Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 1 of 23
`Case 5:18—md-02834-BLF Document 363-1 Filed 02/13/19 Page 1 of 23
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`EXHIBIT 24
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`EXHIBIT 24
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 2 of 23
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`LICENSE AGREEMENT
`BITWEEN KINETI:CH, l~C. AND DIGIT AL ISLAND, l!IC.
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`LICENSE AGREEMENT
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`BETWEEN KINETECH, INC. AND DIGIT AL ISLAND, INC.
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`s~
`IN THIS AGREEMENT (the "AGREEMENT"). entered into as of this j.:'. day of
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`September 2000 (the "EFFECTIVE DATE") by and between Kinetech Inc. ("KINETECH"), a
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`Delaware corporation having its principal place of business at 3140 Whisperwoods Court,
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`Northbrook, Illinois 60062, and Digital Island, Inc. ("DI"), a California corporation having
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`its principal place of business at 45 Fremont Street, 12th Floor, San Francisco California
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`94105, the parties agree:
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`ARTICLE l DEFINITIONS
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`1.1 THE PATENTS means United States Patent No. 5,978,791 ("The '791 Patent") and
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`all counterpart applications, including continuation applications, divisional applications,
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`reexamination or reissue applications or extensions thereof: and any counterpart foreign
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`patent applications filed by or counterpart foreign patents issued to KINETECH before or
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`during the term of this License Agreement.
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`1.2 DI FIELD OF USE means, and is limited to, the practice of The Patents in the field
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`of use set forth in SCHEDULE 1.2 hereto.
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`Page 1
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 3 of 23
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`LICENSE AGREEMENI'
`8£1'\l,'EEN KlNtnCH, INC. Af'ID 010rr AL ISI..Al'ID, INC.
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`AR TI CLE 2 WITNESS ETH
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`2.1 WHEREAS, KlNETECH represents and warrants and DI acknowledges and agrees
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`that KlNETECH is the owner, by assignment, of the entire right, title and interest in and to
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`The Patents; and
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`2.2 WHEREAS, KlNETECH represents and warrants and DI acknowledges and agrees
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`that KlNETECH has unique and valuable expertise, understanding and know-how in the DI
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`Field Of Use and in the field of The Patents; and
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`2.3 WHEREAS, DI is desirous of acquiring an ownership interest in The Patents;
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`Now, THEREFORE, intending to be legally bound and in consideration of the
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`following covenants and agreements, KINETECH and DI agree as follows:
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`ARTICLE 3 ASSIGNMENT FROM KINETECH TO DI
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`3.1 KINETECH hereby transfers, grants, conveys, assigns, and relinquishes
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`exclusively to DI a fifty percent (50%) undivided interest in and to The Patents, the
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`inventions claimed therein, and all accrued causes of action for damages for infringement
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`thereof
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`3.2 Consideration. On the Effective Date, DI shall transfer to KINETECH a number
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`(N) of registered, saleable shares of Di's publicly traded stock ("Consideration"), where the
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`number of shares (N) is detennined as the greater of either:
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`DI079221
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 4 of 23
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`LICENSE AGREEMENT
`BETWEEN K!NETECH, INC. AND DIGITAL (S1..A.'-'D, INC.
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`3.2.1 N = $2,000,000 divided by the average closing price of Di's shares for
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`the twenty (20) trading days preceding the Effective Date of this Agreem'ent, rounded up to~
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`the next integer value: and
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`3.2.2 N= 50,000 shares.
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`3.3 KJNETECH shall execute and deliver to DI the Assignment attached as
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`Attachment A hereto within ten (10) days of receipt of the Consideration, and, from time to
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`time after the date hereof upon the request of DI, such further conveyance instruments as
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`may be necessary or desirable to evidence more fully the transfer of the ownership interest of
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`fifty percentage (50%) of The Patents to DI, or the original ownership of The Patents on the
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`part ofKINETECH, to the fullest extent possible.
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`3.4 KINETECH further agrees to provide testimony in connection with any proceeding
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`affecting the right, title, interest, or benefit of DI in and to The Patents and to perform any
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`other acts deemed necessary to carry out the intent of this Agreement. DI shall reimburse
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`KlNETECH for any and all costs reasonably incurred by KJNETECH in performance under this
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`paragraph.
