CONFIDENTIAL LICENSE AGREEMENT
Exhibit
10.1
This
Confidential License Agreement (hereafter the “Agreement”) is made between
NeoMedia Technologies Inc., a Delaware corporation (“NeoMedia”), on the one
hand, and eBay Inc. (“eBay”), a Delaware corporation, on the other
hand.
WHEREAS, NeoMedia is the sole owner of
certain patents covering bar code technology and other patents covering search
technology;
WHEREAS, Y.A. Global Investments L.P.
(“Y.A. Global”) is a secured creditor of NeoMedia and holds security interests
in substantially all of NeoMedia’s property including NeoMedia
patents;
WHEREAS,
Y.A. Global has consented to NeoMedia entering into this Agreement pursuant to a
Non-Disturbance Agreement of even date herewith in the form attached hereto as
Exhibit “B”;
WHEREAS, NeuStar Inc. (“NeuStar”) had
an exclusive right to grant certain sublicenses under the “Amended and Restated
License Agreement” between NeuStar and NeoMedia dated January 22,
2010;
WHEREAS, NeoMedia seeks to license its
patents covering barcode technology and search technology to
eBay;
WHEREAS, eBay desires to obtain freedom
to operate in the bar code and, possibly, the search technology
areas;
WHEREAS the Parties have negotiated in
good faith, entered into a binding Term Sheet dated June 22, 2010 and now desire
to enter into this Agreement; and
THEREFORE,
with due consideration hereby acknowledged, NEOMEDIA and eBay agree as
follows:
DEFINITIONS
For the
purposes of this Agreement, the following words and phrases shall have the
following meanings:
1. “AFFILIATE”
shall mean any present or
future subsidiary,
parent, sister company, or other corporation, firm, business or entity that
controls, is controlled by, or is under common control of, that PARTY or any of
its subsidiaries, as of or after the EFFECTIVE DATE. The term
“control” as used in this Agreement, means the possession, directly or
indirectly, solely or jointly, of the power to direct or cause the direction of
management, actions or policies of a legally recognizable entity, whether
through the ownership of voting shares, by contract, or
otherwise. The rights conferred by this Agreement on EBAY shall
automatically and immediately extend to any entity that is not an AFFILIATE of
or a part of EBAY as of the EFFECTIVE DATE and subsequently becomes an AFFILIATE
or a part of EBAY (e.g., a future AFFILIATE or acquired business), and shall extend to or
continue to be retained by any entity that is an AFFILIATE or a part of EBAY as
of the EFFECTIVE DATE and subsequently loses its status as an AFFILIATE
or part of EBAY (e.g., a former AFFILIATE or divested business). If
the loss of status as an AFFILIATE is the result of an acquisition by a third
party or parties (through a purchase of shares, business combination, merger or
otherwise by a third party), then the rights hereunder shall extend only to the
former AFFILIATE and its activities as such activities existed at the time of
divestment and reasonable modification thereto, not to the third party
acquirer’s preexisting activities or activities that are new
and unrelated to such pre-divestiture activities.
2. “BARCODE
TECHNOLOGY” shall mean any technology
associated with a machine-readable symbol (e.g., barcode, alpha-numeric
character strings, linear code, graphic, wired or wireless electronic signal, or
other similar representation or figure) and any use
thereof, including but not limited, encoding the symbol, decoding the
symbol or accessing information based on the symbol and includes U.S. Patent
Nos. 7,383,209; 6,993,573;6,865,608; 6,542,933; 6,434,561; 6,199,048; 6,108,656;
5,978,773; 7,430,588, and 5,933,829 and related patents and applications
worldwide. It does not include patents identified as “SEARCH
TECHNOLOGY.”
3. “COVERED
PRODUCT” shall mean any past, present or future application, product, apparatus,
component, machine, system, module, manufacture, software, design, composition
of matter, service, process, method or technology made, used, sold, offered for
sale, advertised, provided, imported, exported, offered, distributed, supplied,
designed, tested, or developed by, on, for, to, through, or on behalf of, EBAY
that, in the absence of a license granted pursuant to this Agreement, would
allegedly infringe, either directly or indirectly, in whole or in part, any of
the PATENT RIGHTS.
4. “EBAY”
shall mean eBay Inc., PayPal, Inc. and their predecessors, successors and
AFFILIATES.
