1
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
EXHIBIT 10.26
LICENSE AGREEMENT
This License Agreement ("Agreement") is effective as of April 1, 2001 (the
"Effective Date") by and between the Parties, A2D, L.P., (Licensor), a
California Limited Partnership having offices at 0000 Xxxxxx Xxxx., Xxxxx 0000,
Xxx Xxxxxxx, Xxxxxxxxxx 00000, and TALX Corporation ("Licensee"), a Missouri
corporation having offices at 0000 Xxxxxx Xxxxx, Xx. Xxxxx, Xxxxxxxx 00000.
WHEREAS, Licensor holds a license from Xxxxxx X. Xxxx Technology Licensing, L.P.
("Patent Holder") under patent and patent application rights relating to
Automated Transaction Processing Utilizing Communication Facilities and/or
Computer Telephone Integration (ACTI patents) and has the right to grant
non-exclusive licenses, releases and covenants not to xxx thereunder;
WHEREAS, prior to entering into its license under the ACTI Patents, Licensee
sold to its customers certain equipment and/or software, which equipment and/or
software was, and continues to be, entirely unlicensed;
WHEREAS, Licensee desires to obtain certain non-exclusive rights under the ACTI
patents as provided herein, including both a use license under the invention of
the ACTI patents itself and the right to grant limited sublicenses and covenants
not to xxx to certain of the customers to whom it previously sold equipment
and/or software;
WHEREAS, Licensor and Licensee (the "Parties") recognize the potential
difficulty and inefficiency to both parties of negotiating and administering
individual licenses to each of such ACTI patents relating to a given activity of
Licensee;
WHEREAS, the Parties have reviewed the activities of Licensee as related to the
ACTI patents and on the basis of their knowledge have selected appropriate
Fields-Of-Use for the activities of Licensee with respect to the ACTI patents;
WHEREAS, in view of the nature of the ACTI patents, the business and activities
of Licensee, the mutual convenience of and efficiency to the Parties and the
equities of the situation, the Parties have resolved that specific Field-Of-Use
Licenses are proper and appropriate as set forth herein; and
NOW, THEREFORE, in consideration of the mutual promises and other consideration
as set forth herein, the Parties agree as follows:
1. DEFINITIONS
1.1 "Acquiring Person" means the Person or Persons that, in an Acquisition,
come into control, direct or indirect, of another Person or of substantially all
of the assets of another Person.
1.2 "Acquisition" (and any similar term such as "Acquire") means a
transaction by which a person that has not previously controlled (as used in
Section 1.20) another Person comes into control of such other Person or becomes
the owner of substantially all of the assets of such other Person.
1
2
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
1.3 "Additional System Owner" means one of the TALX Premises System Owners
listed in Exhibit E.
1.4 "Arbitrator" must be a patent attorney acceptable to the parties having
an electrical engineering, computer science or similar background and licensing
experience in the field of telecommunications and experience in alternative
dispute resolution procedures.
1.5 "Caller Paid Program" means Campaigns in which the caller is billed for
the call and information or services that are delivered in association with the
call, as for example in "900" or "976" calling modes. These calls also are
commonly referred to as "caller-charge" and "pay to dial" calls.
1.6 "Caller Paid Program Receipts" means net amounts in U.S. Dollars
charged to callers, less arms-length transaction charge backs resulting from
Licensee's Caller Paid Programs. For further definition, examples of "included"
and "excluded" Caller Paid Program Receipts are stated in Exhibit C.
1.7 "Campaign" means automated transaction processing services provided by
Licensee or its Subsidiaries.
1.8 "Carrier" means any entity which transmits a communication having a
voice component over a communication channel.
1.9 "Customers" of Licensee are all those to whom Licensee provides
services within the licensed Fields-Of-Use.
1.10 "Elapsed Carrier Time" means, with respect to Campaigns, the transport
minutes, i.e. the aggregate elapsed time of all callers participating in
Campaigns during which each caller is connected to a Carrier (whether or not
Licensee is the customer of record with the billing carrier) in relation to the
Campaign. The following examples illustrate the proper application of the
foregoing definition: (i) if a caller is connected to a Carrier in the execution
of a Campaign and while the caller is so connected, an outbound call is made by
Licensee, the elapsed time during which the outbound call is connected to a
Carrier is not to be added to the elapsed time during which the caller is
connected to his Carrier in computing the Elapsed Carrier Time of the Campaign,
(ii) if ten (10) separate individual callers call Licensee in connection with a
Campaign and each caller is connected to Licensee for ten (10) minutes, the
Elapsed Carrier Time of the Campaign would be the aggregate of the elapsed time
each Caller is connected through a Carrier to Licensee in connection with the
Campaign (in this example, one hundred (100) minutes), and (iii) if three (3)
calls were connected to Licensee of the following durations: first call, one
hundred (100) seconds; second call, fifty (50) seconds; and third call, forty
(40) seconds (all as measured by the Carrier) the Elapsed Carrier Time for these
calls would be one hundred ninety (190) seconds irrespective of any rounding
methods that might be applied. This section does not apply to services commonly
called "international call back" services.
1.11 (a) "Field-Of-Use" means an activity defined in Exhibit B.
2
3
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
(b) "Field-Of-Use License" means a license to make, have made and use
(but not sell, lease or otherwise transfer for use by others, except as
specified herein) products and processes of the Licensed Patents within one or
more specified Fields-Of-Use. As specified below in detail, the Fields-Of-Use of
this Agreement for the license of Section 2.1 are Employment Verification and
Automated Service Bureau. It is understood and agreed, however, that all
activities conducted strictly over the Internet with no voice component are
excluded from this Agreement, and are neither licensed nor royalty-bearing.
1.12 "Licensed Patents" means all United States and foreign patents listed
in Exhibit A, as well as all United States and foreign patents that have issued
or may issue on applications whose subject matter in whole or in part is
entitled to the benefit of the filing date(s) of any such patents or
applications on which they are based, including, without limitation,
continuations, continuations-in-part, divisions, reissues and extensions.
1.13 "Licensed Territories" means the United States and its Territories,
and all foreign countries in which one or more of the Licensed Patents have
issued and remain in effect at any time during the term of this Agreement.
1.14 "Non-Caller Paid Programs" means all Campaigns that are not Caller
Paid Programs.
1.15 "Non-Caller Paid Program Receipts" means net amounts in U.S. Dollars,
received by, or credited to, Licensee in connection with or ancillary to
Non-Caller Paid Programs, including any amounts assigned by Licensee to third
parties, less arms-length transaction charge backs. For further definition,
examples of "included" and "excluded" Non-Caller Paid Program Receipts are
stated in Exhibit C.
1.16 "Person" or "person" means an individual, a corporation, a
partnership, an association, a trust or any other entity or organization,
including a government or political subdivision or any agency or instrumentality
thereof.
1.17 "Preferred System Owner" means one of the TALX Premises System Owners
listed in Exhibit D.
1.18 "TALX Premises System Owner" means the original purchaser of a TALX
Premises System sold by Licensee prior to the Effective Date of this Agreement.
1.19 "TALX Premises System" means any system (i.e., hardware and/or
software) sold or maintained by Licensee, whose structure or use falls within
the scope of the claims of the Licensed Patents, and which continues to be
maintained by Licensee or its Subsidiaries.
1.20 "Subsidiary" means a person or entity controlled by Licensee; such
control being exercised through the ownership or control, directly or
indirectly, of more than 50% of all the voting power of the shares or other
interests entitled to vote for the election of directors or other governing
authority; however, a person or entity shall be considered an Subsidiary only
for the time during which such control exists. There are no "Subsidiaries" on
the Effective Date of this Agreement.
3
4
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
2. LICENSE
2.1 Licensor hereby grants to Licensee, and Licensee's Subsidiaries, a
nonexclusive, Field-Of-Use License to make, have made, use and provide services
using (but not to sub-license, sell, lease or otherwise transfer for use by
others) products or processes embodying any and all inventions claimed in the
Licensed Patents within the Employment Verification and Automated Service Bureau
Fields-Of-Use and in the Licensed Territories.
2.2 Licensor agrees to release Licensee and Licensee's Subsidiaries from
liability for infringement of the Licensed Patents based on acts performed by or
through Licensee or Licensee's Subsidiaries prior to the Effective Date, only to
the extent that such acts would have fallen within the scope of the license
granted in Section 2.1 if this Agreement had been in effect at the time, subject
to the following conditions precedent:
(a) payment in full of the Advance Royalty of Section 3.1(a) and the
License Entry and Covenant Option Fee of Section 3.1 (e) in accordance
with the terms of Section 3.1; and
(b) full and faithful performance of the terms of this Agreement by
Licensee for a period of three (3) years after the Effective Date.
