Product License and Collaboration Agreement - Intel Corp. and @Road Inc.
Product License
And
Collaboration
Agreement
Between
Intel Corporation
And
@Road, Inc.
January 28, 2000
CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS DOCUMENT HAVE
BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION.
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Table of Contents
Section Page
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1. Definitions....................................................... 3
2. Responsibilities of the Parties................................... 3
3. License Grants and Terms.......................................... 4
4. Ownership......................................................... 5
5. Compensation...................................................... 6
6. Maintenance and Support Obligations............................... 7
7. Warranties........................................................ 7
8. Indemnification................................................... 8
9. Term and Termination.............................................. 9
10. Confidentiality and Non-Disclosure................................10
11. General Provisions................................................10
Exhibits
Exhibit "A" - @ROAD Products and Specifications
Exhibit "B" - Marketing Collaboration
Exhibit "C" - RESERVED
Exhibit "D" - RESERVED
Exhibit "E" - Certificate of Originality
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This agreement (hereinafter referred to as the or this "Agreement") is entered
this 28 day of January, 2000 (hereinafter referred to as the "Effective Date"),
by and between INTEL Corporation, a Delaware corporation having a place of
business at 5000 W. Chandler Blvd, Chandler, Arizona 85226 ("hereinafter
referred to as "INTEL") and @Road, Inc., a California company with a principal
place of business at 47370 Fremont Boulevard, Fremont, CA 94538 (hereinafter
referred to as "@ROAD"). INTEL and @ROAD may be referred to herein in the
singular or plural as a Party or the Parties.
1. DEFINITIONS
1.1 "Documentation" means manuals and other written materials supplied to INTEL
by @ROAD, in any medium, relating maintenance, installation, operation, or
training of the @ROAD Products which @ROAD supplies to customers in the
normal course of business.
1.2 "INTEL Products" means all hardware and Software products design and
manufactured by or for INTEL based upon the @ROAD Hardware Design or @ROAD
Software, including derivatives created pursuant to this Agreement, and
marketed, sold, distributed, licensed, or otherwise transferred by INTEL in
the normal course of business for automotive applications.
1.3 "@ROAD Hardware" means the GPS chip set defined in Exhibit A, and future
semiconductor component or components used by @ROAD in it's products which
offer the same or similar functionality to the extent that @ROAD has the
right to grant INTEL the rights set forth herein.
1.4 "@ROAD Hardware Design" means the design for the @ROAD Hardware described
in the Manufacturing Package.
1.5 "@ROAD Products" means the @ROAD Software and @Road Hardware.
1.6 "@ROAD Software" means all Software, including all Updates and
Enhancements, in Object Code and Source Code formats, necessary to operate
the @ROAD Hardware, and all future software from @ROAD which offer the same
or similar functionality.
1.7 "Manufacturing Package" means the manufacturing documentation for the @ROAD
Hardware provided by @ROAD to Intel pursuant to Section 2.2 below, as
identified in Exhibit A attached hereto, including revisions to other
manufacturing documentation ("Engineering Change Order" or "ECO") made by
@ROAD.
1.8 "Object Code" means computer-programming code in machine-readable and
machine-executable form.
1.9 "Software" means computer-programming code in Object Code and Source Code
formats.
1.10 "Source Code" means computer-programming code in human-readable form and
related design documentation, including all comments, build tools,
libraries, and any procedural code.
1.11 "Updates and Enhancements" means all modifications, improvements, or
additions to @ROAD Software that corrects the @ROAD Software or enhances
the @ROAD Software's functionality, and new releases of such product made
available by @ROAD to at least two other third parties in Object Code and
Source Code formats.
2. Responsibilities of the Parties
2.1 @ROAD 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. Prior to undertaking such
customization or engineering activity, @ROAD and INTEL will agree in
writing upon the terms under which such activity will be conducted and the
non-recurring engineering charges to be paid by INTEL for such activity as
an amendment to this Agreement. As a
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minimum, @ROAD agrees that all Intellectual property developed by
@ROAD 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.
2.2 @ROAD will deliver to Intel the Manufacturing Package and @ROAD
Software in a format or formats reasonably satisfactory to INTEL not
less than 90 calendar days from the Effective Date.
