`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, DC
`
`In the Matter of
`
`CERTAIN MOBILE ELECTRONIC
`DEVICES AND RADIO FREQUENCY
`AND PROCESSING COMPONENTS
`THEREOF (II)
`
`Investigation No. 337-TA-1093
`
`JOINT MOTION TO SUPPLEMENT THE PARTIES’ AMENDED JOINT MOTION TO
`TERMINATE THE INVESTIGATION PURSUANT TO SETTLEMENT AGREEMENT
`(MOT. NO. 1093-049C)
`
`Pursuant to 19 C.F.R. § 210.21(b), Complainant Qualcomm Inc. (“Qualcomm”) and
`
`Respondent Apple, Inc. (“Apple”) hereby submit this joint supplement to their amended joint
`
`motion to terminate this Investigation based on the Settlement and Release Agreement. The Office
`
`of Unfair Import Investigations has indicated that it will take a position on the motion to
`
`supplement the amended joint motion to terminate after it is filed.
`
`I.
`
`SUPPLEMENTAL SUBMISSION OF OTHER AGREEMENTS AND
`ACCOMPANYING PUBLIC VERSIONS
`
`An investigation may be terminated as to one or more respondents based on a licensing or
`
`other settlement agreement. 19 C.F.R. §210.21(b). If an investigation is terminated based on a
`
`settlement agreement, the Rule requires that “[t]he motion for termination by settlement shall
`
`contain copies of the licensing or other settlement agreements,” specifically, “any supplemental
`
`agreements, any documents referenced in the motion or attached agreements, and a statement that
`
`there are no other agreements, written or oral, express or implied between the parties concerning
`
`the subject matter of the investigation.” Id.
`
`Qualcomm and Apple executed a Settlement and Release Agreement in order to terminate
`
`this Investigation, as well as to resolve other pending legal disputes. Specifically, pursuant to the
`
`
`
`PUBLIC VERSION
`
`Settlement and Release Agreement (Amended Jt. Mot. Ex. 1), Qualcomm and Apple have agreed
`
`to terms settling the dispute that forms the subject matter of this Investigation. For the reasons set
`
`forth in the Amended Joint Motion to Terminate, Qualcomm and Apple also included the Global
`
`Patent License Agreement and Letter Agreement (Amended Jt. Mot. Exs. 2 and 3). Finally, there
`
`are Other Agreements1 between Qualcomm and Apple referenced in Exhibit 1 to the Amended
`
`Joint Motion to Terminate. See Amended Jt. Mot. Ex. 1 at 3, Recitals ¶ F. Redacted versions of
`
`the Settlement and Release Agreement, the Global Patent License Agreement, and Letter
`
`Agreement were attached to the Amended Joint Motion to Terminate as Exhibits 4-6, respectively,
`
`and were publicly filed. For the reasons set forth in the Amended Joint Motion to Terminate,
`
`Qualcomm and Apple provided, as Appendix A attached thereto, a summary of the Other
`
`Agreements referenced in Exhibit 1.
`
`Qualcomm and Apple submit this Joint Supplement to include the Other Agreements
`
`attached hereto as Exhibits A through D. While the parties do not view the Other Agreements as
`
`relevant to the settlement of the subject matter of this Investigation, the Parties understand that
`
`because these Other Agreements were referenced in the Settlement and Release Agreement, and
`
`for avoidance of doubt, Qualcomm and Apple are including them with this Joint Supplement. See
`
`Amended Jt. Mot. Ex. 1 at 3, Recitals ¶ F. Redacted versions of the Other Agreements are attached
`
`hereto as Exhibits E through H, respectively, and will be filed publicly. Apart from the Amended
`
`Joint Motion Exhibits 1-3 and the Other Agreements, there are no agreements, written or oral,
`
`express or implied between the Parties concerning the subject matter of the Investigation.
`
`1 The “Other Agreements” include: 2019 Software Agreement (“MSA”) attached hereto as Exhibit
`A; Second Amended and Restated Strategic Terms Agreement (“ASTA”) attached hereto as
`Exhibit B; Statement of Work for Qualcomm Chipsets (“SOW”) attached hereto as Exhibit C; and
`Assignment and Guaranty Letter Agreement (“Assignment and Guaranty”) attached hereto as
`Exhibit D.
