Case 5:18-md-02834-BLF Document 550-10 Filed 10/25/19 Page 1 of 6
`Case 5:18—md-02834-BLF Document 550-10 Filed 10/25/19 Page 1 of 6
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`EXHIBIT 6
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`EXHIBIT 6
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`Case 5:18-md-02834-BLF Document 550-10 Filed 10/25/19 Page 2 of 6
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`A GREEMENT
`
`day of December,
`is made as of the
`This Agreement (the
`Kinetech,
`a Delaware
`Date”), by and
`Inc.
`2000 (the
`corporation having its principal place of business at 3140 Whisperwoods Court, Northbrook,
`Illinois 60062, and Digital Island, Inc; ("DI”), a Delaware corporation having its principal place
`of business at 45 Fremont Street, 12th Floor, San Francisco, California 94105.
`
`I
`
`WHEREAS:
`Pursuant to an agreement entered into as of September 1, 2000, Kinetech
`A.
`and DI jointly own certain Patents (as defined below) (the "Patent Agreement”).
`
`The Patent Agreement sets forth certain terms and conditions governing
`B.
`each part)/’s rights to use and authorize others to use the inventions claimed in the Patents.
`The parties desire to set forth further terms and conditions regarding their
`C.
`respective rights to use and authorize others to use the inventions claimed in the Patents.
`
`NOW THEREFORE, in consideration of the foregoing premises and the mutual
`covenants and agreements set forth below, Kirretech and DI agree as follows:
`
`ARTICLE 1.
`
`- DEFINITIONS
`
`means United States Patent No. 5,978,791 and all counterpart
`1.1
`including continuation applications, divisional applications, reexamination or
`applications,
`reissue applications or extensions thereof; and any counterpart foreign patent applications filed
`' by or counterpart foreign patents issued to Kinetech before or during the term of the Patent
`Agreement.
`
`Field of Use” has the meaning speciiied in the Patent Agreement, and
`1.2
`infrastructure services of one or
`which meaning, reproduced here solely for convenience, is:
`more managed global content delivery networks (CDNS) in which a customer’s content is served
`faster, on average, than if served from the customer’s origin server or the CDN can typically
`serve more users than a customer’s origin server alone; where at least some customer content on
`origin servers is replicated to possibly many alternate servers of the CDN, many of said CDN
`servers being at ISP sites, and where users’ request for origin content are satisfied by directing
`them to CDN servers.”
`
`Agreement” means the license agreement between Kinetech
`1.3
`and Internet Gigcom, Inc. (or any transferee of its rights under such agreement) (Gig.c0m, Inc or
`effective as of January 4, 2000 pursuant to which Kinetech has
`such transferee,
`granted to Gigcorn a limited license in
`in the Patents.
`Permitted Use” means a system specifically designed to
`1.4
`provide a complete and integrated backend digital content (music and video) distribution
`infrastructure consisting of (a) storage repository of proprietary content; and (b) an associated
`
`i=ALLitsiut4s\126351-untxzzoonnocr
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`CONFIDENTIAL ATTORNEYS EYES ONLY
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`CONFIDENTIAL-ATTORNEYS EYES ONLY
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`Case 5:18-md-02834-BLF Document 550-10 Filed 10/25/19 Page 3 of 6
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`dedicated caching network for delivery of said content to customers; and (C)
`mechanisms for reproduction of the sound or picture associated with said content.
`Agreement" means the license agreement between
`1.5
`Kinetech and CenterGate Research Group, LLC (or any transferee of its rightsunder such
`effective as of
`agreement) (CenterGate Research Group, LLC or such transferee,
`June 30,2000 pursuant to which Kinetech has granted to C'enterGate a limited license to the
`Patents.
`
`a player
`
`"CenterGate Field of Use” means research and development of novel
`1.6
`products, software and services to improve infrastructure performance for distributed computing,
`but excluding developing and operating value-added, online (a) back-up and file recovery
`products and services; and (b) system configuration management products and services.
`"Continuation Patent Application” means that certain continuation
`1.7
`patent application filed with the U.S. Patent and Trademark Office on April 1, 1999, Application
`Serial No. 09/283,160, which is a continuation of the Patents.
