EXHIBT 4.1(J)
PATENT PURCHASE AGREEMENT
This PATENT PURCHASE AGREEMENT (this "AGREEMENT") is entered into, as of
the Effective Date (defined below), by and between VocalTec Communications Ltd.,
an Israeli company, with an office at 60 Medinat Xxxxxxxxx Xxxxxx, Xxxxxxxx
00000, Xxxxxx ("SELLER") and Karo Millenium J.P., LLC., a Delaware limited
liability company, with an address at 0000 Xxxxxx Xxxxxx, Xxxxxxxxxx, XX 00000
("PURCHASER"). The parties hereby agree as follows:
1. BACKGROUND
1.1 Seller owns certain patents.
1.2 Seller wishes to sell to Purchaser all right, title, and interest in
such patents and the causes of action to xxx for infringement thereof and other
enforcement rights, with Seller receiving a license to continue to use such
patents in Seller's business.
1.3 Purchaser wishes to purchase from Seller all right, title, and interest
in the Assigned Patent Rights (defined below), with Seller receiving a license
to continue to use such Assigned Patent Right in Seller's business.
2. DEFINITIONS
"ABANDONED ASSETS" means those specific provisional patent applications,
patent applications, patents and other governmental grants or issuances
listed on EXHIBIT C.
"ACQUIRED PATENTS" means those specific patents listed on EXHIBIT A under
the header "Acquired Patents".
"ASSIGNED PATENT RIGHTS" means the Patents and the additional rights set
forth in paragraph 4.2.
"ASSIGNMENT AGREEMENTS" means the agreements assigning ownership of the
Assigned Patent Rights and the Abandoned Assets from the inventors and/or
prior owners to Seller.
"DOCKET" means Seller's or its agents' list or other means of tracking
information relating to the prosecution or maintenance of the Patents
throughout the world, including, without limitation, the names, addresses,
email addresses, and phone numbers of prosecution counsel and agents, and
information relating to deadlines, payments, and filings, which list or
other means of tracking information is current as of the Effective Date.
"EFFECTIVE DATE" means the date set forth as the Effective Date on the
signature page of this Agreement.
"EXCLUDED PATENTS" means all patents and patent applications listed in
EXHIBIT F.
"EXECUTED ASSIGNMENTS" means both the executed and attested Assignment of
Patent Rights in the form attached as EXHIBIT B, the executed Assignment of
Rights in Certain Assets in the form attached as EXHIBIT C, each as signed
by a duly authorized representative of Seller, and the additional documents
Seller may be required to execute and deliver under paragraph 5.3.
"PATENTS" means, excluding the Abandoned Assets and the Excluded Patents,
all (a) patents listed on EXHIBIT A; (b) patents or patent applications (i)
to which any of the patents listed on EXHIBIT A expressly claims priority,
either directly or indirectly or (ii) for which any of the patents listed
on EXHIBIT A expressly forms a basis for priority, either directly or
indirectly; and (c) reissues, reexaminations, extensions, continuations,
continuations in part, continuing prosecution applications, requests for
continuing examinations, divisions, and registrations of any item in the
preceding subparagraphs (a) or (b).
"PROSECUTION HISTORY FILES" means all files, documents and tangible things
constituting, comprising or relating to the investigation, evaluation,
preparation, prosecution, maintenance, defense, filing, issuance,
registration, assertion or enforcement of the Patents.
"TRANSMITTED COPY" has the meaning set forth in paragraph 8.10.
3. TRANSMITTAL, REVIEW, CLOSING CONDITIONS AND PAYMENT
3.1 TRANSMITTAL. Within fourteen (14) calendar days following the later of
the Effective Date or the date Purchaser receives a Transmitted Copy of this
Agreement executed by Seller, Seller will send to Purchaser the items identified
on EXHIBIT D (the "INITIAL DELIVERABLES"). Seller acknowledges and agrees that
Purchaser may reasonably request, within fourteen (14) business days following
delivery to the Purchaser of the Initial Deliverables, and Seller will promptly
deliver to Purchaser, additional documents based on Purchaser's review of the
Initial Deliverables (such additional documents and the Initial Deliverables
are, collectively, the "DELIVERABLES"), and that as a result of Purchaser's
review, the lists of Patents on EXHIBITS A and B and the list of Abandoned
Assets on EXHIBIT C, may be revised by Purchaser, with prior mutual agreement of
Seller (evidenced by one or more Executed Assignments), before the Closing to
conform these lists to the definition of Patents (and these revisions may
therefore require the inclusion of additional provisional patent applications,
patent applications, and patents on EXHIBIT A and B or EXHIBIT C). If originals
of the Deliverables are not available and delivered to Purchaser prior to
Closing, Seller will cause such originals of the Deliverables to be sent to
Purchaser or Purchaser's representative promptly if and after such originals are
located.
3.2 CLOSING. The closing of the sale of the Assigned Patent Rights and the
assignment of the Abandoned Assets hereunder will occur when all conditions set
forth in paragraph 3.3 have been satisfied or waived and the payment set forth
in paragraph 3.4 is made (the "CLOSING"). Purchaser and Seller will use
reasonable efforts to carry out the Closing within thirty (30) calendar days
following the later of the Effective Date or the date on which the last of the
Deliverables was received by Purchaser.
3.3 PURCHASER'S CLOSING CONDITIONS. The following are conditions precedent
to Purchaser's obligation to make the payment in paragraph 3.4.
(a) SIGNATURE BY SELLER. Seller executed this Agreement and delivered
a Transmitted Copy and two (2) executed originals of this Agreement to
Purchaser.
(b) TRANSMITTAL OF DOCUMENTS. Seller delivered to Purchaser all the
Deliverables.
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(c) COMPLIANCE WITH AGREEMENT. Seller performed and complied in all
material respects with all of the obligations under this Agreement that are
to be performed or complied with by it on or prior to the Closing (provided
that, unless Purchaser provides to Seller prior to or at the Closing
written evidence that as of the Closing Seller has not performed and
complied in all material respects with any of the obligations under this
Agreement that are to be performed or complied with by it on or prior to
the Closing, this condition shall be deemed to have been met). The
preceding sentence shall not be deemed to waive any obligation of Seller,
or liability of Seller hereunder for failing to comply with any of its
obligations under this Agreement before and after the Closing, except to
the extent that Purchaser knew of such noncompliance prior to the Closing
and failed to notify Seller in writing of such noncompliance prior to the
Closing.
(d) REPRESENTATIONS AND WARRANTIES TRUE. As of the Closing, the
representations and warranties of Seller contained in Section 6 are true
and correct (provided that, unless Purchaser provides to Seller prior to or
at the Closing written evidence that as of the Closing any of the
representations and warranties of Seller contained in Section 6 is either
untrue or incorrect, this condition shall be deemed to have been met). The
preceding sentence shall not be deemed to waive any liability of Seller
hereunder in the event that any of the representations and warranties of
Seller contained in Section 6 are untrue or incorrect, except to the extent
that Purchaser knew, prior to the Closing, that such representation or
warranty was untrue or incorrect and failed to notify Seller thereof in
writing prior to the Closing.
