**Exhibit 10.97**

** **

**[***].  Confidential Treatment Requested – Certaininformation in this exhibit has been omitted and filed separately with thecommission.  Confidential treatment hasbeen requested with respect the omitted portions.**

** **

**INFRASTRUCTURE EQUIPMENT LICENSE AGREEMENT**

** **

ThisInfrastructure Equipment License Agreement (the “Agreement”) is entered into onJanuary 30, 2004 by and between QUALCOMM Incorporated, a Delawarecorporation, and UTStarcom, Inc., a Delaware corporation, with respect to thefollowing facts:

 

**RECITALS**

** **

WHEREAS, QUALCOMMhas developed certain proprietary Code Division Multiple Access technology thatmay be useful in providing greater capacity and improved quality andreliability compared to other Wireless telecommunications technologies;

 

WHEREAS, LICENSEEdesires to obtain a license of QUALCOMM’S Intellectual Property to manufactureand sell the Licensed Products, and QUALCOMM desires to grant such license inaccordance with the terms and conditions set forth in this Agreement; and

 

WHEREAS, QUALCOMMdesires to obtain a license of LICENSEE’s Intellectual Property to manufacture,use and sell the Licensed Products and Components and LICENSEE desires to grantsuch license in accordance with the terms and conditions set forth in this Agreement.

 

**AGREEMENT**

** **

NOW THEREFORE, theParties hereby agree as follows:

 

# 1.                                       HEADINGS AND DEFINITIONS.

#  

All headings usedin this Agreement are inserted for convenience only and are not intended toaffect the meaning or interpretation of this Agreement or any clause.  Reference to “third party” or “thirdparties” shall not mean either Party or their Affiliates.  For the purpose of this Agreement, thefollowing definitions apply:

 

“Affiliates”means, as to a Party, any present or future Parent of the Party and any presentor future Subsidiary of the Party and/or its Parent, but only for so long asthe Parent remains the Parent of the Party and the Subsidiary remains aSubsidiary of the Party and/or its Parent. The term “Parent’’ means any corporation or other legal entity that ownsor controls, directly or indirectly (i) more than 50% of the shares or othersecurities of the Party entitled to vote for election of directors (or othermanaging authority) of the Party or (ii) if such Party does not have outstandingshares or securities, more than 50% of the equity interest in such Party, butonly for so long as such ownership or control exists in (i) or (ii) above.  The term “Subsidiary” of a party means anycorporation or other legal entity (i) the majority (more than 50%) of whoseshares or

 

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other securitiesentitled to vote for election of directors (or other managing authority) is nowor hereafter owned or controlled by such party either directly or indirectly or(ii) which does not have outstanding shares or securities but the majority(more than 50%) of the equity interest in which is now or hereafter owned orcontrolled by such party either directly or indirectly, but only for so long assuch ownership or control exists in (i) or (ii) above.

 

“BSC” means thebase station controller, which contains the controlling elements and resourcesthat provide a channel between the BTS(s) and the System Switch.  The BSC or any of the elements containedwithin the definition of the BSC may be a part of or integrated into the SystemSwitch.

 

“BTS” means thebase station transceiver subsystem, which is wireless access equipment thatprovides for network receive and/or transmit functionality to and/or fromSubscriber Units as a part of a cell site for Wireless Applications.  The BTS is the link between the SubscriberUnits and the BSC.  Included in the BTSare the antennas, transmitters, receivers, power amplifiers and interfacehardware to support the link to the BSC.

 

“CDMA” means codedivision multiple access technology.

 

“CDMAApplications” means all communication applications (regardless of thetransmission medium) that operate using code division multiple access (“CDMA”)technology, whether or not based on IS-95, cdma2000 or W-CDMA, and irrespectiveof frequency band.

 

“CDMA ASIC” meansQUALCOMM’s cell site modem (CSM) CDMA application specific integrated circuit(including the hardware, firmware and/or associated software that runs on theASIC), and any revision, generation, modifications or integration to or of theCSM, purchased by LICENSEE from QUALCOMM.

 

“CDMA EnablingInfrastructure Equipment” means any product (including all of the Components,hardware, firmware and/or software contained therein) which performs any or allof the Functions and which is for use as part of (included within) either theBTS, BSC or System Switch, irrespective of whether initially Sold as part of(included within) a BTS, BSC or System Switch or as products to be added toexisting BTSs, BSCs or System Switches. CDMA Enabling Infrastructure Equipment does not mean Subscriber Units,Components (although Components may be incorporated into the CDMA EnablingInfrastructure Equipment that is Sold by a Party) or any assembly orsubassembly that is not a field replaceable unit.  CDMA Enabling Infrastructure Equipment includes, as an exampleand not by way of limitation, the (i) CDMA controller, (ii) DistributedAntenna, meaning a multi-node antenna system and related circuitry (excludingthe fair value of the antenna element) that is designed to make use of delaysin CDMA signal transmission and/or reception so that the rake receiverfunctionality can be utilized and (iii) SBS, meaning the selector banksubsystem that includes (a) selectors that support soft and/or hard handoff,(b) the vocoders, (c) data services using any of QUALCOMM’s IntellectualProperty, (d) fax services using any of QUALCOMM’s Intellectual Property and/or(e) other service options using any of QUALCOMM’s Intellectual Property.

 

“Channel Units”means any BTS module or field replaceable assembly used to modulate ordemodulate the CDMA waveform, process the data and/or perform ancillaryfunctions related to

 

2

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one or more CDMAchannels for communication between a BTS and Subscriber Units.  Examples of CDMA channels include, but arenot limited to traffic, paging, sync, pilot and access channels.  Any Component is not a Channel Unit, butChannel Units may contain Components.

 

“CommerciallyNecessary IPR” means those Intellectual Property Rights which (i) the Party orits Affiliates has the right to license to the other Party without payment ofroyalties or any other consideration to any third party, (ii) are not essentialto the manufacture, use or sale of Licensed Products and/or Components thatcomply with the specifications of the CAI and (iii) provide Licensed Productsand/or Components with a competitive advantage (e.g., cost, lead-time orquality advantages) or which add to Licensed Products or Components a featureor other characteristic which may be reasonably required by the market place;but the term Commercially Necessary IPR does not include any trade name,trademark, service mark, or similar symbols, abbreviations, contractions orsimulations identifying the Party and/or its Affiliates (except as set forth inSection 8, if the Party is QUALCOMM).

 

“Common AirInterface” or “CAI” means (i) the TIA’s IS-95 digital cellular standard andother CDMA standards which specify the same Physical Layer as IS-95 if approvedby QUALCOMM and adopted by other international standards bodies throughout theworld, and (ii) the technical description of any third generation CDMA airinterface standard for communication between cell site or other base stationtransceivers and Subscriber Units which (a) is adopted as an industry standardby the Telecommunications Industry Association (“TIA”), the EuropeanTelecommunication Standards Institute (“ETSI”), Japan’s Association of RadioIndustries and Businesses (“ARIB”) or other recognized international standardsbodies, (b) has been approved by QUALCOMM (i.e. QUALCOMM voted in favor of adopting such standard), (c) supportsoperation with both GSM MAP and ANSI-41 networks in all operational (whetheroptional or not) modes or configurations, and (d) includes a multi-carrier, FDDCDMA mode of operation and/or a direct sequence, FDD CDMA mode of operation.

