License Agreement Between ParkerVision and ITT
Between
ParkerVision and ITT
* CERTAIN
INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED
WITH RESPECT TO THE OMITTED PORTIONS.
This
Agreement (“Agreement”)
is
entered into and made effective as of 2 May 2007 (the “Effective
Date”)
by and
between ITT Corporation, an Indiana corporation with offices at ▇▇▇▇ ▇▇▇▇
▇▇▇▇
▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ (“ITT”)[*];
and
ParkerVision, Inc., a Florida corporation with offices at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇ (“ParkerVision”).
Recitals
WHEREAS,
ParkerVision has developed and patented technology known as direct2power
or d2p
(d2p Technology, as defined hereafter), that was designed to address certain
limitations in applying traditional approaches to RF transmit and power
amplification, and
WHEREAS,
d2p Technology allows for the creation of [*],
known
as “RF Power Transmitters”, and
WHEREAS,
ITT desires to license from ParkerVision, and ParkerVision desires to license
to
ITT, the d2p Technology, pursuant to the terms and conditions of this Agreement,
and
WHEREAS,
concurrently with entering into this Agreement, the parties are also entering
into an Engineering Services Agreement pursuant to which ParkerVision will
provide engineering services to ITT with respect to the development by ITT
of
[*]
pursuant
to the terms and conditions set forth therein,
NOW,
THEREFORE, in consideration of the mutual premises and of the performance
of the
mutual covenants herein, the parties agree as follows:
1. DEFINITIONS
1.1 “Confidential
Information”
has
the
meaning set forth in Section 10.1.
1.2 “d2p
Technology”
means
technology delivered by ParkerVision to ITT under the Engineering Services
Agreement [*]
that is
designed to address certain limitations in applying traditional approaches
to RF
transmit and power amplification. d2p Technology generally consists of
[*].
1.3 “Development
Tools”
means
the ParkerVision development tools described in Sections 3.1.4, 3.2.2 and
3.3.2
of the Statement of Work attached to the Engineering Services Agreement.
1.4 [*]
1.5 “Government
Channels”
means
the channels of marketing, sale, lease to and/or procurement for U.S. and
foreign military and/or government entities including federal, state and
local
government entities and further including the respective departments and
agencies that fall under such government entities. For clarification purposes,
such government entities, purchasing for both civilian and military purposes,
shall include, without limitation, the Department of Homeland Security, the
National Guard and Fire/Police Departments under the respective agencies
noted
above.
1.6 “Implementation
Technology”
means
any
technology for incorporating or embodying the d2p Technology into a
semiconductor device, wireless system or product (but excluding any
technology that is developed based on the d2p Technology or that
requires knowledge of the d2P Technology, which shall
be
deemed to fall within the definition of Improvements to d2p
Technology).
[*]
1.7 “Improvements
to d2p Technology”
means
any modifications, enhancements and improvements to the d2p Technology, but
in
no event includes any Implementation Technology except as set forth in the
definition of Implementation Technology.
1.8 “Intellectual
Property Rights”
means
patents, certificates of invention, utility models, design rights and similar
invention rights, copyrights, trade secret rights, mask work rights, and
any
other intangible property or proprietary rights (other than trademarks, trade
names, service marks and trade dress rights) recognized anywhere in the world
under any state or national statute or treaty or common law right, including
without limitation all applications and registrations with respect to any
of the
foregoing.
1.9 “ITT
Field of Use”
means
[*]
systems
that are specifically designed, developed and adapted to
meet the specifications and standards unique to [*]
(with
regard to matters such as the physical and operational characteristics,
manufacturing processes, materials, reliability, compatibility with
logistics systems and the like). ITT Field of Use shall include the
marketing, sale, lease to and/or procurement of such [*]
systems [*]. ITT
Field of Use shall not include any [*]
(i.e.,
not specifically designed, developed and adapted to meet the
specifications and standards unique to [*])
[*]
systems,
irrespective of whether such [*]
systems
are marketed, sold, leased to and/or procured [*].
1.10 “[*]”
means
the [*]
that is
developed under the Engineering Services Agreement and the Statement of Work
attached thereto and that is based on the d2p Technology.