(e) PATENTS NOT ABANDONED. As of the Effective Date and the Closing,
none of the Patents have expired, lapsed, been abandoned, or deemed
withdrawn.
(f) DELIVERY OF EXECUTED ASSIGNMENTS. Seller caused the Executed
Assignments to be delivered to Purchaser.
(g) OCS APPROVAL. Seller has received approval of the Office of the
Chief Scientist of the State of Israel to consummate the transactions
contemplated by this Agreement.
3.4 SELLER'S CLOSING CONDITIONS.
(a) SIGNATURE BY PURCHASER. Purchaser executed this Agreement and
delivered a Transmitted Copy and two (2) executed originals of this
Agreement to Seller.
(b) PAYMENT. At Closing, Purchaser will pay to Seller the amount of
Twelve Million Five Hundred Thousand U.S. Dollars (US $12,500,000) by wire
transfer. Prior to Closing, Seller will furnish Purchaser with all
necessary information to make a wire transfer to a designated bank account
of Seller. Prior to such payment by Purchaser under the Agreement, Seller
will deliver to Purchaser's representatives a current, valid certificate of
exemption from withholding from the appropriate Israeli tax authorities.
Purchaser may record the Executed Assignments with the applicable patent
offices only on or after Closing.
(c) REPRESENTATIONS AND WARRANTIES TRUE. As of the Closing, the
representations and warranties of Purchaser contained in Section 7 are true
and correct (provided that, unless Seller provides to Purchaser prior to or
at the Closing written evidence that as of the Closing any of the
representations and warranties of Purchaser contained in Section 7 is
either untrue or incorrect, this condition shall be deemed to have been
met). The preceding sentence shall not be deemed to waive any liability of
Purchaser hereunder in the event that any of the representations and
warranties of Purchaser contained in Section 7 are untrue or incorrect,
except to the extent that Seller knew, prior to the Closing, that such
representation or warranty was untrue or incorrect and failed to notify
Purchaser thereof in writing prior to the Closing.
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3.5 TERMINATION AND SURVIVAL. In the event any of the conditions to Closing
set forth in paragraph 3.3 are not met within one hundred and fifty (150) days
following the Effective Date, each of Purchaser and Seller may terminate this
Agreement by written notice to the other party; provided, however, that Seller
shall only have the right to terminate this Agreement if Seller has complied, in
all material respects, with all of its obligations under this Agreement prior to
such termination. Upon termination, Purchaser will return all documents
delivered to Purchaser under this Section 3 to Seller. The provisions of Section
8 will survive any termination.
4. TRANSFER OF PATENTS AND ADDITIONAL RIGHTS
4.1 ASSIGNMENT OF PATENTS. Upon the Closing, Seller hereby sells, assigns,
transfers, and conveys to Purchaser all right, title, and interest in and to the
Assigned Patent Rights. Seller understands and acknowledges that, if any of the
Patents are assigned to Seller's affiliates or subsidiaries, Seller may be
required prior to the Closing to perform certain actions to establish that
Seller is the assignee and to record such assignments. On or before Closing,
Seller will execute and deliver to Purchaser the Assignment of Patent Rights in
the form set forth in EXHIBIT B (as may be updated pursuant to paragraph 3.1).
4.2 ASSIGNMENT OF ADDITIONAL RIGHTS. Upon the Closing, Seller hereby also
sells, assigns, transfers, and conveys to Purchaser all right, title and
interest in and to all:
(a) inventions, invention disclosures, and discoveries described in
any of the Patents that (i) are included in any claim in the Patents, (ii)
are subject matter capable of being reduced to a patent claim drafted with
a reasonable belief of compliance with the requirements of 35 U.S.C. ss.
112, 35 U.S.C. ss.102, and 35 U.S.C. ss.103 17 in a reissue or
reexamination proceedings brought on any of the Patents, and/or (iii) could
have been included in any of the Patents as a claim drafted with a
reasonable belief of compliance with the requirements of 35 U.S.C. ss. 112,
35 U.S.C. ss.102, and 35 U.S.C. ss.103;
(b) rights to apply in any or all countries of the world for patents,
certificates of invention, utility models, industrial design protections,
design patent protections, or other governmental grants or issuances of any
type related to any of the Patents and the inventions, invention
disclosures, and discoveries therein;
(c) causes of action (whether known or unknown or whether currently
pending, filed, or otherwise) and other enforcement rights under, or on
account of, any of the Patents and/or the rights described in subparagraph
4.2(b), including, without limitation, all causes of action and other
enforcement rights for (i) damages, (ii) injunctive relief, and (iii) any
other remedies of any kind for past, current and future infringement; and
(d) rights to collect royalties or other payments under or on account
of any of the Patents and/or any of the foregoing rights under
subparagraphs 4.2(a), (b) and (c).
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4.3 ASSIGNMENT OF RIGHTS IN CERTAIN ASSETS. Upon the Closing, Seller hereby
sells, assigns, transfers, and conveys to Purchaser all of Seller's right,
title, and interest in and to the Abandoned Assets. On or before Closing, Seller
will execute and deliver to Purchaser the Assignment of Rights in Certain Assets
in the form set forth in EXHIBIT C (as may be updated pursuant to paragraph
3.1).
5. ADDITIONAL OBLIGATIONS
5.1 FURTHER COOPERATION.
(a) At the reasonable request of Purchaser, Seller will execute and
deliver such other instruments and do and perform such other acts and
things that are reasonably necessary for effecting the consummation of the
transactions contemplated hereby, including, without limitation, (i)
execution, acknowledgment, and recordation of other such papers, and using
commercially reasonable efforts to obtain the same from the respective
inventors, as necessary for perfecting and conveying unto Purchaser the
benefit of the transactions contemplated hereby and (ii) using best efforts
to obtain approval of the Office of the Chief Scientist of the State of
Israel to consummate the transactions contemplated by this Agreement.
(b) To the extent any attorney-client privilege or the attorney
work-product doctrine applies to any portion of the Prosecution History
Files retained after Closing under Seller or Seller's representatives
normal document retention policy, Seller will use reasonable efforts to
ensure that, if any such portion of the Prosecution History File remains
under Seller's possession or control after Closing, it is not disclosed to
any third party unless (i) disclosure is ordered by a court of competent
jurisdiction, after all appropriate appeals to prevent disclosure have been
exhausted and (ii) Seller gave Purchaser prompt notice upon learning that
any third party sought or intended to seek a court order requiring the
disclosure of any such portion of the Prosecution History File. In
addition, Seller will continue to prosecute, maintain, and defend the
Patents at its sole expense until the Closing.
(c) Seller will also, at the reasonable request of Purchaser after
Closing, use reasonable efforts to assist Purchaser in providing, and
obtaining, from the respective inventors, prompt production of pertinent
facts and documents, otherwise giving of testimony, execution of petitions,
oaths, powers of attorney, specifications, declarations or other papers and
other assistance reasonably necessary for filing patent applications,
enforcement or other actions and proceedings with respect to the claims
under the Patents.
