IBM_Joint Development Agreement_RevisedTHE CITY OF
DUB1JE MEMORANDUM
Masterpiece on the Mississippi
BARRY LINDA
CITY ATTORNE
To: Mayor ftoy D. Buol and
MembeKs of the City Council
DATE: April 14, 2010
RE: Joint Development Agreement between the City of Dubuque, Iowa and
International Business Machines Corporation
At the April 12, 2010 City Council meeting the City Council approved the Joint
Development Agreement between the City of Dubuque, Iowa and International Business
Machines Corporation relating to the electric energy Prototype Service. The Agreement
was signed by the Mayor.
Following the City Council meeting, there was a non - material change made to Section
4.2 of the Agreement. The Agreement was then countersigned by International
Business Machines Corporation.
Under the revised Section 4.2, IBM grants to the City the right to sublicense the
progress reports and the summary report identified in Appendix A to the Iowa Power
Fund and to Interstate Power and Light Company for the Iowa Power Fund and
Interstate Power and Light Company to use, reproduce and distribute internally and
externally. The revised Section 4.2 also eliminates the reference to confidentiality of
that information since that information is public record.
The Mayor should initial and date Section 4.2 on the revised Joint Development
Agreement.
I would request that you approve the attached revised Joint Development Agreement
and ratify the Mayor's signature of the revised Agreement.
BAL:tls
Attachment
cc: Michael C. Van Milligen, City Manager
Cindy Steinhauser, Assistant City Manager
David Lyons, Project Manager
F: \USERS \tsteckle \Lindahl \IBM Power Fund -AMI Pilot ProjectWlayorCouncil_ RevisedJointDevelopmentAgreement _041410.doc
OFFICE OF THE CITY ATTORNEY DUBUQUE, IOWA
SUITE 330, HARBOR VIEW PLACE, 300 MAIN STREET DUBUQUE, IA 52001 -6944
TELEPHONE (563) 583 -4113 / FAx (563) 583 -1040 / EMAIL balesq @cityofdubuque.org
License No. W105986
JOINT DEVELOPMENT AGREEMENT
Agreement No. W1055610
This Joint Development Agreement ("Agreement") is between City of Dubuque, Iowa,
with an address at 50 W. 13s' Street, Dubuque, IA 52001 ("City"), and International
Business Machines Corporation, a New York corporation, through its T. J. Watson
Research Center, with a location at 1101 Kitchawan Road, Route 134, Yorktown Heights,
NY 10598 ("IBM").
WHEREAS, IBM would like to work on developing a prototype service using Web
portals to access the prototype service running on IBM servers, that would allow City
management and electric utility customers to monitor electric energy consumption on a
near real-time basis in order to better control and reduce the consumption of electric
energy ("Prototype Service"); and
WHEREAS, City is willing to provide funding for the project subject to approval of the
project by the Iowa Power Fund; identify volunteers among its residents to participate in
this project; work with City energy company, Interstate Power and Light Company (an
Alliant Energy company) ("IPL"), on the installation of smart meters with two-way
communication capability necessary for the project; provide the volunteers' energy
consumption data to IBM in an anonymized form ("Data"), interface with the volunteers
to answer questions about the Prototype Service, work with IBM to analyze the results,
and provide IBM with feedback on the results ("Feedback"); and
WHEREAS, IBM is willing to work on developing the software tools for collecting,
updating and processing the Data provided by the volunteers participating in the project
for use for the Prototype Service ("Tools"); provide written reports to City on the
progress and results of the project; and demonstrate the Prototype Service to City and
other Iowa government agencies as agreed by the parties;
NOW, THEREFORE, for good and valuable consideration as stated herein, City and
IBM agree as follows:
1.0 Scope of Work
1.1 The scope of work for the project is as described in Appendix A, Statement of
Work.
1
1.2 All components of the Prototype Service, the Tools, and the Feedback will be
owned by IBM and will be considered IBM Confidential Information in
accordance with the provisions of Article 7.0.
1.3 For a period of three (3) years after the expiration of this Agreement, IBM agrees
that IBM Research will make available to any Iowa governmental entity (State,
County or Local), the Prototype Service developed under this Agreement in
accordance with terms and conditions to be agreed upon by the governmental
entity and IBM, for the sole purpose of monitoring electric energy consumption
during the term of such entity's contract with IBM. In the event the Iowa
governmental entity is not referred to IBM by City, IBM will charge the
governmental entity IBM Research's then current rates for the Prototype Service.
If the Iowa governmental entity is referred to IBM by City, IBM will not charge
the governmental entity for the Prototype Service; however, each such
governmental entity will be required to pay IBM Research for: (i) any
customizations that need to be made to the Prototype Service, and (ii) use of the
IBM Cloud Service, IBM Smarter City Sustainability Model Software, and any
other Software necessary to run the Prototype Service (including, without
limitation, IBM's Infosphere Information Server, DB2, Cognos and Websphere
Application Server), in each case, at the then current rates for IBM Research.
IBM acknowledges that City has informed IBM that it is the intent of City to enter
into an agreement with the Iowa Power Fund to allow the Iowa Power Fund to
make direct referrals to IBM of Iowa governmental entities on behalf of City for
purposes of this Article 1.3, and IBM agrees to accept such referrals as referrals by
City for purposes of this Article 1.3.
2.0 Technical Coordinators
David Lyons for City, and Milind Naphade, for IBM, are the Technical
Coordinators for this Agreement. Their responsibilities will include exchanging
information with the other party, coordinating any visits, and arranging all other
matters pertinent to this Agreement. Each party may change its Technical
Coordinator by giving written notice to the other party.
3.0 Costs and Expenses
3.1 City will pay IBM One Million Four Hundred Thousand Dollars ($1,400,000)
toward the costs of the project in accordance with the following payment
schedule:
May 10, 2010 $140,000
July 1, 2010 $210,000
2
4.0 Copyrights
October 1, 2010 $210,000
January 1, 2011 $210,000
April 1, 2011 $210,000
July 1, 2011 $210,000
October 1, 2011 $210,000
TOTAL $1,400,000
These payments are nonrefundable.
