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DEVELOPMENT AND FOUNDRY / RESALE AGREEMENT
This Agreement (hereinafter "Agreement") is made in duplicate original
counterparts and effective as of March 8, 2001 ("Effective Date") by and between
TEXAS INSTRUMENTS INCORPORATED, a corporation duly organized and validly
existing under the laws of the State of Delaware, acting by and through its
Semiconductor Group with a principal place of business at ▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ (hereinafter "TI") and PARKERVISION INC., a corporation duly
organized and validly existing under the laws of the State of Florida, with a
principal place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
(hereinafter "ParkerVision") and TI and/or ParkerVision may be referred to
herein individually as a "Party" or collectively as the "Parties", as the case
may require.
WHEREAS, ParkerVision is engaged in the design and development of RF integrated
circuits using a direct conversion technology known within the industry as
"D2DTM (Direct to Data) technology" and expects to introduce first samples of
its first RF integrated circuit using D2D technology during the fourth (4th)
quarter of 2000.
WHEREAS, TI is engaged in the design, development and manufacture of digital
baseband integrated circuits and RF integrated circuits.
WHEREAS, both Parties wish to develop seamless interfaces between TI's digital
baseband integrated circuits and ParkerVision's D2D RF integrated circuits such
that the Parties' components can be promoted as part of reference designs for
wireless applications.
WHEREAS, ParkerVision wishes to buy RF integrated circuits from TI acting as
ParkerVision's foundry for RF integrated circuits.
WHEREAS, TI is willing for some time period to act as ParkerVision's foundry and
to treat ParkerVision as a valued foundry customer, and to support ParkerVisions
requirements of RF integrated circuits as part of TI's foundry service program.
NOW THEREFORE, the Parties have entered into the following agreement:
1. DEFINITIONS:
For the purposes of this Agreement, the following underlined terms, in addition
to the terms elsewhere defined in this Agreement, will have the meanings set
forth below.
1.1. "ACQUIRING PARTY" means a third party who acquires ParkerVision upon the
effective date of a Change of Control.
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1.2. "AFFILIATE" shall mean, with respect to a specified entity, another person
or entity that, directly or indirectly, controls or is controlled by or is
under the common control with the entity specified, and the term "control"
means the possession, directly or indirectly, of the power to direct or
cause the direction of the management or policies of a person or entity,
through the ability to exercise voting power, by contract or otherwise.
1.3. "CHANGE OF CONTROL" shall mean a change of control in the ownership of a
Party, as further defined in Section [16.5] of this Agreement.
1.4. "COMMERCIALLY REASONABLE EFFORTS" shall mean all commercially reasonable
efforts a reasonable business person would use in the performance of a
specified obligation taking into account the cost associated with the
performance of any such obligation, and the profit or loss to be expected
as a result of its performance, and all other commercial, technical and
operational factors to be taken into account by a reasonable business
person. For the avoidance of any misunderstanding, the Parties hereby
expressly agree that the obligation to use Commercially Reasonable Efforts
does not encompass an obligation to breach an obligation to a third party.
1.5. "COLLABORATIVE CHIPSET" means a chipset comprising of a Collaborative
Product and a Collaborative TI Digital Baseband Processor designated in a
Statement of Work, for which the Parties have developed an Interface
pursuant to and as specified in that same Statement of Work.
1.6. "COLLABORATIVE PRODUCT" means a Product developed by ParkerVision that
includes or operates with an Interface, and also operates with a
Collaborative TI Digital Baseband Processor, and which is a designated
component of a Collaborative Chipset pursuant to and as specified in a
Statement of Work.
1.7. "COLLABORATIVE TI DIGITAL BASEBAND PROCESSOR" means a TI Digital Baseband
Processor developed by TI that includes or operates with an Interface, and
also operates with a Collaborative Product, and which is a designated
component of a Collaborative Chipset pursuant to and as specified in a
Statement of Work.
1.8. "COMPETITOR FOUNDRY" means a foundry other than TI.
1.9. "D2D SUB-PART" is one of a D2D receiver, a D2D transmitter, a D2D
transceiver or a D2D transmitter/receiver pair implemented in integrated
circuit form and designed by ParkerVision.
1.10. "DELIVERABLE" shall mean the items to be delivered by either party to the
other party in accordance with a Statement of Work or the Foundry Business
Plan.
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1.11. "DESIGN WIN" means a written statement from a ParkerVision customer that
such customer intends to design a system using ParkerVision's D2D
technology.
1.12. "ESTIMATED SHIP DATE" shall mean the date TI approximates that it will
ship a Product to ParkerVision.
1.13. " FOUNDRY PERIOD" shall mean the period during which TI acts as
ParkerVision's foundry.
1.14. "FOUNDRY BUSINESS PLAN" means a unique document to be generated by the
Management Team in accordance with Section [7] below.
1.15. "INDEPENDENT TECHNOLOGY" shall mean either Party's technical information,
including, but not limited to, all schematics, layouts, plans,
architectures, mathematical models, data, formulae, algorithms, methods,
guidelines, practices, prototypes, tests, cell libraries, semiconductor
topographies, reports as well as all tools, software, firmware and
hardware, and all Intellectual Property Rights relating thereto,
developed, owned, or possessed either (1) by a Party prior to this
Agreement; or (2) at any time by a Party outside of a Project hereunder
without the use of the other Party's Confidential Information.
1.16. "INTELLECTUAL PROPERTY RIGHTS" shall mean all world-wide patents, patent
applications, utility models issued or pending, registered and
unregistered design rights, copyrights (including copyrights on software
in any form and moral rights), trade secrets and proprietary know-how,
mask works and other similar statutory intellectual property or industrial
rights related thereto, as well as applications for any such rights.
1.17. "INTERFACE" shall mean the gates, modules and input/output and all other
semiconductor technology, whether in the form of hardware, firmware or
software, which is designed pursuant to a Statement of Work to enable or
optimize the exchange of data between a Collaborative Product and a
Collaborative TI Digital Baseband Processor in a Collaborative Chipset.
Subject to Section 5.3, an Interface may include a Party's Independent
Technology.
1.18. "LIFE-TIME BUY PURCHASE ORDERS" shall mean purchase orders submitted by
ParkerVision for a Product after notice that TI intends to discontinue the
manufacture of a Product, subject to Section 12.
1.19. "MANAGEMENT TEAM" shall mean a team consisting of two representatives of
each Party whose charter is set forth in Sections [2.2 and 2.3] below.
1.20. "PARKERVISION TRADEMARKS" means the trademarks itemized in Exhibit E
attached hereto and any other Trademarks which ParkerVision elects to add
to Exhibit E with TI's consent, which shall not be unreasonably withheld.
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1.21. "POINT OF NO RETURN" means a milestone set forth in a Statement of Work
beyond which neither party shall be entitled to terminate for its
convenience the development contemplated in the Statement of Work.
1.22. "PRODUCT" means a packaged or an unpackaged electrical and mechanical die,
designed by ParkerVision and capable of being manufactured using TI
Manufacturing Technology. A Product includes one or more D2D Sub-Parts.
Until such time when the Management Team makes the determination
contemplated in Section [6.2.2] below, the term "Product" shall not
include Gallium Arsenide RF Integrated Circuits or other Gallium Arsenide
goods.
1.23. "PRODUCT DESIGN DATABASE" shall mean a computer readable file describing
the pattern, placement, and interconnection of the semiconductor
components (including, but not limited to: transistors, resistors,
capacitators, I/O pads, and components that interconnect semiconductor
components) within a Product.
1.24. "PRODUCT SPECIFICATION" shall mean the visual inspection criteria,
electrical test and electrical parameters and other performance criteria
mutually agreed upon between TI and ParkerVision for a particular Finished
Product.
1.25. "PROJECT" shall mean the Parties' development work pursuant to a Statement
of Work hereunder.
1.26. "PROJECT IP" shall mean software, firmware, hardware, Interfaces and all
other technical information, including, without limitations, inventions
and technical or commercial know-how, conceived and reduced to practice in
the course of a Project hereunder, and all intellectual property relating
thereto. For the avoidance of any misunderstanding it is expressly agreed
that the term "Project IP" shall not include either Party's Independent
Technology, whether knowingly or inadvertently incorporated into Project
IP.
1.27. "QUOTED LEAD-TIME" shall mean the approximate length of time TI requires
from the date a purchase order for Product is submitted to TI by
ParkerVision until such time TI can ship the Product pursuant to such
purchase order. Both Parties understand and agree that Quoted Lead-Time
may vary during the term of this Agreement as a result of the aggregate
demand placed upon TI from all of TI's customers when compared to the
aggregate manufacturing supply capability available to TI.
1.28. "REFERENCE DESIGN" means any recommendation by either Party to use its
semiconductor integrated circuits in connection with one or more of the
other Party's semiconductor integrated circuits; such recommendation can
be in the form of schematics, a list of components or any other
publication in which a Party endorses the use of its products in
conjunction with the other Party's products or technology.
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1.29. "REQUESTED DELIVERY DATE" shall mean the requested arrival date for
Products ordered by ParkerVision.
1.30. "RESTRICTED FIELDS" mean:
(1) WLAN Infrastructure Devices and WLAN Client Devices compliant with
WLAN, that support only one or more WLAN operations (single-mode
capability);
(2) WLAN Infrastructure Devices, compliant with WLAN, that support only
dual-mode operation of one or more WLAN operations with one or more WAN
operations (dual-mode capability), compliant with WAN;
(3) WLAN Infrastructure Devices and WLAN Client Devices, compliant with
WLAN, that support only dual-mode operation of one or more WLAN operations
with one or more Bluetooth operations (dual-mode capability), compliant
with Bluetooth; and/or
(4) WLAN Infrastructure Devices, compliant with WLAN, that support only
tri-mode operation of one or more WLAN operations with one or more WAN
operations with one or more Bluetooth operations (tri-mode capability),
compliant with WAN and Bluetooth.
1.31. "RF INTEGRATED CIRCUITS" OR "RF FRONT ENDS" shall mean integrated circuits
capable of receiving, transmitting, modulating, and/or converting radio
frequency signals and which, individually or collectively, perform the
functionality of a radio within a wireless application.
1.32. "STATEMENT OF WORK" OR "SOW" shall mean a written agreement executed by
and between the Parties hereunder contemplating a collaborative or joint
development of an Interface for a Collaborative Chipset.
1.33. " TI DIGITAL BASEBAND PROCESSOR" means a semiconductor device designed by
TI for the processing of digital signals in wireless applications.
1.34. "TI MANUFACTURING TECHNOLOGY" shall mean the know-how, knowledge and
technology which, collectively, represents TI's CMOS and Bi-CMOS
manufacturing process technology for RF Integrated Circuits, including,
without limitation, the design rules and test programs, used in the
production, assembly and testing of RF Integrated Circuits.
