EXHIBIT 10.39
[** CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR CERTAIN
PORTIONS OF THIS DOCUMENT]
DEVELOPMENT AND LICENSE AGREEMENT
between
Cisco Systems and Ambient Corporation
This DEVELOPMENT AND LICENSE AGREEMENT (the "Agreement") is made and entered
into as of this ___ day of December, 2000 (the "Effective Date") by and between
Cisco Systems, Inc., a California corporation, with offices at ▇▇▇ ▇. ▇▇▇▇▇▇
▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ and its affiliates ("Cisco"), and Ambient
Corporation, a Delaware corporation, with offices at ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Ambient").
This Agreement has the following attachments, which are incorporated in this
Agreement by this reference:
1. Development and License Agreement Terms and Conditions
2. EXHIBIT A: Statement of Work
3. EXHIBIT B: Field Trial Agreement
4. EXHIBIT C: Press Release
RECITALS
A. Cisco is in the business of developing, manufacturing and selling hardware
and software products for use in computer and communications networks.
B. Ambient is in the business of communications products focusing on Power
Line Telecommunication for consumer applications and utility-related
services.
C. Cisco and Ambient desire that Cisco develop and Ambient market the
Products (as defined herein) on the terms and conditions set forth herein
and in subsequent agreements to be entered into by the parties.
AGREEMENT
NOW, THEREFORE, in consideration of the mutual promises contained herein,
the parties agree as follows:
1.0 DEFINITIONS.
1.1 "Cisco Property" shall mean such items owned and provided by Cisco
under this Agreement or developed by or for Cisco under this Agreement and all
Intellectual Property Rights
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related thereto. Cisco Property shall include any derivatives, improvements or
modifications thereto or thereof and any Intellectual Property rights related
thereto.
1.2 "Ambient Property" shall mean such items as owned and provided by
Ambient under this Agreement and all Intellectual Property Rights related
thereto. Ambient Property shall not include any derivatives, improvements or
modifications thereto or thereof and any Intellectual Property rights related
thereto made by or for Cisco under this Agreement, it being understood that any
such derivatives will be deemed "Cisco Property."
1.3 "Deliverables" shall mean any tangible or intangible items to be
delivered by the parties pursuant to the Statement of Work.
1.4 "Intellectual Property Rights" shall mean all current and future
worldwide patents and other patent rights, utility models, copyrights, mask work
rights, trade secrets, and all other intellectual property rights and the
related documentation or other tangible expression thereof.
1.5 "Products" shall mean the Products described in the Statement of Work
and all tangible and intangible results and items arising out of or constituting
the results of the development of the Products, including without limitation all
Deliverables, documentation, and Intellectual Property Rights constituting,
embodied in, or pertaining to any of the foregoing. It is understood and agreed
that for purposes of the initial development activities contemplated by this
Agreement, the "Products" will include the "Headend Router Product" and the "CPE
Product" as described in the Statement of Work or any part or derivative
thereof.
1.6 "Statement of Work" shall mean the information set forth in Exhibit A.
1.7 "Day" shall mean a normal working day in the United States.
1.8 "First Revenue Ship" shall mean the first commercial distribution of
the Products or the services related to the Products that generates revenue of
any type for Ambient.
1.9 "Field Trial Site" shall mean any site where a Headend Router Product
is deployed.
1.10 "Field Trial Test Period" shall mean for each Field Trial Site, sixty
(60) calendar days from the date of installation of the Products at that site.
2. DEVELOPMENT EFFORT.
2.1 Development Effort. With the assistance and cooperation of Ambient,
Cisco shall use reasonable commercial efforts to develop and deliver the
Deliverables in accordance with the Statement of Work; provided, however, that
the due date for any Deliverable, performance of which was delayed on account of
failure of Ambient to complete any of its prerequisite obligations in a timely
fashion, shall be extended by one day for each day of Ambient's lateness. Each
Deliverable shall be delivered in such format and on such media as may be
reasonably requested by Ambient.
