Initial Public Offering (IPO): Registration Statement (General Form) — Form S-1
Filing Table of Contents
Document/Exhibit Description Pages Size
1: S-1 Brighstar Corp. Form S-1 HTML 1.42M
2: EX-4.1 Form of Common Stock Certificate 4 22K
3: EX-4.2 Certificate of Designation 34 124K
4: EX-4.3 Stockholders' Agreement 41 165K
5: EX-4.4 Purchase Agreement 246 961K
6: EX-4.5 Redemption Agreement 8 47K
7: EX-10.1 Amended & Restated Distribution Agreement 32 129K
W/Motorola
16: EX-10.10 Kyocera Wireless Corp. Supply Agreement 6 44K
17: EX-10.11 Amendment to Supply Agreement W/Kyocera 1 18K
18: EX-10.12 Amendment No. 2 to Supply Agreement W/Kyocera 2± 19K
19: EX-10.13 Amendment No. 3 to Supply Agreement W/Kyocera 1 18K
20: EX-10.14 Amendment No. 4 to Supply Agreement W/Kyocera 2 20K
21: EX-10.15 Amendment No. 5 to Supply Agreement W/Kyocera 2± 19K
22: EX-10.16 Contract for Services W/Otecel S.A. 42 170K
23: EX-10.17 Operating Agreement W/Narbitec 33 128K
24: EX-10.18 First Amendment to Operating Agreement 3 21K
25: EX-10.19 Development and Supply Agreement W/Csi Wireless 44 190K
8: EX-10.2 Exclusive Distribution Agreement W/Motorola 19 73K
26: EX-10.20 First Amendment to Development and Supply 16 67K
Agreement
27: EX-10.21 Employment Agreement / Denise Gibson 11 66K
28: EX-10.22 Executive Employment Agreement/ Marcelo Claure 17 90K
29: EX-10.23 Executive Employment Agreement W/Oscar Fumagali 10 60K
30: EX-10.24 Independent Contractor Agreement/ Victor Raul 8 41K
Califa
31: EX-10.25 Independent Contractor Agreement/ Carlos M. Touyaa 8 41K
32: EX-10.26 Industrial Multi-Tenant Lease 40 183K
33: EX-10.27 Lease Agreement 94 395K
34: EX-10.28 Factoring Agreement/ Factor Banarte 18 118K
35: EX-10.29 Factoring Agreement/ Bbva Bancomer, S.A. 15 65K
9: EX-10.3 Motorola Master Distributor Agreement 23± 94K
36: EX-10.30 Revolving Credit and Security Agreement W/Pnc Bank 131 511K
37: EX-10.31 Amended and Restated Payment Terms Agreement 22 101K
W/Motorola
38: EX-10.32 Intercreditor Agreement W/Motorola 29 124K
39: EX-10.33 Amended and Restated Stock Pledge and Security 14 63K
Agreement W/Motorola
40: EX-10.34 Limited Security Agreement W/Motorola 22 91K
41: EX-10.35 Security Agreement W/Motorola 22 98K
42: EX-10.36 Amended and Restated Security Agreement W/Motorola 13 67K
43: EX-10.37 Amended and Restated Unconditional Guaranty/ 9 45K
Brightstar Corp W/Motorola
44: EX-10.38 Amended and Restated Unconditional Guaranty/ 9 45K
Brightstar U.S.,Inc. W/Motorola
45: EX-10.39 Unconditonal Guaranty W/Motorola 16 70K
10: EX-10.4 Amendment One to Motorola Master Distributor 3 25K
Agreement
46: EX-10.40 Amended and Restated Personal Guaranty W/Motorola 5 32K
47: EX-10.41 Stock Pledge and Security Agreement W/Motorola 11 51K
48: EX-10.42 Amended and Restated Security Agreement W/Motorola 14 67K
49: EX-10.43 Amended and Restated Stock Pledge and Security 10 49K
Agreement/ Motorola
50: EX-10.44 Amended and Restated Pledge Agreement/Telcel C.A. 8± 42K
51: EX-10.45 Promissory Note W/American Express 5± 32K
52: EX-10.49 Purchase Agreement/El Salvador 14 64K
11: EX-10.5 First Amendment to Motorola Master Distributor 2 20K
Agreement
53: EX-10.50 Amendment No. 1 to Purchase Agreement /El Salvador 2 21K
54: EX-10.51 Purchase Agreement/ Guatemala 14 64K
55: EX-10.52 Amendment No. 1 to Purchase Agreement/Guatemala 2 23K
56: EX-10.53 2004 Stock Incentive Plan 20 89K
57: EX-10.54 Cellular Essential Properties Cross License Agmt 17 58K
12: EX-10.6 U.S. Distribution Agreement W/Motorola 30 105K
13: EX-10.7 Distributor Agreement W/Sendo America, Inc. 26 100K
14: EX-10.8 Distribution Agreement W/Sagem S.A. 33 117K
15: EX-10.9 Distributor Agreement W/Samsung 16 68K
58: EX-21 List of Subsidiaries 1 18K
59: EX-23.2 Consent of Deloitte & Touche LLP 1 17K
EX-10.54 — Cellular Essential Properties Cross License Agmt
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EXHIBIT 10.54
PORTIONS OF THIS DOCUMENT INDICATED BY AN [***] HAVE BEEN OMITTED AND FILED
SEPARATELY WITH THE SECURITIES EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT OF SUCH INFORMATION.
