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SECURITIES AND EXCHANGE COMMISSION
Washington, D.C. 20549-1004
FORM 10-Q/A
AMENDMENT NO. 1 TO FORM 10-Q
QUARTERLY REPORT PURSUANT TO SECTION 13 OR 15(d)
OF THE SECURITIES EXCHANGE ACT OF 1934
FOR THE QUARTERLY PERIOD ENDED DECEMBER 31, 1996
COMMISSION FILE NUMBER 0-020992
MATHSOFT, INC.
(Exact name of registrant as specified in its charter)
MASSACHUSETTS 04-2842217
(State or other jurisdiction (I.R.S. Employer Identification Number)
of incorporation or organization)
101 MAIN STREET
CAMBRIDGE, MASSACHUSETTS 02142-1521
(Address, including zip code, of registrant's principal executive offices)
(617) 577-1017
(Registrant's telephone number including area code)
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 AT LEAST THE PAST 90 DAYS.
YES X NO
--- ---
AS OF FEBRUARY 5, 1997 THERE WERE 8,978,097 SHARES OF COMMON STOCK, $.01 PAR
VALUE PER SHARE OUTSTANDING.
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This Amendment No. 1 on Form 10-Q/A to the Quarterly Report on Form 10-Q, dated
April 16, 1997 (the "Report"), is being filed to refile the Software License
Agreement dated February 18, 1996 between the Company and Lucent Technologies
Inc. included as Exhibit 10.1 to the Report in accordance with the Company's
amended request for confidential treatment of certain portions of the Software
License Agreement dated February 18, 1996 between the Company and Lucent
Technologies Inc. Such Exhibit 10.1 is hereby amended and restated in its
entirety. The other exhibits to the Report are not being amended and have been
previously filed with the Securities and Exchange Commission.
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EXHIBIT INDEX
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The following exhibits are, as indicated below, either filed herewith or
have heretofore been filed with the Securities and Exchange Commission and are
referred to and incorporated by reference to such filings.
Exhibit
Number Description
------ -----------
10.1# Software License Agreement dated February 18, 1996 between
the Company and Lucent Technologies, Inc.*
27.1(beta) Financial Data Schedule
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# Filed herewith.
* Confidential Treatment granted as to certain portions.
(beta) Previously filed with the Company's Quarterly Report on Form 10-Q for the
fiscal year quarter December 31, 1996.
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MATHSOFT, INC. AND SUBSIDIARIES
Signatures
Pursuant to the requirements of the Securities Exchange Act of 1934, the
registrant has duly caused this report to be signed on its behalf by the
undersigned thereunto duly authorized.
MATHSOFT, INC.
Dated: April 16, 1997 By: /s/ Charles J. Digate
---------------------
Charles J. Digate
Chairman, President Chief Executive
Officer
(Principal Executive Officer)
Dated: April 16, 1997 By: /s/ Robert P. Orlando
---------------------
Robert P. Orlando
Vice President Finance and
Administration, Chief Financial
Officer, Treasurer and Clerk
(Principal Financial and Accounting
Officer)
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EXHIBIT 10.1
------------
[ ] indicates material that has been omitted and for which confidential
treatment has been requested. All such omitted material has been filed with the
Commission pursuant to Rule 24b-2
SOFTWARE LICENSE AGREEMENT
BETWEEN
LUCENT TECHNOLOGIES INC.
AND
STATISTICAL SCIENCES, INC.
EFFECTIVE AS OF FEBRUARY 18, 1996
RELATING TO LUCENT'S S SOFTWARE
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SOFTWARE LICENSE AGREEMENT
TABLE OF CONTENTS
ARTICLE I - STATUS OF PRIOR AGREEMENTS
1.01 Prior Agreements
1.02 Retained Rights and Licenses and Survival of Obligations
ARTICLE II - RIGHT TO USE SOFTWARE PRODUCT
2.01 Grant of Right
2.02 Furnishing of SOFTWARE PRODUCT
2.03 Ownership
2.04 Non-Transmission
2.05 U.S. Export Control
2.06 Maintenance
2.07 Contractors
ARTICLE III - SUBLICENSING RIGHTS
3.01 Grant of Rights
3.02 Enforcement
ARTICLE IV - SOLE LICENSEE CONDITIONS
4.01 Development of CUSTOMER SOFTWARE
4.02 Termination of Certain Rights and Licenses
ARTICLE V - FEES
5.01 Yearly Fees
5.02 Sublicensing Fees
5.03 Accrual
5.04 Records
5.05 Payments
5.08 Taxes
ARTICLE VI - TERM OF THE AGREEMENT AND TERMINATION
6.01 Term
6.02 Termination for Breach.
6.03 Survival
ARTICLE VII - MISCELLANEOUS PROVISIONS
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7.01 Agreement Prevails
7.02 Disclaimer
7.03 Nothing Construed
7.04 Confidentiality
7.05 Publicity
7.06 Nonassignability
7.07 Addresses
7.08 Integration
7.09 Choice of Law
7.10 SUBSIDIARIES
7.11 Dispute Resolution
7.12 Additional Agreements
APPENDIX A - DEFINITIONS
APPENDIX B - DELIVERABLES COMPRISING NEW SOFTWARE PRODUCT
APPENDIX C - YEARLY FEE SCHEDULE
APPENDIX D - SUBLICENSING FEE SCHEDULE
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SOFTWARE LICENSE AGREEMENT
This Software License Agreement ("Agreement") is effective as of February
18, 1996. The Parties to this Agreement, LUCENT TECHNOLOGIES INC., a Delaware
corporation ("LUCENT"), having an office at 600 Mountain Avenue, Murray Hill,
New Jersey 07974, and STATISTICAL SCIENCES, INC., a Massachusetts corporation
("LICENSEE"), having an office at 1700 Westlake Avenue North, Suite 500,
Seattle, Washington 98107, agree as follows.(1)
ARTICLE I
STATUS OF PRIOR AGREEMENTS
1.01 PRIOR AGREEMENTS
LUCENT, as successor to American Telephone and Telegraph Company, and
LICENSEE are parties to PRIOR LICENSE AGREEMENTS.
