Exhibit 10.97


 


[***].  Confidential Treatment Requested – Certain
information in this exhibit has been omitted and filed separately with the
commission.  Confidential treatment has
been requested with respect the omitted portions.


 


INFRASTRUCTURE EQUIPMENT LICENSE AGREEMENT


 


This
Infrastructure Equipment License Agreement (the “Agreement”) is entered into on
January 30, 2004 by and between QUALCOMM Incorporated, a Delaware
corporation, and UTStarcom, Inc., a Delaware corporation, with respect to the
following facts:


 


RECITALS


 


WHEREAS, QUALCOMM
has developed certain proprietary Code Division Multiple Access technology that
may be useful in providing greater capacity and improved quality and
reliability compared to other Wireless telecommunications technologies;


 


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


 


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


 


AGREEMENT


 


NOW THEREFORE, the
Parties hereby agree as follows:


 


1.                                       HEADINGS AND DEFINITIONS.


 


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


 


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


 

















 


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


 


“BSC” means the
base station controller, which contains the controlling elements and resources
that provide a channel between the BTS(s) and the System Switch.  The BSC or any of the elements contained
within the definition of the BSC may be a part of or integrated into the System
Switch.


 


“BTS” means the
base station transceiver subsystem, which is wireless access equipment that
provides for network receive and/or transmit functionality to and/or from
Subscriber Units as a part of a cell site for Wireless Applications.  The BTS is the link between the Subscriber
Units and the BSC.  Included in the BTS
are the antennas, transmitters, receivers, power amplifiers and interface
hardware to support the link to the BSC.


 


“CDMA” means code
division multiple access technology.


 


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


 


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


 


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


 


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


 


2

















 


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


 


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


 


“Common Air
Interface” or “CAI” means (i) the TIA’s IS-95 digital cellular standard and
other CDMA standards which specify the same Physical Layer as IS-95 if approved
by QUALCOMM and adopted by other international standards bodies throughout the
world, and (ii) the technical description of any third generation CDMA air
interface standard for communication between cell site or other base station
transceivers and Subscriber Units which (a) is adopted as an industry standard
by the Telecommunications Industry Association (“TIA”), the European
Telecommunication Standards Institute (“ETSI”), Japan’s Association of Radio
Industries and Businesses (“ARIB”) or other recognized international standards
bodies, (b) has been approved by QUALCOMM 
(i.e. QUALCOMM voted in favor of adopting such standard), (c) supports
operation with both GSM MAP and ANSI-41 networks in all operational (whether
optional or not) modes or configurations, and (d) includes a multi-carrier, FDD
CDMA mode of operation and/or a direct sequence, FDD CDMA mode of operation.


 


“Components” means
application specific integrated circuits (ASICs), electronic devices,
integrated circuits, multi-chip modules, including firmware thereon and
accompanying or associated software, and/or families of devices for use in
products for wireless telecommunication equipment, including, but not limited
to, Licensed Products and Subscriber Units.


 


“Costs” as such
term is used [***] shall include all actual labor, material and other direct
costs, expenses and associated burdens, including overheads and general and
administrative expenses, a reasonable amortization of associated research and
development expenses, and warranty costs, all as consistently applied in
accordance with U.S. generally accepted accounting principles (GAAP).


 


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


 


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


 


3

















 


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


 


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


 


“Future
Commercially Necessary IPR” means all claims of any patents (foreign and
domestic) which fall within the definition of Commercially Necessary IPR, but
which do not fall within the definition of Included Commercially Necessary IPR.


 


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


 


(i)                                     LICENSEE
owns and supplies the designs, or specifications, or working drawings to such
third party;


 


(ii)                                  such
designs, specifications, and working drawings are in sufficient detail that no
substantial additional design by such third party is required;


 


(iii)                               such third party is not
allowed to sell such Licensed Product to other third parties; and


 


(iv)                              each
such Licensed Product sold by LICENSEE shall bear the trademarks, trade names,
or other commercial indicia of LICENSEE, although such Licensed Products may be
co-branded with the trademarks, trade names, or other commercial indicia of the
reseller or distributor of such Licensed Products.  The requirements of this subparagraph (iv) shall not apply where
a customer requires that the Licensed Product bear only such customer’s
trademarks, trade names, or other commercial indicia.


 


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


 


4

















 


“Intellectual
Property Rights” means patents, copyrights, trade secrets, know-how and other
intellectual property rights.


 


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


 


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


 


“InterDigital’s
Five Patents” means [***].


 


“InterDigital’s
Included Patents” means [***].