No suit may be brought against Licensee (or Licensee's Subsidiaries) during
such three (3) year period for infringement of the Licensed Patents in the
Employment Verification and Automated Service Bureau Fields-Of-Use based on acts
falling within the prospective release provisions of this Section 2.2, as long
as Licensee continues to faithfully perform the terms of this Agreement. If this
Agreement has not been terminated within the first three and one-half (3 1/2)
years after the Effective Date, then Licensee's full and faithful performance
hereunder shall be presumed.
2.3 Licensor hereby covenants not to xxx Licensee for money damages for
infringement of the Licensed Patents with respect to any TALX Premises Systems
sold prior to the Effective Date, as long as this Agreement remains in effect
and its obligations are fully and faithfully performed, but expressly retains
all corresponding equitable remedies against Licensee.
2.4 Within thirty (30) days after the Effective Date, Licensee shall notify
all Preferred System Owners that the TALX Premises Systems purchased by them
from Licensee or its Subsidiaries carry no license, covenant not to xxx or other
rights under the Licensed Patents, and that the only rights available to them
for the use of such equipment are derived from a covenant not to xxx available
through Licensee under the terms of Section 2.5. On or before June 30, 2001,
Licensee shall give all other TALX Premises System Owners (including, but not
limited to, all Additional System Owners) a similar notice, but without the
reference to a right to a covenant not to xxx.
2.5 With respect to TALX Premises Systems owned by one of the Preferred
System Owners, which systems continue to be serviced under a system maintenance
contract with Licensee:
4
5
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
a) Licensor covenants not to xxx Licensee for infringement of the
Licensed Patents with respect to such TALX Premises Systems, whether purchased
prior to or after the Effective Date, but only so long as this Agreement remains
in effect and the Preferred System Owner has an existing Letter Agreement with
Licensee in accordance with this Section 2.5.
b) During the period from the Effective Date until September 30, 2001,
Licensee shall have the right to enter into a Letter Agreement in the form
attached hereto as Exhibit F which grants to Preferred System Owners a limited
covenant not to xxx for infringement of the Licensed Patents based solely on
activities of the Preferred System Owners in processing calls from their own
employees (and the employees' immediate families) using TALX Premises Systems,
as those activities existed on the Effective Date, and not extending to any
other activities of the Preferred System Owner or the activities of any other
Person. The covenant not to xxx of the Letter Agreement shall encompass such
activities both before and after the effective date of the Letter Agreement,
shall be subject to all of the terms, conditions and limitations of this
Agreement and shall continue only so long as this Agreement and the Letter
Agreement remain in effect. As specified in the form Letter Agreement of Exhibit
F, payment for rights under the covenant not to xxx shall accrue from April 1,
2001.
c) Licensor grants to Licensee an interim covenant not to xxx Preferred
System Owners for infringement under the Licensed Patents, which covenant shall
extend only until a Letter Agreement is entered into under the terms of this
Section 2.5 and shall apply only to the activities of the Preferred System
Owners as they existed on the Effective Date of this Agreement. If a Letter
Agreement in the specified form is not entered into by September 30, 2001, then
the interim covenant shall expire and the Preferred System Owner shall once
again be subject to suit for all infringing activities, whether prior or
subsequent to the Effective Date of this Agreement. In addition, Licensee agrees
not to notify the Preferred System Owners of this interim covenant without also
notifying them in writing of its limitations.
(d) The covenants of this Section 2.5: (i) apply only to the activities
of the Preferred System Owner itself; (ii) do not provide rights of any kind to
entities related to the Preferred System Owner; (iii) do not create any third
party beneficiary right in or for any person other than Licensee and the
Preferred System Owner; (iv) do not relieve any third party from any liability;
(v) do not affect any right, claim or cause of action that Licensor or Patent
Holder has or may have against the Preferred System Owner other than for
infringement of the Licensed Patents based on activities of the Preferred System
Owners falling within the scope of the form Letter Agreement of Exhibit F; and
(vi) are simply covenants not to xxx and not the grant of any express or implied
license (or right to sublicense) to the Preferred System Owner or any other
Person.
e) Licensee accepts and shall bear full responsibility for providing
all reports and payments called for in this Agreement and in any Letter
Agreements with Preferred System Owners.
2.6 With respect to TALX Premises Systems owned by one of the Additional
System Owners, which systems continue to be serviced under a system maintenance
contract with Licensee, the following shall apply. During the period from the
Effective Date of this Agreement until June 30, 2001, Licensee shall have the
right to refer such Additional System Owners to
5
6
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
Licensor in writing, whereupon Licensor shall negotiate in good faith with each
Additional System Owner for an ongoing running royalty bearing-license and
release covering all activities of the Additional System Owner falling within
the scope of the Licensed Patents. Any such ongoing licenses shall be at
Licensor's then prevailing terms and conditions, including royalty rates, for
the Fields-Of-Use involved, shall include a release fee for the past activities
of the Additional System Owner as well as a running royalty for ongoing use of
the inventions of the Licensed Patents, and shall contractually obligate the
Additional System Owner to notify any entity to whom the system is sold that the
system does not carry with it rights of any kind with respect to the Licensed
Patents. The Entry Fee and Advance Royalty associated with such an ongoing
license shall be waived, however, for licenses entered into prior to December
31, 2001. Thereafter, Entry Fees and Advance Royalty payments shall apply to any
such ongoing licenses granted to Additional System Owners. Upon execution of an
ongoing license and release between Licensor and an Additional System Owner
under the terms of this Section 2.6, Licensor shall refrain from suing Licensee
for the sale of TALX Premises Systems to such Additional System Owner prior to
the Effective Date, but only as long as this Agreement and the ongoing license
remain in effect.
2.7 It is recognized and agreed that the rights set forth in Sections 2.3,
2.5 and 2.6 are the only rights provided to TALX Premises System Owners or
anyone else with respect to TALX Premises Systems.
2.8 If, after the Effective Date of this Agreement, Licensee or one of its
Subsidiaries desires to sell or otherwise transfer equipment and/or software to
any Person (other than under the terms of Section 2.5) for the processing of
calls solely from employees of such person within any of the Fields-Of-Use of
Exhibit B, it may refer the prospective purchaser to Licensor who shall
negotiate in good faith with the prospective purchaser for a direct license
covering the use of the equipment and/or software at Licensor's then prevailing
terms and conditions for the Field(s)-Of-Use involved, including an obligation
on the part of the purchaser to notify any entity to whom the equipment and/or
software is later sold that the system does not carry with it rights of any kind
with respect to the Licensed Patents. Licensor agrees to waive the Entry Fee for
any license entered into under the terms of this Section 2.8 before December 31,
2002. Thereafter, Entry Fees shall apply to any such licenses. In the absence of
such a license from Licensor, Licensee and its Subsidiaries shall notify the
purchaser that the equipment and/or software carry no rights under the Licensed
Patents and shall contractually obligate the purchaser to notify any subsequent
purchaser of the equipment and/or software that no such rights attach to the
equipment and/or software.
2.9 a) Either Licensor or Licensee shall be permitted to assign its rights
or delegate its duties under this Agreement only with the written consent of the
other party, which shall not be unreasonably withheld, except that no such
consent shall be required in connection with the assignment and delegation of
all such rights and duties to a successor that Acquires substantially all of the
assets and business of Licensor, Patent Holder or Licensee, and expressly agrees
in writing to assume and perform all of the obligations of Licensor, Patent
Holder or Licensee, respectively.
