EXHIBIT 23.6
LICENSE AGREEMENT
This License Agreement (the "Agreement") is made effective as of the 9th day of
May, 2001 (the "Effective Date") by and between SYMBOL TECHNOLOGIES, INC., a
Delaware corporation having its principal place of business at Xxx Xxxxxx Xxxxx,
Xxxxxxxxxx, XX 00000, and NEOMEDIA TECHNOLOGIES, INC., a Delaware corporation
having its principal place of business at 0000 Xxxxxx Xxxxxx, Xxxxx 000, Xx.
Xxxxx, XX 00000.
RECITALS
WHEREAS, NeoMedia is the owner, or has acquired rights under numerous
U.S. Patents and Patent applications, as well as foreign patent applications,
relating to methods and systems using bar code symbols or other auto-ID media
(such as RFID tags) to connect users to and transmit data over the Internet;
WHEREAS Symbol is a leading designer, developer, and manufacturer of
bar code scanners and portable terminal products, including voice communication
handsets, and believes that certain customers of Symbol products may wish to
acquire a license to NeoMedia's patents;
WHEREAS, Symbol is desirous of having access to licenses under the
NeoMedia patents, including a right to grant End User Licenses and to sublicense
the NeoMedia patents in a defined field of use related to Symbol's devices or
handsets;
WHEREAS, NeoMedia is willing to grant such license under such patent
rights to Symbol and Symbol's customers because of Symbol's pre-eminent position
as a manufacturer of bar code reading devices;
NOW THEREFORE, in consideration of the premises, Symbol and NeoMedia
hereby agree as follows:
ARTICLE 1 - DEFINITIONS
1.1 "Bar Code Symbology" shall mean indicia for representing data or
information in the form of bars, marks, dots, shapes or other varying-contrast
elements of various widths or dimensions, including, without limitation,
(i) one dimensional symbologies, such as UPC, EAN and Code 39,
which represent data or information in the form of bars or
elements of various heights and/or widths arranged in a
predetermined pattern, such as rows or columns,
(ii) all stacked bar codes such as Code 49, Composite Code and PDF
417,
(iii) all matrix code symbologies, and
(iv) dot codes.
1.2 "Devices" shall mean any present or future product or category of product,
or any hardware, software, part, assembly or sub-assembly, including without
limitation scan engines, for incorporation into any such product, including
without limitation all of the products and types of products currently available
for purchase from Symbol as identified in its website, unless any such product
is a Switch. An example of a Device includes but is not limited to a bar code
scanning device (or other automatic identification device), regardless of
whether such device is wired, wireless, or mobile, operating in conjunction with
computing means (integral or non-integral to such bar code scanning device),
which is adapted to read a Bar Code Symbology (or other machine-readable
indicia) and use index data read therefrom in communication with a Switch to
determine the location of a resource located on another computing device.
Notwithstanding anything to the contrary in this Agreement, a Switch is not a
Device.
1.3 "Field" shall mean any use of Devices for acquiring, processing,
displaying, reading, decoding, transmitting, managing, inputting, storing or
otherwise connecting data (including without limitation voice and audio). For
the purposes of this definition, the use of any Device for any purpose that
would read on any claim in any of the Patent Rights pending or issued as of the
Effective Date are considered in the Field. The Field also includes, without
limitation, all Devices currently sold by Symbol, all Devices of the type or
kind currently sold by Symbol, and all Devices that relate to, arise out of, or
are in any way connected with Symbol's businesses as set forth in its most
recent filing on form 10-K with the Securities and Exchange Commission.
Notwithstanding the foregoing, for a period of eighteen months from the
Effective Date the Field shall not include the subject matter set forth in
Exhibit 1.3 attached hereto. After the expiration of eighteen months from the
Effective Date, the Field shall include the subject matter set forth in Exhibit
1.3 attached hereto.
1.4 "NeoMedia" shall mean NeoMedia Technologies, Inc.
1.5 "NeoMedia Switch Services" shall mean those NeoMedia services offered by
NeoMedia at the present time or any time in the future in connection with any
Switch owned and operated by or on behalf of NeoMedia. Current NeoMedia Switch
Services are set forth on Exhibit 1.5 hereto.
