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`EXHIBIT 1
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`Agreement Reference Number: L169512
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`PATENT ASSIGNMENT AGREEMENT (“Agreement”) with
`an Effective Time & Date as defined below, between
`INTERNATIONAL BUSINESS MACHDIES CORPORATION, a
`New York corporation (“IBM"), and UNILOC LUXEMBOURG
`S.A. ("BUYER"), a Luxembourg corporation.
`
`WHEREAS, IBM has the right to assign its interest in the Assigned Patents as defined below; and
`WHEREAS, subject to the reservatiOn by IBM of certain rights, IBM desires to assign its ownership
`interest in the Assigned Patents and BUYER desires to acquire such ownership interest in the Assigned Patents;
`Now therefore, in consideration of the premises and mutual covenants herein contained, IBM and
`BUYER agree as follows:
`
`Section 1. Ml'ggment
`
`Subject to all rights granted to others prior to the Effective Time & Date, to IBM’s reservation of rights
`1.1
`set forth in Section 2, and to the terms in Section 3.1, IBM sells, transfers and assigns to BUYER on the
`Effective Time & Date all right, title and interest in and to the Assigned Patents that IBM has as ofthe Effective
`Time & Date, including the right to sue for injunctive relief and damages for infringement of any ofthe
`Assigned Patents.
`
`Except as expressly set forth in this section, BUYER shall be solely responsible for all actions and all
`1.2
`costs whatsoever, including but not limited to taxes, attorneys’ fees and patent office fies in any jurisdiction,
`associated with the perfection of the BUYER’s right, title, and interest in and to each Assigned Patent and
`recordation thereof.
`
`With respect to the Assigned Patents, not later than thirty (30) days alter the Effective Time & Date
`IBM shall deliver to BUYER an executed doctunent having the form and substance of Exhibit B and its
`referenced Exhibit A (attached hereto and also titled Exhibit A). IBM’s execution of such document and its
`timely delivery to BUYER shall fully satisfy IBM’s obligations under this Section 1.2 with respect to Assigned
`Patents.
`
`BUYER shall be solely responsible for all actions and all costs, including attorneys’ fees and patent
`1.3
`office fees in any jurisdiction, having a Due Date on or after the Effective Time & Date and associated with: (i)
`maintaining the enforceability of any of the Assigned Patents; or (ii) further prosecution of any of the Assigned
`Patents.
`IBM and inventors ofthe Assigned Patents shall not be obligated to assist in prosecution or
`maintenance of the Assigned Patents or to execute or have executed additional oaths or declarations after the
`Effective Time & Date except as required to complete any Assigned Patent Applications filed with missing
`parts. BUYER shall not communicate with any IBM employee in connection with this Agreement or the
`Assigned Patents other than through the point of contact set forth in Section 3.3 below. Provided that BUYER
`does not breach its representations or obligations under this Agreement, absent a court order, subpoena or other
`legal obligation IBM will not bring any action in a court or administrative body challenging the enforceability
`of any of the Assigned Patents nor will it voluntarily provide the services of its employees as a witness for that
`purpose in any such action brought by a third party.
`
`Except with respect to the Assigned Patients as expressly set forth in this Agreement, no license,
`1.4
`immunity, ownership interest, or other right is granted under this Agreement, either directly or by implication,
`estoppel, or otherwise.
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`Section 2.