3.2. Payment will be made by wire transfer to the following account:
Director of Licensing
International Business Machines Corporation
PNC Bank
500 First Avenue
Pittsburgh, PA 15219
Bank Account Number: 1017306369
ABA Routing Number: 043000096
3.3 The License Reference Number shown on the first page of this Agreement must
be included in all communications, including wire transfer payments, tax credit
certificates, letters, faxes and e -mail messages pertaining to the payments made
under Article 3.1.
3.4 IBM will be entitled to late payment fees on payments due but not received within
thirty (30) days after the due date. Late payment fees are defined as the lesser of
one percent (1 %) of the amount due, compounded each subsequent thirty (30) day
period that payments remain unpaid, or the highest rate permitted by law.
3.5 City will bear and pay all taxes (including, but not limited to, sales, property and
value added taxes) imposed by any governmental entity of any country in which
City is doing business as the result of the existence of this Agreement or the
exercise of rights hereunder, except that City will not be liable for any taxes based
on IBM's net income. Taxes paid by City will not be deducted from or credited
against payments due IBM.
4.1 "Software" means computer programs, computer program changes, computer
program enhancements, and/or any documentation related to computer programs.
3
The parties agree that no Software will be delivered by either party to the other
party under this Agreement.
4.2 IBM grants to City an irrevocable, nonexclusive, worldwide and fully paid -up
license to use, reproduce and distribute internally, any copyrightable materials
other than Software furnished or developed by IBM under this Agreement. In
addition, IBM grants to City the right to sublicense the Progress Reports and the
Summary Report identified in Appendix A to the Iowa Power Fund, for the Iowa
Power Fund to use, reproduce and distribute internally, subject to the
confidentiality provisions of Article 7.0 below, and to the provisions of Article
9.10.
4.3 City grants to IBM an irrevocable, nonexclusive, worldwide, and fully paid -up
license for any copyrightable materials other than the Data and Software,
furnished or developed by City under this Agreement. This license includes the
right to use, execute, display, reproduce, perform, disclose, prepare derivative
works from, and distribute and transmit (internally and externally) such
copyrightable materials and their derivative works and to sublicense others to do
any or all of the foregoing.
City grants to IBM an irrevocable, nonexclusive, worldwide, and fully paid -up
license to use, reproduce and distribute the Data furnished by the City under this
Agreement: (i) as necessary to perform the work described in Appendix A of this
Agreement; (ii) to demonstrate the Prototype Service to third parties; (iii) to
publish the results of the work under this Agreement in scientific journals, and
periodicals, and in conference papers and presentations; and (iv) for internal use
for research purposes. IBM may not sublicense the Data to any third party.
IBM will not take ownership interests in the Data or in any other copyrightable
materials other than the Feedback, furnished or developed by City under this
Agreement.
5. Inventions
5.1 "Invention" means any idea, design, concept, technique, invention, discovery or
improvement, whether or not patentable, conceived or first reduced to practice
solely by one or more employees of a party hereto ( "Sole Invention "), or jointly by
one or more employees of one party with one or more employees of the other party
( "Joint Invention "), in the performance of work under this Agreement.
5.2 Each party will promptly provide to the other party a written description of each
Invention. The other party agrees to delay making public, by publication or
otherwise, until the earlier of (1) the first filing of a patent application claiming the
Invention by the owning party or (2) six months after the date the Invention is
4
disclosed to the other party, for any Invention for which the disclosing party has
decided, or is in the process of deciding, to seek patent protection.
5.3 Any Sole Invention will be the property of the inventing party, subject to a license
hereby granted to the other party of the scope set forth in Article 5.4 for such Sole
Invention and all patents issued on it. Any Joint Invention will be jointly owned,
and title to all patents issued on it will be joint, all expenses (including those
related to preparation, prosecution and maintenance) will be jointly shared (except
as provided below), and each party will have the right to license and assign its
ownership interest in the joint patent to third parties without need for consent
from or accounting to the other party. Where one party elects not to share equally
in the expenses for a Joint Invention, the other party will have the right to seek or
maintain such protection for such Joint Invention at its own expense and will have
full control over its preparation, prosecution and maintenance, even though title to
any issuing patent will be joint.
5.4 All licenses granted to City and IBM under this Article 5 will be worldwide,
irrevocable, nonexclusive, nontransferable, and fully paid -up, and will include the
right to make, have made, use, have used, lease, sell, offer to sell, import and /or
otherwise transfer any product, and to practice and have practiced any method.
All licenses granted to City and to IBM in this Article 5 will include the right of
the grantee to grant revocable or irrevocable sublicenses to its Subsidiaries, such
sublicenses to include the right of the sublicensed Subsidiaries correspondingly to
sublicense other Subsidiaries.
5.5 "Subsidiary" will mean a corporation, company, or other entity;
i. more than 50% of whose outstanding shares or securities (representing the
right to vote for the election of directors or other managing authority) are,
now or hereafter, owned or controlled, directly or indirectly, by a party
hereto, but such corporation, company, or other entity will be deemed to be a
Subsidiary only so long as such ownership or control exists; or
ii. which does not have outstanding shares or securities, as may be the case in a
partnership, joint venture or unincorporated association, but more than 50%
of whose ownership interest representing the right to make the decisions for
such corporation, company or other entity is now or hereafter, owned or
controlled, directly or indirectly, by a party hereto, but such corporation,
company or other entity will be deemed to be a Subsidiary only so long as
such ownership or control exists.
6.0 Term and Termination
6.1 This Agreement will begin on the date it is signed by the last signatory ( "Effective
Date "), and end twenty (20) months later, unless terminated earlier by either party
5
as provided in Article 6.2 or 6.3 below; provided, however, because City's
participation in this project is subject to approval by the Iowa Power Fund, in the
event such approval is not granted by April 30, 2010, as of May 1, 2010, this
Agreement will become null and void ab initio.
6.2 City may terminate this Agreement at the end of any calendar quarter with written
notice to IBM sent not less than thirty (30) days prior to the end of that quarter, on
condition that City pay IBM the payment due at the beginning of the next calendar
quarter commencing after the effective date of the termination.