`ARTICLE 2.
`- FURTHER COVENANTS REGARDING THE PATENTS
`At DI’s request, Kinetech will add additional claims to, modify or otherwise
`amend the Continuation Patent Application in the manner directed by DI, at DI’s sole discretion
`and expense.
`ARTICLE 3.
`
`- - FURTHER COVENANTS REGARDING THE
`AGREEMENT
`indirectly, consent, approve or
`Kinetech will not, either directly or
`3.1
`otherwise agree to any expansion or modification of the Gig.corn Permitted Use or the scope of
`the license granted under the Gig.com Agreement, which in either case could overlap or conflict
`written consent of D1, which consent may be
`with the 121 Field of Use, without the
`Kinetech represents and warrants to DT_tHat as of the date
`withheld at
`this Agreerii’e"iit';'tl*iEriS'li'2is been no such ex"p'a'risi6n or m6dificati6iiT)Tthe Gigcorn Permitted Use
`or
`the
`To the extent Kinetech’s consent
`is required under
`the Gig.com
`3.2
`Agreement, Kinetech will not, either directly or indirectly, consent, approve or otherwise agree
`to any assignment or other transfer by Gig.com of this Agreement or the rights or licenses
`granted by Kinetech thereunder without the express written consent of D1, which consent may be
`withheld at DI’s sole discretion. Kinetech represents and warrants to D1 that as of the date of the
`Agreement, there has been no valid assignment or transfer by Gig.com of the Gigcom
`Agreement or the rights or licenses granted by Kinetech
`In the event of any assignment by Gig.c0m of the Gig.com Agreement or
`3.3
`any license granted thereunder in conjunction with the sale or transfer of substantially all of the
`eement such as by
`assets
`merger or acquisition), up??? ecoming aware of any such sale, transfer, merger or acquisition,
`Kinetech will promptly notify DI
`
`\
`
`'
`
`. 2
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`CONFIDENTIAL ATTORNEYS EYES ONLY
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`CONFIDENTIAL-ATTORNEYS EYES ONLY
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`Case 5:18-md-02834-BLF Document 550-10 Filed 10/25/19 Page 4 of 6
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`Kinetech has not and will not agree to any modification of the Gig.com
`3.4
`Agreement which could have any adverse effect on DI’s rights under the Patent Agreement,
`including, without limitation, altering the terms and conditions of the license granted to Gig.corn
`or the provisions of the Gig.com Agreement restricting its assignability.
`ARTICLE 4. - - FURTHER COVENANTS
`CENTERGATE
`AGREEMENT
`4.1 Kinetech will not, either directly or indirectly, consent, approve or
`otherwise agree to any expansion or modification of the CenterGate Field of Use or the scope of
`the license granted under the CenterGate Agreement without the
`consent of D1,
`which consent may be withheld at DI’s sole discretion. Kinetech represents and warrants to DI
`there has been no expansion or modification of the
`that as the date of this Agreement,
`CenterGate Field of Use or the scope of the license granted under the CenterGate Agreement.
`Further, Kinetech will not consent, approve or otherwise agree to the grant by CenterGate to any
`third party of any sublicense- under the CenterGate Agreement the scope of which could
`within, overlap with, restrict or impair in any fashion the DI Field of Use. Kinetech represents
`and warrants to DI that as of the date of this Agreement, no such sublicense has been granted by
`CenterGate.
`
`indirectly, consent, approve or
`Kinetech will not, either directly or
`4.2
`otherwise agree to any assignment or other transfer by CenterGate of the Cente1Gate Agreement
`or the rights or licenses granted by Kinetech thereunder without first consulting with DI.
`In the
`event that D1 in its reasonable discretion determines that the proposed transfer could impair DI’s
`rights under the Patent Agreement, Kinetech will refrain from directly or indirectly, consenting,
`approving or otherwise agreeing to such transfer. Kinetech represents and warrants to D1 that as
`of the date of this Agreement, there has been no valid assignment or transfer by CenterGate of
`the CenterGate Agreement or the rights or licenses granted by Kinetech thereunder.
