the Neuron Chip Firmware if Licensee has not already received
such a copy from Echelon.
(d) No license is granted, express or implied, under any patents, trade
secrets, know-how or other intellectual property of Echelon covering
specific applications or implementations of the LonTalk Protocol,
LonWorks Applications or Neuron Chips. Licensee shall have no right
under Echelon Intellectual Property to modify the LonTalk Protocol.
(e) Licensee may make appropriate and truthful reference to Echelon and
Echelon products and technology in Licensee's company and product
literature; provided that Licensee properly attributes Echelon's
trademarks; and provided, further, that Licensee does not use the name
of Echelon or any Echelon trademark in its name or in its product
name. No license is granted, express or implied, under any Echelon
trademarks, trade names or service marks.
3. USE OF NEURON CHIPS
LICENSEE ASSUMES RESPONSIBILITY FOR, AND HEREBY AGREES TO USE ITS BEST
EFFORTS IN, DESIGNING AND MANUFACTURING EQUIPMENT LICENSED HEREUNDER TO
PROVIDE FOR SAFE OPERATION THEREOF, INCLUDING, BUT NOT LIMITED TO,
COMPLIANCE OR QUALIFICATION WITH RESPECT TO ALL SAFETY LAWS, REGULATIONS
AND AGENCY APPROVALS, AS APPLICABLE. THE NEURON CHIP, LONTALK PROTOCOL AND
NEURON CHIP FIRMWARE ARE NOT DESIGNED OR INTENDED FOR USE AS COMPONENTS IN
EQUIPMENT INTENDED FOR SURGICAL IMPLANT INTO THE BODY, OR OTHER
APPLICATIONS INTENDED TO SUPPORT OR SUSTAIN LIFE, FOR USE IN FLIGHT CONTROL
OR ENGINE CONTROL EQUIPMENT WITHIN AN AIRCRAFT, OR FOR ANY OTHER
APPLICATION IN WHICH THE FAILURE OF THE NEURON CHIP, LONTALK PROTOCOL OR
NEURON CHIP FIRMWARE COULD CREATE A SITUATION IN WHICH PERSONAL INJURY OR
DEATH MAY OCCUR, AND LICENSEE SHALL HAVE NO RIGHTS HEREUNDER FOR ANY SUCH
APPLICATIONS.
4. INDEMNITY
Echelon shall indemnify Licensee for any liabilities, damages and costs
payable by Licensee to a third party in an action for infringement of any
third party United States patent by the LonTalk Protocol and for reasonable
attorney's fees relating thereto. The foregoing shall be subject to the
Licensee notifying Echelon promptly in writing of and giving Echelon the
exclusive authority to defend or settle any such claim or proceeding. If
the use of the LonTalk Protocol is enjoined or is the subject of any actual
or potential patent infringement action, Echelon may, at its option,
procure for Licensee the right to continue to use the LonTalk Protocol or
replace or modify the LonTalk Protocol so that it becomes noninfringing.
Notwithstanding the foregoing, Echelon assumes no liability for any claims
attributable to Licensee's specific applications for the LonTalk Protocol
or attributable to the use of the LonTalk Protocol in combination with
equipment or technology not provided by Echelon if the claim would not have
occurred but for such specific application or combination. In addition, in
no event shall Echelon's liability to Licensee under this paragraph exceed
the amount of Two Thousand Five Hundred United States Dollars (U.S.
$2,500.00). THE FOREGOING STATES THE ENTIRE LIABILITY OF ECHELON WITH
RESPECT TO INFRINGEMENT OF ANY PATENTS OR OTHER INTELLECTUAL PROPERTY RIGHT
BY THE LONTALK PROTOCOL, LONWORKS APPLICATIONS, NEURON CHIP, ECHELON
INTELLECTUAL PROPERTY OR NEURON CHIP FIRMWARE.
5. WARRANTY AND DISCLAIMER
Echelon represents and warrants that it has the right to grant the licenses
granted herein. ECHELON DISCLAIMS ALL OTHER WARRANTIES AND CONDITIONS,
EXPRESS, IMPLIED OR STATUTORY, RESPECTING THE LONTALK PROTOCOL, LonWorks
APPLICATIONS, NEURON CHIPS, ECHELON INTELLECTUAL PROPERTY OR NEURON CHIP
FIRMWARE, INCLUDING BUT NOT LIMITED TO ANY IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE AND ANY IMPLIED
WARRANTIES ARISING FROM COURSE OF PERFORMANCE, COURSE OF DEALING OR USAGE
OF TRADE.