6
7
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
b) In the event of an assignment or a delegation by Licensee to a
successor, or an Acquisition of Licensee by an Acquiring Person, then Licensee's
rights under this Agreement shall continue only so long as (i) Licensee, and
those of its Subsidiaries which are now or at the time of the assignment,
delegation or Acquisition utilizing any of the Licensed Patents, remain distinct
from and are not combined in any way (including, but not limited to, the
combining of all or part of its call processing activities falling within the
Fields-Of-Use of Exhibit B) with any other portion of the business of the
successor or the Acquiring Person; or (ii) the Acquiring Person at the time of
such assignment, delegation or acquisition has a license from Licensor or Patent
Holder that covers at least the activities of the Acquiring Person; or (iii) the
Acquiring Person prior to the time of such assignment, delegation or acquisition
does not engage in any activities for which a license from Licensor or Patent
Holder would be required. If the Licensee's rights under this Agreement continue
by virtue of subpart (i) of the preceding sentence, then at such time as any
part of Licensee, and those of its Subsidiaries which are now or at the time of
the assignment, delegation or Acquisition utilizing any of the Licensed Patents,
may no longer be distinct from or may be combined in any material way with any
other portion of the business of the successor or the Acquiring Person, then
this Agreement shall terminate automatically four (4) months after the
assignment, delegation or Acquisition, unless, prior to the expiration of such
four-month period, the successor or Acquiring Person has delivered written
notice to Licensor pursuant to Section 2.9(c).
c) If this Agreement would otherwise terminate pursuant to Section
2.9(b) and the successor or Acquiring Person has acquired substantially all of
the assets and business of Licensee and its Subsidiaries, then the successor or
Acquiring Person may, by delivering written notice to Licensor prior to such
termination, continue this Agreement by seeking its assignment to the successor
or Acquiring Person as provided in Section 2.9(a). In the event assignment is
sought, the license granted in this Agreement shall continue for an additional
four-month period from the date of such notice, unless further extended by
Licensor, during which time negotiations will proceed in good faith among
Licensee, the successor and/or the Acquired Person to determine whether the
successor or Acquiring Person conducts any activities other than those of
Licensee which fall within the Fields-Of-Use of Exhibit B, and to determine an
additional fee ("Subsequent License Fee") to reflect any such activities. In
addition, in such circumstances any existing liability of either the successor
or the Acquiring Person for past infringement of the Licensed Patents is not
released and accordingly an additional fee ("Release Fee") shall be negotiated
in good faith in a manner similar to the Subsequent License Fee.
d) Furthermore, in the event of an Acquisition by Licensee of a
Subsidiary, any existing liability of the controlled entity for past
infringement of the Licensed Patents is not released and accordingly an
additional fee ("Release Fee") shall be negotiated in good faith in a manner
similar to the Subsequent License Fee.
e) If Licensee sells, divests or otherwise loses control of a business
or a portion of a business, and as a result of such sale, divestiture or loss of
control the business or business portion ceases to be a part of Licensee or to
satisfy the definition of "Subsidiaries" in Section 1.20, then such business or
business portion shall be unlicensed.
7
8
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
f) If a Supplemental Royalty-Bearing License and/or Release Fee cannot
be negotiated by the parties within one hundred twenty (120) days after
completion of the assignment or a delegation by Licensee to a successor,
Acquisition of Licensee by an Acquiring Person, or Acquisition by Licensee of a
new Subsidiary, then the issue shall be submitted to arbitration as though
requested by Licensee. If Patent Holder assigns any of the Licensed Patents,
such assignment shall be made subject to Licensee's rights under this Agreement.
2.10 Businesses Acquired by Licensee (or its Subsidiaries) are licensed
under this Agreement to the extent they satisfy the definition of "Subsidiaries"
in Section 1.20; however, the release and covenant not to xxx of Section 2.2
shall not be applicable to such business Acquired for activities prior to the
Acquisition and a Release Fee shall be negotiated in accordance with Section
2.9(d) above.
2.11 Notwithstanding anything to the contrary herein, it is agreed by the
Parties that all licenses and other rights granted under this Section 2 are
subject to the condition subsequent that the Advance Royalty and the License
Entry and Covenant Option Fee be paid strictly in accordance with the terms of
Section 3. If Licensee defaults in any respect under the terms of Section 3,
then this Agreement and all licenses and other rights, including all covenants
not to xxx, shall terminate immediately.
3. CONSIDERATION
3.1 In consideration of the grants by Licensor, the following "Advance
Royalty," "Running Royalty" and "License Entry and Covenant Option Fee" are
applicable to this Agreement.
(a) On or before * , Licensee shall pay to Licensor a
non-refundable Advance Royalty of * , which has been calculated
to be the amount of Running Royalty that would have accrued from the
activities of Licensee and its Subsidiaries in the Fields-Of-Use
licensed under this Agreement during the * period immediately
prior to * , if this Agreement had been in effect at that time.
This Advance Royalty shall be credited against Running Royalties
accrued from * for activities of Licensee and its Subsidiaries
in the licensed Fields-Of-Use. If the total amount of Running
Royalties accrued any time through * exceeds the Advance
Royalty, then Licensee shall pay the excess to Licensor within
forty-five (45) days of the end of the then current Royalty Reporting
Period. No credit shall be given, however, for any portion of the
Advance Royalty greater than the amount of Running Royalties accrued
through * .
(b) During the term of this Agreement, Licensee shall pay to Licensor
a Running Royalty, accrued from * , for activities within the
Licensed Territories and in the Employment Verification Field-Of-Use
(it being understood that while it is Licensee's obligation to pay
Running Royalty to Licensor, the Running Royalty is computed on
activities of Licensee and
* Confidential portions omitted pursuant to a confidential treatment request and
filed separately with the Securities and Exchange Commission.
8
9
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
Licensee's Subsidiaries). The amount of Running Royalty shall be *
of Caller Paid Program Receipts and Non-Caller Paid Program
Receipts (both as defined with respect to Exhibit C) from all sources,
or * of Elapsed Carrier Time utilized by any such
call, whichever is greater. In addition, for all telephone calls
("Non-Revenue Producing Calls") placed as part of activities within
the licensed Fields-Of-Use which do not produce revenue to Licensee or
Licensee's Subsidiaries, Licensee shall pay Licensor *
of Elapsed Carrier Time utilized by any such call.
(c) During the term of this Agreement, Licensee shall pay to Licensor
a Running Royalty, accrued from * , for activities within the
Licensed Territories and in the Automated Service Bureau Field-Of-Use
(it being understood that while it is Licensee's obligation to pay
Running Royalty to Licensor, the Running Royalty is computed on
activities of Licensee and Licensee's Subsidiaries). The amount of
Running Royalty shall be * of Caller Paid Program
Receipts and Non-Caller Paid Program Receipts (both as defined with
respect to Exhibit C) from all sources, or * of
Elapsed Carrier Time utilized by any such call, whichever is greater.
In addition, for all telephone calls ("Non-Revenue Producing Calls")
placed as part of activities within the licensed Fields-Of-Use which
do not produce revenue to Licensee or Licensee's Subsidiaries,
Licensee shall pay Licensor * of Elapsed Carrier
Time utilized by any such call.
(d) As set forth in Section 1.11(b) above, it is understood and agreed
that all activities conducted strictly over the Internet with no voice
component are excluded from this Agreement, and are neither licensed
nor royalty-bearing.
(e) On or before * , Licensee shall pay to Licensor a
non-refundable one-time License Entry and Covenant Option Fee of
* .
(f) It is agreed that time is of the essence with respect to the
payments called for in Sections 3.1(a) and 3.1(e), and that such
payments shall be made by wire transfer to the following account:
Beneficiary: A2D,L.P.
Bank: *
*
*
Account No.: *
ABA No.: *
3.2 At the end of each Royalty Reporting Period (as set forth in Section
4.1 below), the total Running Royalty accrued under Sections 3.1(b), (c) and (d)
from licensed activities of Licensee and its Subsidiaries, and any amounts due
for the activities of Preferred System Owners benefiting from a covenant not to
xxx (also accruing from * ), shall be determined.
* Confidential portions omitted pursuant to a confidential treatment request and
filed separately with the Securities and Exchange Commission.
9
10
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
Advance Royalty shall then be credited by Licensor against such accrued Running
Royalty and other amounts due, as required in Section 3.1(a), for periods
ending no later than * . The remaining amounts due, if any, shall be paid
to Licensor within sixty (60) days of the Royalty Reporting Period as set forth
below. It is understood and agreed, however, that the amount due for the
activities of any Preferred System Owners benefiting from a covenant not to xxx
shall be reported and paid on the basis set forth in the Letter Agreement of
Exhibit F, and that Licensee shall bear full responsibility for all such
reports and payments.
3.3 All payments hereunder made by Licensee (except overpayments made in
error and identified by Licensee within twelve (12) months of erroneous payment)
are nonrefundable.
4. REPORTS, PAYMENTS, RECORDS AND AUDITS
4.1 Licensee's first report of its activities under this Agreement to
Licensor shall be for the period from April 1, 2001 through June 30, 2001, and
reports shall be made quarterly thereafter throughout the term of this
Agreement. Such periods shall be the "Royalty Reporting Periods" of this
Agreement.
