EXHIBIT 10.19
LICENSING AGREEMENT
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Between
▇▇▇▇▇▇ Electronics Corporation
And
Analog Devices, Inc.
This Licensing Agreement is entered into this March 13, 2002, by and between
▇▇▇▇▇▇ Electronics Corporation, a New York corporation having its principal
place of business at ▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇, together
with its subsidiaries and affiliates ("▇▇▇▇▇▇"), and Analog Devices, Inc., a
Massachusetts corporation having its principal place of business at ▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("ADI").
RECITALS
WHEREAS, ▇▇▇▇▇▇ is the owner of certain proprietary information and
technology and intellectual property rights in, to and under that information
and technology, and United States Patent application Serial Nos. [*******]
relating to [*******] technology, including improvements thereon arising from
this Agreement ("[*******] technology") and is desirous of granting a license
thereunder; and
WHEREAS, ADI desires to offer Andrea's [*******] technology to ADI's
Coder/Decoder ("CODEC") chip customers for use on personal computers ("PC's").
NOW, THEREFORE, in consideration of the mutual covenants set forth herein and
other good and valuable consideration, the receipt and adequacy of which are
hereby acknowledged, and intending to be legally bound, ▇▇▇▇▇▇ and ADI (together
the "Parties") hereby agree as follows:
1. Grant of Licenses; Protection of Goodwill and Reputation; Patents,
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Copyrights and Trademarks.
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1.1 ▇▇▇▇▇▇ grants to ADI a worldwide, exclusive, perpetual, fully paid
royalty-bearing license, including the right to sublicense to ADI CODEC chip
customers, Andrea's [*******] technology and updates for use on PC's. Should ADI
desire to use the [*******] technology for purposes other than those described
above, the terms of such use shall be subject to one or more separate license
agreements between ADI and ▇▇▇▇▇▇. Updates shall include minor enhancements to
performance, functionality and features. Except as the Parties may otherwise
agree, ADI may not, modify, reverse engineer or create derivative works based on
the [*******] technology. The [*******] technology is protected by United States
and international intellectual property law and treaties, as well as other laws
and treaties, and ADI is granted no title or ownership rights, in or to the
[*******] technology, in whole or in part, and ADI acknowledges that title to
all trademarks, patents, know-how, trade secrets and/or any other intellectual
property rights to and in the [*******] technology and associated documentation
are and shall remain the property of ▇▇▇▇▇▇ and its successors or assigns. As
such, ADI warrants that it will not sell or sub-license the [*******] technology
except as provided herein.
1.2 ▇▇▇▇▇▇ will not market, license or sell the [*******] technology to be
bundled with integrated motherboard and riser card PC configurations during the
term of this Agreement.
Notwithstanding the preceding sentence, ▇▇▇▇▇▇ may market, sell or license the
[*******] technology for use in electronic equipment, including PC's, where the
[*******] technology is not bundled with integrated motherboards or riser cards.
Specifically, ▇▇▇▇▇▇ may market, sell or license the [*******] technology for
use with specific applications, and/or aftermarket audio input devices.
1.3 In consideration for the exclusive arrangement described in Section 1.2,
ADI will represent to the marketplace, including PC original equipment and after
market customers, that ▇▇▇▇▇▇ is ADI's "Preferred Partner". As its Preferred
Partner, ADI, when engaging in marketing efforts, will highlight the benefits
and advantages to the customer of selecting products equipped with ▇▇▇▇▇▇
hardware and/or software audio input technologies, and where ADI has been given
the discretion to select the audio input provider, ADI will select ▇▇▇▇▇▇ under
similar terms, conditions and circumstance
1.4 It is expressly understood by each of the Parties that the goodwill and
superior reputation enjoyed by the other is of ultimate importance to the other.
Each of the Parties agrees to use its best efforts to protect the other and to
avoid any action or inaction that may adversely affect the other's goodwill,
reputation or image.
1.5 Each of the Parties will use its best efforts to protect the patents,
copyrights, trademarks or other intellectual property of the other. At no time,
either during the term of this Agreement or subsequent to its expiration or
other termination, may either party utilize any of the other's names, logos,
patents, copyrights or trademarks except as authorized elsewhere in this
Agreement or as otherwise agreed to in writing between the Parties.
1.6 In order to facilitate the integration of the [*******] technology and
updates thereto bundled with ADI's CODEC products, ▇▇▇▇▇▇ will provide
reasonably necessary support at no charge to ADI.
2. Royalty.
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2.1 In consideration of the license granted under this Section 1.1, ADI shall
pay to ▇▇▇▇▇▇ a one-time, nonrefundable, lump-sum royalty equal to [*******]
U.S. dollars ($[*******]). Payment shall be due and payable on or before August
4, 2002.