1.6 "Patent Rights" shall mean all patents and patent applications in any
jurisdiction now or hereafter owned by NeoMedia or its Subsidiaries or by any
entity controlled by NeoMedia. An entity is controlled by NeoMedia for the
purposes of this Agreement if it is controlled, directly or indirectly, by
NeoMedia and/or its officers and directors (excluding independent directors).
Patent Rights shall also include any patent that is owned by a party other than
NeoMedia, any of its Subsidiaries, or any entity controlled by NeoMedia, and
licensed to NeoMedia, any of its Subsidiaries, or any entity controlled by
NeoMedia , but only if (i) NeoMedia, its Subsidiary, or any entity controlled by
NeoMedia has been granted rights from the patent owner to grant further license
rights thereunder, such as sublicense rights, and (ii) upon identification by
NeoMedia of any costs actually incurred by NeoMedia, its Subsidiaries, or any
entity controlled by NeoMedia as a direct result of any election and/or
exploitation by Symbol of such patent that are in excess of the costs actually
incurred by NeoMedia, its Subsidiaries, or any entity controlled by NeoMedia for
such rights but for sublicensing such rights to Symbol, Symbol elects to
compensate NeoMedia for such additional costs. Those current patents and patent
applications included within the Patents Rights are set forth in Exhibit 1.6
hereto. In the event that NeoMedia is acquired by a third party, then the Patent
Rights shall not be expanded to include any patent or patent application owned
by that third party other than those owned by NeoMedia prior to such
acquisition.
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1.7 "Subsidiary" shall mean a corporation, company, or other entity more than
fifty percent (50%) of whose outstanding shares or securities (representing the
right other than as affected by events of default, to vote for the election of
directors or other managing authority) are, now or hereafter, owned or
controlled, directly or indirectly, by a party hereto, but such corporation,
company or other entity shall be deemed to be a Subsidiary only at such time and
for so long as such ownership or control exists.
1.8 "Switch" shall mean a system embodied in any combination of hardware and/or
software that: (a) receives data from a Device, accesses a database, registry,
or other similar functionality, and then performs a task as a function of the
received data to enable direct or indirect communication between that Device and
a separate Device and (b) is designed to communicate with, at a minimum,
thousands of Devices.
1.9 "Symbol" shall mean Symbol Technologies Inc. and its Subsidiaries.
1.10 "End User License" shall mean the license or grant of any or all of the
rights under the Patent Rights for Devices in the Field, except for the right to
sublicense.
ARTICLE 2 - LICENSE GRANT
2.1 License Grant to Symbol. NeoMedia hereby grants to Symbol a personal,
worldwide, non-exclusive right, but not the obligation, under the Patent Rights
to grant to third parties or itself a license to use, make, have made, import,
sell and offer for sale Devices in the Field (such license grant included in the
category referred to herein as an "End User License"), in which case such Device
will be considered a "Licensed Device" for all purposes under this Agreement.
Neither the End User License rights nor the rights conveyed with the sale of a
Licensed Device shall include any right to transfer or sublicense any of the
Patent Rights to another party, except that the license rights to use the
Licensed Device shall transfer with any conveyance of the Licensed Device, and
if the Licensed Device is a Symbol Device the license rights to make, have made,
import, sell and offer for sale that Symbol Device and a Device that contains or
uses that Symbol Device as a component of such Device or as part of a system,
application, or in combination with such Device shall also transfer with any
conveyance of that Symbol Device. Notwithstanding the foregoing, the rights of
anyone other than Symbol to make, have made, import, sell or offer for sale
Devices under an End User License granted to that party by Symbol shall be
limited to making, having made, importing, selling, and offering to sell a
Symbol Device or a Device that contains or uses a Symbol Device as a component
of the Device or as part of a system, application, or in combination with the
Device.
2.2 Sublicenses. Symbol shall have the right, but not the obligation, to
sublicense its rights under Articles 2.1 to other parties within the Symbol
marketing, distribution and resale channel (the "Sublicensees") provided that
any license issued by the Sublicensee contain the same terms and conditions
(except for price) as licenses that Symbol is permitted to issue, and that
Symbol shall remain primarily liable to NeoMedia for all obligations of its
Sublicensees under any Sublicenses. Notwithstanding the foregoing, any
sublicensee of make, have made, import, sell and offer to sell rights shall be
limited to those rights set forth in the last sentence of Article 2.1 of this
Agreement.
