**Exhibit 10.16**

 

BUSINESS DEVELOPMENTAGREEMENT

 

This BUSINESS DEVELOPMENT AGREEMENT (the “Agreement”) is made andentered into as of the 28 day of December, 2005, (the “Effective Date”) by andbetween MathStar, Inc., a Delaware corporation, with offices at 19075Tanasbourne Drive, Suite 200, Hillsboro, OR, 97124(“MathStar”), and SummitDesign, Inc., a Delaware corporation, with offices at 5150 El Camino Real,Suite C-10, Los Altos, CA 94022 (“Summit”). This agreement supersedes the previous agreement between MathStar andSummit dated the 30th day of November, 2003 and the parties agreethat such previous agreement is hereby terminated.

 

WHEREAS, MathStarintends to offer the electronic product design market a programmable logicdevice that streamlines the implementation of complex system logic designs andlowers the unit production cost of the end products.

WHEREAS, Summit isworking to develop the electronic system level design market by offeringsoftware that facilitates design definition and functional verification atmultiple abstraction levels, provides advanced performance analysis for complexsystems and facilitates the simultaneous development of software withelectronic hardware.

WHEREAS, becauseMathStar devices are constructed from objects more complex than traditionallogic gates, Summit’s software design environment is expected to be well suitedto help designers create logic designs in MathStar devices; and becauseMathStar devices provide inherent uniqueness and are focused at complexelectronic product applications, they are expected to be successful withcustomers who would also be good prospective customers for Summit software.

WHEREAS, MathStar andSummit desire to collaborate to develop a product that provides an effectivesolution to the challenge of rendering logic designs in MathStar FieldProgammable Object Arrays (“FPOAs”) and to further collaborate on the marketingand sale of such product.

 

NOW, THEREFORE, in consideration of the mutual promises containedherein, the parties agree as follows:

 

1.             DEFINITIONS.  Capitalized terms used in this Agreement aredefined herein and throughout the Agreement. Terms not defined herein shall be given their plain English meaning;provided, however, that those terms, acronyms and phrases known in the computersoftware industry which are not defined shall be interpreted in accordance withtheir generally accepted industry meaning. As used herein, the following terms shall have the meanings set forthbelow:

 

1.1           “PRODUCT”shall mean software used to define, refine, simulate and analyze the functionallogic design intended for rendering in a MathStar FPOA and used to generateOHDL code for output to the MathStar COAST software.  Such PRODUCT shall consist of the SUMMITSOFTWARE, the MATHSTAR-SPECIFIC SOFTWARE and the MATHSTAR LIBRARY.

 

1.2           “SUMMITSOFTWARE” shall mean Summit’s Visual Elite ESL software.

 

1.3           “MATHSTARLIBRARY” shall mean MathStar’s library of SystemC models and their associatedgraphic symbols.

 

1.4           “MATHSTAR-SPECIFICSOFTWARE” shall mean features of the SUMMIT SOFTWARE specific to the MathStarFPOA design application and which are not specific to any other manufacturer ofany other programmable logic devices.

 

1.5           “EXTERNALMATHSTAR-SPECIFIC SOFTWARE” shall mean any portion of the MATHSTAR-SPECIFICSOFTWARE that is located outside a publicly exposed application programminginterface within the PRODUCT.

 

 

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1.6           “EndUsers” shall mean users of the PRODUCT who have executed Summit’s end user licenseagreement, the current version of which is attached hereto as Exhibit A.

 

2.             INTENT AND PURPOSE; STATEMENTS OF WORK.

 

2.1           INTENT AND PURPOSE.  This Agreement contemplates certain jointdevelopment activities between MathStar and Summit to develop the PRODUCT andthe marketing, sales and support activities for the PRODUCT (the “Activities”).

2.2           STATEMENTSOF WORK.  It is understood and agreedthat the parties have attempted to define their respective roles andresponsibilities with respect to the PRODUCT; however, the parties agree andacknowledge that an exhaustive definition of each party’s roles andresponsibilities at this time is not feasible and therefore the parties maydetermine that it is appropriate to execute and deliver a separate plan forsome Activities undertaken (each, a “Statement of Work”).  If and when executed, each Statement of Workwill be attached to and incorporated by reference into this Agreement, and theterms and conditions of the Statement of Work shall control to the extentinconsistent with the terms contained herein. The parties agree that each Statement of Work may set forth, among otherthings as the parties shall deem appropriate, the following:

 

-                    a detailed description of the Activity;

-                    any design documents or specifications(unless the Activity contemplates creation or development of the same);

-                    deliverables & delivery milestonedates, if any, that either or both parties will be responsible for creating anddeveloping; and

-            any otherterms or conditions that vary from the terms and conditions set forth in thisAgreement.

 

3.0           THEACTIVITIES

 

3.1           PRODUCT DEVELOPMENT.  Summit shall develop and maintain the SUMMITSOFTWARE and the MATHSTAR-SPECIFIC SOFTWARE. MathStar shall develop and maintain the MATHSTAR LIBRARY and deliver acopy of the MATHSTAR LIBRARY to Summit as soon as reasonably practicable forincorporation into the PRODUCT.  MathStarhereby grants to Summit the right to incorporate the MATHSTAR LIBRARY with and intothe PRODUCT and to grant sublicenses of the MATHSTAR LIBRARY to End Users.  Each party will provide reasonabledevelopment support to the other party as needed.

 

3.1.1        PRODUCT RELEASE SCHEDULE.  Summit shall control the master schedule forthe development and release of the PRODUCT and new versions thereof and shallbe responsible for defining which features and bug fixes will be availablewithin the PRODUCT and each Product release.

 

3.1.2        COMPUTING PLATFORM SUPPORT.  Summit shall release and support the PRODUCTon the PC Windows (NT, 2000, XP), Solaris and Red Hat Linux platforms.  Summit shall specify the support for specificoperating system versions as a requirement for each major PRODUCT version to bereleased.

### ***3.1.3        FIELDTESTING ALPHA AND BETA SOFTWARE RELEASES. MathStar staff shall assist Summit engineering in the functional testingof alpha and beta versions of new PRODUCT releases, as reasonably requested bySummit.***

### ***3.1.4        SOFTWAREQUALITY ASSURANCE.  Summit shall performsoftware quality assurance testing for each PRODUCT release, except for patchdistribution, beta releases and other releases where the PRODUCT is madeavailable prior to full verification.***

## **3.2           MARKET DEVELOPMENT AND DEMANDGENERATION**

### ***3.2.1        TRADE SHOWSUPPORT.  Each party shall exhibit thePRODUCT or information about the PRODUCT at trade shows where the partyexhibits their products.  In cases whereexhibition of the PRODUCT would conflict with the interests of the trade showsponsor, this obligation shall not apply. When the PRODUCT is being exhibited at trade shows, the exhibiting partymay request assistance from the other party in supporting the PRODUCT***

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### ***exhibitionor demonstrations.  The parties shallmutually determine what information about the PRODUCT is to be exhibited andhow it is to be exhibited.***

### ***3.2.2        TECHNICALSEMINARS.  Each party may providetechnical seminars involving the PRODUCT in the context of FPOA design and eachparty shall provide reasonable support to the other in furtherance of suchseminars.  The parties shall mutuallydetermine the contents of the seminars.***

### ***3.2.3        INTERNETPRESENCE AND WEBSITE RESOURCES. Each party shall dedicate a portion of itswebsite to information about the PRODUCT, its primary value points and its rolein the FPOA design process.  The partiesshall mutually determine the content of such information to be set forth ontheir websites.  The parties shallcooperate on the development of links between their respective websites, wheresuch links would be helpful to customers.***

### ***3.2.4        LEADGATHERING AND DISSEMINATION. Sales leads regarding the use of the PRODUCT forFPOA design shall be shared by the parties. Shared leads shall be distributed to the other party on a regular basis.  Points of contact shall be establishedbetween the parties in order to facilitate shared lead communication.***

### ***3.2.5        ADVERTISING.Advertising developed by either party that includes the PRODUCT or referencesthe PRODUCT shall include the brand identification of both parties within theadvertisement.  The brand identificationshall include the party’s graphic logo and, if sufficient room, the party’s tagline.  Each presentation of each party’sbrand image shall require the prior approval of the marketing leadership of theother party.***

### ***3.2.6        PRINTEDPRODUCT LITERATURE.  Product data sheets,application guides and other Product literature developed by either party thatincludes the PRODUCT or references to the PRODUCT shall include the brandidentification of both parties within the publication.  The brand identification shall include theparty’s graphic logo and, if sufficient room, the party’s tag line.  Each presentation of each party’s brand imageshall require the prior approval of the marketing leadership of the otherparty.***

## **3.3           PRODUCT LICENSE SALES**

### ***3.3.1        DIRECTSALES CHANNELS.  The PRODUCT shall besold through coordinated actions of the MathStar and Summit direct salesstaffs, including field sales and inside sales staff.  Either party may initiate customerqualification, prospect for new sales opportunities and perform technicalqualification of an opportunity. MathStar shall bundle the PRODUCT only with other MathStar products andsell the combined product(s).  MathStarshall actively and diligently market and distribute the PRODUCT as providedherein.  MathStar shall purchase a blockof one-year term licenses for the PRODUCT per Section 4.2 from Summit anddistribute such PRODUCT to End Users bundled as provided above.***

## **3.4           PRODUCT DISTRIBUTION.**

### ***3.4.1        PRODUCTLICENSING.  The PRODUCT shall be distributedto End Users by MathStar pursuant to Summit’s then current end user licenseagreement as a combined product with other MathStar products.  The current version of such end user licenseagreement is attached hereto as Exhibit A. If Summit’s form of end user license agreement changes, it shall givenotice of such changes to MathStar, and Summit and MathStar shall amend thisagreement by attaching the most current form of Summit’s end user licenseagreement to this Agreement as new Exhibit A.***

### ***3.4.2        PACKAGINGOF PRODUCT RELEASES.  The PRODUCT and allmajor versions thereof shall consist of the SUMMIT SOFTWARE, theMATHSTAR-SPECIFIC SOFTWARE and the MATHSTAR LIBRARY, packaged together bySummit as a single part number, downloadable as a single complete file image.*** End Users shall have a singleinstallation process that places the PRODUCT in the proper locations in the EndUser’s environment.

