1
EXHIBIT 10.14
*** Text Omitted and Filed Separately
Confidential Treatment Requested
Under 17 C.F.R. Sections 200.80(b)(4),
200.83 and 230.406
Technology Development and License Agreement
By and Between
Intel Corporation
And
M4 Labs (dba as PacketVideo) Inc
Dated
21 May 1999
Page 1
2
This agreement (hereinafter referred to as the or this "Agreement) is entered
this 21st day of May, 1999 (hereinafter referred to as the "Effective Date"), by
and between INTEL Corporation, a Delaware corporation having a place of business
at ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ ("hereinafter referred to as
"INTEL"), and M4 Labs (dba as PacketVideo) Inc. (hereinafter referred to as
"PACKETVIDEO"). INTEL and PACKETVIDEO may be referred to herein in the singular
or plural as a Party or the Parties.
1. DEFINITIONS
1.1 "3G Wireless" means wireless the wireless network technology adopted by
the International Telecommunications Union (ITU) as its International
Mobile Telecommunications 2000 (IMT2000) standard and commonly known as
"3G."
1.2 "3G Wireless Terminal" means a portable device based on a real time
operating system kernel with embedded functionality that transmits
and/or receives data via a 3G Wireless network.
1.3 "Documentation" means manuals and other materials supplied to INTEL by
PACKETVIDEO, in any medium, relating to design, maintenance,
installation, operation, or training of the PACKETVIDEO 3G Products.
1.4 "Intel's Products" means all microprocessors manufactured by or for
Intel and sold by Intel through its distribution channels.
1.5 "Object Code" means computer-programming code in machine-readable and
machine-executable form.
1.6 "PACKETVIDEO 3G Development Tools" means the portion of the PACKETVIDEO
3G Products, including tools, libraries, sample code and other similar
development-related items which are necessary to incorporate and embed
the PACKETVIDEO 3G Run-Time Software in INTEL Products.
1.7 "PACKETVIDEO 3G Products" shall mean all of the PACKETVIDEO 3G Products
which are defined in Exhibit A, including without limitation the
PACKETVIDEO 3G Development Tools and PACKETVIDEO 3G Run-Time Software,"
and future products from PACKETVIDEO for use in 3G Wireless Terminals
[...***...] together with copies of any and all design or development
notes associated therewith.
1.8 "PACKETVIDEO 3G Run-Time Software" means the portion of the PACKETVIDEO
3G PRODUCTS which are necessary to deliver 3G Wireless functionality to
the user.
1.8 "Software" means computer-programming code [...***...].
1.10 [...***...].
1.11 "Updates and Enhancements" means all modifications, improvements, or
additions to PACKETVIDEO 3G Products that correct such product or
enhance such product's functionality, and new releases of such product
made available by PACKETVIDEO to at least two other third parties
[...***...] together with copies of any and all design or development
notes.
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2. RESPONSIBILITIES OF THE PARTIES
2.1 PACKETVIDEO will optimize PACKETVIDEO 3G PRODUCTS for INTEL Products in
accordance with the Statement of Work set forth in Exhibit D
2.2 PACKETVIDEO will deliver to INTEL the PACKETVIDEO 3G Development Tools
and PACKETVIDEO 3G Run-Time Software, and all Updates and Enhancements
thereof in a condition readily useable by an individual reasonably
skilled in the technology, together with a Certificate of Originality in
the format set forth in Exhibit E for each PACKETVIDEO 3G Products,
including each Update and Enhancement thereof, delivered to INTEL.
Failure by PACKETVIDEO to deliver Certificates of Originality shall be
deemed for purposes of warranties set forth in Section 7.4 that such
PACKETVIDEO 3G Product is delivered free of any third-party software or
content. Intel may accept or reject the PACKETVIDEO 3G Products, but
will notify PACKETVIDEO of rejection of the PACKETVIDEO 3G Products,
Updates and Enhancements, or any portion thereof, and the reasons
therefore, within a reasonable time following receipt from PACKETVIDEO.
The PACKETVIDEO 3G Product may be deemed accepted by INTEL if
distributed by INTEL before written notice of rejection.
2.3 [...***...].
2.4 If PACKETVIDEO releases alpha or beta version of the PACKETVIDEO 3G
Products, or any Update and Enhancement thereof, it will deliver the
alpha or beta versions to INTEL within a reasonable time following
internal release, but in no event later than delivered by PACKETVIDEO to
its most favored customer.
2.5 PACKETVIDEO will use commercially reasonable efforts to improve
PACKETVIDEO 3G Products to match advances in computing technology in
accordance with INTEL's reasonable product plans. [...***...].