 

“Components” meansapplication specific integrated circuits (ASICs), electronic devices,integrated circuits, multi-chip modules, including firmware thereon andaccompanying or associated software, and/or families of devices for use inproducts for wireless telecommunication equipment, including, but not limitedto, Licensed Products and Subscriber Units.

 

“Costs” as suchterm is used [***] shall include all actual labor, material and other directcosts, expenses and associated burdens, including overheads and general andadministrative expenses, a reasonable amortization of associated research anddevelopment expenses, and warranty costs, all as consistently applied inaccordance with U.S. generally accepted accounting principles (GAAP).

 

“DistributedAntenna” means a multi-node antenna system and related circuitry that isdesigned to make use of delays in CDMA signal transmission and/or reception sothat the rake receiver functionality can be utilized.

 

“Effective Date”means the date first set forth above.

 

3

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“Ericsson” meansTelefonaktiebolaget LM Ericsson (publ), a Swedish corporation and any of its subsidiariesin which it owns or controls fifty percent (50%) or more of the voting power.

 

“Functions” meansany or all of the following which incorporates any or all of QUALCOMM’sIntellectual Property:  (i) handoff,(ii) CDMA waveform modulation and/or demodulation, (iii) power control, (iv)call packet connection and/or routing, (v) paging, (vi) voice encoding and/ordecoding (vocoder) services, (vii) data services, (viii) fax services, (ix)system initialization and configuration, (x) diagnostic monitoring ormaintenance of any of the foregoing functions and/ or (xi) any other function.

 

“FutureCommercially Necessary IPR” means all claims of any patents (foreign anddomestic) which fall within the definition of Commercially Necessary IPR, butwhich do not fall within the definition of Included Commercially Necessary IPR.

 

“Have Made” meansthe right of LICENSEE under Ericsson’s Patents to have a third party make aLicensed Product for CDMA Applications for the use and benefit of LICENSEE,provided that:

 

(i)                                     LICENSEEowns and supplies the designs, or specifications, or working drawings to suchthird party;

 

(ii)                                  suchdesigns, specifications, and working drawings are in sufficient detail that nosubstantial additional design by such third party is required;

 

(iii)                               such third party is notallowed to sell such Licensed Product to other third parties; and

 

(iv)                              eachsuch Licensed Product sold by LICENSEE shall bear the trademarks, trade names,or other commercial indicia of LICENSEE, although such Licensed Products may beco-branded with the trademarks, trade names, or other commercial indicia of thereseller or distributor of such Licensed Products.  The requirements of this subparagraph (iv) shall not apply wherea customer requires that the Licensed Product bear only such customer’strademarks, trade names, or other commercial indicia.

 

“IncludedCommercially Necessary IPR” means (1) with respect to the Intellectual PropertyRights being licensed by QUALCOMM, (a) all claims of any patents (foreign anddomestic) which are now issued or which are applied for on or before theEffective Date and which constitute Commercially Necessary IPR and (b) allcopyright, trade secrets, know-how, technical assistance and other intellectualproperty rights which constitute Commercially Necessary IPR and which may befurnished by QUALCOMM to LICENSEE pursuant to and during the term of thisAgreement and (2) with respect to the Intellectual Property Rights beinglicensed by LICENSEE, (a) all claims of any patents (foreign and domestic)which are now issued or which are applied for on or before the Effective Dateand which constitute Commercially Necessary IPR and (b) all copyright, tradesecrets, know-how, technical assistance and other intellectual property rightswhich constitute Commercially Necessary IPR and which may be furnished byLICENSEE to QUALCOMM pursuant to and during the term of this Agreement.

 

4

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“IntellectualProperty Rights” means patents, copyrights, trade secrets, know-how and otherintellectual property rights.

 

“InterDigital”means InterDigital Communications Corporation, InterDigital Patents Corporationand/or InterDigital Technology Corporation.

 

“InterDigital’sExcluded Patents” means those claims of each of InterDigital’s [***].

 

“InterDigital’sFive Patents” means [***].

 

“InterDigital’sIncluded Patents” means [***].

 

“InterDigital’sPatents” means [***].

 

“IS-95 RelatedSystems” means IS-95 and any single carrier system with a spreading bandwidthnot greater than 1.25 MHz and based on or derived from IS-95.

 

“LicensedProducts” means only BSCs, BTSs, System Switches, Channel Units, and CDMAEnabling Infrastructure Equipment.

 

“LICENSEE” meansUTStarcom, Inc., a Delaware corporation.

 

“LICENSEE’sIntellectual Property” means LICENSEE’s and its Affiliates’ TechnicallyNecessary IPR and LICENSEE’s and its Affiliates’ Included CommerciallyNecessary IPR.

 

“Masks” and “MaskSets” mean the mask sets for Components and/or the computer output data used togenerate the mask sets for Components.

 

“Net SellingPrice”, with respect to each Licensed Product Sold by LICENSEE, shall mean oneof the following, whichever is applicable:

 

(a)                                  WhenSold by LICENSEE to a Purchaser (a “Purchaser” being a person or entity thatdoes not control LICENSEE, is not controlled by LICENSEE or is not in commoncontrol with LICENSEE; and the term “control” for the above purposes shall meanthe direct or indirect ownership or control of more than a [***]), the NetSelling Price shall be [***]; or

 

(b)                                 WhenSold by LICENSEE to a Related Carrier or to a person or entity that is not aPurchaser (in either case, a “Related Buyer”), the Net Selling Price shall be[***]; or

 

(c)                                  Whenretained by LICENSEE for its own use or lease, or when Sold by LICENSEE to aRelated Buyer for its own use or lease, the Net Selling Price shall be [***].

 

“Party” shallindividually mean QUALCOMM or LICENSEE and the term “Parties” shallcollectively mean QUALCOMM and LICENSEE.

 

“Philips” shallmean Philips Electronics N.V., a company existing under the laws of theNetherlands.

 

“Philips’ CDMATechnically Necessary Patents” means [***].

 

5

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“Physical Layer”shall have the same meaning given in the TIA’s IS-95 digital cellular standard.

 

“QUALCOMM’sIntellectual Property” means QUALCOMM’s Technically Necessary IPR andQUALCOMM’s Included Commercially Necessary IPR and InterDigital’s Patents;provided that, notwithstanding the foregoing, the term “QUALCOMM’s IntellectualProperty” shall not include any intellectual property owned by SnapTrack, Inc.,including but not limited to its patents.

 

“QualifyingLicensed Product” means a Licensed Product that contains and incorporates aCDMA ASIC purchased by LICENSEE from QUALCOMM.

 

“Related Carrier”means a wireless communications system operator that (i) owns or controls,either directly or indirectly, a Significant Interest in LICENSEE, (ii) aSignificant Interest of which is owned or controlled, either directly orindirectly, by LICENSEE, or (iii) a Significant Interest of which is owned orcontrolled, either directly or indirectly, by a third party that also owns orcontrols, either directly or indirectly, a Significant Interest in LICENSEE;and for purposes of this definition, the term “Significant Interest” shall meanthe direct or indirect ownership or control of more than a twenty percent (20%)interest.