4.2 The reports of Section 4.1 shall include a statement prepared by the
Licensee stating the total Caller Paid Program Receipts and Non-Caller Paid
Program Receipts and Non-Revenue Producing Calls of Licensee, as well as the
numbers of minutes of Elapsed Carrier Time for each Campaign of Licensee, its
Subsidiaries and any of its Preferred System Owners benefiting from a covenant
not to xxx under the terms of Section 2.5. The report shall identify the
appropriate Subsidiaries and Preferred System Owners benefiting from the license
and covenant not to xxx herein. This statement shall confirm that it is a
complete and accurate accounting of all revenues. A summary carrier statement
from each of the appropriate telecommunications carriers must be attached,
showing Caller Paid net minutes, also indicating that these are complete
statements for the Licensee and any appropriate Subsidiaries or Preferred System
Owners benefiting from the license and covenant not to xxx granted herein. The
statements must contain enough detail to allow Licensor to reconcile the carrier
reports to the Licensee reports, as well as enough information for Licensor to
identify Subsidiaries and Preferred System Owners and differentiate between
royalties of Licensee, Licensee's Subsidiaries and Preferred System Owners. In
addition to reports for each Reporting Period, Licensee shall deliver to
Licensor an annual statement confirmed by a Certified Public Accountant or
Licensee's Chief Financial Officer stating that the monthly or quarterly
statements for the past year have been examined and they correctly and fairly
indicate the amounts due. Licensor recognizes that all reports provided
hereunder are for purposes of compliance with the terms of this Agreement and
shall not constitute or be a substitute for a detailed accounting of any and all
business activities of Licensee and its Preferred System Owners if a dispute
should arise between the Parties.
4.3 Each report of Sections 4.1 and 4.2 shall be made prior to the
expiration of sixty (60) days after the close of the Royalty Reporting Period to
which it pertains, with the first one due within sixty (60) days after June 30,
2001. The reports shall be accompanied by all amounts due, if any. The annual
statements referred to in Section 4.2 shall be provided, with any payment due,
prior to the expiration of sixty (60) days following January 1 of the year
involved. As set
* Confidential portions omitted pursuant to a confidential treatment request and
filed separately with the Securities and Exchange Commission
10
11
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
forth in Section 2.5(e), Licensee accepts full responsibility for providing all
reports and payments called for in this Agreement, as well as in any Letter
Agreements with Preferred System Owners.
4.4 Licensee shall maintain regular and complete records for a period of
three years after the expiration of the calendar quarter to which the records
pertain, sufficient to enable verification of the accuracy of reports and the
representations and warranties made by Licensee in Section 5.3 regarding
calculation of the Advance Royalty. The records shall be maintained at
Licensee's regular place of business and, on thirty (30) days written notice,
shall be available for inspection by Licensor's outside accountants during
normal business hours, for three years immediately following each calendar
quarter while the Agreement is in force. Licensor shall have the right, on
thirty (30) days written notice to Licensee, to have its outside accountants
audit relevant records, systems and any other documents or things underlying
Licensee's calculation of the Advance Royalty and other amounts due under this
Agreement. However, such outside accountants shall disclose to Licensor only the
proper calculation of amounts. Should any such audit reveal a payment shortfall,
the amount of the shortfall shall be paid by adding that amount to Licensee's
next royalty payment remittance after the discovery thereof, together with pro
rata interest calculated at the rate of one percent (1%) per month, or the
maximum rate permitted by law if such rate shall be lower than one percent (1%)
per month. In the event an overpayment is detected from such audit, Licensee
shall be credited an amount equal to the overpayment in the next royalty
statement following the date of such detection. If Licensee disagrees with an
audit revealing a payment shortfall, a determination of whether there is a
shortfall and the payment due hereunder shall be submitted to Arbitration in
accordance with Section 9. In any event, each party shall bear its own costs,
fees or expenses associated with any inspection or audit specified in this
provision.
4.5 If Licensee fails to make timely payments of amounts due or provide
timely statements, Licensor may notify Licensee in writing of such failure
within thirty (30) days after such failure occurs. Licensee shall have thirty
(30) days from receipt of Licensor's written notice to cure such failure;
otherwise, the failure shall constitute a material breach of this Agreement.
4.6 Licensor agrees to hold in confidence all information obtained from
Licensee, including or relating to the reports, records, payments and audits
described herein, except as required by process of law.
5. REPRESENTATIONS AND WARRANTIES
5.1 Licensor represents and warrants that it holds a license from Patent
Holder under the Licensed Patents and has the right to grant non-exclusive
licenses, covenants not to xxx and releases thereunder, that it has the right to
enter into this Agreement and is not a party to any agreements or obligations
inconsistent with this Agreement. Furthermore, Licensor represents and warrants
that there are no previously granted exclusive licenses granted to any third
parties in the Fields-Of-Use.
5.2 This license does not and shall not be interpreted or construed to
include: (1) any warranty or representation as to the validity, enforceability
or scope of any Licensed Patent, (2) any warranty or representation that any
specific apparatus or method used by Licensee in
11
12
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
connection with any Licensed Patent is or will be free from infringement of
patents of others or other intangible rights of third parties, (3) any
requirement to file any patent application, secure or maintain any patent, (4)
any obligation to bring or prosecute any action for infringement of any Licensed
Patent, (5) any obligation to furnish any technical or support information, (6)
any license or right by implication or estoppel, or (7) any warranty regarding
implementations of Licensed Patents as with respect to MERCHANTABILITY,
NON-INFRINGEMENT OR FITNESS FOR ANY PARTICULAR PURPOSE OR USE.
5.3 Licensee represents and warrants that: the amount of the Advance
Royalty specified in Section 3.1(a) is the amount of the royalty that would have
accrued for activities of Licensee and its Subsidiaries within the licensed
Fields-Of-Use of this Agreement during the two-year period immediately prior to
the Effective Date, if calculated at the Running Royalty rates specified in
Sections 3.1(b) and (c) of this Agreement.
6. DEFAULT
6.1 Upon the occurrence of a breach of this Agreement by Licensee, Licensor
may give written notice of the default to Licensee, identifying the nature of
the breach. Licensee shall have thirty (30) days following receipt of such
notice to cure the breach. Thereafter, if the breach is not cured by Licensee
within the time provided, Licensor may immediately terminate this Agreement by
giving written notice of termination to Licensee.
7. TERMINATION
7.1 Licensee shall have the right to terminate this entire Agreement at any
time by a written notice to Licensor at least thirty (30) days in advance. Such
termination shall be effective at the end of the calendar quarter in which such
notice is provided.
7.2 Licensor shall have the right to terminate this Agreement and all
rights of Licensee and its Subsidiaries and Preferred System Owners hereunder by
giving written notice of termination to Licensee in the event Licensee (i)
becomes insolvent (as determined in accordance with generally accepted
accounting principles), (ii) is not paying its debts to Licensor as they mature,
or (iii) makes an assignment for the benefit of creditors.
7.3 Any termination of the license granted herein shall not relieve the
duty and obligation of Licensee to pay in full all amounts due as of the
effective date of such termination.
7.4 Unless sooner terminated as provided herein, this Agreement shall
continue until the expiration of the last to expire of the Licensed Patents.
However, thirty (30) days prior to December 20, 2005, Licensee may express to
Licensor in writing a desire to renegotiate this Agreement. Upon such a written
notice, the Parties shall enter into good faith negotiations to determine the
propriety of changes to the Agreement.
8. CONFIDENTIALITY
8.1 Except as stated in Section 10, PRESS RELEASE, and as required to
comply with the notice requirements of this Agreement, the Parties agree to
maintain the details of this
12
13
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
Agreement in confidence and not to reveal the same to third parties, except as
required by process of law and subject to the other provisions of this
Agreement. Nothing in this Agreement shall be construed to preclude Licensee,
its officers or principals from making any disclosures required by law,
regulation or judicial process.
8.2 Notwithstanding the provisions of Section 8.1, Licensor may disclose a
summary of the terms and conditions of this Agreement to existing or potential
licensees, without disclosing the names of the Licensee or its Subsidiaries.
Either Licensor or Licensee may disclose the terms and conditions of this
Agreement to any entities in negotiations to purchase Licensor, Licensee, Patent
Holder or the Licensed Patents, providing such existing or potential licensees
or potential purchasers agree in writing to maintain the disclosed terms and
conditions confidential. In addition, Licensor may disclose the names of
Licensee and its Subsidiaries in the normal course of its business.
9. ARBITRATION
9.1 No issue of the validity of any of the Licensed Patents, enforceability
of any of the Licensed Patents, infringement of any of the Licensed Patents, the
scope of any of the claims of the Licensed Patents and/or any dispute that
includes any such issue shall be subject to arbitration under this Agreement
unless otherwise agreed by the parties in writing.
9.2 Except for those issues and/or disputes described in Section 9.1, any
dispute between the Parties concerning the interpretation, construction or
application of any terms, covenants or conditions of this Agreement shall be
resolved by arbitration.