CELLULAR ESSENTIAL PROPERTIES CROSS LICENSE AGREEMENT
THIS AGREEMENT is by and between MOTOROLA, INC., a Delaware corporation having
an office at 1303 E. Algonquin Road, Schaumburg, IL 60196 U.S.A., (hereinafter
called "MOTOROLA"), and BRIGHTSTAR CORP., a Delaware corporation having its
principal office at 2010 N.W. 84th Avenue, Miami, Florida 33122 (hereinafter
called "BRIGHTSTAR") and is effective upon the EFFECTIVE DATE (as defined
below).
WHEREAS, MOTOROLA owns and has or may have intellectual property rights relating
to certain STANDARDS (as hereinafter defined) in various countries of the world
under which BRIGHTSTAR desires to acquire licenses as hereinafter provided; and
WHEREAS, BRIGHTSTAR owns and has or may have intellectual property rights
relating to STANDARDS in various countries of the world under which MOTOROLA
desires to acquire licenses as hereinafter provided; and
WHEREAS, MOTOROLA and BRIGHTSTAR are engaged in continuing research, development
and engineering in regard to EQUIPMENT (as hereinafter defined) and have
programs for the patenting of inventions resulting therefrom, and
WHEREAS, MOTOROLA and BRIGHTSTAR are willing to exchange certain licenses and
give mutual assertions as provided herein,
NOW, THEREFORE, based on the mutual promises and covenants contained herein, the
parties hereto hereby agree as follows:
Section 1 - DEFINITIONS
The capitalized terms used herein shall have the definitions assigned to them in
this Section 1, and shall include the singular as well as the plural.
1.1 AFFILIATE of a party means any legal entity, more than fifty percent
(50%) of whose outstanding shares or securities representing the right to vote
for the election of directors or other managing authority are, or more than
fifty percent (50%) of whose equity interest is, now or hereafter, owned or
controlled, directly or indirectly by that party (but only so long as such
ownership or control or equity interest exists).
1.2 STANDARDS means, individually or collectively, TDMA STANDARDS,
NARROWBAND CDMA STANDARDS, WIDEBAND CDMA STANDARDS or TD/CDMA STANDARDS.
1.2.1 TDMA STANDARDS means those technical specifications for time division
multiple access digital cellular radiotelephone service [***]
Motorola Confidential and
Proprietary 1 20 June 2002
[***]
1.2.2 NARROWBAND CDMA STANDARDS means those technical specifications for
direct-sequence code division multiple access digital cellular radiotelephone
service [***]
1.2.3 WIDEBAND CDMA STANDARDS means those technical specifications for
direct-sequence code division multiple access digital cellular radiotelephone
service [***]
1.2.4 TD/CDMA STANDARDS means those technical specifications for a combined
time division and code division multiple access digital cellular radiotelephone
service [***]
2
1.3 PROPERTIES means those claims or other divisible portions of patents
and licensable patent applications including, but not limited to, all divisions,
continuations, continuations-in-part, reissues, renewals, and extensions
thereof, any counterparts claiming priority therefrom, utility models, patents
of importation/confirmation, and certificates of invention and like statutory
rights (other than design patents, registrable industrial designs, copyrights,
trade secrets and like rights involving trade identity). In no event shall
PROPERTIES include innovations related to materials, semiconductor structures,
and semiconductor manufacturing processes.
1.3.1 ESSENTIAL PROPERTIES means PROPERTIES to the limited extent that
infringement of such PROPERTIES cannot be avoided in remaining compliant with
the STANDARDS, including optional implementations thereof provided for in the
STANDARDS, on technical but not commercial grounds, taking into account normal
technical practice and the state of the art generally available at the time of
standardization.