 

“Selling Price”means the gross selling price and/or value of other consideration charged bythe LICENSEE or its final vendee Related Buyer for each Licensed Product in theform in which it is Sold (whether or not assembled and without excludingtherefrom any Components or subassemblies thereof which are included with suchLicensed Product) deducting therefrom only the following items [***].

 

“Sold,” “Sale,”“Sell” means put into use, sold, leased or otherwise transferred and a saleshall be deemed to have occurred upon putting into use, shipment or invoicing,whichever shall first occur.

 

“Subscriber Unit”means a CDMA telephone, including but not limited to mobile, transportable andportable telephones, which can be used to initiate and receive Wireless CDMAtelecommunications transmissions.

 

“System Switch”means the telephone switching equipment that provides the interface between aWireless system and the PST=N and/or may provide the interface between BTSsand/or BSCs.

 

“TechnicallyNecessary IPR” means all claims of any patents (foreign and domestic) issuedon, before or after the Effective Date which (i) the Party or its Affiliateshas the right to license to the other Party without payment of royalties or anyother consideration to any third party and (ii) is essential to themanufacture, use or sale of a usable Licensed Product and/or Component whichcomplies with the specifications of the CAI (i.e., must be infringed upon inorder to comply with the CAI); but the term Technically Necessary IPR does notinclude any trade name, trademark, service mark, or similar symbols,abbreviation, contractions or simulations identifying the Party and itsAffiliates (except as set forth in Section 8, if the Party is QUALCOMM).

 

“Wireless” and“Wireless Applications” means terrestrial-based, land mobile, wirelesstelecommunications applications, including but not limited to cellular, personalcommunications

 

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services (PCS),wireless local loop and wireless PABX applications which are based upon andcompliant with the CAI.  Notwithstandingthe foregoing, the terms “Wireless” and/or “Wireless Applications” shall notinclude (i) satellite applications (defined as any application which utilizes adirect connection between the Subscriber Unit and any satellite), and/or (ii)Cordless Telephone Applications (defined as applications not dependent on useof a switch, including but not limited to a PABX switch, for interface to thepublic network).

 

# 2.                                       TERM OF AGREEMENT.

#  

This Agreementshall commence upon the Effective Date and, unless otherwise terminated orcanceled as provided herein, shall continue in full force and effectthereafter.

 

# 3.                                       UP-FRONT LICENSE FEE TO QUALCOMM.

#  

In partialconsideration of the rights granted to LICENSEE under this Agreement, LICENSEEshall pay [***].

 

# 4.                                       TECHNICAL ASSISTANCE.

#  

## 4.1                                 Technical Meetingsand Assistance.  Upon writtenrequest from LICENSEE with reasonable advance written notice, QUALCOMM shallprovide reasonable amounts of technical assistance to LICENSEE on an asavailable basis and at QUALCOMM’s then standard rates for providing suchtechnical assistance.  In such event,QUALCOMM shall be permitted to invoice LICENSEE for such charges on a bi-weeklybasis.  Payment by LICENSEE with respectto such invoices shall be on a [***] basis after the date of the invoice.  QUALCOMM may terminate such additionaltechnical assistance at any time upon written notice to LICENSEE.  This Agreement shall not require QUALCOMM toprovide any technical assistance relating to the design of Components or anytechnical assistance not related to Licensed Products.

##  

## 4.2                                 Limitation on Deliverables.  Nothing in this Agreement shall require thedelivery of any documentation or product designs, including but not limitedto:  (a) any Mask Sets developed byQUALCOMM, (b) any micro-code for embedded processors, (c) any of the detailedalgorithms for any Components, or (d) the source code of the real-time DSPimplementation of the vocoder.

##  

## 4.3                                 Representations andLimitations on Furnished Information. QUALCOMM shall use reasonable commercial efforts to verify the accuracyof the information furnished by it hereunder, but QUALCOMM shall not be liablefor damages arising out of or resulting from anything made available hereunderor the use thereof nor be liable to LICENSEE for consequential, special orincidental damages under any circumstances. The sole obligation of QUALCOMM with respect to such information shall,subject to the other provisions herein or in other written agreements betweenthe Parties, be to furnish it to LICENSEE. QUALCOMM shall have no responsibility for the ability of LICENSEE to usesuch information, the quality or performance of the products produced therefromby LICENSEE, or the claims of third parties arising from the use of suchproducts or information.  QUALCOMM doesnot warrant and shall not be responsible for any design, specification,drawing, blueprint, reproduced tracing, or other data or information furnishedby it to LICENSEE, except that it shall furnish such in good faith to the bestof QUALCOMM’s knowledge and ability.

##  

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# 5.                                       QUALCOMM LICENSE.

#  

## 5.1                                 Grant of LicenseFrom QUALCOMM.  Subject to the termsand conditions of this Agreement, including but not limited to timely paymentof the license fees and royalties set forth herein, QUALCOMM hereby grants toLICENSEE a worldwide, personal, nontransferable and non-exclusive license [***]to use QUALCOMM’S Intellectual Property solely for Wireless Applications (a) tomake (and have made) and import, use, sell, lease or otherwise dispose ofLicensed Products and (b) to make (and have made) Components that have beendesigned exclusively by or for LICENSEE (which design is owned and usedexclusively by LICENSEE) and import, use, sell, lease or otherwise dispose ofsuch Components; provided, however, that such Components may only be used,sold, leased or otherwise disposed of by LICENSEE if they are included as partof and within complete Licensed Products Sold by LICENSEE (or as replacementparts for Licensed Products previously Sold by LICENSEE).  No other, further or different license ishereby granted or implied.

##  

### 5.1.1                        InterDigital’s Patents.  The license granted by QUALCOMM underSection 5.1 with respect to InterDigital’s Patents is subject to all otherlimitations set forth in this Agreement that are applicable to all ofQUALCOMM’s Intellectual Property licensed hereunder and is also subject to thefollowing limitations:

###  

[***]

 

## 5.2                                 Royalties.  In partial consideration of the rightsgranted to LICENSEE under this Agreement, LICENSEE shall pay to QUALCOMM, nolater than [***] days after the end of each calendar quarter, an amount equalto [***].

##  

QUALCOMM willcredit to LICENSEE the amount of any overpayment of royalties made hereunder inerror provided that such overpayment is identified and fully explained in awritten notice from LICENSEE to QUALCOMM delivered no later than [***] afterthe due date of the payment which included such alleged overpayment, providedfurther that QUALCOMM is able to verify to its own satisfaction the existenceand extent of such overpayment.  Theforegoing procedure shall constitute the sole basis for LICENSEE to claimoverpayments under this Agreement and shall not be affected by any statementappearing on any check, royalty report, cover letter, or other document, exceptto the extent agreed upon by QUALCOMM in a writing signed by an authorizedrepresentative of QUALCOMM.