1.35. "WAFER" means a processed wafer that includes multiple Products which need
to be separated, packaged and tested.
1.36. "WAFER PROBE TEST SPECIFICATION" means the quality specification setting
forth the die size, wafer thickness and bond pad dimensions agreed upon
between the Parties for any particular Product to be supplied by TI to
ParkerVision in the form of Wafers, and any
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process control monitor circuitry parameters specifically agreed upon
between the parties in writing with regard to any such Wafers.
1.37. "WLAN" shall mean a Wireless Local Area Network that is implemented
according to and that operates within the following standards: IEEE
802.11a, IEEE 802.11b, HiperLAN1, HiperLAN2, and/or other similar
standards presently existing or developed in the future.
1.38. "WLAN CLIENT DEVICE" means hand held computers, personal data assistants
(PDAs), automatic identification data collection devices (such as bar code
scanners/readers, electronic article surveillance readers, and radio
frequency identification readers) and other similar user devices compliant
with and implementing WLAN for wireless communications.
1.39. "WLAN INFRASTRUCTURE DEVICE" means access points and other similar
devices, compliant with and implementing WLAN, and used to provide the
ability for WLAN Client Devices to connect to a wired network and/or to
provide the network functionality of a WLAN.
2. PURPOSE AND SCOPE OF THIS AGREEMENT
-----------------------------------
2.1 Subject to the terms and conditions set forth in this Agreement and the
Foundry Business Plan to be developed hereunder, (1) both Parties desire
to jointly develop Interface technology for Collaborative Chipsets in
which ParkerVision's D2D RF Integrated Circuits and TI's digital baseband
processors complement and fully exploit each other's performance
capabilities, and (2) ParkerVision agrees to first design each Product
using TI's design process rules, and TI shall manufacture RF Integrated
Circuits designed by ParkerVision.
2.2 The strategic relationship intended under this Agreement will be
sponsored, managed, reviewed and up-dated by a Management Team. The
Management Team will comprise two representatives from each Party. Each
Party reserves the right to replace its representative(s) on written
notification to the other Party.
2.3 The Management Team will meet regularly but at least twice per year. The
representatives of both Parties shall communicate between meetings as
necessary. The charter of the Management Team shall include the following
items:
o Identification of wireless applications for which the Parties intend
to develop Interface technology in accordance with a Statement of Work
hereunder.
o Review of Project status.
o Development, periodic review, and revision of the Foundry Business
Plan.
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o Review of Issues / Action items arising from the Parties' foundry
relationship.
3. REFERENCE DESIGNS
-----------------
3.1 Either Party shall be free to develop Reference Designs based on either
Party's semiconductor devices and the Interface technology to be developed
hereunder. From time to time, the Parties may discuss and decide to
jointly develop a Reference Design in accordance with the terms and
conditions provided herein. However, unless expressly provided for in this
Agreement or in a Statement of Work, nothing in this Agreement shall be
construed as an obligation on either Party to supply semiconductor devices
to the other Party or its customers, or to provide the other Party or its
customers with any technical assistance in regards to the implementation
of any such Reference Design, whether jointly developed hereunder or not.
3.2 In furtherance of the Parties' desire to promote their devices as part of
Reference Designs, each Party hereby grants to the other Party the right,
under the granting Party's tradenames and copyrights, (i) to refer to the
granting Party, in sales or technical documentation pre-approved by the
granting Party in writing, as the supplier of semiconductor devices that
are included in the other Party's or a jointly developed Reference Design
and (ii) to copy and distribute, but not modify, any technical or
commercial documentation released by the granting Party to promote the use
and sale of any such semiconductor device as part of the other Party's
Reference Design. After the effective date of a Change of Control of
ParkerVision (as defined in Section [16.5] below), the rights specified
above under sub-section (i) shall be revoked, and the rights specified
above under sub-section (ii) shall continue, except that each Party must
remove the other Party's tradenames prior to distributing the granting
Party's technical or commercial documentation described above.
PART A: DEVELOPMENT OF INTERFACES FOR WIRELESS APPLICATIONS
-----------------------------------------------------------
4. JOINT DEVELOPMENT WORK
----------------------
4.1 After the execution of this Agreement, the Parties shall negotiate in good
faith Statement of Works for collaborative efforts relating to WLAN
802.11B and CDMA.
4.2 For each Interface that the Parties decide to develop for a Collaborative
Chipset hereunder, the Parties shall execute a written Statement of Work
substantially in the form of the model Statement of Work attached hereto
as Exhibit [A]. To be effective, each Statement of Work must be signed by
both Management Team representatives of both Parties. Each Statement of
Work shall set forth, at a minimum, the following technical and
operational conditions:
4.2.1 Field of Use;
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4.2.2 Functions, specifications and parameters, including those applicable
to the Field of Use, of the Interface;
4.2.3 Descriptions of the applicable Collaborative Product and
Collaborative TI Digital Baseband Processor. Such descriptions shall
be in terms of functionalityand applicable standards related to the
Field of Use. It is understood that the Collaborative Product and
the Collaborative TI Digital Baseband Processor are to be developed
independently by ParkerVision and TI, respectively, and such
independent development is outside the Project.
4.2.4 Milestones for the development work and the Point of No Return;
4.2.5 The Deliverables including, but not limited to, application notes
and Interface technology to be provided by either Party to the other
Party in the course of or at the conclusion of the Parties'
performance of the Statement of Work; for each Deliverable the
Statement of Work shall specify whether or not the Deliverable is or
contains Independent Technology owned or otherwise possessed by the
Party providing the Deliverable, subject to Section 5.3;
4.2.6 The procedures and data necessary for the testing and approval of
the development work; and
4.2.7 An indication of whether or not the Statement of Work is directed to
the Restricted Fields.
4.3 Collaborative Efforts In the Restricted Fields
When collaborating in the Restricted Fields under a Statement of Work,
ParkerVision shall be responsible for designing D2D Sub-Parts in any
Product, and integrating RF Front Ends that include one or more D2D
Sub-Parts that are designed for use in the Restricted Fields.
4.4 Termination of Development Work
Either Party may terminate for its convenience a Statement of Work
executed between the Parties at any time prior to the achievement of the
milestone designated in the applicable Statement of Work as the Point of
No Return by providing the other party with a ten (10) day prior written
notice. The foregoing right to terminate a Statement of Work for
convenience does not affect a Party's right to terminate a Statement of
Work for cause such as the other Party's breach of this Agreement or for
any other cause specified in this Agreement. A Party's termination of a
Statement of Work for convenience or for cause shall not affect the
validity of any other Statement of Work executed between the Parties
unless such other Statement of Work is expressly terminated in the notice
of termination.
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4.5 Cost of Development Work
Unless otherwise expressly provided for in a Statement of Work, each Party
shall bear all costs and expenses it may incur in preparation for, and in
the performance of, the development work provided for in a Statement of
Work. For the avoidance of any misunderstanding, and without limiting the
generality of the preceding sentence, a party's obligation to bear its own
costs and expenses shall include the costs and expenses associated with
the disclosure of Independent Technology by either Party to the other
Party pursuant to a Statement of Work.
5. OWNERSHIP OF INTELLECTUAL PROPERTY
----------------------------------
5.1 REPRESENTATION. Each Party hereby represents to the other Party that it
has, or will have prior to commencement of the development work
contemplated in any Statement of Work, valid and sufficient agreements
with its employees (which term shall include agents, consultants and
subcontractors) such that ownership of rights of all technology including,
without limitation, Interface technology developed pursuant to a Statement
of Work hereunder, shall vest with the Party for which such development
work is performed pursuant to the provisions of this Section [5].
5.2 Rights in Project IP.
5.2.1 All Project IP developed and/or implemented by ParkerVision in the
course of a Project without participation of TI's employees, agents,
consultants or subcontractors, and without the use of TI Independent
Technology, shall be the sole and exclusive property of ParkerVision
and all Intellectual Property Rights therein or resulting therefrom
shall be vested solely in ParkerVision. All such Project IP shall
hereinafter be referred to as "ParkerVision Project IP".
5.2.2 All Project IP developed and/or implemented by TI in the course of a
Project without participation of ParkerVision's employees, agents,
consultants or subcontractors, and without the use of ParkerVision
Independent Technology, shall be the sole and exclusive property of
TI and all Intellectual Property Rights therein or resulting
therefrom shall be vested solely in TI. All such Project IP shall
hereinafter be referred to as "TI Project IP".
5.2.3 All Project IP jointly developed and/or implemented by TI and
ParkerVision in the course of a Project (such Project IP shall
hereinafter be referred to as "Joint Project IP," and also referred
to as "Jointly Owned Project IP" in Exhibit C), shall be jointly
owned by ParkerVision and TI with each Party owning an undivided,
equal ownership interest in any such Joint Project IP and all
Intellectual Property Rights therein or resulting therefrom shall be
vested in ParkerVision and TI as joint and equal owners (except as
noted in Exhibit C). Subject to any
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confidentiality restrictions which may apply, each Party shall be
free to use such Joint Project IP to design, develop, make, have
made, use, import, sell, offer to sell, or otherwise dispose of
integrated circuits incorporating such Joint Project IP (except as
noted in Exhibit C). In the event of patentable inventions jointly
owned hereunder, the filing and the prosecution of patent
applications as well as the maintenance of jointly owned patents
shall be handled in accordance with the procedure set out in
[Exhibit C] hereto.
5.2.4 Unless explicitly stated otherwise in writing in a Statement of
Work, ParkerVision Project IP, TI Project IP, and Joint Project IP
shall not individually or collectively include any of either Party's
Independent Technology, or any Intellectual Property Rights relating
thereto.
5.2.5 ParkerVision hereby grants to TI a non-exclusive, fully paid,
royalty-free, worldwide license, with no right to sub-license other than
to TI Affiliates, under ParkerVision's Intellectual Property Rights in
ParkerVision Project IP only as related to Interface technology developed
hereunder according to a Statement of Work whose Point of No Return was
achieved prior to any termination of such Statement of Work, for the sole
purpose to incorporate or otherwise implement the Interface developed
under such Statement of Work in semiconductor devices made by or for TI.
All rights not granted herein to TI are hereby reserved by ParkerVision.
This license shall survive expiration or termination of this Agreement,
unless this Agreement is terminated due to a material breach of TI.
