License Reference Number________________
License
Reference Number________________
PATENT LICENSE AGREEMENT
(“Agreement”) dated as of the Agreement Date, hereinbelow defined, and between
INTERNATIONAL BUSINESS MACHINES CORPORATION, a New York corporation (“IBM”), and
AVISTAR COMMUNICATIONS CORPORATION, a Delaware corporation
(“AVS”).
WHEREAS, IBM and Avistar are
concurrently entering into a Licensed Works Agreement, Agreement #
0000000000 of
September 2008 (“Base Agreement”), and a Statement of Work SOW# 4908004020 of
September 2008 (“SOW”); and
WHEREAS,
for the consideration specifically set forth in such agreements specifically
referred to below, AVS wishes to grant to IBM, and IBM wishes to receive, a
license under AVS’ patents as set forth below;
NOW,
THEREFORE, in consideration of the premises and mutual covenants herein
contained, IBM and AVS agree as follows:
Section
1. Definitions
“Subsidiary”
or “Subsidiaries” shall mean a corporation, company or other
entity:
(a) more
than fifty percent (50%) of whose outstanding shares or securities (representing
the right to vote for the election of directors or other managing authority)
are, now or hereafter, owned or controlled, directly or indirectly, by a party
hereto, but such corporation, company or other entity shall be deemed to be
a Subsidiary only so long as such ownership or control exists;
or
(b) which
does not have outstanding shares or securities, as may be the case in a
partnership, joint venture or unincorporated association, but more than fifty
percent (50%) of whose ownership interest representing the right to make the
decisions for such corporation, company or other entity is now or hereafter,
owned or controlled, directly or indirectly, by a party hereto, but such
corporation, company or other entity shall be deemed to be a Subsidiary
only so long as such ownership or control exists..
“Agreement
Date” shall mean the date on which this Agreement is signed by the second of IBM
and AVS to so sign, as shown on the signature page.
“Authorized
Copy (Copies)” shall mean a computer program copied by authorized third party
recipients of a Master Copy.
“Distribute”
shall mean import, have imported, lease, license, sell, offer for sale, or
otherwise transfer.
“Licensed
Products” shall mean Information Handling System(s) or any instrumentality or
aggregate of instrumentalities (including, without limitation, any component,
subassembly, computer program or supply) designed for incorporation in an
Information Handling System. “Information Handling
System(s)” shall mean any instrumentality or aggregate of instrumentalities
primarily designed to compute, classify, process, transmit, receive, retrieve,
originate, switch, store, display, manifest, measure, detect, record, reproduce,
handle or utilize any form of information, intelligence or data for business,
scientific, control or other purposes.
[***]
Indicates text has been omitted from this Exhibit pursuant to a confidential
treatm ent request that has been filed separately with the Securities and
Exchange Commission.
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“Licensed
Patents” shall mean all patents throughout the world, ***:
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(a)
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issued
or issuing on patent applications entitled to an effective filing date
prior to five years after the Agreement Date;
and
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(b)
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under
which patents or the applications therefor (including continuations,
divisionals, or continuations-in-part) AVS or any of its Subsidiaries has
as of the Agreement Date, or thereafter obtains, the right to grant
licenses to IBM of or within the scope granted herein without such grant
resulting in payment of royalties or other consideration by AVS or its
Subsidiaries to third parties (except for payments among AVS and its
Subsidiaries, and payments to third parties for inventions made by
said third parties while employed by AVS or any of its
Subsidiaries). AVS represents on behalf of itself and its
Subsidiaries that as of the Agreement Date no grants under any of its
patents or applications therefor are subject to such third party
consideration. On request by IBM, AVS agrees to inform IBM of
any such patents or applications, and IBM shall have the right to provide
such consideration to such third party so as to obtain a license
thereunder.
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Notwithstanding
the foregoing, Licensed Patents shall include the patents identified in Schedule
A, and all reissues, reexaminations, continuations, divisionals,
continuations-in-part, and foreign counterparts thereof throughout the
world.
“Master
Copy” shall mean a Licensed Product in software form that is Distributed by or
for IBM to a third party with written authorization directly or indirectly from
IBM to such third party to make copies of such Licensed Product for its own use
or for further authorized Distribution (by transmission or other distribution
means).
“Performance
of Business Processes” shall mean advising, servicing, or operating all or part
of an enterprise or organization.