`
`Reserved Rights
`
`IBM reserves and retains, and BUYER hereby grants to IBM, in each case for the benefit of IBM and its
`2.1
`Subsidiaries and its and their successors and assigns, an irrevocable, nonexclusive, worldwide, firlly paid-up,
`royalty free right and license under the Assigned Patents, to make, have made, use, have used, import, have
`imported, license, offer to sell, sell, lease, and otherwise transfer any product or service, and to practice and
`have practiced any method. Such reserved right and license includes the right to grant, without notice or
`accounting and with any required consents hereby deemed granted by BUYER, sublicenscs and releases of the
`same or lesser scope to: (a) any entities that are on the Effective Time & Date, or thereafier become, a
`Subsidiary of IBM or a Subsidiary of one of IBM’s Subsidiaries, such subliccnses including the right of
`sublicensed Subsidiaries to sublicense their Subsidiaries and Surviving in the event any such Subsidiary ceases
`to be a Subsidiary of IBM; (b) any third parties with respect to which IBM or any of its Subsidiaries has granted
`or provided, or has or incurs a duty or obligation to grant or otherwise provide a release, license, immunity,
`covenant not to sue, or similar right or covenant under any Assigned Patents, where such grant, provision, duty
`or obligation is based upon any agreement existing prior to the Efi‘ective Time & Date or upon any promise,
`covenant, representation, conduct or action occurring prior to the Effective Time & Date; (c) any third parties to
`which, on or afier the Effective Time & Date, IBM or any of its Subsidiaries transfers (regardless of whether
`such transfer occurs as a separate transaction or as the result of the transfer of a Subsidiary) a product line or a
`service line covered by any of the Assigned Patents; (d) third parties with respect to [EMS or its Subsidiaries’
`rights in Section 4.2; (e) third parties involved in any activities relating to or arising fi'orn defense, enforcement
`or licensing under any Assigned Patent if BUYER fails to indemnify (including but not limited to the remittance
`of payment for any such losses, costs and expenses related to) the indemnitee in accordance with BUYER’S
`obligations under Section 4.3 within 60 days of indemnitee‘s invoice to BUYER of such losses, costs and/or
`expenses; and (i) any IBM Strategic Partners and their Subsidiaries.
`
`IBM reserves and retains, for the benefit of itself and its Subsidiaries and its and their successors and
`2.2
`assigns, an irrevocable, nonexclusive, worldwide, fully paid-up, royalty fi-ee right to grant immunities from suit
`under each Assigned Patent to: (a) third parties where the suit is based on products, methods, technologies, or
`services to the extent provided directly or indirectly to the third parties by IBM or its Subsidiaries , and (b) third
`parties where such suit, if brought by IBM or its Subsidiaries, would breach a promise or covenant not to sue
`made by IBM or its Subsidiaries prior to the Efi‘ective Time & Date. For purposes of this section, a suit is
`“based on” products, methods, technologies, or services only if the asserted claims of an. Assigned Patent are
`reasonably necessary for the use of such products, methods, technologies or services as provided by IBM or its
`Subsidiary when either used in the environment for which such products, methods, services or technologies
`were provided or used in accordance with a specification provided by IBM or its Subsidiary.
`
`IBM reserves and retains, for the benefit of itself and its Subsidiaries and its and their successors and
`2.3
`assigns, all rights to past, present, and future royalties and other consideration given or to be given in exchange
`for rights with respect to any Assigned Patent arising or accruing under agreements existing prior to the
`Effective Time & Date. IBM further reserves and retains, for the benefit of itself and its Subsidiaries and its
`and their successors and assigns, all such royalties and other consideration arising out of or seeming under any
`release, license, sublicensc, immunity or other right granted by IBM or its Subsidiaries pursuant to any of
`Sections 2.1, 2.2 and 2.6.
`
`BUYER shall not interfere with: (i) any contract or contractual relationship between IBM or its
`2.4
`Subsidiaries and its or their Licensees or the receipt of any right, or the performance of any duty or obligation,
`by or between IBM or its Subsidiaries and its or their Licensees; and (ii) any benefits that IBM or any Licensee
`of IBM gains through such contract or contractual relationship, the receipt of any right, or the performance of
`any duty and obligation thereunder.
`BUYER, for itself, its Subsidiaries, and its and their successors and assigns, agrees not to challenge the
`validity and enforceability of such contracts, duties or obligations on the grounds that they were not of record,
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`or that BUYER, its Subsidiaries, or its or their successors in interest or assigns had no notice of or were
`otherwise unaware of such contracts, duties or obligations.
`BUYER shall make all rights granted and all assignments and exclusive licenses made by BUYER with
`respect to the Assigned Patents subject to the licenses and other rights reserved by IBM and to the agreements,
`rights, duties, and obligations between IBM or its Subsidiaries and its or their Licensees.