2.3 @ROAD will deliver with @ROAD Software and any and all Updates and
Enhancements thereof with a Certificate of Originality in the format
set forth in Exhibit E for each version of @ROAD Software and/or each
Update and Enhancement. Failure by @ROAD to deliver Certificates of
Originality shall be deemed for purposes of warranties set forth in
Section 7.5 that such Licensed Product is delivered free of any third-
party software or content.
2.4 If @ROAD makes any pre-production release of the @ROAD Products, the
Manufacturing Package, including any Update and Enhancement to @ROAD
Software or modifications or engineering change orders the
Manufacturing Package, it will deliver such alpha or beta version or
pre-production release to INTEL within a reasonable time following
internal release, but in no event later than delivered by @ROAD to any
other customer.
2.5 Direct communication between INTEL's and @ROAD's technical
representatives will be ongoing during the term of this Agreement.
However, communication with INTEL's technical representatives may be
limited at INTEL's sole discretion. Terms and conditions regarding
support for a technical information or assistance may be specified
under a separate written agreement between INTEL and @ROAD. Nothing
herein shall be construed as obligating INTEL to provide a particular
level of support to @ROAD.
2.6 INTEL and @ROAD will engage in the collaborative marketing activities
set forth in Exhibit B.
2.7 INTEL will make available to @ROAD INTEL Products which INTEL sells to
two or more third parties at prices as favorable to @ROAD as paid by
other similarly situation customers, timing, volume, and
specifications considered.
3. LICENSE GRANTS AND TERMS
3.1 License Grants
--------------
3.1.1 Subject to the terms and conditions of this Agreement. @ROAD grants to
INTEL a worldwide, non-exclusive, perpetual, irrevocable (unless
terminated in accordance with Section 9.2 (b) of this Agreement),
royalty-free license, with rights to sublicense pursuant to Section
3.2.2. under copyrights, trade secrets and any other intellectual
property rights in the Manufacturing Package and @ROAD Software to
use, copy, have copied, create derivatives of the Manufacturing
Package and/or @ROAD Software, without limitation.
3.1.2 Subject to the terms and conditions of this Agreement, @ROAD grants to
INTEL a worldwide, non-exclusive, perpetual, irrevocable (unless
terminated in accordance with Section 9.2(b) of this Agreement),
royalty-free license, with rights to sublicense pursuant to Section
3.2.2, under any or all @ROAD copyrights, trade secrets, patents, and
any other Intellectual property rights in the @ROAD Software to use,
copy, have copied, import, distribute, perform or display or otherwise
transfer @ROAD Software, and/or any derivative or modification thereof
created by Intel, it's employees, contractors, agents, or
representatives pursuant to the license grant in Section 3.1.1 of this
Agreement, in Object Code format, for, with, or as part of Intel
Products without limitation.
3.1.3 Subject to the terms and conditions of this Agreement, @ROAD grants to
INTEL a worldwide, non-exclusive, perpetual, irrevocable (unless
terminated in accordance with Section 9.2 (b) of this Agreement),
royalty-bearing license, with rights to sublicense pursuant to Section
3.2.2, under any or all @ROAD copyrights, trade secrets, patents and
any other intellectual property right in the
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@ROAD Hardware to use, make, have made, sell, offer to sell, import,
distribute, perform or display or otherwise transfer Intel Products,
alone or in combination with other products, without limitation.
3.1.4 Subject to the terms and conditions of this Agreement, @ROAD grants
to INTEL a worldwide, non-exclusive, perpetual (unless terminated in
accordance with Section 9.2 (b) of this Agreement) royalty-free
license, with rights to sublicense pursuant to 3.2.2, under copyrights
in the Documentation which @ROAD owns or has authority to grant
licenses of the scope set forth herein to copy, have copied, create
derivatives of, modify, distribute, perform, or display the
Documentation and copies and derivatives thereof, in whole or in part,
without limitation.
3.2 General License Terms
---------------------
3.2.1 @ROAD waives on its behalf and on behalf of its subcontractors,
vendors, contractors, suppliers, and consultants any and all moral
rights in the Manufacturing Package and Documentation.