1.3.2 LICENSED ESSENTIAL PROPERTIES means ESSENTIAL PROPERTIES owned,
controlled, or sublicensable by Licensor or its AFFILIATES, during the term of
this Agreement. In the event LICENSED ESSENTIAL PROPERTIES includes PROPERTIES
sublicensable from an unaffiliated third party licensor, such PROPERTY shall be
included within the terms of this Agreement only to the extent Licensee agrees
to pay any incremental compensation properly due to such unaffiliated third
party licensor (except employees of Licensor or its AFFILIATES) in connection
with any sublicense elected to be and so exercised by Licensee hereunder. If
Licensee elects to exercise it's sublicense rights hereunder, Licensor shall
provide written assurances to Licensee from an officer of Licensor as to the
amounts to be paid to the sublicensor on behalf of Licensee and that such
payments are due as a result of Licensee's activities. LICENSED ESSENTIAL
PROPERTIES shall include, but are not limited to, those PROPERTIES to the extent
listed in Annexes A and B hereto. [***]
1.3.3 SUBSCRIBER TERMINAL PROPERTIES means PROPERTIES associated with,
related to, and having as a preferred embodiment a SUBSCRIBER TERMINAL and which
are owned, controlled, or sublicensable by Licensor or its AFFILIATES, during
the term of this Agreement.
1.4. EQUIPMENT collectively or individually means SUBSCRIBER TERMINALS,
SUBSCRIBER MODULES, CHIP-SETS, and INFRASTRUCTURE EQUIPMENT, the function of
which is, or between which certain interfaces are substantially standardized in
the STANDARDS.
1.5 LICENSED EQUIPMENT means, with respect to MOTOROLA, all EQUIPMENT
FIELDED by MOTOROLA and its AFFILIATES. LICENSED EQUIPMENT means, with respect
to BRIGHTSTAR, SUBSCRIBER TERMINALS FIELDED by BRIGHTSTAR and its AFFILIATES.
Any LICENSED EQUIPMENT, however, for which a report and royalty (if due) are not
submitted by BRIGHTSTAR in the time and manner specified in Section 4 shall be
deemed never to have been LICENSED EQUIPMENT. [***]
3
1.6 LICENSED APPLICATIONS means applications of LICENSED EQUIPMENT in
terrestrial (including marine, airborne and GSMR, but not satellite), cellular,
dial-up {or equivalent form of individual subscriber selection, e.g., DTMF),
radiotelephony applications providing communications services. [***]
1.7 EFFECTIVE DATE shall mean the date of (i) the last necessary signature
hereto or (ii) the approval (if required) of this Agreement by any government
authority, whichever is later.
1.8 NET SELLING PRICE shall mean, in the case of a sale or other
disposition to an unaffiliated third party, the actual price at which the
transaction occurred, exclusive of: (a) any trade and quantity discounts or
rebates and cash discounts or rebates; (b) credits or allowances given or made
for rejection or return of previously sold products; and (c) sales, use, tariff,
import/export duties or other excise taxes (other than an income or value added
tax) levied upon the sale, transportation or delivery of a product; and, in the
case of a sale or other disposition to an affiliated third party, shall mean the
price at which like goods are sold by BRIGHTSTAR or its AFFILIATES to an
unaffiliated third party of an equivalent sale in terms of, but not limited to,
volume of sale, terms and conditions of trade, nature of trade, and
specification of the products. In the event that BRIGHTSTAR or its AFFILIATES
licenses software or firmware for re-distribution by its customer with the
EQUIPMENT, any compensation paid by the customer for such license shall be
included in the NET SELLING PRICE.
1.9 SUBSCRIBER TERMINAL means equipment such as a mobile, transportable or
handheld portable unit [***]
[***]
1.11 FIELD means to make, have made, import, offer to sell, sell, lease, use
or otherwise dispose of an item.
4
[***]
[***]
Section 2 - RELEASES
2.1.1 In exchange for the grants in this Agreement and the payment by
BRIGHTSTAR to MOTOROLA as required in Section 4, MOTOROLA and its AFFILIATES
hereby release, acquit and forever discharge BRIGHTSTAR (and those AFFILIATES
affiliated with BRIGHTSTAR prior to the EFFECTIVE DATE of this Agreement) and
their respective distributors, dealers, customers and users from any and all
claims or liability for infringement or alleged infringement of any PROPERTIES
by the FIELDING of equipment by BRIGHTSTAR and its AFFILIATES prior to the
EFFECTIVE DATE.
2.1.2 In exchange for the grants in this Agreement, BRIGHTSTAR and its
AFFILIATES hereby release, acquit and forever discharge MOTOROLA (and those
AFFILIATES affiliated with MOTOROLA prior to the EFFECTIVE DATE of this
Agreement) and their respective distributors, dealers, customers and users from
any and all claims or liability for infringement or alleged infringement of any
PROPERTIES by the FIELDING of equipment by MOTOROLA and its AFFILIATES prior to
the EFFECTIVE DATE.