6.3 IBM may terminate this Agreement at the end of any calendar quarter with written
notice to City sent not less than thirty (30) days prior to the end of that quarter.
7.0 Confidentiality
7.1 "IBM Confidential Information" means the Feedback, and any technical
information about the Prototype Service and the Tools.
7.2 For five (5) years from the date of disclosure, City agrees to hold IBM
Confidential information in trust and confidence for IBM. City will limit
disclosure of the IBM Confidential Information to those of its employees who
have a need to know it. City will use IBM's Confidential Information only for
the purposes of this Agreement.
7.3 Disclosure of Confidential Information will not be precluded if the disclosure is
required by law, but City will give IBM reasonable notice to allow IBM an
opportunity to obtain a protective order. The obligations of Article 7.2 above will
not apply to information that is: (a) already in the possession of City without
obligation of confidence; (b) independently developed by City; (c) publicly
available, or becomes publicly available through no fault of City; (d) disclosed by
IBM without obligation of confidence; or e) disclosed with the permission of
IBM.
7.4 Each party agrees that the disclosure of its Confidential Information pursuant to
this Agreement does not limit the assignment or reassignment of the other party's
employees.
7.5 Notwithstanding any provision in this Agreement to the contrary, City may
provide any reports provided to City by IBM under this Agreement to the Iowa
Office of Energy Independence, and to other governmental entities in Iowa. In
addition, IBM agrees that the Iowa Office of Energy Independence and the Iowa
Utilities Board may have unrestricted access to all City records for purposes of
evaluating the work performed under this Agreement.
6
8.0 Representations, Warranties, Disclaimers, Indemnification and Limitation of
Liability
8.1 City will be solely responsible for the collection of the Data, and for determining
what Data may and will be provided to IBM under this Agreement.
8.2 City represents and warrants that it has all necessary third party consents to
provide the Data to IBM, and to permit IBM to use the Data as provided in this
Agreement. City further represents and warrants that it has anonymized the Data
delivered to IBM to an extent sufficient to ensure that a person without prior
knowledge of the original Data and its collection cannot, from the anonymized
Data and other publicly available information, deduce the personal identity of the
Data subjects.
8.3 Except as provided in Article 8.2, NEITHER PARTY MAKES ANY
WARRANTY, EXPRESS OR IMPLIED, CONCERNING COPYRIGHTABLE
MATERIALS, INVENTIONS, PROTOTYPES, DATA, INFORMATION, OR
OTHER DELIVERABLES SUPPLIED UNDER THIS AGREEMENT, WHICH
ARE ALL PROVIDED "AS IS." EACH PARTY EXPLICITLY DISCLAIMS
THE WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE, AND ANY WARRANTY OF NON -
INFRINGEMENT OF ANY THIRD PARTY'S PATENTS, COPYRIGHTS, OR
ANY OTHER INTELLECTUAL PROPERTY RIGHT.
8.4 EACH PARTY ALSO SPECIFICALLY DISCLAIMS ANY WARRANTY
REGARDING ANY PROTOTYPE(S) WHICH MAY BE DEVELOPED
PURSUANT TO THIS AGREEMENT INCLUDING THAT ANY
PROTOTYPE(S) WILL MEET ANY DEVELOPMENT OBJECTIVES, OR
ANY REQUIREMENTS OF EITHER PARTY. EACH PARTY WILL MAKE
GOOD FAITH EFFORTS TO COMPLETE THE ACTIVITIES UNDER THE
STATEMENT OF WORK. FAILURE TO COMPLETE SUCH ACTIVITIES
DOES NOT CONSTITUTE BREACH OF CONTRACT.
8.5 City will defend and indemnify IBM and IBM's Subsidiaries if a third party
makes a claim against IBM or its Subsidiaries based on an actual or alleged breach
of City's representations and warranties set forth in Article 8.2.
8.6 Except for claims arising out of Article 7.0, and indemnification obligations
arising under Article 8.5, neither party will be liable for any consequential
damages, lost profits, lost savings, loss of anticipated revenue, or any exemplary,
punitive, special or indirect damages, even if advised of their possibility. IBM's
total cumulative direct damages will not exceed a cumulative total of One
Hundred Thousand Dollars ($100,000).
7
9.0 General Provisions
9.1 Each party is an independent contractor. Neither party is, nor will claim to be, a
legal representative, partner, franchisee, agent or employee of the other. Neither
party will assume or create obligations for the other.
9.2 Except as otherwise provided herein, this Agreement does not confer any rights to
use in advertising, publicity or other marketing activities any name, trade name,
trademark, or other designation of either party hereto, including any contraction,
abbreviation, or simulation of any of the foregoing, without prior written
agreement, and each party agrees not to use or refer to this Agreement or its terms
in any such activities without the express written approval of the other party.
9.3 All notices will be in writing and will be valid if sent by: a) registered or
certified mail, return receipt requested, postage prepaid; b) by facsimile
(provided the receipt of the facsimile is evidenced by a printed record of
completion of transmission); or, c) by express mail or courier service providing a
receipt of delivery. Notice will be effective upon receipt and addressed as
follows:
IBM
Thomas J. Watson Research Center
IBM Corporation
1101 Kitchawan Road
Route 134
Yorktown Heights, NY 10598
Attn.: Manager, Business and
Government Relations
City
City of Dubuque, Iowa
50 W. 13th Street
Dubuque, IA 52001
Attn.: David Lyons
9.4 Neither party will be liable for any failure or delay in the performance of its
obligations under this Agreement if such failure or delay is due to acts of God,
acts of the other party, fire, flood, natural catastrophe, acts of any government or
of any civil or military authority, national emergencies, riots, war, insurrection,
strikes, or any occurrence beyond the reasonable control of such party.
9.5 Each party agrees to comply and to reasonably assist the other in complying with
applicable government export and import laws and regulations. Further, each
party agrees that unless authorized by applicable government license or regulation,
including but not limited to U.S. authorization, it will not directly or indirectly
export or reexport, at any time, any technology, software and/or commodities
furnished or developed under this Agreement, or any other agreement between the
parties, or its direct product, to any prohibited country (including release of
technology, software and /or commodities to nationals, wherever they may be
located, of any prohibited country) as specified in applicable export, embargo,
8
and sanctions regulations. This section will survive after termination or expiration
of this Agreement.