LonWorks OEM License Agreement Page 1 of 2
6. TERM AND TERMINATION
(a) The term of this Agreement shall be ten (10) years from the date of
execution unless terminated earlier as provided below. Licensee may
renew this Agreement for an additional ten (10) year period upon
written notice delivered to Echelon within the last six (6) months of
the initial term. Echelon agrees to give Licensee six (6) months
notice prior to expiration of the initial term of this Agreement. If
Echelon fails to give such notice, then this Agreement shall remain in
force until six (6) months after notice of expiration is given by
Echelon (but in no event longer than six (6) months after ten (10)
years from the date of execution) unless renewed prior to such date.
(b) In addition, the non-breaching party may terminate this Agreement upon
a breach by the other party if such breach remains uncured thirty (30)
days after delivery by the non-breaching party of written notice of
the breach. The provisions of paragraphs 5, 7 and 8 shall survive any
termination of this Agreement. All other provisions shall terminate.
7. LIMITATION OF LIABILITY
NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY LOST PROFITS OR OTHER
SPECIAL CONSEQUENTIAL, INDIRECT, PUNITIVE OR INCIDENTAL DAMAGES, HOWEVER
CAUSED ON ANY THEORY OF LIABILITY, ARISING IN ANY WAY OUT OF THIS AGREEMENT
OR THE DEVELOPMENT OR DISTRIBUTION BY LICENSEE OF APPLICATIONS OR SYSTEMS
USING THE LONTALK PROTOCOL, NEURON CHIPS OR NEURON CHIP FIRMWARE. THE
FOREGOING SHALL NOT APPLY TO ANY BREACHES BY LICENSEE OF SECTIONS 2 OR 3.
8. MISCELLANEOUS
(a) Licensee shall comply with any United States export controls governing
export of any technical data or technology provided by Echelon. If
Licensee is other than a U.S. entity or is located outside the U.S.,
Licensee, as a prior condition to exercising its rights hereunder,
shall execute any letter of written assurances required for the export
of technical data or technology by Echelon and shall comply with such
other requirements of the U.S. Department of Commerce or other
applicable agency for the export of technical data or technology by
Echelon and shall comply with such other requirements of the U.S.
Department of Commerce or other applicable agency for the export of
technical data or technology by Echelon to Licensee.
(b) If Licensee is other than a U.S. entity or is located outside of the
U.S., Licensee represents that no consent or approval of any
governmental authority is required in connection with the valid
execution and performance of this Agreement.
(c) This Agreement will be governed by and construed in accordance with
the laws of the State of California, U.S.A., except that body of
California law concerning conflicts of law.
(d) Licensee shall not assign this Agreement or any of its rights or
duties hereunder except to a successor-in-interest without the prior
written consent of Echelon which shall not be unreasonably withheld.
(e) The Neuron Chip Firmware is deemed to be "commercial computer
software" pursuant to DFAR Section 227.7202. Any use, modification,
reproduction, distribution or disclosure of the Neuron Chip Firmware
by the U.S. Government shall be governed solely by the terms of this
Agreement and shall be prohibited except to the extent expressly
permitted by the terms of this Agreement.
(f) Licensee agrees that Echelon may disclose its name, address and
Agreement number to vendors of Neuron Chips or LONWORKS Applications
for the purpose of verifying Licensee's status as an Echelon licensee.
(g) This Agreement constitutes the entire agreement between the parties,
and supersedes any prior agreements, with respect to the subject
matter hereof. No amendment to any term of the Agreement shall be
valid unless mutually agreed to in writing by the parties. The failure
of either party to enforce any provision of this Agreement shall not
constitute a waiver of such provision.
ECHELON CORPORATION: LICENSEE:____________________________
Signature:_______________________ Signature:___________________________
Print Name:______________________ Print Name:__________________________
Title:___________________________ Title:_______________________________
Effective Date:__________________ Date Signed:_________________________
Address: ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇:_____________________________
▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇ _____________________________________
(800) 258 - 4LON Phone:_______________________________
Lon, Neuron, LONWORKS and LonTalk are U.S. v.12.16.96
registered trademarks of Echelon Corporation. P/N 120-0005-01L
LonWorks OEM License Agreement Page 2 of 2