`
`2.5 With respect to the licenses and other rights reserved by IBM, the obligations of BUYER under this
`Agreement (other than the payment obligation set forth in Section 3.1), and the agreements, rights, duties, and
`obligations between IBM or its Subsidiaries and its or their Licensees, BUYER agrees to compel its successors
`in interest, assigns and exclusive licensees of each Assigned Patentto abide by terms that are the same as the
`terms of this Agreement and to ensure that IBM or its Subsidiaries and its or their Licensees are designated as
`third party beneficiaries with respect to said terms in all subsequent transfer of rights, assignments and
`exclusive licenses.
`
`IBM reserves the right to license or re-license any Licensees that, by operation of law or for any other
`2.6
`reason, lose rights under the Assigned Patents due to a transfer of rights, assignment or exclusive license of any
`Assigned Patent, where said rights were granted by IBM prior to the Effective Time & Date.
`
`BUYER shall execute all documents and instruments, and shall do all lawful acts, in each case as may
`2.7
`be reasonably necessary, at IBM’s request, to record or perfect the reserved rights of IBM and its Licensees
`under this agreement. Any acts undertaken by BUYER solely under this section 2.7 shall be at IBM’s expense.
`
`In the event Buyer, or any successor in interest, assignee or exclusive licensee of any Assigned Patent,
`2.8
`files any patent application that claims, or is entitled to claim, priority from any Assigned Patent, then such
`patent application and any patent issuing thereon shall be deemed to be an "Assigned Patent" but only for
`purposes of interpreting the obligations of BUYER (including its successors, assigns and exclusive licensees)
`under this Agreement and the rights and licenses reserved by, granted to, or otherwise provided for IBM under
`this Agreement (including those rights and licenses reserved hereunder on behalf of its Subsidiaries, successors,
`and assigns). In no event shall this Section 2.8 be interpreted to expand the rights assigned to BUYER under
`this Agreement.
`
`The term of rights and licenses reserved hereunder shall be from the Effective Time & Date until the
`2.9
`date that the last Assigned Patent expires.
`
`2.10 BUYER on behalf of itself and its Affiliates covenants not to sue for a period of five (5) years from the
`Effective Time and Date, IBM or any ofits Subsidiaries for patent infi'ingement under BUYER Patents. Any
`Acts Men by IBM or any of its Subsigjgies prior to the fifth gmvgram of the Efiecg've IE1: and Dgts
`ereb
`uthoriz
`UYER
`R
`liates. BUYER shall make such covenant
`and authorization binding on any assignee(s) of such BUYER Patents.
`
`Section 3.
`
`Fitment and Communiggg'n
`
`As consideration for the assignment to BUYER under this Agreement, BUYER shall pay to IBM
`3.1
`FIVE HUNDRED THOUSAND US dollars (US$500,000.00) on signing this Agreement, no portion of which
`shall be refundable.
`
`IfIBM does not receive the total payment set forth in this Section 3.1 before 5:00PM Eastern
`Time, on February 5, 2016, IBM shall have the right to void this Agreement ab initio upon written notice to
`BUYER
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`Payments shall be made by wire transfer to:
`
`Director of Licensing
`Intemational Business Machines Corporation
`PNC BANK
`500 First Avenue
`
`Pittsburgh, PA 15219
`Bank Account Number:
`
`1017306369
`
`ABA Routing Number:
`
`043000096
`
`Each party shall pay all taxes imposed by the government, including any political subdivision thereof, of
`3.2
`any country in which said party is doing business, as the result of said party’s furnishing consideration
`hereunder. In the event such a tax becomes payable as a result of a party’s fumishing consideration in respect
`of a sublicense granted to any of its Subsidiaries, said party shall be responsible for determining the amount of
`and paying, or causing said sublicensed Subsidiary to pay, said tax.
`
`Notices and other communications relevant to this Agreement or to any of the Assigned Patents shall be
`3.3
`sent by facsimile, e-mail, by registered or certified mail or by reputable courier to the following address.
`Notices and other communications sent by facsimile shall be effective upon sending if followed within twenty-
`four (24) hours by a mailed confirmation. Notices and other communications sent by mail or courier shall be
`efi‘ective upon deposit with the postal service or with the courier.
`
`For IBM:
`
`For BUYER:
`
`Director of Licensing
`IBM Corporation
`North Castle Drive, MD-NC119
`Armonk, NY 10504-1785
`United States of America
`Facsimile: Ol-9l4-765-4380
`
`President
`Uniloc USA, Inc.
