-----BEGIN PRIVACY-ENHANCED MESSAGE----- Proc-Type: 2001,MIC-CLEAR Originator-Name: webmaster@www.sec.gov Originator-Key-Asymmetric: MFgwCgYEVQgBAQICAf8DSgAwRwJAW2sNKK9AVtBzYZmr6aGjlWyK3XmZv3dTINen TWSM7vrzLADbmYQaionwg5sDW3P6oaM5D3tdezXMm7z1T+B+twIDAQAB MIC-Info: RSA-MD5,RSA, UVPJfKWrXhpBushUO9xdB0HL0w9PwmaCwaXWeISBETHO1+HvGCeZ1m9BD4u++nUt t7xQQ3ogbg55/7KWfBDFhw== /in/edgar/work/0001035704-00-000926/0001035704-00-000926.txt : 20001122 0001035704-00-000926.hdr.sgml : 20001122 ACCESSION NUMBER: 0001035704-00-000926 CONFORMED SUBMISSION TYPE: 8-K PUBLIC DOCUMENT COUNT: 11 CONFORMED PERIOD OF REPORT: 20001114 ITEM INFORMATION: ITEM INFORMATION: FILED AS OF DATE: 20001121 FILER: COMPANY DATA: COMPANY CONFORMED NAME: PLANETCAD INC CENTRAL INDEX KEY: 0000852437 STANDARD INDUSTRIAL CLASSIFICATION: [7372 ] IRS NUMBER: 841035353 STATE OF INCORPORATION: DE FISCAL YEAR END: 1231 FILING VALUES: FORM TYPE: 8-K SEC ACT: SEC FILE NUMBER: 000-28842 FILM NUMBER: 774415 BUSINESS ADDRESS: STREET 1: 2425 55TH STREET STREET 2: STE 100 CITY: BOULDER STATE: CO ZIP: 80301 BUSINESS PHONE: 3034490649 MAIL ADDRESS: STREET 1: 2425 55TH STREET STREET 2: STE 100 CITY: BOULDER STATE: CO ZIP: 80301 FORMER COMPANY: FORMER CONFORMED NAME: SPATIAL TECHNOLOGY INC DATE OF NAME CHANGE: 19960708 8-K 1 d82148e8-k.txt FORM 8-K DATED NOVEMBER 14, 2000 1 SECURITIES AND EXCHANGE COMMISSION WASHINGTON, DC 20549 ----------- FORM 8-K CURRENT REPORT Pursuant to Section 13 or 15(d) of the Securities Exchange Act of 1934 Date of report (Date of earliest event reported): November 14, 2000 PLANETCAD INC. (Exact Name of Registrant as Specified in Charter) DELAWARE 0-288-42 84-1035353 (State of Incorporation) (Commission File Number) (IRS Employer Identification No) 2520 55TH STREET, SUITE 200 BOULDER, COLORADO 80301 (303) 209-9100 (Address of Principal Executive Offices and telephone number, including area code) 2 ITEM 2. ACQUISITION OR DISPOSITION OF ASSETS. (a) On November 14, 2000, PlanetCAD Inc., a Delaware corporation ("PlanetCAD" or the "Company"), completed the sale of its component software division to Spatial Corp. ("Spatial Corp."), a wholly owned subsidiary of Dassault Systemes Corp., a Delaware corporation ("Dassault"). The sale was effected pursuant to a Purchase Agreement dated July 4, 2000, and amended on September 2, 2000, by and among PlanetCAD, Spatial Components, LLC, a Delaware limited liability company ("Spatial LLC"), and Dassault (the "Purchase Agreement"), pursuant to which PlanetCAD formed Spatial LLC as a wholly owned subsidiary and capitalized Spatial LLC with all of the assets and certain of the liabilities of the component software division. Upon the closing of the sale under the Purchase Agreement, PlanetCAD transferred to Spatial Corp., the assignee of Dassault under the Purchase Agreement, 100% of the membership interests in Spatial LLC, upon which Spatial LLC became a wholly owned subsidiary of Spatial Corp. PlanetCAD and Dassault Systemes S.A., the parent company of Dassault, have also entered into certain intellectual property agreements, identified below, which agreements include various license, services and co-branding agreements. As an inducement to PlanetCAD to enter into the Agreement, Dassault agreed to make a $2.0 million investment in PlanetCAD in exchange for 555,556 shares of PlanetCAD's common stock pursuant to a Share Purchase Agreement, dated as of November 14, 2000 (the "Share Purchase Agreement"), a conformed copy of which is filed as an exhibit hereto. The shares of PlanetCAD's common stock issued to Dassault under the Share Purchase Agreement carry the same rights as the outstanding shares of PlanetCAD's common stock held by its existing stockholders. As a result of the sale, Dassault and Dassault Systemes own, in the aggregate (including exercise in full of all outstanding warrants to acquire shares of common stock of PlanetCAD owned by Dassault Systemes), 1,004,831 shares of PlanetCAD's common stock. The Share Purchase Agreement provides Dassault with registration rights, including "piggy-back" registration rights, which would be triggered if, during the period of time that Dassault holds shares of PlanetCAD's common stock subject to the registration rights, PlanetCAD files a registration statement with the SEC offering for its own account or for the account of stockholders. In September 2000, Dassault made a loan to PlanetCAD for $2 million of the purchase price for the sale of the component software business in advance of the closing of the transaction. In November 2000, Dassault loaned an additional $2 million of the purchase price to PlanetCAD. PlanetCAD repaid these loans, including accrued and unpaid interest, as an offset against the purchase price at the closing. In connection with the sale of PlanetCAD's software component division, PlanetCAD and Dassault Systemes have entered into the following intellectual property and/or software license agreements, each of which is filed as an exhibit hereto: o Cross License Agreement; o Co-Branding Agreement; o Server Software License Agreement; o Web Services Agreement; o Joint Software License Agreement; o Master Software Reseller Agreement; o IntraVISION License Agreement; and o Catia V5 Galaxy Program Solution Provider Agreement. (b) Not applicable. 2 3 ITEM 7. FINANCIAL STATEMENTS, PRO FORMA FINANCIAL INFORMATION AND EXHIBITS. (a) Not applicable. (b) Unaudited pro forma condensed combined financial statements as of September 30, 2000 and for the nine months ended September 30, 2000 and the year ended December 31, 1999. PLANETCAD INC. UNAUDITED PRO FORMA CONDENSED COMBINED FINANCIAL STATEMENTS On July 12, 2000, PlanetCAD Inc. (the "Company") acquired substantially all of the net assets of Prescient Technologies, Inc. ("Prescient") for total consideration of $1.2 million, including $100,000 cash and 300,000 shares of common stock. In addition, the Company may be required to issue an additional 50,000 shares of common stock if certain performance objectives are met. The additional shares, if any, will be recorded as additional acquisition consideration at the time of issuance. On November 14, 2000, the Company completed the sale of the assets of its component software business to Spatial Corp., as assignee of Dassault Systemes Corp., in a cash transaction for approximately $25.0 million. In addition, in September 2000, Dassault made a loan to the Company for $2 million of the purchase price for the sale of the component software business in advance of the closing of the transaction, which amount, including accrued and unpaid interest, was repaid by the Company as an offset against the purchase price at the closing. As a result of the transaction with Dassault, the results of operations of the Company's component software division as of September 30, 2000 and for the nine months ended September 30, 2000 have been shown as discontinued operations in the Company's September 30, 2000 Quarterly Report on Form 10-Q. The unaudited pro forma condensed combined balance sheet presents the financial position of the Company as of September 30, 2000 and gives effect to the consummation of the sale of the component software division to Dassault. The unaudited pro forma condensed combined statement of operations of the Company for the nine months ended September 30, 2000 gives effect to the Prescient acquisition as if it had occurred on January 1, 1999. The results of operations of the component software division have previously been shown as discontinued operations in the Company's September 30, 2000 Quarterly Report on Form 10-Q. The unaudited pro forma condensed combined statement of operations for the year ended December 31, 1999 reflects the sale of the component software division and the Prescient acquisition as if the transactions had occurred on January 1, 1999. In connection with the sale of the component software division, Dassault purchased 555,556 shares of the Company's common stock, which is not shown in the unaudited pro forma condensed combined financial statements. The unaudited pro forma condensed combined financial statements have been derived from the historical financial statements of the Company. The pro forma adjustments and the assumptions on which they are based are described in the accompanying notes to the unaudited pro forma condensed combined financial statements. The unaudited pro forma condensed combined financial statements, including the notes thereto, are qualified in their entirety by reference to, and should be read in conjunction with, the historical financial statements and the notes thereto of the Company which were previously reported in the Company's Report on Form 10-KSB for the year ended December 31, 1999 and the Quarterly Reports on Form 10-QSB for the quarters ended March 31, 2000, June 30, 2000, and September 30, 2000 and the audited financial statements and the notes thereto of Prescient as of December 31, 1998 and 1999 and for the years then ended, and the unaudited interim financial statements as of June 30, 2000 and for the six months ended June 30, 1999 and 2000, previously reported on Form 8-K. The unaudited pro forma condensed combined financial statements are not necessarily indicative of the financial position or operating results that would have occurred had the acquisition of Prescient and the sale of the component software division been completed at that date, or at the beginning of the period for which the transactions have been given effect, nor the financial results of the Company in the future. 3 4 PLANETCAD INC. UNAUDITED PRO FORMA CONDENSED COMBINED BALANCE SHEET SEPTEMBER 30, 2000 (In Thousands)
PRO FORMA ADJUSTMENTS FOR THE SALE OF COMPONENT SOFTWARE PLANETCAD DIVISION TOTAL --------- --------------- -------- ASSETS Current Assets: Cash and cash equivalents ................. $ 1,228 $ 19,974(a) $ 21,202 Restricted cash............................ -- 1,000(a) 1,000 Accounts receivable, net .................. 1,169 -- 1,169 Prepaid expenses and other ................ 657 -- 657 Net assets of discontinued operations ..... 5,589 (5,589)(b) -- -------- -------- -------- Total current assets ................. 8,643 15,385 24,028 Equipment, net .............................. 752 -- 752 Purchased computer software and other intangibles, net .................... 1,292 -- 1,292 -------- -------- -------- $ 10,687 $ 15,385 $ 26,072 ======== ======== ======== LIABILITIES AND STOCKHOLDERS' EQUITY Current Liabilities Accounts payable .......................... $ 3,021 $ -- $ 3,021 Notes payable ............................. 2,000 (2,000)(c) -- Accrued expenses .......................... 1,836 -- 1,836 Deferred revenue .......................... 262 -- 262 -------- -------- -------- Total current liabilities ............. 7,119 (2,000) 5,119 -------- -------- -------- Stockholder's Equity Common stock .............................. 118 -- 118 Additional paid-in capital ................ 34,118 -- 34,118 Accumulated deficit ....................... (30,524) 17,385(d) (13,139) Other comprehensive loss .................. (144) -- (144) -------- -------- -------- Total stockholders' equity ............ 3,568 17,385 20,953 -------- -------- -------- $ 10,687 $ 15,385 $ 26,072 ======== ======== ========
4 5 PLANETCAD INC. UNAUDITED PRO FORMA CONDENSED COMBINED STATEMENT OF OPERATIONS NINE MONTHS ENDED SEPTEMBER 30, 2000 (IN THOUSANDS, EXCEPT PER SHARE DATA)
PLANETCAD PRESCIENT NINE MONTHS SIX MONTHS ENDED ENDED PRO FORMA SEPTEMBER 30, JUNE 30, ADJUSTMENTS 2000 2000 FOR PRESCIENT TOTAL ------------- ----------- ------------- -------- Revenue ................................ $ 1,632 $ 1,024 $ -- $ 2,656 Cost of revenue ...................... 699 559 129(j) 1,387 -------- -------- -------- -------- Gross profit ........................... 933 465 (129) 1,269 Operating expenses: Sales and marketing ............... 2,216 1,757 -- 3,973 Research and development .......... 4,403 630 -- 5,033 General and administrative ........ 1,218 267 -- 1,485 Acquired in-process research and development ................. 332 -- -- 332 -------- -------- -------- -------- Total operating expenses ............... 8,169 2,654 -- 10,823 -------- -------- -------- -------- Loss from continuing operations ....................... (7,236) (2,189) (129) (9,554) ======== ======== ======== ======== Basic and diluted loss per common share from continuing operations ................ $ (0.65) $ (0.84) Basic and diluted weighted average number of shares outstanding ......................... 11,206 210(f) 11,416
5 6 PLANETCAD INC. UNAUDITED PRO FORMA CONDENSED COMBINED STATEMENT OF OPERATIONS YEAR ENDED DECEMBER 31, 1999 (IN THOUSANDS, EXCEPT PER SHARE DATA)
Pro Forma Adjustments PlanetCAD Prescient for Year ended Year ended Pro Forma Component December 31, December 31, Adjustments Software 1999 1999 for Prescient Division Total ----------- ----------- ------------- ----------- -------- Revenue ..................................... $ 14,900 $ 3,113 $ -- $(14,076)(e) $ 3,937 Cost of revenue ........................... 1,132 1,179 258(j) (941)(f) 1,628 -------- -------- -------- -------- -------- Gross profit ................................ 13,768 1,934 (258) (13,135) 2,309 Operating expenses: Sales and marketing ....................... 5,918 4,279 -- (5,420)(g) 4,777 Research and development .................. 7,742 1,701 -- (6,720)(g) 2,723 General and administrative ................ 2,362 1,136 -- (2,141)(g) 1,357 Acquired in-process research and development ........................... 500 -- -- (500)(g) -- -------- -------- -------- -------- -------- Total operating expenses .................... 16,522 7,116 -- (14,781) 8,857 Loss from continuing operations ........... (2,754) (5,182) (258) 1,646 (6,548) Other income ................................ 139 -- -- (139)(h) -- -------- -------- -------- -------- -------- Net loss from continuing operations before income taxes ............................ (2,615) (5,182) (258) 1,507 (6,548) Income taxes ................................ 246 -- -- (246)(i) -- -------- -------- -------- -------- -------- Net loss from continuing operations ....... $ (2,861) $ (5,182) $ (258) $ 1,753 $ (6,548) ======== ======== ======== ======== ======== Basic and diluted loss per common share from continuing operations:..................... $ (0.31) $ (0.68) Basic and diluted weighted average number of shares outstanding......................... 9,345 300(k) $ 9,645
6 7 PLANETCAD INC. NOTES TO UNAUDITED PRO FORMA CONDENSED COMBINED FINANCIAL STATEMENTS Disposition of Component Software Division - Pro forma notes The pro forma adjustments for the sale of the component software division have been prepared on the basis of assumptions described in the following notes and includes an estimate of the gain on sale. The actual gain on the sale will be calculated based on the actual assets and liabilities disposed of on the closing date of the transaction. The Company has agreed to modify the stock options of certain employees of the component software division to allow them to continue to vest during their employment by Dassault. If the employees are still employed by Dassault one year after the closing of the sale, the options will vest. Estimates of the fair values of the options will be calculated at interim periods and included in loss from discontinued operations. Ultimately, the fair value of the remaining options at the date of vesting will be included in loss from discontinued operations. The fair value of the options are not significant as of the initial filing date of this registration statement. The pro forma financial statements give effect to the following pro forma adjustments related to the sale of the component software division: (a) To record the cash proceeds from the sale of the component software business pursuant to the Purchase Agreement entered into on July 4, 2000 with Dassault, as amended. Consideration consists of $25.0 million in cash, including $1,000,000 in escrow related to general representations and warranties, less certain adjustments pursuant to the Purchase Agreement and certain expenses related to the transaction totaling approximately $5.0 million. (b) As of September 30, 2000, the assets and liabilities of the component software division consisted of the following: Assets: Accounts receivable, net $3,115 Prepaid expenses and other 1,081 Equipment, net 2,001 Purchased computer software and other intangibles, net 1,711 ------ Total Assets 7,908 Liabilities: Deferred revenue 2,319 ------ Net assets of discontinued operations $5,589 ======
(c) To reflect the payment in full of the loan from Dassault to the Company for $2 million. (d) An adjustment to accumulated deficit to reflect the estimated gain on the transaction of $17.4 million. 7 8 (e) Reductions in revenue from the sale of the component software business of $14.1 million for the year ended (f) Reductions in cost of revenue from the sale of the component software business of $1.0 million for the year ended December 31, 1999. (g) Reductions in operating expenses from the sale of the component software business of $14.8 million for the year ended December 31, 1999. Operating expenses for the period ended December 31, 1999 includes a $500,000 charge for acquired in-process research and development expense related to the acquisition of Sven Technologies. (h) Reductions in interest income from the sale of the component software business of $139,000 for the year ended December 31, 1999. (i) Reductions in income tax expense from the sale of the component software business of $246,000 for the year ended December 31, 1999. Prescient Technologies, Inc. - Pro forma notes The Prescient acquisition was accounted for using the purchase method of accounting. The pro forma adjustments have been prepared on the basis of assumptions described in the following notes and includes assumptions relating to the allocation of the consideration paid for the assets and liabilities of Prescient based on estimates of their fair values. In the opinion of the Company's management, all adjustments necessary to present fairly such pro forma financial information have been made based on the terms and structure of the Prescient acquisition agreement. Prescient was acquired by the Company in July 2000. Accordingly, the results of operations of Prescient subsequent to June 30, 2000 have been included in the Company's results of operations. The pro forma financial statements give effect to the following pro forma adjustments related to the Prescient acquisition: (j) To reflect the additional amortization of intangible assets from the Prescient acquisition. The acquisition of certain assets and liabilities of Prescient resulted in approximately $773,000 of software costs and other intangible assets, which are being amortized over their estimated useful lives of three years. (k) To reflect the issuance of the 300,000 shares of common stock. 8 9 (c) Exhibits. 10.1 Share Purchase Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes Corp. 10.2 Cross License Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.3 Co-Branding Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.4 Server Software License Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.5 Web Services Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.6 Joint Software License Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.7 Master Software Reseller Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.8 IntraVISION License Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Spatial Components, LLC 10.9 Catia V5 Galaxy Program Solution Provider Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 99.1 Press release related to consummation of sale of component software division to Spatial Corp.
9 10 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 hereunto duly authorized. PLANETCAD INC. Date: November 21, 2000 By: /s/ R. BRUCE MORGAN ---------------------------------- R. Bruce Morgan President, Chief Executive Officer, Chief Financial Officer and Director 10 11 EXHIBIT INDEX
EXHIBIT NUMBER DESCRIPTION - ------- ----------- 10.1 Share Purchase Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes Corp. 10.2 Cross License Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.3 Co-Branding Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.4 Server Software License Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.5 Web Services Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.6 Joint Software License Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.7 Master Software Reseller Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 10.8 IntraVISION License Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Spatial Components, LLC 10.9 Catia V5 Galaxy Program Solution Provider Agreement, dated as of November 14, 2000, between PlanetCAD Inc. and Dassault Systemes S.A. 99.1 Press release related to consummation of sale of component software division to Spatial Corp.
EX-10.1 2 d82148ex10-1.txt SHARE PURCHASE AGREEMENT 1 EXHIBIT 10.1 SHARE PURCHASE AGREEMENT SHARE PURCHASE AGREEMENT (this "Agreement"), dated as of November 14, 2000, by and among Spatial Technology Inc., a corporation organized under the laws of the State of Delaware (the "Company"), and Dassault Systemes Corp., a corporation organized under the laws of the State of Delaware (the "Purchaser"). WHEREAS: A. The Company and the Purchaser are executing and delivering this Agreement in reliance upon one or more exemptions from the registration requirements of United States federal and state securities laws. B. The Purchaser desires to purchase, subject to the terms and conditions stated in this Agreement, 555,556 shares of the Company's common stock, par value $.01 per share (the "Common Stock") for an aggregate purchase price of $2,000,000 (or approximately $3.60 per share). NOW, THEREFORE, in consideration of the foregoing, the mutual promises, conditions and agreements contained herein, and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, each of the Company and the Purchaser hereby agrees as follows: 1. CERTAIN DEFINITIONS. For purposes of this Agreement, the following terms shall have the meanings ascribed to them as provided below: "Business Day" shall mean any day on which the American Stock Exchange (the "AMEX") or, if the Common Stock is not then traded on the AMEX, other principal United States securities exchange or trading market on which the Common Stock is listed or traded is open for trading. "Investment Amount" shall mean $2,000,000. "Material Adverse Effect" shall mean any material adverse effect on (i) the Shares, (ii) the ability of the Company to perform its obligations hereunder (including the issuance of the Shares) or under the registration rights referred to in Section 5(k) below or (iii) the business, operations, properties or financial condition of the Company and its subsidiaries, taken as a whole. "Purchase Agreement" means that certain Purchase Agreement, dated July 4, 2000, as amended on September 2, 2000, among the Purchaser, the Company and Spatial Components, LLC, a Delaware limited liability company. 1 2 "Shares" means the shares of Common Stock to be issued and sold by the Company and purchased by the Purchaser at the Closing. "Trading Day" shall mean a Business Day on which at least 10,000 shares of Common Stock are traded on the principal United States securities exchange or trading market on which such shares of Common Stock are listed or traded. 2. PURCHASE AND SALE OF SHARES. a. Generally. Except as otherwise provided in this Section 2 and subject to the satisfaction (or waiver) of the conditions set forth in Section 6 and Section 7 below, the Purchaser shall purchase the number of Shares determined as provided in this Section 2, and the Company shall issue and sell such number of Shares to the Purchaser for the Investment Amount as provided below. b. Number of Shares Purchased; Form of Payment; Closing Date. i. On the Closing Date (as defined below), the Company shall sell and the Purchaser shall buy 555,556 Shares for an aggregate purchase price equal to the Investment Amount (or approximately $3.60 per share). ii. On the Closing Date, the Purchaser shall pay the Investment Amount by wire transfer to the Company, in accordance with the Company's written wiring instructions against delivery of certificates representing the Shares being purchased by the Purchaser, and the Company shall deliver such Shares against delivery of the Investment Amount. iii. Subject to the satisfaction (or waiver) of the conditions set forth in Section 6 and Section 7 below, the date and time of the sale of the Shares pursuant to this Agreement (the "Closing") shall be the date and time of the closing to be held pursuant to Section 1.05 of the Purchase Agreement or such other date or time as the parties may mutually agree ("Closing Date"). The Closing shall occur at the offices of Hogan & Hartson L.L.P., 1800 Broadway, Suite 200, Boulder, CO 80302, or at such other place as the parties may otherwise agree. 3. THE PURCHASER'S REPRESENTATIONS AND WARRANTIES. The Purchaser represents and warrants to the Company as follows: a. Purchase for Own Account. The Purchaser is purchasing the Shares for the Purchaser's own account and not with a present view towards the distribution thereof. The Purchaser understands and acknowledges that the Purchaser must bear the economic risk of this investment indefinitely, unless the Shares are registered pursuant to the Securities Act of 1933, as amended (the "Securities Act"), and any applicable state securities or blue sky laws or an exemption from such registration is available, and that the Company has no present intention of registering any such Shares other than as contemplated by Section 5(k). Notwithstanding anything in this Section 3(a) to the contrary, by making the foregoing representation, the Purchaser does not agree to hold the Shares for any minimum or other specific term and reserves 2 3 the right to dispose of the Shares at any time in accordance with or pursuant to a registration statement or an exemption from registration under the Securities Act and any applicable state securities or blue sky laws. b. Information. The Purchaser has been furnished all materials relating to the business, finances and operations of the Company and its subsidiaries and materials relating to the offer and sale of the Shares which have been requested by the Purchaser. The Purchaser has been afforded the opportunity to ask questions of the Company and has received satisfactory answers to any such inquiries. Neither such inquiries nor any other due diligence investigation conducted by the Purchaser or its counsel or any of its representatives shall modify, amend or affect the Purchaser's right to rely on the Company's representations and warranties contained in Section 4 below. c. Governmental Review. The Purchaser understands that no United States federal or state agency or any other government or governmental agency has passed upon or made any recommendation or endorsement of the Shares. d. Authorization; Enforcement. The Purchaser has the requisite power and authority to enter into and perform its obligations under this Agreement and to purchase the Shares in accordance with the terms hereof. This Agreement has been duly and validly authorized, executed and delivered on behalf of the Purchaser and is a valid and binding agreement of the Purchaser enforceable against the Purchaser in accordance with its terms, subject to applicable bankruptcy, insolvency, reorganization, moratorium, fraudulent transfer and other laws affecting creditors' rights and remedies generally and to general principles of equity (regardless of whether enforcement is sought in a proceeding at law or in equity). e. Transfer or Resale. The Purchaser understands that (i) except as provided in Section 5(k), the Shares have not been and are not being registered under the Securities Act or any state securities laws, and may not be transferred unless (a) subsequently registered thereunder, (b) the Purchaser shall have delivered to the Company an opinion of counsel reasonably acceptable to the Company (which opinion shall be in form, substance and scope customary for opinions of counsel in comparable transactions) to the effect that the Shares to be sold or transferred may be sold or transferred under an exemption from such registration, or (c) sold under Rule 144 promulgated under the Securities Act (or a successor rule); and (ii) neither the Company nor any other person is under any obligation to register such Shares under the Securities Act or any state securities laws or to comply with the terms and conditions of any exemption thereunder, in each case, other than pursuant to the registration rights in Section 5(k). Notwithstanding the foregoing, no such registration statement or opinion of counsel shall be necessary for a transfer by the Purchaser to its stockholders in accordance with their interest in the corporation. f. Legends. The Purchaser understands that the Shares and, until such time as the Shares have been registered under the Securities Act as contemplated by the registration rights in Section 5(k) or otherwise may be sold by the Purchaser under Rule 144, the certificates for the Shares will bear a restrictive legend in substantially the following form: 3 4 The securities represented by this certificate have not been registered under the Securities Act of 1933, as amended, or the securities laws of any state of the United States. The securities represented hereby may not be offered or sold in the absence of an effective registration statement for the securities under applicable securities laws unless offered, sold or transferred under an available exemption from the registration requirements of those laws. The legend set forth above shall be removed and the Company shall issue a certificate without such legend to the holder of any Shares upon which it is stamped, if, (a) the sale of any such Shares is registered under the Securities Act, (b) such holder provides the Company with an opinion of counsel, in form and substance customary for opinions of counsel in comparable transactions, to the effect that a public sale or transfer of any such Shares may be made without registration under the Securities Act or (c) such holder provides the Company with reasonable assurances that any such Shares can be sold under Rule 144. The Purchaser agrees to sell all Shares, including those represented by a certificate(s) from which the legend has been removed, pursuant to an effective registration statement or under an exemption from the registration requirements of the Securities Act. The legend shall be removed when such Shares may be sold pursuant to an effective registration statement or sold under Rule 144(k). g. Accredited Investor Status. The Purchaser is an "accredited investor" as that term is defined in Rule 501(a) of Regulation D ("Regulation D") promulgated by the United States Securities and Exchange Commission (the "SEC") under the Securities Act. The Purchaser is not registered as a broker or dealer under Section 15(a) of the Securities Exchange Act of 1934, as amended, or a member of the National Association of Securities Dealers. h. Company Reliance. The Purchaser understands that the Shares are being offered and sold to it in reliance on an exemption from the registration requirements of United States federal and state securities laws and that the Company is relying upon the truth and accuracy of, and the Purchaser's compliance with, the representations, warranties, agreements, acknowledgments, and understandings of the Purchaser set forth herein in order to determine the availability of such exemptions and the eligibility of the Purchaser to acquire the Shares. 4. REPRESENTATIONS AND WARRANTIES OF THE COMPANY. The Company represents and warrants to the Purchaser as follows: a. Organization and Qualification. The Company is a corporation, and each of its subsidiaries is an entity, duly organized and existing under the laws of the jurisdiction in which it is organized, and has the requisite corporate power to own its properties and to carry on its business as now being conducted. The Company and each of its subsidiaries is duly qualified as a foreign entity to do business and is in good standing in every jurisdiction in which the nature of the business conducted by it makes such qualification necessary and where the failure so to qualify would have a Material Adverse Effect. The SEC Documents (as hereinafter defined) set 4 5 forth the name of each of the Company's subsidiaries and its jurisdiction of organization. Each of the Company's subsidiaries are wholly-owned. b. Authorization; Enforcement. (i) The Company has the requisite corporate power and authority to enter into and perform its obligations under this Agreement and to issue and sell the Shares in accordance with the terms hereof; (ii) the execution, delivery and performance of this Agreement by the Company and the consummation by it of the transactions contemplated hereby (including, without limitation, the issuance and sale of the Shares) have been duly authorized by the Company's Board of Directors and no further consent or authorization of the Company, its Board of Directors or its stockholders is required; (iii) this Agreement has been duly executed and delivered by the Company; and (iv) this Agreement constitutes the valid and binding obligation of the Company enforceable against the Company in accordance with their respective terms, subject to applicable bankruptcy, insolvency, reorganization, moratorium, fraudulent transfer and other laws affecting creditors' rights and remedies generally and to general principles of equity (regardless of whether enforcement is sought in a proceeding at law or in equity). c. Capitalization. As of the date hereof, the authorized capital stock of the Company consists of 25,000,000 shares, consisting of two classes: 22,500,000 shares of Common Stock and 2,500,000 shares of preferred stock, par value $.01 per Share (the "Preferred Stock"). According to a certificate from the Company's transfer agent dated November 12, 2000, an aggregate of 11,887,307 shares of the Company's Common Stock were issued and outstanding as of the date of such transfer agent certificate. No shares of the Company's Preferred Stock are outstanding as of the date hereof. As of the date hereof, there is an aggregate of 4,630,599 shares of the Company's Common Stock reserved for issuance under the Company's stock option plans and employee stock purchase plan. All of such outstanding shares of the Company's capital stock have been, or upon issuance will be, validly issued, fully paid and nonassessable. Except as set forth in this Section 4(c) or on the disclosure schedule (the "Schedule") referencing this Section 4(c), no shares of capital stock of the Company (including the Shares) or any of its subsidiaries are subject to preemptive rights or any other similar rights of the stockholders of the Company or any liens or encumbrances created or incurred by the Company. Except for the Shares and as disclosed in this Section 4(c) or Schedule 4(c), as of the date of this Agreement, (i) there are no outstanding options, warrants, scrip, rights to subscribe to, calls or commitments of any character whatsoever relating to, or securities or rights convertible into or exercisable or exchangeable for, any shares of capital stock of the Company or any of its subsidiaries, or arrangements by which the Company or any of its subsidiaries is or may become bound to issue additional shares of capital stock of the Company or such subsidiaries, and (ii) there are no agreements or arrangements under which the Company or any of its subsidiaries is obligated to register the sale of any of its or their securities under the Securities Act (except as provided in Section 1.04(d) and 1.09 of the Purchase Agreement and the Registration Rights Agreement, dated February 18, 2000 (the "Registration Rights Agreement"), among the Company, the Purchaser and the other investors identified therein). Except as set forth on Schedule 4(c), there are no securities or instruments containing price-based antidilution or similar provisions that may be triggered by the issuance of the Shares in accordance with the terms of this Agreement or the Registration Rights Agreement and the holders of the securities and instruments listed on such Schedule 4(c) have waived any rights they may have under any such antidilution or similar 5 6 provisions in connection with the issuance of the Shares in accordance with the terms of this Agreement or the Registration Rights Agreement. The Company has made available to the Purchaser and counsel for the Purchaser true and correct copies of the Company's Certificate of Incorporation as in effect on the date hereof ("Certificate of Incorporation"), the Company's By-laws as in effect on the date hereof (the "By-laws") and all other instruments and agreements governing securities convertible into or exercisable or exchangeable for capital stock of the Company, except for stock options granted under any employee benefit plan or director stock option plan of the Company. d. Issuance of Shares. The Shares are duly authorized and when issued and paid for in accordance with the terms hereof, will be validly issued, fully paid and non-assessable, and free from all taxes, liens, claims and encumbrances, and will not be subject to preemptive rights or other similar rights of stockholders of the Company and will not impose personal liability upon the holder thereof. e. No Conflicts. The execution, delivery and performance of this Agreement by the Company, and the consummation by the Company of the transactions contemplated hereby and thereby (including, without limitation, the issuance and sale of the Shares) will not (i) conflict with or result in a violation of the Certificate of Incorporation or By-laws or (ii) conflict with, or constitute a default (or an event which, with notice or lapse of time or both, would become a default) under, or give to others any rights of termination, amendment, acceleration or cancellation of any agreement, indenture or instrument to which the Company or any of its subsidiaries is a party, or result in a violation of any law, rule, regulation, order, judgment or decree (including United States federal and state securities laws and regulations and AMEX regulations) applicable to the Company or any of its subsidiaries or by which any property or asset of the Company or any of its subsidiaries is bound or affected (except, with respect to clause (ii), for such conflicts, defaults, terminations, amendments, accelerations, cancellations and violations as would not, individually or in the aggregate, have a Material Adverse Effect). Neither the Company nor any of its subsidiaries is in violation of its Certificate of Incorporation, By-laws and other organizational documents and neither the Company nor any of its subsidiaries is in default (and no event has occurred which, with notice or lapse of time or both, would put the Company or any of its subsidiaries in default) under, nor has there occurred any event giving others (with notice or lapse of time or both) any rights of termination, amendment, acceleration or cancellation of, any agreement, indenture or instrument to which the Company or any of its subsidiaries is a party, except for actual or possible violations, defaults or rights as would not, individually or in the aggregate, have a Material Adverse Effect. The businesses of the Company and its subsidiaries are not being conducted in violation of any law, ordinance or regulation of any governmental entity, except for actual or possible violations, if any, the sanctions for which either individually or in the aggregate would not have a Material Adverse Effect. Except as specifically contemplated by this Agreement and as required under the Securities Act and any applicable state securities laws, the Company is not required to obtain any consent, approval, authorization or order of, or make any filing or registration with, any court or governmental agency or any regulatory or self regulatory agency in order for it to execute, deliver or perform any of its obligations under this Agreement (including, without limitation, the issuance and sale of the Shares as provided hereby) in accordance with the terms hereof. The Company is not in violation of the listing requirements of the AMEX and does not reasonably anticipate that the 6 7 Common Stock will be delisted by AMEX in the foreseeable future based on its rules (and interpretations thereof) as currently in effect. f. SEC Documents; Financial Statements. Except for the failure to timely file a required report on Form 8-K in connection with the acquisition of Prescient Technologies, Inc., since January 1998, the Company has timely filed all reports, schedules, forms, statements and other documents required to be filed by it with the SEC pursuant to the Securities Exchange Act of 1934, as amended (the "Exchange Act"), and has filed all registration statements and other documents required to be filed by it with the SEC pursuant to the Securities Act (all of the foregoing filed prior to the date hereof, and all exhibits included therein and financial statements and schedules thereto and documents incorporated by reference therein, being hereinafter referred to herein as the "SEC Documents"). The Company has made available to the Purchaser and to counsel for the Purchaser true and complete copies of the SEC Documents not filed on EDGAR and reasonably requested by Purchaser, except for the exhibits and schedules thereto and the documents incorporated therein by reference. As of their respective dates, the SEC Documents complied in all material respects with the requirements of the Exchange Act or the Securities Act, as the case may be, and the rules and regulations of the SEC promulgated thereunder applicable to the SEC Documents, and none of the SEC Documents, at the time they were filed with the SEC, contained any untrue statement of a material fact or omitted to state a material fact required to be stated therein or necessary in order to make the statements therein, in light of the circumstances under which they were made, not misleading. Any statements made in any such SEC Documents that are or were required to be updated or amended under applicable law have been so updated or amended. As of their respective dates, the financial statements of the Company included in the SEC Documents complied in all material respects with applicable accounting requirements and the published rules and regulations of the SEC applicable with respect thereto. Such financial statements have been prepared in accordance with United States generally accepted accounting principles, consistently applied, during the periods involved (except (i) as may be otherwise indicated in such financial statements or the notes thereto, or (ii) in the case of unaudited interim statements, to the extent they may not include footnotes or may be condensed or summary statements) and fairly present in all material respects the consolidated financial position of the Company and its subsidiaries as of the dates thereof and the results of their operations and cash flows for the periods then ended (subject, in the case of unaudited statements, to normal and recurring year-end audit adjustments). Except as set forth in the SEC Documents, the Company has no liabilities, contingent or otherwise, other than (i) liabilities incurred in the ordinary course of business subsequent to the date of such SEC Documents and (ii) obligations under contracts and commitments incurred in the ordinary course of business and not required under generally accepted accounting principles to be reflected in such SEC Documents, which liabilities and obligations referred to in clauses (i) and (ii) of this sentence would not individually or in the aggregate, have a Material Adverse Effect. g. Absence of Certain Changes. Except as disclosed in the SEC Documents, since March 31, 2000, there has been no change or development which individually or in the aggregate has had or could have a Material Adverse Effect. h. Absence of Litigation. Except as disclosed in the SEC Documents and set forth on Schedule 4(h), there is no action, suit, proceeding, inquiry or investigation before or by any 7 8 court, public board, government agency, self-regulatory organization or body pending or, or to the knowledge of the Company, threatened against or affecting the Company, or any of its subsidiaries, or any of their directors or officers in their capacities as such, except as would not have a Material Adverse Effect. i. Intellectual Property. The Company and each of its subsidiaries owns or is licensed to use all patents, patent applications, trademarks, trademark applications, trade names, service marks, copyrights, copyright applications, licenses, permits, know-how (including trade secrets and other unpatented and/or unpatentable proprietary or confidential information, systems or procedures) and other similar rights and proprietary knowledge (collectively, "Intangibles") necessary for the conduct of its business as now being conducted and as proposed to be conducted. Neither the Company nor any of its subsidiaries is infringing or in conflict with any other person with respect to any Intangibles. Neither the Company nor any of its subsidiaries has received written notice that it is infringing upon third party Intangibles. Neither the Company nor any of its subsidiaries has entered into any consent, indemnification, forbearance to sue or settlement agreements with respect to the validity of the Company's or such subsidiary's ownership or right to use its Intangibles and, to the knowledge of the Company, there is no basis for any such claim to be successful. The Intangibles are valid and enforceable, and no registration relating thereto has lapsed, expired or been abandoned or canceled or is the subject of cancellation or other adversarial proceedings, and all applications therefor are pending and in good standing. The Company has complied, in all material respects, with its contractual obligations relating to the protection of the Intangibles used pursuant to licenses. To the Company's knowledge, no person is infringing on or violating the Intangibles owned or used by the Company. j. Agreements. Except for the transactions contemplated by the Purchase Agreement and except as filed as Exhibits to the SEC Documents or as set forth in Schedule 4(j), there are no agreements, understandings, instruments, contracts, proposed transactions, judgments, orders, writs or decrees to which the Company or any of its subsidiaries is a party or by which it is bound that may involve (i) obligations (contingent or otherwise) of, or payments to, the Company in excess of $250,000 (other than licenses pursuant to license agreements entered into in the ordinary course of the Company's business) or (ii) the license of any patent, copyright, trade secret or other proprietary right to or from the Company (other than licenses pursuant to license agreements entered into in the ordinary course of the Company's business), or (iii) provisions restricting or affecting the development, manufacture or distribution of the Company's or its subsidiaries' products or services, or (iv) indemnification by the Company or any subsidiary with respect to infringements of proprietary rights (other than indemnification obligations arising from purchase or sale agreements entered into in the ordinary course of business) or (v) transactions between the Company and any of the Company's or its subsidiaries' officers, directors, affiliates, or any affiliates thereof (other than pursuant to employment agreements or stock or benefit plans), or (vi) employment of the Company's officers or (vii) incurrence of any indebtedness for money borrowed or any other liabilities (other than with respect to dividend obligations, distributions, indebtedness and other obligations incurred in the ordinary course of business or as disclosed in the SEC Documents) individually in excess of $250,000 or, in the case of indebtedness and/or liabilities individually less than $250,000, in excess of $500,000 in the aggregate, or (viii) the making of any loans or advances to any person, 8 9 other than ordinary advances for travel expenses, or (ix) the sale, exchange or other disposition of any of its assets or rights, other than licenses in the ordinary course of business. k. Foreign Corrupt Practices. Neither the Company, its subsidiaries, or any director, officer, agent, employee or other person acting on behalf of the Company or any of its subsidiaries has, in the course of such person's actions for, or on behalf of, the Company, or any of its subsidiaries, used any corporate funds for any unlawful contribution, gift, entertainment or other unlawful expenses relating to political activity; made any direct or indirect unlawful payment to any foreign or domestic government official or employee from corporate funds; violated or is in violation of any provision of the United States Foreign Corrupt Practices Act of 1977; or made any bribe, rebate, payoff, influence payment, kickback or other unlawful payment to any foreign or domestic government official or employee. l. Environment. Except as disclosed in the SEC Documents (i) there is no environmental liability, nor, to the knowledge of the Company, factors likely to give rise to any environmental liability, affecting any of the properties of the Company or any of its subsidiaries that, individually or in the aggregate, would have a Material Adverse Effect and (ii) neither the Company nor any of the subsidiaries has violated any environmental law applicable to it now or previously in effect, other than such violations or infringements that, individually or in the aggregate, have not had and will not have a Material Adverse Effect. m. Title. The Company does not own any real property. Any real property and facilities held under lease by the Company or any of its subsidiaries are held by the Company or such subsidiary under valid, subsisting and enforceable leases with such exceptions which have not had and will not have a Material Adverse Effect. n. Insurance. The Company and its subsidiaries maintain such insurance relating to their business, operations, assets, key-employees and officers and directors as is appropriate to their business, assets and operations, in such amounts and against such risks as are customarily carried and insured against by owners of comparable businesses, assets and operations, and such insurance coverages will be continued in full force and effect to and including the Closing Date other than those insurance coverages in respect of which the failure to continue in full force and effect could not reasonably be expected to have a Material Adverse Effect. o. Disclosure. All information relating to or concerning the Company and its subsidiaries set forth in this Agreement or provided to the Purchaser in writing in connection with the transactions contemplated hereby is true and correct in all material respects and the Company has not omitted to state any material fact necessary in order to make the statements made herein or therein, in light of the circumstances under which they were made, not misleading; provided, however, that this representation and warranty shall not apply to any information contained within any of the foregoing related to future events, or the projected future financial performance of the Company, including any financial projections, or descriptions of potential strategic or business relationships between the Company and third parties. p. No Brokers. Except for Roth Capital Partners, Inc., the Company has not engaged any person to which or to whom brokerage commissions, finder's fees, financial advisory fees or 9 10 similar payments are or will become due in connection with this Agreement or the transactions contemplated hereby. q. Tax Status. The Company and each of its subsidiaries has made or filed all federal, state and local income and all other tax returns, reports and declarations required by any jurisdiction to which it is subject and has paid all taxes and other governmental assessments and charges, shown or determined to be due on such returns, reports and declarations, except those being contested in good faith, and has set aside on its books provisions adequate for the payment of all taxes for periods subsequent to the periods to which such returns, reports or declarations apply. There are no unpaid taxes claimed to be due by the taxing authority of any jurisdiction. The Company has not executed a waiver with respect to any statute of limitations relating to the assessment or collection of any federal, state or local tax. Except as set forth in Schedule 4(q), none of the Company's tax returns has been or is being audited by any taxing authority. r. No General Solicitation. Neither the Company nor any person participating on the Company's behalf in the transactions contemplated hereby has conducted any "general solicitation" or "general advertising" as such terms are used in Regulation D, with respect to any of the Shares being offered hereby. s. No Integrated Offering. Neither the Company, nor any of its affiliates, nor any person acting on its or their behalf, has, directly or indirectly, made any offers or sales of any security or solicited any offers to buy any security under circumstances that would require registration of the Shares being offered hereby under the Securities Act or cause this offering of Shares to be integrated with any prior offering of securities of the Company for purposes of the Securities Act or any applicable stockholder approval provisions, including, without limitation, the applicable AMEX regulations. t. Real Property Holding Corporation. Neither the Company nor any subsidiary of the Company is a real property holding corporation within the meaning of Section 897(c)(2) of the Code and any regulations promulgated thereunder. u. ERISA. The Company has complied in all material respects with the applicable rules and regulations of the Employee Retirement Income Security Act of 1974, as amended, with respect to any employee benefit plans subject thereto. 5. COVENANTS. a. Best Efforts. Each of the Company and the Purchaser shall use its best efforts timely to satisfy each of the conditions set forth in Section 6 and Section 7 of this Agreement. b. Blue Sky Laws. The Company shall, on or before the Closing Date, take such action as the Company shall reasonably determine is necessary to qualify the Shares for sale to the Purchaser pursuant to this Agreement under applicable securities or "blue sky" laws of the states of the United States or obtain exemption therefrom, and shall provide evidence of any such action so taken to the Purchaser and counsel for the Purchaser as soon as practicable after such filing. 10 11 c. Reporting Status. So long as the Purchaser beneficially owns any Shares, the Company shall timely file all reports required to be filed with the SEC pursuant to the Exchange Act, and shall not terminate its status as an issuer required to file reports under the Exchange Act even if the Exchange Act or the rules and regulations thereunder would permit such termination. d. Use of Proceeds. The Company shall use the net proceeds from the sale of the Shares in order to fund the Company's sales and marketing activities for working capital and for other general corporate purposes, including potential strategic acquisitions, but in no event shall the Company use such net proceeds to repurchase any outstanding securities of the Company or for any other distribution with respect to outstanding securities of the Company. e. Listing. Promptly after the Closing Date, the Company shall secure the listing of the Shares upon each national securities exchange or automated quotation system, if any, upon which shares of Common Stock are then listed or quoted (subject to official notice of issuance). The Company will use its best efforts to continue the listing and trading of its Common Stock on AMEX (or, if listing is moved, the New York Stock Exchange ("NYSE") or the Nasdaq National Market ("NASDAQ")), and will comply in all material respects with the Company's reporting, filing and other obligations under the bylaws or rules of AMEX, NYSE or NASDAQ, as the case may be. f. Corporate Existence. So long as the Purchaser beneficially owns any Shares, the Company shall maintain its corporate existence, except in the event of a merger, consolidation or sale of all or substantially all of the Company's assets, as long as the surviving or successor entity in such transaction assumes the Company's obligations hereunder and under the agreements and instruments entered into in connection herewith. g. No Integrated Offering. Neither the Company, nor any of its affiliates, nor any person acting on its or their behalf, shall, directly or indirectly, make any offers or sales of any security or solicit any offers to buy any security under circumstances that would require registration of the Shares being offered hereby under the Securities Act or cause this offering of Shares to be integrated with any prior or future offering of securities of the Company for purposes of the Securities Act or any applicable stockholder approval provisions, including, without limitation, the applicable regulations of AMEX, NYSE or NASDAQ, as the case may be. h. Restrictions on Purchase. The Purchaser agrees not to purchase any shares of the Company's Common Stock in the open market or in privately negotiated transactions from non-affiliates for a period of one year from the Closing Date, without the prior approval of the Board of Directors of the Company. i. Indemnification by the Company. The Company shall indemnify, defend and hold the Purchaser, and its affiliates, officers, directors, stockholders, employees and agents, harmless with respect to any and all demands, claims, actions, suits, proceedings, assessments, judgments, costs, losses, damages, liabilities and expenses (including, without limitation, reasonable attorneys' fees) ("Losses") asserted against, resulting from, imposed upon or incurred by any such indemnified party directly relating to or arising out of: (a) the inaccuracy of any representation or warranty of the Company contained herein or in any instrument or certificate 11 12 delivered pursuant to this Agreement, and (b) the breach of any covenant or agreement by the Company. j. Indemnification by the Purchaser. The Purchaser shall indemnify, defend and hold the Company, and its affiliates, officers, directors, stockholders, employees and agents, harmless with respect to any and all Losses asserted against, resulting from, imposed upon or incurred by any such indemnified party directly relating to or arising out of: (a) the inaccuracy of any representation or warranty of the Purchaser contained herein or in any instrument or certificate delivered pursuant to this Agreement, and (b) the breach of any covenant or agreement by the Purchaser. k. Registration Rights. The Purchaser will have registration rights in respect of the shares of Common Stock purchased hereunder as provided in Section 1.04(d) and 1.09 of the Purchase Agreement. 