2.3 Rights Attach to Device. The license rights conveyed with a Licensed Device
shall not include any right to transfer or sublicense any of the Patent Rights
to another party, except that the license rights for the Licensed Device shall
flow with the Licensed Device to anyone in the Licensed Device's chain of use.
For example, the use of a Licensed Device by an end user to connect to a Switch
and further destinations shall be considered a licensed use of any applicable
Patent Rights by the end user of the Licensed Device, the manufacturer and
seller of the Licensed Device, as well as the Switch and further destinations,
and such
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Switch and further destinations shall not be considered infringing for the
purpose of any transaction with a Licensed Device. Accordingly, no liability
under the Patent Rights shall be incurred by any third party solely as a result
of the sale of the Licensed Device, or solely due to the execution of any
commands, instructions or other usage initiated with a Licensed Device.
Notwithstanding anything herein to the contrary, no rights express or implied
are granted for any party to use a Switch with an unlicensed Device, even though
use of such Switch would be permissible with a Licensed Device. In no event
shall any party whatsoever incur any liability under any of the Patent Rights as
a result of the use of a Licensed Device, whether alone or in combination with
other components or elements, unless such other components or elements include
an unlicensed Device operating in conjunction with a Switch under the Patent
Rights. For example, an unlicensed internet data provider will incur no
liability solely as a result of an act covered by the Patent Rights which is
initiated or otherwise performed as a result of the use of a Licensed Device.
Symbol shall in writing inform its licensees that no rights to the Patent Rights
extend to any use of an unlicensed Device with any Switch not otherwise licensed
by NeoMedia.
2.4 Condition to Grant. All licenses to Symbol set forth in this Agreement are
expressly conditioned on Symbol maintaining at least Five Hundred Million
Dollars ($500,000,000) in sales of Devices, manufactured by or for Symbol,
capable of reading Bar Code Symbologies on an annual fiscal year basis
throughout the term of this Agreement. The terms granted to Symbol in this
Agreement would not have been granted to Symbol but for Symbol's ability to
comply with the immediately preceding sentence.
2.5 Reservation of Rights by NeoMedia. NeoMedia reserves all rights under the
Patent Rights not explicitly conveyed to Symbol under this Agreement, including
but not limited to the right to grant a license to a third party to operate a
Switch in conjunction with Non-Licensed Devices, in which case such third party
would not need to use Licensed Devices with such licensed Switch in order to
avoid infringement of the Patent Rights.
ARTICLE 3 - ROYALTY
3.1 Royalties Paid by Symbol. To the extent and only to the extent Symbol or
its sublicensee grants an End User License to itself or to a third party, Symbol
shall make a royalty payment (the "Article 3.1 Royalty") for each End User
License to NeoMedia as set forth in Exhibit 3.1 hereto. The foregoing royalty
payments, including the 3.1 Minimum Royalty (which for all purposes under this
Agreement is defined in Exhibit 3.1 hereto), are also subject to adjustment
pursuant to Article 3.2 and Exhibit 3.2 of this Agreement. If Symbol sublicenses
a third party pursuant to Article 2.2 of this Agreement, the grant of such
sublicense right to a third party does not constitute a grant of an End User
License within the meaning of this Article 3.1.
3.2 Most Favorable Licensee. The parties have agreed on a most favorable
licensee clause, the terms of which are contained in Exhibit 3.2 to this
Agreement.
3.3 Accrual. Royalties payable hereunder shall accrue at the date of the
invoice of an End User License granted by Symbol or its Sublicensee. All
royalties payable hereunder shall be net of returns and reasonable write-offs on
uncollectable accounts
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consistent with Symbol's standard practice. Notwithstanding anything to the
contrary, in the event of a return or uncollected account, the associated
license rights shall be automatically rescinded.
3.4 Payment Schedule. Royalty payments payable by Symbol shall be made
quarterly within sixty (60) days after the end of each calendar quarter and
shall be accompanied by a report setting forth the computation of the royalty
payment for such quarter, including a list of unit sales of End User Licenses by
Symbol or its Sublicensee. Royalty payments to NeoMedia shall be made in U.S.