(d) Purchaser shall compensate Seller for all reasonable and
documented disbursements and time incurred after Closing in connection with
complying with Seller's undertakings under all clauses of paragraph 5.1,
provided that Seller shall have furnished Purchaser an advance, written
estimate of all material fees and costs for such assistance and Purchaser
shall have agreed in writing to pay such fees and costs (provided that if
Purchaser does not so agree in writing, Seller shall not be obligated to
comply with Seller's undertakings under all clauses of paragraph 5.1 and
any non compliance shall not be deemed a breach of this Agreement by
Seller).
(e) Seller shall be solely responsible for any broker's or finder's
fee or any other commission or similar fee, directly or indirectly, on
account of any action taken by Seller in connection with any of the
transactions contemplated under this Agreement, including, without
limitation, any payments to IPinvestments Group. Seller agrees to indemnify
and hold the Purchaser harmless from and against any claim or liability
resulting from any person claiming any such commission or fee, if such
claims shall be contrary to the foregoing statement.
Page 5
5.2 PAYMENT OF FEES. Seller will pay any maintenance fees, annuities, and
the like due or payable on the Patents until the Closing. For the avoidance of
doubt, Seller shall pay any maintenance fees for which the fee is payable (e.g.,
the fee payment window opens) on or prior to the Closing even if the surcharge
date or final deadline for payment of such fee would be after the Closing.
5.3 FOREIGN ASSIGNMENTS. To the extent the Patents include non-United
States patents, Seller will deliver to Purchaser's representatives executed
documents in a form as may be required in the non-U.S jurisdiction in order to
perfect the assignment to Purchaser of the non-U.S. patents and patent
applications.
6. REPRESENTATIONS AND WARRANTIES OF SELLER
Seller hereby represents and warrants to Purchaser as follows that, as of the
Effective Date and as of the Closing:
6.1 AUTHORITY. Seller is a company duly formed and validly existing under
the laws of State of Israel. Seller has the full power and authority and has
obtained all third party consents, approvals, and/or other authorizations
required to enter into this Agreement and to carry out its obligations
hereunder, including, without limitation, the assignment of the Assigned Patent
Rights to Purchaser.
6.2 TITLE AND CONTEST. Seller owns all right, title and interest to the
Assigned Patents Rights, including, without limitation, all right, title and
interest to xxx for infringement of the Patents. To Seller's knowledge, the
Assigned Patent Rights are free and clear of all liens, claims, mortgages,
pledges, security interests or other encumbrances and restrictions of any kind
whatsoever. The Seller is not aware of any actions, suits, investigations,
claims or proceedings that are either pending or in progress, in each case
relating in any way to the Assigned Patent Rights. The Seller is not party to
any contract, agreement, option, commitment, proposal, bid, offer, or right
with, to, or in any person to acquire any of the Assigned Patent Rights.
6.3 GOVERNMENT FINANCING. Except with respect to certain financing provided
by the Office of the Chief Scientist of the Ministry of Industry, Trade and
Labor of the State of Israel, none of the research and development that led to
the inventions which are the subject of the Assigned Patent Rights and none of
the technology or know-how incorporated in those inventions were financed by any
governmental institution.
6.4 EXISTING LICENSES AND OBLIGATIONS. There is no obligation imposed by a
standards-setting organization to license any of the Patents on particular terms
or conditions. Except for the license granted by Purchaser to Seller pursuant to
a separate agreement between the parties, (a) no licenses under the Patents have
been granted to or retained by Seller and (b) after Closing, none of Seller, any
prior owner, or any inventor will retain any rights or interest in the Assigned
Patent Rights. To the Seller's knowledge, no licenses under the Acquired Patents
have been granted to or retained by any prior owner or any inventor. No licenses
under the Patents (excluding the Acquired Patents) have been granted to or
retained by any prior owner or any inventor.
Page 6
6.5 RESTRICTIONS ON RIGHTS. Purchaser will not be subject to any covenant
not to xxx or similar restrictions on its enforcement or enjoyment of the
Assigned Patent Rights or the Abandoned Assets as a result of any prior
transaction related to the Assigned Patent Rights or the Abandoned Assets to
which Seller, Seller's affiliates, or any inventor is a party. To Seller's
knowledge, Purchaser will not be subject to any covenant not to xxx or similar
restrictions on its enforcement or enjoyment of the Assigned Patent Rights or
the Abandoned Assets as a result of any prior transaction related to the
Assigned Patent Rights or the Abandoned Assets to which any non-inventor
assignor to Seller or Seller's affiliates is a party.
6.6 VALIDITY AND ENFORCEABILITY.
(a) None of the Patents or the Abandoned Assets (other than Abandoned
Assets for which abandonment resulted solely from unpaid fees and/or
annuities) has ever been found invalid, unpatentable, or unenforceable for
any reason in any inter partes administrative, arbitration, judicial, or
other proceeding.
(b) To the best of Seller's knowledge, Seller has not received any
notice or information of any kind from any source suggesting the
invalidity, unpatentability, or unenforceability of any claimed subject
matter within the Patents or Abandoned Assets that has ultimately been
allowed, granted, or otherwise deemed patentable by a respective patent
authority or patent office, with the exception of (i) rejections,
objections, or other deficiencies identified by such patent authority or
patent office which were overcome to result in the allowance, grant, or
patenting of such claimed subject matter and (ii) any documents relating to
the examination or consideration by a patent office or patent authority of
any of the patents or patent applications listed in Exhibit G.
(c) To the best of Seller's knowledge, Seller has not received any
notice or information of any kind from any source suggesting the
invalidity, unpatentability, or unenforceability of claims contained within
any of the patent applications within the Patents that have not yet been
subject to substantive examination by a respective patent office or patent
authority.
(d) If any of the Patents is terminally disclaimed to another patent
or patent application, all patents and patent applications subject to such
terminal disclaimer are included in this transaction.
(e) To the extent "small entity" fees were paid to the United States
Patent and Trademark Office for any Patent, such reduced fees were
appropriate at the time of such payment because the payor qualified to pay
"small entity" fees and specifically had not licensed rights in any Patent
to an entity that was not a "small entity."
6.7 CONDUCT. Seller has not, and to Seller's knowledge, no prior owner(s),
nor their respective agents or representatives, have engaged in any conduct, or
omitted to perform any necessary act, the result of which would be reasonably
expected to invalidate any of the Patents or hinder their enforcement,
including, without limitation, misrepresenting the Patents to a standard-setting
organization.
6.8 ENFORCEMENT. In connection with the process relating to the sale of the
Patents, the Seller has prepared an analysis showing certain potential
infringements of the Patents. Seller has not invited any third party to enter
into a license under any of the Patents or the Abandoned Assets. Seller has not
initiated any enforcement action with respect to any of the Patents or the
Abandoned Assets.