5.2.6 Subject to the provisions of Section 6, TI hereby grants to
ParkerVision a non-exclusive, fully paid, royalty-free, worldwide license,
with no right to sub-license other than to ParkerVision Affiliates, under
TI's Intellectual Property Rights in TI Project IP only as related to
Interface technology developed hereunder according to a Statement of Work
whose Point of No Return was achieved prior to any termination of such
Statement of Work, for the sole purpose to incorporate or otherwise
implement the Interface developed under such Statement of Work in
semiconductor devices made by or for ParkerVision. All rights not granted
herein to ParkerVision are hereby reserved by TI. This license shall
survive expiration or termination of this Agreement, unless this Agreement
is terminated due to a material breach of ParkerVision.
5.3 License to Use Independent Technology
Each Party hereby grants to the other Party a non-exclusive, worldwide
license, with no right to sub-license other than to each Parties'
respective Affiliates, under its present or future Intellectual Property
Rights in the Independent Technology provided by the granting Party to the
receiving Party in the course of a Project, for the sole purpose to
incorporate or otherwise implement the Interface developed under the
applicable Statement of Work for the Project in semiconductor devices made
by or for the other
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Party, provided that the Point of No Return for such applicable Statement
of Work for the Project was achieved prior to any termination of such
Statement of Work. The burden shall be on the receiving Party invoking
such license to prove that the granting Party in fact disclosed such
Independent Technology during the course of the Project to the receiving
Party for the purpose of allowing the receiving Party to use such
Independent Technology.
To avoid any misunderstanding, this section does not grant any license of
TI Independent Technology from TI to ParkerVision to design, develop,
make, have made, use, import, offer to sell, sell or otherwise dispose of
any TI Digital Baseband Processor. Similarly, this section does not grant
any license of ParkerVision Independent Technology from ParkerVision to TI
to design, develop, make, have made, use, import, offer to sell, sell or
otherwise dispose of any ParkerVision Product (for purposes of this
sentence only, the term "Product" includes Products capable of being
manufactured using any manufacturing technology, and also includes Gallium
Arsenide goods).
The foregoing license shall be royalty-free unless (i) otherwise provided
for in writing in the applicable Statement of Work or (ii) with respect to
the disclosure of Independent Technology not specified in a Statement of
Work hereunder, the Party intending to provide any such other Independent
Technology provides the other Party with prior written notice that the use
of such Independent Technology shall be royalty bearing. A Party having
received such notice shall be entitled to evaluate the Independent
Technology specified in the notice for a reasonable period of time, and,
subject to the outcome of such evaluation, both Parties shall negotiate in
good faith a mutually acceptable royalty rate for the receiving Party's
use of any such Independent Technology under the license granted above.
This license grant to ParkerVision shall survive expiration or termination
of this Agreement, unless this Agreement is terminated due to a material
breach of ParkerVision. Similarly, this license grant to TI shall survive
expiration or termination of this Agreement, unless this Agreement is
terminated due to a material breach of TI.
5.4 Limited Covenant Against Injunctive Relief and Enhanced Damages
5.4.1 Subject to the exclusions of Section 5.4.4, ParkerVision
covenants that:
5.4.1.1 No injunction, temporary restraining order, preliminary
injunction, or other enforceable order enjoining conduct shall be
effective during the Safe Harbor Period (as defined in Section
5.4.2) as to ParkerVision's Intellectual Property Rights relating to
Integrated Circuit Technology against TI or TI Customers based on a
claim that a product designed and made by or for TI (or any
derivative thereof) infringes such ParkerVision Intellectual
Property Rights ("Safe Harbor Product"). For the purposes of this
Section 5.4, a "TI Customer" is a third party who directly or
indirectly purchases products made by TI, where such
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products are designed substantially by TI, and shall include OEMs
and users of products that include any such Safe Harbor Products,
while the term "Integrated Circuit Technology" shall include all
technology used in the design, manufacture, sale and marketing of
integrated circuits including, without limitation, discrete devices,
modules (i.e., more than one integrated circuit contained in a
single package), chipsets, assemblies (i.e., packaged integrated
circuits mounted on a single substrate), design tools, software
controlling the functionality of any such integrated circuits, and
reference designs specifying the use of any such items in any given
application. "Integrated Circuit Technology" shall not include
ParkerVision's Intellectual Property Rights relating to video camera
control and/or production studio automation when directed to the
system level, end-user level, or methods of use relating to same.
5.4.1.2 Neither an act nor an omission by TI or TI Customers related
to Safe Harbor Products which, directly or indirectly, infringes
ParkerVision's Intellectual Property Rights shall give rise to
damages exceeding a reasonable royalty rate. All other damages
including, without limitation, punitive damages, consequential or
treble damages shall be excluded.
5.4.2 Term of Covenant. For each infringement of a ParkerVision
Intellectual Property Right alleged in a notice of infringement issued by
ParkerVision to TI, the foregoing covenant of Section 5.4.1 shall be
effective for a period of five (5) years following TI's receipt of such
notice (the "Safe Harbor Period"), except that this covenant shall not
apply to any ParkerVision patent claim beyond the five (5) year period
triggered by the notice of infringement in which such patent claim is
first asserted by ParkerVision.
In the event that the discontinuation of an allegedly infringing product
would create a materially adverse effect on TI's relationship with a TI
customer, TI and ParkerVision shall negotiate in good faith an extension
of the Safe Harbor Period.
5.4.3 No Waiver. ParkerVision's compliance with the covenant of Section
5.4.1 shall not be deemed a waiver, by laches, estoppel or otherwise, to
▇▇▇ or otherwise assert a claim against TI or TI Customers before or after
the expiration of the Safe Harbor Period. Likewise, TI's failure to bring
an action to invalidate or render unenforceable ParkerVision's
Intellectual Property Rights before or after the receipt of a notice of
infringement issued by PV, shall not be deemed a waiver, by laches,
estoppel or otherwise, to ▇▇▇ or otherwise assert a claim challenging the
validity or unenforceability of any ParkerVision Intellectual Property
Rights.
5.4.4 The covenant of Section 5.4.1 shall not apply:
5.4.4.1 To allegedly infringing products (or any derivative thereof)
which TI sells to a New Customer. For the purpose of this exception,
a "New Customer" shall
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be deemed a third party who has not declared in writing its intent
to use the allegedly infringing product (or any derivative thereof)
in their application ("design-in") within a period of eighteen (18)
months following TI's receipt of ParkerVision's notice of
infringement.
5.4.4.2 If, during the Safe Harbor Period, TI files an action
challenging the validity or enforceability of the Intellectual
Property Right which ParkerVision claims to be infringed by TI,
unless such action by TI is in defense to court action initiated by
ParkerVision to seek royalties or (other) monetary damages for such
alleged infringement or in defense to a claim for injunctive relief.
5.4.4.3 Down-Converter. To subject matter that satisfies the
following requirements:
(1) the subject matter represents a sub-harmonic sampling RF
down-converter with a fixed control signal aperture; and
(2) the subject matter implements one or more of the complete
schematics shown in Exhibit J with or without minor variations
(for the avoidance of doubt, changes in circuit topology,
changes in circuit components, and changes in the
functionality of circuit components shall NOT be considered
minor variations), or circuits that implement one or more of
such schematics in their entireties, where such schematic(s)
is/are used for the down-conversion function; and
(3) the subject matter exhibits a continuous percentage
discharge of the output signal by use of a shunt resistor (As
shown in Exhibit K) that is greater than or equal to six
percent (6%) and less than or equal to fifty percent (50%);
and
(4) the subject matter achieves a recursive output filtering
effect where by use of a series capacitor connected to the
input signal, shunt switch, a shunt passive resistor connected
to bias for both outputs the current output value depends on
the previous output values stored on the series capacitor.
5.4.4.2 Up-Converter. To subject matter that satisfies the
following
requirements:
(1) the subject matter represents a gating RF wireless
carrier based communication sub-harmonic up-converter
and modulator for use at carrier frequency above 500Mhz
with a non-dynamic fixed signal aperture; and
TI/PV
Page 14
(2) the subject matter implements one or more of the
complete schematics shown in Exhibit L with or without
minor variations (for the avoidance of doubt, changes in
circuit topology, changes in circuit components, and
changes in the functionality of circuit components shall
NOT be considered minor variations), or circuits that
contain one or more of such schematics in their
entireties, where such schematic(s) is/are used for the
sub-harmonic up-conversion and modulation function
(Exhibit L also shows a schematic of an exemplary
digital aperture generator circuit); and
(3) the subject matter converts an analog amplitude
varying input waveform (as shown in Exhibit M), where
the amplitude variation represents the desired carrier
wave modulation, into a series of pulses defined by a
controlled aperture gating function to simultaneously
control the output amplitude response, frequency
response, and output impedance to provide frequency
up-conversion and modulation in a single operation; and
(4) the subject matter exhibits non-dynamic signal
aperture sub-harmonic up-conversion and modulation with
power control by use of a fixed bias control; and
(5) the subject matter excludes circuits that modify the
aperture time period for the purpose of modulation such
as Pulse Width Modulation Circuits.
5.4.5 Whether or not the covenant of Section 5.4.1 applies, if
ParkerVision files a claim in a court against TI or TI Customers based on
a claim that a product designed and made by or for TI (or any derivative
thereof) infringes ParkerVision Intellectual Property Rights, then TI has
the right to terminate the foundry relationship with ParkerVision with
immediate effect by providing ParkerVision with written notice of its
decision to terminate the relationship.
5.4.6 Nothing in this Agreement shall be deemed to be an admission on the
part of ParkerVision or TI as to the validity, enforceability, or scope of
their respective Intellectual Property Rights. It shall not be a breach of
this Agreement if TI makes, has made, uses, sells, or offers to sell a
product that infringes a ParkerVision Intellectual Property Right.
Internal documentation generated and distributed internally by TI for
purposes of implementing Sections 5.4.4.3 and 5.4.4.4 shall not be deemed
to be an admission by TI that TI is infringing a ParkerVision Intellectual
Property Right.
TI/PV
Page 15
5.4.7. The covenant provided for in this Section 5.4 shall be binding on
ParkerVision and its Affiliates and their respective successors and
assigns, and ParkerVision and its Affiliates shall cause any third party
acquiring an interest in PakerVision's Intellectual Property Rights which
would allow any such third party to assert Intellectual Property Rights
affected by this covenant against TI to be bound by same in the same
manner as ParkerVision and its Affiliates.
5.5 Except as otherwise specified above in this Section 5, or as otherwise
specified elsewhere in this Agreement, ParkerVision and TI respectively retain
all of their rights and remedies as to their respective Intellectual Property
Rights.