 

## 5.3                                 Right To SublicenseAffiliates.  LICENSEE shall have theright to grant sublicenses only to Affiliates of LICENSEE with respect to anyrights conferred upon LICENSEE under this Agreement; provided, however, that(i) LICENSEE shall not have the right to grant sublicenses to [***] withoutfirst obtaining QUALCOMM’s written approval, which approval shall be atQUALCOMM’s sole discretion, and (ii) any such sublicense shall be subject inall respects to the restrictions, exceptions, royalty and other paymentobligations, reports, termination provisions, and other provisions contained inthis Agreement.  LICENSEE shall also payor cause its sublicensed Affiliates to pay the same royalties on all LicensedProducts Sold by its sublicensed Affiliates as if LICENSEE had Sold suchLicensed Products.  LICENSEE shallreport to QUALCOMM the [***] for all Licensed Products Sold by each such Affiliate.  LICENSEE shall be responsible and liable toQUALCOMM in the event that any of

##  

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## its sublicensed Affiliates fails under any such sublicense to honor andcomply with all obligations of LICENSEE as though said obligations were madeexpressly applicable to the sublicensed Affiliate.  Except as set forth above, LICENSEE shall have no right tosublicense any of QUALCOMM’s Intellectual Property.  Any sublicense by LICENSEE to an Affiliate of LICENSEE shallterminate immediately if such Affiliate ceases to be an Affiliate of LICENSEE.

##  

## 5.4                                 [***].

##  

## 5.5                                 Taxes.  Any taxes, duties or imposts other thanincome or profits taxes assessed or imposed upon the sums due hereunder in theUnited States shall be borne and discharged by [***].  Notwithstanding the foregoing, in the event sums payable underthis Agreement (other than the [***]) become subject to income or profits taxesunder the tax laws of any country and applicable treaties between the UnitedStates and such country, [***].

##  

## 5.6                                 Conversion to U.S. Dollars.  Royalties shall be paid in US. dollars.  To the extent that the [***] for LicensedProducts Sold by LICENSEE outside of the United States is paid to LICENSEEother than in US. dollars, LICENSEE shall convert the portion of the royaltypayable to QUALCOMM from such [***] into U.S. dollars at the official rate ofexchange of the currency of the country from which the [***] was paid, asquoted by the U.S. Wall Street Journal (or the Chase Manhattan Bank or anotheragreed-upon source if not quoted in the Wall Street Journal) for the lastbusiness day of the calendar quarter in which such Licensed Products wereSold.  If the transfer of or theconversion into U.S. dollars is not lawful or possible, the payment of suchpart of the royalties as is necessary shall be made by the deposit thereof, inthe currency of the country where the sale was made on which the royalty wasbased to the credit and account of QUALCOMM or its nominee in any commercialbank or trust company of QUALCOMM’s choice located in that country, promptnotice of which shall be given by LICENSEE to QUALCOMM.

##  

## 5.7                                 [***].

##  

## 5.8                                 Ericsson Patents.

##  

### 5.8.1                        Ericsson Patents [***].

###  

### 5.8.2                        [***] Under Ericsson’s Patents[***].

###  

### 5.8.3                        [***]

 

# 6.                                       LICENSE BY LICENSEE.

#  

## 6.1                                 Grant of Licensefrom LICENSEE.  Subject to the termsand conditions of this Agreement, LICENSEE hereby grants to (a) QUALCOMM aworldwide, personal, nontransferable, non-exclusive, fully-paid, irrevocableand royalty free license (without the right to sublicense, except to Affiliatesof QUALCOMM as permitted in Section 6.2) to use LICENSEE’s IntellectualProperty to make (and have made) and import, use, sell, lease or otherwisedispose of Licensed Products, and (b) QUALCOMM and a Successor (as definedbelow) a worldwide, personal, nontransferable, non-exclusive, fully-paid,irrevocable and royalty free license (without the right to sublicense, exceptto Affiliates of QUALCOMM and Affiliates

 

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## of a Successor as permitted in Section 6.2) to use LICENSEE’sIntellectual Property to make (and have made), import, use, sell, lease orotherwise dispose of Components.  Noother, further or different license is hereby granted or implied.  A “Successor” means any successor (bypurchase, divestiture, merger or otherwise) to all or substantially all ofQUALCOMM’s Components business.

##  

## 6.2                                 Right To SublicenseAffiliates.  QUALCOMM and theSuccessor shall have the right to grant sublicenses only to Affiliates ofQUALCOMM or the Successor, respectively, with respect to any rights conferredupon QUALCOMM or the Successor under this Agreement; provided, however, thatany such sublicense shall be subject in all respects to the restrictions,exceptions, termination provisions, and other provisions contained in thisAgreement.  QUALCOMM (or the Successor),in addition to its sublicensed Affiliates, shall be responsible and liable toLICENSEE in the event that any of its sublicensed Affiliates fails under anysuch sublicense to honor and comply with all obligations of QUALCOMM (or theSuccessor) as though said obligations were made expressly applicable to thesublicensed Affiliate.  Except as setforth above, QUALCOMM and the Successor shall have no right to sublicense anyof LICENSEE’s Intellectual Property.  Anysublicense by QUALCOMM or the Successor to an Affiliate of QUALCOMM or theSuccessor shall terminate immediately if such Affiliate ceases to be anAffiliate of QUALCOMM or the Successor, as the case may be.

##  

## 6.3                                 License Of FutureCommercially Necessary IPR.  EachParty agrees that, to the extent it makes licenses of Future CommerciallyNecessary IP generally available to third parties, it will, if requested by theother Party, offer such licenses to the other Party on commercially reasonableterms and conditions.

##  

# 7.                                       COMMITMENT BY LICENSEE.

#  

## 7.1                                 [***].

##  

## 7.2                                 License to ThirdParties.  LICENSEE agrees tonegotiate in good faith to promptly grant to Authorized Licensees that do notmeet the requirements of Section 7.1 a license to use all of LICENSEE’sTechnically Necessary IPR to make, use and sell Licensed Products andComponents for Wireless Applications. Each such license shall be granted at reasonable rates and otherwise onreasonable terms and conditions consistent with LICENSEE’s licensing policies,which may include that such third party grant a cross-license to LICENSEE ofTechnically Necessary IPR owned by such third party (as the term TechnicallyNecessary IPR would be construed if such third party were a party to thisAgreement).

##  

## 7.3                                 Best Efforts.  LICENSEE shall use its best efforts tomarket, promote and sell Licensed Products on a worldwide basis.

 

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# 8.                                       MARKING.

#  

LICENSEE agrees toaffix to the exterior or the interior of all Licensed Products incorporatingany of QUALCOMM’S Intellectual Property a legible notice reading:  “Licensed by QUALCOMM Incorporated under oneor more of the following Patents,” followed by a list of applicable patentnumbers taken from the list of QUALCOMM patents or as may otherwise beinstructed by QUALCOMM.

 

# 9.                                       QUALITY CONTROL.

#  

## 9.1                                 General Quality ofLicensed Products.  Throughout theterm of this Agreement, LICENSEE shall maintain, for the Licensed Productsmanufactured or Sold by it, at least the same manufacturing, servicing andquality standards currently utilized by LICENSEE in connection with its similaranalog and, if applicable, other digital products.

##  

## 9.2                                 StandardsCompliance Testing.  LICENSEErepresents and warrants that the Licensed Products and Components that it makesor has made will adhere with and conform to, in all respects, thespecifications contained in the CAI implemented by such Licensed Products andadopted in the territory in which such Licensed Products are intended to beused and that LICENSEE shall comply with the rules, regulations or otherrequirements set by such authorized standards body.  LICENSEE shall, at QUALCOMM’s reasonable written request, permitQUALCOMM or entities designated by QUALCOMM and accepted by LICENSEE, whichacceptance shall not be unreasonably withheld or delayed, to perform tests ofLICENSEE’s Licensed Products to ensure compliance and conformity with theapplicable CAI.  If such tests indicatematerial noncompliance or nonconformity therewith, such tests shall be at LICENSEE’scost and LICENSEE shall reimburse QUALCOMM for any such reasonable testsperformed by QUALCOMM at QUALCOMM’s Costs [***].  Nonconforming Licensed Products, if any, shall not be sold ormarketed by LICENSEE until the non-conformity is corrected.

