<PAGE>
UNITED STATES
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
--------------------
FORM 10-K/A-1
[X] ANNUAL REPORT PURSUANT TO SECTION 13 OR 15(d)
OF THE SECURITIES EXCHANGE ACT OF 1934
FOR THE FISCAL YEAR ENDED OCTOBER 31, 1997
OR
[_] TRANSITION REPORT PURSUANT TO SECTION 13 OR 15(d)
OF THE SECURITIES EXCHANGE ACT OF 1934
COMMISSION FILE NUMBER: 0-17754
CONSILIUM, INC.
(EXACT NAME OF REGISTRANT AS SPECIFIED IN ITS CHARTER)
DELAWARE 94-2523965
(STATE OR OTHER JURISDICTION OF (I.R.S. EMPLOYER
INCORPORATION OR ORGANIZATION) IDENTIFICATION NO.)
485 CLYDE AVENUE
MOUNTAIN VIEW, CA 94043
(ADDRESS OF PRINCIPAL EXECUTIVE OFFICES INCLUDING ZIP CODE)
TELEPHONE NUMBER (650) 691-6100
(REGISTRANT'S TELEPHONE NUMBER, INCLUDING AREA CODE)
SECURITIES REGISTERED PURSUANT TO SECTION 12(b) OF THE ACT: NONE
SECURITIES REGISTERED PURSUANT TO SECTION 12(g) OF THE ACT:
COMMON STOCK, $0.01 PAR VALUE PER SHARE
Indicate by check mark whether the registrant (1) has filed all reports
required to be filed by Section 13 or 15(d) of the Securities Exchange Act of
1934 during the preceding 12 months (or for such shorter period that the
registrant was required to file such reports), and (2) has been subject to such
filing requirements for the past 90 days. YES X NO
- -
Indicate by check mark if disclosure of delinquent filers pursuant to Item
405 of Regulation S-K is not contained herein, and will not be contained, to the
best of the Registrant's knowledge, in definitive proxy or information
statements incorporated by reference in Part III of this Form 10-K or any
amendment to this Form 10-K. __
The aggregate market value of Common Stock held by non-affiliates of the
Registrant as of October 31, 1997 was approximately $15,623,850.58. Shares of
Common Stock held by each executive, director and 5% or greater shareholder
have been excluded in that such persons may be deemed affiliates. This
determination of affiliate status is not necessarily a conclusive
determination for other purposes.
As of October 31, 1997, there were approximately 8,290,290 shares of
the Registrant's Common Stock outstanding.
DOCUMENTS INCORPORATED BY REFERENCE
Portions of the definitive Proxy Statement in connection with the Registrant's
Annual Meeting of Stockholders to be held March 18, 1998 are incorporated by
reference in Part III.
<PAGE>
PART IV
ITEM 14. EXHIBITS, FINANCIAL STATEMENTS, SCHEDULES AND REPORTS ON FORM 8-K
(a) The following documents are filed as part of this Report:
1. Financial Statements.
--------------------
Report of Independent Public Accountants (Arthur Andersen
LLP) dated December 3, 1997.
Report of Independent Accountants (Coopers & Lybrand L.L.P.)
dated December 6, 1995.
Consolidated Statements of Operation - Years Ended October
31, 1997, 1996 and 1995.
Consolidated Balance Sheets - October 31, 1997 and 1996.
Consolidated Statements of Stockholder's Equity - Years
Ended October 31, 1997, 1996 and 1995.
Consolidated Statements of Cash Flows - Years Ended October
31, 1997, 1996 and 1995.
Notes to Consolidated Financial Statements.
2. Financial Statement Schedule.
----------------------------
The following financial statement schedule of Consilium, Inc.
is filed as part of this Report and should be read in conjunction with the
Consolidated Financial Statements of Consilium, Inc.
Report of Independent Accountants
Schedule II - Valuation and Qualifying Accounts
Schedules not listed above have been omitted because the
information required to be set forth therein is not applicable or is shown in
the financial statements or notes thereto.
2
<PAGE>
3. Exhibits.
--------
<TABLE>
<CAPTION>
Exhibit
Number Exhibit Title
---------- -----------------------------------------------------------------------
<S> <C>
2.1 Asset Purchase Agreement for the acquisition of FAST Associates, Pte. dated
July 31, 1997. /3/
3.1 Certificate of Incorporation of the Company. /2/
3.2 By-Laws of the Company. /2/
3.3 Certificate of Designation of Series A Convertible Preferred Stock. /3/
4.1 Form of Warrant Agreement dated April 1, 1997 between the Company and
Imperial Bank. /3/
4.2 Form of 8% Convertible Preferred Stock Subscription Agreement for the Sale of
an Aggregate $3 million worth of Preferred Shares to certain private
institutional investors dated August 19, 1997. /3/
4.3 Form of Warrant Agreement dated August 19, 1997 between the Company and
certain placement agents. /3/
10.2 Master Lease Agreement, dated December 2, 1988, between the Company and
General Electric Capital Corporation, with schedules. /1/
10.3 Letter Agreement, dated July 22, 1987, with respect to the employment of
Thomas Tomasetti. /1/,/6/
10.5 Agreement between the Company and Honeywell, Inc., Industrial Automation and
Control, dated April 1, 1993. /2/,/5/
10.6 Form of Director and Officer Indemnity Agreement. /4/
10.7 Amended and Restated 1983 Stock Option Plan. /6/,/7/
10.8 Forms of Stock Option Agreement used in conjunction with the 1983 Stock
Option Plan. /6/,/7/
10.9 1990 Outside Director's Stock Option Plan. /6/,/7/
10.10 Forms of Outside Directors Stock Option Agreement used in conjunction with
the 1990 Outside Director's Stock Option Plan. /6/,/7/
10.11 Lease agreement for the Company's principal facility, dated August 2, 1995,
among the Company and The Prudential Insurance Company of America. /7/
10.12 Letter Agreement, dated August 5, 1994, with respect to the employment of
Edward Norton. /6/,/7/
10.13 Letter Agreement, dated September 28, 1994, with respect to the employment of
Richard Van Hoesen. /6/,/7/
10.14 Letter Agreement, dated July 12, 1996 , with respect to the resignation of
Thomas Tomasetti. /6/,/8/
10.15 Letter Agreement dated June 3, 1996, with respect to the employment of
Laurence R. Hootnick. /6/,/8/
10.16 Asset Purchase Agreement for the acquisition of the Taiwan operations of
Systematic Designs International, Inc. dated July 2, 1996. /10/
10.17 Letter Agreement dated August 6, 1996, with respect to the employment of Wynn
Bowman. /6/,/9/
10.18 Letter Agreement dated August 6, 1996, with respect to the employment of
Michael J. Field. /6/,/9/
10.19 Change of Control Agreement with Laurence R. Hootnick. /6/,/11/
10.20 Change of Control Agreement with Jonathan J. Golovin. /6/,/11/
10.21 Form of Change of Control Agreement for Executive Officers. /6/,/11/
10.22 1996 Stock Option Plan and Forms of Stock Option Agreement. /6/,/11/
10.23 Security and Loan Agreement dated April 1, 1997 between the Company and
Imperial Bank. /3/
10.24 Agreement between the Company and HCL America, Inc., dated May 21, 1997. /13/
21.1 Schedule of Subsidiaries. /12/
23.1 Consent of Independent Accountants (Coopers & Lybrand L.L.P.). /14/
23.2 Consent of Independent Public Accountants (Arthur Andersen LLP). /14/
24.1 Power of Attorney. /14/
27 Financial Data Schedule (available in EDGAR format only). /14/
</TABLE>
3
<PAGE>
- ------------------
1 Incorporated by reference from exhibits of the same number in Registrant's
Registration Statement on Form S-1 (File No. 33-27947), effective May 9,
1989.
2 Incorporated by reference from exhibits 3.1, 3.2 and 10.19, respectively,
in Registrant's Quarterly Report on Form 10-Q for the Quarter ended April
30, 1993.
3 Incorporated by reference from exhibits of the same number in Registrant's
Quarterly Report on Form 10-Q for the Quarter ended July 31, 1997.
4 Incorporated by reference from exhibit 10.6 in Registrant's Quarterly
Report on Form 10-Q for the Quarter ended July 31, 1994.
5 The Securities and Exchange Commission has granted confidential treatment
for portions of this document.
6 Compensatory or employment arrangement.
7 Incorporated by reference from exhibits of the same number in Registrant's
Annual Report on Form 10-K for the Year ended October 31, 1995.
8 Incorporated by reference from exhibits of the same number in Registrant's
Quarterly Report on Form 10-Q for the Quarter ended July 31, 1996.