2.6 Without limiting the foregoing, PACKETVIDEO will support reasonable
customization and engineering support requests by INTEL and INTEL's
customers at least as well as it supports such requests from its other
customers. INTEL acknowledges that such support, which may include,
without limitation porting to additional real time operating systems,
supporting a particular I/O interface and/or modifications to the user
interface, will be provided on a fee-for-service ("NRE") basis. Prior to
undertaking such customization or engineering activity, PACKETVIDEO and
INTEL will agree in writing upon the terms under which such activity
will be conducted as an amendment to this Agreement. As a minimum,
PACKETVIDEO agrees that all Intellectual
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property developed by PACKETVIDEO under contract and the medium of
expression thereof will, at INTEL's option and sole discretion, be owned
by INTEL or licensed to INTEL under terms no less restrictive than the
terms of this Agreement.
2.7 INTEL and PACKETVIDEO shall engage in the collaborative marketing
activities set forth in Exhibit B.
3. LICENSE GRANTS AND TERMS
3.1 PACKETVIDEO grants to INTEL a [...***...] license, [...***...] under
copyrights, trade secrets, patents or other intellectual property rights
in PACKETVIDEO 3G Products which PACKETVIDEO owns or has authority to
grant licenses of the scope set forth herein to use, copy, have copied,
create derivatives of, perform, display, translate the PACKETVIDEO 3G
Development Tools and all Updates and Enhancements thereof, for Intel
product development, internal and external training, and customer
demonstration purposes.
3.2 PACKETVIDEO grants to INTEL a [...***...] license, [...***...] under
copyrights, trade secrets, patents, or other intellectual property
rights in PACKETVIDEO 3G Products which PACKETVIDEO owns or has
authority to grant licenses of the scope set forth herein to use, make,
have made, sell, offer to sell, import, distribute or otherwise transfer
PACKETVIDEO 3G Run-Time Software, and all Updates and Enhancements
thereof, together with any derivative or modification thereof created by
INTEL pursuant to the license grant in Section 3.1 of this Agreement, in
Object Code format, directly or indirectly to customers, for with or as
part of Intel Products.
3.3 PACKETVIDEO grants to INTEL a [...***...] license, [...***...] in
accordance with Section 3.3 below, under copyrights for any works of
authorship embodied in the Documentation which PACKETVIDEO owns or has
authority to grant licenses of the scope set forth herein to copy, have
copied, create derivatives of, modify, distribute the Documentation and
copies and derivatives thereof, in whole or in part, by any means now
known or developed in the future, for with or as part of Intel Products.
3.4 [...***...].
3.5 PACKETVIDEO waives on its behalf and on behalf of its subcontractors,
vendors, and consultants any and all moral rights in the PACKETVIDEO 3G
Products and Documentation.
3.6 INTEL may sublicense its rights under Section 3.1, 3.2, , 3.3,
[...***...] above to contractors performing services on behalf INTEL or
to customers or other entities, subject to the following restrictions:
(a) Object Code sublicenses shall be granted in conjunction with the
sale or licensing of INTEL Products or licensed designs thereof.
[...***...].
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[...***...].
3.7 [...***...].
3.8 PACKETVIDEO may place legitimate copyright notices in and on the
PACKETVIDEO 3G Products and on any Documentation (or such other place as
INTEL and PACKETVIDEO may agree in writing) delivered to INTEL pursuant
to this Agreement. INTEL may cause such copyright notice not to be
displayed on screen where, in its reasonable discretion, such removal is
necessary to facilitate sale of INTEL Products to a third party.
3.9 Notwithstanding any other provision hereof and without limiting the
obligations of contractors with respect to confidentiality under Section
3.6, either Parties access to trade secrets of the under this Agreement
shall not create any obligation on the part of INTEL to limit or
restrict the assignment of its employees or contractors. Nothing in this
Agreement shall be construed as preventing employees or contractors of
either Party or contractors who have had access to such trade secrets
from drawing upon or using any skills, knowledge, talent or experience
of a general nature acquired by them in the course of working with such
trade secrets. This Agreement does not preclude either Party from
evaluating, acquiring from third parties not a party to this Agreement,
or independently developing, marketing similar technologies or products,
or making and entering into similar arrangements with other companies.
3.10 PACKETVIDEO agrees to license to Intel any other PACKETVIDEO product
under commercially reasonable terms and conditions, provided such terms
and conditions, including price, are as favorable as those offered by
PACKETVIDEO to any third party at similar volumes, either individually
or as part of product quantity bundle.
3.11 Except as may be expressly set forth in this Agreement, neither Party
acquires any right, title and interest in intellectual property of the
other, express, implied, or by estoppel.