6. CONDITIONS TO THE COMPANY'S OBLIGATION TO SELL. The obligation of the Company hereunder to issue and sell Shares to the Purchaser at the Closing hereunder is subject to the satisfaction, at or before the Closing Date, of each of the following conditions thereto; provided, however, that these conditions are for the Company's sole benefit and may be waived by the Company at any time in its sole discretion. a. The Purchaser shall have executed this Agreement and delivered the same to the Company. b. The Purchaser shall have delivered the Investment Amount in accordance with Section 2(b) above. c. The representations and warranties of the Purchaser shall be true and correct in all material respects as of the date when made and as of the Closing Date as though made at that time (except for representations and warranties that speak as of a specific date, which representations and warranties shall be true and correct as of such date), and the Purchaser shall have performed, satisfied and complied in all material respects with the covenants, agreements and conditions required by this Agreement to be performed, satisfied or complied with by the Purchaser at or prior to the Closing Date. d. No statute, rule, regulation, executive order, decree, ruling or injunction shall have been enacted, entered, promulgated or endorsed by any court or governmental authority of competent jurisdiction or any self-regulatory organization having authority over the matters contemplated hereby which prohibits the consummation of any of the transactions contemplated by this Agreement. 7. CONDITIONS TO THE PURCHASER'S OBLIGATION TO PURCHASE SHARES. The obligation of the Purchaser hereunder to purchase Shares to be purchased by it hereunder is subject to the satisfaction, at or before the Closing Date, of each of the following 12 13 conditions, provided that these conditions are for the Purchaser's sole benefit and may be waived by the Purchaser at any time in the Purchaser's sole discretion: a. The Company shall have executed this Agreement and delivered the same to the Purchaser. b. The Company shall have instructed its transfer agent to issue to the Purchaser duly executed certificates representing the number of Shares. c. Trading in the Common Stock (or on AMEX generally) shall not have been suspended or be under threat of suspension by the SEC or AMEX. d. The representations and warranties of the Company shall be true and correct in all material respects as of the date when made and as of the Closing Date as though made at that time (except for representations and warranties that speak as of a specific date, which representations and warranties shall be true and correct as of such date) and the Company shall have performed, satisfied and complied in all material respects with the covenants, agreements and conditions required by this Agreement to be performed, satisfied or complied with by the Company at or prior to the Closing Date. The Purchaser shall have received a certificate, executed on behalf of the Company by its Vice President, Administration and Corporate Controller, dated as of the Closing Date, to the foregoing effect and attaching true and correct copies of the resolutions adopted by the Company's Board of Directors authorizing the execution, delivery and performance by the Company of its obligations under this Agreement. e. No statute, rule, regulation, executive order, decree, ruling, injunction, action, proceeding or interpretation shall have been enacted, entered, promulgated, endorsed or adopted by any court or governmental authority of competent jurisdiction or any self-regulatory organization, or the staff of any thereof, having authority over the matters contemplated hereby which questions the validity of, or challenges or prohibits the consummation of, any of the transactions contemplated by this Agreement. f. The Purchaser shall have received an opinion of the Company's counsel, dated as of the Closing Date, in form and substance acceptable to counsel for the Purchaser. g. From the date of this Agreement through the Closing Date, there shall not have occurred any Material Adverse Effect. h. The Company shall have provided advance notice to AMEX of the issuance of the Shares and provided the Purchaser with oral or written evidence of the Company's compliance with all applicable rules of AMEX. 8. GOVERNING LAW; MISCELLANEOUS. a. Governing Law; Jurisdiction. This Agreement shall be governed by and construed in accordance with the laws of the State of Delaware. 13 14 b. Counterparts. This Agreement may be executed in two or more counterparts, all of which shall be considered one and the same agreement and shall become effective when counterparts have been signed by each party and delivered to the other party. This Agreement, once executed by a party, may be delivered to the other parties hereto by facsimile transmission of a copy of this Agreement bearing the signature of the party so delivering this Agreement. In the event any signature is delivered by facsimile transmission, the party using such means of delivery shall cause the manually executed Execution Page(s) hereof to be physically delivered to the other party within five (5) days of the execution hereof. c. Headings. The headings of this Agreement are for convenience of reference and shall not form part of, or affect the interpretation of, this Agreement. d. Severability. If any provision of this Agreement shall be invalid or unenforceable in any jurisdiction, such invalidity or unenforceability shall not affect the validity or enforceability of the remainder of this Agreement or the validity or enforceability of this Agreement in any other jurisdiction. e. Entire Agreement; Amendments; Waiver. This Agreement and the instruments referenced herein contain the entire understanding of the parties with respect to the matters covered herein and therein and, except as specifically set forth herein or therein, neither the Company nor the Purchaser makes any representation, warranty, covenant or undertaking with respect to such matters. No provision of this Agreement may be waived or amended other than by an instrument in writing signed by the Company and by the Purchaser. Any waiver by the Purchaser, on the one hand, or the Company, on the other hand, of a breach of any provision of this Agreement shall not operate as or be construed to be a waiver of any other breach of such provision of or any breach of any other provision of this Agreement. The failure of the Purchaser, on the one hand, or the Company, on the other hand to insist upon strict adherence to any term of this Agreement on one or more occasions shall not be considered a waiver or deprive that party of the right thereafter to insist upon strict adherence to that term or any other term of this Agreement. f. Notices. Any notices required or permitted to be given under the terms of this Agreement shall be sent by certified or registered mail (return receipt requested) or delivered personally or by courier or by confirmed telecopy, and shall be effective five days after being placed in the mail, if mailed, or upon receipt or refusal of receipt, if delivered personally or by courier or confirmed telecopy, in each case addressed to a party. The addresses for such communications shall be: If to the Company: Spatial Technology Inc. 2425 55th Street, Ste. 100 Boulder, CO 80301 Telephone No.: 303-544-2900 Facsimile No.: 303-544-3005 Attention: Chief Executive Officer 14 15 With a copy to: Hogan & Hartson L.L.P. 1200 Seventeenth Street, Suite 1500 Denver, CO 80302 Telephone No.: 303-899-7300 Facsimile No.: 303-899-7333 Attention: Whitney Holmes, Esq. If to the Purchaser: Dassault Systemes 9 Quai Marcel Dassault BP310 2150 Suresnes Cedex France Telephone No.: 33.1.40.99.40.99 Facsimile No.: 33.1.42.0445.81 Attention: Thibault de Tersant With a copy to: Shearman & Sterling 599 Lexington Avenue New York, New York 10022 Telephone No.: 212-848-4000 Facsimile No.: 212-848-7179 Attention: Alfred Ross, Jr., Esq. Each party shall provide notice to the other parties of any change in address. g. Successors and Assigns. This Agreement shall be binding upon and inure to the benefit of the parties and their successors and assigns. The Company shall not assign this Agreement or any rights or obligations hereunder without the prior written consent of the Purchaser. h. Third Party Beneficiaries. This Agreement is intended for the benefit of the parties hereto and their respective permitted successors and assigns, and is not for the benefit of, nor may any provision hereof be enforced by any other person. i. Survival. The representations and warranties of the Company and the agreements and covenants set forth in Sections 4, 5 and 8 shall survive the Closing notwithstanding any due diligence investigation conducted by or on behalf of the Purchaser. Moreover, none of the representations and warranties made by the Company herein shall act as a waiver of any rights or remedies the Purchaser may have under applicable federal or state securities laws. The Company 15 16 agrees to indemnify and hold harmless the Purchaser and each of the Purchaser's officers, directors, employees, partners, members, agents and affiliates for loss or damage relating to the Securities purchased hereunder arising as a result of or related to any breach by the Company of any of its representations or covenants set forth herein, including advancement of expenses as they are incurred. j. Publicity. The Company and the Purchaser shall have the right to review and comment upon the issuance of any press releases, or the filing of any SEC or AMEX filings, or any other public statements with respect to the transactions contemplated hereby. The Purchaser shall be provided documents to review at least 48 hours prior to the filing or other issuance thereof except that draft press releases shall be provided to the Purchaser at least 24 hours prior to issuance. Within the time period required by the SEC, the Company shall file a Current Report on Form 8-K or other appropriate form with the SEC disclosing the transactions contemplated hereby, if required in the judgment of counsel to the Company. k. Further Assurances. Each party shall do and perform, or cause to be done and performed, all such further acts and things, and shall execute and deliver all such other agreements, certificates, instruments and documents, as the other party may reasonably request in order to carry out the intent and accomplish the purposes of this Agreement and the consummation of the transactions contemplated hereby. l. Termination. In the event that the Closing Date shall not have occurred on or before November 20, 2000, unless the parties agree otherwise, this Agreement shall terminate at the close of business on such date. Notwithstanding any termination of this Agreement, any party not in breach of this Agreement shall preserve all rights and remedies it may have against another party hereto for a breach of this Agreement prior to or relating to the termination hereof. m. Equitable Relief. The Company acknowledges that a breach by it of its obligations hereunder will cause irreparable harm to the Purchaser by vitiating the intent and purpose of the transactions contemplated hereby. Accordingly, the Company acknowledges that the remedy at law for a breach of its obligations hereunder will be inadequate and agrees, in the event of a breach or threatened breach by the Company of the provisions of this Agreement, that the Purchaser shall be entitled, in addition to all other available remedies, to an injunction restraining any breach and requiring immediate issuance and transfer, without the necessity of showing economic loss and without any bond or other security being required. [REMAINDER OF PAGE INTENTIONALLY LEFT BLANK] 16 17 IN WITNESS WHEREOF, the undersigned Purchaser and the Company have caused this Securities Purchase Agreement to be duly executed as of the date first above written. SPATIAL TECHNOLOGY INC.: By: /s/ R. Bruce Morgan ---------------------------------- Name: R. Bruce Morgan Title: Chief Executive Officer DASSAULT SYSTEMES CORP.: By: /s/ Thibault de Tersant ---------------------------------- Name: Thibault de Tersant Title: Executive Vice President EX-10.2 3 d82148ex10-2.txt CROSS LICENSE AGREEMENT 1 EXHIBIT 10.2 CROSS LICENSE AGREEMENT This Cross License Agreement, dated as of November 14, 2000 (this "Agreement"), is made by and between Dassault Systemes, a societe anonyme organized under the laws of France and the owner of Purchaser ("Dassault Systemes") and/or certain affiliates of Dassault Systemes, and PlanetCAD Inc. (formerly known as Spatial Technology Inc.), a corporation organized under the laws of the State of Delaware ("PlanetCAD") (each a "Party," together, the "Parties"). WITNESSETH: WHEREAS, PlanetCAD, SPATIAL COMPONENTS, LLC and DASSAULT SYSTEMES CORP. entered into a certain Purchase Agreement, dated July 4, 2000 ("Purchase Agreement"), pursuant to which DASSAULT SYSTEMES CORP. acquired the Component Business (as defined in the Purchase Agreement) from PlanetCAD and SPATIAL COMPONENTS, LLC, including certain software; and WHEREAS, in connection with the Purchase Agreement and as a condition to closing the transaction contemplated thereunder the Parties hereto desire to license to each other certain software and to provide certain software support and maintenance services to each other, all in accordance with the terms and conditions set forth herein. NOW, THEREFORE, in consideration of the premises and the mutual agreements and covenants set forth in the Purchase Agreement and in this Agreement, and intending to be legally bound hereby, the Parties hereby agree as follows: 1. DEFINITIONS As used in this Agreement, the terms defined in this section shall have the following respective meanings. Capitalized terms not otherwise defined herein shall have the same meanings as set forth in the Purchase Agreement. AFFILIATE(S) shall mean, with respect to any specified Person, any other Person that, directly or indirectly, Controls, is Controlled by, or is under common Control with such Person. As of the date of signature of this Agreement, the list of Affiliates for each party is specified in Schedule C. ASP(S) shall mean for this Agreement, application services provider, i.e. service(s) offered on line, through Web sites or as enterprise versions offered on corporate Intranets, allowing end users to use an application software functionality, provided by either party on its Web site or on a corporate server in the case of enterprise versions, on a one task at a time or subscription basis, and charged to the end user as such, with no access to the underlying software application that allows the technical work of the task to be performed. 2 CBD SOFTWARE shall mean the following computer software programs, whichever packaging and naming, in the version and release that is commercially available at the Effective Date, as well as corrections, enhancements and modifications of the software delivered in the maintenance services provided hereunder: ACIS (R) 3D Toolkit, ACIS (R), Advanced Blending Husk, ACIS(R) Advanced Rendering Husk, ACIS(R) Local Operations Husk, ACIS(R) Shelling Husk, ACIS(R) Precise Hidden Line Husk, ACIS(R) Mesh Surface Husk, ACIS(R) Space Warping Husk, ACIS(R) Advanced Surfacing Husk, ACIS(R) Cellular Topology Husk, Spatial Deformable Modeler, ACIS(R) Deformable Modeling Husk, JetScream(TM), ACIS(R) JetScream Husk, ACIS(R) RevEnge Husk (MetroCad), ACIS(R) AEC Husk, IVSDK, ACIS(R) Open Viewer and Plug-ins, Large Model Viewer, 3D Building Blox(TM), SAT(R) (ACIS File Format). CNDA shall mean the Confidential and Non-Disclosure Agreement among, inter alia, PlanetCAD and Dassault Systemes executed contemporaneously herewith. COMPETITOR shall mean any Person that manufactures, produces or distributes CAD/CAM/PDM products or services of the kind manufactured, produced or distributed by Dassault Systemes or its Affiliates in the countries where Dassault Systemes or its Affiliates does business during the term of this Agreement, directly or indirectly, through distributors or subsidiaries. In the event PlanetCAD is uncertain whether a Person is considered a Competitor, PlanetCAD shall consult with Dassault Systemes, and Dassault Systemes will make a determination whether such Person is deemed a Competitor for the purposes of this Agreement. CONTROL, with respect to the relationship between or among two or more Persons, shall mean the possession, directly or indirectly, or as trustee or executor, of the power to direct or cause the direction of the affairs or management of a Person, whether through the ownership of voting securities, as trustee or executor, by contract or otherwise, including, without limitation, the ownership, directly or indirectly, of securities having the power to elect a majority of the board of directors or similar body governing the affairs of such Person; provided that neither PlanetCAD nor Dassault Systemes shall be deemed to be controlled by any other Person or under common control with any Person that is not one of their respective subsidiaries. DERIVATIVE WORK(S), means, related to Software, a work which is based upon in whole or in part of such Software, such as a revision, enhancement, modification, translation, abridgment, condensation, expansion, or any other form in which such Software may be recast, transformed, or adapted, or which, if prepared without authorization of the owner of the copyright or other intellectual property right in such Software, would constitute a copyright infringement or other violation of the intellectual property rights. A Derivative Work shall also include, without limitation, compilations or link-edits, improvements, bug fixes, corrections, look and feel changes, upgrades, updates and new version that incorporate such Software in whole or in part. EFFECTIVE DATE means November 14, 2000. KNOW-HOW shall mean all residual information of a non-tangible form, which is not protected by the United States or European Union laws of copyright, patent or trade secrets and which may be 2 3 retained by a party who has had access to confidential and proprietary information of the other party, including ideas, concepts or techniques contained therein. INTELLECTUAL PROPERTY shall mean (a) inventions, whether or not patentable, whether or not reduced to practice, and whether or not yet made the subject of a pending patent application or applications, (b) ideas and conceptions of potentially patentable subject matter, including without limitation, any patent disclosures whether or not reduced to practice and whether or not yet made the subject of a pending patent application or applications, (c) Patents, (d) Trademarks, (e) copyrights (registered or otherwise) and registrations and applications for registration thereof, all moral rights of authors therein, and all rights therein provided by international treaties, conventions or common law, (f) Software, and (g) trade secrets. OBJECT CODE shall mean computer-programming code, substantially or entirely in binary form, that is directly executable by a computer after suitable processing, but without the intervening steps of assembly, compilation or link-edit. PERSON(S) shall mean any individual or legal entity, including without limitation, partnership, corporation, association, trust or unincorporated organization. RUN-TIME shall designate all software materials and databases that are necessary to use any Software as well as this Software itself. SERVER SOFTWARE means all software, including without limitation, Web interface, Web middleware, Web dynamic content billing, Web content generation software, and any Derivative Works thereof that is used by PlanetCAD to provide application services over the Internet. The list of all such Software, including the Third Party Software, as of the date of execution of this Agreement, is attached as Schedule A to the Server Software License Agreement, executed by the Parties concurrently herewith. SOFTWARE shall mean any computer software program, including programming-code, on-line documentation, if any, user interface related thereto or associated therewith, to the extent that such user interface does exist, and related user and installation documentation other than on-line documentation associated with this computer software program. SOURCE CODE shall mean computer-programming code and related system documentation, comments and procedural code, that is not directly executable by a computer but which may be printed out or displayed in a form readable and understandable by a qualified programmer. THIRD PARTY SOFTWARE shall mean computer software programs owned by a party other than PlanetCAD and incorporated into, or currently used by PlanetCAD as of the Effective Date, in connection with the Server Software. TRANSLATOR shall mean the CATIA/SAT translator Software for geometry and topology to be developed and licensed pursuant to Section 3. 3 4 WBM SOFTWARE shall mean the following Software, whichever packaging and naming, in the version and release that is commercially available at the Effective Date, as well as corrections, enhancements and modifications of the software delivered in the maintenance services provided hereunder: IGES Toolkit, PRO/E Translator, Current CATIA V4 Translator (GSSL), the STL Translator, IGES View, and STEP Toolkit. WBM Software does not include any of the Server Software. 2. PURPOSE Subject to the terms and conditions herein, PlanetCAD agrees to license the WBM Software to Dassault Systemes, Dassault Systemes agrees to license the CBD Software to PlanetCAD, and PlanetCAD and Dassault Systemes each agree to provide certain maintenance and support services to the other. 3. OWNERSHIP RIGHTS AND LICENSES IN AND TO THE TRANSLATOR 3.1 Development of the Translator. Unless otherwise agreed by the Parties, Dassault Systemes shall develop the Translator according to the specifications set forth in Schedule A, attached hereto and incorporated herein by reference. Dassault Systemes shall deliver to PlanetCAD (a) the CATIA V4 Translator within six (6) months of the Effective Date, and (b) the CATIA V5 Translator within nine (9) months of the Effective Date. If Dassault Systemes does not develop and deliver the either Translator within these time periods (the "Translator Delivery Date"), it is mutually agreed that Dassault Systemes will provide PlanetCAD with the necessary access to CATIA APIs, and the necessary reasonable technical and development support required to allow PlanetCAD to develop the Translator. Such technical and development support shall be charged to PlanetCAD according to Dassault Systemes' service price list. In any event, Dassault Systemes agrees to provide PlanetCAD with three supported Run Time versions of the necessary CATIA application software, which may only be used by PlanetCAD internally and solely for the purpose of testing the Translator. 3.2 Ownership of the Translator and Derivative Works. Should the Translator be developed by Dassault Systemes and except for the rights granted to PlanetCAD in this Section 3, all right, title and interest in and to the Translator and Derivative Works thereof shall remain with Dassault Systemes. Should the Translator be developed by PlanetCAD, and except for the rights granted to Dassault Systemes in this Section 3, all right, title and interest in and to the Translator and Derivative Works thereof shall remain with PlanetCAD. 3.3 Grant of License by Dassault Systemes to the Translator. Upon the Effective Date, and should Dassault Systemes be the owner of the Translator, Dassault Systemes grants to PlanetCAD a fully-paid, royalty-free, perpetual, irrevocable, non-exclusive, worldwide license: 4 5 (i) To use the Source Code of the Translator and the Derivative Works (a) to make Derivative Works, and/or (b) to support and maintain PlanetCAD's ASPs or enterprise versions thereof using the Translator as the underlying software application. (ii) To use, prepare, compile, install, make, execute, access, reproduce, sell and distribute copies of the Run Time for the Translator and Derivative Works in order for PlanetCAD to offer ASPs or enterprise versions thereof. (iii) To use the Run-Time of the CATIA Software that may be necessary for PlanetCAD to offer public ASPs using the Translator as the underlying software application, being understood that PlanetCAD will not give access to this Run-Time to the ASPs' users. For enterprise versions requiring use of the Translator, the end user is responsible for purchasing a license to use CATIA as may be necessary. (iv) Notwithstanding the foregoing, PlanetCAD shall not have the right hereunder to use, reproduce, sell or distribute the Translator or its Derivative Works as a component toolkit product. 3.4 Grant of License by PlanetCAD to the Translator. Upon the Effective Date, and should PlanetCAD be the owner of the Translator, PlanetCAD grants to Dassault Systemes a fully-paid, royalty-free, perpetual, irrevocable, non-exclusive, worldwide license: (i) To use the Source Code of the Translator and the Derivative Works (a) to make Derivative Works and/or (b) to support and maintain, directly or through distributors or Affiliates, its customers and partners. (ii) To use, prepare, compile, install, make, execute, access, reproduce, sell and distribute copies of the Run Time for the Translator and Derivative Works. 3.5 Distribution Rights of Source Code. Should Dassault Systemes be the owner of the Translator, and upon Dassault Systemes' prior approval pursuant to this Section, Dassault Systemes hereby grants PlanetCAD the limited right to distribute Source Code of the Translator only to the extent necessary to fulfill any contractual source code escrow obligations of third party agreements relating to the sale and distribution of enterprise versions of on line ASPs as contemplated by Section 3.3. The distribution right set forth herein is subject to (a) PlanetCAD giving Dassault Systemes reasonable notice of such contractual source code escrow obligations and (b) Dassault Systemes' approval, which shall not be unreasonably withheld or delayed. 5 6 4. OWNERSHIP RIGHTS AND LICENSES IN AND TO THE CBD SOFTWARE 4.1 Ownership of the CBD Software. Except for the rights granted PlanetCAD in this Section 4, all right, title and interest in and to the CBD Software and Derivative Works thereof shall remain with Dassault Systemes. 4.2 License to the CBD Software. As of the Effective Date, subject to the restrictions set forth in Sections 4.4 and 13.20, and in consideration for the royalty payments set forth in Section 8.1.2, Dassault Systemes grants to PlanetCAD: (i) A perpetual, worldwide, irrevocable, non-exclusive license to use, maintain and support, adapt, prepare, compile, install, make, execute, access, reproduce (but not to distribute), internally or at sub-contractor's site as authorized in Section 13.18, the CBD Software and Derivative Works including Object Code, Source Code and Run-Time thereof to offer its customers on line ASPs and enterprise versions thereof. (ii) A perpetual, worldwide, irrevocable, non-exclusive license to use, sell and distribute the Run Time version of the CBD Software if necessary and only as embedded in such on line ASPs and enterprise versions thereof. All rights and licenses relating to Derivative Works of the CBD Software are set forth in Section 6. 4.3 Distribution Rights of Source Code. Except as provided in Section 13.20, Dassault Systemes' prior approval pursuant to this Section, Dassault Systemes hereby grants PlanetCAD the limited right to distribute Source Code of the CBD Software only to the extent necessary to fulfill any contractual source code escrow obligations of third party agreements relating to the sale and distribution of enterprise versions of on line ASPs as contemplated by Section 4.2(ii). The distribution right set forth herein is subject to (a) PlanetCAD giving Dassault Systemes reasonable notice of such contractual source code escrow obligations and (b) Dassault Systemes' approval, which shall not be unreasonably withheld or delayed. 4.4 Restrictions Relating to the CBD Software. The licenses granted in Section 4.2 and 4.3 shall be subject to the following restrictions: (a) PlanetCAD will not develop any CAD/CAM/PDM modelling applications, without the prior written approval of Dassault Systemes; and (b) The licenses granted in Section 4.2 and 4.3 shall not be used by PlanetCAD, directly or indirectly, in the development, marketing, distribution, licensing, supporting and sale of component software with similar functionalities to the CBD Software. 6 7 (c) PlanetCAD will not allow any third party, including any end-user of "planetCAD.com", and other Internet and intranet services or other enterprise services of PlanetCAD: (i) to use CBD Software except when embedded inside an authorized ASP created under the terms of this Agreement, (ii) to download and/or use any CBD Software as a separate or stand alone component, or (iii) to access the Source Code of the CBD Software, subject to Section 4.3. (d) The scope of the above licenses is limited to the purpose of developing, maintaining and enhancing the PlanetCAD Web service presently named "3Dshare.com" and other non CAD/CAM/PDM Internet and intranet PlanetCAD Web services or enterprise version thereof. (e) Except for the restrictions set forth in this Section 4, PlanetCAD shall not be subject to any other restrictions under the licenses granted in Section 4.2, and 4.5 and 4.6. 4.5 Specific licensing terms for ACIS (R) Open Viewer. As of the Effective Date, Dassault Systemes grants to PlanetCAD the non-exclusive, non transferable, fully paid up right to distribute the Run Time of ACIS(R) Open Viewer, for free down load from its Web sites. This license shall automatically terminate when Dassault Systemes will no longer make this Software available for free down load on its own Web sites. 4.6 Specific licensing terms for ACIS(R) Open Viewer Plug-Ins. As of the Effective Date, Dassault Systemes grants to PlanetCAD the non-exclusive, non-transferable right to distribute Plug-ins for ACIS(R) Open Viewer on its Web sites. This license is granted for 3 years from the Effective Date and for the financial consideration provided in Section 8.1.4. 5. OWNERSHIP RIGHTS AND LICENSES IN AND TO THE WBM SOFTWARE 5.1 Ownership of the WBM Software. Except for the rights granted Dassault Systemes in this Section 5, all right, title and interest in and to the WBM Software and Derivative Works thereof shall remain with PlanetCAD. 5.2 License to the WBM Software. Except as provided in Section 13.20, as of the Effective Date, PlanetCAD grants to Dassault Systemes: (i) A perpetual, paid-up, royalty-free, worldwide, irrevocable, non-exclusive license to use, maintain and support, adapt, prepare, compile, install, make, execute, access, reproduce (but not to distribute), internally or at sub-contractor's site as authorized in Section 13.18, the WBM Software and Derivative Works including both Object Code, Source Code and Run-Time thereof (i) to offer its customers and partners, directly or through its Affiliates and distribution network, on line ASPs and enterprise versions 7 8 thereof, and/or (ii) to make and offer stand alone software products and component products (i.e., as toolkits designed to be embedded into other software products) and/or (iii) to make Derivative Works. (ii) A perpetual, paid-up, royalty-free, worldwide, irrevocable, exclusive license to use, adapt, prepare, compile, install, make, execute, access, reproduce and distribute, directly or indirectly, the WBM Software and Derivative Works as component products and/or stand alone software products in Run-Time or Object Code format only, directly or through its Affiliates and distribution network. (iii) A perpetual, paid-up, royalty-free, worldwide, irrevocable, non-exclusive license to sell and distribute the WBM Software and Derivatives Works in connection with on-line ASPs, enterprise versions thereof, directly or through its Affiliates and distribution network. 5.3 Distribution Rights of Source Code. Except as provided in Section 13.20, upon PlanetCAD's prior approval pursuant to this Section, PlanetCAD hereby grants Dassault Systemes the limited right to distribute Source Code of the WBM Software only to the extent necessary to fulfill any contractual source code escrow obligations of third party agreements relating to the sale and distribution of enterprise versions of on line ASPs as contemplated by Section 4.2(ii). The distribution right set forth herein is subject to (a) Dassault Systemes giving PlanetCAD reasonable notice of such contractual source code escrow obligations and (b) PlanetCAD's approval, which shall not be unreasonably withheld or delayed. 6. DERIVATIVE WORKS As specified in the above Sections 3.3, 4.2 and 5.2, each Party ("Licensee") to whom the other Party ("Licensor") has granted a license under these sections, is allowed to make Derivative Works from the Software so licensed to Licensee. The Parties therefore agree as follows with respect to any such Derivative Works made by Licensee according to the provision of the corresponding license: 6.1 Ownership of Derivative Works. The Parties agree that all right, title and interest in and to all or part of the Derivative Works made by Licensee pursuant to the licenses granted in the Agreement shall be owned exclusively by Licensor. Licensee understands and agrees that such Derivative Works made by Licensee, as well as any portion thereof, shall be the sole property of Licensor from date of creation and, to the extent permitted by law, shall be considered as works made for hire under the copyright laws of the United States of America. To the extent an assignment is necessary and that this assignment cannot be made at present, Licensee agrees to assign to Licensor all of its right, title and interest in and to these Derivative Works, and any part thereof, and in and to all copyrights, patents and other proprietary rights Licensee may have in such Derivative Works. 8 9 The Parties however agree that the creator of a Derivative Work shall remain the owner of such Derivative Work should such Derivative Work be Software (i) developed by or for licensee and using all or part of the licensed Software as a component of an application (i.e. embedded or included in whole or in part in such other Software), and (ii) as long as such Software contains new functionality, significant value added, or creates a new function that is packaged as a standalone product and which user interface is different from existing Software. The Parties also agree that application of an alternative interface technology if this interface is not combined with other significant application level functionalities shall not be considered as having significant added value. 6.2 Delivery Obligations of the Parties. (i) At the end of each quarter, in the event that either Party has made any Derivative Work, such Party shall deliver to Licensor one copy of the Source Code of such Derivative Work, in a sealed and dated envelope, in the form of a CD-ROM, or other appropriate media. (ii) Such items shall be sent to Licensor, as applicable, by international registered mail to the following address: In the case of PlanetCAD: PlanetCAD Inc. 2520 55th Street, Suite 200 Boulder, Colorado 80301 Attn. Office of the President In the case of Dassault Spatial Corp. Systemes: 2425 55th Street, Site 100 Boulder, Colorado 80301 Attn. Mike Payne
or may be delivered to either Party by e-mail transmission if agreed to in advance by the receiving Party. The Parties agree to make their best reasonable commercial efforts to comply with the above process which aims to facilitate the tracing and evidencing of the Derivative Works. Should any Party miss some delivery with that respect, it will make its best reasonable commercial efforts to do it as soon as possible; in any case, both parties recognize that should any of them not deliver Derivative Work under this process, the other Party will keep all its rights and actions to request the transfer of ownership to any work that such other Party deems a Derivative Work under this Agreement. 9 10 6.2 Know-How. The Parties hereby acknowledge and agree that any and all rights to Know-How developed or shared under this Agreement by either Party shall be jointly owned by the Parties and may be used by either party in the operation of their respective business during and following termination of this Agreement. 7. MAINTENANCE AND SUPPORT 7.1 Maintenance and Support for the Translator. Commencing on the Effective Date and unless otherwise agreed by the Parties pursuant to Section 3.1, the Licensor (Dassault Systemes or PlanetCAD, as the case may be) will provide the Licensee with four years maintenance and support as described in the "Maintenance and Support Services Schedule," attached hereto as Schedule B and incorporated herein by reference. 7.2 Maintenance and Support for the CBD Software. Commencing on the Effective Date, Dassault Systemes will provide PlanetCAD with three years maintenance and support as described in the Maintenance and Support Services Schedule. At the end of three years, Dassault Systemes will continue to offer maintenance and support of those parts of CBD Software it continues to market and support at conditions no less favourable than those offered to other customers. 7.3 Maintenance and Support for the WBM Software. Commencing on the Effective Date, PlanetCAD will provide Dassault Systemes with three years maintenance and support as described in the Maintenance and Support Services Schedule. After the three-year period, PlanetCAD will continue to provide maintenance for any WBM Software that is embedded in Dassault Systemes Software (a) for so long as such Dassault Systemes product is marketed and for the twelve month period following cessation of marketing activities relating to such product; or (b) except if PlanetCAD provides twelve month advance notice of discontinuation of WBM Software. 7.4 Effect of Change of Control of PlanetCAD. If there is a change of Control of PlanetCAD to the benefit of a Competitor of Dassault Systemes, Dassault Systemes will not be required to continue providing maintenance or support services, as set forth in Schedule B, for the Translator and/or CBD Software. 8. LICENSE AND MAINTENANCE FEES; PAYMENT 8.1 License Fees and Applicable Royalties. 8.1.1 Translator. The license on the Translator granted by Dassault Systemes to PlanetCAD shall be granted in full consideration of the licenses granted and the services provided by PlanetCAD under this Agreement. Therefore, no license fee shall apply to the Translator. 10 11 8.1.2 CBD Software. (a) Royalty. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] (b) Reporting and Payment of Royalty. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 8.1.3 WBM Software. The license on the WBM Software shall be granted to Dassault Systemes in full consideration of the licenses granted and the services provided by Dassault Systemes under this Agreement. Therefore, no license fee shall apply to the WBM Software. 8.1.4 [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 8.1.5 Audit Rights. PlanetCAD shall, for two years, keep true and accurate records and books of account for each transaction subject to the royalty obligation set forth in this Section 8 containing all particulars which may be necessary for the purpose of auditing payments to Dassault Systemes under this Agreement. During such two year period, and upon reasonable notice to PlanetCAD, Dassault Systemes shall have the right to have an audit conducted through a licensed independent accounting firm, of any billings, collections, and taxes on such itemized statement, and to examine the records and books of account of PlanetCAD in connection therewith. PlanetCAD will bear the costs of such audit if a discrepancy or error of computation in an amount greater than USD 10,000 in favor of Dassault is identified. Any audit conducted pursuant to this Section 8.1.5 shall not be conducted in such a manner as to unreasonably interfere with PlanetCAD's operations and in no event shall an audit be conducted more frequently than once each year. 8.2 Maintenance Fees. 8.2.1 Translator. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE 11 12 SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 8.2.2 CBD Software. Maintenance fees for the CBD Software are included in the royalty fees due Dassault Systemes for the CBD Software pursuant to Section 8.1.2(a) of the Agreement. 8.2.3 WBM Software. As consideration for the license on the CBD Software, PlanetCAD will provide maintenance on the WBM Software at no cost to Dassault Systemes. 9. PAYMENTS AND TAXATION 9.1 Payments. All payments due under this Agreement shall be made in U.S. dollars by bank check or electronic transfer to an account designated by Dassault Systemes. 9.2 Definition of Net Revenue. Net Revenue shall consist of all revenues recognized by PlanetCAD for sales and licensing of ASPs that include or are facilitated by or are based on the CBD Software, including the price paid by the customers, less any applicable discounts and net of any commissions or fees paid to third party resellers, to obtain access to ASPs and any other fees and charges invoiced by PlanetCAD to the customers, without deduction by PlanetCAD of any other costs or expenses related to achievement of the revenue, provided, however, that Net Revenue shall be reduced by the amount, if any, of (i) value-added taxes, (ii) sales taxes or (iii) withholding taxes imposed by any jurisdiction on payments made by a payor in such jurisdiction to a payee outside of such jurisdiction. 9.3 PlanetCAD shall pay any applicable sales or value added tax on the payments due. 10. WARRANTIES AND DISCLAIMER OF WARRANTIES 10.1 Mutual Representations. Each Party represents and warrants to the other Party that such Party: (i) Has suitable agreements with its respective employees to meet the confidentiality obligations under this Agreement; and (ii) It is under no obligation or restriction, and will not assume any obligation or restriction, that would prevent it from performing its obligations under this Agreement. 12 13 10.2 PlanetCAD Representations. PlanetCAD represents and warrants to Dassault Systemes that it owns and/or has valid licenses in all rights, title and interest in and to the WBM Software. PlanetCAD also represents and warrants that, should PlanetCAD develop the Translator, The Translator will materially conform to the specifications set forth in Schedule A for three months following delivery to Dassault Systemes, provided that the Translator is properly used in the operating environment as specified by PlanetCAD. If the Translator does not so conform, PlanetCAD will attempt to make the Translator perform as warranted. PlanetCAD does not warrant that the functions contained in the Translator will meet Dassault Systemes requirements or will enable it to attain the objectives Dassault Systemes has set for itself, or that it will operate in the combination which may be selected for use by Dassault Systemes, or that the operation of the Translator will be uninterrupted or free of Errors. Dassault Systemes shall have exclusive responsibility for (a) program selection to achieve Dassault Systemes' intended results, (b) program installation, (c) taking adequate measures to properly test, operate and use each Translator and (d) results obtained therefrom. Dassault Systemes shall also have exclusive responsibility for selection, use and results of any other programs or programming equipment or services used in connection with the Translator. 10.3 Dassault Systemes Representations. Dassault Systemes represents and warrants that: (i) With exception (a) to the CBD Software that has been delivered to Dassault Systemes by PlanetCAD pursuant to the Purchase Agreement, and (b) to the Derivative Works that shall be made by PlanetCAD to the CBD Software according to Section 6 of this Agreement, it owns and/or has valid licenses in all rights, title and interest in and to the CBD Software; and (ii) The Translator will materially conform to the specifications set forth in Schedule A for three months following delivery to PlanetCAD, provided that the Translator is properly used in the operating environment as specified by Dassault Systemes. If the Translator does not so conform, Dassault Systemes will attempt to make the Translator perform as warranted. If after 60 days from notice by PlanetCAD of the non-conformance, Dassault Systemes has not provided a conforming Translator, PlanetCAD can cancel the license to the non-conforming Translator and PlanetCAD will be entitled to develop itself the Translator according to the provisions of Section 3.1 above. In such case, the license 13 14 set forth in this Section 3.4 shall be deemed to be automatically granted to PlanetCAD. Dassault Systemes does not warrant that the functions contained in the Translator will meet PlanetCAD's requirements or will enable it to attain the objectives PlanetCAD has set for itself, or that it will operate in the combination which may be selected for use by PlanetCAD, or that the operation of the Translator will be uninterrupted or free of Errors. PlanetCAD shall have exclusive responsibility for (a) program selection to achieve PlanetCAD's intended results, (b) program installation, (c) taking adequate measures to properly test, operate and use each Translator and (d) results obtained therefrom. PlanetCAD shall also have exclusive responsibility for selection, use and results of any other programs or programming equipment or services used in connection with the Translator. 10.4 DISCLAIMER OF WARRANTIES. THERE SHALL BE NO WARRANTIES, EXPRESS OR IMPLIED, EXCEPT AS STATED IN THIS SECTION 10, INCLUDING, BUT NOT LIMITED TO, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE, USE, OR REQUIREMENT. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS AGREEMENT, ANY INFORMATION OR MATERIALS FURNISHED BY EITHER PARTY TO THE OTHER ARE PROVIDED ON AN "AS IS" BASIS. 11. LIMITATION OF LIABILITY AND INDEMNIFICATION 11.1 LIMITATION OF LIABILITY. 11.1.1 WITH THE EXCEPTION OF CLAIMS FOR (i) PERSONAL INJURY OR DEATH, (ii) INTELLECTUAL PROPERTY INFRINGEMENT INDEMNIFICATION, AS SET FORTH IN SECTION 11.2, AND (iii) THE CONFIDENTIALITY PROVISIONS SET FORTH IN SECTION 13.1: IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY SPECIAL, EXEMPLARY, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ANY LOST PROFITS, LOST SAVINGS, LOST STAFF TIME OR OTHER ECONOMIC DAMAGES ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. 11.1.2 [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES 14 15 AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 11.2 Intellectual Property Infringement Indemnification. Each Party agrees to hold the other Party, its subsidiaries, distributors, assignees and Affiliates, and their respective officers, directors, employees, and shareholders (collectively, the "Indemnities") harmless from and against any claim of any nature, including, but not limited to, administrative, civil or criminal procedures, which is or may be made or raised against a Party's Indemnities by any third party that the use or distribution of the Software that is the subject of this Agreement and owned by the other Party, infringes or violates any third party's patent, copyright, trade secret or other intellectual property right in any country. Indemnification hereunder shall cover all damages, regardless of their nature, settlements, expenses and costs, including costs of investigation, court costs and attorneys' fees. The payment of any indemnification shall be contingent on: (i) A Party giving prompt written notice to the other Party of any such claim or allegation; (ii) Cooperation by the indemnified Party with the other Party in its defense against the claim; and (iii) The indemnified Parties obtaining the other Party's prior written approval of any settlement, if any, by the indemnified Party of such matters, such approval not to be unreasonably withheld. Notwithstanding the foregoing, neither Party shall have the obligation to indemnify the other for any claims of infringement based on any modification by the latest version of its Software, or from the combination of its Software with any other program, to the extent such claim would not have arisen without such combination or from use of the unmodified Software. 11.3 Additional Remedies. If the operation, distribution or use of any Software that is the subject of this Agreement becomes, or is likely to become, the subject of a claim involving the infringement or other violation of any patent, copyright, trade secret, or other intellectual property rights of any third party, the Parties will jointly determine in good faith what appropriate steps can be agreed upon, with a view towards curing such infringement or other violation, at the Software owner's sole charge. Such steps may include, but are not limited to: (i) The owner securing the right for the other Party to continue using the Server Software, or (ii) The owner replacing or modifying the Software so that it becomes non-infringing. 15 16 If no other option is reasonably available, the owner of the Software agrees to use its best efforts to withdraw, at its sole expense, the infringing Software from the market. 12. TERM AND BREACH OF MATERIAL OBLIGATIONS 12.1 Term. This Agreement shall come into force as of the Effective Date, and shall remain valid until the expiration of the last copyright or other protection available in any Software herein licensed. 12.2 Breach of Material Obligations. In the event a Party fails to perform any of its material obligations under this Agreement, the non-breaching Party has given written notice to the other Party of such failure to perform, and the breach is not cured within a sixty day period from receipt of the notice, the non-breaching Party may terminate any and all of its obligations to provide maintenance and support, as set forth in Section 7, to the breaching Party. 13. MISCELLANEOUS 13.1 Confidentiality. All communications and information disclosed by one Party to the other Party under this Agreement shall be subject to the terms and conditions of the CNDA. Notwithstanding anything to the contrary in the CNDA, all information relating to the Source Code of the CBD Software and Derivative Works thereof and the WBM Software and Derivative Works thereof and the Translator shall be deemed to be Confidential Information under the CNDA even though they are not marked confidential. 13.2 Freedom of Action. Except as otherwise provided, nothing contained in this Agreement shall be construed to limit or impair any right of either Party to enter into similar agreements with other parties, or to develop, acquire, license or market, directly or indirectly, other products or services, competitive with those offered by the other Party. 13.3 Termination of Third Party Licenses. In the event either Dassault Systemes' or PlanetCAD's rights in a third party license that is part of Software subject to the terms of this Agreement is terminated, Dassault Systemes and PlanetCAD will reasonably assist each other in attempting to obtain a satisfactory solution to the loss of such rights. In the event such a solution is not obtained, despite the good faith efforts of the Parties, the Party whose rights in the third party license were terminated may terminate the license granted hereunder as to the specific Software so affected. 13.4 Additional Instruments. Notwithstanding termination of this Agreement, the Parties covenant and agree to execute and deliver any additional instruments or documents necessary to carry out the general intent of this Agreement, including without limitation patent assignments or any other assignments necessary to 16 17 evidence the ownership of Intellectual Property contemplated hereby or any such additional instruments or documents, including such instruments as may be required by the laws of any jurisdiction, now or in effect or hereinafter enacted, that may affect a Party's rights, title or interest, as applicable, in and to any of the software governed hereby. 13.5 Irreparable Injury. Each Party acknowledges and agrees that each covenant in this Agreement pertaining to confidential information and ownership of intellectual property is reasonable and necessary to protect and preserve the rights of the other Party in its confidential information and intellectual property, and that any breach by such Party of the terms of this Agreement may result in irreparable injury to the other Party. Each Party, therefore, subject to a claim of laches, estoppel, acquiescence or other delay in seeking relief, consents and agrees that the other Party shall be entitled to seek and obtain a temporary restraining order and a permanent injunction to prevent a breach or contemplated breach of this Agreement and waives any requirement that the other Party post a bond in connection with seeking such injunctive relief. 13.6 Relationship of the Parties. PlanetCAD and Dassault Systemes are independent contractors, and nothing in this Agreement will create any partnership, joint venture, agency, franchise, sales representative, or employment relationship between the Parties. Neither Party has the authority to act as agent for the other Party or to conduct business in the name of such other Party or make statements, warranties or representations that exceed or are inconsistent with the warranties provided hereunder. 13.7 Notices. All notices required or permitted shall be given in writing, in the English language, and shall be deemed effectively delivered upon personal delivery or three days after deposit with a carrier by registered mail or other equivalent service, postage prepaid, return receipt requested, addressed as follows, or to such other address as either Party may designate to the other: In the case of PlanetCAD: PlanetCAD Inc. 2520 55th Street, Suite 200 Boulder, Colorado 80301 Attn. Office of the President In the case of Dassault Systemes: Dassault Systemes 9 Quai Marcel Dassault 92150 Suresnes Attn. Thibault De Tersant cc: Law Department