5. “EBAY
THIRD PARTIES” shall mean EBAY’s customers, buyers, sellers, users, developers,
manufacturers, promoters, advertisers, resellers, and/or distributors, and any
developer, supplier, vendor or manufacturer that supplies or incorporates
components, steps, features or portions of the COVERED PRODUCTS.
6. “EFFECTIVE DATE” shall mean the last date on which this
Agreement has been fully executed by all PARTIES.
7. “INITIAL LICENSE
FEE” shall have the meaning set forth in
Exhibit A attached hereto.
8. “INITIAL
TERM” shall mean the period from the
EFFECTIVE DATE to December 31, 2015.
9. “INITIAL TERM (SEARCH TECHNOLOGY)” shall mean the period from the date of the exercise of
the option to license the SEARCH TECHNOLOGY portfolio to December 31,
2015.)
10. “NEOMEDIA” shall mean: (a) NeoMedia Technologies Inc.
and its predecessors, successors and
AFFILIATES,
and (b) all
entities controlled by NeoMedia Technologies
Inc., and their predecessors, successors
and AFFILIATES.
11. “PARTY” or “PARTIES” shall mean NEOMEDIA and/or EBAY.
12. “PATENT
RIGHTS” shall mean any patent or patent application worldwide, presently
existing, acquired
or created in the future owned or controlled by NEOMEDIA that relate to
BARCODE TECHNOLOGY (and SEARCH
TECHNOLOGY, only if
EBAY exercises an option to license the SEARCH TECHNOLOGY portfolio)
including but not limited to: (a) all parents, continuations,
continuations-in-part, divisionals, reissues, and re-examinations of the
forgoing patents or patent applications; (b) all patent applications or patents
claiming priority to any of the foregoing patents or claiming priority to any
application that led to any of foregoing patents; and (c) all foreign
counterparts to any of the foregoing. The current list of worldwide
patents and patent applications in the BARCODE
TECHNOLOGY portfolio comprising PATENT RIGHTS is attached as Appendix
A. The current list of worldwide patents and patent applications in
the SEARCH TECHNOLOGY portfolio comprising PATENT RIGHTS is attached as Appendix
B.
13. “SEARCH TECHNOLOGY” shall mean any technology
associated with the use of a machine-readable symbol to access information and
provide, among other things, geographic, directional or proximity type of data
and includes U.S. Patent Nos. 6,766,363; 6,675,165; 6,651,053; and 6,430,554,
and related patents and applications worldwide.
NON-EXCLUSIVE
LICENSE
14. NEOMEDIA
hereby grants to EBAY, effective immediately, for the INITIAL TERM, an
irrevocable, nonexclusive, worldwide license, under the PATENT RIGHTS to use,
make, have made, sell, offer to sell, modify, import, export, and otherwise
offer, dispose of, distribute, display, advertise and/or promote any COVERED
PRODUCT directly or indirectly through any channel, including through multiple
tiers of distribution. The license grant herein also extends to EBAY
THIRD PARTIES solely in their role as EBAY THIRD PARTIES. For the
sake of clarity, the license granted herein does not extend to EBAY THIRD
PARTIES except when
they are performing in their role as an EBAY customer, buyer, seller,
user, developer, manufacturer, promoter, advertiser, reseller, and/or
distributor or as an EBAY developer, supplier, vendor or
manufacturer that supplies or incorporates components, steps, features or
portions of the COVERED PRODUCTS. The license is not otherwise
sub-licensable.
15. At
the time that NeuStar’s exclusive right to grant licenses to third
parties with respect to 2D barcode Registry and Clearinghouse, under the
“Amended and Restated License Agreement” dated January 22, 2010, has expired or
reverted to a non-exclusive license right, then all such license rights shall
automatically and immediately vest with EBAY and EBAY THIRD PARTIES on a
non-exclusive and non-sublicenseable license basis consistent with, and
retroactive to the effective date of, the license, release and covenant not to
xxx rights set forth in this Agreement. Nothing contained in this
Paragraph is intended to, nor shall be construed to, expand EBAY’s rights with
respect to the PATENT RIGHTS as otherwise set forth herein.
16. If
NEOMEDIA acquires ownership or exclusive rights to U.S. Patent No. 6,101,534 and
any related patents or applications, then such rights shall automatically and
immediately vest with EBAY and EBAY THIRD PARTIES on a non-exclusive and
non-sublicenseable license basis consistent with the license, release and
covenant not to xxx rights set forth herein for the SEARCH TECHNOLOGY
portfolio. NEOMEDIA has
no obligation to make any attempt to acquire any such patents or
applications.