3. Joint Promotion.
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3.1 During the term of this Agreement, ADI and ▇▇▇▇▇▇ shall promote their
relationship contemplated hereby and the complementarity of the [*******]
technology and ADI's products through, by way of example only, press releases,
trade shows agreed upon by the Parties, and in relevant collateral material. All
press releases, trade show material and collateral material prior to and in
furtherance of such promotional efforts must be mutually agreed to by the
Parties. In furtherance of ADI's promotion of ▇▇▇▇▇▇, ADI will introduce ▇▇▇▇▇▇
to ADI's strategic partners and customers, including, but not limited to,
[*******]. Furthermore, it is expressly understood that all ADI products
incorporating the [*******] technology will include Andrea's logo in a manner to
be reasonably agreed upon by the Parties. It is also understood that any Profits
derived from Andrea's [*******] products that serve as companions to ADI
products incorporating the [*******] technology will be divided equally among
the Parties. Profits shall
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be defined as the selling price of the product less all costs typically
associated with manufacturing and selling the products, including, but not
limited to, sales commissions, marketing and advertising expenses and warranty
costs. [*******].
3.2 In the event of a sale of substantially all of the assets of ▇▇▇▇▇▇ or
transfer of substantially all of its stock to an independent party, ADI reserves
the right to design and manufacture [*******] products that serve as companions
to ADI products incorporating the [*******] technology. It is also understood
that any Profits derived from products designed or manufactured by ADI under
this Section 3.2 that serve as companions to ADI products incorporating the
[*******] technology will be divided equally among the Parties as defined in 3.1
above.
4. Expenses. ▇▇▇▇▇▇ and ADI will each bear its own costs and expenses
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associated with the execution of, and performance of obligations under, this
Agreement, unless otherwise provided for within this Agreement.
5. Term and Termination.
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5.1 The license granted under Section 1.1.a of this Agreement is perpetual and
therefore may not be terminated by ▇▇▇▇▇▇ for any reason other than those stated
in Section 5.2 of this Agreement.
5.2 If either party shall breach any term, condition or provision of this
Agreement and (a) if the breaching party fails to cure for thirty (30) days
after notice of such breach, or (b) in the case of breaches which require more
than thirty (30) days to effect a cure, the breaching party fails to commence
and continue in good faith efforts to cure such breach, provided that such cure
shall be effected no later than sixty (60) days after receipt of such notice of
such breach, the non-breaching party may terminate this Agreement by written
notice to the other party.
5.3 The termination of this Agreement shall not affect any claim, right or
remedy that a party has against a breaching party.
5.4 In the event this Agreement is terminated pursuant to this Section 5
(except in the event of termination by ▇▇▇▇▇▇ pursuant to Section 5.2), ADI
shall have the right to use and distribute the CODEC chips with the [*******]
technology it has manufactured (or had manufactured) before the date of such
termination to PC customers and/or end users.
6. Confidential Disclosure. The terms of the Non-Disclosure Agreement between
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ADI and ▇▇▇▇▇▇ effective as of June 15, 2001 (the "NDA") shall remain in full
force and effect and shall apply to this Agreement.
7. WARRANTIES.
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7.1 ADI EXPRESSLY AGREES THAT THE [*******] TECHNOLOGY IS PROVIDED ON AN "AS
IS" BASIS WITHOUT WARRANTIES OF ANY KIND, EXCEPT FOR THOSE SPECIFICALLY PROVIDED
FOR IN SECTION 7.2. FURTHERMORE, ▇▇▇▇▇▇ EXPRESSLY DISCLAIMS ALL WARRANTIES AND
CONDITIONS, EITHER EXPRESSED
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OR IMPLIED, INCLUDING BUT NOT LIMITED TO, ANY IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, WITH REGARD TO THE
[*******] TECHNOLOGY. IN NO EVENT WILL EITHER PARTY BE LIABLE TO OR THROUGH ANY
PARTY FOR INCIDENTAL, INDIRECT, SPECIAL, CONSEQUENTIAL, PUNITIVE, OR EXEMPLARY
DAMAGES OF ANY KIND, INCLUDING LOST PROFITS, LOSS OF BUSINESS OR BUSINESS
INFORMATION, BUSINESS INTERRUPTION, OR OTHER ECONOMIC DAMAGE, AND FURTHER
INCLUDING INJURY TO PROPERTY, AS A RESULT OF ANY PARTY'S USE OR INABILITY TO USE
THE [*******] TECHNOLOGY OR BREACH OF ANY WARRANTY OR OTHER TERM OF THIS
CONTRACT, REGARDLESS OF WHETHER ▇▇▇▇▇▇ WAS ADVISED, HAD OTHER REASON TO KNOW, OR
IN FACT KNEW OF THE POSSIBILITY THEREOF.
7.2 ▇▇▇▇▇▇ has full title and ownership of the [*******] technology and has
not assigned, transferred, pledged or otherwise encumbered the [*******]
technology or intellectual property rights with respect thereto or agreed to do
so, including in the performance of its obligations under this Agreement. The
[*******] technology does not infringe or misappropriate any patent, trade
secret, copyright, mask work or other proprietary right of any third party, and
▇▇▇▇▇▇ is not aware of any invention, product or prior act that would prevent or
interfere with the filing of an application for, or the issuance of, any patent
for the [*******] technology or that would affect the validity or enforceability
of any patent that may issue showing ▇▇▇▇▇▇ as the inventor and covering any one
or more aspects of the [*******] technology.