Dollars at the office of NeoMedia specified below. NeoMedia may request that
Symbol inform it as to whether a particular entity has taken an End User
License, and the quantity, model number and serial number of Devices that are
licensed to that entity. Symbol will either inform NeoMedia that it cannot
provide such information at Symbol's customer's request, or Symbol will provide
the information if the customer consents.
3.5 NeoMedia Audit Rights. In connection with such royalty accruals and
payments under Sections 3.3 and 3.4, the relevant sales and accounting records,
including model and serial number, of Symbol shall be available for inspection
by NeoMedia's independent public accountants during usual business hours and
upon reasonable notice for the purpose of verifying such reports; provided,
however, that such independent public accountants shall not transmit to NeoMedia
any confidential information, including, without limitation, customer
identities, in connection with such inspection. NeoMedia shall obtain Symbol's
consent to the firm conducting the audit; provided that such consent shall not
be unreasonably withheld. The auditor shall be required to sign a standard form
non-disclosure agreement.
3.6 Symbol's Audit Right. In connection with the most favored license
provision of Article 3.2, the relevant sales and accounting records, including
model and serial number, of NeoMedia shall be available for inspection by
Symbol's independent public accountants during usual business hours and upon
reasonable notice for the purpose of verification of compliance; provided,
however, that such independent public accountants shall not transmit to Symbol
any confidential information, including, without limitation, customer
identities, in connection with such inspection. Symbol shall obtain NeoMedia's
consent to the firm conducting the audit; provided that such consent shall not
be unreasonably withheld. The auditor shall be required to sign a standard form
non-disclosure agreement .
ARTICLE 4 - REPRESENTATIONS and COVENANTS
4.1 Corporate Power. Symbol and NeoMedia each represents and warrants as to
itself only that it has full corporate power and authority to enter into this
Agreement and to carry out the transactions contemplated hereby, including
without limitation to grant all of the rights and interests to the Patent Rights
made herein, and that this Agreement has been duly and validly authorized,
executed and delivered by each of Symbol and NeoMedia, and constitutes the
legal, valid and binding obligation of Symbol and NeoMedia, enforceable against
each of them in accordance with its terms.
4.2 Patent Ownership. NeoMedia represents and warrants: a) that it has full
title and ownership of the Patent Rights listed in Exhibit 1.6 hereto, as of the
Effective Date, b) free and clear, to its knowledge, of any third party liens,
claims or encumbrances,
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other than licenses already granted, c) that it has not transferred ownership of
any Patent Rights to another entity, and d) that NeoMedia knows of no claims by
a third party challenging the ownership or validity of any such patents, except
as set forth in Exhibit 4.2 hereto. NeoMedia further represents that to the best
of its knowledge, it is aware of no material information other than as set forth
in the patent file histories that has a material adverse impact on any issued
claims included in the Patent Rights granted hereunder. NeoMedia further
represents that it has not granted, and will not grant, any rights, options or
licenses which impair the rights granted Symbol hereunder except as specifically
set forth herein.
4.3 Third Party Claims. NeoMedia represent and warrants that, to the best of
its knowledge, as of the Effective Date, there are no known claims by a third
party that the practice of the inventions claimed in the Patent Rights infringes
any patents of a third party, except as set forth in Exhibit 4.3.
4.4 Disclosure of Information. Upon Symbol's request, after NeoMedia has paid
the issue fee for an allowed patent application, NeoMedia shall provide Symbol
with a copy of the allowed claims. Information regarding the NeoMedia patent
applications that has been disclosed to Symbol shall remain confidential and may
not be disclosed or used by Symbol until such time that a patent may issue on
such application or the application is published by the United States Patent and
Trademark Office or any other patent office in which the application was filed,
in which case only the information that is made publicly available by such
patent office shall be considered to no longer be confidential.
4.5 Intellectual Property. NeoMedia represents and warrants that:
(a) (i) Any Security Interest in any Patent Rights pursuant to
Article V of the Purchase Agreement, dated December 31, 1998, and related
Exhibits, between Solar Communications, Inc. and NeoMedia Technologies, Inc.;
Amendment and Clarification dated February 15, 1999 between Solar
Communications, Inc. and NeoMedia Technologies, Inc. (the "Solar Agreement") has
been released, and (ii) any rights of Solar Communications, Inc. in and to any
Patent Rights under the Solar Agreement have been terminated and/or
extinguished.