COVENANTS AND XXXXXXXXXXXXXXX
00. During the INITIAL TERM of
this Agreement and any renewal terms, NEOMEDIA hereby covenants not to
xxx EBAY, or EBAY THIRD PARTIES that are acting solely in their role as EBAY
THIRD PARTIES, for infringement of any PATENT RIGHTS. The
covenant set forth in this paragraph shall run with the PATENT RIGHTS and bind
any successor holder(s) of any of the PATENT RIGHTS and any assignees of
NEOMEDIA.
18. During the INITIAL TERM of this Agreement and any
renewal terms, NEOMEDIA hereby covenants
that it will not xxx, or promote, sponsor,
induce or encourage or voluntarily cooperate in a lawsuit that is based on the
PATENT RIGHTS against EBAY (except for and only to recover any payments that
EBAY has failed to make on the amounts due under this Agreement) or EBAY THIRD PARTIES that
are acting solely in their role as EBAY THIRD PARTIES. NEOMEDIA
specifically covenants that it will not join, cooperate or support any lawsuit
brought by NeuStar or Y.A. Global against EBAY or EBAY THIRD PARTIES that is
based on the PATENT RIGHTS, unless such
joinder, cooperation or support is required by law (including applicable
securities law), regulation, subpoena, validly served discovery requests issued
in connection with pending litigation, or judicial order or
process. Such required joinder, cooperation or support, if any, shall
be limited to, and provided only to the extent that, it is required by
law. This covenant shall terminate immediately if EBAY breaches the
covenant set forth in Paragraph 19, below. Further, nothing contained
herein in intended to be, nor shall be construed as, a restriction on or waiver
of NEOMEDIA’s right to bring a claim, proceeding or lawsuit with respect to the
PATENT RIGHTS against any party not covered by the license granted hereunder or
to bring an action to enforce this Agreement in accordance with Paragraphs 32
and 33.
19. During
the Initial Term of this Agreement, and any renewal terms, EBAY hereby covenants
not to xxx, or promote, sponsor, induce or encourage or voluntarily cooperate in
any lawsuit or administrative proceeding against NEOMEDIA that challenges the
validity or enforceability of the PATENT RIGHTS or NEOMEDIA’s rights to own or
license the PATENT RIGHTS. EBAY
specifically
covenants that it will not join, cooperate or support any lawsuit brought
against NEOMEDIA that is based on the PATENT RIGHTS, unless such joinder, cooperation or support is
required by law (including applicable securities law), regulation, subpoena,
validly served discovery requests issued in connection with pending litigation,
or judicial order or process. Such required joinder, cooperation or
support, if any, shall be limited to, and provided only to the extent that, it
is required by law. This covenant shall terminate immediately if
NEOMEDIA breaches the covenant set forth in Paragraphs 17 or 18,
above. Further, nothing contained herein in intended to be, nor shall
be construed as, a restriction on or waiver of EBAY’s right to bring an action
to enforce this Agreement in accordance with Paragraphs 32 and
33.
20. During the INITIAL TERM of
this Agreement and any renewal terms, NEOMEDIA hereby covenants that it
will fully defend and indemnify EBAY and EBAY THIRD PARTIES against any third
party (including NeuStar and Y.A. Global) claims, proceedings or lawsuits
relating to or arising from the PATENT RIGHTS. This indemnification
obligation does not extend to any claim that EBAY or EBAY THIRD PARTIES infringe
a third party patent. This indemnification obligation is limited in
monetary amount to the higher of [REDACTED],
(or [REDACTED] if EBAY exercises its
option to license the SEARCH TECHNOLOGY portfolio), or the actual amounts paid by EBAY under this Agreement,
and is intended to cover fees and expenses (including attorneys’ fees and
expenses), and costs of settlement incurred by EBAY. At EBAY’s
option, EBAY may assume sole control of the defense of any claim, proceeding or lawsuit brought against EBAY or EBAY THIRD PARTIES,
including choice of counsel, and settlement of any claim, proceeding or
lawsuit but solely
with respect to EBAY. NEOMEDIA also agrees to refuse to participate in, or grant assistance
as an adverse party or as an adverse witness (subject to compulsory
legal process which requires the production of documents, electronically stored
information, and tangible things, or testimony) in any such claims, proceedings
or lawsuits.