9 Incorporated by reference from exhibits of the same number in Registrant's
Annual Report on Form 10-K for the Year ended October 31, 1996.
10 Incorporated by reference from exhibit 2.1 in Registrant's Report on Form
8-K filed on July 26, 1996 for the acquisition of the Taiwan operations of
Systematic Designs International, Inc.
11 Incorporated by reference from exhibits of the same number in Registrant's
Quarterly Report on Form 10-Q for the Quarter ended January 31, 1997.
12 Incorporated by reference from exhibits of the same number in Registration
Statement on Form S-1 (File No. 333-44743), filed January 22, 1998.
13 The Company has filed a request for confidential treatment for portions
of this document with the Securities and Exchange Commission.
14 Previously filed with this report.
4. Reports on Form 8-K.
-------------------
Report under Item 2 dated August 15, 1997 regarding the Asset
Purchase Agreement with Fast Associates Pte., Ltd. and three amendments thereto
under Item 7 dated September 9, 1997, October 15, 1997 and December 19, 1997.
4
<PAGE>
SIGNATURES
Pursuant to the requirements of Section 13 or 15(d) the Securities Exchange
Act of 1934, the Registrant has duly caused this Amendment Number 1 to the
Annual Report on Form 10-K to be signed on its behalf by the undersigned,
thereunto duly authorized, in the City of Mountain View, State of California, on
the 11th day of June, 1998.
CONSILIUM, INC.
By: *
-------------------------------
Laurence R. Hootnick
President and Chief Executive Officer
<TABLE>
<CAPTION>
SIGNATURE TITLE
<S> <C>
/s/ * Chairman of the Board and Chief Technical
- ------------------------------------ Officer
Jonothan J. Golovin
/s/ * President, Chief Executive Officer and
- ------------------------------------ Director
Laurence R. Hootnick (Principal Executive Officer)
/s/ CLIFTON WONG Chief Financial Officer and Vice President
- ------------------------------------ (Principal Financial Officer)
Clifton Wong
/s/ *
- ------------------------------------ Director
Robert C. Fink
/s/ *
- ------------------------------------ Director
Robert Horne
/s/ *
- ------------------------------------ Director
Thomas A. Tomasetti
/s/ *
- ------------------------------------ Director
Frederick M. O'Such
/s/ CLIFTON WONG
- ------------------------------------
* Clifton Wong
Attorney-In-Fact
</TABLE>
5
<PAGE>
INDEX TO EXHIBITS
<TABLE>
<CAPTION>
Exhibit
Number Exhibit Title
---------- -----------------------------------------------------------------------
<S> <C>
2.1 Asset Purchase Agreement for the acquisition of FAST Associates, Pte. dated
July 31, 1997. /3/
3.1 Certificate of Incorporation of the Company. /2/
3.2 By-Laws of the Company. /2/
3.3 Certificate of Designation of Series A Convertible Preferred Stock. /3/
4.1 Form of Warrant Agreement dated April 1, 1997 between the Company and
Imperial Bank. /3/
4.2 Form of 8% Convertible Preferred Stock Subscription Agreement for the Sale of
an Aggregate $3 million worth of Preferred Shares to certain private
institutional investors dated August 19, 1997. /3/
4.3 Form of Warrant Agreement dated August 19, 1997 between the Company and
certain placement agents. /3/
10.2 Master Lease Agreement, dated December 2, 1988, between the Company and
General Electric Capital Corporation, with schedules. /1/
10.3 Letter Agreement, dated July 22, 1987, with respect to the employment of
Thomas Tomasetti. /1/,/6/
10.5 Agreement between the Company and Honeywell, Inc., Industrial Automation and
Control, dated April 1, 1993. /2/,/5/
10.6 Form of Director and Officer Indemnity Agreement. /4/
10.7 Amended and Restated 1983 Stock Option Plan. /6/,/7/
10.8 Forms of Stock Option Agreement used in conjunction with the 1983 Stock
Option Plan. /6/,/7/
10.9 1990 Outside Director's Stock Option Plan. /6/,/7/
10.10 Forms of Outside Directors Stock Option Agreement used in conjunction with
the 1990 Outside Director's Stock Option Plan. /6/,/7/
10.11 Lease agreement for the Company's principal facility, dated August 2, 1995,
among the Company and The Prudential Insurance Company of America. /7/
</TABLE>
<PAGE>
<TABLE>
<CAPTION>
Exhibit
Number Exhibit Title
---------- -----------------------------------------------------------------------
<S> <C>
10.12 Letter Agreement, dated August 5, 1994, with respect to the employment of
Edward Norton. /6/,/7/
10.13 Letter Agreement, dated September 28, 1994, with respect to the employment of
Richard Van Hoesen. /6/,/7/
10.14 Letter Agreement, dated July 12, 1996 , with respect to the resignation of
Thomas Tomasetti. /6/,/8/
10.15 Letter Agreement dated June 3, 1996, with respect to the employment of
Laurence R. Hootnick. /6/,/8/
10.16 Asset Purchase Agreement for the acquisition of the Taiwan operations of
Systematic Designs International, Inc. dated July 2, 1996. /10/
10.17 Letter Agreement dated August 6, 1996, with respect to the employment of Wynn
Bowman. /6/,/9/
10.18 Letter Agreement dated August 6, 1996, with respect to the employment of
Michael J. Field. /6/,/9/
10.19 Change of Control Agreement with Laurence R. Hootnick. /6/,/11/
10.20 Change of Control Agreement with Jonathan J. Golovin. /6/,/11/
10.21 Form of Change of Control Agreement for Executive Officers. /6/,/11/
10.22 1996 Stock Option Plan and Forms of Stock Option Agreement. /6/,/11/
10.23 Security and Loan Agreement dated April 1, 1997 between the Company and
Imperial Bank. /3/
10.24 Agreement between the Company and HCL America, Inc., dated May 21, 1997. /13/
21.1 Schedule of Subsidiaries. /12/
23.1 Consent of Independent Accountants (Coopers & Lybrand L.L.P.). /14/
23.2 Consent of Independent Public Accountants (Arthur Andersen LLP). /14/
24.1 Power of Attorney. /14/
27 Financial Data Schedule (available in EDGAR format only). /14/
</TABLE>
- ------------------
1 Incorporated by reference from exhibits of the same number in Registrant's
Registration Statement on Form S-1 (File No. 33-27947), effective May 9,
1989.
2 Incorporated by reference from exhibits 3.1, 3.2 and 10.19, respectively,
in Registrant's Quarterly Report on Form 10-Q for the Quarter ended April
30, 1993.
3 Incorporated by reference from exhibits of the same number in Registrant's
Quarterly Report on Form 10-Q for the Quarter ended July 31, 1997.
4 Incorporated by reference from exhibit 10.6 in Registrant's Quarterly
Report on Form 10-Q for the Quarter ended July 31, 1994.
5 The Securities and Exchange Commission has granted confidential treatment
for portions of this document.
<PAGE>
6 Compensatory or employment arrangement.
7 Incorporated by reference from exhibits of the same number in Registrant's
Annual Report on Form 10-K for the Year ended October 31, 1995.
8 Incorporated by reference from exhibits of the same number in Registrant's
Quarterly Report on Form 10-Q for the Quarter ended July 31, 1996.
9 Incorporated by reference from exhibits of the same number in Registrant's
Annual Report on Form 10-K for the Year ended October 31, 1996.
10 Incorporated by reference from exhibit 2.1 in Registrant's Report on Form
8-K filed on July 26, 1996 for the acquisition of the Taiwan operations of
Systematic Designs International, Inc.
11 Incorporated by reference from exhibits of the same number in Registrant's
Quarterly Report on Form 10-Q for the Quarter ended January 31, 1997.
12 Incorporated by reference from exhibits of the same number in Registration
Statement on Form S-1 (File No. 333-44743), filed January 22, 1998.
13 The Company has filed a request for confidential treatment for portions
of this document with the Securities and Exchange Commission.
14 Previously filed with this report.
<PAGE>
EXHIBIT 10.24
-------------
AGREEMENT BETWEEN CONSILIUM, INC., AND HCL AMERICA, INC.,
---------------------------------------------------------
FOR SETTING UP AN OFFSHORE DEVELOPMENT CENTER IN INDIA
------------------------------------------------------
This Agreement is entered into on May 21, 1997 (the "Effective Date")
between Consilium, Inc. (Company), a Delaware corporation, with its principal
place of business at 485 Clyde Avenue, Mountain View, California 94043 and HCL
America, Inc. (HCL), a California Corporation, with its principal place of
business at 330 Potrero Avenue, Sunnyvale, CA 94086 for the purpose as stated
below:
A) Company develops and markets certain software products.
