EXHIBIT 10.15
EXHIBIT G
ADDENDUM TO COOPERATION AND DEVELOPMENT AGREEMENT
This Exhibit G is an Agreement Addendum to the Cooperation and Development
Agreement ("Agreement") entered into as of December 18, 1992 by and between
AT&T Paradyne Corporation, a Delaware corporation, with offices at 8545 126th
Avenue North, Largo, Florida, 34649 ("Paradyne"), and Westell Technologies,
Inc., an Illinois corporation, with offices at 101 Kendall Point Drive, Oswego,
Illinois, 60543, and all of its subsidiaries and affiliates, collectively
referred to as "Westell" entered into as of March 4, 1996 (the "Addendum
Effective Date"). Unless otherwise stated in this Exhibit G, all of the terms
and conditions set forth in the original Agreement and under Exhibits A through
F will apply.
The following change will be implemented from the effective date of this
Exhibit G until the close of business on March 3, 1997. Thereafter the
provisions of Article 17 as amended through Exhibit F shall apply.
1. Article 17. Non-solicitation, as amended in Exhibit F is further amended
by deleting the words "directly or indirectly associated with the development
of marketing of the Products covered under this Agreement".
IN WITNESS WHEREOF, the Parties hereto have executed this Addendum Agreement as
of the Addendum Effective Date.
AT&T PARADYNE CORPORATION WESTELL TECHNOLOGIES, INC.
By: /s/ James L. Slattery By: /s/ Robert D. Faw
------------------------- --------------------------
Name: James L. Slattery Name: Robert D. Faw
Its: Senior Vice President Its: Executive Vice President
International Operations
EXHIBIT 10.15
CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
EXHIBIT H
ADDENDUM TO COOPERATION AND DEVELOPMENT AGREEMENT
This Exhibit H is an Agreement Addendum to the Cooperation and Development
Agreement ("Agreement") entered into as of December 18, 1992 by and between
AT&T Paradyne Corporation, a Delaware corporation, with offices at 8545 126th
Avenue North, Largo, Florida, 34649 ("Paradyne"), and Westell Technologies,
Inc., an Illinois corporation, with offices at 101 Kendall Point Drive, Oswego,
Illinois, 60543 and all of its subsidiaries (collectively referred to as
"Westell") entered into as of 4 March, 1996 (the "Addendum Effective Date")
regarding Westell's right to utilize a Basic Member License agreement to
sublicense Paradyne's GlobeSpan(TM) DSL technology for digital subscriber line
applications. Westell and WIN will be collectively referred to as "Westell".
Unless otherwise stated in this Exhibit H, all of the terms and conditions set
forth in the original Agreement and under Exhibits A through G will apply.
Exhibit H grants Westell non-exclusive rights to sublicense the use of
Paradyne's GlobeSpan DSL technology to Westell's qualified customers (hereafter
called Westell Licensee) under the terms and conditions of this Exhibit and the
attachment hereto. The sublicense is identified as a Paradyne GlobeSpan Basic
Member License agreement (included as Attachment A). The Westell Licensee
shall use the Basic Member License ("BML") solely for Westell Licensee to
manufacture and sell DSL PRODUCT based on DSL designs which have been licensed
to Westell Licensee by Westell under a separate agreement between Westell
Licensee and Westell. In consideration of the mutual promises contained
herein, Paradyne and Westell agree as follows:
1. Basic Member License Fees
Westell agrees to pay Paradyne a one time license fee for each BML granted to
Westell Licensee as follows:
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
*
*
*
Westell will pay the license fee to Paradyne within 30 days after Westell
Licensee signs a BML with Westell.
2. Conditions For BML License Grant By Westell to Westell Licensee
2.1 Country Restrictions
Paradyne reserves the right to prohibit the granting of BML agreements to
licensees in, or operating in, certain countries as defined in Table 1, and
Paradyne reserves the right to amend (expand or narrow) from time to time the
countries specified in the Restricted Country List defined in Table 1 with
thirty days notice to Westell.
Paradyne amendments to Table 1 will not affect BML agreements accepted by
Paradyne under Section 2.3 and executed by both parties prior to the amending
of Table 1.
2.2 Company Restrictions
Paradyne reserves the rights to prohibit the granting of BML agreements to
prospective sublicensee based upon the criteria specified in Table 2, and
Paradyne reserves the right to amend (expand or narrow) the criteria contained
in Table 2 with thirty days notice to Westell.
Paradyne amendments to Table 2 will not affect BML agreements accepted by
Paradyne under Section 2.3 and executed by both parties prior to the amending
of Table 2.
2.3 Notification Of Intent By Westell To Grant BML
* Confidential treatment requested: material omitted has been filed separately
with the Securities and Exchange Commission.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
Westell will notify Paradyne in writing with a Notification Of Intent letter,
stating Westell's request to grant a BML agreement to a prospective Westell
Licensee. Westell may optionally designate the letter as Westell Confidential
Information. The Notification Of Intent letter will include two copies of the
following information regarding the prospective Westell Licensee and acceptance
signature lines for Westell and Paradyne:
Company Name:
Business Address:
Description of Business, Products, Markets (segments and
countries):
Marketing contact name:
Phone Number:
Fax Number:
E-mail address:
GlobeSpan DSL License Type:
Location(s) where the PRODUCT will be manufacture:
Geographic regions and countries where the PRODUCT will be
marketed:
Paradyne will undertake on a best efforts to respond to Westell's Notification
Of Intent letter within five (5) working days after receipt. Westell must
complete a BML with the prospective Westell Licensee within 120 days from the
date of Paradyne's acceptance at which period of time Paradyne's acceptance is
nullified and void.
