CONFIDENTIAL PORTIONS OMITTED
PATENT LICENSE AGREEMENT
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Licensor name: |
Digimarc Corporation |
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Licensor address: |
9405 SW Gemini Drive Beaverton, OR 97008 |
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Licensee name: |
IV Digital Multimedia Inventions, LLC |
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Licensee address: |
2711 Centerville Road, Suite 400 Wilmington, DE 19808 |
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License issue fee: |
Thirty-six million U.S. dollars (U.S. $36,000,000), payable quarterly over three years as set forth in Schedule 2.1 |
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Profit Participation percentage: |
20% |
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Effective Date |
October 5, 2010 |
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In witness whereof, intending to be legally bound, the parties have signed below to enter the attached Patent License Agreement (this "Agreement") as of the Effective Date with the terms and conditions that follow. Capitalized terms not otherwise defined are set forth in Section 10 of this Agreement.
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LICENSOR: |
LICENSEE: |
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DIGIMARC CORPORATION |
IV DIGITAL MULTIMEDIA |
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By: |
/s/ Bruce Davis |
By: |
/s/ Vincent Pluvinage |
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Bruce Davis, |
Vincent Pluvinage, |
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Chairman and CEO |
Authorized Person |
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[Signature Page to Patent License Agreement]
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PATENT LICENSE AGREEMENT
RECITALS
WHEREAS, Digimarc Corporation, an Oregon corporation ("Licensor") is a leading innovator and provider of enabling technologies that create digital identities for all forms of media and many everyday objects, including digital watermarking, and has developed one of the world153s leading patent portfolios relating to these technologies;
WHEREAS, Invention Investment Fund II, LLC ("IV Fund") is the second of two funds in the "Intellectual Ventures" family of funds that was formed to invest in intellectual property rights. As provided in IV Fund153s operating agreement, the purpose of IV Fund is to [**]; and
WHEREAS, Licensor is willing to grant an exclusive license to certain patents in Licensor153s patent portfolio, and IV Fund is willing to acquire such exclusive license with an intent to license the Patents in an attempt to generate future profits, on the terms set forth in this Patent License Agreement.
NOW, THEREFORE, the parties to this Patent License Agreement listed on the previous page hereby agree as follows:
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1. |
GRANT OF EXCLUSIVE LICENSE |
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1.1 |
Exclusive Patent License |
Effective as of the Closing, Licensor hereby grants to Licensee the exclusive, worldwide, transferable (as provided in subsection 11.3), sublicensable license of all rights of any kind conferred by the Patents, including, without limitation, the rights of any kind to, or conferred by, the Patents to (a) use or otherwise practice any art, methods, processes, and procedures covered by the Patents, (b) make, have made, use, offer to sell, sell, import, and otherwise distribute or dispose of any inventions, discoveries, products, services, or technologies covered by the Patents, (c) otherwise exploit any rights granted in the Patents and/or any invention or discovery described in the Patents, and (d) exclude other Persons from exercising any of such rights.
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1.2 |
Sublicenses |
The exclusive license rights granted Licensee under the Patents include the right to grant and authorize, from time to time and in Licensee153s sole and absolute discretion, one or more sublicenses. No sublicense granted to any Person pursuant to the terms of this Agreement will be terminable as a result of the termination of the Term.
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1.3 |
Pre-Existing Encumbrances |
Licensee hereby acknowledges and agrees that the Patents are subject to the Existing Encumbrances.
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1.4 |
Assignment of Causes of Action and Other Rights |
Effective as of the Closing, Licensor hereby assigns, transfers and conveys to Licensee all right, title and interest in and to:
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(a) Rights to apply in any or all countries of the world for patents, certificates of invention, utility models, industrial design protections, design patent protections, or other governmental grants or issuances of any type corresponding to any of the Patents and the inventions and discoveries therein;
(b) All causes of action and enforcement rights of any kind (whether such claims, causes of action or enforcement rights are known or unknown; currently pending, filed, to be filed; or otherwise) under the Patents and/or under or on account of any of the Patents for past, current and future infringement of the Patents, including without limitation, all rights to (i) pursue and collect damages, profits and awards of whatever nature recoverable, (ii) injunctive relief, (iii) other remedies, and (iv) compromise and/or settle all such claims, causes of action and enforcement rights for such infringement by granting an infringing party a sublicense or otherwise; and
(c) Rights to collect royalties or other payments under or on account of any of the Patents or any of the foregoing, excluding the right to collect those royalties and other payments payable to Licensor as set forth on Schedule 1.4(c) pursuant to the Existing Encumbrances.
For purposes of clarity, the word "title" in the first sentence of this subsection refers to title in the rights specified in this subsection, rather than title to the Patents.
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1.5 |
No Implied Licenses |
Nothing contained in this Agreement or any of the other Transaction Agreements should be construed as conferring, by implication, estoppel or otherwise, a license to any other patents or patent applications other than the Patents. For the avoidance of doubt: (a) there are no implied licenses granted under this Agreement or other Transaction Agreements; and (b) nothing contained in this Agreement or other Transaction Agreements provides a license to any other patents or patent applications that do not fall within the definition of Patents but which may read on any inventions, discoveries, products, services or technologies covered by the Patents.
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2. |
PAYMENT |
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2.1 |
License Issue Fee |
Licensee will pay to Licensor a nonrefundable combined license issue fee and past patent reimbursement (collectively, the "License Issue Fee") in the amount set forth on the cover page of this Agreement, according to the schedule set forth on Schedule 2.1. Each of the payments referenced in Schedule 2.1 will be made by wire transfer to a designated bank account of Licensor. Prior to the Closing, Licensor will furnish Licensee with all necessary information to make such wire transfers, and will notify Licensee in writing of any changes to such wire transfer instructions at least twenty (20) business days prior to the deadline for the next payment due according to the above schedule.
In the event that Licensee attempts to wire such payment on or prior to the applicable deadline in reliance on wire instructions in effect for the immediately preceding payment and Licensor fails to provide timely written notice of any change to the wire transfer instructions, then such payment shall not be considered late so long as Licensee makes such payment by the later of (i) the applicable payment deadline set forth in Schedule 2.1, or (ii) ten (10) business days after receiving such modified wire transfer instructions.
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2.2 |
Profit Participation |
Licensor will receive a non-refundable amount equal to the percentage (the "Profit Participation") set forth on the cover page of this Agreement of any Profit that is generated following the Closing. Licensor expressly acknowledges and agrees that (i) neither IV Fund nor Licensee is providing any assurance that any Profit will be generated, nor is there any assurance regarding the amount and timing of any Profit, and (ii) any past indication of performance of IV Fund should not be relied upon as an indication of future performance.
The Profit Participation will be payable on the due dates for the reports required by subsection 2.7 for Revenue received during the respective Reporting Period.
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2.3 |
Portfolio Monetization; Allocation of Portfolio Profit to IP Groups |
Licensor acknowledges and agrees that Licensee and/or its Affiliates may from time to time sublicense, assert, litigate or otherwise exploit the Patents with other patents or patent applications held or controlled by Licensee and/or its Affiliates, at the discretion of Licensee and its Affiliates (a "Portfolio Monetization"). The parties acknowledge and agree that, unless a Portfolio Monetization specifies a particular royalty for one or more of the patents or patent applications (including the Patents), the Portfolio Profit will be determined according to the methodology set forth on Schedule 2.3.
Any Monetization Expenses or IP Group Expenses for Reporting Periods that exceed Revenue for that Reporting Period will be carried forward to the next Reporting Period such that Profit will not be deemed to have occurred for any Reporting Period until cumulative Revenues exceed cumulative Monetization Expenses (whether of a Portfolio Monetization or a monetization event involving solely the Patents) and cumulative IP Group Expenses in the current Reporting Period and all prior Reporting Periods.
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2.4 |
Adjustments to Value Allocations |
Notwithstanding the foregoing Value Allocations, for any given Portfolio Monetization, in the event that the formula set forth in Schedule 2.3 results in allocated per item Portfolio Profit in category R1 being less than the allocated per item Portfolio Profit in category R2, R3 or R4, or the allocated per item Portfolio Profit in category R2 being less than the allocated per item Portfolio Profit in category R3 or R4, or the allocated per item Portfolio Profit in category R3 being less than the allocated per item Portfolio Profit in category R4, then, in each such event, Licensee and/or its Affiliates will appropriately adjust the formula such that the allocated per item Portfolio Profit for each category is equal to or higher than the allocated per item Portfolio Profit for each higher numbered category (for example, the allocated per item Portfolio Profit in category R1 should be equal to or higher than allocated per item Portfolio Profit in categories R2, R3 and R4, after the adjustment). Furthermore, in the event that any patent category has no patents or patent applications, then Licensee and/or its Affiliates will adjust the Value Allocations to allocate the null category153s Value Allocation pro rata (based on relative Value Allocations) among the other categories. For purposes of this paragraph, an "item" will be a patent or a patent application included in the given Portfolio Monetization.
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2.5 |
Good-Faith Allocations Final |
In allocating patents or patent applications among categories for purposes of allocating Portfolio Profits, adjusting Value Allocations, and determining Portfolio Profits, Licensee and its Affiliates will exercise their reasonable business judgment, in good faith, without inequitable discrimination for or against patents or patent applications held or controlled by Licensee or any of its Affiliates. Any such allocation or adjustment that is not clearly and materially inconsistent with the foregoing will be final, binding, and conclusive.
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2.6 |
Pre-existing Agreements of Licensee |
Licensor understands, acknowledges and agrees that (a) certain pre-existing agreements have been entered into prior to the Effective Date under which sublicensees may receive sublicense rights to the Patents without Licensee recognizing Revenue or generating Profit under the terms of this Agreement and (b) no additional Profit Participation or other monetary obligation will be due to Licensor as a result of rights granted pursuant to such pre-existing agreements.
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2.7 |
Reports and Records |
As of each March 15 during the Term of this Agreement, Licensee will provide to Licensor a report reasonably detailing the sublicensing activities of Licensee and its Affiliates with respect to the Patents for the preceding twelve (12) month period ending as of December 31 (each, a "Reporting Period") when there has been Revenue with respect to the Patents in such Reporting Period. If no Revenue was generated during a Reporting Period, such report will instead state that no Revenue was generated during such period, but will state the total Monetization Expenses and the IP Group Expenses incurred during such period.
The Profit Participation will be payable to Licensor within ten (10) business days following the due dates for the reports required by this subsection 2.7 for Revenue received during the respective Reporting Period.