4. OWNERSHIP
4.1 Subject to the licenses granted to INTEL pursuant to this Agreement, and
except as set forth in Section 2.4 above, PACKETVIDEO or PACKETVIDEO's
suppliers shall have exclusive right, title, and interest in all
intellectual property, including, without limitation, patents,
copyrights, trade secrets and other types or forms of intellectual
property, in and to Software developed, authored, or created by
PACKETVIDEO or PACKETVIDEO's Suppliers.
4.2 INTEL or its suppliers shall have exclusive right, title, and interest
in all intellectual property, including, without limitation, patents,
copyrights, trade secrets and other types or forms of intellectual
property, in and to Software developed, authored, or created by INTEL or
its Suppliers.
4.3 Unless otherwise agreed in writing, the Parties shall jointly own,
without rights of accounting, any intellectual property developed with
the significant participation of both Parties, their contractors, and
employees. The Parties may, in their discretion, share equally in the
costs of prosecuting any patent on jointly owned intellectual property.
However, if either Party elects not to share in such costs, the other
Party may proceed with prosecution at its sole expense, provided that it
gives both Parties attribution as joint inventors and patent owners in
its patent application. Each Party agrees to give the other reasonable
assistance with patent prosecution and keep the other reasonably
informed as to the status of the prosecution efforts.
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5. COMPENSATION
5.1 Intel will pay to PACKETVIDEO [...***...]. The Parties shall meet
periodically, not less than once each calendar year, during the term of
this Agreement to discuss the foregoing royalty in good faith and in
light of market conditions, product advancements, inflation or deflation
in the overall economy, etc. Upon mutual agreement, the Parties shall
amend this Agreement in writing to set forth the new royalty. In the
absence of an Agreement to so amend, the then-current royalty shall
continue in effect until the next such meeting of the Parties.
5.2 [...***...].
5.3 Notwithstanding anything in this Section 5 to the contrary, the first
[...***...] copies of PACKETVIDEO 3G Products actually sold, distributed
or otherwise transferred by INTEL pursuant to the license grant set
forth in Section 3.2 of this Agreement for revenue and all updates and
enhancements, alpha copies, beta copies, prototype units, customer
evaluation copies, and demonstration copies distributed, sold or
otherwise transferred by Intel are exempt from any royalty fees.
5.4 INTEL will make payments for royalties owed PACKETVIDEO under this
Agreement quarterly, within [...***...] calendar days following the
close of each calendar quarter.
5.5 [...***...].
6. MAINTENANCE AND SUPPORT OBLIGATION
6.1 At INTEL's written request, PACKETVIDEO will provide support to INTEL
for the PACKETVIDEO 3G Products and all Updates and Enhancements thereof
according to terms set forth in Exhibit C.
6.2 PACKETVIDEO will provide not less than one training session at
PACKETVIDEO's expense to INTEL personnel regarding use, installation,
maintenance, and support of the PACKETVIDEO 3G Products and all Updates
and Enhancements as requested by INTEL during the term of this
Agreement. Additional training will be subject to INTEL's payment to
PACKETVIDEO of PACKETVIDEO's standard training fees plus PACKETVIDEO's
reasonable incidental expenses.
7. WARRANTIES:
7.1 Each Party warrants and represents to the other that it has all
authority to enter into this Agreement and to perform the obligations
hereunder.
7.2 PACKETVIDEO warrants and represents that it has all right, title, and
interest and/or license rights in the PACKETVIDEO 3G Products necessary
to grant the licenses set forth herein and has not
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taken any action or suffered any action to be taken with respect to the
PACKETVIDEO 3G Products which would restrict or affect the rights of
INTEL and its sublicensees hereunder.
7.3 [...***...]
7.4 PACKETVIDEO warrants and represents that the information contained in
any Certificate of Originality delivered by PACKETVIDEO in the form set
forth in Attachment D hereto is current, accurate, and complete as of
the Effective Date to the best of its information and belief.
Furthermore, PACKETVIDEO warrants and represents that it has used best
efforts to verify that the information set forth in Attachment D is
current, accurate, and complete as of the Effective Date.
7.5 PACKETVIDEO warrants and represents that any Software as delivered by
PACKETVIDEO to INTEL is free of any harmful code, defined for purposes
of this Agreement as any computer code, programming instruction, or set
of instructions which have been designed with the ability to damage,
interfere with, or otherwise adversely affect computer programs, data
files, or hardware, without the consent or intent of the computer user,
including without limitation, self-replicating and self-propagating
programming instructions commonly referred to as viruses and worms.
INTEL's remedy with respect to this Section 7.5 will be limited to the
warranty remedies set forth in Section 7.6.