In the event that Paradyne concludes that the prospective Westell licensee does
not meet the conditions or qualifications specified in Paragraphs 2.1 and 2.2
of this Exhibit H, Paradyne may elect not to accept Westell's Notification Of
Intent letter and will so notify Westell in writing. Westell agrees that if
such Notification of Intent letter is not accepted Westell will not grant a BML
to such prospective licensee. Paradyne shall not have any liability to either
Westell or its prospective licensee for not accepting Westell's Notification Of
Intent letter.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
2.4 Transmittal Of BML
Upon Paradyne's acceptance of the Notification Of Intent letter, and thereafter
execution of a BML with such accepted licensee, Westell will provide to
Paradyne a signed copy of each BML agreement granted by Westell to a Westell
Licensee within five (5) working days after execution of the BML by both
parties. Upon receiving the BML, Paradyne will
*that the Westell Licensee is qualified
*requested by the Westell Licensee.
Paradyne shall have the right to terminate any BML if any BML deviates from
Attachment A of Exhibit H or if the licensee is at any time in default under
such BML and Westell has failed, following notice from Paradyne, to enforce the
BML.
2.5 Limit of Applicability
The provisions of this Section 2 shall only apply if Westell has not exhausted
its sublicense rights under Category 4 of Table 2 attached hereto.
3. Westell Licensee Use of GlobeSpan Trademark
Westell agrees and shall require that the GlobeSpan trademark name and logo
will be included in all data sheets and marketing collateral material which
describes and/or references the GlobeSpan DSL transmission technology used in
connection with Westell Licensee's DSL PRODUCT. Westell and its licensee also
will cause to appear on all materials or documentation with which the GlobeSpan
trademark is used, such legends, markings and notices as Paradyne may request
in order to give appropriate notice of any trademark rights therein. Westell
agrees that it and its licensee will be required to display the GlobeSpan
trademark only in such form or manner as will be specifically approved by
Paradyne.
4. Technical Support
* Confidential treatment requested: material omitted has been filed separately
with the Securities and Exchange Commission.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
There will not be any technical support offered by Paradyne to Westell Licensee
as part of the license fee. All technical support to Westell Licensee will be
the responsibility of Westell. If Westell requires Paradyne technical support
for Westell Licensee's DSL product, Paradyne support fee for on-site support at
Paradyne's facilities will be at a rate to be agreed upon but in no case less
than *.
5. Reporting DSL Transceiver Unit Shipments And *
Westell will be responsible to report DSL transceiver unit shipments and pay
*Westell Licensee. Westell
will provide Paradyne a quarterly transceiver unit shipment report for each
Westell Licensee that is independent from Westell's own DSL transceiver unit
shipment report. Westell will report transceiver unit shipments as defined in
Paragraph 17.0 of the BML agreement.
The *
defined in Exhibit F, Appendix F of the Agreement. Westell will
*Paradyne within 60 days following the end of a fiscal quarter for
all DSL transceiver units shipped by each Westell Licensee during the quarter.
Westell will notify each Westell Licensee with a quarterly update of the
GlobeSpan *provided to Westell by Paradyne. This
notification will not be later than 10 working days after Paradyne issues
*Westell. The notification will include
*for the current quarter and the worldwide volume
shipment of DSL transceivers up to and including the past quarter. Westell
shall maintain a file of such notices and make them available to Paradyne upon
request by Paradyne. The audit and other provisions of the BML, Sections 17.3
and 17.4, will be executed by Westell.
6. Procurement Of GlobeSpan Components
* Confidential treatment requested: material omitted has been filed separately
with the Securities and Exchange Commission.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
The Westell Licensee may source custom VLSI components from either Westell or
from Paradyne's GlobeSpan VLSI suppliers. Westell Licensee will have access to
worldwide volume VLSI pricing and will be informed of
*as all other GlobeSpan licensees. These agreements include
*.
7. Westell Licensee GlobeSpan Transceiver Unit Forecast
Westell will provide Paradyne a five (5) quarter rolling global quantity
forecast by quarter and by product category for Westell Licensee's HDSL, ADSL,
and SDSL units and for the quantity of * devices
over the five (5) quarter period. The forecast will be delivered to Paradyne
in a form reasonably acceptable to Paradyne within thirty (30) days following
the end of each quarter. This forecast will be used by Paradyne for business
planning purposes and is not a binding commitment on behalf of Westell Licensee
or Westell.
8. Public Release Of Westell Licensee Name
Paradyne has the right to publicly distribute the company name of Westell
Licensee as a licensee of Paradyne's GlobeSpan DSL technology. Public
information may include company name, type of GlobeSpan DSL technology (HDSL,
ADSL, SDSL), marketing contact name, and telephone and FAX number.
Unless otherwise required by law and then only after written notice to
Paradyne, Westell agrees to withhold any public announcement that Westell has
the rights to grant a BML for a minimum of 45 days after the completion of this
Exhibit H.
