EXCLUSIVE LICENSE AGREEMENT
This
Exclusive License Agreement (“Agreement”)
is
entered into by and between eRoom
System Technologies, Inc.
(“Licensor”), a corporation having a principal place of business at 0000 Xxxxxxx
Xxxxxx, Xxxxxxxx, XX 00000, and ACACIA
PATENT ACQUISITION LLC (“APAC”),
a Delaware limited liability company having a principal place of business at
000
Xxxxxxx Xxxxxx Xxxxx, Xxxxx 000, Xxxxxxx Xxxxx, XX 00000 (collectively referred
to herein as the “Parties” and individually as “Party”). The effective date of
this Agreement shall be the date on which the last Party executes this Agreement
below (the “Effective Date”).
BACKGROUND
WHEREAS,
Licensor is the sole and exclusive owner of U.S. Patent No. 4939352, U.S. Patent
No. 4883948 and U.S. Patent No. 4857714, and all related patent applications,
corresponding foreign patents and foreign patent applications, and all
continuations, continuations in part, divisions, extensions, renewals, reissues
and re-examinations relating to all inventions thereof, which are collectively
referred to as the “Patents” (the "Patents");
and
WHEREAS,
Licensor is willing to grant worldwide exclusive license rights in the Patents
to APAC and APAC in turn, desires to acquire all substantial rights in and
to
the Patents.
NOW,
THEREFORE,
in
consideration of the promises and mutual covenants contained herein and for
other good and valuable consideration, Licensor and APAC agree as
follows:
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1.
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GRANT
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1.1.
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Exclusive
License.
Effective upon the date of Acceptable Completion (as defined below),
Licensor grants to APAC all substantial rights in and to the Patents
including the worldwide, exclusive right and license under the
Patents to
make, have made, use, import, offer or sell products or services
covered
by the Patents, including the exclusive right to grant sublicenses,
to xxx
for and collect past, present and future damages and to seek and
obtain
injunctive or any other relief for infringement of the Patents.
Licensor
expressly retains no rights in or to the Patents, including without
limitation, the right to xxx for infringement of the Patents prior
to any
termination of this Agreement and specifically grants APAC all
such rights
prior to any termination. The exclusive right and license granted
herein
shall exist for the term as set forth in Section
7
below.
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1.2.
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Investigation
Period.
Licensor acknowledges and agrees that APAC shall undertake and
perform a
due diligence investigation of the Patents during the period of
up to
sixty (60) days following the Effective Date (the “Investigation Period”).
In consideration of APAC’s due diligence investigation of the Patents,
Licensor agrees that, during the Investigation Period, Licensor
shall not
discuss, negotiate or pursue with any third parties any offers
or
proposals with respect to or otherwise relating to any of the Patents.
Licensor agrees to cooperate with APAC and to promptly provide
to APAC any
reasonably requested information regarding the Patents, including
prompt
delivery for receipt by APAC no later than seven (7) days following
the
Effective Date of a copy of the complete prosecution history of
each of
the Patents (each a “File History”) and copies of all files, information
and documents in Licensor’s possession or control relating to the Patents.
In the event that (i) any of the File Histories in Licensor’s possession
or (ii) any of the files, information and documents in
Licensor’s possession relating
to the Patents are not delivered to APAC within the seven (7) day
period
following the Effective Date, the Investigation Period shall be
automatically extended by the greater of the number of days for
which (i)
the last of the File Histories in Licensor’s possession or (ii) any files,
information and documents in Licensor’s possession relating to the Patents
is delayed. Upon completion of the Investigation Period, APAC shall
provide written notice to Licensor of its conclusion regarding
the
investigation of the Patents. The Investigation Period will commence
on
the Effective Date and conclude on the earlier of: (i) 11:59 P.M.
PST,
sixty (60) calendar days following, but not including, the Effective
Date,
subject to the extensions set forth in this Section
1.2;
or (ii) APAC transmits written notice to Licensor of its conclusion
regarding the investigation of the Patents.
Notwithstanding the foregoing, this Agreement shall terminate on
April 01,
2009 if APAC has not given the written notice of Acceptable Completion
defined in Section 1.3 below on or before that
date.
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1.3.
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Due
Diligence Completion.