 


“InterDigital’s
Patents” means [***].


 


“IS-95 Related
Systems” means IS-95 and any single carrier system with a spreading bandwidth
not greater than 1.25 MHz and based on or derived from IS-95.


 


“Licensed
Products” means only BSCs, BTSs, System Switches, Channel Units, and CDMA
Enabling Infrastructure Equipment.


 


“LICENSEE” means
UTStarcom, Inc., a Delaware corporation.


 


“LICENSEE’s
Intellectual Property” means LICENSEE’s and its Affiliates’ Technically
Necessary IPR and LICENSEE’s and its Affiliates’ Included Commercially
Necessary IPR.


 


“Masks” and “Mask
Sets” mean the mask sets for Components and/or the computer output data used to
generate the mask sets for Components.


 


“Net Selling
Price”, with respect to each Licensed Product Sold by LICENSEE, shall mean one
of the following, whichever is applicable:


 


(a)                                  When
Sold by LICENSEE to a Purchaser (a “Purchaser” being a person or entity that
does not control LICENSEE, is not controlled by LICENSEE or is not in common
control with LICENSEE; and the term “control” for the above purposes shall mean
the direct or indirect ownership or control of more than a [***]), the Net
Selling Price shall be [***]; or


 


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


 


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


 


“Party” shall
individually mean QUALCOMM or LICENSEE and the term “Parties” shall
collectively mean QUALCOMM and LICENSEE.


 


“Philips” shall
mean Philips Electronics N.V., a company existing under the laws of the
Netherlands.


 


“Philips’ CDMA
Technically Necessary Patents” means [***].


 


5

















 


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


 


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


 


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


 


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


 


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


 


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


 


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


 


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


 


“Technically
Necessary IPR” means all claims of any patents (foreign and domestic) issued
on, before or after the Effective Date which (i) the Party or its Affiliates
has the right to license to the other Party without payment of royalties or any
other consideration to any third party and (ii) is essential to the
manufacture, use or sale of a usable Licensed Product and/or Component which
complies with the specifications of the CAI (i.e., must be infringed upon in
order to comply with the CAI); but the term Technically Necessary IPR does not
include any trade name, trademark, service mark, or similar symbols,
abbreviation, contractions or simulations identifying the Party and its
Affiliates (except as set forth in Section 8, if the Party is QUALCOMM).


 


“Wireless” and
“Wireless Applications” means terrestrial-based, land mobile, wireless
telecommunications applications, including but not limited to cellular, personal
communications


 


6

















 


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


 


2.                                       TERM OF AGREEMENT.


 


This Agreement
shall commence upon the Effective Date and, unless otherwise terminated or
canceled as provided herein, shall continue in full force and effect
thereafter.


 


3.                                       UP-FRONT LICENSE FEE TO QUALCOMM.


 


In partial
consideration of the rights granted to LICENSEE under this Agreement, LICENSEE
shall pay [***].


 


4.                                       TECHNICAL ASSISTANCE.


 


4.1                                 Technical Meetings
and Assistance.  Upon written
request from LICENSEE with reasonable advance written notice, QUALCOMM shall
provide reasonable amounts of technical assistance to LICENSEE on an as
available basis and at QUALCOMM’s then standard rates for providing such
technical assistance.  In such event,
QUALCOMM shall be permitted to invoice LICENSEE for such charges on a bi-weekly
basis.  Payment by LICENSEE with respect
to such invoices shall be on a [***] basis after the date of the invoice.  QUALCOMM may terminate such additional
technical assistance at any time upon written notice to LICENSEE.  This Agreement shall not require QUALCOMM to
provide any technical assistance relating to the design of Components or any
technical assistance not related to Licensed Products.


 


4.2                                 Limitation on Deliverables.  Nothing in this Agreement shall require the
delivery of any documentation or product designs, including but not limited
to:  (a) any Mask Sets developed by
QUALCOMM, (b) any micro-code for embedded processors, (c) any of the detailed
algorithms for any Components, or (d) the source code of the real-time DSP
implementation of the vocoder.


 


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


 


7

















 


5.                                       QUALCOMM LICENSE.


 


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


 


5.1.1                        InterDigital’s Patents.  The license granted by QUALCOMM under
Section 5.1 with respect to InterDigital’s Patents is subject to all other
limitations set forth in this Agreement that are applicable to all of
QUALCOMM’s Intellectual Property licensed hereunder and is also subject to the
following limitations:


 


[***]


 


5.2                                 Royalties.  In partial consideration of the rights
granted to LICENSEE under this Agreement, LICENSEE shall pay to QUALCOMM, no
later than [***] days after the end of each calendar quarter, an amount equal
to [***].


