SETTLEMENT AND LICENSE AGREEMENT
Exhibit 10.1
| CONFIDENTIAL – | ||
| FRE RULE 408 | ||
| Execution Copy |
This SETTLEMENT AND LICENSE AGREEMENT (together with all Exhibits attached hereto, the
“Agreement”), is made and entered into as of May 14, 2010 (the “Effective Date”), by and among
Microsoft Corporation, a Washington corporation (Microsoft Corporation together with its
Affiliates, “Microsoft”), on the one hand, and VirnetX Inc., a Delaware corporation (VirnetX Inc.
together with its Affiliates, “VirnetX”), on the other hand. As used herein, “Party” refers to any
of VirnetX or Microsoft individually, and “Parties” refers to VirnetX and Microsoft collectively.
RECITALS
| A. | VirnetX Inc. has accused Microsoft of infringing U.S. Patent Nos. 6,502,135 B1 and 7,188,180
B2 (the “Patents-In-Suit”) in actions filed in the U.S. District Court for the Eastern
District of Texas (“the Court”), designated Civ. Action No. 6:07CV80 (LED) and Civ. Action No.
6:10CV94 (LED) (“the Actions”). |
| B. | Microsoft Corporation has denied any such infringement of the Patents-in-Suit and challenged
the validity thereof. Microsoft has also challenged the enforceability of the Patents-in-Suit
to the extent allowed pursuant to the Order dated January 15, 2010 in Civ. Action No. 6:07CV80
(LED), Docket No. 274 (“the January 15, 2010 Order”). |
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| C. | Microsoft admits no liability with respect to any of the claims asserted in the Actions. |
NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the Parties agree as follows:
AGREEMENT
1 Compromise Only. This Agreement is entered into for purposes of settlement and compromise
only. Nothing contained in this Agreement, or done or omitted in connection with this Agreement, is
intended as or shall be construed as an admission of or by any Party, or on behalf of any Microsoft
Released Party (as hereinafter defined), of any fault, liability or wrongdoing whatsoever, or an
admission of or by any Microsoft Released Party that any Licensed Patents (as hereinafter defined)
are infringed, valid or enforceable.
2 Definitions.
“Licensed Patents” shall mean all VirnetX patents and patent applications in existence
and owned by or assigned to VirnetX Inc. or its current Affiliates as of the Effective Date
(including, without limitation, the Patents-In-Suit and the patents and applications set forth
on Exhibit A) and all patents and applications related to such patents and applications
(including, without limitation, parents, continuations, continuations in part, and
divisionals).
“Affiliate” means any entity that Controls, is Controlled by or under common Control
with Microsoft Corporation or VirnetX Inc.
“Control” means direct or indirect ownership of at least fifty percent (50%) of the
voting power, capital or other securities of an entity.
“Licensees” means Microsoft’s distributors and customers, but only to the extent such
third parties exploit any
Microsoft software which (i) has been licensed, created or developed by Microsoft and (ii) is
licensed under this Agreement.