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2.8 |
Books of Account |
Licensee and its Affiliates will keep accurate books of account containing all particulars that may reasonably be deemed necessary for the purpose of showing the Amounts payable to Licensor hereunder. All such books of account shall be kept available by Licensee and its Affiliates for no less than three (3) years after the end of each Reporting Period, or in the event of a dispute between the parties involving in any way those books of account, until such time as the dispute has been resolved, whichever is later.
Said books of account will be kept at Licensee153s or its Affiliates153 principal place of business or, if notice thereof is given to Licensor, the principal place of business of the appropriate division of Licensee to which this Agreement relates. Not more than once during every twelve (12) month period and upon Licensor153s advance request of at least thirty (30) days, Licensee and its Affiliates will make said books and the supporting data available for inspection by Licensor or its agents during normal business hours for the two most recent Reporting Periods for the sole purpose of verifying Licensee153s calculations of the Profit Participation under this Agreement. Should such inspection lead to the discovery of a greater than [**] percent ([**]%) discrepancy in reporting to Licensor153s detriment, Licensee agrees to pay the reasonable fees and expenses of Licensor and/or its agents who conducted the inspection; provided however that such audit payment provision shall only
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apply to discrepancies that constitute manifest errors (including errors in data entry or calculations, but excluding disputes over methodology). Licensee will promptly pay to Licensor all amounts appropriately determined by any audit to be due to Licensor. Any and all disputes with respect to the Profit Participation due under this Agreement or the calculation of Profit must be (a) raised within ninety (90) days after completion of the associated audit, and (b) resolved solely and exclusively pursuant to the provisions of subsection 11.9.
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2.9 |
Nondivision |
No Person will anticipate, alienate, hypothecate, divide, pledge, exchange, encumber, or charge any right to payment of Profit Participation (if any) under this Agreement, and any attempt to anticipate, alienate, hypothecate, divide, pledge, exchange, encumber, or charge any right to payment of Profit Participation under this Agreement will be void, except that Licensor shall be entitled to pledge the payments due under Schedule 2.1 for credit. No creditor of Licensor (or other similar Person) shall in any manner be entitled to claim an interest in the right to Profit Participation hereunder as a result of the debts, contracts, liabilities or torts of the Licensor or otherwise.
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2.10 |
Interest on Late Payments |
Licensor shall be entitled to charge, and Licensee shall pay, interest on any amounts that are more than ten (10) business days overdue for payment under Schedule 2.1, or payments determined by Licensee in accordance with subsections 2.3, 2.4, 2.5 and 2.7 to be due and payable under subsection 2.2, at the rate of [**]% per month (or part thereof), or at such lower rate as may be the maximum rate allowed under applicable law. This obligation of Licensee to pay interest on its overdue obligations does not prevent Licensor from terminating this Agreement for Payment Breach under subsection 11.4.
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2.11 |
Taxes |
All payments by Licensee shall be made free and clear of and without deduction for or on account of any taxes or levies as may be payable by Licensee. Licensor agrees that it shall bear full responsibility for any and all taxes payable as a result of the payments made by Licensee hereunder.
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2.12 |
Currency |
All royalties, fees and payments under this Agreement shall be in U.S. Dollars.
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3. |
CLOSING |
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3.1 |
Deliverables |
Licensor has provided to Licensee, or its legal counsel, the items identified on Schedule D (the "Deliverables"). The lists of Live Assets on Schedules A and B and the list of Abandoned Assets on Schedule C may be revised by Licensee following the Closing to conform these lists to the definition of Patents set forth in this Agreement (and these revisions may therefore require the inclusion of additional provisional patent applications, patent applications, and patents on Schedules A and B or Schedule C). With respect to any originals of the Deliverables requested by Licensee for delivery as specified on Schedule D that have not been delivered as of the date hereof, Licensor will cause (i) such originals of
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the Deliverables to be sent to Licensee or Licensee153s representative promptly once such originals are located, and (ii) with respect to any originals that cannot be located after Licensor153s commercially reasonable efforts, Licensor will deliver to Licensee a declaration, executed under penalty of perjury, detailing Licensor153s efforts to locate such unavailable original documents and details regarding how delivered copies were obtained.
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3.2 |
Closing |
The execution and delivery of this Agreement is contingent upon the simultaneous execution and delivery of each of the other Transaction Agreements.
The closing of the transactions contemplated by this Agreement (the "Closing") shall occur simultaneously with the execution of this Agreement, and shall be conditioned upon the simultaneous closing of the transactions under the other Transaction Agreements. Upon the Closing, Licensee shall pay Licensor the initial payment required as part of the License Issue Fee, and Licensee may then record the Memoranda of Exclusive License/Rights.
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3.3 |
Deliverables |
(a) Concurrently with the execution of this Agreement, Licensor shall deliver to Licensee each of the following items:
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(i) |
Transmittal of Documents. Licensor will have delivered to Licensee all the Deliverables. |
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(ii) |
Delivery of Executed Memorandum of Exclusive License/Rights and Transfer of Rights in Abandoned Assets. Licensor will have delivered to Licensee executed and witnessed Memoranda of Exclusive License/Rights and the Transfer of Rights in Abandoned Assets. |
(b) Concurrently with the execution of this Agreement, Licensee shall deliver to Licensor the Certificate of Formation of Licensee.
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3.4 |
Compliance with Laws |
Notwithstanding anything contained in this Agreement to the contrary, the obligations of the parties with respect to the consummation of the transactions contemplated by this Agreement shall be subject to all laws, present and future, of any government having jurisdiction over the parties and this transaction, and to orders, regulations, directions or requests of any such government.
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4. |
COVENANTS OF LICENSOR |
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4.1 |
Further Cooperation |
At the reasonable request of Licensee, Licensor will execute and deliver such other instruments and do and perform such other acts and things as may be reasonably necessary or desirable for effecting completely the consummation of the transactions contemplated hereby, including, without limitation, execution, acknowledgment and recordation of other such papers, and using reasonable efforts to obtain the same from the respective inventors, as necessary or desirable for fully perfecting and conveying unto Licensee the benefit of the transactions contemplated hereby, including, without limitation, providing and assisting in
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obtaining execution of any assignments, confirmations, powers of attorney, inventor declarations, and other documents that Licensee may request for prosecuting, maintaining, filing, obtaining issuance of, registering, enforcing, defending, or bringing any proceeding relating to the Patents. To the extent any attorney-client privilege or the attorney work-product doctrine applies to any portion of the Prosecution History Files, Licensor will ensure that, if any such portion of the Prosecution History File remains under Licensor153s possession or control after the Closing, it is not disclosed to any third party unless (a) disclosure is ordered by a court of competent jurisdiction, after all appropriate appeals to prevent disclosure have been exhausted, and (b) Licensor gave Licensee prompt notice upon learning that any third party sought or intended to seek a court order requiring the disclosure of any such portion of the Prosecution History File.
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5. |
FILING, PROSECUTION AND MAINTENANCE OF PATENT RIGHTS |
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5.1 |
Costs |
After the Closing, Licensee will have the sole right and responsibility for, but not the obligation for, the preparation, filing, prosecution, maintenance and defense of all Patents (except to the extent of any portion of the Patents abandoned by Licensee pursuant to the terms of this Agreement or otherwise provided to Licensor under subsection 5.4). Subject to subsection 5.4, Licensee may, but is not obliged to, consult with Licensor regarding execution of its responsibility, and Licensor agrees to cooperate and assist Licensee in connection therewith, as required by the terms of this Agreement.
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5.2 |
Copies of Prosecution Documents |
Licensee will, upon Licensor153s reasonable written request, provide Licensor with a copy of documents received or filed by Licensee pertaining to the filing, prosecution, maintenance or defense of Patents, including, without limitation, each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent issuing from such patent application.
Licensee will provide Licensor access to the private Patent Application Information Retrieval (PAIR) docket of the USPTO for the Patents for so long as the Common Interest Agreement remains in effect.
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5.3 |
Conduct of Prosecution |
Subject to subsection 5.4, the conduct of the preparation, filing, prosecution, maintenance, and defense of the Patents will be under Licensee153s exclusive control and discretion. Licensee is authorized to execute and record, on Licensor153s behalf, any document submitted to the USPTO or other governmental patent office that pertains to filing, prosecution, maintenance, or defense of the Patents, including, without limitation, consents to reissue applications, and declarations. Licensee will consult with Licensor on such matters from time to time on Licensor153s reasonable request. At the reasonable request of Licensee, Licensor will execute and deliver to Licensee such other documents, and do and perform such other acts and things, as may be reasonably necessary or desirable for confirming in Licensee exclusive right to prosecute, maintain, defend, file, obtain issuance, register, enforce, or bring any proceeding relating to the Patents including, without limitation, execution, acknowledgment and recordation of such documents necessary to convey to Licensee any right or power of attorney in the USPTO or other governmental patent office,
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in respect to prosecution, maintenance, defense, filing, issuance, or registration of the Patents.
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5.4 |
Abandonment |
(a) Licensee will at any time be entitled to abandon its license and other rights to all or any of the Patents (including abandonment of the Patents themselves, with respect to Patents to which Licensee acquires title).
(b) Licensor may request Licensee to notify Licensor whether or not Licensee intends to abandon any particular Patent Family or Patent Families by delivering written notice (an "Abandonment Inquiry") of such request to Licensee when Licensor identifies that Licensee has taken an action or failed to take an action indicating that Licensee may be abandoning a Patent Family. Licensee shall use reasonable efforts to notify Licensor of any instruction or plan to abandon a particular Patent Family or Patent Families, provided however that failure by Licensor to provide such notification shall not subject Licensee or any Affiliate of Licensee to liability associated with subsequent abandonment of such Patent Family or Patent Families. Licensee shall respond to any such Abandonment Inquiry by delivering a written statement (an "Abandonment Notice") to Licensor within thirty (30) days as to whether or not Licensee intends to abandon the Patent Family(ies) specified in the Abandonment Inquiry. Any Patent Family or Patent Families designated for abandonment in the Abandonment Notice shall be referred to as "Released Patents".
Licensor hereby agrees that provisions in subsections 5.4(b) and (c) shall apply solely in the event that Licensee intends to abandon an entire Patent Family, and that in the event Licensee intends to abandon a particular Patent or Patents within a Patent Family, but to maintain other Patents within the Patent Family, Licensee shall not be obligated to provide an Abandonment Notice nor to assign the rights in such Patent or Patents to be abandoned to Licensor.