3.2.2 INTEL may sublicense its rights under Section 3.1.1, 3.1.3 and 3.1.4
above to contractors performing services on behalf INTEL and under
Section 3.1.2 to customers under terms no less restrictive or
enforceable than set forth herein.
3.2.3 Notwithstanding any other provision hereof and without limiting the
obligations of contractors with respect to confidentiality under
Section 3.2.2. INTEL's access to the Manufacturing Package and
Documentation 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
of INTEL or contractors for INTEL who have had access to Manufacturing
Package and/or Documentation from drawing upon or using any skills,
knowledge, talent or experience of a general nature acquired in the
course of working with the Manufacturing Package and/or Documentation.
This Agreement does not preclude INTEL 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.
3.2.4 Except as expressly set forth herein, neither Party grants or conveys
any right, title, or interest in intellectual property, whether
express, implied, statutory 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, @ROAD or @ROAD'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 @ROAD Products developed, authored, or created by @ROAD
or @ROAD's employees, suppliers, contractors, agents, or
representatives.
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 derivatives of the @ROAD Products developed,
authored, or created by INTEL or INTEL's employees, suppliers,
contractors, agents, or representatives.
4.3 @ROAD and INTEL will jointly own, without rights of accounting, any
intellectual property, including, without limitation, patents,
copyrights, trade secrets and other types or forms of Intellectual
property, in derivatives of the @ROAD Products authored, created, or
reduced to practice with the subsequent participation of both parties,
their employees, suppliers, contractors, agents, or representatives.
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5. COMPENSATION
5.1 INTEL will reimburse @ROAD's costs of transferring the Manufacturing
Package and @ROAD Software to INTEL under this Agreement up to a maximum of
one hundred thousand dollars ($100,000) US. Payment will be made via
certified check or wire transfer within 45 calendar days following the
close of Intel manufacturing quarter in which transfer of the Manufacturing
Package and @ROAD Software occurs.
5.2 INTEL and @ROAD agree that INTEL will pay to @ROAD a royalty for each unit
of Intel Product sold, distributed or otherwise transferred by INTEL in an
amount not-to-exceed [*] US to be negotiated within forty-five (45)
calendar days following the Effective Date. If the Parties are unable in
good faith to negotiate a royalty amount, the royalty for each unit of
INTEL Product sold, distributed, or otherwise transferred by INTEL will be
the not-to-exceed amount set forth above.
5.3 INTEL will make payment of the royalty described in Section 5.2 within
forty-five (45) calendar days following close of the INTEL manufacturing
quarter in which the INTEL Product is sold, distributed, licensed, or
otherwise transferred by INTEL.
5.4 For the avoidance of doubt, INTEL Products and Updates and Enhancements
distributed, licensed or otherwise transferred by INTEL free of charge for
promotional or design-in activities, including for use internal to INTEL,
and alpha, beta, prototype, customer evaluation, and demonstration versions
of INTEL Products and Updates and Enhancements, are exempt from any royalty
fees.
5.5 INTEL will submit to @ROAD quarterly, within forth-five days following the
close of each INTEL manufacturing quarter, a royalty report identifying the
quantity of INTEL Products sold, distributed, or otherwise transferred by
INTEL for revenue during the INTEL manufacturing quarter, together with a
certified check or wire transfer representing royalties, if any, owed by
INTEL in connection therewith.
5.6 All reports and royalty payments, whether prepaid or recurring, will be
sent by INTEL to @ROAD as follows:
Reports/Certified Check Wire Transfer Instructions
@ROAD, Inc. To be provided by @ROAD
47370 Fremont Boulevard
Fremont, CA, 94538
Attention: Office of Controller
5.7 INTEL will keep data containing data reasonably required for verification
of the royalty fees to be paid. If @ROAD reasonably believe that INTEL's
payments are inaccurate, @ROAD, at @ROAD's own expense, may select an
independent auditor (agreeable to INTEL) to audit the relevant INTEL
records relating to the number of copies distributed by INTEL solely at
INTEL premises and only during normal INTEL business hours. Such auditor
shall be required to execute an appropriate non-disclosure agreement as a
condition to access to INTEL data and will be permitted to report to @ROAD
only the number of units of @ROAD Hardware actually distributed, and the
amount due and payable to @ROAD. @ROAD will hold such information in
confidence for INTEL and will not disclose such information to any third
party without the prior written consent of INTEL. Audits will occur not
more than once each twelve (12) calendar month period, and will be limited
in scope to the period since the previous audit, if any, or a period of the
twelve (12) calendar months prior to the audit, whichever is shorter. @ROAD
shall bear the cost
* CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION.
