exv10w6



 



Exhibit 10.6


DEAL LICENSE AGREEMENT



     This Deal License Agreement (this “Agreement”) is made and entered into as
of this 13th day of January, 2004, by and between: Aether Systems, Inc., a
Delaware corporation (“Licensor”); and TSYS Acquisition Corporation, a Maryland
corporation, and TeleCommunication Systems, Inc., a Maryland corporation
(collectively, “Licensee”). Licensor and Licensee may be referred to in this
Agreement individually as a “Party” or collectively as the “Parties”.


     WHEREAS, Licensor and Licensee are parties to that certain Purchase
Agreement dated December 18 2003 (the “Purchase Agreement”); and,


     WHEREAS, as a condition to the Closing of the Purchase Agreement, Licensor
has agreed to grant Licensee a license to certain intellectual property used in
the Business as set forth herein.


     NOW, THEREFORE, in consideration of the mutual covenants and promises
herein provided and other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the Parties agree as follows:



	1.	 	Definitions. All capitalized terms used in this Agreement but not
otherwise defined herein shall have the same meanings as set forth in the
Purchase Agreement.




	 	1.1.	 	Effective Date. “Effective Date” shall mean the date first
written above.
	 
	 	1.2.	 	IP. “IP” means all inventions, discoveries, concepts, ideas,
improvements, combinations, extensions, computer software (source
code and object code), methods, processes, machines, manufactures,
compositions of matter, algorithms, original works of authorship,
mask works, designs, prototypes, trade secrets, and all related
know-how, whether or not protectable under the patent, copyright,
and/or trade secret laws. IP shall not include any rights in
trademarks, service marks or trade names or any goodwill associated
therewith.
	 
	 	1.3.	 	Residual Seller IP. “Residual Seller IP” means any and all
IP, other than the Intellectual Property, necessary for the conduct
of the Business as presently conducted, and owned by, or licensed
to, Licensor or an Affiliate of Licensor as of the Effective Date;
provided, however, that Residual Seller IP includes IP licensed to
Aether or an Affiliate of Aether by a third party only to the extent
such IP is (i) set forth on Exhibit A and (ii) Aether or such
Affiliate of Aether has the rights to grant the licenses granted in
this Agreement without any further obligations (including any
payment obligations) to the licensor of such IP and would be limited
to the terms and conditions of such third-party agreement. For the
avoidance of doubt, Residual Seller IP shall include rights in
Licensor’s “ASOP” product.
	 
	 	1.4.	 	Licensed-Back IP. “Licensed-Back IP” means any Intellectual
Property described in Exhibit B.




	2.	 	License Grant.




	 	2.1.	 	Grant. During the term of this Agreement, Licensor hereby
grants to Licensee, subject to the terms and conditions of this
Agreement, a non-exclusive, worldwide, irrevocable, perpetual,
royalty-free right and license to make, have made, use, offer for
sale, sell,



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	 	 	 	import, display, perform, prepare derivative works, distribute,
transmit or otherwise exploit the Residual Seller IP in connection
with the operation of the Business.
	 
	 	2.2.	 	Trade Secret Restriction. Notwithstanding the license
granted pursuant to Section 2.1, Licensee shall not disclose any
trade secrets included in the Residual Seller IP to any third party
and shall use its best efforts to maintain the confidentiality of
any trade secrets of Licensor contained in any Residual Seller IP.
	 
	 	2.3.	 	Sublicense Restriction. Licensee may sublicense the rights
granted pursuant to Section 2.1 (including to its Affiliates)
without Licensor’s written consent; provided, however, that Licensee
may not sublicense any Residual Seller IP set forth on Exhibit A
without Licensor’s prior written consent, which may be withheld in
Licensor’s sole discretion and subject to the terms and conditions
of any third-party license related to such Residual IP.




	3.	 	Licensed-Back IP. During the term of this Agreement, Licensee hereby
grants to Licensor, subject to the terms and conditions of this Agreement,
a non-exclusive, worldwide, irrevocable, perpetual, royalty-free license
(including the right to grant sublicenses which may include further
sublicense) to make, have made, use, offer for sale, sell, import,
display, perform, prepare derivative works, distribute, transmit or
otherwise exploit the Licensed-Back IP in the conduct of Licensor’s
business.
	 