3. Releases
| 3.1 | VirnetX, on behalf of itself and its predecessors, successors, assigns, attorneys,
directors, shareholders, employees, and officers (collectively with VirnetX, the “VirnetX
Releasing Parties”), hereby voluntarily, irrevocably and unconditionally fully and
forever releases, discharges, covenants not to xxx, and holds harmless Microsoft and its
predecessors, successors, assigns, attorneys, insurers, agents, servants, subcontractors,
officers, directors, shareholders, representatives, employees, and Licensees
(collectively, the “Microsoft Released Parties”) from and for any and all rights, claims,
debts, liabilities, demands, obligations, promises, damages, causes of action and claims
for relief of any kind, manner, nature and description, known or unknown (collectively,
“Claims”), which any of the VirnetX Releasing Parties have, may have had, might have
asserted, may now have or assert, or may hereafter have or assert against the Microsoft
Released Parties, or any of them, arising, accruing or occurring, in whole or in part, at
any time prior to the Effective Date, including, without in any way limiting the
generality of the foregoing, any claims or causes of action arising out of or related to
any of the facts, transactions, matters or occurrences giving rise to or alleged, or that
could have been alleged in or discovered in, the Actions or under any of the Licensed
Patents. |
| 3.2 | Microsoft, on behalf of itself and its predecessors, successors, assigns
(collectively with Microsoft, the “Microsoft Releasing Parties”), hereby voluntarily,
irrevocably and unconditionally fully and forever releases, discharges, covenants not to
xxx, and holds harmless VirnetX and its predecessors, successors, assigns, attorneys,
insurers, agents, servants, subcontractors, officers, directors, representatives, and
employees (collectively, the “VirnetX Released Parties”) from and for any and all Claims
which any of the Microsoft Releasing Parties have, may have had, might have asserted, or
may now have or assert prior to the Effective Date arising out of or related to any of
the facts, transactions, matters or occurrences giving rise to or alleged, or that could
have been alleged in or discovered in, the Actions as to VirnetX’s assertion of the
Patents-in-Suit, except that Microsoft does not release or discharge (or grant a covenant
or hold harmless as to) its Claims that the Licensed Patents are invalid, unenforceable,
and/or not infringed by Microsoft. |
| 3.3 | The VirnetX Releasing Parties and Microsoft Releasing Parties expressly waive any
and all statutes, legal doctrines and other similar limitations upon the effect of
general releases. By way of example, and without limitation, the foregoing parties waive
the benefit of California Civil Code Section 1542, which states as follows: |
“A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR DOES NOT
KNOW OR SUSPECT TO EXIST IN HIS FAVOR AT THE TIME OF EXECUTING THE RELEASE,
WHICH IF KNOWN BY HIM MUST HAVE MATERIALLY AFFECTED HIS SETTLEMENT WITH THE
DEBTOR.”
The VirnetX Releasing Parties and Microsoft Releasing Parties, with the advice of their
counsel, waive any rights and/or benefits that they, or any of them, might otherwise
have under Civil Code Section 1542 and any and all other statutes, legal doctrines
and/or principles of similar effect in California, Washington, and any other state,
federal or foreign jurisdiction, to the full extent that such rights and benefits may be
waived.
4. Grant of Licenses and Covenant
| 4.1 | [***], VirnetX hereby grants to Microsoft, and Licensees, a worldwide, irrevocable,
nonexclusive, non-sublicensable fully paid up license and covenant not to xxx under the
Licensed Patents. |
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| 4.2 | [***] |
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| 4.3 | [***] |
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| 4.4 | [***] |
5. Consideration.
| 5.1. | Dismissals. VirnetX shall dismiss with prejudice (and cause Science
Applications International Corporation (“SAIC”) to join in such dismissal) all claims in
the Actions, and Microsoft shall dismiss with prejudice all counterclaims in the Actions
(except Microsoft’s affirmative defenses and counterclaims of (i) non-infringement and
invalidity shall be dismissed without prejudice and (ii) unenforceability shall be
dismissed without prejudice but continue to be subject to the January 15, 2010 Order), by
filing (and VirnetX causing SAIC to file) on or before May 21, 2010, Stipulations of
Dismissal that provide that each of VirnetX Inc., Microsoft Corporation and SAIC will
bear its own costs, expenses and attorney’s fees in connection with the Actions. In
addition, VirnetX Inc. and Microsoft Corporation agree to execute such additional papers
and motions as may be necessary to cause the Court to effect a disposal of all issues
before it and a dismissal of the Actions. |
| [***] | INDICATES PORTIONS OF THIS EXHIBIT THAT HAVE BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT. |
| 5.2. | Payment. In full and complete settlement of all claims asserted against
Microsoft in the Actions, and in full and complete consideration of the licenses,
releases, waivers, and other covenants and rights in this Agreement, Microsoft
Corporation shall within twenty (20) business days after the later of the Effective Date
or the provision by VirnetX Inc. and its counsel of an IRS Form W-9 and a letter on its
letterhead with payment instructions consistent with this paragraph pay to VirnetX Inc.,
in U.S. dollars, a total payment of two hundred million U.S. Dollars (US$ 200,000,000) by
wire transfer into the following account: |
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Account Name: Texas IOLTA Trust
Account -XxXxxx Xxxxx Bank
Name and Address: Bank of America, N.A., 000 Xxxxxxxx Xxxxx,
Xxxxxx, XX 00000 Beneficiary Name: VirnetX Inc. |
6. Term.
This Agreement shall remain in full force and effect until six years after the
expiration of the last to expire of the Licensed Patents.