## **3.4.3        PRODUCTDISTRIBUTION LOGISTICS.  The distributionmechanism for the PRODUCT shall be FTP access via the internet.  The distribution website shall be developed,hosted and maintained by Summit or its supplier with assistance and supportfrom MathStar.  The website shall providefor effective, secure upload of model library releases and patches fromMathStar, as well as effective location and retrieval of software and patchesby customers.  Qualified resellers of theProduct may provide links to the Summit website in order to act as distributionportals.**

 

 

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## **3.5           CUSTOMER SUPPORT.  MathStar shall provide first line support ofthe PRODUCT to End Users.  If MathStardetermines that the problem appears to be located within or caused by theSummit PRODUCT, upon MathStar’s request, Summit shall provide technicalcustomer support either to MathStar or, if requested, directly to an End User.**

### ***3.5.1        BUGREPORTING AND TRACKING.  Summit shallprovide MathStar access to Summit’s bug tracking system for the purpose oftracking problem reports and bugs in the PRODUCT.  Problems and potential bugs in the PRODUCTshall be entered into Summit’s bug tracking system by technical support staffor application engineers from either party. Each party shall identify and maintain a technical support point ofcontact, who shall be responsible for communicating technical problem statusand customer impact priority with the other party and for insuring thatcustomer problem reports associated with the PRODUCT are resolved in a timelymanner.***

### ***3.5.2        BUGCONFIRMATION AND RESOLUTION.  Summitshall confirm and resolve bugs in the SUMMIT SOFTWARE and MATHSTAR-SPECIFICSOFTWARE in accordance with its customary procedures for support of itsproducts.  MathStar shall confirm andresolve bugs in the MATHSTAR LIBRARY. Each party shall provide engineering support to the other party uponrequest in order to expedite the resolution of bugs.***

### ***3.5.3        FIELDSALES TECHNICAL STAFF.  Each party shalldevelop and maintain trained technical staff that will be available in thefield to visit End Users and assist with technical problem solving ortroubleshooting as required.***

## **3.6           END USER TRAINING.**

### ***3.6.1        END USERSTRAINING CLASS DEVELOPMENT.  MathStar andSummit shall collaborate on the development of an End User training course thatmay be provided by qualified staff members of either party or both parties,depending on resource availability and geographical convenience.  Customer training classes shall consist ofthe essential training elements necessary for End Users to learn how to use thePRODUCT for the purpose of creating and verifying FPOA designs.  Each party shall own the portion of thecourse materials such party contributes to the End User training course andhereby grants to the other party a no charge license to use and distribute suchmaterials to End Users attending such training courses.***

### ***3.6.2        CUSTOMERTRAINING CLASS DELIVERY.  Each party maydeliver the jointly developed training class using their own instructors.  The parties shall explore ways of sharingresources for training delivery or for contracting for training instructorsfrom one party to deliver training to End Users of the other party pursuant toa mutually agreed agreement.  Unlessotherwise agreed, the party providing the training services shall be entitledto receive all fees associated with such services.***

## **3.7           USER MANUALS.**

### ***3.7.1        USERMANUAL DEVELOPMENT.  Summit shall developa section or addendum to the SUMMIT SOFTWARE user manual that addresses the useof the MATHSTAR-SPECIFIC SOFTWARE. MathStar shall develop any user manual documentation required for theMATHSTAR LIBRARY.  Summit shall assemblethe user manual for the PRODUCT, consisting of the standard Summit Softwareuser manual, a section or addendum dedicated to the MATHSTAR-SPECIFIC SOFTWAREwithin the SUMMIT SOFTWARE and a section or addendum with the documentation forthe MATHSTAR LIBRARY.  Each party shallown all right, title and interest in and to the portion of the user manual suchparty contributes to the user manual and hereby grants to the other party a nocharge license to incorporate such party’s materials into the user manual forthe PRODUCT and to distribute such materials to End Users as part of the usermanual for the PRODUCT.  Each partyagrees not to remove the copyright notices on any user manual materials of theother party.***

### ***3.7.2        USERMANUAL DISTRIBUTION.  User manuals shallbe updated and distributed electronically with each major release of thePRODUCT only in PDF file format. MathStar shall have the responsibility of aligning the user manualinformation with the functionality of each major release of the PRODUCT.***

 

 

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### ***4              FINANCIALCONSIDERATIONS.***

## **4.1           PRODUCTPRICING**

MathStarshall purchase a block of * based PRODUCT licenses for * per license.  MathStar shall pay Summit * for such licensesin accordance with the following schedule: * on January 20, 2006, * on July 15, 2006 and * on December 15,2006..  On January 20, 2006, MathStarshall also pay Summit * in consideration of Summit’s support of MathStarpursuant to Section 3.5 hereof.  The termof such support in connection with End User use of the PRODUCT shall be for theinitial eighteen (18) month term of this Agreement.  MathStar may purchase incremental * basedPRODUCT licenses during the term of this Agreement in blocks of * based PRODUCTlicenses for * per license.  Fees forsuch licenses shall be due and payable upon receipt of an invoicetherefor.  Summit agrees that the * willbe available for use by MathStar for the term of this Agreement.  *.  Allsuch time based licenses are for distribution to End Users and not for internaluse.  The parties agree that the term ofany * based PRODUCT licenses commences on the date that the End User licensesthe PRODUCT; provided that such licenses if not distributed during the term ofthis Agreement shall terminate upon the termination or expiration of thisAgreement.

4.2           * EVALUATION LICENSES

Summit will provideMathStar a block of * PRODUCT evaluation licenses * after execution of thisAgreement.  It is agreed that these *PRODUCT evaluation licenses will be used by MathStar to provide prospectivePRODUCT customers an opportunity to evaluate the PRODUCT prior to purchase fromMathStar.  Summit also will provide *extensions for *% of these licenses during the period of this Agreement.  For so long as MathStar can demonstrate toSummit that over *% of these * PRODUCT evaluation licenses are converted toPRODUCT purchases, Summit will continue to provide * PRODUCT evaluationlicenses * to MathStar.

## **4.3           ENGINEERINGPRODUCT ENHANCEMENTS**

4.3.1                        SOURCE CONTROL AND COPY TREESCRIPTS.  Summit will provide toMathStar, *, * scheme scripts to enable source control, copy tree/copy treelocal as part of Summit’s MATHSTAR-SPECIFIC SOFTWARE.  Summit shall use commercially reasonableefforts to make this software available for release in the PRODUCT by March 15,2006.

4.3.2                        FPOA TEMPLATE:  Summit will provide to MathStar, *, up to *toward the development of the *scripts as part of Summit’s MATHSTAR-SPECIFICSOFTWARE.   Summit shall use commerciallyreasonable efforts to make this software available for release in the PRODUCTby March 15, 2006.

4.3.3                        ENGINEERING TRAINING:  Summit will provide to MathStar, *, * on-siteadvanced training for MathStar software engineers on scheme scripting to enableFPOA template in Visual Elite.

4.3.4                        ADDITIONAL PRODUCT ENHANCEMENTS:  Summit will provide to MathStar *, * forPRODUCT enhancements of MathStar’s choice. MathStar shall pay Summit engineering fees additional enhancements tothe PRODUCT that are requested by MathStar. The parties shall agree on the amount of the fee, sign a mutually agreedspecifications document and sign a Statement of Work prior to Summit performingsuch services.

4.3.5                        The parties agree that the developmentefforts set forth in Sections 4.3.1 and 4.3.2 hereof shall be subject to theparties’ mutual agreement on specifications.

## **4.4           ENGINEERING FEES FOR PRODUCT MAINTENANCE**

After * from theEffective Date of this Agreement and on each * anniversary thereafter MathStarshall pay * for continued maintenance for MathStar’s internal use of the SUMMITSFTWARE unless this Agreement is terminated pursuant to Section 15.2.  Such fee shall be in consideration of Summit’sinternal maintenance services to MathStar relating to the MATHSTAR-SPECIFICSOFTWARE within the context of the constantly evolving SUMMIT SOFTWAREreleases.  For purposes of clarity, suchfees are not for support of End Users pursuant to Section 3.5 hereof.

4.5           SUMMIT SOFTWARE FOR MATHSTAR INTERNALUSE

Summithereby grants to MathStar *, worldwide right and license to use Summit VisualElite ESL, System Architect and Virtual Prototype products for MathStar’sinternal use for an unlimited number of users and for the development

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*Confidential Treatment has been requested, the portion indicated has beenredacted and the redacted portion has been separately filed with the Securitiesand Exchange Commission

 

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ofdesign application examples.  MathStar’suse of such products shall in all events be subject to the terms and conditionsof Summit’s end user license agreement attached hereto as Exhibit A.

4.6           SUMMIT SOFTWARE FOR MATHSTAR 3rdPARTY FPOA APPLICATION DEVELOPERS

Summit will provideMathStar a block of * based PRODUCT licenses * after execution of thisAgreement.  It is agreed that thesePRODUCT licenses will be used by third party FPOA application developersmanaged by MathStar while developing preprogrammed FPOA software.  MathStar’s use of such PRODUCTs shall in allevents be subject to the terms and conditions of Summit’s end user licenseagreement attached hereto as Exhibit A. MathStar shall require each such third party FPOA application developersto agree to the terms and conditions of Summit’s end user license agreementattached hereto as Exhibit A and MathStar shall guaranty compliance ofsuch third party FPOA application developers with such terms and conditions.

5              ADDITIONAL AGREEMENTS OF THE PARTIES

5.1           LOGOUSAGE.  MathStar hereby grants Summit theright to use MathStar’s logo, subject to logo usage guidelines to be providedby MathStar to Summit, as such guidelines may be amended by MathStar from timeto time.  Summit hereby grants MathStarthe right to use Summit’s logo, subject to logo usage guidelines to be providedby Summit to MathStar, as such guidelines may be amended by Summit from time totime.