1.02 RETAINED RIGHTS AND LICENSES AND SURVIVAL OF OBLIGATIONS
As of the effective date hereof, all licenses, rights and obligations
under PRIOR LICENSE AGREEMENTS are terminated except: (i) licenses, rights and
obligations with respect to each product made, imported, sold, leased or put
into use under PRIOR LICENSE AGREEMENTS prior to the effective date of this
Agreement, and (ii) those obligations which, either explicitly or by their
nature, would survive termination of PRIOR LICENSE AGREEMENTS including, but not
limited to, confidentiality obligations and obligations to pay fees and
royalties due under such PRIOR LICENSE AGREEMENTS.
ARTICLE II
RIGHT TO USE SOFTWARE PRODUCT
2.01 GRANT OF RIGHT
(a) LUCENT, at the request of LICENSEE, grants to LICENSEE, during the
term of this Agreement as set forth in Section 6.01, a [ ] and [ ] right
to [ ] SOFTWARE PRODUCT, subject to Section 2.05, [ ] for LICENSEE's [
]. Such right to use includes the right to
[ ] SOFTWARE PRODUCT and to [ ],
provided that any such [ ] or [ ] that contains any part of
SOFTWARE PRODUCT is treated hereunder the same as SOFTWARE PRODUCT. During the
SOLE LICENSEE PERIOD, LUCENT agrees not to grant to any other party, except
SUBSIDIARIES of LUCENT and except as otherwise expressly provided in this
Agreement, rights to [ ] SOFTWARE PRODUCT or to [ ] SOFTWARE PRODUCT
and [ ]. LUCENT claims no ownership interest in any portion of
a [ ] or [ ] that is [ ].
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(1) Terms in capital letters defined in the Definitions Appendix shall have the
meanings specified therein.
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(b) LUCENT further grants to LICENSEE, during the term of this Agreement
as set forth in Section 6.01, [ ] and [ ]
right to [ ] and [ ] copies of CUSTOMER SOFTWARE under the
terms and conditions set forth in Article III herein.
(c) LICENSEE may make those copies of SOFTWARE PRODUCT necessary to the
use by LICENSEE for which rights are granted hereunder, provided that each such
copy contains any copyright or proprietary notice appearing on or in SOFTWARE
PRODUCT being copied.
(d) LICENSEE agrees that it will not use or copy SOFTWARE PRODUCT except
as authorized herein.
(e) Except as expressly provided in this Agreement, no right is granted
for the use of SOFTWARE PRODUCT directly for any third person, or for any use by
any third person of SOFTWARE PRODUCT. By way of example, but not of limitation,
use of SOFTWARE PRODUCT in a [ ] or a [ ] is permitted
only pursuant to a specific, separate provision. Upon request by LICENSEE,
LUCENT will enter into negotiations with LICENSEE for an agreement, under
reasonable terms and conditions, granting rights under such a specific,
separate provision.
2.02 FURNISHING OF SOFTWARE PRODUCT
Subject to receipt by LUCENT of the first yearly fee as specified in
Section 5.01, within a reasonable time after such receipt, LUCENT shall furnish
the NEW SOFTWARE PRODUCT portion of SOFTWARE PRODUCT to LICENSEE in the form
specified in APPENDIX B - DELIVERABLES COMPRISING NEW SOFTWARE PRODUCT, attached
hereto. LICENSEE acknowledges possession of PRIOR SOFTWARE PRODUCT delivered to
LICENSEE by LUCENT. LUCENT agrees to consider requests by LICENSEE to furnish
additional source code and documentation relating to S. Any such furnished
additional source code and documentation shall be considered and treated as part
of NEW SOFTWARE PRODUCT.
2.03 OWNERSHIP
No ownership interest in SOFTWARE PRODUCT, or any portion thereof, is
transferred to LICENSEE hereunder. Nothing herein requires LICENSEE to furnish
CUSTOMER SOFTWARE or ADAPTATIONS to LUCENT.
2.04 NON-TRANSMISSION
LICENSEE agrees that it will not, without the prior written consent of
LUCENT, transmit, directly or indirectly, SOFTWARE PRODUCT to any country
outside of the United States.
2.05 U.S. EXPORT CONTROL
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(a) LICENSEE hereby assures LUCENT that it does not intend to and
will not knowingly, without the prior written consent, if required, of the
Bureau of Export Administration of the U.S. Department of Commerce,
Washington, D.C. 20230, United States of America, transmit directly or
indirectly:
(i) CUSTOMER SOFTWARE; or
(ii) any immediate product (including processes and services)
produced directly by the use of SOFTWARE PRODUCT or
CUSTOMER SOFTWARE; or
(iii) any commodity produced by such immediate product if the
immediate product of SOFTWARE PRODUCT or CUSTOMER SOFTWARE is
a plant capable of producing a commodity or is a major
component of such plant;
to (1) Haiti, Iran, Iraq, the People's Republic of China, Syria, those
areas of the Republic of Bosnia and Herzegovina that continue under the control
of Bosnian-Serb military forces, or to any Group Q, S, Y or Z country specified
in Supplement No. 1 to Part 770 of the Export Administration Regulations issued
by the U.S. Department of Commerce or (2) any national or resident of the
foregoing countries.