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6.9 PATENT OFFICE PROCEEDINGS. To Seller's knowledge, (a) none of the
Patents or the Abandoned Assets have been or are currently involved in any
reexamination, reissue, interference proceeding, or any similar proceeding, and
(b) no such proceedings are pending or threatened.
6.10 FEES. All maintenance fees, annuities, and the like due or payable on
the Patents have been timely paid. For the avoidance of doubt, such timely
payment includes payment of any maintenance fees for which the fee is payable
(e.g., the fee payment window opens) even if the surcharge date or final
deadline for payment of such fee would be in the future.
6.11 ABANDONED ASSETS. According to each applicable patent office, each of
the Abandoned Assets has expired, lapsed, or been abandoned or deemed withdrawn.
6.12 PATENT FAMILY COMPLETE. The Patents include all (a) patents or patent
applications (i) to which any of the Patents directly or indirectly claims
priority, (ii) for which any of the Patents directly or indirectly forms a basis
for priority, and/or (iii) that are co-owned applications that incorporate by
reference, or are incorporated by reference into, the Patents; (b) reissues,
reexaminations, extensions, continuations, continuations in part, continuing
prosecution applications, requests for continuing examinations, divisions, and
registrations of any item in any of the foregoing categories; (c) foreign
patents, patent applications and counterparts relating to any item in any of the
foregoing categories, including, without limitation, certificates of invention,
utility models, industrial design protection, design patent protection, and
other governmental grants or issuances; and (d) any items in any of the
foregoing categories (a) through (c) whether or not expressly listed as Patents
and whether or not claims in any of the foregoing have been rejected, withdrawn,
cancelled, or the like. Notwithstanding the foregoing provisions of this
paragraph 6.12, none of the Excluded Patents listed on EXHIBIT F shall be
included in the Patents.
7. REPRESENTATIONS AND WARRANTIES OF PURCHASER
Purchaser hereby represents and warrants to Seller as of the Effective Date as
follows:
7.1 Purchaser is a limited liability company duly formed, validly existing,
and in good standing under the laws of the jurisdiction of its formation.
7.2 Purchaser has all requisite power and authority to (a) enter into,
execute, and deliver this Agreement and (b) perform fully its obligations
hereunder.
7.3 This Agreement, including all exhibits, annexes and schedules, when
executed and delivered by Purchaser, will constitute the valid, binding and
enforceable obligations of Purchaser.
7.4 No agent, broker, investment banker, person or firm acting in a similar
capacity on behalf of or under the authority of Purchaser is or will be entitled
to any broker's or finder's fee or any other commission or similar fee from,
directly or indirectly, the Purchaser on account of any action taken by
Purchaser in connection with any of the transactions contemplated under this
Agreement. Except to the extent that Seller is obligated to indemnify Purchaser
pursuant to paragraph 5.1(e), Purchaser agrees to indemnify and hold the Seller
harmless from and against any claim or liability resulting from any person
claiming any such commission or fee, if such claims shall be contrary to the
foregoing statement.
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7.5 As of the Closing, and without limiting the representations and
warranties of the Seller or the remedies of the Purchaser hereunder, Purchaser
has conducted an independent legal due diligence examination of the information
and materials relating to the Assigned Patent Rights and the Abandoned Assets
provided to it by the Seller, as the Purchaser and its advisors deemed necessary
with respect to the Assigned Patent Rights or the Abandoned Assets, and has
found the results of such due diligence examination satisfactory.
8. MISCELLANEOUS
8.1 LIMITATION OF LIABILITY. The parties shall be entitled to standard
contractual remedies except as otherwise specified in this Agreement or in a
separate agreement between the parties.
8.2 COMPLIANCE WITH LAWS. Notwithstanding anything contained in this
Agreement to the contrary, the obligations of the parties with respect to the
consummation of the transactions contemplated by this Agreement shall be subject
to all laws, present and future, of any government having jurisdiction over the
parties and this transaction, and to orders, regulations, directions or requests
of any such government.
8.3 CONFIDENTIALITY OF TERMS. Except as may be agreed upon by the parties
in a side letter or other written agreement, the parties hereto will keep the
terms and existence of this Agreement and the identities of the parties hereto
and their affiliates confidential and will not now or hereafter divulge any of
this information to any third party except (a) with the prior written consent of
the other party; (b) as otherwise may be required by law or legal process (as
reasonably determined by the party effecting the dissemination of the relevant
information); (c) during the course of litigation, so long as the disclosure of
such terms and conditions is restricted in the same manner as is the
confidential information of other litigating parties; (d) in confidence to its
legal counsel, accountants, banks, and financing sources and their advisors
solely in connection with complying with or administering its obligations with
respect to this Agreement; (e) by Purchaser, after the Closing, to potential
purchasers or licensees of the Assigned Patent Rights or the Abandoned Assets;
(f) in order to perfect Purchaser's interest in the Assigned Patent Rights or
the Abandoned Assets with any governmental patent office (including, without
limitation, recording the Executed Assignments in any governmental patent
office); or (g) to enforce Purchaser's right, title, and interest in and to the
Assigned Patent Rights or the Abandoned Assets; provided that, in (b) and (c)
above, (i) to the extent permitted by law, the disclosing party will use all
legal means available to minimize the disclosure to third parties, including,
without limitation, seeking a confidential treatment request or protective order
whenever appropriate or available; and (ii) the disclosing party will provide
the other party with at least ten (10) days' prior written notice of such
disclosure. Without limiting the foregoing, Seller will cause its agents
involved in this transaction to abide by the terms of this paragraph, including,
without limitation, ensuring that such agents do not disclose or otherwise
publicize the existence of this transaction with actual or potential clients in
marketing materials, or industry conferences.
8.4 GOVERNING LAW; VENUE/JURISDICTION. This Agreement will be interpreted,
construed, and enforced in all respects in accordance with the laws of the State
of Delaware, without reference to its choice of law principles to the contrary.
Seller will not commence or prosecute any action, suit, proceeding or claim
arising under or by reason of this Agreement other than in the state or federal
courts located in Delaware. Each party irrevocably consents to the jurisdiction
and venue of the courts identified in the preceding sentence in connection with
any action, suit, proceeding, or claim arising under or by reason of this
Agreement.
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8.5 NOTICES. All notices given hereunder will be given in writing (in
English or with an English translation), will refer to Purchaser and to this
Agreement and will be delivered to the address set forth below by (a) personal
delivery or (b) delivery postage prepaid by an internationally-recognized
express courier service:
IF TO PURCHASER IF TO SELLER
Karo Millenium J.P., LLC VocalTec Communications Ltd.
0000 Xxxxxx Xxxxxx 00 Xxxxxxx Xxxxxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000 Xxxxxxxx 00000, Xxxxxx
Attn: Managing Director Attn: CEO
Notices are deemed given on (y) the date of receipt if delivered personally or
by express courier or (z) if delivery is refused, the date of refusal. Notice
given in any other manner will be deemed to have been given only if and when
received at the address of the person to be notified. Either party may from time
to time change its address for notices under this Agreement by giving the other
party written notice of such change in accordance with this paragraph.