 

5.2           PUBLICITY;PRESS RELEASES.  The parties may bymutual consent agree to issue a joint press release describing thecollaboration of the parties.  Theparties shall also consult regularly during the term of the Agreement andissue, as and when appropriate, such further press releases and/or otherpublicity materials as may be appropriate. The contents of any press releases issued by the parties shall besubject to the approval of each party, which approval shall not be unreasonablywithheld or delayed.

 

5.3           USEOF NAME IN PROMOTIONAL MATERIALS.  Eachparty shall, with prior approval of the other party (which will not beunreasonably withheld or delayed), be permitted to identify the other party asa development partner, to use the other party’s name in connection withproposals to prospective customers, and to refer to the other party in print orelectronic form for marketing or reference purposes.

 

5.4           FREEDOMOF ACTION.  Except as specificallyprovided herein or in any Statement of Work, either party may market and offerits own or third party products or services (through any means) which are thesame as or similar to and which are competitive with the other party’s productsand services.  Neither party makes anyassurances or representations to the other in connection with any financialgain or other benefit that may result from the activities contemplated in thisAgreement.

 

5              ACTIVITY MANAGEMENT.

 

6.1           POINTSOF CONTACT.  Each of the parties agreesto appoint and keep in place during the term of this Agreement a business pointof contact and a technical point of contact, each of whom will allocate suchportion of his or her working time as may be reasonably necessary to facilitatecommunications between the parties.

 

6.2           SUPPLIERBUSINESS REVIEW MEETINGS.  The businesspoints of contact shall meet on a mutually agreed basis, at least twice perquarter, to review the overall progress of the Activities contemplatedhereunder and to provide overall supervision and oversight.  Such meetings will be held at a mutuallyagreed location.

 

7.             DEVELOPMENTEFFORTS; RESOURCE COMMITMENT; EXPENSES.

 

7.1           COST SHARING AND REIMBURSEMENT.  Except as may be provided in any specificStatement of Work or as may be otherwise agreed by the parties or as providedin Section 4.4 hereof, each of Summit and MathStar agrees that it shall beresponsible for its own expenses incurred in conjunction with this Agreementand any attachments hereto, and with any undertakings and obligationscontemplated hereby.  Notwithstanding theforegoing, if development efforts are undertaken at either MathStar or Summitoffices, then the host party agrees to provide the necessary office space at nocost to the other party.

 

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* Confidential Treatmenthas been requested, the portion indicated has been redacted and the redactedportion has been separately filed with the Securities and Exchange Commission

 

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7.2           INDEPENDENTCONTRACTORS.  Either party shall have theoption to utilize contractors in order to satisfy its obligation to supplypersonnel resources to the Activities contemplated hereunder, but only to theextent and insofar as reasonably required in connection with the performance ofthe obligations of the party retaining the contractor under this Agreement, andsubject to the further requirements and limitations set forth herein.

 

8.             DISPUTERESOLUTION PROCESS.

 

8.1           INITIALCONSULTATION AND NEGOTIATION.  In theevent a dispute between Summit and MathStar arises under the Agreement or aparty’s performance thereunder, the matter shall first be escalated to eachparty’s business points of contact in an attempt to settle such dispute throughconsultation and negotiation in good faith and a spirit of mutual cooperation.

 

8.2           ESCALATION.  If the business party contacts are unable toresolve the dispute within ten (10) days, it shall be referred to the ChiefExecutive Officers of each party who shall attempt to resolve such disputethrough consultation and negotiation in good faith and a spirit of mutualcooperation.

 

8.3           CONTINUEDPERFORMANCE.  Except where prevented fromdoing so by the matter in dispute, the parties agree to continue performingtheir obligations under this Agreement while any good faith dispute is beingresolved unless and until such obligations are terminated by the termination orexpiration of this Agreement.

 

9              OWNERSHIP.

 

9.1           OWNERSHIPBY SUMMIT.  As between MathStar andSummit, Summit shall own all right, title, and interest in the SUMMIT SOFTWAREand MATHSTAR-SPECIFIC SOFTWARE (the “Summit Intellectual Property”), except theEXTERNAL MATHSTAR-SPECIFIC SOFTWARE, and MathStar shall have no ownershipinterest in the Summit Intellectual Property. MathStar hereby irrevocably transfers, conveys and assigns to Summit allof its right, title, and interest in the Summit Intellectual and in anyproperty owned or to be owned by Summit under this Agreement.  MathStar shall execute such documents, rendersuch assistance, and take such other action as Summit may reasonably request,at Summit’s expense, to apply for, register, perfect, confirm, and protectSummit’s ownership rights set forth in this Section, and Summit shall have theexclusive right to apply for or register any patents, mask work rights,copyrights, and such other proprietary protections with respect thereto.

 

9.2           OWNERSHIPBY MATHSTAR.  As between MathStar andSummit, MathStar shall own all right, title, and interest in the MATHSTARLIBRARY and the EXTERNAL MATHSTAR-SPECIFIC SOFTWARE (the “MathStar IntellectualProperty), and Summit shall have no ownership interest in the MathStarIntellectual Property.  Summit herebyirrevocably transfers, conveys and assigns to MathStar all of its right, title,and interest in the MathStar Intellectual Property and in any property owned orto be owned by MathStar under this Agreement. Summit shall execute such documents, render such assistance, and takesuch other action as MathStar may reasonably request, at MathStar’s expense, toapply for, register, perfect, confirm, and protect MathStar’s ownership rightsset forth in this Section, and MathStar shall have the exclusive right to applyfor or register any patents, mask work rights, copyrights, and such otherproprietary protections with respect thereto.

 

9.3           PARTYAS ATTORNEY-IN-FACT.  Summit agrees thatif MathStar is unable because of Summit’s dissolution or incapacity, or for anyother reason, to secure Summit’s signature to apply for or to pursue anyapplication for any United States or foreign patents or mask work or copyrightregistrations covering the inventions assigned to MathStar above, then Summithereby irrevocably designates and appoints MathStar and its duly authorizedofficers and agents as Summit’s agent and attorney-in-fact, to act for and inSummit’s behalf and stead to execute and file any such applications and to doall other lawfully permitted acts to further the prosecution and issuance ofpatents, copyright and mask work registrations thereon with the same legalforce and effect as if executed by Summit. MathStar agrees that if Summit is unable because of MathStar’sdissolution or incapacity, or for any other reason, to secure MathStar’ssignature to apply for or to pursue any application for any United States orforeign patents or mask work or copyright registrations covering the inventionsassigned to Summit above, then MathStar hereby irrevocably designates andappoints Summit and its duly authorized officers and agents as MathStar ‘sagent and attorney-in-fact, to act for and in MathStar ‘s behalf and stead toexecute and file any such

 

 

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applications and to do all other lawfully permitted acts to further theprosecution and issuance of patents, copyright and mask work registrationsthereon with the same legal force and effect as if executed by MathStar.

 

9.4           NOREVERSE ENGINEERING.  Each of MathStarand Summit agrees that it shall not (i) copy, adapt, modify, translate,localize, distribute, create any derivative work of, or include in any otherproducts any Summit Intellectual Property (in the case of MathStar) or MathStarIntellectual Property (in the case of Summit) or any portion thereof, or (ii)reverse assemble, decompile, reverse engineer or otherwise attempt to derivesource code (or the underlying ideas, algorithms, structure or organization)from any such property, except as specifically authorized in writing by theparty owning the same or as specifically provided under this Agreement.

 

9.5           COPYRIGHTNOTICES.  Each party shall ensure thatall copies of any software or other property in its possession or controlincorporates all copyright and other proprietary notices in the same mannerthat the party owning the same incorporates such notices, or in any othermanner reasonably requested by the owner. Each party shall promptly notify the other party in writing upon itsdiscovery of any unauthorized use of a party’s property or the infringement ofsuch party’s proprietary rights therein.

 

10.           TRADEMARKS,TRADE NAMES AND BRANDING.

 

10.1         USAGEGUIDELINES.  Summit shall comply withMathStar’s logo, trademark and branding usage guidelines, which MathStar shallprovide to Summit, and as the same may be updated by MathStar from time totime.  MathStar shall comply with Summit’slogo, trademark and branding usage guidelines, which Summit shall provide toMathStar, and as the same may be updated by Summit from time to time.  Neither party shall alter the other party’smarks.

 

10.2         OWNERSHIP.  All MathStar marks are and shall remain, asbetween Summit and MathStar, the exclusive property of MathStar or itsproviders.  All Summit marks are andshall remain, as between Summit and MathStar, the exclusive property of Summitor its suppliers.  Neither party grantsany rights in the marks or in any other trademark, trade name, service mark,business name or goodwill of the other except as expressly permitted hereunderor by separate written agreement of the parties, and all use of a party’s marksshall inure to the benefit of the owner of such mark.  Each party agrees that it shall not challengeor assist others to challenge the rights of the other party or its suppliers orlicensors in the marks or the registration of the marks, or attempt to registerany trademarks, trade names or other proprietary indicia confusingly similar tothe marks.

 

11.           CONFIDENTIALITY.

 

11.1         AGREEMENTAS CONFIDENTIAL INFORMATION.  The partiesshall treat the terms and conditions and the existence of this Agreement asConfidential Information (as the term “Confidential Information” is hereinafterdefined).  Each party shall obtain theother’s consent prior to any publication, presentation, public announcement orpress release concerning the existence or terms and conditions of thisAgreement.

 

11.2         DEFINITIONOF CONFIDENTIAL INFORMATION.  “ConfidentialInformation” means the terms and conditions of this Agreement, the existence ofthe discussions between the parties, any information disclosed in connectionwith the Activities being undertaken as described herein, and any proprietaryinformation a party considers to be proprietary including, but not limited to,information regarding each party’s product plans, product designs, productcosts, product prices, finances, marketing plans, business opportunities,personnel, research and development activities, know-how and pre-releaseproducts; provided that information disclosed by the disclosing party (“DisclosingParty”) in written or other tangible form will be considered ConfidentialInformation by the receiving party (“Receiving Party”) only if such informationis conspicuously designated as “Confidential,” “Proprietary” or a similarlegend.  Information disclosed orallyshall be considered Confidential Information only if:  (i) it is identified as confidential,proprietary or the like at the time of disclosure, and (ii) it is confirmed inwriting within thirty (30) days of disclosure. Confidential Information disclosed to the Receiving Party by anyaffiliate or agent of the Disclosing Party is subject to this Agreement.