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of such audits. If such audit discloses an underpayment, INTEL shall
promptly pay the underpayment to @ROAD.
5.8 All payments shall be made free and clear without deduction for any and all
present and future taxes imposed by any taxing authority. In the event that
@ROAD is prohibited by law from making such payments unless such deductions
are made or withheld therefrom, then @ROAD shall pay such additional
amounts as are necessary in order that the net amounts received by INTEL,
after such deduction or withholding, equal the amounts which would have
been received if such deduction or withholding had not occurred. @ROAD
shall promptly furnish INTEL with a copy of an official tax receipt or
other appropriate evidence of any taxes imposed on payments made under this
Agreement, including taxes on any additional amounts paid. In cases other
than taxes referred to above, including but not limited to sales and use
taxes, stamp taxes, value added taxes, property taxes and other taxes or
duties imposed by any taxing authority on or with respect to this
Agreement, the costs of such taxes or duties shall be borne by @ROAD. In
the event that such taxes or duties are legally imposed initially on INTEL
or INTEL is later assessed by any taxing authority, then INTEL will be
promptly reimbursed by @ROAD for such taxes or duties plus any interest and
penalties suffered by INTEL.
5.9 Except as specifically set forth in this Section 5. or unless otherwise
agreed by the Parties in writing, INTEL will owe @ROAD no royalty or other
compensation for performance by either Party of this Agreement, including,
without limitation, the exercise by INTEL of the license grants set forth
in Section 3 this Agreement.
6. MAINTENANCE AND SUPPORT OBLIGATION
6.1 @ROAD will assign a technical manager to ensure timely and effective
communication of support and maintenance issues with INTEL. As a minimum,
such technical contact will be available @ROAD's normal business hours to
receive and act upon INTEL's maintenance and support requests.
6.2 @ROAD will immediately notify INTEL of any bugs, errors, or errata in @ROAD
Products and/or errors in Manufacturing Package as they become known or
suspected. Without limiting the foregoing, @ROAD will give INTEL written
notification of bugs, errors, or errata in the @ROAD Products and/or
Manufacturing Package, with preliminary analysis of the bug, error, or
errata within five (5) calendar days, including, without limitation the
nature of the bug, error, or errata, any patches or work arounds, and the
expected corrective action date. @ROAD will give INTEL regular (not less
than weekly) written updates on status of failure analysis and corrective
action and final written report when failure analysis is complete and
corrective action is implemented.
6.3 @ROAD will deliver to Intel Updates and Enhancements within a reasonable
time following internal release, but in no event later than the earlier of
ten (10) calendar days following internal release or delivery by @ROAD to
any other customer or licensee.
6.4 @ROAD will deliver to Intel engineering changes, corrections, or revisions
to the Manufacturing Package not later than internal release to it's
internal or external manufacturing lines.
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 @ROAD warrants and represents that it has all right, title, and interest
and/or license rights in the @Road Products necessary to grant the licenses
set forth herein and has not taken any action or suffered any action to be
taken with respect to the @ROAD Products which would restrict or affect the
rights of INTEL and its sublicensees hereunder.
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7.3 @ROAD warrants and represents that no third party has any ownership right
in, title to, or lien on any Intellectual property in the Manufacturing
Package and/or @ROAD Products licensed under this Agreement to the best of
its knowledge and belief.
7.4 @ROAD warrants and represents that the Manufacturing Package contains all
information and know-how used by @ROAD or its foundries to manufacture of
the @ROAD Products. Furthermore, @ROAD warrants and represents that the
Manufacturing Package contains all documentation necessary for a person
reasonably skilled in the design and manufacture of semiconductor component
or system products to manufacture @ROAD Products which conforms with the
Documentation.