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`3.5 In furtherance of this Agreement, KINETECH hereby acknowledges that, from the
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`Effective Date forward, DI has succeeded to an fifty percentage ( 50%) undivided interest of
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`KINETECH's right, title, and standing to receive all rights and benefits pertaining to The
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`Patents. institute and prosecute all suits and proceedings, and take all actions that DI, in its
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`sole discretion, may deem necessary or proper to collect, assert, or enforce any claim, right,
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`or title of any kind under any and all of The Patents, whether arising before or after the
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`Effective Date, defend and compromise any and all such actions, suits, or proceedings
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`Pa~e3
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 5 of 23
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`LICENSE AGREEME'll
`BEnVEE." KINEnCII . INC ANO DIGITAL ISLAND. INC.
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`relating to such transferred and assigned rights , title, interest, and benefits, and do all other
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`such acts and things in relation thereto as DI, in its sole discretion, deems advisable.
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`3.6 Kl ETECH represents and warrants that no consents of any other parties are
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`necessary under any agreements concerning any of The Patents in order for the transfer and
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`assignment of any of The Patents under this Agreement to be legally effective.
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`3.7 KlNETECH represents and warrants that upon consummation of this Agreement,
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`DI shall have good and marketable title to a fifty percentage (50%) interest in and to The
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`Patents, free and clear of any and all liens, mortgages , encumbrances, pledges, security
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`interests, or charges of any nature whatsoever.
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`ARTICLE 4 FuTURE USE
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`4. 1 DI will refrain from using, practicing, licensing or sublicensing The Patent or the
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`inventions disclosed therein other than in the Field of Use.
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`4.2 KlNETECH will refrain from using, practicing, licensing or sublicensing The
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`Patents or the inventions disclosed therein in the DI Field of Use.
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`4.3 KlNETECH will refrain from licensing or sublicensing The Patents or the
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`inventions disclosed therein for any Web-caching products to the ex.tent such products are
`being used to compete with DI in the Field of Use ("Competing Web-Caching Products")
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`upon receipt of notice from DI (pursuant to Section 6.1) of known or suspected infringement
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`by such Competing Web-Caching Products or of notice from DI (pursuant to Section 6.3) of
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`Di's intent to file suit for infringement by such Competing Web-Caching Products.
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`I\DCSVRBOIIPL1BLIOS IRITZKY _BILACHMAN\0 1 AGMT FINAL 9 I ZOOO (REDLINED i.DOC
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 6 of 23
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`LICENSE AGREEMENT
`BETWEE Kll'IETI:C-H , lr<C. A D DIGIT,\ L ISi.A! D. ll'IC'.
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`ARTICLE 5 FUTURE LICE SES AND SUB-LICENSES
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`5.1 DI can and shall have the exclusive right to license or sublicense The Patents only
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`in the DI Field of Use. DI shall not license or sublicense The Patents to any party outside of
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`the Dl Field of Use.
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`5.2 KlNETECH can and shall have the exclusive right to license The Patents in all
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`fields other that the DI Field of Use. KlNETECH can and shall have the right to license or
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`sublicense The Patents in the DI Field of Use, however, KlNETECH shall not license The
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`Patents to any party within the DI Field of Use without Di's consent, which consent may be
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`withheld at Di's sole discretion.
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`5.3 DI shall pay to KlNETECH ten percent (10%) of any and all income received by
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`DI from licensing any of The Patents in the DI Field of Use. If DI sublicenses any of The
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`Patents outside of the DI Field of Use, with KINETECH's required consent, DI shall pay to
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`KlNETECH an agreed upon percentage per sub-license.
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`5.4 If KINETECH sublicenses any of The Patents in the DI Field of Use, with Di's
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`required consent, KI ETECH shall pay to DI an agreed upon percentage per sub-license.
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`5.5 Prior to granting a license or sublicense to any of The Patents, each party shall
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`provide to the other party thirty (30) days notice of its intent to grant such license or
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`sublicense.
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`5.6 Each party shall account for income owed the other party hereunder quarterly
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`within forty five (45) days after the end of each calendar quarter. Each accounting shall
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`I\OCSVRBOIIPUBLIC\SIRITZKY _BILACHMAN\DI AGMT FINAL 9. 1.2000 (REDLINED).DOC
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 7 of 23
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`U cr SE AGREEMENT
`BETWEEN Kll'EnCH. INC. AND DIGITAL ISLAND. INC.