1.11 “Licensed
Patents”
means:
1.11.1 the
issued patents listed in Exhibit
A
hereto;
1.11.2 all
patent(s) that may issue to ParkerVision based upon the United States patent
application(s) listed in Exhibit
A
hereto;
2
1.11.3 all
patent(s) that may issue to ParkerVision based upon the international patent
application(s) listed in Exhibit
A
hereto;
1.11.4 [*]
1.11.5 all
continuations, divisionals, reissues, reexaminations, and substitutions
(“Continuations”)
that
may issue from any of the foregoing based on the subject matter disclosed
in any
of the foregoing, provided that such Continuations have Patent Claims covering
[*]
within
the ITT Field of Use (as the ITT Field of Use is defined on the Effective
Date).
1.12 “Licensed
Process”
means
any process or method claimed in any of the Licensed Patents.
1.13 “Licensed
Product”
means
any product in the ITT Field of Use that is developed by ITT and that
incorporates one or more [*].
1.14 “Licensed
Technology”
means
the d2p Technology, Improvements to d2p Technology, and Implementation
Technology, all to the extent owned by ParkerVision and delivered by
ParkerVision to ITT under the Engineering Services Agreement.
1.15 “Open
License Terms”
means
terms in any license for software which require, as a condition of use,
modification and/or distribution of such software or other software incorporated
into, incorporating, derived from or distributed with such software (a
“Work”),
any
of the following:
(a)
the
making available of source code, object code, or design information regarding
the Work;
(b)
the
granting of permission for creating derivative works regarding the Work;
or
(c)
the
granting of a license to any party under any Intellectual Property Rights
in or
to the Work.
By
means
of example and without limitation, the following licenses and distribution
models have Open License Terms: the GNU General Public License (GPL), the
GNU
Lesser or Library GPL (LGPL), Mozilla Public License (MPL), or any similar
open
source, free software or community licenses.
1.16 “ParkerVision
Software”
means
any software delivered by ParkerVision to ITT under the Engineering Services
Agreement, including without limitation the [*]
and any
software included within the Development Tools.
3
1.17 “Patent
Claim”
shall
have the meaning given to such term under the applicable laws of a patent
office
or jurisdiction and, for purposes of clarification, refers to a portion of
a
patent or patent application that defines the scope of protection for an
invention.
1.18 “Royalty
Fiscal Year”
means
each twelve (12) month period beginning January 1 and ending
December 31 of a particular calendar year.
1.19 “Sell”
means
sell, lease or otherwise distribute except for (i) distribution without any
payment received by ITT for the purpose of testing, qualifications, or
packaging, and (ii) distribution of a limited quantity without payment received
by ITT for the purpose of evaluation.
1.20 “Sold”
shall
mean the past tense of Sell.
2. GRANT
OF LICENSES
2.1 Licensed
Patents and Licensed Technology.
2.1.1 Grant.
Subject
to the terms and conditions of this Agreement, ParkerVision grants to ITT,
during the term of this Agreement, a [*]
license,
under the Licensed Patents and any copyrights and trade secrets and mask
work
rights (recognized anywhere in the world under any state or national statute
or
treaty or common law right, including without limitation all applications
and
registrations with respect to any of the foregoing) in and to the Licensed
Technology owned or licensable by ParkerVision (with no right to sublicense),
to
use, modify, reproduce [*]
(except
as set forth below) of the Licensed Technology in order to develop Licensed
Products only in the ITT Field of Use; to make, have made, use, lease, sell,
offer for sale, import, distribute, transfer and otherwise exploit Licensed
Products only in the ITT Field of Use; and to practice any Licensed Process
involved in the manufacture or use thereof.
2.1.2 Have
Made Rights.
ITT
understands and acknowledges that the “have made” rights granted in Section
2.1.1 extend only to Licensed Products that are made by a third party for
the
use, lease, sale, offer for sale and/or import by or on behalf of ITT and
(A)
for which the Licensed Product will be branded by ITT or (B) where (whether
branded by ITT or not) both
(i)
the designs, specifications and working drawings for the manufacture of the
Licensed Product to be manufactured by that third party are furnished primarily
by ITT and (ii) such designs, specifications and working drawings are in
sufficient detail that no material additional design work is required by
the
third party, other than adaptation to the production processes and standards
normally used by that third party, provided such adaptation only changes
the
characteristics of such Licensed Products to an extent that is not
material.
Upon
written request from ParkerVision, ITT shall promptly inform ParkerVision
in
writing whether and to what extent any manufacturer identified by ParkerVision
is operating under the Licensed Patents pursuant to ITT's “have made” rights
granted under Section 2.1.1.
2.1.3 No
Reverse Engineering.