Section 3 - GRANTS
[***]
3.2 For the term of this Agreement, MOTOROLA and its AFFILIATES, as
Licensor, grant to:
5
3.2.1 BRIGHTSTAR, as Licensee, a non-exclusive, non-transferable, world wide
license, without the right to sublicense, under LICENSED ESSENTIAL PROPERTIES of
MOTOROLA and its AFFILIATES to FIELD LICENSED EQUIPMENT for use in LICENSED
APPLICATIONS.
3.2.2 BRIGHTSTAR's AFFILIATES, as Licensee, a non-exclusive,
non-transferable, world wide license, without the right to sublicense, under
LICENSED ESSENTIAL PROPERTIES of MOTOROLA and its AFFILIATES to FIELD LICENSED
EQUIPMENT for use in LICENSED APPLICATIONS, provided, however, that in the event
a third party manufacturer of EQUIPMENT holds an equity interest in such
AFFILIATE and such AFFILIATE sells or otherwise disposes of EQUIPMENT to other
than BRIGHTSTAR then this license shall not extend to the greater of that
portion of the total sales of LICENSED EQUIPMENT by such AFFILIATE which is
equal to either: a) the proportion of said third party's equity ownership in
such AFFILIATE or b) directly attributable to such third party.
3.2.3 BRIGHTSTAR and BRIGHTSTAR's AFFILIATES, a non-exclusive,
non-transferable, world wide license, without the right to sublicense, under
LICENSED ESSENTIAL PROPERTIES of MOTOROLA and its AFFILIATES to make, have made,
import and use anywhere in the world machines, tools, materials and other
instrumentalities to the extent necessary to the development, manufacture,
testing and repair of LICENSED EQUIPMENT.
3.2.4 BRIGHTSTAR and BRIGHTSTAR's AFFILIATES, a non-exclusive,
non-transferable, world wide license, without the right to sublicense, under
LICENSED ESSENTIAL PROPERTIES of MOTOROLA and its AFFILIATES to acquire
(including to have made), anywhere in the world, parts, components, and
subassemblies utilized in Licensee's LICENSED EQUIPMENT, provided, however that,
except whenever the design of a part, component or subassembly is substantially
prepared by BRIGHTSTAR or exclusively for BRIGHTSTAR, MOTOROLA shall retain the
right to license the third party manufacturers and suppliers of such parts,
components and subassemblies under MOTOROLA ESSENTIAL PROPERTIES.
3.3 For the term of this Agreement, BRIGHTSTAR and its AFFILIATES, as
Licensor, grant to:
3.3.1 MOTOROLA, as Licensee, a non-exclusive, non-transferable, world wide
license, without the right to sublicense, under LICENSED ESSENTIAL PROPERTIES of
BRIGHTSTAR and its AFFILIATES to FIELD LICENSED EQUIPMENT for use in LICENSED
APPLICATIONS.
3.3.2 MOTOROLA'S AFFILIATES, as Licensee, a non-exclusive, non-transferable,
world wide license, without the right to sublicense, under LICENSED ESSENTIAL
PROPERTIES of BRIGHTSTAR and its AFFILIATES to FIELD LICENSED EQUIPMENT for use
in LICENSED APPLICATIONS, provided, however, that in the event a third party
manufacturer of EQUIPMENT holds an equity interest in such AFFILIATE and such
AFFILIATE sells or otherwise disposes of EQUIPMENT to other than MOTOROLA then
this license shall not extend to the greater of that portion of the total sales
of LICENSED EQUIPMENT which is
6
equal to either: a) the proportion of said third party's equity ownership in
such AFFILIATE or b) directly attributable to such third party.
3.3.3 MOTOROLA and MOTOROLA'S AFFILIATES, a non-exclusive, non-transferable,
world wide license, without the right to sublicense, under LICENSED ESSENTIAL
PROPERTIES of BRIGHTSTAR and its AFFILIATES to make, have made, import and use
anywhere in the world machines, tools, materials and other instrumentalities to
the extent necessary to the development, manufacture, testing and repair of
LICENSED EQUIPMENT.
3.3.4 MOTOROLA and MOTOROLA'S AFFILIATES, a non-exclusive, non-transferable,
world wide license, without the right to sublicense, under LICENSED ESSENTIAL
PROPERTIES of BRIGHTSTAR and its AFFILIATES to acquire (including to have made),
anywhere in the world, parts, components, and subassemblies utilized in
Licensee's LICENSED EQUIPMENT, provided, however that, except whenever the
design of a part, component or subassembly is substantially prepared by MOTOROLA
or exclusively for MOTOROLA, BRIGHTSTAR shall retain the right to license the
third party manufacturers and suppliers of such parts, components and
subassemblies under BRIGHTSTAR ESSENTIAL PROPERTIES.