9.3 Arbitration shall be in accordance with the Center for Public Resources
(CPR) Rules for Non-Administered Arbitration of Patent and Trade Secret Disputes
or Rules for Non-Administered Arbitration of Business Disputes, as appropriate,
in effect on the Effective Date by a sole Arbitrator who shall be appointed in
accordance with the applicable CPR rules. Any other choice of law clause to the
contrary in this Agreement notwithstanding, the arbitration shall be governed by
the United States Arbitration Act, 9 U.S.C. Section 1-16.
9.4 Any award made (i) shall be a bare award limited to a holding for or
against a party and affording such remedy as is within the scope of the
Agreement, (ii) shall be accompanied by a brief statement (not to exceed ten
(10) pages) of the reasoning on which the award rests; (iii) shall be made
within four (4) months of the appointment of the arbitrator; (iv) may be entered
in any court of competent jurisdiction; and (v) any award pertaining to a patent
which is subsequently determined to be invalid or unenforceable or otherwise
precluded from being enforced in a judgment rendered by a court of competent
jurisdiction from which an appeal can or has been taken may be modified as it
relates to such patent by any court of competent jurisdiction upon application
by any party to the arbitration.
9.5 The requirement for arbitration shall not be deemed a waiver of any
right of termination under this Agreement and the arbitrator is not empowered to
act or make any award other than based solely on the rights and obligations of
the parties prior to any such termination.
13
14
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
9.6 Each party shall bear its own expenses incurred in connection with any
attempt to resolve disputes hereunder, but the compensation and expenses of the
arbitrator shall be borne equally.
9.7 The arbitrator shall not have authority to award punitive or other
damages in excess of compensatory damages, and each party irrevocably waives any
claim thereto.
10. PRESS RELEASE
10.1 A mutually approved press release in the form attached hereto as
Exhibit H may be released by Licensor after April 30, 2001. Both the Licensee,
its officers and principals, and the Licensor, its officers and principals,
agree and undertake that any and all future statements by them, or any of them,
to the public, the media or to business associates shall be entirely consistent
with the Press Release as mutually approved.
11. PATENT MARKING
11.1 Licensee and its Subsidiaries shall, during the term of this
Agreement, xxxx Licensee's primary Internet website, and Licensee's primary
brochure distributed with respect to their automated call processing services,
with a notice of the Licensed Patents in the form of Exhibit G, as appropriate
under statutory patent provisions.
12. NOTICES
12.1 All notices and other communications required or permitted hereunder
shall be in writing and shall be mailed by Federal Express or other nationally
recognized overnight carrier, registered or certified mail, postage prepaid, or
otherwise delivered by hand or by messenger, with written indication of delivery
or tender, when applicable, addressed to the addressee first set forth above or
at such other address as either party may substitute by written notice provided
to the other party in such manner. Such notices shall be deemed to have been
served when delivered, or if delivery is not accomplished by reason of some
fault of the addressee, when tendered.
13. PARTIAL INVALIDITY
13.1 If any paragraph, provision, clause of this Agreement or claim of any
Licensed Patent shall be found or held to be invalid or unenforceable by a court
or other decision-making body of competent jurisdiction, in a judgment from
which no further appeal can be taken, the remainder of the Agreement or Licensed
Patents shall remain valid and enforceable, and to the extent required in the
pursuit of this Agreement, the Parties shall negotiate in good faith a
substitute, valid and enforceable provision which reflects the Parties' intent
in entering the Agreement.
14. ENTIRE AGREEMENT
14.1 The terms and conditions herein, including the Exhibits, constitute
the entire Agreement between the Parties and supersede all previous agreements
and understandings, whether oral or written, between the Parties hereto with
respect to the subject matter hereof, and
14
15
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
no prior agreement or understanding varying or extending the same shall be
binding upon either Party hereto.
15. SECTION HEADINGS
15.1 The section headings contained in this Agreement are for reference
purposes only and shall not in any way affect the meaning or interpretation of
this Agreement.
16. GOVERNING LAW
16.1 This Agreement shall be governed and interpreted in accordance with
the laws of the state of California U.S.A., without reference to principles of
conflicts of law. Any litigation between the Parties concerning the subjects of
Section 9.1 shall take place in the United States District Court for the Central
District of California and the Parties agree that the Court has jurisdiction
over them.
17. NO AGENCY
17.1 Nothing herein contained shall be deemed to create or give rise to an
agency, joint venture or partnership relationship, or any confidential or
fiduciary relationship between the Parties.
IN WITNESS WHEREOF, the parties have caused their duly authorized officers to
execute this Agreement on the dates indicated below.
LICENSOR
A2D, L.P., a California limited partnership,
its general partner,
By: A2D Corporation, a California corporation,
its general partner,
By: /s/ XXXXXX X. XXXX DATE: March 16th, 2001
-----------------------------------
XXXXXX X. XXXX
Its Chief Executive
LICENSEE
TALX Corporation
By: /s/ XXXXX X. XXXXX DATE: March 13, 2001
-----------------------------------
XXXXX X. XXXXX
Its Chief Financial Officer and
Secretary
16
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
EXHIBIT A
ISSUED U.S. PATENTS
EXPIRED PATENTS
PATENT NO. TITLE
4,071,698 Telephone System for Audio
Demonstration and Marketing of
Goods or Services
UNEXPIRED PATENTS
PATENT NO. TITLE ISSUE DATE
1. 4,792,968 Statistical Analysis System for 12/20/1988
Use With Public Communication
Facility
2. 4,845,739 Telephonic-Interface Statistical 7/4/1989
Analysis System
3. 4,930,150 Telephonic Interface Control 5/29/1990
System
4. 4,932,046 Telephone Programming System 6/5/1990
for Automated Calling
5. 4,939,773 Multiple Party Telephone 7/3/1990
Control System
6. 4,975,945 Universal Telephone Call Relay 12/4/1990
System
7. 4,987,590 Multiple Party Telephone 1/22/1991
Control System
8. 5,014,298 Voice-Data Telephonic Control 5/7/1991
System
9. 5,016,270 Expanded Telephone Data 5/14/1991
Organization System
10. 5,048,075 Telephonic-Interface Statistical 9/10/1991
Analysis System
16
17
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
UNEXPIRED PATENTS
PATENT NO. TITLE ISSUE DATE
11. 5,073,929 Voice-Data Telephonic Control 12/17/1991
System
12. 5,091,933 Multiple Party Telephone 2/25/1992
Control System
13. 5,109,404 Telephone Call Processor With 4/28/1992
Select Call Routing
14. 5,128,984 Telephone Interface Call 7/7/1992
Processing System With Call
Selectivity
15. 5,185,787 Multiple Party Telephone 2/9/1993
Control System With Random
Dialing For Polling
16. 5,218,631 Telephonic-Interface Game 6/8/1993
Control System
17. 5,224,153 Voice-Data Telephonic Interface 6/29/1993
Control System
18. 5,251,252 Telephone Interface Call 10/5/1993
Processing System With Call
Selectivity
19. 5,255,309 Telephonic-Interface Statistical 10/19/1993
Analysis System
20. 5,259,023 Telephonic-Interface Statistical 11/2/1993
Analysis System
21. 5,297,197 Multiple Party Telephone 3/22/1994
Control System
22. 5,349,633 Telephonic-Interface Game 9/20/1994
Control System
23. 5,351,285 Multiple Format Telephonic 9/27/1994
17
18
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
UNEXPIRED PATENTS
PATENT NO. TITLE ISSUE DATE
Interface Control System
24. 5,359,645 Voice-Data Telephonic Interface 10/25/1994
Control System
25. 5,365,575 Telephonic-Interface Lottery 11/15/1994
System
26. 5,442,688 Multiple Party Telephone 8/15/1995
Control System
27. 5,553,120 Telephonic-Interface Game 9/3/1996
Control System
28. 5,561,707 Telephonic-Interface Statistical 10/1/1996
Analysis System
29. 5,684,863 Telephonic-Interface Statistical 11/4/1997
Analysis System
30. 5,787,156 Telephonic-Interface Lottery 7/28/1998
System
31. 5,793,846 Telephonic-Interface Game 8/11/1998
Control System
32. 5,815,551 Telephonic-Interface Statistical 9/29/1998
Analysis System
33. 5,828,734 Telephone Interface Call 10/27/1998
Processing System With Call
Selectivity
34. 5,835,576 Telephonic-Interface Lottery 11/10/1998
Device
35. 5,898,762 Telephonic-Interface Statistical 4/27/1999
Analysis System
36. 5,917,893 Multiple Format Telephonic 6/29/1999
Interface Control System
18
19
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
UNEXPIRED PATENTS
PATENT NO. TITLE ISSUE DATE
37. 5,974,120 Telephone Interface Call 10/26/1999
Processing System With Call
Selectivity
38. 6,016,344 Telephonic-Interface Statistical 1/18/2000
Analysis System
39. 6,035,021 Telephonic-Interface Statistical 3/07/2000
Analysis System
40. 6,044,135 Telephone Interface Lottery 3/28/2000
System
41. 6,148,065 Telephonic-Interface Statistical 11/14/2000
Analysis System
42. 6,151,387 Telephonic-Interface Game 11/21/2000
Control System
43. 6,157,711 Multiple Party Telephone 12/05/2000
Control System
19
20
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
EXHIBIT A
ISSUED FOREIGN PATENTS
COUNTRY/ TITLE ISSUE DATE
PATENT NO.