7.6 PACKETVIDEO warrants that the PACKETVIDEO 3G Products as delivered by
PACKETVIDEO to INTEL and all Updates and Enhancements thereto will
substantially perform in accordance with applicable specifications for a
period of [...***...] after delivery by Intel of PACKETVIDEO 3G
Products, and Updates and Enhancements, to its customers . PACKETVIDEO
will, at its own expense, promptly and on a best efforts basis, correct
any conditions discovered in the PACKETVIDEO 3G Products that cause such
products not to perform in accordance with its Specifications ("Errors")
provided that INTEL reports the Errors to PACKETVIDEO in writing. If
PACKETVIDEO is unable to correct any Error after best efforts, INTEL may
at INTEL's option either (a) correct the Error and collect from
PACKETVIDEO its reasonable actual direct costs of doing so or (b) INTEL
may receive a refund from PACKETVIDEO; in each case the amount to be
paid to INTEL shall not exceed the amount paid or owing to PACKETVIDEO
hereunder for the actual number of units of such PACKETVIDEO Software
containing such Error.
7.7 PACKETVIDEO warrants that the PACKETVIDEO 3G Products will function
without error or interruption related to Date Data from more than one
century; all Date Data (whether received from users, systems,
applications or other sources) include an indication of century in each
instance; and all date output and results, in any form, shall include an
indication of century in each instance. As used herein, "Date Data"
means any data or input, whether generated within the Item or
communicated to it, which includes an indication of or reference to
date;
7.8 There will be no disruption in PACKETVIDEO's performance of this
Agreement as a result of or due to the date change from and between
December, 1999, and January, 2000, nor due to the year 2000 being a leap
year.
7.9 EXCEPT AS EXPRESSLY SET FORTH HEREIN, NEITHER PARTY MAKES ANY
WARRANTIES, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE PACKETVIDEO
PRODUCTS, OR TO UPDATES AND ENHANCEMENTS, OR TO ANY OTHER SOFTWARE OR
INFORMATION, OTHER THAN THOSE EXPRESSLY SET FORTH IN THIS SECTION 7, AND
EACH PARTY EXPRESSLY DISCLAIMS ANY SUCH WARRANTIES, INCLUDING BUT NOT
LIMITED TO THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE.
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7.8 Nothing contained in this Section 7 shall diminish PACKETVIDEO's
obligations of support set forth elsewhere herein.
8. INDEMNIFICATION
8.1 PACKETVIDEO shall defend, indemnify INTEL and hold INTEL harmless from
and against any and all loss, cost, liability and expense (including
attorney's fees) arising in any way from any claim made or threatened
against INTEL relating to the PACKETVIDEO 3G Products. Licensee's duties
under this Section extend to any matters arising out of the alleged
infringement by the PACKETVIDEO 3G Products, [...***...].
8.2 INTEL agrees to promptly notify PACKETVIDEO of any such claim and will
provide information, assistance, and cooperation in defending the suit
or proceeding (at PACKETVIDEO's expense). INTEL agrees to allow
PACKETVIDEO the opportunity to control the defense of any suit or
proceeding provided PACKETVIDEO permits INTEL to participate in the
defense or settlement of the suit or proceeding arising in any way from
any claim made or threatened against INTEL relating to the PACKETVIDEO
3G Products. PACKETVIDEO will have no responsibility to indemnify INTEL
pursuant to Section 8.1 above for any settlements or judgements entered
into or agreed to by INTEL without PACKETVIDEO's participation and prior
written consent.
8.3 If the PACKETVIDEO 3G Products, or any portion of the PACKETVIDEO 3G
Products, is found to infringe the rights of any third party and its use
is enjoined, PACKETVIDEO will, [...***...] either (a) procure for INTEL
a license or right to continue to use the PACKETVIDEO 3G Products or the
applicable portion of the PACKETVIDEO 3G Products, (b) replace the
PACKETVIDEO 3G Products or applicable portion with a non-infringing
PACKETVIDEO 3G Products or portion, or (c) modify the PACKETVIDEO 3G
Products or infringing portion to become non-infringing.
9. TERM AND TERMINATION
9.1 Term
This Agreement will be effective for an initial term of [...***...]
unless either Party provides written notice of non-renewal not less than
one hundred and eighty (180) calendar days before expiration of the
initial term or any subsequent renewal term.
9.2 Termination:
(a) INTEL may terminate this contract for its convenience at any
time upon [...***...] calendar days written notice.
(b) Either Party shall have the right to terminate this Agreement
should the other Party materially default in the performance of
any of its obligations [...***...].