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`include the applicable payment and a statement setting forth the information necessary to
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`verify the calculation thereof.
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`ARTICLE 6 E FOR CEMENT AND LITIGATION
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`6.1 Each party to this Agreement shall promptly notify the other party during the term
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`of this Agreement of any known or suspected infringement of any of The Patents, and shall
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`provide the other party with all available evidence and infonnation supporting said
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`infringement or suspected infringement.
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`6.2 In the event of infringement of any of The Patents by a third party, either party to
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`this Agreement shall have the right, except as otherwise limited by this Agreement, but not
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`the obligation, to take such action as it deems appropriate, including to initiate an
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`infringement or other appropriate suit against any third party who at any time has infringed,
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`or is believed to be infringing, any of The Patents.
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`6.3 Prior Notice of Suits. Prior to initiating any infringement or other suit against
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`any third party for infringement of any of The Patents, a party to this Agreement shall first
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`provide the other party to this Agreement with written notice of the party's intent to initiate
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`such suit at least ten (10) days prior to initiation of such suit.
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`6.4 Notwithstanding anything to the contrary in the previous Section 6.2 above,
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`6.4.l DI shall have the first right to institute suit for infringement(s) of any
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`of The Patents (a) in the DI Field of Use and (b) for any Web-caching products to the extent
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`such products are being used to compete with DI in the DI Field of Use. However, if DI
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`I\OCSVRBOIIPUBLIC\SIRITZKY _BILACHMAN\01 AGMT FINAL 9. 1-2000 (REDLINED).DOC
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 8 of 23
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`LICENSE AGREEMENT
`BE'lWEEN Kl NE'lcCII. INC ,IND DIGITAL ISLAND. I C
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`does not institute suit for infringement(s) (or enter into a license or settlement agreement
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`regarding said infringement(s) with the allegedly infringing party) within one hundredand-=(cid:173)
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`eighty (180) days of receipt of written notice from KINETECH, per Section 6.3, of
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`KINETECH 's desire to bring suit for infringement in its own name and on its own behalf, then
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`KlNETECH may, at its own expense, bring suit or take any other appropriate action without
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`any further notice to DI.
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`6.4.2 KlNETECH shall have the exclusive right to institute any infringement
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`suit or other suit against any third pany for infringement(s) of any of The Patents outside the
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`DI Field of Use.
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`6.5 The party initiating an action against a third party shall have the right, subject to
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`the other party's approval, to select counsel for any such action and shall pay all expenses of
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`the action, including attorney' s fees and court costs.
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`6.6 The party initiating an action against a third party under this Agreement shall
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`keep the other party promptly informed, and shall from time to time consult with the other
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`party regarding the status of any such action and shall provide the other party with copies of
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`all documents filed in, and all written communications relating to, such action.
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`6.7 In any infringement or other appropriate action which one party may institute to
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`enforce The Patents, the other party shall, at the request of the initiating party, cooperate in
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`aJI respects including being named as a party to the suit if necessary or desirable, and to
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`testify when requested and make available relevant records, infonnation, samples and the
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`like, at the initiating party's expense.
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`I\OCSYRBOI\PUBLICISIRrT"ZKY _BILACHMAN\DI AGMT FINAL 9 I 2000 (REDLINED).OOC
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 9 of 23
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`LICENSE AGREEMENT
`BETWEEN Kll'F.TECH , INC. AND DIGITAL ISLAND. INC.
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`6.8 For any actions or suits initiated by DI , DI shall compensate KlNETECH for
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`out-of-pocket expenses actually incurred by KlNETECH including a reas6nable per diem
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`allowance which shall initially be two thousand U.S. Dollars (U.S. $2,000.00) as
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`compensation for time incurred in providing assistance as requested by DI in connection any
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`activities under this Agreement.
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`6.9 Any recovery, damages, up-front expenses, or settlement, including any license
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`granted under such settlement, resulting from any such action taken by an initiating party
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`shall be allocated as follows. First, all expenses of any suit, including all attorneys' fees and
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`court costs shall be reimbursed to the initiating party. The remaining balance, if any, shall be
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`split between the initiating party and the other party in the ratio eighty percent to twenty
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`percent (4:1).
