EXHIBIT 4.1G
PATENT PURCHASE AGREEMENT
This PATENT PURCHASE AGREEMENT (this "AGREEMENT") is entered into, as of the
Effective Date (defined below), by and between VocalTec Communications Ltd., an
Israeli company, with an office at 60 Medinat Xxxxxxxxx Xxxxxx, Xxxxxxxx 00000,
Xxxxxx ("SELLER") and Masinolli Fund Limited Liability Company, a Delaware
limited liability company, with an address at 0000 Xxxxxxxxxxx Xx, Xxxxx 000;
Xxxxxxxxxx, XX 00000 ("PURCHASER"). The parties hereby agree as follows:
1. BACKGROUND
1.1. Seller owns certain patents.
1.2. Seller wishes to sell to Purchaser all right, title, and interest in
such patents and the causes of action to xxx for infringement thereof
and other enforcement rights, with Seller receiving a license to
continue to use such patents in Seller's business.
1.3. Purchaser wishes to purchase from Seller all right, title, and
interest in the Assigned Patent Rights (defined below), with Seller
receiving a license to continue to use such Assigned Patent Right in
Seller's business.
2. DEFINITIONS
"ABANDONED ASSETS" means those specific provisional patent applications,
patent applications, patents and other governmental grants or issuances
listed on EXHIBIT C.
"ASSIGNED PATENT RIGHTS" means the Patents and the additional rights set
forth in paragraph 4.2.
"ASSIGNMENT AGREEMENTS" means the agreements assigning ownership of the
Assigned Patent Rights and the Abandoned Assets from the inventors and/or
prior owners to Seller.
"DOCKET" means Seller's or its agents' list or other means of tracking
information relating to the prosecution or maintenance of the Patents
throughout the world, including, without limitation, the names, addresses,
email addresses, and phone numbers of prosecution counsel and agents, and
information relating to deadlines, payments, and filings, which list or
other means of tracking information is current as of the Effective Date.
"EFFECTIVE DATE" means the date set forth as the Effective Date on the
signature page of this Agreement.
"EXCLUDED PATENTS" means all patents and patent applications listed in
EXHIBIT F.
"EXECUTED ASSIGNMENTS" means both the executed and attested Assignment of
Patent Rights in the form attached as Exhibit B, the executed Assignment of
Rights in Certain Assets in the form attached as EXHIBIT C, each as signed
by a duly authorized representative of Seller, and the additional documents
Seller may be required to execute and deliver under paragraph 5.3.
"PATENTS" means, excluding the Abandoned Assets and the Excluded Patents,
all (a) patents listed on EXHIBIT A; (b) patents or patent applications (i)
to which any of the patents listed on Exhibit A expressly claims priority,
either directly or indirectly or (ii) for which any of the patents listed
on Exhibit A expressly forms a basis for priority, either directly or
indirectly; and (c) reissues, reexaminations, extensions, continuations,
continuations in part, continuing prosecution applications, requests for
continuing examinations, divisions, and registrations of any item in the
preceding subparagraphs (a) or (b).
"PROSECUTION HISTORY FILES" means all files, documents and tangible things
constituting, comprising or relating to the investigation, evaluation,
preparation, prosecution, maintenance, defense, filing, issuance,
registration, assertion or enforcement of the Patents.
"TRANSMITTED COPY" has the meaning set forth in paragraph 8.10.
3. TRANSMITTAL, REVIEW, CLOSING CONDITIONS AND PAYMENT
3.1. TRANSMITTAL. Within fourteen (14) calendar days following the later of
the Effective Date or the date Purchaser receives a Transmitted Copy
of this Agreement executed by Seller, Seller will send to Purchaser
the items identified on EXHIBIT D (the "INITIAL DELIVERABLES"). Seller
acknowledges and agrees that Purchaser may reasonably request, within
fourteen (14) business days following delivery to the Purchaser of the
Initial Deliverables, and Seller will promptly deliver to Purchaser,
additional documents based on Purchaser's review of the Initial
Deliverables (such additional documents and the Initial Deliverables
are, collectively, the "DELIVERABLES"), and that as a result of
Purchaser's review, the lists of Patents on EXHIBITS A and B and the
list of Abandoned Assets on EXHIBIT C, may be revised by Purchaser,
with prior mutual agreement of Seller (evidenced by one or more
Executed Assignments), before the Closing to conform these lists to
the definition of Patents (and these revisions may therefore require
the inclusion of additional provisional patent applications, patent
applications, and patents on EXHIBIT A and B or EXHIBIT C). If
originals of the Deliverables are not available and delivered to
Purchaser prior to Closing, Seller will cause such originals of the
Deliverables to be sent to Purchaser or Purchaser's representative
promptly if and after such originals are located.
3.2. CLOSING. The closing of the sale of the Assigned Patent Rights and the
assignment of the Abandoned Assets hereunder will occur when all
conditions set forth in paragraph 3.3 have been satisfied or waived
and the payment set forth in paragraph 3.4 is made (the "Closing").
Purchaser and Seller will use reasonable efforts to carry out the
Closing within thirty (30) calendar days following the later of the
Effective Date or the date on which the last of the Deliverables was
received by Purchaser.
3.3. PURCHASER'S CLOSING CONDITIONS. The following are conditions precedent
to Purchaser's obligation to make the payment in paragraph 3.4.
3.3.1. SIGNATURE BY SELLER. Seller executed this Agreement and
delivered a Transmitted Copy and two (2) executed originals of
this Agreement to Purchaser no later than December 1, 2008.
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3.3.2. TRANSMITTAL OF DOCUMENTS. Seller delivered to Purchaser all the
Deliverables.
3.3.3. COMPLIANCE WITH AGREEMENT. Seller performed and complied in all
material respects with all of the obligations under this
Agreement that are to be performed or complied with by it on or
prior to the Closing (provided that, unless Purchaser provides to
Seller prior to or at the Closing written evidence that as of the
Closing Seller has not performed and complied in all material
respects with any of the obligations under this Agreement that
are to be performed or complied with by it on or prior to the
Closing, this condition shall be deemed to have been met). The
preceding sentence shall not be deemed to waive any obligation of
Seller, or liability of Seller hereunder for failing to comply
with any of its obligations under this Agreement before and after
the Closing, except to the extent that Purchaser knew of such
noncompliance prior to the Closing and failed to notify Seller in
writing of such noncompliance prior to the Closing.
3.3.4. REPRESENTATIONS AND WARRANTIES TRUE. As of the Closing, the
representations and warranties of Seller contained in Section 6
are true and correct (provided that, unless Purchaser provides to
Seller prior to or at the Closing written evidence that as of the
Closing any of the representations and warranties of Seller
contained in Section 6 is either untrue or incorrect, this
condition shall be deemed to have been met). The preceding
sentence shall not be deemed to waive any liability of Seller
hereunder in the event that any of the representations and
warranties of Seller contained in Section 6 are untrue or
incorrect, except to the extent that Purchaser knew, prior to the
Closing, that such representation or warranty was untrue or
incorrect and failed to notify Seller thereof in writing prior to
the Closing.
3.3.5. PATENTS NOT ABANDONED. As of the Effective Date and the
Closing, none of the Patents have expired, lapsed, been
abandoned, or deemed withdrawn.