 

11.3         NONDISCLOSURE.  The Receiving Party shall not disclose oruse, except as permitted under this Agreement, the Confidential Information toany third party other than employees and contractors of the Receiving Party who

 

 

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have a need to have access to and knowledge of the ConfidentialInformation solely for the purpose of performing its obligations under thisAgreement.  The Receiving Party shallhave entered into non-disclosure agreements with such employees and contractorshaving obligations of confidentiality as strict as those herein prior todisclosure to such employees and contractors to assure against unauthorized useor disclosure.

 

11.4         EXCEPTIONSTO CONFIDENTIAL INFORMATION.  TheReceiving Party shall have no obligation with respect to information which (i)was rightfully in possession of or known to the Receiving Party without anyobligation of confidentiality prior to receiving it from the Disclosing Party;(ii) is, or subsequently becomes, legally and publicly available without breachof this Agreement; (iii) is rightfully obtained by the Receiving Party from asource other than the Disclosing Party without any obligation ofconfidentiality; (iv) is developed by or for the Receiving Party without use ofthe Confidential Information and such independent development can be shown bydocumentary evidence; (v) was publicly known at the time of the DisclosingParty’s communication thereof to the Receiving Party; or (vi) is identified bythe Disclosing Party as no longer proprietary or confidential.  Further, the Receiving Party may discloseConfidential Information pursuant to a valid order issued by a court orgovernment agency with jurisdiction, provided that the Receiving Party providesthe Disclosing Party:  (a) prior writtennotice of such obligation; and (b) the opportunity to oppose such disclosure orobtain a protective order.  The ReceivingParty further agrees that if the Disclosing Party is not successful inprecluding the requesting legal body from requiring the disclosure of theConfidential Information, it will furnish only that portion of the ConfidentialInformation which is legally required to be disclosed and will exercise allreasonable efforts to obtain reliable assurances that confidential treatmentwill be accorded the Confidential Information.

 

11.5         RETURNOR DESTRUCTION OF CONFIDENTIAL INFORMATION. Upon written demand by the Disclosing Party, and in any event upontermination of this Agreement, the Receiving Party shall:  (i) cease using the Confidential Information;(ii) return the Confidential Information and all copies, notes or extractsthereof to the Disclosing Party within seven (7) calendar days of receipt ofdemand; and (iii) upon request of the Disclosing Party, certify in writing thatthe Receiving Party has complied with the obligations set forth in thissection.

 

11.6         INDEPENDENTDEVELOPMENT AND RESIDUALS.  The terms ofconfidentiality under this Agreement shall not be construed to limit eitherparty’s right to develop independently or acquire products without use of theother party’s Confidential Information. The Disclosing Party acknowledges that the Receiving Party may currentlyor in the future be developing information internally, or receiving informationfrom other parties, that is similar to the Confidential Information.  Accordingly, except as provided in thisAgreement, neither party shall be prohibited from developing or havingdeveloped for it products, concepts, systems or techniques that are similar toor compete with the products, concepts, systems or techniques contemplated byor embodied in the Confidential Information provided that the Receiving Partydoes not violate any of its obligations under this Agreement in connection withsuch development.  Further, subject tothe other restrictions and limitations contained in this Agreement, theresiduals resulting from access to or work with such Confidential Informationshall not be subject to the confidentiality obligations contained in this Agreement.  The term “residuals” means non-specificinformation in non-tangible form, which may be retained by persons who have hadaccess to the Confidential Information, including general ideas, concepts,know-how or techniques contained therein. Neither party shall have anyobligation to limit or restrict the assignment of such persons or to payroyalties for any work resulting from the use of residuals.

 

12.           REPRESENTATIONSAND WARRANTIES.

 

12.1         SUMMIT’SREPRESENTATIONS AND WARRANTIES.  Summitrepresents and warrants to MathStar as follows: Summit and its licensors own or possess the necessary rights, title andlicenses necessary to perform its obligations hereunder.  Summit has the right to enter into thisAgreement and to perform its obligations hereunder. Summit will perform all ofits obligations in a workmanlike manner. EXCEPT AS SPECIFICALLY PROVIDED IN THIS SECTION, SUMMIT EXPRESSLYDISCLAIMS ALL WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, TO THE FULLEST EXTENTPERMITTED BY LAW, INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OFMERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NONINFRINGEMENT.

 

 

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12.2         MATHSTAR’SREPRESENTATIONS AND WARRANTIES.  MathStarrepresents and warrants to Summit as follows: MathStar and its licensors own or possess the necessary rights, titleand licenses necessary to perform its obligations hereunder.  MathStar has the right to enter into thisAgreement and to perform its obligations hereunder. MathStar will perform allof its obligations in a workmanlike manner. EXCEPT AS SPECIFICALLY PROVIDED IN THIS SECTION, MATHSTAR EXPRESSLYDISCLAIMS ALL WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, TO THE FULLEST EXTENTPERMITTED BY LAW, INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OFMERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NONINFRINGEMENT.

 

13.           INDEMNITY.

 

13.1         INDEMNIFICATIONBY MATHSTAR.  MathStar shall defend,indemnify and hold harmless Summit and its officers, directors, employees,shareholders, agents, successors and assigns from and against any and all loss,damage, settlement, costs or expense (including legal expenses), as incurred,resulting from, or arising out of any claim against Summit which alleges thatthe MathStar Intellectual Property or the MATHSTAR-SPECIFIC SOFTWARE, infringesupon, misappropriates or violates any patents, copyrights, trademarks or tradesecret rights or other proprietary rights of persons, firms or entities who arenot parties to this Agreement.

 

13.2         MATHSTAREXCLUSIONS.  MathStar shall have noobligation under Section 13.1 above to the extent any claim of infringement ormisappropriation results from:  (i) useby Summit of the MathStar Intellectual Property or the MATHSTAR-SPECIFICSOFTWARE  in combination with any otherproduct (other than as part of the PRODUCT) if the infringement would not haveoccurred but for such combination; (ii) any claim based on Summit’s use of theMathStar Intellectual Property or the MATHSTAR-SPECIFIC SOFTWARE as shippedafter MathStar has informed Summit of modifications or changes in the PRODUCTrequired to avoid such claims and offered to implement those modifications orchanges, if such claim would have been avoided by implementation of MathStar’ssuggestions; (iii) use of the MathStar Intellectual Property or theMATHSTAR-SPECIFIC SOFTWARE other than as permitted under this Agreement, if theinfringement would not have occurred but for such use; or (iv) compliance byMathStar with specifications or instructions supplied by Summit.

 

13.3         INDEMNIFICATIONBY SUMMIT.  Summit shall defend,indemnify and hold harmless MathStar and its officers, directors, employees,shareholders, agents, successors and assigns from and against any and all loss,damage, settlement, costs or expense (including legal expenses), as incurred,resulting from, or arising out of any claim against MathStar which alleges thatthe SUMMIT SOFTWARE infringes upon, misappropriates or violates any patents,copyrights, trademarks or trade secret rights or other proprietary rights ofpersons, firms or entities who are not parties to this Agreement.

 

13.4         SUMMITEXCLUSIONS.  Summit shall have noobligation under Section 13.3 above to the extent any claim of infringement ormisappropriation results from:  (i) useby MathStar of the SUMMIT SOFTWARE in combination with any other product (otherthan as part of the PRODUCT) if the infringement would not have occurred butfor such combination; or (ii) use of the SUMMIT SOFTWARE other than aspermitted under this Agreement, if the infringement would not have occurred butfor such use.

 

13.5         CONTROLOF DEFENSE.  As a condition to suchdefense and indemnification, the party seeking indemnification will provide theother party with prompt written notice of the claim and permit such other partyto control the defense, settlement, adjustment or compromise of any suchclaim.  The party seeking indemnificationmay employ counsel at its own expense to assist it with respect to any suchclaim.

 

13.6         DISCLAIMER.  THE FOREGOING PROVISIONS OF THIS SECTIONSTATE THE ENTIRE LIABILITY AND OBLIGATIONS OF THE PARTIES AND THE EXCLUSIVEREMEDY WITH RESPECT TO ANY VIOLATION OR INFRINGEMENT OF PROPRIETARY RIGHTSINCLUDING, BUT NOT LIMITED TO, ANY PATENT, COPYRIGHT, TRADEMARK, BY THEINTELLECTUAL PROPERTY OF MATHSTAR AND SUMMIT, RESPECTIVELY, OR ANY PARTTHEREOF.  EACH PARTY’S OBLIGATIONS UNDERTHIS SECTION ARE SUBJECT TO THE LIMITATIONS SET FORTH IN SECTION 14.

 

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14.           LIMITATIONOF LIABILITY.

 

14.1         LIMITATIONOF DAMAGES. EXCEPT FOR BREACH OF THE OBLIGATIONS OF CONFIDENTIALITY SET FORTHHEREIN, NEITHER PARTY SHALL BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OFTHIS AGREEMENT UNDER ANY CONTRACT, STRICT LIABILITY, NEGLIGENCE OR OTHER LEGALOR EQUITABLE THEORY FOR ANY SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ORLOST REVENUE OR PROFITS, OR COST OF PROCUREMENT OF SUBSTITUTE GOODS, TECHNOLOGYOR SERVICES.

 

14.2         LIMITATIONOF LIABILITY. EXCEPT FOR BREACH OF THE OBLIGATIONS OF CONFIDENTIALITY SET FORTHHEREIN AND THE INDEMNIFICATION OBLIGATIONS UNDER SECTION 13, THE TOTAL DOLLARLIABILITY OF EITHER PARTY UNDER THIS AGREEMENT OR OTHERWISE SHALL BE LIMITED TOTHE LESSER OF $100,000 OR THE AMOUNT PAID TO SUMMIT HEREUNDER.

 

15.           TERMAND TERMINATION.

 

15.1         TERMOF AGREEMENT.  This Agreement shall beeffective upon the Effective Date and shall remain in force for a period of 18months, unless otherwise terminated as provided herein.  Thereafter, this Agreement may  renew for one or more terms of twelve months,upon mutual agreement of the parties.