Notwithstanding the above, with respect to any software included in the Licensed
Technology, ITT shall not (a) modify, translate, reverse engineer, decompile,
disassemble or otherwise attempt (i) to defeat, avoid, bypass, remove,
deactivate or otherwise circumvent any software protection mechanisms in
such
software, including without limitation any such mechanism used to restrict
or
control the functionality of such software, or (ii) to derive the source
code or the underlying ideas, algorithms, structure or organization from
such
software; (b) alter, adapt, modify or translate such software in any way
for any
purpose, including without limitation error correction; or (c) distribute,
rent,
loan, lease, transfer or grant any rights in such software or modifications
thereof in any form to any person or entity.
4
2.1.4 [*]
2.2 No
Other Licenses.
Except
as expressly set forth in this Section 2, no license or other right is granted
herein by either party to the other party, directly or by implication, estoppel
or otherwise, and no such license or other right will arise from the
consummation of this Agreement or from any acts, statements or dealings leading
to such consummation.
3. MARKETING
OBLIGATIONS
3.1 ITT
Commitment to and Investment in d2p Technology.
In the
event that ITT fails to institute and diligently continue a program (including
the continued allocation by ITT of commercially reasonable budget and resources
for such program) with respect to the development of a Licensed Product up
to
its first customer shipment, then the [*]
unless
ITT is able to cure such failure within [*]
of
notice from ParkerVision. ITT agrees to respond promptly to ParkerVision’s
inquiries regarding such program and in sufficient reasonable detail to enable
ParkerVision to reasonably verify that ITT has instituted and is diligently
continuing such a program with respect to the development of a Licensed Product
by ITT.
3.2 Public
Announcements of this Agreement.
Within
three (3) business days after the Effective Date of this Agreement, either
party
may issue the press release in Exhibit C. Otherwise, neither party shall
make
any public announcement about this Agreement without the prior, written consent
of the other party, which consent shall not be unreasonably withheld or delayed.
Notwithstanding the foregoing, either of the parties may at any time make
announcements which are required by applicable law, regulatory bodies, or
stock
exchange or stock association rules, so long as such party so required to
make
the announcement, promptly upon learning of such requirement, notifies the
other
party of such requirement and discusses with the other party in good faith
the
exact wording of any such announcement.
4. LICENSE
FEES AND ROYALTIES
4.1 Royalties.
4.1.1 Royalty
Structure.
Until
ITT has Sold at least [*]
Licensed
Product [*],
ITT
will in any event pay royalties at the rate of [*]
per
Licensed Product irrespective of whether such Licensed Product is Sold
[*].
Thereafter, ITT will pay royalties with respect to each Licensed Product
that is
Sold [*]
at the
rate that is the lesser of (i) the royalty per Licensed Product under
[*]
Royalty
Schedule A in Exhibit B,
or (ii)
the royalty per Licensed Product under [*]
Royalty
Schedule B in Exhibit B. Licensed Products Sold by ITT [*]
shall
not, in any event, be included in determining (i) [*]
that
triggers [*]
under
Royalty Schedule A in Exhibit B, and (ii) [*]
that
trigger [*]
under
Royalty Schedule B in Exhibit B.
5
4.1.2 [*]
4.2 [*]
4.3 [*]
4.4 [*]
4.5 When
Royalties Become Payable.
Royalties shall be calculated and paid for each quarter of a Royalty Fiscal
Year
with respect to Licensed Products Sold during that quarter, less Licensed
Products returned to ITT for which (i) ITT refunded the purchase price and
(ii)
a royalty was previously paid by ITT to ParkerVision. Royalties due by ITT
for
each quarter shall be paid to ParkerVision within [*]
following the end of each quarter of a Royalty Fiscal Year and shall be
accompanied by the reports described in Section 5 below. In no event will
ITT be
entitled to any refund of
any
royalties previously paid.
4.6 Taxes.
All
payments by ITT shall be made free and clear of, and without reduction for,
any
and all taxes, including, without limitation, sales, use, property, license,
value added, excise, franchise, income, withholding or similar taxes, other
than
such taxes which are imposed by the United States or any political subdivision
thereof based on the net income of ParkerVision. Any such taxes which are
otherwise imposed on payments to ParkerVision shall be the sole responsibility
of ITT. ITT shall provide ParkerVision with official receipts issued by the
appropriate taxing authority or such other evidence as is reasonably requested
by ParkerVision to establish that such taxes have been paid.
5. REPORTS
AND AUDIT
5.1 Records
and Royalty Reports.