3.3.6. DELIVERY OF EXECUTED ASSIGNMENTs. Seller caused the Executed
Assignments to be delivered to Purchaser.
3.3.7. OCS APPROVAL. Seller has received approval of the Office of the
Chief Scientist of the State of Israel to consummate the
transactions contemplated by this Agreement.
3.4. SELLER'S CLOSING CONDITIONS.
3.4.1. SIGNATURE BY PURCHASER. Purchaser executed this Agreement and
delivered a Transmitted Copy and two (2) executed originals of
this Agreement to Seller no later than December 1, 2008.
3.4.2. PAYMENT. Subject to Section 4.1, at Closing, Purchaser will pay
to Seller the amount of Seven Million U.S. Dollars (US
$7,000,000) by wire transfer. Prior to Closing, Seller will
furnish Purchaser with all necessary information to make a wire
transfer to a designated bank account of Seller. Prior to such
payment by Purchaser under the Agreement, Seller will deliver to
Purchaser's representatives a current, valid certificate of
exemption from withholding from the appropriate Israeli tax
authorities. Purchaser may record the Executed Assignments with
the applicable patent offices only on or after Closing.
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3.4.3. REPRESENTATIONS AND WARRANTIES TRUE. As of the Closing, the
representations and warranties of Purchaser contained in Section
7 are true and correct (provided that, unless Seller provides to
Purchaser prior to or at the Closing written evidence that as of
the Closing any of the representations and warranties of
Purchaser contained in Section 7 is either untrue or incorrect,
this condition shall be deemed to have been met). The preceding
sentence shall not be deemed to waive any liability of Purchaser
hereunder in the event that any of the representations and
warranties of Purchaser contained in Section 7 are untrue or
incorrect, except to the extent that Seller knew, prior to the
Closing, that such representation or warranty was untrue or
incorrect and failed to notify Purchaser thereof in writing prior
to the Closing.
3.5. TERMINATION AND SURVIVAL. In the event any of the conditions to
Closing set forth in paragraph 3.3 are not met within one hundred and
fifty (150) days following the Effective Date, each of Purchaser and
Seller may terminate this Agreement by written notice to the other
party; provided, however, that Seller shall only have the right to
terminate this Agreement if Seller has complied, in all material
respects, with all of its obligations under this Agreement prior to
such termination. Upon termination, Purchaser will return all
documents delivered to Purchaser under this Section 3 to Seller. The
provisions of Section 8 will survive any termination.
4. TRANSFER OF PATENTS AND ADDITIONAL RIGHTS
4.1. ASSIGNMENT OF PATENTS. Upon the Closing, Seller hereby sells, assigns,
transfers, and conveys to Purchaser all right, title, and interest in
and to the Assigned Patent Rights. Notwithstanding the foregoing,
Seller may, at any time prior to the Closing, elect not to sell,
assign, transfer and convey to Purchaser the patent identified on
EXHIBIT A as DTMF, in which case the consideration for the Assigned
Patent Rights, as set forth in Section 3.4.2, shall be reduced by Two
Hundred Fifty Thousand U.S. Dollars (US $250,000). If Seller elects
not to sell, assign, transfer and convey to Purchaser the patent
identified on EXHIBIT A as DTMF, such election will only be valid if
written notice is provided to Purchaser prior to Closing. Seller
understands and acknowledges that, if any of the Patents are assigned
to Seller's affiliates or subsidiaries, Seller may be required prior
to the Closing to perform certain actions to establish that Seller is
the assignee and to record such assignments. On or before Closing,
Seller will execute and deliver to Purchaser the Assignment of Patent
Rights in the form set forth in EXHIBIT B (as may be updated pursuant
to paragraph 3.1).
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4.2. ASSIGNMENT OF ADDITIONAL RIGHTS. Upon the Closing, Seller hereby also
sells, assigns, transfers, and conveys to Purchaser all right, title
and interest in and to all:
4.2.1. inventions, invention disclosures, and discoveries described in
any of the Patents that (i) are included in any claim in the
Patents, (ii) are subject matter capable of being reduced to a
patent claim drafted with a reasonable belief of compliance with
the requirements of 35 U.S.C. ss. 112, 35 U.S.C. ss.102, and 35
U.S.C. ss.103 17 in a reissue or reexamination proceedings
brought on any of the Patents, and/or (iii) could have been
included in any of the Patents as a claim drafted with a
reasonable belief of compliance with the requirements of 35
U.S.C. ss. 112, 35 U.S.C. ss.102, and 35 U.S.C. ss.103;
4.2.2. rights to apply in any or all countries of the world for
patents, certificates of invention, utility models, industrial
design protections, design patent protections, or other
governmental grants or issuances of any type related to any of
the Patents and the inventions, invention disclosures, and
discoveries therein;
4.2.3. causes of action (whether known or unknown or whether currently
pending, filed, or otherwise) and other enforcement rights under,
or on account of, any of the Patents and/or the rights described
in subparagraph 4.2(b), including, without limitation, all causes
of action and other enforcement rights for (i) damages, (ii)
injunctive relief, and (iii) any other remedies of any kind for
past, current and future infringement; and
4.2.4. rights to collect royalties or other payments under or on
account of any of the Patents and/or any of the foregoing rights
under subparagraphs 4.2(a), (b) and (c).
4.3. ASSIGNMENT OF RIGHTS IN CERTAIN ASSETS. Upon the Closing, Seller
hereby sells, assigns, transfers, and conveys to Purchaser all of
Seller's right, title, and interest in and to the Abandoned Assets. On
or before Closing, Seller will execute and deliver to Purchaser the
Assignment of Rights in Certain Assets in the form set forth in
EXHIBIT C (as may be updated pursuant to paragraph 3.1).
5. ADDITIONAL OBLIGATIONS
5.1. FURTHER COOPERATION.
5.1.1. At the reasonable request of Purchaser, Seller will execute and
deliver such other instruments and do and perform such other acts
and things that are reasonably necessary for effecting the
consummation of the transactions contemplated hereby, including,
without limitation, (i) execution, acknowledgment, and
recordation of other such papers, and using commercially
reasonable efforts to obtain the same from the respective
inventors, as necessary for perfecting and conveying unto
Purchaser the benefit of the transactions contemplated hereby and
(ii) using best efforts to obtain approval of the Office of the
Chief Scientist of the State of Israel to consummate the
transactions contemplated by this Agreement.
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5.1.2. To the extent any attorney-client privilege or the attorney
work-product doctrine applies to any portion of the Prosecution
History Files retained after Closing under Seller or Seller's
representatives normal document retention policy, Seller will use
reasonable efforts to ensure that, if any such portion of the
Prosecution History File remains under Seller's possession or
control after Closing, it is not disclosed to any third party
unless (i) disclosure is ordered by a court of competent
jurisdiction, after all appropriate appeals to prevent disclosure
have been exhausted and (ii) Seller gave Purchaser prompt notice
upon learning that any third party sought or intended to seek a
court order requiring the disclosure of any such portion of the
Prosecution History File. In addition, Seller will continue to
prosecute, maintain, and defend the Patents at its sole expense
until the Closing.