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2.2 Acceptance. Upon delivery of the Deliverables to Ambient, Ambient will
test whether the Deliverables conform to the applicable part of the Statement of
Work. Unless otherwise specified Ambient will accept or reject each Deliverable
within [***] Days after delivery. In the event that a Deliverable does not
conform to such part of the Statement of Work (such nonconformance will be
referred to as "Deficiencies"), Ambient shall provide written notice to Cisco
describing the Deficiencies in sufficient detail to allow Cisco to reproduce the
Deficiencies. Cisco will exert reasonable commercial efforts to correct the
Deficiencies so that the Deliverable conforms to the applicable part of the
Statement of Work. If Ambient does not give written notice to Cisco within [***]
Days following delivery of the Deliverable, Ambient shall be deemed to have
accepted the Deliverable. The procedure in this Section 2.2 will be repeated
with respect to a revised Deliverable to determine whether it is acceptable to
Ambient, unless and until Ambient issues a final rejection of the revised
Deliverable after rejecting the Deliverable on at least [***] prior occasions.
If Ambient issues a final rejection of the revised Deliverable pursuant to this
paragraph, either Cisco or Ambient shall be entitled to terminate this Agreement
or the applicable Statement of Work, as the case may be, [***] The parties agree
that the time period for accepting and rejecting Deliverables only apply if
there are no specific time periods specified for the applicable Deliverable in
the Statement of Work.
2.3 Changes. At any time following execution of this Agreement the
Statement of Work may be modified upon mutual written agreement of the parties.
In the event any such change materially increases Cisco's development costs
hereunder or requires a modification to the schedule for development and such
change was not required due to Cisco's delay or failure to complete its
obligations hereunder, Cisco and Ambient shall negotiate in good faith an
equitable adjustment to the development charges payable by Ambient to Cisco and
to the schedule for development.
2.4 Liaison. Each party agrees to appoint a principal point of contact,
identified in the Statement of Work as "Project Managers", to whom all
communications between the parties with respect to development of the Products
shall be directed.
2.5 Technical Assistance Required to Evaluate Deliverables. Cisco shall
determine and make available to Ambient reasonable technical assistance with
respect to the evaluation of the Deliverables per the time periods of section
2.2.
2.6 Independent Development. Except as set forth below, nothing in this
Agreement will impair either party's right to acquire, license, develop,
manufacture or distribute itself or through third parties on its behalf
technology substantially similar to that described in the Statement of Work or
to market and distribute such similar technology in addition to or in lieu of
the technology contemplated by this Agreement. Further, neither party will have
any obligations to limit or restrict the assignment or reassignment of any
employees or contractors in connection with the development of such similar
technology or the technology contemplated by this Agreement. However, nothing in
this Section 2.6 shall be construed as granting to either party any rights
except as specifically provided in this Agreement.
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2.7 Required Third Parties. Cisco and Ambient shall choose one or more
third party providers [***] in the manner specified in the Statement of Work.
2.8 General Business Relationship. Cisco shall support all development
efforts for the Products such as design, printed circuit layout, prototype
manufacture, testing, software and firmware in the manner specified in this
Agreement. The Parties agree to commence discussions to enter into [***] any
other agreements to implement the goals of this Agreement.
2.9 Additional Statements of Work. If Ambient desires to engage Cisco for
additional services which are not included in the Statement of Work and which do
not constitute merely a revision or modification of the Statement of Work, the
parties shall in good faith negotiate additional Statements of Work, each of
which upon signing shall be deemed a part of this Agreement. Additional
Statements of Work shall be entered into by mutual agreement between Cisco and
Ambient and shall be substantially in the form of the Statement of Work attached
hereto. Each Statement of Work shall be signed by authorized representatives of
the parties. This Agreement may cover more than one Statement of Work at any
given time.
3. OWNERSHIP.
3.1 Ownership by Ambient. Except as otherwise set forth in Section 3.2
below, Ambient shall own all right, title, and interest in the Ambient Property,
if any, and Cisco shall have no ownership interest therein.
3.2 Ownership by Cisco. Cisco shall own all right, title, and interest in
the Cisco Property, the Products, all results arising from the development
thereof by Cisco, and all Intellectual Property Rights therein, including any
derivatives, improvements or modifications of the Ambient Property made by or
for Cisco under this Agreement. Ambient shall execute such documents, render
such assistance, and take such other action as Cisco may reasonably request, at
Cisco's expense, to apply for, register, perfect, confirm, and protect Cisco's
rights therein. Cisco shall have the exclusive right to apply for or register
any patents, mask work rights, copyrights, and such other proprietary
protections with respect thereto.