##  

# 10.                                 INFORMATION

#  

## 10.1                           Restrictions onDisclosure and Use.  Alldocumentation and technical and business information and intellectual propertyin whatever form recorded that a Party does not wish to disclose withoutrestriction (“Information”) shall remain the property of the furnishing Partyand may be used by the receiving Party only as follows.  Such Information (a) shall not be reproducedor copied, in whole or part, except for use as expressly authorized in this Agreement;and (b) shall, together with any full or partial copies thereof, be returned ordestroyed when no longer needed or upon any termination of this Agreement, and(c) shall be disclosed only to employees or agents of a Party with a need toknow.  Moreover, such Information shallbe used by the receiving Party only for the purpose of performing under thisAgreement or in the exercise of its rights it may receive under the provisionsof this Agreement.  Unless thefurnishing Party consents in this Agreement or otherwise in writing, such Informationshall be held in strict confidence by the receiving Party.  The receiving Party may disclose suchInformation to other persons, upon the furnishing Party’s prior writtenauthorization, but solely to perform acts which this clause expressly authorizesthe receiving Party to perform itself and further provided such other personagrees in writing (a copy of which writing will be provided to the furnishingParty at its request) to the same conditions respecting use of Informationcontained in this clause and to

 

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## any other reasonable conditions requested by the furnishing Party.  These restrictions on the use or disclosureof Information shall not apply to any Information:  (i) which can be proven to be or have been independentlydeveloped by the receiving Party or lawfully received free of restriction fromanother source having the right to so furnish such Information; or (ii) afterit has become generally known to the public without breach of this Agreement bythe receiving Party; or (iii) which at the time of disclosure to the receivingParty was known to such Party free of restriction and clearly evidenced bydocumentation in such Party’s possession; or (iv) which the disclosing Partyagrees in writing is free of such restrictions; or (v) which is the subject ofa subpoena or other legal or administrative demand for disclosure or isdisclosed in response to a valid order of a court or other governmental body,but only to the extent of and for the purposes of such demand or order;provided, however, that such receiving Party shall first notify the furnishingParty in writing of the demand or order and permit and cooperate with thefurnishing party in seeking an appropriate protective order (or an equivalentmechanism for protecting such Information in the relevant jurisdictions).

##  

## 10.2                           Scope of Information.  Information is subject to thisSection 10 whether delivered orally or in tangible form, and withoutregard to whether it has been identified or marked as confidential or otherwisesubject to this Section 10.  EachParty agrees to use its best efforts to marls or otherwise identify proprietaryall Information they desire to be subject to the terms of this clause beforefurnishing it to the other Party.  And,upon request, a Party shall promptly identify whether specified informationmust be held by the requesting Party subject to this clause.

##  

## 10.3                           Furnishing Information toThird Parties.  Nothing herein shallbe deemed to bar disclosure of Information by a receiving Party to third partysubcontractors, prospective customers or Affiliates of the receiving Party witha need to know, without the written consent of the furnishing Party, if suchdisclosure is reasonably necessary for enjoyment of the receiving Party’srights to use Intellectual Property Rights licensed under this Agreement, andprovided that each such third party agrees in writing to protect theInformation under terms and conditions comparable, in all material respects, tothe terms contained in this Section 10 and Section 18 with respect tosurvivability.

##  

# 11.                                 DISCLAIMER/ LIMITATION OF LIABILITY.

#  

## 11.1                           EXCEPT AS EXPRESSLY SETFORTH IN THIS AGREEMENT, QUALCOMM MAKES NO WARRANTIES IN THIS AGREEMENT AS TOPRODUCTS, TECHNOLOGY, MATERIALS, SERVICES, INFORMATION OP OTHER ITEMS ITFURNISHES TO LICENSEE, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TOWARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, OR THATSUCH ITEMS ARE FREE FROM THE RIGHTFUL CLAIM OF ANY THIRD PARTY, BY WAY OF INFRINGEMENTOR THE LIKE.

##  

QUALCOMM SMALL NOTBE LIABLE TO LICENSEE FOR ANY [***]. QUALCOMM SHALL BE PERMITTED TO ENJOIN THE UNAUTHORIZED USE BY LICENSEEOR ITS AFFILIATES OF ANY OF QUALCOMM’S INFORMATION.

 

12

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## 11.2                           Negation ofRepresentation and Warranties. Nothing contained in this Agreement shall be construed as (a) requiringthe filing of any patent application, the securing of any patent or themaintaining of any patent in force; (b) a warranty or representation by eitherParty as to the validity or scope of any patent, copyright or otherintellectual property right; (c) a warranty or representation that anymanufacture, sale, lease, use or importation will be free from infringement ofpatents, copyrights or other intellectual property rights of others, and itshall be the sole responsibility of LICENSEE to make such determination as isnecessary with respect to the acquisition of licenses under patents and otherintellectual property of third parties; (d) an agreement to bring or prosecuteactions or suits against third parties for infringement; (e) an obligation tofurnish any manufacturing assistance; or (f) conferring any right to use, inadvertising, publicity or otherwise, any name, trade name or trademark, or anycontraction, abbreviation or simulation thereof (other than as set forth inSection 8).

##  

# 12.                                 INDEMNITY FOR DAMAGE TO PERSONS, PROPERTY ORBUSINESS

#  

## 12.1                           Indemnification byLICENSEE.  LICENSEE shall indemnify,defend and hold QUALCOMM harmless from, any and all claims, judgments,liabilities, costs and expenses (including attorneys’ fees) arising out of orrelated, directly or indirectly, to any injury, loss or damage to persons,property or business arising from, relating to, or in any way connected with,any Licensed Products or Components which LICENSEE or its Affiliatesmanufactures or has manufactured and sells to a third party or itsAffiliates.  LICENSEE agrees toindemnify and hold harmless QUALCOMM against all liability or responsibility ofLICENSEE or of others for any failure attributable to LICENSEE in production,design, operation or otherwise of products manufactured by or on behalf ofLICENSEE and Sold to third parties.

##  

## 12.2                           Indemnification QUALCOMM.  QUALCOMM shall indemnify, defend and holdLICENSEE harmless from, any and all claims, judgments, liabilities, costs andexpenses (including attorneys’ fees) arising out of or related, directly orindirectly, to any injury, loss or damage to persons, property or businessarising from, relating to, or in any way connected with, any Licensed Productsor Components which QUALCOMM or its Affiliates manufactures or has manufacturedand sells to a third party or its Affiliates. QUALCOMM agrees to indemnify and hold harmless LICENSEE against allliability or responsibility of QUALCOMM or of others for any failureattributable to QUALCOMM in production, design, operation or otherwise ofproducts manufactured by or on behalf of QUALCOMM and Sold to third parties.