5.1.3. With respect to U.S. Patent 5,751,968, Seller will provide and
make available to Purchaser all files and correspondence in its
possession, whether in possession of Seller, Seller's counsel or
Seller's agent (with respect to Seller's counsel or Seller's
agent, after and based solely on due inquiry with them by the
Seller) relating to the abandonment and subsequent revival of
this asset. Any attorney client privileged documentation will be
disclosed pursuant to a Common Interest Agreement, attached as
Exhibit H.
5.1.4. Seller will also, at the reasonable request of Purchaser after
Closing, use reasonable efforts to assist Purchaser in providing,
and obtaining, from the respective inventors, prompt production
of pertinent facts and documents, otherwise giving of testimony,
execution of petitions, oaths, powers of attorney,
specifications, declarations or other papers and other assistance
reasonably necessary for filing patent applications, enforcement
or other actions and proceedings with respect to the claims under
the Patents.
5.1.5. Purchaser shall compensate Seller for all reasonable and
documented disbursements and time incurred after Closing in
connection with complying with Seller's undertakings under all
clauses of paragraph 5.1, provided that Seller shall have
furnished Purchaser an advance, written estimate of all material
fees and costs for such assistance and Purchaser shall have
agreed in writing to pay such fees and costs (provided that if
Purchaser does not so agree in writing, Seller shall not be
obligated to comply with Seller's undertakings under all clauses
of paragraph 5.1 and any non compliance shall not be deemed a
breach of this Agreement by Seller).
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5.1.6. Seller shall be solely responsible for any broker's or finder's
fee or any other commission or similar fee, directly or
indirectly, on account of any action taken by Seller in
connection with any of the transactions contemplated under this
Agreement, including, without limitation, any payments to
IPinvestments Group. Seller agrees to indemnify and hold the
Purchaser harmless from and against any claim or liability
resulting from any person claiming any such commission or fee, if
such claims shall be contrary to the foregoing statement.
5.2. PAYMENT OF FEES. Seller will pay any maintenance fees, annuities, and
the like due or payable on the Patents until the Closing. For the
avoidance of doubt, Seller shall pay any maintenance fees for which
the fee is payable (e.g., the fee payment window opens) on or prior to
the Closing even if the surcharge date or final deadline for payment
of such fee would be after the Closing.
5.3. FOREIGN ASSIGNMENTS. To the extent the Patents include non-United
States patents, Seller will deliver to Purchaser's representatives
executed documents in a form as may be required in the non-U.S
jurisdiction in order to perfect the assignment to Purchaser of the
non-U.S. patents and patent applications.
6. REPRESENTATIONS AND WARRANTIES OF SELLER
Seller hereby represents and warrants to Purchaser as follows that, as of
the Effective Date and as of the Closing:
6.1. AUTHORITY. Seller is a company duly formed and validly existing under
the laws of State of Israel. Seller has the full power and authority
and has obtained all third party consents, approvals, and/or other
authorizations required to enter into this Agreement and to carry out
its obligations hereunder, including, without limitation, the
assignment of the Assigned Patent Rights to Purchaser.
6.2. TITLE AND CONTEST. Seller owns all right, title and interest to the
Assigned Patents Rights, including, without limitation, all right,
title and interest to xxx for infringement of the Patents. To Seller's
knowledge, the Assigned Patent Rights are free and clear of all liens,
claims, mortgages, pledges, security interests or other encumbrances
and restrictions of any kind whatsoever. The Seller is not aware of
any actions, suits, investigations, claims or proceedings that are
either pending or in progress, in each case relating in any way to the
Assigned Patent Rights. The Seller is not party to any contract,
agreement, option, commitment, proposal, bid, offer, or right with,
to, or in any person to acquire any of the Assigned Patent Rights.
6.3. GOVERNMENT FINANCING. Except with respect to certain financing
provided by the Office of the Chief Scientist of the Ministry of
Industry, Trade and Labor of the State of Israel, none of the research
and development that led to the inventions which are the subject of
the Assigned Patent Rights and none of the technology or know-how
incorporated in those inventions were financed by any governmental
institution.
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6.4. EXISTING LICENSES AND OBLIGATIONS. There is no obligation imposed by a
standards-setting organization to license any of the Patents on
particular terms or conditions. Except for the license granted by
Purchaser to Seller pursuant to a separate agreement between the
parties, (a) no licenses under the Patents have been granted to or
retained by Seller and (b) after Closing, none of Seller, any prior
owner, or any inventor will retain any rights or interest in the
Assigned Patent Rights. To the Seller's knowledge, no licenses under
the Acquired Patents have been granted to or retained by any prior
owner or any inventor. No licenses under the Patents (excluding the
Acquired Patents) have been granted to or retained by any prior owner
or any inventor.
6.5. RESTRICTIONS ON RIGHTS. Purchaser will not be subject to any covenant
not to xxx or similar restrictions on its enforcement or enjoyment of
the Assigned Patent Rights or the Abandoned Assets as a result of any
prior transaction related to the Assigned Patent Rights or the
Abandoned Assets to which Seller, Seller's affiliates, or any inventor
is a party. To Seller's knowledge, Purchaser will not be subject to
any covenant not to xxx or similar restrictions on its enforcement or
enjoyment of the Assigned Patent Rights or the Abandoned Assets as a
result of any prior transaction related to the Assigned Patent Rights
or the Abandoned Assets to which any non-inventor assignor to Seller
or Seller's affiliates is a party.
6.6. VALIDITY AND ENFORCEABILITY.
6.6.1. None of the Patents or the Abandoned Assets (other than
Abandoned Assets for which abandonment resulted solely from
unpaid fees and/or annuities) has ever been found invalid,
unpatentable, or unenforceable for any reason in any inter partes
administrative, arbitration, judicial, or other proceeding.
6.6.2. To the best of Seller's knowledge, Seller has not received any
notice or information of any kind from any source suggesting the
invalidity, unpatentability, or unenforceability of any claimed
subject matter within the Patents or Abandoned Assets that has
ultimately been allowed, granted, or otherwise deemed patentable
by a respective patent authority or patent office, with the
exception of (i) rejections, objections, or other deficiencies
identified by such patent authority or patent office which were
overcome to result in the allowance, grant, or patenting of such
claimed subject matter and (ii) any documents relating to the
examination or consideration by a patent office or patent
authority of any of the patents or patent applications listed in
EXHIBIT G.
6.6.3. To the best of Seller's knowledge, Seller has not received any
notice or information of any kind from any source suggesting the
invalidity, unpatentability, or unenforceability of claims
contained within any of the patent applications within the
Patents that have not yet been subject to substantive examination
by a respective patent office or patent authority.
6.6.4. If any of the Patents is terminally disclaimed to another
patent or patent application, all patents and patent applications
subject to such terminal disclaimer are included in this
transaction.
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6.6.5. To the extent "small entity" fees were paid to the United
States Patent and Trademark Office for any Patent, such reduced
fees were appropriate at the time of such payment because the
payor qualified to pay "small entity" fees and specifically had
not licensed rights in any Patent to an entity that was not a
"small entity."