 


QUALCOMM will
credit to LICENSEE the amount of any overpayment of royalties made hereunder in
error provided that such overpayment is identified and fully explained in a
written notice from LICENSEE to QUALCOMM delivered no later than [***] after
the due date of the payment which included such alleged overpayment, provided
further that QUALCOMM is able to verify to its own satisfaction the existence
and extent of such overpayment.  The
foregoing procedure shall constitute the sole basis for LICENSEE to claim
overpayments under this Agreement and shall not be affected by any statement
appearing on any check, royalty report, cover letter, or other document, except
to the extent agreed upon by QUALCOMM in a writing signed by an authorized
representative of QUALCOMM.


 


5.3                                 Right To Sublicense
Affiliates.  LICENSEE shall have the
right to grant sublicenses only to Affiliates of LICENSEE with respect to any
rights conferred upon LICENSEE under this Agreement; provided, however, that
(i) LICENSEE shall not have the right to grant sublicenses to [***] without
first obtaining QUALCOMM’s written approval, which approval shall be at
QUALCOMM’s sole discretion, and (ii) any such sublicense shall be subject in
all respects to the restrictions, exceptions, royalty and other payment
obligations, reports, termination provisions, and other provisions contained in
this Agreement.  LICENSEE shall also pay
or cause its sublicensed Affiliates to pay the same royalties on all Licensed
Products Sold by its sublicensed Affiliates as if LICENSEE had Sold such
Licensed Products.  LICENSEE shall
report to QUALCOMM the [***] for all Licensed Products Sold by each such Affiliate.  LICENSEE shall be responsible and liable to
QUALCOMM in the event that any of


 


8

















 


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


 


5.4                                 [***].


 


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


 


5.6                                 Conversion to U.S. Dollars.  Royalties shall be paid in US. dollars.  To the extent that the [***] for Licensed
Products Sold by LICENSEE outside of the United States is paid to LICENSEE
other than in US. dollars, LICENSEE shall convert the portion of the royalty
payable to QUALCOMM from such [***] into U.S. dollars at the official rate of
exchange of the currency of the country from which the [***] was paid, as
quoted by the U.S. Wall Street Journal (or the Chase Manhattan Bank or another
agreed-upon source if not quoted in the Wall Street Journal) for the last
business day of the calendar quarter in which such Licensed Products were
Sold.  If the transfer of or the
conversion into U.S. dollars is not lawful or possible, the payment of such
part of the royalties as is necessary shall be made by the deposit thereof, in
the currency of the country where the sale was made on which the royalty was
based to the credit and account of QUALCOMM or its nominee in any commercial
bank or trust company of QUALCOMM’s choice located in that country, prompt
notice of which shall be given by LICENSEE to QUALCOMM.


 


5.7                                 [***].


 


5.8                                 Ericsson Patents.


 


5.8.1                        Ericsson Patents [***].


 


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


 


5.8.3                        [***]


 


6.                                       LICENSE BY LICENSEE.


 


6.1                                 Grant of License
from LICENSEE.  Subject to the terms
and conditions of this Agreement, LICENSEE hereby grants to (a) QUALCOMM a
worldwide, personal, nontransferable, non-exclusive, fully-paid, irrevocable
and royalty free license (without the right to sublicense, except to Affiliates
of QUALCOMM as permitted in Section 6.2) to use LICENSEE’s Intellectual
Property to make (and have made) and import, use, sell, lease or otherwise
dispose of Licensed Products, and (b) QUALCOMM and a Successor (as defined
below) a worldwide, personal, nontransferable, non-exclusive, fully-paid,
irrevocable and royalty free license (without the right to sublicense, except
to Affiliates of QUALCOMM and Affiliates


 


9

















 


of a Successor as permitted in Section 6.2) to use LICENSEE’s
Intellectual Property to make (and have made), import, use, sell, lease or
otherwise dispose of Components.  No
other, further or different license is hereby granted or implied.  A “Successor” means any successor (by
purchase, divestiture, merger or otherwise) to all or substantially all of
QUALCOMM’s Components business.


 


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


 


6.3                                 License Of Future
Commercially Necessary IPR.  Each
Party agrees that, to the extent it makes licenses of Future Commercially
Necessary IP generally available to third parties, it will, if requested by the
other Party, offer such licenses to the other Party on commercially reasonable
terms and conditions.


 


7.                                       COMMITMENT BY LICENSEE.


 


7.1                                 [***].