##  

## 12.3                           Notice, Defense andCooperation.  The party seekingindemnification under Section 12.1 or 12.2 above shall provide theindemnifying party with prompt notice of any claim within such provisions,shall give the indemnifying party the full right to defend any such claim andshall cooperate fully in such defense.

 

13

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# 13.                                 TERMINATION

#  

## 13.1                           Termination For Cause byQUALCOMM.  QUALCOMM may terminatethis Agreement, by written notice to LICENSEE, if LICENSEE shall at any timedefault in the payment hereunder or the making of any report hereunder, orshall commit any material breach of any covenant, representation, warranty oragreement herein contained, or shall make any false report to QUALCOMM;provided, however, that in the case of any such breach which is capable ofbeing cured, QUALCOMM shall not have a right to terminate this Agreement forcause unless and until LICENSEE shall have failed to remedy any such default,breach or report within thirty (30) days after written notice thereof byQUALCOMM.  LICENSEE shall be able toeffectuate such cure with respect to a default in the making of any report orpayment of any amounts due hereunder no more than three times during the termof this Agreement.  Upon termination ofthis Agreement for cause, LICENSEE shall duly account to QUALCOMM for allroyalties and other payments within ten days of such termination.

##  

## 13.2                           Termination For Cause byLICENSEE.  LICENSEE may terminatethis Agreement, by written notice to QUALCOMM, if QUALCOMM shall at any timecommit any material breach of any material covenant, representation, warrantyor agreement herein contained; provided, however, that in the case of any suchbreach which is capable of being cured, LICENSEE shall not have a right toterminate this Agreement for cause unless and until QUALCOMM shall have failedto remedy any such material breach within thirty (30) days after receipt byQUALCOMM of written notice thereof by LICENSEE.

##  

## 13.3                           Bankruptcy, Dissolutionor Liquidation.  A Party shallprovide written notice (the “Notice”) to the other Party immediately upon theoccurrence of any of the following events (the “Events”):  (a) insolvency, bankruptcy or liquidation orfiling of any application therefor, or other commitment of an affirmative actof insolvency; (b) attachment, execution or seizure of substantially all of theassets or filing of any application therefor; (c) assignment or transfer ofthat portion of the business to which this Agreement pertains to a trustee forthe benefit of creditors; (d) disposition, by sale or assignment of all of itsrights, of that portion of the business or the material assets to which thisAgreement pertains or of the majority of the equity or voting stock ofLICENSEE, in violation of Section 15 of this Agreement; or (e) terminationof its business or dissolution.  EitherParty shall also have the right to terminate this Agreement with immediateeffect by giving written notice of termination to the other Party at any timeupon or before the later of (i) sixty (60) days after the occurrence of any ofthe Events with respect to such other Party (unless such event ceases withinsuch period), or (ii) sixty (60) days after receipt of the Notice (unless suchevent ceases within such period).

##  

## 13.4                           Termination in the Eventof Litigation.  The license fromQUALCOMM to LICENSEE shall terminate in the event that LICENSEE initiates anylitigation against QUALCOMM or its Affiliates that includes any claim forintellectual property infringement and LICENSEE does not prevail on all suchintellectual property infringement claims.

##  

## 13.5                           Rights Upon Termination.  Upon any termination of this Agreement alllicenses granted by QUALCOMM hereunder shall also terminate and LICENSEE shallimmediately cease using any of QUALCOMM’s Intellectual Property and return ordestroy all information and documentation furnished by QUALCOMM toLICENSEE.  The licenses granted by

##  

14

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## LICENSEE hereunder shall survive the termination of this Agreement andremain in full force and effect thereafter until all of LICENSEE’s IntellectualProperty has expired; except that, upon termination of this Agreement byLICENSEE for cause, all licenses granted by LICENSEE hereunder shall alsoterminate and QUALCOMM shall immediately cease using any of LICENSEE’sIntellectual Property.  Any terminationor expiration of this Agreement under this Section 13 shall not relieveLICENSEE from its obligation under Section 1.4 hereof to make a report orfrom its liability for payment of royalties on Licensed Products Sold on orprior to the date of such termination and shall not prejudice the right torecover the full amount of the Up-Front License Fee and any royalties or othersums due or accrued at the time of such termination and shall not prejudice anycause of action or claim accrued or to accrue on account of any breach ordefault.  Furthermore, any terminationof this Agreement under this Section shall not prejudice the right ofQUALCOMM to conduct a final audit of the records of LICENSEE in accordance withthe provisions of Section 14 hereof. No termination hereunder shall limit the rights of LICENSEE to sellthose Licensed Products in inventory or in process at the time of termination,subject to payment of the royalty applicable to the sale of such LicensedProducts and continued compliance with the other provisions of this Agreement.

##  

# 14.                                 RECORDS AND AUDITS.

#  

## 14.1                           Records.  LICENSEE shall keep accurate and completebooks and records concerning any Licensed Products it may sell under thisAgreement.  As applicable, such booksand records shall include the date of transaction involving sales of LicensedProducts, including the number of items Sold. LICENSEE shall require in its agreements with sublicensees that eachsublicensee agree to record keeping and audits substantially the same asdescribed in this Section 14. LICENSEE hereby agrees to cause its sublicensees to provide to LICENSEEthe records and supporting information sufficient to evidence the accuracy ofthe royalty report to be submitted to QUALCOMM.  Such records (together with all supporting information) shall beincluded in the records described herein and subject to audit by QUALCOMM asprovided in this Section.  LICENSEE’sagreements with its sublicensees shall expressly state that QUALCOMM shall beable to enforce rights under Section 1.4.2 below directly against any suchsublicensee.  LICENSEE shall furnishQUALCOMM within thirty (30) days after the end of each calendar quarter acertificate, in the form attached hereto as Exhibit A, signed by a responsibleofficial of LICENSEE showing the transactions and corresponding amounts duringsaid calendar quarter and any other information as may be reasonably requestedby QUALCOMM.

##  

## 14.2                           Audits.  QUALCOMM may, no more than once eachcalendar year, conduct (itself or through its agent) an audit on reasonablenotice of LICENSEE’s applicable books and records to confirm that LICENSEE hasnot underpaid royalties due to QUALCOMM in fulfilling its obligations under theterms and conditions set forth in Section 5.2 above.  QUALCOMM’s written notice to LICENSEE ofQUALCOMM’s intention to audit LICENSEE’s books and records shall include aproposed commencement date for such audit, such proposed commencement date tobe no earlier than thirty (30) days after the date of such notice.  LICENSEE agrees to allow the audit tocommence no later than thirty (30) days after QUALCOMM’s proposed auditcommencement date.  LICENSEE furtheragrees to have assembled in a single location the necessary books and recordsfor such audit to be carried out and shall make available such personnel as arereasonably necessary to interpret and explain such books and records.  The cost of such audit, other thanLICENSEE’s cost of providing its books,

 

15

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## records and personnel, shall be borne by QUALCOMM, unless such auditdetermines that the LICENSEE has underpaid the royalties due hereunder by[***]; in which case, LICENSEE shall, in addition to paying the deficiency pluslate payment charges, pay the cost of such audit.  LICENSEE shall preserve and maintain all such books and, recordsrequired for audit for a period of five (5) years after the calendar quarterfor which the books and records apply.