13.8 Headings. The descriptive headings contained in this Agreement are for convenience of reference only and shall not affect in any way the meaning or interpretation of this Agreement. 17 18 13.9 Severability. If any term or other provision of this Agreement is deemed invalid, illegal or incapable of being enforced by any law or public policy, all other terms and provisions of this Agreement shall nevertheless remain in full force and effect so long as the economic or legal substance of the transactions contemplated hereby is not affected in any manner materially adverse to any Party. 13.10 Entire Agreement. This Agreement, together with the Schedules attached hereto, constitutes the entire agreement of the Parties with respect to the subject matter hereof and supersedes all prior agreements and undertakings, both written and oral, between Dassault Systemes and PlanetCAD with respect to the subject matter hereof. 13.11 Amendment. This Agreement may not be amended or modified except by an instrument in writing signed by, or on behalf of, duly authorized representatives of Dassault Systemes and PlanetCAD. 13.12 Applicable Law, Venue. This Agreement shall be governed by, and construed in accordance with, the Laws of the State of New York, applicable to contracts executed in and to be performed entirely within that state (without regard to the conflicts of Law provisions thereof). This Agreement shall not be governed by the U.N. Convention on Contracts for the International Sale of Goods. The parties hereto hereby (a) submit to the exclusive jurisdiction of any court of competent jurisdiction sitting in the State of Delaware, The City of Wilmington for the purpose of any Action arising out of or relating to this Agreement brought by any party hereto, and (b) agree, to the fullest extent permitted by applicable law, to waive, and not to assert by way of motion, defense, or otherwise, in any such Action, any claim that is not subject personally to the jurisdiction of the above-named courts, that its property is exempt or immune from attachment or execution, that the Action is brought in an inconvenient forum, that the venue of the Action is improper, or that this Agreement may not be enforced in or by any of the above-named courts. 13.13 Waiver of Jury Trial. EACH OF THE PARTIES HERETO HEREBY WAIVES TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY WITH RESPECT TO ANY ACTIONS OR PROCEEDINGS DIRECTLY OR INDIRECTLY ARISING OUT OF, UNDER OR IN CONNECTION WITH THIS AGREEMENT, OR THE TRANSACTIONS CONTEMPLATED HEREUNDER. 13.14 Counterparts. This Agreement may be executed in one or more counterparts, each of which when executed shall be deemed to be an original but all of which taken together shall constitute one and the same agreement. 13.15 No Waiver. The failure of either Party to enforce any provision of this Agreement shall not constitute a waiver of the right to subsequently enforce such provision, or any other provision of this Agreement. 18 19 13.16 Force Majeure. Neither Party shall be held liable for any failure to perform any of its obligations under this Agreement for as long as, and to the extent that such failure is due to an event of force majeure. An event of force majeure shall include general strikes, lockouts, acts of God, acts of war, mobilization of troops, fire, extreme weather, flood, or other natural calamity, embargo, acts of governmental agency, government or any other laws or regulations. 13.17 Expenses. Except as expressly provided for in this Agreement, each Party shall bear its own expenses incurred in connection with this Agreement, including without limitation travel and living expenses incurred by that Party's employees. 13.18 Assignment; Subcontracting; Third Party Beneficiaries. (a) This Agreement may be assigned or otherwise transferred, by operation of law or otherwise without the express written consent of PlanetCAD and Dassault Systemes, but in such event the assigning Party shall give notice to the non-assigning Party and the non-assigning Party shall have the right to terminate its maintenance and support obligations under this Agreement within the 30 day period following receipt of such notice. (b) Either Party may assign or otherwise transfer all or part of this Agreement to any of its Affiliates and for as long as it remains an Affiliate; provided that no such assignment shall relieve a Party of any of its obligations under this Agreement. In the event there is a change of Control of an Affiliate which terminates its status as an Affiliate of the party to this Agreement, and this Agreement has been assigned to such an Affiliate, this Agreement shall be assigned back to the party within 6 months of the effective date of the change of Control. (c) Either Party may subcontract services necessary to perform the obligations set forth in this Agreement provided that (i) any and all such subcontractors shall have entered into agreements with the subcontracting Party sufficient to enable that Party to comply with all terms and conditions of this Agreement; and (ii) the subcontracting Party shall have obtained prior approval from the other Party, which will not be unreasonably withheld, (a) of its subcontractors, and (b) the method the subcontracting Party will make the Source Code of any Software that is the subject of this Agreement available to said subcontractors, in the event access to such Source Code is necessary. (d) This Agreement shall be binding upon and inure solely to the benefit of the Parties hereto and their permitted assigns, subcontractor or transferee, and nothing herein, express or implied, is intended to or shall confer upon any other person, including, without limitation, any union or any employee or former employee of either Party, any legal or equitable right, benefit or 19 20 remedy of any nature whatsoever, including, without limitation, any rights of employment for any specified period, under or by reason of this Agreement. 13.19 Trademarks. Notwithstanding any other provisions of this Agreement, neither Party shall have the right under this Agreement to use the other Party's trademarks or trade names in connection with any product, service, promotion, public announcement, advertisement or other publication, without securing the prior written consent of such other Party. 13.20 Third Party Licenses. Each party is relieved of its obligations, if any, to (i) deliver the Source Code of a product licensed hereunder or (ii) authorize the creation of Derivative Works from Source Code hereunder to the extent that fulfilling such obligations would cause such party to breach any third party license agreement entered into by such party after the Effective Date. IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed in duplicate originals by their duly authorized officers or representatives. In Paris, on November 14, 2000 For PlanetCAD Inc. For Dassault Systemes Its: Chief Executive Officer Its: Executive Vice President Name: R. Bruce Morgan Name: Thibault de Tersant Signature: /s/ R. Bruce Morgan Signature: /s/ Thibault de Tersant 20 EX-10.3 4 d82148ex10-3.txt CO-BRANDING AGREEMENT 1 EXHIBIT 10.3 CO-BRANDING AGREEMENT This CO-BRANDING AGREEMENT (this "Agreement") is made as of this November 14, 2000 by and between Dassault Systemes, a societe anonyme organized under the laws of France and the owner of Purchaser ("Dassault Systemes") and/or certain affiliates of Dassault Systemes, and PlanetCAD Inc. (formerly known as Spatial Technology Inc.), a corporation organized under the laws of the State of Delaware ("PlanetCAD") (each a "Party," together, the "Parties"). WITNESSETH: WHEREAS, PlanetCAD, SPATIAL COMPONENTS, LLC and DASSAULT SYSTEMS CORP. entered into a certain Purchase Agreement, dated July 4, 2000 ("Purchase Agreement"), pursuant to which DASSAULT SYSTEMES CORP. acquired the Component Business (as defined in the Purchase Agreement) from PlanetCAD and SPATIAL COMPONENTS, LLC, including certain software; and WHEREAS, PlanetCAD has created, operates and maintains its own Web sites, including, without limitation 3Dshare.com and PlanetCAD.com, through which PlanetCAD provides Internet-based services to its customers, and has competence and expertise in the supply of Internet-based services to customers. WHEREAS, as a condition to closing the transaction contemplated under the Purchase Agreement, the Parties hereto agreed to enter into this Agreement for the co-branding of 3Dshare.com. NOW, THEREFORE, in consideration of the mutual promises and covenants set forth herein, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows: SECTION 1 DEFINITIONS All capitalized terms not otherwise defined herein shall have the same meanings set forth in the Asset Purchase Agreement. 1.1 "Affiliate(s)" shall mean, with respect to any specified Person, any other Person that, directly or indirectly, Controls, is Controlled by, or is under common Control with such Person. 1.2 "Billing Party" means the party responsible for all billing and collection matters associated with the Co-Branded Service. 1 2 1.3 "CBD Software" shall mean the following computer software programs, whichever packaging and naming, in the version and release that is commercially available at the Effective Date, as well as corrections, enhancements and modifications of the CBD Software delivered in the maintenance services provided under the Cross-License Agreement executed contemporaneously by the Parties: ACIS (R) 3D Toolkit, ACIS (R), Advanced Blending Husk, ACIS(R) Advanced Rendering Husk, ACIS(R) Local Operations Husk, ACIS(R) Shelling Husk, ACIS(R) Precise Hidden Line Husk, ACIS(R) Mesh Surface Husk, ACIS(R) Space Warping Husk, ACIS(R) Advanced Surfacing Husk, ACIS(R) Cellular Topology Husk, Spatial Deformable Modeler, ACIS(R) Deformable Modeling Husk, JetScream(TM), ACIS(R) JetScream Husk, ACIS (R) RevEnge Husk (MetroCad), ACIS(R) AEC Husk, IVSDK, ACIS(R) Open Viewer and Plug-ins, Large Model Viewer, 3D Building Blox(TM), SAT(R) (ACIS File Format). 1.4 "CNDA" means the Confidential and Non-Disclosure Agreement among, inter alia, PlanetCAD and Dassault Systemes executed contemporaneously herewith. 1.5 "Co-Branded Service" means the service to be developed under this Agreement, including Enhancements, which will be offered to Dassault Systemes Customers via the Dassault Systemes Web site(s) and will contain translation and healing application services substantially similar to those currently offered and sold on the PlanetCAD Web site(s) as of the Effective Date under the product name 3Dshare.com, and based upon the CBD Software. 1.6 "Control" means, with respect to the relationship between or among two or more Persons, shall mean the possession, directly or indirectly, or as trustee or executor, of the power to direct or cause the direction of the affairs or management of a Person, whether through the ownership of voting securities, as trustee or executor, by contract or otherwise, including, without limitation, the ownership, directly or indirectly, of securities having the power to elect a majority of the board of directors or similar body governing the affairs of such Person; provided that neither PlanetCAD nor shall be deemed to be controlled by any other Person or under common control with any Person that is not one of their respective subsidiaries. 1.7 "Dassault Systemes" shall mean the entity that is a party to this Agreement and each of its Affiliates. 1.8 "Dassault Systemes Customer(s)" means any customer of the Co-Branded Service having accessed such Web service, wherever hosted, by first logging in on any Dassault Systemes Web site. 1.9 "Dassault Systemes Customer Database(s)" shall have the meaning set forth in Section 6.1. 1.10 "Dassault Systemes Personnel" means employees, officers, agents, independent contractors and subcontractors of Dassault Systemes. 1.11 "Dassault Systemes Web sites" means any Web site created, owned, operated or supported by or for Dassault Systemes. 1.12 "Effective Date" means November 14, 2000. 2 3 1.13 "Enhancements" mean without limitation, compilations, modifications, adaptations, improvements, bug fixes, corrections, versions, design changes, revisions, upgrades, updates, and new versions with respect to the Co-Branded Services during the Term of this Agreement. 1.14 "Hardware Infrastructure" means all hardware equipment, materials, products and facilities that may be necessary at any time to operate the Software Infrastructure to the Co-Branded Service. 1.15 "Infrastructure" means the "Software Infrastructure" and the "Hardware Infrastructure." 1.16 "Initial Term" shall have the meaning set forth in Section 10.1. 1.17 "Know-How" shall mean all residual information of a non-tangible form, which is not protected by the United States or European Union laws of copyright, patent or trade secrets and which may be retained by a party who has had access to confidential and proprietary information of the other party, including ideas, concepts or techniques contained therein. 1.18 "Launch Date" shall mean the date of first log in of a Dassault Systemes Customer for the Co-Branded Service. 1.19 "Marks" shall have the meaning set forth in Section 3.4. 1.20 "Net Revenue" shall have the meaning set forth in Section 5.5. 1.21 "Non-Billing Party" means the party who is not the Billing Party. 1.22 "Person" means any individual or legal entity, including without limitation, partnership, corporation, association, trust or unincorporated organization. 1.23 "PlanetCAD Personnel" means employees, officers, agents, independent contractors and subcontractors of PlanetCAD. 1.24 "PlanetCAD Web sites" means 3dshare.com, PlanetCAD.com and any other Web site created, owned, operated or supported by or for PlanetCAD. 1.25 "Revenue Report" shall have the meaning set forth in Section 5.6. 1.26 "Software" means any computer software program, including programming-code, on-line documentation, if any, user interface related thereto or associated therewith, to the extent that such user interface does exist, and related user and installation documentation other than on-line documentation associated with this computer software program. 3 4 1.27 "Server Software" means all software, including without limitation, Web interface, Web middleware, Web dynamic content billing, Web content generation software, and any Derivative Works thereof that is used by PlanetCAD to provide services on the Co-Branded Service. The list of all such Software as of the Effective Date is attached in Schedule A which will be updated by PlanetCAD when reasonably requested by Dassault Systemes and when in PlanetCAD's determination significant changes have been made. 1.28 "Software Infrastructure" means the software configuration and environment necessary to perform, supply and support the Co-Branded Service including any Third Party Software. 1.29 "Term" shall have the meaning set forth in Section 10.1. 1.30 "Third Party Software" means computer software programs owned by a party other than PlanetCAD or Dassault Systemes and incorporated into, or required for the development, operation and/or support of any Web service governed by this Agreement and the Infrastructure associated therewith. SECTION 2 SUBJECT MATTER 2.1 Engagement. Dassault Systemes and PlanetCAD agree to cooperate to develop and bring to their customers the Co-Branded Service under the terms and conditions set forth below. SECTION 3 OWNERSHIP AND LICENSING RIGHTS 3.1 Ownership by PlanetCAD. All right, title and interest in and to: (i) the Server Software and (ii) the service known as of the Effective Date as 3Dshare.com and its Enhancements shall be owned by PlanetCAD. 3.2 Ownership by Dassault Systemes. All right, title and interest in and to the CBD Software and its Enhancements shall be owned by Dassault Systemes. 3.3 Limited Hosting License. PlanetCAD hereby grants to Dassault Systemes a fully-paid, non-exclusive, worldwide, revocable limited license to the Server Software and Infrastructure for the sole purpose of (i) hosting the Co-Branded Service and (ii) fulfilling its obligations under this Agreement. The license granted pursuant to this Section 3.3 shall be deemed to be automatically revoked upon termination of this Agreement. Within 2 weeks following execution of this Agreement, PlanetCAD will provide Dassault Systemes with the necessary media and licensing keys or similar authorization system (if any) to use such Server Software and Infrastructure according to the above license. 3.4 Use of Marks. Prior to commercialization of the Co-Branded Service the parties shall agree on the use and placement of all Dassault Systemes and PlanetCAD logos, 4 5 trade names, trademarks, service marks, and similar identifying material (collectively referred to as "Marks") on the Co-Branded Service. Any usage of a party's Marks on the Co-Branded Service including without limitation size, placement, font and style of such Marks will be subject to such party's prior written approval. On or before the Launch Date, each party shall grant the other party a non-exclusive, non-transferable, revocable right to use their approved Marks, for the sole purpose of advertising, marketing, promotion and sale of the Co-Branded Service. In connection with such license each party agrees not to use the other party's Marks in any manner that is disparaging or that otherwise portrays such party in a negative light. Each party retains all right, title and interest, in and to its Marks. Upon termination of this Agreement the right in either party to use the other party's Marks shall automatically terminate. 3.5 Know-How. The parties hereby acknowledge and agree that any and all rights to Know-How developed or shared under this Agreement by either party shall be jointly owned by the parties and may be used by either party in the operation of their respective businesses during and following termination of this Agreement. SECTION 4 DEVELOPMENT AND COMMERCIALIZATION OF THE CO-BRANDED SITE 4.1 Review of Co-Branded Site. Immediately prior to the Launch Date, each party shall have an opportunity to review the content and presentation of the Web pages relating to the Co-Branded Service and shall have the right to request reasonable changes to any aspect of the Co-Branded Service, including without limitation, the look and feel of the Web pages. 4.2 Appointment of Liaison. As soon as practicable after the Effective Date, each party shall appoint a project manager to act as a liaison to oversee and ensure compliance of the respective obligations of the parties hereunder. 4.3 Access to the Co-Branded Service by Dassault Systemes Customers. During the Term of this Agreement, the Co-Branded Service will be accessible from any Dassault Systemes Web site(s), as determined by Dassault Systemes in its sole discretion, on a fully transparent basis by way of a direct link to the first Web page of the Co-Branded Service. Upon exiting the Co-Branded Service, the Dassault Systemes Customers will be automatically returned to the Dassault Systemes Web site. PlanetCAD shall, with consultation and input from Dassault Systemes, perform all services necessary for the implementation of such link between the Dassault Systemes Web site and the Co-Branded Service. 4.4 Co-Branding Designations. The Co-Branded Service will be designated as such by use of both party's Marks on the Co-Branded Service, and inclusion of wording such as "powered by PlanetCAD" on all Web pages, associated with the Co-Branded Service. The placement, text, font and size of the wording shall be mutually agreed upon by the parties. 4.5 Hosting and Customer Support Obligations of the Parties. Unless otherwise agreed by the parties: (i) PlanetCAD will host the Co-Branded Service at its facilities and shall be responsible for providing the Infrastructure necessary to operate such service; (ii) the party responsible for hosting the Co-Branded Service shall be responsible for all customer billing as set forth in Section 5.1 herein; (iii) Dassault Systemes will provide first level customer 5 6 support; (iv) PlanetCAD will provide second level customer support, and (v) PlanetCAD shall be responsible for all updates and Enhancements of the Co-Branded Service. PlanetCAD shall not charge Dassault Systemes any hosting fee for the Co-Branded Service. 4.6 Software Support and Maintenance Obligations of the Parties. For the Term of this Agreement the parties shall cooperate to perform maintenance and support services on their respective software included on and necessary to the operation of the Co-Branded Service. The description of maintenance and support obligations is set forth in the Maintenance and Support Services Schedule, attached hereto as Schedule B and incorporated herein by reference. 4.7 Change of Hosting. At any time during the Term of this Agreement, Dassault Systemes may, at its discretion, decide to host the Co-Branded Service, or have it hosted by any third party of its choice, by sending ninety days written notice to that effect to PlanetCAD. In such event, PlanetCAD agrees to: (i) provide to Dassault Systemes a current and updated list of equipment, materials, products and facilities composing the Hardware Infrastructure, and (ii) provide reasonable cooperation with Dassault Systemes in seamlessly transitioning the Co-Branded Service to Dassault Systemes equipment or to the equipment of its subcontractors or Affiliates. SECTION 5 CUSTOMER BILLING, PAYMENT TERMS AND AUDIT RIGHTS 5.1 Customer Billing. Unless otherwise agreed by the parties and subject to the reporting and revenue sharing obligations set forth in this Section 5, the party responsible for hosting shall be the Billing Party. 5.2 Pricing of the Co-Branded Service. Prior to the Launch Date, the parties shall agree on which currencies and list prices shall apply to the Co-Branded Service. If, for whatever reason, the parties fail to agree on a price to be applied, the price applied to the Co-Branded Service shall be equal to the then current list price for such services as offered on the PlanetCAD Web site(s). If, for whatever reason, the parties fail to agree on a currency to be applied, the Billing Party will be entitled to choose a currency, as long as such currency easily converts into US dollars and the Billing Party shall pay to the other party its share of revenue in US dollars, based on the average exchange rate of that currency against US dollars during the last 3 months preceding the date of payment to the other party. 5.3 Taxes. The Billing Party may deduct and withhold from any payments due to the other party under this Agreement any and all taxes and other amounts as required under the laws of any jurisdiction that has the authority to tax the Billing Party, the other party or the transactions contemplated by this Agreement. However, should the Billing Party consider withholding payment or paying any such amount from payments due under this Agreement, the Billing Party shall send in advance to the other party a certificate setting forth the regulatory and/or legal framework for such a payment, including the provisions of the international tax treaty allowing such payment. The other party will have 30 days from the reception of such information to accept or refuse such payment/withholding: 6 7 (i) If the other party accepts or does not answer within this time frame, the Billing Party will be entitled to make such payment/withholding and shall provide the other party with a certificate stating the amounts withheld and the jurisdictions to which such amounts were remitted. (ii) If the other party provides to the Billing Party a certificate stating that (a) the Billing Party has no withholding/payment obligations with respect to the laws of such particular jurisdiction and setting forth the relevant authority for such statement and/or (b) that such a payment may be avoided under any applicable law or treaty and provide with the necessary documentation for that purpose, and if the Billing Party then determines that it has no such withholding obligation under the laws of such jurisdiction, the Billing Party shall make any future payments to the other party without deduction for the items set forth in the certificate, until such time as the Billing Party reasonably believes that it has a withholding obligation. Either Party shall pay any applicable sales or value added tax on the payments due. 5.4 Share of Net Revenue. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 5.5 Net Revenue Defined. Net Revenue shall consist of all revenues recognized by the Billing Party derived from supply of the Co-Branded Service, including the price paid by the customers, less any applicable discounts and net of any commissions or fees paid to third party resellers, to obtain access to the Co-Branded Service and any other fees and charges invoiced by the Billing Party to the customers, without deduction by such party of any other costs or expenses related to achievement of the revenue, provided, however, that Net Revenue shall be reduced by the amount, if any, of (i) value-added taxes, (ii) sales taxes or (iii) withholding taxes imposed by any jurisdiction on payments made by a payor in such jurisdiction to a payee outside of such jurisdiction. 5.6 Reporting and Payment Obligations. Within 7 Business Days after the end of each calendar quarter, the Billing Party shall provide the other party with an itemized statement, subject to adjustment within 30 days of receipt of such statement, setting forth the Net Revenue achieved over the preceding calendar quarter, and shall include such other information as may be mutually agreed upon by the parties (the "Revenue Report"). The Revenue Report shall be accompanied by payment to the Non-Billing Party of all amounts owed as set forth on such Revenue Report, as well as - when applicable - the exchange currency rate. When agreed between the parties as provided for in Section 5.2, payment will be made to the Non-Billing Party in the currency received by the Billing Party for the provision of the Co-Branded Service. Otherwise, payment shall be made in US dollars as provided for in Section 5.2. In the event that the Billing Party is unable under foreign currency export controls or similar applicable laws, unknown to the parties at the time where they agree on payments in that currency, to provide payment to the Non-Billing Party in the currency received by the Billing Party the parties agree 7 8 to negotiate a mutually agreeable solution. A party's right to payment shall accrue upon the date the corresponding revenues accrue to the Billing Party. The parties shall pay interest for late payment of any sum due at the LIBOR rate plus four points (not to exceed the maximum rate authorized, or be inferior to the minimum rate allowed, by applicable law, as the case may be). 5.7 Records - Audit. The Billing Party shall, for two years following each transaction relating to the Co-Branded Service, keep true and accurate records and books of account of such transaction containing all particulars which may be necessary for the purpose of auditing payments to the Non-Billing Party under this Agreement. During such two-year period, and upon reasonable notice to the Billing Party, the Non-Billing Party shall have the right to have an audit conducted through a licensed independent accounting firm, of any billings, collections, and taxes on such itemized statement, and to examine the records and books of account of the Billing Party in connection therewith. The Billing Party will bear the costs of such audit if a discrepancy or error of computation in an amount greater than $10,000 in favor of the Non-Billing Party is identified. Any audit conducted pursuant to this Section 5.7 shall not be conducted in such a manner as to unreasonably interfere with the Non-Billing Party's operations and in no event shall an audit be conducted more frequently than once each year. SECTION 6 DASSAULT SYSTEMES CUSTOMER DATABASES 6.1 PlanetCAD's obligation to maintain and update Dassault Systemes Customer Databases. For as long as PlanetCAD hosts the Co-Branded Service, PlanetCAD will maintain and continuously update Dassault Systemes' Customer Database(s), which shall include without limitation, databases of Dassault Systemes Customers, of demands from and results of Web services supplied to Dassault Systemes Customers and associated Net Revenue and of data collected via the Customer Relations Management ("CRM") environment. The Dassault Systemes Customer Databases must be held separately from any other databases held or maintained by PlanetCAD. If not held separately, the Dassault Systemes Customer Databases must be clearly identified and sorted out as the property of Dassault Systemes and the provisions regarding PlanetCAD's limited right of use and its obligation of confidentiality as set forth below apply without change. 6.2 Ownership of Dassault Systemes Customer Databases. Dassault Systemes will be deemed the maker of the Dassault Systemes Customer Databases and the owner of any and all right, title and interest in and to the Dassault Systemes Customer Databases and their content, wherever hosted. At all times during the Term of this Agreement, Dassault Systemes will have unrestricted access to and use of the Dassault Systemes Customer Databases, and the content therein. At all times during the Term of this Agreement, and as long as the Dassault Systemes Customer Databases are hosted by PlanetCAD, PlanetCAD benefits from a limited right to use the Dassault Systemes Customer Databases for the exclusive purpose performing its obligations under this Agreement. 6.3 Transfer of Dassault Systemes Customer Databases. Upon discontinuation of hosting of the Co-Branded Service, PlanetCAD will transfer to Dassault Systemes the Dassault Systemes Customer Databases upon Dassault Systemes request. PlanetCAD will have no right, license or interest whatsoever in the Dassault Systemes Customer Databases or content therein, except to the extent necessary for performance of its obligations under this Agreement. 8 9 6.4 Warranty of Confidentiality of Dassault Systemes Customer Databases and Input and Output Data of Dassault Systemes Customers. The parties expressly agree that the Dassault Systemes Customer Databases and their content as well as Dassault Systemes Customers input data to be processed and output data supplied, are confidential information of Dassault Systemes, and will be treated as such, in accordance with the terms and conditions of the CNDA. SECTION 7 COMPETITIVE RESTRICTIONS 7.1 Restrictions on PlanetCAD. (a) During the Term of this Agreement, and for a period of one year thereafter, except as expressly provided in this Agreement, PlanetCAD shall not market any services to Customers without the prior written approval of Dassault Systemes. (b) During the Term of this Agreement, PlanetCAD shall be permitted to market new functions and services relating to the Co-Branded Service directly to Dassault Systemes Customers with Dassault Systemes prior written approval, but only to the extent such functions and services are offered by PlanetCAD on the PlanetCAD Web site(s). (c) Notwithstanding the foregoing, PlanetCAD may market new functions and services on the PlanetCAD Web sites to customers that are Dassault Systemes Customers, without the consent of Dassault Systemes, provided PlanetCAD (i) obtained the contact information of such customer from an independent source unrelated to the parties to this Agreement and can provide evidence as to the independent source of the name and e-mail address of such customer, and (ii) did not use the data contained in the Dassault Systemes Customer Database(s). 7.2 Restrictions on Dassault Systemes. Except as contemplated under this Agreement, during the two year period following the Effective Date, Dassault Systemes shall not commercially offer any web service, which is (i) based upon the ACIS-based software transferred to Dassault Systemes in connection with the Purchase Agreement and (ii) similar to the Co-Branded Service. 7.3 Non-Exclusive Services Agreement. It is agreed and acknowledged by the parties that this Agreement is not an exclusive services agreement and except for the restrictions set forth in this Section nothing herein shall prohibit Dassault Systemes, PlanetCAD or any of their affiliates from developing or supplying, whether directly or indirectly, web services substantially identical to those described herein. SECTION 8 REPRESENTATIONS AND WARRANTIES 8.1 Mutual Representations. Each party represents and warrants to the other party as follows: 9 10 (a) The performance of this Agreement does not infringe or conflict with any Intellectual Property right of any third party, and (ii) no confidential, proprietary or trade secret information of either party or their personnel that will be used in performing this Agreement has been misappropriated from any third party; and (b) All services, work, obligations or assignments performed by either party under this Agreement will be of professional quality, conforming to generally accepted practices within the industry, and the Infrastructure including Third Party Software shall function and perform to the specifications and requirements thereof. 8.2 Hosting Representations and Warranties of PlanetCAD. For so long as PlanetCAD is hosting the Co-Branded Service, PlanetCAD shall use commercially reasonable efforts to ensure that the services provided on the site are equivalent in functionality and performance to the applications run on the PlanetCAD Web sites and of good quality according to generally accepted practices within the industry. 8.3 Disclaimer. THIS IS AN AGREEMENT SOLELY FOR SERVICES, AND THERE SHALL BE NO WARRANTIES, EXPRESS OR IMPLIED, EXCEPT AS STATED HEREIN. SECTION 9 INDEMNITIES AND LIMITATIONS ON LIABILITY 9.1 Dassault Systemes Indemnification. Dassault Systemes shall indemnify and hold harmless PlanetCAD, and its officers, directors, employees, and shareholders from and against any claims, demands, suits, causes of action, losses, damages, judgments, costs and expenses (including reasonable attorneys' fees) arising out of or related to any breach of Dassault Systemes' representations, warranties and covenants set forth in this Agreement. 9.2 PlanetCAD Indemnification. PlanetCAD shall indemnify and hold harmless Dassault Systemes, its affiliates, and their respective officers, directors, employees, and shareholders from and against any claims, demands, suits, causes of action, losses, damages, judgments, costs and expenses (including reasonable attorneys' fees) arising out of or related to any breach of PlanetCAD's representations, warranties and covenants set forth in this Agreement. 9.3 Intellectual Property Infringement.Each Party agrees to hold the other Party, its subsidiaries and distributors and assignees harmless from and against any claim of any nature, including, but not limited to, administrative, civil or criminal procedures, which is or may be made or raised against this Party, its subsidiaries and distributors and assignees by any third party that the use or distribution of the Software or any other intellectual property that is the subject of this Agreement and owned or licensed by this Party, infringes or violates any third party's patent, copyright, trade secret or other intellectual property right in any country. Indemnification hereunder shall cover all damages, regardless of their nature, settlements, expenses and costs, including costs of investigation, court costs and attorneys' fees. The payment of any indemnification shall be contingent on: 10 11 (a) This Party giving prompt written notice to the other of any such claim or allegation; (b) Cooperation by this Party with the other Party in its defense against the claim; and (c) This Party obtaining the other's prior written approval of any settlement, if any, by this Party of such matters, such approval not to be unreasonably withheld. Neither Party shall have the obligation to indemnify the other for any claims of infringement based on any modification by the latest version of its Software, or from the combination of its Software with any other program to the extent such claim would not have arisen without such combination or from use of the unmodified Software or intellectual property. If the operation of any Software that is the subject of this Agreement becomes, or is likely to become, the subject of a claim involving the infringement or other violation of any patent, copyright, trade secret, or other intellectual property rights of any third party, the Parties will jointly determine in good faith what appropriate steps are to be taken by them, with a view towards curing such infringement or other violation, at the Software owner's sole charge. Such steps may include, but are not limited to: (i) The owner securing the right to continue using its Software, or (ii) The owner replacing or modifying its Software so that it becomes non-infringing. If no other option is reasonably available, the owner of the Software agrees to use its best efforts to withdraw, at its sole expense, the infringing Software from the market. In the event a Derivative Work, created under this Agreement, becomes the subject of a claim of infringement, the owner of said Derivative Work shall indemnify the other Party pursuant to this Section 9. 11 12 9.4 LIMITATIONS ON LIABILITY. EXCEPT FOR LIABILITY ARISING FROM SECTION 9.3, IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY INDIRECT, SPECIAL, INCIDENTAL, PUNITIVE OR CONSEQUENTIAL DAMAGES, LOSSES, OR EXPENSES INCLUDING, BUT NOT LIMITED TO, LOSS OF USE, LOSS OF PROFITS, OR LOSS OF GOODWILL, EVEN IF THAT PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH LOSS OR DAMAGE. EXCEPT FOR LIABILITY ARISING FROM SECTION 9.3, IN NO EVENT SHALL EITHER PARTY BE LIABLE UNDER THIS AGREEMENT FOR AN AMOUNT GREATER THAN THE AMOUNT THAT SUCH PARTY HAS EARNED PURSUANT TO THE REVENUE SHARING PROVISIONS OF SECTION 5.4 IN THE TWELVE MONTH PERIOD PRECEDING THE CLAIM. SECTION 10 TERM AND TERMINATION 10.1 Term. This Agreement shall be effective as of the Effective Date and shall continue in force for three years from the Launch Date (the "Initial Term") unless earlier terminated in accordance with this Section (the "Term"). The Agreement shall automatically renew for successive one year additional terms unless terminated by either party at least six months prior to the expiration of the then-current term. 10.2 Breach. Either party may terminate this Agreement at any time in the event that the other party is in default or breach of any material provision of this Agreement, and such default or breach continues unremedied for a period of sixty days after written notice thereof. In addition to the right to terminate this Agreement, the non-breaching party, shall have all rights and remedies available at law and in equity. 10.3 Failure of Negotiations After Initial Term. The revenue sharing obligations set forth in Section 5.4 shall be subject to re-negotiation at the end of the Initial Term. The parties agree to negotiate in good faith, however, in the event they are unable to agree to satisfactory terms, this Agreement shall terminate six months from the date on which the parties make a conclusive determination that satisfactory terms could not be reached. SECTION 11 MISCELLANEOUS 11.1 Confidentiality. All communications and information disclosed by one party to the other party under this Agreement shall be subject to the terms and conditions of the CNDA. 11.2 Freedom of Action. Except as otherwise provided, nothing contained in this Agreement shall be construed to limit or impair any right of either party to enter into similar agreements with other parties, or to develop, acquire, license or market, directly or indirectly, other products or services, competitive with those offered by the other party. 12 13 11.3 Additional Instruments. Notwithstanding termination of this Agreement, the parties covenant and agree to execute and deliver any additional instruments or documents necessary to carry out the general intent of this Agreement, including without limitation patent assignments or any other assignments necessary to evidence the ownership of intellectual property contemplated hereby or any such additional instruments or documents, including such instruments as may be required by the laws of any jurisdiction, now or in effect or hereinafter enacted, that may affect a party's rights, title or interest, as applicable, in and to any of the software governed hereby. 11.4 Irreparable Injury. Each party acknowledges and agrees that each covenant in this Agreement pertaining to confidential information and ownership of intellectual property is reasonable and necessary to protect and preserve the rights of the other party in its confidential information and intellectual property, and that any breach by such party of the terms of this Agreement may result in irreparable injury to the other party. Each party, therefore, subject to a claim of laches, estoppel, acquiescence or other delay in seeking relief, consents and agrees that the other party shall be entitled to seek and obtain a temporary restraining order and a permanent injunction to prevent a breach or contemplated breach of this Agreement and waives any requirement that the other party post a bond in connection with seeking such injunctive relief. 11.5 Relationship of the Parties. PlanetCAD and Dassault Systemes are independent contractors, and nothing in this Agreement will create any partnership, joint venture, agency, franchise, sales representative, or employment relationship between the parties. Neither party has the authority to act as agent for the other party or to conduct business in the name of such other party or make statements, warranties or representations that exceed or are inconsistent with the warranties provided hereunder. 11.6 Notices. All notices required or permitted shall be given in writing, in the English language, and shall be deemed effectively delivered upon personal delivery or three days after deposit with a carrier by registered mail or other equivalent service, postage prepaid, return receipt requested, addressed as follows, or to such other address as either party may designate to the other: 13 14 In the case of PlanetCAD : PlanetCAD Inc. 2520 55th Street, Suite 200 Boulder, Colorado 80301 Attn. Office of the President In the case of Dassault Systemes: Dassault Systemes 9 Quai Marcel Dassault 92150 Suresnes Attn. Thibault De Tersant cc: Law Department 11.7 Headings. The descriptive headings contained in this Agreement are for convenience of reference only and shall not affect in any way the meaning or interpretation of this Agreement. 11.8 Severability. If any term or other provision of this Agreement is deemed invalid, illegal or incapable of being enforced by any law or public policy, all other terms and provisions of this Agreement shall nevertheless remain in full force and effect so long as the economic or legal substance of the transactions contemplated hereby is not affected in any manner materially adverse to any party. 11.9 Entire Agreement. This Agreement, together with the Schedules attached hereto, constitutes the entire agreement of the parties with respect to the subject matter hereof and supersedes all prior agreements and undertakings, both written and oral, between and PlanetCAD with respect to the subject matter hereof. 11.10 Amendment. This Agreement may not be amended or modified except by an instrument in writing signed by, or on behalf of, duly authorized representatives of Dassault Systemes and PlanetCAD. 14 15 11.11 Applicable Law, Venue. This Agreement shall be governed by, and construed in accordance with, the Laws of the State of New York, applicable to contracts executed in and to be performed entirely within that state. This Agreement shall not be governed by the U.N. Convention on Contracts for the International Sale of Goods. The parties hereto hereby (a) submit to the exclusive jurisdiction of any court of competent jurisdiction sitting in the State of Delaware, The City of Wilmington for the purpose of any Action arising out of or relating to this Agreement brought by any party hereto, and (b) agree, to the fullest extent permitted by applicable law, to waive, and not to assert by way of motion, defense, or otherwise, in any such Action, any claim that is not subject personally to the jurisdiction of the above-named courts, that its property is exempt or immune from attachment or execution, that the Action is brought in an inconvenient forum, that the venue of the Action is improper, or that this Agreement may not be enforced in or by any of the above-named courts. 11.12 Waiver of Jury Trial. EACH OF THE PARTIES HERETO HEREBY WAIVES TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY WITH RESPECT TO ANY ACTIONS OR PROCEEDINGS DIRECTLY OR INDIRECTLY ARISING OUT OF, UNDER OR IN CONNECTION WITH THIS AGREEMENT, OR THE TRANSACTIONS CONTEMPLATED HEREUNDER. 11.13 Counterparts. This Agreement may be executed in one or more counterparts, each of which when executed shall be deemed to be an original but all of which taken together shall constitute one and the same agreement. 11.14 No Waiver. The failure of either party to enforce any provision of this Agreement shall not constitute a waiver of the right to subsequently enforce such provision, or any other provision of this Agreement. 11.15 Force Majeure. Neither party shall be held liable for any failure to perform any of its obligations under this Agreement for as long as, and to the extent that such failure is due to an event of force majeure. An event of force majeure shall include general strikes, lockouts, acts of God, acts of war, mobilization of troops, fire, extreme weather, flood, or other natural calamity, embargo, acts of governmental agency, government or any other laws or regulations. 11.16 Expenses. Except as expressly provided for in this Agreement, each party shall bear its own expenses incurred in connection with this Agreement, including without limitation travel and living expenses incurred by that party's employees. 11.17 Assignment; Subcontracting; Third Party Beneficiaries. (a) This Agreement may be assigned or otherwise transferred, by operation of law or otherwise without the express written consent of PlanetCAD and Dassault Systemes, but in such event the assigning Party shall give notice to the non-assigning Party and the non-assigning Party shall have the right to terminate this Agreement within the 30-day period following receipt of such notice. 15 16 (b) Either party may assign or otherwise transfer all or part of this Agreement to any of its Affiliates, and for as long as it remains an Affiliate; provided that no such assignment shall relieve a party of any of its obligations under this Agreement. In the event there is a change of Control of an Affiliate which terminates its status as an Affiliate of the party to this Agreement, and this Agreement has been assigned to such an Affiliate, this Agreement must be assigned back to the party within 6 months of the effective date of the change of Control. (c) Either Party may subcontract services necessary to perform the obligations set forth in this Agreement provided that any and all such subcontractors shall have entered into agreements with the subcontracting Party sufficient to enable that Party to comply with all terms and conditions of this Agreement. (d) This Agreement shall be binding upon and inure solely to the benefit of the parties hereto and their permitted assigns, subcontractor or transferee, and nothing herein, express or implied, is intended to or shall confer upon any other person, including, without limitation, any union or any employee or former employee of either party, any legal or equitable right, benefit or remedy of any nature whatsoever, including, without limitation, any rights of employment for any specified period, under or by reason of this Agreement. IN WITNESS WHEREOF, each party has caused its duly authorized representative to execute this Agreement effective the day and year first above written. PlanetCAD Inc. Dassault Systemes /s/ R. Bruce Morgan /s/ Thibault de Tersant - ---------------------------- ----------------------------- Its: Chief Executive Officer Its: Executive Vice President Name: R. Bruce Morgan Name: Thibault de Tersant 16 EX-10.4 5 d82148ex10-4.txt SERVER SOFTWARE LICENSE AGREEMENT 1 EXHIBIT 10.4 SERVER SOFTWARE LICENSE AGREEMENT This License Agreement, dated as of November 14, 2000 (this "Agreement"), is made by and between Dassault Systemes, a societe anonyme organized under the laws of France and the owner of Purchaser ("Dassault Systemes") and/or certain affiliates of Dassault Systemes, and PlanetCAD Inc. (formerly known as Spatial Technology Inc.), a corporation organized under the laws of the State of Delaware ("PlanetCAD") (each a "Party," together, the "Parties"). WITNESSETH: WHEREAS, PlanetCAD, SPATIAL COMPONENTS, LLC and DASSAULT SYSTEMES CORP. entered into a certain Purchase Agreement, dated July 4, 2000 ("Purchase Agreement"), pursuant to which DASSAULT SYSTEMES CORP. acquired the Component Business (as defined in the Purchase Agreement) from PlanetCAD and SPATIAL COMPONENTS, LLC, including certain software; and WHEREAS, in connection with the Purchase Agreement and as a condition to closing the transaction contemplated thereunder PlanetCAD has agreed to license its Server Software (as defined below) to Dassault Systemes and to provide certain software support and maintenance services in connection therewith, all in accordance with the terms and conditions set forth herein. NOW, THEREFORE, in consideration of the premises and the mutual agreements and covenants set forth in the Purchase Agreement and in this Agreement, and intending to be legally bound hereby, the Parties hereby agree as follows: 1. DEFINITIONS As used in this Agreement, the terms defined in this Section shall have the following respective meanings. Capitalized terms not otherwise defined herein shall have the same meanings as set forth in the Purchase Agreement. AFFILIATE(S) shall mean, with respect to any specified Person, any other Person that, directly or indirectly Controls, is Controlled by, or is under common Control with such Person. ASP(S) shall mean for this Agreement, application services provider, i.e. service(s) offered on line, through Web sites or as enterprise versions offered on corporate Intranets, allowing end users to use an application software functionality, provided by either party on its Web site or on a corporate server in the case of enterprise versions, on a one task at a time or subscription basis, and charged to the end user as such, with no access to the underlying software application that allows the technical work of the task to be performed. CNDA shall mean the Confidential and Non-Disclosure Agreement among, inter alia, PlanetCAD and Dassault Systemes executed contemporaneously herewith. 2 COMPETITOR shall mean any Person of which a significant part of its business is building, developing or providing server software or Web middleware services to third parties in the CAD/CAM field. CONTROL, with respect to the relationship between or among two or more Persons, shall mean the possession, directly or indirectly, or as trustee or executor, of the power to direct or cause the direction of the affairs or management of a Person, whether through the ownership of voting securities, as trustee or executor, by contract or otherwise, including, without limitation, the ownership, directly or indirectly, of securities having the power to elect a majority of the board of directors or similar body governing the affairs of such Person; provided that neither PlanetCAD nor Dassault Systemes shall be deemed to be controlled by any other Person or under common control with any Person that is not one of their respective subsidiaries. DERIVATIVE WORK(S), means, related to Software, a work which is based upon in whole or in part of such Software, such as a revision, enhancement, modification, translation, abridgment, condensation, expansion, or any other form in which such Software may be recast, transformed, or adapted, or which, if prepared without authorization of the owner of the copyright or other intellectual property right in such Software, would constitute a copyright infringement or other violation of the intellectual property rights. A Derivative Work shall also include, without limitation, compilations or link-edits, improvements, bug fixes, corrections, look and feel changes, upgrades, updates and new versions that incorporate such Software in whole or part. EFFECTIVE DATE is November 14, 2000. INTELLECTUAL PROPERTY shall mean (a) inventions, whether or not patentable, whether or not reduced to practice, and whether or not yet made the subject of a pending patent application or applications, (b) ideas and conceptions of potentially patentable subject matter, including without limitation, any patent disclosures whether or not reduced to practice and whether or not yet made the subject of a pending patent application or applications, (c) Patents, (d) Trademarks, (e) copyrights (registered or otherwise) and registrations and applications for registration thereof, all moral rights of authors therein, and all rights therein provided by international treaties, conventions or common law, (f) Software, (g) Trade Secrets, and (h) all rights to sue and recover damages and obtain injunctive relief for past, present and future infringement, dilution, misappropriation, violation or breach thereof. KNOW-HOW shall mean all residual information of a non-tangible form, which is not protected by the United States or European Union laws of copyright, patent or trade secrets and which may be retained by a party who has had access to confidential and proprietary information of the other party, including ideas, concepts or techniques contained therein. OBJECT CODE shall mean computer-programming code, substantially or entirely in binary form, that is directly executable by a computer after suitable processing, but without the intervening steps of assembly, compilation or link-edit. PERSON(S) shall mean any individual or legal entity, including without limitation, partnership, corporation, association, trust or unincorporated organization. 3 RUN-TIME shall designate all software materials and databases that are necessary to use any Software as well as this Software itself. SERVER SOFTWARE means all software, including without limitation, Web interface, Web middleware, Web dynamic content billing, Web content generation software, and any Derivative Works thereof that is used by PlanetCAD to provide application services over the Internet, including all upgrades, enhancements or updates delivered under the maintenance and support terms of this Agreement. The list of all such Software, including the Third Party Software, as of the date of execution of this Agreement, is attached in Schedule A which will be updated by PlanetCAD when reasonably requested by Dassault Systemes and when in PlanetCAD's determination significant changes have been made. SOFTWARE shall mean any computer software program, including programming-code, on-line documentation, if any, user interface related thereto or associated therewith, to the extent that such user interface does exist, and related user and installation documentation other than on-line documentation associated with this computer software program. SOURCE CODE shall mean computer-programming code and related system documentation, comments and procedural code, that is not directly executable by a computer but which may be printed out or displayed in a form readable and understandable by a qualified programmer. THIRD PARTY SOFTWARE shall mean computer software programs owned by a party other than PlanetCAD and incorporated into or currently used by PlanetCAD in connection with the Server Software. 2. PURPOSE Subject to the terms and conditions herein, PlanetCAD agrees to license the Server Software and to provide certain maintenance and support services in connection therewith to Dassault Systemes. 3. OWNERSHIP RIGHTS AND LICENSES 3.1 Server Software. 3.1.1 Ownership of Server Software. Except for the limited rights granted Dassault Systemes in this Section 3, all right, title and interest in and to the Server Software and Derivative Works thereof created under this Agreement by PlanetCAD shall remain with PlanetCAD. 3.1.2 License to Server Software. As of the Effective Date and except as provided for in Section 9.18, PlanetCAD grants to Dassault Systemes a perpetual, non-transferable, non-exclusive, worldwide license to use the Object Code and Source Code of the Server Software internally to enable Dassault Systemes to offer to its customers on line ASPs (Application 4 Services Provider) and other products or services that incorporate or are based upon the Server Software. This license shall further permit Dassault Systemes to sell, distribute, use, license, maintain, support and make Derivative Works of the Server Software in connection with products or services created by or for Dassault Systemes. Notwithstanding the foregoing, Dassault Systemes shall not have the right hereunder to reproduce, sell or distribute the Server Software or Derivative Works except to the extent the Server Software is incorporated in and necessary to run such Dassault Systemes products or services. Dassault Systemes will have no right to transfer this license to any third party for use on any third party Web site. For purposes of this Section, a Dassault Systemes Affiliate shall not be deemed to be a third party, for as long as it remains an Affiliate. 3.1.3 Third Party Software. Schedule B sets forth (i) a list of Third Party Software development tools used in creating the Server Software and (ii) all other Third Party Software used by PlanetCAD in connection with or relating to the Server Software. It is understood by the parties that (i) PlanetCAD will not be assigning or granting any licenses to Dassault Systemes in or to such Third Party Software and (ii) to the extent Dassault Systemes would like to use such Third Party Software in connection with Dassault Systemes' use of the Server Software licensed hereunder, Dassault Systemes must obtain an independent license therefore. 3.2 Derivative Works. 3.2.1 Delivery of Derivative Works (i) At the end of each quarter, in the event that Dassault Systemes has made any Derivative Work from the Server Software, Dassault Systemes shall deliver to PlanetCAD one copy of the Source Code of such Derivative Work, in a sealed and dated envelope, in the form of a CD-ROM, or other appropriate media. (ii) Such items shall be sent to PlanetCAD by international registered mail to the following address: 5 PlanetCAD Inc. 2520 55th Street, Suite 200 Boulder, Colorado 80301 Attn. Office of the President (iii) PlanetCAD shall have no obligation to include and/or maintain all or part of the Derivative Works of the Server Software made by Dassault Systemes. (iv) The rights and obligations of the Parties contained in this Section 3.2.1 shall automatically terminate upon discontinuation of maintenance and support services by PlanetCAD pursuant to Sections 4.1, 4.2, 8.2 or 9.17(a). 3.2.2 Ownership of Derivative Works. The Parties agree that all right, title and interest in and to all or part of the Derivative Works of the Server Software made by Dassault Systemes pursuant to Section 3.2.1(i) shall be owned exclusively by PlanetCAD. Dassault Systemes understands and agrees that such Derivative Works of the Server Software made by Dassault Systemes, as well as any portion thereof, shall be the sole property of PlanetCAD from date of creation and, to the extent permitted by law, shall be considered as works made for hire under the copyright laws of the United States of America. To the extent an assignment is necessary and that this assignment cannot be made at present, Dassault Systemes agrees to assign to PlanetCAD all of its right, title and interest in and to these Derivative Works, and any part thereof, and in and to all copyrights, patents and other proprietary rights Dassault Systemes may have in such Derivative Works. The Parties however agree that Dassault Systemes shall remain the owner of such Derivative Work should such Derivative Work be Software (i) developed by or for Dassault Systemes and using all or part of the Server Software as a component of an application or service (i.e. embedded or included in whole or in part in such other Software), and (ii) as long as such Software or service contains new functionality, significant value added, or creates a new function that is packaged as a standalone product and which user interface is different from the existing Server Software. The Parties also agree that application of an alternative interface technology if this interface is not combined with other significant application level functionalities shall not be considered as having significant added value. 