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`6.10 Any settlement, consent judgment or other voluntary final resolution of a suit
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`brought by one party to this Agreement may be entered into by that party only with the prior
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`wri tten consent of the other party to this Agreement, such consent not to be unreasonably
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`withheld or delayed.
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`ARTICLE 7 EXISTING LICENSES -- RESERVATIONS
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`7 .1 Parties having licenses, options to acquire licenses, or other rights in The Patents
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`as of the Effective Date are listed in Schedule 7.1 hereto.
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`7.2 Notwithstanding anything to the contrary in this Agreement, DI, its successors,
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`and assigns shall take Di's ownership interest in and to the aforesaid PATENTS subject to any
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`outstanding licenses, options to acquire licenses, or other rights existing in third parties under
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`I\OCSVRB0IIPLl 8Lfa51RrTZKY _8\LACHMAN\01 AGMT FINAL 9. 1 2000 (REOLINEO).DOC
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 10 of 23
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`LIC'l:NSE AGREEMENT
`BFTWEEN KINETECH . INC. AND DIGITAL ISLAND. INC.
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`agreements executed by KlNETECH prior to the Effective Date of this Agreement, as listed in
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`Schedule 7.1 hereto.
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`7.3 Notwithstanding anything to the contrary in this Agreement, including
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`specifically ARTICLE 1 and Section 5.4 above, DI shall not be entitled to and shall not
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`receive any payment or royalties for any outstanding licenses, options to acquire licenses, or
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`other rights existing in third parties under agreements executed by KlNETECH prior to the
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`Effective Date of this Agreement, as listed in Schedule 7.1 hereto.
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`ARTICLE 8 PROSECUTION AND MAINTENANCE OF THE PATENTS
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`8.1 DI agrees to share equal]y in the cost of prosecution and maintenance of The
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`Patents, incurred after the date of this Agreement, including payment of official fees ,
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`maintenance fees and attorney fees and costs.
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`8.2 KlNETECH shall control and direct the prosecution of all counterpart applications,
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`continuation applications, divisional applications, reexamination or reissue applications or
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`extensions thereof, and any foreign patent applications of or claiming priority from The '791
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`Patent.
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`8.3 For the purposes of this ARTICLE 8, A PATENT APPLICATION means any and
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`all counterpart applications, including continuation applications, divisional applications,
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`reexamination or reissue applications or extensions thereof of The '791 Patent; and any
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`counterpart foreign patent applications of The '791 Patent.
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`I\DCSVRBOIIPUBLIC\SIRITZKY _BILACHMAN\D I AGMT FTNAL 9 1.2000 (REDLINED) DOC
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 11 of 23
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`LICENSE AGREEMENT
`BETWEEN l<JNETICH. INC. A.'ID DIGIT AL ISLAND, INC.
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`8.4 ln the event that DI wishes to file A Patent Application or to add and/or modify
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`claims of a pending Patent Application, DI shall notify K.INETECH of its aesire and shalf
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`-
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`provide KINETECH with a copy of the claims as well as with an indication of where such
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`claims are supported by the disclosure of The '791 Patent. At KrNETECH's sole discretion,
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`such claims may be filed in a pending Patent Application or in a new continuing patent
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`application. If KINETECH elects not to proceed with such filings, DI, at its own expense and
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`in the name of both parties, may proceed therewith.
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`8.5 KlNETECH shall notify DI in the event that KINETECH files A Patent Application
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`or adds and/or modifies claims of a pending Patent Application.
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`ARTICLE 9 TERMINATION
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`9 .1 Term of Agreement. The tenn of this Agreement shall commence upon the
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`Effective Date and this Agreement shall remain in effect as long as there are enforceable
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`rights under any of The Patents.
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`9.2 Survival Of Obligadons. Notwithstanding the foregoing Section 9.1, the parties'
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`rights and obligations that, by their nature, would continue beyond the termination,
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`cancellation, or expiration of this Agreement, shall survive such termination. cancellation or
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`termination.