(b) If the immediate product of SOFTWARE PRODUCT or CUSTOMER SOFTWARE is a
plant or a major component of a plant, LICENSEE hereby assures LUCENT that any
and all requirements of the Export Administration Regulations (including
obtaining necessary assurances or licenses) will be satisfied with respect to
any controlled commodity produced by such plant.
2.06 MAINTENANCE
During the term of this Agreement and following delivery of SOFTWARE
PRODUCT to LICENSEE, LUCENT may furnish, at its discretion, updates to SOFTWARE
PRODUCT. Such updates may include minor enhancements and/or revisions to correct
known problems. Appropriate documentation will be included with such updates.
One copy of each update will be furnished to LICENSEE. Such updates shall be
considered to be part of NEW SOFTWARE PRODUCT.
2.07 CONTRACTORS
(a) LICENSEE may permit access to SOFTWARE PRODUCT by its contractors and
may furnish and allow use of SOFTWARE PRODUCT by its contractors provided such
access, furnishing and use is exclusively for LICENSEE in connection with work
called for in written agreements between LICENSEE and such contractors in
accordance with Section 2.07(f) of this Agreement.
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(b) Any claim, demand or right of action arising on behalf of a contractor
from the furnishing to it or use by it of SOFTWARE PRODUCT shall be solely
against LICENSEE.
(c) Contractors shall agree to the same responsibilities and obligations
and other restrictions pertaining to the use of SOFTWARE PRODUCT as those
undertaken by LICENSEE under this Agreement.
(d) When a contractor's work for LICENSEE is completed, all copies of
SOFTWARE PRODUCT furnished to such contractor or made by such contractor and all
copies of any modifications or derivative works made by such contractor based on
SOFTWARE PRODUCT shall be returned to LICENSEE or destroyed, including any
copies stored in any computer memory or storage medium.
(e) A contractor may not acquire any ownership interest in any
modification or ADAPTATION prepared by such contractor based on or using
SOFTWARE PRODUCT subject to this Agreement unless such contractor also becomes a
licensee of LUCENT for SOFTWARE PRODUCT.
(f) LICENSEE and any such contractor shall enter into a written agreement
before or at the time of permitting access to, allowing the use of or furnishing
of SOFTWARE PRODUCT by such contractor. Such written agreement shall be
consistent with the requirements of this Section 2.07. Copies of such agreements
shall be provided to LUCENT on request; however, portions of such agreements not
required by this Section 2.07 maybe deleted from such copies.
ARTICLE III
SUBLICENSING RIGHTS
3.01 GRANT OF RIGHTS
(a) LUCENT, subject to receipt by LUCENT of the fees specified in Sections
5.01 and 5.02, grants to LICENSEE, during the term of this Agreement as set
forth in Section 6.01, [ ] and [ ] rights:
(i) To [ ] CUSTOMER SOFTWARE, [ ]
of CUSTOMER SOFTWARE and [ ]
or [ ], such copies
to customers anywhere in the world (subject to LICENSEE
satisfying applicable U.S. Government and foreign
government export requirements) for use on customers' CPUs
[ ] for such customers' [ ],
provided that the entity (LICENSEE or DISTRIBUTOR) obtains
agreement, either in writing or via a shrink wrap agreement,
with such a customer, before or at the time of furnishing each
copy of CUSTOMER SOFTWARE, that:
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(1) only a [ ], [ ]
and [ ] to [ ]
such copy of CUSTOMER SOFTWARE is granted to such
customer;
(2) no ownership interest in CUSTOMER SOFTWARE is
transferred to such customer;
(3) such customer will not copy CUSTOMER SOFTWARE except as
necessary to use such CUSTOMER SOFTWARE for backup and
archive purposes in connection with such use;
(4) if a customer's right-to-use is terminated for any
reason, such customer will either destroy or return all
copies of CUSTOMER SOFTWARE in its possession;
(5) such customer will not transfer CUSTOMER SOFTWARE to
any other party except as authorized by LICENSEE;
(6) such customer will not export or re-export CUSTOMER
SOFTWARE without the appropriate United States and/or
foreign government licenses;
(7) such customer will not reverse compile or disassemble
CUSTOMER SOFTWARE; and
(8) LUCENT does not warrant CUSTOMER SOFTWARE, does not
assume any liability regarding CUSTOMER SOFTWARE and
does not undertake to furnish any support or information
regarding CUSTOMER SOFTWARE;
(ii) to donate, free of any payment of fee to LUCENT, CUSTOMER
SOFTWARE to not-for-profit institutions upon prior written
approval of LUCENT. Any request for approval shall state
the reason for such donation, and LUCENT shall respond
within forty-five (45) days of receipt of such request.
LUCENT reserves the right to deny any such request. Any
request granted shall indicate to the donee that LUCENT is
participating in such donation, and
(iii) to use CUSTOMER SOFTWARE [ ]
that are to be delivered to customers and for [ ]
CUSTOMER SOFTWARE to prospective customers.
(b) Each portion of CUSTOMER SOFTWARE shall include an appropriate
copyright notice. Such copyright notice may be the copyright notice or notices
appearing in or on the corresponding portions of SOFTWARE PRODUCT or, if
LICENSEE makes copyrightable changes in developing CUSTOMER SOFTWARE, LICENSEE's
copyright notice.