(c) Upon receipt of an Abandonment Notice listing any Released Patents, Licensor shall be entitled to maintain all or any of such Released Patents, provided that Licensor hereby agrees with Licensee as follows with respect to such Released Patents: (i) Licensor shall assume, as of the date of the Abandonment Notice, sole right and responsibility for the preparation, filing, prosecution, maintenance and defense of each Released Patent, and, except as in the last sentence of this subsection 5.4(c), Licensee shall have no further obligation with respect to such Released Patents, (ii) each Released Patent shall be released and/or assigned AS IS, without any express or implied representation or warranty whatsoever with respect to such Released Patent, and (iii) Licensor hereby agrees, and shall confirm in writing to Licensee, that the Released Patents shall be subject to each sublicense, covenant not to sue or other encumbrance granted by Licensee or any Affiliate of Licensee prior to the date of the Abandonment Notice, which encumbrances will not be terminated, altered or affected as a result of such intended abandonment by Licensee.
Except as in the last sentence of this subsection 5.4(c), with respect to each Released Patent that was licensed hereunder to Licensee immediately prior to the date of the Abandonment Notice, then Licensee153s and Licensor153s rights hereunder and under the other Transaction Agreements with respect to such Released Patents shall terminate as of the date of such Abandonment Notice.
With respect to each Released Patent to which Licensee has acquired title pursuant to Sections 3 or 4 of the Patent Rights Agreement, then Licensee shall use commercially
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reasonable efforts to assign all right, title and interest in such Released Patent to Licensor as soon as reasonably practicable, subject to the first sentence of this clause (c). Licensee agrees to reasonably cooperate with the recording of transfer of title of any Released Patent to Licensor, provided that Licensor shall bear all expenses (and shall reimburse Licensee for all of its expenses) relating to such transfer.
For each Released Patent, Licensee shall continue to be obligated to pay Licensee Profits, if any, generated by any Revenue that may be paid to Licensee after a Patent becomes a Released Patent with respect to any such Released Patent that was subject to a sublicense, covenant not to sue or other encumbrance granted by Licensee or any Affiliate of Licensee prior to the date the Patent becomes a Released Patent.
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5.5 |
Assistance by Licensor |
Licensor will provide Licensee with such advice and assistance as Licensee reasonably requests in connection with the filing, prosecution, maintenance, or defense of the Patents, as more fully set forth in the Work Agreement. Licensee will not be responsible for any costs incurred by Licensor under Section 5 without Licensee153s prior written agreement to bear such costs.
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6. |
ENFORCEMENT OF PATENTS |
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6.1 |
Enforcement |
Licensee will have the exclusive right, but not the obligation, to institute, prosecute, and control any action or proceeding with respect to infringement of the Patents, using counsel of its choice, including any declaratory judgment action arising from such infringement. In the event Licensee exercises its right to commence such action or proceeding, Licensee will use reasonable efforts to advise Licensor prior to such commencement. Thereafter, on Licensor153s written request no more frequently than every two (2) months, Licensee will report to Licensor reasonable, nonprivileged information on the status of the action or proceeding commenced by Licensee. Licensor shall not have and/or retain any right to, and will not, institute any case, action or other enforcement proceeding with respect to infringement of the Patents.
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6.2 |
Joinder; Cooperation in Litigation |
This Agreement transfers to Licensee all substantial rights under the Patents and, as a result, Licensee has the right to bring any future action or proceeding to enforce claims under the Patents in its own name, without naming Licensor as a party thereto. However, if necessary or desirable in Licensee153s sole discretion, Licensee may add Licensor as a named party in any action or proceeding to enforce or defend the Patents, and Licensor will consent to be added and will cooperate with Licensor in any such action or proceeding. Licensee will be entitled to select counsel and will be entitled to control such action or proceeding. If Licensee finds it necessary or desirable, Licensor will execute all papers or perform any other acts or provide any assistance, at Licensee153s expense (provided that Licensor shall be responsible for paying any fees or expenses of its own outside counsel), toward pursuing such action or proceeding, as reasonably required by Licensee. Licensor will use commercially reasonable efforts to ensure that any Licensor personnel will be available to cooperate, at Licensee153s expense for work of a nature contemplated by the Work Agreement, toward pursuing such action.
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6.3 |
In Event of Breach |
Notwithstanding any material breach of this Agreement by Licensee, in no event will Licensor be entitled to take any action or direct any proceeding with respect to the Patents, other than the Released Patents, without Licensee153s express consent and direction unless and until there has been a termination of the Term pursuant to subsection 11.4 of this Agreement.
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7. |
REPRESENTATIONS AND WARRANTIES OF LICENSOR |
Licensor represents and warrant to Licensee as of the Effective Date and as of the Closing as follows:
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7.1 |
All Substantial Rights |
By this Agreement, Licensor intends to, and will, transfer to Licensee all substantial rights under the Patents, other than those patents set forth on Schedule 7.1. No Person other than Licensee will, as of and immediately following the Closing, have or retain any right to license, sublicense, or grant any other rights with respect to the Patents, either generally or within any field of use or otherwise.
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7.2 |
Organization; Authority and Approvals; Enforceability |
(a) Licensor is a company duly formed, validly existing, and in good standing under the laws of the jurisdiction of its formation.
(b) Licensor has the full power and authority to enter into this Agreement and the other Transaction Agreements and to carry out its obligations hereunder and thereunder, including, without limitation, the assignment to Licensee of all causes of action with respect to the Patents.
(c) The execution, delivery and performance by Licensor of this Agreement, each of the other Transaction Agreements and all other transactions and actions contemplated hereby and thereby have been duly and validly approved and authorized by Licensor153s Board of Directors, and do not require the approval of Licensor153s stockholders nor any other corporate action on the part of Licensor.
(d) No consent, approval, order or authorization of, notification to, action by or registration, declaration or filing with, any governmental or regulatory authority, or any other person, governmental or otherwise, is necessary to enable Licensor to lawfully enter into, execute, deliver and perform its obligations under this Agreement and each of the other Transaction Agreements, or to consummate the transactions contemplated hereby and thereby.
(e) This Agreement and each of the other Transaction Agreements have been duly executed and delivered by Licensor. Assuming due authorization, execution and delivery by Licensee, this Agreement and each of the other Transaction Agreements are valid and binding obligations of Licensor, enforceable against each in accordance with their respective terms, subject to the effect of (i) applicable bankruptcy, insolvency, reorganization, moratorium or other similar laws now or hereafter in effect relating to or limiting rights of creditors generally and (ii) rules of law and equity governing specific performance, injunctive relief and other equitable remedies.
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7.3 |
No Conflict |
Neither the execution and delivery of this Agreement or any of the other Transaction Agreements by Licensor, nor the consummation of the transactions contemplated hereby or thereby, will conflict with, or (with or without notice or lapse of time, or both) result in a termination, breach, impairment or violation of, give any rights of acceleration or cancellation under, or constitute a default under: (a) any provision of the Certificate of Incorporation or Bylaws of Licensor as currently in effect; (b) any law, rule, regulation, order, ruling or other legal requirement applicable to Licensor or any of the Patents; or (c) any material contract, agreement or understanding to which Licensor is a party or is bound, or by which any of the Patents are bound. Neither Licensor153s entering into this Agreement or any of the other Transaction Agreements nor the consummation of the transactions contemplated hereby or thereby will result in the creation of any encumbrance on any of the Patents or give rise to, or trigger the application of, any rights of any third party that would come into effect or become exercisable upon the consummation of the transactions contemplated hereby or thereby.
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7.4 |
Title and Contest |
(a) Immediately prior to the Closing, and subject to the Existing Encumbrances, Licensor owns all right, title and interest in the Patents, and as of the Closing Licensor will convey to Licensee, subject to the Existing Encumbrances, all right, title and interest in each right conferred under this Agreement with respect to the Patents (but not title to the Patents), including, without limitation, all rights, title, and interest in and to the causes of action assigned by this Agreement. Except as set forth on Schedule 7.4, Licensor has obtained and properly recorded previously executed assignments for the Patents as necessary to fully perfect its rights and title therein in accordance with governing law and regulation in each jurisdiction.
(b) Each right conferred under this Agreement with respect to the Patents is free and clear of all liens, mortgages, security interests, and restrictions on transfer. As of the Closing, there are no actions, suits, investigations, claims, or proceedings threatened, pending or in progress relating in any way to any right conferred under this Agreement with respect to the Patents. There are no existing contracts, agreements, options, commitments, proposals, bids, offers, or rights with, to or in any Person to acquire any Patents.
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7.5 |
Existing Licenses and Restrictions on Rights |
Except as specifically identified on Schedule 7.5, (a) no license under the Patents has been granted by Licensor, any prior owner, or inventors, and (b) after Closing, none of Licensor, any prior owner, or any inventor will retain any rights or interest in the Patents or the related causes of action, except that Licensor shall retain title in the Patents. Except as specifically identified on Schedule 7.5, Licensee will not be subject to any covenant not to sue or similar restrictions on its enforcement or enjoyment of any of Patents or the related causes of action as a result of the transactions contemplated in this Agreement or any prior transaction related to the Patents or the Abandoned Assets. None of the licenses listed on Schedule 7.5 is an exclusive grant or right, unless specifically noted otherwise on Schedule 7.5. Each license listed on Schedule 7.5 is nontransferable and nonsublicensable, except as specifically noted otherwise on Schedule 7.5. Notwithstanding anything to the contrary herein, the parties acknowledge and agree that Licensor will retain
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the right to collect any amounts that are or become due or owing to Licensor as a result of payment obligations under any of the licenses listed on Schedule 7.5.
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7.6 |
Validity and Enforceability |
(a) None of the Patents or the Abandoned Assets has ever been found invalid, unpatentable, or unenforceable for any reason in any judicial proceeding, arbitration proceeding, opposition proceeding, interference proceeding, ex parte reexamination proceeding, inter partes reexamination proceeding or other inter partes proceeding.
(b) Except as in Schedule 7.6, Licensor neither knows of nor has received any notice or information of any kind from any source suggesting the invalidity, unpatentability, or unenforceability of any claimed subject matter within the Patents or Abandoned Assets that has ultimately been allowed, granted, or otherwise deemed patentable by a respective patent authority or patent office, with the exception of rejections, objections or other deficiencies identified by such patent authority or patent office, which were overcome to result in the allowance, grant or patenting of such claimed subject matter.
(c) Except as in Schedule 7.6, Licensor neither knows of nor has received any notice or information of any kind from any source suggesting the invalidity, unpatentability or unenforceability of any of the pending patent applications or pending provisional patent applications listed in Schedules A and/or B.
(d) If any of the Patents is terminally disclaimed to another patent or patent application, all patents and patent applications subject to such terminal disclaimer are included in this transaction.
(e) To the extent "small entity" fees at the time of such payment were paid to the United States Patent and Trademark Office for any Patent, such reduced fees were then appropriate because the payor qualified to pay "small entity" fees and specifically had not licensed rights in any Patent to an entity that was not a "small entity."