`
`2
`
`
`
`PUBLIC VERSION
`
`The Other Agreements contain confidential business information within the meaning of 19
`
`C.F.R. § 210.5. Accordingly, Qualcomm and Apple request permission to redact information
`
`confidential to Qualcomm and/or Apple, and further request that the un-redacted version of the
`
`Other Agreements be treated as Confidential Business Information under the Protective Order in
`
`this Investigation (Order No. 1) and not publicly disclosed.
`
`The redacted information in the Other Agreements, and in agreements previously
`
`submitted, is considered “confidential business information” under Commission Rule 201.6, as it
`
`is “information which concerns or relates to the trade secrets, processes, operations, style of works,
`
`or apparatus, or to the production, sales, shipments, purchases, transfers, identification of
`
`customers, inventories, or amount or source of any income, profits, losses, or expenditures of any
`
`person, firm, partnership, corporation, or other organization, or other information of commercial
`
`value, the disclosure of which is likely to have the effect of … causing substantial harm to the
`
`competitive position of the person, firm, partnership, corporation, or other organization from
`
`which the information was obtained.” The information sought to be redacted includes:
`
`
`
`2019 Software Agreement: the agreement sets forth the terms and conditions for
`Apple’s access to certain proprietary Qualcomm software, including terms
`regarding the processes and operations for Apple’s access to this confidential and
`proprietary material. Accordingly, this agreement’s terms are heavily redacted,
`consistent with Commission Rule 201.6’s recognition that information concerning
`or relating to such trade secrets, processes, or operations is confidential business
`information. Moreover, the redacted information includes non-public information
`regarding specific Qualcomm software, processes, and operations, including
`information related to various aspects of Qualcomm software; non-public
`information regarding Apple’s current and future products, processes, and
`operations; and non-standard provisions, terms, and definitions that were heavily
`negotiated between Qualcomm and Apple and which deviate from terms
`Qualcomm and/or Apple have used in other similar agreements, the disclosure of
`which would cause harm to Qualcomm and/or Apple by adversely impacting the
`competitive position of Qualcomm and/or Apple in ongoing and future commercial
`negotiations with third parties.
`
`3
`
`
`
`PUBLIC VERSION
`
` ASTA: the redacted information includes non-public information regarding
`Qualcomm and/or Apple product development processes; Qualcomm and/or Apple
`operations, supply chain, supply constraint procedures, and product support;
`information related to product inventories and product forecasts; processes and
`operations involving Apple contract manufacturers; and non-standard provisions,
`terms, and definitions that were heavily negotiated between Qualcomm and Apple
`and which deviate from terms Qualcomm and/or Apple have used in other similar
`agreements, the disclosure of which would cause harm to Qualcomm and/or Apple
`by adversely impacting the competitive position of Qualcomm and/or Apple in
`ongoing and future commercial negotiations with third parties.
`
` SOW: the redacted information includes information related to sales forecasting;
`information on Qualcomm and/or Apple processes and operations for future
`product development; information on unreleased chipsets and product components;
`and information on pricing, sourcing, and delivery of components for future
`products.
`
` Assignment and Guaranty: the redacted information includes references to non-
`public commercial arrangements and operations, including information related to
`current and future Qualcomm and/or Apple products, information which is of
`commercial value and could harm the competitive position of Qualcomm and/or
`Apple if revealed.
`
`The treatment requested is further consistent with the public interest, which favors
`
`settlement. See Amended Joint Motion to Terminate the Investigation Based on Settlement, Mot.
`
`No. 1093-049C.
`
`II.
`
`SUPPLEMENTAL SUBMISSION OF REVISED PUBLIC VERSION OF
`GLOBAL PATENT LICENSING AGREEMENT
`
`In response to the Commission Investigative Staff’s Response to the Amended Joint
`
`Motion to Terminate, Qualcomm and Apple submit this Joint Supplement to include a revised
`
`redacted version of the Global Patent License Agreement, attached hereto as Exhibit I and will be
`
`filed publicly. See Staff Response at 5.