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(c) During the SOLE LICENSEE PERIOD, LUCENT agrees not to grant to any
other party, except to SUBSIDIARIES of LUCENT, rights of the scope of the rights
granted in Section 3.01 (a).
(d) LICENSEE shall require each DISTRIBUTOR to enter into a written
agreement with its supplier (LICENSEE or another DISTRIBUTOR) of CUSTOMER
SOFTWARE before CUSTOMER SOFTWARE is furnished to such DISTRIBUTOR. Such
agreement shall include provisions consistent with and containing the relevant
substance of Sections 3.01(a), 3.01(e), 3.01(f) and this Section 3.01(d). For a
DISTRIBUTOR who is also to be an AUTHORIZED COPIER, such agreement shall also
include provisions consistent with and containing the relevant substance of
Section 5.04.
(e) DISTRIBUTORS who are not also AUTHORIZED COPIERS may not make copies
of CUSTOMER SOFTWARE, but may furnish to customers, and other DISTRIBUTORS
copies of CUSTOMER SOFTWARE furnished to such DISTRIBUTOR by LICENSEE or other
DISTRIBUTORS.
(f) If a DISTRIBUTOR fails to fulfill one or more of its obligations under
the agreement required by Section 3.01(d), LUCENT may, upon its election and in
addition to any other remedies that it may have, at any time notify LICENSEE in
writing of such breach and require LICENSEE to terminate all the DISTRIBUTOR'S
rights granted in such agreement by not less than three (3) months' written
notice to such DISTRIBUTOR specifying any such breach, unless within the period
of such notice all breaches specified therein shall have been remedied; upon
such termination such DISTRIBUTOR shall within thirty (30) days immediately
discontinue use of and return or destroy all copies of CUSTOMER SOFTWARE in its
possession.
(g) LUCENT agrees that it will, if so requested by LICENSEE during the
term of this Agreement as set forth in Section 6.01, grant LICENSEE the right to
[ ] CUSTOMER SOFTWARE, under reasonable terms and conditions, for [ ] and
[ ]. LUCENT agrees that it will, if so
requested by LICENSEE during the term of this Agreement as set forth in Section
in 6.01, consider entering into a [ ] with a
[ ]; however, the entering into
of any such [ ] shall be at LUCENT's sole discretion.
3.02 ENFORCEMENT
LICENSEE shall use its best efforts to enforce the agreements with
customers and DISTRIBUTORS specified in Section 3.01 of this Agreement.
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ARTICLE IV
SOLE LICENSEE CONDITIONS
4.01 DEVELOPMENT OF CUSTOMER SOFTWARE
In partial consideration for the rights and licenses granted herein,
LICENSEE agrees to [ ] and to
[ ], [ ],
CUSTOMER SOFTWARE which CUSTOMER SOFTWARE [ ]
furnished in NEW SOFTWARE PRODUCT [
].
4.02 TERMINATION OF CERTAIN RIGHTS AND LICENSES
The Parties agree that if LICENSEE fails to fulfill its obligation under
Section 4.01 that: (i) the agreement by LUCENT in Sections 2.01(a) and 3.01(c)
not to grant licenses and rights to third parties, with respect to the NEW
SOFTWARE PRODUCT portion of SOFTWARE PRODUCT, is void as of [ ],
but that all other rights, licenses and obligations shall continue, and (ii)
the yearly fee due pursuant to Section 5.01 and specified in APPENDIX C - [ ]
FEE SCHEDULE, shall be reduced to [ ] United States dollars
(U.S. $[ ]) for the years [ ] and [ ]
and the sublicensing fee due pursuant to Section 5.02 and specified in
APPENDIX D - SUBLICENSING FEE SCHEDULE, shall be reduced to [ ] ([ ])
[ ] for the years [ ] and [ ].
ARTICLE V
FEES
5.01 YEARLY FEES
In partial consideration for the rights and licenses granted herein,
LICENSEE shall pay to LUCENT the yearly fees specified in APPENDIX C - YEARLY
FEE SCHEDULE, subject to Section 4.02. All payments shall be payable within
sixty (60) days of the due date as specified. In no event shall fees payable
under this Section 5.01 be refundable. Fees payable to LUCENT under this Section
5.01 shall not be credited against any sublicensing fees payable under Section
5.02 of this Agreement.
5.02 SUBLICENSING FEES
(a) For the sublicensing rights granted under Article III of this
Agreement, LICENSEE shall pay to LUCENT, in the manner and at the times
specified in Section 5.05, fees as specified in APPENDIX D - SUBLICENSING FEE
SCHEDULE hereto, subject to Section 4.02.
(b) Amounts paid to LUCENT under this Section 5.02 shall not be credited
against any yearly fees payable under Section 5.01.
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5.03 ACCRUAL
(a) Fees shall accrue on CUSTOMER SOFTWARE upon the first sale, lease,
license or putting into use of such CUSTOMER SOFTWARE. Obligations to pay
accrued royalties shall survive termination of licenses and rights pursuant to
Article VI.
(b) When a company ceases to be a SUBSIDIARY of LICENSEE, fees which have
accrued with respect to any products of such company, but which have not been
paid, shall become payable with LICENSEE's next scheduled royalty payment.