8.6 RELATIONSHIP OF PARTIES. The parties hereto are independent
contractors. Nothing in this Agreement will be construed to create a
partnership, joint venture, franchise, fiduciary, employment or agency
relationship between the parties. Neither party has any express or implied
authority to assume or create any obligations on behalf of the other or to bind
the other to any contract, agreement or undertaking with any third party.
8.7 SEVERABILITY. If any provision of this Agreement is found to be invalid
or unenforceable, then the remainder of this Agreement will have full force and
effect, and the invalid provision will be modified, or partially enforced, to
the maximum extent permitted to effectuate the original objective.
8.8 WAIVER. Failure by either party to enforce any term of this Agreement
will not be deemed a waiver of future enforcement of that or any other term in
this Agreement or any other agreement that may be in place between the parties.
8.9 MISCELLANEOUS. This Agreement, including its exhibits and any other
written instruments contemplated herein or hereby, constitutes the entire
agreement between the parties with respect to the subject matter hereof and
thereof and merges and supersedes all prior agreements, understandings,
negotiations, and discussions solely with respect to the subject matter hereof,
but excluding any written agreements or side letters executed by the parties
concurrently with the execution of this Agreement. Neither of the parties will
be bound by any conditions, definitions, warranties, understandings, or
representations with respect to the subject matter hereof other than as
expressly provided herein except as set forth in any written agreements or side
letters executed by the parties concurrently with the execution of this
Agreement. The section headings contained in this Agreement are for reference
purposes only and will not affect in any way the meaning or interpretation of
this Agreement. This Agreement is not intended to confer any right or benefit on
any third party (including, but not limited to, any employee or beneficiary of
any party), and no action may be commenced or prosecuted against a party by any
third party claiming as a third-party beneficiary of this Agreement or any of
the transactions contemplated by this Agreement. No oral explanation or oral
information by either party hereto will alter the meaning or interpretation of
this Agreement. No amendments or modifications will be effective unless in
writing signed by an authorized representative of each of the parties. The terms
and conditions of this Agreement will prevail notwithstanding any different,
conflicting or additional terms and conditions solely with respect to the
subject matter hereof that may appear on any letter, email or other
communication or other writing not expressly incorporated into or contemplated
by this Agreement, excluding any written agreements or side letters executed by
the parties concurrently with the execution of this Agreement. The following
exhibits are attached hereto and incorporated herein: EXHIBIT A (entitled
"Patents to be Assigned"); EXHIBIT B (entitled "Assignment of Patent Rights");
EXHIBIT C (entitled "Assignment of Rights in Certain Assets"); EXHIBIT D
(entitled "List of Initial Deliverables"); EXHIBIT E (entitled "Small Entity Fee
Exceptions"); EXHIBIT F (entitled "Excluded Patents"); and EXHIBIT G (entitled
"Exclusions").
Page 10
8.10 COUNTERPARTS; ELECTRONIC SIGNATURE; DELIVERY MECHANICS. This Agreement
may be executed in counterparts, each of which will be deemed an original, and
all of which together constitute one and the same instrument. Each party will
execute and promptly deliver to the other parties a copy of this Agreement
bearing the original signature. Prior to such delivery, in order to expedite the
process of entering into this Agreement, the parties acknowledge that a
Transmitted Copy of this Agreement will be deemed an original document.
"TRANSMITTED COPY" means a copy bearing a signature of a party that is
reproduced or transmitted via email of a .pdf file, photocopy, facsimile, or
other process of complete and accurate reproduction and transmission.
8.11 LANGUAGE. The official language of this Agreement exclusively shall
be, and all communications and agreements between the parties exclusively shall
be made in, the English language. The parties hereto waive any rights they may
have under any other law to have this Agreement written in another language, and
any translation of this Agreement will be solely for the convenience of the
parties hereto.
Page 11
In witness whereof, intending to be legally bound, the parties have
executed this Patent Purchase Agreement as of the Effective Date.
SELLER: PURCHASER:
VOCALTEC COMMUNICATIONS LTD. KARO MILLENIUM J.P., L.L.C.
By: ________________________ By: ________________________
Name: ______________________ Name: ______________________
Title: _____________________ Title: _____________________
EFFECTIVE DATE: MAY 28, 2008
Page 12
EXHIBIT A
PATENTS
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
--------------------------- --------- --------------- ---------------------------------------
5,825,771 US 10/20/1998 Audio transceiver
(08/337,616) (11/10/1994)
Xxxxx, Xxxx; Haramaty, Lior
--------------------------- --------- --------------- ---------------------------------------
IL115902 IL (11/7/1995) Audio transceiver
(IL115902)
Xxxxx, Xxxx; Haramaty, Lior
--------------------------- --------- --------------- ---------------------------------------
5,835,579 US 11/10/1998 Apparatus and methods for preventing
(08/662,635) (6/13/1996) disconnection of facsimile
transmission over a network
Xxxxx, Xxxx; Shogol, Xxxxx; Xxxxx,
Xxxxxx
--------------------------- --------- --------------- ---------------------------------------
6,243,398 US 6/5/2001 System and method for personal
(08/780,739) (1/8/1997) multimedia communication over a
packet switched network
Xxxxxx, Xxxxx Xxx; Xxxxxxx, Xxxxx
--------------------------- --------- --------------- ---------------------------------------
AU735,210 AU (10/19/1997) A system and method for personal
(AU46364/97) multimedia communication over a
packet switched network
Xxxxxx, Xxxxx Xxx; Xxxxxxx, Xxxxx
--------------------------- --------- --------------- ---------------------------------------
6,711,158 US 3/23/2004 System and method for personal
(09/714,061) (11/16/2000) multimedia communication over a
packet switched network
Xxxxxx, Xxxxx Xxx; Xxxxxxx, Xxxxx
--------------------------- --------- --------------- ---------------------------------------
6,714,519 US 3/30/2004 Communications availability
(09/916,220) (7/26/2001)
Luzzatti, Omer; Shem Tov, Ofer;
Shtiegman, Eran; Kimchi, Gur;
Xxxxxx, Xxxx
--------------------------- --------- --------------- ---------------------------------------
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
--------------------------- --------- --------------- ---------------------------------------
6,259,538 US 7/10/2001 Real-time facsimile gateway
(09/006,637) (1/13/1998)
Amit, Rami; Xxxxxx, Xxxxxxx; Xxxxx,
Xxxx
--------------------------- --------- --------------- ---------------------------------------
6,445,681 US 9/3/2002 Method for measuring delay
(09/395,975) (9/15/1999) parameters in a network
Xxxxxxxxxxx, Xxxxxxxx
--------------------------- --------- --------------- ---------------------------------------
6,661,793 US 12/9/2003 Method and apparatus for
(09/233,012) (1/19/1999) reconstructing media
Xxxxxxxxxxx, Xxxxxxxx
--------------------------- --------- --------------- ---------------------------------------