`7160 N. Dallas Pkwy, Suite 380
`Plano, TX. 75024
`
`Facsimile:
`
`E-mail: ipemail@us.ibm.com
`
`sean.burdick@unilocusa.com
`
`An Agreement Reference Number will be assigned to this Agreement upon execution. This number
`3.4
`should be included in all communications and wire transfer payments.
`
`Section 4.
`
`Miscellaneous
`
`Nothing contained in this Agreement shall be construed as conferring any right to use in advertising,
`4.1
`publicity, or other promotional activities any name, trade name, trademark, trade dress or other designation of
`either party hereto or of any of its Subsidiaries. Each party hereto agrees not to use or refer to this Agreement
`or any provision hereof in any promotional activity without the express written approval of the other party.
`
`As between IBM and BUYER, and subject to restrictions appearing above, BUYER, as the acquirer of
`4.2
`IBM’s right, title, and interest in each Assigned Patent, has sole discretion whether or not to institute any action
`or suit against third parties for infringement of any Assigned Patent or to defend any action or suit which
`challenges or concerns the validity of any Assigned Patent. Notwithstanding the above, Buyer agrees not to
`commit Acts of Aggression against IBM Strategic Open Source Software or Implementations of IBM Strategic
`Standards. lfBuyer commits such Acts of Aggression, IBM may, at its option, grant licenses and releases under
`the Assigned Patents for such IBM Strategic Open Source Sofiware or Implementations of IBM Strategic
`Standards. Nothing in this Section 4.2 shall prevent the Buyer from filing a patent infringement lawsuit as a
`counterclaim or a cross-claim against a third party in response to a patent infringement lawsuit filed by that
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`BUYER shall indemnify and hold IBM and its Subsidiaries harmless against all losses, costs and
`4.3
`expenses (including employee time and attorneys‘ fees) arising from BUYER's activities relating to defense,
`enforcement or licensing of any Assigned Patent
`IfBUYER brings or maintains a claim under any Assigned
`Patent against any third party, knowing that such third party is a Licensee, BUYER shall indemnify such third
`party from all losses, costs and expenses arising therefrom.
`
`4.4
`
`IBM represents and warrants:
`(a) it has the full right and power to assign its rights in each Assigned Patent as set forth in Section 1.1;
`(b) there are no outstanding financial liens or security interests in or over the Assigned Patents;
`(e) the IBM Intellectual Property Law department has not received any notice from the USPTO of any
`re—examinations, reissues, interferences, oppositions, or similar proceedings pending involving the Assigned
`Patents; and
`(d) Assigned Patents have never been found invalid or unenforceable in any administrative, arbitration,
`or judicial proceeding.
`(e) to the knowledge of Keith Walker, Business Development Executive, based only on the results of a
`good faith search of an IBM corporate patent licensing database (LFMS) using the list of company names as
`shown in List A, B, and C of Exhibit C as the search terms for the existence of any agreements that grant patent
`license rights to any of such companies, such results did not produce records identifying patent license
`agreements that remain in force: (i) with the third parties identified in List A of Exhibit C under which IBM
`expressly granted a license under the Assigned Patents; (ii) with the third parties identified in List B of Exhibit
`C under which IBM expressly granted a license under those Assigned Patents that claim priority afier the date
`set forth in parentheses following the name of each such third party; and (iii) with the third parties identified in
`List C of Exhibit C under which IBM expressly granted a license under the Assigned Patents that extends
`beyond the date set forth in parentheses following the name of each such third party. This representation does
`not apply to any license or right under the Assigned Patents granted: (iv) by operation of law or equity, (v)
`implicitly, (vi) appurtenant to the sale, lease, license or other transfer of products, soflware, and services, (vii)
`by or through a third party, (viii) appurtenant to participation in a standards setting or open source protection or
`to development, services or technology license agreements, (ix) by or through a parent or afiiliated company not
`listed in Exhibit C that does not have the same root name as the entity identified in Exhibit C or (x) to any
`company not identified in Exhibit C.