`
`The Global Patent License Agreement contains confidential business information within
`
`the meaning of 19 C.F.R. § 210.5. Specifically, the redacted information includes commercial
`
`terms of the license, including royalty rates, royalty calculations, and payment terms; information
`
`4
`
`
`
`PUBLIC VERSION
`
`on future products and product categories; information regarding internal Apple and Qualcomm
`
`supply, sales, and distribution processes and operations; and a number of non-standard provisions,
`
`terms, and definitions that were heavily negotiated between Qualcomm and Apple and which
`
`deviate from terms Qualcomm and/or Apple have used in other licensing agreements, the
`
`disclosure of which would cause harm to Qualcomm and/or Apple by adversely impacting the
`
`competitive position of Qualcomm and/or Apple in ongoing and future commercial negotiations
`
`and licensing agreements with third parties.
`
`Accordingly, Qualcomm and Apple request permission to redact information confidential
`
`to Qualcomm and/or Apple, and further request that the un-redacted version of the Global Patent
`
`and License Agreement be treated as Confidential Business Information under the Protective Order
`
`in this Investigation (Order No. 1) and not publicly disclosed. The treatment requested is
`
`consistent with the public interest, which favors settlement. See Amended Joint Motion to
`
`Terminate the Investigation Based on Settlement, Mot. No. 1093-049C.
`
`III.
`
`FINDINGS OF FACT AND CONCLUSIONS OF LAW IN FEDERAL
`TRADE COMMISSION V. QUALCOMM INC. DO NOT EFFECT THE
`COMMISSION’S STATUTORY OBLIGATION TO CONSIDER THE
`PUBLIC INTEREST FACTORS
`
`In response to a recommendation from the Office of General Counsel, Qualcomm and
`
`Apple would also like to address Judge Koh’s Findings of Fact and Conclusions of Law dated May
`
`21, 2019 in Federal Trade Commission v. Qualcomm Inc., Case No. 17-CV-00220-LHK (“the
`
`May 21 Order”) and the Commission’s statutory obligation to consider the effect of the settlement
`
`agreement and other referenced agreements submitted to the Commission as part of our Joint
`
`Motion to Terminate on the public health and welfare, competitive conditions in the U.S. economy,
`
`the production of like or directly competitive articles in the United States and U.S. consumers. 19
`
`C.F.R. §210.50(b)(2).
`
`5
`
`
`
`PUBLIC VERSION
`
`Qualcomm and Apple respectfully submit that any public interest issues raised by the May
`
`21 Order will be considered as part of ongoing proceedings related to that Order, and need not be
`
`relitigated by the Commission to rule on the pending motion to terminate this Investigation.
`
`Specifically, the May 21 Order requires Qualcomm to “submit, as necessary, to arbitral or judicial
`
`dispute resolution to determine [certain license] terms” (May 21 Order at 229) and “submit to
`
`compliance and monitoring procedures for a period of seven (7) years,” during which time
`
`“Qualcomm shall report to the FTC on an annual basis Qualcomm’s compliance with [certain
`
`court-ordered] remedies” (Id. at 232-33).
`
`Qualcomm and Apple respectfully submit that the Commission should defer to these
`
`ongoing proceedings with respect to the public interest factors in 19 CFR §210.50(b)(2).
`
`Qualcomm and Apple submit that termination of the Investigation will not prejudice the public
`
`interest, and that settlement will not adversely impact the public health and welfare, competitive
`
`conditions in the United States economy, the products of like or directly competitive articles in the
`
`United States, or United States consumers. Moreover, Qualcomm and Apple submit that the public
`
`interest favors settlement to avoid needless litigation and to conserve public and private resources.
`
`Furthermore, the May 21 Order states that “compliance and monitoring procedures” will continue
`
`for seven years, further encouraging the Commission to terminate these proceedings in deference
`
`to the Federal Trade Commission’s ongoing supervision. The May 21 Order thus presents no basis
`
`for the Commission to refrain from prompt termination of this Investigation.
`
`IV.
`
`CONCLUSION
`
`For the foregoing reasons and the reasons set forth in the Joint Amended Motion to
`
`Terminate, Qualcomm and Apple respectfully request that that the Commission grant the amended
`
`motion to terminate the Investigation.
`
`6
`
`
`
`PUBLIC VERSION
`
`Date: August 8, 2019
`
`/s/ Deanna Tanner Okun
`_______________________________
`Tom M. Schaumberg
`Deanna Tanner Okun
`ADDUCI, MASTRIANI & SCHAUMBERG, L.L.P.