 


7.2                                 License to Third
Parties.  LICENSEE agrees to
negotiate in good faith to promptly grant to Authorized Licensees that do not
meet the requirements of Section 7.1 a license to use all of LICENSEE’s
Technically Necessary IPR to make, use and sell Licensed Products and
Components for Wireless Applications. 
Each such license shall be granted at reasonable rates and otherwise on
reasonable terms and conditions consistent with LICENSEE’s licensing policies,
which may include that such third party grant a cross-license to LICENSEE of
Technically Necessary IPR owned by such third party (as the term Technically
Necessary IPR would be construed if such third party were a party to this
Agreement).


 


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


 


10

















 


8.                                       MARKING.


 


LICENSEE agrees to
affix to the exterior or the interior of all Licensed Products incorporating
any of QUALCOMM’S Intellectual Property a legible notice reading:  “Licensed by QUALCOMM Incorporated under one
or more of the following Patents,” followed by a list of applicable patent
numbers taken from the list of QUALCOMM patents or as may otherwise be
instructed by QUALCOMM.


 


9.                                       QUALITY CONTROL.


 


9.1                                 General Quality of
Licensed Products.  Throughout the
term of this Agreement, LICENSEE shall maintain, for the Licensed Products
manufactured or Sold by it, at least the same manufacturing, servicing and
quality standards currently utilized by LICENSEE in connection with its similar
analog and, if applicable, other digital products.


 


9.2                                 Standards
Compliance Testing.  LICENSEE
represents and warrants that the Licensed Products and Components that it makes
or has made will adhere with and conform to, in all respects, the
specifications contained in the CAI implemented by such Licensed Products and
adopted in the territory in which such Licensed Products are intended to be
used and that LICENSEE shall comply with the rules, regulations or other
requirements set by such authorized standards body.  LICENSEE shall, at QUALCOMM’s reasonable written request, permit
QUALCOMM or entities designated by QUALCOMM and accepted by LICENSEE, which
acceptance shall not be unreasonably withheld or delayed, to perform tests of
LICENSEE’s Licensed Products to ensure compliance and conformity with the
applicable CAI.  If such tests indicate
material noncompliance or nonconformity therewith, such tests shall be at LICENSEE’s
cost and LICENSEE shall reimburse QUALCOMM for any such reasonable tests
performed by QUALCOMM at QUALCOMM’s Costs [***].  Nonconforming Licensed Products, if any, shall not be sold or
marketed by LICENSEE until the non-conformity is corrected.


 


10.                                 INFORMATION


 


10.1                           Restrictions on
Disclosure and Use.  All
documentation and technical and business information and intellectual property
in whatever form recorded that a Party does not wish to disclose without
restriction (“Information”) shall remain the property of the furnishing Party
and may be used by the receiving Party only as follows.  Such Information (a) shall not be reproduced
or copied, in whole or part, except for use as expressly authorized in this Agreement;
and (b) shall, together with any full or partial copies thereof, be returned or
destroyed when no longer needed or upon any termination of this Agreement, and
(c) shall be disclosed only to employees or agents of a Party with a need to
know.  Moreover, such Information shall
be used by the receiving Party only for the purpose of performing under this
Agreement or in the exercise of its rights it may receive under the provisions
of this Agreement.  Unless the
furnishing Party consents in this Agreement or otherwise in writing, such Information
shall be held in strict confidence by the receiving Party.  The receiving Party may disclose such
Information to other persons, upon the furnishing Party’s prior written
authorization, but solely to perform acts which this clause expressly authorizes
the receiving Party to perform itself and further provided such other person
agrees in writing (a copy of which writing will be provided to the furnishing
Party at its request) to the same conditions respecting use of Information
contained in this clause and to


 


11

















 


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


 


10.2                           Scope of Information.  Information is subject to this
Section 10 whether delivered orally or in tangible form, and without
regard to whether it has been identified or marked as confidential or otherwise
subject to this Section 10.  Each
Party agrees to use its best efforts to marls or otherwise identify proprietary
all Information they desire to be subject to the terms of this clause before
furnishing it to the other Party.  And,
upon request, a Party shall promptly identify whether specified information
must be held by the requesting Party subject to this clause.


 


10.3                           Furnishing Information to
Third Parties.  Nothing herein shall
be deemed to bar disclosure of Information by a receiving Party to third party
subcontractors, prospective customers or Affiliates of the receiving Party with
a need to know, without the written consent of the furnishing Party, if such
disclosure is reasonably necessary for enjoyment of the receiving Party’s
rights to use Intellectual Property Rights licensed under this Agreement, and
provided that each such third party agrees in writing to protect the
Information under terms and conditions comparable, in all material respects, to
the terms contained in this Section 10 and Section 18 with respect to
survivability.