3.3 Waiver of Moral Rights. Ambient hereby waives any and all moral
rights, including without limitation any right to identification of authorship
or limitation on subsequent modification that Cisco (or its employees, agents or
consultants) has or may have in the Ambient Property or any part thereof as
included in the Products.
3.4 Cisco as Attorney in Fact. Ambient agrees that if Cisco is unable
because of Ambient's unavailability, dissolution or incapacity, or for any other
reason, to secure Ambient's signature to apply for or to pursue any application
for any United States or foreign patents or mask work or copyright registrations
covering the inventions assigned to Cisco above, then Ambient hereby irrevocably
designates and appoints the company and its duly authorized officers and agents
as Ambient's agent and attorney in fact, to act for and in Ambient's behalf and
stead to execute and
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file any such applications and to do all other lawfully permitted acts to
further the prosecution and issuance of patents, copyright and mask work
registrations thereon with the same legal force and effect as if executed by
Ambient.
4. LICENSES BY AMBIENT TO CISCO.
Ambient hereby grants Cisco a nonexclusive, worldwide, perpetual, irrevocable,
fully paid-up, royalty free license, with the right to sublicense and authorize
the granting of sublicenses, to make, have made, use, import, copy, modify,
offer to sell, sell, lease and otherwise distribute the Ambient Property, if
any, and all Intellectual Property Rights with respect thereto solely as
incorporated in the Products and any enhancements, derivatives or modifications
thereof.
5. LICENSES BY CISCO TO AMBIENT.
5.1 Nonexclusive License. Cisco hereby grants Ambient a nonexclusive,
worldwide, perpetual, irrevocable, fully paid-up, royalty free license, with the
right to sublicense and authorize the granting of sublicenses, to make, have
made, use, import, copy, modify, offer to sell, sell, lease and otherwise
distribute any derivative, improved or modified Ambient Property.
5.2 Manufacturing Rights. Ambient may elect in its reasonable judgment to
manufacture the CPE Product itself or together with third party manufacturers
agreed upon by the parties pursuant to a non-exclusive, non-transferable
license. Ambient's right to manufacture the CPE Product will also include the
right to modify and further develop the CPE Product in a manner mutually agreed
upon by the parties. All sales of the CPE Product manufactured by or for Ambient
(including modified versions of the CPE Product) shall be subject to the payment
of a royalty by Ambient to Cisco. Ambient agrees to pay Cisco royalties of [***]
which shall include any trademark rights granted by Cisco to Ambient. The
details concerning Ambient's manufacturing rights, and the parties maintenance
and support obligations with respect to the CPE Product to be manufactured by or
for Ambient will be mutually agreed upon in writing by the parties in a further
Agreement.
5.3 Branding Rights. If Ambient elects to manufacture the CPE Product,
Ambient may in its sole discretion (a) sell the CPE Product using a Cisco owned
trademark as specified by Cisco, provided that, Ambient shall not be entitled to
use any Cisco trademark where the CPE Product has been modified by Ambient; or
(b) sell the CPE Product using an Ambient trademark or brand. Ambient's use of
any Cisco owned trademark shall be subject to a trademark license agreement to
be negotiated in good faith by the parties.
5.4 Sales Rights.
5.4.1 From the Effective Date of this Agreement until six (6) months
after the first successful installed field site demonstration employing the
testing criteria for the staging demonstration as described in the Statement of
Work (except that the telephone connection will be with a phone located in the
electric utilities data center), Ambient shall have the exclusive right to sell
the Products to end user customers in all 50 states of the United States of
America and the non-
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exclusive right to sell the Products to end user customers throughout the world.
For purposes of this Agreement, such "exclusive right" means that any customer
in the United States who desires to purchase the Products from Cisco will be
directed to Ambient to order the Products during the Exclusivity Period.
5.4.2 If and only if Cisco can demonstrate to Ambient that any one
of the following three conditions is met, then Cisco may on an exceptional basis
sell a Product to a customer in the United States during the Exclusivity Period:
(a) Ambient is unable to meet such customer's requirements and delaying the sale
of the Product to such customer by Cisco beyond the Exclusivity Period would
cause a serious customer satisfaction issue for Cisco, (b) Cisco's failure to
sell the Product to a customer in the United States during the Exclusivity
Period would result in a breach of a contractual obligation to a customer
(provided that no such contractual obligations may be made for purposes of
circumventing this restriction) or (c) this Agreement is terminated for cause by
Cisco pursuant to Section 14.2 prior to the end of the Exclusivity Period.