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`9.3 Attorneys' Fees. The prevailing party in any dispute claim or litigation relating
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`to an alleged breach of this Agreement shall be entitled to reimbursement of all of its costs
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`and expenses, including reasonable attorneys' fees, incurred in connection with such dispute,
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`claim or litigation, including any appeal therefrom. For purposes of this Section, the
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 12 of 23
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`LICENSE AGREEMF:NT
`BETWEE.N KINETECH, INC. A."1> DIGITAL ISL\.NO, Jl'(C.
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`determination of which party is to be considered the prevailing party shall be decided by the
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`court of competent jurisdiction or independent party (i.e. , mediator or artiitrator) that resolves
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`such dispute, claim or litigation.
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`9.4 Equitable Relief Notwithstanding anything contained in this Agreement to the
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`contrary, the parties shall be entitled to seek injunctive or other equitable relief whenever the
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`facts or circumstances would permit a party to seek such equitable relief in a court of
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`competent jurisdiction.
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`AR Tl CLE 10 LIMITATION OF LIABILITY.
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`Limitation Upon Types of Recoverable Damages. EXCEPT AS OTHERWISE
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`PROVIDED IN THIS AGREEMENT, NEITHER PARTY SHALL BE LIABLE FOR ANY
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`CONSEQUENTIAL,
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`INCIDENTAL,
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`INDIRECT, EXElvfPLARY, SPECIAL OR
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`PUNITIVE DAMAGES, REGARDLESS OF WHETHER THE CLAIM GIVING RJSE TO
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`.,
`SUCH DAMAGES IS BASED UPON BREACH OF WARRANTY, BREACH OF
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`CONTRACT OR NEGLIGENCE, EVEN IF A PARTY HAS BEEN ADVISED OF THE
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`POSSIBILITY THEREOF.
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`ARTICLE 11 RELEASE FOR PAST INFRINGEMENT
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`KINETECH, for itself, its successors, and assigns, releases and forever discharges DI,
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`its past and present directors, officers, employees, successors, assigns, customers, and other
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`transferees from any and all promises, causes of action, claims, and demands whatsoever in
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`law or in equity arising or claimed to arise out of any infringement or asserted infringement
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`D1079230
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 13 of 23
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`LICENSE AOREEMENT
`ru:!WEEN KlNETI:CH. INC. AND DIGIT AL lSLA.'1O. INC.
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`of any patent, issued or issuing at any time. by any systems manufactured, used, sold, or
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`otherwise transferred by DI at any time prior to the Effective Date of this Agreement.
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`ARTICLE 12 MARKING
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`DI agrees to observe the reasonable requirements ofKJNETECH with respect to the
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`marking of articles sold under the license herein granted with the word "Patent," followed by
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`the number or nwnbers of the patent or patents applicable thereto under which a license is
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`granted hereunder.
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`ARTICLE 13 PUBLICTTY
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`Each party may issue or release any statements, articles, advertisements, and
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`announcements regarding this Agreement.
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`ARTICLE 14 NEGATION OF IMPLICATIONS BY KINETECH
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`14. l Nothing in this Agreement shall be construed as
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`14.1.1 A warranty or representation by KINETECH as to the validity or scope
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`of any of The Patents; or
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`14. l.2 A warranty or representation that anything made, used, sold, or
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`otherwise disposed of under any license granted in this Agreement is or will be free from
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`infringement of patents of third parties; or
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`14.1.3 A requirement that KINETECH shall file any patent application, secure
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`any patent, or maintain any patent in force; or
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 14 of 23
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`LICENSE AOREEME1'T
`BETWEES KI);ETICH, INC. A,'<!) D1orr AL ISLAND, INC.
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`14.1.4 An obligation to bring or prosecute actions or suits against third parties
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`for infringement;
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`14.1.5 An obligation to furnish any manufacturing or technical information;
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`or
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`14.1.6 Granting by implication, estoppel, or otherwise, any licenses or rights
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`under patents of KINETECH other than The Patents, regardless of whether such other patents
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`are dominant of or subordinate to any of The Patents.
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`14.2 KINETECH makes no representations; extends no warranties of any kind,
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`either express or implied; and assumes no responsibilities whatever with respect to use, sale,
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`or other disposition by DI or its vendees or other transferees of products incorporating or
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`made by use of (a) inventions licensed under this Agreement or (b) infonnation, if any,
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`furnished under the Agreement.