B) HCL is in the business of providing consulting services in hardware
and software development and have engineering resources in the USA and in India
(Offshore Development Team) to take up software development projects on a
contract basis.
C) Company desires to employ HCL's services to form an Offshore
Development Team in India to execute Company's Development Projects.
D) An agreement was entered into between Company and HCL on or about
April 25, 1996, to employ HCL's services for the same purpose described above.
This agreement supersedes the original agreement between the parties.
In consideration of the mutual promises contained herein, Company and HCL
agree as follows:
1.0 ENGAGEMENT OF HCL AND ECONOMIC MODEL
1.1 Company hereby engages HCL and HCL hereby agrees to form an Offshore
Development Team in India consisting of software engineers and managers
exclusively for the Company, to execute projects for the Company. The
relationship of the Company, HCL, and HCL India is that of contractors. HCL
agrees to enter into an agreement with HCL India under which HCL India agrees to
the terms and conditions of this Agreement, and under which HCL India agrees to
the terms and conditions of this Agreement, and under which HCL and HCL Indian
agree that Company will be a third party beneficiary with the right to enforce
HCL's rights.
1.2 Company will specify the number of engineers and managers required in
the Offshore Development Team to HCL and HCL shall allocate and form the
Offshore Development Team exclusively for the Company. Company shall [*]
described in Exhibit "A" attached to this Agreement.
[*] CONFIDENTIAL TREATMENT REQUESTED
-1-
<PAGE>
1.3 HCL shall provide the facilities such as office space, power, water,
communication and other such infrastructure for the engineering team. HCL shall
ensure that such facilities are isolated from other such development facilities
and can be accused only by the engineers and managers allocated to the Offshore
Development Team or by personnel authorized by Company. All access shall be
logged in detail, reported and activities actively monitored.
HCL shall also be responsible for all government and legal matters required
for the setting up and operation of the Offshore Development Team.
Further, within sixty (60) days following the Effective Date, HCL agrees to
expand HCL's existing facilities to house the level of staff ([*] ([*]) members)
set forth in the first year of the initial forecast specified in Section 2.6 and
shall be prepared to expand such facilities to accommodate up to [*] ([*]) staff
members within the first year. For each subsequent year of the term of this
Agreement, the parties will mutually agree within thirty (30) days of the
applicable anniversary date of the Effective Date on the expansion, if any, of
HCL's facilities.
1.4 Company shall provide the development systems, test systems, security
devices and communication devices required to be used by the Offshore
Development Team for the execution of projects for the Company.
1.5 HCL understands that the Offshore Development Team shall be managed
entirely by HCL and HCL shall be responsible for the performance of the Offshore
Development Team, conformance to the Company's development standards and
specifications, quality of the deliverables including validation by automated
tests demonstrating conformance to specifications and for the completion of
projects on time as agreed to between the parties hereto.
1.6 Company will identify the projects to be executed by the Offshore
Development Team and provide HCL with details on the projects and requirements
and HCL will submit a project proposal to the Company for every project. Once
the proposal is discussed and accepted by the Company, Company will communicate
to HCL the decision to start the project and HCL will assign resources from the
Offshore Development Team for the execution of the project. HCL will be
responsible for meeting the milestones, deliverables, standards and any terms
and conditions specific to the project as set forth in the project proposal and
as communicated to HCL by the Company.
1.7 HCL's compensation for the first year after the Effective Date shall
be the rate set forth on the Exhibit "A" Fee Schedule (Fee Schedule) attached
hereto, [*]. Unless otherwise specifically agreed by the parties in an executed
written project proposal, HCL's compensation for project shall be a [*]. [*],
based on the Fee Schedule. Further, the fees set forth on the Fee Schedule
shall be renegotiated on each anniversary date of the Effective Date by mutual
agreement of the parties based on [*]. If the parties cannot agree on annual
adjustments to the Fee Schedule, then the fees set forth in the Fee Schedule
shall automatically increase by [*] ([*]) at each anniversary date of the
Effective Date from the fees charged for the immediately preceding contract
year. If HCL requests fee increases in any given contract year of more than [*]
([*]) which the parties have not mutually agreed to, then HCL shall have the
right to seek
[*] CONFIDENTIAL TREATMENT REQUESTED
-2-
<PAGE>
arbitration under section 20.7 for the fee increases over and above the
automatic [*] ([*]) fee increase or HCL shall have the right to terminate this
Agreement by providing a one-year written notice to Company. The Company shall
then have the right to, in lieu of arbitration or termination of Agreement in
one year, agree to the fee increases required by HCL that exceed the automatic
[*] ([*]) fee increase. Any new rates agreed upon by the parties shall apply
retroactively to the beginning of the applicable contract year. The rates set
forth on the Fee Schedule include all [*].
1.8 HCL and Company will account for and track compensation paid by the
Company for each project separately. In the event that a project executed by
HCL for the Company is proved, pursuant to Section 20.7 arbitration, not to meet
the acceptance criteria at no fault of the Company, and after HCL has had a
reasonable opportunity to correct any errors so that the development product
passes the acceptance test, then the Company has the right to request HCL to
reimburse the Company for payments specifically related only to said failed
project. Any issues that stand unresolved in spite of the best efforts for
resolution by the project team/manager of HCL and the concerned Company
team/manager would be resolved by a steering committee. This steering committee
shall be comprised of an equal number of members from the Company and the
relevant project specification. If the steering committee cannot resolve this
dispute within thirty (30) days, the dispute shall be submitted to arbitration
pursuant to Section 20.7. The arbitration provision contained in Section 20.7
shall apply to any dispute involving HCL, the Company, and HCL India.
2.0 SELECTION AND ALLOCATION OF ENGINEERS AND MANAGER
2.1 Company will specify the number of engineers and managers required in
the Offshore Development Team and the date by which they are required to HCL and
HCL shall allocate these engineers and managers for India for taking up
development projects exclusively for the Company. HCL shall try to allocate
these engineers on the date requested for by the Company, but may require up to
forty-five (45) days for the allocation.
2.2 Company may also need engineers and/or managers to work at Company's
offices in the United States of America or at HCL America's offices in
Sunnyvale, California, USA, from time to time and HCL will make these resources
available for the Company together with all United States of America INS work
permit documents. HCL agrees to assume all responsibility for compliance with
the United States of America immigration laws.
HCL further agrees to assume all responsibility for compliance with United
States of America export laws and regulations, especially concerning technical
data transfers to foreign nationals.
2.3 As part of executing a project, some or all of the engineers and
managers assigned to a project may have to be trained at the Company's premises
in the United States of America or may be required for discussions related to
the project. HCL agrees to make arrangements for their travel and insure that
appropriate INS Visa or work permit approvals are obtained for their travel.
[*].
[*] CONFIDENTIAL TREATMENT REQUESTED
-3-
<PAGE>
2.4 The qualification, experience and profile of the engineers and
managers shall be decided mutually by the Company and HCL based on the projects
identified for execution by HCL in India. HCL understands that proficient
verbal and written English language skills are a requirement for the team
members, without exception.
2.5 With ten (10) days of the Effective Date and from time to time on
Company's request, HCL shall provide Company with a list of the HCL managers and
engineers available to participate on the Offshore Development Team and
subcontractors which HCL may use for any work under this Agreement. HCL and
Company shall mutually agree on the individuals to be assigned to the Offshore
Development Team and entities to be participating in the projects hereunder.
HCL shall use commercially reasonable best efforts to retain such HCL personnel
and Company shall use commercially reasonable efforts to involve such HCL
personnel in career-enhancing opportunities. HCL shall assign only such
mutually agreed engineers and managers who are on the Offshore Development Team,
and agreed-upon subcontractors, to work under this Agreement, unless otherwise
agreed in advance by Company. [*]. Changes to any project team shall be only
with mutual consent of the parties. HCL and Company from time to time shall
agree on which HCL managers and engineers shall be deemed to be "key persons."
HCL and Company shall agree on back-up persons for each key person and in the
event any key person becomes unavailable, HCL shall assign the agreed-upon back-
up person to replace such key person. If any non-key Offshore Development Team
member becomes unavailable, or if all designated back-ups for a key person are
not available, HCL shall provide a replacement acceptable to Company who shall
have equal or better education, work experience and skills (including English
language skills) as the replaced person. HCL shall absorb and not charge
Company for the time and effort needed to transition any replacement person.
HCL shall provide all available information on each candidate for the Offshore
Development Team and potential subcontractors and Company shall have the right
to privately interview each of them in order to determine their qualification.