5.04 RECORDS
(a) LICENSEE shall, for a seven (7) year period, keep full, clear and
accurate records of sales, leases, and other uses of CUSTOMER SOFTWARE by
LICENSEE or DISTRIBUTORS contributing to SUBLICENSING REVENUE, which records
include, but are not limited to, MAINTENANCE AGREEMENTS and of the number of
copies and price of CUSTOMER SOFTWARE furnished to customers.
(b) LICENSEE shall require that each AUTHORIZED COPIER shall, for a seven
(7) year period, keep full, clear and accurate records of sales, leases, and
other uses of CUSTOMER SOFTWARE by such AUTHORIZED COPIER contributing to
SUBLICENSING REVENUE, which records include, but are not limited to, the number
of copies and price of CUSTOMER SOFTWARE furnished.
(c) LICENSEE shall require that each AUTHORIZED COPIER shall furnish a
statement at least semiannually to LICENSEE identifying the number of copies of
CUSTOMER SOFTWARE furnished to customers and other DISTRIBUTORS since the
previous such statement was furnished.
(d) LICENSEE shall keep full, clear and accurate records of the identities
and locations of AUTHORIZED COPIERS.
(e) LUCENT shall have the right to make an examination and audit during
normal business hours, not more frequently than annually, of all records kept
pursuant to this Section 5.04 by LICENSEE, its SUBSIDIARIES and AUTHORIZED
COPIERS and such other records and accounts as may under recognized accounting
practices contain information bearing upon the amounts of fees payable to LUCENT
under this Agreement. Prompt adjustment shall be made by the proper Party to
compensate for any errors or omissions disclosed by such examination or audit.
Neither such right to examine and audit nor the right to receive such adjustment
shall be affected by any statement to the contrary appearing on checks or
otherwise unless such statement appears in a letter signed by the Party having
such right expressly waiving such right and such letter is delivered to the
other Party.
5.05 PAYMENTS
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(a) Within ninety (90) days after the end of each semiannual period ending
on June 30th or December 31st, commencing with the semiannual period ending
December 31, 1996, LICENSEE shall furnish to LUCENT a statement, in form
acceptable to LUCENT and certified by an authorized representative of LICENSEE,
identifying SUBLICENSING REVENUE and remitting fees due pursuant to Section
5.02, and including the number of copies and price of CUSTOMER SOFTWARE that
were furnished by LICENSEE, its SUBSIDIARIES and DISTRIBUTORS to customers and
the [ ] of MAINTENANCE AGREEMENTS during such
semiannual period.
(b) Statements and payments shall be sent to LUCENT at the address
specified in Section 7.07 of this Agreement.
(c) Overdue payments shall be subject to a late payment charge calculated
at an annual rate of three percent (3%) over the prime rate (as posted in New
York City in the Wall Street Journal during delinquency). If the amount of such
late payment charge exceeds the maximum permitted by law, such charge shall be
reduced to such maximum amount.
(d) LICENSEE shall furnish whatever additional information LUCENT may
reasonably prescribe from time to time to enable LUCENT to ascertain the amounts
of fees payable pursuant hereto.
5.06 TAXES
LICENSEE shall pay any tax, duty, levy, customs fee, or similar charge
("taxes"), including interest and penalties thereon, however designated, imposed
as a result of the operation or existence of this Agreement, including taxes
which LICENSEE or its SUBSIDIAIRIES are required to withhold or deduct from
payments to LUCENT, except (i) net income taxes imposed upon LUCENT by any
governmental entity within the United States (the fifty (50) States and the
District of Columbia), and (ii) net income taxes imposed upon LUCENT by
jurisdictions outside the United States which are allowable as a credit against
the United States Federal income tax of LUCENT or any of its SUBSIDIARIES. In
order for the exception in (ii) to be effective, LICENSEE must furnish to LUCENT
evidence sufficient to satisfy the United States taxing authorities that such
taxes have been paid. Such evidence must be furnished to LUCENT within thirty
(30) days of issuance by the local taxing authority.
ARTICLE VI
TERM OF THE AGREEMENT AND TERMINATION
6.01 TERM
The term of this Agreement shall commence on February 18, 1996 and shall
continue, unless terminated pursuant to Sections 6.02 or 6.03, for a term of six
(6) years.
6.02 TERMINATION FOR BREACH
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If LICENSEE or any of its SUBSIDIARIES fails to fulfill one or more of its
obligations under this Agreement, LUCENT may, upon its election and in addition
to any other remedies that it may have, at any time terminate all the rights
granted by it hereunder by not less than [ ] ([ ]) [ ] written notice to
LICENSEE specifying any such breach, unless within the period of such notice all
breaches specified therein shall have been remedied. Upon such termination
LICENSEE and its SUBSIDIARIES shall destroy all copies of SOFTWARE PRODUCT in
its possession and certify such destruction in writing to LUCENT within thirty
(30) days. Upon such termination LICENSEE and its SUBSIDIAIRIES shall also
immediately discontinue distribution and use of and destroy all copies of
CUSTOMER SOFTWARE in its possession.
6.03 SURVIVAL
The obligations of LICENSEE and its SUBSIDIARIES under Sections 2.04,
2.05, 5.05 7.04 and 7.05 shall survive and continue after any termination of
rights under this Agreement. The rights and obligations of customers in Section
301(a)(i)(18) shall survive and continue after termination of LICENSEE's rights
under this Agreement.
ARTICLE VII
MISCELLANEOUS PROVISIONS
7.01 AGREEMENT PREVAILS
This Agreement shall prevail notwithstanding any conflicting terms or
legends which may appear on or in SOFTWARE PRODUCT.