9. Paradyne And Westell Relationship With Westell Licensee
9.1 Marketing Relationship
* Confidential treatment requested: material omitted has been filed separately
with the Securities and Exchange Commission.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
Paradyne may or may not have engaged in business discussions with the
prospective Westell Licensee. Upon receiving a Notification Of Intent letter
from Westell as defined in Paragraph 2.3 of this Exhibit, Paradyne will
discontinue its marketing with the identified prospective Westell Licensee
until the Notification Of Intent Letter is executed.
In the event that Paradyne accepts the Notification Of Intent letter and
Westell completes a BML agreement with the Westell Licensee within 120 days of
the date of such acceptance, Paradyne thereafter agrees that it will not
independently solicit, or contact for the purpose of soliciting, Westell
Licensee without approval by or the request to do so by Westell (which approval
shall not be unreasonably withheld), so long as Westell is not in default of
its Agreement with Paradyne and Westell Licensee is operating under a valid BML
agreement. If a BML agreement is not executed within said 120 day period there
shall be no restrictions upon Paradyne with respect to such prospective Westell
Licensee, and by way of illustration and not limitation, Paradyne will have the
rights to initiate or continue marketing activity with the prospective Westell
Licensee.
In the event that this Agreement or the BML agreement is terminated with
Westell for any cause, Paradyne will have the right to directly license
GlobeSpan technology to Westell Licensee.
9.2 GlobeSpan Technology Representation
Westell agrees to make its best effort to promote GlobeSpan technology with
Westell Licensee and to keep Westell Licensee fully informed on the state of
the technology performance and advancements as so communicated to Westell by
Paradyne.
9.3 DSL Technology Transition Of Westell Licensee
In the event that Westell or Westell Licensee elects to transition DSL PRODUCT
development and manufacturing from
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
GlobeSpan DSL technology to alternative DSL transmission technologies, Westell
will inform Paradyne within five (5) working days after initiating or learning
of such technology transition. Paradyne reserves the rights to then solicit
Westell Licensee for the purposes of promoting GlobeSpan technology for
incorporation into Westell Licensee's DSL product line. If such transition is
initiated by Westell, Westell will not provide Westell Licensee with an
alternative DSL product design for a period of one (1) year after Paradyne has
been notified by Westell.
10. Term
This Exhibit will commence on the Addendum Effective Date and will continue
until all preexisting BML's are terminated as provided in this Exhibit or upon
the earlier termination of this Agreement as provided in this Agreement.
11. Termination
Any BML agreement with a Westell Licensee will terminate on the earlier of a
termination under Section 10 or a termination for any cause of the Agreement,
the termination of Westell's primary technology agreement with the Westell
Licensee pursuant to which the BML agreement is executed, or termination of the
BML for cause pursuant to the terms thereof. Westell covenants to Paradyne and
agrees that it will enforce the terms of the BML agreement, give notice of
breach and terminate said agreement if not cured in accordance with the
provisions of this Agreement or the BML agreement.
12. Definitions
DSL PRODUCT means a product incorporating Paradyne's Phase 3 GlobeSpan CAP DSL
transceiver technology based on Westell DSL designs which are licensed to
Westell Licensee by Westell. Paradyne's Phase 3 GlobeSpan technology uses
Paradyne's
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
* and * devices in addition to other non proprietary
components.
13. DISCLAIMER
(a) EXCEPT AS SPECIFIED IN SECTION 13(B) BELOW AND SECTION 6.2 OF THE
COOPERATION AND DEVELOPMENT AGREEMENT (BUT AS TO SUCH SECTION 6.2 ONLY TO THE
EXTENT OF A WESTELL CLAIM PERMITTED UNDER THE COOPERATION AND DEVELOPMENT
AGREEMENT) PARADYNE MAKES NO REPRESENTATION OR WARRANTIES, EXPRESSLY OR
IMPLIED, BY WAY OF EXAMPLE BUT NOT OF LIMITATION, PARADYNE MAKES NO
REPRESENTATIONS OR WARRANTIES OR MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR
PURPOSE, OR THAT THE USE OF THE GLOBESPAN DSL TECHNOLOGY WILL NOT INFRINGE ANY
PATENT OF ANY THIRD PARTY OR OTHER INTELLECTUAL PROPERTY RIGHT OF ANY THIRD
PARTY. PARADYNE SHALL NOT BE HELD TO ANY LIABILITY WITH RESPECT TO ANY CLAIM
BY WESTELL OR ITS LICENSEE OR THEIR OR ITS CUSTOMERS OR ANY OTHER THIRD PARTY
ON ACCOUNT OF OR ARISING FROM THE USE OF THE GLOBESPAN DSL TECHNOLOGY.
(b) PARADYNE REPRESENTS THAT AS OF THE DATE OF THIS EXHIBIT, IT HAS NO
KNOWLEDGE OF CAUSES OF ACTION AGAINST PARADYNE ALLEGING THAT THE USE BY
PARADYNE OF THE GLOBESPAN DSL TECHNOLOGY INFRINGES ANY PATENT RIGHTS OF A THIRD
PARTY.
IN WITNESS WHEREOF, the Parties hereto have executed this Addendum Agreement as
of the Addendum Effective Date.
AT&T PARADYNE CORPORATION WESTELL TECHNOLOGIES, INC.
By: /s/ Gabe Torok By: /s/ Robert D. Faw
Name: Gabe Torok Name: Robert D. Faw
Its: ATT Business Unit Director Its: Executive Vice President
and General Manager International Operations
* Confidential treatment requested: material omitted has been filed separately
with the Securities and Exchange Commission.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
TABLE 1
(REVISION 1-1/30/96)
RESTRICTED COUNTRY LIST
Restricted Country Comments
*
*
TABLE 2
RESTRICTED COMPANY DEFINITION
Company Category Definition of Restricted Company
1
*
2
*
* Confidential treatment requested: material omitted has been filed separately
with the Securities and Exchange Commission.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
3
*.