7.3 ▇▇▇▇▇▇ shall indemnify and hold ADI harmless from and against any and all
claims, liabilities, losses, damages, costs and expenses incurred by ADI as a
result of any breach of any of the representations or warranties contained in
Section 7.2 above.
8. General Provisions.
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8.1 Independent Contractor. ADI and ▇▇▇▇▇▇ shall each act as independent
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contractors. ADI and ▇▇▇▇▇▇ shall each conduct all of its business in its own
name and as it deems fit, provided it is not in derogation of the other's
interests. Neither party shall engage in any conduct inconsistent with its
status as an independent contractor, have authority to bind the other with
respect to any agreement or other commitment with any third party, nor enter
into any commitment on behalf of the other.
8.2 Severability. All provisions of this Agreement are intended to be
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interpreted and construed in a manner to make such provisions valid and
enforceable. The invalidity or non-enforceability of any phrase or provision
hereof will in no way affect the validity or enforceability of any other portion
of this Agreement, which invalid or non-enforceable phrase or provision will be
deemed modified, restricted, and/or limited only to the extent necessary to make
such phrase or provision valid and enforceable.
8.3 Notice. Written notice required by this Agreement shall be sent certified
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mail, return receipt requested, by telecopy (confirmed by mail) or by overnight
courier, to each party at their registered address or to such other address as
the party may in writing designate from time to time. Such notices shall be
deemed effective on the date of receipt. Notice shall be sent to the address set
forth in the first paragraph of this Agreement.
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8.4 Force Majeure. Whenever performance by ▇▇▇▇▇▇ or ADI of any of their
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respective obligations hereunder, other than the obligation to make payment of
money due, is substantially prevented by reason of any act of God, strike,
lock-out, or other industrial or transportational disturbance, fire, lack of
materials, law, regulation or ordinance, war or war conditions, or by reason of
any other matter beyond such party's reasonable control, then such performance
shall be excused and this Agreement shall be deemed suspended during the
continuation of such prevention and for a reasonable time thereafter.
8.5 Waiver. The waiver by any party hereto of a breach of any provision of
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this Agreement shall not operate or be construed as a waiver of any subsequent
breach.
8.6 Assignment. This Agreement may neither be assigned by either party, nor
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may the rights and obligations contained herein be transferred by either party
in any way, either wholly or partially, whether by operation of law or
otherwise, without the prior written consent of the other. Subject to the
provisions hereof, this Agreement shall be binding upon and inure to the benefit
of the Parties hereto and their legal successors and assigns.
8.7 Entire Agreement; Modifications; Authority.
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(a) This Agreement constitutes the entire agreement between the Parties
hereto and supersedes all prior agreements and understandings, oral and written,
between the Parties relating to the subject matter hereof, and no change,
addition to or waiver of any of the terms of this Agreement shall be binding as
to the Parties hereto unless approved in writing by the Parties hereto or their
authorized representations.
(b) Each of the Parties warrants and represents that it is authorized to
enter into this Agreement and that the terms of this Agreement and the
performance thereof are not in violation of the terms and conditions of any
other contract, instrument, order or decree to which it is party or by which it
is bound.
8.8 Governing Law; Dispute Resolution. Any and all disputes, controversies or
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claims arising from the terms, conditions or provisions of this Agreement shall
be resolved by reference to and in accordance with the laws of the State of New
York as applied to contracts made and performed entirely within the State of New
York. The prevailing party in a claim or controversy arising out of or in
relation to this Agreement shall be entitled to recover all reasonable
attorney's fees, costs of arbitration, and court costs from the losing party.
8.9 Further Assurances. The Parties shall execute any and all additional
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documents and instruments and shall take any and all other actions necessary or
desirable to carry out the intent and purposes of this Agreement.
8.10 Counterparts. This Agreement may be executed in one or more counterparts,
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each of which shall be deemed an original, but all of which together shall
constitute a single instrument. The Parties expressly authorize the use of
facsimile counterparts, as a valid method of execution; however, the Parties
agree to cooperate in good faith to provide each other with a fully executed
original of this Agreement within five (5) business days of any facsimile
counterpart execution.
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8.11 Survival. The terms of Sections 1.4, 1.5, 4, 5.4, 6, 7, 8.1, 8.3, 8.5, 8.6
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and 8.8 shall survive expiration or termination of this Agreement, whether
pursuant to Section 5 or otherwise.
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement the day and
year first written above.
▇▇▇▇▇▇ ELECTRONICS CORPORATION ANALOG DEVICES, INC.
By:/s/ ▇▇▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ Name: ▇▇▇▇ ▇▇▇▇▇▇▇
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Title: President and Chief Executive Officer Title: Product Line Director
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