6.7. CONDUCT. Seller has not, and to Seller's knowledge, no prior owner(s),
nor their respective agents or representatives, have engaged in any
conduct, or omitted to perform any necessary act, the result of which
would be reasonably expected to invalidate any of the Patents or
hinder their enforcement, including, without limitation,
misrepresenting the Patents to a standard-setting organization.
6.8. ENFORCEMENT. In connection with the process relating to the sale of
the Patents, the Seller has prepared an analysis showing certain
potential infringements of the Patents. Seller has not invited any
third party to enter into a license under any of the Patents or the
Abandoned Assets. Seller has not initiated any enforcement action with
respect to any of the Patents or the Abandoned Assets.
6.9. PATENT OFFICE PROCEEDINGS. To Seller's knowledge, (a) none of the
Patents or the Abandoned Assets have been or are currently involved in
any reexamination, reissue, interference proceeding, or any similar
proceeding, and (b) no such proceedings are pending or threatened.
6.10. FEES. All maintenance fees, annuities, and the like due or payable on
the Patents have been timely paid. For the avoidance of doubt, such
timely payment includes payment of any maintenance fees for which the
fee is payable (e.g., the fee payment window opens) even if the
surcharge date or final deadline for payment of such fee would be in
the future.
6.11. ABANDONED ASSETS. According to each applicable patent office, each of
the Abandoned Assets has expired, lapsed, or been abandoned or deemed
withdrawn.
6.12. PATENT FAMILY COMPLETE. The Patents include all (a) patents or patent
applications (i) to which any of the Patents directly or indirectly
claims priority, (ii) for which any of the Patents directly or
indirectly forms a basis for priority, and/or (iii) that are co-owned
applications that incorporate by reference, or are incorporated by
reference into, the Patents; (b) reissues, reexaminations, extensions,
continuations, continuations in part, continuing prosecution
applications, requests for continuing examinations, divisions, and
registrations of any item in any of the foregoing categories; (c)
foreign patents, patent applications and counterparts relating to any
item in any of the foregoing categories, including, without
limitation, certificates of invention, utility models, industrial
design protection, design patent protection, and other governmental
grants or issuances; and (d) any items in any of the foregoing
categories (a) through (c) whether or not expressly listed as Patents
and whether or not claims in any of the foregoing have been rejected,
withdrawn, cancelled, or the like.
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6.13. REVIVED U.S. PATENT 5,751,968. As of the Effective Date, Seller
disclosed and delivered to Purchaser for its review all documentation
in its possession, and, to Seller's knowledge, in its counsel's or
agent's possession, in each case relating to the abandonment and
subsequent revival of U.S. Patent 5,751,968. If any additional
documentation or information related to U.S. Patent 5,751,968 becomes
available to Seller anytime after the Effective Date, Seller will
immediately disclose to Purchaser for review.
7. REPRESENTATIONS AND WARRANTIES OF PURCHASER
Purchaser hereby represents and warrants to Seller as of the Effective Date
as follows:
7.1. Purchaser is a limited liability company duly formed, validly
existing, and in good standing under the laws of the jurisdiction of
its formation.
7.2. Purchaser has all requisite power and authority to (a) enter into,
execute, and deliver this Agreement and (b) perform fully its
obligations hereunder.
7.3. This Agreement, including all exhibits, annexes and schedules, when
executed and delivered by Purchaser, will constitute the valid,
binding and enforceable obligations of Purchaser.
7.4. No agent, broker, investment banker, person or firm acting in a
similar capacity on behalf of or under the authority of Purchaser is
or will be entitled to any broker's or finder's fee or any other
commission or similar fee from, directly or indirectly, the Purchaser
on account of any action taken by Purchaser in connection with any of
the transactions contemplated under this Agreement. Except to the
extent that Seller is obligated to indemnify Purchaser pursuant to
paragraph 5.1(e), Purchaser agrees to indemnify and hold the Seller
harmless from and against any claim or liability resulting from any
person claiming any such commission or fee, if such claims shall be
contrary to the foregoing statement.
7.5. As of the Closing, and without limiting the representations and
warranties of the Seller or the remedies of the Purchaser hereunder,
Purchaser has conducted an independent legal due diligence examination
of the information and materials relating to the Assigned Patent
Rights and the Abandoned Assets provided to it by the Seller, as the
Purchaser and its advisors reasonably deemed necessary with respect to
the Assigned Patent Rights or the Abandoned Assets, and has found the
results of such due diligence examination satisfactory. In addition,
as of the Effective Date, Purchaser represents that it has been given
the opportunity to ask questions of and receive answers from the
Seller with respect to U.S. Patent 5,751,968 and it is satisfied that
the abandonment of this U.S. Patent 5,751,968 was either unavoidable
or unintentional. In the event that any additional documentation or
information related to U.S. Patent 5,751,968 becomes known to Seller
after the Effective Date but prior to Closing, Purchaser has the right
to review such material and become reasonably satisfied.
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8. MISCELLANEOUS
8.1. LIMITATION OF LIABILITY. The parties shall be entitled to standard
contractual remedies except as otherwise specified in this Agreement
or in a separate agreement between the parties.
8.2. COMPLIANCE WITH LAWS. Notwithstanding anything contained in this
Agreement to the contrary, the obligations of the parties with respect
to the consummation of the transactions contemplated by this Agreement
shall be subject to all laws, present and future, of any government
having jurisdiction over the parties and this transaction, and to
orders, regulations, directions or requests of any such government.
8.3. CONFIDENTIALITY OF TERMS. Except as may be agreed upon by the parties
in a side letter or other written agreement, the parties hereto will
keep the terms and existence of this Agreement and the identities of
the parties hereto and their affiliates confidential and will not now
or hereafter divulge any of this information to any third party except
(a) with the prior written consent of the other party; (b) as
otherwise may be required by law or legal process (as reasonably
determined by the party effecting the dissemination of the relevant
information); (c) during the course of litigation, so long as the
disclosure of such terms and conditions is restricted in the same
manner as is the confidential information of other litigating parties;
(d) in confidence to its legal counsel, accountants, banks, and
financing sources and their advisors solely in connection with
complying with or administering its obligations with respect to this
Agreement; (e) by Purchaser, after the Closing, to potential
purchasers or licensees of the Assigned Patent Rights or the Abandoned
Assets; (f) in order to perfect Purchaser's interest in the Assigned
Patent Rights or the Abandoned Assets with any governmental patent
office (including, without limitation, recording the Executed
Assignments in any governmental patent office); or (g) to enforce
Purchaser's right, title, and interest in and to the Assigned Patent
Rights or the Abandoned Assets; provided that, in (b) and (c) above,
(i) to the extent permitted by law, the disclosing party will use all
legal means available to minimize the disclosure to third parties,
including, without limitation, seeking a confidential treatment
request or protective order whenever appropriate or available; and
(ii) the disclosing party will provide the other party with at least
ten (10) days' prior written notice of such disclosure. Without
limiting the foregoing, Seller will cause its agents involved in this
transaction to abide by the terms of this paragraph, including,
without limitation, ensuring that such agents do not disclose or
otherwise publicize the existence of this transaction with actual or
potential clients in marketing materials, or industry conferences.