PART B: MANUFACTURE AND SUPPLY OF PRODUCTS
------------------------------------------
6. FOUNDRY RELATIONSHIP
--------------------
6.1 During the Foundry Period, TI hereby agrees to manufacture for ParkerVision
its Products (including Products in Wafers) on a non-exclusive basis using the
TI Manufacturing Technology, consistent with TI's standard internal practices,
in accordance with the Foundry Business Plan to be developed and revised by the
Management Team in accordance with Section [7] below. During the Foundry Period,
except for Products based on Gallium Arsenide instead of silicon (see below),
ParkerVision agrees to first design each Product using TI's design process
rules. ParkerVision agrees to port to TI's design rules its PV1000x 802.11b RF
integrated circuits and its CDMA RF integrated circuits (both of which are under
development at the time of the execution of this Agreement) by December 31,
2001.
As for Products based on Gallium Arsenide, upon notification by TI that a TI
Gallium Arsenide device manufactured by TI is qualified for volume production by
a TI customer, and subject to any contractual obligations of ParkerVision at the
time of such notification, and as long as the foundry relationship between the
Parties exists, ParkerVision shall after such notification first design each new
Gallium Arsenide Product using TI's design process rules, provided that the
price, lead-times, and performance of the TI process matches or exceeds that of
ParkerVision's existing Gallium Arsenide manufacturer for substantially similar
Products.
6.2 The foundry relationship between the Parties as described herein shall exist
during the Foundry Period, which shall begin on the Effective Date of this
Agreement, and shall end three (3) years after TI has shipped the first five
hundred thousand (500,000) Products.
6.3 The Parties may mutually agree to continue said foundry relationship for
successive terms of length to be mutually agreed, provided that such agreement
is made in a writing executed
TI/PV
Page 16
by both Parties no later than six (6) months prior to the expiration of the
initial Foundry Period or each subsequent term.
6.4 In the event that either Party decides not to extend the foundry
relationship pursuant to Section [6.3], or if this Agreement should expire or
terminate for any reason other than a material breach by ParkerVision or
pursuant to Section 5.4.5, TI shall continue to manufacture and supply
ParkerVision with Product that TI had started to manufacture for ParkerVision
prior to such expiration or termination, and TI shall continue to use
Commercially Reasonable Efforts to quote competitive Product pricing and the
Quoted Lead-Times. However, subject to Section [12] below, for any such Product,
TI's foregoing obligation shall terminate as soon as TI discontinues the TI
Manufacturing Process used in the manufacture of such Product.
6.5 MARKING REQUIREMENTS AND LIMITED TRADEMARK LICENSE. As space allows, TI
shall include the ParkerVision Trademarks on all Products and Collaborative
Products manufactured by TI as specified herein. ParkerVision hereby grants to
TI a limited world-wide, non-exclusive, royalty free right to the ParkerVision
Trademarks to the extent required by TI to comply with the requirements of this
Section [6.6]. TI shall not use the ParkerVision Trademarks except as expressly
stated in this Agreement. All rights in and to the ParkerVision Trademarks not
specifically granted to TI by this Agreement are reserved to ParkerVision for
ParkerVision's own use and benefit. The Parties agree to comply with the
additional trademark provisions contained in Exhibit G.
7. Foundry Business Plan
---------------------
7.1 A three (3) year rolling business plan specifying TI and TI Manufacturing
Technology to be used in the manufacture of Products (the "Foundry
Business Plan") will be developed, reviewed, and potentially revised every
three (3) months by the Management Team. For the manufacture of Products,
TI shall make available TI Manufacturing Technologies that are generally
stable, or other TI Manufacturing Technologies that the Parties mutually
agree for strategic reasons. Factors for indicating whether a particular
TI Manufacturing Technology is generally stable include but are not
limited to whether TI makes such TI Manufacturing Technology generally
available to third parties for the production of integrated circuits
substantially similar in complexity to the Products. In light of such
factors (as well as other relevant factors), the Management Team shall
determine in good faith whether a particular TI Manufacturing Technology
shall be used for the manufacture of any given ParkerVision Product.
Without limiting the generality of the foregoing, the Management Team
shall consider at least the TI Manufacturing Technologies listed in
Exhibit [B] for the manufacture of ParkerVision Products.
7.2 For each TI manufacturing process to be used in the manufacture of
ParkerVision Products, the Foundry Business Plan shall specify the design
tools that TI shall make available to ParkerVision to allow ParkerVision
to design/redesign Products for
TI/PV
Page 17
manufacture by TI. All such design tools shall be made available to
ParkerVision at TI's standard rate for such tools. In the absence of a
published price or a reference price charged to other TI foundry customers
for identical or substantially similar design tools, the rate at which
said design tools shall be made available to ParkerVision shall comprehend
all costs associated with the development or procurement of said tools
plus a margin which is in line with TI's average gross profit margin on
foundry products.
7.3 The Foundry Business Plan shall include specific Product pricing and price
reduction goals for each Product that ParkerVision designs for manufacture
by TI according to Section 6. Product pricing shall be for processed
wafers, good electrical and mechanical die and/or for packaged and tested
Products, as specified in the Foundry Business Plan. In addition, the
Foundry Business Plan shall specify the Quoted Lead-Times for such
Products. TI shall also provide ParkerVision with quotes on available TI
packaging services, and ParkerVision shall be allowed at its option to use
such services. Such quotes will be committed by TI for a period of six (6)
months. An example of such quotes is provided in Exhibit F. The Quoted
Lead-Times quoted by TI for a given TI Manufacturing Technology shall be
generally comparable over a representative period of time to lead-times
quoted by TI to other customers for similar volumes manufactured using the
same TI Manufacturing Technology, and supplied to such other customers
under substantially similar terms and conditions. The Foundry Business
Plan may contain other terms that are mutually agreed upon by the Parties.
7.4 The Product Specification and the Wafer Probe Test Specification for each
Product will be mutually agreed upon and included in the Foundry Business
Plan.
8. VOLUMES FORECASTS
-----------------
Within thirty (30) days following the qualification of ParkerVision's first
Product by a ParkerVision customer, ParkerVision shall provide TI with a one (1)
year rolling forecast specifying for each quarter ParkerVision's volume
requirements of Products which ParkerVisions intends to offer to its customers
in commercial volumes. The forecast is to be revised, updated and reconfirmed
every three (3) months by ParkerVision and TI during the fifth (5th) week of the
first quarter of the rolling forecast for purchase requirement for the next
three (3) quarters. Orders to be placed for the first quarter of the rolling
forecast shall be considered firm and accepted for committed volumes; orders to
to be placed for the second and third quarters may increase or decrease by as
much as fifty percent (50%) from those in the forecast; while orders to be
placed for the fourth quarter may decrease by one hundred percent (100%) and may
increase or decrease by any amount from those in the forecast.
TI/PV
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9. PURCHASE ORDERS, ACCEPTANCE AND PERFORMANCE
-------------------------------------------
9.1 This Agreement does not constitute a purchase order. For all purchases of
Products, ParkerVision shall place a written purchase order based on the
prices and Quoted Lead-Times agreed upon in the Foundry Business Plan (or
any amendments thereto). Each purchase order issued by ParkerVision shall
specify: (i) a purchase order number and date, (ii) quantity of Product to
be delivered, (iii) Product part number, (iv) Product description, (v)
Product unit price, (vi) Requested Delivery Date, (vii) shipping
instructions, including carrier and delivery address.
9.2 Subject to the following, TI shall use Commercially Reasonable Efforts to
accept all purchase orders issued pursuant to and in conformance with the
terms of this Agreement, the Foundry Business Plan and the volume
forecast, and will accept such purchase orders in a manner that will not
substantially deviate from TI's acceptance of the purchase orders from
other customers for similar volumes manufactured using the same TI
Manufacturing Technology. Within five (5) business days after TI receives
ParkerVision's purchase order, TI shall provide to ParkerVision a written
Estimated Ship Date for the Product requested pursuant to such purchase
order. TI shall use Commercially Reasonable Efforts to comply with
applicable Quoted Lead-Times from the Foundry Business Plan. If TI cannot
commit to an Estimated Ship Date that satisfies ParkerVision's Requested
Delivery Date, TI shall propose, an alternative Estimated Ship Date.
ParkerVision shall notify TI in writing of its acceptance or rejection of
such alternative Estimated Ship Date within (5) business days after
receipt of the alternative Estimated Ship Date. If TI does not receive
such notification from ParkerVision, ParkerVision shall be deemed to have
accepted such alternative Estimated Ship Date. Any purchase order placed
by ParkerVision prior to the termination of this Agreement in which the
Estimated Ship Date will be after the termination of this Agreement shall
continue to be governed by the terms and conditions of this Agreement.
10. PURCHASES SUBJECT TO TI'S STANDARD TERMS AND CONDITIONS FOR SALES.
------------------------------------------------------------------
All purchases by ParkerVision of Products supplied by TI shall be subject to
TI's Standard Terms and Conditions for Sales of Semiconductor Products in the
version current at the time of such purchases, provided, however, that in the
event of a conflict between this Agreement, a Statement of Work, a purchase
order, or the Foundry Business Plan and said Standard Terms and Conditions, the
provisions of this Agreement, the Statement of Work, the purchase order, or the
Foundry Business Plan, as applicable, shall prevail. This Agreement shall not be
considered void for lack of a specified quantity term under the Uniform
Commercial Code. A copy of TI's Standard Terms and Conditions for Sales of
Semiconductor Products in effect at the time of execution of this Agreement is
attached as Exhibit I. Without limiting the generality of the foregoing, at
least Sections 8, 9, 10, 11, 12, 13, 16, and 17 from Exhibit I (and from
corresponding sections in subsequent versions of that document) are replaced by
corresponding provisions in this Agreement, a Statement of Work, a purchase
order, or the Foundry Business Plan.
TI/PV
Page 19
11. PRODUCT SPECIFICATION CHANGE PROCESS.
-------------------------------------
Upon receipt of a written request by ParkerVision, TI shall, within fifteen (15)
business days, submit to ParkerVision a written summary of estimated adjustments
or costs, if any, reasonably required to implement a modification to the Product
Specification, Product Design Database, Wafer Probe Test Specification, or other
change relating to a Product requested by ParkerVision. Such summary shall
include the change, if any, to: (i) the unit price for Products affected by the
requested changes, (ii) any applicable Product delivery dates; and (ii) the
Product NRE (non-recurring engineering charges). Written approval from
ParkerVision must be received by TI prior to implementation of such changes, and
will be referenced as an Amendment to this Agreement. If TI does not receive
such written approval from ParkerVision within fifteen (15) calendar days after
TI submits a summary to ParkerVision, ParkerVision shall have been deemed to
have withdrawn such request for change to the Product Specification.