7. Miscellaneous.
| 7.1. | Confidentiality. The mere existence of this Agreement (including, without
limitation, the identification of the Parties and any Licensed Patents) is not
confidential. On or after a mutually agreed time, the Parties agree to issue the joint
press release in the form attached as Exhibit B. Subject to the foregoing, no
Party may issue a press release or otherwise affirmatively attempt to publicize the terms
or existence of this Agreement. The Parties further agree that the terms and conditions
of this Agreement are confidential and shall not be disclosed by any Party to any other
person except (a) as may be required by law (including, without limitation, SEC reporting
requirements, or any other United States or foreign regulatory requirements) or stock
exchange rule (after prior written notice to the other Party with opportunity to comment
on the disclosure), (b) during the course of litigation so long as the disclosure of such
terms and conditions are restricted in the same manner as is the confidential information
of the litigating Party, which includes designating the Agreement under the highest
available level of protection under a protective order; (c) in confidence to the
professional legal, advisory, and financial counsel representing or auditing such Party;
(d) in confidence, in connection with the enforcement of this Agreement or rights under
this Agreement; (e) in confidence, in connection with a merger or acquisition or proposed
merger or acquisition of a Party, or the like; (f) in confidence by Microsoft to
Licensees and any third parties covered by the terms of this
Agreement; (g) in confidence, to potential acquirers of all or substantially all of VirnetX; (h) in
confidence to the insurers and third party claim administrators of Microsoft; (i) in
confidence to any person covered by the releases, licenses, waivers or other covenants
and rights granted herein; or (j) as otherwise agreed in writing by the Parties
executing this Agreement. Prior to any disclosure by VirnetX pursuant to the foregoing
subsection (a), VirnetX will provide Microsoft with a draft copy of the proposed
disclosure or filing (including, without limitation, any filing with the SEC) at least twenty-four
(24) hours before such disclosure or filing is made, and the Parties will consult in
good faith with respect to the content of the proposed disclosure and the potential for
VirnetX to request confidential treatment with respect to portions of the Agreement that
VirnetX reasonably believes must be disclosed or filed. |
| 7.2. | Representations and
Warranties. VirnetX represents, warrants, and covenants
to Microsoft that: |
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(a) VirnetX Inc. is the sole, exclusive, and lawful owner of the Licensed Patents
(including, without limitation, the Patents-in-Suit) and has all rights to enforce and
license them and, thus the right to enter into this Agreement and grant all of the
releases, licenses, waivers, and other covenants and rights under this Agreement. |
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(b) Subject to its Patent License and Assignment Agreement between VirnetX Inc. and
SAIC, dated August 15, 2005 (and the amendments thereto as of November 2, 2006 and March
12, 2008), VirnetX Inc. is the sole, exclusive, and lawful owner of all interest in and
to the Licensed Patents (including, without limitation, the Patents-in-Suit). |
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(c) No Claim released herein, and no portion of any such Claim, has been assigned or
otherwise transferred by VirnetX to any other person or entity, either directly,
indirectly, or by subrogation or operation of law. VirnetX has not filed, commenced,
served, or otherwise instituted (in each case, either on its own, or in conjunction with
any third party) any complaints, claims, causes of action, or demands against Microsoft
other than those asserted in connection with the Actions. |
(d) During the term of this Agreement any consideration required to be paid to any other
person, corporation, or entity if any, on account of any or all of the releases,
licenses, waivers, or other covenants or rights granted under this Agreement to any
Microsoft Released Parties shall be paid by VirnetX, and no additional consideration
shall be required of any of the Microsoft Released Parties. VirnetX has not granted and
will not grant any licenses, covenants, and/or other rights, under the Licensed Patents
and/or otherwise, that would conflict with, impair, and/or prevent any or all of the
releases, licenses, waivers, or other covenants or rights granted under this Agreement.