 


11.                                 DISCLAIMER/ LIMITATION OF LIABILITY.


 


11.1                           EXCEPT AS EXPRESSLY SET
FORTH IN THIS AGREEMENT, QUALCOMM MAKES NO WARRANTIES IN THIS AGREEMENT AS TO
PRODUCTS, TECHNOLOGY, MATERIALS, SERVICES, INFORMATION OP OTHER ITEMS IT
FURNISHES TO LICENSEE, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, OR THAT
SUCH ITEMS ARE FREE FROM THE RIGHTFUL CLAIM OF ANY THIRD PARTY, BY WAY OF INFRINGEMENT
OR THE LIKE.


 


QUALCOMM SMALL NOT
BE LIABLE TO LICENSEE FOR ANY [***]. 
QUALCOMM SHALL BE PERMITTED TO ENJOIN THE UNAUTHORIZED USE BY LICENSEE
OR ITS AFFILIATES OF ANY OF QUALCOMM’S INFORMATION.


 


12

















 


11.2                           Negation of
Representation and Warranties. 
Nothing contained in this Agreement shall be construed as (a) requiring
the filing of any patent application, the securing of any patent or the
maintaining of any patent in force; (b) a warranty or representation by either
Party as to the validity or scope of any patent, copyright or other
intellectual property right; (c) a warranty or representation that any
manufacture, sale, lease, use or importation will be free from infringement of
patents, copyrights or other intellectual property rights of others, and it
shall be the sole responsibility of LICENSEE to make such determination as is
necessary with respect to the acquisition of licenses under patents and other
intellectual property of third parties; (d) an agreement to bring or prosecute
actions or suits against third parties for infringement; (e) an obligation to
furnish any manufacturing assistance; or (f) conferring any right to use, in
advertising, publicity or otherwise, any name, trade name or trademark, or any
contraction, abbreviation or simulation thereof (other than as set forth in
Section 8).


 


12.                                 INDEMNITY FOR DAMAGE TO PERSONS, PROPERTY OR
BUSINESS


 


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


 


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


 


12.3                           Notice, Defense and
Cooperation.  The party seeking
indemnification under Section 12.1 or 12.2 above shall provide the
indemnifying party with prompt notice of any claim within such provisions,
shall give the indemnifying party the full right to defend any such claim and
shall cooperate fully in such defense.


 


13

















 


13.                                 TERMINATION


 


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


 


13.2                           Termination For Cause by
LICENSEE.  LICENSEE may terminate
this Agreement, by written notice to QUALCOMM, if QUALCOMM shall at any time
commit any material breach of any material covenant, representation, warranty
or agreement herein contained; provided, however, that in the case of any such
breach which is capable of being cured, LICENSEE shall not have a right to
terminate this Agreement for cause unless and until QUALCOMM shall have failed
to remedy any such material breach within thirty (30) days after receipt by
QUALCOMM of written notice thereof by LICENSEE.


 


13.3                           Bankruptcy, Dissolution
or Liquidation.  A Party shall
provide written notice (the “Notice”) to the other Party immediately upon the
occurrence of any of the following events (the “Events”):  (a) insolvency, bankruptcy or liquidation or
filing of any application therefor, or other commitment of an affirmative act
of insolvency; (b) attachment, execution or seizure of substantially all of the
assets or filing of any application therefor; (c) assignment or transfer of
that portion of the business to which this Agreement pertains to a trustee for
the benefit of creditors; (d) disposition, by sale or assignment of all of its
rights, of that portion of the business or the material assets to which this
Agreement pertains or of the majority of the equity or voting stock of
LICENSEE, in violation of Section 15 of this Agreement; or (e) termination
of its business or dissolution.  Either
Party shall also have the right to terminate this Agreement with immediate
effect by giving written notice of termination to the other Party at any time
upon or before the later of (i) sixty (60) days after the occurrence of any of
the Events with respect to such other Party (unless such event ceases within
such period), or (ii) sixty (60) days after receipt of the Notice (unless such
event ceases within such period).


 


13.4                           Termination in the Event
of Litigation.  The license from
QUALCOMM to LICENSEE shall terminate in the event that LICENSEE initiates any
litigation against QUALCOMM or its Affiliates that includes any claim for
intellectual property infringement and LICENSEE does not prevail on all such
intellectual property infringement claims.