`
`IBM MAKES NO REPRESENTATION OR WARRANTY REGARDING THE VALIDITY OR
`ENFORCEABILITY OF ANY ASSIGNED PATENT. IBM MAKES NO OTHER
`
`REPRESENTATIONS, WARRANTIES, OR COVENANTS, EXPRESS OR MPLIED, INCLUDING
`WITHOUT LIMITATION ANY REPRESENTATION, WARRANTY, OR COVENANT THAT THE
`PRACTICE OF ANY INVENTION CLAIMED IN AN ASSIGNED PATENT WILL NOT INFRINGE
`
`ANY OTHER PATENT THAT IS OR WAS AT ANY TIME OWNED BY IBM (AND FOR THE
`AVOIDANCE OF DOUBT, NO LICENSE, EXPRESS OR IMPLIED, IS PROVIDED HEREUNDER
`FOR SUCH INFRINGEMENT), NOR SHALL IBM HAVE ANY LIABILITY WITH RESPECT TO
`INFRINGEMENT BY BUYER 0F PATENTS OR OTHER RIGHTS OF THIRD PARTIES.
`
`BUYER represents and warrants as of the Effective Time & Date that it has the full right and power to
`4.5
`grant the covenant in Section 2.10 on behalfof itself and its Affiliates and that for purposes of this Agreement
`Marathon Patent Group shall be considered an Affiliate of BUYER. BUYER covenants, represents and warrants
`that upon closing of their merger with Marathon Patent Group, Inc., the resulting entity will be bound by the
`terms of this agreement as if it were the original signatory hereto.
`
`This Agreement shall not be binding upon the parties until it has been signed by or on behalf of each
`4.6
`party. No amendment or modification hereof shall be valid or binding upon the parties unless made in writing
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`and signed as aforesaid. Each party specifically disclaims reliance on any representations or warranties not
`embodied in this Agreement.
`
`If any section of this Agreement is found by competent authority to be invalid, illegal or unenforceable
`4.7
`in any respect for any reason, the validity, legality and enforceability of any such section in every other respect
`and the remainder of this Agreement shall continue in efi’ect so long as the Agreement still expresses the intent
`of the parties. If any of the reserved rights of IBM are found to be invalid, illegal or unenforceable in any
`respect for any reason, at IBM’s option this Agreement shall be renegotiated.
`
`This Agreement shall be construed, and the legal relations between the parties hereto shall be
`4.8
`determined, in accordance with the law of the State ofNew York, USA, as such law applies to contracts signed
`and fully performed in such State, without regard to the principles of conflicts of law thereof. As part ofthe
`consideration received hereunder, each of the parties consents to the jurisdiction of any New York State court
`located in the County of New York and any federal court of the United States of America located in the
`Southern District of New York. Each ofthe parties waives all objections to New York venue for any action
`instituted hereunder.
`
`The headings of sections are inserted for convenience of reference only and are not intended to be part
`4.9
`of or to affect the meaning or interpretation of this Agreement.
`
`Each party may disclose the existence of this Agreement and the fact that the Assigned Patents were
`4.10
`assigned hereunder by IBM to BUYER. Each party may use similar terms and conditions in other agreements.
`However, subject to the exceptions provided herein, until the date that the last Assigned Patent expires, each
`party agrees not to disclose the terms of this Agreement to any third party (other than its Subsidiaries) without
`the prior written consent of the other party. This obligation is subject to the following exceptions: disclosure is
`permissible: (a) if required by government or court order or otherwise required by law or any applicable
`securities exchange rules or regulations; (b) if required to enforce rights under this Agreement; (c) by either
`party on a confidential basis, to anyone the discloser reasonably determines has a legitimate need to know; (d)
`to the extent required to record the assignment of the Assigned Patents and the reserved rights and licenses
`contained herein; (e) by IBM or its Subsidiaries to any third party to which IBM or its Subsidiaries has a duty or
`obligation to grant a license, covenant not to sue, immunity or other right under any Assigned Patent.
`
`This Agreement and its Exhibits and their attachments, embody the entire understanding of the parties
`4.11
`with respect to the Assigned Patents and merges all prior discussions between the parties. Neither party shall be
`bound by any condition, definition, warranty, understanding or representation with respect to the subject matter
`hereof other than as expressly provided herein.
`
`This Agreement and any amendments hereto may be signed in one or more counterparts, each of which,
`4.12
`when signed and delivered, shall be deemed to be an original. All such counterparts together shall constitute
`one and the same valid and binding agreement, even if all of the parties have not signed the same counterpart.