5.4.3 Notwithstanding anything to the contrary contained herein,
Cisco may sell the Products directly to end user customers or to resellers or
system integrators outside of the United States of America during and after the
Exclusivity Period.
5.4.4 After the Exclusivity Period, Cisco agrees to grant Ambient
the continued right to sell the Products worldwide and to treat Ambient as its
non-exclusive preferred system integrator of the Products, details of this
right, obligations and preferred status to be documented in the System
Integrator Agreement or in any other convenient manner as agreed upon by the
parties. Ambient agrees that except for the exclusivity restriction described
above, Cisco may sell the Products to any other party on a non-exclusive basis.
Ambient also agrees that all purchases of Products by Ambient from Cisco will be
pursuant to Cisco's standard System Integrator Agreement to be negotiated in
good faith by the parties.
6. PAYMENTS; TAXES.
6.1 Payments. In consideration of the duties and obligations of Cisco and
the rights granted to Ambient hereunder, Ambient shall pay to Cisco within one
(1) day of becoming due [***] in the manner specified below for the initial
development arrangement contemplated by this Agreement:
i. The sum of [***] upon the execution of this Agreement.
b. The sum of [***] upon demonstration of a proof of concept
(acceptance criteria for such demonstration shall be as set
forth in the Statement of Work).
c. The sum of [***] in increments of [***] per trial site for the
Field Trials, upon installation, or if less than 5 sites are
installed then the full remainder at first revenue shipment of
a Product by Ambient.
If the parties agree to additional Statements of Work beyond the initial one
attached hereto or if the parties agree to expand the development activities
contemplated by the initial Statement of Work,
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additional fees, if any, shall be set forth in the relevant Statement of Work.
6.2 Taxes.
6.2.1 In addition to the payment described above, Ambient shall pay
all taxes, including sales and use tax, but excluding any tax based upon the
income of Cisco if imposed by any government as a result of payments made to
Cisco under this Agreement.
6.2.2 Ambient may withhold from its payment to Cisco under this
Agreement any income taxes required to be withheld by Ambient under the
applicable laws of the United States or any other country. Such amount shall be
paid to the appropriate taxing authorities and Ambient shall provide Cisco with
official receipts issued by said taxing authority or such other evidence as is
reasonably available to establish that such taxes have been paid. Ambient shall
cooperate with Cisco and take all actions reasonably necessary in order to
secure a reduction or elimination of withholding taxes pursuant to the income
tax treaty between the United States and any other country.
6.3 Third Party License Fees. Ambient shall be obligated to pay all
license fees and royalties, if any, with respect to any third party proprietary
rights and technologies which are required for the fulfillment of its
obligations under this Agreement.
7. FIELD TRIALS.
The parties shall conduct field trials for the Products ("Field Trials")
pursuant to the Field Trial Agreement attached hereto as Exhibit B.
8. CONFIDENTIALITY.
8.1 Press Releases. Each party shall obtain the other party's written
consent prior to any publication, presentation, public announcement or press
release concerning the existence or terms and conditions of this Agreement.
Ambient may, however, make the statement as set forth in Exhibit C in its
publications, presentations, public announcements and press release concerning
this Agreement and Ambient's relationship with Cisco.
8.2 Confidential Information. The existence and terms and conditions of
this Agreement shall be considered "Confidential Information" under the
"Non-Disclosure Agreement" entered into by the parties on August 3, 2000 ("NDA")
and the parties agree to comply with the provisions of the NDA. To the extent
that the term stated in the NDA terminates prior to the termination of this
Agreement, the parties agree that the term of the NDA shall be automatically
extended to the term of this Agreement.
8.3 Legal Obligation to Disclose. Ambient's disclosure of the existence of
this Agreement and the terms thereunder in accordance with its obligation under
the Securities Exchange Act of 1934, as amended, shall not be deemed to be a
violation of Section 8, so long as Ambient has provided to Cisco beforehand a
copy of the provisions which it proposes to release to
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the Securities and Exchange Commission, has given good faith consideration to
any request by Cisco to redact specific provisions from such disclosure.
8.4 Confidentiality Agreements with Utilities. Ambient shall require each
Utility to enter into a confidentiality agreement that provides the same
protections to Cisco's Confidential Information as provided for in the NDA.