9.6 Except as expressly provided in this Agreement, neither party grants any licenses,
either directly or indirectly, by implication or estoppel or otherwise, to either party
under any patent, copyright or other intellectual property right of the other party.
9.7 Neither party may assign, or otherwise transfer, its rights or delegate its
obligations under this Agreement without prior written consent of the other party.
Any attempt to do so is void.
9.8 Except for claims arising out of Articles 3.0, 5.0, 7.0, or 8.5, neither party may
bring an action arising out of this Agreement, regardless of form, more than one
year after the cause of action has accrued.
9.9 Neither party relies on any promises, inducements or representations made by the
other, or expectations of more business dealings, except as expressly provided in
this Agreement.
9.10 Each party represents that it has, or will have appropriate agreements with its
employees or others whose services the party may require to enable it to comply
with all the provisions of this Agreement.
9.11 Each party may have similar agreements with others, and may design, develop,
manufacture, acquire or market competitive products and services, and conduct its
business in whatever way it chooses. Each party will independently establish
prices and terms for its products and services.
9.12 If any provision of this Agreement is held to be invalid, illegal or unenforceable,
the validity, legality and enforceability of the remaining provisions will in no way
be affected or impaired thereby so long as the intent of the parties can be
preserved.
9.13 This Agreement is governed by the laws of the State of New York, without regard
to the conflict of laws provisions thereof. Any proceedings to resolve disputes
relating to this Agreement will be brought only in a U.S. federal court if there is
federal jurisdiction over such proceeding. The parties waive the right to trial by
jury in any matter which arises under this Agreement. The United Nations'
Convention on International Sales of Goods does not apply.
9.14 Any rights and obligations which by their nature survive and continue after any
expiration or termination of this Agreement will survive and continue and will
bind the parties and their successors and assigns, until such obligations are
fulfilled.
9
9.15 This Agreement may only be amended by a writing signed by authorized
representatives of the parties. No approval, consent or waiver which alters the
terms of this Agreement will be enforceable unless signed by both parties. Failure
to insist on strict performance or to exercise a right when entitled does not prevent
a party from doing so later for that breach, or a future breach.
9.16 There are no intended third party beneficiaries to this Agreement.
9.17 This Agreement and Appendix A are the complete and exclusive agreement
between the parties regarding the subject matter hereof and supersedes any prior
oral or written communications or understandings between the parties related to
the subject matter hereof.
By signing below, the parties agree to the terms of this Agreement.
INTERNATIONAL BUSINESS CITY OF DUBUQUE, IOWA
MACHINES CORPORATION
Name: Name:
Title: Title:
Date: Date:
10
Objective
Project Description
APPENDIX A
STATEMENT OF WORK
The objective of the project is to develop a Prototype Service for near real -time
measurement of electric energy consumption that would enable electric utility customers
in City of Dubuque to better control their consumption of electricity, and generate data
that could be used for the analysis of consumption patterns for insights that could help
electric utility customers reduce their consumption.
City will identify volunteers among the electric utility customers in City to participate in
this project. These volunteers will be required to allow the installation in their business or
residence of advanced energy meters, and agree to allow their electric energy usage
information to be provided to IBM in anonymized form for use in developing the
prototype service. The community -wide metric information generated by this project can
be used by City to begin estimating consumption baselines, and the aggregated data will
also be shared with the volunteers so that they can compare and benchmark their personal
usage with that of the entire aggregated volunteer community.
IBM will develop the applications for processing and handling the Data for use by the
Prototype Service. IBM will also develop the tools required to automatically feed the
Data into the Prototype Service, and to be refreshed at an agreed upon rate, limited by the
rate at which this Data is provided to IBM. IBM will also analyze the collected Data to
identify patterns and insights that will be shared with City and the volunteers.
Responsibilities of the Parties
IBM:
1. Work on developing the Prototype Service that provides a Web portal for near
real -time integrated sustainability monitoring that would:
a. allow City management to visualize, interact, and understand the electrical
energy consumption patterns and sustainability footprint of the volunteers
participating in the project;
b. allow City and participating volunteers to visualize, interact, and
understand their electrical energy consumption patterns and sustainability
footprint in comparison with that of the other volunteers participating in
the project; and
c. provide access to participating volunteers to the consumption patterns of
other volunteers only in the aggregate, and not on an individual participant
basis.
2. Work on developing Tools to perform:
a. data processing and data management to prepare the Data and then enter it
into the Prototype Service;
b. exploratory analysis on the Data to extract consumption patterns and
insights to be shared with City management and participating volunteers;
and
c. if data is available for some volunteers from both water consumption and
electric energy consumption, work on developing tools that perform
exploratory analysis on electrical energy and water resource consumption.
3. Make available for use by IBM resources for the project the following IBM
technology:
IBM Cloud Service
IBM Smarter City Sustainability Model Software
Infosphere Information Server
DB2
Cognos
Websphere Application Server
4. Provide City with written progress reports within thirty (30) days after the end of
each calendar quarter, summarizing the work performed, the results achieved, and
the resources assigned to work on the project during the prior quarter ( "Progress
Reports ").
5. Provide a written report analyzing Citywide consumption patterns and sustainability
footprints for the participating volunteers, and summarizing the results of the project
( "Summary Report").
6. Demonstrate the Prototype Service to City and other Iowa government agencies as
agreed by the parties.
City:
1. Recruit up to one thousand (1,000) electric utility customer volunteers to participate
in the project.
2. Work with City's major electric energy supplier, IPL, to install smart meters with
two way communication capability for each of the volunteers by the end of June
2010.
3. Provide IBM with access to a data warehouse that will store electricity consumption
meter data as frequently as one reading every fifteen minutes, on an anonymized
basis.
4. Provide other available data, in an anonymized form, on the households of the
volunteers participating in the project, such as the size of the house, the number of
rooms, the number of windows and doors, the age of the house, appliances, and
family size and ages.