21. Notwithstanding anything contained in this Agreement to
the contrary, NEOMEDIA shall have the sole and exclusive right to prosecute
infringement actions with respect to the PATENT RIGHTS, provided however, that
NEOMEDIA shall have no obligation to commence or prosecute such
actions.
22. NEOMEDIA
hereby covenants that it will use its best
efforts: (i) to obtain from NeuStar (and its affiliates) a
covenant not to xxx and full releases under the NEOMEDIA patents for EBAY and
EBAY THIRD PARTIES retroactive to the EFFECTIVE DATE, or in the alternative, (ii) to enter into an agreement
with NeuStar that terminates all of NeuStar’s exclusive rights to license any
NEOMEDIA patents, effective on or prior to the EFFECTIVE
DATE.
23. Contemporaneously with the execution of this
Agreement,
Y.A. Global, NEOMEDIA and EBAY will enter
into a
Non-Disturbance Agreement (the
“Non-Disturbance Agreement”) in the form attached hereto as Exhibit
B.
RELEASES
24. Except
for obligations created by this Agreement, NEOMEDIA and its respective officers,
directors, shareholders, members, employees, attorneys, agents, insurers,
representatives, predecessors, successors in interest, assignors or assignees,
hereby knowingly, voluntarily, unconditionally and irrevocably release and
forever discharge EBAY, and its officers, directors, employees, attorneys,
agents, insurers, representatives, predecessors, successors in interest,
assignors or assignees, from, without limitation, any and all claims, actions,
causes of action, suits, damages, injuries, duties, rights, obligations,
liabilities, adjustments, responsibilities, judgments, trespasses and demands,
whatsoever, in law or in equity, whether or not known or unknown, suspected or
unsuspected to exist, or claimed or unclaimed, which they have ever had or now
have, raised or could have raised relating to conduct or activities occurring
prior to the EFFECTIVE DATE.
25. Except
for obligations created by this Agreement, EBAY and its respective officers,
directors, shareholders, members, employees, attorneys, agents, insurers,
representatives, predecessors, successors in interest, assignors or assignees,
hereby knowingly, voluntarily, unconditionally and irrevocably release and
forever discharge NEOMEDIA, and its officers, directors, employees, attorneys,
agents, insurers, representatives, predecessors, successors in interest,
assignors or assignees, from, without limitation, any and all claims, actions,
causes of action, suits, damages, injuries, duties, rights, obligations,
liabilities, adjustments, responsibilities, judgments, trespasses and demands,
whatsoever, in law or in equity, whether or not known or unknown, suspected or
unsuspected to exist, or claimed or unclaimed, which they have ever had or now
have, raised or could have raised relating to conduct or activities occurring
prior to the EFFECTIVE DATE.
26. Except for obligations created by this Agreement,
NEOMEDIA and its officers, directors, shareholders, members, representatives,
attorneys, agents, predecessors, successors and assigns, hereby irrevocably and
unconditionally release and forever discharge EBAY and any person or entity
using, making, selling, purchasing, offering to sell, importing or otherwise
offering, disposing of, distributing, advertising or promoting, designing,
developing, manufacturing, incorporating, or supplying, whether directly or
indirectly, any application, product, apparatus, machine, system, website,
manufacture, composition of matter, service, process, method, testing or
technology owned or controlled by EBAY, in whole or in part, from any and all
claims, demands, causes of actions, and judgments related to any of the
foregoing, whether or not now known, suspected or claimed, which they have ever
had, now have, raised or could have raised relating to any past (i.e., prior to
the EFFECTIVE DATE) infringement (including direct, or contributory
infringement, or inducement thereof) of the PATENT RIGHTS.
27. The
PARTIES hereto acknowledge the existence of Section 1542 of the Civil Code of
the State of California which reads as follows:
A general
release does not extend to claims which the creditor does not know or suspect to
exist in his favor at the time of executing the release, which if known by him
must have materially affected settlement with the debtor.
28. The
PARTIES to this Agreement hereby respectively waive and relinquish all rights
and benefits under Civil Code Section 1542 and any law or legal principle of
similar effect in any jurisdiction with respect to the releases granted
herein.