(b) If NeoMedia decides not to maintain any of the issued patents
under the Patent Rights during the term of this Agreement, then NeoMedia shall
provide Symbol sixty (60) days notice prior to the expiration of any applicable
right or due date of any applicable payment, Symbol shall have the right in such
an event to make the applicable payment or perform the applicable act on
NeoMedia's behalf and deduct any such expense from royalties due NeoMedia
hereunder.
(c) As of the Effective Date, there are no third party judgments or
settlements to be paid by NeoMedia or pending litigation relating to any of the
Patent Rights, that adversely affect the rights granted to Symbol hereunder;
ARTICLE 5 - RELEASE AND COVENANT NOT TO XXX
5.1 Release of Symbol. NeoMedia hereby releases and forever discharges Symbol,
its Subsidiaries and all of their respective successors, officers, directors,
employees, and agents (collectively, the "Symbol Releasees") from any claims,
demands, and actions, causes and causes of action, suits, damages, judgments,
claims and demands whatsoever in law, admiralty or in equity, whether known or
unknown, contingent or fixed, certain or uncertain, arising on account of any
infringement or alleged infringement, including without limitation contributory
infringement or inducement to infringe, of any Patent Rights by Symbol, which
against the Symbol Releasees individually, collectively, or in combination,
NeoMedia, NeoMedia's successors and assigns ever had, now have, or hereafter
can, shall or may have, upon or by reason of any matter, cause or thing
whatsoever, occurring
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from the beginning of the world to the Effective Date. For purposes of this
section 5.1, Symbol Releasees shall also include any company that made Devices
for or on behalf of Symbol, and their Subsidiaries and their respective
successors, officers, directors, employees and agents, to the extent engaged in
such activity.
5.2 Release of NeoMedia. Symbol hereby releases and forever discharges
NeoMedia, its Subsidiaries and all of their respective successors, officers,
directors, employees, and agents (collectively, the "NeoMedia Releasees") from
any claims, demands, and actions, causes and causes of action, suits, damages,
judgments, claims and demands whatsoever in law, admiralty or in equity, whether
known or unknown, contingent or fixed, certain or uncertain, arising on account
of any alleged or actual misappropriation of: i) trade secrets, or derivations
thereof, and ii) intellectual property, other than copyrights, patents and
trademarks of Symbol, only as the foregoing i) and ii) are contained in any
patents or patent applications of NeoMedia published as of the Effective Date,
which are set forth in their entirety in Exhibit 5.2, which against the NeoMedia
Releasees individually, collectively, or in combination, Symbol, Symbol's
successors and assigns ever had, now have, or hereafter can, shall or may have,
upon or by reason of any matter, cause or thing whatsoever occurring from the
beginning of the world to the Effective Date.
5.3 Covenant Not to Xxx Symbol. NeoMedia hereby covenants and agrees that
neither NeoMedia nor any other person will bring suit or otherwise assert a
claim against the Symbol Releasees individually, collectively, or in
combination, arising out of, related to or alleging infringement of any of the
Patent Rights in the Field, including without limitation any claims for direct,
contributory infringement or inducement to infringe. This covenant not to xxx
shall run with title to the Patent Rights, and shall bind any permitted assignee
or other person to whom NeoMedia may convey an interest in any of its Patent
Rights. For purposes of this section 5.3, Symbol Releasees shall also include
any company that made, is making or will make Devices for or on behalf of
Symbol, and their Subsidiaries and their respective successors, officers,
directors, employees and agents, to the extent engaged in such activity.
5.3.1 Switch Operation by Symbol. Notwithstanding anything herein to the
contrary, in the event that Symbol operates a Switch in conjunction with an
unlicensed Device, or outsources the operation of the Symbol Switch to a third
party in conjunction with an unlicensed Device, then this Covenant Not to Xxx
Symbol shall not be effective with respect to such Switch operation and Neomedia
is free to pursue whatever remedies it may have against Symbol solely as a
result of the operation of said Switch. Symbol's immunity under Articles 5.3 and
6.2 with regard to the sale, lease or other disposal of Devices shall continue
to be effective.