7,142,506 US 11/28/2006 Method and apparatus for
(09/241,857) (2/2/1999) transmitting packets
Xxxxxxxxxxx, Xxxxxxxx
--------------------------- --------- --------------- ---------------------------------------
ACQUIRED PATENTS
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
--------------------------- --------- --------------- ---------------------------------------
5,835,579 US 11/10/1998 Apparatus and methods for preventing
(08/662,635) (6/13/1996) disconnection of facsimile
transmission over a network
Xxxxx, Xxxx; Shogol, Xxxxx; Xxxxx,
Xxxxxx
--------------------------- --------- --------------- ---------------------------------------
6,714,519 US 3/30/2004 Communications availability
(09/916,220) (7/26/2001)
Luzzatti, Omer; Shem Tov, Ofer;
Shtiegman, Eran; Kimchi, Gur;
Xxxxxx, Xxxx
--------------------------- --------- --------------- ---------------------------------------
Page 2
EXHIBIT B
ASSIGNMENT OF PATENT RIGHTS
For good and valuable consideration, the receipt of which is hereby
acknowledged, VocalTec Communications Ltd., an Israeli company, with an office
at 60 Medinat Xxxxxxxxx Xxxxxx, Xxxxxxxx 00000, Xxxxxx ("ASSIGNOR"), does hereby
sell, assign, transfer, and convey unto Karo Millenium J.P., LLC., a Delaware
limited liability company, having an address at 0000 Xxxxxx Xxxxxx, Xxxxxxxxxx,
XX 00000 ("ASSIGNEE"), or its designees, all right, title, and interest that
exist today and may exist in the future in and to any and all of the following
(collectively, the "PATENT RIGHTS"):
(a) the patents listed in the table below (the "PATENTS");
(b) patents or patent applications (i) to which any of the Patents
expressly claims priority, either directly or indirectly, or (ii) for which any
of the Patents expressly forms a basis for priority, either directly or
indirectly;
(c) all reissues, reexaminations, extensions, continuations, continuations
in part, continuing prosecution applications, requests for continuing
examinations, divisions, registrations of any item in the foregoing categories
(a) or (b);
(d) inventions, invention disclosures, and discoveries described in any of
the Patents and/or any item in the foregoing categories (b) or (c) that (i) are
included in any claim in the Patents and/or any item in (b), or (ii) are subject
matter capable of being reduced to an allowable patent claim in a reissue or
reexamination proceedings brought on any of the Patents and/or any item in the
foregoing categories (b) and (c);
(e) all rights to apply in any or all countries of the world for patents,
certificates of invention, utility models, industrial design protections, design
patent protections, or other governmental grants or issuances of any type
related to the Patents any item in any of the foregoing categories (a) through
(d), including, without limitation, under the Paris Convention for the
Protection of Industrial Property, the International Patent Cooperation Treaty,
or any other convention, treaty, agreement, or understanding;
(f) all causes of action (whether known or unknown or whether currently
pending, filed, or otherwise) and other enforcement rights under, or on account
of, any of the Patents and/or any item in any of the foregoing categories (b)
through (e), including, without limitation, all causes of action and other
enforcement rights for
(1) damages,
(2) injunctive relief, and
(3) any other remedies of any kind
for past, current, and future infringement; and
(g) all rights item in any of the foregoing categories (b) through (e) to
collect royalties and other payments under or on account of any of the Patents
and/or any item in any of the foregoing categories (b) through (f).
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
---------------------------- --------- --------------- ---------------------------------------
5,825,771 US 10/20/1998 Audio transceiver
(08/337,616) (11/10/1994)
Xxxxx, Xxxx; Haramaty, Lior
---------------------------- --------- --------------- ---------------------------------------
IL115902 IL (11/7/1995) Audio transceiver
(IL115902)
Xxxxx, Xxxx; Haramaty, Lior
---------------------------- --------- --------------- ---------------------------------------
5,835,579 US 11/10/1998 Apparatus and methods for preventing
(08/662,635) (6/13/1996) disconnection of facsimile
transmission over a network
Xxxxx, Xxxx; Shogol, Xxxxx; Xxxxx,
Xxxxxx
---------------------------- --------- --------------- ---------------------------------------
6,243,398 US 6/5/2001 System and method for personal
(08/780,739) (1/8/1997) multimedia communication over a
packet switched network
Xxxxxx, Xxxxx Xxx; Xxxxxxx, Xxxxx
---------------------------- --------- --------------- ---------------------------------------
AU735,210 AU (10/19/1997) A system and method for personal
(AU46364/97) multimedia communication over a
packet switched network
Xxxxxx, Xxxxx Xxx; Xxxxxxx, Xxxxx
---------------------------- --------- --------------- ---------------------------------------
6,711,158 US 3/23/2004 System and method for personal
(09/714,061) (11/16/2000) multimedia communication over a
packet switched network
Xxxxxx, Xxxxx Xxx; Xxxxxxx, Xxxxx
---------------------------- --------- --------------- ---------------------------------------
6,714,519 US 3/30/2004 Communications availability
(09/916,220) (7/26/2001)
Luzzatti, Omer; Shem Tov, Ofer;
Shtiegman, Eran; Kimchi, Gur;
Xxxxxx, Xxxx
---------------------------- --------- --------------- ---------------------------------------
6,259,538 US 7/10/2001 Real-time facsimile gateway
(09/006,637) (1/13/1998)
Amit, Rami; Xxxxxx, Xxxxxxx; Xxxxx,
Xxxx
---------------------------- --------- --------------- ---------------------------------------
6,445,681 US 9/3/2002 Method for measuring delay
(09/395,975) (9/15/1999) parameters in a network
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
6,661,793 US 12/9/2003 Method and apparatus for
(09/233,012) (1/19/1999) reconstructing media
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
7,142,506 US 11/28/2006 Method and apparatus for
(09/241,857) (2/2/1999) transmitting packets
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
Page 2
Assignor hereby authorizes the respective patent office or governmental
agency in each jurisdiction to issue any and all patents, certificates of
invention, utility models or other governmental grants or issuances that may be
granted upon any of the Patent Rights in the name of Assignee, as the assignee
to the entire interest therein.
The terms and conditions of this Assignment of Patent Rights will inure to
the benefit of Assignee, its successors, assigns, and other legal
representatives and will be binding upon Assignor, its successors, assigns, and
other legal representatives.
IN WITNESS WHEREOF this Assignment of Patent Rights is executed at ________
_________ on ______________________________.
ASSIGNOR:
VOCALTEC COMMUNICATIONS LTD.
By: ________________________
Name: ______________________
Title: _____________________
(SIGNATURE MUST BE ATTESTED)
Page 3
ATTESTATION OF SIGNATURE PURSUANT TO 28 U.S.C. 1746
The undersigned witnessed the signature of _________________ to the above
Assignment of Patent Rights on behalf of VocalTec Communications Ltd. and makes
the following statements:
1. I am over the age of 18 and competent to testify as to the facts in this
Attestation block if called upon to do so.
2. ________________ is personally known to me (or proved to me on the basis
of satisfactory evidence) and appeared before me on _________ __, 2008__ to
execute the above Assignment of Patent Rights on behalf of VocalTec
Communications, Ltd.