7.02 DISCLAIMER
LUCENT AND ITS SUBSIDIARIES MAKE NO REPRESENTATIONS OR WARRANTIES,
EXPRESSLY OR IMPLIEDLY. BY WAY OF EXAMPLE BUT NOT OF LIMITATION, LUCENT AND ITS
SUBSIDIARIES MAKE NO REPRESENTATIONS OR WARRANTIES, OF MERCHANTABILITY OR
FITNESS FOR ANY PARTICULAR PURPOSE, OR THAT THE USE OF SOFTWARE PRODUCT WILL NOT
INFRINGE ANY PATENT, COPYRIGHT OR OTHER INTELLECTUAL PROPERTY RIGHT. LUCENT AND
ITS SUBSIDIARIES SHALL NOT BE HELD TO ANY LIABILITY WITH RESPECT TO ANY CLAIM BY
LICENSEE OR ITS SUBSIDIARIES, OR A THIRD PARTY ON ACCOUNT OF, OR ARISING FROM,
THE USE OF SOFTWARE PRODUCT.
7.03 NOTHING CONSTRUED
Nothing contained herein shall be construed as:
(i) conferring by implication, estoppel or otherwise, any license
or right to use any name, trade name, trademark, service mark,
symbol or any other identification or any abbreviation,
contraction or simulation thereof;
(ii) an obligation upon LUCENT or any of its SUBSIDIARIES to
furnish any person, including LICENSEE, any assistance of any
kind whatsoever, or
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any information or documentation other than updates to
SOFTWARE PRODUCT furnished pursuant to Section 2.06; or
(iii) a grant to LICENSEE to sell, lease, sublicense (except to
SUBSIDIARIES) or otherwise transfer or dispose of SOFTWARE
PRODUCT, in whole or in part.
7.04 CONFIDENTIALITY
(a) LICENSEE agrees to hold all parts of SOFTWARE PRODUCT in confidence
for LUCENT. LICENSEE further agrees not to make any disclosure of SOFTWARE
PRODUCT (including methods or concepts utilized therein) to anyone, except to
employees and contractors of LICENSEE to whom such disclosure is necessary to
the use for which rights are granted hereunder.
(b) LICENSEE shall appropriately notify all employees and contractors to
whom any such disclosure is made that such disclosure is made in confidence and
shall be kept in confidence by them.
(c) LICENSEE's obligations under this Section 7.04 shall not apply to any
information relating to SOFTWARE PRODUCT (including any method or concept
utilized therein) that:
(i) is or becomes available without restriction to the general
public by acts not attributable to LICENSEE, its employees
or its contractors;
(ii) was rightfully in LICENSEE's possession without limitation
on disclosure before disclosure hereunder to LICENSEE;
(iii) is rightfully disclosed to LICENSEE by a third party
without restrictions on disclosure; or
(iv) is inherently disclosed by use of CUSTOMER SOFTWARE in
accordance with this Agreement.
7.05 PUBLICITY
LICENSEE agrees that it will not, without the prior permission of LUCENT:
(i) use in advertising, publicity, packaging, labeling or
otherwise any trade name, trademark, trade device, service
mark, symbol or any other identification or any abbreviation,
contraction or simulation thereof owned by LUCENT or any of
its SUBSIDIARIES or used by LUCENT or any of its SUBSIDIARIES
to identify any of its or their products or services; or
(ii) represent, directly or indirectly, that any product or service
of LICENSEE is a product or service of LUCENT or any of its
SUBSIDIARIES or is
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<PAGE> 15
made in accordance with or utilizes any information or
documentation of LUCENT or any of its SUBSIDIARIES.
7.06 NONASSIGNABILITY
The Parties hereto have entered into this Agreement in contemplation of [ ]
performance by LICENSEE and intend that the rights granted to LICENSEE hereunder
[ ]. Accordingly, [ ] this Agreement [ ]
rights [
].
7.07 ADDRESSES
(a) Any notice or other communication hereunder shall be sufficiently
given to LICENSEE when sent by certified mail addressed to Math Soft, Inc., 101
Main Street, Cambridge, Massachusetts 02142, Attn: Chief Financial Officer or to
LUCENT when sent by certified mail addressed to Contract Administrator,
Intellectual Property, Lucent Technologies Inc., 2333 Ponce de Leon Boulevard -
Suite 511, Coral Gables, Florida 33134. Changes in such addresses may be
specified by written notice.
(b) Payments by LICENSEE shall be made to LUCENT at Sun Trust, P.O.
Box 913021, Orlando, Florida, 32891-3021. Alternatively, payments to LUCENT
may be made by bank wire transfers to LUCENT's account: Lucent Technologies
Licensing, Account No. 910-2-568475, at Chase Manhattan Bank, N.A., 4
Metrotech Center, Brooklyn, New York 11245. Changes in such address or
account may be specified by written notice.
7.08 INTEGRATION
This Agreement sets forth the entire agreement and understanding between the
Parties as to the subject matter hereof and merges all prior discussions between
them. Neither of the Parties shall be bound by any warranties, understandings or
representations with respect to such subject matter other than as expressly
provided herein, in prior written agreements, or in a writing executed with or
subsequent to the execution of this Agreement by an authorized representative of
the Party to be bound thereby.
7.09 CHOICE OF LAW
The Parties are familiar with the principles of New York commercial law, and
desire and agree that the law of the State of New York, exclusive of its
conflict of laws provisions, shall apply in any dispute arising with respect to
this Agreement.
