Exhibit 10.11
CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED FOR PORTIONS OF THIS EXHIBIT,
WHICH PORTIONS HAVE BEEN OMITTED FROM
THE ATTACHED EXHIBIT AND FILED SEPARATELY
WITH THE SECURITIES AND EXCHANGE COMMISSION.
THE OMITTED PORTIONS HAVE BEEN REPLACED BY AN
X ENCLOSED BY BRACKETS ([X]).
AMENDMENT NO. 4
TO
PATENT CROSS LICENSING AGREEMENT
BETWEEN
MOTOROLA, INC.
AND
TELULAR, INC.
EFFECTIVE MARCH 23, 1990,
As amended by
AMENDMENT NOS. 1, 2 and 3
This Amendment No. 4 is made as of the date of the last to
sign below (Amendment No. 4 Execution Date), to the above-
captioned Licensing Agreement between MOTOROLA, INC., a
corporation organized and existing under the laws of the State of
Delaware, United States of America, having its principal place of
business at ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
(hereinafter MOTOROLA) and TELULAR, INC., an Illinois
corporation having its principal place of business at ▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (hereinafter TELULAR).
WHEREAS, MOTOROLA and TELULAR wish to amend the above-
captioned Patent Cross-Licensing Agreement in order to amend
definitions therein and to remove restrictions against MOTOROLA
with respect to selling certain products in certain countries.
NOW, THEREFORE, MOTOROLA and TELULAR agree to amend the
Patent Cross-Licensing Agreement as follows:
I. Paragraph 6(b) shall be amended to read:
6. Licensed Product
(b) Integrated Product or Integrated
Transceiver shall mean any Cellular-Type
Transceiver which has a Cellular-Type Interface
integrated into the circuitry of the Cellular-Type
Transceiver or internally coupled thereto, and is
manufactured to be contained within a cabinet or
enclosure as a single unit. The Integrated
Product may be removable coupled to a Booster
Product;
I. Paragraph 7(a) shall be amended to read:
6. Cellular Related Devices
(a) Cellular-Type Transceiver shall mean
any cellular type radio-technology transceiver
device for utilization within a wireless
transmission network, system or technology;
I. Paragraph 10(a)(i) shall be amended to read:
10(a) Geographic Area shall mean the whole world with
the following exceptions:
(i) The license granted in paragraph 14 to
MOTOROLA shall be limited to Accessory Products
and Integrated Products only in Puerto Rico, the
Dominican Republic and the Bahamas. MOTOROLA
shall notify its customers or distributors who
purchase the Accessory Product or Integrated
Product of the limitation contained in this
paragraph with regards to the use of the Accessory
Product or Integrated Product in a Fixed Product.
The limitation contained in this paragraph shall
not apply to a Fixed Product which operates on a
code-division multiple access (CDMA) air-
interface.
I. Paragraph 19(a)(ii) shall be amended to read:
19. Royalty
(a) MOTOROLA agrees to pay TELULAR the
following percentage royalty calculated on
MOTOROLA's net sales of each class of product as
follows:
(i) For each Fixed Product leased used for
commercial purpose, sold or otherwise disposed of
by MOTOROLA under the Non-Exclusive License
granted in paragraph 14(b)
a) [X] of Fixed Products;
b) [X] of Fixed Products; and
c) [X] of Fixed Products;
d) notwithstanding the above, [X]
of Fixed Products which operate on a CDMA
air-interface and which MOTOROLA sells
directly to third parties, without TELULAR
repackaging, provided, however, that the
royalty rate shall be as recited in Sections
19(a)(ii)(a) 19(a)(ii)(c) above if TELULAR
duly terminates the OEM Equipment Purchase
Agreement for WFAU dated April 30, 1999
based on a default under paragraph 23(b) of
that Agreement;
I. MOTOROLA and TELULAR agree that all other terms and
conditions of the Patent Cross-License Agreement, as amended
in Amendment Nos. 1, 2 and 3, remain the same and this
Amendment No. 4 shall control any conflict between the
identified paragraphs of this Amendment No. 4 and the
corresponding paragraphs of the above-captioned License
Agreement as previously amended.
IN WITNESS THEREOF, MOTOROLA and TELULAR have caused this
Amendment No. 4 to be signed in duplicate originals by their duly
authorized representatives as of the date written beneath their
respective signatures.
MOTOROLA, INC. TELULAR, INC.
By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
Name: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
Title: SR VP and GM Title: Exec VP and COO
Date: 4/30/99 Date: 5/3/99