Amendment to License and Manufacturing Agreement

EX-10.1 2 d401295dex101.htm AMENDMENT TO LICENSE AND MANUFACTURING AGREEMENT Amendment to License and Manufacturing Agreement

Exhibit 10.1

Amendment to License and Manufacturing Agreement

This amendment is made on the 16th date of August, 2012, by and between Powerwave Technologies, Inc., a Delaware corporation whose principal office is at 1801 E. St. Andrew Place, Santa Ana, California 92705 (“Licensor”), on the one hand, and Shenzen Tatfook Technology Co., Ltd., a company established under the laws of the People’s Republic of China, whose principal office is at 3rd Industrial Area of Shajing Industrial Company, Haoziang Road, Shajing Town, Bao’ an District, Shenzhen, 518104, Peoples Republic of China (“Licensee”), on the other hand. (Licensor and Licensee are hereinafter collectively referred to as the “Parties” and each individually as a “Party.”)

WHEREAS Licensor and Licensee executed the License and Manufacturing Agreement, (hereinafter called the “Agreement”) on 24th April 2012, which was effective on May 23, 2012 upon the closing of the Asset Purchase Agreement between the Parties.

WHEREAS Licensee is in the process of obtaining the Approvals from the Authorities, including certain Tax Authorities in China for the payment of the Upfront License Fee of $5,000,000 and as per the instruction from relevant Tax Authority, there are some issues in the Agreement that need to be clarified.

Therefore, in consideration of the performance of the Agreement and without prejudice to any other rights, obligations liabilities and remedies to which Parties may be entitled or borne under the Agreement, Parties agree to amend Agreement as following.

 

1. Parties hereby agree to change the article 1.12, 9.2, Exhibit B Royalties as follows:

a. Section 1.12Licensed Products”, shall be revised to read in full as follow: “Licensed Products shall mean those products referenced on Exhibit A hereto, as such Exhibit shall be amended with the prior written approval of Licensee and Licensor.


b. The following shall be added to the end of section 9.2 C:. “Should the Agreement be terminated due to the default of Licensor within 7 years since the execution of Agreement, Licensor shall pay back to Licensee the prorated unearned portion of the Up-front license fee (net of taxes paid on the Up-front Licensee Fee to Chinese tax authorities) received by Licensor. The Up-front License Fee net of taxes paid to the Chinese Tax Authorities is $5,000,000 less the withholding taxes required to be paid to the Chinese Tax Authorities, which the Parties estimate at 10% of the Up-front License Fee. The Up-front Licensee Fee shall be considered earned ratably and shall be pro-rated on a straight line basis over the 7 year period commencing on May 23, 2012. For example, assuming the the net Up-front License Fee received by the Licensor is $4,500,000 if the Agreement is terminated on May 23, 2013 because of a default by Licensor, Licensor would be obligated to repay 6/7 of $4,500,000 or $3,857,143.

c. The following sentence shall be added to the end of item 1 on Exhibit B Royalties:

“For purposes of clarification, notwithstanding the forgoing, in no circumstance, shall Licensee pay any Royalty for the Licensed Product which are manufactured, distributed and sold by Licensee to Licensor.”

 

2. Attached hereto as Exhibit D is a list of Licensed Intellectual Property which shall be added as Exhibit D of Agreement.

 

3. In the event of any ambiguities or conflicts between this Amendment and the Agreement, this Amendment shall prevail. For the terms and conditions not defined in this Amendment, the Agreement shall be applied.

 

4. This Amendment shall become effective after signing and sealing by the authorized representatives of the Parties.


5. This Amendment shall be executed in four original copies in English, with each of equally binding force, and each Party keeps two of originals.

IN WITNESS WHEREOF, Parties have caused this Agreement to be executed on the 16th day of August, 2012.

 

Licensor:

POWERWAVE TECHNOLOGIES, INC.
By:   /s/ Marvin MaGee
Name:   Marvin MaGee
Title:   Chief Operating Officer
Licensee:

 

SHENZEN TATFOOK TECHNOLOGY CO., LTD.

By:

  /s/ Linda Xu
Name:   Linda Xu
Title:   Vice President


EXHIBIT D

LIST OF LICENSED INTELLECTUAL PROPERTY

 

Antenna

Patent #    Description
6005522    An antenna device with two radiating elements having an adjustable phase difference between the radiating elements
5949303    Movable dielectric body for controlling propagation velocity in a feed line
6008763    Flat antenna
6018319    Antenna element
6020861    Elongated antenna
6054953    Dual band antenna
6069586    Antenna operating with two isolated channels
6104348    Antenna device with improved channel isolation
6137444    Method of producing an antenna element assembly
6208299    Dual band antenna arrangement
6283425    Mounting bracket
6295028    Dual band antenna
7898489    Phase Shifter
Tower Mounted Amplifers (TMA)
8150353    Masthead amplifier unit
5963854    Antenna amplifier
7800438    General LNA
6864743    Microwave amplifier with bypass segment
7471172    Microwave transmission unit including lightning protection
6927646    Bypass arrangement for low-noise amplifier
8130874    By-pass arrangement of a low noise amplifier