[***]
7
[***]
[***]
3.7 Unless otherwise provided herein, the licenses granted herein under
LICENSED ESSENTIAL PROPERTIES are for as much as Licensor has the right to grant
within the scope of the licenses granted herein to Licensee without payments of
royalties or other consideration to third persons (except for payments to
employees of Licensor for an invention made by such employee) and are for as
much as Licensor has the right to grant within the scope of the licenses granted
herein to Licensee with respect to LICENSED ESSENTIAL PROPERTIES sublicensable
from a third party and requiring the payment of royalty or other consideration
to such third party if Licensee elects to and does so pay any such incremental
royalty or other consideration.
3.8 Notwithstanding anything to the contrary contained herein, no licenses
are passed by either party to the customers of a Licensee to any combinations of
the LICENSED EQUIPMENT with any other equipment.
8
3.9 For the term of this Agreement and as tender or other regulatory
requirements in a country reasonably necessitate, either party may sublicense
local third-party manufacturers in which such party owns an equity interest to
manufacture and supply LICENSED EQUIPMENT (a) only in such country or (b) for
export to the extent required by applicable laws or regulations of such country,
provided that the other party is granted licenses by such sublicensee of the
same breadth as those granted herein to sublicensor and further provided that
such sublicensee accepts the same obligations hereunder (including the
obligation to pay royalties, if any) as sublicensor. The sublicensor under this
Section 3.10 shall remain liable for any royalties due from such sublicensee.
Section 4 - PAYMENTS AND REPORTS
4.1 In partial consideration for the release of Section 2 and the rights
granted by MOTOROLA under LICENSED ESSENTIAL PROPERTIES in accordance with
Section 3, BRIGHTSTAR shall make payments to MOTOROLA for the sale or other
disposal by BRIGHTSTAR, and its AFFILIATES licensed hereunder, of LICENSED
EQUIPMENT that but for such license would infringe at least one LICENSED
ESSENTIAL PROPERTY of MOTOROLA in accordance with the following schedule:
4.1.1 For the sale or other disposal of LICENSED EQUIPMENT during the period
prior to the EFFECTIVE DATE, [***] of the NET SELLING PRICE of such LICENSED
EQUIPMENT; and
4.1.2 For the sale or other disposal of LICENSED EQUIPMENT compliant with a
TDMA STANDARD during the period following the EFFECTIVE DATE, [***] of the NET
SELLING PRICE of such LICENSED EQUIPMENT.
4.1.3 For the sale or other disposal of LICENSED EQUIPMENT compliant with a
NARROWBAND CDMA STANDARD during the period following the EFFECTIVE DATE, [***]
of the NET SELLING PRICE of such LICENSED EQUIPMENT.
4.1.4 For the sale or other disposal of LICENSED EQUIPMENT compliant with a
WIDEBAND CDMA STANDARD during the period following the EFFECTIVE DATE, [***]
of the NET SELLING PRICE of such LICENSED EQUIPMENT.
4.1.5 For the sale or other disposal of LICENSED EQUIPMENT compliant with a
TD/CDMA STANDARD during the period following the EFFECTIVE DATE, [***] of the
NET SELLING PRICE of such LICENSED EQUIPMENT.
4.2. Within thirty (30) days of the EFFECTIVE DATE, BRIGHTSTAR shall report
to MOTOROLA the total number of LICENSED EQUIPMENT sold or otherwise disposed of
by BRIGHTSTAR or its AFFILIATES prior to the EFFECTIVE DATE and BRIGHTSTAR shall
make a royalty payment to MOTOROLA for all LICENSED EQUIPMENT sold or otherwise
disposed of by BRIGHTSTAR or its AFFILIATES prior to the EFFECTIVE DATE.
9
BRIGHTSTAR shall identify the manufacturer or assembler of any SUBSCRIBER
TERMINALS sold or otherwise disposed of by BRIGHTSTAR. In the event BRIGHTSTAR
sold or otherwise disposed of LICENSED EQUIPMENT under the trade identity of a
third party prior to the EFFECTIVE DATE, BRIGHTSTAR shall separately report
the identities of all such third parties under whose trade identity BRIGHTSTAR
sold or otherwise disposed of such LICENSED EQUIPMENT prior to the EFFECTIVE
DATE.