4
*.
* Confidential treatment requested: material omitted has been filed separately
with the Securities and Exchange Commission.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
ATTACHMENT A
WESTELL
BASIC MEMBER LICENSE AGREEMENT
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
WESTELL
BASIC MEMBER LICENSE AGREEMENT
CUSTOMER INFORMATION
(Please print or type)
Westell License Name: ____________________________________________
Customer Name: ____________________________________________
Phone Number: ____________________________________________
Fax Number: ____________________________________________
Mailing Address: ____________________________________________
Shipping Address: ____________________________________________
Billing Contact Name: ____________________________________________
Phone Number: ____________________________________________
Fax Number: ____________________________________________
Tech. Contact Name: ____________________________________________
Phone Number: ____________________________________________
Fax Number: ____________________________________________
GlobeSpan Transceiver Type: ____________________________________________
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
BASIC MEMBER LICENSE AGREEMENT
This Agreement is entered into as of __________, 199_ (the "Effective Date"),
by and between (WESTELL SUBSIDIARY NAME AND ADDRESS) ("Westell"), and COMPANY
NAME a corporation organized under the laws of the state of _________ with
offices at COMPANY ADDRESS ("WESTELL LICENSEE") .
Westell has licensed from AT&T Paradyne Corporation ("Paradyne") the rights to
certain carrierless amplitude/phase modulation ("CAP") transceiver technology
("GlobeSpan(TM) technology) under which it has the rights to sublicense such
technology for use in conjunction with its licensed technology to licensees
which license for manufacture and sale of a Westell designed CAP DSL (Digital
Subscriber Line) product ("PRODUCT"). Westell Licensee wishes to LICENSE FOR
MANUFACTURE and SELL a CAP DSL product design from Westell which incorporates
the GlobeSpan technology, and Westell is willing to sublicense to Westell
Licensee certain rights regarding such GlobeSpan technology.
In consideration of the mutual promises contained herein, Westell and Westell
Licensee agree as follows:
1. Grant of Licensee. Westell grants to Westell Licensee a personal and
non-exclusive license to use the GlobeSpan technology solely for the
development of, MANUFACTURE of, SALE and support of, and use of the
PRODUCT by Westell Licensee.
1.1 Subcontracting. Subcontracting and/or sublicensing by Westell
Licensee is prohibited and no rights thereto are granted under
this Agreement.
1.2 Procurement of Westell Approved Component Parts:
(a) Westell grants to Westell Licensee a personal and
non-exclusive right, as an attribute of the rights
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
granted in Section 1, to purchase the proprietary restricted components needed
to MANUFACTURE and SELL a GlobeSpan DSL transceiver for incorporation into a
PRODUCT.
1.3 Westell's Duties
(i) Request Paradyne to notify the suppliers of the GlobeSpan
proprietary restricted components that Westell Licensee
is authorized to purchase the components.
(ii) Technical Support per Section 2.
(iii) Notify Westell Licensee of the quarterly worldwide
GlobeSpan transceiver shipment volumes and
*.
(iv) Provide timely notice to Westell Licensee of GlobeSpan
product announcements including but not limited to
feature, function and performance advancements.
1.4 Westell Licensee's Duties
(i) Use the GlobeSpan technology only for the MANUFACTURE and
SELL of the licensed PRODUCT.
(ii) Directly source from Westell or Paradyne suppliers the
approved Westell component parts for use in PRODUCTs
MANUFACTURED by Westell Licensee.
(iii) Westell Licensee will provide Westell a five (5)
quarter rolling quarterly forecast by quarter for
PRODUCT to be shipped and for its forecasted
requirements of the * and
framer * devices. The
* Confidential treatment requested: material omitted has been filed separately
with the Securities and Exchange Commission.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
forecast shall be delivered to Westell in a form
reasonably acceptable to Westell within fifteen (15)
days following the end of each quarter. This
forecast shall be used by Westell at its discretion
for business planning purposes and is not a binding
commitment on behalf of Westell Licensee.
2. Technical Support
Westell shall provide Westell Licensee technical support, to the extent
specified in a separate agreement, for its PRODUCT design which is
licensed for MANUFACTURE and SELL from Westell.
3. Confidentiality. As used in this Agreement, "Confidential
Information" means this Agreement and any information which is
relating to GlobeSpan technology and which is (i) furnished to
Westell Licensee in tangible form and designated in writing as
"Proprietary" or "Confidential", whether in written or in machine
readable form, or (ii) disclosed orally or visually to Westell
Licensee, but only to the extent furnished by the disclosing party
in a writing designated as "Proprietary" or "Confidential" within
fifteen (15) days of such oral or visual disclosure. Such
information is Confidential Information whether acquired or
developed by Westell Licensee during its performance under this
Agreement, obtained from employees or otherwise learned. Except as
expressly authorized by Westell or by this Agreement, Westell
Licensee shall not divulge directly nor indirectly to any person or
entity or use of the Confidential Information.