If APAC determines, in its sole and absolute discretion, that the
Patents
are acceptable during the Investigation Period and transmits written
notice to Licensor that the Patents are acceptable (“Acceptable
Completion”), then this Agreement shall continue with full force and
effect following such Acceptable Completion of the Investigation
Period.
Otherwise,
if
APAC determines, in its sole and absolute discretion, that the
Patents are
not acceptable, then (i) APAC shall have no payment obligations
or
liability to Licensor hereunder; and (ii) this Agreement shall
automatically terminate upon completion of the Investigation
Period.
For the purposes of this Section
1.3,
written notice of Acceptable Completion may be sent by first class
mail,
facsimile, recorded delivery or electronic
mail.
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1.4.
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INTENTIONALLY
LEFT BLANK.
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1.5.
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Exclusivity
to APAC.
Notwithstanding anything to the contrary, the grant to APAC of
the
exclusive right and license under the Patents herein shall be exclusive,
even as to Licensor, with respect to any and all Exclusive Parties
(as
defined below) and APAC shall have the sole and exclusive right
under the
Patents to deal with one or more Exclusive Parties in any and all
matters
relating to the Patents, including without limitation any and all
direct
and indirect offers for sale and sales of products and services,
in whole
or in part, covered by the Patents to such Exclusive Parties. The
term
“Exclusive Party” shall mean:
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(a)
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a
declaratory judgment plaintiff or an infringement defendant under
any of
the Patents; or
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(b)
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a
party infringing any claim from any of the Patents; or
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(c)
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a
party with which APAC has initiated or undertaken licensing
communications, discussions and/or negotiations or otherwise asserted
any
of the Patents against, provided that an Exclusive Party shall
be deemed
to include any and all of its
affiliates.
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2.
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LICENSE
BACK
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2.1.
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Grant
Back License.
Subject to Acceptable Completion and Licensor marking each of its
products
in a conspicuous manner so as to identify each of the applicable
Patents
embodied in such products (e.g., U.S. Patent No. 4939352), APAC
shall
grant to Licensor a limited, non-exclusive, non-transferable,
royalty-free, personal right and license under the Patents to make,
use,
offer or sell Licensor’s products or services (the “License”).
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2.2.
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Limitation
to Grant Back.
Other than as expressly set forth in Section
2.1
above, Licensor expressly retains no rights in or to the Patents,
including without limitation no rights to xxx for and collect past,
present and future damages and to seek and obtain injunctive or
any other
relief for infringement of the Patents, and no other rights or
licenses
under the Patents are granted or
implied.
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3.
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ROYALTIES
AND OTHER PAYMENTS
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3.1.
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Royalty
Payment.
APAC shall pay Licensor a continuing royalty equal to fifty percent
(50%)
of the Net Proceeds, as defined below. For purposes hereof, the
following
terms shall have the following
meanings:
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“Net
Proceeds”
shall
mean Total Recoveries less the APAC Costs.
“Total
Recoveries”
shall
mean all amounts actually received by APAC from the licensing and enforcement
of
the Patents including all licensing proceeds and recoveries from any lawsuits
or
settlements. Any non-monetary consideration received by APAC in connection
with
licensing or enforcement of the Patents shall be valued at fair market
value.
“APAC
Costs”
shall
mean all costs and expenses incurred with third parties in connection with
prosecuting, licensing, enforcing or defending the Patents, including without
limitation:
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(a)
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attorneys'
and paralegal fees (whether on an hourly or contingent basis and
whether
for general or local counsel), costs and disbursements;
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(b)
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the
fees and costs of consultants, experts or technical
advisors;
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(c)
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travel
and lodging expenses;
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(d)
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duplicating,
secretarial, stenographer, postage, courier and similar expenses;
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(e)
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filing
fees and other Patent Office fees or
costs;
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(f)
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court
costs;
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(g)
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legal
and other costs related to any re-examination or reissue
proceeding;
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(h)
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legal
and other costs incurred in defending any action or counterclaim
in
respect of the Patents; and
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(i)
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legal
and other costs in prosecuting or processing any U.S. or foreign
application, including without limitation, any continuing application
or
continuation in part application.
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3.2.
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Application
of Total Recoveries.
Total Recoveries shall be applied in the following order of priority:
first to APAC in an amount equal to the APAC Costs, then to APAC
and
Licensor in proportion to their respective shares of the Net Proceeds.
