{"id":42055,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/agreement-to-assign-patent-applications-and-royalty-sharing.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"agreement-to-assign-patent-applications-and-royalty-sharing","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/agreement-to-assign-patent-applications-and-royalty-sharing.html","title":{"rendered":"Agreement to Assign Patent Applications and Royalty Sharing Agreement &#8211; Microsoft Corp. and Expedia Inc."},"content":{"rendered":"<pre>\n\n              AGREEMENT TO ASSIGN PATENT APPLICATIONS AND ROYALTY\n                                SHARING AGREEMENT\n                                     BETWEEN\n                     MICROSOFT CORPORATION AND EXPEDIA, INC.\n\n         THIS AGREEMENT (this \"Agreement\") is entered into as of November 6,\n2001 by and between MICROSOFT Corporation, a corporation organized under the\nlaws of the State of Washington (\"Microsoft\"), and EXPEDIA, Inc., a corporation\norganized under the laws of the State of Washington (\"Expedia\").\nMicrosoft and Expedia are hereinafter referred to as the \"Parties.\"\n\n         WHEREAS, the Parties have entered into a License Agreement dated as of\nOctober 1, 1999 (the \"License Agreement\");\n\n         WHEREAS, the Parties have entered into an Agreement and Plan of\nRecapitalization and Merger dated as of July 15, 2001 (the \"APRM\"); and\n\n         WHEREAS, as part of the consideration of the APRM, Microsoft desires to\nassign, and Expedia desires to acquire, all right, title, and interest in and to\na number of patent applications that are owned by Microsoft.\n\nNOW, THEREFORE, for and in consideration of the mutual covenants contained\nherein, and for other good and valuable consideration receipt of which each\nparty hereby acknowledges, the parties hereby agree as follows:\n\n1.       DEFINITIONS\n\n         1.1 \"AFFILIATE\" shall mean any entity in which Microsoft or Expedia (as\nthe case may be), directly or indirectly, or through one or more intermediaries,\nholds the beneficial ownership of more than fifty percent (50%) or the equity\nsecurities or interests, and only so long as such ownership continues.\n\n         1.2 \"ASSIGNED PATENT APPLICATIONS\" shall mean the patent applications\nlisted in Exhibit 1, and all Intellectual Property Rights therein and thereto.\n\n         1.3 \"ONLINE TRAVEL SERVICES\" shall mean any online service for\nreserving or purchasing travel services (e.g. airline tickets, lodging, rental\ncars, cruises, and resort vacation packages) accessed with an interactive\nelectronic device (whether now known or hereafter developed) enabling the user\nto view information and respond with additional information. The interactive\nelectronic device may be, by way of example and not limitation, a personal\ncomputer, personal digital assistant, automated teller machine, screen\ntelephone, or Internet-enabled television.\n\n         1.4 \"INTELLECTUAL PROPERTY RIGHTS\" shall mean copyrights, patents\n(including patent improvements), patent applications, trade secrets or other\nintellectual property rights (but not trademarks, trade names or service marks)\nunder applicable law.\n\n\n\n\n2.       GRANT OF RIGHTS.\n\n         2.1 Microsoft agrees to assign all of Microsoft's right, title and\ninterest in the Assigned Patent Applications, subject to the conditions set\nforth in Section 2.3 of this Agreement. In order to effect such ownership\ntransfer, contemporaneously with the execution of this Agreement, Microsoft has\nexecuted that certain separate assignment document, to be recorded with the\nUnited States Patent and Trademark Office. Microsoft shall reasonably cooperate\nwith Expedia in the filing and prosecution of the Assigned Patent Applications.\n\n         2.2 Microsoft promptly shall deliver to Expedia all documentation\npertaining to the Assigned Patent Applications, including copies of all\ncorrespondence to or from examining authorities regarding such Assigned Patent\nApplications, patents and prior art searches pertaining to such Assigned Patent\nApplications, and all correspondence with any attorney involved in the\npreparation and\/or prosecution of the Assigned Patent Applications.\n\n         2.3 Upon execution of the assignment document, Expedia grants back to\nMicrosoft and its respective Affiliates a non-exclusive, non-transferable,\nworldwide, irrevocable, perpetual, royalty-free, fully paid-up, license under\nthe Assigned Patent Applications to reproduce, make, have made, use, import,\noffer for sale, and sell any products or services.\n\n3.       ROYALTY SHARING\n\n         3.1 Expedia shall pay Microsoft forty percent (40%) of any royalties\ncollected by Expedia in the licensing of any of the Assigned Patent Applications\nor subsequently issued patents to licensees who do not provide Online Travel\nServices. In the event that Expedia has to litigate to obtain, maintain or\ncollect such royalties, Expedia is entitled to deduct reasonable attorneys fees,\ncosts and expert witness fees from the total royalties collected.\n\n         3.2 Expedia agrees to make written reports to Microsoft quarterly\ndetailing the royalties collected pursuant to Section 3.1 above. Expedia's\nobligation to produce this report commences in the first quarter in which such\nroyalties are collected. Expedia further agrees to maintain records showing\nroyalties collected to enable the royalties payable hereunder by Expedia to be\ndetermined and to permit its books and records to be examined from time to time\nto the extent necessary to verify the written reports provided.