5.4 No License to Any Symbol Intellectual Property. Notwithstanding anything
to the contrary contained in this Agreement, Symbol is not licensing any of its
intellectual property to NeoMedia or any other party, and no Article of this
Agreement shall be interpreted as granting such a license. Except for the
specific claims released in Article 5.2 of this Agreement, Symbol retains all of
its rights to enforce its intellectual property against NeoMedia or any other
party. Symbol agrees that, in the event it believes NeoMedia or any NeoMedia
product infringes any intellectual property right of Symbol, before bringing
legal action against NeoMedia, Symbol shall notify NeoMedia in writing and enter
into discussions concerning the issue, but under no circumstances shall Symbol
be obligated to grant a license to NeoMedia.
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ARTICLE 6 - MARKETING
6.1 Marketing. Symbol shall announce the availability of the NeoMedia End User
Licenses to its direct sales force and distributors by listing and maintaining
the End User Licenses in Symbol's electronic product ordering guide (EPOG) (or
other like means as may be offered by Symbol from time to time) and through a
published "Product Announcement" distributed by e-mail and other means as
conventional within Symbol to Symbol's sales associates and through its Channel
Management group to distributors. Symbol shall also inform its value added
resellers and its direct sales force of the NeoMedia End User Licenses and of
NeoMedia's Switch Services at training sessions or other scheduled events as is
reasonably necessary to maintain awareness of the End User Licenses and NeoMedia
Switch Services. Symbol shall also, within a reasonable time period after the
execution of this Agreement, create text describing the NeoMedia End User
License product offering. Symbol shall be responsible for its own allocation and
management of expenses in connection with the promotion and distribution of End
User Licenses covered by this Agreement. NeoMedia shall have the right to
exhibit at Symbol's worldwide sales conference, provided it complies with the
standards for participation, and shall have the right to participate in Symbol's
standard channel programs provided it satisfies the criteria for such programs.
6.2 No Obligation to Purchase Licenses. Notwithstanding anything to the
contrary contained in this Agreement, Symbol may sell, lease or otherwise
dispose of Devices to customers, even if Symbol or such customers decline to
take a license under Article 2.1 of this Agreement, without being liable to
NeoMedia for patent infringement, but in such event it is understood that the
customer remains subject to infringement action if its use infringes the Patent
Rights.
ARTICLE 7 - TERM AND TERMINATION
7.1 Term. This Agreement shall commence on the Effective Date and shall
continue in full force until the last to expire of any issued patents included
within the Patent Rights unless earlier terminated as provided below.
7.2 Breach. In case of breach of this Agreement by a party, the other party
shall have the right to terminate this Agreement by giving the breaching party
at least sixty (60) days written notice of its intention specifying the cause
for default; provided, however, that if the breaching party shall remedy such
failure during such sixty (60) day period, then this Agreement shall not be
terminated on the date specified in such notice, except that for any monetary
breach, the notice and cure period shall be twenty (20) days, but such cure
period shall not be used as a means to generally extend terms of payment. Any
termination hereunder shall not preclude the ability of the parties to pursue
any other remedies they make have in law or equity. An uncured breach of Section
6.1 shall constitute a material breach of this Agreement.
7.3 Accounting. After any termination of this Agreement, including the
expiration of the last of the Patent Rights, Symbol shall render an accounting
for all unpaid royalties pursuant to the license from the last such report up to
the termination date. Such final accounting shall be made within sixty (60) days
after the termination date.
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7.4 Sums Payable. Termination of this Agreement shall not excuse either
party's obligation to make payments of sums due and payable at the time of any
termination thereof, or sums due and payable at a time after the termination
date based upon the licenses or sublicenses of rights under this Agreement prior
to termination.
7.5 Survival of End User Licenses. All licenses granted by Symbol or its
Sublicensees to their customers during and pursuant to this Agreement shall
survive any termination or expiration of this Agreement. The licenses contained
in this Agreement shall be considered intellectual property licenses within the
meaning of any applicable federal or state statute, including 11 U.S.C. section
365(n).
ARTICLE 8 - NOTICES
8.1 Notification Address. Except as otherwise set forth herein, all notices
given in connection with this Agreement shall be in writing and shall be
delivered either by personal delivery, by certified or registered mail, return
receipt requested, or by express courier or delivery service, addressed to the
parties hereto at the following addresses:
To Symbol: To NeoMedia:
Symbol Technologies, Inc. NeoMedia Technologies, Inc.