 


13.5                           Rights Upon Termination.  Upon any termination of this Agreement all
licenses granted by QUALCOMM hereunder shall also terminate and LICENSEE shall
immediately cease using any of QUALCOMM’s Intellectual Property and return or
destroy all information and documentation furnished by QUALCOMM to
LICENSEE.  The licenses granted by


 


14

















 


LICENSEE hereunder shall survive the termination of this Agreement and
remain in full force and effect thereafter until all of LICENSEE’s Intellectual
Property has expired; except that, upon termination of this Agreement by
LICENSEE for cause, all licenses granted by LICENSEE hereunder shall also
terminate and QUALCOMM shall immediately cease using any of LICENSEE’s
Intellectual Property.  Any termination
or expiration of this Agreement under this Section 13 shall not relieve
LICENSEE from its obligation under Section 1.4 hereof to make a report or
from its liability for payment of royalties on Licensed Products Sold on or
prior to the date of such termination and shall not prejudice the right to
recover the full amount of the Up-Front License Fee and any royalties or other
sums due or accrued at the time of such termination and shall not prejudice any
cause of action or claim accrued or to accrue on account of any breach or
default.  Furthermore, any termination
of this Agreement under this Section shall not prejudice the right of
QUALCOMM to conduct a final audit of the records of LICENSEE in accordance with
the provisions of Section 14 hereof. 
No termination hereunder shall limit the rights of LICENSEE to sell
those Licensed Products in inventory or in process at the time of termination,
subject to payment of the royalty applicable to the sale of such Licensed
Products and continued compliance with the other provisions of this Agreement.


 


14.                                 RECORDS AND AUDITS.


 


14.1                           Records.  LICENSEE shall keep accurate and complete
books and records concerning any Licensed Products it may sell under this
Agreement.  As applicable, such books
and records shall include the date of transaction involving sales of Licensed
Products, including the number of items Sold. 
LICENSEE shall require in its agreements with sublicensees that each
sublicensee agree to record keeping and audits substantially the same as
described in this Section 14. 
LICENSEE hereby agrees to cause its sublicensees to provide to LICENSEE
the records and supporting information sufficient to evidence the accuracy of
the royalty report to be submitted to QUALCOMM.  Such records (together with all supporting information) shall be
included in the records described herein and subject to audit by QUALCOMM as
provided in this Section.  LICENSEE’s
agreements with its sublicensees shall expressly state that QUALCOMM shall be
able to enforce rights under Section 1.4.2 below directly against any such
sublicensee.  LICENSEE shall furnish
QUALCOMM within thirty (30) days after the end of each calendar quarter a
certificate, in the form attached hereto as Exhibit A, signed by a responsible
official of LICENSEE showing the transactions and corresponding amounts during
said calendar quarter and any other information as may be reasonably requested
by QUALCOMM.


 


14.2                           Audits.  QUALCOMM may, no more than once each
calendar year, conduct (itself or through its agent) an audit on reasonable
notice of LICENSEE’s applicable books and records to confirm that LICENSEE has
not underpaid royalties due to QUALCOMM in fulfilling its obligations under the
terms and conditions set forth in Section 5.2 above.  QUALCOMM’s written notice to LICENSEE of
QUALCOMM’s intention to audit LICENSEE’s books and records shall include a
proposed commencement date for such audit, such proposed commencement date to
be no earlier than thirty (30) days after the date of such notice.  LICENSEE agrees to allow the audit to
commence no later than thirty (30) days after QUALCOMM’s proposed audit
commencement date.  LICENSEE further
agrees to have assembled in a single location the necessary books and records
for such audit to be carried out and shall make available such personnel as are
reasonably necessary to interpret and explain such books and records.  The cost of such audit, other than
LICENSEE’s cost of providing its books,


 


15

















 


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


 


15.                                 ASSIGNMENT.


 


Except as provided
in this clause, LICENSEE shall not assign this Agreement or any right or
interest under this Agreement, nor delegate any work or obligation to be
performed under this Agreement (an “assignment”), without QUALCOMM’s prior
written consent, which consent shall be at QUALCOMM’s sole discretion.  Any attempted assignment in contravention of
this Section 15 shall be void and ineffective.  For purposes of this Agreement, an “assignment” by LICENSEE under
this Section shall be deemed to include, without limitation, the
following:  (a) a change in the
beneficial ownership of LICENSEE of greater than fifty percent (50%) (whether
in a single transaction or a series of related transactions) if LICENSEE is a
partnership, trust, limited liability company or other like entity; (b) the
acquisition of more than fifty percent (50%) of any class of LICENSEE’s voting
stock (or any class of non-voting security convertible into voting stock) by
another party (whether in a single transaction or series of related
transactions) resulting in an effective change of control of LICENSEE; or (c)
the sale of more than fifty percent (50%) of LICENSEE’s assets (whether in a
single transaction or series of related transactions).