ITT
shall keep accurate records of its operations respecting the sale, lease
or
other distribution of the Licensed Products by ITT to the extent necessary
(i)
for the royalties payable hereunder to be determined, or (ii) to inform
ParkerVision of all Licensed Products sold, leased or otherwise distributed
by
ITT, including without limitation for testing, qualifications and evaluation
purposes. Such records shall include, without limitation, records of the
quantity of such Licensed Products. ITT shall prepare quarterly written reports
of the same, disclosing the quantity of such Licensed Products sold, leased
or
otherwise distributed by ITT and showing the amount of royalties due for
such
quarter, and shall promptly submit such reports to ParkerVision within
[*]
after
the end of each quarter of a Royalty Fiscal Year.
5.2 Audit.
Upon at
least [*]
advance,
written notice and no more frequently than once per calendar year, ParkerVision
shall have the right, at its own expense, to examine such records through
an
independent representative during ordinary business hours to the extent
reasonably necessary to confirm or correct such reports. Such inspections
shall
be made by a mutually agreed upon representative, which representative may
furnish to ParkerVision only its conclusions as to the accuracy of such reports,
as to any discrepancies therein, and as to any adjustment necessary to be
made
to provide for payment of the proper amount of royalties, but not any other
information of ITT gleaned in the course of such audit. In the event that
any
examination by such mutually agreed upon representative reveals that ITT
has
underpaid royalties due to ParkerVision by [*]
or more,
then ITT shall reimburse ParkerVision for the reasonable cost of such audit.
ITT
shall further promptly pay to ParkerVision any additional royalties due after
the receipt of written notice by ParkerVision of ITT’s underpayment. With
respect to any underpayments more than [*]
old, ITT
agrees to pay interest on such underpayments at the lowest rate that ITT
is
currently paying, or has most recently paid, for a loan from a commercial
bank
as of the date the audit reveals such underpayment. All information disclosed
under this Section 5.2 shall be deemed ITT Confidential Information and
shall be used for the sole purpose of verifying proper reporting of Licensed
Products and proper payment of royalties. For any audit under this Section
5.2
that is subject to U.S. federal security regulations, such mutually agreed
upon
representative shall comply with applicable regulations and shall obtain
any
required security clearance prior to conducting any such audit.
6
5.3 Maintenance
of Records.
ITT
shall maintain all records relating to the sale, lease or other distribution
of
the Licensed Products during the term of this Agreement for a period of four
(4)
Royalty Fiscal Years after the applicable Royalty Fiscal Year, after which
ITT
shall have no obligation to maintain, and ParkerVision shall have no right
to
inspect, any such records relating to such applicable Royalty Fiscal
Year.
6. [*]
[*]
7. [*]
[*]
7
8. [*]
[*]
9. PATENTS
9.1 Current
Patents.
ParkerVision hereby represents that the issued patents and patent applications
listed on Exhibit A include all issued patents and patent applications owned
by
ParkerVision as of the Effective Date that have Patent Claims covering the
Licensed Technology. [*]
9.2 [*]
10. CONFIDENTIAL
INFORMATION
10.1 “Confidential
Information”
means,
with respect to either party, any confidential business or technical
information, including know-how, whether or not patentable or copyrightable,
that the disclosing party identifies as confidential or proprietary at the
time
it is disclosed or delivered to the receiving party. The d2p Technology,
the
Licensed Technology and the contents of any Licensed Patents and patent
applications listed in Exhibit A shall in any event be deemed the Confidential
Information of ParkerVision. Further, any [*]
shall be
deemed the Confidential Information of the developing party and such party
shall
have no obligation to disclose such [*]
to the
other party.
10.2 Exceptions.
Confidential Information does not include any information that the receiving
party can demonstrate by written records: (a) was known to the receiving
party prior to its disclosure hereunder by the disclosing party; (b) is
independently developed by the receiving party; (c) is or becomes publicly
known through no wrongful act of the receiving party; (d) has been
rightfully received from a third party whom the receiving party has reasonable
grounds to believe is authorized to make such disclosure without restriction;
or
(e) has been approved for public release by the disclosing party’s prior
written authorization. Each party may disclose any Confidential Information
as
required to be produced or disclosed pursuant to applicable law, regulation
or
court order, provided that the receiving party provides prompt advance notice
thereof to enable the disclosing party to seek a protective order or otherwise
prevent such disclosure. In addition, each party may disclose the existence
and
terms of this Agreement in confidence in connection with [*]
or
[*],
or to
the extent required by law in connection with a public offering of such party’s
securities pursuant to Section 3.2.
10.3 Non-Disclosure
and Non-Use.