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7.7 |
Conduct; SSOs |
Neither Licensor nor any of its representative have engaged in any conduct, or omitted to perform any necessary act, the result of which would invalidate any of the Patents or hinder its enforcement, including, without limitation, misrepresenting Licensor153s patent rights to a standard-setting organization. There is no obligation imposed by a standards-setting organization on Licensor to license any of the Patents on particular terms or conditions, nor will any such obligation apply to Licensee following the Closing.
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7.8 |
Enforcement |
Except for any notices or letters included in the Deliverables, Licensor has not (a) provided to a third party notice of alleged actual or potential infringement of any of the Patents or the Abandoned Assets or (b) initiated enforcement action(s) with respect to any of the Patents or the Abandoned Assets.
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7.9 |
Patent Office Proceedings |
Except as set forth on Schedule 7.9, none of the Patents or the Abandoned Assets has been or is currently involved in any reexamination, reissue, interference proceeding, or any similar proceeding, and no such proceedings are pending or threatened.
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7.10 |
Fees |
All maintenance fees, annuities and the like due or payable on each of the Patents have been timely paid. For the avoidance of doubt, Licensor shall pay any maintenance fees for which the fee is payable (e.g., the fee payment window opens) on or prior to the Closing even if the surcharge date or final deadline for payment of such fee would be after the Closing.
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7.11 |
Abandoned Patents |
According to each applicable patent office, each of the Abandoned Assets has expired, lapsed, or been abandoned or deemed withdrawn.
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7.12 |
Brokers |
Except for Licensor153s obligations to [**], if any, neither Licensor nor any Affiliate of Licensor is obligated for the payment of any fees or expenses of any investment banker, broker, finder or similar party in connection with the origin, negotiation or execution of this Agreement or in connection with the transactions contemplated hereby. Licensee will not incur any liability, either directly or indirectly, to any such investment banker, broker, finder or similar party as a result of, this Agreement, the transactions contemplated hereby or any act or omission of Licensor or any of its employees, officers, directors, stockholders, agents or Affiliates.
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8. |
REPRESENTATIONS AND WARRANTIES OF LICENSEE |
Licensee represents and warrants to Licensor as of the Effective Date and the Closing:
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8.1 |
Organization; Authority and Approvals; Enforceability |
(a) Licensee is a company duly formed, validly existing, and in good standing under the laws of the jurisdiction of its formation.
(b) Licensee has the full power and authority to enter into this Agreement and the other Transaction Agreements and to carry out its obligations hereunder and thereunder.
(c) Licensee is duly authorized to execute and deliver this Agreement and each of the other Transaction Agreements and to perform its obligations hereunder and thereunder. The individual executing this Agreement and each of the other Transaction Agreements on Licensee153s behalf has been duly authorized to do so by all requisite corporate action.
(d) No consent, approval, order or authorization of, notification to, action by or registration, declaration or filing with, any governmental or regulatory authority, or any other person, governmental or otherwise, is necessary to enable Licensee to lawfully enter into, execute, deliver and perform its obligations under this Agreement and each of the
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other Transaction Agreements, or to consummate the transactions contemplated hereby and thereby.
(e) This Agreement and each of the other Transaction Agreements have been duly executed and delivered by Licensee. Assuming due authorization, execution and delivery by Licensor, this Agreement and each of the other Transaction Agreements are valid and binding obligations of Licensee, enforceable against Licensee in accordance with their respective terms, subject to the effect of (i) applicable bankruptcy, insolvency, reorganization, moratorium or other similar laws now or hereafter in effect relating to or limiting rights of creditors generally and (ii) rules of law and equity governing specific performance, injunctive relief and other equitable remedies.
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8.2 |
No Conflict |
Neither the execution and delivery of this Agreement or any of the other Transaction Agreements by Licensee, nor the consummation of the transactions contemplated hereby or thereby, will conflict with, or (with or without notice or lapse of time, or both) result in a termination, breach, impairment or violation of, give any rights of acceleration or cancellation under, or constitute a default under: (i) the applicable organizational documents of Licensee, as currently in effect; (ii) any law, rule, regulation, order, ruling or other legal requirement applicable to Licensee; or (iii) any material contract, agreement or understanding to which Licensee is a party or is bound.
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8.3 |
Brokers |
Neither Licensee nor any Affiliate of Licensee is obligated for the payment of any fees or expenses of any investment banker, broker, finder or similar party in connection with the origin, negotiation or execution of this Agreement or in connection with the transactions contemplated hereby. Licensor will not incur any liability, either directly or indirectly, to any such investment banker, broker, finder or similar party as a result of, this Agreement, the transactions contemplated hereby or any act or omission of Licensee or any of its employees, officers, members, agents or Affiliates.
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8.4 |
Covenants Relating to Obligations to [**] and [**] |
Licensor is required, pursuant to agreements between Licensor and each of [**] ("[**]") and [**] ("[**]") to pay each of [**] and [**], respectively, $[**] USD for each patent issuing anywhere in the world from a patent application claiming priority to the patents that Licensor acquired from [**] and [**]. Licensee hereby covenants and agrees with Licensor to make the following payments in order to assist Licensor with satisfying the obligations under Licensor153s agreements with [**] and [**]:
(a) Licensee hereby agrees to pay [**] $[**] USD for each patent issuing anywhere in the world from a patent application claiming priority to the patent rights that Licensor obtained from [**]. Currently pending patent applications are identified on Schedule A to this Agreement. This payment obligation also applies to patents issuing anywhere in the world from patent applications that Licensee files after Closing that claim priority to these patent applications or other patent rights that Licensor obtained from [**]. Such payments are required within thirty (30) days following issuance of each such issued patent.
(b) Licensee hereby agrees to pay to pay US$[**] (net of any tax payable by Licensee) for each patent issuing from a patent application claiming priority to the patent rights that
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Licensor obtained from [**]. Currently pending patent applications are identified on Schedule A to this Agreement. Licensee shall pay [**] ([**]) of each such payment directly to [**] on behalf of [**], and shall pay the remainder of each such payment to [**]. This payment obligation also applies to U.S. patents issuing from patent applications that Licensee files after Closing that claim priority to these patent applications or other patent rights that Licensor obtained from [**].
(c) Licensee agrees to indemnify and hold harmless Licensor and its directors, officers and employees of each of their Affiliates, from any losses, liabilities, damages, claims, payments, liens, judgments, demands, costs and expenses (including reasonable attorneys153 fees) arising out of failure by Licensee to pay [**] or [**] as required under this subsection 8.4.
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9. |
DISCLAIMER OF REPRESENTATIONS AND WARRANTIES; LIMITATION OF LIABILITY; EXCLUSIONS FROM DAMAGES |
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9.1 |
Disclaimer of Representations and Warranties |
NEITHER PARTY MAKES ANY REPRESENTATION OR WARRANTY EXCEPT FOR THEIR RESPECTIVE REPRESENTATIONS AND WARRANTIES SET FORTH IN SECTIONS 7 AND 8, AND EACH PARTY DISCLAIMS ALL IMPLIED WARRANTIES, INCLUDING, WITHOUT LIMITATION, THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
LICENSEE GIVES LICENSOR NO ASSURANCE THAT ANY PROFIT (EITHER FROM A MONETIZATION EVENT INVOLVING SOLELY THE PATENTS OR AS PART OF A PORTFOLIO MONETIZATION) WILL BE GENERATED FOR LICENSOR.
LICENSOR ACKNOWLEDGES THAT ACCOUNTING FOR THIS TRANSACTION IS A MATTER SOLELY BETWEEN OR AMONG LICENSOR AND ITS ACCOUNTANTS, AND ACKNOWLEDGE THAT THEY HAVE NOT RELIED UPON ANY ADVICE OR REPESENTATION FROM LICENSEE TO DETERMINE THE ACCOUNTING TREATMENT FOR THE LICENSE ISSUE FEE OR ANY OTHER PAYMENT TO BE MADE BY LICENSEE TO LICENSOR.
EXCEPT AS EXPRESSLY SET FORTH IN SECTION 7, NEITHER PARTY GIVES THE OTHER PARTY ANY ASSURANCE (A) REGARDING THE PATENTABILITY OF ANY CLAIMED INVENTION IN, OR THE VALIDITY, OF ANY PATENT; OR (B) THAT MANUFACTURE, USE, SALE, OFFERING FOR SALE, IMPORTATION, EXPORTATION OR OTHER DISTRIBUTION OF ANY PRODUCT OR METHOD DISCLOSED AND CLAIMED IN ANY PATENT BY LICENSEE, ANY SUBLICENSEE OR ANYONE ELSE WILL NOT CONSTITUTE AN INFRINGEMENT OF THE INTELLECTUAL PROPERTY RIGHTS OF OTHERS.
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9.2 |
Limitation of Liability |
EXCEPT IN THE EVENT OF FRAUD OR INTENTIONAL MISREPRESENTATION OR THE BREACH OF THE REPRESENTATIONS AND WARRANTIES MADE IN SUBSECTIONS 7.4 AND 7.5 OF THIS AGREEMENT, THE COLLECTIVE LIABILITY OF LICENSOR, ON ONE HAND, AND LICENSEE, ON THE OTHER, WILL IN EACH CASE NOT EXCEED AN AMOUNT EQUAL TO THE SUM OF ALL PAYMENTS PAYABLE UNDER SUBSECTIONS 2.1 AND 2.2 OF THIS AGREEMENT. IN THE EVENT OF BREACH OF ANY OF THE REPRESENTATIONS OR WARRANTIES MADE IN SUBSECTIONS 7.4 AND 7.5 OF THIS AGREEMENT, LICENSOR153S COLLECTIVE LIABILITY UNDER THIS AGREEMENT WILL NOT EXCEED AN AMOUNT EQUAL TO THREE (3) TIMES THE
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SUM OF ALL PAYMENTS PAYABLE UNDER SUBSECTIONS 2.1 AND 2.2 OF THIS AGREEMENT. THE PARTIES ACKNOWLEDGE THAT THE FOREGOING LIMITATION ON POTENTIAL LIABILITY WAS AN ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER THIS AGREEMENT.