`1133 Connecticut Avenue, N.W., 12th Floor
`Washington, DC 20036
`Tel.: (202) 467-6300
`Fax: (202) 466-2006
`
`S. Alex Lasher
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`1300 I Street, NW, Suite 900
`Washington, DC 20005
`Tel.: (202) 538-8000
`Fax: (202) 538-8100
`
`David A. Nelson
`Stephen Swedlow
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`191 N. Wacker, Suite 2700
`Chicago, Illinois 60606
`Tel.: (312) 705-7400
`Fax: (312) 705-7401
`
`Steven Cherny
`Richard W. Erwine
`Alexander Rudis
`Patrick Curran
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel.: (212) 849-7000
`Fax: (212) 849-7100
`
`Sean S. Pak
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Tel.: (415) 875-6600
`Fax: (415) 875-6700
`
`/s/ Ruffin B. Cordell
`_______________________________
`Ruffin B. Cordell
`Lauren A. Degnan
`Indranil Mukerji
`FISH & RICHARDSON P.C.
`1000 Maine Ave. SW
`Suite 1000
`Washington, DC 20024
`Tel.: (202) 783-5070
`Fax: (202) 783-2331
`
`Benjamin C. Elacqua
`FISH & RICHARDSON P.C.
`1221 McKinney Street, Suite 2800
`Houston, Texas 77010
`Tel.: (713) 654-5300
`Fax: (713) 652-0109
`
`Whitney Reichel
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02110
`Tel: (617) 542-5070
`Fax: (617) 542-8906
`
`Betty H. Chen
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, California 94063
`Tel.: (650) 839-5070
`Fas: (650) 839-5071
`
`William F. Lee
`Joseph J. Mueller
`WILMER CUTLER PICKERING HALE
`AND DORR LLP
`60 State Street
`Boston, MA 02109
`Tel.: (617) 526-6000
`Fax: (617) 526-5000
`
`7
`
`
`
`PUBLIC VERSION
`
`Nina S. Tallon
`WILMER CUTLER PICKERING HALE
`AND DORR LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`Tel.: (202) 663-6000
`Fax: (202) 663-6363
`
`Counsel for Respondent Apple Inc.
`
`Evan R. Chesler
`Keith R. Hummel
`Richard J. Stark
`Gary A. Bornstein
`J. Wesley Earnhardt
`Yonatan Even
`Vanessa A. Lavely
`CRAVATH, SWAINE & MOORE LLP
`Worldwide Plaza, 825 Eighth Avenue
`New York, NY 10019
`Tel.: (212) 474-1000
`Fax: (212) 474-3700
`
`Richard S. Zembek
`Eric B. Hall
`Daniel S. Leventhal
`Talbot R. Hansum
`NORTON ROSE FULBRIGHT US LLP
`Fulbright Tower
`1301 McKinney, Suite 5100
`Houston, TX 77010
`Tel.: (713) 651-5151
`
`Counsel for Complainant Qualcomm Incorporated
`
`8
`
`
`
`EXHIBIT A
`
`EXHIBIT A
`
`(cid:38)(cid:82)(cid:81)(cid:73)(cid:76)(cid:71)(cid:72)(cid:81)(cid:87)(cid:76)(cid:68)(cid:79)(cid:3)(cid:40)(cid:91)(cid:75)(cid:76)(cid:69)(cid:76)(cid:87)(cid:3)(cid:53)(cid:72)(cid:80)(cid:82)(cid:89)(cid:72)(cid:71)
`
`Confidential Exhibit Removed
`
`
`
`EXHIBIT B
`
`EXHIBIT B
`
`(cid:38)(cid:82)(cid:81)(cid:73)(cid:76)(cid:71)(cid:72)(cid:81)(cid:87)(cid:76)(cid:68)(cid:79)(cid:3)(cid:40)(cid:91)(cid:75)(cid:76)(cid:69)(cid:76)(cid:87)(cid:3)(cid:53)(cid:72)(cid:80)(cid:82)(cid:89)(cid:72)(cid:71)
`
`Confidential Exhibit Removed
`
`
`
`EXHIBIT C
`
`EXHIBIT C
`
`(cid:38)(cid:82)(cid:81)(cid:73)(cid:76)(cid:71)(cid:72)(cid:81)(cid:87)(cid:76)(cid:68)(cid:79)(cid:3)(cid:40)(cid:91)(cid:75)(cid:76)(cid:69)(cid:76)(cid:87)(cid:3)(cid:53)(cid:72)(cid:80)(cid:82)(cid:89)(cid:72)(cid:71)
`
`Confidential Exhibit Removed
`
`
`
`EXHIBIT D
`
`EXHIBIT D
`
`(cid:38)(cid:82)(cid:81)(cid:73)(cid:76)(cid:71)(cid:72)(cid:81)(cid:87)(cid:76)(cid:68)(cid:79)(cid:3)(cid:40)(cid:91)(cid:75)(cid:76)(cid:69)(cid:76)(cid:87)(cid:3)(cid:53)(cid:72)(cid:80)(cid:82)(cid:89)(cid:72)(cid:71)