Each
party will: (i) not use any Confidential Information of the other party except
in the performance of the Engineering Services Agreement or as permitted
by this
Agreement; (ii) not disclose any such Confidential Information to any person
or
entity other than its own employees, consultants, subcontractors and customers
of ITT that fall under the U.S. Federal Government who have a need to know
and
who have executed in advance of receiving such Confidential Information a
suitable nondisclosure and restricted use agreement that comports with the
applicable provisions of this Agreement; and (iii) use all reasonable efforts
to
keep such Confidential Information strictly confidential. Each party will
use
reasonable efforts to enforce such nondisclosure and restricted use
agreements.
8
11. PATENT
MARKING
ITT
agrees to ▇▇▇▇ the documentation associated with the Licensed Products with
the
number(s) of the Licensed Patent(s) covering such Licensed Products and with
“Patent Pending” (along with a listing of the relevant patent application
numbers) if any patent applications relating to such Licensed Products are
pending before the United States Patent and Trademark Office or the patent
office of a foreign country, as applicable.
12. TERM
Unless
earlier terminated in accordance with the terms of this Agreement, this
Agreement shall extend until [*].
13. TERMINATION
13.1 Termination
for Breach.
At any
time after the occurrence of an Event of Default, this Agreement may be
terminated at the election of the Non-Defaulting Party, effective as of the
date
specified in a notice of termination provided to the Defaulting Party. As
used
herein, “Event
of Default”
means
one or more of the following events: if there should occur a material breach,
default or noncompliance by one party (the “Defaulting
Party”)
of or
with any term or condition hereof followed by written notice of such breach,
default or noncompliance from the other party (the “Non-Defaulting
Party”)
and
the failure of the Defaulting Party to remedy or correct such breach, default
or
noncompliance within [*]
after
receipt of such notice (the “Cure
Period”).
13.2 Termination
if ITT discontinues Licensed Products after [*].
Either
party may terminate this Agreement upon written notice to the other party
in the
event that after [*],
ITT has
not Sold any Licensed Products in any consecutive [*]
period
following [*].
[*]
13.3 Termination
upon ITT Challenge to the Licensed Patents.
ParkerVision may terminate this Agreement upon written notice to ITT in the
event ITT leads or supports (other than as required by law or court order)
any
effort to challenge the validity, enforceability or scope of any Licensed
Patent. In the event that ITT is a party to any claim, suit, action or other
proceeding before a court or other government agency, in which ITT supports
(other than as required by law or court order) a challenge to the validity,
enforceability or scope of any Licensed Patent, ParkerVision shall be entitled
to recover from ITT any and all costs and expenses, including reasonable
attorneys’ fees and expenses of investigation and defense, incurred by
ParkerVision in such claim, suit, action or other proceeding, and ITT will
not
be entitled to any refund of any royalties previously paid.
9
13.4 Effect
of Termination or Expiration.
13.4.1 Cease
Use of Technology and Return Materials.
In the
event this Agreement is terminated by either party, then all licenses granted
to
ITT will automatically cease as of the date of termination, provided, however,
that:
13.4.1.1. For
a
period of [*]
after
termination, and subject to the payment of royalties under Section 4, ITT
shall
have the right to Sell off any Licensed Products in inventory, except that
ITT
shall not have such rights to Sell off any Licensed Products in inventory
in the
event this Agreement is terminated by ParkerVision under Section 13.3;
and
13.4.1.2. Upon
termination or expiration of this Agreement and except as otherwise provided
herein, each party may keep only one (1) copy of the technology, materials
and
information provided to it by the other party hereunder solely for archival
purposes and shall return to the other party or destroy all other copies
of the
technology, materials and information provided to it by the other party
hereunder, or any portion thereof, in its possession or control.
13.4.2 Payment
of Royalties.
Upon
any expiration or termination becoming effective, ITT will, within [*]
thereafter, pay all royalties and interest owed ParkerVision as of the date
of
such termination or expiration.
13.5 Survival
of Certain Provisions.
The
provisions of Sections 2.1.3, 4, 5, 6, 10, 11, 13.3, 13.4, 14.2 and 15-17
of
this Agreement will survive any expiration or termination of this
Agreement.
14. WARRANTIES
14.1 Warranties.
14.1.1 Warranties
by ParkerVision.