12. PRODUCT DISCONTINUATION AND LIFE-TIME BUY.
------------------------------------------
12.1 TI may discontinue the manufacture of a Product with six (6) months prior
written notice to ParkerVision. Upon receipt of such notice from TI,
ParkerVision may submit Life-Time Buy purchase orders. ParkerVision must
place a single Life-Time buy order within sixty (60) days of receipt of
such notice. Delivery of the discontinued Product shall be made in
substantially equal monthly installments (or other increment to be
mutually agreed upon) throughout the remainder of the six (6) month period
following such notice, and a subsequent period of six (6) months.
12.2 During the Foundry Period, TI shall offer an alternate TI Manufacturing
Technology for the production of the affected Products soon after
providing such notice. ParkerVision may transfer the affected Products to
the alternate TI Manufacturing Technology. ParkerVision has the option of
transferring such affected Products to a Competitor Foundry, and
ParkerVision shall have the option to take delivery of all technical
information relating to the affected Products and, only to the extent
strictly necessary for a fabless semiconductor company for purposes of
transferring a discontinued Product to another manufacturing process, the
technical information related to the manufacturing process used in the
manufacture of the discontinued product, provided, however, that
ParkerVision's right to use such technical information shall be strictly
limited to port the affected Products to the Competitor Foundry.
13. DELIVERY, SHIPMENTS, INVOICES AND PAYMENTS.
-------------------------------------------
13.1 FREIGHT AND TAX CHARGES. Prices set forth in the Foundry Business Plan, in
a purchase order or TI's acceptance of a purchase order do not include
freight charges or taxes. ParkerVision shall be liable to TI for such
sales, use, or like taxes actually charged if
TI/PV
Page 20
ParkerVision has failed to comply with applicable statutory resale tax
certificate requirement(s). ParkerVision shall provide to TI a resale
certificate upon TI's request.
13.2 TITLE AND TRANSPORTATION. All shipments of Product to ParkerVision shall
be F. O. B. point of shipment. Title and risk of loss or damage shall pass
to ParkerVision upon TI's tender of delivery of the Products to a carrier
at shipping point. Packing and shipping instructions shall be set out in
ParkerVision's purchase order. Absent any such instructions from
ParkerVision specifying the method of shipment, TI will use the means of
shipment which should permit on-time delivery of Product to ParkerVision.
13.3 EARLY SHIPMENTS. If TI delivers Product more than five (5) calendar days
in advance of the scheduled Estimated Ship Date, ParkerVision may postpone
payment until such time payment would have been due if TI had delivered
Product as scheduled.
13.4 INVOICES. Invoices shall reference the number of ParkerVision's purchase
order and the ▇▇▇▇ of landing. All invoices shall be sent to the following
address:
ParkerVision, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Accounting Department
ParkerVision's payment of invoice shall not constitute acceptance of
Products. All invoices may be subject to adjustments for errors,
shortages, or defects in Products.
13.5 PAYMENT TERMS. Payment of invoices for Products delivered to
ParkerVision shall be net ninety (90) days upon receipt by ParkerVision
of each invoice issued by TI. Payments shall be made in US dollars.
13.6 SALES AND USE TAX EXEMPTION. It is hereby certified that the Products
purchased hereunder are exempt from the sales and use tax, unless
otherwise noted for the reason that Products are purchased for resale or
will become an ingredient or component part of, or be incorporated into,
or used or consumed in a manufactured product produced for ultimate sale
at retail. If the goods are purchased tax exempt and subsequent use makes
the goods taxable, ParkerVision will assess and pay tax to the appropriate
state.
14. INSPECTION AND ACCEPTANCE.
--------------------------
ParkerVision or, in the event of direct shipments, ParkerVision's customers
shall perform incoming inspection of Product within fifteen (15) calendar days
of receipt of Product. Inspection may be performed at ParkerVision's option on a
statistical sampling basis. The entire lot may be rejected based on defects
revealed by such sampling. At ParkerVision's option, the rejected lot
TI/PV
Page 21
will be either returned to TI at TI's cost for replacement or credit or 100%
screened by ParkerVision with cost of screening paid by TI. The initial
inspection performed at ParkerVision on receipt of material is a conditional
acceptance, and shall not waive the right of ParkerVision to return material to
TI which exhibits or develops defects during the warranty period defined in
Section [15.] below.
15. PRODUCT WARRANTY.
-----------------
15.1 WARRANTY FOR PRODUCT. Within one (1) year after delivery to
ParkerVision, ParkerVision may return assembled and tested Product
("Finished Product") that ParkerVision can demonstrate fails to
conform to the Product Specification and/or the agreed upon test
programs. Additionally, within the earlier of (i) thirty (30) days
after delivery to ParkerVision or (ii) the date the wafer in
question is processed, ParkerVision may return any Wafers that
ParkerVision can demonstrate fails to conform to the applicable
Wafer Probe Test Specification.
15.2 All noncompliant Product returned to TI may be either, at TI's
option, replaced within current Quoted Lead-Time for such Product,
or credit issued by TI; except that Lifetime Buy shipments may be
returned by ParkerVision for credit only. TI shall authorize return
of nonconforming Product within seventy-two (72) hours of TI's
receipt of ParkerVision's notification.
15.3 TEST DATA. For Finished Product, TI will make process control data,
inspection and test reports covering the articles or goods and their
parts available for review and subject to examination by
ParkerVision or its authorized representatives to verify conformance
to such applicable specifications and drawings. However, a
certificate of conformance must accompany individual shipments when
so specified on applicable drawings, or on the applicable purchase
order. Any Finished Product not accepted by ParkerVision may be
returned to TI at TI's expense for full credit of the purchase
price. Inspection may be performed at ParkerVision's option on a
statistical sampling basis. The entire lot may be rejected based on
defects revealed by such sampling. At ParkerVision's option, the
rejected lot will be either returned to TI for replacement or
credit, or 100% screened by ParkerVision with cost of screening paid
by TI. The initial inspection performed at ParkerVision on receipt
of material is a conditional acceptance, and shall not waive the
right of ParkerVision to return material to TI which exhibits or
develops defects due to latent causes during or after installation
or testing of the end product.
15.4 WARRANTY DOCUMENTATION. TI shall preserve all special drawings,
dies, patterns, tooling or other items supplied or paid for by
ParkerVision in good condition; and
TI/PV
Page 22
they are the property of ParkerVision and shall be considered to be
ParkerVision Confidential Information unless otherwise specified,
and the same such items shall be returned in good condition when the
work on the order has been completed or terminated, or at any other
time as requested by ParkerVision. No special drawing, die, pattern,
tool or other item supplied by ParkerVision or made by TI for the
use of or delivery to ParkerVision, or for use by TI in supplying
ParkerVision, shall be used by TI for any purpose other than
supplying ParkerVision, without TI first obtaining the written
consent of ParkerVision thereto. TI shall not attempt to reverse
engineer any drawing, die, pattern, tool, database file, computer
file, integrated circuit, or other item supplied by ParkerVision to
TI unless any of the aforementioned activities is necessary or
useful for purposes of TI's performance under Section 16.2 of this
Agreement. If material, equipment, special drawings, dies, patterns,
or other goods are furnished by ParkerVision for performance of a
purchase order, all risk of loss thereof or damage thereto shall be
upon TI from the time of shipment to TI until redelivery to and
receipt by ParkerVision.
15.5 NO ADDITIONAL WARRANTIES. EXCEPT FOR THE EXPRESS WARRANTIES STATED
IN THIS AGREEMENT, TI MAKES NO ADDITIONAL WARRANTIES, EXPRESS,
IMPLIED OR STATUTORY, INCLUDING BUT NOT LIMITED TO, ANY WARRANTY FOR
UNFINISHED PRODUCTS, IMPLIED CONDITIONS OR WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER
WARRANTY OBLIGATION ON THE PART OF TI. PARKERVISION'S REMEDIES SHALL
BE LIMITED TO THE REMEDIES SPECIFIED HEREIN.
16. CHANGE OF CONTROL
-----------------
16.1. Upon a Change of Control of ParkerVision:
(a) ParkerVision shall continue to perform under any written supply
agreements involving supply of Collaborative Products that were
executed by ParkerVision prior to such Change of Control, although
failure to so perform shall not be considered to be a breach of this
Agreement except as to Section 16.2 ; and
(b) the Parties shall continue to perform under any Statement of Work
that was executed by the Parties prior to such Change of Control.
16.2 In the event that, (i) following a Change of Control of ParkerVision, the
Acquiring Party does not provide TI within ten (10) days after the
effective date of the Change of Control with a written and binding
assurance in the form of Exhibit H that it will cause
TI/PV
Page 23
ParkerVision to comply with Section 16.1(a) and 16.1(b) as to a Statement
of Work whose Point of No Return was satisfied prior to the Change of
Control of ParkerVision, or (ii) following the Change of Control,
ParkerVision does not satisfy Section 16.1(a) and 16.1(b) as to a
Statement of Work whose Point of No Return was satisfied prior to the
Change of Control of ParkerVision, then TI shall provide ParkerVision with
written notice specifying the Acquiring Party's non-compliance or
ParkerVision's breach, as the case may be. ParkerVision shall have twenty
(20) days from receipt of such notice to cause the Acquiring Party to
comply with (i), or to cure ParkerVision's breach, as the case may be. If
by the end of such cure period the written letter of assurance is not
received by TI from the Acquiring Party, or if ParkerVision has not cured
the breach by the end of such cure period, then ParkerVision shall pay to
TI liquidated damages in the amount of two hundred thousand dollars
($200,000) for each Statement of Work whose Point of No Return was
satisfied prior to the Change of Control of ParkerVision, and ParkerVision
must provide to TI all technical documents relating to the applicable
Collaborative Chipset, and ParkerVision and TI shall collaborate such that
TI may, under a non-exclusive, worldwide license (with no right to
sub-license other than to TI Affiliates) under ParkerVision's current and
future Intellectual Property Rights:
(a) in the case of non-satisfaction of Section 16.1(b), if the
Collaborative Chipset is not completed prior to such Change of
Control, then complete such Collaborative Chipset in conformity with
the Statement of Work, provided that TI completes the Collaborative
Chipset within one (1) year after the expiration of the above twenty
(20) day cure period ;
(b) manufacture and sell Collaborative Products (packaged and tested)
for two (2) years commencing on the latter of (i) the expiration
of the above twenty (20) day cure period, or (ii) once the
Collaborative Product is complete pursuant to Section 16.2(a),
provided that all such Collaborative Products are sold as part of
a Collaborative Chipset, and in the event that TI elects to so
manufacture and sell such Collaborative Products, then
ParkerVision shall pay to TI an additional one-time liquidated
damages amount of two hundred thousand dollars ($200,000); and
(c) modify all Collaborative Products during the two (2) year period of
Section 16.2(b), provided that such modification changes no more
than thirty percent (30%) of the transistors in the Collaborative
Product and the modified Collaborative Products are in conformance
with any Statement of Work whose Point of No Return was satisfied
prior to the Change of Control of ParkerVision.