`Signatures to this Agreement may be delivered by facsimile, in which case the facsimile copy of an original
`signature shall be deemed to be an original signature.
`
`4.13 EXCEPT AS SET FORTH IN SECTION 4.3, NEITHER BUYER NOR IBM SHALL BE LIABLE,
`WHETHER IN CONTRACT, TORT (INCLUDING NEGLIGENCE AND STRICT LIABILITY) OR
`OTHERWISE, FOR ANY SPECIAL, INDIRECT, INCIDENTAL, PUNITIVE, OR CONSEQUENTIAL
`DAMAGES ARISING HEREUNDER, INCLUDING, BUT NOT LIMITED TO, LOSS OF PROFITS
`OR GOODWLL, BUSINESS INTERRUPTIONS AND CLAIMS OF CUSTOMERS, EVEN IF
`ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. IN NO EVENT SHALL IBM’S
`CUMULATIVE LIABILITY TO BUYER FOR ALL BREACHES OF THIS AGREEMENT,
`INCLUDING BUT NOT LMITED TO BREACH OF REPRESENTATION OR WARRANTY UNDER
`60f”
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`SECTION 4.4, EXCEED FIFTY PERCENT (50%) OF THE TOTAL CONSIDERATION PAID BY
`BUYER T0 IBM AT THE TIME OF THE BREACH, AS SET FORTH IN SECTION 3.1 UNDER THIS
`AGREEMENT.
`
`Except as expressly provided in this Agreement, each party agrees that the other party may prosecute
`4.14
`and maintain its patents and pending applications in its own best interest, and neither BUYER nor IBM shall be
`liable for any damages resulting from actions taken in connection with such prosecution or maintenance.
`
`4.15 Nothing contained herein, or done pursuant to this Agreement, will constitute the parties hereto entering
`into a joint venture or partnership or will constitute either party hereto being the agent of the other party for any
`purpose or in any sense whatsoever.
`
`The last signature ofthis Agreement will be made by IBM in the United States and the parties agree that
`4.16
`the Agreement has been executed in the Unimd States.
`
`4.17 Neither party shall be considered the author of this Agreement for the purpose of interpreting any
`provision herein.
`
`Each party acknowledges that its legal counsel has reviewed and approved this Agreement including its
`Exhibits and attachments.
`
`Section 5.
`
`Definitiogs
`
`“Act(s)" shall mean the making (including the right to use any apparatus and practice any method in making),
`having made, using, importing, having imported, offering for sale, leasing, licensing, selling and/or otherwise
`transfer and product or service, and the practice of any method.
`
`“Acts of Aggression” shall mean threatening or filing a patent infringement lawsuit that alleges that the
`development, distribution, sale, import, or use of a product infringe any of the Assigned Patents; provided that,
`regarding assertions against Implementations of IBM Strategic Standards or use of IBM Strategic Open Source
`Sofiware, it shall be an Act of Aggression only if the asserted claims of the Assigned Patent are necessary to
`practice the standard or use the Open Source Sofiware (that is, all commercially reasonable implementations of
`all normative portions of the specification for such standard or all uses of the Open Source Software would
`infringe the asserted claims), Acts of Aggression do not include filing a patent infringement lawsuit as a
`counterclaim or a cross-claim against a third party in response to a patent infringement lawsuit filed by that
`party-
`
`“Affiliate” of a party shall mean any other entity that Controls, is Controlled by, under common Control with
`such party, where "Control" means having on or after the Ayeement Date: (a) direct or indirect ownership or
`control of more than fifiy percent (50%) of the outstanding shares or securities (representing the right to vote for
`the election of directors or other managing authority); or (b) in the case of an entity that does not have
`outstanding shares or securities, direct or indirect ownership or control of more than fifly percent (50%)
`ownership interest representing the right to make the decisions, whether through the ownership of voting
`securities, by contract or otherwise provided.
`
`“Assigned Patents” shall mean (subject to Section 2.8) the Listed Patents and patents that may reissue from any
`of the foregoing on or after the Effective Time & Date.