`
`Confidential Exhibit Removed
`
`
`
`PUBLIC VERSION
`
`PUBLIC VERSION
`
`EXHIBIT E
`
`EXHIBIT E
`
`
`
`2019 SOFTWARE AGREEMENT
`
`This 2019 Software Agreement (this “Agreement”) is entered into as of April 16, 2019 (the “Effective Date”), by
`and between QUALCOMM Technologies, Inc., a Delaware corporation (“QTI”), and Apple Inc., a California
`corporation (“LICENSEE”).
`
`RECITALS
`
`WHEREAS, LICENSEE and Qualcomm Incorporated, a Delaware corporation (“QUALCOMM”), are party to that
`certain Master Software Agreement, dated as of September 20, 2010 (as heretofore amended and supplemented, the
`“Existing MSA”);
`
`WHEREAS, simultaneously herewith, QUALCOMM, QTI and Apple have entered into a letter agreement (the
`“Guaranty Letter”), whereby QUALCOMM has assigned all of its rights and obligations under the Existing MSA
`to QTI and has provided a guaranty of QTI’s performance hereunder and thereunder;
`
`WHEREAS, LICENSEE, QUALCOMM and/or QTI have entered into a Settlement and Release Agreement (the
`“Settlement and Release Agreement”), a Global Patent License Agreement (“Global Patent License Agreement”),
`a Second Amended and Restated Strategic Terms Agreement (the “Second Amended and Restated STA”), a
`Statement of Work for Qualcomm Chipsets for Mav 20, 21, 22 and 23 under the Second Amended and Restated STA
`(“2019 SOW”) and a Software Addendum hereunder for SDX55 SW, SDX60 SW, SDX65 SW and SDX70 SW,
`simultaneously herewith;
`
`WHEREAS, QTI and LICENSEE agree to enter into this Agreement to set forth the terms and conditions under which
`QTI is willing to license to LICENSEE certain software specified herein for use solely with the corresponding
` following the Effective Date; and
`
`WHEREAS, the Parties acknowledge that they are entering into this Agreement voluntarily and as the result of
`arms-length negotiation;
`
`AGREEMENT
`
`NOW, THEREFORE, QTI and LICENSEE, in consideration of the mutual promises set forth herein, agree as follows:
`
`DEFINITIONS. Capitalized terms not defined in this Agreement shall have the meanings set forth in the
`1.
`Second Amended and Restated STA. The following capitalized terms shall have the meanings set forth below:
`
`“Affiliate(s)” means any wholly owned subsidiary of a Party, but only so long as such entity remains a wholly owned
`subsidiary of such Party.
`
`“Executable” means a program that has been converted into machine code that can be directly loaded and executed
`by an operating system.
`
` “LICENSEE Code”
`
`.
`
`“Object Code” means code generated from a compiler in machine-readable form that can be executed by a processor
`or linked with libraries to create an Executable.
`
`“Open Source License Terms” means terms in any license for software that, as a condition of use, copying,
`modification or redistribution, require such software and/or derivative works thereof to be disclosed or distributed in
`source code form, to be licensed for the purpose of making derivative works, or to be distributed free of charge,
`including without limitation software distributed under the GNU General Public License or GNU Lesser Library GPL.
`
`“Party” means QTI or LICENSEE and “Parties” means QTI and LICENSEE.