2.6 Exhibit "C" ("Forecast") attached hereto is Company's good-faith
forecast of HCL [*]. [*]. [*]. as described above.
3.0 INFRASTRUCTURE
3.1 HCL shall provide the required infrastructure to the Offshore
Development Team and Company personnel involved in the project in India as well
as for the Team that may be required to work at HCL's offices in USA. Such
infrastructure may include office space, furniture, office systems and software,
network, and connection to Company, telephone, fax, copier, stationery, media
and office supplies as required. However, project-specific software and
hardware would be supplied by Company.
3.2 For those phases of the project to be executed at Company's premises,
Company shall provide such infrastructure to the Team in their premises at
Company's sole expense.
[*] CONFIDENTIAL TREATMENT REQUESTED
-4-
<PAGE>
4.0 EQUIPMENT AND SOFTWARE
4.1 Company may identify certain equipment and systems as necessary for
the development, testing, validation and acceptance of the products in the
Offshore Development Team. [*]
4.2 Company may also [*] for the purpose of executing a project. [*]
purpose of executing projects for the Company.
4.3 HCL agrees to provide air-conditioned laboratory space, uninterrupted
power and other required infrastructure to keep these equipment functional and
ready for use at all times. [*].
4.4 HCL agrees to [*] for Offshore Development and [*]. HCL further
agrees to [*].
4.5 HCL agrees to comply with all United States of America export laws and
regulations concerning the shipment of equipment and/or software between the
sites.
4.6 Company shall [*] as set forth in Exhibit B ("[*]") attached hereto.
HCL shall [*]. [*].
5.0 ASSIGNMENT OF PROJECT MANAGERS
5.1 For every project to be executed by the Offshore Development Team,
Company will identify a project manager from within the Company who will work
with HCL on all aspects of the project including project specifications,
approval of proposals, project reviews and final acceptance.
5.2 For every project from the Company, HCL will identify a project
manager from with the Offshore Development Team. The project manager will look
after all aspects of the project, including proposals, reviews, resource
allocation, conformance to development standards and practices, team training
status, project deliverables, acceptance by the Company and communication with
the Company. Each such project manager shall be mutually agreed upon by HCL and
Company shall be a "key person" under Section 2.5.
6.0 ASSIGNMENTS OF PROJECTS
6.1 Company shall identify projects to be assigned to the Offshore
Development Team and provide HCL with details on the project including scope of
the project, specifications, requirements and Acceptance Criteria.
6.2 HCL shall give a proposal for each project to the Company giving
details on the resources required, development strategy, schedule, milestones,
deliverables and acceptance tests.
[*] CONFIDENTIAL TREATMENT REQUESTED
-5-
<PAGE>
6.3 Company, in discussion with HCL, may accept, modify or reject such
proposals. In any event Company shall make a decision and inform HCL within
fifteen (15) days from the date on which HCL submitted the proposals.
6.4 If the project proposal is accepted, the project proposal shall be
signed off by the Company's project manager allocated to the project and HCL's
project manager allocated to the project. HCL shall start executing the project
after this acceptance process.
7.0 EXECUTION OF PROJECT
7.1 The required resources (engineers, managers, equipment) for the
project shall be identified and allocated by HCL from within the Development
Team. The rest of the team will be reserved for other projects from the
Company.
7.2 If additional data, [*], [*], equipment or documentation is required
[*] for the execution of the project, [*] by the dates mentioned in the proposal
accepted by both the parties. [*].
7.3 Company will communicate the methods, standards and any technical
details required to be followed in the project's execution and HCL shall conform
to these requests. HCL may discuss these details with the Company as required,
[*].
7.4 If any resources such as R&D, QA, and Testing Engineers are to be
provided by Company to complete any phase of a project, Company shall provide
such resources on or before the `Planned' dates in the proposals and for the
duration committed at Company's cost.
7.5 HCL shall be responsible for meeting the project milestones,
development methodologies, quality of the developed products, deliverables,
acceptance and documentation as listed in the proposal. [*].
7.6 HCL shall provide Company with regular status reports on the project
as agreed upon in the proposal. Such reports are normally required weekly or
biweekly by the Company. HCL shall also participate in the monthly R&D review
meetings and other status review meetings as requested by the Company.
7.7 Company will be responsible for reviewing the progress of the project
as indicated in the status reports and providing HCL with any information or
feedback on the progress if required. [*].
7.8 Company understands that [*].
8.0 ACCEPTANCE CRITERIA
8.1 The Acceptance Criteria for the project work done by HCL shall be
decided by the Company in discussion with HCL and shall be mentioned in the
individual project proposals.
[*] CONFIDENTIAL TREATMENT REQUESTED
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The Acceptance Criteria may include regression tests, engineering field tests,
Alpha test plan, Beta test plan, and Post-Beta test plan. As part of the
Acceptance Criteria, Company also requires that all project milestones are met,
Company's standards of development have been maintained, and all the
deliverables and documentation are complete.
8.2 HCL understands that if the development products fails to pass the
Acceptance Criteria test, Company may ask HCL to modify the project and correct
the errors found. HCL agrees to correct all such errors within thirty (30) days
of reporting by Company, or for such a further reasonable period as the parties
may agree, in writing, at no further costs to the Company.
8.3 HCL understands that [*]. The parties first shall attempt to resolve
any issues pursuant to the designated steering committee under paragraph 1.8 and
also subject to binding arbitration under paragraph 20.7.
9.0 WARRANTIES
9.1 HCL warrants that it will perform the services in a professional
manner, using experienced personnel and maintain high quality and standards in
all the projects undertaken for the Company.
9.2 HCL further warrants that for a period of ninety (90) days after the
Company has approved the final deliverable, as provided for in the proposal, the
product delivered in the final deliverable shall be free from defects due to
HCL's development work. During this period, any defects found on the product
will be corrected by HCL [*].
9.3 At the end of this ninety (90) day warranty period, based on a written
request from the Company, HCL will provide maintenance support to the Company
for the delivered products by allocating engineers either in the United States
of America or in India, for a further period to be mutually decided after the
last date of the warranty period. The resources in United States of America and
in India shall be decided mutually between the Company and HCL based on the
level of maintenance support required and shall be charged to the Company as per
the Fee Schedule in Exhibit "A". Company will execute a separate maintenance
contract with HCL for such maintenance support required.
9.4 This warranty agreement shall survive any termination of this letter
or the final agreement.
10.0 INSPECTION
HCL agrees to let Company inspect the Offshore Development Site and
laboratories by Company's personnel, during normal business hours of HCL. HCL
further agrees to conform standards and related requirements on behalf of
Company and to audit.
[*] CONFIDENTIAL TREATMENT REQUESTED
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11.0 COMPENSATION TO HCL AND REPAYMENT
11.1 In consideration for the services rendered, Company shall compensate
HCL [*]. The compensation to HCL shall [*]. Company will also compensate HCL
[*].
The compensation amounts [*] as per details contained in Exhibit "A"
attached hereto.
11.2 HCL shall invoice Company separately [*] as agreed in Exhibit "A"
attached hereto.
11.3 In the event that a project undertaken by HCL does not meet the
Acceptance Criteria due to HCL's actions or conduct as set forth in the project
proposal and agreed to between the Company's, and in the event that HCL fails to
make corrections to the delivered products within the required thirty (30) days,
or such further reasonable period of time as the parties may agree, from the
date of Company reporting such errors to HCL and HCL accepting them, Company may
[*] by Company for the project from the date the project was started. It is the
intention of the parties that if HCL can correct errors referenced above,
pursuant to a Company-approved cure plan to meet Acceptance Criteria, that the
Company will not unreasonably withhold an additional period of time beyond
thirty (30) days from the date of the Company reporting such errors to HCL to
allow HCL to correct said errors. HCL warrants that it will diligently pursue
said agreed-upon cure plan. HCL understands and agrees [*] subject to utilizing
efforts through the steering committee procedures referenced in Paragraph 1.8
and subject to binding arbitration in Section 20.7. Company would communicate
to HCL its acceptance or otherwise of milestones as per timeframes detailed in
the respective project proposals. In case of a delay of more than fifteen (15)
working days, it would be deemed that the milestone has been accepted by the
Company.
11.4 [*]
12.0 TERM OF ENGAGEMENT
Unless otherwise terminated in accordance with Sections 13.0, 14.0, and/or
15.0, the term of this Agreement shall be for three (3) years from the Effective
Date and shall automatically extend for each updated Forecast Period as provided
in Section 2.6.
13.0 TERMINATION OF AGREEMENT BY COMPANY
This Agreement may be terminated by Company for material breach of contract
by HCL by giving a thirty (30) day written notice subject to HCL's right to cure
any such material breach through utilization of the steering committee
procedures under Section 1.8 or through corrective actions taken by HCL.