6 3.2.3 License Grant to Derivative Works. Effective upon delivery of each Derivative Work as contemplated by Section 3.2.1(ii), PlanetCAD hereby grants to Dassault Systemes a perpetual, worldwide, irrevocable, non-exclusive license to use, prepare, compile, install, execute, access, reproduce, distribute and sell the Derivative Works delivered by Dassault Systemes under Section 3.2.1(i), subject to the royalty fees set forth in Section 5.1. 3.3 Know-How. The parties hereby acknowledge and agree that any and all rights to Know-How developed or shared under this Agreement by either Party shall be jointly owned by the Parties and may be used by either party in the operation of their respective businesses during and following termination of this Agreement. 3.4 Trademarks. Notwithstanding any other provisions of this Agreement, neither Party shall have the right under this Agreement to use the other Party's trademarks or trade names in connection with any product, service, promotion, public announcement, advertisement or other publication, without securing the prior written consent of such other Party. 4. MAINTENANCE AND SUPPORT 4.1 Maintenance and Support for the Server Software. Subject to Sections 4.2, 8.2 and 9.17(a), PlanetCAD shall provide Dassault Systemes with four years maintenance and support for the Server Software, beginning at the Effective Date. The description of maintenance and support services to be provided by PlanetCAD is set forth in the Maintenance and Support Services Schedule, attached hereto as Schedule C and incorporated herein by reference. 4.2 Change of Control of Dassault Systemes. PlanetCAD will not be required to continue providing maintenance or support services, as set forth in Schedule C, for the Server Software if there is a change of Control of Dassault Systemes to the benefit of a Competitor of PlanetCAD. 5. ROYALTY FEES 5.1 Royalties on Server Software. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 5.2 Definition of Net Revenue. Net Revenue shall consist of all revenues recognized by Dassault Systemes from the sale of Dassault Systemes services or products incorporating or facilitated by the Server Software, including the price paid by the 7 customers, less any applicable discounts and net of any commissions or fees paid to third party resellers, to obtain access to such products or services and any other fees and charges invoiced by Dassault Systemes to the customers, without deduction by such party of any other costs or expenses related to achievement of the revenue, provided, however, that Net Revenue shall be reduced by the amount, if any, of (i) value-added taxes, (ii) sales taxes or (iii) withholding taxes imposed by any jurisdiction on payments made by a payor in such jurisdiction to a payee outside of such jurisdiction. Net Revenue will not include revenues recognized by Dassault Systemes for the sale of products or services authorized by or created under the Co-Branding Agreement and/or Web Services Agreement, executed by the Parties concurrently herewith, which allow for the use of the Server Software as set forth under the terms of each respective agreement. 5.3 Initial License Fee. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 5.4 Payments. All payments shall be made in U.S. dollars by bank check or electronic transfer to a bank account designated by PlanetCAD. 5.5 Taxes. Dassault Systemes shall pay, without recourse to PlanetCAD, any and all applicable sales, use, excise, value added or other taxes or duties, howsoever designated, assessed or levied upon the execution or performance of this Agreement, by any United States or European taxing authority, except for taxes based on PlanetCAD'S net income. 5.6 Audit and Reporting. Dassault Systemes shall, for two years following each transaction that is subject to royalty payments pursuant to Section 5.1, keep true and accurate records and books of account of such transaction containing all particulars which may be necessary for the purpose of auditing payments to PlanetCAD under this Agreement. During such two year period, and upon reasonable notice to Dassault Systemes, PlanetCAD shall have the right to have an audit conducted through a licensed independent accounting firm, of any billings, collections, and taxes on such itemized statement, and to examine the records and books of account of Dassault Systemes in connection therewith. Dassault Systemes will bear the costs of such audit if a discrepancy or error of computation in an amount greater than USD 10,000 in favor of PlanetCAD is identified. Any audit conducted pursuant to this Section 5.6 shall not be conducted in such a manner as to unreasonably interfere with the Dassault Systemes' operations and in no event shall an audit be conducted more frequently than once each year. 8 6. WARRANTIES AND DISCLAIMER OF WARRANTIES 6.1 Mutual Representations. Each Party represents and warrants to the other Party that such Party: (i) Has suitable agreements with its respective employees to meet the confidentiality obligations under this Agreement; and (ii) It is under no obligation or restriction, and will not assume any obligation or restriction, that would prevent it from performing its obligations under this Agreement. 6.2 PlanetCAD Representations. PlanetCAD represents and warrants to Dassault Systemes that it owns and/or has valid licenses in all rights, title and interest in and to the Server Software. 6.3 DISCLAIMER OF WARRANTIES. THE FOREGOING WARRANTIES AND CONDITIONS ARE EXCLUSIVE OF, AND THE PARTIES DISCLAIM ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE, USE, OR REQUIREMENT. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS AGREEMENT, ANY INFORMATION OR MATERIALS FURNISHED BY EITHER PARTY TO THE OTHER ARE PROVIDED ON AN "AS IS" BASIS. 7. LIMITATION OF LIABILITY AND INDEMNIFICATION 7.1 LIMITATION OF LIABILITY. WITH THE EXCEPTION OF CLAIMS FOR (i) PERSONAL INJURY OR DEATH, (ii) INTELLECTUAL PROPERTY INFRINGEMENT INDEMNIFICATION, AS SET FORTH IN SECTION 7.2, AND (iii) THE CONFIDENTIALITY PROVISIONS SET FORTH IN SECTION 9.1: IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY SPECIAL, EXEMPLARY, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ANY LOST PROFITS, LOST SAVINGS, LOST STAFF TIME OR OTHER ECONOMIC DAMAGES ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. 7.2 Intellectual Property Infringement Indemnification. PlanetCAD agrees to hold Dassault Systemes, its subsidiaries, distributors, assignees and Affiliates, and their respective officers, directors, employees, agents, representatives and shareholders (collectively referred to in this Section as "Dassault Systemes") harmless from and against any claim of any nature, including, but not limited to, administrative, civil or criminal procedures, which is or may be made or raised against Dassault Systemes by any third party that the use or distribution of the Server Software that is the subject of this Agreement and owned by PlanetCAD, infringes or violates any third party's patent, copyright, trade secret or other intellectual property right 9 in any country. Indemnification hereunder shall cover all damages, regardless of their nature, settlements, expenses and costs, including costs of investigation, court costs and attorneys' fees. The payment of any indemnification shall be contingent on: (i) Dassault Systemes giving prompt written notice to PlanetCAD of any such claim or allegation; (ii) Cooperation by Dassault Systemes with PlanetCAD in its defense against the claim; and (iii) Dassault Systemes obtaining PlanetCAD's prior written approval of any settlement, if any, by the Dassault Systemes Indemnities of such matters, such approval not to be unreasonably withheld. Notwithstanding the foregoing, PlanetCAD shall not have the obligation to indemnify Dassault Systemes for any claims of infringement based on any modification by Dassault Systemes of the Server Software, or from the combination of the Server Software with any other program, to the extent such claim would not have arisen without such combination or from use of the unmodified Server Software. 7.3 Additional Remedies. If the operation, distribution or use of the Server Software becomes, or is likely to become, the subject of a claim involving the infringement or other violation of any patent, copyright, trade secret, or other intellectual property rights of any third party, the Parties will jointly determine in good faith what appropriate steps can be agreed upon, with a view towards curing such infringement or other violation, at PlanetCAD's sole charge. Such steps may include, but are not limited to: (i) PlanetCAD securing the right for Dassault Systemes to continue using the Server Software or (ii) PlanetCAD replacing or modifying the Server Software so that it becomes non-infringing. If no other option is reasonably available, PlanetCAD agrees to use its best efforts to withdraw the infringing Software from the market. 10 8. TERM AND TERMINATION 8.1 Term. This Agreement shall come into force as of the Effective Date, and shall remain valid until the expiration of the last copyright or other protection available in any Software herein licensed. 8.2 Termination. Either Party may terminate this Agreement if the other Party fails to perform any of its material obligations under this Agreement, provided, however, that such termination shall only become effective after the non-breaching Party has given written notice to the other Party of such failure to perform, the breach being not cured within a sixty day period from receipt of the notice. Provisions of the following paragraphs shall survive any termination of this Agreement: 3.4, 6, 7, 9.1, 9.3 and 9.4. 9. MISCELLANEOUS 9.1 Confidentiality. All communications and information disclosed by one Party to the other Party under this Agreement shall be subject to the terms and conditions of the CNDA. Notwithstanding anything to the contrary in the CNDA, all information relating to the Source Code of the Server Software and Derivative Works thereof shall be deemed to be Confidential Information under the CNDA even though they are not marked confidential. 9.2 Freedom of Action. Except as otherwise provided, nothing contained in this Agreement shall be construed to limit or impair any right of either Party to enter into similar agreements with other parties, or to develop, acquire, license or market, directly or indirectly, other products or services, competitive with those offered by the other Party. 9.3 Additional Instruments. Notwithstanding termination of this Agreement, the Parties covenant and agree to execute and deliver any additional instruments or documents necessary to carry out the general intent of this Agreement, including without limitation patent assignments or any other assignments necessary to evidence the ownership of Intellectual Property contemplated hereby or any such additional instruments or documents, including such instruments as may be required by the laws of any jurisdiction, now or in effect or hereinafter enacted, that may affect a Party's rights, title or interest, as applicable, in and to any of the software governed hereby. 9.4 Irreparable Injury. Each Party acknowledges and agrees that each covenant in this Agreement pertaining to confidential information and ownership of intellectual property is reasonable and necessary to protect and preserve the rights of the other Party in its confidential information and intellectual property, and that any breach by such Party of the terms of this Agreement may result in irreparable injury to the other Party. Each Party, therefore, subject to a claim of laches, estoppel, acquiescence or other delay in seeking relief, consents and agrees that 11 the other Party shall be entitled to seek and obtain a temporary restraining order and a permanent injunction to prevent a breach or contemplated breach of this Agreement and waives any requirement that the other Party post a bond in connection with seeking such injunctive relief. 9.5 Relationship of the Parties. PlanetCAD and Dassault Systemes are independent contractors, and nothing in this Agreement will create any partnership, joint venture, agency, franchise, sales representative, or employment relationship between the Parties. Neither Party has the authority to act as agent for the other Party or to conduct business in the name of such other Party or make statements, warranties or representations that exceed or are inconsistent with the warranties provided hereunder. 9.6 Notices. All notices required or permitted shall be given in writing, in the English language, and shall be deemed effectively delivered upon personal delivery or three days after deposit with a carrier by registered mail or other equivalent service, postage prepaid, return receipt requested, addressed as follows, or to such other address as either Party may designate to the other: In the case of PlanetCAD : PlanetCAD Inc. 2520 55th Street, Suite 200 Boulder, Colorado 80301 Attn. Office of the President In the case of Dassault Systemes: Dassault Systemes 9 Quai Marcel Dassault 92150 Suresnes Attn. Thibault De Tersant cc: Law Department
9.7 Headings. The descriptive headings contained in this Agreement are for convenience of reference only and shall not affect in any way the meaning or interpretation of this Agreement. 9.8 Severability. If any term or other provision of this Agreement is deemed invalid, illegal or incapable of being enforced by any law or public policy, all other terms and provisions of this Agreement shall nevertheless remain in full force and effect so long as the economic or legal substance of the transactions contemplated hereby is not affected in any manner materially adverse to any Party. 9.9 Entire Agreement. This Agreement, together with the Schedules attached hereto, constitutes the entire agreement of the Parties with respect to the subject matter hereof and supersedes all prior agreements and undertakings, both written and oral, between Dassault Systemes and PlanetCAD with respect to the subject matter hereof. 12 9.10 Amendment. This Agreement may not be amended or modified except by an instrument in writing signed by, or on behalf of, duly authorized representatives of Dassault Systemes and PlanetCAD. 9.11 Applicable Law, Venue. This Agreement shall be governed by, and construed in accordance with, the Laws of the State of New York, applicable to contracts executed in and to be performed entirely within that state (without regard to the conflicts of Law provisions thereof). This Agreement shall not be governed by the U.N. Convention on Contracts for the International Sale of Goods. The parties hereto hereby (a) submit to the exclusive jurisdiction of any court of competent jurisdiction sitting in the State of Delaware, The City of Wilmington for the purpose of any Action arising out of or relating to this Agreement brought by any party hereto, and (b) agree, to the fullest extent permitted by applicable law, to waive, and not to assert by way of motion, defense, or otherwise, in any such Action, any claim that is not subject personally to the jurisdiction of the above-named courts, that its property is exempt or immune from attachment or execution, that the Action is brought in an inconvenient forum, that the venue of the Action is improper, or that this Agreement may not be enforced in or by any of the above-named courts. 9.12 Waiver of Jury Trial. EACH OF THE PARTIES HERETO HEREBY WAIVES TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY WITH RESPECT TO ANY ACTIONS OR PROCEEDINGS DIRECTLY OR INDIRECTLY ARISING OUT OF, UNDER OR IN CONNECTION WITH THIS AGREEMENT, OR THE TRANSACTIONS CONTEMPLATED HEREUNDER. 9.13 Counterparts. This Agreement may be executed in one or more counterparts, each of which when executed shall be deemed to be an original but all of which taken together shall constitute one and the same agreement. 9.14 No Waiver. The failure of either Party to enforce any provision of this Agreement shall not constitute a waiver of the right to subsequently enforce such provision, or any other provision of this Agreement. 9.15 Force Majeure. Neither Party shall be held liable for any failure to perform any of its obligations under this Agreement for as long as, and to the extent that such failure is due to an event of force majeure. An event of force majeure shall include general strikes, lockouts, acts of God, acts of war, mobilization of troops, fire, extreme weather, flood, or other natural calamity, embargo, acts of governmental agency, government or any other laws or regulations. 9.16 Expenses. Except as expressly provided for in this Agreement, each Party shall bear its own expenses incurred in connection with this Agreement, including without limitation travel and living expenses incurred by that Party's employees. 13 9.17 Assignment; Subcontracting; Third Party Beneficiaries. (a) This Agreement may be assigned or otherwise transferred by operation of law or otherwise without the express written consent of PlanetCAD and Dassault Systemes, but in such event the assigning Party shall give notice to the non-assigning Party and the non-assigning Party shall have the right to terminate its maintenance and support obligations under this Agreement within the 30 day period following receipt of such notice. (b) Either Party may assign or otherwise transfer all or part of this Agreement to any of its Affiliates, for so long as it remains an Affiliate; provided that no such assignment shall relieve a Party of any of its obligations under this Agreement. In the event there is a change of Control of an Affiliate which terminates its status as an Affiliate of the party to this Agreement, and this Agreement has been assigned to such an Affiliate, this Agreement shall be assigned back to the party within 6 months of the effective date of the change of Control. (c) Either Party may subcontract services necessary to perform the obligations set forth in this Agreement provided that any and all such subcontrators shall have entered into agreements with the subcontracting Party sufficient to enable that Party to comply with all terms and conditions of this Agreement. In addition, any such subcontractors shall not have access to Source Code, unless agreed to by the Parties. (d) This Agreement shall be binding upon and inure solely to the benefit of the Parties hereto and their permitted assigns, subcontractor or transferee, and nothing herein, express or implied, is intended to or shall confer upon any other person, including, without limitation, any union or any employee or former employee of either Party, any legal or equitable right, benefit or remedy of any nature whatsoever, including, without limitation, any rights of employment for any specified period, under or by reason of this Agreement. 9.18 Third Party Licenses. Each party is relieved of its obligations, if any, to (i) deliver the Source Code of a product licensed hereunder or (ii) authorize the creation of Derivative Works from Source Code hereunder to the extent that fulfilling such obligations would cause such party to breach any third party license agreement entered into by such party after the Effective Date. 14 IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed in duplicate originals by their duly authorized officers or representatives. In Paris, on November 14, 2000 For PlanetCAD Inc. For Dassault Systemes Its: Chief Executive Officer Its: Executive Vice President Name: R. Bruce Morgan Name: Thibault de Tersant Signature: /s/ R. Bruce Morgan Signature: /s/ Thibault de Tersant EX-10.5 6 d82148ex10-5.txt WEB-SERVICES AGREEMENT 1 EXHIBIT 10.5 WEB SERVICES AGREEMENT This WEB SERVICES AGREEMENT (this "Agreement") is made as of this November 14, 2000 by and between Dassault Systemes, a societe anonyme organized under the laws of France and the owner of Purchaser ("Dassault Systemes") and/or certain affiliates of Dassault Systemes, and PlanetCAD Inc. (formerly known as Spatial Technology Inc.), a corporation organized under the laws of the State of Delaware ("PlanetCAD") (each a "Party," together, the "Parties"). RECITALS WHEREAS, PlanetCAD, SPATIAL COMPONENTS, LLC and DASSAULT SYSTEMES CORP. entered into a certain Purchase Agreement, dated July 4, 2000 ("Purchase Agreement"), pursuant to which DASSAULT SYSTEMS CORP. acquired the Component Business (as defined in the Purchase Agreement) from PlanetCAD and SPATIAL COMPONENTS, LLC, including certain software; and WHEREAS, PlanetCAD has created, operates and maintains its own Web sites, including, without limitation 3Dshare.com and PlanetCAD.com, through which PlanetCAD provides Internet-based services to its customers, and has competence and expertise in the supply of Internet-based services to customers. WHEREAS, as a condition to closing the transaction contemplated under the Purchase Agreement, the Parties hereto agreed to enter into this Agreement for the development and supply of certain Internet-based services to their respective customers. NOW, THEREFORE, in consideration of the mutual promises and covenants set forth herein, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows: SECTION 1 DEFINITIONS All capitalized terms not otherwise defined herein shall have the same meanings set forth in the Purchase Agreement. 1.1 "Additional Web Services" shall have the meaning set forth in Section 3.2. 1.2 "Affiliate(s)" shall mean, with respect to any specified Person, any other Person that, directly or indirectly, Controls, is Controlled by, or is under common Control with such Person. 1.3 "CNDA" means the Confidential and Non-Disclosure Agreement among, inter alia, PlanetCAD and Dassault Systemes executed contemporaneously herewith. 2 1.4 "Control" means, with respect to the relationship between or among two or more Persons, shall mean the possession, directly or indirectly, or as trustee or executor, of the power to direct or cause the direction of the affairs or management of a Person, whether through the ownership of voting securities, as trustee or executor, by contract or otherwise, including, without limitation, the ownership, directly or indirectly, of securities having the power to elect a majority of the board of directors or similar body governing the affairs of such Person; provided that neither PlanetCAD nor Dassault Systemes shall be deemed to be controlled by any other Person or under common control with any Person that is not one of their respective subsidiaries. 1.5 "Dassault Systemes" shall mean the entity that is a party to this Agreement and each of its Affiliates. 1.6 "Dassault Systemes Applications" shall have the meaning set forth in Section 3.1. 1.7 "Dassault Systemes Customer(s)" means any customer of the Web Service, wherever hosted, having access to such Web Service by first logging in on any Dassault Systemes Web site, and only when Section 4.5 has been exercised. 1.8 "Dassault Systemes Customer Database(s)" shall have the meaning set forth in Section 7.8. 1.9 "Dassault Systemes Marks" shall have the meaning set forth in Section 6.5. 1.10 "Dassault Systemes Personnel" means employees, officers, agents, independent contractors and subcontractors of Dassault Systemes. 1.11 "Dassault Systemes Web Sites" means any Web site created, owned, operated or supported by or for Dassault Systemes. 1.12 "Derivative Work(s)" means, related to Software, a work which is based upon in whole or in part of such Software, such as a revision, enhancement, modification, translation, abridgment, condensation, expansion, or any other form in which such Software may be recast, transformed, or adapted, or which, if prepared without authorization of the owner of the copyright or other intellectual property right in such Software, would constitute a copyright infringement or other violation of the intellectual property rights. A Derivative Work shall also include, without limitation, compilations or link-edits, improvements, bug fixes, corrections, look and feel changes, upgrades, updates and new version that incorporate such Software in whole or part. 1.13 "Effective Date" means November 14, 2000. 1.14 "Hardware Infrastructure" means all hardware equipment, materials, products and facilities that may be necessary at any time to operate the Software Infrastructure to the Web Services. 3 1.15 "Infrastructure" means the "Software Infrastructure" and the "Hardware Infrastructure." 1.16 "Initial Web Services" shall have the meaning set forth in Section 3.2. 1.17 "Know-How" shall mean all residual information of a non-tangible form, which is not protected by the United States or European Union laws of copyright, patent or trade secrets and which may be retained by a party who has had access to confidential and proprietary information of the other Party, including ideas, concepts or techniques contained therein. 1.18 "Net Revenue" shall have the meaning set forth in Section 7.5. 1.19 "Person" means any individual or legal entity, including without limitation, partnership, corporation, association, trust or unincorporated organization. 1.20 "Revenue Report" shall have the meaning set forth in Section 7.6. 1.21 "Server Software" means all software, including without limitation, Web interface, Web middleware, Web dynamic content billing, Web content generation software, and any Derivative Works thereof that is used by PlanetCAD to provide application services over the Internet. The list of all such Software, including the Third Party Software, as of the Effective Date, is attached in Schedule A which will be updated by PlanetCAD when reasonably requested by Triangle and when in Dot's determination significant changes have been made. 1.22 "Software" means any computer software program, including programming-code, on-line documentation, if any, user interface related thereto or associated therewith, to the extent that such user interface does exist, and related user and installation documentation other than on-line documentation associated with this computer software program. 1.23 "Source Code" means computer-programming code and related system documentation, comments and procedural code, that is not directly executable by a computer but which may be printed out or displayed in a form readable and understandable by a qualified programmer. 1.24 "Software Infrastructure" means the software configuration and environment necessary to perform, supply and support a Web Service including any Third Party Software. 1.25 "Third Party Software" means computer software programs owned by a party other than PlanetCAD or Triangle and incorporated into, or required for the development, operation and/or support of any Web Service governed by this Agreement and the Infrastructure associated therewith. 1.26 "Web Service" means a Web service based on Dassault Systemes Applications that is developed pursuant to Section 3 hereof. 4 SECTION 2 SUBJECT MATTER 2.1 Engagement. Dassault Systemes and PlanetCAD agree to cooperate to bring Internet based services to their customers on the basis of their respective expertise in the field of application programs for Dassault Systemes and of supply and implementation of web services for PlanetCAD, under the terms and conditions set forth below. SECTION 3 DEVELOPMENT OF THE WEB SERVICES 3.1 Identification of Dassault Systemes Web Services. The Parties have agreed to develop and market over the Internet certain Dassault Systemes Web Services that are based on application programs owned by Dassault Systemes or its Affiliates ("Dassault Systemes Applications") and developed under the terms and conditions set forth in this Agreement. Upon mutual agreement of the Parties on the marketability over the Internet of any particular service based on any Dassault Systemes Application, Dassault Systemes will adapt its application program, with the assistance of PlanetCAD, for its marketing over the Internet according to specifications to be agreed upon by the Parties. This Agreement will govern each Web Service developed hereunder and may be terminated in accordance with Section 10 with respect to each Web Service independently. 3.2 Initial and Additional Web Services. As of the Effective Date, the Parties have identified two potential Web Services, which could be governed by this Agreement subject to further technical, business and marketing discussions between the parties (the "Initial Web Services"). These Initial Web Services are set forth on Schedule A, which is attached hereto and incorporated herein by reference. As the Parties agree on additional Web Services (the "Additional Web Services") pursuant to Section 3.1, Schedule A will be amended accordingly. 3.3 Appointment of Liaison. As soon as practicable after the Effective Date, each Party shall appoint a project manager to act as a liaison and to oversee and ensure compliance of the respective obligations of the Parties hereunder. 3.4 Development Activities. The Parties may agree to conduct the development activities contemplated hereunder at each other's facilities. The PlanetCAD or Dassault Systemes Personnel visiting the other Party's facilities shall be subject to the provisions of Section 11.5 and to any other restrictions, limitations, insurance requirements and other prerequisites as may reasonably be required by the Parties. 5 3.5 Consulting Services. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] SECTION 4 COMMERCIALIZATION AND MARKETING OF THE WEB SERVICES 4.1 Commercialization of the Web Services. Prior to commercialization of each Web Service, Dassault Systemes shall have an opportunity to review the content and presentation of the Web pages relating to each Web Service and shall have the right to request reasonable changes to any aspect of the proposed Web Services, including without limitation, the look and feel of the Web pages, pricing and display and placement of the Dassault Systemes Marks. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 4.2 Rights of PlanetCAD to Market, Sell and Distribute the Web Services on PlanetCAD Web Sites. For each Web Service and so long as this Agreement has not been terminated with respect to such Web Service: (i) PlanetCAD will be authorized - on a non exclusive basis - to market, sell and distribute such Web Service to its customers via those PlanetCAD Web sites that Dassault Systemes would have approved and (ii) Dassault Systemes will grant to PlanetCAD all licenses necessary to accomplish the intent of this Section 4.2. PlanetCAD shall not market, sell and distribute such Web Services at conditions, including but not limited to financial consideration and licensing terms, that are less favorable for Dassault Systemes that those applied for other Web services marketed, sold or distributed by PlanetCAD on the approved PlanetCAD Web site(s). PlanetCAD may, at its sole discretion, discount or bundle the Web Services but only to the extent any such discount or bundle is applied consistently with those applied to any other Web service on the approved PlanetCAD Web site(s). The Parties may, from time to time and only by mutual agreement, offer special promotional pricing or terms for Web Services which are less favorable to Dassault Systemes for specified time periods. 4.3 Obligation of PlanetCAD to Advertise the Web Services. As long as and to the extent that any Web Service is offered by PlanetCAD on any PlanetCAD Web site, PlanetCAD shall promote such Web Services as part of the PlanetCAD advertising program. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 4.4 Termination of Advertising Obligation. Notwithstanding anything to the contrary contained in this Agreement, the advertising obligation set forth in Section 4.3 shall immediately terminate with respect to any Web Service at such time as Dassault Systemes makes such Web Service (or any web service similar thereto) available on any Dassault Systemes or other third party Web site. 6 4.5 Rights of PlanetCAD to Market, Sell and Distribute the Web Services to Dassault Systemes Customers. Upon agreement between the Parties on a case by case basis, and for the term to be agreed upon between the Parties, PlanetCAD will be authorized to offer any specified Web Services to Dassault Systemes Customers by making them accessible from any Dassault Systemes Web site(s), as determined by Dassault Systemes in its sole discretion, on a fully transparent basis by way of a direct link to the first Web page of such Web Service. Upon exiting such Web Service, the Dassault Systemes Customers will be automatically returned to the Dassault Systemes Web site. PlanetCAD shall, with consultation and input from Dassault Systemes, perform all services necessary for the implementation of such link between the Dassault Systemes Web site and such Web Service. SECTION 5 HOSTING AND SUPPORT OF THE WEB SERVICES 5.1 Customer Support Obligations of the Parties. For each Web Service: (i) Dassault Systemes shall be responsible for first and second level customer support for such Dassault Systemes Web Service and (ii) PlanetCAD will provide the Customer Relations Management ("CRM") environment for web based support of the Dassault Systemes Applications, and qualify customer support requests in advance of passing them on to Dassault Systemes. 5.2 Software Support and Maintenance Obligations of the Parties. For each Web Service the Parties will cooperate to perform maintenance and support services on their respective software (the Server Software and Infrastructure will be maintained and supported by PlanetCAD and the Dassault Systemes Applications will be maintained and supported by Dassault Systemes) for as long as this Agreement remains in effect with respect to such Web Service. The description of maintenance and support obligations is set forth in the Maintenance and Support Services Schedule, attached hereto as Schedule B and incorporated herein by reference. 5.3 Hosting of Web Services. For each Web Service Dassault Systemes shall have the option to: (a) [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.]; or (b) Provide PlanetCAD with a mutually agreed upon Hardware Infrastructure necessary to host such service. PlanetCAD represents and warrants that it shall use commercially reasonable efforts in accordance with industry standards in its performance of the hosting obligations set forth in this Section 5.3. 7 SECTION 6 OWNERSHIP AND LICENSING RIGHTS 6.1 Ownership by PlanetCAD. All right, title and interest in and to the Server Software and any Derivative Works associated therewith (developed by either Party under this Agreement or otherwise) shall be owned by PlanetCAD. 6.2 Ownership by Dassault Systemes. All right, title and interest in and to the Dassault Systemes Applications, any Derivative Works of the Dassault Systemes Applications (developed by either Party under this Agreement or otherwise) and the software associated therewith (not including any Server Software) is owned by Dassault Systemes. 6.3 Licenses to PlanetCAD. Effective upon commencement of development activities relating to a Web Service, Dassault Systemes hereby grants to PlanetCAD a fully-paid, royalty-free, worldwide, non-exclusive license, which does not include a license to any Source Code, to market, sell and distribute the Web Service including the associated Dassault Systemes Application in accordance with the terms and conditions of Section 4.2 hereof. The license granted pursuant to this Section 6.3 shall be deemed to be automatically revoked upon termination of this Agreement with respect to each Web Service. 6.4 Limited Development License. Effective upon commencement of development activities relating to a Web Service, PlanetCAD hereby grants to Dassault Systemes a fully-paid, non-exclusive, worldwide, revocable limited license to the Server Software and Infrastructure for the sole purpose of developing, maintaining and supporting, as applicable, such Web Service, limited to the provision of such Web Service on the PlanetCAD Web site(s). The license granted pursuant to this Section 6.4 does not extend to the offering by Dassault Systemes of the Web Service(s) on a Dassault Systemes or third party Web site, and, prior to making any such offering Dassault Systemes will require a separate licensing arrangement to provide such Web Service(s) either pursuant to the Server Software License Agreement or otherwise. Furthermore, the license granted pursuant to this Section 6.4 shall be deemed to be automatically revoked upon termination of this Agreement with respect to such Web Service. Within 2 weeks following the execution of this Agreement, PlanetCAD will provide Dassault Systemes with the necessary media and licensing keys or similar authorization system (if any) to use such Server Software and Infrastructure according to the above license. 6.5 Use of Marks. Prior to commercialization of any Web Service the Parties shall agree on the use and placement of Dassault Systemes logos, trade names, trademarks, service marks, and similar identifying material (collectively referred to as "Dassault Systemes Marks") in connection with such Web Service. Any usage of the Dassault Systemes Marks on the PlanetCAD Web site, including without limitation, size, placement, font and style of the Dassault Systemes Marks will be subject to prior written approval by Dassault Systemes. Upon commercialization of the Web Service, Dassault Systemes shall grant PlanetCAD a non-exclusive, non-transferable, revocable right to use the Dassault Systemes Marks as approved by Dassault Systemes, for the sole purpose of advertising, marketing, promotion and sale of the Web Service(s). In connection with such license PlanetCAD agrees not to use the Dassault Systemes Marks in any manner that is disparaging or that otherwise portrays Dassault Systemes in a negative light. Dassault Systemes retains all right, title and interest, in and to the Dassault 8 Systemes Marks. Upon termination of this Agreement with respect to any Web Service governed hereby, PlanetCAD's rights to use the Dassault Systemes Marks associated with such Web Service shall automatically terminate. PlanetCAD shall include wording such as "engineered by Dassault Systemes" (or any other logo or expression to be provided by Dassault Systemes for this purpose) on all Web pages, associated with the Web Services. 6.6 Know-How. The Parties hereby acknowledge and agree that any and all rights to Know-How developed or shared under this Agreement by either Party shall be jointly owned by the Parties and may be used by either Party in the operation of their respective businesses during and following termination of this Agreement. SECTION 7 CUSTOMER BILLING, PAYMENT TERMS AND AUDIT RIGHTS 7.1 Customer Billing. Unless otherwise agreed by the Parties, and as long as PlanetCAD host the Web Services, PlanetCAD shall be responsible for all billing and collection obligations associated with the Web Services. 7.2 Currency. Prior to the launch date of any Web Service, the Parties shall agree on which currencies and list prices shall apply to such Web Service. If, for whatever reason, the Parties fail to agree on a price to be applied, the price applied to the Web Service shall be equal to the then current list price for such services as offered on the PlanetCAD Web site(s). If, for whatever reason, the Parties fail to agree on a currency to be applied, the Billing Party will be entitled to choose a currency, as long as such currency easily converts into US dollars, and the Billing Party shall pay to the other Party its share of revenue in US dollars, based on the average exchange rate of that currency against US dollars during the last 3 months preceding the date of payment to the other Party. 7.3 Taxes. The Billing Party may deduct and withhold from any payments due to the other Party under this Agreement any and all taxes and other amounts as required under the laws of any jurisdiction that has the authority to tax the Billing Party, the other Party or the transactions contemplated by this Agreement. However, should the Billing Party consider withholding payment or paying any such amount from payments due under this Agreement, the Billing Party shall send prior notice to the other Party a certificate setting forth the regulatory and/or legal framework for such a payment, including the provisions of the international tax treaty allowing such payment. The other Party will have 30 days from the reception of such information to accept or refuse such payment/withholding: (i) If the other Party accepts or does not answer within this time frame, the Billing Party will be entitled to make such payment/withholding and shall provide the other Party with a certificate stating the amounts withheld and the jurisdictions to which such amounts were remitted. (ii) If the other Party provides to the Billing Party a certificate stating that (a) the Billing Party has no withholding/payment obligations with respect to the laws of such particular jurisdiction and setting forth the relevant authority for such statement 9 and/or (b) that such a payment may be avoided under any applicable law or treaty and provide with the necessary documentation for that purpose, and if the Billing Party then determines that it has no such withholding obligation under the laws of such jurisdiction, the Billing Party shall make any future payments to the other Party without deduction for the items set forth in the certificate, until such time as the Billing Party reasonably believes that it has a withholding obligation. Either Party shall pay any applicable sales or value added tax on the payments due. 7.4 Share of Net Revenue. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 7.5 Definition of Net Revenue. Net Revenue shall consist of all revenues recognized by PlanetCAD from supply of the Web Services, including the price paid by the customers, less any applicable discounts and net of any commissions or fees paid to third party resellers, to obtain access to such Web Services and any other fees and charges invoiced by PlanetCAD to the customers, without deduction by PlanetCAD of any other costs or expenses related to achievement of the revenue, provided, however, that Net Revenue shall be reduced by the amount, if any, of (i) value-added taxes, (ii) sales taxes or (iii) withholding taxes imposed by any jurisdiction on payments made by a payor in such jurisdiction to a payee outside of such jurisdiction. 7.6 Reporting and Payment Obligations. Within 7 business days after the end of each calendar quarter, PlanetCAD shall provide Dassault Systemes with an itemized statement, subject to adjustment within 30 days of receipt of such statement, setting forth the Net Revenue achieved over the preceding calendar quarter, and shall include such other information as may be mutually agreed upon by the Parties (the "Revenue Report"). The Revenue Report shall be accompanied by payment to Dassault Systemes of all amounts owed as set forth on such Revenue Report as well as, when applicable, the exchange currency rate. When agreed between the Parties as provided for in Section 7.2, payment will be made to Dassault Systemes in the currency received by PlanetCAD for the provision of the Web Services. Otherwise, payment shall be made in US dollars as provided for in Section 7.2. To the extent possible under applicable law, payment will be made to Dassault Systemes in the currency received by PlanetCAD for the provision of the Web Services and as agreed between the Parties. In the event that PlanetCAD is unable under foreign currency export controls or similar applicable laws, unknown to the Parties at the time where they agree on payments in that currency, to provide payment to Dassault Systemes in the agreed upon currency received by PlanetCAD, the Parties agree to negotiate a mutually agreeable solution. Dassault Systemes 'S right to payment shall accrue upon the date the corresponding revenues accrue to PlanetCAD. PlanetCAD shall pay interest for late payment of any sum due at the LIBOR rate plus four points (not to exceed the maximum rate authorized, or be inferior to the minimum rate allowed, by applicable law, as the case may be). 10 7.7 Records; Audit. PlanetCAD shall, for two years following each transaction relating to a particular Web Service, keep true and accurate records and books of account of such transaction containing all particulars which may be necessary for the purpose of auditing payments to Dassault Systemes under this Agreement. During such two year period, and upon reasonable notice to PlanetCAD, Dassault Systemes shall have the right to have an audit conducted through a licensed independent accounting firm, of any billings, collections, and taxes on such itemized statement, and to examine the records and books of account of PlanetCAD in connection therewith. PlanetCAD will bear the costs of such audit if a discrepancy or error of computation in an amount greater than USD 10,000 in favor of Dassault Systemes is identified. Any audit conducted pursuant to this Section 7.7 shall not be conducted in such a manner as to unreasonably interfere with the PlanetCAD's operations and in no event shall an audit be conducted more frequently than once each year. 7.8 PlanetCAD's Obligation to Maintain and Update Dassault Systemes Customer Databases. For as long as PlanetCAD hosts and offers to Dassault Systemes Customers Web(s) Service(s) under Section 4.5, PlanetCAD will maintain and continuously update Dassault Systemes' Customer Database(s), which shall include without limitation, databases of Dassault Systemes Customers, of demands from and results of those Web Services supplied to Dassault Systemes Customers and associated Net Revenue and of data collected via the Customer Relations Management ("CRM") environment. The Dassault Systemes Customer Databases must be held separately from any other databases held or maintained by PlanetCAD. If not held separately, the Dassault Systemes Customer Databases must be clearly identified and sorted out as the property of Dassault Systemes and the provisions regarding PlanetCAD's limited right of use and its obligation of confidentiality as set forth below apply without change. 7.9 Ownership of Dassault Systemes Customer Databases. Dassault Systemes will be deemed the maker of the Dassault Systemes Customer Databases and the owner of any and all right, title and interest in and to the Dassault Systemes Customer Databases and their content, wherever hosted. At all times during the Term of this Agreement, Dassault Systemes will have unrestricted access to and use of the Dassault Systemes Customer Databases, and the content therein. At all times during the Term of this Agreement, and as long as the Dassault Systemes Customer Databases are hosted by PlanetCAD, PlanetCAD benefits from a limited right to use the Dassault Systemes Customer Databases for the exclusive purpose of performing its obligations under this Agreement. Nothing herein limits PlanetCAD's rights of ownership of its customer database when PlanetCAD is providing Web Services on PlanetCAD Web site(s). 7.10 Transfer of Dassault Systemes Customer Databases. Upon discontinuation of hosting and offering of Web Services to Dassault Systemes Customers under Section 4.5, PlanetCAD will transfer to Dassault Systemes the Dassault Systemes Customer Databases upon Dassault Systemes' request. PlanetCAD will have no right, license or interest whatsoever in the Dassault Systemes Customer Databases or content therein, except to the extent necessary for performance of its obligations under this Agreement. 7.11 Warranty of Confidentiality of Dassault Systemes Customer Databases and Input and Output Data of Dassault Systemes Customers. The Parties expressly agree that the Dassault Systemes Customer Databases and their content as well as Dassault Systemes Customers input data to be processed and output data supplied, are confidential information of Dassault Systemes, and will be treated as such, in accordance with the terms and conditions of the CNDA. 11 SECTION 8 REPRESENTATIONS AND WARRANTIES 8.1 Mutual Representations. Each party represents and warrants to the other Party as follows: (a) The performance of this Agreement does not infringe or conflict with any Intellectual Property right of any third party, and (ii) no confidential, proprietary or trade secret information of either Party or their personnel that will be used in performing this Agreement has been misappropriated from any third party; and (b) All services, work, obligations or assignments performed by the Parties under this Agreement will be of professional quality, conforming to generally accepted practices within the industry, and the Infrastructure including Third Party Software shall function and perform to the specifications and requirements thereof. 8.2 Disclaimer. THIS IS AN AGREEMENT SOLELY FOR SERVICES, AND THERE SHALL BE NO WARRANTIES, EXPRESS OR IMPLIED, EXCEPT AS STATED HEREIN. SECTION 9 INDEMNIFICATION AND LIMITATIONS OF LIABILITY 9.1 Dassault Systemes Indemnification. Dassault Systemes shall indemnify and hold harmless PlanetCAD, and its officers, directors, employees, and shareholders from and against any claims, demands, suits, causes of action, losses, damages, judgments, costs and expenses (including reasonable attorneys' fees) arising out of or related to any breach of Dassault Systemes' representations, warranties and covenants set forth in this Agreement. 9.2 PlanetCAD Indemnification. PlanetCAD shall indemnify and hold harmless Dassault Systemes, its affiliates, and their respective officers, directors, employees, and shareholders from and against any claims, demands, suits, causes of action, losses, damages, judgments, costs and expenses (including reasonable attorneys' fees) arising out of or related to any breach of PlanetCAD's representations, warranties and covenants set forth in this Agreement. 9.3 Intellectual Property Infringement. Each Party agrees to hold the other Party, its subsidiaries and distributors and assignees harmless from and against any claim of any nature, including, but not limited to, administrative, civil or criminal procedures, which is or may be made or raised against this Party, its subsidiaries and distributors and assignees by any third party that the use or distribution of the Software or any other intellectual property that is the subject of this Agreement and owned or licensed by this Party, infringes or violates any third party's patent, copyright, trade secret or other intellectual property right in any country. Indemnification hereunder shall cover all damages, regardless of their nature, settlements, expenses and costs, including costs of 12 investigation, court costs and attorneys' fees. The payment of any indemnification shall be contingent on: (a) This Party giving prompt written notice to the other of any such claim or allegation; (b) Cooperation by this Party with the other Party in its defense against the claim; and (c) This Party obtaining the other's prior written approval of any settlement, if any, by this Party of such matters, such approval not to be unreasonably withheld. Neither Party shall have the obligation to indemnify the other for any claims of infringement based on any modification by the latest version of its Software, or from the combination of its Software with any other program, to the extent such claim would not have arisen without such combination or from use of the unmodified Software or intellectual property. If the operation of any Software that is the subject of this Agreement becomes, or is likely to become, the subject of a claim involving the infringement or other violation of any patent, copyright, trade secret, or other intellectual property rights of any third party, the Parties will jointly determine in good faith what appropriate steps are to be taken by them, with a view towards curing such infringement or other violation, at the Software owner's sole charge. Such steps may include, but are not limited to: (i) The owner securing the right to continue using its Software, or (ii) The owner replacing or modifying its Software so that it becomes non-infringing. If no other option is reasonably available, the owner of the Software agrees to use its best efforts to withdraw, at its sole expense, the infringing Software from the market. In the event a Derivative Work, created under this Agreement, becomes the subject of a claim of infringement, the owner of said Derivative Work shall indemnify the other Party pursuant to this Section 9. 9.4 LIMITATIONS ON LIABILITY. EXCEPT FOR LIABILITY ARISING FROM SECTION 9.3, IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY INDIRECT, SPECIAL, INCIDENTAL, PUNITIVE OR CONSEQUENTIAL DAMAGES, LOSSES, OR EXPENSES INCLUDING, BUT NOT LIMITED TO, LOSS OF USE, LOSS OF PROFITS, OR LOSS OF GOODWILL, EVEN IF THAT PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH LOSS OR DAMAGE. 13 EXCEPT FOR LIABILITY ARISING FROM SECTION 9.3, IN NO EVENT SHALL EITHER PARTY BE LIABLE UNDER THIS AGREEMENT FOR AN AMOUNT GREATER THAN THE AMOUNT THAT SUCH PARTY HAS EARNED PURSUANT TO THE REVENUE SHARING PROVISIONS OF SECTION 7.4 IN THE TWELVE MONTH PERIOD PRECEDING THE CLAIM. SECTION 10 TERM AND TERMINATION 10.1 Term and Termination for Convenience. Either Party has a right to terminate this Agreement upon nine months' notice to the other Party as to any Web Service or the Agreement in its entirety. 10.2 Termination for Breach. Either Party may terminate this Agreement at any time in the event that the other Party is in default or breach of any material provision of this Agreement, and such default or breach continues unremedied for a period of sixty days after written notice thereof. If this Agreement is terminated under the terms of this Section 10.2, the Party terminating this Agreement, in addition to such termination, shall have all rights and remedies available at law and in equity. SECTION 11 MISCELLANEOUS 11.1 Confidentiality. All communications and information disclosed by one party to the other Party under this Agreement shall be subject to the terms and conditions of the CNDA. 11.2 Freedom of Action. Except as otherwise provided, nothing contained in this Agreement shall be construed to limit or impair any right of either Party to enter into similar agreements with other parties, or to develop, acquire, license or market, directly or indirectly, other products or services, competitive with those offered by the other Party. It is specifically understood this Agreement is not an exclusive services agreement and nothing herein shall prohibit Dassault Systemes, PlanetCAD or any of their affiliates from developing or supplying, whether directly or indirectly, web services substantially identical to any of the Web Services governed hereby. 11.3 Additional Instruments. Notwithstanding termination of this Agreement, the Parties covenant and agree to execute and deliver any additional instruments or documents necessary to carry out the general intent of this Agreement, including without limitation patent assignments or any other assignments necessary to evidence the ownership of intellectual property contemplated hereby or any such additional instruments or documents, including such instruments as may be required by the laws of any jurisdiction, now or in effect or hereinafter enacted, that may affect a Party's rights, title or interest, as applicable, in and to the Server Software, the Dassault Systemes Applications and/or any Derivative Work based thereon. 14 11.4 Irreparable Injury. Each Party acknowledges and agrees that each covenant in this Agreement pertaining to confidential information and ownership of intellectual property is reasonable and necessary to protect and preserve the rights of the other Party in its confidential information and intellectual property, and that any breach by such Party of the terms of this Agreement may result in irreparable injury to the other Party. Each Party, therefore, subject to a claim of laches, estoppel, acquiescence or other delay in seeking relief, consents and agrees that the other Party shall be entitled to seek and obtain a temporary restraining order and a permanent injunction to prevent a breach or contemplated breach of this Agreement and waives any requirement that the other Party post a bond in connection with seeking such injunctive relief. 11.5 Relationship of the Parties. PlanetCAD and Dassault Systemes are independent contractors, and nothing in this Agreement will create any partnership, joint venture, agency, franchise, sales representative, or employment relationship between the Parties. Neither Party has the authority to act as agent for the other Party or to conduct business in the name of such other Party or make statements, warranties or representations that exceed or are inconsistent with the warranties provided hereunder. 11.6 Notices. All notices required or permitted shall be given in writing, in the English language, and shall be deemed effectively delivered upon personal delivery or three days after deposit with a carrier by registered mail or other equivalent service, postage prepaid, return receipt requested, addressed as follows, or to such other address as either Party may designate to the other: In the case of PlanetCAD : PlanetCAD Inc. 2520 55th Street, Suite 200 Boulder, Colorado 80301 Attn. Office of the President In the case of Dassault Systemes: Dassault Systemes 9 Quai Marcel Dassault 92150 Suresnes Attn. Thibault De Tersant cc: Law Department 11.7 Headings. The descriptive headings contained in this Agreement are for convenience of reference only and shall not affect in any way the meaning or interpretation of this Agreement. 11.8 Severability. If any term or other provision of this Agreement is deemed invalid, illegal or incapable of being enforced by any law or public policy, all other terms and provisions of this Agreement shall nevertheless remain in full force and effect so long as the economic or legal substance of the transactions contemplated hereby is not affected in any manner materially adverse to any Party. 