	4.	 	Compliance with Laws. Both Parties shall comply with all Applicable
Laws, including any export control laws of the United States, in
connection with the exercise of any rights granted pursuant to this
Agreement.
	 
	5.	 	Ownership. Licensee acknowledges that, as between the Parties, all
Residual Seller IP is the property of Licensor, and Licensee agrees not to
challenge or contest the validity or Licensor’s ownership or other rights
in or to the Residual Seller IP (or any other rights that Licensor may
have in the Residual Seller IP) anywhere in the world. Nothing in this
Agreement or the performance hereof shall operate to grant Licensee or
otherwise vest in Licensee any right, title, or interest in or to any of
the Residual Seller IP other than the licenses granted pursuant to Section
2. To the extent any such right, title or interest does, by operation of
law, become vested in Licensee, Licensee agrees to and hereby does
transfer any such right, title and interest to Licensor.
	 
	6.	 	Infringements.




	 	6.1.	 	Notice. Each Party shall as soon as it becomes aware thereof
give the other Party in writing full particulars of any infringement
of such Party’s rights in the Residual Seller IP or Licensed-Back
IP, as applicable. If a Party becomes aware that any other person
or entity alleges that any of the Residual Seller IP or
Licensed-Back IP, as applicable, is invalid or that use thereof
infringes any rights of any other person or entity, such Party shall
immediately give the other Party full particulars in writing thereof
and shall make no comment or admission to any third party in respect
thereof or take any actions without the other Party’s prior written
consent.
	 
	 	6.2.	 	Proceedings.
	 




	 	6.2.1.     As between the Parties, Licensor shall have the sole right,
but not the obligation, to control and conduct all proceedings
relating to the Residual Seller IP and shall in its sole
discretion decide what action, if any, to take in respect of
any infringement or alleged infringement of the Residual Seller
IP or any other claim or counterclaim brought or threatened in
respect of the use or registration of the Residual Seller IP,




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	 	except to the extent otherwise required pursuant to the Purchase
Agreement. Licensee shall not be entitled to bring any action for
infringement nor require Licensor to bring any such action and
Licensor shall not be obliged to bring or defend any proceedings in
relation to the Residual Seller IP if it decides in its sole
discretion not to do so.

	 
	 	6.2.2.     As between the Parties, Licensee shall have the sole right,
but not the obligations, to control and conduct all proceedings
relating to the Licensed-Back IP and shall in its sole
discretion decide what action, if any, to take in respect of
any infringement or alleged infringement of the Licensed-Back
IP or any other claim or counterclaim brought or threatened in
respect of the use or registration of the Licensed-Back IP.
Licensor shall not be entitled to bring any action for
infringement nor require Licensee to bring any such action and
Licensee shall not be obliged to bring or defend any
proceedings in relation to the Licensed-Back IP if it decides
in its sole discretion not to do so.

	 



	 	6.3.	 	Cooperation. The non-acting Party shall, at the request of
the acting Party and at the acting Party’s expense, give full
co-operation to the acting Party in any action, claim or proceedings
brought or threatened in respect of the Residual Seller IP or
Licensed-Back IP, as applicable.




	7.	 	Term and Termination.




	 	7.1.	 	Term. This Agreement shall commence on the Effective Date
and shall continue thereafter in full force and effect in
perpetuity. This Agreement may not be terminated for any reason by
either Party.
	 
	 	7.2.	 	No Termination for Breach. In the event of a breach of this
Agreement by a Party, such Party shall have thirty (30) days
following notice thereof by the other Party to remedy such breach.
After such period, the non-breaching Party shall be entitled to
pursue all other legal and equitable remedies, including injunctive
relief or damages. In addition, each Party acknowledges that any
breach of this Agreement is likely to cause irreparable harm to the
other Party, and that such other Party shall therefore be entitled
to obtain injunctive or other equitable relief without the posting
of any bond.




	8.	 	Warranties; Indemnification.




	 	8.1.1.	 	Mutual Warranties. Each Party represents, warrants and covenants
to the other Party as follows: it has the full and unencumbered
right, power and authority to enter into this Agreement, to grant
the license rights granted hereunder, and otherwise to carry out its
obligations thereunder; and it has not licensed or granted to any
third party, and will not license or grant to any third party during
the term of this Agreement, any rights in or to the Residual Seller
IP or the Licensed-Back IP, as applicable, that are inconsistent
with the license rights granted hereunder.
	 