PAYMENTS
AND OPTIONS TO EXTEND AND EXERCISE
29. EBAY shall pay NEOMEDIA the Initial License Fee, the
option fee if EBAY chooses to exercise its option to include the SEARCH
TECHNOLOGY portfolio in the PATENT RIGHTS, and any extension fee(s) if EBAY
chooses to exercise its option(s) to extend the term of the license provided for
in this Agreement, in accordance with the provisions of Exhibit
A. However, if EBAY fails to pay the Initial License Fee as and when
provided in Exhibit A, then this Agreement shall be automatically void ab initio
and of no further force and effect whatsoever, with the sole exception that the
confidentiality provisions set forth in Paragraph 44-46 shall survive and remain
in effect in accordance with their terms.
30. NEOMEDIA
provides to EBAY a first right of refusal as set
forth in Exhibit A.
31. Each
PARTY shall be responsible for its own expenses incurred with respect to this
Agreement. NEOMEDIA will be responsible for any and all taxes,
duties, and tariffs levied on it with respect to
the consideration paid by EBAY in connection with this
Agreement.
RESOLUTION
OF DISPUTES
32. In
the event that any of the PARTIES contends that another PARTY has committed a
breach of its obligations under this Agreement, then the PARTY so contending
shall provide timely written notice describing the alleged breach. Except as otherwise set forth below,
the accused PARTY shall have thirty (30) days to respond by curing the
alleged breach or providing a written notice explaining why it is not in
breach. If, after the accused PARTY has responded, the accusing PARTY
is not satisfied or the PARTIES have not resolved the alleged breach, the
PARTIES shall meet and confer within thirty (30) days following the expiration
of the initial 30-day period to attempt to resolve the dispute. Notwithstanding the foregoing, for a breach constituting
a failure to pay any license fees, extension fees, or option fees set forth in
Exhibit A (other than the Initial License Fee for which there shall be a five
(5) business day cure period), the cure period shall be ten (10) business days
for the initial response and ten (10) business for the obligation to meet and
confer. If the accused PARTY refuses to meet and confer during
the applicable period, the accusing PARTY
may deem the meet and confer requirement to have been satisfied.
33. Any
disputes not resolved under the immediately preceding Paragraph 32, and/or that relate to or arise from the
Agreement shall be resolved in a United States District Court (or if necessary,
state court). The burden will be on the disputing PARTY to initiate
the lawsuit, and such PARTY may initiate the lawsuit as soon as the requirements
of immediately preceding Paragraph 33 have been satisfied. The
prevailing party in any lawsuit under this paragraph shall be entitled to an
award of reasonable attorney’s fees and related expenses.
REPRESENTATIONS AND
WARRANTIES
34. Each
PARTY represents and warrants that: (a) it has the right and authority to enter
into this Agreement on behalf of itself, and to fully comply with the terms and
conditions of this Agreement; (b) it has taken all steps required to enter into
this Agreement; (c) it is entering into this Agreement without violating the
terms of any other agreement or arrangement; (d) it has the power and authority
to perform all transactions, duties and obligations set forth herein; and (e)
the person signing on behalf of such PARTY has the power to bind that
PARTY.
35. NEOMEDIA
represents and warrants, on behalf of itself, and its respective
officers, directors, employees, agents, successors, assigns and exclusive
licensees, that: (a) NEOMEDIA is the sole owner of and has good and valid title
to the PATENT RIGHTS; (b) true, current and accurate lists of worldwide patents
and patent applications that constitute the PATENT RIGHTS appears at Appendices
A and B; (c) NEOMEDIA has the full right, power, and authority to license the
PATENT RIGHTS to EBAY and grant the releases and covenants herein, and this
Agreement constitutes the legal, valid, and binding obligation of NEOMEDIA,
enforceable against NEOMEDIA, in accordance with its terms; (d) other than
NEOMEDIA, no other person or entity owns or controls any interest in the PATENT
RIGHTS appearing at Appendices A and B (except
Y.A. Global, Neustar and non-exclusive licensees of the PATENT RIGHTS, each of
which are identified along with their respective rights in Exhibit C); (e)
except as disclosed in Exhibit D, to NEOMEDIA’s knowledge no person or
entity has taken any enforcement action against the PATENT RIGHTS, including
without limitation, the exercise of any rights or remedies of a secured creditor
under the Uniform Commercial Code; and (f) there are, as of the EFFECTIVE DATE, no
entities (other than AFFILIATES) in which NeoMedia Technologies Inc. has a 25%
or more ownership share.