1. Europe Statistical Analysis System And 2/16/1994
(established in Method For Use With Public
Germany, U.K., Communication Facility
France, Sweden,
Netherlands)/
0229170B1
2. Europe Interactive call-handling 3/22/1995
(established in
Germany, U.K.,
France, Sweden,
Netherlands)/
0342295B1
3. Europe Data analysis systems and 10/6/1999
(established in methods
Germany, U.K.,
France, Sweden,
Netherlands)/
0568114B1
4. U.K./ Communication Methods and 7/7/1993
XX0000000 Systems
5. Canada/ Voice-Data Telephonic Control 6/11/1996
2009937 System
6. Japan/ Statistical Analysis System For 8/22/1996
2552469 Use With Public Communication
Facility
7. Japan/ Voice-Data Telephonic Control 7/2/1996
2948253 System
8. France/ Voice-Data Telephonic Control 8/14/1996
2,643,526 System
9. France/ Voice-Data Telephonic Control 3/6/1998
2,733,109 System
20
21
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
EXHIBIT B
Xxxxxx X. Xxxx Technology Licensing X.X.
Xxxxxx of Use
(as of 2/15/01)
Each Field of Use does not include the activities embraced by any other Field of
Use. If any format includes activities that are embraced by more than one Field
of Use with different rates, then higher of the rates shall apply to that
format.
Full Portfolio
This rate structure entitles the licensee to use all of the patents in the
current portfolio as well as any continuations, CIP, Div. on pending patents,
etc. This rate structure entitles the licensee to participate in all the Fields
of Use described herein.
Fields of Use
Automated Credit & Calling Card Authorizations Services (excluding prepaid
cards) The provision of credit card authorization service by the credit card
firm or designee using interactive voice response (or combined live
operator/interactive systems) as a stand alone offering. (Note: This is as
opposed to the obtaining of an authorization as a part of processing a call for
another purpose, i.e. an automated order, which is included in the Automated
Service Bureau Field of Use.)
Automated Health Care Services
Interactive call processing (or combined live operator/interactive systems
processing) operated on an on-going basis by a company in the Health Care or
Health Care related industry (e.g. Insurance, Pharmaceutical, Medical Services,
HMO etc.) which allows callers to interact with the company or a subcontractor
operating on their behalf, to perform functions including but not limited to:
placing orders for products or services (e.g. ordering refills of prescriptions)
and obtaining customer service (e.g. checking order status, requesting duplicate
statements, changing address, confirming appointments etc.).
Automated Securities Transactions (buy/sell)
Interactive call processing (or combined live operator/interactive systems
processing) on an ongoing basis, operated by the broker or dealer of the
securities, which allows callers to purchase, sell, or trade securities such as
stock and mutual funds, or transfer funds between such securities. This call
processing may include automated customer service functions such as automated
order status information and cancellation.
Automated Service Bureau
All forms of fully automated call processing or combined automated and live call
processing (except as described in each of the other Fields of Use defined
herein) using interactive voice services, where an independent bureau offers
call termination services, often including transport and call handling, to a
sponsoring organization or an internal group.
21
22
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
This Field of Use includes prepaid card use and automated ordering, which in
turn may include the obtaining of a credit card authorization as part of such an
order or other interactive process. Ongoing automated ordering on behalf of a
television- shopping network and Television Shopping Systems via Cable
Facilities would be excluded - as they represent her Fields of Use.
Electronic Classifieds
The use of interactive voice services (or combined live operator / interactive
systems) to allow advertisers and interested respondents to contact each
another. Typically, advertisers create and store voice messages which can be
heard by potential respondents who can, in turn, leave recorded voice messages
for the advertisers. Finally, advertisers have the ability to retrieve stored
responses. Advertisers may also have the ability to store attributes of that
which is being advertised via touch tone entry, for the purpose of automatically
matching similar attributes or requirements of the respondents
Employment Verification
The use of interactive voice services (or combined live operator / interactive
systems) to collect and distribute information regarding employment status,
income information and salary or to support the process of collecting and
distributing this employment information.
Enhanced Cable Customer Service:
Cable related customer service (not including Pay per View or Interactive
Transactions Through Cable Communications Facilities) typically involving
communications with customers concerning cable accounting, billing, ordering of
service and cable service related equipment, coordination of installation,
repairs, or other cable services. These communications are all related to the
provision and support of cable services only. Communications related to any
other area such as Enhanced Telephony or Wireless Services would be embraced in
another Field of Use
Enhanced Telephony Customer Service:
Telephony related customer service (including Wireless Services) typically
involving communications with customers concerning local, long distance or other
telephony accounting, billing, ordering of service and service related
equipment, coordination of installation, repairs, or other services. These
communications are all related to the provision and support of telephony
services only. Communications related to any other area such as cable service,
or Automated Service Bureau, would be embraced in another Field of Use.
Financial Services Call Processing (i.e. Customer Service, Xxxx Pay etc.)
Interactive call processing (or combined live operator / interactive systems
processing) operated on an on-going basis by a company in the Financial Services
industry (e.g. Banking, Mortgage, etc.) which allows callers to interact with
the company or a subcontractor operating on their behalf, to perform functions
including, but not limited to, banking customer service, paying bills by phone,
transferring funds, ordering additional checks or duplicate statements, credit
card activation, credit card customer service, creating or changing a PIN code,
etc. NOTE: As with each of the other Fields of use, this Field does not include
the activities embraced by any other Field of Use, including but not limited to
Automated Securities Transactions and Automated Credit & Calling Card
Authorizations Services.
22
23
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
Government Licensing Registration (i.e. automotive registration)
The use of interactive voice services (or combined live operator / interactive
systems) operated by a Government entity or its designee to handle the process
of a caller renewing a license.
Government Payment Services
The use of interactive voice services (or combined live operator / interactive
systems) operated by a government entity or its designee to handle the
processing of a caller's payment to the government entity or to support such
payments (this FOU would not embrace the activities covered by any other FOU, in
particular Government Licensing Registration).
Group Conferencing (including "broadcast" services)
One Example: Automated bridging of more than two callers utilizing some form of
"listen only" (unilateral) communication, which may be combined with some form
of interactive communication.
Interactive Transactions Through Cable Communications Facilities
Automated interactive transactions of various types (e.g. games contests,
lotteries and polls) conducted over a cable distribution media (e.g. coaxial or
fiber media).
Pay Per View
Automated ordering of pay-per-view movies. Typically involves automated ordering
of a movie or event from a cable company utilizing automatic identification
capabilities and/or voice processing capabilities to capture the number from
which the subscriber is calling or the caller's account number, to speed the
order and increase security.
Product, Technical and Sales Support Product, Technical and Sales Support
The interactive processing of calls operated by the manufacturer of the product
or the provider of the service, to provide product support, technical support,
customer support, sales support, including but not limited to support provided
to employees and stock holders of the Licensee, regardless of whether a fee is
charged for such activities.
State Lottery Prepaid Tickets or Cards
The use of interactive voice services (or combined live operator / interactive
systems) operated by a State or its designee for the purpose of allowing a
caller to enter a state lottery utilizing interactive call processing
technology.
Television Shopping Systems (automated ordering)
The use of interactive voice services (or combined live operator / interactive
systems) operated by a television shopping network, to handle ongoing orders for
products or services in an automated fashion. Typically, this involves the
processing of credit card information for payment.
Television Shopping Systems Via Cable Facilities (automated ordering)
The use of interactive voice services (or combined live operator / interactive
systems) operated by a television shopping network, to handle ongoing orders
(over cable distribution media) for
23
24
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
products or services based on television programming, where the order processing
is offered directly by the licensee without an interactive voice component.