 


16.                                 COMPLIANCE WITH U.S. REGULATIONS.


 


Nothing contained
in this Agreement shall require or permit LICENSEE or QUALCOMM to do any act
inconsistent with the requirements of (a) the regulations of the United States
Department of Commerce, or (b) the foreign assets controls or foreign
transactions controls regulations of the United States Treasury Department, or
(c) of any similar United States law, regulation or executive order as the same
may be in effect from time to time.  To
enable QUALCOMM to export QUALCOMM’s Intellectual Property or technical data to
LICENSEE in compliance with the requirements of the Export Administration
Regulations (EAR), LICENSEE hereby gives its assurance to QUALCOMM that
LICENSEE will not re-export or otherwise disclose, directly or indirectly, any
of QUALCOMM’s Intellectual Property or “technical data” received from QUALCOMM,
nor allow the direct product thereof to be shipped directly or indirectly to
any of the following countries, unless permitted by U.S. law in effect at the
time of such export:


 




	
  Albania

  	
   

  	
  Libya

  
	
  Afghanistan

  	
   

  	
  Lithuania

  
	
  Angola

  	
   

  	
   

  
	
  Armenia

  	
   

  	
  Macau

  
	
  Azerbaijan

  	
   

  	
  Moldova

  
	
  Belarus

  	
   

  	
  Mongolia

  
	
  Bulgaria

  	
   

  	
  North Korea

  
	
  Cambodia

  	
   

  	
  People’s Republic of China

  
	
  Cuba

  	
   

  	
  Romania

  






 


16

















 




	
  Estonia

  	
   

  	
  Russia

  
	
  Georgia

  	
   

  	
  Sudan

  
	
  Iran

  	
   

  	
  Syria

  
	
  Iraq

  	
   

  	
  Tajikistan

  
	
  Kazakhstan

  	
   

  	
  Turkmenistan

  
	
  Kyrgyzstan

  	
   

  	
  Ukraine

  
	
  Laos

  	
   

  	
  Uzbekistan

  
	
  Latvia

  	
   

  	
  Vietnam

  
	
   

  	
   

  	
   

  






LICENSEE agrees
that no products, proprietary data, know-how, software, or other information
received from QUALCOMM will be directly employed in missile technology,
sensitive nuclear, or chemical biological weapons end uses or by such end
users.  The foregoing obligations are
U.S. legal requirements, and therefore, such obligations shall survive any
termination of this Agreement.


 


17.                                 PUBLICITY.


 


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


 


18.                                 SURVIVAL OF OBLIGATIONS.


 


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


 


19.                                 SEVERABILITY.


 


If any provision
in this Agreement shall be held to be invalid or unenforceable, the remaining
portions shall remain in effect.  In the
event such invalid or unenforceable provision is considered an essential
element of this Agreement, the Parties shall promptly negotiate a replacement
provision.


 


20.                                 NON-WAIVER.


 


No waiver of the
terms and conditions of this Agreement, or the failure of either Party strictly
to enforce any such term or condition on one or more occasions shall be
construed as a waiver of the same or of any other term or condition of this
Agreement on any other occasion.


 


17

















 


21.                                 NOTICES.


 


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


 


	
  QUALCOMM Incorporated

  5775 Morehouse Drive San Diego,

  CA 92121-1714

  	
   

  	
  UTStarcom, Inc.

  1275 Harbor Bay Parkway

  Alameda, CA 94502

  
	
   

  	
   

  	
   

  
	
  Facsimile No.: (858) 658-2500

  Telephone No.: (858) 587-1121

  Attn: President

  	
   

  	
  Facsimile No.: (510) 864-8802

  Telephone No.: (510) 864-8800

  Attn: Russell Boltwood

  
	
   

  	
   

  	
   

  
	
  with a copy to:

  General Counsel

  	
   

  	
  with a copy to:

  General Counsel

  



 


The above
addresses can be changed by providing notice to the other Party in accordance
with this Section.