Reasons for termination may include (subject to Section 1.8 - steering committee
review and corrective action by HCL):
13.1 The development method, standard and specifications followed by the
Offshore Development Team does not correspond to Company's standards. Company
reported these
[*] CONFIDENTIAL TREATMENT REQUESTED
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problems to HCL and HCL failed to correct these problems within thirty (30) days
as agreed upon by the parties subject to section 1.8 and further HCL corrective
action.
13.2 The product developed by HCL did not pass the Acceptance Criteria.
Company reported these problems to HCL and HCL failed to correct these problems
within thirty (30) days as agreed upon by the parties subject to Section 1.8 and
further HCL correction action.
13.3 HCL did not provide status reports on projects as agreed upon, even
after Company reported the problem to HCL.
13.4 HCL did not provide names of the engineers, qualifications and
experience to Company or did not keep this information updated, as set forth in
this Agreement.
13.5 HCL violates the non-disclosure agreement and the protection of
intellectual property clauses as set forth in this Agreement.
13.6 It is the intention of the parties that HCL will cure any material
breaches, correct problems, and errors referenced in Section 10.0, 13.1 and 13.2
within thirty (30) days of written notice or for a further reasonable period of
time as the parties may agree in writing pursuant to a Company-approved cure
plan. HCL warrants that it will diligently pursue said agreed-upon cure plan.
The Company agrees not to unreasonably withhold providing HCL a further
reasonable period of time in addition to the thirty (30) day written notice
period to correct said material breaches, problems, or failures to pass
Acceptance Criteria.
14.0 TERMINATION OF AGREEMENT BY HCL
This Agreement may be terminated by HCL in the event of a material breach
by Company by providing thirty (30) days' written notice to Company or for a
further reasonable period of time as the parties may agree, in writing, pursuant
to an HCL-approved cure plan. Company warrants that it will diligently pursue
said agreed-upon cure plan. HCL agrees not to unreasonably withhold providing
Company a further reasonable period of time in addition to the thirty (30) day
written notice period to correct said material breaches. Further, this
provision is subject to Section 1.8 and arbitration under Section 20.7.
Material breach includes:
14.1 Any failure by Company to pay HCL which has not been cured within
thirty (30) days of written notice by HCL;
14.2 Company hires HCL employees and fails to pay HCL or HCL India
liquidated damages for each hired employee pursuant to Paragraph 20.8 below; and
14.3 Company's failure to materially support HCL as specified in Sections
1, 2, 3, 4, 5, 6, 7, 8, and 11.
[*] CONFIDENTIAL TREATMENT REQUESTED
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15.0 GENERAL TERMINATION AND REDUCTION IN TEAM SIZE
15.1 Company may provide valid reasons and request HCL to remove certain
engineers or managers from the Offshore Development Team for lack of
qualification, experience or non-performance and replace such engineers or
managers with immediate effect. HCL understands that such measures are
essential for maintaining the quality and schedules of the project and agrees to
replace such engineers and managers as early as possible, but no later than
fifteen (15) days from the date of a written request from the Company was given.
15.2 Company may chose to reduce the number of resources in the Offshore
Development Team by giving HCL thirty (30) days' written notice in the event
-------
that the Company is not able to identify projects to match the profiles of the
engineers in the Team subject to [*] in Section 2.6.
SECTIONS 15.3 AND 15.4 OF THE PRIOR AGREEMENT DATED APRIL 25, 1996, HAVE
BEEN INTENTIONALLY DELETED FROM THIS AGREEMENT.
15.5 Effect of Termination. Upon termination of any project of this
Agreement for any reason in addition to the Company's other remedies, Company
shall be entitled to receive from HCL, and to complete or have completed, any
work in progress on services and deliverables, including any work product
relating thereto. Further, in addition to its other remedies, Company may order
all work under this Agreement and the related projects stopped immediately,
enter upon HCL's premises, and take possession, for use in completing the work
in progress, of all the materials, regardless of the stage of completion, and
complete the work in progress, or have the same completed by others, and Company
will be liable to HCL for payment only for the actual amount of work done under
the Agreement or project until termination and thereafter, if the Company
requests HCL to complete or have completed any work in progress of services and
deliverables, including any work product relating thereto. Company shall pay,
at the rates provided in this Agreement, HCL for work performed by HCL prior to
termination and thereafter if the Company requests HCL to complete or have
completed any work in progress. In no case shall the amount paid by Company
exceed the amount that Company would have been obligated to pay under the
applicable project. Further, this provision does not prejudice either party's
rights to seek arbitration over any and all claims for damages subject to
limitations of liability contained herein.
15.6 No Damages. Neither the Company nor HCL WILL BE LIABLE FOR ANY
DAMAGES OF ANY KIND, WHETHER DIRECT (OTHER THAN AMOUNTS SET FORTH IN PARAGRAPH
15.5), INDIRECT, SPECIAL, INCIDENTAL, OR CONSEQUENTIAL (INCLUDING LOST PROFITS),
REGARDLESS OF THE FORM OF ACTION (WHETHER IN CONTRACT, TORT OR OTHERWISE),
ARISING FROM THIS AGREEMENT OR WORK PERFORMED PURSUANT TO THIS AGREEMENT, OR ANY
PORTION THEREOF, EVEN IF THAT PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. Further, the damages of each party to the other shall be limited to
the total amounts paid and owed under this Agreement.
[*] CONFIDENTIAL TREATMENT REQUESTED
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15.7 Orderly Reintegration Upon Termination. Except as otherwise
provided herein, upon termination for any reason, of a project or this
Agreement, HCL shall forthwith return to Company all associated Work Product in
HCL's possession or control. HCL shall cooperate with Company in the
termination of each project to ensure the orderly, non-disrupted business
continuation of Company, including, at Company's request, bringing outstanding
change proposals to a logical conclusion. Among other things, HCL personnel
will provide technical and operational "ramp-up" user training courses with
regard to any services performed by and software developed by a level sufficient
to allow them to take over the performance of the services, including operation
of the software. To the extent that HCL utilizes any project management tool in
its performance of the services, it will provide the same to Company at no
charge upon termination of this Agreement or a particular project to which such
tool is applicable. HCL does and will grant Company a non-exclusive, world-
wide, perpetual, royalty-free license to use any such management tool solely for
the purpose of completion of the ongoing and uncompleted projects. [*].
Further, if the Company continues to reasonably request HCL to perform
additional services to bring proposals and/or projects to a logical conclusion,
then the Company shall continue to pay HCL for its costs and out-of-pocket
expenses reasonably incurred thereafter.
15.8 Survival. The rights and obligations contained in Paragraphs 9, 15,
16, 17, 18, 19, 20 and 21 shall survive any termination or expiration of this
Agreement or any Project.
16.0 CONFIDENTIALITY AGREEMENT
16.1 Company Confidential Information. "Confidential Information" as used
in this Agreement shall mean any and all technical and non-technical information
including patent, trade secret, and proprietary information, techniques,
sketches, drawings, models, inventions, know-how, processes, apparatus,
equipment, algorithms, software programs, software source documents, and
formulae related to the current, future and proposed products and services of
Company, its parents and affiliates, and includes, without limitation, its
respective information concerning research, experimental work, development,
design details and specifications, engineering, financial information,
procurement requirements, purchasing manufacturing, customer lists, business
forecasts, sales and merchandising and marketing plans and information. HCL
agrees that it will use such Confidential Information only for the purposes of
this Agreement and that it will not disclose or release any such information or
documents to third parties, with the exception of HCL Personnel or approved
subcontractors who require access to such for purposes of carrying out HCL's'
obligations under the Agreement, and who have signed an agreement substantially
similar to the agreement in Exhibit "E" ("Agreement Regarding Company
Confidential Information") which obligates them to maintain the confidentiality
of information belonging to Company. HCL would be using its own methodologies,
tools, algorithms and other technology, resources that it deems fit in the
execution of projects under this agreement. Company agrees that it will use
such Confidential Information only for the purpose of this Agreement and that it
will not disclose ore release any such information or documents to third
parties, with the exception of Company personnel or approved subcontractors who
require access to such information for purposes of carrying out Company's
obligations under the Agreement, and who have signed an agreement substantially
similar to the agreement in
[*] CONFIDENTIAL TREATMENT REQUESTED
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Exhibit "D" ("Agreement Regarding HCL Confidential Information") which obligates
them to maintain the confidentiality of information belonging to HCL. HCL and
Company would promptly provide copies of such executed agreements to each other
upon request. With respect to any such information so accessed or acquired by
HCL from Company, HCL further agrees that: (a) all such information shall be and
shall remain the exclusive property of Company or its parent or affiliates; (b)
HCL shall ensure that its personnel and approved subcontractors comply with the
foregoing restrictions, (c) HCL shall return such information to Company at its
request, and (d) HCL at all times shall maintain appropriate internal policies
and procedures sufficient to satisfy its obligations under this paragraph. In
case of a breach of this confidentiality agreement by either party, the party
wishing to enforce the agreement would institute legal proceedings on the other
party. The confidentiality obligations of Company and HCL personnel and approved
subcontractors shall continue for three (3) years, except with respect to access
by HCL to Company Source Code, in which case the confidentiality obligations
shall continue indefinitely, unless modified in writing by an authorized Company
representative. Further, said Confidential Information provision shall also
apply as to Confidential Information of HCL provided to the Company in
performance of services under this Agreement to an equal extent.