7.5 @ROAD warrants and represents that the information contained in any
Certificate of Originality, delivered by @ROAD in the form set forth in
Exhibit E hereto is current, accurate, and complete as of the Effective
Date to the best of its information and belief. Furthermore, @ROAD warrants
and represents that it has used best efforts to verify that the information
set forth in Exhibit E is current, accurate, and complete as of the
Effective Date.
7.6 @ROAD warrants and represents that @ROAD Software (including firmware) 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.
7.7 @ROAD warrants and represents that the license and other terms set forth in
this Agreement are no less favorable than those offered by @ROAD to any
other individual, company, or other entity. INTEL will be entitled to
audit @Roads relevant books and records to verify compliance with this
warranty.
7.8 EXCEPT AS EXPRESSLY SET FORTH HEREIN, NEITHER PARTY MAKES ANY WARRANTIES,
EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE @ROAD PRODUCTS, THE
MANUFACTURING PACKAGE, INCLUDING ANY UPDATES AND ENHANCEMENTS, THE
DOCUMENTATION, OR 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.
8. INDEMNIFICATION AND LIMITATION OF LIABILITY
8.1 @ROAD will 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 @ROAD Products, the Manufacturing Package, or Documentation.
Licensee's duties under this Section 8 extend to any matters arising out of
any claim made or threatened that Manufacturing Package, or Documentation
or Intel Products made or have made Intel in accordance with the
Manufacturing Package or Documentation infringe any copyright, patent,
trade secret or other intellectual property right.
8.2 INTEL agrees to promptly notify @ROAD of any such claim made or threatened
and will provide information, assistance, and cooperation in defending the
suit or proceeding (at @ROAD's expense). INTEL agrees to allow @ROAD the
opportunity to control the defense or settlement of any suit or proceeding
provided @ROAD permits INTEL to participate in the defense or settlement
thereof at Intel's expense.
8.3 If INTEL Products made or have made by or on behalf of Intel in accordance
with the Manufacturing Package or Documentation, or any portion thereof, is
found to infringe the
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intellectual property rights of any third party and its use is enjoined,
@ROAD will, at INTEL's option and at @ROAD's expense use best efforts to
procure for INTEL a license or right to continue to exercise INTEL's
license rights with respect to Intel Products, and if no license is
available or if INTEL determines that a license is not available on
commercially reasonable terms, INTEL may terminate this Agreement without
prejudice to any other right either Party may have under this Agreement.
8.4 IN NO EVENT WILL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY INDIRECT,
SPECIAL, INCIDENTAL, EXEMPLARY OR CONSEQUENTIAL DAMAGES OF ANY KIND,
INCLUDING BUT NOT LIMITED TO LOSS OF PROFITS, LOSS OF USE, OR INTERRUPTION
OF BUSINESS, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THE TOTAL
LIABILITY OF EITHER PARTY UNDER THIS AGREEMENT WILL NOT EXCEED THE GREATER
OF AMOUNTS PAID BY INTEL AS ROYALTIES PURSUANT TO SECTION 5 OF THIS
AGREEMENT OR FIVE MILLION DOLLARS ($5,000,000) U.S. THESE LIMITATIONS SHALL
APPLY NOTWITHSTANDING THE FAILURE OF THE ESSENTIAL PURPOSE OF ANY LIMITED
REMEDY HEREUNDER.
9. TERM AND TERMINATION
9.1 Term
----
This Agreement will be effective for an initial term of five (5) years from
the Effective Date and will automatically renew for successive one year
terms 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
sixty (60) 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 if, within thirty (30) days after written notice, the
defaulting Party has failed to cure the default.
9.3 Effect of Termination
---------------------
(a) Except as expressly set forth below, Sections 3, 4, 5, 7, 8, 9, 10, 11
of this Agreement will survive expiration or earlier termination of
this Agreement.
(b) Notwithstanding the foregoing, the licenses set forth in Section 3
will terminate if Intel elects to terminate this Agreement for its
convenience pursuant to Section 9.2(a) above.