3.1 Exceptions. The foregoing restrictions will not apply to
information that:
(a) is known to the non-disclosing Party at the time of
disclosure to such party by the other party,
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
(b) has become publicly known through no wrongful act of such
non-disclosing party,
(c) has been rightfully received from a third party without
restriction,
(d) has been developed by the non-disclosing party independently
without use of the other party's Confidential Information, or
(e) has been approved for release by written authorization of
Westell as applicable.
4. Term. This Agreement will commence on the Effective Date and will
continue for five (5) years unless earlier terminated as provided
in this Agreement.
5. Termination.
5.1 Termination for Cause by Either Party. Either party will have the
right to terminate this Agreement at any time if:
(a) The other party is in material breach of any warranty, term,
condition or covenant of this Agreement and fails to cure
that breach within thirty (30) days after receiving notice
of that breach and the other party's intention to terminate
or if such breach cannot reasonably be cured within such
30-day period, the breaching party has not within such
30-day period diligently pursued a cure and then cured the
breach in any event within ninety (90) days after receiving
such notice;
(b) The other party is in material breach of any warranty, term,
condition or covenant of Section 3; or
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
(c) The other party (i) becomes insolvent; (ii) fails to pay its
debts or is subject to its obligations in the ordinary
course of business as they mature; or (iii) admits in
writing its insolvency or inability to pay its debts or
perform any voluntary or involuntary proceeding in
bankruptcy, liquidation, dissolution, receivership,
attachment or composition or general assignment for the
benefit of creditors; provided that if such proceeding is
commenced involuntarily it has not been dismissed, bonded or
stayed within sixty (60) days after it begins.
(d) The GlobeSpan Cooperative And Development Agreement between
Westell and Paradyne is terminated.
Termination will become effective under Section
5.1(a) automatically upon expiration of the cure period in
the absence of a cure, and under Section 5.1(b) and (c)
immediately upon the non-terminating party's receipt of a
notice of termination at any time after the specified event
or the failure of the specified proceeding to be timely
dismissed.
5.2 Effect of Termination. Upon any termination of this Agreement,
Westell Licensee immediately will deliver to Westell all
Confidential Information in its possession and will destroy all
documents or electronic media which contains the Confidential
Information; provided, however, that Westell Licensee shall be
allowed to retain sufficient copies of such materials containing
Confidential Information as are reasonably required to allow
Westell Licensee to complete work-in-process for PRODUCT and to
support PRODUCT that has already been sold as of the date of
termination of this Agreement or that will be sold as the work-in-
process is completed. Also upon
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
termination of this Agreement, each Party will be released from all
obligations and liabilities to the other under this Agreement
occurring or arising after the date or such termination, except
that any termination of this Agreement will not relieve Westell
Licensee of its obligation under Section 3 hereof or any purchase
order, nor will any such termination relieve Westell Licensee or
Westell from any liability arising from any breach of this
Agreement. Neither party will be liable to the other for damages
of any sort solely as a result of terminating this Agreement in
accordance with its terms. Termination of this Agreement will be
without prejudice to any other right or remedy of either party.
(a) Survival of Westell Licensee's and Westell's Obligations. Any
termination by Westell pursuant to Section 5.1 of this Agreement
shall not affect Westell Licensee's rights and obligations with
respect to any article made or in the process of being made with
the use of any of the GlobeSpan DSL technology prior to such
termination. Westell Licensee's and Westell obligations under
Section 3, 6, 10 & 17 of the Agreement shall survive and continue
after any termination of rights under the Agreement.
6. GlobeSpan License Options
This BASIC MEMBER LICENSE Agreement is for use by Westell Licensee to
LICENSE FOR MANUFACTURE and SELL a PRODUCT based on a DSL product design
by Westell. Should Westell Licensee choose to independently design its
own product within which it desires to incorporate the GlobeSpan
technology or should the Cooperative Development Agreement between
Westell and Paradyne be terminated, nothing in this Agreement or any
other agreement between Westell and Westell Licensee shall operate to
preclude Westell Licensee from obtaining a DSL product design from a
GlobeSpan technology licensee other than Westell or an independent
GlobeSpan technology license directly from Paradyne.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
7. Relief from Obligations. Except for any payment hereunder neither
party will be deemed in default of this Agreement to the extent
that performance of its obligations or attempts to cure any breach
are delayed or prevented by reason of any act of God, fire, natural
disaster, accident, act of government, strikes, shortages of
material or supplies or any other cause beyond the reasonable
control of such party ("Force Majeure"), provided that such party
gives the other party written notice thereof promptly and, in any
event, within fifteen (15) days of discovery thereof and uses good
faith efforts to so perform or cure. In the event of such a Force
Majeure, the time for performance or cure will be extended for a
period equal to the duration of the Force Majeure but not in excess
of six (6) months.
8. Advertising And Other Promotion. Westell Licensee agrees that the
GlobeSpan trademark name and logo will be included in all data
sheets and marketing collateral material which describes and/or
references the PRODUCT or the GlobeSpan DSL transmission technology
used in connection with Westell Licensee's DSL PRODUCT. Westell
Licensee agrees that it will display the GlobeSpan trademark only
in such form or manner as will be specifically approved by Westell.
Westell Licensee will cause to appear on all materials or
documentation with which the GlobeSpan trademark is used, such
legends, markings and notices as Westell may request in order to
give appropriate notice of any trademark rights therein.