7.10 SUBSIDIARIES
(a) The grant of each right and license hereunder includes the right to
grant sublicenses and similar rights within the scope of the Agreement to a
Party's SUBSIDIARIES for so long as they remain its SUBSIDIARIES and agree to
abide by the terms, conditions and obligations herein. Any such sublicenses and
similar rights may be made effective retroactively,
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<PAGE> 16
but not prior to the effective date hereof, nor prior to the becoming a
SUBSIDIARY of such Party.
(b) LICENSEE agrees that when a SUBSIDIARY's relationship to LICENSEE
changes so that it is no longer a SUBSIDIARY of LICENSEE, (i) all rights of such
former SUBSIDIARY to use SOFTWARE PRODUCT subject to this Agreement shall
immediately cease, (ii) such former SUBSIDIARY shall immediately discontinue use
of and return to LICENSEE or destroy all copies of SOFTWARE PRODUCT and (iii)
such former SUBSIDIARY shall return to LICENSEE or destroy all copies of
CUSTOMER SOFTWARE for which fees under Section 5.04 have not been paid.
7.11 DISPUTE RESOLUTION
(a) If a dispute arises out of or relates to this Agreement, or the
breach, termination or validity thereof, the Parties agree to submit the dispute
to a sole mediator selected by the Parties or, at any time at the option of a
Party, to mediation by the American Arbitration Association ("AAA"). If not thus
resolved, it shall be referred to a sole arbitrator selected by the Parties
within thirty (30) days of the mediation, or in the absence of such selection,
to AAA arbitration which shall be governed by the United States Arbitration Act.
(b) Any award made (i) shall be a bare award limited to a holding for or
against a Party and affording such remedy as is deemed equitable, just and
within the scope of the Agreement; (ii) shall be without findings as to issues
(including but not limited to patent validity and/or infringement) or a
Statement of the reasoning on which the award rests; (iii) may in appropriate
circumstances (other than patent disputes) include injunctive relief; (iv) shall
be made within four (4) months of the appointment of the arbitrator; and (v) may
be entered in any court.
(c) The requirement for mediation and arbitration shall not be deemed a
waiver of any right of termination under this Agreement and the arbitrator is
not empowered to act or make any award other than based solely on the rights and
obligations of the Parties prior to any such termination.
(d) The arbitrator shall determine issues of arbitrability but may not
limit, expand or otherwise modify the terms of the Agreement.
(e) The place of mediation and arbitration shall be New York City.
(f) Each Party shall bear its own expenses but those related to the
compensation and expenses of the mediator and arbitrator shall be borne equally.
(g) A request by a party to a court for interim measures shall not be
deemed a waiver of the obligation to mediate and arbitrate.
(h) The arbitrator shall not have authority to award punitive or other
damages in excess of compensatory damages and each Party irrevocably waives any
claim thereto.
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<PAGE> 17
(i) The Parties, their representatives, other Participants and the
mediator and arbitrator shall hold the existence, content and result of
mediation and arbitration in confidence.
7.12 ADDITIONAL AGREEMENTS
LICENSEE acknowledges that the rights granted herein in Sections 2.01(a), 2.01
(b), and 3.01 (a) are, subject to payment of fees specified herein and unless
this Agreement is otherwise terminated, for the term of this Agreement as set
forth in Section 6.01. The Parties agree that, if each Party so desires and if
LICENSEE has not materially breached this Agreement, an agreement, effective
subsequent to the termination of this Agreement, specifying similar rights,
licenses and obligations will be negotiated on reasonable terms and conditions.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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STATISTICAL SCIENCES - IPKEO - 121896
IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be
executed in duplicate originals by its duly authorized representatives on the
respective dates entered below.
LUCENT TECHNOLOGIES INC.
By:
-----------------------------------------
Title:
--------------------------------------
Date:
---------------------------------------
STATISTICAL SCIENCES, INC.
By:
-----------------------------------------
Title:
--------------------------------------
Date:
---------------------------------------
THIS AGREEMENT DOES NOT BIND OR OBLIGATE EITHER PARTY IN ANY MANNER UNLESS DULY
EXECUTED BY AUTHORIZED REPRESENTATIVES OF BOTH PARTIES
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<PAGE> 19
APPENDIX A
DEFINITIONS
ADAPTATION means any [ ] work [ ] on
SOFTWARE PRODUCT including (i) any work [ ] any of SOFTWARE
PRODUCT [ ], (ii) any work [ ] any COMPUTER PROGRAM from SOFTWARE
PRODUCT [ ] in a [ ] or [ ] to [ ]
on a [ ], (iii) any work [ ] a [ ] or [ ]
from SOFTWARE PRODUCT that LICENSEE is obligated to keep in confidence hereunder
of (iv) any work otherwise covered by any of LUCENT's intellectual property
rights in SOFTWARE PRODUCT.
AUTHORIZED COPIER means a DISTRIBUTOR authorized by LICENSEE to make
copies of CUSTOMER SOFTWARE.
CPU means central processing unit.
COMPUTER PROGRAM means any object-code and/or source-code instruction or
plurality of such instructions for controlling the operation of a CPU.
CUSTOMER SOFTWARE means (i) COMPUTER PROGRAMS, [ ] or
[ ] SOFTWARE PRODUCT or [ ], (ii) documentation listed
in APPENDIX B-DELIVERABLES COMPRISING NEW SOFTWARE PRODUCT and any other
documentation included in or based on SOFTWARE PRODUCT or an ADAPTATION.