11.9 Entire Agreement. This Agreement, together with the Schedules attached hereto, constitutes the entire agreement of the Parties with respect to the subject matter hereof 15 and supersedes all prior agreements and undertakings, both written and oral, between Dassault Systemes and PlanetCAD with respect to the subject matter hereof. 11.10 Amendment. This Agreement may not be amended or modified except by an instrument in writing signed by, or on behalf of, duly authorized representatives of Dassault Systemes and PlanetCAD. 11.11 Applicable Law, Venue. This Agreement shall be governed by, and construed in accordance with, the Laws of the State of New York, applicable to contracts executed in and to be performed entirely within that state. This Agreement shall not be governed by the U.N. Convention on Contracts for the International Sale of Goods. The Parties hereto hereby (a) submit to the exclusive jurisdiction of any court of competent jurisdiction sitting in the State of Delaware, The City of Wilmington for the purpose of any Action arising out of or relating to this Agreement brought by any party hereto, and (b) agree, to the fullest extent permitted by applicable law, to waive, and not to assert by way of motion, defense, or otherwise, in any such Action, any claim that is not subject personally to the jurisdiction of the above-named courts, that its property is exempt or immune from attachment or execution, that the Action is brought in an inconvenient forum, that the venue of the Action is improper, or that this Agreement may not be enforced in or by any of the above-named courts. 11.12 Waiver of Jury Trial. EACH OF THE PARTIES HERETO HEREBY WAIVES TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY WITH RESPECT TO ANY ACTIONS OR PROCEEDINGS DIRECTLY OR INDIRECTLY ARISING OUT OF, UNDER OR IN CONNECTION WITH THIS AGREEMENT, OR THE TRANSACTIONS CONTEMPLATED HEREUNDER. 11.13 Counterparts. This Agreement may be executed in one or more counterparts, each of which when executed shall be deemed to be an original but all of which taken together shall constitute one and the same agreement. 11.14 No Waiver. The failure of either Party to enforce any provision of this Agreement shall not constitute a waiver of the right to subsequently enforce such provision, or any other provision of this Agreement. 11.15 Force Majeure. Neither Party shall be held liable for any failure to perform any of its obligations under this Agreement for as long as, and to the extent that such failure is due to an event of force majeure. An event of force majeure shall include general strikes, lockouts, acts of God, acts of war, mobilization of troops, fire, extreme weather, flood, or other natural calamity, embargo, acts of governmental agency, government or any other laws or regulations. 11.16 Expenses. Except as expressly provided for in this Agreement, each Party shall bear its own expenses incurred in connection with this Agreement, including without limitation, travel and living expenses incurred by that Party's employees. 11.17 Assignment; Subcontracting; Third Party Beneficiaries. 16 (a) This Agreement may be assigned, subcontracted, or otherwise transferred, by operation of law or otherwise without the express written consent of PlanetCAD and Dassault Systemes, but in such event the assigning Party shall give notice to the non-assigning Party and the non-assigning Party shall have the right to terminate this Agreement within the 30 day period following receipt of such notice. (b) Either Party may assign, subcontract or otherwise transfer all or part of this Agreement to any of its Affiliates, and for as long as it remains an Affiliate; provided that no such assignment shall relieve a Party of any of its obligations under this Agreement. In the event there is a change of Control of an Affiliate which terminates its status as an Affiliate of the Party to this Agreement, and this Agreement has been assigned to such an Affiliate, this Agreement shall be assigned back to the Party within 6 months of the effective date of the change of Control. (c) This Agreement shall be binding upon and inure solely to the benefit of the Parties hereto and their permitted assigns, subcontractor or transferee, and nothing herein, express or implied, is intended to or shall confer upon any other person, including, without limitation, any union or any employee or former employee of either Party, any legal or equitable right, benefit or remedy of any nature whatsoever, including, without limitation, any rights of employment for any specified period, under or by reason of this Agreement. 17 IN WITNESS WHEREOF, each Party has caused its duly authorized representative to execute this Agreement effective the day and year first above written. PlanetCAD Inc. Dassault Systemes /s/ R. Bruce Morgan /s/ Thibault de Tersant - ------------------------------- ----------------------------- By: R. Bruce Morgan By: Thibault de Tersant Title: Chief Executive Officer Title: Executie Vice President EX-10.6 7 d82148ex10-6.txt JOINT SOFTWARE LICENSE AGREEMENT 1 EXHIBIT 10.6 JOINT SOFTWARE LICENSE AGREEMENT This Joint Software License Agreement, dated as of November 14, 2000 (this "Agreement"), is made by and between Dassault Systemes S.A., a societe anonyme organized under the laws of France and the owner of Purchaser ("Dassault Systemes") and/or certain affiliates of Dassault Systemes, and PlanetCAD Inc. (formerly known as Spatial Technology Inc.), a corporation organized under the laws of the State of Delaware ("PlanetCAD") (each a "Party," together, the "Parties"). WITNESSETH: WHEREAS, PlanetCAD, SPATIAL COMPONENTS, LLC and DASSAULT SYSTEMES CORP. entered into a certain Purchase Agreement, dated July 4, 2000 ("Purchase Agreement"), pursuant to which DASSAULT SYSTEMES CORP. acquired the Component Business (as defined in the Purchase Agreement) from PlanetCAD and SPATIAL COMPONENTS, LLC, including certain software; and WHEREAS, in connection with the Purchase Agreement and as a condition to closing the transaction contemplated thereunder PlanetCAD has agreed to license to Dassault Systemes certain software, all in accordance with the terms and conditions set forth herein. NOW, THEREFORE, in consideration of the premises and the mutual agreements and covenants set forth in the Purchase Agreement and in this Agreement, and intending to be legally bound hereby, the Parties hereby agree as follows: 1. DEFINITIONS As used in this Agreement, the terms defined in this section shall have the following respective meanings. Capitalized terms not otherwise defined herein shall have the same meanings as set forth in the Purchase Agreement. AFFILIATE(s) shall mean, with respect to any specified Person, any other Person that, directly or indirectly, Controls, is Controlled by, or is under common Control with such Person. CNDA shall mean the Confidential and Non-Disclosure Agreement among, inter alia, PlanetCAD and Dassault Systemes executed contemporaneously herewith. CONTROL, with respect to the relationship between or among two or more Persons, shall mean the possession, directly or indirectly, or as trustee or executor, of the power to direct or cause the direction of the affairs or management of a Person, whether through the ownership of voting securities, as trustee or executor, by contract or otherwise, including, without limitation, the ownership, directly or indirectly, of securities having the power to elect a majority of the board of directors or similar body governing the affairs of such Person; provided that neither PlanetCAD nor Dassault Systemes shall be deemed to be controlled by any other Person or under common control with any Person that is not one of their respective subsidiaries. 2 DERIVATIVE WORK(s), means, related to Software, a work which is based upon in whole or in part of such Software, such as a revision, enhancement, modification, translation, abridgment, condensation, expansion, or any other form in which such Software may be recast, transformed, or adapted, or which, if prepared without authorization of the owner of the copyright or other intellectual property right in such Software, would constitute a copyright infringement or other violation of the intellectual property rights. A Derivative Work shall also include, without limitation, compilations or link-edits, improvements, bug fixes, corrections, look and feel changes, upgrades, updates and new version that incorporate such Software in whole or in part. EFFECTIVE DATE means November 14, 2000. INTELLECTUAL PROPERTY shall mean (a) inventions, whether or not patentable, whether or not reduced to practice, and whether or not yet made the subject of a pending patent application or applications, (b) ideas and conceptions of potentially patentable subject matter, including without limitation, any patent disclosures whether or not reduced to practice and whether or not yet made the subject of a pending patent application or applications, (c) Patents, (d) Trademarks, (e) copyrights (registered or otherwise) and registrations and applications for registration thereof, all moral rights of authors therein, and all rights therein provided by international treaties, conventions or common law, (f) Software, (g) Trade Secrets, and (h) all rights to sue and recover damages and obtain injunctive relief for past, present and future infringement, dilution, misappropriation, violation or breach thereof. JOINT SOFTWARE shall mean the Software licensed and/or owned by PlanetCAD as set forth on Schedule A. LICENSES shall mean the agreements listed on Schedule A pursuant to which PlanetCAD has acquired rights in the Joint Software. OBJECT CODE shall mean computer-programming code, substantially or entirely in binary form, that is directly executable by a computer after suitable processing, but without the intervening steps of assembly, compilation or link-edit. PERSON(s) shall mean any individual or legal entity, including without limitation, partnership, corporation, association, trust or unincorporated organization. RUN-TIME shall designate all software materials and databases that are necessary to use any Software as well as this Software itself. SOFTWARE shall mean any computer software program, including programming-code, on-line documentation, if any, user interface related thereto or associated therewith, to the extent that such user interface does exist, and related user and installation documentation other than on-line documentation associated with this computer software program. 3 SOURCE CODE shall mean computer-programming code and related system documentation, comments and procedural code, that is not directly executable by a computer but which may be printed out or displayed in a form readable and understandable by a qualified programmer. 2. PURPOSE Subject to the terms and conditions herein, PlanetCAD agrees to license the Joint Software to Dassault Systemes and to limit its rights in and to such Software. 3. OWNERSHIP RIGHTS AND LICENSES IN AND TO THE JOINT SOFTWARE 3.1 Ownership and Licenses in and to the Joint Software. PlanetCAD owns and/or is the licensee of certain rights in and to the Joint Software, as described in more detail on Schedule A, attached hereto and incorporated herein by reference. 3.2 Licenses to the Joint Software. As of the Effective Date and except as provided for in Section 9.19, PlanetCAD grants Dassault Systemes the following rights: (i) A perpetual, worldwide, irrevocable, royalty-free, fully paid-up license to use, distribute and sell the Joint Software that: (i) was created by PlanetCAD, (ii) is owned by PlanetCAD or (iii) was developed by a third party for PlanetCAD as a work made for hire under the copyright laws of the United States; and (ii) A perpetual, worldwide, irrevocable, royalty-free, fully paid-up license to use, distribute and sell the Joint Software that is licensed to PlanetCAD pursuant to the Licenses. 3.3 Derivative Works of the Joint Software. 3.3.1 Grant of License to Dassault Systemes (i) As of the Effective Date and except as provided for in Section 9.19, PlanetCAD grants to Dassault Systemes a perpetual, worldwide, irrevocable, fully-paid, royalty-free license to make Derivative Works of the Source Code of the Joint Software. (ii) At the end of each quarter, and for five (5) years from the Effective Date, or for a longer period if agreed to by the Parties, in the event that either Party has made any Derivative Work from the Joint Software, such Party shall deliver to the other Party one copy of the Source Code of such Derivative Work, in a sealed and dated envelope, in the form of a CD-ROM, or other appropriate media. (iii) Such items shall be sent to Dassault Systemes or PlanetCAD, as applicable, by international registered mail to the following address: 4 In the case of PlanetCAD : PlanetCAD Inc. 2520 55th Street, Suite 200 Boulder, Colorado 80301 Attn. Office of the President In the case of Dassault Systemes: Spatial Corp. 2425 Street, Suite 100 Boulder, Colorado 80301 Attn. Mike Payne
or may be delivered to either Party by e-mail transmission if agreed to in advance by the receiving Party. (iv) Neither Party shall have an obligation to maintain or support all or part of the Derivative Works of the Joint Software made pursuant to this Section 3.3. 3.3.2 Ownership of Derivative Works. The Parties agree that all right, title and interest in and to all or part of the Derivative Works of the Joint Software made by either Party shall be owned exclusively by the Party that developed such Derivative Work. To the extent any assignment is necessary to evidence the intent of this Section 3.3.2 and that this assignment cannot be made at present, each Party agrees to assign to the other Party all of its right, title and interest in and to these Derivative Works, and any part thereof, and in and to all copyrights, patents and other proprietary rights they may have in such Derivative Works. 3.3.3 License Grant to Derivative Works. Effective upon delivery of each Derivative Work as contemplated by Section 3.3.1(ii) and subject to the restrictions contained in this Agreement, the developing Party hereby grants to the other Party a perpetual, paid-up, royalty-free, worldwide, irrevocable, non-exclusive license to use, prepare, compile, install, execute, access, reproduce, distribute and sell such Derivative Works of the Joint Software. 3.4 Exclusive License. The licenses set forth in Sections 3.2 and 3.3 are exclusive for the benefit of Dassault Systemes for all use of the Joint Software as component products (i.e., as toolkits designed to be embedded into other software products or services). For all other purposes, the licenses granted in Sections 3.2 and 3.3 are non-exclusive as to Dassault Systemes. 4. RESTRICTIONS AND COVENANTS RELATING TO THE JOINT SOFTWARE 4.1 Restrictions on PlanetCAD's Use of the Joint Software. PlanetCAD hereby covenants and agrees to the following restriction: As of the Effective Date, PlanetCAD will not, directly participate in, or direct the participation in, the 5 development, marketing, distribution, licensing, supporting, sale or re-sale of the Joint Software as component products or component toolkits. 4.2 Covenants of PlanetCAD relating to the Joint Software. As of the Effective Date, PlanetCAD covenants and agrees to use its best efforts to secure for Dassault Systemes licenses substantially similar to the Licenses set forth on Schedule A. It is understood that any license secured pursuant to this Section 4.2 shall run directly from the third party licensor to Dassault Systemes. 4.3 Effect of Competition by Dassault Systemes. The Parties hereby agree that in the event that Dassault Systemes develops that incorporate, use or are based upon the Joint Software and such product offerings directly compete with 3Dshare.com, then PlanetCAD may elect to terminate PlanetCAD's obligations of the Parties agreed to by PlanetCAD in Sections 3.3.1 (ii), 3.3.1 (iii), 3.3.3 and 5 hereof and the restrictions set forth in Section 4.1 shall automatically terminate. In such a case, and only as to the use of the Joint Software, PlanetCAD shall not be bound by the provisions of the non-competition clause provided for in the Purchase Agreement executed on July 4, 2000. 5. MAINTENANCE AND SUPPORT 5.1 Maintenance and Support for the Joint Software. Commencing on the Effective Date, the Parties shall provide each other with five years maintenance and support, free of charge, as described in the Maintenance and Support Services Schedule (attached hereto as Schedule B and incorporated herein by reference) as may be extended by mutual agreement of the Parties. Upon termination of the obligations set forth in this Section 5.1 all obligations of the Parties contained in Sections 3.3.1 (ii), 3.3.1 (iii) and 3.3.3 shall terminate. 5.2 Special Support Obligations of PlanetCAD. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 6. WARRANTIES AND DISCLAIMER OF WARRANTIES 6.1 Mutual Representations. Each Party represents and warrants to the other Party that such Party: (i) Has suitable agreements with its respective employees to meet the confidentiality obligations under this Agreement; and (ii) Is under no obligation or restriction, and will not assume any obligation or restriction, that would prevent it from performing its obligations under this Agreement. 6 6.2 PlanetCAD Representations. PlanetCAD represents and warrants to Dassault Systemes that it owns and/or has valid licenses in all rights, title and interest in and to the Joint Software. 6.3 DISCLAIMER OF WARRANTIES. THERE SHALL BE NO WARRANTIES, EXPRESS OR IMPLIED, EXCEPT AS STATED IN THIS SECTION 6, INCLUDING, BUT NOT LIMITED TO, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE, USE, OR REQUIREMENT. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS AGREEMENT, ANY INFORMATION OR MATERIALS FURNISHED BY EITHER PARTY TO THE OTHER ARE PROVIDED ON AN "AS IS" BASIS. 7. LIMITATION OF LIABILITY AND INDEMNIFICATION 7.1 LIMITATION OF LIABILITY. 7.1.1 WITH THE EXCEPTION OF CLAIMS FOR (i) PERSONAL INJURY OR DEATH, (ii) INTELLECTUAL PROPERTY INFRINGEMENT INDEMNIFICATION, AS SET FORTH IN SECTION 7.4, AND (iii) THE CONFIDENTIALITY PROVISIONS SET FORTH IN SECTION 9.1: IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY SPECIAL, EXEMPLARY, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ANY LOST PROFITS, LOST SAVINGS, LOST STAFF TIME OR OTHER ECONOMIC DAMAGES ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. 7.1.2 [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 7.2 Dassault Systemes Indemnification. Dassault Systemes shall indemnify and hold harmless PlanetCAD, and its officers, directors, employees, agents, representatives and shareholders from and against any claims, demands, suits, causes of action, losses, damages, judgments, costs and expenses (including reasonable attorneys' fees) arising out of or related to any material breach of Dassault Systemes' representations, warranties and covenants set forth in this Agreement. 7 7.3 PlanetCAD Indemnification. PlanetCAD shall indemnify and hold harmless Dassault Systemes, its affiliates, and their respective officers, directors, employees, agents, representatives and shareholders from and against any claims, demands, suits, causes of action, losses, damages, judgments, costs and expenses (including reasonable attorneys' fees) arising out of or related to any material breach of PlanetCAD's representations, warranties and covenants set forth in this Agreement. 7.4 Intellectual Property Infringement Indemnification. Each Party agrees to hold the other Party, its subsidiaries, distributors, assignees and Affiliates, and their respective officers, directors, employees, and shareholders (collectively, the "Indemnities") harmless from and against any claim of any nature, including, but not limited to, administrative, civil or criminal procedures, which is or may be made or raised against a Party's Indemnities by any third party that the use or distribution of the Software that is the subject of this Agreement and owned by the other Party, infringes or violates any third party's patent, copyright, trade secret or other intellectual property right in any country. Indemnification hereunder shall cover all damages, regardless of their nature, settlements, expenses and costs, including costs of investigation, court costs and attorneys' fees, and shall be for a period of seven (7) years from the Effective Date. The payment of any indemnification shall be contingent on: (i) A Party giving prompt written notice to the other Party of any such claim or allegation; (ii) Cooperation by the indemnified Party with the other Party in its defense against the claim; and (iii) The indemnified Parties obtaining the other Party's prior written approval of any settlement, if any, by the indemnified Party of such matters, such approval not to be unreasonably withheld. Notwithstanding the foregoing, neither Party shall have the obligation to indemnify the other for any claims of infringement based on any modification by the latest version of its Software, or from the combination of its Software with any other program, to the extent such claim would not have arisen without such combination or from use of the unmodified Software. 8 7.5 Additional Remedies. If the operation, distribution or use of any Software that is the subject of this Agreement becomes, or is likely to become, the subject of a claim involving the infringement or other violation of any patent, copyright, trade secret, or other intellectual property rights of any third party, the Parties will jointly determine in good faith what appropriate steps can be agreed upon, with a view towards curing such infringement or other violation, at the Software owner's sole charge. Such steps may include, but are not limited to: (i) The owner securing the right for the other Party to continue using the Joint Software, or (ii) The owner replacing or modifying the Software so that it becomes non-infringing. If no other option is reasonably available, the owner of the Software agrees to use its best efforts to withdraw, at its sole expense, the infringing Software from the market. 8. TERM AND BREACH OF MATERIAL OBLIGATIONS 8.1 Term. This Agreement shall come into force as of the Effective Date, and shall remain valid until the expiration of the last copyright or other protection available in any Software herein licensed unless terminated as provided in Section 8.2. 8.2 Breach of Material Obligations. In the event a Party fails to perform any of its material obligations under this Agreement, the non-breaching Party has given written notice to the other Party of such failure to perform, and the breach is not cured within a sixty day period from receipt of the notice, the non-breaching Party may terminate any and all of its obligations to provide maintenance and support, as set forth in Section 5, to the breaching Party. 9. MISCELLANEOUS 9.1 Confidentiality. All communications and information disclosed by one Party to the other Party under this Agreement shall be subject to the terms and conditions of the CNDA. Notwithstanding anything to the contrary in the CNDA, all information relating to the Source Code of the Joint Software and Derivative Works thereof shall be deemed to be Confidential Information under the CNDA even though they are not marked confidential. 9.2 Freedom of Action. Except as otherwise provided, nothing contained in this Agreement shall be construed to limit or impair any right of either Party to enter into similar agreements with other parties, or to develop, acquire, license or market, directly or indirectly, other products or services, competitive with those offered by the other Party. 9 9.3 Additional Instruments. Notwithstanding termination of this Agreement, the Parties covenant and agree to execute and deliver any additional instruments or documents necessary to carry out the general intent of this Agreement, including without limitation patent assignments or any other assignments necessary to evidence the ownership of Intellectual Property contemplated hereby or any such additional instruments or documents, including such instruments as may be required by the laws of any jurisdiction, now or in effect or hereinafter enacted, that may affect a Party's rights, title or interest, as applicable, in and to any of the software governed hereby. 9.4 Irreparable Injury. Each Party acknowledges and agrees that each covenant in this Agreement pertaining to confidential information and ownership of intellectual property is reasonable and necessary to protect and preserve the rights of the other Party in its confidential information and intellectual property, and that any breach by such Party of the terms of this Agreement may result in irreparable injury to the other Party. Each Party, therefore, subject to a claim of laches, estoppel, acquiescence or other delay in seeking relief, consents and agrees that the other Party shall be entitled to seek and obtain a temporary restraining order and a permanent injunction to prevent a breach or contemplated breach of this Agreement and waives any requirement that the other Party post a bond in connection with seeking such injunctive relief. 9.5 Relationship of the Parties. PlanetCAD and Dassault Systemes are independent contractors, and nothing in this Agreement will create any partnership, joint venture, agency, franchise, sales representative, or employment relationship between the Parties. Neither Party has the authority to act as agent for the other Party or to conduct business in the name of such other Party or make statements, warranties or representations that exceed or are inconsistent with the warranties provided hereunder. 9.6 Notices. All notices required or permitted shall be given in writing, in the English language, and shall be deemed effectively delivered upon personal delivery or three days after deposit with a carrier by registered mail or other equivalent service, postage prepaid, return receipt requested, addressed as follows, or to such other address as either Party may designate to the other: In the case of PlanetCAD: PlanetCAD Inc. 2520 55th Street, Suite 200 Boulder, Colorado 80301 Attn. Office of the President 10 In the case of Dassault Systemes: Dassault Systemes 9 Quai Marcel Dassault 92150 Suresnes Attn. Thibault De Tersant cc: Law Department 9.7 Headings. The descriptive headings contained in this Agreement are for convenience of reference only and shall not affect in any way the meaning or interpretation of this Agreement. 9.8 Severability. If any term or other provision of this Agreement is deemed invalid, illegal or incapable of being enforced by any law or public policy, all other terms and provisions of this Agreement shall nevertheless remain in full force and effect so long as the economic or legal substance of the transactions contemplated hereby is not affected in any manner materially adverse to any Party. 9.9 Entire Agreement. This Agreement, together with the Schedules attached hereto, constitutes the entire agreement of the Parties with respect to the subject matter hereof and supersedes all prior agreements and undertakings, both written and oral, between Dassault Systemes and PlanetCAD with respect to the subject matter hereof. 9.10 Amendment. This Agreement may not be amended or modified except by an instrument in writing signed by, or on behalf of, duly authorized representatives of Dassault Systemes and PlanetCAD. 9.11 Applicable Law, Venue. This Agreement shall be governed by, and construed in accordance with, the Laws of the State of New York, applicable to contracts executed in and to be performed entirely within that state (without regard to the conflicts of Law provisions thereof). This Agreement shall not be governed by the U.N. Convention on Contracts for the International Sale of Goods. The parties hereto hereby (a) submit to the exclusive jurisdiction of any court of competent jurisdiction sitting in the State of Delaware, The City of Wilmington for the purpose of any Action arising out of or relating to this Agreement brought by any party hereto, and (b) agree, to the fullest extent permitted by applicable law, to waive, and not to assert by way of motion, defense, or otherwise, in any such Action, any claim that is not subject personally to the jurisdiction of the above-named courts, that its property is exempt or immune from attachment or execution, that the Action is brought in an inconvenient forum, that the venue of the Action is improper, or that this Agreement may not be enforced in or by any of the above-named courts. 11 9.12 Waiver of Jury Trial. EACH OF THE PARTIES HERETO HEREBY WAIVES TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY WITH RESPECT TO ANY ACTIONS OR PROCEEDINGS DIRECTLY OR INDIRECTLY ARISING OUT OF, UNDER OR IN CONNECTION WITH THIS AGREEMENT, OR THE TRANSACTIONS CONTEMPLATED HEREUNDER. 9.13 Counterparts. This Agreement may be executed in one or more counterparts, each of which when executed shall be deemed to be an original but all of which taken together shall constitute one and the same agreement. 9.14 No Waiver. The failure of either Party to enforce any provision of this Agreement shall not constitute a waiver of the right to subsequently enforce such provision, or any other provision of this Agreement. 9.15 Force Majeure. Neither Party shall be held liable for any failure to perform any of its obligations under this Agreement for as long as, and to the extent that such failure is due to an event of force majeure. An event of force majeure shall include general strikes, lockouts, acts of God, acts of war, mobilization of troops, fire, extreme weather, flood, or other natural calamity, embargo, acts of governmental agency, government or any other laws or regulations. 9.16 Expenses. Except as expressly provided for in this Agreement, each Party shall bear its own expenses incurred in connection with this Agreement, including without limitation travel and living expenses incurred by that Party's employees. 9.17 Assignment; Subcontracting; Third Party Beneficiaries. (a) This Agreement may be assigned or otherwise transferred by operation of law or otherwise without the express written consent of PlanetCAD and Dassault Systemes, but in such event the assigning Party shall give notice to the non-assigning Party and the non-assigning Party shall have the right to terminate its obligations under Sections 3.3 and 5 of this Agreement within the 30 day period following receipt of such notice. (b) Either Party may assign or otherwise transfer all or part of this Agreement to any of its Affiliates; provided that no such assignment shall relieve a Party of any of its obligations under this Agreement. In the event there is a change of Control of an Affiliate which terminates its status as an Affiliate of the party to this Agreement, and this Agreement has been assigned to such an Affiliate, this Agreement shall be assigned back to the party within 6 months of the effective date of the change of Control. (c) Except as provided in Section 5.2, either Party may subcontract services necessary to perform the obligations set forth in this Agreement provided that any and all such subcontractors shall have entered into agreements with the 12 subcontracting Party sufficient to enable that Party to comply with all terms and conditions of this Agreement. (d) This Agreement shall be binding upon and inure solely to the benefit of the Parties hereto and their permitted assigns, subcontractor or transferee, and nothing herein, express or implied, is intended to or shall confer upon any other person, including, without limitation, any union or any employee or former employee of either Party, any legal or equitable right, benefit or remedy of any nature whatsoever, including, without limitation, any rights of employment for any specified period, under or by reason of this Agreement. 9.18 Trademarks. Notwithstanding any other provisions of this Agreement, neither Party shall have the right under this Agreement to use the other Party's trademarks or trade names in connection with any product, service, promotion, public announcement, advertisement or other publication, without securing the prior written consent of such other Party. 9.19 Third Party Licenses. Each party is relieved of its obligations, if any, to (i) deliver the Source Code of a product licensed hereunder or (ii) authorize the creation of Derivative Works from Source Code hereunder to the extent that fulfilling such obligations would cause such party to breach any third party license agreement entered into by such party after the Effective Date. IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed in duplicate originals by their duly authorized officers or representatives. In Paris, on November, 14 2000 For PlanetCAD Inc. For Dassault Systemes Its: Chief Executive Officer Its: Executive Vice President Name: R. Bruce Morgan Name: Thibault de Tersant Signature: /s/ R. Bruce Morgan Signature: /s/ Thibault de Tersant EX-10.7 8 d82148ex10-7.txt MASTER SOFTWARE RESELLER AGREEMENT 1 EXHIBIT 10.7 MASTER SOFTWARE RESELLER AGREEMENT FOR ENTERPRISE VERSIONS OF PLANETCAD PRODUCTS This Master Software Reseller Agreement (this "Agreement"), dated as of November 14, 2000 (the "Effective Date"), is made by and between Dassault Systemes S.A., a societe anonyme organized under the laws of France and the owner of Purchaser ("Dassault Systemes") and/or certain affiliates of Dassault Systemes, and PlanetCAD Inc. (formerly known as Spatial Technology Inc.), a corporation organized under the laws of the State of Delaware ("PlanetCAD") (each a "Party," together, the "Parties"). 1. INTRODUCTION 1.1. PlanetCAD has rights to certain computer software and related documentation identified in Schedule B. 1.2. Dassault Systemes wishes to have certain nonexclusive rights to market and distribute such software and documentation in a limited territory and to obtain certain integration services related thereto from PlanetCAD. 2. DEFINITIONS AFFILIATE(S) shall mean, with respect to any specified Person, any other Person that, directly or indirectly, Controls, is Controlled by, or is under common Control with such Person. As of the date of signature of this Agreement, the list of Affiliates for each party is specified in Schedule A. CNDA means the Confidential and Non-Disclosure Agreement among, inter alia, PlanetCAD and Dassault Systemes executed contemporaneously herewith. USER means a person who is authorized by a license agreement as specified in Section 3.3 to use a Product for its internal business purposes. USER LICENSE AGREEMENT means Dassault Systemes' or Dassault Systemes' distributors' license agreement that contains similar Intellectual Property Rights protection of PlanetCAD's licensed Product(s) as is generally accepted as standard practice in the computer industry. Dasault Systemes will provide a sample of its standard license agreement upon PlanetCAD' s request. INTELLECTUAL PROPERTY RIGHTS means rights in (a) inventions, whether or not patentable, whether or not reduced to practice, and whether or not yet made the subject of a pending patent application or applications, (b) ideas and conceptions of potentially patentable subject matter, including without limitation, any patent disclosures whether or not reduced to practice and whether or not yet made the subject of a pending patent application or applications, (c) Patents, (d) Trademarks, (e) copyrights (registered or otherwise) and registrations and applications for 1 2 registration thereof, all moral rights of authors therein, and all rights therein provided by international treaties, conventions or common law, (f) Software, (g) Trade Secrets, MARKS means PlanetCAD's trademarks, trade names, service marks, and/or service names as specified in Schedule B together with such other trademarks, trade names, service marks and/or service names of PlanetCAD as the Parties may add subsequently by mutual agreement in writing. PRODUCT(S) means the object code version of computer software and related documentation listed on Schedule B, including but not limited to any modifications or additions provided to Dassault Systemes by PlanetCAD pursuant to this Agreement or any maintenance or integration services provided in connection herewith, together with any computer software and related documentation the Parties may add subsequently by mutual agreement in writing. SOURCE CODE means computer-programming code and related system documentation, comments and procedural code, that is not directly executable by a computer but which may be printed our or displayed in a form readable and understandable by a qualified programmer. TERRITORY means and is limited to the geographic territory described in Schedule B attached hereto. 3. APPOINTMENT; LICENSE GRANT 3.1. Appointment. Subject to the terms and conditions of this Agreement, PlanetCAD appoints Dassault Systemes, and Dassault Systemes accepts such appointment, as an independent, non-exclusive distributor of Products in and to the Territory. PlanetCAD reserves the rights from time to time, in its sole discretion and without liability to Dassault Systemes, to offer and sell any Products in the Territory, directly or through other distributors and dealers. 3.2. Grant of Distribution License. Subject to the terms of this Agreement, PlanetCAD grants Dassault Systemes a non-exclusive, non-transferable license to (i) market, promote, reproduce for distribution, distribute and sublicense the Product(s) to Users solely for their own internal business purposes in the Territory during the term of this Agreement and (ii) use a reasonable number of copies of each of the Products for the sole purpose of demonstrating the Products, and training to Users. PlanetCAD further grants to Dassault Systemes the right to sublicense its distribution rights granted under this Section 3.2 to Dassault Systemes group distribution network and Dassault Systemes Affiliates. The license granted in this Section 3.2(ii) shall be subject to the terms and conditions of the User License Agreement as specified in Section 3.3 except that such use is restricted to demonstration and training purposes. PlanetCAD will deliver to Dassault Systemes a master copy of the Product(s) promptly after the Effective Date and a master copy of any updates as required under Section 7.3 from which Dassault Systemes may make all authorized copies pursuant to this Section 3.2. 3.3 Grant of Source Code License. Upon the Effective Date, PlanetCAD grants to Dassault Systemes a fully-paid, royalty-free, non-exclusive, non-transferable, worldwide license: 2 3 (i) To use the Source Code of the Product(s) only to support and maintain the Users, directly, should PlanetCAD be in material breach of its maintenance obligations as provided for under Exhibit D. (ii) To distribute Source Code of the Product(s) only to the extent necessary to fulfill any contractual source code escrow obligations of third party agreements relating to the sale and distribution of the Product(s). The distribution right set forth herein is subject to (a) Dassault Systemes giving PlanetCAD reasonable notice of such contractual source code escrow obligations and (b) PlanetCAD's approval, which shall not be unreasonably withheld or delayed. PlanetCAD agrees to deliver to Dassault Systemes a copy of the Product(s) Source Code for any delivery of the master CD related to the Product(s). Such delivery will take place before the initial launching of the Product(s) distribution and will be made for any update of the Product(s). 3.3. User Agreement. Dassault Systemes may not distribute any Product(s) to any User unless such User is subject to a license agreement with Dassault Systemes similar to the license agreements Dassault Systemes uses for similar or like products. Dassault Systemes will promptly provide PlanetCAD with such license agreement(s) upon PlanetCAD's request. 3.4. License Restrictions. Dassault Systemes will not (i) disassemble, decompile, or reverse engineer any software that is part of the Product(s); (ii) copy or otherwise reproduce any Product(s), in whole or in part, except for making reasonable numbers of back-up copies or as expressly authorized by this Agreement; (iii) modify the Product in any manner, except as it may be expressly directed by PlanetCAD in writing or except as provided otherwise in this Agreement; (iv) use the Product(s) in any manner to provide service bureau, time sharing, or other computer services to third parties. However, under this Agreement, Dassault Systemes may authorize the User to provide ASPs, services or access based on or to the Product(s) to User's network (such as Affiliates and subcontractors or suppliers) for User's internal business needs. 3.5. Nature of Distribution. To the extent any Product is or contains software, PlanetCAD will only license the right to use such Product(s) to Dassault Systemes for license fees, and will not, and does not, transfer any right, title or interest in such software to Dassault Systemes nor any User. Use of the terms "sell," "purchase", "license", "price", and "license fee" in this Agreement will be interpreted in accordance with this Section 3.5. 4. OBLIGATIONS OF THE PARTIES 4.1. PlanetCAD's Obligations. In order to assist Dassault Systemes with performing its obligations under Section 4.2, PlanetCAD will: 4.1.1. Deliver to Dassault Systemes a reasonable number of demonstration copies of each of the Products as PlanetCAD determines in its discretion; 3 4 4.1.2. Furnish Dassault Systemes with reasonable quantities, as shall be determined by PlanetCAD, of its standard information, marketing literature, brochures, manuals, Product information letters, etc., relating to the Products, and sell any additional copies of such materials to Dassault Systemes at PlanetCAD's direct cost; 4.1.3. Provide training to at least one technical or sales staff of Dassault Systemes free of charge at the PlanetCAD offices, or at a location determined by PlanetCAD, provided that the amount of training time will be reasonable and appropriate in PlanetCAD's judgment, all such training will be in English, and Dassault Systemes will bear all travel and living expenses for such personnel sent to PlanetCAD for training. 4.2. Dassault Systemes' Obligations. Dassault Systemes shall: 4.2.1. Use its commercially reasonable efforts to advertise, market, promote, and distribute the Products in the Territory in accordance with this Agreement. From time to time, the Parties agree to communicate regarding reasonable marketing and advertising policies. 4.2.2. Send at least one of its technical and/or sales personnel for training on the Product(s) and services to PlanetCAD's offices or to a location to be determined by the parties, and otherwise train and maintain a sufficient number of capable technical and sales personnel having the knowledge and training necessary to (i) inform customers properly concerning the features and capabilities of the Products and, if necessary, competitive products; (ii) service and support the Products in accordance with Dassault Systemes' obligations under this Agreement; and (iii) otherwise carry out the obligations and responsibilities of Dassault Systemes under this Agreement; 4.2.3. Inform PlanetCAD promptly and in writing of any facts or opinions regarding suspected Product defects, intellectual property infringement claims, or customer complaints; and 4.2.4. Obtain and maintain all government licenses, permits, and approvals, which are necessary or advisable for the implementation of this Agreement, and PlanetCAD will cooperate for that purpose whenever it is needed. 4.2.5 Dassault Systemes will comply with all applicable international, national, state, regional and local laws and regulations in performing its duties hereunder and in any of its dealings with respect to Products, and if any approval with respect to this Agreement, or the notification or registration thereof, will be required at any time during the term of this Agreement, with respect to giving legal effect to this Agreement in the Territory, or with respect to compliance with exchange regulations. 4.3. Dassault Systemes Covenants. Dassault Systemes will: (i) conduct business in a manner that reflects favorably at all times on the Products and the good name, good will and reputation of PlanetCAD; (ii) avoid deceptive, misleading or unethical practices that are or might be detrimental to PlanetCAD, the Products or the public; (iii) make no false or misleading 4 5 representations with regard to PlanetCAD or the Products; (iv) not publish or employ, or cooperate in the publication or employment of, any misleading or deceptive advertising material with regard to PlanetCAD or the Products; and (v) make no representations, warranties or guarantees to customers or to the trade with respect to the specifications, features or capabilities of the Products that are inconsistent with the literature distributed by PlanetCAD. 4.4. Demonstrations. Dassault Systemes will be responsible for demonstrations and benchmarks of Products to, and evaluations by, its prospective customers. 4.5. Costs and Expenses. Except as expressly provided herein or agreed to in writing each party shall bear its own costs and expenses incurred in the performance of its obligations under this Agreement, unless Dassault Systemes expressly requests PlanetCAD to assist in supporting a customer. In such case, Dassault Systemes will be responsible for payment of PlanetCAD's direct costs for such support up to an amount agreed to in writing prior to providing the support. 5. PAYMENTS 5.1. Fees. Dassault Systemes will pay PlanetCAD the ongoing non-refundable amounts set forth in Schedule C for Dassault Systemes' distribution and sublicensing of the Products, and for PlanetCAD's provision of maintenance services under Section 7. All shipping or other transportation charges for delivery of the Products to Dassault Systemes, including insurance and special packaging, will also be paid by Dassault Systemes. 5.2. Payment Terms; Taxes. 5.2.1. Dassault Systemes will make all payments to PlanetCAD due under this Agreement in accordance with Schedule C. Payments made under this Agreement after their due date will incur interest at a rate equal to 1.5% per month or the highest rate permitted by applicable law, whichever is lower. 5.2.2 All payments under this Agreement will be made in United States currency by bank-to-bank wire transfer to an account designated by PlanetCAD, unless otherwise agreed to by PlanetCAD in writing. 5.3. Increases and Decreases. 5.3.1 Existing Customers. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 5.3.2 New Customers. For new customers, PlanetCAD may increase the published list price of the Product(s) from time to time and the amounts specified on 5 6 Schedule C. Such price increases shall be effective ninety (90) days after PlanetCAD provides written notice. 5.3.3 New Pricing Structures. PlanetCAD may introduce new pricing Structures for new customers (i.e., implementing up front license fees in lieu of or as an option to subscription license fees), upon providing thirty (30) days prior written notice. 5.3.4 Price decreases. Price decreases shall take effect thirty (30) days after PlanetCAD provides written notice. 5.4. No Setoff. Dassault Systemes will not setoff or offset against PlanetCAD's invoices amounts that Dassault Systemes claims are due to it. Dassault Systemes will bring any claims or causes of action it may have in a separate action and waives any right it may have to offset, setoff or withhold payment for Products delivered by PlanetCAD. 6. REPORTS, RECORDS AND AUDITS 6.1. Reports. Within ten (10) Business Days after the end of each calendar quarter, Dassault Systemes will deliver to PlanetCAD an itemized report, subject to adjustment within 30 days of receipt of such report, setting forth all information reasonably necessary for computation and/or confirmation of the payments, if any, due or credited to PlanetCAD for such quarterly period. 6.2 Audit and Reporting. Dassault Systemes shall, during and for two years after the termination of this Agreement, regarding the distribution of the Products to each User, keep true and accurate records and books of account containing all particulars which may be necessary for the purpose of auditing payments to PlanetCAD under this Agreement. During such two year period, and upon reasonable notice to Dassault Systemes, PlanetCAD shall have the right to have an audit conducted through a licensed independent accounting firm, of any billings, collections, and taxes on such itemized statement, and to examine the records and books of account of Dassault Systemes in connection therewith. Dassault Systemes will bear the costs of such audit if a discrepancy or error of computation in an amount greater than $10,000 in favor of PlanetCAD is identified. Any audit conducted pursuant to this Section 6.2 shall not be conducted in such a manner as to unreasonably interfere with Dassault Systemes' operations and in no event shall an audit be conducted more frequently than once a year. 7. MAINTENANCE, SUPPORT, AND TRAINING 7.1. In addition to the provisions of Section 4.2.2, Dassault Systemes will be responsible for providing the following support to its Users: installing the Products as needed; training Users; and providing all first tier level support to Users. 7.2. Except as provided otherwise in this Agreement or in a separate written agreement, PlanetCAD shall not be responsible for providing direct support to Users. 6 7 7.3. Subject to receipt of the payments by PlanetCAD for maintenance specified in Section 5.1, PlanetCAD will provide Dassault Systemes with (i) second tier level support in accordance with the provisions set forth in Schedule D, (ii) updates and enhancements for the Products in accordance with the provisions set forth in Schedule D; (iii) access to PlanetCAD's "hot-line" for inquiries from Dassault Systemes relating to the Products during PlanetCAD's ordinary business hours 8. PROPRIETARY RIGHTS 8.1. PlanetCAD's Ownership. The Products are and will remain the sole and exclusive property of PlanetCAD and its suppliers, if any, whether the Products are separate or combined with any other products. PlanetCAD's rights under this Section 8.1 will include, but not be limited to: (i) all copies of the Products, in whole and in part; and (ii) all Intellectual Property Rights in the Products. 8.2. Proprietary Rights Notices. Dassault Systemes will not delete or in any manner alter the Intellectual Property Rights notices of PlanetCAD and its suppliers, if any, appearing on the Products as delivered to Dassault Systemes. As a condition of the license rights granted to Dassault Systemes in this Agreement, Dassault Systemes will reproduce and display such notices on each copy it makes of any Product. 8.3. Third Party Infringement. Dassault Systemes will report promptly to PlanetCAD any infringement of such rights of which Dassault Systemes becomes aware. PlanetCAD reserves the sole and exclusive right at its discretion to assert claims against third parties for infringement or misappropriation of its Intellectual Property Rights in the Products. 8.4. Trademarks. 8.4.1. If any advertisement, or other marketing material used by Dassault Systemes makes any statement as to the technical features or capabilities of the Products beyond the information provided to Dassault Systemes by PlanetCAD. Dassault Systemes will first obtain the written approval of PlanetCAD prior to publishing such advertisement or material. 8.4.2. Subject to the terms and conditions of this Agreement, PlanetCAD grants Dassault Systemes a non-exclusive, non-transferable license for the term of this Agreement to use the Marks in Dassault Systemes' marketing of the Products, provided that such use is in accordance with PlanetCAD's trademark usage guidelines then in effect and as agreed by the Relationship Managers (see Section 15.12). Such use must reference the Marks as being owned by PlanetCAD and will inure to PlanetCAD's benefit. Nothing in this Agreement grants Dassault Systemes ownership or any rights in or to use the Marks, except in accordance with this license. The rights granted to Dassault Systemes in this license will terminate upon any termination or expiration of this Agreement. Upon such termination or expiration, Dassault Systemes will no longer make any use of any Marks. PlanetCAD will have the exclusive right to own, use, hold, apply for registration for, and register the Marks during the term of, and after the expiration or termination of, this Agreement; Dassault Systemes will neither take nor authorize any activity inconsistent with such exclusive right. 7 8 9. WARRANTY 9.1. Power and Authority. PlanetCAD warrants to Dassault Systemes that it has sufficient right and authority to grant to Dassault Systemes all licenses and rights that PlanetCAD grants under this Agreement. 9.2. Limited Warranty. PlanetCAD warrants to Dassault Systemes that during the 6 months following delivery to Dassault Systemes (the "Warranty Period"): (i) the storage media containing the Products will be free from defects in materials and workmanship, and (ii) the Products, under normal use and service, will perform in accordance with the Product documentation in all material respects. In the event the storage media fails to conform to such warranty, as Dassault Systemes' sole and exclusive remedy for such failure PlanetCAD will, at its option and without charge to Dassault Systemes, repair or replace the Products or storage media, provided the nonconforming item is returned to PlanetCAD within the Warranty Period. In the event the Product fails to conform to such warranty, as Dassault Systemes' sole and exclusive remedy for such failure PlanetCAD will, at its option and without charge to Dassault Systemes, use reasonable efforts to correct the Product so that it performs or will perform all of the material functions described in such documentation, provided PlanetCAD received notice of such nonconformity within the Warranty Period. 9.3. Disclaimer of Other Warranties. THE WARRANTIES IN THIS SECTION ARE IN LIEU OF ALL OTHER WARRANTIES, EXPRESS AND IMPLIED, INCLUDING BUT NOT LIMITED TO ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE. 10. INDEMNITIES 10.1. Distribution Indemnity. Subject to the terms of Section 10.2, Dassault Systemes agrees to indemnify PlanetCAD against any third party claims against PlanetCAD for loss, damage, liability, or expense (including but not limited to reasonable attorneys' fees) arising out of any acts or omissions of Dassault Systemes in connection with their activities under this Agreement, including but not limited to (i) negligence or other tortious conduct, or (ii) representations or statements not specifically authorized by PlanetCAD herein or otherwise in writing. 10.2. Infringement Indemnity. 10.2.1. Dassault Systemes agrees that, if the Products or the operation thereof become, or in PlanetCAD's opinion are likely to become, the subject of a claim described in this Section 10.2, Dassault Systemes will permit PlanetCAD, at PlanetCAD's option and expense, either to procure the right for Dassault Systemes to continue marketing and using such Products or to replace or modify them so that they become noninfringing. If neither of the foregoing alternatives is available on terms that PlanetCAD in its sole discretion deems reasonable, PlanetCAD may terminate this Agreement and refund to Dassault Systemes an amount equal to the depreciated License Fees paid by Dassault Systemes for the infringing Product (calculated on a straight line basis over a five year life). 8 9 10.2.2. Notwithstanding the foregoing, PlanetCAD shall not be liable to Dassault Systemes for (i) any claim arising from Dassault Systemes ' failure to use corrections or enhancements made available by PlanetCAD or (ii) for any claim based upon the combination, operation or use of the Products with equipment, data or programming not in accordance with PlanetCAD documentation and/or specifications or arising from any alteration or modification of the Products. However, at the time such a claim is brought against Dassault Systemes, PlanetCAD will conduct a reasonable investigation to determine if Section 10.2.1 applies to the claim. 10.2.3. THE FOREGOING ARE PLANETCAD'S SOLE AND EXCLUSIVE OBLIGATIONS, AND DASSAULT SYSTEMES' SOLE AND EXCLUSIVE REMEDIES, WITH RESPECT TO INFRINGEMENT OR MISAPPROPRIATION OF INTELLECTUAL PROPERTY RIGHTS. 10.3. Contingency. The foregoing indemnities shall be contingent upon (i) the indemnified Party giving prompt written notice to the other Party of any claim, demand or action for which indemnity is sought; (ii) the indemnified Party being given sole control of the defense thereof; and (iii) the indemnified Party fully cooperating in the defense or settlement of any such claim, demand or action, at the expense of the indemnifying Party. 11. LIMITATIONS OF LIABILITY IN NO EVENT WILL EITHER PARTY BE LIABLE TO THE OTHER PARTY FOR ANY SPECIAL, INCIDENTAL, OR CONSEQUENTIAL DAMAGES, WHETHER BASED ON BREACH OF CONTRACT, TORT (INCLUDING NEGLIGENCE), PRODUCT LIABILITY, OR OTHERWISE, AND WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE. THE TOTAL LIABILITY OF EITHER PARTY UNDER THIS AGREEMENT WILL BE LIMITED TO THE AMOUNT THAT PLANETCAD HAS RECEIVED PURSUANT TO SECTION 5.1 IN THE TWENTY FOUR (24) MONTH PERIOD PRECEDING THE CLAIM, EXLUDING CLAIMS UNDER SECTION 10.2. The Parties have agreed that the limitations specified in this Section 11 will survive and apply even if any limited remedy specified in this Agreement is found to have failed of its essential purpose. 12. TERM AND TERMINATION 12.1 Term. The term of this Agreement will begin on the Effective Date and will continue for three (3) years unless it is terminated earlier in accordance with the provisions hereof, provided, however, that in no event will PlanetCAD be required to deliver any copies of the Products to Dassault Systemes until Dassault Systemes has obtained all necessary governmental approvals for this Agreement and for the distribution of the Products in the Territory. This Agreement shall automatically renew for additional twelve (12) month periods. In the event a Party elects not to renew this Agreement, that Party shall provide the other Party notice of such election six (6) months prior to the expiration of the then current term. 9 10 12.2 Event of Termination. 