9.3 Effect of Termination
(a) Except as expressly set forth below, Sections 3.8, 3.11, 4, 5,
7, 8, 9, 10, 11 of this Agreement will survive expiration or
earlier termination of this Agreement, including termination for
material breach by PACKETVIDEO in accordance with Section 9.2(b)
above.
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(b) In the event of termination of this Agreement by PACKETVIDEO for
material breach by INTEL in accordance with Section 9.2(b)
above, and except as set forth herein, PACKETVIDEO may revoke
the license grants set forth in Section 3 above. Notwithstanding
anything in this Section 9.3(c) to the contrary, INTEL may
continue to distribute the PACKETVIDEO 3G Products in object
code format until its inventory of PACKETVIDEO 3G Products
reproduced on diskette or preloaded on INTEL Products is
depleted. INTEL may continue to use, copy and create derivatives
of the PACKETVIDEO 3G Development Tools [...***...] and may
compile and distribute derivatives of the PACKETVIDEO 3G
Products in object code format as necessary to correct bugs in
PACKETVIDEO 3G Products distributed to customers. Revocation
shall not affect the rights of INTEL customers under valid
sublicenses executed prior to termination of this Agreement.
10. CONFIDENTIALITY AND NON-DISCLOSURE
10.1 The Parties hereto shall keep the terms of this Agreement confidential
and shall not now or hereafter divulge these terms to any third party
except:
(a) with the prior written consent of the other Party; or
(b) to any governmental body having jurisdiction to call therefor;
or
(c) subject to (d) below, as otherwise may be required by law or
legal process, including to legal and financial advisors in
their capacity of advising a party in such matters; or
(d) during the course of litigation so long as the disclosure of
such terms and conditions are restricted in the same manner as
is the confidential information of other litigating parties and
so long as (a) the restrictions are embodied in a court-entered
Protective Order and (b) the disclosing Party informs the other
Party in writing in advance of the disclosure; or
(e) in confidence to legal counsel, accountants, banks and financing
sources and their advisors solely in connection with complying
with financial transactions.
10.2 It may become necessary during the course of this Agreement for one
Party to disclose to the other information which the disclosing Party
considers confidential ("Confidential Information"). Disclosure of such
Confidential Information shall be governed by the terms of a separate
Corporate Non-Disclosure Agreement or Restricted Use Non-Disclosure
Agreement(s) to be executed by the Parties. PACKETVIDEO acknowledges
that INTEL may from time to time request execution of a more restrictive
non-disclosure agreement with respect to selected INTEL confidential
information.
11 LIMITATION OF LIABILITY
EACH PARTY'S SOLE LIABILITY HEREUNDER SHALL BE LIMITED TO DIRECT,
OBJECTIVELY MEASURABLE DAMAGES. IN NO EVENT WILL EITHER PARTY ASSUME ANY
LIABILITY FOR ANY INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES
INCLUDING, BUT NOT LIMITED TO, LOSS OF PROFITS, BUSINESS INTERRUPTIONS,
OR LOSS OF USE, IRRESPECTIVE OF WHETHER SUCH PARTY HAS ADVANCE NOTICE OF
THE POSSIBILITY OF ANY SUCH DAMAGES. [...***...]. THE PARTIES
ACKNOWLEDGE THAT THE LIMITATIONS ON POTENTIAL LIABILITIES SET FORTH
ABOVE WERE ESSENTIAL ELEMENTS IN SETTING CONSIDERATION UNDER THIS
AGREEMENT.
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12. GENERAL PROVISIONS
12.1 INTEL and PACKETVIDEO are independent contractors. Nothing in this
Agreement will be construed to make INTEL and PACKETVIDEO partners or
joint venturers, or to make INTEL and PACKETVIDEO liable for the
obligations, acts, or activities of the other.
12.2 This Agreement does not preclude either Party from evaluating or
marketing similar products, nor will it be construed as an obligation on
either Party's part to market or distribute the PACKETVIDEO 3G Products.
12.3 Any change, modification or waiver to this Agreement must be in writing
and signed by an authorized representative of each Party.
12.4 All notices and requests required or made under this Agreement must be
in writing and will be deemed given if personally delivered or if mailed
postage prepaid, certified or registered mail to the addresses listed on
the cover page to this Agreement or to such other address as may be
noticed as follows:
INTEL: PACKETVIDEO:
Intel Corporation PacketVideo Corporation
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇. ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn.: Contract
Management Attn: Chief Executive Officer
M/S: CH6-404
With copies to:
Intel Corporation
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇.
▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attn. General Counsel
12.5 Neither Party may assign this Agreement or any portion of this Agreement
to any other Party without the other's prior written consent.