After the expiration of the two (2) year period of Section 16.2(b), the
licenses granted to TI by ParkerVision in this Section 16.2 shall be
revoked.
TI/PV
Page 24
The remedies and liabilities provided for in this Section 16.2 represent
ParkerVision's complete and total liability to TI for any non-compliance
or breach under Sections 16.2(i) and 16.2(ii).
16.3 REVENUE SHARING. For each D2D Sub-Part (that may include modifications
made by TI pursuant to Section 16.2(c) in each Collaborative Product sold
by TI or a TI Affiliate to a third party other than ParkerVision or a
ParkerVision Affiliate, TI shall pay ParkerVision a per unit share to be
calculated in accordance with the formula provided in Exhibit [D] hereto.
16.4 REPORTS AND AUDITS. Within forty-five (45) days after the end of each
calendar quarter, TI shall pay ParkerVision all per unit shares which
accrued to ParkerVision pursuant to this Section [16] during such quarter.
Each such payment shall be accompanied by a report setting forth (a) the
customer name, contact information, and model number with respect to each
Product sold and (b) the total number of Product sold during such quarter.
TI shall keep detailed records of its sale or its Affiliates' sale of
Products for a period of three (3) years after the date on which such
Products are distributed. ParkerVision shall have the right to audit such
records once every six (6) months, upon reasonable prior written notice to
TI. In addition to any underpayments or related late charges revealed by
such audit, TI shall pay for the cost of any audit which reveals an
underpayment of more than five percent (5%) for any quarter audited.
16.5 DEFINITION A "Change of Control" of a Party shall be deemed to have
occurred in the event that, and is effective on the date that: (i) a third
party (other than ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ Wilf, and/or ▇▇▇▇ ▇▇▇▇▇▇,
individually or in any combination, in the case of ParkerVision) becomes
the owner of or takes control of, directly or indirectly, by merger or
otherwise, beneficially or of record, voting securities representing fifty
percent (50%) or more of the total voting power of such Party or such
Party's successor ("Controlling Interest"), or (ii) such Party transfers
all or substantially all of its assets belonging to such Party's RF or
semiconductor business unit to a third party.
16.6. POSSIBLE ADDITIONAL LICENSE TO TI. After a Change of Control of
ParkerVision, if ParkerVision or the Acquiring Party grants a
non-exclusive license of ParkerVision D2D technology to a third party
within five (5) years after such Change of Control, then ParkerVision or
the Acquiring Party shall offer the same non-exclusive license under the
same terms and conditions to TI. In the event that, after the Effective
Date of this Agreement, ParkerVision assigns all or any of its rights in
D2D to a third party, in accordance with Section 23.7, ParkerVision shall
cause such third party to comply with this Section 16.6.
16.7. QUALITY CONTROL. The quality of Collaborative Products sold by TI
according to Section 16.2(b) shall conform to the reasonable quality
standards of ParkerVision as it may issue
TI/PV
Page 25
from time to time; and are of a standard consistent with the prestige and
reputation which the ParkerVision Trademarks have heretofore developed or
develop in the future.
PART C: GENERAL PROVISIONS
--------------------------
17. REPRESENTATIONS & WARRANTIES
----------------------------
ParkerVision and TI each represents and warrants to the other Party that:
17.1. DUE AUTHORIZATION. It has the requisite corporate power, authority
and legal right to execute and deliver this Agreement and to perform
each and every of its obligations hereunder and to consummate the
transactions contemplated hereby. The execution, delivery and
performance of this Agreement has been duly authorized by all
necessary corporate and, if applicable, shareholder action.
17.2. NO CONFLICT. The execution, delivery and performance of this
Agreement does not and will not violate, conflict with or result in
the breach of any term, condition or provision of its Articles of
Incorporation or By-Laws (or their equivalent) nor any term,
condition or provision of any contract, agreement, document,
commitment, undertaking or understanding between it and any other
person, or entity.
17.3 NO OTHER PARTY OPTIONS. There are no existing agreements, options,
commitments, entitlements or rights of any person to obtain from the
Party giving the representation, directly or indirectly, any rights,
obligations, grants, or licenses inconsistent with those of the
other Party covered by this Agreement.
17.4 The representations and warranties of each Party contained in this
Agreement shall have been true in all material respects as of the date
hereof. Each Party undertakes to make all commercially reasonable efforts
to ensure that the above representations and warranties remain true in all
material respects throughout the term of this Agreement. In the event that
a Party is unable to comply with the foregoing undertaking it shall notify
the other party thereof without undue delay, whereupon the other Party
shall have the right to terminate this Agreement by providing the Party
which is no longer in compliance with thirty (30) days prior written
notice.
18. INFRINGEMENT OF THIRD PARTY INTELLECTUAL PROPERTY.
--------------------------------------------------
18.1. TI'S INDEMNITY TO PARKERVISION. TI shall defend any claim, suit or
other proceeding brought against ParkerVision insofar as the
proceeding is based on a
TI/PV
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claim that TI Manufacturing Technology used in the manufacture of
Products supplied by TI to ParkerVision infringes a third party's
Intellectual Property Rights, or a claim that ParkerVision
indirectly infringes a third party's Intellectual Property Rights
based on a claim that a Collaborative TI Digital Baseband Processor
sold by TI directly infringes such third party's Intellectual
Property Rights, and TI shall pay all damages and costs finally
awarded therein against ParkerVision, provided that TI is promptly
informed and furnished a copy of each communication, notice or other
action relating to the alleged infringement and is given authority,
information and assistance necessary to defend or settle the
proceeding. TI shall not be obligated to defend or be liable for
ParkerVision's costs and damages if the infringement arises due to
the design of a Product, Project IP including without limitation
Interface technology,and/or a combination with, an addition to, or a
modification of the Products by ParkerVision after delivery by TI.
18.2 PARKERVISION'S INDEMNITY TO TI.
(a) ParkerVision shall defend any claim, suit or other proceeding
brought against TI insofar as the proceeding is based on a
claim that Products made by TI for ParkerVision infringes a
third party's Intellectual Property Rights, or a claim that TI
indirectly infringes a third party's Intellectual Property
Rights based on a claim that a Collaborative Product sold by
ParkerVision directly infringes such third party's
Intellectual Property Rights, and ParkerVision shall pay all
damages and costs finally awarded therein against TI, provided
that ParkerVision is promptly informed and furnished a copy of
each communication, notice or other action relating to the
alleged infringement and is given authority, information and
assistance necessary to defend or settle the proceeding.
ParkerVision shall not be obligated to defend or be liable for
TI's costs and damages if the infringement arises from a TI
Digital Baseband Processor, Project IP including without
limitation Interface technology, and/or a combination with, an
addition to, or a modification of the Products by TI, or if
the infringement arises from the use of TI Manufacturing
Technology.
ParkerVision shall defend any claim, suit or other proceeding
brought against TI insofar as the proceeding is based on a claim
that Collaborative Products sold by TI into the open market in
accordance with Section 16.2(b) directly infringes a third party's
Intellectual Property Rights, and ParkerVision shall pay all damages
and costs finally awarded therein against TI, provided that
ParkerVision is promptly informed and furnished a copy of each
communication, notice or other action relating to the alleged
infringement and is given authority, information and assistance
necessary to defend or settle the proceeding. ParkerVision shall not
be obligated to defend or be liable for TI's costs and damages if
the infringement
TI/PV
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arises from a TI Digital Baseband Processor, Project IP including
without limitation Interface technology, and/or a combination with,
an addition to, or a modification of the Products by TI, or if the
infringement arises from the use of TI Manufacturing Technology.
18.3. ACTUAL AND ALLEGED INFRINGEMENT.
18.3.1 TI INDEMNIFICATION. If TI Manufacturing Technology used in
the manufacture of the Products supplied by TI to ParkerVision
hereunder shall be held to infringe Intellectual Property Rights and
ParkerVision shall be enjoined from using or reselling same because
of such infringement, or if TI discontinues shipment of such Product
after a third party has filed suit in a court alleging such
infringement, then TI will exert all Commercially Reasonable
Efforts, at its option and at its expense, to: (a) procure for
ParkerVision the right to use, sell, resell and otherwise market
such Products free of any liability for infringement of such
Intellectual Property Rights, or (b) replace such Products with
non-infringing substitute products otherwise complying substantially
with all requirements of this contract, or (c) refund the purchase
price and the transportation costs of infringing Products returned
to TI. TI shall not be obligated for any of the foregoing remedies
if the infringement arises due to the design of a Product, Project
IP including without limitation Interface technology,and/or a
combination with, an addition to, or a modification of the Products
by ParkerVision after delivery by TI.
18.3.2 PARKERVISION INDEMNIFICATION. If a Collaborative Product made
and sold by TI into the open market in accordance with Section
16.2(b) shall be held to infringe Intellectual Property Rights and
TI is enjoined from making, using or reselling same because of such
infringement, or if TI discontinues shipment of such Collaborative
Product to the open market after a third party has filed suit in a
court alleging such infringement, then ParkerVision will exert all
Commercially Reasonable Efforts, at its option and at its expense,
to obtain the right to have made such Collaborative Products by TI,
and in the case of Collaborative Products sold by by TI into the
open market in accordance with Section 16.2(b) to procure for TI the
right to make, have made, use, sell, resell and otherwise market
such Collaborative Products to the extent provided for in Section
16.2(b) free of any liability for infringement of such Intellectual
Property Rights. ParkerVision shall not be obligated for any of the
foregoing remedies if the infringement arises from a TI Digital
Baseband Processor, Project IP including without limitation
Interface technology, and/or a combination with, an addition to, or
a modification of the Products by TI, or if the infringement arises
from the use of TI Manufacturing Technology.
18.3.3 Discontinuation of Shipments. If an infringement per Section 18.1 or
Section 18.2 is alleged prior to the completion of delivery of Products under
this Agreement, TI may decline to
TI/PV
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accept new purchase orders or make further shipments without being in breach of
this Agreement. The period of foundry exclusivity under Section 6 shall
immediately expire for any Product for which TI has elected to reject new
purchase orders or discontinue shipments under this Section.
18.4. THE FOREGOING STATES THE SOLE AND EXCLUSIVE LIABILITY OF THE PARTIES
FOR INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHTS AND IS IN LIEU
OF ALL WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, IN REGARD THERETO.