12.2.1 Either party will have the right to terminate this Agreement if: (i) the other party breaches any material term or condition of this Agreement and fails to cure such breach within thirty (30) days after written notice; or (ii) the other party becomes the subject of an involuntary petition in bankruptcy or any involuntary proceeding relating to insolvency, receivership, liquidation, or composition for the benefit of creditors, if such involuntary petition or proceeding is not dismissed within sixty (60) days of filing, or becomes the subject of a voluntary petition in bankruptcy or any voluntary proceeding relating to insolvency, receivership, liquidation, or composition for the benefit of creditors. 12.2.2 PlanetCAD may terminate this Agreement, effective immediately, if: (i) Dassault Systemes should attempt to sell, assign, delegate or transfer any of its rights and obligations under this Agreement without having obtained PlanetCAD's prior written consent thereto; or (ii) Dassault Systemes knowingly makes any false or untrue statements or representations to PlanetCAD herein or in the performance of its obligations hereunder. 12.3 Effect of Termination. 12.3.1 Upon termination or expiration of this Agreement: (i) all license rights granted to Dassault Systemes hereunder will automatically terminate, except for allowing maintenance and support of Users up to 18 months after termination; and Dassault Systemes will immediately cease soliciting orders for Products and will cease all use of the Marks except as is necessary to effect maintenance and support of the Products(s) for the 18 months following termination; (ii) within 18 months, return to PlanetCAD or (at PlanetCAD's request destroy) all copies of the Products and other Confidential Information (which shall only be used in connection with providing maintenance and support for the Products) in its possession or control, and an officer of Dassault Systemes will certify to PlanetCAD in writing that Dassault Systemes has done so; (iii) all indebtedness of Dassault Systemes to PlanetCAD shall become immediately due and payable without further notice or demand, which is hereby expressly waived; and (iv) all unshipped orders pending at the time of termination will be honored except in the case of Dassault Systemes' material breach. 12.3.2 The rights and obligations of the Parties contained in Sections 8, 10, 11, 12.3 and 15 will survive the termination or expiration of this Agreement. 12.3.3 Any rights transferred to a User by Dassault Systemes in accordance with this Agreement will survive termination of this Agreement. 12.4 No Damages for Termination. NEITHER PARTY WILL BE LIABLE TO THE OTHER FOR DAMAGES OF ANY KIND, INCLUDING INCIDENTAL OR CONSEQUENTIAL DAMAGES, ON ACCOUNT OF THE TERMINATION OR EXPIRATION OF THIS AGREEMENT IN ACCORDANCE WITH ITS TERMS. Dassault Systemes WAIVES ANY RIGHT IT MAY HAVE TO RECEIVE ANY COMPENSATION OR REPARATIONS ON TERMINATION OR EXPIRATION OF THIS AGREEMENT 10 11 UNDER THE LAW OF THE TERRITORY OR OTHERWISE, OTHER THAN AS EXPRESSLY PROVIDED IN THIS AGREEMENT. Neither Party will be liable to the other on account of termination or expiration of this Agreement for reimbursement or damages for the loss of goodwill, prospective profits or anticipated income, or on account of any expenditures, investments, leases or commitments made by either Party or for any other reason whatsoever based upon or growing out of such termination or expiration. 12.5 Nonexclusive Remedy. The exercise by either Party of any remedy under this Agreement will be without prejudice to its other remedies under this Agreement or otherwise. 13. COMPLIANCE WITH LAW Each party agrees to comply with all applicable laws, rules, and regulations in connection with its activities under this Agreement. Without limiting the foregoing, Dassault Systemes acknowledges that all Products, including documentation and other technical data, are subject to export controls imposed by the U.S. Export Administration Act of 1979, as amended (the "ACT"), and the regulations promulgated thereunder. PlanetCAD is responsible for determining the status of the Products under the above regulations, and Dassault Systemes will not export or re-export (directly or indirectly) any Products or documentation or other technical data therefor without complying with the Act and the regulations thereunder. 14. PRICING FREEDOM Dassault Systemes is, and will remain, entirely free to determine its User prices and fees in its own discretion. 15. GENERAL 15.1. Confidentiality. All communications and information disclosed by one Party to the other Party under this Agreement shall be subject to the terms and conditions of the CNDA. Notwithstanding anything to the contrary in the CNDA, all information relating to the Products shall be deemed confidential information under the CNDA even though they are not marked confidential. 15.2. Assignment. (a) This Agreement may be assigned or otherwise transferred, by operation of law or otherwise without the express written consent of PlanetCAD and Dassault Systemes, but in such event the assigning Party shall give notice to the non-assigning Party and the non-assigning Party shall have the right to terminate its maintenance and support obligations under this Agreement within the 30-day period following receipt of such notice. (b) Either Party may assign or otherwise transfer all or part of this Agreement to any of its Affiliates and for as long as it remains an Affiliate; provided that no such assignment shall relieve a Party of any of its obligations under this Agreement. In the event there is a change 11 12 of Control of an Affiliate which terminates its status as an Affiliate of the Party to this Agreement, and this Agreement has been assigned to such an Affiliate, this Agreement shall be assigned back to the party within 6 months of the effective date of the change of Control. (c) This Agreement shall be binding upon and inure solely to the benefit of the Parties hereto and their permitted assigns, subcontractor or transferee, and nothing herein, express or implied, is intended to or shall confer upon any other person, including, without limitation, any union or any employee or former employee of either Party, any legal or equitable right, benefit or remedy of any nature whatsoever, including, without limitation, any rights of employment for any specified period, under or by reason of this Agreement. 15.3. Press Release. The Parties agree to issue a joint press release announcing the execution of this Agreement within a reasonable delay of such execution. Thereafter, Dassault Systemes agrees that PlanetCAD may promote that PlanetCAD is a provider of the technology set forth on Schedule B to Dassault Systemes and that Dassault Systemes is a reseller of products of PlanetCAD. 15.4. Applicable Law, Venue. This Agreement shall be governed by, and construed in accordance with, the Laws of the State of New York, applicable to contracts executed in and to be performed entirely within that state (without regard to the conflicts of Law provisions thereof). This Agreement shall not be governed by the U.N. Convention on Contracts for the International Sale of Goods. The parties hereto hereby (a) submit to the exclusive jurisdiction of any court of competent jurisdiction sitting in the State of Delaware, the City of Wilmington for the purpose of any Action arising out of or relating to this Agreement brought by any party hereto, and (b) agree, to the fullest extent permitted by applicable law, to waive, and not to assert by way of motion, defense, or otherwise, in any such Action, any claim that is not subject personally to the jurisdiction of the above-named courts, that its property is exempt or immune from attachment or execution, that the Action is brought in an inconvenient forum, that the venue of the Action is improper, or that this Agreement may not be enforced in or by any of the above-named courts. 15.5. Severability. If any provision of this Agreement is found invalid or unenforceable, that provision will be enforced to the maximum extent permissible, and the other provisions of this Agreement will remain in force. 15.6. Force Majeure. Except for payments due hereunder, neither Party will be responsible for any failure to perform due to causes beyond its reasonable control (each a "Force Majeure"), including, but not limited to, acts of God, war, riot, embargoes, acts of civil or military authorities, denial of or delays in processing of export license applications, fire, floods, earthquakes, accidents, strikes, or fuel crises, provided that such party gives prompt written notice thereof to the other party. The time for performance will be extended for a period equal to the duration of the Force Majeure, but in no event longer than sixty (60) days. 15.7. Notices. All notices under this Agreement will be deemed given when delivered personally, sent by confirmed facsimile transmission, or sent by certified or registered U.S. mail or nationally-recognized express courier, return receipt requested, to the address shown below or as may otherwise be specified by either Party to the other in accordance with this section. 12 13 15.8. Independent Contractors. The Parties to this Agreement are independent contractors. There is no relationship of partnership, joint venture, employment, franchise, or agency between the Parties. Neither Party will have the power to bind the other or incur obligations on the other's behalf without the other's prior written consent. 15.9. Waiver. No failure of either Party to exercise or enforce any of its rights under this Agreement will act as a waiver of such rights. 15.10. Entire Agreement. This Agreement and its exhibits are the complete and exclusive agreement between the parties with respect to the subject matter hereof, superseding and replacing any and all prior agreements, communications, and understandings (both written and oral) regarding such subject matter. This Agreement may only be modified, or any rights under it waived, by a written document executed by both Parties. 15.11 Third Party License. Each party is relieved of its obligations, if any, to (i) deliver the Source Code of a product licensed hereunder or (ii) authorize the creation of Derivative Works or corrections from Source Code hereunder to the extent that fulfilling such obligations would cause such party to breach any third party license agreement entered into by such party after the Effective Date. 15.12 Relationship Managers. Each party will appoint a Relationship Manager who will be responsible for establishing mutually agreeable pricing policies, marketing plans and trademarks usage, support request procedures and sales forecasting and will coordinate customers feedback for product managers. The Relationship Managers will have regular meeting at least once per quarter either in person or by phone. 15.13 Waiver of Jury Trial. EACH OF THE PARTIES HERETO HEREBY WAIVES TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY WITH RESPECT TO ANY ACTIONS OR PROCEEDINGS DIRECTLY OR INDIRECTLY ARISING OUT OF, UNDER OR IN CONNECTION WITH THIS AGREEMENT, OR THE TRANSACTIONS CONTEMPLATED HEREUNDER. 13 14 The parties have caused this Agreement to be executed by their duly-authorized representatives as of the Effective Date. DASSAULT SYSTEMES PLANETCAD INC. By: /s/ Thibault de Tersant By: /s/ R. Bruce Morgan Name: Thibault de Tersant Name: R. Bruce Morgan Title: Executive Vice President Title: Chief Executive Officer
14 EX-10.8 9 d82148ex10-8.txt INTRAVISION LICENSE AGREEMENT 1 EXHIBIT 10.8 INTRAVISION LICENSE AGREEMENT This IntraVision License Agreement (this "Agreement"), is made by and between Spatial Component LLC ("Spatial"), a company organized under the laws of the state of Delaware, and PlanetCAD Inc. (formerly known as Spatial Technology Inc.), a corporation organized under the laws of the State of Delaware ("PlanetCAD") (each a "Party," together, the "Parties"). WITNESSETH: WHEREAS, PlanetCAD, Spatial, and DASSAULT SYSTEMES CORP. entered into a certain Purchase Agreement, dated July 4, 2000 ("Purchase Agreement"), pursuant to which Spatial, a fully owned subsidiary of DASSAULT SYSTEMES CORP. acquired the Component Business (as defined in the Purchase Agreement) from PlanetCAD including certain software; and WHEREAS, in connection with the Purchase Agreement and as a condition to closing the transaction contemplated thereunder, and for good and valuable consideration, Spatial desires to license to PlanetCAD certain software, some in source code, and to appoint PlanetCAD as the exclusive end user reseller for such software and end user products associated with such software, all in accordance with the terms and conditions set forth herein. NOW, THEREFORE, in consideration of the mutual agreements and covenants set forth in the Purchase Agreement and in this Agreement, and intending to be legally bound hereby, the Parties hereby agree as follows: 1. DEFINITIONS As used in this Agreement, the terms defined in this section shall have the following respective meanings. Capitalized terms not otherwise defined herein shall have the same meanings as set forth in the Purchase Agreement. AFFILIATE(S) shall mean, with respect to any specified Person, any other Person that, directly or indirectly, Controls, is Controlled by, or is under common Control with such Person. As of the date of signature of this Agreement, the list of Affiliates for each party is specified in Schedule A. ASP(S) shall mean for this Agreement, application services provider, i.e. service(s) offered on line, through Web sites or as enterprise versions offered on corporate Intranets, allowing end users to use an application software functionality, provided by a supplier on its Web site or on a corporate server in the case of enterprise versions, on a one task at a time or subscription basis, and charged to the end user as such, with no access to the underlying software application that allows the technical work of the task to be performed. The foregoing does not preclude 2 PlanetCAD from providing the IntraVision Viewer as an Internet hosted ASP or on a corporate server for enterprise versions. CNDA shall mean the Confidential and Non-Disclosure Agreement ref 01344A2000GRUP, among, inter alia, PlanetCAD and Spatial executed contemporaneously herewith. CONTROL, with respect to the relationship between or among two or more Persons, shall mean the possession, directly or indirectly, or as trustee or executor, of the power to direct or cause the direction of the affairs or management of a Person, whether through the ownership of voting securities, as trustee or executor, by contract or otherwise, including, without limitation, the ownership, directly or indirectly, of securities having the power to elect a majority of the board of directors or similar body governing the affairs of such Person; provided that PlanetCAD shall not be deemed to be controlled by any other Person or under common control with any Person that is not one of its subsidiaries and Spatial shall not be deemed to be controlled by any other Person or under common control with any Person that is not controlled or under common control of Dassault Systemes. DERIVATIVE WORK(S), means, related to Software, a work which is based upon in whole or in part of such Software, such as a revision, enhancement, modification, translation, abridgment, condensation, expansion, or any other form in which such Software may be recast, transformed, or adapted, or which, if prepared without authorization of the owner of the copyright or other intellectual property right in such Software, would constitute a copyright infringement or other violation of the intellectual property rights. A Derivative Work shall also include, without limitation, compilations or link-edits, improvements, bug fixes, corrections, look and feel changes, upgrades, updates and new version that incorporate such Software in whole or in part. EFFECTIVE DATE means November 14, 2000. INTRAVISION shall mean the computer software program known as IntraVISION Enterprise(R) or IntraVision Enterprise Viewer, in the version and release that is commercially available at the Effective Date. IVSDK shall mean the IntraVision Software Development Kit, in the version and release that is commercially available at the Effective Date, as well as further corrections, enhancements and modifications. INTELLECTUAL PROPERTY shall mean (a) inventions, whether or not patentable, whether or not reduced to practice, and whether or not yet made the subject of a pending patent application or applications, (b) ideas and conceptions of potentially patentable subject matter, including without limitation, any patent disclosures whether or not reduced to practice and whether or not yet made the subject of a pending patent application or applications, (c) Patents, (d) Trademarks, (e) copyrights (registered or otherwise) and registrations and applications for registration thereof, all moral rights of authors therein, and all rights therein provided by international treaties, conventions or common law, (f) Software, and (g) trade secrets. 3 PERSON(S) shall mean any individual or legal entity, including without limitation, partnership, corporation, association, trust or unincorporated organization. SOFTWARE shall mean any computer software program, including programming-code, on-line documentation, if any, user interface related thereto or associated therewith, to the extent that such user interface does exist, and related user and installation documentation other than on-line documentation associated with this computer software program. SOURCE CODE shall mean computer-programming code and related system documentation, comments and procedural code, that is not directly executable by a computer but which may be printed out or displayed in a form readable and understandable by a qualified programmer. 2. PURPOSE Subject to the terms and conditions herein, Spatial agrees to license the source code of IntraVision and to grant PlanetCAD the exclusive right to sell IntraVision. 3. OWNERSHIP RIGHTS AND LICENSE GRANTS 3.1 Ownership of IntraVision. Except for the rights granted PlanetCAD in this Section 3, all right, title and interest in and to IntraVision shall remain with Spatial, including the right to create Derivative Works of IntraVision. 3.2 Source Code Development and Derivative Works License to IntraVision. As of the Effective Date, and subject to Sections 5.1 and 10.20, Spatial grants to PlanetCAD a perpetual, worldwide, irrevocable, exclusive license to use, maintain and support, adapt, prepare, compile, install, make, execute, access, and reproduce, the IntraVision Source Code, and make Derivative Works thereof, to develop and to offer its customers end user products. The license in this Section 3.2 grants PlanetCAD from the Effective Date the exclusive right to (a) market and distribute IntraVision products; (b) create Derivative Works of, and modifications and enhancements to IntraVision in which all right, title and interest will be in PlanetCAD; and (c) use the IntraVision name and all trademarks and trade names associated therewith for such marketing and distribution. The parties agree that notwithstanding the exclusivity granted to PlanetCAD for this license, all licenses previously granted to end users or distributors are valid and in full force and effect and Spatial shall be entitled to keep using its rights to IntraVision for fulfilling all such existing obligations through their contractual term. Spatial will keep all right to use IntraVision for test and demonstration purposes. PlanetCAD shall not use this license to create a software that is similar to the IVSDK or that competes with the IVSDK. 3.3 Ownership of Derivative Works of IntraVision. The Parties agree that Derivative Works based on IntraVision will be created by PlanetCAD under this Agreement 4 and that all right, title and interest in and to all or part of the Derivative Works made by PlanetCAD pursuant to the license granted in Section 3.2 shall be owned exclusively by PlanetCAD. Spatial understands and agrees that such Derivative Works made by PlanetCAD, as well as any portion thereof, shall be the sole property of PlanetCAD from date of creation and, to the extent permitted by law. To the extent an assignment is necessary and that this assignment cannot be made at present, Spatial agrees to assign to PlanetCAD all of its right, title and interest in and to these Derivative Works, and any part thereof, and in and to all copyrights, patents and other proprietary rights Spatial may have in such Derivative Works. 3.4 IntraVision Customers. Subject to any applicable law and, when required by law or contract, subject to customers' approval if needed, Spatial shall assign its IntraVision customers, including any maintenance contracts for ongoing updates and support, to PlanetCAD. In order to facilitate such assignment, Spatial shall introduce its customers to PlanetCAD and assist PlanetCAD in transitioning such customers. The list of such customers is attached to this Agreement as Schedule B; PlanetCAD agrees to fulfill the obligations due these customers and take all actions reasonably necessary to satisfy them. PlanetCAD agrees that it has full knowledge of these customers and related obligations since they were PlanetCAD customers until the Effective Date. PlanetCAD agrees to discharge Spatial from any and all liabilities related to such transferred customers. 4. MAINTENANCE, SUPPORT AND UPGRADES Spatial shall not provide maintenance, support, or upgrades for IntraVision. 5. ROYALTY FEES, PAYMENT 5.1 Royalty Fees. [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] 5.2 Reporting and Payment of Royalty. Royalty payments will be made on a quarterly basis. PlanetCAD shall provide a royalty report to Spatial within 10 business days after the end of each quarter, subject to adjustment within 30 days of receipt of such report, and the report shall be accompanied by payment for royalties due, if any. 5.3 Audit Rights. PlanetCAD shall, for two years, keep true and accurate records and books of account for each transaction subject to the royalty obligation set forth in this Section 5 containing all particulars which may be necessary for the purpose of auditing payments to Spatial under this Agreement. During such two year 5 period, and upon reasonable notice to PlanetCAD, Spatial shall have the right to have an audit conducted through a licensed independent accounting firm, of any billings, collections, and taxes on such itemized statement, and to examine the records and books of account of PlanetCAD in connection therewith. PlanetCAD will bear the costs of such audit if a discrepancy or error of computation in an amount greater than USD 10,000 in favor of Dassault is identified. Any audit conducted pursuant to this Section 5.3 shall not be conducted in such a manner as to unreasonably interfere with PlanetCAD's operations and in no event shall an audit be conducted more frequently than once each year. 6. PAYMENTS AND TAXATION 6.1 Payments. All payments due under this Agreement shall be made in U.S. dollars by bank check or electronic transfer to an account designated by Spatial. 6.2 Definition of Net Revenue. Net Revenue shall consist of all revenues recognized by PlanetCAD for the sale and licensing of IntraVision and Derivative Works thereof, including enterprise versions and ASP services offered directly or indirectly by PlanetCAD that incorporate, or are facilitated by or are based on IntraVision and/or Derivative Works thereof. Royalty payments to Spatial shall be based on a prorata share of the total price (if IntraVision is offered as a service or ASP or as a bundled product). Any discount on bundled products, services, ASPs or other products including IntraVision or Derivative Works as well as in IntraVision or Derivative Works sold as standalone products, shall be made pro rata to the other products in the same offer/bundle of software or services. Net Revenue shall be net of any applicable discounts and net of any commissions or fees paid to third party resellers, and less any other fees and charges invoiced by PlanetCAD to the customers, without deduction by PlanetCAD of any other costs or expenses related to achievement of the revenue, provided, however, that Net Revenue shall be reduced by the amount, if any, of (i) value-added taxes, (ii) sales taxes or (iii) withholding taxes imposed by any jurisdiction on payments made by a payor in such jurisdiction to a payee outside of such jurisdiction. 6.3 Pricing. PlanetCAD will set prices for IntraVision and ASP services based on IntraVision, based on a competitive assessment of similar products. PlanetCAD will provide information to Spatial within 15 days of any change to list prices. 7. WARRANTIES AND DISCLAIMER OF WARRANTIES 7.1 Mutual Representations. Each Party represents and warrants to the other Party that such Party: (i) Has suitable agreements with its respective employees to meet the confidentiality obligations under this Agreement; and 6 (ii) It is under no obligation or restriction, and will not assume any obligation or restriction, that would prevent it from performing its obligations under this Agreement. 7.2 Spatial Representations. Spatial makes no representation and warranties on IntraVision since the product was transferred to it by PlanetCAD under the Purchase Agreement. IntraVision is licensed on an "AS IS" basis. Spatial represents that it has no intention to (i) make or develop products based on or incorporating IntraVision or (ii) upgrade, modify, enhance or otherwise maintain IntraVision. 7.3 DISCLAIMER OF WARRANTIES. THERE SHALL BE NO WARRANTIES, EXPRESS OR IMPLIED, EXCEPT AS STATED IN THIS SECTION 7, INCLUDING, BUT NOT LIMITED TO, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE, USE, OR REQUIREMENT. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS AGREEMENT, ANY INFORMATION OR MATERIALS FURNISHED BY EITHER PARTY TO THE OTHER ARE PROVIDED ON AN "AS IS" BASIS. 8. LIMITATION OF LIABILITY AND INDEMNIFICATION 8.1 LIMITATION OF LIABILITY. 8.1.1 WITH THE EXCEPTION OF CLAIMS FOR PERSONAL INJURY OR DEATH, AND THE CONFIDENTIALITY PROVISIONS SET FORTH IN SECTION 10.1: IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY SPECIAL, EXEMPLARY, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ANY LOST PROFITS, LOST SAVINGS, LOST STAFF TIME OR OTHER ECONOMIC DAMAGES ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. 8.1.2 IN NO EVENT SHALL EITHER PARTY BE LIABLE UNDER THIS AGREEMENT FOR AN AMOUNT GREATER THAN THE AMOUNT THAT SPATIAL HAS RECEIVED PURSUANT TO SECTION 5.1 IN THE TWELVE MONTH PERIOD PRECEDING THE CLAIM. 9. TERM This Agreement shall come into force as of the Effective Date, and shall remain valid until the expiration of the last copyright or other protection available in any Software herein licensed. 7 10. MISCELLANEOUS 10.1 Confidentiality. All communications and information disclosed by one Party to the other Party under this Agreement shall be subject to the terms and conditions of the CNDA. Notwithstanding anything to the contrary in the CNDA, all information relating to the Source Code of IntraVision thereof shall be deemed to be Confidential Information under the CNDA even though they are not marked confidential. 10.2 Freedom of Action. Except as otherwise provided, nothing contained in this Agreement shall be construed to limit or impair any right of either Party to enter into similar agreements with other parties, or to develop, acquire, license or market, directly or indirectly, other products or services, competitive with those offered by the other Party. 10.3 Additional Instruments. Notwithstanding termination of this Agreement, the Parties covenant and agree to execute and deliver any additional instruments or documents necessary to carry out the general intent of this Agreement, including without limitation patent assignments or any other assignments necessary to evidence the ownership of Intellectual Property contemplated hereby or any such additional instruments or documents, including such instruments as may be required by the laws of any jurisdiction, now or in effect or hereinafter enacted, that may affect a Party's rights, title or interest, as applicable, in and to any of the software governed hereby. 10.5 Irreparable Injury. Each Party acknowledges and agrees that each covenant in this Agreement pertaining to confidential information and ownership of intellectual property is reasonable and necessary to protect and preserve the rights of the other Party in its confidential information and intellectual property, and that any breach by such Party of the terms of this Agreement may result in irreparable injury to the other Party. Each Party, therefore, subject to a claim of laches, estoppel, acquiescence or other delay in seeking relief, consents and agrees that the other Party shall be entitled to seek and obtain a temporary restraining order and a permanent injunction to prevent a breach or contemplated breach of this Agreement and waives any requirement that the other Party post a bond in connection with seeking such injunctive relief. 10.6 Relationship of the Parties. PlanetCAD and Spatial are independent contractors, and nothing in this Agreement will create any partnership, joint venture, agency, franchise, sales representative, or employment relationship between the Parties. Neither Party has the authority to act as agent for the other Party or to conduct business in the name of such other Party or make statements, warranties or representations that exceed or are inconsistent with the warranties provided hereunder. 10.7 Notices. All notices required or permitted shall be given in writing, in the English language, and shall be deemed effectively delivered upon personal delivery or 8 three days after deposit with a carrier by registered mail or other equivalent service, postage prepaid, return receipt requested, addressed as follows, or to such other address as either Party may designate to the other: In the case of PlanetCAD: PlanetCAD Inc. 2520 55th Street, Suite 200 Boulder, Colorado 80301 Attn: Office of the President In the case of Spatial: Spatial 2425 55th Street, Suite 100 Boulder, Colorado 80301 Attn: Mr. Mike Payne, CEO 10.8 Headings. The descriptive headings contained in this Agreement are for convenience of reference only and shall not affect in any way the meaning or interpretation of this Agreement. 10.9 Severability. If any term or other provision of this Agreement is deemed invalid, illegal or incapable of being enforced by any law or public policy, all other terms and provisions of this Agreement shall nevertheless remain in full force and effect so long as the economic or legal substance of the transactions contemplated hereby is not affected in any manner materially adverse to any Party. 10.10 Entire Agreement. This Agreement, together with the Schedules attached hereto, constitutes the entire agreement of the Parties with respect to the subject matter hereof and supersedes all prior agreements and undertakings, both written and oral, between Spatial and PlanetCAD with respect to the subject matter hereof. 10.11 Amendment. This Agreement may not be amended or modified except by an instrument in writing signed by, or on behalf of, duly authorized representatives of Spatial and PlanetCAD. 10.12 Applicable Law, Venue. This Agreement shall be governed by, and construed in accordance with, the Laws of the State of New York, applicable to contracts executed in and to be performed entirely within that state (without regard to the conflicts of Law provisions thereof). This Agreement shall not be governed by the U.N. Convention on Contracts for the International Sale of Goods. The parties hereto hereby (a) submit to the exclusive jurisdiction of any court of competent jurisdiction sitting in the State of Delaware, The City of Wilmington for the purpose of any Action arising out of or relating to this Agreement brought by any party hereto, and (b) agree, to the fullest extent permitted by applicable law, to waive, and not to assert by way of motion, defense, or otherwise, in any such Action, any claim that is not subject personally to the jurisdiction of the above-named courts, that its property is exempt or immune from attachment or 9 execution, that the Action is brought in an inconvenient forum, that the venue of the Action is improper, or that this Agreement may not be enforced in or by any of the above-named courts. 10.13 Waiver of Jury Trial. EACH OF THE PARTIES HERETO HEREBY WAIVES TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY WITH RESPECT TO ANY ACTIONS OR PROCEEDINGS DIRECTLY OR INDIRECTLY ARISING OUT OF, UNDER OR IN CONNECTION WITH THIS AGREEMENT, OR THE TRANSACTIONS CONTEMPLATED HEREUNDER. 10.14 Counterparts. This Agreement may be executed in one or more counterparts, each of which when executed shall be deemed to be an original but all of which taken together shall constitute one and the same agreement. 10.15 No Waiver. The failure of either Party to enforce any provision of this Agreement shall not constitute a waiver of the right to subsequently enforce such provision, or any other provision of this Agreement. 10.16 Force Majeure. Neither Party shall be held liable for any failure to perform any of its obligations under this Agreement for as long as, and to the extent that such failure is due to an event of force majeure. An event of force majeure shall include general strikes, lockouts, acts of God, acts of war, mobilization of troops, fire, extreme weather, flood, or other natural calamity, embargo, acts of governmental agency, government or any other laws or regulations. 10.17 Expenses. Except as expressly provided for in this Agreement, each Party shall bear its own expenses incurred in connection with this Agreement, including without limitation travel and living expenses incurred by that Party's employees. 10.18 Assignment; Subcontracting; Third Party Beneficiaries. (a) This Agreement may be assigned or otherwise transferred, by operation of law or otherwise without the express written consent of PlanetCAD and Spatial, but in such event the assigning Party shall give notice to the non-assigning Party and the non-assigning Party shall have the right to terminate its maintenance and support obligations under this Agreement within the 30 day period following receipt of such notice. (b) Either Party may assign or otherwise transfer all or part of this Agreement to any of its Affiliates and for as long as it remains an Affiliate; provided that no such assignment shall relieve a Party of any of its obligations under this Agreement. In the event there is a change of Control of an Affiliate which terminates its status as an Affiliate of the party to this Agreement, and this 10 Agreement has been assigned to such an Affiliate, this Agreement shall be assigned back to the party within 6 months of the effective date of the change of Control. (c) This Agreement shall be binding upon and inure solely to the benefit of the Parties hereto and their permitted assigns, subcontractor or transferee, and nothing herein, express or implied, is intended to or shall confer upon any other person, including, without limitation, any union or any employee or former employee of either Party, any legal or equitable right, benefit or remedy of any nature whatsoever, including, without limitation, any rights of employment for any specified period, under or by reason of this Agreement. 10.19 Trademarks. Spatial grants to PlanetCAD a non-exclusive, royalty-free license to use the mark IntraVision(R) in connection with advertising, promotion, sale and support of any products or services developed or created under Section 3 of this Agreement. Subject to the foregoing, neither Party shall have the right under this Agreement to use the other Party's trademarks or trade names in connection with any product, service, promotion, public announcement, advertisement or other publication, without securing the prior written consent of such other Party. 10.20 Third Party Licenses. Each party is relieved of its obligations, if any, to (i) deliver the Source Code of a product licensed hereunder or (ii) authorize the creation of Derivative Works from Source Code hereunder to the extent that fulfilling such obligations would cause such party to breach any third party license agreement entered into by such party after the Effective Date. IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed in duplicate originals by their duly authorized officers or representatives. In Paris, on November 14, 2000 For PlanetCAD Inc. For Spatial Its: Chief Executive Officer Its: Secretary Name: R. Bruce Morgan Name: Thibault de Tersant Signature: /s/ R. Bruce Morgan Signature: /s/ Thibault de Tersant EX-10.9 10 d82148ex10-9.txt PROVIDER AGREEMENT 1 EXHIBIT 10.9 CATIA V5 GALAXY PROGRAM SOLUTION PROVIDER AGREEMENT This Agreement is made by and between: DASSAULT SYSTEMES, a corporation organized and existing under the laws of France, having its registered office at 9 quai Marcel Dassault, 92150 Suresnes, France, hereinafter "DS", on the one hand, and, PLANETCAD INC., a corporation organized and existing under the laws of Delaware, USA, having its registered office at 2520 55th Street, Suite 200, Boulder, Colorado 80 301, USA, hereinafter "Solution Provider", on the other hand, WHEREAS DS is a software editor that develops or has developed, and distributes, directly or indirectly, an advanced software development environment, designated CAA Version 5 Architecture or CAA V5 Architecture, which includes innovative development architecture and sophisticated development tools. As of today, this environment allows to develop software application programs in the fields of CAD/CAM/CAE (Computer Aided Design / Computer Aided Manufacture / Computer Aided Engineering), PDM (Product Data Management), Digital Manufacturing, product and process Data Modeling or Network Computing. DS and its affiliates have developed and will continue to develop software application programs based on the CAA Version 5 Architecture. PlanetCAD is a software specialist, editor of software in the field of engineering design quality. PlanetCAD wishes to develop and distribute application software based on the CAA Version 5 Architecture, fully integrated with and complementary to CATIA V5 current and future Products. DS wishes to encourage software specialists to develop and distribute software application programs based on the CAA Version 5 Architecture, integrated with and complementary to CATIA V5 current and future Products. To that effect, DS has set forth the "CATIA V5 Galaxy Program" available to those software specialists that meet specific conditions and criteria. The participants to this Program are then entitled to: - Develop, maintain and distribute software applications under their own brand, which, as a prerequisite, need certain CATIA V5 Products to operate. SOLUTION PROVIDER AGREEMENT Page 1 2 - Benefit from various levels of technical and marketing support at preferred conditions. PlanetCAD wishes to enter into the CATIA V5 Galaxy Program as Partner and qualify as "solution provider" in the Program. NOW THEREFORE, in consideration of the foregoing premises and the mutual covenants herein contained, the parties hereto agree as follows. 1. DEFINITIONS AGREEMENT shall designate this agreement including all PID(s), RFL(s) and other Purchase Order(s) duly accepted by DS, as well as other exhibit(s), amendment(s) and supplement(s) thereto. APPLICATION PROGRAM OR AP shall designate the stand-alone software application program to be developed by Solution Provider on the basis of the CAA V5 Architecture and that pre-requests certain CATIA V5 Product(s). APPLICATION PROGRAMMING INTERFACE(S) OR API(S) shall designate those CAA V5 Products consisting in Source Code that are necessary to interface or make operable any AP(s) with certain CATIA V5 Product(s). CAA V5 PRODUCT(S) shall designate all software programs and/or API(s) and/or software development tool(s) and/or associated Documentation(s) thereto, owned by or licensed to DS or its affiliates, developed and distributed by and/or for DS or its affiliates, which allow the development of application programs and constitute together the CAA Version 5 Architecture. CATIA V5 GALAXY PROGRAM OR GALAXY PROGRAM shall designate the program of cooperation and assistance established by DS to support the development and marketing by selected software specialists of application programs based on the CAA V5 Architecture and complementary to CATIA V5 Products. CATIA V5 PRODUCT(S) shall designate application software products owned by or licensed to DS, developed and distributed by and/or for DS under the CATIA registered trademark or any other DS Group owned trademark. SOLUTION PROVIDER AGREEMENT Page 2 3 COMPETITOR shall designate any corporation, company or other legal entity involved directly or indirectly in the business of manufacturing, developing, marketing and/or distributing CAD/CAM/CAE (Computer Aided Design / Computer Aided Manufacture / Computer Aided Engineering), PDM (Product Data Management), Digital Manufacturing, Data Modeling or Network Computing products and/or services of the kind manufactured, developed, marketed and/or distributed by the DS Group, in the countries where the DS Group does business during the Term of this Agreement, directly or indirectly, even if these activities are only part of the activities of said corporation, company or legal entity. CONFIDENTIAL NON-DISCLOSURE AGREEMENT OR "CNDA" shall designate the agreement defined in Section 12 below. DESIGNATED MACHINE shall designate the central processing unit or workstation identified in an RFL by (i) machine identification number, (ii) type and serial number; (iii) installation address; and (iv) if applicable, named Users. DOCUMENTATION shall designate user documentation in any form or media as provided by DS to Solution Provider for use in connection with the Licensed Product(s) to which it is associated. DS GROUP shall designate DS and its affiliates, i.e. any legal entity of which more than fifty per cent (50%) of its ownership interest is owned or controlled, directly or indirectly by DS. DS GROUP PRODUCT(S) shall designate any computer software product authored or developed by or for or licensed to the DS Group, whether current or future and whatever the trademarks they are sold under, including without limitation the CAA V5 and CATIA V5 Product(s), as well as the ENOVIA and DELMIA product lines. EFFECTIVE DATE shall designate November 14, 2000, which is the date when this Agreement comes into force. effective date shall designate the date of coming into force of any contractual document (PID, amendment to PID, RFL, Purchase Order etc.) and is the date of the last signature by both parties. GENERAL AVAILABILITY OR "GA" shall designate the placing on the market of any given computer program or new release thereto, by way of a public announcement as well as insertion in a public catalogue of products. SOLUTION PROVIDER AGREEMENT Page 3 4 INTEGRATION shall designate a self contained, stand alone, computer software program as opposed to an interface, pre-requesting only certain CATIA V5 Products but no other computer software programs of Solution Provider. INTERFACE shall designate a computer software program making the bridge among two existing software programs as opposed to an integration. LICENSED PRODUCT(S) shall designate (i) the run time of those CAA V5 Product(s) other than API(s), and/or (ii) the run time of those CATIA V5 Product(s), and/or (iii) the build time of those API(s), as identified in RFL(s) duly accepted by DS. NON-GA PROGRAMS shall designate certain CAA V5 and/or CATIA V5 Products that have not been made generally available to the market by DS by way of a public announcement and insertion in DS's public catalogue of computer programs. OBJECT CODE shall designate computer-programming code, substantially or entirely in binary form, which is directly executable by a computer after suitable processing, but without the intervening steps of assembly, compilation or link-edit. PARTNERS' PRICE LIST shall designate the document attached hereto as Exhibit D which specifies DS financial conditions for granting licenses and/or services to partners under the CATIA V5 Galaxy Program. DS may amend its Partners' Price List at anytime during this Agreement. PRELIMINARY PROJECT DESCRIPTION OR "PPD" shall designate the preliminary description of any software program which Solution Provider contemplates developing under this Agreement, as defined in Section 9.1.1. PROJECT INFORMATION DESCRIPTION OR "PID" shall designate the document to be agreed upon and signed by the parties before the development of any AP, as defined in Section 4.1. There will be one PID per Application Program. PURCHASE ORDER shall designate the document to be duly completed by Solution Provider to order products and/or services under this Agreement. QUARTERLY REPORT shall designate the written report defined in Section 6.3.3. REQUEST FOR LICENSE OR "RFL" shall designate the document defined in Section 4.1, to be duly completed by Solution Provider to order licenses on CAA V5 and/or CATIA V5 Products under this Agreement. SOLUTION PROVIDER AGREEMENT Page 4 5 SITE shall designate the site designated by Solution Provider in any RFL, as may be changed by written notification to DS, through which deliveries of Licensed Products and/or support services will be provided by DS to Solution Provider. SOURCE CODE shall designate computer programming code and related system documentation, comments and procedural code, which is not directly executable by a computer and may be printed out or displayed in a form readable and understandable by a qualified programmer. TERM shall designate the term of this Agreement as defined in Section 21 hereafter. TERMINATION DATE shall designate each of the dates of termination of this Agreement and/or any given PID as defined in Section 21 as well as each relevant sub-Section of Section 22. TERMINATION NOTICE PERIOD shall designate the period of time, if any, between the date of receipt of the notice of termination and the Termination Date, as defined in Sections 21 and each relevant sub-section of Section 22 below. TERRITORY shall designate each of the following three geographical areas of the world: Europe, Asia and the Americas. There are three Territories: Europe, Asia and the Americas. SOLUTION PROVIDER AGREEMENT Page 5 6 2. SUBJECT MATTER OF THE AGREEMENT 2.1 PURPOSE OF THE AGREEMENT DS appoints Solution Provider, and Solution Provider accepts such appointment, as a solution provider in the CATIA V5 Galaxy Program, for the development and marketing of Application Program(s) based on the CAA V5 Architecture and for which certain CATIA V5 Product(s) will be a prerequisite. To qualify as solution provider under the CATIA V5 Galaxy Program, Solution Provider expressly undertakes to comply, and maintain compliance at all times during the Term of this Agreement, with the specific conditions and criteria applicable to solution providers as set forth in Section 3 below as possibly amended from time to time. 2.2 STRUCTURE OF THE AGREEMENT This Agreement is a framework agreement which terms shall govern all rights and licenses granted to and by the parties for any and all Application Program(s) the development and distribution of which they will agree upon. This Agreement will govern both the initial phase of development of the AP on the basis of the CAA V5 Architecture and the following phase of its marketing and support by Solution Provider, for each Application Program agreed upon in a duly executed PID. 3. CATIA V5 GALAXY PROGRAM The CATIA V5 Galaxy Program provides software specialists with various incentives to use the CAA V5 Architecture for the development of application program(s) for which certain CATIA V5 Product(s) will be a prerequisite. Only those software specialists that have evidenced their competence and expertise and which anticipated developments of application software including any AP(s) are in line with DS strategy may enter and remain into the CATIA V5 Galaxy Program as Partner. 3.1 CONDITIONS & CRITERIA To participate as solution provider in the CATIA V5 Galaxy Program, Solution Provider must comply with the requirements and criteria set forth below that relate to both the quality of its business and that of its AP(s). SOLUTION PROVIDER AGREEMENT Page 6 7 3.1.1 CRITERIA RELATING TO SOLUTION PROVIDER'S BUSINESS Upon the Effective Date of this Agreement, Solution Provider declares that it complies and agrees during the Term of this Agreement to maintain compliance with the following requirements: - Solution Provider is a software editor developing and marketing software products; - Solution Provider's vision and strategy is in line with DS's vision and strategy as disclosed by DS from time to time as set forth in Section 19 below; - Solution Provider shall take the appropriate steps to establish and maintain a strong cooperation relationship with DS, in particular by participating to a reasonable number of meetings organized by DS and by keeping DS informed with the evolution of its business and products; - Solution Provider has a distribution network appropriate for the efficient marketing, distribution and support of its software products including any AP(s) to be developed under this Agreement; - Solution Provider cooperates with DS in good faith and trust in both the conduct of its business and the performance of this Agreement and its behavior is compatible with sound business ethics. 3.1.2 CRITERIA RELATING TO SOLUTION PROVIDER'S AP(S) Solution Provider declares upon the Effective Date of this Agreement and undertakes that, at all times during the Term of this Agreement, AP(s) to be developed under this Agreement comply and will comply with the following requirements: - Solution Provider's AP(s) pre-requests certain CATIA V5 Product(s) identified in a duly executed PID; - Solution Provider's AP(s) complements the then existing DS and DS Group Products; - Solution Provider's AP answers to then current market needs; - Solution Provider's AP is fully in line with DS's strategy as disclosed by DS, including without limitation, Solution Provider's AP implements DS's process centric vision; SOLUTION PROVIDER AGREEMENT Page 7 8 - Solution Provider's AP is highly required by the market as evidenced by requests from at least three candidate customers for this AP(s) as well as by market studies, if available, or any other means; - Solution Provider's AP is an Integration, as opposed to a mere Interface, of Solution Provider's software product with the pre-requested CATIA V5 Product(s); - Solution Provider's AP is best-in-class technology; - Solution Provider continuously improves its AP(s), in accordance with the specifications of the PID agreed upon, in an effort to complement the process covered by the DS Group Products to the benefit of customers; - Any AP(s) must have successfully undergone the certification process within one year from its first General Availability. Subsequent releases of same AP will have to have undergone certification process and have been certified before their GA; - Solution Provider's AP will be made available in Solution Provider's catalogue(s) of software products. 3.2 BENEFIT OF "DASSAULT SYSTEMES PARTNER" LOGOTYPE Subject to its continuous compliance with the above listed conditions and criteria as possibly amended from time to time, Solution Provider will be authorized, as of the General Availability of its first AP (first release), to use and display the "Dassault Systemes Partner" logotype which is owned by DS, under the conditions set forth below. DS grants to Solution Provider a worldwide limited right and license to use and display the "Dassault Systemes Partner" logotype. This right and license to use the "Dassault Systemes Partner" logotype is revocable, non-exclusive, worldwide and free of charge. It is not assignable and it cannot be sublicensed or otherwise transferred. The current design and use instructions of the "Dassault Systemes Partner" logotype are described in the Graphic Chart titled "DS Partners Guide -- Volume 5" a copy of which is attached hereto as Exhibit A and has been provided to Solution Provider. DS may at any time and at its discretion change the design of the "Dassault Systemes Partner" logotype, its use instructions, and/or any other provision of the Graphic Chart. DS will inform Solution Provider of any such change with three (3) month notice prior to providing Solution Provider with the amended Graphic Chart or amendment thereto to be complied with within three (3) month from its receipt. SOLUTION PROVIDER AGREEMENT Page 8 9 Solution Provider must at all time during the Term of this Agreement use and display the then current version of the "Dassault Systemes Partner" logotype and comply with the Graphic Chart then in force. For exclusive purposes of communicating, promoting and marketing the AP(s) and only if an AP is clearly featured, Solution Provider is authorized to reproduce the "Dassault Systemes Partner" logotype, on the medias and according to the use instructions set forth in the Graphic Chart then in force. No further right to use or display the "Dassault Systemes Partner" logotype is hereby granted to Solution Provider. Solution Provider shall neither modify the "Dassault Systemes Partner" logotype, nor use it when communicating on any products other than the AP(s) and/or for purposes other than those expressly set forth above without DS's prior written consent. DS is entitled to review the content and quality of the use, display and/or reproductions of the "Dassault Systemes Partner" logotype by Solution Provider. DS is entitled to request that Solution Provider provides it with a list and/or samples of all communication medias and tools on which the "Dassault Systemes Partner" logotype is enclosed and proceeds with any correction without delay promptly upon receipt of DS's written notification, at Solution Provider's exclusive costs. The authorization to use the "Dassault Systemes Partner" logotype does not constitute or imply any specific endorsement by a party of the other party products and/or services. 3.3 SANCTIONS FOR FAILURE TO COMPLY WITH CONDITIONS AND CRITERIA If Solution Provider fails to comply with the above conditions and criteria, DS is entitled, at its discretion, (i) to enjoin the loss of the CAA V5 certification of any given AP, (ii) to terminate any given AP and/or (iii) to terminate this Agreement, as set forth under Section 22.3 below. SOLUTION PROVIDER AGREEMENT Page 9 10 4. WORKING RELATIONSHIP The parties shall perform their obligations under this Agreement in good faith and in accordance with generally accepted practices within the industry. Both parties agree to promptly bring to the other party's notice any information received by it which is likely to be of interest, use or benefit to the other party in relation to this Agreement. 4.1 PRINCIPLE / CONTRACTUAL DOCUMENTS The parties will agree on a case-by-case basis on each Application Program to be developed and marketed under this Agreement, according to the procedure set forth in Section 9 below. For each AP, the parties must agree upon and execute a PID according to the standard attached hereto as Exhibit B. As indicated in Section 5.1.5 below, Solution Provider will forward to DS duly completed RFL(s) in duplicate originals according to the standard RFL attached hereto as Exhibit C identifying those licenses on CAA V5 or CATIA V5 Products which are necessary to develop and/or support any AP(s). Licenses will be granted only when accepted in writing by DS. The acceptance by DS of any RFL shall be demonstrated either by DS's signature of such RFL or by the provision by DS of the associated password(s) for the Licensed Products, whichever occurs first. DS may, at its discretion, accept RFL(s) sent by Solution Provider via email. For training services, a la carte services or any further products and/or services possibly requested by Solution Provider for the development and/or support of any AP(s) under this Agreement, Solution Provider will forward to DS, duly completed Purchase Order(s) in duplicate originals. Purchase Order(s) will only be binding on DS, once accepted in writing by DS. DS reserves the right to set up procedures of electronic communication and/or acceptance of contractual documents. When such procedures are set up by DS, the parties agree to meet and negotiate in good faith the practical consequences of such implementation. Notwithstanding the terms and conditions of this Agreement, RFL(s) and Purchase Order(s) shall not in any way modify the terms of this Agreement. All terms and provisions contained in any RFL(s) or Purchase Order(s) submitted by Solution Provider which are inconsistent with this Agreement shall be of not force and effect. For a given AP, each PID, RFL, Purchase Order and any possible amendments or supplements to those documents, will carry (i) the same identification reference as the initial PID entered into for that AP as well as (ii) a reference to this Agreement. SOLUTION PROVIDER AGREEMENT Page 10 11 4.2 AMENDMENTS TO CONTRACTUAL DOCUMENTS PIDs will be amended whenever needed to reflect technical changes of an AP, such as evolutions of its functionalities, and any new release of an existing AP, prior to implementing such change or developing such new release. Any amendment to the PID may result in new RFL(s) and/or Purchase Order(s), to reflect respectively the specific licenses and/or other products or other services needed by Solution Provider. Such amendment to PID must be documented in writing and duly executed by both parties. 