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9.3 |
Exclusion of Certain Damages |
NEITHER PARTY WILL HAVE ANY OBLIGATION OR LIABILITY (WHETHER IN CONTRACT, WARRANTY, TORT (INCLUDING NEGLIGENCE) OR OTHERWISE), AND NOTWITHSTANDING ANY FAULT, NEGLIGENCE (WHETHER ACTIVE, PASSIVE OR IMPUTED), REPRESENTATION, STRICT LIABILITY OR PRODUCT LIABILITY, FOR COVER OR FOR ANY INCIDENTAL, INDIRECT, CONSEQUENTIAL, MULTIPLIED, PUNITIVE, SPECIAL, OR EXEMPLARY DAMAGES FOR LOSS OF REVENUE, PROFIT (EXCEPT TO THE EXTENT PROFIT BECOMES DUE AND PAYABLE IN ACCORDANCE WITH SUBSECTION 2.2 OF A PATENT LICENSE AGREEMENT), SAVINGS OR BUSINESS ARISING FROM OR OTHERWISE RELATED TO THIS AGREEMENT, EVEN IF A PARTY OR ITS REPRESENTATIVES HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. LICENSOR UNDERSTANDS AND CONFIRMS THAT THERE MAY NOT BE ANY PROFIT PARTICIPATION DISTRIBUTED UNDER THIS AGREEMENT. THE PARTIES ACKNOWLEDGE THAT THESE EXCLUSIONS OF SUCH POTENTIAL DAMAGES WERE AN ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER THIS AGREEMENT.
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10. |
DEFINITIONS |
Capitalized terms used in this Agreement that are not otherwise defined have the meanings set forth in this Section.
"Abandoned Assets" means those specific provisional patent applications, patent applications, patents and other governmental grants or issuances listed on Schedule C (as such list may be updated based on Licensee153s review pursuant to subsection 3.1).
"Acquisition Transaction" means (i) a merger, consolidation or reorganization of a party with or into another Person (whether or not such party is the surviving Entity), in which such party153s shareholders holding the right to vote with respect to general matters immediately preceding such transaction own less than fifty percent (50%) of the voting securities of the surviving Entity; (ii) a sale, assignment, transfer, conveyance or other disposition of all or substantially all of the assets of such party to another Person; or (iii) another Person becoming the beneficial owner of more than fifty percent (50%) of the outstanding voting securities of such party.
"Affiliate" means, with respect to any Person, any Entity in whatever country organized that controls, is controlled by or is under common control with such Person; provided however, that an Entity that qualifies as an Affiliate but subsequently ceases to fall within this definition shall no longer be considered an Affiliate hereunder. The term "control" means possession, direct or indirect, of the power to direct or cause the direction of the management and policies of an Entity, whether through the ownership of voting securities, by contract or otherwise. For purposes of clarity, neither TVAura LLC nor TVAura Mobile LLC shall be considered an "Affiliate" of Licensor under this Agreement.
"Amounts" as generally used in this Agreement refers to cash amounts, and amounts that are not cash will be valued by Licensee at their cash equivalent under customary valuation techniques.
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"Assignment Agreements" mean the agreements assigning to Licensor ownership of the Patents and the Abandoned Assets from the inventors and/or any prior owners to Licensor.
"Closing" has the meaning set forth in subsection 3.2.
"Common Interest Agreement" means an agreement, in the form set forth on Exhibit A, setting forth the terms under which Licensor and Licensee will protect certain information relating to the Patents under the common interest privilege.
"Docket" means Licensor153s, or its agents153, list or other means of tracking information relating to the prosecution or maintenance of the Patents throughout the world, including, without limitation, the names, addresses, email addresses and phone numbers of prosecution counsel and agents, and information relating to deadlines, payments, and filings, which list or other means of tracking information is current as of the Effective Date.
"Effective Date" means the date set forth as the Effective Date on the cover page of this Agreement.
"Entity" means any corporation, partnership, limited liability company, association, joint stock company, trust, joint venture, unincorporated organization, governmental entity (or any department, agency, or political subdivision thereof) or any other legal entity.
"Excluded Assets" means the patents and applications listed in the attached Schedule 7.1, any reissues or reexaminations thereof, and any other patent application (and resulting patent) filed by Licensor after the Effective Date that either (a) does not claim priority to any of the Live Assets or (b) claims priority to a Live Asset only through an intermediate application or patent that is also listed on Schedule 7.1.
"Existing Encumbrances" means all licenses or other encumbrances disclosed on Schedule 7.5.
"Grant-Back License Agreement" means the Grant-Back License Agreement between Licensor and Licensee dated of even date herewith.
"IV Fund" means Invention Investment Fund II, LLC, a Delaware limited liability company.
"IP Group Expenses" means the Amounts paid, incurred, accrued, or allocated by or on behalf of Licensee in respect of acquiring, holding, prosecuting, maintaining, managing, protecting, or enhancing the Patents, including, without limitation, all such Amounts (other than Profit Participation) paid under this Agreement to Licensor and all fees, costs, commissions and expenses for legal, technical, advisory, and consulting services and filing, issuance, annuity and maintenance payments. "IP Group Expenses," as used in this Agreement refers to IP Group Expenses of the Patents.
"License Issue Fee" has the meaning set forth in subsection 2.1.
"Live Assets" means the provisional patent applications, patent applications, and patents listed on Schedule A (as such lists may be updated based on License153s review pursuant to subsection 3.1).
"Memoranda of Exclusive License/Rights" means one or more documents in substantially the form of Schedule B, which form may be adjusted for the requirements of
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the particular government patent office, that memorialize the license and other rights transferred to Licensee by this Agreement.
Memoranda of Exclusive License/Rights are created to comply with recordation requirements related to this grant/transfer/assignment, but in no way are intended by the parties to limit or expand the scope of the rights intended to be granted, transferred and assigned.
"Monetization Expenses" means the Amounts paid, incurred, accrued, or allocated by or on behalf of Licensee in respect of commercializing, asserting, litigating, licensing, managing, or otherwise capturing value, including, without limitation, fees, costs, commissions and expenses for legal, technical, advisory, consulting and licensing services. "Monetization Expenses," as used in this Agreement, may refer to Monetization Expenses of either a monetization event involving solely the Patents or a Portfolio Monetization.
"Non-Exclusive License" means the Non-Exclusive License Agreement between Licensor and Licensee dated on or about even date herewith.
"Patent Rights Agreement" means the Patent Rights Agreement in the form of Exhibit B.
"Patents" means, excluding the Abandoned Assets and the Excluded Assets, all (a) Live Assets; (b) patents or patent applications (i) to which any of the Live Assets directly or indirectly claims priority, (ii) for which any of the Live Assets directly or indirectly forms a basis for priority, and/or (iii) that were co-owned applications that incorporate by reference, or are incorporated by reference into, the Live Assets; (c) reissues, reexaminations, extensions, continuations, continuations in part, continuing prosecution applications, requests for continuing examinations, divisions, and registrations of any item in any of the foregoing categories (a) and (b); (d) foreign patents, foreign patent applications and foreign counterparts relating to any item in any of the foregoing categories (a) through (c), including, without limitation, certificates of invention, utility models, industrial design protection, design patent protection, and other governmental grants or issuances; (e) items in any of the foregoing categories (b) through (d) whether or not expressly listed as Live Assets and whether or not claims in any of the foregoing have been rejected, withdrawn, cancelled, or the like; and (f) all patentable inventions, invention disclosures, and patentable discoveries described in any item in any of the foregoing categories (a) through (e) and all other patent rights arising out of such inventions, invention disclosures, and discoveries (each such Live Asset, together with patents and patent applications in categories (b)(i), (b)(ii), (c), (d) and (e) above relating to such Live Asset, is referred to collectively as a "Patent Family").
"Person" means any individual or Entity.
"Portfolio Monetization" has the meaning set forth in subsection 2.3.
"Portfolio Profit" means Revenue from, minus Monetization Expenses of, a Portfolio Monetization.
"Profit" means
the total of the Portfolio Profit that is allocated under subsections 2.3 through 2.5 to the patents and patent applications among the Patents included in a Portfolio Monetization;
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plus Revenue from, minus remaining Monetization Expenses of, monetization events involving solely the Patents and which are not a Portfolio Monetization;
minus any remaining IP Group Expenses.
"Profit Participation" has the meaning set forth in subsection 2.2.
"Prosecution History Files" means all files, documents and tangible things, as those terms have been interpreted pursuant to rules and laws governing the production of documents and things, constituting, comprising or relating to the investigation, evaluation, preparation, prosecution, maintenance, defense, filing, issuance, registration, assertion or enforcement of the Patents.
"Reporting Period" has the meaning set forth in subsection 2.7.
"Revenue" means Amounts received by or on behalf of Licensee and recognized as revenue under generally accepted accounting principles from (a) licensing and/or (b) damages awarded in litigation or other proceedings, and/or (c) sale of the rights granted to Licensee under this Agreement. "Revenue," as used in this Agreement, may refer to Revenue from either a monetization event involving solely the Patents or a Portfolio Monetization.
"Term" has the meaning set forth in subsection 11.4.
"Transaction Agreements" means this Agreement, the Patent Rights Agreement (including the Patent Purchase Agreement attached as Exhibit A), the letter agreement between Licensor and an Affiliate of Licensee dated of even date herewith, the Work Agreement, the Common Interest Agreement, the Grant-Back License Agreement and the Non-Exclusive License.
"Transmitted Copy" has the meaning set forth in subsection 11.14.
"Work Agreement" means the Work Agreement entered into between Licensor and Licensee concurrently herewith.
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11. |
MISCELLANEOUS |
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11.1 |
Confidentiality of Terms |
(a) Subject to subsection 11.1(b) below, the parties hereto will keep the terms and existence of this Agreement and the identities of the parties hereto and their Affiliates confidential and will not now or hereafter divulge any of this information to any third party except (i) with the prior written consent of the other party; (ii) as otherwise may be required by law (subject to Section 11.1(b) below) or legal process, including, without limitation, in confidence to legal and financial advisors in their capacity of advising a party in such matters; (iii) during the course of litigation, so long as the disclosure of such terms and conditions is restricted in the same manner as is the confidential information of other litigating parties; (iv) in confidence to its legal counsel, accountants, banks and financing sources and their advisors solely in connection with administering or complying with its obligations with respect to this Agreement (including reporting by Licensee and its Affiliates to its investors under existing confidentiality obligations between Licensee and its Affiliates
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and such investors); (v) by Licensee (and, upon Licensee153s request, by Licensor), in order to perfect Licensee153s interest in the Patents or the Abandoned Assets with any governmental patent office; (vi) to enforce Licensee153s rights and interest in the Patents, the causes of action transferred under this Agreement, or the Abandoned Assets; or (vii) by Licensor or Licensee under a written obligation of confidentiality substantially similar as this subsection 11.1, to potential acquirers, licensees of or investors in Licensor or Licensee or the Patents, including without limitation such third parties153 legal counsel, accountants, banks, financing sources and advisors provided that such parties are subject to such confidentiality obligations; provided, in (ii) and (iii) above, (A) to the extent permitted by law, the disclosing party will use all legitimate and legal means available to minimize the disclosure to third parties, including, without limitation, seeking a confidential treatment request or protective order whenever appropriate or available; and (B) the disclosing party will provide the other party with at least ten (10) days153 prior written notice of such disclosure. Without limiting the foregoing, Licensor will cause its agents involved in this transaction to abide by the terms of this Section 11, including, without limitation, ensuring that such agents do not disclose or otherwise publicize the existence of this transaction with actual or potential clients in marketing materials or industry conferences.