8.4. GOVERNING LAW; VENUE/JURISDICTION. This Agreement will be interpreted,
construed, and enforced in all respects in accordance with the laws of
the State of Delaware, without reference to its choice of law
principles to the contrary. Seller will not commence or prosecute any
action, suit, proceeding or claim arising under or by reason of this
Agreement other than in the state or federal courts located in
Delaware. Each party irrevocably consents to the jurisdiction and
venue of the courts identified in the preceding sentence in connection
with any action, suit, proceeding, or claim arising under or by reason
of this Agreement.
- 11 -
8.5. NOTICES. All notices given hereunder will be given in writing (in
English or with an English translation), will refer to Purchaser and
to this Agreement and will be delivered to the address set forth below
by (a) personal delivery or (b) delivery postage prepaid by an
internationally-recognized express courier service:
IF TO PURCHASER IF TO SELLER
Masinolli Fund Limited Liability Company VocalTec Communications Ltd.
0000 Xxxxxxxxxxx Xx, Xxxxx 000 60 Medinat Xxxxxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000 Xxxxxxxx 00000, Xxxxxx
Attn: Managing Director Attn: CEO
Notices are deemed given on (y) the date of receipt if delivered
personally or by express courier or (z) if delivery is refused, the
date of refusal. Notice given in any other manner will be deemed to
have been given only if and when received at the address of the person
to be notified. Either party may from time to time change its address
for notices under this Agreement by giving the other party written
notice of such change in accordance with this paragraph.
8.6. RELATIONSHIP OF PARTIES. The parties hereto are independent
contractors. Nothing in this Agreement will be construed to create a
partnership, joint venture, franchise, fiduciary, employment or agency
relationship between the parties. Neither party has any express or
implied authority to assume or create any obligations on behalf of the
other or to bind the other to any contract, agreement or undertaking
with any third party.
8.7. SEVERABILITY. If any provision of this Agreement is found to be
invalid or unenforceable, then the remainder of this Agreement will
have full force and effect, and the invalid provision will be
modified, or partially enforced, to the maximum extent permitted to
effectuate the original objective.
8.8. WAIVER. Failure by either party to enforce any term of this Agreement
will not be deemed a waiver of future enforcement of that or any other
term in this Agreement or any other agreement that may be in place
between the parties.
- 12 -
8.9. MISCELLANEOUS. This Agreement, including its exhibits and any other
written instruments contemplated herein or hereby, constitutes the
entire agreement between the parties with respect to the subject
matter hereof and thereof and merges and supersedes all prior
agreements, understandings, negotiations, and discussions solely with
respect to the subject matter hereof, but excluding any written
agreements or side letters executed by the parties concurrently with
the execution of this Agreement. Neither of the parties will be bound
by any conditions, definitions, warranties, understandings, or
representations with respect to the subject matter hereof other than
as expressly provided herein except as set forth in any written
agreements or side letters executed by the parties concurrently with
the execution of this Agreement. The section headings contained in
this Agreement are for reference purposes only and will not affect in
any way the meaning or interpretation of this Agreement. This
Agreement is not intended to confer any right or benefit on any third
party (including, but not limited to, any employee or beneficiary of
any party), and no action may be commenced or prosecuted against a
party by any third party claiming as a third-party beneficiary of this
Agreement or any of the transactions contemplated by this Agreement.
No oral explanation or oral information by either party hereto will
alter the meaning or interpretation of this Agreement. No amendments
or modifications will be effective unless in writing signed by an
authorized representative of each of the parties. The terms and
conditions of this Agreement will prevail notwithstanding any
different, conflicting or additional terms and conditions solely with
respect to the subject matter hereof that may appear on any letter,
email or other communication or other writing not expressly
incorporated into or contemplated by this Agreement, excluding any
written agreements or side letters executed by the parties
concurrently with the execution of this Agreement. The following
exhibits are attached hereto and incorporated herein: EXHIBIT A
(entitled "Patents to be Assigned"); EXHIBIT B (entitled "Assignment
of Patent Rights"); EXHIBIT C (entitled "Assignment of Rights in
Certain Assets"); EXHIBIT D (entitled "List of Initial Deliverables");
and EXHIBIT E (entitled "Small Entity Fee Exceptions"); EXHIBIT F
(entitled "Excluded Patents"); EXHIBIT G (entitled "Exclusions"); and
EXHIBIT H (entitled "Common Interest Agreement").
8.10. COUNTERPARTS; ELECTRONIC SIGNATURE; DELIVERY MECHANICS. This
Agreement may be executed in counterparts, each of which will be
deemed an original, and all of which together constitute one and the
same instrument. Each party will execute and promptly deliver to the
other parties a copy of this Agreement bearing the original signature.
Prior to such delivery, in order to expedite the process of entering
into this Agreement, the parties acknowledge that a Transmitted Copy
of this Agreement will be deemed an original document. "TRANSMITTED
COPY" means a copy bearing a signature of a party that is reproduced
or transmitted via email of a .pdf file, photocopy, facsimile, or
other process of complete and accurate reproduction and transmission.
8.11. LANGUAGE. The official language of this Agreement exclusively shall
be, and all communications and agreements between the parties
exclusively shall be made in, the English language. The parties hereto
waive any rights they may have under any other law to have this
Agreement written in another language, and any translation of this
Agreement will be solely for the convenience of the parties hereto.
- 13 -
In witness whereof, intending to be legally bound, the parties have
executed this Patent Purchase Agreement as of the Effective Date.