\n\n         3.3 Expedia shall pay all royalties owed on a quarterly basis to\nMicrosoft for a period of ten (10) years from the Effective Date of the\nAgreement at which time Microsoft's ownership interest in any subsequent\nroyalties shall terminate. The quarterly royalty payments shall be submitted\nwith the written report provided for in this Section 3.2.\n\n\n\n\n4.       WARRANTIES AND LIMITATION OF LIABILITY\n\n         4.1      WARRANTIES.\n\n                  4.1.1 Microsoft represents and warrants that: (a) it is a\ncorporation duly organized, validly existing, and in good standing under the\nlaws of the State of Washington and has full power and authority to enter into\nthis Agreement and perform its obligations hereunder; (b) immediately prior to\nthe execution of this Agreement (and subject to such licenses as have been\ndisclosed to Expedia in writing), Microsoft owns all right, title and interest\nin and to the Assigned Patent Applications; and (c) it has the legal right to\ngrant all the rights it purports to grant and to convey all the rights it\npurports to convey pursuant to Section 2.1 above.\n\n                  4.1.2 Expedia represents and warrants that: (a) it is a\ncorporation duly organized, validly existing, and in good standing under the\nlaws of the State of Washington and has full power and authority to enter into\nthis Agreement and perform its obligations hereunder, and (b) provided the\ngrants, conveyances and assignments made under Section 2.1 above are effective,\nit has the legal right to grant all the rights it purports to grant pursuant to\nSection 2.3 above.\n\n                  4.1.3 EXCEPT AS PROVIDED IN THIS SECTION 4.1, EACH PARTY\nDISCLAIMS ALL WARRANTIES, EITHER EXPRESS, IMPLIED OR STATUTORY, INCLUDING BUT\nNOT LIMITED TO ANY (IF ANY) IMPLIED WARRANTIES OF MERCHANTABILITY, OF FITNESS\nFOR A PARTICULAR PURPOSE, AND OF LACK OF NEGLIGENCE OR LACK OF WORKMANLIKE\nCONDUCT OR EFFORT. ALL PATENT APPLICATIONS ASSIGNED UNDER THIS AGREEMENT ARE\nPROVIDED AS IS WITH ALL FAULTS, AND NO WARRANTIES OR PROMISES ARE MADE THAT THE\nSAME WILL WORK OR WORK FOR ANY PARTICULAR PURPOSE. EXCEPT AS PROVIDED IN THIS\nSECTION 4.1, THERE IS NO WARRANTY OF TITLE, AUTHORITY OR NON-INFRINGEMENT IN ANY\nSUCH PATENT APPLICATIONS.\n\n         4.2 LIMITATION OF LIABILITY. TO THE MAXIMUM EXTENT PERMITTED BY\nAPPLICABLE LAW, IN NO EVENT SHALL ANY PARTY BE LIABLE FOR ANY SPECIAL,\nINCIDENTAL OR CONSEQUENTIAL DAMAGES WHATSOEVER ARISING OUT OF OR IN ANY WAY\nRELATED TO THIS AGREEMENT, EVEN IF THE PARTY HAS BEEN ADVISED OF THE POSSIBILITY\nOF SUCH DAMAGES. THE IMMEDIATELY PRECEDING SENTENCE SHALL HAVE NO APPLICABILITY\nTO ANY LEGAL CAUSE OF ACTION ARISING FROM ANY PARTY'S ACTIVITIES OUTSIDE THE\nSCOPE OF THIS AGREEMENT.\n\n5.       GENERAL \n\n         5.1 ENTIRE AGREEMENT. This Agreement constitutes the entire agreement\nof the parties with respect to the subject matter hereof, and to the extent that\nthis agreement is inconsistent with any prior agreement(s) between the Parties,\nthe terms of this agreement\n\n\n\nare to control. Nothing in this Agreement shall be deemed to alter the survival\nprovisions of Section 7.4 of the License Agreement.\n\n         5.2 AMENDMENT. This Agreement shall not be amended or otherwise\nmodified except by a written agreement dated subsequent to the date of this\nAgreement and signed on behalf of Microsoft and Expedia by their respective duly\nauthorized representatives.\n\n         5.3 GOVERNING LAW. This Agreement shall be governed by and construed in\naccordance with the laws of the State of Washington.\n\n         5.4 ASSIGNMENT. This Agreement shall be binding upon and inure to the\nbenefit of the parties hereto and their respective successors and assigns.\n\n         5.5 NO WAIVER. No waiver of any breach of any provision of this\nAgreement shall constitute a waiver of any prior, concurrent or subsequent\nbreach of the same or any other provisions hereof, and no waiver shall be\neffective unless made in writing and signed by an authorized representative of\nthe waiving party.\n\n         5.6 SAVINGS CLAUSE. If any provision of this Agreement shall be held by\na court of competent jurisdiction to be illegal, invalid or unenforceable, the\nremaining provisions shall remain in full force and effect.\n\n            5.7 FURTHER ASSURANCES. Each party agrees to take such further\naction and execute, deliver and\/or file such documents or instruments as are\nnecessary to carry out the terms and purposes of this Agreement.\n\n            5.8 SECTION HEADINGS. The section headings used in this Agreement\nare intended for convenience only and shall not be deemed to supersede or modify\nany provisions.\n\n           IN WITNESS WHEREOF, the parties have executed this Agreement as of\nthe Effective Date.\n\n\nMICROSOFT CORPORATION                         EXPEDIA, INC.\n\n\n\nBy \/s\/ Richard Emerson                        By \/s\/ Mark S. Britton\n   ------------------------------------          -------------------------------\n     its authorized representative                 its authorized representative\n\n\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[7491,8221],"corporate_contracts_industries":[9513,9525],"corporate_contracts_types":[9613,9616],"class_list":["post-42055","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-expedia-inc","corporate_contracts_companies-microsoft-corp","corporate_contracts_industries-technology__software","corporate_contracts_industries-transportation__services","corporate_contracts_types-operations","corporate_contracts_types-operations__ip"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/42055","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=42055"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42055"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42055"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42055"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}