36. Except
as disclosed in Exhibit D, NEOMEDIA represents and warrants, on behalf of
itself, and its officers, directors, employees, agents, successors, assigns and
exclusive licensees, that to the best of its knowledge all issued patents that
comprise the PATENT RIGHTS are valid and enforceable.
37. Neither
the entering of this Agreement, nor any provision herein, nor the payment of any
consideration provided for herein shall be deemed as an admission by any PARTY
of any fact, wrongdoing, liability, infringement or non-infringement, or of the
validity or invalidity of any of the PATENT RIGHTS or any position taken or
proposed to be taken in any proceeding, nor shall it be deemed an admission as
to any royalties (or the reasonableness of any royalties) or valuation for any
of the technologies, patents, patent applications or other intellectual property
rights covered by or under or referred to in this Agreement.
ASSIGNMENT
38. NEOMEDIA agrees that
this Agreement, including without limitation, the releases, licenses and
covenants not to xxx granted by them herein, shall be binding on any successors
or assigns of NEOMEDIA in ownership
or control of any of the PATENT RIGHTS, except as set forth in the
Non-Disturbance Agreement.
39. NEOMEDIA may assign,
sell, or otherwise transfer any of the PATENT RIGHTS, but only (i) to an
assignee or transferee who shall first agree in writing to assume the
obligations of NEOMEDIA under this Agreement and to observe all rights of EBAY
provided in this Agreement, or (ii) as
provided in the Non-Disturbance Agreement.
40. EBAY may assign this
Agreement, without the consent of NEOMEDIA, to any successor of EBAY by merger or sale of all or substantially all of the
assets of EBAY, provided that any such successor assumes all of the rights and
obligations of EBAY under this Agreement.
TERMINATION
41. Except as expressly set forth in Paragraph 29, or by the
non-breaching party as a result of a breach of this Agreement by the other party
which is not resolved in accordance with Paragraph 32 hereof, this Agreement cannot be
terminated by any PARTY, and will remain in full force and effect for the
INITIAL TERM. At the end of
the INITIAL TERM, EBAY shall have sole
discretion to extend the license granted hereunder as set forth in Exhibit
A.
NOTICES
AND OTHER COMMUNICATIONS
42. Any
notice related to this Agreement shall be in writing and shall be effective when
received by registered mail, personally, or by recognized overnight courier
addressed to the PARTIES respectively, at the following addresses:
|
If
to NEOMEDIA:
Attention: CEO and CFO
Xxx
Xxxxxxxxx Xxxxxxx
Xxxxx
000
Xxxxxxx,
XX 00000
|
If
to EBAY:
General
Counsel
Legal
Dept.
eBay
Inc.
0000
Xxxxxxxx Xxxxxx
Xxx
Xxxx, XX 00000
|
43. Each
PARTY may give written notice of a change of its address to the other PARTY,
which address shall subsequently replace the respective address set forth in the
immediately preceding paragraph of this Agreement.
CONFIDENTIALITY
44. Except
as expressly permitted in Paragraphs 45 and 46 below, each PARTY and its and
their officers, representatives, and attorneys agrees that it will maintain in
confidence and not disclose to third parties: (i) the Agreement or any of its
terms; (ii) any drafts of this Agreement or any correspondence and other
materials or documents drafted, produced, and or exchanged between the parties
in connection with this Agreement; or (iii) the content or the PARTIES’
discussions and negotiations regarding this Agreement. The
information, documents and materials specified in sub-paragraphs (i), (ii) and
(iii) of this paragraph are collectively referred to as the “Confidential
Information”.