I declare under penalty of perjury under the laws of the United States of
America that the statements made in the two (2) numbered paragraphs immediately
above are true and correct.
EXECUTED on ___________________(date)
_____________________________________
Print Name: _____________________________
Page 4
EXHIBIT C
ASSIGNMENT OF RIGHTS IN CERTAIN ASSETS
For good and valuable consideration, the receipt of which is hereby
acknowledged, VocalTec Communications Ltd., an Israeli company, with an office
at 60 Medinat Xxxxxxxxx Xxxxxx, Xxxxxxxx 00000, Xxxxxx ("ASSIGNOR"), does hereby
sell, assign, transfer, and convey unto Karo Millenium J.P., LLC., a Delaware
limited liability company, having an address at 0000 Xxxxxx Xxxxxx, Xxxxxxxxxx,
XX 00000 ("ASSIGNEE"), or its designees, the right, title, and interest in and
to any and all of the following patents (the "CERTAIN ASSETS"):
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
---------------------------- --------- --------------- ---------------------------------------
PCT/US95/14123 WO 11/9/1995 An Audio Transceiver
Xxxxx Xxxx; Haramaty Lior
---------------------------- --------- --------------- ---------------------------------------
EP95939014.7 EP 11/9/1995 An Audio Transceiver
Xxxxx Xxxx; Xxxxxxxx Xxxx
---------------------------- --------- --------------- ---------------------------------------
AU40189/95 AU 11/9/1995 An audio transceiver
Xxxxx Xxxx; Haramaty Lior
---------------------------- --------- --------------- ---------------------------------------
JP07-516110 JP 11/9/1995 An Audio Transceiver
Xxxxx Xxxx; Xxxxxxxx Xxxx
---------------------------- --------- --------------- ---------------------------------------
0000/XXX/00 Xxxxx 11/6/1995 An Audio Transceiver
Xxxxx Xxxx; Haramaty Lior
---------------------------- --------- --------------- ---------------------------------------
FI971997 FI 11/9/1995 An Audio Transceiver
Xxxxx Xxxx; Xxxxxxxx Xxxx
---------------------------- --------- --------------- ---------------------------------------
08/731,848 US 10/21/1996 WAN based system and method for
personal communication
Xxxxx X. Xxxxxx
---------------------------- --------- --------------- ---------------------------------------
PCT/IL97/00334 WO 10/19/1997 A System and Method for Personal
Multimedia Communication Over a
Packet Switched Network
Xxxxxx Xxxxx Xxx; Xxxxxxx Xxxxx
---------------------------- --------- --------------- ---------------------------------------
EP97945073.1 EP 10/19/1997 A System and Method for Personal
Multimedia Communication Over a
Packet Switched Network
Xxxxxx Xxxxx Xxx; Xxxxxxx Xxxxx
---------------------------- --------- --------------- ---------------------------------------
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
---------------------------- --------- --------------- ---------------------------------------
CA2269591 CA 10/19/1997 A System and Method for Personal
Multimedia Communication Over a
Packet Switched Network
Xxxxxx Xxxxx Xxx; Xxxxxxx Xxxxx
---------------------------- --------- --------------- ---------------------------------------
IL129513 IL 10/19/1997 A system and method for personal
multimedia communication over a
packet switched network
Xxxxxx Xxxxx Xxx; Xxxxxxx Xxxxx
---------------------------- --------- --------------- ---------------------------------------
TW115977 TW 10/28/1997 A system and method for personal
multimedia communication over a
packet switched network
Xxxxxx Xxxxx Xxx; Xxxxxxx Xxxxx
---------------------------- --------- --------------- ---------------------------------------
60/245,525 US 11/3/2000 Communication System
Xxxx Xxxx-Tov
---------------------------- --------- --------------- ---------------------------------------
PCT/US01/46240 WO 10/19/2001 Communications Availability
Luzzatti, Omer; Shem Tov Ofer;
Xxxxxxxxx Xxxx; Kimchi Gur; Xxxxxx
Xxxx
---------------------------- --------- --------------- ---------------------------------------
AU25880/02 AU 10/19/2001 Communications availability
Luzzatti, Omer; Shem Tov Ofer;
Xxxxxxxxx Xxxx; Kimchi Gur; Xxxxxx
Xxxx
---------------------------- --------- --------------- ---------------------------------------
PCT/IL00/00569 WO 9/14/2000 Method for Measuring Delay
Parameters in a Network
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
Page 2
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
---------------------------- --------- --------------- ---------------------------------------
EP00960953.8 EP 9/14/2000 Method for Measuring Delay
Parameters in a Network
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
AU73100/00 AU 9/14/2000 Method for Measuring Delay
Parameters in a Network
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
IL148682 IL 9/14/2000 Method for Measuring Delay
Parameters in a Network
Unknown Inventor(s)
---------------------------- --------- --------------- ---------------------------------------
PCT/IL99/00578 WO 11/1/1999 Method and Apparatus for
Reconstructing Media
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
EP99954311.9 EP 11/1/1999 Method and Apparatus for
Reconstructing Media
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
AU10717/00 AU 11/1/1999 Method and apparatus for
Reconstructing Media
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
CN99816498.4 CN 11/1/1999 Method and apparatus for
Reconstructing Media
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
2001/00630DEL India 10/15/2001 Method and apparatus for
Reconstructing Media
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
JP11-595465 JP 7/18/2001 Method and apparatus for
Reconstructing Media
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
IL134325 IL 2/1/2000 Method and apparatus for
transmitting packets
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
STATUS OF THE FOLLOWING PATENT APPLICATIONS IS UNKNOWN:
o AU40189/95
o AU25880/02
o AU73100/00
Page 3
Assignor assigns to Assignee all rights to the inventions, invention
disclosures, and discoveries in the assets listed above, together, with the
rights, if any, to revive prosecution of claims under such assets and to xxx or
otherwise enforce any claims under such assets for past, present or future
infringement.
Assignor hereby authorizes the respective patent office or governmental
agency in each jurisdiction to make available to Assignee all records regarding
the Certain Assets.
The terms and conditions of this Assignment of Rights in Certain Assets
will inure to the benefit of Assignee, its successors, assigns, and other legal
representatives and will be binding upon Assignor, its successors, assigns, and
other legal representatives.
DATED this __ day of ________ 2008.
ASSIGNOR:
VOCALTEC COMMUNICATIONS LTD.
By: _______________________
Name: _____________________
Title: ____________________
Page 4
EXHIBIT D
LIST OF INITIAL DELIVERABLES
Seller will cause the following to be delivered to Purchaser, or
Purchaser's representative, within the time provided in paragraph 3.1 of the
attached Patent Purchase Agreement:
(a) U.S. PATENTS. FOR EACH ITEM OF THE PATENTS THAT IS AN ISSUED UNITED
STATES PATENT, and for each Abandoned Asset that forms the basis for priority
for such issued U.S. patent (whether a patent or similar protection has been
issued or granted),
(i) the following
(A) an original ribbon copy issued by the United States Patent
and Trademark Office,
(B) the original Assignment Agreement(s), if available, or
otherwise a certified copy thereof,
(C) original conception and reduction to practice materials, if
available, or otherwise a copy thereof if available, and
(ii) a copy of
(A) the Docket, and
(B) each relevant license and security agreement.