5. LICENSES 5.1 GRANT OF LICENSES 5.1.1 NATURE OF LICENSES GRANTED Pursuant to this Agreement and subject to acceptance by DS of the related RFL(s), DS grants Solution Provider : - Development Licenses as defined in and under the terms of Section 5.2 below, exclusively on CAA V5 Products; - Test and Evaluation Licenses as defined in and under the terms of Section 5.3 below on CATIA V5 Products, to enable Solution Provider to test its AP(s) with its prerequisites CATIA V5 Products during the development phase and/or to evaluate CAA V5 and/or CATIA V5 Products which may be of interest for the development of AP(s); - Demonstration Licenses as defined in and under the terms of Section 5.4 below on CATIA V5 Products exclusively, to enable Solution Provider to demonstrate the operation of its AP together with prerequisites CATIA V5 Products to third parties customers, distributors and/or prospects and; - Non-GA Programs Evaluation Licenses on Non-GA Programs, exclusively to enable Solution Provider to evaluate them, under the restrictive terms and conditions set forth in Section 5.5 below. All licenses granted pursuant to this Agreement are for purposes of development, test, evaluation, or demonstration, as indicated in the corresponding RFL(s), exclusively in relation with the AP defined in the PID identified therein. No other rights to use or reproduce and no right to modify the Licensed Products are granted to Solution Provider. The licenses granted SOLUTION PROVIDER AGREEMENT Page 11 12 under this Agreement cannot be sublicensed, assigned or otherwise transferred by Solution Provider to any third party whatsoever. All licenses granted by DS to Solution Provider are governed by the terms and conditions of this Section 5. 5.1.2 TERRITORY COVERED BY LICENSES GRANTED All licenses are granted for those countries signatory of the Bern Convention, with the exception of the Prohibited Countries as defined in Section 26 below where applicable French, European Union, United States of America, and other originating country's export and re-export laws and regulations prohibit or otherwise regulate the grant of such licenses, unless and until appropriate authorization, license or other approval have been obtained. 5.1.3 NUMBER OF LICENSES GRANTED For each AP developed pursuant to this Agreement and subject to the payment of the corresponding Yearly Fees, DS will grant to Solution Provider the Development, Test and Evaluation, Demonstration and Non-GA Programs Evaluation licenses (as defined below) on those Licensed Product(s), for that number of machines or users set forth in Partners' Price List. If additional licenses are requested by Solution Provider for any given AP, Solution Provider will automatically be invoiced and shall pay the Additional Yearly Fee set forth in Partners' Price List, which will entitle Solution Provider to additional licenses for that number of machines or users set forth in Partners' Price List. 5.1.4 DELIVERY Subject to the payment of the corresponding Subscription Fee and/or Yearly Fees, DS will deliver (i) one (1) CD and one (1) associated Documentation per Site with a maximum of five (5) CDs, for the Development, Test and Evaluation licenses as well as for Non-GA Programs Evaluation licenses of CAA V5 and/or CATIA V5 Products and, (ii) one (1) CD and one (1) associated Documentation for each Territory for the Demonstration Licenses on CATIA V5 Products. Solution Provider is authorized to make copies of the CD containing the CATIA V5 Products licensed to it, for each of its Sites in the Territory. The CD(s) will contain one (1) copy of the Licensed Products, with the latest updates, in Object Code form, for the first installation of any Licensed Product under each operating system. The CD(s) and associated Documentation will SOLUTION PROVIDER AGREEMENT Page 12 13 be delivered within fifteen (15) days from the date of acceptance by DS of the first corresponding RFL(s). Solution Provider may request a transfer of existing licenses by sending DS duplicate originals of a duly completed and executed RFL together with copies of the initial RFL duly accepted identifying the former Designated Machine and/or Site. Upon transfer of existing licenses, Solution Provider shall delete the Licensed Product(s) from the former Designated Machine. Delivery of the CD(s) and associated Documentation pursuant to this Agreement will be made D.D.U. at Solution Provider's Site, according to the ICC Incoterms Edition 2000. DS shall select a carrier of its choice to be used for shipping the CD(s) to Solution Provider and shall pay the costs of shipment. Risk of loss and title to the CD(s) (expressly excluding computer software programs contained therein) shall pass to Solution Provider upon delivery at the Site. If the CD (or other program storage media) is lost or damaged during shipment to Solution Provider, DS will replace such media at no additional charge. Solution Provider is exclusively responsible (i) to proceed with all formalities related to the import of the Licensed Product(s) and associated Documentation in the country where its Site is located and (ii) for the payment of all duties and taxes possibly assessed or levied against such import by any taxing authority as set forth in Section 7 below. 5.1.5 TERM OF LICENSES GRANTED At least annually during the Term of this Agreement at the latest during the first week of December of any calendar year (N), or at any other time when additional or different licenses are needed, Solution Provider will forward to DS duly completed RFL(s) identifying the CAA V5 and CATIA V5 Products requested as well as the Designated Machine(s) and Site(s) where such licenses will and may exclusively be used. When sent at the latest during the first week of December N, the RFL once accepted by DS grants Solution Provider a license for a one year period starting on February 1st, N+1 and expiring on January 31st, N+2. When sent at any other time during the year, the RFL once accepted by DS grants Solution Provider a license for that period of time starting on the date of acceptance by DS of that RFL and expiring on the immediately following 31st of January (example an RFL sent by Solution Provider on June 1st, 2000 and accepted by DS on June 10th, 2000, the licenses identified will cover the period of time from June 10th, 2000 to January 31st, 2001). SOLUTION PROVIDER AGREEMENT Page 13 14 5.1.6 MAINTENANCE DS will provide maintenance services for the Licensed Products under the terms of this Section 5.1.6. (a) DEFINITIONS For the purpose of this Section 5.1.6, the following terms shall have the following meaning: DEFECT shall designate any malfunction in the performance of any Licensed Product, as such performance is described in its associated Documentation, which is inherent to the Licensed Product and is not caused by or imputable to or related with its improper use or its use in conjunction with any other computer software program. ERROR shall designate a material Defect where either (i) any use of the Licensed Product is prevented or (ii) the Licensed Product or data is destroyed or (iii) there is a loss of critical functionalities of the Licensed Product. RELEASE shall designate updates of the same version of any Licensed Product that DS may make generally available to its customers. SERVICE PACK shall designate periodic updates of any Licensed Product that may include the correction of Defects or Errors for a given Release that DS may make generally available to its customers. (b) CORRECTIVE SUPPORT / SUPPORT The maintenance services include Corrective Support and Support by DS. During the Corrective Support period, Solution Provider may report Defects to DS on a Release (n) of a Licensed Product up to four (4) months after a subsequent Release (n+1) of that Licensed Product has been made publicly available. Under the Corrective Support, DS may address the Defects reported by Solution Provider on that Release (n). During the Support period, Solution Provider may report Defects to DS on a Release (n) of a Licensed Product up to four (4) months after a second subsequent Release (n+2) of that Licensed Product has been made publicly available. Under the Support, DS may, at its discretion, address the Defects of the Release (n) reported by Solution Provider on either (i) the Releases (n+1) or (n+2) of the Licensed Product or on (ii) a Release of the Licensed Product still under development (to become Release (n+2) or Release (n+3) as the case may be). SOLUTION PROVIDER AGREEMENT Page 14 15 (c) REPORTING OF DEFECTS Solution Provider may report any Defects to DS Maintenance Service in Paris through DS's maintenance website at http://webcos.dassault-systemes.fr (with possible email of information to alan_Christie@ds-fr.com). To report Defects through DS's maintenance website, Solution Provider must supply to DS the name of a designated Solution Provider's employee which is the only person authorized to report Defects to DS, and the IP identification number of that machine through which Solution Provider will access DS's maintenance website. DS will provide Solution Provider with an identification number, a password and an URL address enabling Solution Provider to connect to and access DS's maintenance website. Only those Defects which are reproducible by DS are covered by the Corrective Support and Support. Solution Provider must provide to DS any information and all material, details and else necessary for DS to reproduce the Defect, as requested by DS's maintenance services and including without limitation the following: step by step and simplified scenario of the Defect including all error messages and warnings, the level of Release and of Service Pack if any, models, assemblies, environment settings and declaratives, original data if corrupted by Defect, any information to qualify the Defect as an Error and the level of Release on which Solution Provider wishes DS would address the Defect. (d) POSSIBLE ACTIONS BY DS Once a Defect has been duly recognized by DS, DS may provide Solution Provider with either: (i) the reference of a documentation addressing the issue or a methodological advise; (ii) a workaround or bypass of the Defect; (iii) a correction in a subsequent Service Pack or Release of the Licensed Product. DS may address Errors in a subsequent Service Pack or Release. Upon request, Solution Provider shall be entitled to receive Service Packs and Releases for any Licensed Product(s) during the term of the corresponding applicable license. SOLUTION PROVIDER AGREEMENT Page 15 16 5.1.7 SOLUTION PROVIDER'S GENERAL OBLIGATIONS Solution Provider agrees that it shall not copy or use any software products, APIs or development tools that it may possibly access by running any of the CDs or other media that will be made available to it under the Agreement, and for which it does not benefit from an effective license granted by DS. Solution Provider may reproduce the Licensed Products, in Object Code form, only to the extent necessary for installation on the sole Designated Machine(s) or for the designated user(s), and for a single back-up copy per Designated Machine. Except with DS's prior written consent, Solution Provider shall not copy the associated Documentation of any Licensed Product(s). Solution Provider agrees not to decompile, reverse engineer, and/or disassemble all or part of any Licensed Product(s) into a source code version thereof, or allow others to do so. Solution Provider agrees not to remove or circumvent any licensing system or protection system of the CAA V5 and CATIA V5 Products. 5.2 DEVELOPMENT LICENSE 5.2.1 GENERAL LICENSE TERMS FOR THE CAA V5 PRODUCTS Subject to the terms and conditions set forth in this Agreement, for any given AP, DS grants Solution Provider the following non-exclusive, temporary, non-transferable license, for those CAA V5 Products identified in the corresponding PID (as possibly amended) and listed in the corresponding RFL(s) duly accepted by DS, in order to: - Make copies of the CAA V5 Products, from the CD solely in connection with Solution Provider's internal use for development, test and support of the AP designated in the corresponding PID; - Use the CAA V5 Products on the Designated Machine(s) and at the Site(s) identified in the corresponding RFL(s) solely in connection with Solution Provider's development, test and support of the AP designated in the corresponding PID; and - Use the CAA V5 Products on back-up equipment at the same Site as the originally Designated Machine(s) in the event, and for as long as, such Designated Machine(s) are inoperative. SOLUTION PROVIDER AGREEMENT Page 16 17 5.2.2 ADDITIONAL TERMS FOR THE API(S) The terms of this Section 5.2.2 apply in addition to the above general license terms. For any given AP as defined in a PID, DS grants Solution Provider: (i) a non-exclusive, temporary, non-transferable license, of the build time of those API(s) that are absolutely necessary for that AP to operate together with the prerequisite CATIA V5 Product(s) as identified in the PID, exclusively for Solution Provider's internal use of development, test and support of that AP and; (ii) the limited right to embed in the AP only the libraries resulting from the use of the API(s) and referencing the API(s), to the extent necessary for the operation of that AP together with the prerequisite CATIA V5 Product(s) as identified in the corresponding PID. At all times during the Term of this Agreement, Solution Provider must comply with DS's instructions regarding the use of any API(s). Solution Provider undertakes to use the latest version or release of any such API(s) or libraries thereto provided by DS. 5.3 TEST AND EVALUATION LICENSE Subject to the terms and conditions of this Agreement, for any given AP, DS grants Solution Provider a temporary, non-exclusive and non-transferable right and license to execute, reproduce and display, in Object Code form: (i) the CATIA V5 Product(s) and associated Documentation specifically designated in the corresponding PID as a prerequisite for that AP, and listed in the corresponding RFL(s) as duly accepted by DS, on the Designated Machine(s) identified in the corresponding RFL(s), only for testing the AP(s) together with its (their) related prerequisites CATIA V5 Product(s), and/or (ii) certain CAA V5 and/or CATIA V5 Product(s) and associated Documentation specifically designated in the corresponding RFL(s) as duly accepted by DS, on the Designated Machine(s) and for the term specified in that RFL(s), only for Solution Provider's own internal evaluation purposes within the frame of a given PID, expressly excluding any commercial or general production purposes. SOLUTION PROVIDER AGREEMENT Page 17 18 5.4 DEMONSTRATION LICENSE Subject to the terms and conditions of this Agreement, for any given AP, DS grants Solution Provider a temporary, non-exclusive and non-transferable right and license to execute, reproduce and display, in Object Code form, the CATIA V5 Products and associated Documentation specifically designated in the corresponding PID as a prerequisite for that AP, and listed in the corresponding RFL(s) as duly accepted by DS, on the Designated Machine(s) identified in the corresponding RFL(s) and only for: (i) demonstrating to end users, potential end users or distributors of Solution Provider, the functioning of the AP(s), together with the related prerequisites CATIA V5 Product(s) and/or (ii) to provide before or after sales services (such as studies, training or consulting) using any AP(s) together with its prerequisite CATIA V5 Product(s) to prospective customers or customers in relation with the sale of any AP(s). 5.5 NON-GA PROGRAMS EVALUATION LICENCE From time to time during this Agreement, DS may grant to Solution Provider, for a given AP, the right and license to use certain pre-releases of CAA V5 and CATIA V5 development software and tools (hereafter "Non-GA Programs") identified in the corresponding PID and listed in the corresponding RFL(s) duly accepted by DS, under the additional terms and conditions of this Section 5.5. 5.5.1 LICENSING TERMS Solution Provider shall have a temporary, free of charge, non-exclusive and non-transferable right and license to execute, reproduce and display the Non-GA Program specifically designated in the corresponding PID for a given AP and listed in the corresponding RFL(s) duly accepted by DS, in Object Code form, and to utilize, in support thereof, any associated Documentation and other information which may be provided by DS. The duration of such license shall be provided for in the corresponding RFL(s) and shall not exceed three (3) months. In addition, due to the Non-GA nature of the Program(s), DS shall be entitled, at any time, to terminate this license as of right and without legal proceedings, immediately upon receipt of a written notice to that effect. Solution Provider will have the right to use the Non-GA Program(s) only for its own internal evaluation purposes within the frame of the corresponding PID, on the sole Designated Machine(s) located at Solution Provider's Site and identified in the corresponding RFL, expressly excluding any commercial or general production purposes. SOLUTION PROVIDER AGREEMENT Page 18 19 5.5.2 CONFIDENTIALITY -- PROPRIETARY INFORMATION (a) Solution Provider acknowledges that the Non-GA Program(s) is (are) proprietary information and a trade secret of DS. Solution Provider shall preserve and include any copyright notice which may appear in the Non-GA Program(s) in all copies thereof, whether such copies are of the whole or a part, in Object Code form or in printed form. Solution Provider shall: (i) Hold the Non-GA Program(s) in confidence, (ii) Not disclose, provide or otherwise make available the Non-GA Program(s) or information related thereto, including without limitation specifications, or evaluation data and results generated therefrom, to anyone other than employees of Solution Provider, who have a need to know consistent with Solution Provider's authorized use of the Non-GA Program(s), which names are provided to DS in an Exhibit to the corresponding RFL, (iii) Not disclose the existence or the content of the test, and (iv) Take any appropriate action by instruction, agreement or otherwise to fulfill its obligations as to protection and non-disclosure in pursuance of this Section 5.5. Furthermore, Solution Provider certifies that its designated employees agree to be bound by and comply with this Section 5.5. (b) Solution Provider also recognizes that, due to its Non-GA nature, the Non-GA Program(s) may include invention or other patentable techniques or discoveries and understand that DS might not have yet decided to patent them or might be in the process of doing so. Therefore, Solution Provider recognizes and agrees that, for this purpose and in order to avoid for DS loosing any patent application rights, the non-disclosure provisions provided hereunder are of major importance. (c) At the end of the evaluation period, Solution Provider might be requested to provide DS with a written report on the results obtained from Non-GA Program(s) evaluation hereunder, including performance of the Non-GA Program(s), deficiencies encountered and suggested enhancements, if any. Solution Provider agrees that DS may use without restriction said written report and any suggestions made by Solution Provider in relation to the Non-GA Program(s), including without limitation in the enhancement of the Non-GA Program(s) or of any other DS's programs, and claim in its own name all patent rights, copyrights or other intellectual property rights as may be available in such suggestions, without accounting or retroceding any royalties received to Solution Provider. SOLUTION PROVIDER AGREEMENT Page 19 20 5.5.3 DISCLAIMER OF WARRANTY THE NON-GA PROGRAM(S) IS (ARE) LICENSED TO SOLUTION PROVIDER HEREUNDER ON AN "AS IS" BASIS, AND WITHOUT ANY WARRANTY WHATSOEVER, WHETHER EXPRESS OR IMPLIED, CONTRACTUAL OR ELSE, INCLUDING WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE OR USE OR ANY IMPLIED BY LAW WARRANTY AGAINST HIDDEN DEFECTS, AS WELL AS NON INFRINGEMENT WARRANTIES. DS DOES NOT WARRANT OR REPRESENT THAT (i) THE NON-GA PROGRAM(S) AND RELATED SPECIFICATIONS AND FUNCTIONALITIES, OR (ii) ANY DATA STRUCTURES GENERATED THROUGH USE OF THE NON-GA PROGRAM(S), WILL BE CONSISTENT OR COMPATIBLE WITH ANY SUBSEQUENT RELEASE OR VERSION OF THE NON-GA PROGRAM(S), IF ANY, OR WITH ANY CURRENT OR FUTURE PROGRAM(S) OF DS. 5.5.4 LIMITATION OF LIABILITY SOLUTION PROVIDER EXPRESSLY AND IRREVOCABLY WAIVES ANY AND ALL CLAIMS AGAINST DS FOR DIRECT, INDIRECT, CONSEQUENTIAL, SPECIAL, INCIDENTAL OR PUNITIVE DAMAGES, INCLUDING WITHOUT LIMITATION, LOSS OF USE AND/OR DATA, LOSS OF PROFITS, REVENUES, SAVINGS, GOODWILL AND/OR OTHER ECONOMIC DAMAGES, WHETHER BASED IN CONTRACT, NEGLIGENCE, OR OTHERWISE, ARISING OUT OF, OR IN CONNECTION WITH, OR IN ANY WAY RELATING TO THE USE OF THE NON-GA PROGRAM(S) BY SOLUTION PROVIDER, INCLUDING INFRINGEMENT ACTIONS. SOLUTION PROVIDER FURTHER AGREES TO INDEMNIFY AND HOLD DS HARMLESS FROM ANY AND ALL LIABILITY OR EXPENSE, INCLUDING REASONABLE ATTORNEYS' FEES, ARISING OUT OF THIS SECTION 5.5. 5.5.5 LIMITED SUPPORT SERVICE From time to time, DS may, at its sole discretion, provide Solution Provider with modifications or updates to the Non-GA Program(s). Any such modifications or updates shall be construed as part of the Non-GA Program(s). DS hereunder in relation to the Non-GA Program(s) will provide no corrective maintenance service, provided however that DS will use reasonable efforts to correct any errors in the Non-GA Program(s) which are notified by Solution Provider and which, in DS's sole opinion: (i) Prevent the Non-GA Program(s) evaluation by Solution Provider pursuant to this Agreement, (ii) Are inherent to the Non-GA Program(s), and SOLUTION PROVIDER AGREEMENT Page 20 21 (iii) Are not caused by or do not arise solely from the use of any other software in conjunction with the Non-GA Program(s). Nothing contained herein shall be construed as an obligation of DS, either express or implied, to subsequently develop, market or license the Non-GA Program(s), or any similar program(s) incorporating some or all of the functionalities contained therein. 6. FINANCIAL CONSIDERATION In consideration for the rights and licenses granted pursuant to this the Agreement, Solution Provider shall pay to DS the following fees and royalties. 6.1 SUBSCRIPTION FEE Solution Provider shall pay to DS a Subscription Fee to the CATIA V5 Galaxy Program of thirty nine thousand US Dollars (US$ 39,000). The Subscription Fee is only due once during the Term of this Agreement upon the Effective Date. The Subscription Fee is payable within 30 days following the Effective Date. 6.2 YEARLY FEES AND FLAT FEES DS may, at its discretion, increase the Yearly and Flat Fees, once per calendar year, provided such increase shall not exceed ten per cent (10%) and subject to a one month prior notice to Solution Provider. Solution Provider will pay the Yearly and Flat Fees as amended if they accrue after the date of coming into force of these amendments. 6.2.1 YEARLY FEE Every year, Solution Provider shall pay the Yearly Fees defined below in payment of the various licenses granted under this Agreement. The CATIA Companion Yearly Fee and Licenses Yearly Fee are due in all circumstances. The Additional Yearly Fee is only due if additional licenses are requested. (a) CATIA COMPANION YEARLY FEE As of the 1st of February immediately following the Effective Date and on the 1st of February of every calendar year thereafter, Solution Provider shall pay to DS the CATIA Companion Yearly Fee of the amount set forth in Partners' Price List in payment of one CATIA Companion shareable license granted by DS pursuant to Section 8.3. SOLUTION PROVIDER AGREEMENT Page 21 22 (b) LICENSES YEARLY FEE For each AP to be developed under this Agreement, Solution Provider shall pay to DS a Licenses Yearly Fee of the amount set forth in Partners' Price List in payment of the number of licenses defined therein. This Licenses Yearly Fee is due for the first time on the effective date of the PID and on the 1st of February of every calendar year thereafter for all AP(s), except that for the first AP to be developed under this Agreement the Licenses Yearly Fee will be due for the first time on the 1st of February immediately following the Effective Date of the Agreement (as opposed to the effective date of the PID of the first AP). (c) ADDITIONAL YEARLY FEE The Additional Yearly Fee of the amount set forth in Partners' Price List will be automatically due if Solution Provider requests additional licenses for any given AP and will entitle Solution Provider to that number of additional licenses defined in Partners' Price List. This Additional Yearly Fee is due for the first time on the date of acceptance by DS of the RFL requesting an additional license and on the 1st of February of every calendar year thereafter. (d) PAYMENT OF THE YEARLY FEES Yearly Fees are payable within 30 days from their due date. They are payable in advance and cover the period of time between their due date and the immediately following 31st of January. 6.2.2 FLAT FEE The Flat Fee of the amount set forth in Partners' Price List is due in payment of the training and assistance services granted by DS. Solution Provider shall pay to DS, in addition to the Yearly Fees defined in Section 6.2.1 above, a Flat Fee for: (i) any additional AP to be developed targeting a different domain than that of previous AP(s), i.e. any new AP which CATIA V5 Products pre-requested are different from the CATIA V5 Products pre-requested by the previous AP(s) as defined in the PID, and, SOLUTION PROVIDER AGREEMENT Page 22 23 (ii) any new release of an existing AP targeting a different domain than the previous release of same AP, i.e. any new release which CATIA V5 Products pre-requested are different from the CATIA V5 Products pre-requested by the previous release of same AP as defined in the PID. Any such Flat Fee is only due once, upon the effective date of the corresponding PID (additional AP) or amendment to an existing PID (new release of existing AP). 6.3 ROYALTIES 6.3.1 APPLICABLE ROYALTY RATE AND MINIMUM AMOUNT OF ROYALTIES [REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE GENERAL RULES AND REGULATIONS UNDER THE SECURITIES EXCHANGE ACT. OMITTED INFORMATION HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION TOGETHER WITH SUCH REQUEST FOR CONFIDENTIAL TREATMENT.] Upon the Effective Date, the supply of ASP using any AP and its prerequisites CATIA V5 Products is not authorized under this Agreement. However, once DS has set up its policy on ASP supply by partners, the parties shall meet to discuss Solution Provider's supply of ASP using any AP together with its prerequisites CATIA V5 Products and the Agreement will be amended accordingly to reflect the parties' agreement, if any, on the terms of such supply of ASP, including without limitation on business conditions and/or royalties to be paid to DS.*** These revenues are equal to the sales prices and other fees and charges invoiced by Solution Provider to customers of such AP, support and related maintenance, and/or services, without deduction by Solution Provider of any costs, expenses, commissions, withholding taxes or other charges possibly incurred by Solution Provider, except as expressly agreed upon by DS. Solution Provider shall send to DS a notification form for each AP specifying, at least but without limitation, the name of the AP (and of its related modules, if any), its date of availability and pricing information such as Solution Provider's standard Price List for such AP and/or services, as well as applicable discounts and contemplated special offerings. 6.3.2 ACCOUNTING / RIGHT TO AUDIT Solution Provider shall, for a period of four (4) years, keep true and accurate records containing all particulars which may be necessary for the purpose of auditing payments of royalties to DS under this Section 6.3. Solution Provider SOLUTION PROVIDER AGREEMENT Page 23 24 will provide DS with a copy of such records at any time upon simple request from DS. Furthermore, during such four (4) year period, and upon reasonable notice to Solution Provider, DS shall have the right to have an audit conducted, through an independent accounting firm chosen at its discretion by DS, and to examine the records and books of account of Solution Provider in connection therewith. Solution Provider will bear the costs of such audit if a material discrepancy or error of computation or else in excess of ten percent (10%) of the amounts due to DS is identified. Any audit conducted pursuant to this Section shall not be conducted in such a manner as to unreasonably interfere with the operations of Solution Provider and in no event shall an audit be conducted more frequently than once per calendar year. 6.3.3 REPORTING Within thirty (30) days after the end of each calendar quarter of this Agreement, Solution Provider shall provide DS with a written Quarterly Report set forth according to the standard attached as Exhibit E for each AP. 6.3.4 ACCRUAL AND SETTLEMENT OF ROYALTIES Royalties shall be paid in US dollars on a quarterly basis. The exchange rate to be applied for computation of such royalties shall be the European Central Bank rate prevailing on the first business day of the month immediately following the relevant calendar quarter. DS's right to royalties on all revenues derived by Solution Provider from licensing and/or distribution of any AP and/or related maintenance services shall accrue upon the date the corresponding revenues accrue to Solution Provider, irrespective of whether or not such revenues were eventually collected by Solution Provider from its customer. 6.4 OTHER FEES AND CHARGES In addition to the above Fees and Royalties, Solution Provider will pay to DS any additional hotline support at the hourly rate set forth in Partners' Price List then in force. A la carte training services or other specific products and/or services possibly requested by Solution Provider to DS in the course of performance of this Agreement will be subject to the terms of this Agreement and will be charged, if accepted by DS, at its standard price then in force. SOLUTION PROVIDER AGREEMENT Page 24 25 7. PAYMENT DS will invoice Solution Provider for all payments due under this Agreement. All invoices shall be paid to DS by wire transfer, within thirty (30) days from receipt of DS invoice, to DS's bank account as identified below: bank account # 0120022776 opened under the name of Dassault Systemes, at Societe Generale (bank code 30003), Paris Opera (branch code 03620 / RIB code 06) 6, rue Auber 75009 Paris, France swift code SOGEFRPP In addition to any payment due, Solution Provider shall be responsible for the payment and pay, without recourse to DS, any and all applicable sales, use, excise, value added or other taxes or duties, howsoever designated, assessed or levied upon the execution or performance of this Agreement, by any taxing authority whether in DS's or Solution Provider's country, except for taxes based on DS's net income. Solution Provider shall pay interest for late payment of all sums due at the LIBOR rate plus four (4) points (e.g. if LIBOR rate is 6%, late interests will be 10%) -- not to exceed the maximum rate, or be inferior to the minimum rate, permitted by applicable law, as the case may be -- as of the receipt of a notice to pay sent by DS. SOLUTION PROVIDER AGREEMENT Page 25 26 8. TRAINING 8.1 MANDATORY TRAINING To ensure and promote Solution Provider's competence and skills on CAA V5 and CATIA V5 Products, all the employees of Solution Provider who are involved in the development of any AP must have attended the training courses defined below on all relevant CAA V5 and CATIA V5 Products to be used in the development of any AP, whether such training courses have been attended in the course of performance of this Agreement or of distinct or prior business relationships with DS (a certificate of attendance of such training will then be required). The mandatory training courses include: - a Computer Based Training session on DS's self training software "CATIA Companion"; - a Advanced Training course on all the CATIA V5 Products which are necessary for the development of any given AP; and - all three Basic, Advanced and Specialized CAA V5 Trainings as described in Section 8.2.1 below. This requirement applies to all employees of Solution Provider involved in the development of any AP and at any time during the Term of this Agreement. If all the pre-requested training courses are not attended by the Solution Provider's employees as part of either the Initial, Continuous or Additional Trainings defined in Sections 8.2, 8.3 and 8.4 below, they will be periodically organized by DS and charged to Solution Provider at DS standard prices then current upon attendance by Solution Provider's employee(s). Solution Provider bears all costs of lodging and transportation, as well as out of pocket expenses, for those of its employees attending any training and/or assistance courses or sessions under this Section 8. 8.2 INITIAL TRAINING & ASSISTANCE As part of this Agreement and as a result of its appointment as solution provider in the Galaxy Program, Solution Provider benefits from the training and assistance products and services as detailed in this Section 8 which are granted by DS at a discounted price in comparison to its standard prices for such training products and services. SOLUTION PROVIDER AGREEMENT Page 26 27 8.2.1 INITIAL TRAINING As of the Effective Date, prior to the start of development of any AP, and subject to the timely payment of the Subscription Fee, Solution Provider will benefit from the Initial Training defined hereafter. This Initial Training consists in the following: (a) COMPUTER BASED TRAINING DS grants to Solution Provider one (1) non-exclusive, temporary, non-transferable, shareable license to use DS's self training software "CATIA Companion", subject to the timely payment of the Subscription Fee as well as the corresponding Yearly Fees as set forth under Section 6.2.1 above. This license is for training purposes exclusively and may be used on any machine at the Site identified in the corresponding RFL, by any one (1) single user at any given time. This license is mandatory and must remain effective during the whole Term of this Agreement. (b) TRAINING ON CATIA V5 PRODUCTS This training is fitted to the domain of activity targeted by the Solution Provider and may cover among others the following items: [Infrastructure], [Mechanical Design], [Mechanical Design Rx Update], [Analysis & Simulation], [Shape Design & Styling], [Equipment & Systems] or [Engineering]. This training on CATIA V5 Products is a dedicated course given at DS premises that lasts three days for up to eight employees of Solution Provider. (c) TRAINING ON CAA V5 ARCHITECTURE This training is designed to ensure and enhance the level of expertise of the Solution Provider on the CAA V5 Architecture. Under this Agreement, the three progressive steps of training are granted to Solution Provider: - the Basic CAA V5 Training -- Level 1 -- on Concepts, Models, Controller, View and Tools which is a course given at DS premises that last five days and is available for up to two employees of Solution Provider; SOLUTION PROVIDER AGREEMENT Page 27 28 - the Advanced CAA V5 Training -- Level 2 -- on Geometric Modeler, Mechanical Modeler, Product Structure and Knowledgeware which is a course given at DS premises that lasts five days and is available for up to two employees of Solution Provider; and - the Specialized CAA V5 Training -- Level 2 -- on necessary key framework(s) to be used by AP as defined in correspond- ing PID, which is a dedicated course given at DS premises that lasts two days and is available for up to two employees of Solution Provider. 8.2.2 INITIAL ASSISTANCE As of the Effective Date and subject to the timely payment of the Subscription Fee, Solution Provider will benefit from the Initial Assistance defined hereafter. The Initial Assistance consists in the following: (a) DEVELOPMENT AT DS PREMISES AND CONSULTING WITH DS EXPERT During the early phase of development of its first AP, up to two employees of Solution Provider (having attended the pre-requested training courses) will be authorized to start developing on Solution Provider's Designated Machine(s) at DS premises for up to five days during which Solution Provider may be assisted by one of DS experts for up to three days. (b) HOTLINE ASSISTANCE As of the Effective Date, Solution Provider will, for the whole Term of this Agreement, benefit from up to forty (40) hours of hotline assistance on usage functions, basic methodology and by pass or workarounds of the following domains: installation, data exchange, administration, CATIA V5 Products, Programming and general use. Are expressly excluded from the hotline assistance services supplied by DS, all requests (i) regarding or related to defect(s) of any Licensed Product(s) which are covered by the provisions of Section 5.1.6 above, (ii) for information on announces or visibility of future DS Group Products or functionalities, and (iii) for training over the phone. SOLUTION PROVIDER AGREEMENT Page 28 29 DS Helpdesk Center will do its reasonable commercial efforts to respond to Solution Provider's request within a reasonable time period. The operating hours of DS Helpdesk Center in Suresnes (France) are: - Monday-Friday 8:30-12:00 and 13:00-18:00 (Paris Time) - Saturday-Sunday Closed DS Helpdesk Center is also closed during the French national holidays. The different ways to access the DS Helpdesk Center in Paris are: o Phone +33 1 40 99 44 44 o e-mail hotline@ds-fr.com o Fax +33 1 40 99 43 12 Once duly registered by filling in and returning the document attached as Exhibit G hereto, Solution Provider also has exclusive access to DS Helpdesk Center Web Site: www.helpdesk.dassault-systemes.com The time spent by the expert(s) of DS Helpdesk Center on each request received from Solution Provider is calculated, quarter of an hour by quarter of an hour, with a minimum of one half hour, and deducted from the above forty (40) hours and charged when exceeding these forty (40) hours as set forth below. Any hotline assistance needed by Solution Provider in excess of the above forty (40) hours will be charged by DS at its then current standard price. 8.3 CONTINUOUS TRAINING During the Term of this Agreement, subject to the timely payment of the CATIA Companion Yearly Fee, DS grants Solution Provider one shareable license under the terms set forth in Section 8.2.1 above on DS's self training software "CATIA Companion" and may provide updates of "CATIA Companion" at any time and at no additional cost. This license must remain effective during the whole Term of this Agreement. SOLUTION PROVIDER AGREEMENT Page 29 30 8.4 ADDITIONAL TRAINING (IF NEW DOMAIN TARGETED) Subject to the payment of the corresponding Yearly Fees and Flat Fee, for (i) any new release of an existing AP targeting a different domain than that the previous release of same AP, and for (ii) any additional AP to be developed targeting a different domain than that of previous AP(s), as defined under Section 6.2.2 above, Solution Provider will benefit from the following additional training and consulting: - a Specialized CAA V5 Training on integration's key framework corresponding to new domain targeted which is a dedicated course given at DS premises that lasts two days and is available for up to two employees of Solution Provider having attended the pre-requested training courses; and - During the early phase of development of this new release of an existing AP, a maximum of two employees of Solution Provider (having attended the pre-requested training courses) will be authorized to start developing at DS premises for up to five days during which Solution Provider may be assisted by one of DS experts for up to three days. 8.5 A LA CARTE TRAINING DS may, at Solution Provider's request, organize a training course dedicated to Solution Provider's employees and adapted to Solution Provider's needs, which financial conditions, schedule and content will be agreed upon by both parties. 9. OBLIGATIONS OF SOLUTION PROVIDER 9.1 SOLUTION PROVIDER'S OBLIGATIONS REGARDING DEVELOPMENT OF AP 9.1.1 PROCEDURE OF AGREEMENT ON ANY AP For any project of software product development contemplated by Solution Provider under this Agreement, Solution Provider will provide DS with a Preliminary Project Description according to the standard attached hereto as Exhibit F. DS will inform Solution Provider of its position regarding such PPD. If DS is interested in the contemplated project, it will inform Solution Provider of its approval, and execute the PPD. The parties will then meet to negotiate and agree on a Product Information Description, which content must comply with the provisions of Section 4.1 above. SOLUTION PROVIDER AGREEMENT Page 30 31 The parties must agree on the first AP to be developed by Solution Provider, i.e. execute the corresponding PID, within four months from the Effective Date. For any other AP(s) to be developed by Solution Provider under this Agreement, the PID must be executed by both parties within four months from DS's execution of the corresponding PPD. Neither DS's execution of any given PPD, nor its execution of any PID or amendment thereto shall grant to Solution Provider any exclusivity whatsoever with respect to the content, purpose, domain or target of either the contemplated project or the agreed upon AP. DS may develop itself, have developed or enter into agreements with any third party including any competitor of Solution Provider for the development, of any application software programs that have the same functionalities, purpose, domain or target, or that are or may be deemed similar, or that compete directly or indirectly, with AP(s) to be developed by Solution Provider under this Agreement. 9.1.2 DEVELOPMENT OF AP ACCORDING TO PID SPECIFICATIONS AND TIMEFRAME Solution Provider shall be solely responsible for initiating development of any AP and choosing the programming techniques to be used for developing its AP(s) on the basis of the CAA V5 Architecture. All AP(s) to be developed by Solution Provider pursuant to this Agreement must be developed by Solution Provider according to the timeframe set forth in the corresponding PID. The development of any AP by Solution Provider shall take place at Solution Provider's premises, except for Solution Provider's option to start developing AP(s) at DS premises pursuant to Section 8.2.2. The development of any AP shall be performed at Solution Provider's sole expenses and under its sole responsibility. 9.1.3 PROCEDURE OF ACCEPTANCE OF AP BY DS Promptly upon completion of the development of any AP or new release thereto and in any event at the latest three (3) months prior to its contemplated General Availability date, Solution Provider shall demonstrate, at DS premises, the latest version available of the AP or release thereto for DS to check compliance by Solution Provider with the specifications of the PID. DS will conduct such testing as appropriate and send a notice to inform Solution Provider of its position regarding the compliance with the specifications within one (1) month of the demonstration of such latest version of the AP. If the AP complies with the specifications, DS will inform Solution Provider that it may make it Generally Available, except for new releases of SOLUTION PROVIDER AGREEMENT Page 31 32 an existing AP where certification is required prior to GA. If the AP does not comply, Solution Provider will be required to make all necessary and appropriate changes to comply with the specifications of the PID and will have no right to make Generally Available or otherwise promote or distribute the AP until compliance with the specifications of the PID has been confirmed by written notice by DS. 9.1.4 DEMONSTRATION LICENSE ON AP FOR THE BENEFIT OF DS GROUP Solution Provider shall grant to DS up to twenty worldwide, temporary, non-exclusive and royalty free licenses for Term of this Agreement to use, execute, reproduce and display (i) each AP developed under this Agreement as well as (ii) each computer software program of Solution Provider pre-requested by such AP, in Object Code form, for the purpose of performing demonstrations of the AP to any third parties. 9.2 SOLUTION PROVIDER'S OBLIGATIONS REGARDING MARKETING OF AP(S) Notwithstanding the marketing assistance granted by DS to Solution Provider under Section 11 below, Solution Provider is exclusively responsible for the marketing, distribution, licensing, support and maintenance of its AP(s). However, Solution Provider must generally keep DS informed of the conduct of its projects and business relationships with customers of AP(s) in relation with such AP(s). Any advertisement, announcement or other communication on any media whatsoever regarding this Agreement or the appointment of Solution Provider as Partner in the CATIA V5 Galaxy Program, as well as regarding the AP(s) referring to the CAA V5 or CATIA V5 Products is subject to DS's prior written review for the first year as of the Effective Date. Thereafter, DS will be entitled to review such documents and Solution Provider undertakes to proceed with any reasonable correction requested by DS at Solution Provider's costs. Solution Provider is free to set its public prices for the sale, licensing, maintenance and support of its AP(s). Solution Provider shall charge reasonable prices consistent with industry practices. Solution Provider shall apply that price which it has provided to DS in the Business and Marketing Plan then in force and inform DS prior to any variation thereto. 9.2.1 PROMOTION AND MARKETING OBLIGATIONS OF SOLUTION PROVIDER Each AP must be made Generally Available by Solution Provider at the latest six months after the effective date of its PID. Any new release of an existing AP must be made Generally Available within six months from the effective date of the corresponding amendment to PID, unless the applicable PID provides differently. SOLUTION PROVIDER AGREEMENT Page 32 33 For each AP to be marketed under this Agreement, Solution Provider must at least annually provide to DS a Business and Marketing Plan according to the standard attached hereto as Exhibit H and providing for those information identified in the standard Business and Marketing Plan for the following one year period of time. Business and Marketing Plans must be provided to DS for the first time at the latest three (3) months prior to the contemplated General Availability date of any AP (or new release thereto) and thereafter at least once per year during the month of January of every calendar year. At least twice per calendar year, Solution Provider shall inform DS in writing on the actions conducted under the then current Business and Marketing Plan and results thereto. Solution Provider shall use its reasonable commercial efforts to promote, market and distribute the AP(s) and to generate sales of the AP(s). Solution Provider agrees, in addition to any other actions necessary or appropriate to fulfil such obligation, to do the following: (a) include all APs in its catalogue(s) of software products and use at least the same level of quantitative and qualitative advertisement and marketing as that used by Solution Provider for other products in its catalogue; (b) actively promote the AP(s) including without limitation by attending trade shows, by attending the CATIA Users shows organized by DS, at least once per calendar year in two of the Territories at Solution Provider's discretion, and by using any suitable means of marketing the AP(s) customarily used by software editors selling similar products; (c) continuously and consistently use the "Dassault Systemes Partner" logotype and "CAA V5 Certified" logotype, in compliance with the provisions respectively of Section 3.2 and 10.3; (d) maintain a fully trained and adequate sales organization capable of active solicitation of sales of the AP(s); (e) maintain adequate facilities and trained personnel to distribute, maintain and support the AP(s); (f) handle all customer inquiries, quotations and orders promptly and efficiently and; (g) carry out and/or attend all marketing assistance tools and events provided by DS under Section 11 of this Agreement. 9.2.2 WARRANTY AND SUPPORT OBLIGATIONS OF SOLUTION PROVIDER Solution Provider is exclusively responsible for the installation, support and maintenance of its AP(s) to their customers and users. Solution Provider shall provide all necessary and appropriate technical support and warranty support to the customers and users of its AP(s) to whom licenses on the AP(s) were granted, at its exclusive risks and costs. SOLUTION PROVIDER AGREEMENT Page 33 34 In addition to any other action necessary or appropriate to fulfil its obligation, Solution Provider shall provide appropriate levels of sales, technical and warranty support to end users of AP(s) in order to assure satisfactory installation, operation, support and maintenance of the AP(s). 9.2.3 EXCLUSIVE LIABILITY OF SOLUTION PROVIDER Solution Provider will bear all warranties and liabilities vis-a-vis the customers and users of its AP(s). Solution Provider shall make no representations or warranties on behalf of DS, including on the appropriate operation of the AP(s) with its pre-requested CATIA Product(s), and must include in all licenses granted on its AP(s) an express waiver by licensee of any claim or action on any ground whatsoever against DS. Solution Provider shall defend and hold DS harmless against any and all such claims, actions or else from any customer or user of Solution Provider's AP(s). 10. CERTIFICATION OF AP Any AP(s) developed by Solution Provider under this Agreement must have successfully undergone the certification process within one year from its first General Availability. Subsequent releases of any AP must have undergone certification process and have been certified before their GA. The AP, or any subsequent release thereto, will be subject to the certification process to check its compliance with the certification criteria. The certification criteria, procedure and schedule of certification will be further agreed upon for each AP or release thereto, and shall be documented by a duly executed written supplement to this Agreement to be attached as an Exhibit hereto. 10.1 CERTIFICATION CONDITIONS AND CRITERIA The certification process is set forth to control the quality and user friendliness of the AP, as well as the rapidity of development of the AP and regularity of its upgrades and releases. Various tests shall be conducted to check the compliance of the AP (or any release thereto) with the certification criteria which will include without limitation criteria relating to the packaging, graphical user interface, functionality, performances, data model, code quality, reliability and installation of the AP (or release thereto). 10.2 CERTIFICATION PROCEDURE The certification procedure will consist in an initial phase of auto-certification by Solution Provider to conduct the testing identified to check compliance of the AP (or release thereto) with the certification criteria. SOLUTION PROVIDER AGREEMENT Page 34 35 Once Solution Provider has successfully checked such compliance, Solution Provider shall send to DS the latest pre-release of the AP (or any release thereto) for DS to conduct such necessary testing. It is only once DS has successfully checked such compliance that the parties shall meet at DS premises to conduct the final certification of the latest pre-release of the AP or of new release(s) of any AP, which will be that made GA. 10.3 BENEFIT OF "CAA V5 CERTIFIED" LOGOTYPE Once the final certification of any AP or release thereto has been granted, and subject to the continuous compliance of Solution Provider with the above conditions and criteria regarding that AP or release, Solution Provider will be authorized to use, reproduce and display on that AP or release thereto a "CAA V5 Certified" logotype, under the conditions set forth below. Failure to comply with these conditions and criteria entitles DS to enjoin the loss of certification under Section 22.3.1 (a) below. To that effect, DS grants to Solution Provider a worldwide limited right and license to use, display and reproduce the "CAA V5 Certified" logotype to which DS has exclusive title and ownership, exclusively on the AP or release that has been finally certified. This right and license to use the "CAA V5 Certified" logotype is revocable, non-exclusive, worldwide and free of charge. It is not assignable and it cannot be sublicensed or otherwise transferred. No further right to use or display the "CAA V5 Certified" logotype is hereby granted to Solution Provider. Solution Provider shall neither modify the "CAA V5 Certified" logotype, nor use it when communicating on any products other than the AP or release that has been finally certified. The specific design and use instructions of the "CAA V5 Certified" logotype will be described in a specific document which to be provided by DS and that will be attached as an exhibit to this Agreement. DS may at any time and at its discretion change the design of the "CAA V5 Certified" logotype, its use instructions, and/or any other provision of the Graphic Chart relating to the "CAA V5 Certified" logotype. DS will inform Solution Provider of any such change with three (3) month notice prior to providing Solution Provider with the amended Graphic Chart or amendment thereto to be complied with any new AP or new release of an AP at the latest within three (3) month from receipt of such amended Graphic Chart of amendment thereto. Solution Provider must at all times during the Term of this Agreement use and display the then current version of the "CAA V5 Certified" logotype and comply with the Graphic Chart then in force. DS is entitled to review the content and quality of the use, display and/or reproductions of the "CAA V5 Certified" logotype by Solution Provider. DS is SOLUTION PROVIDER AGREEMENT Page 35 36 entitled to request that Solution Provider provides it with a list and/or samples of all communication medias and tools on which the "CAA V5 Certified" logotype is enclosed and proceeds with any correction without delay promptly upon receipt of DS's written notification, at Solution Provider's exclusive costs. The authorization to use the "CAA V5 Certified" logotype does not constitute or imply any specific endorsement by a party of the other party products and/or services. 11. MARKETING SUPPORT 11.1 INITIAL MARKETING SUPPORT Upon the Effective Date of this Agreement, DS and Solution Provider will agree on the content and schedule of a DS press release to be published and made available on DS's web site, with quotes from both parties regarding the execution of this Agreement and contemplated developments. Solution Provider will be listed among new DS's partners in the CATIA V5 Galaxy Program on DS web site with a link to Solution Provider's website. Solution Provider will further be mentioned in DS's publications, at DS's discretion. 11.2 CONTINUOUS MARKETING SUPPORT Prior to the General Availability of any AP(s), DS will assist Solution Provider by reviewing and/or advising Solution Provider on the specification sheets and related marketing materials (demos, CDs etc.) as well as Business and Marketing Plans or any other marketing or communication plans. Subject to its compliance with the terms of this Agreement, Solution Provider will benefit from the following: - "Dassault Systemes Partner" logotype as indicated under Section 3.2 above, - Web banners (such as for instance direct connection on Solution Provider's website to DS website or DS banner on Solution Provider's website), - Support and assistance in reviewing Solution Provider's press release announcing availability of AP and/or new release of AP, - Detailed description of Solution Provider and its AP(s) on DS's website, - Attendance to User Association Meetings (CAA booth may be proposed), - Attendance to Trade Show(s) (presence in DS booth may be proposed), - Assistance in drafting and/or publication of article in CAA News or other publication related directly or indirectly to DS. As partner in the CATIA V5 Galaxy Program, Solution Provider will be given the opportunity to participate in promotional events and/or trade fairs possibly organized by DS for its partners or attended by DS with some of its partners, at preferred conditions if applicable. Solution Provider will bear all costs relating to the SOLUTION PROVIDER AGREEMENT Page 36 37 attendance of such events and/or trade fairs, including advertising costs and other expenses occurred to participate and costs of lodging and transportation for those of its employees or representative attending such events and/or trade fairs. 11.3 MARKETING SUPPORT FOR "CAA V5 CERTIFIED" AP(S) Upon certification of any AP, or release of an AP, Solution Provider will benefit from: - A DS press release on the CAA V5 certification of its AP(s), - Promotions in User Galaxy available with CATIA's CD, if any and when applicable, - Additional assistance in the setting up of meetings with customers or DS sales force, - Preferred attendance (in priority) at DS events, - Mailing to customers. 12. INFORMATION EXCHANGES Information disclosed under this Agreement may include technical data, know-how, software specifications, software performance, or any other information relevant to the performance of this Agreement. All communications between the parties are subject to the terms and conditions of the Confidential Non Disclosure Agreement, reference 01344A2000GRUP, entered into by the parties on November 14, 2000. 