9. USE OF CONTRACTORS.
The parties may retain third parties ("Contractors") to furnish services to them
in connection with the performance of its obligations hereunder and permit such
Contractors to have access to Confidential Information, but only to the extent
and insofar as reasonably required in connection with the performance of their
obligations under this Agreement. Each party shall require each such Contractor
to enter into a confidentiality agreement that provides at least the same level
of protections to Confidential Information as provided for in the NDA.
10. REPRESENTATIONS AND WARRANTIES.
10.1 THE PRODUCTS FURNISHED UNDER THIS AGREEMENT ARE PROVIDED FOR
DEVELOPMENT AND TESTING PURPOSES ONLY ON AN "AS IS" BASIS, WITHOUT ANY
WARRANTIES OR REPRESENTATIONS EXPRESS, IMPLIED OR STATUTORY; INCLUDING, WITHOUT
LIMITATION, WARRANTIES OF QUALITY, PERFORMANCE, NONINFRINGEMENT, MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE. NOR ARE THERE ANY WARRANTIES CREATED BY A
COURSE OF DEALING, COURSE OF PERFORMANCE OR TRADE USAGE. CISCO DOES NOT WARRANT
THAT THE PRODUCTS WILL MEET AMBIENT'S NEEDS OR BE FREE FROM ERRORS, OR THAT THE
OPERATION OF THE PRODUCTS WILL BE UNINTERRUPTED. THE FOREGOING EXCLUSIONS AND
DISCLAIMERS ARE AN ESSENTIAL PART OF THIS AGREEMENT AND FORMED THE BASIS FOR
DETERMINING THE FEES CHARGED FOR THE PRODUCTS.
10.2 Representations and Warranties of Ambient. Ambient hereby warrants
and represents to Cisco as follows:
10.2.1 Ambient Property and all parts thereof, are either owned or
properly licensed by Ambient or are in the public domain and the use thereof by
Cisco, its representatives, resellers or end users will not infringe any
proprietary rights of any third party. Any third party property provided by
Ambient hereunder is properly licensed and, to Ambient's knowledge, does not
infringe any proprietary rights of any other third party.
10.2.2 Ambient has the full power to enter into this Agreement and
to carry out its obligations under this Agreement.
10.3 Representations and Warranties of Cisco. Cisco hereby warrants and
represents to Ambient as follows:
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10.3.1 Cisco Property and all parts thereof, are either owned or
properly licensed by Cisco or are in the public domain and the use thereof by
Ambient, its representatives, resellers or end users will not infringe any
proprietary rights of any third party. Any third-party property provided by
Cisco hereunder is properly licensed and, to Cisco's knowledge, does not
infringe any proprietary rights of any other third party.
10.3.2 Cisco has the full power to enter into this Agreement and to
carry out its obligations under this Agreement.
11. INDEMNITY.
11.1 Indemnification by Cisco.
11.1.1 Cisco shall defend, indemnify and hold harmless Ambient and
its officers, directors, employees, shareholders, customers, agents, successors
and assigns from and against any and all loss, damage, settlement, costs or
expense (including legal expenses), as incurred, resulting from, or arising out
of (i) any claim which alleges that any Product or Cisco Property infringes
upon, misappropriates or violates any issued U.S. patents, copyrights,
trademarks or trade secret rights or other proprietary rights of persons, firms
or entities who are not parties to this Agreement where such unlawful activity
is completely independent of the Product and (ii) any claim relating to
negligence, misrepresentation, intentional misconduct, error or omission by
Cisco.
11.1.2 As a condition to such defense, Ambient will provide Cisco
with prompt written notice of the claim and permit Cisco to control the defense,
settlement, adjustment or compromise of any such claim. Ambient may employ
counsel at its own expense to assist it with respect to any such claim.
11.1.3 If the use of the Products hereunder is enjoined or becomes
the subject of a claim of infringement, Cisco shall use its reasonable efforts
at its option to: (i) obtain such licenses; or (ii) make such replacements or
modifications as are necessary to the continue use or of the Products without
infringement and in compliance with the Statement of Work.