5. Provide personnel to interface with volunteers to answer questions about the
project, their service or their usage.
6. Work with IBM to analyze the results, and provide IBM with feedback on the
results.
Estimated Schedule
IBM will provide the following reports:
May 1, 2010 Readiness of the project, including project plan
June 1, 2010 Progress of requirements gathered
September 1, 2010 Progress made in identifying data sources, frequency of data
updates
December 1, 2010 Progress in developing tools for automated data gathering, and
warehousing from smart meters
March 1, 2011 Progress in development of the Prototype Service
June 1, 2011 Progress on end to end integration of data from the meters into the
Prototype Service
September 1, 2011 Progress of the demonstration of the Prototype Service
December 31, 2011 Project summary, included lessons learned regarding analysis of
consumption data, and insight on how the Prototype Service was
used
END
JOINT DEVELOPMENT AGREEMENT
Agreement No. W1055610
License No, W105986
This Joint Development Agreement ( "Agreement ") is between City of Dubuque, Iowa,
with an address at 50 W. 13 Street, Dubuque, IA 52001 ( "City "), and International
Business Machines Corporation, a New York corporation, through its T. J. Watson
Research Center, with a location at 1101 Kitchawan Road, Route 134, Yorktown Heights,
NY 10598 ("]BM ").
WHEREAS, IBM would like to work on developing a prototype service using Web
portals to access the prototype service running on IBM servers, that would allow City
management and electric utility customers to monitor electric energy consumption on a
near real -time basis in order to better control and reduce the consumption of electric
energy ( "Prototype Service "); and
WHEREAS, City is willing to provide funding for the project subject to approval of the
project by the Iowa Power Fund; identify volunteers among its residents to participate in
this project; work with City energy company, Interstate Power and Light Company (an
Alliant Energy company) ( "IPL "), on the installation of smart meters with two -way
communication capability necessary for the project; provide the volunteers' energy
consumption data to IBM in an anonymized form ( "Data "), interface with the volunteers
to answer questions about the Prototype Service, work with IBM to analyze the results,
and provide IBM with feedback on the results ( "Feedback "); and
WHEREAS, IBM is willing to work on developing the software tools for collecting,
updating and processing the Data provided by the volunteers participating in the project
for use for the Prototype Service ( "Tools "); provide written reports to City on the
progress and results of the project; and demonstrate the Prototype Service to City and
other Iowa government agencies as agreed by the parties;
NOW, THEREFORE, for good and valuable consideration as stated herein, City and
IBM agree as follows:
1.0 Scope of Work
1.1 The scope of work for the project is as described in Appendix A, Statement of
Work.
1
1.2 All components of the Prototype Service, the Tools, and the Feedback will be
owned by IBM and will be considered IBM Confidential Information in
accordance with the provisions of Article 7.0.
1.3 For a period of three (3) years after the expiration of this Agreement, IBM agrees
that IBM Research will make available to any Iowa governmental entity (State,
County or Local), the Prototype Service developed under this Agreement in
accordance with terms and conditions to be agreed upon by the governmental
entity and IBM, for the sole purpose of monitoring electric energy consumption
during the term of such entity's contract with IBM. In the event the Iowa
governmental entity is not referred to IBM by City, IBM will charge the
governmental entity IBM Research's then currant rates for the Prototype Service.
If the Iowa governmental entity is referred to IBM by City, IBM will not charge
the governmental entity for the Prototype Service; however, each such
governmental entity will be required to pay IBM Research for: (i) any
customizations that need to be made to the Prototype Service, and (ii) use of the
IBM Cloud Service, IBM Smarter City Sustainability Model Software, and any
other Software necessary to run the Prototype Service (including, without
limitation, IBM's Infosphere Information Server, DB2, Cognos and Websphere
Application Server), in each case, at the then current rates for IBM Research.
IBM acknowledges that City has informed IBM that it is the intent of City to enter
into an agreement with the Iowa Power Fund to allow the Iowa Power Fund to
make direct referrals to IBM of Iowa governmental entities on behalf of City for
purposes of this Article 1.3, and IBM agrees to accept such referrals as referrals by
City for purposes of this Article 1.3.
2.0 Technical Coordinators
David Lyons for City, and Milind Naphade, for IBM, are the Technical
Coordinators for this Agreement. Their responsibilities will include exchanging
information with the other party, coordinating any visits, and arranging all other
matters pertinent to this Agreement. Each party may change its Technical
Coordinator by giving written notice to the other party.
3.0 Costs and Expenses
3.1 City will pay IBM One Million Four Hundred Thousand Dollars ($1,400,000)
toward the costs of the project in accordance with the following payment
schedule:
May 10, 2010 $140,000
July 1, 2010 $210,000
2
These payments are nonrefundable.
32. Payment will be made by wire transfer to the following account:
3.3 The License Reference Number shown on the first page of this Agreement must
be included in all communications, including wire transfer payments, tax credit
certificates, letters, faxes and e-mail messages pertaining to the payments made
under Article 3.1.
3.4 IBM will be entitled to late payment fees on payments due but not received within
thirty (30) days after the due date. Late payment fees are defined as the lesser of
one percent (1 %) of the amount due, compounded each subsequent thirty (30) day
period that payments remain unpaid, or the highest rate permitted by law,
3,5 City will bear and pay all taxes (including, but not limited to, sales, property and
value added taxes) imposed by any governmental entity of any country in which
City is doing business as the result of the existence of this Agreement or the
exercise of rights hereunder, except that City will not be liable for any taxes based
on IBM's net income. Taxes paid by City will not be deducted from or credited
against payments due IBM,
4.0 Copyrights
October 1, 2010 $210,000
January 1, 2011 $210,000
April 1, 2011 $210,000
July 1, 2011 $210,000
October 1, 2011 $210.000
TOTAL $1,400,000
Director of Licensing
International Business Machines Corporation
PNC Bank
500 First Avenue
Pittsburgh, PA 15219
Bank Account Number: 1017306369
ABA Routing Number: 043000096
4.1 "Software" means computer progratns, computer program changes, computer
program enhancements, and/or any documentation related to computer programs.