VirnetX Inc. will cause its Affiliates to comply with the terms and conditions of this
Agreement.
(e) VirnetX has been represented by competent and independent counsel of its own choice
throughout all negotiations preceding the execution of the Agreement, and has executed
this Agreement upon the advice of said competent and independent counsel regarding the
meaning and legal effect of this Agreement, and regarding the advisability of making the
agreements provided for herein, and fully understands the same.
| 7.3. | Representations and
Warranties. Microsoft represents, warrants, and covenants to
VirnetX that: |
(a) No Claim released herein, and no portion of any such Claim, has been assigned or
otherwise transferred by Microsoft to any other person or entity, either directly,
indirectly, or by subrogation or operation of law. Microsoft has not filed, commenced,
served, or otherwise instituted (in each case, either on its own, or in conjunction with
any third party) any complaints, claims, causes of action, or demands against VirnetX
other than those asserted in connection with the Actions or the current reexamination
proceedings of the Patents-In-Suit.
(b) Microsoft has been represented by competent and independent counsel of its own
choice throughout all negotiations preceding the execution of the Agreement, and has
executed this Agreement upon the advice of said competent and independent counsel
regarding the meaning and legal effect of this Agreement, and regarding the advisability
of making the agreements provided for herein, and fully understands the same.
| 7.4 | Mutual Representations
and Warranties. Each Party and each person signing this
Agreement on behalf of a Party represents and warrants to the other that: |
(a) Such Party has not entered this Agreement in reliance upon any promise, inducement,
agreement,
statement, or representation other than those contained in this Agreement.
(b) Such Party has the full right and power to enter into this Agreement, and the person
executing this Agreement has the full right and authority to enter into this Agreement
on behalf of such Party and the full right and authority to bind such Party to the terms
and obligations of this Agreement.
| 7.5 | Notices. All notices and requests which are required or permitted to be given in
connection with this Agreement shall be in writing and shall be deemed given as of the day
they are received either by messenger, delivery service, or in the United States of America
mails, postage prepaid, certified or registered, return receipt requested, and addressed as
follows, or to such other address as the Party to receive the notice or request so designates
by written notice to the other: |
If to VirnetX Inc.:
Attn: Xxxxxxx Xxxxxx, Chief Executive Officer VirnetX Inc. 0000 Xxxxxx Xxxxxx Xxxxx,
Xxxxx 000 Xxxxxx Xxxxxx, Xxxxxxxxxx 00000 Facsimile: (000) 000-0000
with a copy to:
Xxxxxx X. Xxxxxx XxXxxx Xxxxx, P.C. 000 Xxxxxxxx Xxxxx, Xxxxx 0000 Xxxxxx, XX 00000 Fax:
(000) 000-0000
If to Microsoft Corporation:
Attn: Director of Licensing, LCA Patent Group Microsoft Corporation Xxx Xxxxxxxxx Xxx
Xxxxxxx, XX 00000 Fax: (000) 000-0000
with a copy to: Attn: Law & Corporate Affairs Microsoft Corporation Xxx Xxxxxxxxx Xxx
Xxxxxxx, Xxxxxxxxxx 00000 Fax: (000) 000-0000
| 7.6. | Governing Law; Venue. This Agreement shall be construed and controlled by the
internal laws of the State of Texas (excluding conflict of laws principles) and applicable
federal laws. The sole and exclusive venue for any lawsuit arising out of or relating to this
Agreement shall be the United States District Court for the Eastern District of Texas. |
| 7.7. | Costs. Each Party shall bear its own costs, expenses and attorneys’ fees incurred in