`
`“BUYER Patents" shall mean all patents throughout the world, including reissues, continuations, divisionals
`and continuations-in-part, utility models and typeface design patents and registrations under which BUYER or
`any of its Afliliates has or obtains (or has or obtains the right to enforce) as of the Efi‘ective Time & Date or
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`thereafler.
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`“Claimed Subject Matter” shall mean inventions that have been or are claimed in an Assigned Patent
`Application on or before the Effective Time and Date.
`
`“Defensive Purposes” shall mean the use of an Assigned Patent by an entity in response to (i) a patent
`infiingernent lawsuit and/or complaint (other than a declaratory judgment action), filed against such entity, first
`by a third party, (ii) being placed on notice of infringement by a third party, and (iii) receiving an offer to
`license coupled with an assertion that the recipient’s existing technology falls within the scope of the patent
`ofiered for license.
`
`“Due Date" shall mean the latest date on which a payment can be made or an action taken without incurring a
`penalty, surcharge or other additional payment.
`
`“Effective Time & Date” shall mean 11:59PM United States Eastern Time on the day IBM receives the total
`payment specified in Section 3.1.
`
`“IBM Strategic Open Source Software” shall mean 088 produced or distributed by software development
`communities of which IBM or its Subsidiaries is a member or a contributor, or the code of which IBM or its
`Subsidiaries uses, distributes, or relies on for its products; 088 which was released prior to five years afier the
`Effective Time & Date (other than code owned by a commercial entity which first qualifies as 088 after that
`entity is put on notice by Buyer of infringement of an Assigned Patent); and 088 which is included in one or
`more of the following Linux distributions: RedHat, Fedora, Novell/SUSE, Debian.
`
`“IBM Strategic Partner” shall mean (a) any customer of IBM or any of its Subsidiaries that has purchased, or
`executed one or more contracts for purchase of, IBM’s or any of its Subsidiaries’ products or services where the
`gross purchase price of such products or services is or was at least $10,000,000.00 (cumulative) over the five
`year period prior to the Effective Time & Date, and shall also include (b) any supplier from whom IBM or any
`of its Subsidiaries purchased or executed one or more contracts for purchase of as least $1 0,000,000.00
`(cumulative) of goods or services over the five year period prior to the Effective Time & Date. For the
`avoidance of doubt, the companies listed in List A ofExhibit C do not meet the definition of “IBM Strategic
`Partner”.
`
`“Implementations of [BM Strategic Standards” shall mean those portions of a product that implement
`specifications produced, in whole or in part, by IBM or its Subsidiaries or by organizations of which IBM or its
`Subsidiaries is a member or the specifications that IBM or its Subsidiaries implements in its products; provided
`that it shall not include specifications where it is customary in the industry to charge a royalty for necessary
`patent claims (i.e., one or more other holders of necessary patent claims charge royalties) and where such
`royalties are condoned by the organization that has promulgated the specification (i.e., the management body of
`the organization is aware of the practice and has endorsed it or has acquiesced to it; has not requested that the
`patent holder grant royalty free licenses; and has not begun work to modify the specification to avoid the
`royalty-bearing patents). Implementations of IBM Strategic Standards shall not include any portions of a
`product that are not necessary to comply with all normative portions of the specifications being implemented.
`
`“Licensee” shall mean any third party (including Subsidiaries of IBM) to which IBM: (i) has granted or is
`obligated to grant licenses, immunities, covenants not to sue or any other rights under an Assigned Patent as of
`the Effective Time 8: Date; or (ii) reserves the right under this Agreement to grant licenses, immunities, covenants
`not to sue or any other rights under an Assigned Patent.
`
`“Listed Patents" shall mean the patents listed in Exhibit A hereto. A Listed Patent of one country may or may
`not have a counterpart in another country that is a Listed Patent.
`8 of13
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`HIGHLY CONFIDENTIAL — ATTORNEYS’ EYES ONLY
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`UNILOC_COX_0870
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`Case 8.19 cv 01150 DO
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`'C-KES Document 76-2 Flled 12/07/20 Page
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`“Open Source Sofiware” or “058" shall mean any computer software program whose source code is published
`and available for inspection and use by anyone, and is made available under a license agreement that permits
`recipients to copy, modify and distribute the program’s source code without payment offees or royalties. All
`licenses c