19. NO OTHER LICENSE
----------------
EXCEPT FOR THE CONVEYANCES AND THE LICENSES GRANTED IN SECTIONS [3.2;
5.2.5, 5.2.6, 5.3, 6.6 and 16.2] ABOVE, NOTHING IN THIS AGREEMENT, any
STATEMENT OF WORK OR THE FOUNDRY BUSINESS PLAN SHALL BE CONSTRUED AS
GRANTING OR CONFERRING ANY RIGHTS BY LICENSE OR OTHERWISE, EXPRESSLY,
IMPLIED OR OTHERWISE, UNDER ANY INTELLECTUAL PROPERTY RIGHTS OF EITHER
PARTY MADE, CONCEIVED OR ACQUIRED PRIOR TO, DURING OR AFTER THE TERM OF
THIS AGREEMENT. WITHOUT LIMITING THE GENERALITY OF THE PRECEDING SENTENCE,
THE PARTIES HEREBY EXPRESSLY AGREE THAT NOTHING IN THIS AGREEMENT SHALL BE
CONSTRUED AS GRANTING OR CONFERING To a party aNY RIGHTS, BY LICENSE OR
OTHERWISE, in the OTHER PARTY'S sub-parts, products, integrated circuits,
front ends, DEVICES and/OR CHIPSETS.
20. LIMITATION OF DAMAGES. UNLESS EXPRESSLY PROVIDED FOR IN THIS AGREEMENT
AND EXCEPT FOR DAMAGES INCURRED BY A PARTY AS A RESULT OF THE OTHER
PARTY'S BREACH OF A CONFIDENTIALITY OBLIGATION HEREUNDER OR IN
CONNECTION HEREWITH, AND EXCEPT FOR damages that result from
PARKERVISION'S or its affiliates breach of the covenant in Section 5.4,
NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY LOST PROFITS, LOSS
OF GOODWILL, OVERHEAD, OR OTHER INDIRECT, SPECIAL, INCIDENTAL, OR
CONSEQUENTIAL DAMAGES ARISING OUT OF OR RELATED TO THIS AGREEMENT,
HOWEVER CAUSED, AND WHETHER BASED IN CONTRACT, TORT (INCLUDING
NEGLIGENCE), STRICT LIABILITY OR OTHERWISE. THESE LIMITATIONS SHALL
APPLY EVEN IF THE PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGE, AND NOTWITHSTANDING THE FAILURE OF ESSENTIAL PURPOSE OF ANY
LIMITED REMEDY HEREIN.
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21. CONFIDENTIAL INFORMATION.
21.1. DEFINITION. "Confidential Information" means information relating to
the subject matter of this Agreement which is regarded as
confidential or proprietary by one Party or the other, and
information transferred during meetings or other communication
between the Parties relating to this Agreement which is owned or
controlled by either Party and which relates to its past, present or
future activities with respect to the subject matter of this
Agreement,. if such information is disclosed by one of the Parties
to the other Party in written, graphic, model or other tangible form
or in the form of a computer program or in a machine readable medium
or any derivation thereof and is designated in writing as
confidential or proprietary by an appropriate legend, together with
the name of the Party so disclosing it, or, if such information is
disclosed orally, which is identified at the time of oral disclosure
as confidential or proprietary and which is reduced to written,
graphic, model, or other tangible form, marked as confidential and
delivered by the disclosing Party within thirty (30) days after such
oral disclosure. By way of example and not of limitation,
information disclosed by a Party will be deemed to be marked as
confidential if it is marked as either Party's "Internal Data" or as
"Strictly Private".
21.2. CONFIDENTIALITY OBLIGATION. Each Party agrees that the Confidential
Information of the other Party which it receives pursuant to this
Agreement is received only for its own use and only to the extent
provided in this Agreement. Each Party agrees to keep the
Confidential Information confidential and to disclose it to no third
party, but only to such employees of the receiving Party with a need
to know such information, until (i) the expiration or termination of
this Agreement or (ii) the date five (5) years from the date of
initial disclosure, whichever is later. Neither Party shall be
liable for the unauthorized use or disclosure of such information
provided that such Party exercises at least the same degree of care
as the receiving Party normally exercises to protect against the
unauthorized use or disclosure of its own confidential or
proprietary data and information of similar importance, and that
such degree of care affords at least reasonable protection, and
provided that such receiving Party takes reasonable action to
prevent further unauthorized use or disclosure after becoming aware
of same.
21.3. OWNERSHIP AND USE. All Confidential Information of either Party is
and shall remain exclusively owned by the disclosing Party, and the
grant in this Agreement of license or other rights therein or access
thereto does not transfer to the receiving Party any present or
future ownership rights in the Confidential Information.
21.4. CONFIDENTIALITY EXCEPTION. Notwithstanding the provisions of Section
[21.1], nothing received by a Party is required to be treated as
Confidential Information
TI/PV
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which prior hereto, or during the term of this Agreement, or
thereafter, is or becomes (1) publicly known through no unauthorized
act of the receiving Party, (ii) rightfully received from a third
party without obligation of confidentiality, (iii) independently
developed by the receiving Party, (iv) already known by the
receiving Party without an obligation of confidentiality, (v)
intentionally disclosed without similar restrictions by the
disclosing Party to a third party, or (vi) approved by the
disclosing Party for public disclosure. Evidence supporting (iii)
shall be provided by the Party asserting same upon the request of
the other Party.
21.5. OTHER DISCLOSURE. Neither Party shall be liable for disclosure of
any Confidential Information if such disclosure is in response to a
valid order of a court or other government body or any political
subdivision thereof, provided, however, that the Party proposing to
disclose such information shall first notify the other Party and
shall make a good faith effort to obtain a protective order
requiring that the Confidential Information so disclosed be used
only for the purpose for which such protective order is issued.
21.6 RESTRICTION ON FILING PATENT APPLICATIONS. Neither Party shall file
or cause to be filed any patent application on an invention of the
other Party disclosed by the other Party as Confidential
Information. Without limiting the generality of the foregoing, TI
hereby specifically undertakes not to file or cause to be filed any
patent application on an invention disclosed by ParkerVision to TI
as Confidential Information pursuant to Section 16.2.
22. EXPIRATION AND TERMINATION.
---------------------------
22.1. TERM OF THE AGREEMENT. This Agreement will enter into effect on the
Effective Date first stated above and, unless sooner terminated as
elsewhere provided in this Agreement, shall continue in full force
and effect until the expiration of the foundry relationship
contemplated in Section [6] above; provided, however, that
notwithstanding such expiration or termination, this Agreement shall
remain effective and continue to govern:
(a) orders placed by ParkerVision and accepted by TI prior to the
expiration or termination of the Agreement;
(b) any uncompleted development work that remains to be performed
by either Party pursuant to a Statement of Work hereunder
unless the Statement of Work is terminated in accordance with
Section [4.4] above; and
(c) manufacture and supply of Products in accordance with Section
[6.4] above.
TI/PV
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22.2. TERMINATION. This Agreement may be terminated by a Party for the
following reasons:
22.2.1. If either Party shall at any time default, without any
material causative fault on the part of the other Party, by
failing to perform any material provision of this Agreement,
the non-defaulting Party may obtain the right to terminate
this Agreement by providing written notice to the defaulting
Party specifying the breach. The Agreement will not be
terminated if (i) the material breach specified in the notice
is remedied within the thirty (30) day period following
receipt of the notice by the defaulting Party or (ii) if the
breach reasonably requires more than thirty (30) days to
correct, the defaulting Party has, within thirty (30) days
from receipt of the notice of default, begun substantial
corrective action to cure the breach and submitted a written
remediation plan to the non-defaulting Party's Program
Coordinator providing a detailed explanation of the steps to
be taken to cure the breach as quickly as practicable, the
defaulting Party diligently pursues such corrective action,
and such breach is actually cured within sixty (60) days
following receipt of the notice of default. If any default is
not cured within the time permitted, the non-defaulting Party
shall have the right to terminate this Agreement at any time
thereafter by giving written notice of termination to the
other Party, and upon the giving of such notice of termination
this Agreement shall terminate immediately. The defaulting
Party shall have the right to cure any such default up to the
date of termination. Termination of this Agreement as provided
hereunder shall not prejudice any right or remedy of the
non-breaching party.
22.2.2. Upon written notice if the other Party becomes bankrupt or
insolvent, suffers a receiver to be appointed or makes
assignment for the benefit of creditors.
22.3. SURVIVAL. The Sections of this Agreement relating to warranties
(Section 15), duty of payments (Sections 13 and 16), confidential
information (Section 21), Intellectual Property Rights (Section 5),
licenses granted (3.2; 5.2.5, 5.2.6, 5.3, 6.6 and 16.2), publicity
(Section 23.16), indemnification (Section 18), limits of liability
(Section 20), relationship of the parties (Section 23.2), Change of
Control (Section 16), termination (Section 22.1), and compliance
with laws shall survive termination or expiration of this Agreement.
TI/PV
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23. MISCELLANEOUS.
23.1. FORCE MAJEURE. Anything contained in this Agreement to the contrary
notwithstanding, the obligations of the Parties hereto shall be
subject to all laws, both present and future, of any government
having jurisdiction over the Parties hereto, and to orders,
regulations, directions or requests of any such government, or any
department, agency or corporation thereof, and to war, acts of
public enemies, strikes or other labor disturbances, accidents,
transportation embargo, shortage of supplies, fires, floods,
earthquakes, acts of God, or causes of like or different kind beyond
the control of the Parties, and the Parties hereto shall be excused
from any failure to perform any obligation hereunder to the extent
such failure is caused by any such law, order, regulation,
direction, request or contingency, for the period such cause
endures. Production and deliveries may be allocated in a reasonable
manner among its customers by TI when these circumstances create a
delay or shortfall in production of the Product or of products of
the general type covered by this Agreement. Notwithstanding the
foregoing, in the event any such cause delays either Party's
performance of any of its material obligations under this Agreement,
the other Party may suspend its performance under this Agreement for
the period such delay continues and if any such cause renders
impossible or delays for a period of more than six months either
Party's performance of any of its material obligations under this
Agreement, the other Party may upon written notice terminate this
Agreement and such termination will be deemed to have occurred with
consent of both parties. The Party whose performance is delayed on
account of any such cause shall promptly notify the other Party, and
shall exert Commercially Reasonable Efforts to recommence
performance as soon as possible.
23.2. RELATIONSHIP OF PARTIES.
23.2.1. Neither Party shall have, or shall represent that it has,
any power, right, or authority to bind the other Party, or to
assume or create any obligation or responsibility, express or
implied, on behalf of the other Party or in the other Party's
name.