Section
2. Grant of
Rights
2.1 AVS,
on behalf of itself and its Subsidiaries grants to IBM a nonexclusive and
worldwide license under the Licensed Patents:
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(a)
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to
make (including the right to use any apparatus and practice any method in
making), use, and Distribute Licensed Products and Master
Copies;
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(b)
|
to
authorize in writing, directly or indirectly, recipients of Master Copies
to make and Distribute Authorized
Copies;
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(c)
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to
have Licensed Products made by another manufacturer for use and
Distribution by or for IBM, provided that a substantial portion of the
design, specifications, or other content of such Licensed Products is
provided to such manufacturer by IBM, an IBM Subsidiary, or a third party
providing such content for and on behalf of IBM or an IBM Subsidiary and
where such content is owned by or licensed to IBM or an IBM Subsidiary;
and
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(d)
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to
use any apparatus and practice any method in connection with the
Performance of Business Processes for itself or third
parties.
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2.2 IBM
shall have the right to grant sublicenses to its Subsidiaries existing on or
after the Agreement Date, which sublicenses may include the right of such
sublicensed Subsidiaries to sublicense other IBM Subsidiaries. No
sublicense shall be broader in any respect at any time during the life of this
Agreement than the license held at that time by the party that granted the
sublicense.
[***]
Indicates text has been omitted from this Exhibit pursuant to a confidential
treatm ent request that has been filed separately with the Securities and
Exchange Commission.
Page 2 of
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2.3 Where
a third party uses an apparatus or practices a method in Performance of Business
Process, and such third party is acting on behalf of, and as subcontractor to,
IBM in connection with a contract that obligates IBM to provide such Performance
of a Business Process for an IBM customer, such use or practice shall be
deemed to have been performed by IBM.
2.4 AVS
irrevocably releases IBM, its Subsidiaries existing as of the Agreement Date,
and their respective customers, distributors and suppliers from any and all
claims of infringement of the Licensed Patents which claims are based on acts
prior to the Agreement Date, which, had they been performed after the Agreement
Date would have been licensed under this Agreement.
2.5 AVS
covenants not to xxx direct and indirect customers of Licensed Products under
this Agreement under the Licensed Patents for the formation of any combination
of such Licensed Products with other products, and for the use or sale of such
combinations that have been formed by said customers, notwithstanding that
such other products are not furnished by IBM or its Subsidiaries; provided,
however, that such covenant not to xxx shall only extend to patent claims with
respect to which IBM’s or its Subsidiary’s furnishing of such Licensed Products
would, in the absence of this Agreement, constitute infringement and provided,
further that such covenant shall not extend to infringement arising from the
manufacture, use or sale of such other product per se.
2.6 If,
after the Agreement Date, IBM or any of its Subsidiaries (“Acquiring
Party”) either acquires an entity or acquires substantially all of the assets of
an entity (“Acquired Party”), and said Acquired Party is, as of the date of
acquisition, licensed by AVS or its Subsidiaries under the Licensed Patents,
through an existing agreement dated after the Agreement Date pursuant to which
payments are to be made by said entity to AVS, then, at IBM’s election, IBM may
terminate such existing license by providing notice to that effect to
AVS. In the event IBM does so terminate such existing license, any
payments that may be due after such notice shall be deemed fully satisfied such
that neither IBM nor said entity shall have any further payment obligation under
such existing agreement. In the case where such existing agreement is
dated before the Agreement Date, IBM’s right of termination shall only apply if
such existing agreement includes obligations to pay a royalty for licensed
products after the date of acquisition; in the case where such existing
agreement is dated before the Agreement Date and includes obligations to make
fixed fee payments after the date of acquisition, IBM shall not have any right
to terminate afforded by this Agreement, and IBM may request that the parties
discuss potential changes to the amount or duration of such fixed fee
payments.
Section
3. Miscellaneous
3.1 In
consideration for the licenses set forth in this Agreement, IBM shall pay AVS
the fees and royalties set forth in Sections 11.1-11.3 of the SOW.
3.2 The
term of the licenses granted under this Agreement shall be from the Agreement
Date until the last to expire of the Licensed Patents. This Agreement
may be terminated for cause by AVS only if (a) IBM has failed to make payment of
the fees and royalties set forth in Sections 11.1-11.3 of the SOW, and (b) IBM
has failed to make such payments within *** days after notification
from AVS that such payments are past due, and (c) IBM has no credible
basis
[***]
Indicates text has been omitted from this Exhibit pursuant to a confidential
treatm ent request that has been filed separately with the Securities and
Exchange Commission.