 

15.2         TERMINATIONFOR CAUSE.  This Agreement may beterminated by a party for cause immediately upon the occurrence of and inaccordance with the following:  (a)Insolvency Event. Either may terminate this Agreement by delivering writtennotice to the other party upon the occurrence of any of the followingevents:  (i) a receiver is appointed foreither party or its property; (ii) either party makes a general assignment forthe benefit of its creditors; (iii) either party commences, or has commencedagainst it, proceedings under any bankruptcy, insolvency or debtor’s relieflaw, which proceedings are not dismissed within sixty (60) days; or (iv) eitherparty is liquidated or dissolved. (b) Default. Either party may terminate thisAgreement effective upon written notice to the other if the other partyviolates any covenant, agreement, representation or warranty contained hereinin any material respect or defaults or fails to perform any of its obligationsor agreements hereunder in any material respect, which violation, default orfailure is not cured within thirty (30) calendar days after notice thereof fromthe non-defaulting party stating its intention to terminate this Agreement byreason thereof.

 

 

15.3         SURVIVALOF RIGHTS AND OBLIGATIONS UPON TERMINATION. Sections 4.1, 4.4, 5, 7, 8, 9, 10,11, 13, 14, 15, 16 and all payment obligations of the parties shall survive anyexpiration or termination of this Agreement. Furthermore, in the event of anytermination or expiration of this Agreement, all licenses expressly granted toEnd Users shall survive.

 

15.4         EFFECTOF TERMINATION.  If this Agreement isterminated, (i) Summit shall immediately document in detail the status of anyStatement of Work then in effect, and Summit shall deliver to MathStar allcopies of MATHSTAR LIBRARIES, EXTERNAL MATHSTAR — SPECIFIC SOFTWARE that are inits or any third party’s possession (except in the possession of End Users),whether or not such External MathStar — Specific Software has been completed oris still in progress, and such External MathStar — Specific Software shall, forall purposes of this Agreement, be deemed transferred to MathStar, with respectto which MathStar shall have all applicable ownership and license rights; (ii)the parties shall immediately cease work as of the effective date oftermination as to any Statement of Work then in process; (iii) MathStar shallpay Summit, within thirty (30) days after the receipt by MathStar of a reportfrom Summit describing the work performed by Summit in reasonable detail, forany amount due Summit for work performed under any Statement of Work, (iv)MathStar shall pay Summit any amounts outstanding unless MathStar hasterminated this Agreement for cause pursuant to Section 15.2 hereof, and (v)any paid for licenses must be granted to an End User or to MathStar withinthirty (30) days of termination and any unpaid for licenses terminateimmediately.

 

 

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16.           MISCELLANEOUS.

 

16.1         FORCEMAJEURE.  Neither party shall be liableto the other for delays or failures in performance resulting from causes beyondthe reasonable control of that party including, but not limited to, acts ofGod, labor disputes or disturbances, material shortages or rationing, riots,acts of war, governmental regulations, communication or utility failures, orcasualties.  However, the occurrence of aforce majeure event shall not relieve either party of its payment obligationsunder this Agreement.

 

16.2         EXPORT.  Each party hereby acknowledges that one ormore deliverables supplied under the Agreement are or may be subject to exportor import controls under the laws and regulations of the United States(U.S.).  Each shall comply with such lawsand regulations and agrees not to knowingly export, re-export, import orre-import, or transfer products without first obtaining all required U.S.Government authorizations or licenses. MathStar and Summit each agree to provide the other such information andassistance as may reasonably be required by the other in connection withsecuring such authorizations or licenses, and to take timely action to obtainall required support documents.  Eachparty agrees to maintain a record of exports, re-exports, and transfers of anysuch deliverables for five (5) years and to forward within that time period anyrequired records to the party needing the same or, at such party’s request, theU.S. Government. Each party agrees to permit audits as required under theregulations to assure compliance with this Agreement.

 

16.3         RELATIONSHIPOF PARTIES.  The parties are independentcontractors under this Agreement, and no other relationship is intended,including a partnership, franchise, joint venture, agency, employer/employee,fiduciary, master/servant relationship, or other special relationship.  Neither party shall act in a manner whichexpresses or implies a relationship other than that of independent contractor,nor bind the other party.  Neither partyis by virtue of this Agreement authorized as an agent, employee or legalrepresentative of the other party.

 

16.4         NOTHIRD PARTY BENEFICIARIES.  Unlessotherwise expressly provided, no provisions of this Agreement are intended orshall be construed to confer upon or give to any person or entity other thanMathStar and Summit any rights, remedies or other benefits under or by reasonof this Agreement.

 

16.5         EQUITABLERELIEF.  Each party acknowledges that abreach by the other party of any confidentiality or proprietary rightsprovision of this Agreement may cause the non-breaching party irreparable harm,for which the award of damages would not be adequate compensation.  Consequently, the non-breaching party mayinstitute an action to enjoin the breaching party from any and all acts in violationof those provisions, which remedy shall be cumulative and not exclusive, and aparty may seek the entry of an injunction enjoining any breach or threatenedbreach of those provisions in addition to any other relief to which thenon-breaching party may be entitled at law or in equity.

 

16.6         ATTORNEYS’FEES.  In addition to any other reliefawarded, the prevailing party in any action arising out of this Agreement shallbe entitled to its reasonable attorneys’ fees and costs.

 

16.7         NOTICES.  Any notice required or permitted to be givenby either party under this Agreement shall be in writing and shall bepersonally delivered or sent by a reputable overnight mail service (e.g.,Federal Express), or by first class mail (certified or registered) to thebusiness point of contact of the other party. Notices will be deemed effective (i) three (3) working days afterdeposit, postage prepaid, if mailed, or (ii) the next day if sent by overnightmail.  A copy of any notice shall be sentto the following:  Summit Design, Inc.,35 Corporate Drive, Burlington, MA 01803, Attn: VP, Finance, and to:  MathStar,Inc., 19075 Tanasbourne Drive, Suite 200, Hillsboro, OR, 97124, Attn:  CFO.

 

16.8         ASSIGNMENT.  Except as otherwise expressly provided hereinwith respect to subcontractors, neither party may assign its rights or delegateits obligations hereunder, either in whole or in part, whether by operation oflaw or otherwise, without the prior written consent of the other party.  Any attempted assignment or delegation withoutconsent will be void.  The rights and liabilitiesof the parties under this Agreement will bind and inure to the benefit of theparties’ respective successors and permitted assigns.

 

16.9         WAIVERAND MODIFICATION. Failure by either party to enforce any provision of thisAgreement will not be deemed a waiver of future enforcement of that or anyother provision. Any waiver, amendment or other modification of any provisionof this Agreement will be effective only if in writing and signed by theparties.

 

 

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16.10       SEVERABILITY.  If for any reason a court of competentjurisdiction finds any provision of this Agreement to be unenforceable, thatprovision of the Agreement will be enforced to the maximum extent permissibleso as to effect the intent of the parties, and the remainder of this Agreementwill continue in full force and effect.

 

16.11       CONTROLLINGLAW.  This Agreement and any actionrelated thereto shall be governed, controlled, interpreted and defined by andunder the laws of the State of Delaware and the United States, without regardto the conflicts of laws provisions thereof. The parties specifically disclaim the UN Convention on Contracts for theInternational Sale of Goods.

 

16.12       HEADINGS.  Headings used in this Agreement are for easeof reference only and shall not be used to interpret any aspect of thisAgreement.

 

16.13       ENTIREAGREEMENT.  This Agreement, including allexhibits which are incorporated herein by reference, constitutes the entireagreement between the parties with respect to the subject matter hereof, andsupersedes and replaces all prior and contemporaneous understandings oragreements, written or oral, regarding such subject matter.

 

16.14       COUNTERPARTS.  This Agreement may be executed in twocounterparts, each of which shall be an original and together which shallconstitute one and the same instrument.

 

IN WITNESS WHEREOF, theparties hereto have executed this Agreement by persons duly authorized as ofthe date and year first above written.

 
| SUMMIT DESIGN, INC. |
|---------------------|
|                |
| By:                 | /s/Emil Girczyc |   |
|                | Name: Emil Girczyc |
|                | Title: Chief Executive Officer |
|                |
| MATHSTAR, INC.      |
|                |
| By:                 | /s/ Daniel Sweeney |   |
|                | Name: Daniel Sweeney |
|                | Title: Chief Operating Officer |
|                     |  |  |  |

 

 

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EXHIBITA

SummitEnd User License Agreement

 

 
|         SUMMIT DESIGN LICENSE AND SERVICES  AGREEMENT |  |
|------------------------------------------------------------------------------------------|--|
|                                                                                     |

 
| Licensee:                                        |   |   |
|--------------------------------------------------|--------|--------|
|                                             |   |
| Address:                                         |   |   |
|                                             |   |
| By:                                              |   |   |
|        (Signature) |   |
| Title:                                           |   |   |
|                                             |   |
| Date:                                            |   |   |
|                                                  |        |        |  |  |

 

This Agreement (“Agreement”) is between thepurchaser of this license and its agents and representatives (collectively, “Licensee”)and Summit Design, Inc., a Delaware corporation, and its subsidiaries(collectively “Summit”).

 

This Agreement governs Summit’s grant of alicense to Licensee to use this Licensed Product(s), which is defined as, (i) thiscomputer program and all error corrections, Updates and Upgrades hereto (asdefined below), solely in machine readable form, furnished to Licensee underthis Agreement (the “Software”): (ii) all written and electronic materials generallymade available by Summit for the Software (the “Documentation”); and (iii) thecode block(s) software for use with the Software.