 


22.                                 PUBLICATION OF AGREEMENT.


 


Except as may
otherwise be required by law or as reasonably necessary for performance
hereunder, each Party shall keep this Agreement and its provisions confidential
and shall not disclose this Agreement or its provisions without first obtaining
the written consent of the other Party, which consent shall not be unreasonably
withheld.  The confidentiality
obligations hereunder do not apply to the existence of this Agreement or the
fact that QUALCOMM and LICENSEE have executed this Agreement, but do apply to
the terms and conditions of this Agreement. 
Any press release or other announcement by either Party concerning the
entering into of this Agreement shall be subject to the prior written approval
of other Party, which approval shall not be unreasonably withheld.  In case a press release or other public
announcement to the effect of the Parties’ entering into of this Agreement is
issued by either Party pursuant to the preceding sentence, (i) QUALCOMM may
thereafter make a press release or other public announcement to the effect that
LICENSEE is one of QUALCOMM’s licensees for Licensed Products without prior
written approval of LICENSEE and (ii) LICENSEE may thereafter make a press
release or other public announcement to the effect that LICENSEE is licensed by
QUALCOMM for Licensed Products without prior written approval of QUALCOMM.


 


23.                                 APPLICABLE LAW; VENUE.


 


This Agreement is
made and entered into in the State of California and shall be governed by and
construed and enforced in accordance with the laws of the State of California
without regard to conflict of laws principles. 
Any dispute, claim or controversy arising out of or relating to this
Agreement, or the breach or validity hereof, except for those disputes
expressly addressed in Section 24 hereof, shall be adjudicated only by a
court of competent jurisdiction in the county of San Diego, State of California.


 


18

















 


24.                                 DISPUTES RELATING TO FOREIGN PATENTS.


 


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


 


The Parties will
attempt in good faith to resolve promptly any Dispute by negotiations between
senior executives of the Parties who have the authority to settle the
Dispute.  If the Dispute is not
resolved, within thirty (30) days of a party’s written request for negotiation,
either party may initiate arbitration as hereinafter provided.


 


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


 


The arbitration
hearing shall commence in San Diego within 60 days of the appointment of the
arbitrator.  The Parties shall be
entitled to conduct discovery prior to the arbitration hearing in accordance
with the Federal Rules of Civil Procedure, subject to any limitations ordered
by the arbitrator.


 


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


 


19

















 


The final award of
the arbitrator shall be rendered in writing and signed by the arbitrator.  The final award shall be entered within
thirty (30) days of the commencement of the arbitration hearing.  Each Party agrees to abide by the
arbitration award, and to the enforcement of the arbitration award in the United
States.  Each Party further agrees that
judgment may be entered upon the award in any court of competent jurisdiction
in the United Skates.


 


25.                                 LATE CHARGE.


 


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


 


26.                                 ATTORNEYS’ FEES.


 


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


 


27.                                 ENTIRE AGREEMENT.


 


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


 


28.                                 INDEPENDENT CONTRACTORS.


 


The relationship
between QUALCOMM and LICENSEE is that of independent contractors.  QUALCOMM and LICENSEE are not joint
venturers, partners, principal and agent, master and servant, employer or
employee, and have no other relationship other than independent contracting
parties.


 


29.                                 U.S. DOLLARS.


 


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


 


20

















 


30.                                 FORCE MAJEURE


 


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


 


IN WITNESS
WHEREOF, the Parties hereto have caused this Agreement to be executed as of the
Effective Date.  This Agreement may be
signed in counterpart.


 


	
  QUALCOMM
  Incorporated

  	
  UTStarcom,
  Inc.

  
	
   

  	
   

  
	
  BY:

  	
   

  	
   

  	
  BY:

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  TITLE:

  	
   

  	
   

  	
  TITLE:

  	
   

  	
   

  
								



 


21

















 


Infrastructure Equipment License Agreement


 


Section 7.1 Notice


 


[***]


 

















 


Infrastructure Equipment License Agreement


 


Section 8 Notice


 


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


 


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


 




	
  4,901,307

  	
   

  	
  5,490,165

  	
   

  	
  5,056,109

  	
   

  	
  5,504,773

  	
   

  	
  5,101,501

  	
   

  	
  5,778,338

  
	
  5,506,865

  	
   

  	
  5,109,390

  	
   

  	
  5,511,073

  	
   

  	
  5,228,054

  	
   

  	
  5,535,239

  	
   

  	
  5,710,784

  
	
  5,267,261

  	
   

  	
  5,544,196

  	
   

  	
  5,267,262

  	
   

  	
  5,568,483

  	
   

  	
  5,337,338

  	
   

  	
  5,659,569

  
	
  5,600,754

  	
   

  	
  5,414,796

  	
   

  	
  5,657,420

  	
   

  	
  5,416,797”