All
Taxes (as defined below) shall be the financial responsibility
of the
Party obligated to pay such Taxes as determined by the applicable
law and
neither Party is or shall be liable at any time for any of the
other
Party’s Taxes incurred in connection with or related to amounts paid
under
this Agreement. The term “Taxes” shall mean any foreign, federal, state,
local, municipal or other governmental taxes, duties, levies, fees,
excises or tariffs, arising as a result of or in connection with
any
amounts paid under this Agreement, including without limitation:
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(a)
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any
state or local sales or use taxes;
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(b)
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any
import, value added or consumption
tax;
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(c)
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any
business transfer tax;
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(d)
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any
taxes imposed or based on or with respect to or measured by any
net or
gross income or receipts of either Party;
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(e)
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any
franchise taxes, taxes on doing business, gross receipts taxes
or capital
stock taxes; or
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(f)
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any
other tax now or hereafter imposed by any governmental or taxing
authority
on any aspect of this Agreement and the obligations
hereunder.
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If
Taxes are required to be withheld on any amounts otherwise to be
paid by
one Party to the other, the paying Party shall deduct and set off
such
Taxes from the amount otherwise due and owed to the receiving Party
and
pay them to the appropriate taxing authority. Each Party agrees
to
indemnify, defend and hold the other Party harmless from any Taxes
or
claims, causes of action, costs, expenses, reasonable attorneys’ fees,
penalties, assessments and any other liabilities of any nature
whatsoever
related to such Taxes to the extent such Taxes relate to amounts
paid
under this Agreement.
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3.3.
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Reporting.
All amounts payable to Licensor shall be due within thirty (30)
days after
the end of each calendar quarter with respect to Net Proceeds,
if any, in
such quarter. APAC will provide Licensor with a report of Total
Recoveries
and APAC Costs for each calendar quarter that Net Proceeds are
due to
Licensor. Licensor shall have the right to audit such reports
in
accordance with Section
5.2
below. All other payments from one Party to the other hereunder
shall be
due and payable within thirty (30) days following receipt of
the
applicable invoice.
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3.4.
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Licensor
Availability.
Upon APAC’s reasonable request, Licensor will be available from time to
time to consult with APAC or its attorneys on matters relating
to the
Patents. In the event that the testimony of any employee, director,
officer, consultant or agent of Licensor is taken in any action
relating
to the Patents, APAC’s attorneys will represent such party without
additional charge, and Licensor and such party will cooperate with
APAC
and its attorneys in preparing for such testimony. Licensor will
grant
access to APAC and allow APAC to make copies of all files in Licensor’s
possession or control relating to the Patents, including access
to such
documents as may be necessary to conduct enforcement and licensing
efforts. APAC will pay for Licensor’s reasonable out of pocket travel
expenses incurred at the request of APAC and any such expenses
will be
treated as APAC Costs. APAC acknowledges that no employee, director,
officer, consultant or agent of Licensor is an inventor on the
Patents and
that no one at Licensor has any personal knowledge of the Patents
or the
prosecution of the Patents prior to the acquisition date of the
Patents by
Licensor.
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4.
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REPRESENTATIONS
AND WARRANTIES
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4.1.
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Licensor
Warranties.
Licensor represents and warrants to APAC that, as of the Effective
Date
hereof:
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4.1.1.
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Based
upon the written representation of the Inventor of the Patent,
Licensor
believes it is the sole owner of the Patents and has all right,
title,
claims, interest and privileges arising from such ownership, free
and
clear of any liens, security interests, encumbrances, rights or
restrictions;
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4.1.2.
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Licensor
has no knowledge of whether the identity of all inventors of the
inventions described in the Patents as required by U.S. law has
been
disclosed to the United States Patent
Office;
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4.1.3.
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The
Patents and the inventions described in the Patents are (i) not
the
product or subject of any joint development activity or agreement
with any
third party; (ii) not the subject of any consortia agreement or
cross-license; and (iii) have not been financed in whole or in
part by any
third party;
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4.1.4.
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The
issued Patents remain in full force and effect as of the Effective
Date of
this Agreement;
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4.1.5.