connection with the Actions, the making of this Agreement, and its performance under this
Agreement. Each Party expressly waives any claim of costs and attorneys’ fees from or against
the other Party. |
| 7.8. | Successors and
Assigns. The terms, covenants, conditions, provisions and benefits of
this Agreement shall be binding upon and inure to the benefit of the Parties and their
respective successors and assigns. |
| 7.9. | No Construction Against
Drafter. This Agreement results from negotiations between the
Parties and their respective legal counsel, and each Party acknowledges that it has had the
opportunity to negotiate modifications to the language of this Agreement. Accordingly, each
Party agrees that in any dispute regarding the interpretation or construction of this
Agreement, no statutory, common law or other presumption shall operate in favor of or against
any Party by virtue of his, her or its role in drafting or not drafting the terms and
conditions set forth herein. |
| 7.10. | Captions. Captions or headings used in this Agreement are for the convenience of the
Parties only, and shall not be considered part of this Agreement or used to construe the terms
of this Agreement. |
| 7.11. | Construction. If any provision of this Agreement shall be held by a court of
competent jurisdiction to be illegal, invalid or unenforceable or otherwise in conflict with
law, the remaining provisions shall remain in full force and effect. If any provisions of this
Agreement are deemed not enforceable, they shall be deemed modified to the extent necessary to
make them enforceable. Provisions shall apply, as applicable, to current and successive
events, parties, and transactions. |
| 7.12. | Counterparts. This Agreement may be executed in any number of counterparts and by
the different Parties on separate counterparts and each such counterpart shall be deemed to be
an original, but all such counterparts shall together constitute but one and the same
Agreement. Execution of this Agreement may be accomplished by signing this Agreement and
transmitting the signature page to opposing counsel by facsimile or email. The Parties so
executing and delivering shall promptly thereafter deliver signed originals of at least the
signature page(s), but no failure to do so shall affect the validity or enforceability of this
Agreement. |
| 7.13. | Waiver. No waiver of any provision of this Agreement shall be deemed or
shall constitute a waiver of any other provision, whether or not similar, nor shall any
waiver constitute a continuing waiver unless expressly stated in writing by the Party
making the waiver. No waiver of any provision shall be binding in any event unless
executed in writing by the Party making the waiver. |
| 7.14. | Entire Agreement. This Agreement (including, without limitation, all
Exhibits attached hereto) constitutes the entire agreement between the Parties with
respect to the subject matter hereof, and supersedes all prior and contemporaneous
written or oral agreements, memorandums of understanding (including the Memorandum of
Understanding between Microsoft Corporation and VirnetX Inc. dated May 12, 2010), or
communications as to such subject matter, all of which are superseded, merged and fully
integrated into this Agreement. It shall not be modified except by a written agreement
dated subsequent to the date of this Agreement and signed on behalf of the Parties by
their respective duly authorized representatives. |
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| 7.15 | [***] |
| 7.16 | Reexamination. [***] Microsoft will also cause to be filed with the United
States Patent and Trademark Office notifications in the current reexamination proceedings