16.2 Exceptions
Notwithstanding the other provisions of this Agreement, nothing received by
HCL or the Company shall be considered to be the Confidential Information of the
Company of HCL if:
a) The information has been published or is otherwise readily available
to the public by means other than the breach of this Agreement.
b) The information has been independently developed by or for HCL or the
Company prior to its first receipt from the other party, as indicated in files
existing at the time of initial disclosure and disclosed to Company or HCL at
that time.
c) The information was disclosed by Company or HCL to a third party
intentionally, without restrictions on disclosure.
16.3 Use of Confidential Information
HCL shall take every action necessary to protect the Confidential
Information of the Company including the following:
a) The building in which HCL keeps Confidential Information shall have
restricted access twenty-four (24) hours a day with access logs maintained and
communicated to Company on a biweekly basis.
b) Access to Confidential Information shall be restricted to persons
authorized to use such information and access logs shall be maintained and
communicated to the Company on a biweekly basis.
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c) HCL shall executed a confidentiality and non-disclosure agreement
with all the members of the Offshore Development Team and with people to whom
such Confidential Information necessarily has to be disclosed. Such agreements
shall be communicated to Company on a biweekly basis.
d) HCL shall not allow access to Confidential Information from a remote
site through telephone or other means of access.
e) HCL shall not assign engineers or managers from the Offshore
Development Team for any other projects during the term of this agreement unless
mutually agreed between Company and HCL.
f) In case of termination of this contract for any reason, [*]. The same
restriction shall be [*].
The Company shall also take reasonable efforts to protect Confidential
Information of HCL as described above.
16.4 Survival of Termination
This Confidentiality Agreement shall survive any termination of this
agreement for a period of three years.
16.5 Injunctive Relief for Breach
HCL acknowledges and agrees that the obligations and promises of HCL under
this Agreement are of a unique, intellectual character that gives them
particular value. HCL agrees and acknowledges that the breach of any of the
promises or agreements contained in this Agreement will result in irreparable
and continuing damage to Company for which there will be no adequate remedy at
law and, in the event of such a breach, Company will be entitled to injunctive
relief as may be proper, including monetary damages if appropriate as limited
under the terms of this agreement.
17.0 OWNERSHIP OF WORK PRODUCT AND PROPRIETARY RIGHTS
17.1 Ownership and Assignment. The parties agree that Company shall be
the rightful owner of all Deliverables, all work product, and all copyrights,
trade secrets, patents and any other intellectual property rights in the
deliverables and work product and otherwise created in connection with HCL's
provision of services to Company. Without limiting the foregoing, HCL agrees
that all deliverables and work product shall be considered works made for hire
(to the extent legally permissible) and shall remain the exclusive property of
Company, and HCL shall have no ownership interest therein. To the extent any of
these are not works made for hire or Company is not otherwise considered the
owner thereof and all rights therein, HCL agrees to and does hereby transfer and
assign to Company all right, title and interest in any deliverable, work
product, any and all intellectual property rights (including patent, copyright,
and trade secrets)
[*] CONFIDENTIAL TREATMENT REQUESTED
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related thereto and any and all intellectual property rights otherwise created
in connection with HCL's provision of services to Company. HCL shall have no
right to use any of the foregoing for purposes unrelated to this Agreement or a
related project, except as otherwise agreed to in writing by Company. To the
extent that HCL owns patent applications, patents or other rights developed
prior to but utilized in conjunction with the services, HCL hereby grants
Company and is subsidiaries and affiliates a royalty-free, irrevocable, world-
wide, non-exclusive license, with the right to sublicense, to make, have made,
sell, use and disclose the subject matter thereof and to import, publicly
perform, publicly display and develop derivative works thereof and to offer for
sale and distribution. "Deliverables" shall mean any and all materials,
information and/or documents delivered by HCL to Company under this Agreement.
"Work Product" shall mean any and all software, code, inventions, ideas,
processes, designs, formulae, manufacturing techniques, models, drawings, art
work, documents, know-how, trade secrets, trademarks, copyrights, patents, mask
works, and any other proprietary information created by or on behalf of HCL or
HCL India under this Agreement or the written subcontract between HCL and HCL
India.
17.2 Cooperation. HCL will assist Company in every reasonable way, for
Company's benefit, to secure, maintain and defend copyrights, patents, mask work
registrations, and other intellectual property rights in any countries.
Promptly upon conception of any patentable or non-patentable invention, mask
work, discovery, or idea, HCL agrees to disclose the same to Company, and
Company shall have full power and authority to file and prosecute patent
applications thereon and maintain patents thereon. Upon Company's request, HCL
agrees to execute documents, including but not limited to copyright assignment
documents, and to perform such acts as may be deemed by Company reasonably
necessary or advisable to (i) confirm in Company all right, title and interest
in and to the Deliverables, the Work Product, any other intellectual property
interests developed in connection with the services, and any portion or modified
portion of the foregoing, including all patents and copyrights thereon and
applications therefor (the foregoing to include but not be limited to conveying
to Company in a recordable form, as from time to time requested by Company, all
exclusive right, title and interest in any such intellectual property rights);
and to (ii) assist Company in procuring, maintaining, and enforcing such
intellectual property rights, including defending patents, petty patents,
copyrights and other applicable statutory protections as may be applicable. HCL
further agrees to enter into any reasonable arrangements with personnel who
perform services under this Agreement and related projects and to take any
reasonable measures to make effective such ownership by Company. Company would
compensate HCL for its reasonable costs and expenses in assisting Company in
this task.
17.3 HCL agrees not to utilize any third-party software in performance of
this Agreement without Company's consent in writing.
18.0 PROPRIETARY RIGHTS AND OTHER WARRANTIES AND INFRINGEMENT
18.1 Warranties. HCL warrants (i) that HCL has entered into a written
subcontract with HCL India binding HCL India to the terms, conditions and
obligations of HCL contained in this Agreement, (ii) that the written
subcontract between HCL and HCL India provides that
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Company is a third-party beneficiary of such subcontract, and (iii) that in the
written subcontract between HCL and HCL India, HCL India has agreed that Company
may enforce the subcontract by pursuing injunctive relief and/or arbitration
pursuant to Section 20.7, including without limitation, joining HCL India in any
arbitration proceeding involving HCL. HCL further warrants that to its knowledge
it has sufficient rights in the Deliverables, the Work Product, and any other
rights related to the services to make the assignments, grant the licenses and
otherwise perform its obligations under this Agreement. Without limiting the
foregoing, HCL represents and warrants that it has obtained, and as to the
future materials will obtain, agreements with its personnel sufficient to allow
it to assign and license rights as set forth in this Agreement to Company, and
to otherwise perform its obligations under this Agreement. HCL further warrants
that Company will not be required to license any third-party software, to permit
Company to use and obtain the full benefit of the Deliverables, or otherwise.
HCL further warrants that all materials produced hereunder will be the original
development of HCL, except as specified in a project. HCL further warrants that
in performing services under this Agreement, it will not knowingly use or create
any process, program, design, device, or material that infringes any foreign or
United States patent, copyright, trade secret or other intellectual property or
contract right.
18.2 Remedies. If Company's use of the Deliverables and/or Work Product
shall be prevented by injunction or court order because of any alleged
infringement of third-party rights therein, HCL shall, at no expense, loss, or
damage to Company perform one of the following as selected by HCL: (i) replace
such Deliverables and/or Work Product with equally suitable software or other
material free of infringement, (ii) modify such Deliverables and/or Work Product
so that it will be free of infringement and no less capable than the
Deliverables and/or Work Product originally furnished, or (iii) by license or
other release from claim of infringement, procure for Company's benefit the
right to use the relevant portions of the Deliverables and/or Work Product and
to make, have made, sell, import, publicly perform, publicly display and develop
derivative works thereof, and to sublicense such rights. If HCL demonstrates to
Company its inability to achieve any of the foregoing, HCL shall accept the
return of the Deliverables and/or Work Product from Company, and refund to
Company all amounts paid therefor.