4.3 Within forty-five (45) days of the close of each fiscal quarter of
BRIGHTSTAR, beginning with the close of the first fiscal quarter following the
EFFECTIVE DATE, BRIGHTSTAR shall make royalty payments to MOTOROLA (for itself
and all of its AFFILIATES) for all LICENSED EQUIPMENT sold or otherwise disposed
of by BRIGHTSTAR and its AFFILIATES during that quarter or shall certify that no
LICENSED EQUIPMENT has been sold or otherwise disposed of. BRIGHTSTAR shall
report, at the time of each such royalty payment, the total number of units of
LICENSED EQUIPMENT sold or otherwise disposed of during the fiscal quarter and
the total number of units of EQUIPMENT sold or otherwise disposed of during the
fiscal quarter. BRIGHTSTAR shall identify the manufacturer or assembler of any
LICENSED EQUIPMENT sold or otherwise disposed of by BRIGHTSTAR. In the event
BRIGHTSTAR sold or otherwise disposed of LICENSED EQUIPMENT under the trade
identity of a third party during such fiscal quarter, BRIGHTSTAR shall
separately report the identities of all such third parties under whose trade
identity BRIGHTSTAR sold or otherwise disposed of such LICENSED EQUIPMENT during
such fiscal quarter.
4.4 No royalties shall be payable for any EQUIPMENT which is manufactured,
sold for subsequent use, and used entirely within a jurisdiction where no
LICENSED ESSENTIAL PROPERTY of MOTOROLA applies to such EQUIPMENT or its
intended use or operation. BRIGHTSTAR shall disclose to MOTOROLA the
jurisdiction of manufacture, sale, and use, and the number of units of EQUIPMENT
sold or otherwise disposed of by BRIGHTSTAR and its AFFILIATES for which
BRIGHTSTAR contends that no royalties are due because of the operation of this
Section 4.4 and the total number of units of such EQUIPMENT.
[***]
4.6 Any payment hereunder which shall be delayed beyond the due date shall
be subject to an interest charge of [***] percent per month on the unpaid
balance payable in United States currency until paid. The foregoing payment of
interest shall not affect MOTOROLA'S right to terminate in accordance with
Section 5.
4.7 With respect to the royalty set forth in Section 4.1 and the reporting
requirements of Sections 4.2, 4.3 and 4.4, BRIGHTSTAR shall keep clear and
accurate records with respect to LICENSED EQUIPMENT sold or otherwise disposed
of. These records shall be retained for a period of three (3) years from date of
reporting and payment notwithstanding the expiration or
10
other termination of this Agreement. MOTOROLA shall have the right through an
internationally recognized accounting firm and at its expense, to examine and
audit, not more than once a year upon not less than ten (10) days prior written
notice, and during normal business hours, all such records and such other
records and accounts as may under recognized accounting practices contain
information bearing upon the amount of royalty payable to MOTOROLA under this
Agreement. Such internationally recognized accounting firm shall be bound in
writing to maintain the confidentiality of and not disclose the contents of such
records except to the extent necessary to disclose the results of the audit to
MOTOROLA or as otherwise required by law or legal process. Prompt adjustment
shall be made by BRIGHTSTAR to compensate for any errors and/or omissions
disclosed by such examination or audit. If the amount of such error and/or
omission exceeds [***] of the royalty paid by BRIGHTSTAR for such audited
period, BRIGHTSTAR shall pay MOTOROLA an additional fee equal to [***]
(calculated from the date due until the date paid) of such error and/or
omission in addition to necessary costs and expenses incurred by MOTOROLA in
conducting such audit.
4.8 MOTOROLA shall bear all taxes imposed on it with respect to the
payments of this Section, provided, however, that if so required by applicable
law, BRIGHTSTAR shall withhold the amount of taxes levied on payments to be made
by BRIGHTSTAR pursuant to this Agreement, and shall promptly make payment of the
withheld amount to the appropriate tax authorities and shall transmit to
MOTOROLA official tax receipts or other evidence issued by said appropriate tax
authorities sufficient to enable MOTOROLA to support a claim for tax credit in
respect to such withheld taxes so paid by BRIGHTSTAR.
[***]
Section 5 - TERM, TERMINATION AND ASSIGNABILITY
5.1 The term of this Agreement shall be from the EFFECTIVE DATE until the
cessation of the manufacture of EQUIPMENT hereunder by both parties and their
respective AFFILIATES unless earlier terminated as elsewhere provided in this
Agreement.
5.2 The licenses granted herein shall continue through the entire unexpired
term of LICENSED ESSENTIAL PROPERTIES unless otherwise terminated as provided
herein. Any royalty obligation under Section 4.1 and any reporting or record
keeping obligations under Sections 4.2, 4.3, 4.4 or 4.7 of BRIGHTSTAR or its
AFFILIATES shall not extend beyond the
11
expiration of the last of the LICENSED ESSENTIAL PROPERTIES of MOTOROLA licensed
herein.