12.6 In the event of a conflict between the terms of this Agreement and the
following Exhibits, which are incorporated herein by reference, the
terms and conditions of this Agreement will prevail:
Exhibit "A" - PACKETVIDEO 3G Products Descriptions and
Specifications
Exhibit "B" - Marketing Collaboration
Exhibit "C" - Maintenance and Support Obligations
Exhibit "D" - Statement of Work
Exhibit "E" - Certificate of Originality
[...***...]
Exhibit "G" - Excluded Technology
12.7 Regardless of which Party may have drafted this Agreement, no rule of
strict construction shall be applied against either Party. If any
provision of this Agreement is determined by a court to be
unenforceable, we will deem the provision to be modified to the extent
necessary to allow it to be enforced to the extent permitted by law, or
if it cannot be modified, the provision will be severed and deleted from
this Agreement, and the remainder of the Agreement will continue in
effect.
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11.8 The laws of the State of Delaware, excluding its choice of law
provisions shall govern any claim by either Party arising under this
Agreement.
11.9 This Agreement is intended to be the entire agreement between us with
respect to matters contained herein, and prior or contemporaneous
agreements and negotiations with respect to those matters are superseded
by this Agreement. Without limiting the foregoing, this Agreement will
prevail over the terms and conditions of any shrinkwrap license which
may be delivered by PACKETVIDEO with the PACKETVIDEO 3G Products, unless
Intel, in its sole discretion, elect to take advantage of more favorable
terms in such shrinkwrap license. No waiver of any breach or default
shall constitute a waiver of any subsequent breach or default.
AGREED:
INTEL CORPORATION M4 LABS (DBA PACKETVIDEO) INC.
/s/ ▇▇▇▇ ▇▇▇▇▇ /s/ ▇▇▇▇▇ ▇▇▇▇▇
--------------------------------- ---------------------------------
Signature Signature
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇
--------------------------------- ---------------------------------
Printed Name Printed Name
V.P. Intel CEO
--------------------------------- ---------------------------------
Title Title
6/30/99 5/21/99
--------------------------------- ---------------------------------
Date Date
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EXHIBIT "A"
PACKETVIDEO 3G PRODUCTS DESCRIPTION AND SPECIFICATIONS
SUMMARY OF PACKETVIDEO 3G PRODUCTS: DESCRIPTION AND SPECIFICATIONS
1. [...***...].
NOTE: In addition to the foregoing descriptions and specifications,
PACKETVIDEO specification sheets in effect at the time of this
Agreement or thereafter modified for the PACKETVIDEO 3G Products
are hereby incorporated into this Exhibit A by reference.
For more detail on product specifics pursuant to this agreement, please refer to
Exhibit D.
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EXHIBIT "B"
MARKETING COLLABORATION
MARKETING COLLABORATION SUMMARY
[...***...].
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[...***...].
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[...***...].
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[...***...].
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EXHIBIT "C"
MAINTENANCE AND SUPPORT OBLIGATIONS
1. Upon receiving a problem report from INTEL and unless the Parties otherwise
agree in writing, PACKETVIDEO shall respond and correct the problem in
accordance with the following table:
WRITTEN PATCH, WORK AROUND, FORMAL FIX,
ACKNOWLEDGMENT OF TEMPORARY FIX, BUG UPDATE FIX,
PROBLEM REPORT FIX, OR UPDATE UPGRADE, OR
PRIORITY DESCRIPTION DELIVERED TO INTEL RELEASE ENHANCEMENT
-------- ----------- ------------------ ------- -----------
Fatal Condition which is [...***...] Constant effort by Within
not an isolated highly qualified [...***...] days
incident affecting PACKETVIDEO
a single personnel until
workstation, and relief is provided,
precludes all but not more than
useful work from [...***...] hours.
being done
Severe Impact Condition which is [...***...] Constant effort by Within
not an isolated highly qualified [...***...] days
incident affecting PACKETVIDEO
a single personnel until
workstation, and relief is provided,
precludes one or but not more than
more major [...***...] hours.
functions from
being performed
Degradation 1) Condition which [...***...] [...***...] days Within
disables one or [...***...] days
more non-essential
functions
2) Condition which
precludes all
useful work from
being done on a
single or limited
number of
workstations
Minimal Impact Any other condition [...***...] [...***...] days Within
which requires [...***...] days
correction
2. INTEL Assistance: To assist PACKETVIDEO in providing the most effective
responsiveness to trouble reporting and solution, INTEL will provide access
(which at INTEL's option, may be on-site at INTEL) to at least two (2)
systems in which the problems can be reproduced (if PACKETVIDEO does not have
such systems available), and access to INTEL's hardware and software
debugging resources, if PACKETVIDEO so requests.