19.0 INDEMNIFICATION
19.1 Company shall give HCL prompt written notice of the service on
Company of process for any action or proceeding based on any claim or allegation
against Company, its officers, directors, employees, representatives,
associates, agents, successors and assigns, that the Deliverables and/or Work
Product or any portion thereof infringes on any proprietary right, patent or
copyright.
19.2 Upon written notice of any such infringement claim, [*]. [*]. [*].
Irrespective of this provision, if Company's use of the Deliverables and/or Work
Product shall be prevented by injunction or court order because of any alleged
infringement of third-party rights therein, then Section 18.2 shall apply.
Further, this provision does not prejudice either party's rights to seek
arbitration over any and all claims arising from this Agreement.
[*] CONFIDENTIAL TREATMENT REQUESTED
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19.3 [*]
19.4 In any action or proceeding in which the Deliverables and/or Work
Product or any product of such Deliverables and/or Work Product is held to
constitute an infringement (only upon such a ruling or order becoming a final,
no-appealable judgment), [*]: (i) replace such Deliverables and/or Work Product
with equally suitable software or other material free of infringement, (ii)
modify such Deliverables and/or Work Product so that it will be free of
infringement and no less capable than the Deliverables and/or Work Product
originally furnished, or (iii) by license or other release from claim of
infringement, procure for Company's benefit the right to use the relevant
portions of the Deliverables and/or Work Product and to make, have made, sell,
import, publicly perform, publicly display and develop derivative works there
of, and to sublicense such rights. [*].
20.0 GENERAL PROVISIONS
20.1 Notwithstanding the terms of this Agreement, neither party shall be
liable to the other party for any failure to perform or delay in the performance
of that party's obligations hereunder, when such failure to perform or delay in
the performance is caused by an event of Force Majeure, provided however the
party whose performance is prevented or delayed by such an event of Force
Majeure shall give prompt notice to the other party about such an event.
For the purpose of this agreement, the term Force Majeure shall include
war, rebellion, civil disturbance, earthquake, fire, flood, labor unrests, acts
of Government, acts of God, acts of public Enemy and in general, any cause or
conditions beyond the control of the parties.
No Force Majeure shall affect the Company's obligation to pay HCL for the
services rendered.
20.2 Each party warrants that it has full power to enter into and perform
this Agreement and the related projects, and the person signing this Agreement
and the related projects on either party's behalf has been duly authorized and
empowered to enter in such agreement. HCL represents and warrants to Company
that as of the Effective Date of this Agreement: (a) it is a corporation duly
organized, validly existing and in good standing under the laws of the country
of India, (b) it has all requisite power and authority to enter into and perform
its obligations under this Agreement, and (c) there are no actions, suits or
proceedings pending, or to the best of its knowledge threatened, which may have
a material adverse effect on its ability to fulfill its obligations under this
Agreement or on its operations, business properties, assets or condition. Each
party further acknowledges that it has read this Agreement, understands it and
agrees to be bound by it. Each party acknowledges that such party has not been
induced to enter into such agreements by any representations or statements, oral
or written, not expressly contained herein or expressly incorporated by
reference.
20.3 Any notice required for or permitted by this Agreement shall be in
writing and shall be delivered as follows with notice deemed given as indicated:
(i) by personal delivery
[*] CONFIDENTIAL TREATMENT REQUESTED
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when delivered personally, (ii) by overnight courier upon written verification
of receipt, (iii) by telecopy or facsimile transmission when confirmed by
telecopier or facsimile transmission, or (iv) by certified or registered mail,
return receipt requested, upon verification of receipt. All notices must be sent
to the addresses first described above or to such other address that the
receiving party may have provided for the purpose of notice in accordance with
this Paragraph.
20.4 HCL may not assign, subcontract or otherwise transfer any of its
rights or obligations under this Agreement or any project without Company's
prior written consent which will not be unreasonably withheld.
20.5 HCL may not disclose the contents of this Agreement or any project to
third parties without Company's prior written approval. HCL may not use
Company's name or trademarks in any written materials unless Company has pre-
approved such written materials to verify that they comply with Company's
trademark usage and non-endorsement policies.
20.6 Any work performed by HCL in connection with this Agreement shall be
performed by HCL as an independent contractor, and not as an employee, agent,
joint venture or partner of Company. All persons furnished by HCL shall be
considered solely HCL's employees or agents. HCL, at all times, shall maintain
such supervision and control over its employees and agents as is necessary to
preserve its independent contractor status.
20.7 Arbitration. The parties will attempt in good faith to resolve any
controversy or claim arising out of or relating to this Agreement promptly by
negotiations between executives of the parties. Any dispute arising out of or
related to this Agreement not resolved by negotiation shall be resolved by
binding arbitration under the rules of the Judicial Arbitration and Mediation
Services/Endispute in San Jose, California (hereinafter "JAMS"). A single
arbitrator shall be selected accordingly to JAMS rules within thirty (30) days
of submission of the dispute to JAMS. The arbitrator shall conduct the
arbitration in accordance with the California Evidence Code. The arbitrator
shall have the power to enter any award that could be entered by a Judge of the
Superior Court of the State of California sitting without a jury, and only such
power, except that the arbitrator shall not have the power to award punitive
damages, treble damages, even if permitted under the laws of the State of
California or any other applicable law. The arbitrator shall award the
prevailing party its costs and its reasonable attorneys' fees, and the losing
party shall bear the entire cost of the arbitration, including the arbitrator's
fee. The arbitration award may be enforced in any court having jurisdiction
over the parties and the subject matter of the arbitration. Notwithstanding the
foregoing, the parties irrevocably submit to the non-exclusive jurisdiction of
the Superior Court of the State of California, Santa Clara County, and the
United States District Court for the Northern District of California, San Jose
Branch, in any action to enforce an arbitration award. HCL consents to the
joinder of HCL India in any arbitration when appropriate to obtain efficient and
consistent resolution of disputes.
The procedures specified in this Section and Section 1.8 shall be the sole
and exclusive procedures for the resolution of disputes between the parties
arising out of or relating to this Agreement; provided, however, that a party
may seek a preliminary injunction or other preliminary judicial relief if in its
judgment such action is necessary to avoid irreparable damage.
-17-
<PAGE>
20.8 Company shall not, during the term of this Agreement and for [*]
([*]) months thereafter, hire any HCL or HCL India employee(s) unless the
Company first pays HCL liquidated damages in the amount of [*] for each HCL or
HCL India employee who is hired by the Company. The parties acknowledge that HCL
and HCL India has spent considerable time and expense in searching, hiring and
training employees of HCL and HCL India and that it would be impossible to
precisely determine the amount of damages that would be suffered by HCL or HCL
India for the Company's hiring away of said employees, and therefore the parties
agree that the sum of [*] is reasonable and appropriate as a liquidated damage
payment for each hired employee.
21.0 ENFORCEMENT OF THIS AGREEMENT
21.1 This Agreement will be governed and construed in accordance with the
laws of the United States of America and the State of California without regard
to conflict of law principles. The parties expressly acknowledge and agree that
the United Nations Conventions on Contracts for the International Sale of Goods
is specifically excluded from application to the Agreement.
21.2 The prevailing party in any legal proceeding brought by one party
against the other party and arising out of or in connection with this Agreement
shall be entitled to recover its legal expenses including its court costs and
reasonable attorneys' fees.
21.3 The failure of either party to require performance by the other party
of any provision shall not affect the full right to require such performance at
any time thereafter, nor shall the waiver by either party of a breach of any
provision hereof be taken or held to be a waiver of the provision itself.
21.4 In the event that any provision of this Agreement or any related
Project shall be unenforceable or invalid under any applicable law or be so held
by applicable court decision, such unenforceability or invalidity shall not
render this Agreement or any related Project unenforceable or invalid as a
whole. This Agreement shall remain in full force and effect and there shall be
substituted for such illegal or unenforceable provision a like but legal an
enforceable provision which most nearly effects the intention of the parties. In
the event a like but legal and enforceable provision shall be deemed to be
deleted, the remaining provisions shall continue in full force and effect,
provided that the performance, rights and obligations of the parties under the
Agreement are not materially adversely affected by such a deletion.
[*] CONFIDENTIAL TREATMENT REQUESTED
-18-
<PAGE>
21.5 Both parties have participated in the negotiations for preparation of
this Agreement. In no event, therefore, shall this Agreement be construed more
or less stringently against any party.