3
The parties agree that no Software will be delivered by either party to the other
party under this Agreement.
4.2 IBM grants to City an irrevocable, nonexclusive, worldwide and fully paid -up
license to use, reproduce and distribute internally, any copyrightable materials
other than Software furnished or developed by IBM under this Agreement. In
addition, IBM grants to City the right to sublicense the Progress Reports and the
Summary Report identified in Appendix A to the Iowa Power Fund and to IPL, for
the Iowa Power Fund and LPL to use, reproduce and distribute internally and
externally.
4.3 City grants to IBA'I an irrevocable, nonexclusive, worldwide. and fully paid -up
license for any copyrightable materials other than the Data and Software, furnished
or developed by City under this Agreement. This license includes the right to use,
execute, display. reproduce. perform, disclose, prepare derivative works from, and
distribute and transmit (internally and externally) such copyrightable materials and
their derivative works and to sublicense others to do any or all of the foregoing.
City grants to IBM an irrevocable, nonexclusive, worldwide, and fully paid -up
license to use, reproduce and distribute the Data furnished by the City under this
Agreement: (i) as necessary to perform the work described in Appendix A of this
Agreement; (ii) to demonstrate the Prototype Service to third parties: (iii) to
publish the results of the work under this Agreement in scientific journals, and
periodicals, and in conference papers and presentations; and (iv) for internal use
for research purposes. IBM may not sublicense the Data to any third party.
IBM will not take ownership interests in the Data or in any other copyrightable
materials other than the Feedback. furnished or developed by City under this
Agreement.
5. Inventions
5.1 "Invention" means any idea, design, concept, technique, invention, discovery or
improvement, whether or not patentable, conceived or first reduced to practice
solely by one or more employees of a party hereto ( "Sole Invention "). or jointly by
one or more employees of one party with one or more employees of the other party
( "Joint Invention "), in the performance of work under this Agreement.
5.2 Each party will promptly provide to the other party a written description of each
Invention. The other party agrees to delay making public. by publication or
otherwise, until the earlier of (1) the first filing of a patent application claiming the
Invention by the owning party or (2) six months after the date the Invention is
4
disclosed to the other party, for any Invention for which the disclosing party has
decided, or is in the process of deciding, to seek patent protection
5.3 Any Sole Invention will be the property of the inventing party, subject to a license
hereby granted to the other party of the scope set forth in Article 5,4 for such Sole
Invention and all patents issued on it. Any Joint Invention will be jointly owned,
and title to all patents issued on it will be joint, all expenses (including those
related to preparation, prosecution and maintenance) will be jointly shared (except
as provided below), and each party will have the right to license and assign its
ownership interest in the joint patent to third parties without need for consent
from or accounting to the other parry. Where one party elects not to share equally
in the expenses for a Joint Invention, the other party will have the right to seek or
maintain such protection for such Joint Invention at its own expense and will have
full control over its preparation, prosecution and maintenance, even though title to
any issuing patent will be joint.
5.4 All licenses granted to City and IBM under this Article 5 will be worldwide,
irrevocable, nonexclusive, nontransferable, and fully paid -up, and will include the
right to make, have made, use, have used, lease, sell, offer to sell, import and/or
otherwise transfer any product, and to practice and have practiced any method.
All licenses granted to City and to IBM in this Article 5 will include the right of
the grantee to grant revocable or irrevocable sublicenses to its Subsidiaries, such
sublicenses to include the right of the sublicensed Subsidiaries correspondingly to
sublicense other Subsidiaries.
5.5 "Subsidiary" will mean a corporation, company, or other entity;
more than 50% of whose outstanding shares or securities (representing the
right to vote for the election of directors or other managing authority) are,
now or hereafter, owned or controlled, directly or indirectly, by a party
hereto, but such corporation, company, or other entity will be deemed to be a
Subsidiary only so long as such ownership or control exists; or
ii. which does not have outstanding shares or securities, as may be the case in a
partnership, joint venture or unincorporated association, but more than 50%
of whose ownership interest representing the right to make the decisions for
such corporation, company or other entity is now or hereafter, owned or
controlled, directly or indirectly, by a party hereto, but such corporation,
company or other entity will be deemed to be a Subsidiary only so long as
such ownership or control exists.
6.0 Term and Termination
6.1 This Agreement will begin on the date it is signed by the last signatory ( "Effective
Date "), and end twenty (20) months later, unless terminated earlier by either party
5
as provided in Article 6.2 or 6.3 below; provided, however, because City's
participation in this project is subject to approval by the Iowa Power Fund, in the
event such approval is not granted by April 30, 2010, as of May 1, 2010, this
Agreement will become null and void ab initio.
6.2 City may terminate this Agreement at the end of any calendar quarter with written
notice to IBM sent not less than thirty (30) days prior to the end of that quarter, on
condition that City pay IBM the payment due at the beginning of the next calendar
quarter commencing after the effective date of the termination.
6.3 IBM may terminate this Agreement at the end of' any calendar quarter with written
notice to City sent not Less than thirty (30) days prior to the end of that quarter.
7.0 Confidentiality
7.1 "IBM Confidential Information" moans the Feedback, and any technical
information about the Prototype Service and the Tools.
7.2 For five (5) years from the date of disclosure, City agrees to hold IBM
Confidential information in trust and confidence for IBM. City will limit
disclosure of the IBM Confidential information to those of its employees who
have a need to know it. City will use IBM's Confidential Information only for
the purposes of this Agreement.
7.3 Disclosure of' Confidential Information will not be precluded if the disclosure is
required by law, but City will give IBM reasonable notice to allow IBM an
opportunity to obtain a protective order. The obligations of Article 7.2 above will
not apply to information that is: (a) already in the possession of City without
obligation of confidence; (b) independently developed by City; (c) publicly
available, or becomes publicly available through no fault of City; (d) disclosed by
IBM without obligation of confidence; or e) disclosed with the permission of
IBM.
7.4 Each party agrees that the disclosure of its Confidential Information pursuant to
this Agreement does not limit the assignment or reassignment of the other party's
employees.