`
`
`
`“Software” means QTI’s Advance Mobile Subscriber Station software,
`
`“Software Addendum” means an addendum mutually agreed upon and executed by the Parties in a form substantially
`similar to that attached hereto as Appendix A,
`
`Each Software Addendum shall be deemed to incorporate the terms of
`this Agreement and become a part of this Agreement upon execution by both Parties.
`
`“Source Code” means human readable program statements written by a programmer in a high-level or assembly
`language that are not directly readable by a computer.
`
`“Specifications” means the specifications of the Software as described in Exhibit 1 of the applicable Software
`Addendum and
`
`2.
`
`SOFTWARE.
`
`Delivery of Software. The Parties may from time to time enter into a Software Addendum to
`2.1.
`identify Software to be licensed under this Agreement. QTI shall deliver the Software in accordance with the
`applicable Software Addendum, including the delivery dates set forth therein (if any).
`
` This Agreement supersedes all terms of any other “shrinkwrap” or
`“clickwrap” license included in a package, media, or electronic version of the Software. The Software shall be licensed
`under the terms of this Agreement, and such clickwrap or shrinkwrap terms shall not apply to the Software licensed
`or provided under this Agreement even if LICENSEE has been deemed to accept such other shrinkwrap or clickwrap
`license.
`
`3.
`
`SOFTWARE LICENSE; LIMITATIONS ON RIGHTS.
`
`Software License. Subject to the terms and conditions of this Agreement, including, without
`3.1.
`limitation, the restrictions, conditions, limitations and exclusions set forth in Section 5 (Intellectual Property) and in
`the other provisions within this Section 3, QTI, on behalf of itself and its Affiliates, hereby grants LICENSEE a
`
` to:
`
`- 2 -
`
`
`
`Except for the foregoing rights expressly granted, no other rights are granted to LICENSEE under this Section 3.1.
`
`3.2.
`
`Limitations on Rights.
`
`(a) Notwithstanding anything to the contrary in this Agreement, LICENSEE shall have no right to
`
`(b) LICENSEE shall not remove or alter any of the copyright or other notices contained in the Software. LICENSEE
`shall not use, modify, compile or distribute the Software in any manner that would cause the Software to become
`subject to any Open Source License Terms
`
`(the “Open Source Restrictions”).
`
`- 3 -
`
`
`
`3.3.
`
`3.4.
`
`Reserved.
`
`Source Code.
`
`3.5.
`
`Approved Sites, Software Access and Audit Rights.
`
`- 4 -
`
`
`
`3.5.3
`
`LICENSEE represents and warrants that it has, and LICENSEE will maintain,
`
`
`
`Use of Information. Notwithstanding anything to the contrary, LICENSEE and its Affiliates
`3.6.
`(and/or any employees, agents or other representatives of LICENSEE) shall not use any software, hardware and/or
`any other QTI confidential information (or any portions thereof) delivered by QTI to LICENSEE hereunder for the
`purpose of:
`
`4.
`
`WARRANTY DISCLAIMER.
`
`
`
` EXCEPT AS EXPRESSLY PROVIDED IN THIS SECTION 4, QTI MAKES NO OTHER
`WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO THE SOFTWARE OR ANY OTHER
`INFORMATION OR DOCUMENTATION PROVIDED UNDER THIS AGREEMENT, INCLUDING BUT NOT
`LIMITED TO ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR
`AGAINST INFRINGEMENT, OR ANY EXPRESS OR IMPLIED WARRANTY ARISING OUT OF TRADE
`USAGE OR OUT OF A COURSE OF DEALING OR COURSE OF PERFORMANCE. NOTHING CONTAINED
`IN THIS AGREEMENT SHALL BE CONSTRUED AS (I) A WARRANTY OR REPRESENTATION BY QTI AS
`TO THE VALIDITY OR SCOPE OF ANY PATENT, COPYRIGHT OR OTHER INTELLECTUAL PROPERTY
`RIGHT OR (II) A WARRANTY OR REPRESENTATION BY QTI THAT ANY MANUFACTURE OR USE 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.
`
`- 5 -
`
`
`
`5.
`
`INTELLECTUAL PROPERTY.
`
`QTI (or its licensors) shall retain title and all ownership rights in and to the Software,
`
`REPRESENTATION REGARDING USE. LICENSEE hereby represents and warrants to QTI that the
`6.
`Software will be used by LICENSEE and its Affiliates solely in accordance with Section 3 (Software License;
`Limitations on Rights).