3. Bug Fixes. If PACKETVIDEO discovers any bugs in the technology delivered to
INTEL hereunder, PACKETVIDEO shall report them to INTEL. If PACKETVIDEO
creates a bug fix or maintenance release of the related technology,
PACKETVIDEO shall make the bug fix available to INTEL no later than it is
made available to any third party.
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EXHIBIT D
STATEMENT OF WORK
PACKETVIDEO will optimize certain products to INTEL Products and Silicon as
described below. Company will deliver the various optimized products ("Company
Deliverables") to INTEL for acceptance testing. INTEL will acceptance test the
Company Deliverables as further detailed below and provide Company with
notification when the delivered products have passed the acceptance testing.
1. PACKETVIDEO 3G PRODUCTS TO BE OPTIMIZED TO THE INTEL STRONGARM AND DSP 3G
ARCHITECTURE PLATFORMS.
PACKETVIDEO will produce embedded multimedia software for the INTEL StrongARM
and DSP 3G architectures. The functions and standards supported by this
embedded software may change depending upon mass marketing input. In
order to ensure interoperability between 3G multimedia terminals, the
IMT2000 committee has specified a mandatory protocol stack that must be
supported. This protocol stack is a variant of the ITU-T standard H.324,
Annex C (generally referred to as H.324/Mobile). The components of this
mandatory configuration are outlined below in Table 1.
PROTOCOL COMPONENT STANDARD SPECIFIED
------------------ ------------------
Overall System Signaling H.324 Annex C
Speech Codec GSM-AVR
Video Codec H.263 Baseline, (MPEG-4 Preferred)
Multiplex H.223 Annex B
Control H.245 Version 6
TABLE 1 IMT2000 MINIMUM MANDATORY MULTIMEDIA PROTOCOL STACK
Again, the configuration outlined in Table 1 allows interoperability between
different networks and terminals. The preferred configuration, as
specified by the 3G Partners Project (3GPP) consortium, calls for MPEG-4
as the video codec. Furthermore, NTT DoCoMo and the Association of Radio
Industries and Businesses, ARIB, have specified MPEG-4 as Japans
preferred 3G video standard. The embedded software provided by
PACKETVIDEO to INTEL will be compliant with the H.324 Annex C multimedia
standard, specified in Table 1. It will also support MPEG-4 as the video
codec. The actually video codec used in a particular multimedia 3G call
will be negotiated during the call set up. The H.324 Annex C system
diagram is shown below in Figure 1.
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[FLOW CHART]
FIGURE 1 H.324 ANNEX C SYSTEM DIAGRAM
In this figure, the MPEG-4 video codec implementation will include the ability
to support H.263 Baseline. Support for H.263 Baseline is a feature of
MPEG-4. The embedded software developed by PACKETVIDEO will include
error resilience technology necessary for a "best in class" wireless
multimedia solution. This codec will also include video compression
technology necessary for efficient bandwidth usage of a communications
channel employing Code Division Multiple Access (CDMA) access
technology.
Specifically, the following tasks will be performed in the course of
implementing the MPEG-4 video codec:
-[...***...].
PACKETVIDEO will provide an implementation of the ITU-T standard H.223/M that is
optimized for a 3G cellular system. [...***...] The specific tasks to
be completed in developing this implementation of H.223/M include:
-[...***...].
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[...***...]
The embedded software developed by PACKETVIDEO will include the necessary
software interfaces to support both additional user and network
interface development.
PACKETVIDEO will also develop and optimize for the INTEL StrongARM and DSP
architectures a 3G handheld videophone / multimedia PDA reference design.
A block diagram of this reference device is provided in Figure 2.
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[...***...].
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[...***...].
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[...***...].
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[...***...].
Progress Review Meetings
Progress towards these milestones will be measured and monitored through a
series of meetings attended by representatives of both INTEL and PACKETVIDEO.
These meetings will take place on the second Monday of every month. The assigned
INTEL Technical Representative and the CTO of PACKETVIDEO will agree upon an
agenda four days prior to the next scheduled meeting. The INTEL Technical
Representative and the CTO of PACKETVIDEO will distribute this agenda to
appropriate persons. The majority of these meetings will be facilitated by phone
conferences, while some regular number (TBD) will take place in person at an
agreed upon location.
These regularly scheduled meetings may be pre-empted by additional meetings that
may be required to accommodate design reviews, technology reviews, etc.
4. TECHNICAL SUPPORT BY INTEL TO PACKETVIDEO
The following items will be provided to PACKETVIDEO as technical support
during the development of StrongARM and DSP 3G Platforms:
[...***...].