(b) Disclosure of this Agreement, the financial impact of this Agreement and the terms and conditions of this Agreement (both in summary form and through exhibit filings) may be required under the Securities Exchange Commission ("SEC") regulations, stock market rules, or other laws. Licensor and Licensee may rely in good faith on advice of counsel when determining whether such disclosure is required; provided that Licensor and Licensee agree that such disclosures shall be limited to only those that are required by law in reliance on such opinion of counsel. Except as otherwise provided in this Section 11, Licensor or Licensee will make no public announcements and will not issue press releases relating to this Agreement without the prior written consent of the other Parties, which consent will not be unreasonably withheld. Licensor and Licensee have agreed to the text of a joint press release announcing the signing of this Agreement and the transactions contemplated hereby, a copy of which is attached hereto as Exhibit C. Licensor also agrees to provide Licensee an opportunity to review and an opportunity to comment on the Current Report on Form 8-K to be filed with the SEC and any script for investor calls announcing this Agreement and the transactions contemplated hereby. Licensor shall consult with Licensee before issuing or making, and shall provide Licensee with reasonable opportunity to review and comment upon, and shall consider in good faith and reasonably attempt to incorporate the views of Licensee in connection with any other press release, public filing or other public statement with respect to the transactions contemplated by this Agreement; provided that (i) any such disclosure will be limited to the specific information that is required by law to be disclosed, and (ii) Licensor shall not be required to consult, and shall only be required to give reasonable notice, of any public disclosure which is substantially similar in content to the joint press release, the script for the investor call and the Current Report on Form 8-K filed with respect to the transactions contemplated by this Agreement, or any other subsequent or previously made public filing, with respect to which Licensor has complied with the provisions of this subsection 11.1(b). Because Licensor has determined that this Agreement, the Patent Rights Agreement and the Grant-Back License are required by applicable law to be filed by Licensor as an exhibit to a Quarterly Report on Form 10-Q and/or Annual Report on Form 10-K, or otherwise needs to be filed with the SEC, Licensor shall (A) provide Licensee with at least ten (10) business days advance notice of such intent to file this Agreement and such other Transaction Agreements, and provide Licensee an opportunity to discuss and consider in good faith any input or request made by Licensee, (B) file a request with the SEC for confidential treatment of such portions of this Agreement and of such other Transaction Agreements that Licensee requests in writing to Licensor at
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least five (5) business days prior to the intended filing date that counsel for Licensor, after consultation with counsel for Licensee, advises should be eligible for confidential treatment, and provide Licensee with any updates and consider in good faith any input from Licensee with respect to such confidential treatment request, and (C) in any event, only file those portions of this Agreement as counsel for Licensor, after consultation with and consideration in good faith of the views of counsel for Licensee, determines are required to be filed by applicable law.
(c) Effective upon the Closing, the Reciprocal Non-disclosure Agreement dated as of July 13, 2009 between Licensor and an Affiliate of Licensee, together with all amendments and addendums (the "NDA"), shall be void and of no force or effect solely with respect to "Confidential Information" (as that term is defined in the NDA) that has been disclosed by or on behalf of Licensor and that relates to the Patents or Abandoned Assets; provided, however, that to the extent Licensor has shared information relating to third-party relationships with Licensee that is subject to a confidentiality obligation to a third party, Licensee agrees to keep such information confidential subject to the terms of the NDA except for disclosure to potential or actual licensees, purchasers or investors in the Patents, potential or actual investors or acquirers of Licensee or any Affiliate of Licensee, or any Licensee Affiliate153s counsel, auditors, consultants or other similar parties that are subject to a substantially similar confidentiality obligation to such Licensee Affiliate.
(d) In the event of any breach or default, threatened or otherwise, under this Section 11, the parties acknowledge and agree that damages alone would be insufficient to compensate for any such breach or default and that irreparable harm would result from such breach or default. Consequently, in the event of any such breach or default, or any threat of such breach or default by either party, the other party will be entitled to temporary or permanent injunctive relief, specific performance and such other equitable relief as may be appropriate in the circumstances in order to restrain or enjoin such breach or default. These remedies will not be the exclusive remedies for violation of the terms of the confidentiality obligations contained in this Section 11 but will be in addition to all other remedies available to the parties at law or in equity.
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11.2 |
Relationship of Parties |
The parties hereto are independent contractors. Nothing in this Agreement will be construed to create a partnership, joint venture, franchise, fiduciary, employment or agency relationship between the parties. Neither party has any express or implied authority to assume or create any obligations on behalf of the other or to bind the other to any contract, agreement or undertaking with any third party.
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11.3 |
Assignment; Successors |
Any assignment of this Agreement by Licensor, on one hand, or by Licensee, on the other, shall require the prior written consent of the other parties; provided, however, that (a) without Licensor153s consent, Licensee may assign, in whole or in part, this Agreement, and/or any license or other rights Licensee acquires hereunder, to its Affiliates or to an unaffiliated Entity that is managed and controlled by representatives of Licensee or its Affiliates, (b) without the other party153s consent, Licensee may assign this Agreement to the acquiring party pursuant to an Acquisition Transaction in which the ultimate parent company of Licensee is the party being acquired or whose assets are being acquired in such transaction and (c) without the other party153s consent, Licensor may assign this Agreement to the
** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
acquiring party pursuant to an Acquisition Transaction in which Licensor is the party being acquired or whose assets are being acquired in such transaction.
Subject to the above provisions of this subsection 11.3, the terms and conditions of this Agreement will inure to the benefit of Licensor, Licensee, and their respective successors, assigns and other legal representatives, and will be binding upon each of Licensor, Licensee and their respective successors, assigns, and other legal representatives.
|
11.4 |
Term and Termination |
The term of this Agreement (the "Term") will commence on the Effective Date and will continue in effect until the last of the Patents expires, or it will continue such longer time as may be necessary as determined at Licensee153s sole and absolute discretion, to permit Licensee to fully enforce and protect its rights under the Patents for any action or proceeding for infringement arising before such expiration (provided that Licensee153s obligation to pay Profit Participation, if any, in connection with such action or proceeding shall likewise continue in effect).
Subject to the provisions of subsection 11.6, in the event of a Payment Breach by Licensee, or of a material breach of this Agreement by Licensor, the nonbreaching party will be entitled to terminate the Term by written notice to the breaching party, if such breach is not cured within ten (10) business days (for a Payment Breach) and sixty (60) days (for non-monetary breaches) after written notice specifying the breach is given to the breaching party. Such circumstances in the foregoing sentence shall be the sole basis for termination of this Agreement by either party. For purposes of this provision, a "Payment Breach" is defined as failure by Licensee or an Affiliate of Licensee (a) to make the payments required to be made to Licensor under the schedule set forth on Schedule 2.1, or (b) to make any payment that Licensee and/or its Affiliates have determined, in accordance with subsections 2.3, 2.4, 2.5 and 2.7 of this Agreement, is due and payable to Licensor.
|
11.5 |
Survival/Effect of Termination |
No termination of the Term will relieve a breaching party of its obligations arising prior to such termination.
In the event of termination of this Agreement under subsection 11.4, (a) the license set forth in subsection 1.1 of this Agreement will terminate with respect to all Patents licensed thereunder, and (b) with respect to each Patent to which Licensee has acquired title pursuant to Sections 3 or 4 of the Patent Rights Agreement, Licensee shall use commercially reasonable efforts to assign all right, title and interest in such Patent to Licensor as soon as reasonably practicable, subject (in each case of clauses (a) and (b) above) to all of the conditions set forth with respect to the release or assignment of Released Patents in subsection 5.4(c) of this Agreement. Licensee agrees to reasonably cooperate with the recording of transfer of title of such Patents to Licensor, provided that Licensor shall bear all expenses (and shall reimburse Licensee for all of its expenses) relating to such transfer.
In the event of termination of this Agreement by Licensor following a Payment Breach by Licensee, Licensee shall continue to be obligated to pay Licensee Profits, if any, generated by any Revenue that may be paid to Licensee after such termination with respect to any sublicenses, covenants not to sue or other encumbrances under the Patents granted by Licensee or any Affiliate of Licensee at or after the Closing and prior to such termination.
** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
|
11.6 |
Remedies |
Licensor153s sole and exclusive remedy in the event of any claim, dispute, or controversy under this Agreement, other than a Payment Breach, will be the recovery of money damages, subject to the disclaimer and limitations set forth in this Agreement, including, without limitation, those in subsections 9.1, 9.2 and 9.3.
|
11.7 |
Export Controls |
It is understood and agreed that to the extent Licensor is subject to United States laws and regulations controlling the export of technical data, computer software, laboratory prototypes, and other commodities (including the Arms Export Control Act, as amended, and the Export Administration Act of 1979), its obligations hereunder are contingent on compliance with applicable United States export laws and regulations. The transfer of certain technical data and commodities may require a license from the cognizant agency of the United States Government and/or written assurances by Licensee that Licensee will not export data or commodities to certain foreign countries without prior approval of such agency. Licensor neither represents that a license will not be required nor that, if required, it will be issued.
|
11.8 |
Governing Law |
Any claim arising under or relating to this Agreement will be governed by the laws of the State of Delaware, without regard to choice of law principles to the contrary.
|
11.9 |
Dispute Resolution |
Except for the payment of the License Issue Fee set forth in subsection 2.1 and as provided under subsection 11.1, the parties hereby waive their respective rights to seek remedies in court, and will resolve any and all claims, disputes, or controversies relating in any way to, or arising out of, this Agreement, including, without limitation, any breach or threatened breach of this Agreement, the amount of the Profit Participation due under this Agreement, or the calculation of Profit ("Disputes"), as follows:
(a) The party raising the Dispute shall promptly provide the other party with a written notice describing the nature of the Dispute in reasonable detail (a "Dispute Notice"). During the thirty (30) day period after a party153s receipt of a Dispute Notice, the parties will commence discussions to attempt to resolve the Dispute.