11.1.4 Cisco shall have no obligation under subsections 11.1.1 and
11.1.2 above to the extent any claim of infringement or misappropriation results
from: (i) use of the Products in combination with any other product, end item,
or subassembly if the infringement would not have occurred but for such
combination; (ii) use or incorporation in the Products of any design, technique
or specification furnished by Ambient, if the infringement would not have
occurred but for such incorporation or use; or (iii) any claim based on
Ambient's use of the Products after Cisco has informed Ambient of modifications
or changes in the Products required to avoid such claims and offered to
implement those modifications or changes, if such claim would have been avoided
by implementation of Cisco's suggestions; (iv) compliance by Cisco with
specifications or instructions supplied by Ambient.
11.2 Indemnification by Ambient.
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11.2.1 Ambient shall defend, indemnify and hold harmless Cisco and
its officers, directors, employees, shareholders, customers, agents, successors
and assigns from and against any and all loss, damage, settlement, costs or
expense (including legal expenses), as incurred, resulting from, or arising out
of (i) any claim which alleges that the Ambient Property infringes upon,
misappropriates or violates any issued U.S. patents, copyrights, trademarks or
trade secret rights or other proprietary rights of persons, firms or entities
who are not parties to this Agreement where such unlawful activity is completely
independent of the Product and (ii) any claim relating to negligence,
misrepresentation, intentional misconduct, error or omission by Ambient.
11.2.2 As a condition to such defense and indemnification, Cisco
will provide Ambient with prompt written notice of the claim and permit Ambient
to control the defense, settlement, adjustment or compromise of any such claim.
Cisco may employ counsel at its own expense to assist it with respect to any
such claim.
11.3 Exclusive Remedy. THE FOREGOING PROVISIONS OF THIS SECTION 11.1 STATE
THE ENTIRE LIABILITY AND OBLIGATIONS OF THE PARTIES AND THE EXCLUSIVE REMEDY OF
THE PARTIES AND THEIR CUSTOMERS, WITH RESPECT TO ANY VIOLATION OR INFRINGEMENT
OF PROPRIETARY RIGHTS, INCLUDING BUT NOT LIMITED TO ANY PATENT, COPYRIGHT,
TRADEMARK, BY THE PRODUCTS OR ANY PART THEREOF. THE PARTY'S OBLIGATIONS UNDER
THIS SECTION 11 ARE SUBJECT TO THE LIMITATIONS SET FORTH IN SECTION 12.
12. CONSEQUENTIAL DAMAGES.
NOTWITHSTANDING ANYTHING TO THE CONTRARY, NEITHER PARTY SHALL BE LIABLE WITH
RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT UNDER ANY CONTRACT, STRICT
LIABILITY, NEGLIGENCE OR OTHER LEGAL OR EQUITABLE THEORY FOR ANY SPECIAL,
INCIDENTAL OR CONSEQUENTIAL DAMAGES OR LOST PROFITS, OR COST OF PROCUREMENT OF
SUBSTITUTE GOODS, TECHNOLOGY OR SERVICES.
13. LIMITATION OF LIABILITY.
NOTWITHSTANDING ANYTHING TO THE CONTRARY, THE TOTAL DOLLAR LIABILITY OF EITHER
PARTY UNDER THIS AGREEMENT OR OTHERWISE SHALL BE LIMITED TO [***]
14. TERM AND TERMINATION.
14.1 Term of Agreement. Unless otherwise terminated as provided herein,
this Agreement shall be effective upon the Effective Date and shall remain in
force for a period of two (2) years, and shall automatically renew for
additional one (1) year periods unless terminated by
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either party upon written notice to the other at least thirty (30) calendar days
prior to the end of the then-current term.
14.2 Termination for Convenience. Either party may terminate this
Agreement or any Statement of Work hereunder, at any time for convenience, for
no reason or for any reason, upon delivery of thirty (30) days written notice to
the other party. In the event of such termination by Cisco prior to the
demonstration of proof of concept as set forth in Section 6.1(b), Cisco shall
return the [***] development payment paid to Cisco upon execution of this
Agreement. In the event of such termination by Cisco following the demonstration
of proof of concept as set forth in Section 6.1(b), Cisco shall return the [***]
development payment paid to Cisco upon demonstration of proof of concept and any
payments by Ambient for the Field Trials, but Cisco shall be entitled to retain
the [***] payment made upon execution of this Agreement.