13. RESTRICTIONS TO SOLUTION PROVIDER'S ACTIVITY Because Solution Provider benefits from various financial incentives, technical and marketing training from DS under the CATIA V5 Galaxy Program at preferred rates, and in order to maintain a strong degree of cooperation and dedication between the parties, it is essential to this Agreement that Solution Provider shall not compete with DS, as set forth below. Also, because Solution Provider is given access to methodologies, technologies, know-how, ideas, concepts and/or expressions contained in, or expressed through, CAA V5 and CATIA V5 Products and related products and services supplied by DS under this Agreement which are of a strategic importance to DS, it is essential to this Agreement that Solution Provider does not enter into any transaction that may result in their direct or indirect transfer, except as authorized herein. SOLUTION PROVIDER AGREEMENT Page 37 38 13.1 RESTRICTIONS ON SOLUTION PROVIDER'S ACTIVITY In view of the above, except as otherwise agreed in writing with DS, Solution Provider undertakes not to: (a) Use and/or license the AP as a software component (i.e. to be used as a toolkit by and/or embedded into another software application product or software middleware product); and/or (b) Use, adapt or modify, in any manner, or have used, adapted or modified all or part of any AP, or prepare or have prepared derivatives works based upon said AP, or use or have used, in any manner the APIs licensed under the Agreement, or use or have used in any manner the know-how and/or trade secrets related to the DS Group products and/or CAA V5 Architecture, in order to make or have made or participate to make: (i) an interface or integration between any DS Group Product(s) and any product(s) of any third party without the AP(s) being a prerequisite thereto, and/or (ii) a software product or middleware product that allows or facilitates such an interface and/or integration without the AP(s) being a prerequisite thereto, and/or (iii) a product or any other access enabling the user of any CAD/CAM/CAE (Computer Aided Design / Computer Aided Manufacture / Computer Aided Engineering), PDM (Product Data Management), Digital Manufacturing, Data Modeling or Network Computing software product(s) to read, understand, and/or use any data or model generated by any DS Group Product(s) without the AP(s) being a prerequisite thereto. 13.2 NON-COMPETE COVENANT In view of the above, during the Term of this Agreement and for one (1) after its termination for any reason whatsoever, Solution Provider undertakes not to (i) develop, manufacture, market, offer and/or distribute or have developed, manufactured, marketed offered and/or distributed, and/or participate in the development, manufacturing of any software application program interoperating with any CATIA V5 Product(s) which functionalities or purpose are similar to those of any AP(s) and/or (ii) more generally, to use the notoriety of the DS Group or of the DS Group Products and/or its designation as solution provider under this Agreement, to actively promote the sale of computer software products other than the AP(s). SOLUTION PROVIDER AGREEMENT Page 38 39 13.3 PRIOR INFORMATION During the Term of this Agreement, Solution Provider shall send written notice to DS of its intent: (i) to participate to any program similar to the CATIA V5 Galaxy Program that could be set up by any third party, prior to entering into such program, and/or (ii) to develop, manufacture, market, offer and/or distribute or have developed, manufactured, marketed, offered and/or distributed, any computer software program(s) which functionalities or purpose is similar to that of any then existing DS Group Product, prior to starting such development, manufacture, marketing, offering and/or distributing. 13.4 BREACH BY SOLUTION PROVIDER Failure to comply with any of the sub-Sections 13.1 or 13.2 is a material breach of this Agreement by Solution Provider and entitles DS to immediately terminate this Agreement without notice, as set forth in Section 22.3.2 below. 14. CHANGE OF CONTROL Solution Provider must inform DS prior to, or immediately upon information of, any change of its control including without limitation any material modification of the controlling parties and/or of the management structure of Solution Provider, by sending a written notice to DS. A declaration by Solution Provider regarding its controlling parties and management structure upon the Effective Date is attached hereto as Exhibit I. The written notice sent by Solution Provider to DS must include a description of the new or contemplated change(s) including without limitation all information available to Solution Provider regarding the transaction(s) involved, the contemplated or new controlling party, the contemplated or new officers or directors, etc. DS will send a written notice to Solution Provider to inform the latter on its position with respect to such change. Should DS consider, in its discretion, that the contemplated or new controlling party is a direct or indirect Competitor or that the new or contemplated change raises other confidentiality, strategy or regulatory issue, Solution Provider shall organize a meeting with the contemplated or new controlling party, within one (1) month of the receipt of the notice sent by DS to inform Solution Provider of its position, for DS to discuss with the contemplated or new controlling party, the opportunity and conditions of continuation of this Agreement, if any. DS will be entitled to subject the continuation of this Agreement to express written guarantees from both Solution Provider and the contemplated or new controlling party that no access whatsoever be given to methodologies, technologies, know-how, ideas, concepts and expressions contained in, or expressed through, CAA V5 and CATIA V5 Products and related services supplied by DS to Solution Provider, including without limitation, by exclusively dedicating those of Solution Provider's employees involved in the performance of this Agreement to this performance with the exclusion of any SOLUTION PROVIDER AGREEMENT Page 39 40 involvement in any other activity, assignment or task of Solution Provider and/or for the benefit of the contemplated or new controlling party. In the absence of written agreement between DS, Solution Provider and the contemplated or new controlling party, within one month (1) from the date of their initial meeting, on mutually reasonable terms guaranteeing DS's interests, DS will be entitled to terminate this Agreement as of right and without legal proceedings as set forth under Section 22.4 below. 15. OWNERSHIP 15.1 TITLE TO AP(S) AND ASSOCIATED WRITTEN MATERIALS Subject to DS's rights and title under Section 15.2 below, all ownership and title in AP(s) and associated written materials, including, without limitation reports, programs, manuals, listings and any other documentation, whether in Object Code or not, authored or developed by Solution Provider under this Agreement, shall rest exclusively with Solution Provider, with Solution Provider having the right to obtain, and hold in its own name, copyright, patent registrations of inventions or discoveries, or such other protection as may be available, and any extension thereof, on any AP(s). Subject to the provisions of this Agreement, Solution Provider shall retain all marketing rights on any AP(s) and shall be free to use, have used, market, either directly or through distributors or agents, sell, lease or otherwise license said AP(s). 15.2 TITLE TO CAA V5 PRODUCT(S) AND CATIA V5 PRODUCT(S) AND ASSOCIATED WRITTEN MATERIALS CAA V5 Products and CATIA V5 Products and associated written materials, including without limitation reports, programs, manuals, listings and any other documentation, whether in Object Code or not, are and will remain the exclusive property of DS. All copyrights, patents or other intellectual property rights applicable thereto as well as to derivative works, and/or to other materials, products or services supplied by DS to Solution Provider under this Agreement, shall rest exclusively with DS, with DS having the exclusive right to obtain and hold in its own name, copyright, patent registrations of inventions or discoveries, or such other protection or intellectual property right as may be available, and any extension thereof. Solution Provider shall preserve and reproduce any copyright, patent and/or trademark notices which may appear in the Licensed Product(s) and associated Documentation and on all copies thereof, whether in whole or part. Solution Provider recognizes that the methodologies, technologies, know-how, ideas, concepts and expressions contained in, or expressed through, CAA V5 Products, CATIA V5 Products and Licensed Products are proprietary information of DS and are disclosed to Solution Provider subject to an obligation of confidentiality and non-disclosure as set forth in Section 12 above. SOLUTION PROVIDER AGREEMENT Page 40 41 16. PATENT AND COPYRIGHT INDEMNIFICATION 16.1 INDEMNIFICATION BY DS DS will defend Solution Provider from and against any and all claims that a Licensed Product delivered under this Agreement infringes (a) any copyright of a country signatory of the Bern Convention or (b) any European, United States of America or Canadian patent, provided that the allegedly infringed patent is registered as of the date of the Licensed Product's delivery to Solution Provider. This commitment is conditioned upon Solution Provider (i) providing DS with immediate written notice of the claim; (ii) giving DS sole control of the defense to the claim including settlement negotiations if any; and (iii) providing at its costs reasonable cooperation in the defense against the claim. Under this commitment, DS will indemnify and hold Solution Provider harmless from and against the payment of (i) any damages awarded by any competent court by way of a final decision, (ii) any settlement indemnity agreed upon by Solution Provider with DS's prior written approval and according to DS's express written instructions and (iii) reasonable attorneys fees if any, to the exclusion of any other payment whatsoever. If operation of a Licensed Product becomes, or in DS's reasonable opinion, is likely to become the subject of an infringement claim, Solution Provider shall permit DS, at DS's option and expense, either to secure for Solution Provider the right to continue using the Licensed Product or to modify it, or to replace it with another computer program which is functionally equivalent. If neither of the foregoing options is available on terms which are reasonable, Solution Provider shall destroy or return said Licensed Product, and all copies thereof, to DS within one (1) month from DS's written request. In such a case, DS will grant Solution Provider a credit for that portion of the Yearly Fee paid for this Licensed Product for the last twelve month period. DS shall have no obligation with respect to any claim based upon any modification of Licensed Products by anyone other than DS, or arising from use of Licensed Products in combination with items, data or programs not supplied by DS, or use of any release of Licensed Product other than the most recent release made available by DS. 16.2 INDEMNIFICATION BY SOLUTION PROVIDER Solution Provider will defend DS from and against any and all claims that any AP infringes (a) any copyright of a country signatory of the Bern Convention or (b) any European, United States of America or Canadian patent, provided that the allegedly infringed patent is registered as of the date of the AP's delivery to DS. This commitment is conditioned upon DS (i) providing Solution Provider with immediate written notice of the claim; (ii) giving Solution Provider sole control of the defense to the claim including settlement negotiations if any; and (iii) providing at its costs reasonable cooperation in the defense against the claim. Under this commitment, SOLUTION PROVIDER AGREEMENT Page 41 42 Solution Provider will indemnify and hold DS harmless from and against the payment of (i) any damages awarded by any competent court by way of a final decision, (ii) any settlement indemnity agreed upon by DS with Solution Provider's prior written approval and according to Solution Provider's express written instructions and (iii) reasonable attorneys fees if any, to the exclusion of any other payment whatsoever. If operation of an AP becomes, or in Solution Provider's reasonable opinion, is likely to become the subject of an infringement claim, DS shall permit Solution Provider, at Solution Provider's option and expense, either to secure for DS the right to continue using the AP or to modify it, or to replace it with another computer program which is functionally equivalent. If neither of the foregoing options is available on terms which are reasonable, DS shall destroy or return said AP, and all copies thereof, to Solution Provider within one (1) month from Solution Provider's written request. Solution Provider shall have no obligation with respect to any claim based upon any modification of the AP by anyone other than Solution Provider, or arising from use of the AP in combination with items, data or programs not supplied by Solution Provider, or use of any release of AP other than the most recent release made available by Solution Provider. 17. WARRANTY AND DISCLAIMER OF WARRANTY 17.1 FOR AP(S) DEVELOPED BY SOLUTION PROVIDER 17.1.1 WARRANTY For any AP(s) developed pursuant to this Agreement, Solution Provider represents and warrants that such AP(s) conforms to the specifications set forth in the corresponding PID when used in accordance with the terms set forth in the provisions of said PID, provided that said AP(s) are properly used in the operating environment in which they are designed to operate as set forth in their associated Documentation. Solution Provider represents and warrants (i) the originality of any AP developed under this Agreement as well as any release of such AP and (ii) that neither any portion of any AP, nor the use of any AP, violates any patent, trade secret, trademark, copyright or any other similar intellectual property right that belong to any third party. Solution Provider represents and warrants to DS the originality of any Preliminary Project Description submitted to DS for its review hereunder and that such PPD will be free from any claim of infringement of any patent, trade secret, trademark, copyright or other intellectual property right or protection. SOLUTION PROVIDER AGREEMENT Page 42 43 17.1.2 DISCLAIMER OF WARRANTY SOLUTION PROVIDER HEREBY DISCLAIMS ANY AND ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. SOLUTION PROVIDER DOES NOT WARRANT EITHER THAT ANY AP WILL BE ERROR FREE OR THAT ALL DEFECTS WILL BE CORRECTED. 17.2 FOR LICENSED PRODUCTS AND OTHER MATERIALS, PRODUCTS AND SERVICES SUPPLIED BY DS 17.2.1 LIMITED WARRANTY Solution Provider shall have exclusive responsibility for (a) the selection of the Licensed Product(s) to achieve its intended results, (b) the installation of each Licensed Product selected, (c) taking adequate measures to properly test, operate and use each Licensed Product and (d) results obtained therefrom. Solution Provider shall also have exclusive responsibility for selection, use and results of any other programs or programming equipment or services used in connection with the Licensed Product(s). DS warrants that Licensed Products will materially conform to their published specifications (or to its reference documentation if the Licensed Product is an API), for three (3) month following delivery to Solution Provider, provided that they are properly used in the operating environment as specified by DS. If the Licensed Product does not comply with this warranty, upon written notice of such non-compliance, DS will attempt to make the Licensed Product perform as warranted. If after sixty (60) days from notice of the non-conformance, DS has not provided a conforming Licensed Product, Solution Provider shall be entitled to cancel the license to the non-conforming Licensed Product and request a license on another CAA V5 or CATIA V5 Product as the case may be at no additional cost or obtain a refund of that portion of the Yearly Fee paid for this Licensed Product for the last twelve month period. This warranty does not apply if any Licensed Product has been (i) modified or altered by Solution Provider, (ii) abused or misapplied, or (iii) used in an operating environment other that for which it is designed to operate as set forth in its associated Documentation. DS does not warrant that the functions contained in the Licensed Products will meet Solution Provider's requirements or will enable it to attain the objectives Solution Provider has set for itself, or that they will operate in the combination which may be selected for use by Solution Provider, or that the operation of the Licensed Products will be uninterrupted or error free, or that all defects will be corrected. SOLUTION PROVIDER AGREEMENT Page 43 44 17.2.2 DISCLAIMER OF WARRANTY THE EXPRESS WARRANTY STATED IN SECTION 17.2.1 ABOVE IS IN LIEU OF ALL OTHER WARRANTIES, WHETHER EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR USE AND ANY IMPLIED BY LAW WARRANTY AGAINST HIDDEN DEFECTS. 18. LIMITATION OF LIABILITY 18.1 LIMITATION OF SOLUTION PROVIDER'S LIABILITY EXCEPT FOR CLAIMS FOR PERSONAL INJURY OR DEATH AND EXCEPT AS SET FORTH IN SECTION 16.2 ABOVE, SOLUTION PROVIDER SHALL NOT BE HELD LIABLE TO DS FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE DAMAGES, INCLUDING WITHOUT LIMITATION, LOSS OF USE AND/OR DATA, LOSS OF PROFITS, REVENUES, SAVINGS, GOODWILL AND/OR OTHER ECONOMIC DAMAGES, WHETHER BASED IN CONTRACT, NEGLIGENCE, TORT, STRICT LIABILITY OR OTHER THEORY OF LIABILITY, ARISING OUT OF, OR IN CONNECTION WITH, OR IN ANY WAY RELATING TO THE SUBJECT MATTER OF THIS AGREEMENT, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. 18.2 LIMITATION OF DS'S LIABILITY EXCEPT FOR CLAIMS FOR PERSONAL INJURY OR DEATH AND EXCEPT AS EXPRESSLY SET FORTH IN SECTION 16.1 ABOVE, DS'S POTENTIAL LIABILITY TO SOLUTION PROVIDER, INCLUDING ITS SUCCESSORS AND BENEFICIARIES, FOR ANY AND ALL CLAIMS IN ANYWAY ARISING OUT OF OR IN CONNECTION WITH THE SUBJECT MATTER OF THIS AGREEMENT, WHETHER BASED IN CONTRACT, NEGLIGENCE, TORT, STRICT LIABILITY OR OTHER THEORY OF LIABILITY IS LIMITED AS FOLLOWS: - ALL LEGAL ACTIONS AGAINST DS MUST BE FILED WITH THE COMPETENT COURT WITHIN TWO (2) YEARS AFTER THE CAUSE OF ACTION HAS ARISEN AND WAS KNOWN OR SHOULD HAVE BEEN KNOWN BY SOLUTION PROVIDER. - DS'S LIABILITY FOR DIRECT DAMAGES SHALL NOT EXCEED THE GREATER OF THIRTY THOUSAND DOLLARS (US$ 30,000) OR THE AMOUNT OF THE YEARLY FEE(S) PAID OVER THE LAST TWELVE MONTH PERIOD FOR THOSE PRODUCTS AND/OR SERVICES WHICH CAUSED THE DAMAGES. SOLUTION PROVIDER AGREEMENT Page 44 45 - SOLUTION PROVIDER EXPRESSLY AND IRREVOCABLY WAIVES ANY AND ALL CLAIMS FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE DAMAGES, INCLUDING WITHOUT LIMITATION, LOSS OF USE AND/OR DATA, LOSS OF PROFITS, REVENUES, SAVINGS, GOODWILL AND/OR OTHER ECONOMIC DAMAGES, WHETHER BASED IN CONTRACT, NEGLIGENCE, TORT, STRICT LIABILITY OR OTHER THEORY OF LIABILITY, ARISING OUT OF, OR IN CONNECTION WITH, OR IN ANY WAY RELATING TO, THIS AGREEMENT, THE LICENSED PRODUCT(S) OR ASSOCIATED DOCUMENTATION, OR ANY OTHER PRODUCTS OR SERVICES SUPPLIED BY DS TO SOLUTION PROVIDER HEREUNDER, WHETHER OR NOT DS HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES AND NOTWITHSTANDING THE FAILURE OF THE ESSENTIAL PURPOSE OF ANY REMEDY. 19. COORDINATORS Each party will name a Managing Technical Coordinator and a Managing Business Coordinator who will be responsible for managing its activities under this Agreement, including without limitation, the initiation of any project of development, the definition of any AP, the validating and signing of the corresponding PPD and PID, the development of such AP, the conduct of the procedure of certification, the parties' cooperation as partners in the CATIA Galaxy Program during both the initialization and the follow-up phases. The Managing Technical Coordinators will be in charge of all technical matters including without limitation all aspects of the definition, development and certification of the AP(s) and sharing the parties' respective vision and strategy, while the Managing Business Coordinators will be in charge of the business aspects of the relationships. The Managing Technical and Business Coordinators may be assisted respectively by a Technical Coordinator and a Business Coordinator. Upon execution of this Agreement, the Managing Technical and Business Coordinators and Technical and Business Coordinators are: For Solution Provider : Managing Technical Coordinator: Dick Sowar Technical Coordinator: Denise Raven Managing Business Coordinator: Ron Zabilski Business Coordinator: Doug Hughes SOLUTION PROVIDER AGREEMENT Page 45 46 For DS: Managing Technical Coordinator: Severin Lanfranchi Technical Coordinator: Francois Riche Managing Business Coordinator: Florence Morache Business Coordinator: Frederic Vacher Each party shall give advance written notice in case of replacement of either of its Managing Technical or Business Coordinators. The Managing Technical and Business Coordinators of DS and of Solution Provider shall meet periodically to discuss planned and/or recommended ongoing and future actions regarding development and/or marketing of any AP(s), new release(s) and more generally any and all issues possibly arising from the performance of this Agreement. 20. RELATIONSHIP OF THE PARTIES The relationship between DS and Solution Provider shall be that of independent contractors, each party acting as a principal for its own account and at its own expense and risk. Nothing contained in this Agreement makes either party a general or special agent, joint-venturer, corporate partner or any similar relationship between Solution Provider and DS for any purpose whatsoever. Each party undertakes not to act or represent itself, directly or by implication, to be an agent of the other party. Neither party is granted any right or authority to assume or create any obligation or liability, express or implied, on behalf of, or in the name of, the other party or to bind the other party in any way or for any purpose whatsoever. 21. TERM 21.1 INDEFINITE TERM Subject to its execution by both parties, this Agreement will come into force as of its Effective Date for an indefinite Term. 21.2 TERMINATION NOTICE PERIOD Either party may terminate this Agreement by giving written notice to that effect providing for a one (1) year Termination Notice Period. SOLUTION PROVIDER AGREEMENT Page 46 47 Under this Section 21.2, the Termination Date of the Agreement, including all pending PID(s), RFL(s) and Purchase Order(s), will be the date of expiration of the one (1) year Termination Notice Period as of receipt of the termination notice. 21.3 NO COMPENSATION OR INDEMNITY Solution Provider expressly agrees that, should this Agreement be terminated under this Section 21, the one (1) year Termination Notice Period enables it to take all appropriate steps and actions to operate and conduct its business without any assistance from DS. Solution Provider therefore accepts and expressly declares that it will not be entitled to any compensation or other indemnity should this Agreement be terminated under Section 21. 22. TERMINATION In addition to the right of either party to terminate this Agreement under Section 21 above, this Agreement may be terminated in the following situations. 22.1 TERMINATION WITHOUT BREACH 22.1.1 TERMINATION FOR FAILURE TO AGREE ON FIRST AP Should the parties fail to agree on the first AP to be developed under this Agreement within four (4) month from the Effective Date, this Agreement may be terminated, as of right and without legal proceedings, by either party, by sending written notice to the other with reference to this Section 22.1.1. Under this Section 22.1.1, the Termination Date will be the date of receipt of the above written notice. 22.1.2 TERMINATION FOR ABSENCE OF ANY ACTIVITY OF SOLUTION PROVIDER DURING ANY SIX CONSECUTIVE MONTH PERIOD If at any time during the Term of this Agreement, no AP(s) are being either developed, marketed or sold by Solution Provider, without breach by either party of its obligations, during a period of six (6) consecutive months, the Agreement may be terminated as of right and without legal proceedings, by either party, by sending written notice to the other with reference to this Section 22.1.2. Under this Section 22.1.2, the Termination Date will be the date of receipt of the above written notice. 22.1.3 TERMINATION BY SOLUTION PROVIDER OF ANY GIVEN AP At any time during the Term of this Agreement and in the absence of any breach by either party, Solution Provider is entitled to terminate, at its discretion, as of right and without legal proceedings, the development and/or the distribution of any given AP (referred to as the "Terminated AP") by SOLUTION PROVIDER AGREEMENT Page 47 48 sending written notice to DS. For purposes of this Section 22.1.3, the Termination Date of the PID, RFL(s) and Purchase Order(s) relating to the Terminated AP, will be the date of receipt of the above written notice. The Agreement will only be deemed terminated with regard to the Terminated AP for which the relevant provisions of Section 23 below will apply. This Agreement will remain in full force and effect in all other respects, including with respects to any other AP(s). 22.2 TERMINATION FOR BREACH BY DS If DS has failed to remedy the breach of its obligations with respect to any given AP within one (1) month of receipt of Solution Provider's written notice to cure, Solution Provider will be entitled to terminate the PID, RFL(s) and Purchase Order(s) corresponding to that AP only (referred to as the "Terminated AP"). If DS has failed to remedy the breach of its obligations with respect to the whole Agreement, within one (1) month of receipt of Solution Provider's written notice to cure, then only will Solution Provider be entitled to terminate this whole Agreement. Solution Provider will terminate the PID, RFL(s) and Purchase Order(s) corresponding to the Terminated AP or of the Agreement, as the case may be, as of right and without legal proceedings, by sending a written termination notice. For purposes of this Section 22.2, the Termination Date of (i) the PID, RFL(s) and Purchase Order(s) of the Terminated AP or (ii) the Agreement, as applicable, will be, at Solution Provider's discretion, either the expiration of (a) a six (6) month period as of receipt by DS of the termination notice or (b) the remaining term of licenses pending for the Terminated AP (i.e. following 31st of January), or the longest of (a) and (b) in the absence of choice by Solution Provider. In case of termination of the PID, RFL(s) and Purchase Order(s) of any Terminated AP, the Agreement will only be deemed terminated with regard to that Terminated AP, and will remain in full force and effect in all respects with regards to any other AP(s). 22.3 TERMINATION FOR BREACH BY SOLUTION PROVIDER 22.3.1 TERMINATION OF ANY GIVEN AP If Solution Provider has failed to remedy the breach of its obligations with respect to any given AP (referred to as the "Terminated AP") within one (1) month of receipt of DS's written notice to cure, DS will be entitled to, at its discretion, either (i) enjoin the loss of the CAA V5 certification of the Terminated AP or (ii) terminate the PID, RFL(s) and Purchase Order(s) corresponding to the Terminated AP. SOLUTION PROVIDER AGREEMENT Page 48 49 (a) LOSS OF CAA V5 CERTIFICATION Within one (1) month of the receipt by Solution Provider of the notice of loss of certification of the Terminated AP, Solution Provider will at its exclusive costs: - delete the "CAA V5 Certified" logotype from the Terminated AP and; - inform its customers in writing with respect to the loss of certification of such Terminated AP. Within six (6) month of the receipt by Solution Provider of the notice of loss of certification of the Terminated AP, Solution Provider will be required to take all appropriate steps and actions including any modification or enhancement of the Terminated AP in order to obtain for the Terminated AP to be re-certified within that six month time period according to the procedure set forth in Section 10 above. In the absence of such certification with the above six (6) month notice period, DS will be entitled to terminate the PID, RFL(s) and Purchase Order(s) relating to the Terminated AP as set forth in paragraph (b) below. (b) TERMINATION OF AP DS will terminate the PID, RFL(s) and Purchase Order(s) corresponding to the Terminated AP, as of right and without legal proceedings, by sending a written termination notice, if Solution Provider has failed to remedy such breach within the above one (1) month cure period. Under this Section 22.3.1, the Termination Date of the PID, RFL(s) and Purchase Order(s) relating to the Terminated AP will be the date of expiration of a one (1) month period as of receipt by Solution Provider of the notice of termination. 22.3.2 TERMINATION OF THE AGREEMENT DS will be entitled to terminate the Agreement under this Section 22.3.2, if Solution Provider has failed to remedy its breach within one (1) month of receipt of DS's written notice to cure, in the following instances: - in case of breach by Solution Provider of its general obligations under this Agreement, including without limitation of the general conditions & criteria of the CATIA V5 Galaxy Program set forth in Section 3.1 above; - in case of repeated breaches under Section 22.3.1 above, and/or SOLUTION PROVIDER AGREEMENT Page 49 50 - in case of material breach by Solution Provider. For purposes of this Section, will be deemed a material breach by Solution Provider, any breach of Sections 5, 6, 13.1, 13.2 and/or 14, as well as any other serious breach impeding or altering the cooperation between the parties under this Agreement. (a) PROPOSAL OF DESIGNATION AS "MEMBER" IN CATIA V5 GALAXY PROGRAM DS will be entitled to, at its discretion, include in the termination notice a proposal to Solution Provider to remain in the CATIA V5 Galaxy Program, with the status of "Member" and the associated financial and other conditions, provided however that Royalties will remain due on any sales of APs as set forth under Section 6.3 above. If DS at its discretion makes a proposal to Solution Provider to remain in the CATIA V5 Galaxy Program, such proposal will be subject to the parties coming to an agreement and executing the membership agreement then in force within the three (3) month notice period set forth above. In the absence of execution of a membership agreement, this Agreement including all pending PID(s), RFL(s) and Purchase Order(s) will terminate as set forth in paragraph (b) below. (b) TERMINATION OF THE AGREEMENT The Agreement, including all pending PID(s), RFL(s) and Purchase Order(s), will terminate, as of right and without legal proceedings, upon expiration of a three (3) month period as of receipt by Solution Provider of the termination notice sent by DS. Under Section 22.3.2, the Termination Date of this Agreement will be the date of expiration of the three (3) month Termination Notice Period. 22.4 TERMINATION FOR CHANGE OF CONTROL This Agreement may be terminated, as of right and without legal proceedings, by DS in case of change of control as set forth under Section 14 above. The Agreement including any PID(s), RFL(s) and Purchase Order(s) thereunder shall terminate automatically upon receipt of a written notice referring to this Section (the "Termination Date" under this Section 22.4). SOLUTION PROVIDER AGREEMENT Page 50 51 23. CONSEQUENCES OF TERMINATION 23.1 DURING TERMINATION NOTICE PERIOD The following provisions will apply during the Termination Notice Period if any. 23.1.1 PENDING LICENSES (a) TERMINATION OF AN AP In case of termination of an AP, all licenses on Licensed Product(s) relating to the Terminated AP in force upon receipt of the termination notice of the Terminated AP will remain in full force and effect, and, if need be, will be renewed by DS so as to remain effective, until the Termination Date. DS will NOT grant any license to Solution Provider on additional, new or different CAA V5 and/or CATIA V5 Product(s), except for AP(s) other than the Terminated AP if applicable. (b) TERMINATION OF THE AGREEMENT In case of termination of this Agreement, all licenses on Licensed Product(s) in force upon receipt of the termination notice will remain in full force and effect, and, if need be, will be renewed by DS so as to remain effective, until the Termination Date. DS will NOT grant any license to Solution Provider on additional, new or different CAA V5 and/or CATIA V5 Product(s). (c) TERMINATION FOR BREACH BY SOLUTION PROVIDER In case of termination of an AP or of this Agreement for breach by Solution Provider under Section 22.3, Solution Provider will not benefit from any support and maintenance under Section 5.1.6 on those licenses which will remain in force during the Termination Notice Period. Furthermore, (i) all amounts payable under this Agreement shall become immediately due upon receipt of the notice of termination (ii) DS will be entitled to suspend any further delivery of licenses or other products or services to Solution Provider hereunder until the default is cured by Solution Provider and (iii) DS shall be entitled to proceed by court action or file any claim in order to enforce performance of this Agreement and/or recover damages for breach by Solution Provider of this Agreement. 23.1.2 MARKETING AND DISTRIBUTION OF AP(s) In case of termination of either any Terminated AP or this Agreement, Solution Provider will be entitled to continue the marketing and distribution of any AP(s) (including any Terminated AP) to its customers. SOLUTION PROVIDER AGREEMENT Page 51 52 However, because Solution Provider will not benefit from any maintenance and support under Section 5.1.6 as of the Termination Date, it cannot guarantee to its customers the compatibility of the AP(s) licensed to its customers, or of the Terminated AP as the case may be, with new release(s) of any pre-requested CATIA V5 Product(s) and shall take all appropriate actions vis-a-vis its customers in this respect, including without limitation, a mandatory information in writing with copy to DS, at any time during the Termination Notice Period, on the absence of maintenance, support and guarantee of compatibility as of the Termination Date. In case of termination of either any Terminated AP or this Agreement, Solution Provider will not benefit from any marketing support from DS under Section 11 above, respectively for the Terminated AP or for all AP(s). Royalties will be due under Section 6.3 on all and any sales of AP(s). 23.2 UPON THE TERMINATION DATE 23.2.1 EXPIRATION OR TERMINATION OF LICENSES Upon the Termination Date of either (i) the PID, RFL(s) and Purchase Order(s) relating to a Terminated AP or (ii) this Agreement, for any reason whatsoever, all licenses granted by DS to Solution Provider in relation to the Terminated AP or under this Agreement, as applicable, that are still pending will terminate or expire, and DS will be entitled to cancel any unfilled RFL(s) or Purchase Order(s), whether accepted or not. Within one (1) month after the Termination Date of any Terminated AP or of this Agreement, for any reason whatsoever, Solution Provider shall certify in writing that all copies of Licensed Products which license is terminated or has expired, and associated Documentation, have been destroyed or returned to DS. 23.2.2 FEES, ROYALTIES AND OTHER AMOUNTS DUE TO DS The Subscription Fee, Yearly Fees, Flat Fees, Royalties and other fees or charges accrued prior to the Termination Date of any Terminated AP or of this Agreement for any reason whatsoever will become immediately payable. Solution Provider will not be entitled to (i) any reimbursement of the Subscription Fee, Yearly Fees, Flat Fees, Royalties or other fees or charges possibly paid to DS prior to the Termination Date and (ii) any compensation of any damage or loss possibly suffered or expenses or costs possibly incurred in relation with the termination of the Terminated AP or this Agreement. SOLUTION PROVIDER AGREEMENT Page 52 53 In no event shall DS be liable for any costs, expenses, or other economic or financial loss, arising out of or in connection with the termination or discharge of Solution Provider's employees or agents as a direct or indirect result of termination of any Terminated AP or this Agreement. 23.2.3 SALE OF AP(S) As of the Termination Date, Solution Provider remains entitled to continue the marketing and distribution of the AP(s) (including any Terminated AP) to its customers, at its exclusive risks and costs. Royalties are due under Section 6.3 on all and any sales of AP(s), except in case of termination for material breach by DS, and Solution Provider must comply with the reporting provisions of Section 6.3.3. 23.2.4 DELETION OF "CAA V5 CERTIFIED" LOGOTYPE Solution Provider will only be entitled to maintain the "CAA V5 Certified" logotype on that certified release of any AP in force upon the Termination Date, and shall not use, reproduce or display the "CAA V5 Certified" logotype on any further release of the AP which may be issued after the Termination Date. In case of termination of a Terminated AP or of this Agreement for breach by Solution Provider, Solution Provider must, within ten (10) days from the Termination Date and at its exclusive costs, delete the "CAA V5 Certified" logotype from all AP(s). 23.2.5 DELETION OF "DASSAULT SYSTEMES PARTNER" LOGOTYPE Within ten (10) days after the Termination Date of this Agreement, Solution Provider shall cease production and/or distribution and return to DS or destroy, at DS's discretion, all signs, literature, logos, documentation and other materials on which the "Dassault Systemes Partner" logotype appears or otherwise identifying DS. 24. GOVERNING LAW This Agreement shall be governed by, and construed in accordance with, the Laws of the State of New York, applicable to contracts executed in and to be performed entirely within that state (without regard to the conflicts of Law provisions thereof). This Agreement shall not be governed by the U.N. Convention on Contracts for the International Sale of Goods. SOLUTION PROVIDER AGREEMENT Page 53 54 25. JURISDICTION The parties hereto hereby agree to (a) submit to the exclusive jurisdiction of any court of competent jurisdiction sitting in the State of Delaware, The City of Wilmington for the purpose of any Action arising out of or relating to this Agreement brought by any Party hereto, and (b) agree, to the fullest extent permitted by applicable law, to waive, and not to assert by way of motion, defense, or otherwise, in any such Action, any claim that is not subject personally to the jurisdiction of the above-named courts, that its property is exempt or immune from attachment or execution, that the Action is brought in an inconvenient forum, that the venue of the Action is improper, or that this Agreement may not be enforced in or by any of the above-named courts. EACH OF THE PARTIES HERETO HEREBY WAIVES TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY WITH RESPECT TO ANY ACTIONS OR PROCEEDINGS DIRECTLY OR INDIRECTLY ARISING OUT OF, UNDER OR IN CONNECTION WITH THIS AGREEMENT, OR THE TRANSACTIONS CONTEMPLATED HEREBY OR THEREBY. 26. EXPORT AND RE-EXPORT LAWS AND REGULATIONS Export to Solution Provider of Licensed Product(s) and associated Documentation(s) is subject to all applicable French, European Union, United States of America and other originating country's export and re-export laws and regulations and, in particular, French regulations concerning the Verification of Final Destinations. Solution Provider shall provide DS with all reasonably necessary assistance related to applications for such authorizations, licenses and other approvals, or other documentation related to the export or re-export of Licensed Products. Solution Provider shall not export or re-export, directly or indirectly, Licensed Products (including any part of a Licensed Product or any direct product of such Licensed Product) or associated Documentation, or confidential information or technical data related thereto, into any of those countries referred to by any applicable French, European Union, United States of America or other originating country's export and re-export laws and regulations as "prohibited or restricted" countries, or into any other country to which such exports or re-exports may be restricted (collectively, the "Prohibited Countries"), unless and until Solution Provider has obtained the appropriate export or re-export authorization, license or other approval from the competent authorities. Solution Provider further agrees not to supply, provide or otherwise communicate the Licensed Product(s) (including any part of a Licensed Product or any direct product of such Licensed Product), or associated Documentation, or related confidential information or technical data related thereto, to any person if Solution Provider has reason to believe that such person intends to export, re-export or otherwise transfer the same to, or use the same in, any of the Prohibited Countries. Solution Provider agrees to seek reasonable written assurances in the form of binding covenants from its customers of AP(s) as may from time to time be requested by DS. SOLUTION PROVIDER AGREEMENT Page 54 55 Generally, Solution Provider shall not commit any act which would, directly or indirectly, violate any of the laws and regulations referred to above. In addition to any indemnity under this Agreement, Solution Provider shall indemnify and hold DS harmless from and against any and all claims, damages and liabilities asserted by any person or entity against DS, directly or indirectly resulting from, or arising out of, a breach of this Section 26 by Solution Provider or any of its customers. 27. NOTICES All notices required or permitted under this Agreement shall be in writing, in English language, and shall be sent (i) by registered or certified mail, postage prepaid, with return receipt requested or (ii) by express international courier (DHL, Federal Express, etc.), to the parties' addresses as set forth below or such other address as either party may designate to the other by notice sent as hereby requested. When feasible, a copy of any such notice shall also be transmitted by facsimile. Notices to Solution Provider: PlanetCAD Inc. 2520 55th Street, Suite 200 Boulder, CO 80301 U.S.A. Attn. Managing Technical Coordinator and Managing Business Coordinator Fax No: 1 (303) 209 92 00 Notices to DS: Dassault Systemes 9, Quai Marcel Dassault BP 310, 92156 Suresnes Cedex France Attn. Managing Technical Coordinator and Managing Business Coordinator Fax No: (33) 1 40 99 41 41 Such notices will be deemed received upon the third (3rd) day following the mailing or delivery to the post or express international courier carrier, as the case may be. SOLUTION PROVIDER AGREEMENT Page 55 56 28. MISCELLANEOUS 28.1 FORCE MAJEURE Neither party shall be held liable for any loss, injury, delay, expenses, damages or other casualty suffered or incurred by the other party, as a result of its failure to fulfill any obligation under this Agreement, where such failure arises out of or in relation with any causes beyond its reasonable control including without limitation: Acts of God, fires, storms, floods, earthquakes, acts of war, governmental acts or other laws or regulations, strikes, lockouts, labor disputes, or export or re-export regulations and formalities. 28.2 NO SALE, TRANSFER, ASSIGNMENT OR SUBCONTRACT Neither party shall sell, transfer, assign or subcontract any right or obligation under this Agreement without the prior written consent of the other party, including without limitation, as part of any sale, transfer or assignment, of all or part of the business to which all or part of this Agreement pertains. If approved in writing by the other party, any such sale, transfer, assignment or subcontract is conditioned upon the first party guaranteeing the obligations, responsibilities and liabilities of its purchaser, transferee, assignee or subcontractor. However, DS is entitled to sell, transfer, assign or subcontract all or part of this Agreement to any company of the DS Group, without notice to Solution Provider and without consent of Solution Provider. 28.3 SEVERABILITY To the fullest extent possible each provision of this Agreement shall be interpreted in such fashion as to be effective and valid under applicable law. Should any provision(s) of this Agreement be found invalid, illegal, void or unenforceable by any competent authority in any respect, the remaining provisions of this Agreement shall remain in full force and effect and be binding with the same effect as if the invalid, illegal, void or unenforceable provision(s) was originally deleted. 28.4 ENTIRE AGREEMENT With the exception of the CNDA, this Agreement including the PID(s), RFL(s) and Purchase Order(s) duly accepted and other exhibits, amendments or supplements thereto, embodies the complete and exclusive agreement between the parties and supersedes all proposals, or prior agreements, understandings, representations, purchase order(s) or communications, whether oral or written, in respect of the subject matter thereof. SOLUTION PROVIDER AGREEMENT Page 56 57 28.5 AMENDMENT TO AGREEMENT This Agreement shall not be modified or amended except by way of a written agreement referred to as an amendment to this Agreement and duly signed by authorized officers of both Solution Provider and DS. 28.6 CONFIDENTIALITY ON AGREEMENT During the Term of this Agreement, each party will use its best efforts not to disclose the terms and conditions of this Agreement to any third party without the prior written consent of the other party, except as provided for herein, as required by law or governmental regulations, requirements or orders, or as may be necessary to establish or assert its rights hereunder before any competent court. 28.7 IRREPARABLE INJURY Each party acknowledges and agrees that each covenant in this Agreement pertaining to confidential information and/or ownership of intellectual property is reasonable and necessary to protect and preserve the rights of the other party in its confidential information and/or intellectual property, and that any breach by such party of the terms of this Agreement may result in irreparable injury to the other party. Each party, therefore, subject to a claim of laches, estoppel, acquiescence or other delay in seeking relief, consents and agrees that the other party shall be entitled to seek and obtain a temporary restraining order and a permanent injunction to prevent a breach or contemplated breach of this Agreement and waives any requirement that the other party post a bond in connection with seeking such injunctive relief. 28.8 NON-WAIVER The failure or delay of either party in exercising or enforcing any right, remedy or other provision under this Agreement shall not operate as, or be construed to be, a waiver of such right, remedy or provision which may be exercised or enforced at any time thereafter. 28.9 COUNTERPARTS This Agreement as well as all PID(s), RFL(s), Purchase Order(s) and other exhibit, supplements and amendments thereto, will be executed in two copies, each of which shall be deemed an original and all of which together shall constitute one instrument. SOLUTION PROVIDER AGREEMENT Page 57 58 28.10 SURVIVING PROVISIONS The parties agree that the following Sections shall survive the expiration or termination of this Agreement for any reason whatsoever: Section 6 -- Financial Consideration, Section 7 -- Payment, Section 12 -- Information Exchanges, Section 13 -- Restrictions to Solution Provider's Activity, Section 15 -- Ownership, Section 16 -- Patent and Copyright Indemnification, Section 17 -- Warranty and Disclaimer of Warranty, Section 18 -- Limitation of Liability, Section 23 -- Consequences of Termination, Section 24 -- Governing Law, Section 25 -- Competent Court, Section 26 -- Export and Re-export Laws and Regulations and Section 28 - Miscellaneous. IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed by their duly authorized officers as of the date last written below. SOLUTION PROVIDER DASSAULT SYSTEMES /s/ R. Bruce Morgan /s/ Thibault de Tersant --------------------------- --------------------------- SIGNATURE SIGNATURE NAME: R. Bruce Morgan Thibault de Tersant TITLE: Chief Executive Officer Executive Vice President DATE: November 14, 2000 DATE: November 14, 2000 SOLUTION PROVIDER AGREEMENT Page 58 EX-99.1 11 d82148ex99-1.txt PRESS RELEASE 1 EXHIBIT 99.1 Spatial Technology Inc. Changes Name to PlanetCAD Inc. and Announces Sale of Component Software Division BOULDER, Colo.--(BUSINESS WIRE)--Nov. 14, 2000--Spatial Technology Inc./PlanetCAD (AMEX:STY)(Nasdaq:DASTY): Divestiture Increases Focus On Growth Market Areas in the Manufacturing Supply Chain Spatial Inc. (AMEX:STY), the world's leading developer of Web-hosted engineering application services and interoperability solutions for manufacturers, today announced that it has changed its name to PlanetCAD Inc. and has completed the sale of its Component Software Division to Dassault Systemes. The company, now known as PlanetCAD(TM), will focus on its proprietary Web-based services and enterprise solutions that streamline the flow and communication of engineering data throughout the manufacturing supply chain. The company will change its AMEX ticker symbol from "STY" to "PCD" to reflect the name change. The company changed its name to PlanetCAD in connection with the sale of its Component Software Division to France-based Dassault Systemes (Nasdaq:DASTY), a premier developer of design and engineering software. Under the terms of the deal, the Component Software Division retained the name Spatial and became an indirect, wholly owned subsidiary of Dassault Systemes. The company's PlanetCAD Division was not sold in the transaction and continues to operate as an independent company under the name PlanetCAD Inc. "PlanetCAD's expertise in developing and selling Web-based interoperability solutions for the manufacturing supply chain, along with its focus on enterprise solutions, will be a powerful combination for success," said Bernard Charles, president of Dassault Systemes. "Our growing relationship with PlanetCAD will help us provide our customers with state-of-the-art solutions for engineering data interchange." PlanetCAD will continue to develop its relationships with both Dassault Systemes and Dassault Systemes' new Spatial subsidiary under a number of cross-licensing agreements. Under these agreements: -- PlanetCAD will have a perpetual source code license agreement for Spatial's component technologies. -- PlanetCAD and Spatial will share the intellectual property rights to Spatial's healing and translation technologies, and will jointly develop and enhance those technologies. 2 -- Dassault Systemes plans to resell Enterprise versions of PlanetCAD Web services. -- PlanetCAD will provide Dassault Systemes with a co-branded version of its 3Dshare.com Web service for CAD model interoperability for use on Dassault Systemes' Web sites worldwide. -- Dassault Systemes and PlanetCAD will cooperate to bring advanced applications from Dassault to the PlanetCAD.com Web site as new customer services. "One of the biggest benefits of this agreement is the ongoing relationship PlanetCAD will enjoy with Dassault Systemes," said Bruce Morgan, president and CEO of PlanetCAD. "Dassault Systemes is the premier developer of process centric CAD/CAM/CAE software in the world. As such, we believe it is the best home for Spatial's Component Software Division because it has the resources and commitment to develop those products and services. Dassault Systemes will also be a strategic partner for PlanetCAD in the development, distribution and marketing of our new generation interoperability products and Web services." In addition to its relationships with Dassault Systemes and Spatial, PlanetCAD has established partnerships with other well-respected companies in the industry, including Tecnomatix, SAIC, CAD/CAM Publishing, Alibre and CADKey. PlanetCAD's July 2000 acquisition of Prescient Technologies Inc. added the respected PrescientQA(R) suite of quality assurance products to PlanetCAD's family of interoperability products and services. "PlanetCAD's innovative use of Web technology will facilitate the process of connecting customers with service bureaus in the fast-paced world of rapid prototyping and custom manufacturing," said Bruce Okkema, president of Eagle Design & Technology Inc. "Through online quoting and data exchange, we will be able to offer our services to a much broader base than we would normally have access to. It will be much easier for the engineering community to quickly connect with the service providers they need." PlanetCAD started as a division of Spatial Technology Inc. in January 2000, following successful research and development proving the viability of Internet technology to streamline the flow of engineering data throughout manufacturing processes. The sale of the Component Software Division means that PlanetCAD will now have resources to focus entirely on its growing business areas, working from an already established customer base for enterprise solution sales. In addition, the PlanetCAD.com Web site, which was launched in June 2000, has already signed up more than 9,000 registered users, and has four engineering application services available. The Enterprise and Web services combine to offer customers a powerful set of options for the movement of engineering data reflecting their requirements for security, availability and affordability. 3 "PlanetCAD helps make my company's injection molding, tool design and tool production services seamless," said Christopher Brizes, president of Royal Plastics Inc. "Our customers can provide data in any format they choose, and I can take the data with very little interpretation or translation and manipulate it into any other format, all without owning actual CAD software." PlanetCAD develops and offers Web- and enterprise-hosted application services designed to accelerate the flow of design data through the manufacturing supply chain. PlanetCAD has developed proprietary technologies that enable the rapid delivery, distribution and hosting of complex engineering software services across the Internet. Among those services are: -- 3Dshare(TM) -- provides online translation and repair of 3D CAD models to streamline the flow of engineering data between organizations regardless of the installed CAD systems. -- Bits2PARTS(TM) -- streamlines the communication and data transmission process between manufacturers and rapid prototyping service bureaus across the Web. -- DesignQA(TM) -- reduces costly design errors, accelerates time-to-market and improves the product development process. -- DriveQA(R) -- acquires, summarizes, analyzes, reports and depicts engineering quality metrics. -- CertifyQA(TM) -- ensures that CAD models achieve an acceptable quality level before being made ready for revision or use. -- Quote-A-Part(TM) -- generates fast and accurate cost estimates for machined parts. -- 3Dpublish(TM) -- enables online, automated capture of high-resolution 2D graphics from 3D CAD models. -- IntraVISION(R) -- provides enterprise-wide or Internet access to all major 2D and 3D product data for viewing, markup, measuring, and converting more than 300 file formats. About PlanetCAD Inc. PlanetCAD develops and delivers Web-hosted and enterprise-based application services, and e-commerce sites for streamlining engineering data interchange throughout the digital manufacturing supply chain. PlanetCAD's application services include the PrescientQA(R) design-quality engineering software suite, which reduces costly design errors, accelerates time-to-market, 4 and improves the product development process; 3Dshare.com(TM) (www.3dshare.com), which provides online translation and repair of 3D CAD models to streamline the flow of engineering data between organizations regardless of installed CAD systems; 3Dpublish.com(TM) (www.3dpublish.com), for the online, automated capture of high-resolution 2D graphics from 3D CAD models; and Bits2PARTS(TM) (www.bits2parts.com), an e-commerce service that streamlines the communication and data transmission process between manufacturers and rapid prototyping service bureaus across the Web; and IntraVISION(R), which enables viewing, markup, measuring and converting of more than 300 CAD file formats over the Internet without downloading. PlanetCAD is headquartered in Boulder, Colo. and has offices in Boston and the United Kingdom. For more information, visit www.planetcad.com, or call 888/319-0871. Statements made in this news release that are not historical facts may be forward-looking statements. Actual results may differ materially from those projected in any forward-looking statement, and any projections related to 3Dhare.com and PlanetCAD.com may be significantly different than those predicted by the company. There are a number of important factors that could cause actual results to differ materially from those anticipated by any forward-looking information. A description of risks and uncertainties attendant to the company and its industry, and other factors which could affect the company's financial results, are included in the company's Securities and Exchange Commission filings, including, but not limited to, the company's annual report on Form 10-KSB for the year ended December 31, 1999. PlanetCAD, 3Dshare.com, 3Dpublish.com, Bits2Parts, and PlanetCAD Connect are trademarks of PlanetCAD Inc. IntraVISION and Prescient QA are registered trademarks. All other products are trademarks of their respective owners. CONTACT: PlanetCAD, Boulder Rachael Dalton-Taggart, 303/209-9252 rachael.taggart@planetcad.com or PlanetCAD Public Relations: Metzger Associates Bill Tompkins, 303/786-7000 bill@metzger.com or PlanetCAD Investor Relations: Pfeiffer Public Relations Geoff High, 303/393-7044 geoff@pfeifferpr.com or PlanetCAD UK Public Relations: Practical PR David Allen, 44 (0) 171-328-1991 practicalpr@cix.co.uk -----END PRIVACY-ENHANCED MESSAGE-----