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`ARTICLE 15 MODIFICATION OF DI FIELD OF USE
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`15.1 The DI Field of Use (as set forth in SCHEDULE 1.2 hereto) may only be
`modified by subsequent and separate written and signed agreement of the parties to this
`Agreement or their successors and pennitted assigns.
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`In the event that DI expands or attempts to expand the DI Field of Use by use,
`15.2
`sale, offer for sale, license or sublicense, KINETECH's failure to object to such expansion
`shall not be construed as a pennitted expansion of the DI Field of Use.
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`Case 5:18-md-02834-BLF Document 363-1 Filed 02/13/19 Page 15 of 23
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`ltCE1'S£ AGRE£ME1'"T
`BETWEEN KINETECH, INC. A1'1' DIGIT AL ISLAND, INC.
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`ARTICLE 16 ASSIGNMENT
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`16.1 This Agreement shall be binding upon and inure to the benefit of the parties'
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`respective successors and pennitted assigns. Neither party may assign this Agreement and/or
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`any of its rights and/or obligations hereunder without the prior written consent of the other
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`party and any such attempted assignment shall be void, except that either party may assign
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`this Agreement and/or any of its rights and/or obligations hereunder, upon written notice to
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`the other party to another entity in the event of that party's merger or consolidation with
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`another entity, without the consent of the other party, provided that the assignee is capable of
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`fulfilling and expressly assumes to fulfill the obligations of the assigning party under this
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`Agreement. The parties agree that no assignment will relieve the assignor from any liability
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`hereunder.
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`16.2 Notwithstanding anything to the contrary in ARTICLE 15 above, in the event
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`of a acquisition, merger or consolidation of DI, the DI Field of Use shall not be construed or
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`expanded beyond the scope of the DI Field of Use as it was prior to said acquisition, merger
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`or consolidation.
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`16.3 No merger or consolidation of DI with another entity, or acquisition of DI by
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`another entity shall release said other entity from any causes of action, claims, or demands in
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`law or in equity arising or claimed to arise out of any infringement or asserted infringement
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`of any The Patents by said other entity.
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`LICENSE AGREEMENT
`BETWEEN KINmCH, INC. A.'ID DJGrr Al. lSLA.'10, INC.
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`ARTICLE 17 NOPARTNERSHIP
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`This Agreement does not constitute and shall not be construed as constituting a
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`partnership or joint venture between DI and KlNETECH. Neither party shall have any right to
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`obligate or bind the other party in any manner whatsoever, and noting herein contained shall
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`give, or is intended to give, any rights of any kind to any third persons.
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`ARTICLE 18 DISPUTE REsOLUTION
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`18.1 Except as provided in Section 18.4 below and unless otherwise required in
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`order to comply with deadlines under the law, neither party shall file an action or institute
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`legal proceedings with respect to any dispute, controversy, or claim arising out of. relating to,
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`or in connection with, this Agreement until: (a) the aggrieved party has given the other party
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`written notice of its grievance setting forth the nature of the dispute, the amount involved, if
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`any, and the remedy desired, and delivering same by certified mail ; (b) the other party has
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`failed to provide a prompt and effective remedy; (c) the aggrieved party has requested senior
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`executives for both parties to meet and discuss the matter in order to consider infonnal and
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`amicable means of resolution; and ( d) either such meeting failed to occur within twenty (20)
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`days after such request or the meeting did not produce a mutually satisfactory resolution to
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`the matter.
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`18.2 Arb/Jration. Any and all disputes, controversies and claims arising out of or
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`relating to this Agreement or concerning the respective rights or obligations of the parties
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`hereto shall be settled and detennined by arbitration before a panel of one ( 1) arbitrator
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`pursuant to the Commercial Rules then in effect of the American Arbitration Association.
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`Each party shaJI have no longer than three (3) days to present its position. Judgment upon
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`LlCE:-iSE AOWMEl'<T
`BETWEEN KJ:-irnt'H, INC. AND 01orr AL IsLA.-.:o, 1:-c.