Travel and Transportation Services
Interactive call processing (or combined live operator / interactive systems
processing) operated on an on-going basis by a company in the Travel or
Transportation Services industry (e.g. Airline, Railroad, Travel Agency, Car
Rental company, Overnight Delivery Service, etc.) which allows callers to
interact with the company or a subcontractor operating on their behalf, to
perform functions including, but not limited to, automated forms of customer
service, booking reservations, ordering duplicate statements, redeeming points
as part of a frequent user program, requesting a package pick up, checking
status of deliveries, etc.
24
25
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
EXHIBIT C
1) Caller Paid Program Receipts - The following is a representative list of
items exemplifying Caller Paid Program Receipts:
A. All amounts charged to callers as a result of licensee's caller paid
programs (including but not limited to programs run using 900 and 976
lines and similar services) . For example, if a caller is billed two
dollars per minute for a two minute call, the Caller Paid Program
Receipt for that call equals four dollars.
B. Services offered over the telephone and paid for by credit card,
check, prepaid card, debit card or any manner of payment shall
constitute Caller Paid Programs, and the amount of the payments for
such services shall constitute Caller Paid Program Receipts.
Prepaid Card Sales: Revenue from the sale or telephonic servicing
of cards for use in providing telephone services and involving
interactive telephone operations will be treated either as Card
Sales Revenue or Card Use Revenue. Both forms of such revenue
will be treated as either Caller Paid Program Receipts or
Non-Caller Paid Program Receipts. Specifically, such revenue will
be determined as follows:
1. Card Sales Revenue Only: If Licensee both sells prepaid cards
and directly services the resulting calls, but receives only Card
Sales Revenue, rather than Use Revenue (no further revenue being
derived from card servicing, e.g. call processing), then the
license fees are to be computed based on Card Sales Revenue only
as Receipts, and these fees are due from the licensee who sells
the card (Card Selling Licensee).
2. Card Sales and Use Revenue: If Licensee both sells prepaid
cards and services the resulting calls (or subcontracts such
servicing), receiving both Card Sales Revenue (for the basic
card) and separately, Use Revenue (for card servicing, e.g. call
processing), then the license fees are to be computed based on
both Card Sales Revenue and Use Revenue as receipts. Such License
fees are due from the Licensee.
3. Use Revenue Only: If Licensee directly services prepaid cards
sold by a third party, receiving only Use Revenue (for card
servicing, e.g. call processing - no revenue is received by
Licensee for card sales), Licensee will compute and pay royalties
based on all Use Revenue as well as the Card Sales Revenue
received by the third party, as receipts.
4. Two Licensees: If a Licensee sells a prepaid card in any of
the three situations described in 1, 2 or 3 above, and another
licensee services the card (e.g. providing call processing), a
license royalty will be paid by the Card Selling Licensee. If the
Servicing Licensee indicates in its Quarterly Statement that the
25
26
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
Card Selling Licensee has paid the royalty for certain cards
sold, the Servicing Licensee can omit only amounts due with
respect to the servicing of those cards.
5. Recharging: In any of the situations described above (1-4),
when a caller "recharges" a card resulting in additional revenue
to a Licensee, then the royalty is computed and paid by the
Licensee based on Recharge Sales Revenue (as opposed to revenues
received for services provided in the recharge operation) as
receipts. Recharge Sales Revenue in this case is treated
similarly to Card Sales Revenue in situations 1-4 above.
2) Non-caller Paid Program Receipts
A. INCLUDED: The following is a representative list of items exemplifying
Non-Caller Paid Program Receipts. Note: Bad debts are excluded from
Non-Caller Paid Program Receipts.
1. All revenue received in connection with call processing on a per
minute basis other than Caller Paid Program Receipts:
2. All ancillary fees received such as:
- setup fees charged to customers
- programming fees charged to customers
- per call fees
- transport fees
- fees for live operator services performed in conjunction
with an automated program
- fees for transcription from an automated program
- message storage fees
- PIN number creation and generation fees
- fees for database maintenance or management in support of an
automated program
- fees for services such as card production and design
B. EXCLUDED: The following are the only items to be excluded from Non-Caller
Paid Program Receipts:
1. Amounts paid to Licensee as reimbursement for credit card charges on
behalf of a third party, joint venture partner or Licensee for
services or merchandise unrelated to services provided over the
telephone.
2. Amounts paid for Postage and shipping at cost (e.g. UPS, FedEx)
3. Amounts paid for paper and envelopes, magnetic tapes, and diskettes
that are not in conjunction with an automated program.
4. All reporting fees
26
27
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
5. Equipment sales or leasing fees*
6. Software sales or leasing fees*
7. Interactive consulting fees*
8. Prepaid ancillary fees such as card production and design.*
* No patent license is granted with respect to these items, except as
provided in this Agreement.
27
28
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
EXHIBIT D
PREFERRED SYSTEM OWNERS
1. * Time Reporting IVR
2. * Marketing IVR
3. * Time Reporting IVR
4. * Marketing IVR
5. * Marketing IVR
6. * Time Reporting IVR
7. * Time Reporting IVR
8. * Time Reporting IVR
9. * Time Reporting IVR
10. * Time Reporting IVR
11. * Benefit Enrollment IVR
12. * Time Reporting IVR
13. * Time Reporting IVR
14. * Scheduling IVR
15. * Time Reporting IVR
16. * Benefit Enrollment IVR
17. * Scheduling IVR
18. * Scheduling IVR
19. * Benefit Enrollment IVR
20. * Benefit Enrollment IVR
21. * Time Reporting IVR
22. * Time Reporting IVR
23. * Human Resources WEB
24. * Benefit Enrollment IVR
25. * Human Resources IVR
26. * Human Resources IVR
27. * Benefit Enrollment IVR
28. * Time Reporting IVR
29. * Time Reporting IVR
30. * Benefit Enrollment IVR
31. * Benefit Enrollment IVR
32. * Benefit Enrollment IVR
33. * Human Resources IVR
34. * Benefit Enrollment IVR
35. * Time Reporting IVR
36. * Time Reporting IVR
37. * Human Resources IVR
38. * Benefit Enrollment IVR
39. * Time Reporting IVR
40. * Benefit Enrollment IVR
41. * Time Reporting IVR
* Confidential portions omitted pursuant to a confidential treatment request and
filed separately with the Securities and Exchange Commission.
28
29
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
PREFERRED SYSTEM OWNERS
42. * Time Reporting IVR
43. * Time Reporting IVR
44. * Time Reporting IVR
45. * Benefit Enrollment IVR
46. * Benefit Enrollment IVR
47. * Time Reporting IVR
48. * Benefit Enrollment IVR
49. * Benefit Enrollment IVR
50. * Time Reporting IVR
51. * Time Reporting IVR
52. * Benefit Enrollment IVR
53. * Benefit Enrollment IVR
54. * Benefit Enrollment IVR
55. * Benefit Enrollment IVR
56. * Scheduling IVR
57. * Time Reporting IVR
58. * Time Reporting IVR
59. * Time Reporting IVR
60. * Time Reporting IVR
61. * Time Reporting IVR
62. * Time Reporting IVR
63. * Time Reporting IVR
64. * Time Reporting IVR
65. * Benefit Enrollment IVR
66. * Time Reporting IVR
67. * Human Resources IVR
68. * Time Reporting IVR
69. * Benefit Enrollment IVR
70. * Human Resources IVR
71. * Scheduling IVR
72. * Time Reporting IVR
73. * Benefit Enrollment IVR
74. * Benefit Enrollment IVR
75. * Benefit Enrollment IVR
76. * Time Reporting IVR
77. * Human Resources IVR
78. * Time Reporting IVR
79. * Time Reporting IVR
80. * Human Resources IVR
81. * Benefit Enrollment IVR
82. * Time Reporting IVR
83. * Time Reporting IVR
84. * Human Resources IVR
85. * Time Reporting IVR
86. * Time Reporting IVR
*Confidential portions omitted pursuant to a confidential treatment requested
and filed separately with the Securities and Exchange Commission
29
30
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
PREFERRED SYSTEM OWNERS
87. * Benefit Enrollment IVR
88. * Benefit Enrollment IVR
89. * Time Reporting IVR
90. * Time Reporting IVR
91. * Human Resources IVR
92. * Time Reporting IVR
93. * Time Reporting IVR
94. * Time Reporting IVR
95. * Time Reporting IVR
96. * Human Resources IVR
97. * Time Reporting IVR
98. * Time Reporting IVR
99. * Time Reporting IVR
100. * Scheduling IVR
101. * Time Reporting IVR
102. * Human Resources IVR
103. * Benefit Enrollment IVR
104. * Scheduling IVR
105. * Benefit Enrollment IVR
106. * Time Reporting IVR
107. * Time Reporting IVR
108. * Time Reporting IVR
109. * Time Reporting IVR
110. * Scheduling IVR
111. * Time Reporting IVR
112. * Benefit Enrollment IVR
113. * Human Resources IVR
114. * Benefit Enrollment IVR
115. * Time Reporting IVR
116. * Time Reporting IVR
117. * Time Reporting IVR
*Confidential portions omitted pursuant to a confidential treatment requested
and filed separately with the Securities and Exchange Commission
30
31
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
EXHIBIT E
ADDITIONAL SYSTEM OWNERS
1. * Time Reporting IVR
2. * Benefit Enrollment IVR
3. * Customer Service IVR
4. * Customer Service IVR
5. * Customer Service IVR
6. * Customer Service IVR
7. * Customer Service IVR
8. * Benefit Enrollment IVR
9. * Customer Service IVR
10. * Customer Service IVR
11. * Customer Service IVR
12. * Human Resources IVR
13. * Customer Service IVR
14. * Customer Service IVR
15. * Customer Service IVR
16. * Human Resources IVR
17. * Customer Service IVR
18. * Customer Service IVR
19. * Customer Service IVR
20. * Human Resources IVR
21. * Human Resources IVR
22. * Customer Service IVR
23. * Customer Service IVR
24. * Benefit Enrollment IVR
25. * Customer Service IVR
26. * Customer Service IVR
27. * Time Reporting IVR
28. * Customer Service IVR
29. * Customer Service IVR
30. * Customer Service IVR
31. * Benefit Enrollment IVR
31
* Confidential portions omitted pursuant to a confidential treatment request
and filed separately with the Securities and Exchange Commission
32
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
EXHIBIT F
FORM LETTER AGREEMENT TO PREFERRED SYSTEM OWNERS
Dear _____________:
This letter is written in connection with the ________ interactive voice
response systems(s) which you have purchased, or will in the future purchase,
from TALX for use in the processing of calls from your employees and their
immediate family members for ____________________ [INSERT ONE OF THE FOLLOWING
ACTIVITIES:
(a) benefits enrollment;
(b) human resources processing, such as benefits
enrollment, benefits forms request, benefits coverage
inquiries, and confirmation of the number of vacation
days accrued;
(c) gathering competitor pricing information;
(d) confirming inventory of products;
(e) scheduling employees; and
(f) employee time reporting.]