of the Patents-In-Suit indicating that Microsoft Corporation will not participate in
those reexamination proceedings. |
| [***] | INDICATES PORTIONS OF THIS EXHIBIT THAT HAVE BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT. |
IN WITNESS WHEREOF, VirnetX Inc. and Microsoft Corporation, being fully authorized and empowered
to bind themselves to this Agreement, have caused this Agreement to be made and executed by duly
authorized officers as of the Effective Date.
| VIRNETX INC. | MICROSOFT CORPORATION | |||||||
Name:
|
/s/ Xxxxxxx Xxxxxx | Name: | /s/ Xxxxx X Xxxx | |||||
| Title: President, Chairman and CEO | Title: Corp Vice President | |||||||
| Date: 5/14/2010 | Date: 5-14-2010 | |||||||
Exhibit A Certain Licensed Patents
| Country | App. No. | Filing date | Patent No. | Issue Date | ||||
| WO | PCT/US99/25325 | 10/29/1999 | ||||||
| AU | 00/14553 | 10/29/1999 | 761,388 | 09/18/2003 | ||||
| CA | 2,349,519 | 10/29/1999 | ||||||
| EP | 99971606.1 | 10/29/1999 | 1125419 | 08/26/2009 | ||||
| EP-GB | 99971606.1 | 10/29/1999 | 1125419 | 08/26/2009 | ||||
| EP-DE | 99971606.1 | 10/29/1999 | 1125419 | 08/26/2009 | ||||
| EP-FR | 99971606.1 | 10/29/1999 | 1125419 | 08/26/2009 | ||||
| EP-IT | 46406/BE/2009 | 10/29/1999 | 1125419 | 08/26/2009 | ||||
| JP | 2000-580350 | 10/29/1999 | 4,451,556 | 02/05/2010 | ||||
| JP | 2009-246033 | 10/29/1999 | ||||||
| US | 09/429,643 | 10/29/1999 | 7,010,604 | 03/07/2006 | ||||
| US | 10/401,551 | 03/31/2003 | 7,133,930 | 11/07/2006 | ||||
| US | 11/301,022 | 12/13/2005 | ||||||
| US | 11/839,937 | 08/16/2007 | ||||||
| US | 09/429,643 | 02/15/2000 | 6,502,135 | 12/31/2002 | ||||
| WO | PCT/US01/04340 | 02/12/2001 | ||||||
| EP | 01910528.7 | 02/12/2001 | ||||||
| JP | 2001-560062 | 02/12/2001 | ||||||
| US | 10/082,164 | 02/26/2002 | 6,618,761 | 09/09/2003 | ||||
| US | 10/401,888 | 03/31/2003 | 6,907,473 | 06/14/2005 | ||||
| US | 10/082,285 | 02/26/2002 | 6,834,310 | 12/21/2004 | ||||
| US | 10/259,494 | 09/30/2002 | 7,490,151 | 02/10/2009 | ||||
| US | 11/839,969 | 08/16/2007 | ||||||
| US | 11/924,460 | 10/25/2007 | ||||||
| WO | PCT/US99/25323 | 10/29/1999 | ||||||
| AU | 00/16003 | 10/29/1999 | 765914 | 01/15/2004 | ||||
| CA | 2,349,520 | 10/29/1999 | ||||||
| EP | 99958693.6 | 10/29/1999 | ||||||
| JP | 2000-580354 | 10/29/1999 | ||||||
| US | 09/558,209 | 04/26/2000 | ||||||
| WO | PCT/US01/13261 | 04/25/2001 | ||||||
| EP | 01932629.7 | 04/25/2001 | ||||||
| EP | 06014499.5 | 04/25/2001 | ||||||
| EP | 06014500.0 | 04/25/2001 | ||||||
| HK | 07109112.7 | 08/21/2007 | ||||||
| HK | 07109113.6 | 08/21/2007 | ||||||
| JP | 2001-583006 | 04/25/2001 | ||||||
| US | 10/702,486 | 11/07/2003 | 7,188,180 | 03/06/2007 | ||||
| US | 11/679,416 | 02/27/2007 | ||||||
| US | 11/839,987 | 08/16/2007 | ||||||
| US | 10/702,522 | 11/07/2003 | 6,839,759 | 01/04/2005 | ||||
| US | 10/702,580 | 11/07/2003 | 6,826,616 | 11/30/2004 | ||||
| US | 09/558,210 | 04/26/2000 | ||||||
| WO | PCT/US01/13260 | 04/25/2001 | ||||||
| EP | 01932628.9 | 04/25/2001 | 1284079 | 01/18/2006 | ||||
| EP CH | 01932628 9 | 04/25/2001 | 1284079 | 01/18/2006 |
| Country | App. No. | Filing date | Patent No. | Issue Date | ||||
| WO | PCT/US99/25325 | 10/29/1999 | ||||||
| AU | 00/14553 | 10/29/1999 | 761,388 | 09/18/2003 | ||||
| CA | 2,349,519 | 10/29/1999 | ||||||
| EP | 99971606.1 | 10/29/1999 | 1125419 | 08/26/2009 | ||||
| EP-GB | 99971606.1 | 10/29/1999 | 1125419 | 08/26/2009 | ||||
| EP-DE | 99971606.1 | 10/29/1999 | 1125419 | 08/26/2009 | ||||
| EP-FR | 99971606.1 | 10/29/1999 | 1125419 | 08/26/2009 | ||||
| EP-IT | 46406/BE/2009 | 10/29/1999 | 1125419 | 08/26/2009 | ||||