CONSILIUM, INC. HCL AMERICA, INC.
By: /s/ L.R. Hootnick By: /s/ Arjun Malhotra
--------------------------- ---------------------------
Name: L.R. Hootnick Name: Arjun Malhotra
--------------------------- ---------------------------
Title: Pres./CEO Title: Chairman
--------------------------- ---------------------------
Date: 5/21/97 Date: 5/21/97
--------------------------- ---------------------------
-19-
<PAGE>
E X H I B I T A
----------------
[*]
[*] CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
E X H I B I T B
----------------
[Intentionally Omitted by the Parties]
<PAGE>
EXHIBIT C Page 1 of 2
WorkStream DFS Three Year CDCM
[*]
- ----------------------------------------------------------------
WORKSTREAM DFS PROJECTS [*]
- ----------------------------------------------------------------
. 1997 [*]
[*]
- ----------------------------------------------------------------
. 1998 [*]
[*]
- ----------------------------------------------------------------
. 1999 [*]
[*]
- ----------------------------------------------------------------
[*] CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
EXHIBIT C Page 2 of 2
FlowStream Three Year CDCM
[*]
- ----------------------------------------------------------------
FLOWSTREAM DFS PROJECTS [*]
- ----------------------------------------------------------------
. 1997 [*]
[*]
- ----------------------------------------------------------------
. 1998 [*]
[*]
- ----------------------------------------------------------------
. 1999 [*]
[*]
- ----------------------------------------------------------------
[*] CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
EXHIBIT D
---------
AGREEMENT REGARDING HCL CONFIDENTIAL INFORMATION
1. Company is and may in the future be in possession of certain Confidential
Information of HCL which Company has received pursuant to an Offshore
Development/Services Agreement between HCL and Company dated
_____________________ (the "Agreement").
2. To further the purposes of the Agreement and in consideration of the
disclosure to Recipient of "Confidential Information" of HCL (defined below),
Recipient agrees to comply with the terms hereof.
3. "Confidential Information" as used in this Agreement shall mean any and all
technical and non-technical information including patent, trade secret, and
proprietary information, techniques, sketches, drawings, models, inventions,
know-how, processes, apparatus, equipment, algorithms, software programs,
software source documents, and formulae related to the current, future and
proposed products and services of HCL, or its affiliates, and includes,
without limitation, its respective information concerning research,
experimental work, development, design details and specifications,
engineering, financial information, procurement requirements, purchasing
manufacturing, customer lists, business forecasts, sales and merchandising
and marketing plans and information.
4. Recipient agrees not to use the Confidential Information for any purpose
except for the specific purposes which HCL or Company authorize in writing.
Recipient agrees not to disclose the Confidential Information to any person
at any time except to employees of HCL or Company and to other employees or
subcontractors of HCL or Company whoa re parties to an agreement in this
form. Recipient agrees to use his or her best efforts to prevent any
unauthorized use or disclosure of the Confidential Information, and to
promptly notify HCL or Company of any such unauthorized use of which
Recipient learns.
5. All materials, including without limitation, Confidential Information and
other programs, recorded information, documents, drawings, models, apparatus,
sketches, designs, and lists furnished to Recipient by HCL or Company are the
property of HCL or Company, as applicable, will remain the property of HCL or
Company, as applicable, and will be returned to the providing party at the
providing party's request, together with any copies or modifications thereof.
6. Recipient acknowledges that HCL is a third-party beneficiary of this
Agreement, and that unauthorized use or disclosure of the Confidential
Information will result in irreparable and continuing damage to HCL for which
there will be no adequate remedy at law. If Recipient fails to comply with
the terms of this Agreement, HCL shall be entitled to equitable relief to
protect its interests, including but not limited to injunctive relief, in
addition to any other rights and remedies provided by law.
1
<PAGE>
7. This Agreement will be governed in all respects by the laws of the State of
California as such laws are applied to agreements entered into and to be
performed entirely within California between California residents. If any
provision of this Agreement is held to be invalid, the parties agree that
such invalidity will not affect the validity of the remaining portions of
this Agreement, and agree to substitute of the invalid provision. Recipient
will not assign or transfer any rights or obligations under this Agreement
without the prior written consent of HCL or Company. This Agreement contains
the entire understanding of the parties regarding the matters set forth
herein. This Agreement may be modified only by a writing signed by all
parties. The waiver by HCL or Company of a breach of any provision of this
Agreement by Recipient will not operate or be interpreted as a waiver of any
other or subsequent reach by Recipient.
8. The effective date of this Agreement is __________. Recipients' obligations
under this Agreement shall continue indefinitely unless modified in writing
by an authorized representative of HCL.
Recipient: ______________ HCL: ______________
Signature: ______________ Signature: ______________
Printed Name: ______________ Printed Name: ______________
Title: ______________
Address: ______________ Address: ______________
CONSILIUM, INC. HCL AMERICA, INC.
By: ______________ By: ______________
Name: ______________ Name: ______________
Title: ______________ Title: ______________
Date: ______________ Date: ______________
2
<PAGE>
EXHIBIT E
---------
AGREEMENT REGARDING COMPANY CONFIDENTIAL INFORMATION
1. HCL is and may in the future be in possession of certain Confidential
Information of Company which HCL has received pursuant to an Offshore
Development/Services Agreement between HCL and Company dated ________________
(the "Agreement").
2. To further the purposes of the Agreement and in consideration of the
disclosure to Recipient of "Confidential Information" of Company (defined
below), Recipient agrees to comply with the terms hereof.
3. "Confidential Information" as used in this Agreement shall mean any and all
technical and non-technical information including patent, trade secret, and
proprietary information, techniques, sketches, drawings, models, inventions,
know-how, processes, apparatus, equipment, algorithms, software programs,
software source documents, and formulae related to the current, future and
proposed products and services of Company, or its affiliates, and includes,
without limitation, its respective information concerning research,
experimental work, development, design details and specifications,
engineering, financial information, procurement requirements, purchasing
manufacturing, customer lists, business forecasts, sales and merchandising
and marketing plans and information.
4. Recipient agrees not to use the Confidential Information for any purpose
except for the specific purposes which Company or HCL authorize in writing.
Recipient agrees not to disclose the Confidential Information to any person
at any time except to employees of Company or HCL and to other employees or
subcontractors of Company or HCL whoa re parties to an agreement in this
form. Recipient agrees to use his or her best efforts to prevent any
unauthorized use or disclosure of the Confidential Information, and to
promptly notify Company or HCL of any such unauthorized use of which
Recipient learns.
5. All materials, including without limitation, Confidential Information and
other programs, recorded information, documents, drawings, models, apparatus,
sketches, designs, and lists furnished to Recipient by Company or HCL are the
property of Company or HCL, as applicable, will remain the property of
Company or HCL, as applicable, and will be returned to the providing party at
the providing party's request, together with any copies or modifications
thereof.
6. Recipient acknowledges that Company is a third-party beneficiary of this
Agreement and that unauthorized use or disclosure of the Confidential
Information will result in irreparable and continuing damage to Company for
which there will be no adequate remedy at law. If Recipient fails to comply
with the terms of this Agreement, Company shall be entitled to equitable
relief to protect its interests, including but not limited to injunctive
relief, in addition to any other rights and remedies provided by law.
1
<PAGE>
7. This Agreement will be governed in all respects by the laws of the State of
California as such laws are applied to agreements entered into and to be
performed entirely within California between California residents. If any
provision of this Agreement is held to be invalid, the parties agree that
such invalidity will not affect the validity of the remaining portions of
this agreement, and agree to substitute of the invalid provision. Recipient
will not assign or transfer any rights or obligations under this Agreement
without the prior written consent of Company or HCL. This Agreement contains
the entire understanding of the parties regarding the matters set forth
herein. This Agreement may be modified only by a writing signed by all
parties. The waiver by Company or HCL of a breach of any provision of this
Agreement by Recipient will not operate or be interpreted as a waiver of any
other or subsequent breach by Recipient.
8. The effective date of this Agreement is ____________. Recipients'
obligations under this Agreement shall continue indefinitely unless modified
in writing by an authorized representative of Company.
Recipient: ______________ HCL: ______________
Signature: ______________ Signature: ______________
Printed Name: ______________ Printed Name: ______________
Title: ______________
Address: ______________ Address: ______________
CONSILIUM, INC. HCL AMERICA, INC.
By: ______________ By: ______________
Name: ______________ Name: ______________
Title: ______________ Title: ______________
Date: ______________ Date: ______________
2
<PAGE>
EXHIBIT F
COMPANY COMPETITORS
[*]
[*] CONFIDENTIAL TREATMENT REQUESTED
1