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EXHIBIT "E"
CERTIFICATE OF ORIGINALITY
[TO BE COMPLETED BY PACKETVIDEO FOR EACH PACKETVIDEO
3G PRODUCTS BEFORE EXECUTION]
This questionnaire must be completed for the PACKETVIDEO 3G Products and
Documentation for INTEL.
One questionnaire can cover one complete product, even if that product includes
multiple modules. However, a separate questionnaire must be completed for the
code and another for its related documentation (if any).
Please do not leave any questions blank. Write "not applicable" or "N/A" if a
question is not relevant to the furnished software material.
1. Name of the software material (provide complete identification,
including version, release and modification numbers for programs and
documentation):
------------------------------------------------------------------------
------------------------------------------------------------------------
------------------------------------------------------------------------
2. Was the software material or any portion thereof written by any party
other than PACKETVIDEO, or PACKETVIDEO's employees working within their
job assignment?
Yes _______ No _______
If yes, provide the following information:
(a) Indicate if the whole software material or only a portion thereof
was written by such party, and identify such portion:
-----------------------------------------------------------------
-----------------------------------------------------------------
-----------------------------------------------------------------
-----------------------------------------------------------------
-----------------------------------------------------------------
(b) Specify for each involved party:
(i) Name:
-------------------------------------------------
(ii) Company:
-------------------------------------------------
(iii) Address:
-------------------------------------------------
(iv) If the party is a company, how did it acquire title to the
software material (e.g., software material was written by
company's employees as part of their job assignment)?
----------------------------------------------------------
----------------------------------------------------------
----------------------------------------------------------
(v) If the party is an individual, did s/he create the
software material while employed by or under contractual
relationship with another party?
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Yes ______ No ______
If Yes, provide name and address of the other party and
explain the nature of the obligations:
----------------------------------------------------------
----------------------------------------------------------
----------------------------------------------------------
(c) How did PACKETVIDEO acquire title to the software material
written by the other party?
----------------------------------------------------------------
----------------------------------------------------------------
----------------------------------------------------------------
3. Was the software material or any portion thereof derived from any third
party's pre-existing materials?
Yes _______ No _______
If yes, provide the following information for each of the pre-existing
materials:
(a) Name of the materials:
----------------------------------------------------------------
----------------------------------------------------------------
----------------------------------------------------------------
(b) Owner:
----------------------------------------------------------------
----------------------------------------------------------------
----------------------------------------------------------------
(c) How did PACKETVIDEO get the right to use the pre-existing
material(s)?
----------------------------------------------------------------
----------------------------------------------------------------
----------------------------------------------------------------
4. Identify below, or in an attachment, any other circumstances which might
affect INTEL's ability to reproduce and market this software product,
including:
(a) Confidentiality or trade secrecy of pre-existing materials:
----------------------------------------------------------------
----------------------------------------------------------------
----------------------------------------------------------------
(b) Known or possible royalty obligations to others:
----------------------------------------------------------------
----------------------------------------------------------------
----------------------------------------------------------------
(c) Pre-existing materials developed for another party or customer
(including government) where PACKETVIDEO may not have retained
full rights to the material:
----------------------------------------------------------------
----------------------------------------------------------------
----------------------------------------------------------------
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(d) Materials acquired from a person or company possibly not having
title to them:
----------------------------------------------------------------
----------------------------------------------------------------
----------------------------------------------------------------
(e) Other circumstances:
----------------------------------------------------------------
----------------------------------------------------------------
----------------------------------------------------------------
5. Copies of any approved copyright registration forms or filings have been
attached hereto.
COMPANY
------------------------------------
Signature
------------------------------------
Printed Name
------------------------------------
Title
------------------------------------
Date
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EXHIBIT F
[...***...].
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[...***...].
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[...***...].
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[...***...].
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[...***...].
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[...***...].
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[...***...].
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[...***...].
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[...***...].
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EXHIBIT "G"
EXCEPTIONS TO SECTION 8 INDEMNITY
All communication standards have a normative (required) part and a non-normative
(optional) part. The PacketVideo 3G Products include many value-added
non-normative proprietary elements for which PacketVideo provides the standard
intellectual property indemnification set forth in the Agreement to which this
Exhibit F is attached, including:
[...***...]
In performing these value-added non-normative functions, the PacketVideo 3G
Products need to represent the final output data in a standard form (i.e.
syntax). Although the core functionality contained in the PacketVideo 3G
Products is not itself standards-specific, the PacketVideo 3G Products must
comply with the normative portions of the standards for interoperability
purposes. [...***...] As a result, PacketVideo cannot provide indemnification
for the normative portions of the following standards included in the umbrella
"3G" standard, as follows:
1. [...***...].
2. [...***...].
3. [...***...].
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[...***...]
4. [...***...]
5. [...***...]
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