Common use of SMI Covenant Clause in Contracts

SMI Covenant. Subject to the SMI Covenant set forth in 6 (b)(i),but subject to the provisions of section 5.4 of the Patent Purchase Agreement, IGT and SMI both have the right to make, have made, use, sell, have sold, import, and export products under the ENPAT Patents […***…] provided, however, if such use avoids royalties that would otherwise be due from PGIC, then PGIC will remain responsible for such royalties. i. Notwithstanding anything in this Agreement to the contrary, SMI shall not, for the first three (3) years of this Agreement, make, have made, use, sell, have sold, import, export, sublicense, or distribute, any products that use automated chip tracking technology or technology covered by the SMI Patents; except that SMI may internally develop such products. This section may be terminated and severed pursuant to the Patent Purchase Agreement. ii. After the first 3 years of this Agreement, the scope of the SMI Covenant shall be modified. During the second three years of this Agreement, SMI shall not make, have made, use, sell, have sold, import, export, sublicense, or distribute, any products that use RFID or optical chip tracking technology or technology covered by the SMI Patents, other than pursuant to this Agreement; except that SMI may internally develop such products. This section may be terminated and severed pursuant to the Patent Purchase Agreement. iii. Notwithstanding the foregoing, if after five (5) years from the Effective Date, PGIC/IGT have not installed at least 5,000 tables with automated chip tracking technology, then SMI may request that PGIC and IGT release SMI from the SMI Covenant. Upon such request, IGT will (on behalf of IGT and PGIC) negotiate with SMI, in good faith, the terms and conditions that would be acceptable for said release. PGIC consents to any such release negotiated by IGT. iv. For the avoidance of doubt, SMI is not prohibited from making, using or selling RFID products provided that such RFID products are not within the SOA, nor within the Scope of Product of either IGT or PGIC and provided further that said RFID products are not prohibited by this Section 6(b).

SMI Covenant. Subject to the SMI Covenant set forth in 6 (b)(i),but subject to the provisions of section 5.4 of the Patent Purchase Agreement, IGT and SMI both have the right to make, have made, use, sell, have sold, import, and export products under the ENPAT Patents […...***…...] provided, however, if such use avoids royalties that would otherwise be due from PGIC, then PGIC will remain responsible for such royalties. i. Notwithstanding anything in this Agreement to the contrary, SMI shall not, for the first three (3) years of this Agreement, make, have made, use, sell, have sold, import, export, sublicense, or distribute, any products that use automated chip tracking technology or technology covered by the SMI Patents; except that SMI may internally develop such products. This section may be terminated and severed pursuant to the Patent Purchase Agreement. ii. After the first 3 years of this Agreement, the scope of the SMI Covenant shall be modified. During the second three years of this Agreement, SMI shall not make, have made, use, sell, have sold, import, export, sublicense, or distribute, any products that use RFID or optical chip tracking technology or technology covered by the SMI Patents, other than pursuant to this Agreement; except that SMI may internally develop such products. This section may be terminated and severed pursuant to the Patent Purchase Agreement. iii. Notwithstanding the foregoing, if after five (5) years from the Effective Date, PGIC/IGT have not installed at least 5,000 tables with automated chip tracking technology, then SMI may request that PGIC and IGT release SMI from the SMI Covenant. Upon such request, IGT will (on behalf of IGT and PGIC) negotiate with SMI, in good faith, the terms and conditions that would be acceptable for said release. PGIC consents to any such release negotiated by IGT. iv. For the avoidance of doubt, SMI is not prohibited from making, using or selling RFID products provided that such RFID products are not within the ***Confidential Treatment Requested SOA, nor within the Scope of Product of either IGT or PGIC and provided further that said RFID products are not prohibited by this Section 6(b).

SMI Covenant. Subject to the SMI Covenant set forth in 6 (b)(i),but subject to the provisions of section 5.4 of the Patent Purchase Agreement, IGT and SMI both have the right to make, have made, use, sell, have sold, import, and export products under the ENPAT Patents […...***…...] provided, however, if such use avoids royalties that would otherwise be due from PGIC, then PGIC will remain responsible for such royalties. i. Notwithstanding anything in this Agreement to the contrary, SMI shall not, for the first three (3) years of this Agreement, make, have made, use, sell, have sold, import, export, sublicense, or distribute, any products that use automated chip tracking technology or technology covered by the SMI Patents; except that SMI may internally develop such products. This section may be terminated and severed pursuant to the Patent Purchase Agreement. ii. After the first 3 years of this Agreement, the scope of the SMI Covenant shall be modified. During the second three years of this Agreement, SMI shall not make, have made, use, sell, have sold, import, export, sublicense, or distribute, any products that use RFID or optical chip tracking ***Confidential Treatment Requested 6 of 14 technology or technology covered by the SMI Patents, other than pursuant to this Agreement; except that SMI may internally develop such products. This section may be terminated and severed pursuant to the Patent Purchase Agreement. iii. Notwithstanding the foregoing, if after five (5) years from the Effective Date[...***...], PGIC/IGT have not installed at least 5,000 tables with automated chip tracking technology[...***...], then SMI may request that PGIC and IGT release SMI from the SMI Covenant. Upon such request, IGT will (on behalf of IGT and PGIC) negotiate with SMI, in good faith, the terms and conditions that would be acceptable for said release. PGIC consents to any such release negotiated by IGT. iv. For the avoidance of doubt, SMI is not prohibited from making, using or selling RFID products provided that such RFID products are not within the SOA, nor within the Scope of Product of either IGT or PGIC and provided further that said RFID products are not prohibited by this Section 6(b).

SMI Covenant. Subject to the SMI Covenant set forth in 6 (b)(i),but subject to the provisions of section 5.4 of the Patent Purchase Agreement, IGT and SMI both have the right to make, have made, use, sell, have sold, import, and export products under the ENPAT Patents […...***…...] provided, however, if such use avoids royalties that would otherwise be due from PGIC, then PGIC will remain responsible for such royalties. i. Notwithstanding anything in this Agreement to the contrary, SMI shall not, for the first three (3) years of this Agreement, make, have made, use, sell, have sold, import, export, sublicense, or distribute, any products that use automated chip tracking technology or technology covered by the SMI Patents; except that SMI may internally develop such products. This section may be terminated and severed pursuant to the Patent Purchase Agreement. ii. After the first 3 years of this Agreement, the scope of the SMI Covenant shall be modified. During the second three years of this Agreement, SMI shall not make, have made, use, sell, have sold, import, export, sublicense, or distribute, any products that use RFID or optical chip tracking technology or technology covered by the SMI Patents, other than pursuant to this Agreement; except that SMI may internally develop such products. This section may be terminated and severed pursuant to the Patent Purchase Agreement. iii. Notwithstanding the foregoing, if after five (5) years from the Effective Date[...***...], PGIC/IGT have not installed at least 5,000 tables with automated chip tracking technology[...***...], then SMI may request that PGIC and IGT release SMI from the SMI Covenant. Upon such request, IGT will (on behalf of IGT and PGIC) negotiate with SMI, in good faith, the terms and conditions that would be acceptable for said release. PGIC consents to any such release negotiated by IGT. iv. For the avoidance of doubt, SMI is not prohibited from making, using or selling RFID products provided that such RFID products are not within the SOA, nor within the Scope of Product of either IGT or PGIC and provided further that said RFID products are not prohibited by this Section 6(b).