Intellectual Property License Agreement and Technology Product Development Agreement [Amendment No. 1] - Immersion Corp. and Logitech Inc.
AMENDMENT #1 TO THE APRIL 13, 1998
INTELLECTUAL PROPERTY LICENSE AGREEMENT
AND TECHNOLOGY PRODUCT DEVELOPMENT AGREEMENT
WHEREAS Immersion Corporation, a Delaware Corporation with principal
offices in San Jose, California (hereinafter "Immersion") and Logitech, Inc., a
California corporation with principal offices in Fremont, California
(hereinafter "Logitech"), entered into an Intellectual Property License
Agreement dated April 13, 1998 (hereinafter the "IP License Agreement") and a
Technology Product Development Agreement also dated April 13, 1998 ("Development
Agreement"); and
WHEREAS Immersion and Logitech (collectively, the "Parties") now wish to
amend the IP License Agreement and the Development Agreement to encompass
certain additional products to be manufactured and sold by Logitech under
license from Immersion;
NOW, THEREFORE, the Parties hereby agree to amend the IP License Agreement
and the Development Agreement as follows:
1. LICENSE GRANT. Pursuant toss.7.4 of the IP License Agreement, and
subject to the terms and conditions of the IP License Agreement and
this Amendment # 1 thereto, Immersion hereby grants to Logitech a
worldwide, non-exclusive (except as provided in Section 2 below),
non-transferable, non-assignable license under the Licensed Patents to
develop, make, have made, use, sell, lease, demonstrate, market and
distribute "[****] Products." As used herein, "[****] Products" means
a computer mouse in which tactile forces are applied [****], where
tactile forces are applied along the plane of the desktop). Except as
provided in Section 2.3 of the IP License Agreement ("Right to
Sublicense"), no right to sublicense the Licensed Patents is granted
by Immersion to Logitech.
2. [****] PREEMPT PROTECTION. Provided that, on or before [****],
Logitech meets its United States Product Availability Date ("U.S.
PAD") for a product meeting the functional requirements set forth in
Exhibit A, Immersion agrees not to supply technology to, or sign a
contract with, any third party which would enable such third party to
sell a similar product as an after market mouse peripheral in the
retail channel on or before [****] (the "[****] Exclusivity Period").
For purposes of this Agreement, U.S. PAD shall mean the date on which
at least 50% of Logitech's first full month's forecast in finished
[****] Product is in Logitech's U.S. distribution center. Further,
Immersion will not grant contractual rights to any third party
peripheral manufacturer that will allow them to publicly announce a
similar product, as a retail after market mouse peripheral, on or
before [****] ("the "[****] Quiet Period").
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
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3. WINGMAN PREEMPT PROTECTION: Provided that Logitech continues to use
reasonable business efforts to support and promote the Wingman Force
Feedback Mouse, Immersion agrees not to supply technology to, or sign
a contract with, any third party which would enable such third party
to sell a similar product as an after market mouse peripheral in the
retail channel on or before [****] (the "Wingman Force Feedback Mouse
Exclusivity Period".)
4. PRODUCT COMMITMENTS. Logitech agrees to use its best efforts to launch
its [****] Product with a U.S. PAD on or before [****]. Such product
shall meet the functional requirements attached to this amendment as
Exhibit A. As part of this commitment, Logitech agrees that, in the
event technical difficulties arise that threaten to prevent it from
meeting the [****] PAD, it will, in collaboration with Immersion's
engineering staff, utilize aspects of Immersion's then-current [****]
technical solution as necessary to do so. Immersion will provide to
Logitech as soon as possible within ten (10) days after execution of
this Amendment, header files, any basic documentation that is
currently available, and in-person technical support on the
ITouchSenseEffectDriver interface for Immersion's TouchSense(tm) API.
Immersion agrees to make best efforts to ensure a minimum of [****]
shipping non-trivial gaming titles, and [****] web pages and/or
non-gaming software titles, by [****], that are specifically designed
for use with the force feedback mouse family of products. If Immersion
fails to meet the objectives identified in the preceding sentence,
Logitech may, if it chooses to do so, extend its U.S. PAD beyond
[****] without losing the preemption protection provided for in
Paragraph 2, except that under no circumstances shall Logitech's
Exclusivity Period extend beyond [****].
5. NEW TECHNOLOGY ROYALTIES. The [****] Product to be manufactured and
sold by Logitech hereunder shall be deemed a Royalty Bearing Product
in accordance with the terms of the IP License Agreement, and the
royalty thereon shall be 5% pursuant to Section 3.2 thereof.