DISTRIBUTOR means an entity authorized by LICENSEE or another DISTRIBUTOR
to receive copies of CUSTOMER SOFTWARE from LICENSEE or another DISTRIBUTOR and
furnish such copies to customers and/or other DISTRIBUTORS.
[ ] means, with respect to any item
(or service) [ ], [ ] or [ ],
the [ ] of (i) the [ ] which a [ ]
would [ ] from [ ] in [ ]
in [ ] of [ ] in
[ ] and [ ] and [ ]
as [ ], [ ][ ]; or (ii) the
[ ] for [ ] in the
[ ], whether or not [ ] (and without
excluding therefrom any [ ] or [ ]
thereof which are included in such [ ]).
In determining "[ ]" price the following shall be [ ]:
(a) [ ];
(b) [ ];
(c) [ ]; and
(d) [ ].
<PAGE> 20
MAINTENANCE AGREEMENT means an obligation by LICENSEE, SUBSIDIARY,
DISTRIBUTOR or LICENSEE's contractor or agent to furnish on-going bug fixes,
releases, upgrades, and/or technical support of COMPUTER SOFTWARE.
NEW SOFTWARE PRODUCT means all or any portion of deliverables, such as
COMPUTER PROGRAMS, documentation and/or other information specifically listed in
Appendix B-DELIVERABLE COMPRISING NEW SOFTWARE PRODUCT.
PRIOR LICENSE AGREEMENTS means the Software License Agreement and the
Software Sublicensing Agreement, both effective April 1, 1991, between American
Telephone and Telegraph Company and Statistical Sciences, Inc., as
well as amendments thereto.
PRIOR SOFTWARE PRODUCT means all computer programs, documentation and
other information which comprised "software product" as defined in PRIOR LICENSE
AGREEMENTS, as well as other related information, documentation and software
furnished to LICENSEE prior to the effective date of this Agreement.
SOFTWARE PRODUCT means PRIOR SOFTWARE PRODUCT and NEW SOFTWARE PRODUCT.
SOLE LICENSEE PERIOD means the period beginning February 18, 1996, and
ending the [ ] of: (i) the date of terminating rights and licenses granted
herein pursuant to Article VI, or (ii) the [ ] termination of certain rights and
licenses pursuant to Section 4.02 if Section 4.02 as a result of LICENSEE's
failure to fulfill its obligations pursuant to Section 4.01.
SUBLICENSE REVENUE:
(a) for the case where: (i) the [ ] of [ ]
is [ ] or [ ] ([ ]%)
of the [ ] of [ ] furnished by LICENSEE,
SUBSIDIARIES and DISTRIBUTORS, and (ii) such [ ]
do not include [ ] which include [ ],
SUBLICENSE REVENUE means the [ ] of [ ]
furnished by LICENSEE, SUBSIDIARIES and DISTRIBUTORS;
(b) for the case where: (i) the [ ] of [ ]
is [ ] or [ ] ([ ]%) of the [ ]
of [ ] furnished by LICENSEE, SUBSIDIARIES and
DISTRIBUTORS, and (ii) one or more [ ] include [ ]
containing [ ], SUBLICENSE REVENUE means the [ ]
of [ ] furnished by LICENSEE, SUBSIDIARIES and
DISTRIBUTORS [ ] ([ ]) of the [ ] of all such
[ ] that [ ] such [ ]; or
(c) for the case where the [ ] of [ ] is
[ ] ([ ]%) of the [ ] of
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<PAGE> 21
[ ] furnished by LICENSEE, SUBSIDIARIES and DISTRIBUTORS,
SUBLICENSE REVENUE means the [ ] of [ ]
furnished by LICENSEE, SUBSIDIARIES and DISTRIBUTORS [ ] ([ ]) of
the [ ] of [ ] ([ ]%) of the
[ ] of [ ] furnished by LICENSEE,
SUBSIDIARIES and DISTRIBUTORS.
SUBSIDIARY of a company means a corporation or other legal entity (i) the
majority of whose shares or other securities entitled to vote for election of
directors (or other managing authority) is now or hereafter controlled by such
company either directly or indirectly; or (ii) which does not have outstanding
shares or securities but the majority of whose ownership interest representing
the right to manage such corporation or other legal entity is now or hereafter
owned and controlled by such company either directly or indirectly; but any such
corporation or other legal entity shall be deemed to be a SUBSIDIARY of such
company only as long as such control or ownership and control exists.
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STATISTICAL SCIENCES - IPKEO - 121896
APPENDIX B
DELIVERABLES COMPRISING NEW SOFTWARE PRODUCT
Version [ ] of S, consisting of the following files [ ] and for on-line
documentation:
[
<PAGE> 23
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<PAGE> 24
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STATISTICAL SCIENCES - IPKEO - 121896
]
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STATISTICAL SCIENCES - IPKEO - 121896
APPENDIX C
YEARLY FEE SCHEDULE
Payment Due Date Yearly Fee
------- -------- ----------
[ $
$
$
$
$
$]
<PAGE> 26
STATISTICAL SCIENCES - IPKEO - 121896
APPENDIX D
SUBLICENSING FEE SCHEDULE
YEAR FEES
(beginning February 18) ----
-----------------------
[ ] [ ] of SUBLICENSE REVENUE
[ ] [ ] of SUBLICENSE REVENUE
[ ] [ ] of SUBLICENSE REVENUE
[ ] [ ] of SUBLICENSE REVENUE
[ ] [ ] of SUBLICENSE REVENUE
[ ] [ ] of SUBLICENSE REVENUE