Page 3 of
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to not
make such payments (by way of illustration, if IBM has a credible basis to
believe that AVS has failed to meet the technology milestones set forth in the
SOW, and does not make the payment that was due for such milestone completion,
this Agreement shall not be terminable by AVS; rather, if AVS disagrees and
believes the milestone was met, it shall have the right to xxx for payment of
such amounts). The parties agree that they shall have their senior
executive management meet to discuss any disagreement regarding payments prior
to initiating any legal action.
***.
3.3 Neither
AVS nor its Subsidiaries shall assign or grant any right under any of the
Licensed Patents unless such assignment or grant is made subject to the terms of
this Agreement. IBM shall have the right to assign this license to a
successor of all of IBM’s businesses to which this Agreement
relates.
If,
subsequent to the Agreement Date,
(a) IBM
either transfers a product or service line to a third party without transferring
a Subsidiary to said third party; or spins off a Subsidiary (either by disposing
of it to a third party or in some other manner reducing ownership or control so
that the spun-off entity is no longer a Subsidiary of the Transferring Party);
and if
(b) such
transfer or spin off includes at least one marketable product or service in a
product or service line and tangible assets having a net value ***,
then
after written request (within sixty (60) days following the transfer or spin
off) to AVS jointly by IBM and either such third party in the case of a
transfer, or such ex-Subsidiary in the case of a spin off, AVS shall grant a
royalty-free license (under the same terms as the license granted to IBM herein
but excluding this provision and Sections 2.4 and 3.1) under its Licensed
Patents for the field of such product or service line to such third party or
such ex-Subsidiary, (the “Recipient”) provided that:
(i) such
field shall not be defined more broadly than necessary to cover the particular
product or service line being transferred or spun off, including extensions
thereto based on the same technology;
(ii) the
license granted shall be limited in the twelve (12) months immediately following
such transfer or spin off to a volume of licensed products or services having an
aggregate selling price equal to no more than the aggregate selling prices of
such products or services by said Transferring Party in the twelve (12) months
preceding such transfer or spin off plus ten percent (10%); and shall be
limited, in each of the successive twelve-month periods following such transfer
or spin off, to a volume of licensed products or services having an aggregate
selling price equal to no more than the limit for the immediately preceding
twelve-month period plus ten percent (10).
***.
3.4 The
parties shall mutually agree on the content and timing of a press release
describing the existence of this Agreement in accordance with Section 16.1 of
the SOW; other than the foregoing, neither party shall disclose any term or
condition of this Agreement to any third party except (a) to the extent
disclosure is required by court order, otherwise required by law or
regulatory obligation, provided the disclosing party first give the other party
prior written notice to enable the other party to seek a protective order; (b)
to the extent required to enforce rights under this Agreement; or (c) to the
extent reasonably necessary, on a confidential basis, to the
disclosing party’s accountants, attorneys and / or financial
advisors. In addition, in response to a request by a customer, IBM
and AVS shall have the right to disclose the existence of this
[***]
Indicates text has been omitted from this Exhibit pursuant to a confidential
treatm ent request that has been filed separately with the Securities and
Exchange Commission.
Page 4 of
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Agreement
and the scope of its rights to that customer, on a confidential basis and AVS
may identify IBM as a licensee of the AVS Licensed Patents to potential
licensees.
3.5 AVS
represents and warrants, on behalf of itself and its Subsidiaries, that (i) it
is the owner of the Licensed Patents, (ii) it has the full right and power to
grant the rights (including the licenses, covenants, and releases) set forth in
this Agreement, and (iii) no other party’s consent or approval is required for
the granting of such rights.
3.6 This
Agreement shall be construed, and the legal relations between the parties hereto
shall be determined, in accordance with the law of the State of New York, USA,
as such law applies to contracts signed and fully performed in New York, without
regard to conflict of law principles. The parties waive their rights
to a jury trial.
3.7 Neither
AVS nor IBM shall be considered the author of this Agreement for the purpose of
interpreting any provision herein.
3.
8 This
Agreement shall not be binding upon the parties until it has been signed by or
on behalf of each party. No amendment or modification hereof shall be
valid or binding upon the parties unless made in writing and signed by the
parties.
3.9 AVS
shall not have any obligation hereunder to institute any action or suit against
third parties for infringement of any of the Licensed Patents or to defend any
action or suit brought by a third party which challenges or concerns the
validity or coverage of any of the Licensed Patents. AVS is under no obligation
hereunder to file any patent application or to secure any patent or patent
rights or to maintain any patent in force.