##  

# 15.                                 ASSIGNMENT.

#  

Except as providedin this clause, LICENSEE shall not assign this Agreement or any right orinterest under this Agreement, nor delegate any work or obligation to beperformed under this Agreement (an “assignment”), without QUALCOMM’s priorwritten consent, which consent shall be at QUALCOMM’s sole discretion.  Any attempted assignment in contravention ofthis Section 15 shall be void and ineffective.  For purposes of this Agreement, an “assignment” by LICENSEE underthis Section shall be deemed to include, without limitation, thefollowing:  (a) a change in thebeneficial ownership of LICENSEE of greater than fifty percent (50%) (whetherin a single transaction or a series of related transactions) if LICENSEE is apartnership, trust, limited liability company or other like entity; (b) theacquisition of more than fifty percent (50%) of any class of LICENSEE’s votingstock (or any class of non-voting security convertible into voting stock) byanother party (whether in a single transaction or series of relatedtransactions) resulting in an effective change of control of LICENSEE; or (c)the sale of more than fifty percent (50%) of LICENSEE’s assets (whether in asingle transaction or series of related transactions).

 

# 16.                                 COMPLIANCE WITH U.S. REGULATIONS.

#  

Nothing containedin this Agreement shall require or permit LICENSEE or QUALCOMM to do any actinconsistent with the requirements of (a) the regulations of the United StatesDepartment of Commerce, or (b) the foreign assets controls or foreigntransactions controls regulations of the United States Treasury Department, or(c) of any similar United States law, regulation or executive order as the samemay be in effect from time to time.  Toenable QUALCOMM to export QUALCOMM’s Intellectual Property or technical data toLICENSEE in compliance with the requirements of the Export AdministrationRegulations (EAR), LICENSEE hereby gives its assurance to QUALCOMM thatLICENSEE will not re-export or otherwise disclose, directly or indirectly, anyof QUALCOMM’s Intellectual Property or “technical data” received from QUALCOMM,nor allow the direct product thereof to be shipped directly or indirectly toany of the following countries, unless permitted by U.S. law in effect at thetime of such export:

 

| Albania     |   | Libya                           |
|-------------|--------|---------------------------------|
| Afghanistan |   | Lithuania                       |
| Angola      |   |                            |
| Armenia     |   | Macau                           |
| Azerbaijan  |   | Moldova                         |
| Belarus     |   | Mongolia                        |
| Bulgaria    |   | North Korea                     |
| Cambodia    |   | People’s Republic of China |
| Cuba        |   | Romania                         |

 

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| Estonia    |   | Russia       |
|------------|--------|--------------|
| Georgia    |   | Sudan        |
| Iran       |   | Syria        |
| Iraq       |   | Tajikistan   |
| Kazakhstan |   | Turkmenistan |
| Kyrgyzstan |   | Ukraine      |
| Laos       |   | Uzbekistan   |
| Latvia     |   | Vietnam      |
|       |   |         |

LICENSEE agreesthat no products, proprietary data, know-how, software, or other informationreceived from QUALCOMM will be directly employed in missile technology,sensitive nuclear, or chemical biological weapons end uses or by such endusers.  The foregoing obligations areU.S. legal requirements, and therefore, such obligations shall survive anytermination of this Agreement.

 

# 17.                                 PUBLICITY.

#  

LICENSEE shallsubmit to QUALCOMM proposed copy of all advertising wherein the name,trademark, code, specification or service mark of QUALCOMM is mentioned; andLICENSEE shall not publish or use such advertising without QUALCOMM’s priorwritten approval.  Such approval shallbe granted or withheld as promptly as possible (usually within ten (10) days),and may be withheld only for good cause. No license is granted by LICENSEE to QUALCOMM hereunder with respect toLICENSEE’s or its Affiliates’ trade name, trademark, code, specification orservice mark.  No license is granted byQUALCOMM to LICENSEE hereunder with respect to QUALCOMM’s or its Affiliates’trade name, trademark, code, specification or service mark.

 

# 18.                                 SURVIVAL OF OBLIGATIONS.

#  

The Parties’ rightsand obligations which, by their nature, would continue beyond the termination,cancellation, or expiration of this Agreement, including but not limited tothose rights and obligations of the parties set forth in Section 10entitled “INFORMATION,” shall survive such termination, cancellation, orexpiration.

 

# 19.                                 SEVERABILITY.

#  

If any provisionin this Agreement shall be held to be invalid or unenforceable, the remainingportions shall remain in effect.  In theevent such invalid or unenforceable provision is considered an essentialelement of this Agreement, the Parties shall promptly negotiate a replacementprovision.

 

# 20.                                 NON-WAIVER.

#  

No waiver of theterms and conditions of this Agreement, or the failure of either Party strictlyto enforce any such term or condition on one or more occasions shall beconstrued as a waiver of the same or of any other term or condition of thisAgreement on any other occasion.

 

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# 21.                                 NOTICES.

#  

All notices,requests, demands, consents, agreements and other communications required orpermitted to be given under this Agreement shall be in writing and shall bemailed to the Party to whom notice is to be given, by facsimile, and confirmedby first class mail, postage prepaid, and properly addressed as follows (inwhich case such notice shall be deemed to have been duly given on the day thenotice is first received by the Party):

 
| QUALCOMM Incorporated  5775 Morehouse Drive San Diego,  CA 92121-1714         |   | UTStarcom, Inc.  1275 Harbor Bay Parkway  Alameda, CA 94502                          |
|-------------------------------------------------------------------------------|--------|--------------------------------------------------------------------------------------|
|                                                                          |   |                                                                                 |
| Facsimile No.: (858) 658-2500  Telephone No.: (858) 587-1121  Attn: President |   | Facsimile No.: (510) 864-8802  Telephone No.: (510) 864-8800  Attn: Russell Boltwood |
|                                                                          |   |                                                                                 |
| with a copy to:  General Counsel                                              |   | with a copy to:  General Counsel                                                     |

 

The aboveaddresses can be changed by providing notice to the other Party in accordancewith this Section.

 

# 22.                                 PUBLICATION OF AGREEMENT.

#  

Except as mayotherwise be required by law or as reasonably necessary for performancehereunder, each Party shall keep this Agreement and its provisions confidentialand shall not disclose this Agreement or its provisions without first obtainingthe written consent of the other Party, which consent shall not be unreasonablywithheld.  The confidentialityobligations hereunder do not apply to the existence of this Agreement or thefact that QUALCOMM and LICENSEE have executed this Agreement, but do apply tothe terms and conditions of this Agreement. Any press release or other announcement by either Party concerning theentering into of this Agreement shall be subject to the prior written approvalof other Party, which approval shall not be unreasonably withheld.  In case a press release or other publicannouncement to the effect of the Parties’ entering into of this Agreement isissued by either Party pursuant to the preceding sentence, (i) QUALCOMM maythereafter make a press release or other public announcement to the effect thatLICENSEE is one of QUALCOMM’s licensees for Licensed Products without priorwritten approval of LICENSEE and (ii) LICENSEE may thereafter make a pressrelease or other public announcement to the effect that LICENSEE is licensed byQUALCOMM for Licensed Products without prior written approval of QUALCOMM.