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`the award rendered may be entered in any court having jurisdiction or application may be
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`made to such court for a judicial acceptance of the award and an order o( enforcement.The-=(cid:173)
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`parties agree that the arbitrators shall have the power to award damages. injunctive relief and
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`reasonable attorneys' fees and expenses to any party in such arbitration, subject to the
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`limitations of ARTICLE 10 above.
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`18.3 Voluntary, Non-Binding Mediation regarding Field of Use.
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`Notwithstanding anything in Section 3.2 above, the parties may. but shall not be obligated to,
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`mutually agree in writing to submit a dispute regarding the scope of DI Field of Use to non(cid:173)
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`binding mediation. Mediation must occur within five (5) business days after the parties agree
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`to submit the dispute to mediation, and the duration of the mediation shall be Hmited to one
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`( 1) business day. The parties mutually shall select an independent mediator experienced in
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`patent disputes, and each shall designate a representative(s) to meet with the mediator in
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`good faith in an effort to resolve the dispute. The specific fonnat for the mediation shall be
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`left to the discretion of the mediator and the designated party representatives and may include
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`the preparation of agreed-upon statements of fact or written statements of position furnished
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`to the other party.
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`18.4
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`Injunctive ReUef. DI and KINETECH hereby acknowledge and agree that
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`damages at law and the dispute resolution provisions of Section 3.1 may be inadequate
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`remedies for the breach of certain Sections hereof, and, accordingly. DI and KlNETECH
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`hereby agree that DI and/or KINETECH may be entitled to temporary and permanent
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`injunctive or other equitable relief with respect to any such breach without the necessity of
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`proving actual damages or posting a bond or other security or resorting to the provisions of
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`LICE}ISE AGREEMENT
`BETWEEN KlNETECH, I 'C, ANDDIGITAf. lsLA.-:o. t;,.;c.
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`Section 3.1 . The rights set forth in this Section 3.4shall be in addition to any other rights
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`which the parties may have at law or in equity.
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`ARTICLE 19 MISCELLAi~EOUS
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`19.1 Severability. Should any part or provision of this Agreement be held
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`unenforceable or in conflict with the law of any jurisdiction, the validity of the remaining
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`parts or provisions shall not be affected by such holding. In the event a part or provision of
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`this Agreement held unenforceable or in conflict with law affects consideration to either
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`party, the parties agree to negotiate in good faith amendment of such part or provision in a
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`manner consistent with the intention of the parties as expressed in this Agreement.
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`19.2 Force Majeure. Neither party shall be responsible or liable to the other party
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`for nonperformance or delay in performance of any terms or conditions of this Agreement
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`due to acts or occurrences beyond the control of the non-performing or delayed party,
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`including, but not limited to, acts of God, acts of government, wars, riots, strikes or other
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`labor disputes, shortages of labor or materials, fires, and floods, provided the non-performing
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`or delayed party provides to the other party written notice of the existence of and the reason
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`for such nonperformance or delay.
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`19.3
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`Integration. This instrument contains the entire and only agreement between
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`the parties and supersedes all preexisting agreements between them respecting its subject
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`matter. Any representation, promise, or condition in connection with such subject matter that
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`is not incorporated in this Agreement shall not be binding on either party. No modification,
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`renewal, extension, or waiver, and no termination of this Agreement or any of its provisions,
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`shall be binding on the party against whom enforcement of such modification, renewal,
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`extension, waiver, or termination is sought, unless made in writing and signed on behalf of
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`LICENSE AGREEMENT
`BETWEEN l<f:IIETECI!, INC. AND DIGIT AL lsLA._D, INC.
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`such party by one of its executive officers. As used herein, the word "termination" includes
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`any and all means of bringing to an end prior to its expiration by its own ·terms this
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`Agreement, or any provision thereof, whether by release, discharge, abandonment, or
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`otherwise.
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`19.4 Choice of Law and Venue. This Agreement, including all matters of
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`construction, validity, and perfonnance, shall be governed by and construed and enforced in
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`accordance with the laws of the State of California, as applied to contracts made, executed,
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`and to be fully performed in such state by citizens of such state, without regard to its conflict
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`oflaw rules. The parties hereto agree that the exclusive jurisdiction and venue for any action
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`brought between the parties under this Agreement shall be the state and federal courts sitting
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`in California, and each of the parties hereby agrees and submits itself to the exclusive
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`jurisdiction a