7.5 Notwithstanding any provision in this Agreement to the contrary, City may
provide any reports provided to City by IBM under this Agreement to the Iowa
Office of Energy Independence, and to other governmental entities in Iowa. In
addition, IBM agrees that the Iowa Office of Energy Independence and the Iowa
Utilities Board may have unrestricted access to all City records for purposes of
evaluating the work performed under this Agreement.
6
8.0 Representations, Warranties, Disclaimers, Indemnification and Limitation of
Liability
8.1 City will be solely responsible for the collection of the Data, and for determining
what Data may and will be provided to IBM under this Agreement.
8.2 City represents and warrants that it has all necessary third party consents to
provide the Data to IBM, and to permit IBM to use the Data as provided in this
Agreement. City further represents and warrants that it has anonymized the Data
delivered to IBM to an extent sufficient to ensure that a person without prior
knowledge of the original Data and its collection cannot, from the - anonymized
Data and other publicly available information, deduce the personal identity of the
Data subjects.
8.3 Except as provided in Article 8.2, NEITHER PARTY MAKES ANY
WARRANTY, EXPRESS OR IMPLIED, CONCERNING COPYRIGHTABLE
MATERIALS, INVENTIONS, PROTOTYPES, DATA, INFORMATION, OR
OTHER DELIVERABLES SUPPLIED UNDER THIS AGREEMENT, WHICH
ARE ALL PROVIDED "AS IS." EACH PARTY EXPLICITLY DISCLAIMS
THE WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE, AND ANY WARRANTY OF NON -
INFRINGEMENT OF ANY THIRD PARTY'S PATENTS, COPYRIGHTS, OR
ANY OTHER INTELLECTUAL PROPERTY RIGHT.
8.4 EACH PARTY ALSO SPECIFICALLY DISCLAIMS ANY WARRANTY
REGARDING ANY PROTOTYPE(S) WHICH MAY BE DEVELOPED
PURSUANT TO THIS AGREEMENT INCLUDING THAT ANY
PROTOTYPE(S) WILL MEET ANY DEVELOPMENT OBJECTIVES, OR
ANY REQUIREMENTS OF EITHER PARTY. EACH PARTY WILL MAKE
GOOD FAITH EFFORTS TO COMPLETE THE ACTIVITIES UNDER THE
STATEMENT OF WORK. FAILURE TO COMPLETE SUCH ACTIVITIES
DOES NOT CONSTITUTE BREACH OF CONTRACT.
8.5 City will defend and indemnify IBM and IBM's Subsidiaries if a third party
makes a claim against IBM or its Subsidiaries based on an actual or alleged breach
of City's representations and warranties set forth in Article 8.2.
8.6 Except for claims arising out of Article 7.0, and indemnification obligations
arising under Article 8.5, neither party will be liable for any consequential
damages, lost profits, lost savings, loss of anticipated revenue, or any exemplary,
punitive, special or indirect damages, even if advised of their possibility. IBM's
total cumulative direct damages will not exceed a cumulative total of One
Hundred Thousand Dollars ($100,000).
7
9.0 General Provisions
9.1 Each party is an independent contractor. Neither party is, nor will claim to be, a
legal representative, partner, franchisee, agent or employee of the other. Neither
party will assume or create obligations for the other.
9.2 Except as otherwise provided herein, this Agreement does not confer any rights to
use in advertising, publicity or other marketing activities any name, trade name,
trademark, or other designation of either party hereto, including any contraction,
abbreviation, or simulation of any of the foregoing, without prior written
agreement, and each party agrees not to use or refer to this Agreement or its terms
in any such activities without the express written approval of the other party.
9.3 All notices will be in writing and will be valid if sent by: a) registered or
certified mail, return receipt requested, postage prepaid; b) by facsimile
(provided the receipt of' the facsimile is evidenced by a printed record of
completion of transmission); or, c) by express mail or courier service providing a
receipt of delivery. Notice will be effective upon receipt and addressed as
follows:
IBM
Thomas J. Watson Research Center
IBM Corporation
1101 ICitchawan Road
Route 134
Yorktown Heights, NY 10598
Attn.: Manager, Business and
Government Relations
City
City of Dubuque, Iowa
50 W. 13th Street
Dubuque, IA 52001
Attn.: David Lyons
9.4 Neither party will be liable for any failure or delay in the performance of its
obligations under this Agreement if such failure or delay is due to acts of God,
acts of the other party, fire, flood, natural catastrophe, acts of any government or
of any civil or military authority, national emergencies, riots, war, insurrection,
strikes, or any occurrence beyond the reasonable control of such party.
9.5 Each party agrees to comply and to reasonably assist the other in complying with
applicable govertunent export and import laws and regulations. Further, each
party agrees that unless authorized by applicable government license or regulation,
including but not limited to U.S. authorization, it will not directly or indirectly
export or reexport, at any time, any technology, software and /or commodities
furnished or developed under this Agreement, or any other agreement between the
parties, or its direct product, to any prohibited country (including release of
technology, software and/or commodities to nationals, wherever they may be
located, of any prohibited country) as specified in applicable export, embargo,
8
and sanctions regulations. This section will survive after termination or expiration
of this Agreement.
9.6 Except as expressly provided in this Agreement, neither party grants any licenses,
either directly or indirectly, by implication or estoppel or otherwise, to either party
under any patent, copyright or other intellectual property right of the other party.
9.7 Neither party may assign, or otherwise transfer, its rights or delegate its
obligations under this Agreement without prior written consent of the other party.
Any attempt to do so is void.
9.8 Except for claims arising out of Articles 3.0, 5.0, 7.0, or 8.5, neither party may
bring an action arising out of this Agreement, regardless of form, more than one
year after the oause of action has accrued.
9.9 Neither party relies on any promises, inducements or representations made by the
other, or expectations of more business dealings, except as expressly provided in
this Agreement.
9.10 Each party represents that it has, or will have appropriate agreements with its
employees or others whose services the party may require to enable it to comply
with all the provisions of this Agreement.
9.11 Each party may have similar agreements with others, and may design, develop,
manufacture, acquire or market competitive products and services, and conduct its
business in whatever way it chooses. Each party will independently establish
prices and terms for its products and services.