 

# 23.                                 APPLICABLE LAW; VENUE.

#  

This Agreement ismade and entered into in the State of California and shall be governed by andconstrued and enforced in accordance with the laws of the State of Californiawithout regard to conflict of laws principles. Any dispute, claim or controversy arising out of or relating to thisAgreement, or the breach or validity hereof, except for those disputesexpressly addressed in Section 24 hereof, shall be adjudicated only by acourt of competent jurisdiction in the county of San Diego, State of California.

 

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# 24.                                 DISPUTES RELATING TO FOREIGN PATENTS.

#  

Any controversy,claim or dispute (separately or collectively, the “Dispute”) as to whether aproduct manufactured and/or sold by LICENSEE outside the United States would,but for the license granted hereunder, infringe any foreign patent of QUALCOMMlicensed hereunder and therefore is subject to royalties hereunder, shall beresolved in accordance with the procedures specified in this Section 24which shall be the sole and exclusive procedures for the resolution of any suchDispute.

 

The Parties willattempt in good faith to resolve promptly any Dispute by negotiations betweensenior executives of the Parties who have the authority to settle theDispute.  If the Dispute is notresolved, within thirty (30) days of a party’s written request for negotiation,either party may initiate arbitration as hereinafter provided.

 

A Party desiringto commence arbitration shall provide written notice to the other Party settingforth the Dispute(s) to be arbitrated. Within ten (10) days of receipt of such written notice, the Parties willattempt in good faith to reach agreement on an impartial arbitrator having asnearly as practicable the following qualifications in order of importance:  (1) at least ten years experience in patentlitigation, including substantial participation in at least two patent trials,and/or ten years experience in patent prosecution in the telecommunicationsfield and/or at least three years experience as a Federal Court of Appeals orDistrict Court Judge, (2) expertise in the field of digital spread spectrumcommunications as applied to the telecommunications industry, and (3) somefamiliarity with the patent laws of the country or countries at issue in theDispute.  In the event the Parties areunable to agree upon an arbitrator within thirty (30) days of the above writtennotice, the arbitrator shall be selected by Judicial Arbitration and MediationService/Endispute, Inc. (or some similar company if the Judicial Arbitrationand Mediation Service/ Endispute, Inc. is not available).  The selected arbitrator shall be impartialand shall have, as nearly as practicable, the qualifications set forth above.  The Parties will share equally the fees andexpenses of the arbitrator.

 

The arbitrationhearing shall commence in San Diego within 60 days of the appointment of thearbitrator.  The Parties shall beentitled to conduct discovery prior to the arbitration hearing in accordancewith the Federal Rules of Civil Procedure, subject to any limitations orderedby the arbitrator.

 

The arbitrationhearing shall be conducted in accordance with the Federal Rules of CivilProcedure and the Federal Rules of Evidence or such other procedures and rulesset by the arbitrator.  The arbitratorshall be authorized and empowered only to rule as to whether productsmanufactured and/or Sold by LICENSEE in a foreign country or countries would,but for the license granted hereunder, infringe any claim of the applicableforeign patent(s) of QUALCOMM, and if so, the amount of the royalties owed byLICENSEE as to such product(s) under Section 5.2 of this Agreement.  The arbitrator shall award attorneys’ feesand costs to the prevailing Party.  Thearbitrator shall have no authority to determine whether or not any product(s)of LICENSEE imported into or manufactured and/or Sold in the United States issubject to the payment of royalties under this Agreement or to determine anyother issue except those expressly set forth above.  The arbitrator shall have no authority to make any finding oraward as to the validity or enforceability of any patent.

 

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The final award ofthe arbitrator shall be rendered in writing and signed by the arbitrator.  The final award shall be entered withinthirty (30) days of the commencement of the arbitration hearing.  Each Party agrees to abide by thearbitration award, and to the enforcement of the arbitration award in the UnitedStates.  Each Party further agrees thatjudgment may be entered upon the award in any court of competent jurisdictionin the United Skates.

 

# 25.                                 LATE CHARGE.

#  

Each Party maycharge the other a late charge, with respect to any amounts that the other oweshereunder and fails to pay on or before the due date, in an amount equal to the[***].  The Parties agree that such latecharges are administrative in nature and are intended to defray each Party’scosts in processing and handling late payments.

 

# 26.                                 ATTORNEYS’ FEES.

#  

In the event ofany proceeding to enforce the provisions of this Agreement, the prevailingParty (as determined by the court) shall be entitled to reasonable attorneys’fees as fixed by the court.

 

# 27.                                 ENTIRE AGREEMENT.

#  

The terms andconditions contained in this Agreement supersede all prior and contemporaneousoral or written understandings between the Parties with respect to the subjectmatter thereof and constitute the entire agreement of the Parties with respectto such subject matter.  Such terms andconditions shall not be modified or amended except by a writing signed byauthorized representatives of both Parties.

 

# 28.                                 INDEPENDENT CONTRACTORS.

#  

The relationshipbetween QUALCOMM and LICENSEE is that of independent contractors.  QUALCOMM and LICENSEE are not jointventurers, partners, principal and agent, master and servant, employer oremployee, and have no other relationship other than independent contractingparties.

 

# 29.                                 U.S. DOLLARS.

#  

All payments to bemade hereunder shall be made in dollars of the United States of America bywire-transfer and at a bank to be designated by the payee.

 

20

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# 30.                                 FORCE MAJEURE

#  

Neither PartyShall be in default or liable for any loss or damage resulting from delays inperformance or from failure to perform or comply with terms of this Agreement(other than the obligation to make payments, which shall not be affected bythis provision) due to any causes beyond its reasonable control, which causesinclude but are not limited to Acts of God or the public enemy; riots andinsurrections; war; fire; strikes and other labor difficulties (whether or notthe Party is in a position to concede to such demands); embargoes; judicialaction; lack of or inability to obtain export permits or approvals; and acts ofcivil or military authorities.

 

IN WITNESSWHEREOF, the Parties hereto have caused this Agreement to be executed as of theEffective Date.  This Agreement may besigned in counterpart.

 
| **QUALCOMM  Incorporated** | **UTStarcom,  Inc.** |
|----------------------------|----------------------|
|                       |                 |
| BY:                        |                 |   | BY: |   |   |
|                       |                 |   |
| TITLE:                     |                 |   | TITLE: |   |   |
|                            |                      |  |  |  |  |  |  |

 

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**Infrastructure Equipment License Agreement**

** **

**Section 7.1 Notice**

 

[***]

 

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**Infrastructure Equipment License Agreement**

** **

**Section 8 Notice**

** **

Please affix tothe exterior or the interior of all Licensed Products incorporating any ofQUALCOMM’s Intellectual Property a legible notice reading:

 

“Licensed by QUALCOMM Incorporated under one or more of the followingPatents:

 

| 4,901,307 |   | 5,490,165 |   | 5,056,109 |   | 5,504,773       |   | 5,101,501 |   | 5,778,338 |
|-----------|--------|-----------|--------|-----------|--------|-----------------|--------|-----------|--------|-----------|
| 5,506,865 |   | 5,109,390 |   | 5,511,073 |   | 5,228,054       |   | 5,535,239 |   | 5,710,784 |
| 5,267,261 |   | 5,544,196 |   | 5,267,262 |   | 5,568,483       |   | 5,337,338 |   | 5,659,569 |
| 5,600,754 |   | 5,414,796 |   | 5,657,420 |   | 5,416,797” |   |      |   |      |

 

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