6. EXCLUSIVITY FEE. In consideration of the preemption protection
provided for in Section 2, Logitech agrees to pay Immersion a minimum
royalty of no less than [****] for [****] Products sold up to and
including [****]. This requirement is waived if Immersion does not
meet its efforts mentioned in the last two sentences of Section 4
above.
7. ENGINEERING SUPPORT BY IMMERSION. Immersion agrees to use its best
efforts to provide engineering support to Logitech in connection with
Logitech's development and testing of Logitech's [****] Product
implementation as reasonably requested by Logitech. As presently
contemplated, Immersion's efforts will be focused on ensuring software
compatibility of the [****] Product with TouchSense(TM)-enabled
software applications and web pages, but Immersion will, if Logitech
requests, use its best efforts to assist Logitech with any hardware
and/or firmware issues
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Commission. Confidential treatment has been requested with respect to the
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identified by Logitech. Within two weeks of signing this agreement,
the parties agree to formulate a breakdown of efforts and Immersion
will quote, using its standard billing practices, an NRE fee for these
efforts. Work requested by Logitech and agreed on by Immersion, as
well as the payments to be made by Logitech for such work, will be set
forth in an amendment or amendments to the Development Agreement.
8. ANNOUNCEMENT. Logitech agrees publicly to announce its [****] Product,
including the fact that such product will be manufactured and sold
under license from Immersion, on or before the [****] in [****] of
this calendar year. Logitech further agrees to substitute references
to Immersion's TouchSense(TM) mark and associated logo in place of
Immersion's former "FEELit" mark and logo in connection with
Logitech's labeling obligations under the IP License and Development
agreements.
9. FORCE FEEDBACK MOUSE FAMILY COMMITMENT: Immersion and Logitech agree
to continue their joint efforts to develop the force feedback mouse
market space. To this end, they will support the [****] Product and
the current Wingman Force Feedback Mouse ("WFFM") as a product family,
and will market such product family to software developers and
consumers. Logitech and Immersion remain committed to making the WFFM
product as successful as possible through sales, marketing, and
evangelical programs. Immersion will continue to focus its marketing
and software support efforts on this family of mouse products, and
will continue to drive the gaming, web, productivity, accessibility,
education, and CAD/graphics markets for software support and demand
creation.
10. WINGMAN FORCE FEEDBACK MOUSE COMMITMENT: Logitech will use its best
efforts to ensure that it can meet, in a timely manner, the product
volume opportunities that emerge for the Wingman Force Feedback Mouse
as a result of the efforts in Section 9 above. This includes making
sure that a manufacturing facility is capable of ramping up production
in a timely manner as product volumes begin to move. Immersion and
Logitech agree to communicate regularly about the evolving product
volume opportunities.
11. DEVELOPER UNITS: Logitech will use its best efforts to provide
Immersion with a minimum of 250 free developer units for distribution
to software developers by July 31, 2000. Immersion will use its best
efforts to distribute said units to developers within 10 days of
receipt and to support said developers. Immersion may hold up to a
maximum of twenty units for internal testing if approved in advance by
Logitech.
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
omitted portions.
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12. LABELING:
RETAIL LABELING: Logitech agrees to Immersion's standard marketing
terms for branding and logo usage for all [****] Products sold by
Logitech through the retail channel, except that the size of
Immersion's logo shall be 3/4" by 3/4", and except further that
Logitech shall not be required to place the Immersion name or logo on
the belly label for such products or to mark such belly label with
Immersion's Licensed Patents. Logitech further agrees to include in
the product manual for its [****] Products (a) a prominent statement,
to be displayed adjacent to the Immersion logo, that such product
contains "TouchSense(TM) technology licensed from Immersion
Corporation," and (b) a statement that "This product is covered by one
or more of the following Immersion Corporation patents," such
statement to be immediately followed by a list of the then-issued
Immersion patents (such list to be provided by Immersion to Logitech).
Immersion will provide all necessary artwork for use by Logitech in
connection with the foregoing labeling requirements as soon as
possible within thirty (30) days after execution of this Amendment.
OEM LABELING: Logitech shall not be obligated to comply with Immersion
standard marketing terms for branding and logo usage for [****]
Product sold by Logitech into OEM channels, except that Logitech
shall, if it succeeds in obtaining branding and/or labeling rights for
itself from an OEM customer to include Logitech branding or labeling
in an OEM customer's manual, include the same information in such
manual with respect to Immersion as set forth above in connection with
retail labeling.
13. AMADEUS 2 CANCELLATION: Logitech and Immersion agree to discontinue
the Amadeus 2 program as currently specified. The parties further
agree to execute an amendment to their Marketing Development Fund
Letter Agreement dated October 21, 1999 ("MDF Agreement") transferring
to the [****] Product those MDF payments that were to be allotted to
the Amadeus 2 product, and renewing Immersion's commitment to purchase
[****] WFFM units (none of which shall now be Amadeus 2 units) for
evangelical purposes.