One Symbol Plaza 0000 Xxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000-0000 Xxxxx 000
Xx. Xxxxx, XX 00000.
Attn: President Attn: President
With a copy to General Counsel With a copy to: General Counsel
Fax: 631/000-0000 Fax: 941/000-0000 and a copy to:
Xxxxxxx X. Xxxxxxx, Esq.
Xxxxxxxxx, Xxxxxxx LLP
000 Xxxx Xxxxxx
Xxx Xxxx, XX 00000
Fax: 000-000-0000
or at such other address and number as either party shall have previously
designated by written notice given to the other party in the manner hereinabove
set forth. Notices shall be deemed given when received; and when delivered and
receipted for (or upon the date of attempted delivery where delivery is
refused), if hand-delivered, sent by express courier or delivery service, or
sent by certified or registered mail, return receipt requested.
ARTICLE 9 - MISCELLANEOUS
9.1 Entire Agreement. This Agreement, including the Exhibits annexed hereto,
constitutes the entire Agreement and understanding between the parties as to the
subject matter thereof, and supersedes and replaces all prior or contemporaneous
agreements, written or oral, as to the subject matter. This Agreement may be
changed only in writing stating that it is an amendment or modification to this
Agreement, and signed by an authorized representative of each of the parties
hereto.
9.1.5 Patent Marking. Symbol shall disclose the appropriate patent numbers for
the licenses in the license description in its EPOG, and the parties shall work
together to find appropriate methodologies to comply with the requirements of 35
USC 287.
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9.2 Unenforceability. Any term or provision of this Agreement which is invalid
or unenforceable or in conflict with the law of any jurisdiction shall, as to
such jurisdiction, be ineffective to the extent of such invalidity or
unenforceability without affecting the validity of the remaining terms and
provisions of this Agreement or affecting the validity or enforceability of any
of the terms and provisions of this Agreement in any other jurisdiction.
Further, the parties agree that an arbitrator or a court of competent
jurisdiction in a particular jurisdiction may reform a specific term of this
Agreement should the applicability of such term or provision be held invalid or
unenforceable in that jurisdiction so as to reflect the intended agreement of
the parties hereto solely with respect to the applicability of such provision in
said jurisdiction.
9.3 Release. Neither this Agreement nor any provision thereof may be released,
discharged, waived or abandoned in any manner, except by an instrument in
writing signed on behalf of both of the parties hereto by their duly authorized
officers or representatives.
9.4 Waiver. Any waiver of a default or condition hereof by either party shall
not be deemed a continuing waiver of such default or condition. Any delay or
omission by either party to exercise any right or remedy under this Agreement
shall not be construed to be a waiver of any such right or remedy or any right
hereunder. All of the rights of either party under this Agreement shall be
cumulative and may be exercised separately or concurrently.
9.5 Not a Joint Venture. This Agreement does not constitute a partnership,
joint venture or agency between the parties hereto, nor shall either of the
parties hold itself out as such contrary to the terms hereof by advertising or
otherwise, nor shall either of the Parties become bound or become liable because
of any representation, action, or omission of the other.
9.6 Confidential Information. Except for those terms announced in the joint
press release, the terms of this Agreement are confidential and shall not be
disclosed by one party without the prior written consent of the other party,
except to the extent necessary for a party to enforce its rights hereunder, for
a period that ends three (3) years after termination of this Agreement.
Confidential Information shall not include information or data which is required
to be disclosed by a party or by their officers, agents or representatives in
connection with any judicial or administrative order, proceeding or
investigation, or under applicable law or government regulation. Notwithstanding
anything to the contrary, provided NeoMedia has first given Symbol an
opportunity to review its proposed disclosure: i) NeoMedia may disclose to any
third party only those portions of this Agreement necessary to fulfill its
obligations to such third party under a "Most Favored Nation/Licensee" or
similar provision, and ii) to the Securities and Exchange Commission if required
by law.
9.7 Attorney's Fees. In the event of any dispute arising out of a breach of or
a default under this Agreement by one party, the prevailing party shall recover
from the other, in addition to any other damage assessed, its attorneys' fees
and court costs incurred in litigating or otherwise settling or resolving such
dispute.