`
`7.
`
`TERM AND TERMINATION.
`
`Termination of this Agreement. This Agreement shall commence on the Effective Date and shall
`7.1.
`continue until terminated in accordance with the provisions set forth below.
`
`7.2.
`
`At Will Termination by LICENSEE.
`
`
`
`- 6 -
`
`
`
`7.5.
`
`Bankruptcy, Dissolution or Liquidation.
`
`
`
`7.6.
`
`Remedies on Termination.
`
`7.7.
`
`- 7 -
`
`
`
`
`
`TAXES. All amounts stated herein and/or required to be paid hereunder are stated in, and shall be paid in,
`8.
`U.S. Dollars. The prices do not include any applicable sales, use, excise and/or withholding taxes (except as indicated
`below with regard to withholding of income or profits taxes); customs duties; fees; freight, insurance and delivery
`charges. All such taxes, fees and other charges imposed in conjunction with the Software shall be paid directly by
`LICENSEE. Notwithstanding the foregoing, in the event sums payable under this Agreement become subject to
`income or profits taxes under the tax laws of any country and applicable treaties between the United States and such
`country, LICENSEE may, if and to the extent required by law, withhold from each payment the amount of said income
`or profits taxes due and required to be withheld of each payment. LICENSEE will furnish and make available to QTI
`relevant receipts regarding the payment of any country taxes paid over to any country’s government on behalf of QTI.
`Such tax receipts will clearly indicate the amounts that have been withheld from the gross amounts due to QTI. The
`Parties acknowledge and agree that the delivery of Software hereunder shall be via electronic means and nothing
`herein shall be construed as the sale of any Software to LICENSEE.
`
`9.
`
`LIMITATION OF LIABILITY.
`
`9.1.
`
`9.2.
`
`10.
`
`RESTRICTIONS ON DISCLOSURE AND USE.
`
`, confidential information
`and materials disclosed by one Party to the other in connection with the Agreement (including but not limited to the
`Software) (“Information”) shall be subject to the terms of the NDA, and shall be deemed “Information” as such term
`is used thereunder,
`
`- 8 -
`
`
`
`
`
`- 9 -
`
`
`
`11.
`
`APPLICABLE LAW; DISPUTE RESOLUTION.
`
`11.1.
`
` this Agreement is made and entered
`into in the State of California and will be governed by and construed and enforced in accordance with the laws of the
`State of California without regard to conflicts of laws principles.
`
`
`
`- 10 -
`
`
`
`
`
`EXPORT COMPLIANCE ASSURANCE. LICENSEE acknowledges that all hardware, software, source
`12.
`code and technology (collectively, “Products”) obtained from QTI are subject to the US government export control
`and economic sanctions laws. LICENSEE assures that it, its subsidiaries and Affiliates will not directly or indirectly
`export, re-export, transfer or release (collectively, “export”) any Products or direct product thereof to any destination,
`person, entity or end use prohibited or restricted under US laws without prior US government authorization to the
`extent required by applicable regulation. The US government maintains embargoes and sanctions against certain
`countries, currently Cuba, Iran, North Korea, Sudan and Syria, but any amendments to the countries under a US
`embargo or sanction shall apply. LICENSEE acknowledges that other countries may have trade laws pertaining to
`import, use, export or distribution of Products, and that compliance with the same is the responsibility of the
`LICENSEE.
`
`13.
`
`MISCELLANEOUS PROVISIONS.
`
`
`
`- 11 -
`
`
`
`No addition or modification of this Agreement shall be effective unless
`made in writing and signed by the respective representatives of QTI and LICENSEE. If there is a conflict between the
`terms and conditions of this Agreement and a Software Addendum, the terms and conditions of the Software
`Addendum shall govern with respect to the subject matter of the Software Addendum.
`
`The restrictions, limitations, exclusions and conditions set forth in this Agreement shall apply even if the Party
`benefiting from the restrictions, limitations, exclusions and conditions, or any of such Party’s Affiliates, becomes
`aware of or fails to act in a manner to address any violation or failure to comply therewith.
`
`LICENSEE further acknowledges that, in the absence of such restrictions, limitations, conditions and exclusions, QTI
`would not have entered into this Agreement with LICENSEE.