14. FUTURE NEGOTIATIONS: Immersion and Logitech agree within the next
twenty-eight (28) days to engage in discussions:
a. to negotiate in good faith the terms and conditions of a possible
contract under which Logitech would purchase chips, which it
currently purchases from KLSI, directly from Immersion. The
terms of the chip purchase agreement would be substantially
similar to the terms and conditions currently provided by KLSI,
and nothing herein or therein would in any way obligate Logitech
to use the Immersion chip in its products, but rather, would
merely shift such purchases as Logitech chooses to make from KLSI
to Immersion; and
b. (a) to negotiate in good faith [****] provisions governing [****]
Product sold by Logitech to OEM customers; and (b) to negotiate
in good
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faith a modification of the parties' existing [****] provisions
designed to improve the workability, predictability and fairness
of such provisions. In this regard, and as a gesture of good
faith, Immersion hereby agrees that, with respect to future
[****] which do not clearly and without question fall outside the
scope of Immersion's present [****] obligations, Immersion will
assume the expense of obtaining any required [****]
15. ENTIRE AMENDMENT. This Amendment and its Exhibit, together with the
other written agreements previously entered into and executed by the
Parties, constitute the complete agreement of the Parties concerning
the subject matter hereof, and supersedes any other agreements,
promises, representations or discussions, written or oral, concerning
such subject matter.
IN WITNESS WHEREOF, the authorized representatives of the Parties hereto have
signed this Amendment # 1 as of the date and year set forth below.
LOGITECH, INC. IMMERSION CORPORATION
By: /s/ W.H. Hausen By: /s/ Victor Viegas
---------------------- -----------------------
Name: W.H. Hausen Name: Victor Viegas
Title: SVP/GM Title: CFO
Date: 3/21/00 Date: 3/21/00
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
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EXHIBIT A
Functional Requirements
Hardware:
This product is a force feedback mouse interface that is [****] surface with a
form factor and functionality that is similar to [****] products. The mouse
product will provide a [****] force feedback, said force feedback being applied
in [****] both of which are parallel to the plane of the desktop).
To ensure that the hardware can adequately support the sensations required of
the desktop, web, productivity, and gaming software, it must meet the following
basic hardware functionality requirements:
Minimum Actuator Fidelity: The [****] forces to the user must be capable of
generating up to [****] vibrations with no less than [****] attenuation of
the [****] force magnitude.
USB Power: The [****] must be sized such that it can be driven, as
described above, within the power limitations of the USB specification.
Software:
In order to assure compatibility with the software titles and web pages that are
written with the Immersion TouchSense Developer Toolkit version 2.1 (including
the Immersion Foundation Classes(TM), Immersion Software Developer Kit(TM),
Immersion Studio(TM), Immersion Web Developer Kit(TM), Sample Code, and Demos),
the product produced under this agreement must meet the following technical
specifications:
TouchSense API: This product must support the Immersion TouchSense API,
enabled through the Immersion Foundation Classes (IFC) version 2.1. This is
the same API supported by the Wingman Force Feedback Mouse, enabling basic
compatibility between the products.
TouchSense Effects: The device must be capable of playing a minimum of the
following basic TouchSense effects, as fully defined by the TouchSense API
specification: [****] need not be supported.
Simultaneous Effects: The device must be capable of playing a minimum of
[****] different effects simultaneously ([****] background effects and
[****] foreground effects. For reference, the Wingman Force Feedback Mouse
can play [****] effects simultaneously ([****] background and [****]
foreground).
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Axis Mapping: Because [****] is a [****], it [****] associated with forces.
Any force effect, [****] will [****] be played on the [****].
DirectX: It is important to point out that [****] when it comes to desktop,
web, and productivity applications [****]. With respect to gaming, since
[****] the notion of "force feedback mice," all mouse games are supported
through the [****](as was true of the Wingman Force Feedback Mouse). Note -
to support force feedback [****], Logitech would need to provide [****] as
was done on Wingman Force Feedback Mouse.
[****] compatibility: This product must be a [****] mouse.
USB compatibility: This device must fully meet the v1.1 revision of the USB
specification. In addition, the device must be capable of passing all tests
at the periodic `Plug-Fest' events.
Boot Mode: This device must support `BOOT' mode functionality such that it
will be recognized and used by those computer BIOS that support USB boot
mouse functionality. This will allow this mouse to be used prior to the
Windows OS being loaded. It will allow the mouse to operate when Windows
has loaded a minimal driver set in a debugging environment (a.k.a. `Safe'
Mode).
Platform: [****].
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
omitted portions.
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