ParkerVision hereby represents and warrants to ITT that: (a) it has the full
right, power and authority to enter into this Agreement and grant the licenses
granted hereunder; (b) this Agreement is a valid and binding obligation of
such
party; and (c) it has obtained and shall maintain throughout the term of
this
Agreement all necessary licenses, authorizations, approvals and consents
to
enter into and perform its obligations hereunder in compliance with all
applicable laws, rules and regulations. ParkerVision further represents and
warrants that, as of the Effective Date, ParkerVision is not aware of and
has
not received any notice of any claim, by a third party, that the copyrights,
patents, trade secrets, or other Intellectual Property Rights of any third
party
are infringed by the Licensed Technology. ParkerVision represents and warrants
that the ParkerVision Software is not subject to Open License Terms. In the
event of a breach of the preceding warranty against Open License Terms,
ParkerVision will, at its sole expense, promptly (i) notify ITT of any affected
portions of ParkerVision Software, and (ii) take all reasonable efforts to
replace such affected portions of ParkerVision Software with software of
equivalent functionality that is not subject to Open License Terms. For purposes
of clarification, a claim alleging that ITT’s authorized use of the ParkerVision
Software infringes any Open License Terms in the ParkerVision Software is
an
allegation of copyright infringement under Section 15 below.
10
14.1.2 Warranties
by ITT.
ITT
hereby represents and warrants to ParkerVision that: (a) it has the full
right,
power and authority to enter into this Agreement and grant the licenses granted
hereunder; (b) this Agreement is a valid and binding obligation of such party;
and (c) it has obtained and shall maintain throughout the term of this Agreement
all necessary licenses, authorizations, approvals and consents to enter into
and
perform its obligations hereunder in compliance with all applicable laws,
rules
and regulations. ITT
represents and warrants that ITT shall not act in any manner that would require
any ParkerVision Software to be licensed under Open License Terms.
14.2 Disclaimer
of Other Warranties.
EXCEPT
AS SET FORTH IN SECTION 14.1, NEITHER PARTY MAKES ANY WARRANTIES TO THE OTHER,
EITHER EXPRESS, IMPLIED OR STATUTORY, AND EACH PARTY HEREBY DISCLAIMS ANY
AND
ALL SUCH WARRANTIES, INCLUDING BUT NOT LIMITED TO ANY WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR NON-INFRINGEMENT. Nothing
contained in this Agreement shall be construed as (i) a warranty or
representation by ParkerVision as to the validity and/or scope of any Licensed
Patent; (ii) imposing upon ParkerVision any obligation to institute any suit
or
action for infringement of any Licensed Patent; or (iii) imposing on
ParkerVision any obligation to file any patent application or to secure any
patent or maintain any patent in force.
15. INDEMNIFICATION
15.1 ParkerVision
Obligations.
15.1.1 Intellectual
Property Indemnity.
Subject
to prompt, written notification by ITT, cooperation by ITT and control of
all
litigation and/or settlement by ParkerVision, ParkerVision shall defend and
indemnify ITT and hold ITT harmless from and against any third party claims
brought against ITT alleging that any Licensed Technology incorporated into
Licensed Products in the ITT Field of Use infringes or misappropriates any
patent, copyright or trade secret of any third party. Each party agrees to
notify the other promptly of any matters in respect to which the foregoing
indemnity in this Section 15.1.1 may apply. If notified in writing of any
action
or claim for which ParkerVision is to provide the foregoing indemnity,
[*].
Notwithstanding the foregoing, ParkerVision shall obtain ITT’s consent, which
shall not be unreasonably withheld or delayed, if ITT is required to incur
or
admit liability as a result of such settlement by ParkerVision.
15.1.2 Remedy
in the Event of Prohibition of Use.
If a
preliminary or final judgment is, or is reasonably likely to be, entered
against
ITT’s use, sale, lease or distribution of a Licensed Product in the ITT Field
of
Use that incorporates any Licensed Technology, due to infringement of any
third
party patents, copyrights or trade secrets by the Licensed Technology, or
if
ParkerVision reasonably believes that the Licensed Technology may be found
to
infringe any third party patents, copyrights or trade secrets, then ParkerVision
shall, at its sole discretion and expense, either (a) modify the Licensed
Technology so that such technology becomes noninfringing, (b) substitute
the
Licensed Technology with other technology that is as close functionally as
reasonably, commercially possible to the infringing technology, while still
avoiding infringement and preserving all material functional aspects of the
technology or (c) obtain a license to permit ITT to exercise the rights granted
hereunder; provided, however, that in the event that ParkerVision is unable
after its [*]
to
accomplish either (a), (b) or (c), then ITT agrees to cease any and all use,
sale, lease and distribution of any Licensed Product that incorporates such
Licensed Technology within [*]
of
receipt of notice from ParkerVision or such earlier time as may be required
to
comply with a court order. [*]
In the
event [*]
then
[*]
this
Agreement may not be terminated under Section 13.2 for ITT’s failure to Sell
Licensed Products. For a period of [*]
after
the receipt of such notice by ITT, the parties agree to use [*]
to
cooperate in formulating and implementing a strategy (including negotiating
cooperatively to obtain a license or any other mutually acceptable strategy)
that will enable ITT to exercise the rights granted hereunder without
infringement of such third party patents, copyrights or trade secrets by
the
Licensed Technology.