	 	8.1.2.	 	Additional Licensor Warranties. Licensor represents and warrants
to Licensee that there are no Claims as of the Effective Date which
could impact upon Licensor’s right, power and authority to enter
into this Agreement, to grant the license rights granted by Licensor
to Licensee hereunder, or to otherwise carry out its obligations
hereunder.




	 	8.2.	 	Mutual Indemnification. Each Party shall be liable for and
indemnify and hold harmless the other Party and its Affiliates
(together with each of their officers, directors, employees and
agents) against any and all liability, loss, damages, costs
(including legal



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	 	 	costs and professional costs) and expenses incurred or suffered by
the same, arising out of or related to any dispute, claim, suit,
proceeding or any other action brought by a third party against
such other Party (or any other indemnitee) by reason of such
Party’s use of the Residual Seller IP or Licensed-Back IP, as
applicable, or breach of any warranty or covenant herein.

	 
	9.	 	LIMITATION OF LIABILITY. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO FOR
INDIRECT, INCIDENTAL, CONSEQUENTIAL, SPECIAL OR EXEMPLARY DAMAGES (EVEN IF
IT HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES) ARISING FROM ANY
PROVISION OF THIS AGREEMENT OR THE PERFORMANCE THEREOF (INCLUDING DAMAGES
INCURRED BY THIRD PARTIES) INCLUDING LOSS OF PROFITS, CONTRACTS, BUSINESS,
REPUTATION OR GOODWILL.
	 
	10.	 	Miscellaneous.




	 	10.1.	 	Further Assurances. From time to time, at each Party’s
request, the other Party shall execute and deliver such further
instruments of conveyance, transfer and assignment and take such
other actions as such Party may reasonably request to effect the
purposes of this Agreement, including Section 5 hereof.
	 
	 	10.2.	 	Notices. All notices or other communications required or
permitted to be delivered hereunder shall be in writing and shall be
delivered by hand or sent by prepaid telex or telecopy, or sent,
postage prepaid, by registered, certified or express mail, or
reputable overnight courier service and shall be deemed delivered
when so delivered by hand, telexed or telecopied with acknowledged
receipt, or if mailed, five (5) calendar days after mailing (one (1)
Business Day in the case of express mail or overnight courier
service), as follows:




If to Licensee:



	 	 	 	TSYS Acquisition Corp.

275 West Street

Suite 400

Annapolis, MD 21401

Telephone: (410) 263-7617

Facsimile: (410) 263-7616

Attention: Thomas M. Brandt, Jr.





with a copy to:




	 	 	 	Piper Rudnick LLP

6225 Smith Avenue

Baltimore, Maryland 21209

Attn: Wilbert H. Sirota, Esq.

Telephone: (410) 580-4264

Facsimile: (410) 580-3001




If to Licensor:




	 	 	 	Aether Systems, Inc.

11460 Cronridge Dr.

Owings Mills, Maryland 21117

Attn: David Oros

Telephone: (410) 654-6400

Facsimile: (410) 654-6554



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with a copy to:




	 	 	 	Kirkland & Ellis LLP

655 15th Street, N.W., Suite 1200

Washington, D.C. 20005

Attn: Mark D. Director, Esq.

Telephone: (202) 879-5000

Facsimile: (202) 879-5200



or such other address or facsimile number as such Party may hereafter specify
in writing for the purpose by notice to the other Parties hereto.



	 	10.3.	 	Governing Law; Submission to Jurisdiction. This Agreement
shall be deemed to be made in and in all respects shall be
interpreted, construed and governed by and in accordance with the
law of the State of Maryland without regard to the conflict of law
principles thereof. Courts within the State of Maryland will have
jurisdiction over all disputes between the parties hereto arising
out of or relating to this Agreement and the transactions
contemplated hereby. The Parties hereby consent to and agree to
submit to the jurisdiction of such courts. Each of the Parties
hereto waives, and agrees not to assert in any such dispute, to the
fullest extent permitted by Applicable Law, any Claim that (i) such
Party is not personally subject to the jurisdiction of such courts,
(ii) such Party and such Party’s property is immune from any legal
process issued by such courts or (iii) any litigation commenced in
such courts is brought in an inconvenient forum.
	 