 

BY INSTALLING OR USING THE SOFTWARE, LICENSEEACKNOWLEDGES THAT IT HAS READ ALL OF THE TERMS AND CONDITIONS OF THISAGREEMENT, UNDERSTANDS THEM, AND AGREES TO BE BOUND BY THEM. LICENSEEUNDERSTAND THAT, IF IT PURCHASED A COPY OF THE LICENSED PRODUCT FROM ANAUTHORIZED RESELLER OF SUMMIT, THAT ANY SUCH RESELLER IS NOT SUMMIT’S AGENT ANDIS NOT AUTHORIZED TO MAKE ANY REPRESENTATIONS, CONDITIONS OR WARRANTIES,STATUTORY OR OTHEWISE, ON SUMMIT’S BEHALF NOR TO VARY ANY OF THE TERMS ORCONDITIONS OF THIS AGREEMENT. IF LICENSEE AND SUMMIT ARE PARTIES TO A WRITTENLICENSE AGREEMENT, DULY EXECUTED AND DELIVERED BY EACH OF THEM, WITH RESPECT TO LICENSEE’S USE OF THE SOFTWARE, IN THEEVENT OF ANY CONFLICT BETWEEN THE TERMS OF SUCH LICENSE AGREEEMNT AND THISAGREEMENT. THE RELEVANT PROVISION OF SUCH OTHER LICENSE AGREEMENT SHALLSUPERSEDE THE CONTRADICTING TERM OF THIS AGREEMENT.

 

If Licensee does not agree to the terms ofthis Agreement and there is no other agreement between the parties with respectto the Software, Licensee may promptly (but in no event later than 7 days fromthe first attempted installation) return this LICENSED PRODUCT to the placeFROM WHICH it obtained the LICENSED PRODUCT for a full refund.

 

1.             DEFINITIONS.

 

1.1.          “Designated Equipment” means (a) for licenses that arerestricted to Use on only one computer (“Node Locked License”), the individualcomputer on which the Software is first installed and (b) for licenses thatpermit the Use of the Software on more than one computer (“Floating License”), thecomputer server on which the Software licensing mechanism is first installedand the number of individual computers for which a license fee has been paid.If there is no agreement between Licensee and Summit with respect to the typeof license, each license shall be deemed to be a Node Locked License.

 

1.2.          “Designated Location” means the street address of the DesignatedEquipment.

 

10.12       “Licensed Product(s)” is defined as:

(i)       the computer program andall error corrections, Updates and Upgrades hereto (as defined below), inmachine readable form (the “Software”);

 

(ii)      all written andelectronic materials generally made available by Summit Design for the Software(the “Documentation”); and/or

 

(iii)     the code block(s)software for use with the Software;

 

providedthat such was ordered by Licensee and provided by Summit Design while thisAgreement is in effect.

 

10.13       “Proprietary Information” means:

(a)           Summit’s marketing, product, business, and otherstrategies and plans; (b) any other information of Summit disclosed in tangibleform and marked or identified as proprietary or confidential; and (c) the

 

 

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source code, object code, internal design andimplementation techniques of the Software. Excluded from Proprietary Informationis any information that is: (d) rightfully in the public domain; (e) rightfullyin Licensee’s possession prior to receipt from Summit; (f) rightfullylearned by Licensee from a third party not in violation of any obligation ofconfidentiality or other right; or (g) developed independently by Licenseewithout benefit of the Proprietary Information.

 

1.4.          “Territory” means the country of the Designated Location.

 

1.5.          “Update(s)” means a new release of a particular Softwareprogram which provides error corrections or enhanced functionality and forwhich Summit does not charge a license or update fee to licensees of thatSoftware program.

 

1.6.          “Upgrade(s)” means a Software program with greater ordifferent capability than the Software program, but providing the sameessential functionality, to be upgraded and for which Summit charges a licensefee to licensees of the Software program to be upgraded.

 

1.7.          “Use” means copying all or any portion of the Software intoa computer or transmitting it to a computer for processing of its instructionsor displaying any portion of the Software in connection with the processing ofsuch machine instructions.

 

2              PAYMENT AND INSTALLATION.

 

2.1.          Payment. Licensee shall pay Summit in full for the LicensedProduct within thirty (30) days of the invoice date, provided, however, thatpayment may become immediately due and payable if Licensee’s account becomesdelinquent. Licensee shall pay for each installment delivery of LicensedProduct.

 

2.2.          Installation. Licensee shall be responsible forinstallation of the Licensed Product.

 

3.             LICENSE GRANT.

 

3.1.          Evaluation License. If this Software has been provided forevaluation by Licensee or Licensee has not paid to Summit all applicablecharges for this Software, then Summit grants to Licensee only a non-exclusive,non-transferable, limited-term evaluation license solely for internal use ofthe Software, and solely for the purpose of testing and evaluating the Softwareto determine if Licensee will purchase a license to the Software from Summit(an “Evaluation License”). Licensee shall not use the Software pursuant to anEvaluation License in the productive course of business or for any purposeother than testing and evaluating the Software as described above. ThisEvaluation License shall be effective as of the date Licensee first receivesthe Software and shall remain in effect only for thirty (30) days, unless this Agreementis terminated prior thereto by either party. During the term of an EvaluationLicense, Summit shall provide Licensee with maintenance and support servicesfor the Software as follows, (i) telephone support from Summit customer supportpersonnel during Summit’s normal support business hours, subject to Summit’snormal prioritization procedures; and (ii) software Updates for the Software asdeemed appropriate by Summit. Promptly upon the expiration of this Evaluation License,and without any notice or demand from Summit, Licensee shall either: (a)purchase a standard license for the Software pursuant to the terms of thisAgreement; or (b) return the Software and all related materials to Summit.Failure to return the Software and all such materials to Summit withinthirty-five (35) days of first receipt shall be deemed to be an election byLicensee to purchase a standard license for the Software pursuant to Section3.3 hereof, and payment for such license shall become due and payable thirty(30) days thereafter (65 days after first receipt).

 

3.2.          Beta License. If this Software has been provided fortesting by Licensee without charge, then Summit grants to Licensee only anon-exclusive, non-transferable, limited-term evaluation license solely forinternal use of the Software, and solely for the purpose of testing theSoftware (a “Beta License”). Licensee shall not use the Software pursuant to aBeta License in the productive course of business or for any purpose other thantesting the Software as described herein. Such testing will include, but not belimited to (i) development of a product design which uses the full capabilitiesof the Software, (ii) reporting to Summit of all errors discovered in the Softwareand working with Summit to isolate the causes of the errors, (iii) writing andevaluation report of the Software at the conclusion of the testing andsubmitting it to Summit, which report will include test results, bug reports,suggested error corrections, suggestions for improvements to the Software andany other information deemed important by Licensee and (iv) providing bi-weeklystatus updates by phone to Summit. Licensee will make available to Summit allreports and other

 

 

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materials relating to Licensee’s testing ofthe Software and Licensee will review and discuss with Summit such reports andother materials, and the testing of the Software generally, at times reasonablyconvenient to Licensee. All ideas and suggestions for enhancement, improvement,correction and other changes to the Software provided by Licensee to Summitshall become and remain the property of Summit, exclusively, and Licensee shallhave no rights therein and no right to compensation therefor. This Beta Licenseshall be effective as of the date Licensee first receives the Software andshall remain in effect only for ninety (90) days, unless this Agreement or thisBeta License is terminated prior thereto by either party. A Beta License may beterminated by either party at any time for any reason or for no reason, uponprior written notice to the other party. During the term of a Beta License,Summit shall provide Licensee with telephone support from Summit customersupport personnel during Summit’s normal support business hours, subject toSummit’s normal prioritization procedures. Promptly upon the expiration of thisBeta License, and without any notice or demand from Summit, Licensee shallreturn the Software and all related materials to Summit.

 

3.3.          Standard License. If this Software has been provided toLicensee for use in the productive course of business, Summit hereby grants,and Licensee accepts, a non-transferable, non-sublicensable, perpetual ortime-based, non-exclusive, limited license to Use the Licensed Product inmachine-readable form only, and only on the Designated Equipment at theDesignated Location, and only for Licensee’s internal, normal businesspurposes: provided, however, that if this Licensed Product was licensed underSummit’s University Program, the Licensed Product shall be used only to trainLicensee’s students and shall not be used for any commercial purposes, includingbut not limited to the creation of any commercial product. The Licensed Productshall not be used under any circumstance whatsoever directly or indirectly in acomputer service business or in a rental or commercial timesharing arrangement.

 

3.4.          Intellectual Property Rights. All intellectual propertyrights in and to the Licensed Product shall remain the sole and exclusiveproperty of Summit (and/or its suppliers, if applicable). Licensee shall haveno rights, title, or interest in or to the Licensed Product other than thelicense expressly granted in this Agreement.

 

3.5.          Useon Designated Equipment. Use of the Software is restricted to the DesignatedEquipment at the Designated Location on (a) a single computer, in the case of aNode Locked License and (b) via a local-area network within the DesignatedLocation on the number of individual computers for which a license fee has beenpaid, in the case of a Floating License. Accessing the Software from anylocation other than the Designated Location via local- or wide-area networkingtechnology, or any other means, is prohibited unless Licensee has paid theappropriate Summit wide-area network license fee for the applicable Softwareand is subject to the restrictions set forth herein. Within five business daysof Installation of a Node Locked License, Licensee shall send to Summit theserial number and type of the Designated Equipment to the following e-mailaddress: licenses@sd.com.

 

3.6.          Transfers.Licensee may change the Designated Equipment or Designated Location but onlyafter giving five (5) days prior written notice to Summit; provided, however,that if the Designated Equipment becomes inoperative Licensee may change theDesignated Equipment provided that Licensee notifies Summit in writing (by hardcopy and e-mail to the address set forth in Section 3.5 above) of the change promptlyfollowing such change. Licensee shall pay Summit’s standard transfer chargesprior to the change in Designated Location. If the Licensed Product is notcovered by a Software Maintenance Policy (as described below) at the time of achange in Designated Equipment or Designated Location, Licensee shall paySummit’s then standard charges for any assistance provided by Summit to changethe Designated Equipment or Designated Location. Licensee shall, upon requestfrom Summit, certify to Summit in writing the current Designated Equipment andDesignated Location.

 

3.7.          LicenseTerminates. Licensee’s license to Use the Licensed Product that is replaced byan Update or an Upgrade shall terminate thirty (30) days after the Update orUpgrade is first installed. Within such thirty (30) day period, Licensee shalldestroy or archive the original and all copies of the Licensed Product that isreplaced by the Update or Upgrade, and certify the destruction or archiving inwriting to Summit.