(c) Furthermore, in the event of termination of this Agreement for
material breach by INTEL in accordance with Section 9.2(b) above, and
except as set forth herein, @ROAD 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 Intel
Products in inventory, with @ROAD Software or INTEL derivatives
thereof, until its inventory of Intel Products is depleted, or until
all customer orders received by INTEL before written notice of
termination. Furthermore, INTEL may continue to use, copy and create
derivatives of the Manufacturing Package in source code format for
customer support purposes and may compile and distribute derivatives
of the @ROAD Software in object code format as necessary to correct
bugs in @ROAD Software distributed to customers pursuant to this
Agreement. Revocation shall not affect the rights of INTEL customers
under valid sublicenses executed prior to termination of this
Agreement.
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10. PUBLICITY
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 Corporate Non-Disclosure
Agreement number 3383441, dated September 4, 1999. Notwithstanding the
foregoing, @ROAD acknowledges that INTEL may from time to time require
@ROAD to execute a more restrictive form of non-disclosure agreement or as
a precondition to receipt of selected INTEL confidential information.
11. GENERAL PROVISIONS
11.1 INTEL and @ROAD are independent contractors. Nothing in this Agreement will
be construed to make INTEL and @ROAD partners or joint venturers, or to
make INTEL and @ROAD liable for the obligations, acts, or activities of the
other.
11.3 Any change, modification or waiver to this Agreement must be in writing and
signed by an authorized representative of each Party.
11.4 All notices and requests required or made under this Agreement must be in
writing and will be deemed given if personally delivered or by courier,
overnight delivery service or 48 hours after mailing as 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:
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INTEL: @ROAD:
INTEL Corporation @ROAD, Inc.
5000 West Chandler Blvd. 47370 Fremont Boulevard
Chandler, AZ 85226 Fremont, CA, 94538
Attn.: Contract Management Attn.: Office of the President
M/S: CH6-404
With copies to: With copies to:
INTEL Corporation Venture Law Group
2200 Mission College Blvd. 2800 Sand Hill Road
Santa Clara, CA 95052-8119 Menlo Park, CA 94025
Attn.: General Counsel Attn.: Tae Hea Nahm
11.5 Neither Party may assign this Agreement or any portion of this Agreement
to any other Party without the other's prior written consent: provided,
--------
however, that 1) INTEL will have the right to assign and/or delegate it's
-------
rights, obligations, and privileges hereunder to it's subsidiaries and
affiliates: and 2) @ROAD will have the right to assign this Agreement and
its rights, obligations and privileges hereunder to a merger partner,
successor in business or acquiror of all or substantially all of @ROAD's
business or assets without obtaining any consent to such assignment from
INTEL. This Agreement will be binding on the Parties, their assignees, or
successors in interest.
11.6 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" - @ROAD Products and Specifications
Exhibit "B" - Marketing Collaboration
Exhibit "C"- RESERVED
Exhibit "D" - RESERVED
Exhibit "E" - Certificate of Originality
11.7 Regardless of which of us 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.
11.8 The laws of the State of California, 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 of the Parties with
respect to matters contained herein, and supercedes all prior or
contemporaneous agreements and negotiations, written or oral, with
respect to those matters. Furthermore, this Agreement supercedes the
terms of any license distributed by @ROAD with the @ROAD Software,
provided that, Intel may, in its sole discretion, exercise any right set
forth in such license which is more favorable than rights granted INTEL
under this Agreement.
11.10 The Parties agree to cooperate to execute any subsequent document or
documents reasonably necessary to carry out the intent of this
Agreement.
11.11 No waiver of any breach or default shall constitute a waiver of any
subsequent breach or default.
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11.12 This Agreement may be executed in two (2) or more counterparts, all of
which, taken together, shall be regarded as one and the same instrument.
AGREED:
INTEL CORPORATION @ROAD, INC.
/s/ Michael Iannitti Jr. /s/ Krish Panu
------------------------- -----------------------------
Signature Signature
Michael Iannitti Jr. Krish Panu
------------------------- -----------------------------
Printed Name Printed Name
Director - Icco Chairman and CEO
------------------------- -----------------------------
Title Title
1-31-00 2-3-00
------------------------- -----------------------------
Date Date
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EXHIBIT "A"
@ROAD Products and Specifications
A.