SELLER: PURCHASER:
VOCALTEC COMMUNICATIONS LTD. MASINOLLI FUND LIMITED LIABILITY COMPANY
By: _______________________ By: _______________________
Name: _____________________ Name: Xxxxxxx Xxxxxxx
Title: ____________________ Title: Authorized Person
EFFECTIVE DATE: DECEMBER 5, 2008
- 14 -
EXHIBIT A
PATENTS
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
----------------------------- --------------- ------------------------- --------------------------------------
5,751,968 (08/647,072) US 09/05/1996 System and method for distributing
multi-media presentations in a
computer network (XXXX XXXXX)
----------------------------- --------------- ------------------------- --------------------------------------
115263 (IL1995000115263) Israel 12/09/1995 System and method for distributing
multi-media presentations in a
computer network (XXXX XXXXX)
----------------------------- --------------- ------------------------- --------------------------------------
6,332,153 (08/688,959) US 31/07/1996 Apparatus and method for
multi-station conferencing
(XXXX XXXXX)
----------------------------- --------------- ------------------------- --------------------------------------
6,519,541 (09/324,159) US 02/06/1999 Multiple frequency signal detector
(XXXXXX XXXXXX)
----------------------------- --------------- ------------------------- --------------------------------------
- 15 -
EXHIBIT B
ASSIGNMENT OF PATENT RIGHTS
For good and valuable consideration, the receipt of which is hereby
acknowledged, VocalTec Communications Ltd., an Israeli company, with an office
at 60 Medinat Xxxxxxxxx Xxxxxx, Xxxxxxxx 00000, Xxxxxx ("Assignor"), does hereby
sell, assign, transfer, and convey unto Masinolli Fund Limited Liability
Company, a Delaware limited liability company, having an address at 0000
Xxxxxxxxxxx Xx, Xxxxx 000; Xxxxxxxxxx, XX 00000 ("ASSIGNEE"), or its designees,
all right, title, and interest that exist today and may exist in the future in
and to any and all of the following (collectively, the "PATENT RIGHTS"):
(a) the patents listed in the table below (the "PATENTS");
(b) patents or patent applications (i) to which any of the Patents expressly
claims priority, either directly or indirectly, or (ii) for which any of
the Patents expressly forms a basis for priority, either directly or
indirectly;
(c) all reissues, reexaminations, extensions, continuations, continuations in
part, continuing prosecution applications, requests for continuing
examinations, divisions, registrations of any item in the foregoing
categories (a) or (b);
(d) inventions, invention disclosures, and discoveries described in any of the
Patents and/or any item in the foregoing categories (b) or (c) that (i) are
included in any claim in the Patents and/or any item in (b), or (ii) are
subject matter capable of being reduced to an allowable patent claim in a
reissue or reexamination proceedings brought on any of the Patents and/or
any item in the foregoing categories (b) and (c);
(e) all rights to apply in any or all countries of the world for patents,
certificates of invention, utility models, industrial design protections,
design patent protections, or other governmental grants or issuances of any
type related to the Patents any item in any of the foregoing categories (a)
through (d), including, without limitation, under the Paris Convention for
the Protection of Industrial Property, the International Patent Cooperation
Treaty, or any other convention, treaty, agreement, or understanding;
(f) all causes of action (whether known or unknown or whether currently
pending, filed, or otherwise) and other enforcement rights under, or on
account of, any of the Patents and/or any item in any of the foregoing
categories (b) through (e), including, without limitation, all causes of
action and other enforcement rights for
(1) damages,
(2) injunctive relief, and
(3) any other remedies of any kind for past, current, and future
infringement; and
(g) all rights item in any of the foregoing categories (b) through (e) to
collect royalties and other payments under or on account of any of the
Patents and/or any item in any of the foregoing categories (b) through (f).
- 16 -
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
----------------------------- --------------- ------------------------- --------------------------------------
5,751,968 (08/647,072) US 09/05/1996 System and method for distributing
multi-media presentations in a
computer network (XXXX XXXXX)
----------------------------- --------------- ------------------------- --------------------------------------
115263 (IL1995000115263) Israel 12/09/1995 System and method for distributing
multi-media presentations in a
computer network (XXXX XXXXX)
----------------------------- --------------- ------------------------- --------------------------------------
6,332,153 (08/688,959) US 31/07/1996 Apparatus and method for
multi-station conferencing
(XXXX XXXXX)
----------------------------- --------------- ------------------------- --------------------------------------
6,519,541 (09/324,159) US 02/06/1999 Multiple frequency signal detector
(XXXXXX XXXXXX)
----------------------------- --------------- ------------------------- --------------------------------------
Assignor hereby authorizes the respective patent office or governmental agency
in each jurisdiction to issue any and all patents, certificates of invention,
utility models or other governmental grants or issuances that may be granted
upon any of the Patent Rights in the name of Assignee, as the assignee to the
entire interest therein.
The terms and conditions of this Assignment of Patent Rights will inure to the
benefit of Assignee, its successors, assigns, and other legal representatives
and will be binding upon Assignor, its successors, assigns, and other legal
representatives.
IN WITNESS WHEREOF this Assignment of Patent Rights is executed at _____________
on ______________________________
ASSIGNOR:
VOCALTEC COMMUNICATIONS LTD.
By:_________________________
Name:_______________________
Title:______________________
(SIGNATURE MUST BE ATTESTED)
- 17 -
ATTESTATION OF SIGNATURE PURSUANT TO 28 U.S.C. 1746
The undersigned witnessed the signature of _________________ to the above
Assignment of Patent Rights on behalf of VocalTec Communications Ltd. and makes
the following statements:
1. I am over the age of 18 and competent to testify as to the facts in this
Attestation block if called upon to do so.
2. ________________ is personally known to me (or proved to me on the basis
of satisfactory evidence) and appeared before me on _________ __, 2008__ to
execute the above Assignment of Patent Rights on behalf of VocalTec
Communications, Ltd.
I declare under penalty of perjury under the laws of the United States of
America that the statements made in the two (2) numbered paragraphs immediately
above are true and correct.
EXECUTED on ___________________(date)
____________________________________
Print Name: ________________________
- 18 -
EXHIBIT C
ASSIGNMENT OF RIGHTS IN CERTAIN ASSETS
For good and valuable consideration, the receipt of which is hereby
acknowledged, VocalTec Communications Ltd., an Israeli company, with an office
at 60 Medinat Xxxxxxxxx Xxxxxx, Xxxxxxxx 00000, Xxxxxx ("ASSIGNOR"), does hereby
sell, assign, transfer, and convey unto Masinolli Fund Limited Liability
company, a Delaware limited liability company, having an address at 0000
Xxxxxxxxxxx Xx, Xxxxx 000; Xxxxxxxxxx, XX 00000 ("ASSIGNEE"), or its designees,
the right, title, and interest in and to any and all of the following patents
(the "CERTAIN ASSETS"):
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
---------------------------------- -------------- ------------------- ----------------------------------------
NZ1996000316616(Publication No. NZ 08/09/1996 System and method for distributing
NZ0316616) multi-media presentations in a
computer network
---------------------------------- -------------- ------------------- ----------------------------------------
JP1996000326797T (Publication JP 08/09/1996 System and method for distributing
No. JP11512893) multi-media presentations in a
computer network
---------------------------------- -------------- ------------------- ----------------------------------------
CA1996002230259 (Publication No. CA 08/09/1996 System and method for distributing
CA2230259) multi-media presentations in a
computer network
---------------------------------- -------------- ------------------- ----------------------------------------
AU1996000068887 (Publication No. AU 08/09/1996 System and method for distributing
AU6888796) multi-media presentations in a
computer network
---------------------------------- -------------- ------------------- ----------------------------------------
AU1996000068887 (Publication No. AU 08/09/1996 System and method for distributing
AU0712229) multi-media presentations in a
computer network
---------------------------------- -------------- ------------------- ----------------------------------------
EP1996000929507 (Publication No. EP 08/09/1996 System and method for distributing
EP0850451) multi-media presentations in a
computer network
---------------------------------- -------------- ------------------- ----------------------------------------
WO1996IL0000104 (Publication No. WO 08/09/1996 System and method for distributing
WO9712447) multi-media presentations in a
computer network
---------------------------------- -------------- ------------------- ----------------------------------------
- 19 -
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
---------------------------------- -------------- ------------------- ----------------------------------------
09/982,564 (Publication No. US 16/10/2001 Apparatus and Method for Multi-Station
US20020044534) Conferencing
---------------------------------- -------------- ------------------- ----------------------------------------
WO 1998/04989 (Publication No. PCT 30/07/1997 Apparatus and Method for Multi-Station
PCT/IL97/00259) Conferencing
---------------------------------- -------------- ------------------- ----------------------------------------
WO1997IL0000259 (Publication No. WO 30/07/1997 Apparatus and Method for Multi-Station
WO9804989A1) Conferencing
---------------------------------- -------------- ------------------- ----------------------------------------
IL1997000128306 (Publication No. IL 30/07/1997 Apparatus and Method for Multi-Station
IL0128306A0) Conferencing
---------------------------------- -------------- ------------------- ----------------------------------------
EP1997000932976 (Publication No. EP 30/07/1997 Apparatus and Method for Multi-Station
EP0995164A4) Conferencing
---------------------------------- -------------- ------------------- ----------------------------------------
AU1997000036329 (Publication No. AU 30/07/1997 Apparatus and Method for Multi-Station
AU3632997A1) Conferencing
---------------------------------- -------------- ------------------- ----------------------------------------
IL2000000001360 (Publication No. IL 5/5/2000 Multiple Frequency Signal Detector
IL0136000)
---------------------------------- -------------- ------------------- ----------------------------------------
Assignor assigns to Assignee all rights to the inventions, invention
disclosures, and discoveries in the assets listed above, together, with the
rights, if any, to revive prosecution of claims under such assets and to xxx or
otherwise enforce any claims under such assets for past, present or future
infringement.