	 	10.4.	 	WAIVER OF JURY TRIAL. EACH OF THE PARTIES HERETO HEREBY
IRREVOCABLY WAIVES ANY AND ALL RIGHT TO TRIAL BY JURY IN ANY LEGAL
PROCEEDING ARISING OUT OF OR RELATED TO THIS AGREEMENT AND THE
ANCILLARY AGREEMENTS AND ANY AGREEMENTS, INSTRUMENTS AND DOCUMENTS
CONTEMPLATED HEREBY OR THEREBY AND THE TRANSACTIONS CONTEMPLATED
HEREBY AND THEREBY.
	 
	 	10.5.	 	Entire Agreement. This Agreement, and the attached
Exhibits, constitute the entire agreement and understanding of the
parties in respect to the transactions contemplated hereby and
thereby and supersede all prior agreements, arrangements and
undertakings, whether written or oral, relating to the subject
matter hereof.
	 
	 	10.6.	 	Assignment. This Agreement and any rights and obligations
hereunder shall be freely assignable and transferable by each Party.
	 
	 	10.7.	 	Amendment and Waiver. This Agreement may be amended,
modified, superseded or canceled, and any of the terms, covenants,
representations, warranties or conditions hereof may be waived, only
by a written instrument executed by the Parties hereto, or, in the
case of a waiver, by or on behalf of the Party waiving compliance
unless otherwise contemplated by this Agreement. The failure of any
Party at any time or times to require performance of any provision
hereof shall in no manner affect the right at a later time to
enforce the same. No waiver by any Party of any condition, or of any
breach of any term, covenant, representation or warranty contained
in this Agreement, in any one or more instances, shall be deemed to
be or construed as a further or continuing waiver of any such
condition or breach or a waiver of any other condition or of any
breach of any other term, covenant, representation or warranty.



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	 	10.8.	 	Headings; Construction. The section and paragraph headings
contained in this Agreement are for reference purposes only, and
shall not in any way affect the meaning or interpretation of this
Agreement. For the purposes of this Agreement, the terms “include”
and “including” shall be deemed to be followed by the phrase
“without limitation”.
	 
	 	10.9.	 	Counterparts. This Agreement may be executed in one or more
counterparts (including by means of telecopied signature pages), all
of which shall be considered one and the same agreement, and shall
become effective when one or more such counterparts have been signed
by each of the Parties and delivered to the other Parties.
	 
	 	10.10	 	Severability. Whenever possible, each provision of this Agreement
shall be interpreted in such manner as to be valid and effective
under Applicable Laws, but if any provision of this Agreement or the
application of any such provision to any Person or circumstance
shall be held invalid, illegal or unenforceable in any respect by a
court of competent jurisdiction, such invalidity, illegality or
unenforceability shall not affect any other provision hereof.
	 
	 	10.11.	 	No Third Party Beneficiaries. Except as provided with respect to
indemnification as set forth in Section 8 and except as otherwise
expressly stated in this Agreement, nothing in this Agreement shall
confer any rights upon any Person other than the Parties hereto and
their respective heirs, successors and permitted assigns.



(signatures appear on following page)



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     IN WITNESS WHEREOF, the undersigned have duly executed this Agreement on
the date first written above.



	 	 	 	 	 	 
	 	 	AETHER SYSTEMS, INC.
	 	 	 	 	 	 
	 	 	
By:	 	/s/ David S. Oros
	 	 	 	 	

	 	 	 	 	Name:  	David S. Oros
	 	 	 	 	Title:	Chief Executive Officer
	 	 	 	 	 	 
	 	 	TSYS ACQUISITION CORP.
	 	 	 	 	 	 
	 	 	
By:	 	/s/ Thomas M. Brandt, Jr.
	 	 	 	 	

	 	 	 	 	Name:  	Thomas M. Brandt, Jr.
	 	 	 	 	Title:	Senior Vice President and Chief Financial
Officer



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Exhibit A



Third-Party IP within Residual Seller IP


None.



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Exhibit B



Licensed-Back IP


All IP owned by Licensee and related to the AIM product.



All IP owned by Licensee and related to the ASOP product.




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