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Licensor
has not assigned, licensed, granted covenants not to xxx, transferred
or
otherwise conveyed to any other person or entity any of his rights,
title,
claims, interest or privileges with respect to the
Patents;
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4.1.6.
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Exhibit
A
includes all related patents, patent applications, foreign counterparts,
and all continuations, continuations in part, divisions, extensions,
renewals, reissues and re-examinations relating to all inventions
thereof,
which are in the same respective patent family or families as the
Patents;
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4.1.7.
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Licensor
believes that all maintenance fees that have become due with respect
to
the Patents have been paid in full;
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4.1.8.
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Licensor
believes that the Patents are not and have not been subject to
any action
or proceeding concerning their validity, enforceability, inventorship
or
ownership;
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4.1.9.
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Other
than the information disclosed in the prosecution history of the
Patents,
Licensor has no knowledge of any facts that could give rise to
a claim
that the Patents are invalid or unenforceable; and Licensor has
not
engaged in any conduct, or omitted to perform any necessary act,
the
result of which would invalidate the Patents or preclude their
enforceability;
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4.1.10.
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Licensor
has all requisite legal and corporate power and authority to enter
into
this Agreement, to consummate the transactions contemplated hereby,
and to
carry out and perform its obligations under the terms of this Agreement;
and
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4.1.11.
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The
execution, delivery, performance of and compliance with this Agreement
has
not resulted and will not result in any violation of, or conflict
with, or
constitute a default under (with or without notice or lapse of
time, or
both), or give rise to a right of termination, cancellation or
acceleration of any obligation or loss of any benefit under any
agreement
to which Licensor is a party.
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4.2.
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APAC
Warranties.
APAC represents and warrants to Licensor that, as of the Effective
Date
hereof:
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4.2.1.
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APAC
is a company duly organized and in good standing under the laws
of
Delaware;
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4.2.2.
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APAC
has authority to enter into this Agreement and implement its terms;
and
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4.2.3.
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The
person executing this Agreement on behalf of APAC is duly authorized
to do
so.
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5.
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RECORDS
AND FEES
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5.1.
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Records.
APAC shall keep complete and proper records of the Total Recoveries
and
APAC Costs.
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5.2.
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Audit.
Licensor shall have the right, during reasonable business hours
no more
than once per calendar year, to audit, at Licensor’s expense, the
correctness of any previously unaudited APAC report by an independent
public accountant chosen by Licensor who may examine APAC’s records
pertinent to this Agreement. To the extent that the Licensor’s auditor
discovers any underpayment error exceeding ten (10%) percent of
Licensor’s
respective share of Net Proceeds, Licensor shall be entitled to
conduct
subsequent audits until such audits reveal no further errors. Licensor
and
his representatives shall hold in confidence any such information
and
shall not use the information for any purposes other than verifying
APAC’s
reporting in connection with this
Agreement.
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5.3.
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Patent
Prosecution.
Subsequent to Acceptable Completion, during the term of the Agreement,
APAC shall assume sole control of any and all activities, matters
and
proceedings before the United States Patent and Trademark Office
(the
“USPTO”) and foreign patent offices relating to the Patents, including
without limitation any reissues or reexaminations of any issued
United
States patent, the prosecution of any United States or foreign
patent
applications and the continuing prosecution of any pending United
States
or foreign patent applications among the Patents and the costs,
fees and
expenses paid by APAC in connection therewith shall be treated
as APAC
Costs. APAC will have sole and absolute discretion in filing, prosecuting,
abandoning and maintaining the Patents. Licensor hereby grants
APAC a
power of attorney permitting APAC to assume such sole control of
any and
all activities, matters and proceedings before the USPTO and foreign
patent offices relating to the Patents and Licensor shall fully
cooperate
with APAC, including without limitation the execution of such documents
as
APAC shall reasonably require, to timely address and prosecute
all such
activities, matters and proceedings before the USPTO and foreign
patent
offices.
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6.
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ENFORCEMENT
OF PATENT RIGHTS
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6.1.
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Good
Faith.
Subject to the terms and conditions of this Agreement, APAC will
use its
good faith efforts to pursue licensing and enforcement of the Patents
at
its expense. APAC will attempt to negotiate licenses with companies
that
APAC believes may be infringing the Patents. Notwithstanding any
of the
foregoing, APAC may at any time elect not to pursue licensing or
enforcement of any of the Patents if APAC determines, in its sole
discretion, that any such pursuit would be commercially unreasonable
or
otherwise unlawful or illegal.