Assignor hereby authorizes the respective patent office or governmental agency
in each jurisdiction to make available to Assignee all records regarding the
Certain Assets.
The terms and conditions of this Assignment of Rights in Certain Assets will
inure to the benefit of Assignee, its successors, assigns, and other legal
representatives and will be binding upon Assignor, its successors, assigns, and
other legal representatives.
DATED this __ day of ________ 2008.
ASSIGNOR:
VOCALTEC COMMUNICATIONS LTD.
By:_________________________
Name:_______________________
Title:______________________
- 20 -
EXHIBIT D
LIST OF INITIAL DELIVERABLES
Seller will cause the following to be delivered to Purchaser, or Purchaser's
representative, within the time provided in paragraph 3.1 of the attached Patent
Purchase Agreement:
1. U.S. PATENTS. For each item of the Patents that is an issued United States
patent, and for each Abandoned Asset that forms the basis for priority for
such issued U.S. patent (whether a patent or similar protection has been
issued or granted),
1.1. the following
1.1.1. an original ribbon copy issued by the United States Patent and
Trademark Office,
1.1.2. the original Assignment Agreement(s), if available, or
otherwise a certified copy thereof,
1.1.3. original conception and reduction to practice materials, if
available, or otherwise a copy thereof if available, and
1.2. a copy of
1.2.1. the Docket, and
1.2.2. each relevant license and security agreement.
2. NON-U.S. For each Live Asset for which a non-United States patent or
similar protection has been issued or granted,
2.1. the original ribbon copy or certificate issued by the applicable
government, if available
2.2. copy of each pending foreign application
2.3. the Docket,
2.4. the original Assignment Agreement(s), if available, or otherwise a
certified copy thereof, if available,
2.5. a copy of applicant name change, if necessary, and (vi) a copy of each
relevant license and security agreement.
3. PATENT APPLICATIONS. For each item of the Patents that is a patent
application,
3.1. a copy of the patent application, as filed,
3.2. if unpublished, a copy of the filing receipt and the non-publication
request, if available,
3.3. the original Assignment Agreement(s), if available, or otherwise a
certified copy thereof, if available,
3.4. the Docket,
3.5. all available conception and reduction to practice materials,
3.6. evidence of foreign filing license (or denial thereof),
3.7. a copy of each relevant license and security agreement, and
3.8. the Prosecution History Files.
- 21 -
4. In connection with the process relating to the sale of the Patents, the
Seller has prepared an analysis showing certain potential infringements of
the Patents. Seller will deliver such analysis to Purchaser upon the
Closing.
5. THOROUGH SEARCH/DECLARATION. If originals of the Initial Deliverables are
not available and delivered to Purchaser prior to Closing, Seller will
cause (i) such originals of the Initial Deliverables to be sent to
Purchaser or Purchaser's representative promptly if and after such
originals are located and (ii) an appropriate executive officer of Seller
to deliver to Purchaser a declaration, executed by such officer under
penalty of perjury, detailing Seller's efforts to locate such unavailable
original documents and details regarding how delivered copies were
obtained. Capitalized terms used in this EXHIBIT D are defined in the
Patent Purchase Agreement to which this EXHIBIT D is attached.
- 22 -
EXHIBIT E
SMALL ENTITY FEE EXCEPTIONS
None. Rest of Exhibit left intentionally blank.
- 23 -
EXHIBIT F
EXCLUDED PATENTS
Excluded Patents shall include the patents and patent applications listed below,
and shall further include all (a) patents or patent applications (i) to which
any of the Excluded Patents directly or indirectly claims priority, (ii) for
which any of the Excluded Patents directly or indirectly forms a basis for
priority, (b) reissues, reexaminations, extensions, continuations, continuations
in part, continuing prosecution applications, requests for continuing
examinations, divisions, and registrations of any item in any of the foregoing
categories; (c) foreign patents, patent applications and counterparts relating
to any item in any of the foregoing categories, including, without limitation,
certificates of invention, utility models, industrial design protection, design
patent protection, and other governmental grants or issuances; and (d) any items
in any of the foregoing categories (a) through (c) whether or not expressly
listed as Excluded Patents and whether or not claims in any of the foregoing
have been rejected, withdrawn, cancelled, or the like.
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
------------------------- --------------- ---------------------- ---------------------------------------------
1159719 EP 14/03/2000 Jitter Buffer and methods for control of same
------------------------- --------------- ---------------------- ---------------------------------------------
DE60021708C0 DE 14/03/2000 Jitter Buffer and methods for control of same
------------------------- --------------- ---------------------- ---------------------------------------------
1,159,719 (909608.2) FR 14/03/2000 Jitter Buffer and methods for control of same
------------------------- --------------- ---------------------- ---------------------------------------------
1,159,719 (909608.2) LX 14/03/2000 Jitter Buffer and methods for control of same
------------------------- --------------- ---------------------- ---------------------------------------------
1,159,719 (909608.2) UK 14/03/2000 Jitter Buffer and methods for control of same
------------------------- --------------- ---------------------- ---------------------------------------------
AT0301354E AT 14/03/2000 Jitter Buffer and methods for control of same
------------------------- --------------- ---------------------- ---------------------------------------------
6,725,191 (09/909,052) US 19/07/2001 Method and apparatus for transmitting voice
over internet
------------------------- --------------- ---------------------- ---------------------------------------------
000000 Xxxxxx 06/07/1997 A chat room in a computer network
------------------------- --------------- ---------------------- ---------------------------------------------
- 24 -
EXHIBIT G
EXCLUSIONS
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
------------------------------- --------------- ---------------- ---------------------------------------------
NZ1996000316616 (Publication NZ 08/09/1996 System and method for distributing
No. NZ0316616) multi-media presentations in a computer
network
------------------------------- --------------- ---------------- ---------------------------------------------
JP1996000326797T (Publication JP 08/09/1996 System and method for distributing
No. JP11512893) multi-media presentations in a computer
network
------------------------------- --------------- ---------------- ---------------------------------------------
CA1996002230259 (Publication CA 08/09/1996 System and method for distributing
No. CA2230259) multi-media presentations in a computer
network
------------------------------- --------------- ---------------- ---------------------------------------------
AU1996000068887 (Publication AU 08/09/1996 System and method for distributing
No. AU6888796) multi-media presentations in a computer
network
------------------------------- --------------- ---------------- ---------------------------------------------
AU1996000068887 (Publication AU 08/09/1996 System and method for distributing
No. AU0712229) multi-media presentations in a computer
network
------------------------------- --------------- ---------------- ---------------------------------------------
EP1996000929507 (Publication EP 08/09/1996 System and method for distributing
No. EP0850451) multi-media presentations in a computer
network
------------------------------- --------------- ---------------- ---------------------------------------------
WO1996IL0000104 (Publication WO 08/09/1996 System and method for distributing
No. WO9712447) multi-media presentations in a computer
network
------------------------------- --------------- ---------------- ---------------------------------------------
09/982,564 (Publication No. US 16/10/2001 Apparatus and Method for Multi-Station
US20020044534) Conferencing
------------------------------- --------------- ---------------- ---------------------------------------------
WO 1998/04989 (Publication PCT 30/07/1997 Apparatus and Method for Multi-Station
No. PCT/IL97/00259) Conferencing
------------------------------- --------------- ---------------- ---------------------------------------------
WO1997IL0000259 (Publication WO 30/07/1997 Apparatus and Method for Multi-Station
No. WO9804989A1) Conferencing
------------------------------- --------------- ---------------- ---------------------------------------------
IL1997000128306 (Publication IL 30/07/1997 Apparatus and Method for Multi-Station
No. Conferencing
------------------------------- --------------- ---------------- ---------------------------------------------
IL0128306A0) EP1997000932976 EP 30/07/1997 30/07/1997 Apparatus and Method for Multi-Station
(Publication No. EP0995164A4) Conferencing
------------------------------- --------------- ---------------- ---------------------------------------------
- 25 -
EXHIBIT H
COMMON INTEREST AGREEMENT
THIS COMMON INTEREST AGREEMENT ("AGREEMENT") is entered into between the
undersigned legal counsel ("COUNSEL"), for themselves and on behalf of the
parties they represent (as indicated below).