 

4              PROTECTIONOF PROPRIETARY INFORMATION.

 

4.1.          Ownership.The Proprietary Information of Summit shall remain confidential and proprietaryto Summit.

 

 

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4.2.          Source Code. Licensee shall not attempt to reverseengineer, decompile or disassemble the Software or any portion thereof, orotherwise derive its source code.

 

4.3.          Copy. Licensee may make one copy of the Software andDocumentation solely for backup and archival use, retaining on such copy Summit’sand/or its suppliers’ copyright, trademark, confidentiality, and other notices.Such backup copy shall be delivered to Summit or destroyed upon the terminationof this Agreement.

 

4.4.          Destruction of Software. Licensee shall erase the Softwarefrom all Designated Equipment prior to retiring such equipment from active useand in the event of termination of this Agreement.

 

4.5.          Inclusion with Other Software. Licensee may Use theSoftware within or in conjunction with any other software, but must comply withSection 4.4 above upon termination of this Agreement or change of theDesignated Equipment, and any Use shall always remain subject to this Agreement.

 

4.6.          Confidentiality. Licensee shall not disclose, provide orotherwise make available the Proprietary Information of Summit to any person,other than authorized employees of Licensee who have signed agreements with Licenseeproviding for the protection of the Proprietary Information, without Summit’sprior written consent, signed by an authorized officer of Summit. Licenseeshall also protect the Proprietary Information through instructions to itsemployees, access limitations, and the like, no less securely than if it wereLicensee’s own intellectual property. Licensee shall not use the ProprietaryInformation except to the extent permitted hereunder. No media containing the Software,nor any Documentation, shall be transferred, reproduced, or used in any way,other than as expressly permitted by this Agreement.

 

5.             SOFTWARE MAINTENANCE POLICY.

 

Summit recommends that allSoftware be covered by Summit’s standard Software support services. Inconsideration of payment by Licensee of Summit’s standard Software supportfees, Summit will provide Summit’s standard Software support services for theSoftware pursuant to Summit’s Software Maintenance Policy described below.Software support reinstatement charges may be incurred in the event of a lapsein Software support coverage and subsequent renewal.

 

5.1.          Term of Support. These support services shall be for aninitial support term of one year, and thereafter for successive periods ofsupport renewal terms of one year each, unless and until terminated pursuant toSection 5.7 below.

 

5.2.          Support Fee. To obtain support services under the SoftwareMaintenance Policy, Licensee shall pay to Summit Summit’s standard annual servicefee for the Licensed Product. All service fees are due and payable in full atthe start of each service term for such Licensed Product described in Section5.1 above. Summit may increase its annual service fees at, but only at, thebeginning of a service term. If Licensee and Summit agree, the term of supportmay be modified and support fees prorated such that the term of support for allLicensed Product used by Licensee expire on the same date. Service fees do notinclude excise, sales, use, value added, or other similar taxes, nor anyduties. Licensee shall reimburse Summit for all such taxes and duties incurredby Summit in connection with this Agreement. If an Upgrade is provided toLicensee and covered by these support services, Licensee shall pay anadditional service fee equal to the amount by which the annual service fee forthe Upgrade exceeds the annual service fee for the Licensed Product.

 

5.3.          Support Services. Summit will provide Licensee with thefollowing support services during the support term for the Licensed Product:(a) telephone diagnostics and assistance in the use of the Licensed Product inaccordance with the Documentation during normal, weekday EST business hours,excluding Summit holidays; (b) repair or replacement, at Summit’s option, ofany media that is defective and which is returned to Summit in accordance with Section6 below; (c) delivery of the Updates upon their general commercial releases bySummit; and (d) delivery of Upgrades upon their general commercial releases bySummit, provided that Licensee has ordered the Upgrade and paid the applicableUpgrade Fee. Summit will use commercially reasonable efforts to respondpromptly to all reasonable service requests from Licensee. Summit shalldetermine the timing and frequency of its Update and Upgrade deliveries in itssole discretion. If Licensee and Summit mutually agree, Summit will providemaintenance services to Licensee that are not covered under this Section 5.3.If such services are ordered by Licensee and provided by Summit, they shall begoverned by this Agreement, they shall be provided during normal businesshours, excluding holidays observed by

 

 

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Summit, and Licensee shall pay Summit’s thencurrent standard charges for such service.

 

5.4           Excluded Services. The following services are not included under this Section 5: (a)services necessitated by: (i) relocation, movement, improper operation,neglect, or misuse of the Licensed Product; (ii) Licensee’s failure to maintainproper site or environmental conditions; (iii) use of the Software with anysoftware or hardware for which its use is not recommended in the documentationfor the Software provided by Summit; (iv) the fault of Licensee or Licensee’sagents or employees; (v) any attempt at repair, maintenance, or modification ofthe Licensed Product performed by anyone other than authorized Summit servicepersonnel; (vi) casualty, act of God, or the unauthorized act of any thirdparty, (vii) failure or interruption of any electrical power, telephone, orcommunication service or like cause; or (viii) any other cause external to theLicensed Product except ordinary Use in accordance with the license granted inSection 3.3 above; (b) any service or product not specifically set forth inSection 5.3 above; and (c) service at Licensee’s location.

 

5.5           Discontinued Licensed Product.  Summit reserves the right to replace aLicensed Product that is discontinued or retired by Summit with a replacementLicensed Product, and negotiate with Licensee the difference in price, if any.

 

5.6           Support Services Cease. If Licensee ceases paying for support services as described herein.  Summit shall have no further obligationshereunder, and Licensee shall promptly pay to Summit all fee and charges duehereunder.

 

5.7           Renewal.  EitherSummit or Licensee may choose not to renew this Agreement for support servicesat any time by notifying the other party of this fact prior to commencement ofthe next annual service term.  After notification,Summit will continue to provide support services through the end of the paidterm.

 

5.8           University Program. Any Licensee licensing the Licensed Product through Summit’s UniversityProgram shall designate one person, who must be properly trained in theoperation and use of the Licensed Product, to serve as Licensee’s contactperson for all services performed under this Agreement.  All requests for service under this Agreementshall be made by Licensee through such contact person.

 

6              LIMITED WARRANTY AND DISCLAIMER

 

THE LICENSED PRODUCT AND ALLOTHER ITEMS AND SERVICES PROVIDED IN CONNECTION WITH ANY EVALUATION LICENSEHEREUNDER ARE PROVIDED ON AN “AS IS” BASIS AND WITHOUT ANY EXPRESS OR IMPLIEDWARRANTY OF ANY KIND, EXCEPT AS SPECIFICALLY PROVIDED IN THIS SECTION 6.  With respect to any license hereunder otherthan Evaluation Licenses, Summit warrants that the Software will conformsubstantially to its Documentation for thirty (30) days from delivery and thatthe medium containing the Software will be free of defects in material andworkmanship under normal use for thirty (30) days from delivery.  Licensee must obtain a return authorizationnumber from Summit before returning the Software, media, or a Peripheral toSummit.  If Summit confirms a materialnon-conformity in the Software reported by Licensee in the unaltered Software,Summit will use commercially reasonable efforts to remedy thenonconformance.  Summit does not warrantthat the operation of the Licensed Product will be uninterrupted or error free,nor does it guarantee that its remedial efforts will correct anynonconformance.  Corrections andreplacements will be warranted for the remainder of the original warrantyperiod.  If any Software fails to complymaterially with any limited warranty set forth in this Section 6 and Summitdoes not remedy such failure pursuant to this Section 6, Summit’s soleobligation and liability, and Licensee’s exclusive remedy for such failureshall be limited: (i) for nonconforming Software, to the refund of the licensefee paid for such Software, upon the return of such Software to Summit, inwhich event this Agreement shall terminate; and (ii) for defective medium toreplace the defective media that are returned to Summit within the warrantyperiod.  Some jurisdictions do not allowthe exclusion or limitation of relief, incidental or consequential damages, sothe above limitation or exclusion may not apply to Licensee.  Summit will have no obligation fornon-conformities in the Software or defects in medium that are caused byaccident, abuse, or misuse of the Software, medium, or Peripheral.  In the event that Summit separately grantsLicensee in writing the right to modify the Licensed Product, Licensee shalldisplay Summit’s and/or its suppliers’ copyright, trademark, confidentialityand other notices on any portion of the Licensed Product so Used.  SUMMIT MAKES NO CONDITIONS OR WARRANTIES OFANY KIND, WHETHER EXPRESSED OR IMPLIED, WRITTEN OR ORAL, EXCEPT AS EXPRESSLYSTATED IN THIS SECTION 6.  SUMMIT DISCLAIMSALL OTHER CONDITIONS AND WARRANTIES, EXPRESSED AND IMPLIED, STATUTORY OROTHERWISE, INCLUDING

 

 

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WITHOUT LIMITATION THE IMPLIED WARRANTIES OFMERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND FREEDOM FROMINFRINGEMENT WITH RESPECT TO THE LICENSED PRODUCT AND ALL OTHER PRODUCTS,SUPPORT SERVICES, OTHER SERVICES, MATERIALS, DOCUMENTATION, AND OTHER ITEMSFURNISHED UNDER, OR IN CONNECTION WITH THIS AGREEMENT.

 

7              INFRINGEMENT.

 

7.1           Summit to Defend. Summit will defend, at its own expense,any action against licenses based on a claim that the Licensed Productinfringes a United States patent or United States copyright or involvesmisappropriation of a trade secret. Summit will pay such damages or costs asare finally awarded against Licensee for such infringement or misappropriationprovided that Licensee gives Summit: (a) prompt written notice of any suchaction and of all prior related claims; (b) sole control of the defense andsettlement of such action; and (c) full cooperation in any defense orsettlement. Summit shall not be liable for any fees, costs, or damages incurredwithout such prompt written notice, control, and cooperation.

 

7.2           Exclusive Remedy. Should any Licensed Product become, orin Summit’s opinion be likely to become, the subject of a claim of infringementor trade secret misappropriation as set forth in Section 7.1 above, Summitshall, at its option and expense: (a) obtain for Licensee the right to continueusing the Licensed Product, (b) replace or modify the Licensed Product so itsuse becomes no infringing or otherwise lawful; or (c) terminate the licensegranted hereunder with respect to the infringing Licensed Product orsubcomponent and refund the applicable license fee paid by Licensee for theLicensed Product or subcomponent, less a reasonable allowance for past usebased on straight-line depreciation over a three-year period.