45. As
an exception to Paragraph 44 of this Agreement, a PARTY may disclose
Confidential Information to (a) Y.A. Global and
(b) as required
by law, valid subpoena, or court order (including applicable securities laws and
regulations). If any PARTY is ordered or required to produce any
Confidential Information by subpoena or other judicial or governmental order,
law or regulation, that PARTY shall immediately notify the other PARTY in
writing and provide the other PARTY a copy of the subpoena or order, and shall
provide no less than ten (10) business days’ notice of the proposed release of
such information unless such judicial or governmental order requires a shorter
period for compliance, in which case that PARTY must provide notice as soon as
reasonably possible. The disclosing PARTY shall take appropriate
measures to avoid or minimize the release of such information in connection with
the proceedings for which the Confidential Information is sought, including,
where possible, making any such disclosure required by such subpoena, court
order, law or regulation on an “Outside Attorneys’ Eyes Only” basis and pursuant
to either a protective order in such litigation or Local Rules of similar
effect. NEOMEDIA has informed EBAY that NEOMEDIA reasonably
believes that NEOMEDIA will be required to make an SEC Form 8-K filing
disclosing the existence of this Agreement and providing its terms in redacted
form. In connection with that disclosure and any other proposed
governmental disclosure (including any public company disclosure requirement),
NEOMEDIA will: (i) provide to EBAY its proposed disclosure as soon as possible (but
at least three (3) days) prior to the date NEOMEDIA proposes to make such
disclosure, and (ii) reasonably consider any and all suggested changes EBAY
proposes to such disclosure.
46. As
a further exception to Paragraph 44 of this Agreement, EBAY may disclose this
Agreement to any
person or entity entitled to the benefits of the license granted under this
Agreement, or to any person or entity entitled to the benefit of the covenants
not to xxx or releases granted under this Agreement, the fact that such person
or entity has the benefit of or is licensed, has been granted a covenant not to
xxx, and/or has been granted a release, as the case may be, under the PATENT
RIGHTS.
MISCELLANEOUS
PROVISIONS
47. Choice of
Law: This Agreement shall be construed, governed, interpreted
and applied in accordance with the laws of the State of Delaware, without regard
to principles of conflicts of laws, except that questions affecting the
construction and effect of any patent shall be determined by the law of the
country in which the patent was granted.
48. Merger: The
PARTIES hereto acknowledge that this Agreement sets forth the entire agreement
and understanding of the PARTIES hereto as to the subject matter hereof, and
shall not be subject to any change or modification except by the execution of a
written instrument subscribed to by the PARTIES hereto.
49. Authority to
Bind: Any person purporting to have the authority to enter
into this Agreement on behalf of or for the benefit of any PARTY hereby warrants
that he or she has such authority.
50. Rights and Obligations of
Persons Not Parties: Nothing contained in this Agreement shall
be deemed to create rights and obligations in persons not PARTIES hereto other
than as set forth herein.
51. Advice of
Counsel: Each PARTY acknowledges that it has read and
understands this Agreement, has received the advice of counsel in the matter,
and agrees to be bound by its terms.
52. Counterpart
Execution: This Agreement may be executed in multiple
counterparts and by facsimile and/or by e-mail, and all executed counterparts
together shall constitute the original instrument.
53. Severability: If
any provision or any part of any provision of this Agreement shall for any
reason be held to be invalid, unenforceable or contrary to public policy or any
law or judicial decision, then the remaining provisions of this Agreement, and
the remaining portions of any provisions, shall not be affected thereby and
shall remain in full force and effect.
54. Construction of
Agreement: This Agreement is the product of negotiation and
preparation by and among each PARTY hereto and their respective
attorneys. Accordingly, all PARTIES hereto acknowledge and agree that
this Agreement shall not be deemed prepared or drafted by one PARTY or another,
or the attorneys for one PARTY or another, and shall be construed
accordingly.
55. Bankruptcy: All
rights and licenses granted under or pursuant to this Agreement are, and shall
otherwise be deemed to be, for purposes of Section 365(n) of the U.S. Bankruptcy
Code, licenses of rights to “intellectual property” as defined under Section 101
of the U.S. Bankruptcy Code.
56. No Third Party
Beneficiaries: Other than the rights of EBAY THIRD PARTIES set
forth in this Agreement, the Agreement is made and entered into for the sole
protection and benefit of the Parties, and no other person or entity shall be a
direct or indirect beneficiary of or shall have any direct or indirect cause of
action or claim in connection with this Agreement.
IN WITNESS WHEREOF, the
Parties have executed this Agreement on the date set forth below.
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EBAY
INC.
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|
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By:
/s/ Xxxxxxx
X. Xxxx
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By: /s/ Xxxx
Xxxxxxxx
|
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Printed
Name: Xxxxxxx X.
Xxxx
|
Printed
Name: Xxxx
Xxxxxxxx
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Title: CFO &
Secretary
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Title: SVP Legal Affairs
& General Counsel
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Dated: December 21,
2010
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Dated: December 21,
2010
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