14.3 Termination for Cause. This Agreement may be terminated by a party
for cause immediately upon the occurrence of and in accordance with the
following:
14.3.1 Insolvency Event. Either party may terminate this Agreement
by delivering written notice to the other party upon the occurrence of any of
the following events: (i) a receiver is appointed for either party or its
property; (ii) either makes a general assignment for the benefit of its
creditors; (iii) either party commences, or has commenced against it,
proceedings under any bankruptcy, insolvency or debtor's relief law, which
proceedings are not dismissed within sixty (60) calendar days; or (iv) either
party is liquidated or dissolved.
14.3.2 Change of Control. In the event that a competitor of Cisco
acquires a minimum of twenty percent (20%) of the equity ownership of Ambient,
Cisco may, at its option terminate this Agreement for cause upon delivering
written notice to Ambient. For purposes of this Section 14.3.2, competitors of
Cisco shall mean [***] or any of their subsidiaries of affiliates.
14.3.3 Default. Either party may terminate this Agreement effective
upon written notice to the other if the other party violates any covenant,
agreement, representation or warranty contained herein in any material respect
or defaults or fails to perform any of its obligations or agreements hereunder
in any material respect, which violation, default or failure is not cured within
thirty (30) calendar days after notice thereof from the non-defaulting party
stating its intention to terminate this Agreement by reason thereof. A material
breach will include but not be limited to: (i) any attempted reverse engineering
or otherwise infringing Cisco's proprietary rights by Ambient, its resellers or
its end users; (ii) failure by Ambient to pay in a timely fashion; and (iii)
breach of confidentiality obligations.
14.4 Survival of Rights and Obligations Upon Termination. Sections 2.6, 3,
4, 5.1, 5.2, 5.3, 6, 8, 10, 11, 12, 13, 14, and 15, shall survive any expiration
or termination of this Agreement or any Statement of Work hereunder.
Notwithstanding anything in the foregoing to the contrary, in the case of
termination by Cisco for cause pursuant to Section 14.3.3, Ambient shall pay all
expenses reasonably incurred by Cisco in excess of amounts already paid to
Cisco. The amount of such
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payment shall be determined on a time and materials basis using Cisco's
commercially reasonable rates then in effect.
15. MISCELLANEOUS.
15.1 Force Majeure. Neither party shall be liable to the other for delays
or failures in performance resulting from causes beyond the reasonable control
of that party, including, but not limited to, acts of God, labor disputes or
disturbances, material shortages or rationing, riots, acts of war, governmental
regulations, communication or utility failures, or casualties.
15.2 Export.
15.2.1 Ambient hereby acknowledges that the Products supplied by
Cisco under the Agreement are subject to export or import controls under the
laws and regulations of the United States (U.S.). Ambient shall comply with such
laws and regulations, and, agrees not to knowingly export, re-export, import or
re-import, or transfer Cisco Products without first obtaining all required U.S.
Government authorizations or licenses. Cisco and Ambient each agree to provide
the other such information and assistance as may reasonably be required by the
other in connection with securing such authorizations or licenses, and to take
timely action to obtain all required support documents.
15.2.2 Ambient agrees to maintain a record of exports, re-exports,
and transfers of the Cisco Products for five (5) years and to forward within
that time period any required records to Cisco or, at Cisco's request, the U.S.
Government. Ambient agrees to permit audits by Cisco or the U.S. Government as
required under the regulations to ensure compliance with this Agreement.
15.3 Relationship of Parties. The parties are independent contractors
under this Agreement and no other relationship is intended, including a
partnership, franchise, joint venture, agency, employer/employee, fiduciary,
master/servant relationship, or other special relationship. Neither party shall
act in a manner which expresses or implies a relationship other than that of
independent contractor, nor bind the other party.
15.4 Insurance. Ambient shall carry Commercial General Liability insurance
covering all operations by or on behalf of Ambient arising out of or connected
with this Agreement providing insurance for bodily injury, property damage,
personal injury and advertising injury, as those terms are defined by Commercial
General Liability insurance policies, with limits of not less than [***] each
occurrence and [***] in the aggregate. Such insurance must be on an "occurrence"
basis and not "claims-made" basis. Ambient shall continue to maintain the
Commercial General Liability insurance required under this Agreement for a
minimum of one year following completion of and acceptance of the Products.
Consultant shall furnish Certificates of Insurance annually to Cisco as evidence
of this required insurance. In the event Consultant utilizes the services of
Subcontractors to perform the Services contemplated hereunder, Consultant shall
require from or provide for all Subcontractors
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(regardless of tier) the same minimum insurance requirements detailed above.