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6.2.
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Enforcement
Litigation.
APAC may, in its sole judgment, decide to institute enforcement
actions
against certain or all of the companies that APAC believes are
infringing
the Patents. APAC shall have the exclusive right to bring suit
to enforce
the Patents. Licensor shall join as a plaintiff at APAC’s request in the
event APAC’s counsel determines that Licensor is a necessary party to the
action. Licensor hereby grants APAC a power of attorney allowing
APAC to
(i) add Licensor as a party to any such action and/or (ii) to bring
an
action directly in Licensor’s name. In the event Licensor joins as a
plaintiff at APAC’s request or APAC brings an action in Licensor’s name,
or Licensor is named as a party by another party to such action,
APAC
shall have the power of attorney to settle any claims relating
to the
Patents on behalf of Licensor and APAC shall defend and indemnify
Licensor
against all liabilities, costs and expenses for proving infringement
and
defending validity and title of the Patents, except that, as provided
below, Licensor shall be responsible for its own counsel’s fees and costs
if it elects to retain separate counsel. Notwithstanding any of
the
foregoing, in the event that a court holds that Licensor has engaged
in
fraud, gross negligence, or willful misconduct, APAC shall have
no
obligation to indemnify Licensor for any judgments, liability,
loss,
damages, costs and expenses (including reasonable attorneys’ fees and
expenses of litigation) in connection therewith. APAC shall promptly
notify Licensor of any action wherein Licensor is named as a party
by APAC
or any other person or entity. Upon Licensor’s request, APAC shall update
Licensor on the ongoing licensing and enforcement efforts of APAC
with
respect to the Patents.
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6.3.
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Choice
of Counsel.
In the event that Licensor joins in any suit, either before or
after it is
initiated, Licensor shall have the right to be represented by counsel
of
his choice, provided that if Licensor chooses to have representation
separate from APAC, Licensor shall be responsible for paying all
his own
fees and costs related to such representation and APAC shall be
solely
responsible for the fees and costs incurred by its own counsel.
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6.4.
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Cooperation.
Regardless of whether Licensor is named as a party to any enforcement
action, APAC reserves the sole right to select counsel, direct
the
litigation, and to negotiate and determine the terms of any settlement
or
other disposition of such action. The parties agree to fully cooperate
with each other in any litigation that is brought.
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7.
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TERMINATION
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7.1.
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Term.
Unless earlier terminated as provided for in this Agreement, all
grants,
obligations and provisions recited in this Agreement and relating
to the
Patents shall continue in full force and effect, until the later
of either
a) the expiration date of the Patents or b) the conclusion of APAC’s
licensing and enforcement of the Patents. Notwithstanding the foregoing,
in the event that a final decree of invalidity from which no appeal
can
be, or is, taken, with respect to the Patents, this Agreement shall
terminate at such time.
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7.2.
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APAC
Bankruptcy.
Licensor may terminate this Agreement in the event that APAC files
for
bankruptcy protection under any state or federal bankruptcy law
or a
petition for bankruptcy is filed against APAC and not dismissed
within
ninety (90) days.
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7.3.
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Material
Breach.
Either party may terminate this Agreement upon written notice to
the other
if the other party breaches any material representation, warranty
or
agreement in this Agreement and fails to cure such breach within
ninety
(90) days of receipt of such written notice detailing the alleged
breach.
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7.4.
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Commercially
Unreasonable.
APAC may terminate this Agreement, upon the sending written notice
to
Licensor, if APAC determines, in its sole judgment, that licensing
or
enforcement of the Patents is not commercially reasonable or
practicable.
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7.5.
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Termination
Period.