5.3 In the event of any material breach of this Agreement by either party
hereto, if such breach is not corrected within sixty (60) days after written
notice to the breaching party describing such breach, this Agreement may be
terminated forthwith by further written notice to that effect from the party
noticing the breach. [***]
5.4 The rights or privileges provided for in this Agreement may be assigned
or transferred by either Party only with the prior written consent of the other
Party and with the authorization or approval of any governmental authority as
then may be required. Written consent shall be deemed given by the other Party
if that Party fails to respond to a written request from the transferring Party
within fifteen (15) business days of the receipt of such notice. With respect to
this Section 5.4, if some or all of the assets of a Party to this Agreement are
acquired by a third party, the rights or privileges provided for in this
Agreement may be assigned or transferred to the acquiring third party only with
the prior written consent of the other Party and only if the acquiring third
party, and AFFILIATES of the acquiring third party at the time of such
acquisition, agree to perform the Agreement and to be bound by all of the terms
and conditions in every way as if it had been an original Party to the
Agreement, including payment of any royalties due by a Party at the time of such
acquisition.
Section 6 - WARRANTIES
6.1 License grants by Licensor are warranted by Licensor to include grants
by all AFFILIATES of Licensor under all LICENSED ESSENTIAL PROPERTIES of such
AFFILIATES as and when an entity becomes an AFFILIATE. Subject to the
termination provisions of Section 5, any license grants under LICENSED ESSENTIAL
PROPERTIES of an AFFILIATE shall be for the lives of those LICENSED ESSENTIAL
PROPERTIES regardless of whether or not such entity remains an AFFILIATE.
6.2 Each party warrants that it has the requisite authority to convey the
rights granted herein. Each party warrants that through the EFFECTIVE DATE of
this Agreement no commitments which would restrict its right to grant the
licenses and rights contemplated herein exist or shall be entertained for the
duration of this Agreement.
6.3 Licensee warrants that any AFFILIATE of Licensee, licensed hereunder,
shall undertake all obligations contained herein as if such AFFILIATE were
directly named as a party to this Agreement.
12
Motorola Confidential and 13 20 June 2002
Proprietary
Section 7 - PUBLICITY
7.1 Nothing in this Agreement shall be construed as conferring upon either
party the right to include in advertising, packaging or other commercial
activity any reference to the other party, its trademarks, trade names, service
marks, or other trade identity in a manner likely to cause confusion.
7.2 Either party may disclose the existence of this Agreement, but the
terms of this Agreement and any reports, materials or other documents submitted
in accordance with the terms of this Agreement shall be maintained in confidence
and the Parties shall not now nor hereafter divulge any part thereof to any
third party except:
7.2.1 with the prior written consent of the other party; or
7.2.2 to any governmental body having jurisdiction to request and to read the
same; or
7.2.3 as otherwise may be required by law or legal processes; or
7.2.4 to auditors and accountants representing either party, provided that,
in case of any divulgence pursuant to this Section 7.2.4, to the extent
permissible by law, such divulging party shall impose equivalent confidentiality
obligations on the recipient in writing prior to such divulgence;or
7.2.5 to its AFFILIATES provided that, in case of any divulgence pursuant to
this Section
7.2.5, to the extent permissible by law, such divulging party shall impose
equivalent confidentiality obligations on the recipient in writing prior to such
divulgence,
7.2.6 Notwithstanding anything to the contrary herein, the provisions of this
Section 7.2 shall survive termination of this Agreement and for twenty (20)
years thereafter.
7.3 Notwithstanding the above, no disclosure of this Agreement shall be
made pursuant to Section 7.2.2 or 7.2.3 without the disclosing party first
giving the other party reasonable prior notice of such intended disclosure so
as to allow the other party sufficient time to seek a protective order or
otherwise assure the confidentiality of this Agreement as that other party shall
deem appropriate.
Section 8 - MISCELLANEOUS PROVISIONS
8.1 Nothing contained in this Agreement shall be construed as:
8.1.1 restricting the right of either party or any of its AFFILIATES to make,
use, sell, lease or otherwise dispose of any particular product or products not
herein licensed;
8.1.2 conferring any license or other right, by implication, estoppel or
otherwise, under any patent application, patent or patent right, except as
herein expressly granted;
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8.1.3 conferring any license or right with respect to any trademark, trade or
brand name, a corporate name of either party or any of their respective
AFFILIATES, or any other name or mark, or contraction, abbreviation or
simulation thereof;
8.1.4 imposing on either party any obligation to institute any suit or action
for infringement of any PROPERTY or to defend any suit or action brought by a
third party which challenges or concerns the validity of any PROPERTY licensed
under this Agreement;
8.1.5 a warranty or representation by either party that any manufacture, use,
sale, lease or other disposition of EQUIPMENT will be free from infringement of
any patent other than the PROPERTIES licensed herein;
8.1.6 imposing on either party any obligation to file any patent application
or to secure any patent or maintain any patent in force; or
8.1.7 an obligation on either party to furnish any manufacturing or technical
information under this Agreement, or
8.1.8 an admission by BRIGHTSTAR of, or a warranty or representation by
MOTOROLA as to, the validity and/or scope of the LICENSED ESSENTIAL PROPERTIES
of MOTOROLA or a limitation on BRIGHTSTAR to contest, in any proceeding, the
validity and/or scope thereof except as specifically provided for herein; or
8.1.9 an admission by MOTOROLA of, or a warranty or representation by
BRIGHTSTAR as to, the validity and/or scope of the LICENSED ESSENTIAL PROPERTIES
of BRIGHTSTAR or a limitation on MOTOROLA to contest, in any proceeding, the
validity and/or scope thereof except as specifically provided for herein.