Cisco reserves the right to request copies of Subcontractor's Certificates of
Insurance when deemed necessary.
15.5 No Third Party Beneficiaries. Unless otherwise expressly provided, no
provisions of this Agreement are intended or shall be construed to confer upon
or give to any person or entity other than Cisco and Ambient any rights,
remedies or other benefits under or by reason of this Agreement.
15.6 Equitable Relief. Each party acknowledges that a breach by the other
party of any confidentiality or proprietary rights provision of this Agreement
may cause the non-breaching party irreparable damage, for which the award of
damages would not be adequate compensation. Consequently, the non-breaching
party may institute an action to enjoin the breaching party from any and all
acts in violation of those provisions, which remedy shall be cumulative and not
exclusive, and a party may seek the entry of an injunction enjoining any breach
or threatened breach of those provisions, in addition to any other relief to
which the non-breaching party may be entitled at law or in equity.
15.7 Attorneys' Fees. In addition to any other relief awarded, the
prevailing party in any action arising out of this Agreement shall be entitled
to its reasonable attorneys' fees and costs.
15.8 Notices. Any notice required or permitted to be given by either party
under this Agreement shall be in writing and shall be personally delivered or
sent by a reputable overnight mail service (e.g., Federal Express), or by first
class mail (certified or registered), or by facsimile confirmed by first class
mail (registered or certified), to the Project Manager of other party. Notices
will be deemed effective (i) three (3) Days after deposit, postage prepaid, if
mailed, (ii) the next day if sent by overnight mail, or (iii) the same day if
sent by facsimile and confirmed as set forth above. A copy of any notice shall
be sent to the following:
Cisco Systems, Inc. Ambient Corporation
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: VP Legal and Government Affairs
Fax: (▇▇▇) ▇▇▇-▇▇▇▇ Fax: (▇▇▇) ▇▇▇-▇▇▇▇
15.9 Assignment. Neither party may assign its rights or delegate its
obligations hereunder, either in whole or in part, whether by operation of law
or otherwise, without the prior written consent of the other party. Any
attempted assignment or delegation without such written consent will be void.
The rights and liabilities of the parties under this Agreement will bind and
inure to the benefit of the parties' respective successors and permitted
assigns.
15.10 Waiver and Modification. Failure by either party to enforce any
provision of this Agreement will not be deemed a waiver of future enforcement of
that or any other provision. Any waiver, amendment or other modification of any
provision of this Agreement will be effective only if in writing and signed by
the parties.
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15.11 Severability. If for any reason a court of competent jurisdiction
finds any provision of this Agreement to be unenforceable, that provision of the
Agreement will be enforced to the maximum extent permissible so as to effect the
intent of the parties, and the remainder of this Agreement will continue in full
force and effect.
15.12 Controlling Law and Jurisdiction. This Agreement and any action
related thereto shall be governed, controlled, interpreted and defined by and
under the laws of the State of California and the United States, without regard
to the conflicts of laws provisions thereof. Unless waived by Cisco, the
exclusive jurisdiction and venue of any action with respect to the subject
matter of this Agreement shall be the state courts of the State of California
for the County of Santa ▇▇▇▇▇ or the United States District Court for the
Northern District of California and each of the parties hereto submits itself to
the exclusive jurisdiction and venue of such courts for the purpose of any such
action. The parties specifically disclaim the UN Convention on Contracts for the
International Sale of Goods.
15.13 Headings. Headings used in this Agreement are for ease of reference
only and shall not be used to interpret any aspect of this Agreement.
15.14 Entire Agreement. This Agreement, including all exhibits which are
incorporated herein by reference, constitutes the entire agreement between the
parties with respect to the subject matter hereof, and supersedes and replaces
all prior and contemporaneous understandings or agreements, written or oral,
regarding such subject matter.
15.15 Counterparts. This Agreement may be executed in two counterparts,
each of which shall be an original and together which shall constitute one and
the same instrument.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement by persons
duly authorized as of the date and year first above written.
AMBIENT CORPORATION ("Ambient") CISCO SYSTEMS, INC. ("Cisco")
____________________________________ ____________________________________
Authorized Signature Authorized Signature
____________________________________ ____________________________________
Name Name
____________________________________ ____________________________________
Date Date
Ambient Corporation Cisco Systems, Inc.
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