In the event of Acceptable Completion, Licensor may also terminate
this
Agreement within a ninety (90) day period, beginning two (2) years
from
the date of such Acceptable Completion (the “Termination Period”) unless
APAC has either (i) filed any action or counterclaim for infringement
of
any of the Patents, or (ii) generated any Total Recoveries from
licensing
or enforcement of the Patents (the failure of (i) and (ii) above
shall be
referred to as a “Termination Event”). In order to terminate this
Agreement pursuant to this Section
7.5,
within the Termination Period, Licensor shall provide APAC with
written
notice of its intention to exercise its right to terminate this
Agreement
under this Section
7.5,
at which time APAC shall have a ninety (90) day period from the
time it
receives such notice, in which it may cure the Termination Event
giving
rise to the right of termination (the “Cure Period”) by either (i) filing
an action (or counterclaim) to enforce any of the Patents or (ii)
generating Total Recoveries and paying Licensor its share of the
Net
Proceeds, if any. If Licensor does not give APAC notice of its
intention
to terminate within the Termination Period or APAC cures the Termination
Event during the Cure Period, then Licensor’s right to terminate this
Agreement under this Section
7.5
shall lapse.
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7.6.
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Final
Ruling.
In the event of any dispute as to whether a party has breached
this
Agreement pursuant to Section
7.3
above or whether a cure has been effected, the matter shall be
submitted
to litigation pursuant to Section
9
hereof, and there shall be no termination of the license under
this
Agreement unless and until there is a final ruling that there has
been an
uncured breach, as provided herein.
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7.7.
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Licensor
Payments after Termination.
Any termination of this Agreement shall not relieve APAC of liability
for
any payments due to Licensor accrued prior to the effective date
of such
termination.
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7.8.
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APAC
Payments after Termination.
In
the event of any termination of this Agreement, regardless of the
cause,
after payment of any monies due Licensor, APAC shall be entitled
to retain
or receive the portion of Total Recoveries that it would be entitled
to
retain or receive if this Agreement were in effect, which (i) accrued
or
was received prior to the termination date, (ii) accrues or is
received
after the termination date as a result of any settlement, license
agreement or other agreement or transaction that was negotiated,
made or
occurred prior to the termination date, or (iii) resulted from
any lawsuit
or negotiations that were pending at or prior to the occurrence
of such
termination.
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7.9.
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Licensor
Bankruptcy.
The parties acknowledge and agree that this Agreement is a contract
under
which APAC is a licensee of intellectual property as provided in
Section
365(n) of title 11, United States Code (the "Bankruptcy Code").
Licensor
acknowledges that if Licensor, as a debtor in possession or a trustee
in
bankruptcy in a case under the Bankruptcy Code (the "Bankruptcy
Trustee"),
rejects this Agreement, APAC may elect to retain all of its rights
under
this Agreement as provided in Section 365(n) of the Bankruptcy
Code. Upon
written request of APAC to Licensor or the Bankruptcy Trustee,
Licensor
will not interfere with any of the rights of APAC as provided in
this
Agreement.
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8.
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ASSIGNMENT
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8.1.
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Successors.
This Agreement shall inure to the benefit of, and be binding upon
the
respective successors, assigns, heirs, beneficiaries and personal
representatives of Licensor and APAC, subject to Section
8.2
below.
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8.2.
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Assignability.
This Agreement is personal and non-assignable, except it may be
assigned
by APAC to an affiliate of APAC, provided such affiliate (i) is
owned or
controlled, directly or indirectly, by APAC or the parent of APAC,
and
(ii) agrees to be bound by all the terms and conditions of this
Agreement
in writing, including the obligation to make payments hereunder.
Notwithstanding anything to the contrary, Licensor acknowledges
and agrees
that: (a) Licensor may not at any time directly or indirectly transfer
the
License, in whole or in part, to any third party, including without
limitation any Exclusive Party; and (b) an Exclusive Party may
not at any
time claim ownership or entitlement to any License or otherwise
obtain or
be deemed to obtain directly or indirectly any rights, benefits,
licenses
or immunities, in whole or in part, under any License, whether
by,
through, as a result of, or otherwise in connection with any agreement,
contract, transaction or business combination with Licensor. Except
as set
forth above with respect to the License and Exclusive Parties,
Licensor
may transfer or assign all or any part of his interest in this
Agreement
or sell or transfer all or some of the Patents, provided that (i)
the
transferee or assignee is not an Exclusive Party; (ii) the transferee
or
assignee agrees to be bound by the terms of this Agreement in writing;
and
(iii) Licensor shall continue to be bound by the terms of this
Agreement.
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9.
|
GOVERNING
LAW AND CONSENT TO
JURISDICTION
|
|
9.1.
|
Choice
of Laws.