11
15.2 Limitation
of Indemnification Liability.
In no
event shall ParkerVision be liable under Section 15.1 for any infringement
or
misappropriation: (i) by any product or technology not provided and
licensed by ParkerVision hereunder; or (ii) arising from a combination
with, addition to, or modification of the Licensed Technology. In no event
shall
ParkerVision’s liability under Section 15.1 over the term of this Agreement,
including
without limitation any damages, settlement or license fees paid to a third
party
pursuant to ParkerVision’s indemnification obligations to ITT under Section
15.1, exceed
[*].
However, the foregoing limitation of liability in the previous sentence shall
not apply with respect to [*].
15.3 Sole
Remedy.
THIS
SECTION 15 STATES THE SOLE AND EXCLUSIVE LIABILITY OF THE PARTIES FOR
INFRINGEMENT OR ALLEGATIONS OF INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS
OF
THIRD PARTIES FOR ANY PRODUCT OR TECHNOLOGY PROVIDED HEREUNDER, AND IS IN
LIEU
OF ALL WARRANTIES, EXPRESS, IMPLIED OR STATUTORY IN REGARD THERETO, INCLUDING
BUT NOT LIMITED TO THE WARRANTY AGAINST INFRINGEMENT SPECIFIED IN THE UNIFORM
COMMERCIAL CODE.
16. LIMITATION
OF LIABILITY
16.1 IN
NO
EVENT WILL EITHER PARTY BE LIABLE TO THE OTHER FOR LOST PROFITS OR ANY SPECIAL,
INDIRECT, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE DAMAGES (EXCEPT TO THE EXTENT
THAT SUCH LOST PROFITS OR SUCH DAMAGES CONSTITUTE THE MEASURE OF DIRECT DAMAGES
UNDER THE RELEVANT INTELLECTUAL PROPERTY LAWS AND EXCEPT FOR A BREACH OF
EITHER
PARTY’S CONFIDENTIALITY OBLIGATIONS UNDER SECTION 10 OF THIS AGREEMENT), HOWEVER
CAUSED AND ON ANY THEORY OF LIABILITY, ARISING IN ANY WAY IN CONNECTION WITH
THIS AGREEMENT. THIS LIMITATION WILL APPLY EVEN IF SUCH PARTY HAS BEEN ADVISED
OF THE POSSIBILITY OF SUCH DAMAGES AND NOTWITHSTANDING ANY FAILURE OF ESSENTIAL
PURPOSE OF ANY LIMITED REMEDY.
12
16.2 IN
NO
EVENT WILL EITHER PARTY’S LIABILITY ARISING IN ANY WAY IN CONNECTION WITH THIS
AGREEMENT (INCLUDING WITHOUT LIMITATION ANY DAMAGES, SETTLEMENT OR LICENSE
FEES
OWED BY PARKERVISION UNDER SECTION 15 OF THIS AGREEMENT) EXEED [*].
HOWEVER, THE FOREGOING LIMITATION OF LIABILITY IN THIS SECTION 16.2 SHALL
NOT
APPLY WITH RESPECT TO (i) EITHER PARTY’S BREACH, OR EXCEEDING THE SCOPE, OF THE
LICENSE RIGHTS GRANTED TO SUCH PARTY UNDER SECTIONS 2 AND 6 OF THIS AGREEMENT,
AND (ii) EITHER PARTY’S BREACH OF ITS CONFIDENTIALITY OBLIGATIONS UNDER SECTION
10 OF THIS AGREEMENT, AND (iii) [*].
17. GENERAL
PROVISIONS
17.1 Assignment.
This
Agreement may not be assigned in whole or in part by either
party
without the written consent of the other, which consent will not be unreasonably
withheld, except that ITT or ParkerVision may assign this Agreement in
connection with a merger, reorganization, change of control or sale of all
or
substantially all of its assets or business to which this Agreement
relates.