(b) If the parties cannot timely resolve the Dispute through negotiation, before resorting to arbitration the parties will try in good faith to settle the Dispute by mediation before a mutually agreed mediator in Seattle, Washington. The mediation will be conducted in English and administered by the American Arbitration Association ("AAA") under its Commercial Mediation Procedures. If the parties are unable to agree upon a mutually acceptable mediator, the AAA will appoint a qualified mediator. The mediation proceeding shall take place on the earliest practicable date following the submission of a request for mediation by either party, which request shall be submitted within sixty (60) days after a party153s receipt of a Dispute Notice.
(c) If the Dispute is not resolved through mediation within thirty (30) days after the mediation hearing, the parties will submit the Dispute to final and binding arbitration
** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
administered by the AAA under its Commercial Arbitration Rules. The arbitrator may enter a default decision against any party who fails to participate in the arbitration proceedings.
(i) The arbitration will be conducted before a mutually agreed panel of three (3) neutral arbitrators in Seattle, Washington. If the parties are unable to agree upon a mutually acceptable panel of three (3) arbitrators, the panel will be selected by the AAA.
(ii) The arbitration hearing will be conducted in English, and under no circumstances will the arbitration hearing extend for more than one (1) business day. The award shall be rendered within one hundred twenty (120) days of the demand and the arbitrators shall agree to comply with this schedule before accepting appointment. The parties have included these time limits to expedite the proceeding, but they are not jurisdictional, and the arbitrator may for good cause permit reasonable extensions which shall not affect the validity of the award.
(iii) All documents and information relevant to the Dispute in the possession of any party shall be made available to the other party not later than sixty (60) days after the demand for arbitration is served, and the arbitrator may permit such depositions or other discovery deemed necessary for a fair hearing.
(iv) The parties agree that the arbitration method to be employed by the parties will be "baseball arbitration," in which case each party will submit to the arbitrators and exchange with each other in advance of the hearing their last, best offers and the arbitrators will be limited to awarding only one or the other of the two figures submitted.
(v) The arbitrators153 award may be entered and enforced in any court with competent jurisdiction and will be nonappealable. Such decision may be used in a court of law only for the purpose of seeking enforcement of the arbitrator153s decision permitted under this Agreement.
(vi) The award shall be in writing, shall be signed by a majority of the arbitrators, and shall include a statement setting forth the reasons for the disposition of any claim.
(vii) The costs of the arbitration proceeding, including reasonable attorneys153 fees and costs, will be determined by the arbitrators, who may apportion costs equally, or in accordance with any finding of fault or lack of good faith of either party.
(viii) To the fullest extent permitted by law, no arbitration under this Agreement shall be joined to any other arbitration, and no class arbitration proceedings shall be permitted.
(ix) Except as may be required by law, neither a party nor any arbitrator may disclose the existence, content, or results of any arbitration hereunder without the prior written consent of both parties.
** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
|
11.10 |
Notices and Payment Delivery |
All notices required or permitted to be given hereunder will be in writing, will make reference to this Agreement and will be delivered by hand, or dispatched by prepaid air courier to the addresses set forth on the cover page of this Agreement. Such notices will be deemed given when received by addressee or, if delivery is not accomplished by reason of some fault of the addressee, when tendered for delivery. Either party may give written notice of a change of address to the other. After notice of such change has been received, any notice or request will thereafter be given to such party at such changed address.
|
11.11 |
Severability |
If any provision of this Agreement is found to be invalid or unenforceable, then the remainder of this Agreement will have full force and effect, and the invalid provision will be modified, or partially enforced, to the maximum extent permitted to effectuate the original objective.
|
11.12 |
Waiver |
Failure by either party to enforce any term of this Agreement will not be deemed a waiver of future enforcement of that or any other term in this Agreement or any other agreement that may be in place between the parties.
|
11.13 |
Miscellaneous |
This Agreement, including its exhibits and schedules, together with the other Transaction Agreements, constitute the entire agreement between the parties with respect to the subject matter hereof and merge and supersede all prior and contemporaneous agreements, understandings, negotiations, and discussions. Neither of the parties will be bound by any conditions, definitions, warranties, understandings, or representations with respect to the subject matter hereof other than as expressly provided in this Agreement or in the other Transaction Agreements. The section headings contained in this Agreement are for reference purposes only and will not affect in any way the meaning or interpretation of this Agreement. This Agreement is not intended to confer any right or benefit on any third party (including, but not limited to, any employee or beneficiary of any party), and no action may be commenced or prosecuted against a party by any third party claiming as a third-party beneficiary of this Agreement or any of the transactions contemplated by this Agreement. No oral explanation or oral information by either party hereto will alter the meaning or interpretation of this Agreement. No amendments or modifications will be effective unless in writing and signed by authorized representatives of both parties; provided, however, that, after the Closing, Licensee may update Schedule A to include any patents or patent applications within the definition of Patents, based on its review of the Deliverables as defined in subsection 3.1, by providing updated Schedule A to Licensor. The terms and conditions of this Agreement and the other Transaction Agreements will prevail notwithstanding any different, conflicting or additional terms and conditions that may appear on any letter, email or other communication or other writing not expressly incorporated into this Agreement.
|
11.14 |
Counterparts; Electronic Signature |
This Agreement may be executed in counterparts, each of which will be deemed an original, and all of which together constitute one and the same instrument. Each party will execute
** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
and promptly deliver to the other parties a copy of this Agreement bearing the original signature. Prior to such delivery, in order to expedite the process of entering into this Agreement, the parties acknowledge that a Transmitted Copy of this Agreement will be deemed an original document. "Transmitted Copy" means a copy bearing a signature of a party that is reproduced or transmitted via email of a .pdf file, photocopy, facsimile, or other process of complete and accurate reproduction and transmission.
** CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
SCHEDULE A
LIVE ASSETS
*****[omitted]
SCHEDULE B
MEMORANDUM OF EXCLUSIVE LICENSE/RIGHTS
Digimarc Corporation, an Oregon corporation, having offices at 9405 SW Gemini Drive, Beaverton, OR 97008, ("Licensor"), has granted to IV Digital Multimedia Inventions LLC, a Delaware limited liability company, having an office at 2711 Centerville Road, Suite 400, Wilmington, DE 19808 ("Licensee"), the exclusive, worldwide, transferable, sublicensable license of all its rights of any kind conferred by the patents, patent applications, and provisional patent applications listed in the attached Appendix, including, without limitation, the rights of any kind to, or conferred by, the Patents (defined below) to (a) use or otherwise practice any art, methods, processes, and procedures covered by the Patents, (b) make, have made, use, offer to sell, sell, import, and otherwise distribute or dispose of any inventions, discoveries, products, services, technologies or services covered by the Patents, (c) otherwise exploit any rights granted in the Patents and/or any invention or discovery described in the Patents, and (d) exclude other Persons from exercising any of such rights.
The "Patents" include all right, title, and interest that exist today and may exist in the future in and to any and all of the provisional patent applications, patent applications and patents listed in the attached Appendix and any and all applications, patents, certificates, models, protections, grants, and/or issuances resulting from the rights granted in subsection (a) below.
Licensor has also assigned, transferred and conveyed to Licensee all right, title, and interest in and to:
(a) rights to apply in any or all countries of the world for patents, certificates of invention, utility models, industrial design protections, design patent protections, or other governmental grants or issuances of any type related to any of the Patents and the inventions and discoveries therein including the right to claim priority to any of the Patents (including, without limitation, continuation, division and continuation-in-part priority), with the resulting applications, patents, certificates, models, protections, grants, and/or issuances also being included under the definition of Patents;
(b) all causes of action and enforcement rights of any kind (whether such claims, causes of action or enforcement rights are known or unknown; currently pending, filed, to be filed, or otherwise) under the Patents and/or under or on account of any of the Patents for past, current and future infringement of the Patents, including without limitation, all rights to (i) pursue and collect damages, profits and awards of whatever nature recoverable, (ii) injunctive relief, (iii) other remedies, and (iv) compromise and/or settle all such claims, causes of action and enforcement rights, for such infringement by granting an infringing party a sublicense or otherwise; and
(c) rights to collect royalties or other payments under or on account of any of the Patents or any of the foregoing.
SCHEDULE B
The preparation, filing, prosecution, maintenance and defense of the Patents will be under Licensee153s exclusive control and discretion, in all pertinent governmental patent offices anywhere in the world.
Licensor hereby irrevocably grants Licensee the exclusive power to grant one or more powers of attorney with respect to the Patents and the exclusive discretion to transfer that right to Licensee153s agent(s) or representative(s) that Licensee may designate one or more time, now or in the future. Licensor understands that execution of this document confers on any attorney(s) or agent(s) to whom Licensee may grant a power of attorney the exclusive right to correspond with any patent office with repect to the Patents, and that this document does not create an attorney - client relationship with such practitioners to whom Licensee grants powers of attorney pursuant to this paragraph.
IN WITNESS WHEREOF this Memorandum of Exclusive License/Rights is executed at Beaverton, Oregon on October 5, 2010.
|
LICENSOR: |
||
|
DIGIMARC CORPORATION |
||
|
By: |
||
|
Robert Chamness |
||
|
Chief Legal Officer and Secretary |
||
|
STATE OF OREGON |
) |
|
|
) ss. |
||
|
COUNTY OF WASHINGTON |
) |
ATTESTATION OF SIGNATURE PURSUANT TO 28 U.S.C. § 1746
The undersigned witnessed the signature of Robert Chamness to the above Assignment of Patent Rights on behalf of Digimarc Corporation and makes the following statements:
1. I am over the age of 18 and competent to testify as to the facts in this Attestation block if called upon to do so.
2. Robert Chamness is personally known to me (or proved to me on the basis of satisfactory evidence) and appeared before me on October 5, 2010 to
SCHEDULE B
execute the above Assignment of Patent Rights on behalf of Digimarc Corporation.
3. Robert Chamness subscribed to the above Assignment of Patent Rights on behalf of Digimarc Corporation.
I declare under penalty of perjury under the laws of the United States of America that the statements made in the three(3) numbered paragraphs immediately above are true and correct.
EXECUTED on October 5, 2010
_________________________________________
Print Name:_______________________________
SCHEDULE B
APPENDIX
******** [omitted]
SCHEDULE C
TRANSFER OF RIGHTS IN ABANDONED ASSETS
Digimarc Corporation, an Oregon corporation, having offices at 9405 SW Gemini Drive, Beaverton, OR 97008, ("Licensor"), has granted to IV Digital Multimedia Inventions LLC, a Delaware limited liability company, having an office at 2711 Centerville Road, Suite 400, Wilmington, DE 19808 ("Licensee"), the exclusive, worldwide, transferable, sublicensable license of all its rights of any kind conferred by the patents, patent applications, and provisional patent applications listed in the attached Appendix.