This Agreement shall be governed by and construed under applicable
federal
law and the laws of the State of California, excluding any conflict
of law
provisions. APAC and Licensor each irrevocably consent to the exclusive
jurisdiction of any California state or federal court sitting in
the
Central District of California, over any suit, action or proceeding
arising out of or relating to this Agreement. APAC and Licensor
hereby
waive personal service of any summons, complaint, or other process
in any
action in any California state or federal court sitting in the
Central
District of California, and agree that all service thereof may
be made by
(a) certified or registered mail, return receipt requested, to
the other
party’s address identified in the opening paragraph of this Agreement;
or
(b) by such other method authorized by the California Long Arm
Statute.
|
|
9.2.
|
Consequential
Liability.
Neither APAC nor Licensor shall be liable for any consequence or
damage
arising out of or resulting from the manufacture, use or sale of
products
under the Patents. In no event shall any party be entitled to special,
indirect, consequential damages, including lost profits, or punitive
damages for breach of this
Agreement.
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12
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10.
|
CONFIDENTIALITY
|
|
10.1.
|
All
information provided pursuant to this Agreement, including without
limitation (but not including the existence of this Agreement),
the terms
of this Agreement, shall be regarded as confidential information
(“Confidential Information”). The Parties agree that, other than as
required by law, they shall not disclose any Confidential Information
and
shall use the Confidential Information only for the purposes set
forth
herein. Either party may disclose Confidential Information to its
financial and legal advisors subject to confidentiality obligations
at
least as stringent as those provided in this Agreement. Licensor
acknowledges that APAC’s parent company, Acacia Research Corporation
(“Acacia”), is a publicly traded company, and that Acacia may be required
to publicly disclose the signing of this Agreement, as well as
certain
terms of the Agreement. Confidential Information shall not include
information that:
|
|
(a)
|
was
already known, otherwise than under an agreement of secrecy or
non-use, at
the time of its disclosure;
|
|
(b)
|
has
passed into the public domain prior to or after its disclosure,
otherwise
than through any act or omission attributable to principals, officers,
employees, consultants or agents of the receiving party; or
|
|
(c)
|
was
subsequently disclosed, otherwise than under an agreement of secrecy
or
non-use, by a third party that had not acquired the information
under an
obligation of confidentiality.
|
|
Nothing
in this Paragraph 10.1 shall be construed as precluding Licensor
or APAC
from complying with any security disclosure laws and both APAC
and
Licensor acknowledge that the other Party is a public company and
is
required to comply with the disclosure requirements of appropriate
state
and federal securities laws.
|
|
10.2.
|
Preservation
of Privilege.
The Parties agree that they may disclose Confidential Information
in
furtherance of their common legal interest in exploring business
opportunities involving the Patents, including litigation involving
one or
more of such Patents. Such Confidential Information may be subject
to the
attorney-client privilege, work product doctrine or other applicable
privilege. The parties understand and agree that it is their desire,
intention and mutual understanding that the sharing of such Confidential
Information is not intended to, and shall not, waive or diminish
in any
way the confidentiality of such material or its continued protection
under
the attorney-client privilege, work product doctrine or other applicable
privilege. All Confidential Information provided by a party that
is
entitled to protection under the attorney-client privilege, work
product
doctrine or other applicable privilege shall remain entitled to
such
protection under these privileges, this Agreement, and under the
joint
defense doctrine. Nothing in this Section shall be interpreted
to mean
that a party hereto would be prevented from using Confidential
Information
in a legal proceeding against the other party hereto based upon
a dispute
arising out of this Agreement; provided that the other party has
been
notified in advance of such use or disclosure and been afforded
sufficient
opportunity to seek and obtain confidential treatment by the court
or
other entity having jurisdiction over the matter at
hand.
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12
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11.
|
MISCELLANEOUS
|
|
11.1.
|
Notice.
All notices or communications which either party may desire, or
be
required, to give or make to the other shall be in writing and
shall be
deemed to have been duly given or made if and when forwarded by
registered
mail, certified mail, facsimile or recognized overnight courier
to the
address set forth above in this Agreement or to such other address
as a
party shall give to the other in writing delivered at the last
address
specified in the manner prescribed by this
Agreement.
|
|
11.2.
|
No
waiver.