1. BACKGROUND.
1.1 Masinolli Fund Limited Liability Company, a Delaware limited liability
company ("PURCHASER") and VocalTec Communications Ltd., an Israeli company
("SELLER") (Purchaser and Seller are sometimes hereafter referred to herein as a
"PARTY" or the "PARTIES"), have entered into an agreement under which Purchaser
will acquire all substantial rights of Seller in certain patent applications
filed or to be filed throughout the world (the "PATENT MATTERS").
1.2 The parties have a common interest in the Patent Matters and have
agreed to treat their communications and those of their Counsel relating to the
Patent Matters as protected by the common interest privilege. Furtherance of the
Patent Matters requires the exchange of proprietary documents and information,
the joint development of legal strategies and the exchange of attorney work
product developed by the parties and their respective Counsel.
2. COMMON INTEREST.
2.1 The parties have a common, joint and mutual legal interest in
cooperating with each other, to the extent permitted by law, to share
information protected by the attorney-client privilege and by the work product
doctrine with respect to the Patent Matters. Any counsel or consultant retained
by a party or their Counsel to assist in the Patent Matters shall be bound by,
and entitled to the benefits of, this Agreement.
2.2 In order to further their common interest, the parties and their
Counsel shall exchange privileged and work product information, orally and in
writing, including, without limitation, factual analyses, mental impressions,
legal memoranda, source materials, draft legal documents, prosecution history
files and other information (hereinafter "COMMON INTEREST MATERIALS"). The sole
purpose for the exchange of the Common Interest Materials is to support the
parties' common interest with respect to the prosecution and enforcement of the
Patent Matters. Any Common Interest Materials exchanged shall continue to be
protected under all applicable privileges and no such exchange shall constitute
a waiver of any applicable privilege or protection.
3. NONDISCLOSURE.
3.1 The parties and their Counsel shall use the Common Interest Materials
solely in connection with the Patent Matters and shall take appropriate steps to
protect the privileged and confidential nature of the Common Interest Materials.
Neither client nor their respective Counsel shall produce privileged documents
or information unless or until directed to do so by a final order of a court of
competent jurisdiction, or upon the prior written consent of the other party. No
privilege or objection shall be waived by a party hereunder without the prior
written consent of the other party. The obligations under this paragraph will
not apply either to Purchaser after closing of the acquisition of the Patent
Matters or to Seller with respect to any dispute with Purchaser related to such
potential acquisition.
3.2 Except as herein provided, in the event that either party or their
Counsel is requested or required in the context of a litigation, governmental,
judicial or regulatory investigation or other similar proceedings (by oral
questions, interrogatories, requests for information or documents, subpoenas,
civil investigative demands or similar process) to disclose any Common Interest
Materials, the party or their Counsel shall immediately inform the other party
and their Counsel and shall assert all applicable privileges, including, without
limitation, the common interest doctrine, the joint prosecution privilege.
- 26 -
4. RELATIONSHIP; ADDITIONS; TERMINATION.
4.1 This Agreement does not create any agency or similar relationship among
the parties. Through the Closing (as defined in the Patent Purchase Agreement
executed by Purchaser and Seller), neither party nor their respective Counsel
has the authority to waive any applicable privilege or doctrine on behalf of any
other party.
4.2 Nothing in this Agreement affects the separate and independent
representation of each party by its respective Counsel or creates an attorney
client relationship between the Counsel for a party and the other party to this
Agreement.
4.3 This Agreement shall continue until terminated upon the written request
of either party. Upon termination, each party and their respective Counsel shall
return any Common Interest Materials furnished by the other party.
Notwithstanding termination, this Agreement shall continue to protect all Common
Interest Materials disclosed prior to termination. Sections 3 and 5 shall
survive termination of this Agreement.
5. GENERAL TERMS.
5.1 This Agreement is governed by the laws of the State of Delaware,
without regard to its choice of law principles to the contrary. In the event any
provision of this Agreement is held by any court of competent jurisdiction to be
illegal, void or unenforceable, the remaining terms shall remain in effect.
Failure of either party to enforce any provision of this Agreement shall not be
deemed a waiver of future enforcement of that or any other provision.
5.2 The parties agree that a breach of this Agreement would result in
irreparable injury, that money damages would not be a sufficient remedy and that
the disclosing party shall be entitled to equitable relief, including injunctive
relief, as a non-exclusive remedy for any such breach.
5.3 Notices given under this Agreement shall be given in writing and
delivered by messenger or overnight delivery service to a party and their
respective Counsel at their last known address, and shall be deemed to have been
given on the day received.
5.4 This Agreement is effective and binding upon each party as of the date
it is signed by or on behalf of a party and may be amended only by a writing
signed by or on behalf of each party. This Agreement may be executed in
counterparts. Any signature reproduced or transmitted via email of a .pdf file,
photocopy, facsimile or other process of complete and accurate reproduction and
transmission shall be considered an original for purposes of this Agreement.
- 27 -
This Agreement is being executed by each of the undersigned Counsel with the
fully informed authority and consent of the respective party it represents.
VocalTec Communications Ltd. Counsel for Masinolli Fund Limited
Liability Company
By: _______________________ By: _______________________
Date: _____________________ Date: _____________________
- 28 -