8.2 No express or implied waiver by either of the parties to this Agreement
of any breach of any term, condition or obligation of this Agreement by the
other party shall be construed as a waiver of any subsequent breach of that
term, condition or obligation or of any other term, condition or obligation of
this Agreement of the same or of a different nature.
8.3 Anything contained in this Agreement to the contrary notwithstanding,
the obligations of the parties hereto shall be subject to all laws, both present
and future, of any Government having jurisdiction over either party hereto, and
to orders or regulations of any such Government, or any department, agency, or
court thereof, and to any contingencies resulting from acts of war, acts of
public enemies, strikes, or other labor disturbances, fires, floods, acts of
God, or any causes of like or different kind beyond the control of the parties,
and the parties hereto shall be excused from any failure to perform any
obligation hereunder to the extent such failure is caused by any such law,
order, regulation, or contingency but only so long as said law, order,
regulation or contingency continues.
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8.4 This Agreement is the result of negotiation between the parties and,
accordingly, shall not be construed for or against either party regardless of
which party drafted this Agreement or any portion thereof.
8.5 Nothing in this Agreement shall be construed as creating a partnership,
joint venture, or other formal business organization of any kind.
8.6 In no event shall either party be liable to the other party by reason
of this Agreement or any breach or termination of this Agreement for any loss of
prospective profits or incidental or special or consequential damages.
8.7 The captions used in this Agreement are for convenience only, and are
not to be used in interpreting the obligations of the parties under this
Agreement.
8.8 With respect to matters of contract construction and interpretation,
the substantive law of the state of Delaware, United States of America shall
apply. However, with respect to matters of infringement and validity of
intellectual property rights, the substantive law of the nation having
jurisdiction over such property or over matters affecting such intellectual
property rights shall be applied.
8.9 If any term, clause, or provision of this Agreement shall be judged to
be invalid, the validity of any other term, clause, or provision shall not be
affected; and such invalid term, clause, or provision shall be deemed deleted
from this Agreement.
8.10 This Agreement sets forth the entire Agreement and understanding
between the parties as to the subject matter hereof and merges all prior
discussions between them, and neither of the parties shall be bound by any
conditions, definitions, warranties, understandings or representations with
respect to such subject matter other than as expressly provided herein or as
duly set forth on or subsequent to the date hereof in writing and signed by a
proper and duly authorized official of the party to be bound thereby.
8.11 All notices required or permitted to be given hereunder shall be in
writing and shall be valid and sufficient if dispatched by express mail, postage
prepaid, in any post office in the United States, addressed as follows or to
such other address as a Party may notify the other in accordance with this
Section 8.11:
8.11.1 If to MOTOROLA:
Motorola, Inc.
1303 East Algonquin Road
Schaumburg, Illinois 60196
Attention: Vice President for
Patents, Trademarks & Licensing
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8.11.2 If to BRIGHTSTAR:
Brightstar Corp.
2010 N.W. 84th Avenue
Miami, Florida 33122
Attention: Jaime Narea
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8.11.3 The date of receipt of such a notice shall be the date for the
commencement of the running of the period provided for in such notice, or the
date at which such notice takes effect, as the case may be.
IN WITNESS WHEREOF, each party hereto has caused this Agreement to be executed
in duplicate by its duly authorized representative:
MOTOROLA, INC. BRIGHTSTAR CORP.
Name: F. John Motsinger Name: R. Marcelo Claure
-------------------------- --------------------------
Signature: /s/ F. John Motsinger Signature: /s/ R. Marcelo Claure
--------------------- ---------------------
Title: Corporate Vice President, Title: CEO
Director, Industry Relations & -------------------------
Licensing
-------------------------
Date: 7-17-02 Date: 6/21/02
-------------------------- --------------------------
MOTOROLA, INC.
Name: Jonathan P. Meyer
--------------------------
Signature: /s/ Jonathan P. Meyer
---------------------
Title: Sr. Vice President &
Assistant General Counsel
Intellectual Property
Section
Law Dept.
-------------------------
Date: 7-17-02
--------------------------
Motorola Confidential and
Proprietary 17 20 June 2002
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