17.2 Notice.
17.2.1 Unless
otherwise changed by notice in writing from ITT to ParkerVision,
ParkerVision shall serve notice upon ITT as follows:
General
Counsel
[*]
ITT
Corporation
▇▇▇▇
▇▇▇▇
▇▇▇▇ ▇▇▇▇
▇▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
17.2.2 Unless
otherwise changed by notice in writing from ParkerVision to ITT, ITT shall
serve
notice upon ParkerVision as follows:
ParkerVision,
Inc.
▇▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇▇
With
copy
to:
CFO
ParkerVision,
Inc.
▇▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇▇
13
17.2.3 Notice
shall be by regular or priority mail, recognized commercial overnight courier,
hand delivery, facsimile transmission or electronic mail with proof of receipt,
and shall be effective as of the date received.
17.3 Severability.
If any
paragraph or provision of this Agreement shall be deemed void or invalid
as a
matter of law, the remaining paragraphs or provisions of this Agreement shall
nevertheless remain in full force and effect.
17.4 No
Joint Venture, etc.
Nothing
herein shall be deemed to constitute ParkerVision and ITT as partners, joint
venturers or otherwise associated in or with the business of the other. Neither
party shall be liable for any debts, accounts, obligations or other liabilities
of the other party. Neither party is authorized to incur any debts or other
obligations of any kind on the part of or as agent for the other except as
may
be specifically authorized in writing.
17.5 Waiver.
No
relaxation, forbearance, delay or negligence by any party hereto in enforcing
any of the terms and conditions of this Agreement, or the granting of time
by
any party to another, shall operate as a waiver or prejudice, affect or restrict
the rights, powers or remedies of any party hereto.
17.6 Complete
Agreement.
This
Agreement and the Exhibits attached hereto represent the full and complete
agreement and understanding of the parties hereto with respect to the subject
matter hereof. Any amendment thereof must be in writing and executed by the
parties hereto.
17.7 Governing
Law.
All
questions of law, rights, and remedies regarding any act, event or occurrence
undertaken prior to or pursuant to this Agreement shall be governed by and
construed in accordance with the laws of the State of New York, without regard
to or application of choice of law rules or principles, and the United States.
The
parties agree that all proceedings, disputes and claims concerning the
interpretation or the performance of this Agreement, including questions
involving its existence, validity and duration shall be subject to the exclusive
jurisdiction of federal courts in the State of New York, and the parties
voluntarily subject themselves to the jurisdiction of such courts.
17.8 Compliance
with Export Control Laws.
Each party agrees to comply with all applicable export and reexport control
laws
and regulations, including the Export Administration Regulations ("EAR")
maintained by the United States Department of Commerce. Specifically, each
party covenants that it shall not -- directly or indirectly -- sell, export,
reexport, transfer, divert, or otherwise dispose of any software, source
code,
or technology (including products derived from or based on such technology)
received from the other party under this Agreement to any country (or any
individual national thereof) subject to antiterrorism controls or U.S. embargo,
or to any other person, entity, or destination prohibited by the laws or
regulations of the United States, without obtaining prior authorization from
the
competent government authorities as required by those laws and
regulations.
14
17.9 Multiple
Counterparts.
This
Agreement may be executed in multiple counterparts, each of which will be
considered an original and all of which together will constitute one agreement.
This Agreement may be executed by the attachment of signature pages which
have
been previously executed.
17.10 Remedies
Cumulative.
Except
as expressly provided herein, all rights and remedies enumerated in this
Agreement will be cumulative and none will exclude any other right or remedy
permitted herein or by law or in equity.
17.11 Headings.
The
headings contained in this Agreement are inserted for convenience of reference
only and are not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
17.12 Force
Majeure.
No
party shall be responsible or liable to another party for nonperformance
or
delay in performance of any terms or conditions of this Agreement due to
acts or
occurrences beyond the reasonable control of the nonperforming or delayed
party,
including but not limited to, acts of God, acts of government, wars, riots,
strikes or other labor disputes, fires and floods, provided the nonperforming
or
delayed party provides to the other party written notice of the existence
and
the reason for such nonperformance or delay. Notwithstanding the foregoing,
the
other party may terminate this agreement if such nonperformance or delay
extends
for a period greater than ninety (90) days.
IN
WITNESS WHEREOF, the parties have executed this Agreement through their duly
authorized representatives as set forth below:
| ITT Corporation | ParkerVision, Inc. | ||
| Signature: /s/ | Signature: /s/ | ||
|
|
|
||
|
Printed
Name: [*]
Title:
[*]
|
Printed
Name: [*]
Title:
[*]
|
15