As you may know, Xxxxxx X. Xxxx Technology Licensing, L.P. ("Xxxx") holds 00
Xxxxxx Xxxxxx Patents, has 13 U. S. patent pending and holds a number of foreign
patents covering various aspects of interactive technology (the "Xxxx patent
portfolio"). Recently, a number of large users of interactive technology,
including AT&T, Microsoft, Gallup Organization, IBM, Sprint and WORLDCOM, have
agreed to license the Xxxx patent portfolio. TALX also recently agreed to
license the Xxxx patent portfolio, which will assure your continued use of the
TALX system in compliance with the patent rights granted and pending for the
Xxxx patent portfolio.
The agreement TALX has entered into provides that parties such as
_________________will not be subject to claim for infringement of the Xxxx
patent portfolio used in the TALX system for the duration of this Letter
Agreement, subject to the following limitations:
1. The TALX system shall not be used except by your employees and
their immediate family members for the purpose described in the
first paragraph above.
2. The TALX system itself will not carry any license or other rights
under the Xxxx patent portfolio, and may not be transferred to
any other party. Pursuant to the prior license agreement for the
TALX software, it also may not be transferred to any other party.
3. The TALX system must be kept under maintenance agreement with
TALX, and TALX must remain under license.
4. By signing the letter, you represent and warrant that the number
of Annual Call Minutes set forth below for the year 2000 is
accurate. For these purposes, "Annual Call Minutes" is the total
duration, in minutes, of calls initially received through your
TALX system(s) in a given calendar year. If your total Annual
Call Minutes for any calendar year after April 1, 2001 exceeds
the indicated amount by
32
33
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
twenty percent (20%) or more, you must notify TALX in writing of
the actual use. Failure to notify TALX of any such increase shall
cause the rights granted in this letter to terminate.
5. Henceforth, you shall maintain accurate books and records
reflecting the number of your annual call minutes for the
immediately preceding three (3) year period, and provide TALX
with reports supporting your call minutes within forty-five (45)
days after the close of each calendar year. Both TALX and Xxxx
may inspect such books and records upon reasonable notice to
verify the accuracy of your reports. Any failure to provide
reports or access to your books and records in compliance with
this section shall be grounds for termination of this letter
agreement.
6. Xxxx is the only third party beneficiary under this Letter
Agreement.
The foregoing agreement that _________________ will not be subject to suit for
infringement is personal to _________________ and non-transferable, and applies
only to your use of the TALX system(s). The agreement is a covenant not to xxx,
not the grant of a license, express or implied, and not a right to sublicense.
In addition, the covenant does not extend to any call processing activities of
__________________ other than those permitted under this Letter Agreement.
If you agree to the above, please fill in the number of Annual Call Minutes you
used last year and sign below.
Sincerely,
TALX Corporation
By
-------------------------------------------
The foregoing terms are understood and agreed. The number of annual call minutes
for the year 2000 was
-----------------------
(ADD SIGNATURE LINE AND NAME OF SYSTEM OWNER)
33
34
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
EXHIBIT G
Patent Notice
TALX Corporation is licensed under the following, and related Xxxxxx X. Xxxx
Technology Licensing, L.P. United States Patents: 5,128,984; 5,828,734;
5,684,863; 5,815,551; 5,974,120; 5,898,762; and others.
34
35
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
EXHIBIT H
PRESS RELEASE
Xxxxxx X. Xxxx Technology Licensing, L.P.
_______________________ 2001
TALX CORPORATION Obtains A License Under
The Xxxxxx X. Xxxx Technology Licensing L.P. Patents.
Los Angeles, CA - It was announced today TALX Corp.,(TALX). based in St. Louis,
Missouri has taken a non-exclusive license under the patent portfolio held by
Xxxxxx X. Xxxx Technology Licensing L.P.
The license covers TALX services in the "Employment Verification" Field-Of-Use
as well as other fields. The Employment Verification Field of Use covers the use
of interactive voice services (or combined live operator / interactive systems)
to collect and distribute information regarding employment status, income
information and salary or to support the process of collecting and distributing
this employment information.
The 43 United States patents held by Xxxxxx X. Xxxx Technology Licensing L.P.,
and numerous foreign equivalents, cover a wide range of interactive technology
including automated forms of: ordering, customer service, securities trading,
merchandising, prepaid services, telephone conferences, registration, home
shopping, as well as functions involved in securing information from databases
by telephone, interactive cable transactions, and various other uses of 800, 900
and local numbers. More than 13 additional patents are currently pending in this
portfolio.
According to a spokesman for TALX Corporation. "We consider this patent
portfolio to be an important body of work consisting of pioneering developments
in the area of interactive communication between computers and telephones or
Computer Telephony. Our use of Computer Telephony has been critical to our
success and has offered substantial cost savings to our clients. We are pleased
to purchase a license under this portfolio."
Xxxxxx X. Xxxx, chief executive of Xxxxxx X. Xxxx Technology Licensing L.P.
added "We are delighted to welcome TALX Corporation to the increasing list of
companies who have license rights under this portfolio."
A large number of companies are currently licensed under the Xxxx portfolio,
they include American Century, American Express, AT&T Corp., First Data
Corporation, First Union Corp., Home Shopping Network Inc., International
Business Machines (IBM), Microsoft, MoneyGram Payment Systems Inc., NextLink
Interactive, Sprint, Tele-Communications Inc. (now known as AT&T Broadband), The
Gallup Organization, Universal Card Services Corp., West Interactive
Corporation, and WORLDCOM.
35
36
CONFIDENTIAL TREATMENT REQUESTED
BY TALX CORPORATION
Xx. Xxxx is the named inventor on over 50 patents primarily in the fields of
telecommunications and computing. He formed Telecredit Inc., the nation's first
on-line real time credit and check cashing authorization system, and was awarded
a patent as co-inventor of that technology.
TALX Corporation is a leading application service provider (ASP) of HR,
benefits, and employee services. TALX services empower employees to complete
transactions independently via the Internet, corporate portals, Intranets, and
the telephone. Based in St. Louis, MO, TALX Corporation's common stock trades on
the NASDAQ Stock Market(R) under the symbol TALX. For more information call
0-000-000-0000 or visit xxx.xxxx.xxx.
Contact:
Xxxxx Xxxxxxx
XXXXXX X. XXXX TECHNOLOGY LICENSING L.P.
(000) 000-0000
xxxxxxx@xxxxxx.xxx
36