23.2.2. Each Party is an independent contractor, nothing in this
Agreement shall be construed as constituting ParkerVision and
TI as partners, joint venturers, or as creating the
relationships of employer and employee, franchiser and
franchisee, principal and agent, or any other form of legal
association that would impose liability on one Party for the
act or failure to act of the other Party.
23.2.3. EMPLOYEES/NON-SOLLICITATION. An employee of one Party shall
not be considered, for any purpose, an employee of the other
Party. To the extent this Agreement involves work by one Party
on the premises of the other Party, each Party shall instruct
and require its respective visiting
TI/PV
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employees to observe and obey all rules, policies and
procedures in effect at the facilities of the other Party.
During the term of this Agreement and for a period of one (1)
year thereafter, each Party will not solicit or induce any
employee of the other Party who is engaged in transfer of
technical information or in rendering technical assistance to
become an employee or consultant of such Party.
23.3 NOTICES AND ADMINISTRATION OF THE AGREEMENT. All notices shall be
given in writing either by personal delivery to the Party to whom
notice is directed, or by confirmed telex or facsimile, or by a
commercial overnight courier service, or by registered or certified
mail, return receipt requested. The date upon which any such notice
is so personally delivered, the date of confirmation of telex,
facsimile, or courier delivery, or if the notice is given by
registered or certified mail, the date three (3) days after it is
deposited in the U.S. mails, shall be deemed to be the date
delivered to the Party to whom notice is directed. For and on the
behalf of each Party, the person designated below shall have
cognizance of the work provided pursuant to this Agreement. General
administration of the Agreement shall be through them. Each Party
reserves the right to independently appoint a different individual
and agrees to notify the other Party in writing of such change. All
statements, and notices shall be sent directly to the following
individuals:
IF TO PARKERVISION: IF TO TI
PARKERVISION, INC. TEXAS INSTRUMENTS INCORPORATED
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
Attn: Legal Department Attention: Law Department
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇ Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇ Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
23.4 ENTIRE AGREEMENT. This Agreement, including its exhibits and
schedules, set forth the entire agreement and understanding between
the Parties as to the subject matter hereof and supersedes all prior
discussions, negotiations and agreements, written, oral or implied,
between them in respect of the subject matter of this Agreement.
Neither Party shall be bound by any conditions, definitions,
warranties, understandings or representations with respect to such
subject matter other than as expressly provided herein or as duly
set forth on or subsequent to the date hereof in writing and signed
by a proper and duly authorized officer or representative of the
Party to be bound thereby. In the event that this Agreement
conflicts with a Statement of Work, a purchase order, or the Foundry
Business Plan, this Agreement controls.
TI/PV
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23.5 APPLICABLE LAW. This Agreement shall be governed by, construed and
interpreted and the rights of the parties determined in accordance
with the laws of the State of New York without regard to the choice
of law principles thereof.
23.6 BIND AND BENEFIT. This Agreement shall be binding upon and shall
inure to the benefit of, the Parties' respective successor.
23.7 ASSIGNMENT. Neither Party may assign or delegate or otherwise
transfer its rights or obligations under this Agreement either in
whole or in part, without the prior written consent of the other
Party, which consent shall not be unreasonably withheld in the case
of a Change of Control, as defined in Section 16.5(ii), subject to
the requirement that the Party's assignee or transferee provides the
other Party with prima facie evidence of its technical and
commercial capability to perform under this Agreement, and agrees in
writing to comply under the terms and conditions of this Agreement.
It shall not be deemed to be an assignment or delegation of a
Party's rights or obligations hereunder (and, accordingly, no
consent of the other Party shall be required) if a Party engages in
a merger or other similar transaction, as a result of which the
holders of the outstanding voting securities of such Party prior to
the transaction own less than 50% of the outstanding voting
securities of the surviving corporation after the transaction. TI's
consent to an assignment, delegation or other transfer of
ParkerVision's rights and obligations hereunder shall not be
construed as a waiver of TI's rights under Section 16.2 of this
Agreement. Any attempted assignment in violation of the provisions
of this Section will be void.
23.8 ALTERATIONS AND WAIVERS. The waiver, amendment or modification of
any provision of this Agreement or any right, power or remedy
hereunder, whether by agreement of the Parties or by custom, course
of dealing or trade practice, shall not be effective unless made in
writing and signed by the Parties hereto. No failure or delay by
either Party in exercising any right, power or remedy with respect
to any of the provisions of this Agreement shall operate as a waiver
of such provisions with respect to such occurrences; nor shall any
extension of time or other indulgence granted to a Party hereunder
otherwise alter or affect any power, remedy or right of the other
Party, or the obligations of the Party to whom such extension or
indulgence is granted; nor shall the failure by either Party to
enforce any provision be deemed a waiver of future enforcement of
that or any other provision.
23.9 SEVERABILITY. In the event any provision of this Agreement or the
application of any such provision shall be held to be prohibited or
unenforceable in any jurisdiction, such provision shall, as to such
jurisdiction, be ineffective to the extent of such prohibition or
un-enforceability; but, the remaining provisions of this Agreement
shall remain in full force and effect, and any such prohibition or
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unenforceability in any jurisdiction shall not invalidate or render
unenforceable such provision in any other jurisdiction. The Parties
shall use their Commercially Reasonable Efforts to replace the
provision that is contrary to law with a legal one with
approximately, to the extent possible, the original intent of the
Parties.
23.10 LANGUAGE INTERPRETATION. In the interpretation of this Agreement,
unless the context otherwise requires, (a) words importing the
singular shall be deemed to import the plural and vice versa, (b)
words denoting gender shall include all genders, (c) references to
persons shall include corporations or other bodies, and vice versa,
(d) references to Parties, sections, schedules, addenda, paragraphs,
articles and exhibits shall mean the Parties, sections, schedules,
addenda, paragraphs, articles and exhibits of and to this Agreement,
and (e) periods of days, weeks or months shall mean calendar days,
weeks or months.
23.11 HEADINGS. Article and Section headings are included solely for
convenience, are not to be considered a part of this Agreement, and
are not intended to be full and accurate descriptions of their
contents.
23.12 COUNTERPARTS OF AGREEMENT. This Agreement may be executed in any
number of counterparts, each of which shall be deemed an original
and all of which together shall constitute one and the same
instrument.
23.13 NO THIRD-PARTY BENEFICIARIES. Nothing contained in this Agreement
shall be construed to give any person other than ParkerVision and TI
any legal or equitable right, remedy or claim under or with respect
to this Agreement.
23.14 OTHER RESTRICTIONS. In exercising its rights under this Agreement,
each Party agrees to comply strictly and fully with all export
controls imposed on Products, by any country or organization or
nations within whose jurisdiction each Party operates or does
business. Each Party agrees not to export or permit export of
Products or any related technical data or any direct Product of any
related technical data, without complying with the export control
laws in the relevant jurisdiction.
23.15 OZONE DEPLETING SUBSTANCES: Except where the ParkerVision has given
written approval to TI, in advance of shipment, TI hereby agrees
that it has not used or introduced after May 15, 1993, a Class I or
Class II ozone depleting substance (ODS) (as such terms are defined
in 40 CFR 82.104), into any product being supplied to or imported by
ParkerVision under this Agreement. Where the ParkerVision has so
agreed to accept product containing or manufactured using an ODS, TI
will label the product with a warning or will otherwise effectively
warn ParkerVision of such use in accordance with 40 CFR 82, Subpart
E. Should TI choose to warn ParkerVision through a mechanism other
than a warning label or
TI/PV
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other warning accompanying the shipment, a copy of such warning
shall be sent to the ParkerVision, or the otherwise appointed
representative of the Buyer of Record, in advance of shipment.
Breach of this provision will entitle ParkerVision to all remedies
available for breach of this Agreement, including without
limitations, the right to reject the product and/or terminate this
Agreement.
23.16 CONFIDENTIALITY OF AGREEMENT. Each Party agrees that the terms and
conditions of this Agreement shall be treated as Confidential
Information. Neither Party will disclose the terms or conditions to
any third party without the prior written consent of the other
Party, except that either Party may disclose the terms and
conditions of this Agreement:
1) as required by any court or other governmental body;
2) as required otherwise by law;
3) to legal counsel of the Parties, accountants, and other
professional advisors; or
4) to a third party who is negotiating with a Party to acquire
such Party (that is, to cause a Change of Control of such
Party as defined in Section 16.5), as long as the third party
agrees in writing to maintain as confidential any terms and
conditions of this Agreement disclosed to the third party.
23.17 ANNOUNCEMENT. Notwithstanding that the terms and conditions of this
Agreement are confidential, TI and ParkerVision agree to issue a
mutually agreeable joint press release upon execution of the
Agreement Additionally, either Party may file a Report with the
Securities and Exchange Commission on Form 8-K with respect to this
Agreement. The Report on Form 8-K Report shall be provided to the
other Party for review prior to filing, but each Party shall be
responsible for its own filing. To the extent permitted by the
Securities and Exchange Commission's rules, the filing Party shall
apply to the Commission for confidential treatment of commercially
sensitive terms of the Agreement, including but not limited to
pricing, lead time, and margin sharing provisions. Either Party may
also make additional disclosures as are required by law or required
of a government agency, subject to prior notice to the other Party
so that such other Party may seek an appropriate protective order.
Terms and conditions of the Agreement not disclosed in accordance
with the foregoing shall be kept confidential by the Parties.
23.18 EXHIBITS. The following is the list of Exhibits which are attached
hereto and are hereby incorporated into this Agreement by reference:
Exhibit A: Model Statement of Work
Exhibit B: TI Manufacturing Technology
Exhibit C: Guidelines for the Registration and Protection of
Jointly Owned Project IP
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Exhibit D: Per Unit Revenue Sharing for Collaborative Products sold
by TI in accordance with Section 16.
Exhibit E: ParkerVision Trademarks
Exhibit F: Example of Product Pricing and Quoted Lead-Time Quoted
by TI
Exhibit G: Additional Trademark Provisions -License Restrictions
Exhibit H: Acquiring Party's Written and Binding Assurance per
Section 16.2
Exhibit I: TI's Standard Terms and Conditions for Sales of
Semiconductor Products
Exhibit J (J1-J3): ParkerVision Down-Converter Schematics
Exhibit K: Calculation for Percentage Discharge of Output Signal
Exhibit L (L1-L4): ParkerVision Up-Converter Schematics (L1-L3) and
an exemplary digital aperture generator circuit (L4)
Exhibit M: Analog Amplitude Varying Input Waveform
TI/PV
Page 38
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be signed
by duly authorized officers or representative as the date first above written.
TEXAS INSTRUMENTS INCORPORATED PARKERVISION INCORPORATED
By: By:
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Name: Name:
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Title: Title:
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Date: Date:
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