Licensor assigns to Licensee the rights, if any, to revive prosecution of claims under such assets and to sue or otherwise enforce any claims under such assets for past, present or future infringement.
Licensor hereby authorizes the respective patent office or governmental agency in each jurisdiction to make available to Licensee all records regarding the Abandoned Assets.
DATED this 5th day of October, 2010.
|
LICENSOR: |
||
|
DIGIMARC CORPORATION |
||
|
By: |
||
|
Robert Chamness |
||
|
Chief Legal Officer and Secretary |
||
SCHEDULE C
APPENDIX
******** [omitted]
SCHEDULE D
LIST OF DELIVERABLES
Licensor will cause the following to be delivered to Licensee, or Licensee153s representative, within 14 days of closing for files necessary to respond to final deadlines of actions due for Live Assets within three months after closing, and for remaining items pertaining to Live Assets within 45 days of closing, and for remaining items pertaining to Abandoned Assets, within 45 days of a request by Licensee, but no earlier than 90 days after closing:
(a) U.S. Patents. For each item of the Patents that is an issued United States patent, and for each Abandoned Asset to which any Live Asset claims priority to such issued U.S. patent (whether a patent or similar protection has been issued or granted), a copy of
|
(i) |
Assignment Agreement(s), |
|
(ii) |
conception and reduction to practice materials, and |
|
(iii) |
the publicly available file history for Abandoned Assets (to be obtained in both electronic disk image and hard copy, at Licensee153s option, by Licensee or by Licensor through a vendor designated by Licensee, in all cases for delivery directly to Licensee153s representative), |
|
(iv) |
the Docket, |
|
(v) |
each relevant license and security agreement; |
(b) U.S. Patent Applications. For each item of the Patents that is a U.S. patent application, a copy of
|
(i) |
the patent application, as filed, |
|
(ii) |
if unpublished, a copy of the filing receipt and the non-publication request, if available, |
|
(iii) |
the Assignment Agreement(s), |
|
(iv) |
the Docket, |
|
(v) |
all available conception and reduction to practice materials, |
|
(vi) |
evidence of foreign filing license (or denial thereof), |
|
(vii) |
each relevant license and security agreement, and |
|
(viii) |
the Prosecution History Files; |
(c) Common Interest Agreement. Licensor will deliver any Initial Deliverables to be delivered by Licensor under paragraph (b) above to Licensee153s legal counsel, together with two (2) executed originals of the Common Interest Agreement.
(d) Non-U.S. For each Live Asset for which a non-United States patent or similar protection has been issued or granted, a copy of
|
(i) |
the certificate for patent prosecution issued by the applicable government, if available |
|
(ii) |
each pending foreign application |
|
(iii) |
the Docket, |
|
(iv) |
the Assignment Agreement(s), |
|
(v) |
applicant name change, if necessary, and |
|
(vi) |
each relevant license and security agreement. |
(e) Thorough Search/Declaration. If originals of the Initial Deliverables are not available and the required copies are not delivered to Licensee prior to Closing, Licensor will cause (i) such copies of the Initial Deliverables to be sent to Licensee or Licensee153s representative promptly if and after such originals are located and (ii) an appropriate executive officer of Licensor to deliver to Licensee a declaration, executed by such officer under penalty of perjury, detailing Licensor153s efforts to locate such unavailable original documents and details regarding how delivered copies were obtained.
Capitalized terms used in this Schedule D are defined in the Patent License Agreement to which this Schedule D is attached.
SCHEDULE D
SCHEDULE 2.1
PAYMENT SCHEDULE FOR LICENSE ISSUE FEE
|
Date |
Payment |
|||
|
Closing |
$ |
2,600,000 |
||
|
November 15, 2010 |
$ |
2,675,000 |
||
|
February 15, 2011 |
$ |
2,750,000 |
||
|
May 16, 2011 |
$ |
2,825,000 |
||
|
August 15, 2011 |
$ |
2,875,000 |
||
|
November 15, 2011 |
$ |
2,950,000 |
||
|
February 15, 2012 |
$ |
3,025,000 |
||
|
May 15, 2012 |
$ |
3,100,000 |
||
|
August 15, 2012 |
$ |
3,175,000 |
||
|
November 15, 2012 |
$ |
3,250,000 |
||
|
February 15, 2013 |
$ |
3,350,000 |
||
|
May 15, 2013 |
$ |
3,425,000 |
||
SCHEDULE 2.1
SCHEDULE 2.3
PORTFOLIO MONETIZATION ALLOCATION METHODOLOGY
Licensee and/or its Affiliates will rank each of the patents and patent applications included in the Portfolio Monetization as of the date of the applicable Portfolio Monetization in one of the following four categories:
Category R1: patents and patent applications actually asserted against the licensee and discussed in detail during the discussions leading to the Revenue (i.e., named, analyzed and discussed in the assertion materials and negotiations);
Category R2: patents and patent applications specifically mentioned but not discussed in detail in the discussions leading to the Revenue (i.e., listed as one of the patents that the licensee might infringe or need to license);
Category R3: patents and patent applications in the same patent class code as one or more R1 or R2 patents and patent applications (i.e., not asserted or specifically mentioned, but, as evidenced by its class code, may have been infringed or needed to be licensed by the licensee); and
Category R4: all other patents and patent applications included in the Portfolio Monetization.
Portfolio Profit will be allocated among the patents and patent applications included in the Portfolio Monetization according to the following formula (except, and to the extent, a Portfolio Monetization specifically assigns allocations otherwise):
P = R * (VA/PN)
Where:
P = Portfolio Profit allocated to each patent and/or patent application included in a Portfolio Monetization in one of the four categories
R = Portfolio Profit
VA = Value Allocation for that patent category (see below)
PN = Aggregate number of patents or patent applications from that category included in the Portfolio Monetization
The Value Allocations for the four categories are:
R1 = 55%
R2 = 27.5%
R3 = 13.75%
R4 = 3.75%
SCHEDULE 2.3
EXHIBIT A
COMMON INTEREST AGREEMENT
THIS COMMON INTEREST AGREEMENT ("Agreement") is entered into between the undersigned legal counsel, for themselves and on behalf of the parties they represent (as indicated below).
|
1. |
Background. |
1.1 Invention Law Group, P.C. and IV Digital Multimedia Inventions, LLC, a Delaware limited liability company (collectively the "IV Entities"), and Digimarc Corporation ("Digimarc") (the IV Entities and Digimarc are sometimes hereafter referred to herein as a "party" or the "parties"), have entered into a Patent License Agreement and other transaction agreements with respect to certain patents (including their patent applications filed or to be filed throughout the world). This transaction will at least generate patent prosecution, patent portfolio monetization and patent licensing work (the "Patent Matters").
1.2 The parties have a common interest concerning the Patent Matters and have agreed to treat their communications and those of their respective legal Counsel ("Counsel") concerning the Patent Matters as protected by the common interest privilege. Furtherance of the Patent Matters requires the exchange of proprietary documents and information, the joint development of legal strategies and the exchange of attorney work product developed by the parties and their respective Counsel.
|
2. |
Common Interest. |
2.1 The parties have a common, joint and mutual legal interest in cooperating with each other, to the extent permitted by law, to share information that one party asserts is protected by the attorney-client privilege and/or by the work product doctrine with respect to the Patent Matters. The parties shall cause any Counsel who may participate in this Agreement to be bound by its terms.
2.2 In order to further their common interest, the parties and their Counsel may exchange their own privileged and work product information, orally and in writing, including, without limitation, factual analyses, mental impressions, legal memoranda, source materials, draft legal documents, prosecution history files, analysis of the validity or infringement of patent claims and other information (hereinafter "Common Interest Materials"). The sole purpose for the exchange of the Common Interest Materials is to support the parties153 common interest with respect to the Patent Matters. Any Common Interest Materials exchanged shall continue to be protected under all applicable privileges and no such exchange shall constitute a waiver of any applicable privilege or protection.
|
3. |
Relationship; Additions; Termination. |
3.1 This Agreement does not create any agency or similar relationship among the parties. Neither party nor their respective Counsel has the authority to waive any applicable privilege or doctrine on behalf of any other party.
3.2 Nothing in this Agreement affects the separate and independent representation of each party by its respective Counsel or creates an attorney client relationship between the Counsel for a party and the other party to this Agreement.
3.3 This Agreement shall continue until the earlier of:
(a) the end of the term, or termination by either party, of the Patent License Agreement; or
(b) until such time as either party exercises its ability to withdraw from and terminate the Agreement by thirty (30) days written notice if, in either parties153 reasonable judgment, the interests of the parties are no longer sufficiently aligned to have a common interest concerning the Patent Matters.
3.4 Notwithstanding termination, this Agreement shall continue to protect all Common Interest Materials disclosed prior to termination. Sections 3 and 4 shall survive termination of this Agreement.
|
4. |
General Terms. |
4.1 This Agreement is governed by the laws of the State of Washington, without regard to its choice of law principles to the contrary. In the event any provision of this Agreement is held by any court of competent jurisdiction to be illegal, void or unenforceable, the remaining terms shall remain in effect. Failure of either party to enforce any provision of this Agreement shall not be deemed a waiver of future enforcement of that or any other provision.
4.2 The parties agree that a breach of this Agreement may result in irreparable injury, that money damages would not be a sufficient remedy and that the disclosing party shall be entitled to seek equitable relief, including injunctive relief, as a non-exclusive remedy for any such breach.
4.3 Notices given under this Agreement shall be given in writing and delivered by messenger or overnight delivery service to a party and their respective Counsel at their last known address, and shall be deemed to have been given on the day received.
4.4 This Agreement is effective and binding upon each party as of the date it is signed by or on behalf of a party and may be amended only by a writing signed by or on behalf of each party. This Agreement may be executed in counterparts. Any signature reproduced or transmitted via email of a .pdf file, photocopy, facsimile or other process of complete and accurate reproduction and transmission shall be considered an original for purposes of this Agreement.
EXHIBIT A
This Agreement is being executed by each of the undersigned Counsel with the fully informed authority and consent of the respective party it represents.
|
Counsel for Digimarc Corporation |
||
|
By: |
||
|
Robert Chamness |
||
|
Chief Legal Officer and Secretary |
||
|
October 5, 2010 |
||
|
Counsel for Invention Law Group, P.C. |
||
|
By: |
||
|
John Bove |
||
|
Date: |
||
|
Counsel for IV Digital Multimedia Inventions, LLC |
||
|
By: |
||
|
Thomas J. Hall |
||
|
Date: |
||
[Signature Page to Common Interest Agreement]
EXHIBIT A
EXHIBIT C
JOINT PRESS RELEASE
********* [omitted]