9.12 If any provision of this Agreement is held to be invalid, illegal or unenforceable,
the validity, legality and enforceability of the remaining provisions will in no way
be affected or impaired thereby so long as the intent of the parties can be
preserved.
9.13 This Agreement is governed by the laws of the State of New York, without regard
to the conflict of laws provisions thereof. Any proceedings to resolve disputes
relating to this Agreement will be brought only in a U.S. federal court if there is
federal jurisdiction over such proceeding. The parties waive the right to trial by
jury in any matter which arises under this Agreement. The United Nations'
Convention on International Sales of Goods does not apply.
9.14 Any rights and obligations which by their nature survive and continue after any
expiration or termination of this Agreement will survive and continue and will
bind the parties and their successors and assigns, until such obligations are
fulfilled.
9
`1'A .V r V V.J. IQ \JIM Orl 1S QlUVA1
9.15 This Agreement may only be amended by a writing signed by authorized
representatives of the parties. No approval, consent or waiver which alters the
terms of this Agreement will be enforceable unless signed by both parties. Failure
to insist on strict performance or to exercise a right when entitled does not prevent
a party from doing so later for that breach, or a future breach.
9.16 There are no intended third party beneficiaries to this Agreement.
9.17 This Agreement and Appendix A are the complete and exclusive agreement
between the parties regarding the subject matter hereof and supersedes any prior
oral or written communications or understandings between the parties related to
the subject matter hereof.
By signing below, the parties agree to the terms of this Agreement.
• .
Ir o. CO 1
INTE
MAC
AL BUSINESS
RATION
Name: - vI h " Qce o vu
Title: G rnj T{' Lt Ce K,S i �- 5
Date: y i 3 F O
CITY OF DUBUQUE, IOWA
Naine:
Title:
Date:
L%.$ J$J , 1-ra
•
7 ;"5,,y4- 7 ^ (0--41...
.://A) rJ
Id.
Objective
APPENDIX A
The objective of the project is to develop a Prototype Service for near real -time
measurement of electric energy consumption that would enable electric utility customers
in City of Dubuque to better control their consumption of electricity, and generate data
that could be used for the analysis of consumption patterns for insights that could help
electric utility customers reduce their consumption.
Project Description
STATEMENT OF WORK
City will identify volunteers among the electric utility customers in City to participate in
this project. These volunteers will be required to allow the installation in their business or
residence of advanced energy meters, and agree to allow their electric energy usage
information to be provided to IBM in anonymized form for use in developing the
prototype service. The community -wide metric information generated by this project can
be used by City to begin estimating consumption baselines, and the aggregated data will
also be shared with the volunteers so that they can compare and benchmark their personal
usage with that of the entire aggregated volunteer community.
IBM will develop the applications for processing and handling the Data for use by the
Prototype Service. IBM will also develop the tools required to automatically feed the
Data into the Prototype Service, and to be refreshed at an agreed upon rate, limited by the
rate at which this Data is provided to IBM. IBM will also analyze the collected Data to
identify patterns and insights that will be shared with City and the volunteers.
Responsibilities of the Parties
IBM:
1. Work on developing the Prototype Service that provides a Web portal for near
real -time integrated sustainability monitoring that would:
a. allow City management to visualize, interact, and understand the electrical
energy consumption patterns and sustainability footprint of the volunteers
participating in the project;
b. allow City and participating volunteers to visualize, interact, and
understand their electrical energy consumption patterns and sustainability
footprint in comparison with that of the other volunteers participating in
the project; and
c. provide access to participating volunteers to the consumption patterns of
other volunteers only in the aggregate, and not on an individual participant
basis.
2. Work on developing Tools to perform:
a. data processing and data management to prepare the Data and then enter it
into the Prototype Service;
b. exploratory analysis on the Data to extraot consumption patterns and
insights to be shared with City management and participating volunteers;
and
c. if data is available for some volunteers from both water consumption and
electric energy consumption, work on developing tools that perform
exploratory analysis on electrical energy and water resource consumption.
3. Make available for use by IBM resources for the project the following IBM
technology:
IBM Cloud Service
IBM Smarter City Sustainabillty Model Software
Infosphere Information Server
DB2
Cognos
Websphere Application Server
4. Provide City with written progress reports within thirty (30) days after the end of
each calendar quarter, summarizing the work performed, the results achieved, and
the resources assigned to work on the project during the prior quarter ( "Progress
Reports ").
5. Provide a written report analyzing Citywide consumption patterns and.sustainability
footprints for the participating volunteers, and summarizing the results of the project
( "Summary Report ").
6. Demonstrate the Prototype Service to City and other Iowa government agencies as
agreed by the parties.
City:
1. Recruit up to one thousand (1,000) electric utility customer volunteers to participate
in the project.
2. Work with City's major electric energy supplier, IPL, to install smart meters with
two way communication capability for each of the volunteers by the end of June
2010.
3. Provide IBM with access to a data warehouse that will store electricity consumption
meter data as frequently as one reading every fifteen minutes, on an anonymized
basis.
4. Provide other available data, in an anonymized form, on the households of the
volunteers participating in the project, such as the size of the house, the number of
rooms, the number of windows and doors, the age of the house, appliances, and
family size and ages.
5. Provide personnel to interface with volunteers to answer questions about the
project, their service or their usage.
6. Work with IBM to analyze the results, and provide IBM with feedback on the
results.
Estimated Schedule
IBM will provide the following reports:
May 1, 2010 Readiness of the project, including project plan
June 1, 2010 Progress of requirements gathered
September 1, 2010 Progress made in identifying data sources, frequency of data
updates
December 1, 2010 Progress in developing tools for automated data gathering, and
warehousing from smart meters
March 1, 2011 Progress in development of the Prototype Service
June 1, 2011 Progress on end to end integration of data from the meters into the
Prototype Service
September 1, 2011 Progress of the demonstration of the Prototype Service
December 31, 2011 Project summary, included lessons learned regarding analysis of
consumption data, and insight on how the Prototype Service was
used
END