| JP | 2000-580350 | 10/29/1999 | 4,451,556 | 02/05/2010 | ||||
| JP | 2009-246033 | 10/29/1999 | ||||||
| US | 09/429,643 | 10/29/1999 | 7,010,604 | 03/07/2006 | ||||
| US | 10/401,551 | 03/31/2003 | 7,133,930 | 11/07/2006 | ||||
| US | 11/301,022 | 12/13/2005 | ||||||
| US | 11/839,937 | 08/16/2007 | ||||||
| US | 09/429,643 | 02/15/2000 | 6,502,135 | 12/31/2002 | ||||
| WO | PCT/US01/04340 | 02/12/2001 | ||||||
| EP | 01910528.7 | 02/12/2001 | ||||||
| JP | 2001-560062 | 02/12/2001 | ||||||
| US | 10/082,164 | 02/26/2002 | 6,618,761 | 09/09/2003 | ||||
| US | 10/401,888 | 03/31/2003 | 6,907,473 | 06/14/2005 | ||||
| US | 10/082,285 | 02/26/2002 | 6,834,310 | 12/21/2004 | ||||
| US | 10/259,494 | 09/30/2002 | 7,490,151 | 02/10/2009 | ||||
| US | 11/839,969 | 08/16/2007 | ||||||
| US | 11/924,460 | 10/25/2007 | ||||||
| WO | PCT/US99/25323 | 10/29/1999 | ||||||
| AU | 00/16003 | 10/29/1999 | 765914 | 01/15/2004 | ||||
| CA | 2,349,520 | 10/29/1999 | ||||||
| EP | 99958693.6 | 10/29/1999 | ||||||
| JP | 2000-580354 | 10/29/1999 | ||||||
| US | 09/558,209 | 04/26/2000 | ||||||
| WO | PCT/US01/13261 | 04/25/2001 | ||||||
| EP | 01932629.7 | 04/25/2001 | ||||||
| EP | 06014499.5 | 04/25/2001 | ||||||
| EP | 06014500.0 | 04/25/2001 | ||||||
| HK | 07109112.7 | 08/21/2007 | ||||||
| HK | 07109113.6 | 08/21/2007 | ||||||
| JP | 2001-583006 | 04/25/2001 |
Exhibit B
Press Release
FOR IMMEDIATE RELEASE
FOR IMMEDIATE RELEASE
MICROSOFT AND VIRNETX SETTLE PATENT INFRINGEMENT CASES
REDMOND, WA and SCOTTS VALLEY, CA – May 14 2010 – VirnetX Holding Corp. (AMEX:VHC) and Microsoft
Corp. today announced that they have settled the patent infringement cases brought by VirnetX
before the
U.S. District Court for the Eastern District of Texas. Pursuant to the settlement, both lawsuits
will be dismissed.
As part of the settlement, Microsoft takes a license to the VirnetX patents for Microsoft’s
products and will make a one-time payment of $200 million to VirnetX. All other aspects of the
settlement and license were not disclosed.
“This Agreement highlights the need for VirnetX’s Secure Domain Name Initiative, and we believe
that this successful resolution of our litigation with Microsoft will allow us to focus on the
upcoming pilot system that will showcase VirnetX’s automatic Virtual Private Network technology,”
said Xxxxxxx Xxxxxx, Chief Executive Officer and Chairman of VirnetX Holding Corp. “We look
forward to our continued work with our Secure Domain Name Initiative partners in that effort.”
“We are pleased to work with VirnetX to bring these cases to a successful resolution through this
settlement,” said Xxx Xxxx, corporate vice president and deputy general counsel, Microsoft
Corporation. “We look forward to VirnetX’s continued progress as it develops its technologies.”
About Microsoft Founded in 1975, Microsoft (Nasdaq ‘MSFT’) is the worldwide leader in software,
services and solutions that help people and businesses realize their full potential.
About VirnetX
VirnetX Holding Corporation, an Internet security software and technology company, is engaged in
commercializing its patent portfolio, developed from work done for the Central Intelligence Agency,
by developing a licensing program as well as developing software products designed to create a
secure environment for real-time communication applications such as instant messaging, VoIP, smart
phones, eReaders and video conferencing. The Company’s patent portfolio includes over 48 U.S. and
international patents and pending applications that were recently declared as essential for 4G
security specifications and provide the foundation for the Company’s unique XXXXXXX Connection
Technology. For more information, please visit xxx.xxxxxxx.xxx.