 

7.3           Disclaimer. Notwithstanding the foregoing, Summit shallhave no liability for any claim of infringement of a patent, copyright or otherintellectual property right or trade secret misappropriation, based on the useof the Licensed Product: (a) on a computer for which it was not designed; (b)with any other product not supplied by Summit; (c) in any manner or purpose forwhich the Licensed Product was not designed; (d) if the infringement ormisappropriation would have been avoided by Licensee’s use of the most currentversion of the Licensed Product; (e) if it has been modified by anyone otherthan Summit; or (f) infringing on intellectual property rights or trade secretsowned by Licensee or any of its affiliated companies.

 

7.4           Exclusive Remedy. THIS SECTION 7 STATES LICENSEE’SEXCLUSIVE REMEDY AND SUMMIT’S SOLE LIABILITY FOR THE LICENSED PRODUCTS OR SOFTWAREINFRINGING ON THE INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES OR CONSTITUTINGA MISAPPROPRIATION OF THE TRADE SECRETS OF THIRD PARTIES.

 

8              LIMITATION OF LIABILITY.

 

8.1           Limitation of Liability. EXCEPT AS OTHERWISE EXPRESSLYSTATED IN SECTION 7 (“INFRINGEMENT”) OF THIS AGREEMENT. SUMMIT’S (AND ITSSUPPLIERS’) ENTIRE LIABILITY, AND LICENSEE’S EXCLUSIVE REMEDY, FOR ANY AND ALLCLAIMS ARISING UNDER OR IN CONNECTION WITH THIS AGREEMENT OR RELATED TO ANYITEM OR SERVICE PROVIDED UNDER OR IN CONNECTION WITH THIS AGREEMENT, REGARDLESSOF THE FORM OF THE ACTION, WHETHER IN BREACH OF WARRANTY, CONTRACT, TORT,STRICT LIABILITY OR OTHERWISE, SHALL BE LIMITED TO AN AMOUNT EQUAL TO THELICENSE FEE PAID TO SUMMIT BY LICENSEE FOR THE LICENSED PRODUCT. IN NO EVENTSHALL SUMMIT (NOR ANY OF ITS SUPPLIERS) BE LIABLE FOR ANY SPECIAL, INDIRECT,INCIDENTAL, CONSEQUENTIAL, OR EXEMPLARY DAMAGES (INCLUDING WITHOUT LIMITATIONLOSS OF DATA, LOST PROFITS, AND COSTS OF PROCUREMENT OF SUBSTITUTE GOODS),ARISING OUT OF, OR IN CONNECTION WITH, THIS AGREEMENT OR ANY PRODUCT SERVICE,OR OTHER ITEM PROVIDED UNDER, OR IN CONNECTION WITH, THIS AGREEMENT, WHETHER INBREACH OF WARRANTY, CONTRACT, TORT, STRICT LIABILITY OR OTHERWISE, EVEN IFSUMMIT HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

 

8.2           Limitations Period. Neither party may bring any actionunder this Agreement for any cause whatsoever more that two (2) years after theoccurrence giving rise to such cause of action, regardless of the date ofdiscovery thereof, provided however, that this Section 8.2 shall not apply toany action brought by Summit for violations of Section 3

 

 

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or Section 4 above and actions brought bySummit to protect its intellectual property rights.

 

9              DEFAULT AND TERMINATION

 

9.1           Default.  Summitmay, by written notice to Licensee, terminate this Agreement, including thelicenses granted hereunder, if any of the following events occur: (a) thefailure of Licensee  to pay Summit infull any fee or charge due to Summit if payment is not rendered within ten (10)days after Licensee receives written notice that payment is overdue; (b) anybreach of any material term or obligation of this Agreement if not remediedwithin thirty (30) days after Licensee receives written notice of such breach;(c) any material breach of Section 3 (License Grant) or Section 4 (Protectionof Proprietary Information) effective immediately upon written notice fromSummit; or (d) the insolvency of Licensee

 

9.2           Termination. Licensee’s right to use the Licensed Product shall cease upontermination without further action. Within seven (7) days of termination. Licensee shall return to Summit the Licensed Product, including theoriginal and all copies of all, Documentation and Software, together with acertification by a duly authorized representative of Licensee that all copiesof the Software not returned have been destroyed.

 

9.3           No Waiver; Remedies Cumulative.  Termination shall be in addition to, and nota waiver of, any remedy available to Summit at law, equity or under thisAgreement.  All remedies hereunder andunder applicable law shall be cumulative.

 

9.4           Survival. Notwithstanding the foregoing, the provisions of Sections 2.1 (“Payment”),4 (“Protection of Proprietary Information”), 6 (“Limited Warranty andDisclaimer”) and 8 (“Limitation of Liability”) shall survive termination.

 

10            GENERAL

 

10.1         Other Agreements. This Agreement supersedes all prior oral and written agreements andunderstandings between the parties related to the subject matter hereof, andconstitutes the complete and exclusive statement of such agreement.  All orders for Licensed Product issued byLicensee while this Agreement is in effect shall be governed by the terms andconditions of this Agreement exclusively, and the terms and conditionscontained in any purchase order issued by Licensee shall be of no force oreffect, even if the order is accepted by Summit.

 

10.2         Headings.  Headings inthis Agreement are for convenience only, and shall be disregarded wheninterpreting the terms hereof

 

10.3         Export Controls.  Inthe event Licensee exports the Licensed Product from the Territory, Licenseeassumes the responsibility for compliance with all applicable export andre-export regulations, as the case may be.

 

10.4         Assignment.  Neitherthis Agreement nor any of Licensee’s rights or obligations under this Agreementshall be assigned or transferred by Licensee without Summit’s prior writtenconsent and any attempted assignment or transfer without such consent shall bevoid.  Licensee agrees that thisAgreement binds Licensee and each of its employees, agents and personsassociated with it, including Licensee’s affiliated and subsidiary firms,corporations and other organizations. Summit may assign this Agreement and its rights and obligationshereunder without Licensee’s consent.

 

10.5         Force Majeure. Neither party shall be liable for any failure or delay in performingservices or any other obligation under this Agreement (other than paymentobligations), nor for any damages suffered by reason of such failure or delay,which is, indirectly or directly, caused by strike, riot, natural catastropheor other acts of God, or any other cause beyond either party’s reasonablecontrol.

 

10.6         No Waiver.  If eitherparty fails to perform any of its obligations hereunder and the other partyfails to enforce the provisions relating thereto, such party’s failure toenforce this Agreement shall not prevent its later enforcement.

 

10.7         Severability.  If anyprovision of this Agreement is determined by a court to be, or becomes,invalid, unenforceable or illegal, such provision shall be (a) modified to bemade valid, enforceable and legal in such a manner as to best effectuate theintent of the parties on the date hereof or (b) deemed eliminated where suchmodification is not predictable.  Theremainder of this Agreement shall remain in effect in accordance with its termsas modified by such modification or deletion.

 

10.8         Notices.  All noticesand correspondence under this Agreement shall be in writing and shall bedelivered by personal service, confirmed facsimile, express courier, orcertified mail, return receipt

 

 

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requested. If to Summit, Licensee shall deliver notice to the last address to whichLicensee sent payment for Licensed Product, Software, or support services (orto any subsequent address communicated to Licensee in writing).  If to Licensee, notice shall be delivered tothe last address to which Summit sent an invoice (or to any subsequent addresscommunicated to Summit in writing).  Allnotices shall be deemed effective upon receipt if delivered personally or sentby express courier or confirmed facsimile, and seven (7) days after mailing ifsent by certified mail.

 

10.9         Governing Law.  ThisAgreement, and all transactions hereunder, shall be governed by, and anyarbitration hereunder shall apply, the laws of the Commonwealth ofMassachusetts, excluding (a) its rules regarding conflict of laws; (b) theUnited Nations Convention on Contracts for the International Sale of Goods; (c)the 1974 Convention on the Limitation Period in the International Sale ofGoods; and (d) the Protocol amending the 1974 Convention, done at Vienna April11, 1980.

 

10.10       Attorney Fees and Costs. If any legal action is brought in connection with this Agreement, theprevailing party shall be entitled to receive its reasonable attorney fees andcosts in addition to any other relief it may receive.

 

10.11       Modifications.  Nomodifications of this Agreement shall be binding upon either party unless madein writing and signed and delivered by an authorized representative of Summitand Licensee.

 

10.12       Government Use.  IfLicensee is a U.S. Government entity, the Software and the Documentation are “commercialcomputer software” or “commercial computer software documentation.”  Absent a written agreement to the contrary,the Government’s rights with respect to such Software or Documentation arelimited by the terms of this Agreement, pursuant to FAR  12.212(a) and/or DFARS ’ 227.7202-1(a), asapplicable.

 

10.13       Dispute Resolution.  Alldisputes arising out of, or relating to, this Agreement shall be finallyresolved by arbitration conducted in the English language in Boston,Massachusetts, U.S.A., under the arbitration rules of the American ArbitrationAssociation if Licensee is located in North America or under the commercialarbitration rules of the United Nations Commission on International Trade Law ifthe Licensee is located outside of North America.  Three arbitrators shall be appointed by thePresident of the American Arbitration Association.  Both parties shall bear equally the cost ofthe arbitration (exclusive of legal fees and costs, all of which shall be allocatedin accordance with Section 10.10 above.) All decisions of the arbitrators(s) shall be final and binding on bothparties and enforceable in any court of competent jurisdiction.  Notwithstanding this, application may be madeto any court for a judicial acceptance of the award or order of enforcement.  Notwithstanding anything contained in theSection to the contrary, each party shall have the right to institute judicialproceedings against the other party or anyone acting by, through or under suchother party, in order to enforce the instituting party’s rights hereunderthrough reformation of contract, specific performance, injunction, or similarequitable relief.

 

10.14       Third Party Beneficiary Rights.  Licensee acknowledges that portions of theSoftware and related Documentation are licensed to Licensor by third partiesfor inclusion in the Products(s) and that such third parties are intended thirdparty beneficiaries of the provisions of this Agreement.

 

 

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