3.10 If
any section of this Agreement is found by competent authority to be invalid,
illegal or unenforceable in any respect for any reason, the validity, legality
and enforceability of such section in every other respect and the remainder of
this Agreement shall continue in effect so long as the Agreement still expresses
the intent of the parties. However, if the intent of the parties
cannot be preserved, this Agreement shall be either renegotiated or
terminated.
This
Agreement and its attachments, and referred-to sections of the SOW embody the
entire understanding of the parties with respect to the Licensed Patents, and
replace any prior oral or written communications between them.
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Agreed
to:
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Agreed
to:
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AVISTAR
COMMUNICATIONS CORPORATION
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INTERNATIONAL
BUSINESS MACHINES CORPORATION
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By:
___________________________
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By:
___________________________
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Name:
Title:
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***
***
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Date:
_________________________
|
Date:
_________________________
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[***]
Indicates text has been omitted from this Exhibit pursuant to a confidential
treatm ent request that has been filed separately with the Securities and
Exchange Commission.
Page 5 of
6
Schedule
A
|
Country
Code
|
Patent/
Publication Number
|
Kind
|
Title
|
Issue/
Publication Date
|
|
|
US
|
7398296
|
B2
|
Networked
Audio Communication Over Two Networks
|
2008-07-08
|
|
|
US
|
7206809
|
B2
|
Method
For Real-Time Communication Between Plural Users
|
2007-04-17
|
|
|
US
|
7185054
|
B1
|
Participant
Display And Selection In Video Conference Calls
|
2007-02-27
|
|
|
US
|
7152093
|
B2
|
System
For Real-Time Communication Between Plural Users
|
2006-12-19
|
|
|
US
|
7054904
|
B2
|
Marking
And Searching Capabilities In Multimedia Documents Within Multimedia
Collaboration Networks
|
2006-05-30
|
|
|
US
|
6972786
|
B1
|
Multimedia
Services Using Central Office
|
2005-12-06
|
|
|
US
|
6959322
|
B2
|
UTP
Based Video Conferencing
|
2005-10-25
|
|
|
US
|
6816904
|
B1
|
Networked
Video Multimedia Storage Server Environment
|
2004-11-09
|
|
|
US
|
6789105
|
B2
|
Multiple-Editor
Authoring Of Multimedia Documents Including Real-Time Video And
Time-Insensitive Xxxxx
|
0000-00-00
|
|
|
XX
|
0000000
|
B2
|
Dedicated
Echo Canceller For A Xxxxxxxxxxx
|
0000-00-00
|
|
|
XX
|
0000000
|
B2
|
Videoconferencing
Xxxxxxxx
|
0000-00-00
|
|
|
XX
|
0000000
|
B1
|
Video
Conferencing On Existing UTP Infrastructure
|
2002-08-20
|
|
|
US
|
6426769
|
B1
|
High-Quality
Switched Analog Video Communications Over Unshielded Twisted
Pair
|
2002-07-30
|
|
|
US
|
6351762
|
B1
|
Method
And System For Log-In-Based Video And Multimedia Xxxxx
|
0000-00-00
|
|
|
XX
|
0000000
|
B1
|
Remote
Participant Hold And Disconnect During Videoconferencing
|
2002-01-29
|
|
|
US
|
6237025
|
B1
|
Multimedia
Collaboration System
|
2001-05-22
|
|
|
US
|
6212547
|
B1
|
UTP
Based Video And Data Conferencing
|
2001-04-03
|
|
|
US
|
6081291
|
A
|
Methods
And Systems For Multimedia Communication Via Public Telephone
Networks
|
2000-06-27
|
|
|
US
|
5978835
|
A
|
Multimedia
Mail, Conference Recording And Documents In Video
Conferencing
|
1999-11-02
|
|
|
US
|
5915091
|
A
|
Synchronization
In Video Conferencing (Videoconferencing And Data Conferencing
System)
|
1999-06-22
|
|
|
US
|
0000000
|
A
|
System
For Call Request Which Results In First And Second Call Handle Defining
Call State Consisting Of Active Or Hold For Its Respective Av
Device
|
1999-04-20
|
|
|
US
|
5884039
|
A
|
System