The failure to act upon any default hereunder shall not be deemed
to
constitute a waiver of such
default.
|
|
11.3.
|
Entire
Agreement.
This Agreement constitutes the entire understanding of the parties
with
respect to its subject matter and may not be modified or amended,
except
in writing by the parties. Nothing in this Agreement, whether expressed
or
implied, shall be construed to give any person (other than the
Parties and
their respective permitted successors and assigns), any legal or
equitable
right, remedy or claim under or in respect of this Agreement or
any
covenants, conditions or provisions contained herein, as a third
party
beneficiary or otherwise.
|
|
11.4.
|
Provision
Invalidity.
If for any reason in any jurisdiction in which any provision of
this
Agreement is sought to be enforced, any one or more of the provisions
of
this Agreement shall be held invalid, illegal or unenforceable
in any
respect, such holding shall not affect any other provision of this
Agreement and this Agreement shall be construed as if such invalid,
illegal or unenforceable provision had never been contained
therein.
|
|
11.5.
|
Counterparts.
This Agreement may be executed in several counterparts, each of
which
shall constitute an original, but all of which together shall constitute
one and the same instrument. A faxed or e-mailed copy of a signature
page
shall be considered an original for purposes of this
Agreement.
|
|
11.6.
|
Headings.
The headings contained in this Agreement have been inserted for
convenient
reference only and shall not modify, define, expand or limit any
of the
provisions of this Agreement.
|
|
IN
WITNESS WHEREOF,
the Parties have executed this Agreement on the Effective
Date.
|
|
eRoom
System Technologies, Inc.
|
ACACIA
PATENT ACQUISITION LLC
|
|
|
By:/s/
Xxxxx Xxxxxxxxx
|
By:
/s/ Xxxxxxx Xxx
|
|
|
Print
Name: Xxxxx Xxxxxxxxx
|
Print
Name: Xxxxxxx Xxx
|
|
|
Title:
CEO
|
Title:
Executive Vice President
|
|
|
Date:
November 11, 2008
|
Date:
November 11, 2008
|
Page
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12
EXHIBIT
A
U.S.
PATENTS & APPLICATIONS
|
US
Patent
No.
|
US
Application
No.
|
Filing
Date
|
Issue
Date
|
Title
|
|
4939352
|
07/430,889
|
11-02-1989
|
07-03-1990
|
CREDIT
CARD BILLING SYSTEM
|
|
|
*07/547,322
|
07-02-1990
|
|
|
|
4883948
|
07/338,740
|
04-17-1989
|
11-28-1989
|
CREDIT
CARD STORAGE SYSTEM
|
|
4857714
|
07/170,310
|
03-18-1988
|
08-15-1989
|
CREDIT
CARD STORAGE SYSTEM
|
|
*
|
EXPIRED
OR ABANDONED
|
FOREIGN
PATENTS & APPLICATIONS
|
Foreign
Patent
or Publication No.
|
Application
No.
|
Publication
Date
|
Country
|
Title
|
|
WO9013080A1
|
WO1989US0003494
|
01-11-1990
|
WTO
|
CREDIT
CARD STORAGE SYSTEM
|
|
JP04504768T2
|
JP1989000509548
|
08-20-1992
|
JAPAN
|
|
|
EP0468961B1
|
EP1989000910033
|
03-01-1995
|
EU
|
CREDIT
CARD STORAGE SYSTEM
|
|
DE68921494C0
|
DE1989068921494
|
04-06-1995
|
DE
|
DURCH
KREDITKARTE BETAETIGTER SAFE.
|
|
CA1327240A1
|
CA1989000608320
|
02-22-1994
|
CA
|
CREDIT
CARD STORAGE SYSTEM
|
|
BR8907887A
|
BR1989000007887
|
12-24-1991
|
BR
|
SISTEMA
DE ARMAZENAMENTO OPERAVEL COM CARTAO DE CREDITO
|
|
AU4201489A1
|
AU1989000042014
|
11-16-1990
|
AU
|
CREDIT
CARD STORAGE SYSTEM
|
|
AT0119304E
|
AT1989000910033
|
03-15-1995
|
AT
|
DURCH
KREDITKARTE BETAETIGTER SAFE.
|
Page
1 of
12