Westell Licensee grants Westell and Paradyne permission to publicly
announce it as a Licensee of the GlobeSpan DSL technology and to
distribute information to include company name, type of GlobeSpan
technology, marketing contact name, telephone and fax number to their
prospective customers and licensees. Other than this, without the prior
written consent of Westell, Westell Licensee may not use any trademarks,
service marks, trade names, logos or other commercial or product
designations of Westell, including,
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
but not limited to, in connection with any press releases, promotions,
advertisements or exhibitions. Westell Licensee may not make press or
other announcements or releases relating to this Agreement and the
transactions which are the subject of this Agreement without the prior
written approval of Westell.
9. Quality Control.
Westell Licensee shall apply the GlobeSpan trademark only to PRODUCTS
which have been manufactured in accordance with the standards of quality
in materials, design, workmanship, use, advertising and promotion set
forth in the control specifications which are annexed to this Agreement
as Schedule B ("CONTROL SPECIFICATIONS"). The CONTROL SPECIFICATIONS are
furnished in confidence pursuant to Section 3. Westell (accompanied by
Paradyne as requested) shall have the right at any time to conduct during
regular business hours an examination of PRODUCTS manufactured by Westell
Licensee (including those assembled or tested) at Westell Licensee's
facilities to determine compliance of such PRODUCTS with the applicable
CONTROL SPECIFICATIONS. If at any time such PRODUCTS shall, in sole
opinion of Westell or Paradyne, fail to conform with the standards of
quality in materials, design, workmanship, use, advertising, and
promotion set forth in such CONTROL SPECIFICATIONS, Westell or Paradyne
shall notify Westell Licensee. Upon such notification Westell Licensee
shall promptly cease to use the GlobeSpan trademark with such PRODUCTS
and shall neither sell nor ship such nonconforming PRODUCTS until the
standards of quality contained in the applicable CONTROL SPECIFICATIONS
have been met to the satisfaction of Westell and Paradyne.
Westell Licensee agrees to furnish to the Quality Control Representative
to be designated by Westell, samples of Westell Licensee manufactured
PRODUCT used with the GlobeSpan trademark, as Westell may request from
time-to-
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
time, for inspections and tests to assure conformance of the PRODUCTS
with the applicable CONTROL SPECIFICATIONS. Upon completion of such
inspections and tests, Westell shall return such inspected and tested
samples, in their current condition. The transportation cost for
shipment of the samples to Westell and for return of the samples to
Westell Licensee as well as the risk of loss and damage to such samples
shall be borne by Westell Licensee.
10. Assignment. The rights and liabilities of the parties under this
Agreement will bind and inure to the benefit of the parties'
respective successors; provided that Westell Licensee may not
assign or delegate its obligations under this Agreement, either in
whole or in part, without the prior written consent of Westell.
Any attempted assignment or delegation without consent will be
void.
11. Export. Each party shall comply with the applicable export control
laws and regulations of the United States of America applicable to
the export of the PRODUCTs, components, specifications or any
written or oral information related thereto, and technology and
shall obtain any permits and licenses required for the export or
disclosure of controlled products, information and/or technology.
12. Notices. All notices, reports, requests, acceptances and other
communications required or permitted under this Agreement will be
in writing. They will be deemed given
(a) when delivered personally,
(b) when sent by confirmed fax or telex,
(c) five days after having been sent by commercial overnight courier
with written verification of receipt, or
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
(d) two weeks after having been sent by registered or certified
airmail, return receipt requested, postage prepaid, or upon actual
receipt thereof, whichever first occurs.
All communications will be sent to the receiving Party's address as set forth
below or to such other address that the receiving Party may have provided for
purpose of notice as provided in this Section.
To Westell:
To Westell Licensee:
13. Governing Law. This Agreement shall in all respects be governed by
and construed under the laws of the State of Florida.
13.1 Arbitration
Any dispute, controversy or claim arising out of or relating to this
Agreement, or the breach, termination or validity thereof (excluding the
right of a party to seek an injunction in a court of competent
jurisdiction against the violation of any obligation of such party
hereunder) if not resolved within sixty days of a party's notice to the
other party of such dispute shall be finally settled by arbitration
conducted in English in Chicago, Illinois, U.S.A. expeditiously in
accordance with the rules of the United Nations Commission for
International Trade by a sole
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
arbitrator selected by mutual agreement of the parties, or in the absence
of such agreement within thirty (30) drays after the end of the sixty day
period, selected by the Center for Public Resources. The arbitration
shall be governed by the United States Arbitration Act and judgment may
be entered by any court having jurisdiction thereof. The arbitrator is
not empowered to award damages in excess of compensatory damages, and
each party hereby irrevocably waives any damages in excess of
compensatory damages.
14. Severability
If any provision of this Agreement, or the application thereof, shall for
any reason and to any extent be determined by a court of competent
jurisdiction to be invalid or unenforceable under applicable law, the
remaining provisions of this Agreement shall be interpreted so as best to
reasonably effect the intent of the parties. The parties further agree
to replace any such invalid or unenforceable provisions with valid and
enforceable provisions designed to achieve, to the extent possible, the
business purposes and intent of such invalid and unenforceable
provisions.
15. Amendments, Modifications and Waivers
No delay or failure by either party to exercise or enforce at any time
any right or provision of this Agreement will be considered a waiver
thereof or of such party's right thereafter to exercise or enforce each
and every right and provision of this Agreement. No single waiver will
constitute a continuing or subsequent waiver. No waiver, modification or
amendment of any provision of this Agreement will be effective unless it
is in writing and signed by the parties, but it need not be supported by
consideration.