For Providing A Directory Of Av Devices And Capabilities And Call
Processing Such That Each Participant Participates To The Extent Of
Capabilities Available
|
1999-03-16
|
|
|
US
|
5867654
|
A
|
Two
Monitor Videoconferencing Hardware
|
1999-02-02
|
|
|
US
|
5854893
|
A
|
System
For Teleconferencing In Which Collaboration Types And Participants By
Names Or Icons Are Selected By A Participant Of The
Teleconference
|
1998-12-29
|
|
|
US
|
5802294
|
A
|
Teleconferencing
System In Which Location Video Mosaic Generator Sends Combined Local
Participants Images To Second Location Video Mosaic Generator For
Displaying Combined Images
|
1998-09-01
|
|
|
US
|
0000000
|
A
|
Call
Control In Video Conferencing Allowing Acceptance And Identification Of
Participants In A New Incoming Call During An Active
Teleconference
|
1998-05-26
|
|
|
US
|
5751338
|
A
|
Methods
And Systems For Multimedia Communications Via Public Telephone
Networks
|
1998-05-12
|
|
|
US
|
5689641
|
A
|
Multimedia
Collaboration System Arrangement For Routing Compressed Av Signal Through
A Participant Site Without Decompressing The Av Signal
|
1997-11-18
|
|
|
US
|
5617539
|
A
|
Multimedia
Collaboration System With Separate Data Network And A/V Network Controlled
By Information Transmitting On The Data Network
|
1997-04-01
|
|
|
US
|
20080117965
|
A1
|
Multiple-Channel
Codec And Transcoder Environment For Gateway, MCU, Broadcast, And Video
Storage Applications
|
2008-05-22
|
|
|
US
|
20080049792
|
A1
|
Interconnecting
Network Locations Between Premises Network And Central Office Using
Ethernet On Loop Plant
|
2008-02-28
|
|
|
US
|
20070168426
|
A1
|
Storing
And Accessing Media Files
|
2007-07-19
|
|
|
US
|
20070088782
|
A1
|
Storage
And Playback Of Media Files
|
2007-04-19
|
|
|
US
|
20070088781
|
A1
|
Storing
And Accessing Media Files
|
2007-04-19
|
|
|
US
|
20070083596
|
A1
|
Storing
And Accessing Media Files
|
2007-04-12
|
|
|
US
|
20070083595
|
A1
|
Networked
Audio Communication With Login Location Information
|
2007-04-12
|
|
|
US
|
20070083594
|
A1
|
Device
For Wireless Networked Communications
|
2007-04-12
|
|
|
US
|
20070083593
|
A1
|
Wireless
Networked Audio Communication
|
2007-04-12
|
|
|
US
|
20070078932
|
A1
|
Audio
Communication With Login Location Addressing
|
2007-04-05
|
|
|
US
|
20070078931
|
A1
|
System
For Managing Real-Time Communications
|
2007-04-05
|
|
|
US
|
20070078930
|
A1
|
Method
For Managing Real-Time Communications
|
2007-04-05
|
|
|
US
|
20060168637
|
A1
|
Multiple-Channel
Codec And Transcoder Environment For Gateway, MCU, Broadcast And Video
Storage Applications
|
2006-07-27
|
|
|
US
|
20060075121
|
A1
|
Registration
Based Addressing And Call Handles To Establish
Communication
|
2006-04-06
|
|
|
US
|
20060064461
|
A1
|
Using
Login-Based Addressing To Communicate With Listed Users
|
2006-03-23
|
|
|
US
|
20060059266
|
A1
|
Registration
Based Addressing Over Multiple Networks With Digital Audio
Communication
|
2006-03-16
|
|
|
US
|
20060041617
|
A1
|
Log-In
Based Communications Plus Two Data Types
|
2006-02-23
|
|
|
US
|
20060041616
|
A1
|
Audio
Communications Using Devices With Different Capabilities
|
2006-02-23
|
|
|
US
|
20050144284
|
A1
|
Scalable
Networked Multimedia System And Applications
|
2005-06-30
|
|
|
US
|
20040107255
|
A1
|
System
For Real-Time Communication Between Plural Users
|
2004-06-03
|
|
|
US
|
20040107254
|
A1
|
Method
For Real-Time Communication Between Plural Users
|
2004-06-03
|
|
|
US
|
20030187940
|
A1
|
Teleconferencing
Employing Multiplexing Of Video And Data Conferencing
Signals
|
2003-10-02
|
|
|
WO
|
200077687
|
A1
|
System
And Method For Browser-Based Multimedia Collaboration
Reporting
|
21-Dec-2000
|
|
|
WO
|
9938324
|
A1
|
Multifunction
Video Communication Service Device
|
29-Jul-1999
|
|
[***]
Indicates text has been omitted from this Exhibit pursuant to a confidential
treatm ent request that has been filed separately with the Securities and
Exchange Commission.
Page 6 of
6