(b) NON-U.S. For each Live Asset for which a non-United States patent or
similar protection has been issued or granted,
(i) the original ribbon copy or certificate issued by the applicable
government, if available
(ii) copy of each pending foreign application
(iii) the Docket,
(iv) the original Assignment Agreement(s), if available, or otherwise
a certified copy thereof, if available,
(v) a copy of applicant name change, if necessary, and
(vi) a copy of each relevant license and security agreement.
(c) PATENT APPLICATIONS. For each item of the Patents that is a patent
application,
(i) a copy of the patent application, as filed,
(ii) if unpublished, a copy of the filing receipt and the
non-publication request, if available,
(iii) the original Assignment Agreement(s), if available, or otherwise
a certified copy thereof, if available,
(iv) the Docket,
(v) all available conception and reduction to practice materials,
(vi) evidence of foreign filing license (or denial thereof),
(vii) a copy of each relevant license and security agreement, and
(viii) the Prosecution History Files.
(d) In connection with the process relating to the sale of the Patents, the
Seller has prepared an analysis showing certain potential infringements of the
Patents. Seller will deliver such analysis to Purchaser upon the Closing.
(e) THOROUGH SEARCH/DECLARATION. If originals of the Initial Deliverables
are not available and delivered to Purchaser prior to Closing, Seller will cause
(i) such originals of the Initial Deliverables to be sent to Purchaser or
Purchaser's representative promptly if and after such originals are located and
(ii) an appropriate executive officer of Seller to deliver to Purchaser a
declaration, executed by such officer under penalty of perjury, detailing
Seller's efforts to locate such unavailable original documents and details
regarding how delivered copies were obtained. Capitalized terms used in this
EXHIBIT D are defined in the Patent Purchase Agreement to which this EXHIBIT D
is attached.
Page 2
EXHIBIT E
SMALL ENTITY FEE EXCEPTIONS
None. Rest of Exhibit left intentionally blank.
EXHIBIT F
EXCLUDED PATENTS
Excluded Patents shall include the patents and patent applications listed below,
and shall further include all (a) patents or patent applications (i) to which
any of the Excluded Patents directly or indirectly claims priority, (ii) for
which any of the Excluded Patents directly or indirectly forms a basis for
priority, (b) reissues, reexaminations, extensions, continuations, continuations
in part, continuing prosecution applications, requests for continuing
examinations, divisions, and registrations of any item in any of the foregoing
categories; (c) foreign patents, patent applications and counterparts relating
to any item in any of the foregoing categories, including, without limitation,
certificates of invention, utility models, industrial design protection, design
patent protection, and other governmental grants or issuances; and (d) any items
in any of the foregoing categories (a) through (c) whether or not expressly
listed as Excluded Patents and whether or not claims in any of the foregoing
have been rejected, withdrawn, cancelled, or the like.
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
---------------------------- --------- --------------- ---------------------------------------
5,751,968 US 5/9/1996 System and method for distributing
(08/647,072) multi-media presentations in a
computer network
---------------------------- --------- --------------- ---------------------------------------
115,263 Israel 9/12/1995 System and method for distributing
multi-media presentations in a
computer network.
---------------------------- --------- --------------- ---------------------------------------
6,332,153 US 7/31/1996 Apparatus and method for
(08/688,959) multi-station conferencing
---------------------------- --------- --------------- ---------------------------------------
6,519,541 US 6/2/1999 Multiple frequency signal detector
(09/324,159)
---------------------------- --------- --------------- ---------------------------------------
1,159,719 EP 3/14/2000 Jitter Buffer and methods for
control of same
---------------------------- --------- --------------- ---------------------------------------
DE60021708C0 DE 3/14/2000 Jitter Buffer and methods for
control of same
---------------------------- --------- --------------- ---------------------------------------
1,159,719 FR 3/14/2000 Jitter Buffer and methods for
(909608.2) control of same
---------------------------- --------- --------------- ---------------------------------------
1,159,719 LX 3/14/2000 Jitter Buffer and methods for
(909608.2) control of same
---------------------------- --------- --------------- ---------------------------------------
1,159,719 UK 3/14/2000 Jitter Buffer and methods for
(909608.2) control of same
---------------------------- --------- --------------- ---------------------------------------
AT0301354E AT 3/14/2000 Jitter Buffer and methods for
control of same
---------------------------- --------- --------------- ---------------------------------------
6,725,191 US 7/19/2001 Method and apparatus for
(09/909,052) transmitting voice over internet
---------------------------- --------- --------------- ---------------------------------------
121,244 Israel 7/6/1997 A chat room in a computer network
---------------------------- --------- --------------- ---------------------------------------
EXHIBIT G
EXCLUSIONS
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE OF PATENT AND INVENTORS
---------------------------- --------- --------------- ---------------------------------------
5,825,771 US 10/20/1998 Audio transceiver
(08/337,616) (11/10/1994)
Xxxxx, Xxxx; Haramaty, Lior
---------------------------- --------- --------------- ---------------------------------------
XX 000000 IL (11/7/1995) Audio transceiver
(IL 115902)
Xxxxx, Xxxx; Haramaty, Lior
---------------------------- --------- --------------- ---------------------------------------
6,243,398 US 6/8/2001 System and method for
(08/780,739) (1/8/1997) personal multimedia
communication over a packet
switched network
Xxxxxx, Xxxxx Xxx; Xxxxxxx,
Xxxxx
---------------------------- --------- --------------- ---------------------------------------
AU735,210 AU 10/19/1997 System and method for
(AU46364/97) personal multimedia
communication over a packet
switched network
Xxxxxx, Xxxxx Xxx; Xxxxxxx,
Xxxxx
---------------------------- --------- --------------- ---------------------------------------
6,711,158 US 3/23/2004 System and method for
(09/714,061) (11/16/2000) personal multimedia
communication over a packet
switched network
Xxxxxx, Xxxxx Xxx; Xxxxxxx,
Xxxxx
---------------------------- --------- --------------- ---------------------------------------
6,714,519 US 3/30/2004 Communications availability
(09/916,220) (7/26/2001)
Luzzatti, Omer, Shem Tove,
Ofer, Shtiegman, Eran,
Kimchi, Gur, Xxxxxx, Xxxx
---------------------------- --------- --------------- ---------------------------------------
6,445,681 US 9/3/2002 Method for measuring delay
(09/395,975) (9/5/1999) parameters in a network
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
6,661,793 US 12/9/2003 Method and apparatus for
(09/233,012) (1/19/1999) reconstructing media
Xxxxxxxxxxx, Xxxxxxxx
---------------------------- --------- --------------- ---------------------------------------