B.
C.
D.
E.
NOTE: In addition to the foregoing descriptions and specifications,
@ROAD specification sheets in effect at the time of this
Agreement or thereafter modified for the @ROAD Products are
hereby incorporated into this Exhibit A by reference.
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<PAGE>
EXHIBIT "B"
MARKETING COLLABORATION
@ROAD and INTEL will cooperatively participate in marketing activities related
to promotion of @ROAD Products and Intel Products as follows:
1. @ROAD and Intel will meet regularly to discuss cooperative marketing
strategies for mutually agreed target segments ("Target Segments"). Such
meetings would review overall industry and market trends, product
requirements for Target Segments and any changes thereto, specific customer
requirements when appropriate, co-advertisements, joint press releases, web
communications and other media communications related to the optimized
@ROAD Products with both INTEL and @ROAD named, and other topics of mutual
benefit.
2. The parties will use reasonable efforts to engage in cooperative marketing
activity, including without limitation:
(a) joint participation at trade shows, industry conferences, seminars and
associated hospitality suites:
(b) participation by Intel in @ROAD sales force and technical training
sessions;
(c) participation by @ROAD in INTEL sales force and technical training
sessions:
(d) membership in mutually agreed industry initiatives; and
(e) joint visits to mutually agreed customers, subject to any third party
confidentiality obligations, to review product requirements as well as
advocating the combination of @ROAD Products and INTEL Products as
complete solutions.
3. The parties will provide internet links between their respective Web sites
as mutually agreed.
4. @ROAD and INTEL will exercise their respective reasonable efforts to
reference sell one another's products through their respective direct and
indirect sales channels for appropriate sales opportunities in the Target
Segments. The parties agree to share sales leads as appropriate, subject to
any confidentiality obligations with third parties. This provision is not
intended to limit the right or ability of either party to reference sell
the products of other third parties.
5. INTEL and @ROAD will discuss other mutually agreeable promotional
activities (e.g., announcements, advertisements, web-based communications)
as appropriate.
6. Each party will be responsible for its own expenses related to such
cooperative marketing activities, unless otherwise agreed in writing.
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EXHIBIT "C"
RESERVED
Page 15
<PAGE>
EXHIBIT "D"
RESERVED
Page 16
<PAGE>
EXHIBIT "E"
CERTIFICATE OF ORIGINALITY
[To be completed by @ROAD for each @ROAD Software module before delivery to
Intel]
This questionnaire must be completed for the @ROAD Software 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 @ROAD or @ROAD'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) @ROAD:
_______________________________________________________________
(iii) Address:
_______________________________________________________________
_______________________________________________________________
(iv) If the party is a @ROAD employee, how did it acquire title to
the software material (e.g., software material was written by
@ROAD'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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<PAGE>
Yes ________ No _________
If Yes, provide name and address of the other party and explain
the nature of the obligations:
_______________________________________________________________
_______________________________________________________________
_______________________________________________________________
(c) How did @ROAD 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 @ROAD 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 @ROAD may not have retained full rights
to the material:
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
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<PAGE>
(d) Materials acquired from a person or @ROAD contractor possibly not
having title to them:
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
(e) Other circumstances:
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
5. Copies of any approved copyright registration forms or filings have been
attached hereto.
@ROAD, INC.
__________________________________
Signature
__________________________________
Printed Name
__________________________________
Title
__________________________________
Date
Page 19
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Oplinger, Penny L
To: Smith, Ron J; Myers, Cheryl L; Heeb, Jay; Someshwar, Ashok; Casey,
Mark
Subject: Delegation of Authority
To: Distribution
From: Terry Gillett/by Penny Oplinger
Subject: Delegation of Authority
-----------------------
I will be out of the office on Monday, January 31, 2000. During my absence, Mike
Iannitti will act on my behalf and have full signature authorization for my
organization. Mike can be reached at 554-0678 or through Penny Oplinger at 554-
5134.
/s/ Terry Gillett /s/ Mike Iannitti
----------------- -----------------
Terry Gillett Mike Iannitti