`
`Each Party agrees that the delivery of this Agreement by facsimile or in electronic format via email shall have the
`same force and effect as delivery of original signatures and that each Party may use facsimile, electronic format
`signatures, and photocopies of signatures as evidence of the execution and delivery of this Agreement by such party
`to the same extent that an original signature could be used.
`
`IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed as of the Effective Date first
`set forth above.
`
`Qualcomm Technologies, Inc.
`
`Apple Inc.
`
`By:
`
`Print:
`Name
`
`Title:
`
`
`
`
`
`
`
`
`
`
`By:
`
`Print:
`Name
`
`Title:
`
`- 12 -
`
`
`
`APPENDIX A
`Software Addendum Template
`
`AMSS[___________] SOFTWARE ADDENDUM TO 2019 SOFTWARE AGREEMENT
`
`Pursuant to and subject to the terms and conditions of the 2019 Software Agreement (the “Agreement”) entered into
`as of April 16, 2019 (the “Effective Date”), by and between Qualcomm Technologies, Inc., a Delaware
`corporation (“QTI”), and Apple Inc., a California corporation (“LICENSEE”) (the “Software Agreement”), the
`Parties hereby enter into this “AMSS[_____] Software Addendum to 2019 Software Agreement (the “AMSS
`[______] Addendum”) as of _____________, ____ (the “Addendum Effective Date”).
`
`For purposes of this AMSS [_____] Addendum only, the following capitalized terms shall have the meanings set
`forth below. Capitalized terms not otherwise defined in this AMSS [____] Addendum shall have the meanings set
`forth in the Software Agreement.
`
`“Agreement” means, collectively, the Software Agreement and this AMSS [______] Addendum.
`
`“AMSS[____] SW” means the software designed for use with a
`Exhibit 1 to this AMSS[____] Addendum.
`
`, as described more fully in
`
`“Standard Support Period” means a period ending [____] months after the final release of the AMSS[____] SW.
`
`1.
`
`AMSS[____] SW and Baseband Components
`
`1.1
`
`Subject to the terms and conditions of the Agreement, LICENSEE hereby agrees to license the
`AMSS[____] SW solely for Apple Products under Section 3.1 (Software License) of the Software
`Agreement.
`
`Miscellaneous. Except as expressly set forth in this AMSS[_____] Addendum, the Software Agreement
`2
`remains in full force and effect without modification. The terms and conditions of this AMSS[_____] Addendum and
`the Software Agreement shall not be modified or amended except by a writing signed by authorized representatives
`of both Parties.
`
`The Parties agree that upon execution of this AMSS[_____] Addendum by both Parties, this AMSS[_____]
`Addendum shall become a part of the Software Agreement. This AMSS[_____] Addendum shall commence (cid:137)n the
`Addendum Effective Date and shall, unless earlier terminated in accordance with the terms of the Software
`Agreement, continue until any termination of the Software Agreement.
`
`IN WITNESS WHEREOF, the Parties hereto have caused this AMSS[_____] Addendum to be executed as of the
`Addendum Effective Date first set forth above.
`
`[Insert Exhibit 1]
`
`- 13 -
`
`
`
`LEGAL NOTICES
`
`The Software may include MPEG Layer-3 audio decoding technology. Notwithstanding any provision of this
`Agreement to the contrary, the delivery of the Software does not convey a license nor imply any rights to use MPEG
`Layer-3 audio decoding technology in any finished product under any patents or other intellectual property rights of
`a third party. A separate and independent license for such use may be required and LICENSEE shall be solely
`responsible to verify whether such license is needed in conjunction with the use of the MPEG Layer-3 Audio Decoder
`feature.
`
`The Software may include G.729 and G729 Annex A Codecs. This Agreement does not convey a license nor imply
`any rights to use such codecs under the intellectual property rights of any third party. Sipro Lab Telecom (“Sipro”)
`has publicly represented having been appointed to administer implementation licenses for the G.729 and G.729 Annex
`A Codecs. Consequently, a separate and independent license from Sipro or others for such use may be required and
`LICENSEE shall be solely responsible to verify whether such license(s) is needed in conjunction with the use of the
`G.729 and G.729 Annex A Codecs.
`
`The Software may include DivX, Inc. software. This Agreement does not convey a license nor imply any rights to
`use or distrib