16. Equitable Relief
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
Because each party will have access to and become acquainted with
confidential and proprietary information of the other, the unauthorized
use of disclosure of which would cause irreparable harm and significant
injury which would be difficult to ascertain and which would not be
compensable by damages alone, each party agrees that the other party will
have the right to enforce this Agreement and any of its provisions by
injunction, specific performance or other equitable relief without
prejudice to any other rights and remedies that it may have for breach of
this Agreement.
17. Fees and Payments
17.1 GlobeSpan DSL Basic Member License Fee:
All license fee payments payable to Westell for the GlobeSpan
technology are specified in Schedule A attached hereto.
17.2 GlobeSpan DSL Transceiver *:
All license * Westell related to this
Agreement are the responsibility of Westell Licensee. Westell and
Westell Licensee agree
*. Westell agrees to provide a
written statement to Westell Licensee of
*, and will provide
* which Westell Licensee
distributes during the then current quarter. Such statement will
be provided within 45 days of the closing date of the previous
quarter and will *.
17.3 Quarterly Reports and Terms *
* Confidential treatment requested: material omitted has been filed separately
with the Securities and Exchange Commission.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
(a) Within thirty (30) days after the end of each quarterly
period ending on March 31st, June 30th, September 30th and
December 31st, commencing with the quarterly period during
which the Agreement becomes effective, Westell Licensee
shall furnish to Westell a statement, in form reasonably
acceptable to Westell, certified by a responsible official
of Westell Licensee, showing all ITEMS SUBJECT TO FEE, by
classes of PRODUCT, which were distributed during such
quarterly period, fees applicable to such ITEMS SUBJECT TO
FEE that have been distributed, and credits, as set forth in
Section 17.4 hereof, which are being applied to the
quarterly payment.
(b) Within such thirty (30) days, Westell Licensee shall,
irrespective of its own business and accounting methods, pay
in United States dollars to Westell the fees payable for
such quarterly period as shown in the statement required by
the Agreement. Such statement, together with the payment
for the fees shown therein, shall be sent to Westell at its
address specified in the Agreement.
(c) Overdue payments hereunder shall be subject to a late
payment charge calculated at an annual rate of three percent
(3%) over the prime rate (as posted in the Wall Street
Journal) on a daily basis during delinquency. If the rate
of interest exceeds the maximum permitted by law, such rate
of interest shall be reduced to the maximum amount allowed
by law.
(d) Westell reserves the right to request estimated 4Q shipment
information of all ITEMS SUBJECT TO FEE by type of DSL
PRODUCT, be provided by Company, in a form reasonably
acceptable to Westell, by
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
December 15 to provide for year end accounting and business
planning. Reporting of shipment of ITEMS SUBJECT TO FEE
* will continue per paragraphs 17.3(a) and
17.3(b).
(e) Westell shall have the right to disclose all quarterly
reports, forecasts, and results of audits to Paradyne.
17.4 Records and Adjustments
(a) Westell Licensee shall keep full, clear and accurate records
with respect to all ITEMS SUBJECT TO FEE and shall furnish
no more frequently than twice per year any information which
Westell may reasonably request in writing from time to time
to enable Westell to ascertain (i) which articles (and
maintenance parts therefor) sold, leased or put into use by
Westell Licensee are subject to the payment of fees to
Westell, and (ii) the proper fee amounts due hereunder on
account of the selling, leasing or putting into use of ITEMS
SUBJECT TO FEE. Subject to its obligations of
confidentiality under the Agreement, Westell shall have the
right through its accredited auditors and at its cost to
make examinations, during normal business hours and on at
least five day's written notice to Westell Licensee, of all
records and accounts bearing upon the amounts of fees
payable to it under this agreement. Prompt adjustment shall
be made by the proper party to compensate for any errors or
omissions disclosed by any such examination.
(b) Independent of any such examination, Westell will credit to
Westell Licensee (i) the amount of any overpayment made in
error and (ii) the amount of any payment made for which
PRODUCT was subsequently returned and a full credit or
refund issued which is identified and fully explained in a
written notice to Westell delivered within twelve (12)
months after the due date of the
* Confidential treatment requested: material omitted has been filed separately
with the Securities and Exchange Commission.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
payment which included such alleged overpayment, provided
that Westell is able to verify, to its own satisfaction, the
existence and extent of the overpayment.
(c) No refund, credit or other adjustment of fee payments shall
be made by Westell except as provided in this Section 17.4.
Rights conferred by this Section 17.4 shall not be affected
by any statement appearing on any check or other document
except to the extent that any such right is expressly waived
or surrendered by a party having such right and signing such
statement.
17.5 Taxes
Westell Licensee shall pay any tax, duty, levy, customs fee, or
similar charge ("taxes"), including interest and penalties thereon,
however designated, imposed as a result of the operation or
existence of this Agreement, including taxes which Westell Licensee
is required to withhold or deduct from payments to Westell, except
(i) net income taxes imposed upon Westell by any governmental
entity within the United States, and (ii) net income taxes imposed
upon Westell by jurisdictions outside the United States which are
allowable as a credit against the United States Federal income tax
of Westell or any of its affiliates. In order for the exception in
(ii) to be effective, Westell Licensee must furnish Westell any
evidence required by the United States taxing authorities to
establish that such taxes have been paid.