9.8 Press Release. Promptly after the execution of this Agreement, but in any
event not later than seven (7) days after the Effective Date, Symbol and
NeoMedia shall issue a joint press release in form and substance acceptable to
both parties. Except as may be required by law or regulation, any additional
press release or public statement pertaining to this Agreement shall be made
only after consultation with and consent of the other party (whose consent shall
not be unreasonably withheld). NeoMedia may mention its relationship with Symbol
in the "About NeoMedia" section of its press releases or in public statement
without
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obtaining Symbol's consent each time, provided that Symbol has previously
approved the description or statement. Each party agrees not to describe this
Agreement or the transaction hereunder in any financial statement or filing with
any Federal or State securities authority or in any disclosure document prepared
in connection with a securities offering without first giving the other party an
opportunity to review the description. Neither party is required to resubmit to
the other party language that it desires to include in any such financial
statement or filing if such language has been previously approved by the other
party, and such approval has not been revoked in writing by the other party.
9.9 Headings. The headings of articles, sections and other subdivisions hereof
are inserted only for the purpose of convenient reference and it is recognized
that they may not adequately or accurately describe the contents of the
provisions which they head. Such headings shall not be deemed to govern, limit,
modify or in any other manner affect the scope, meaning or intent of the
provisions of this Agreement or any part or portion thereof, nor shall they
otherwise be given any legal effect.
9.10 Grammar. Where the context of this Agreement requires, singular terms
shall be considered plural, and plural terms shall be considered singular.
9.11 Choice of Law. This Agreement shall be governed by, performed under and
construed in accordance with the laws of the State of New York without giving
effect to the conflicts of law principles thereof.
9.12 Assignability. This Agreement may not be assigned by Symbol, except in the
event of a merger or sale of substantially all of the assets of Symbol to a
third party. This Agreement shall be binding on the successors and assigns of
NeoMedia or any of the Patent Rights, and the permitted successors and assigns
of Symbol.
9.13 Interpretation. The parties and their attorneys have each had opportunity
to review and comment on this Agreement. Accordingly, the parties agree that the
legal rule construing ambiguity against the drafter shall not apply in
interpreting this Agreement.
9.14 Survival of Terms. The provisions of Articles 1, 2.3, 2.5, 3, 4 (except
for 4.4 and 4.5(b)), 5.1-5.2, 5.3, (only as to Devices sold, leased or otherwise
disposed of by Symbol, or other events or things that occurred, during the term
of the Agreement), 5.3.1, 5.4 (except for the last sentence), 6.2(only as to
Devices sold, leased or otherwise disposed of by Symbol, or other events or
things that occurred, during the term of the Agreement), 7 (except for 7.1), 8
and 9 (except for 9.1.5 and 9.8), and any Exhibits to the foregoing Articles,
shall survive the expiration or termination of this Agreement, and the
representations and warranties in Article 4 shall survive the execution of this
Agreement also.
9.15 Facsimile Signatures and Counterparts. This Agreement may be executed in
counterparts and by facsimile signatures.
9.16 Limitation of Liability. TO THE EXTENT PERMITTED BY APPLICABLE LAW, IN NO
EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY INDIRECT, SPECIAL,
CONSEQUENTIAL OR PUNITIVE DAMAGES ARISING OUT OF OR RELATING TO THIS AGREEMENT,
INCLUDING WITHOUT LIMITATION LOST PROFITS OR LOST OPPORTUNITIES, WHETHER DUE TO
A BREACH OF CONTRACT, BREACH OF WARRANTY, NEGLIGENCE OR OTHERWISE.
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9.17 Jury Trial Waiver. EACH OF THE PARTIES HERETO IRREVOCABLY AND
UNCONDITIONALLY WAIVES TRIAL BY JURY IN ANY LEGAL ACTION OR PROCEEDING RELATING
TO THIS AGREEMENT, INCLUDING WITHOUT LIMITATION ANY COUNTERCLAIMS BROUGHT BY ANY
PARTY.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed on the day and year last written below.
SYMBOL TECHNOLOGIES, INC. NEOMEDIA TECHNOLOGIES, INC
BY: /s/ Tomo Razmilovic BY: /s/ Xxxxxxx X. Fritz________________
TITLE: Chief Executive Officer TITLE: President and CEO
Date: 5/9/01
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