18. ENTIRE AGREEMENT
18.1 Agreement Prevails. The terms and conditions of the Agreement
shall prevail in the event of any conflicting terms or legends
which may appear on any purchase order or other document used by
Westell Licensee to carry out the terms of this Agreement.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
18.2 Entire Agreement. This is the entire agreement between the parties
with respect to the sublicensing of GlobeSpan DSL technology but is
executed pursuant to other agreements between the parties regarding
licensing for MANUFACTURE and SELL of the PRODUCT, which must be
read in conjunction with this Agreement. In the event of a
conflict between this Agreement and those other agreements, this
Agreement shall prevail. Except as provide in previous sentences,
this Agreement supersedes all prior agreements, proposals, or
understandings between the parties, whether oral or in writing,
with respect to the licensing of GlobeSpan DSL technology.
18.3 Nothing Construed. Except as specified in the Agreement, nothing
in this Agreement or in any implementing document shall be
construed as:
(i) an additional obligation upon Westell to furnish any
person, including Westell Licensee, any assistance
of any kind whatsoever, or any information or to
revise, supplement or elaborate upon the Westell
GlobeSpan DSL technology; or
(ii) providing or implying any arrangement or
understanding that Westell, its licensor or its or
their affiliates will make any purchase or lease.
19. DISCLAIMER
(a) EXCEPT AS SPECIFIED IN SECTION 19(B) NEITHER WESTELL OR ITS
LICENSOR, PARADYNE, MAKES ANY REPRESENTATION OR WARRANTIES,
EXPRESSLY OR IMPLIED, BY WAY OF EXAMPLE BUT NOT OF
LIMITATION, MAKES NO REPRESENTATIONS OR WARRANTIES OR
MERCHANTABILITY OF FITNESS FOR ANY PARTICULAR PURPOSE, OR
THAT THE USE OF THE GLOBESPAN
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
DSL TECHNOLOGY WILL NOT INFRINGE ANY PATENT OF ANY THIRD
PARTY OR OTHER INTELLECTUAL PROPERTY RIGHT OF ANY THIRD
PARTY. NEITHER WESTELL NOR PARADYNE SHALL BE HELD TO ANY
LIABILITY WITH RESPECT TO ANY CLAIM BY WESTELL LICENSEE OR
ITS CUSTOMERS OR ANY OTHER THIRD PARTY ON ACCOUNT OF OR
ARISING FROM THE USE OF THE GLOBESPAN DSL TECHNOLOGY.
(b) WESTELL REPRESENTS THAT AS OF THE DATE OF THIS AGREEMENT, IT
HAS NO KNOWLEDGE OF CAUSES OF ACTION AGAINST IT OR ITS
LICENSOR ALLEGING THAT THE USE BY WESTELL OF THE GLOBESPAN
DSL TECHNOLOGY INFRINGES ANY PATENT RIGHTS OF A THIRD PARTY.
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
BASIC LICENSE PROVISION
Any term in capital letters used in the Agreement shall have the meaning
specified below:
ITEM SUBJECT TO FEE means any article which is MANUFACTURED with the use of any
of the GlobeSpan DSL technology other than (i) any maintenance parts and (ii)
demonstration models, PRODUCTs and articles produced in the course of, or
intended for use in connection with, research, development or experimental
undertakings controlled by Westell Licensee, or product acceptance testing by
the Westell Licensee's customers where product is provided at no charge to
Westell Licensee's customer.
LICENSE FOR MANUFACTURE means that Westell Licensee builds a PRODUCT using a
design which it acquires by license agreement from Westell. Design and
technical supports is delivered by Westell.
SELL OR SALE means that Westell Licensee sells under its own name and as its
own product the PRODUCT which it acquired by LICENSE FOR MANUFACTURE from
Westell or Westell Licensee sells a Westell PRODUCT whether Westell Licensee or
Westell manufactured it.
MANUFACTURE means the Westell Licensee makes the PRODUCT in its own factory or
production facility.
SUBSIDIARY of a Westell Licensee means a corporation or other legal entity (i)
the majority of whose shares or other securities entitled to vote for election
of directors (or other managing authority) is now or hereafter controlled by
such Westell Licensee either directly or indirectly; or (ii) which does not
have outstanding shares or securities but the majority of whose ownership
interest representing the right to manage such corporation or other legal
entity is now or hereafter owned and controlled by such Westell Licensee either
directly or indirectly; but any such corporation or other legal entity shall
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CONFIDENTIAL TREATMENT REQUESTED FOR PORTIONS OF THIS DOCUMENT. PORTIONS FOR
WHICH CONFIDENTIAL TREATMENT IS REQUESTED ARE NOTED.
be deemed to be a SUBSIDIARY of such Westell Licensee only as long as such
control or ownership and control exists.
PRODUCT means a DSL (Digital Subscriber Line) incorporating GlobeSpan DSL
transceiver technology and a DSL product design from Westell.
DISTRIBUTED means that Westell Licensee has shipped PRODUCT(s) to Westell
Licensee's customer(s) that would be considered an ITEM SUBJECT TO FEE.
GLOBESPAN TRANSCEIVER TECHNOLOGY means the AT&T Paradyne implementation of CAP
transceiver technology utilizing the Phase 3 design and the STARLET and SLADE
VLSI devices.
GLOBESPAN(TM) is a trademark of AT&T.
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement as of the
Effective Date.
Westell International, Inc. Westell Licensee
By:___________________________ By:___________________________
Its:__________________________ Its:__________________________
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