`Kinetech has not and will not agree to any modification of the CenterGate
`4.3
`Agreement which could have any adverse effect on DI’s rights under the Patent Agreement,
`including. without limitation, altering the tenns and conditions of the license granted to
`CenterGate or the provisions of the CenterGate Agreement restricting its assignability.
`- SHARE ISSUANCE
`ARTICLE 5.
`current with the execution of this Agreement, DI will pay to Kinetech the
`5.1 C
`
`rim of
`
`_
`
`5.2 Kinetech acknowledges and agrees that upon the payment noted in Section
`and in respect of the issuance and
`5.1, all payment obligations of DI under
`registration of sharesunder the Patent Agreement (Le. Section 3.2-Consideration thereof) shall
`have been fully and completely satisfied and Kine-tech forever discharges DI and its employees,
`officers and directors from any liability arising out of or related thereto to regardless of whether
`such liability has been asserted or threatened to date.
`
`_
`
`-
`
`PA LL1Bl\K45\12635'/4.03(RZz@03l.DOC)
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`CONFIDENTIAL ATTORNEYS EYES ONLY
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`CONFIDENTIAL-ATTORNEYS EYES ONLY
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`Case 5:18-md-02834-BLF Document 550-10 Filed 10/25/19 Page 5 of 6
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`ARTICLE 6.
`
`- MISCELLANEOUS PROVISIONS
`
`upon the Effective Date and
`Term. This Agreement
`61
`remain in effect for so long as the Patent Agreement remains in effect.
`No Representations. Except as expressly set forth in this Agreement,
`6.2
`neither party makes any representation or warranty in respect of the provisions contained herein.
`Integgretation. This Agreement will in all respect he read and construed as
`6.3
`a companion agreement to the Patent Agreement; however, in the event of any conflict between
`the terms of this Agreement and the terms of the Patent Agreement, the terms of this Agreement
`shall take precedence and govern.
`Agreement Confidential. Each party agrees that this Agreement and its
`6.4
`contents will be kept confidential and agrees not to disclose such confidential
`information,
`except as required to perform or enforce this Agreement.
`
`Law and Venue.
`This Agreement and any questions relating to its
`6.5
`validity, interpretation, performance and enforcement shall be governed by and construed in
`accordance with the laws of the State of California without regard to its conflicts of laws
`provisions. Any legal action or proceeding relating to this Agreement shall be instituted in state
`in San Francisco County, California. The parties agree to submit to the
`or federal court
`jurisdiction of, and agree that the Venue is proper in, such courts in any such action or
`proceeding.
`
`IN WITNESS WHEREOF, the parties hereto have signed this Agreement on the
`dates noted below, to be effective as of the Effective Date:
`
`DIGITAL ISL ND, INC.
`
`NAME:
`
`TITLE:
`
`DATE:
`
`(/19 ~t~
`
`DATE:
`
`'l'2rt'l-oo
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`PALLDil\K45\126{S7403(K1Z@03l .DOC)
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`CONFIDENTIAL ATTORNEYE EYES ONLY
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`CONFIDENTIAL-ATTORNEYS EYES ONLY
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`Case 5:18-md-02834-BLF Document 550-10 Filed 10/25/19 Page 6 of 6
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`ASSIGNMENT
`
`WHEREAS, KINETECH, Inc. a Delaware corporation having offices at 3140 Whisperwoods
`owns, by assignment, all right, title, and interest in
`Court, Northbrook, Illinois 60062
`Processing System Using Substantially Unique Identifiers To
`U.S. Patent No. 5,978,791, entitled
`Identify Data Items, Whereby Identical Data Items Have The Same Identifiers”, and any invention
`claimed therein; and
`Digital Island, Inc., a California corporation having othces at 45 Fremont Street, 12th Floor, San
`desires to own fifty percent of KINETECH’S entire right, title, and interest in
`Francisco CA 94150
`and to the invention, in all countries throughout the world, and in and to U.S. Letters Patent No.
`5,978,791;
`NOW THEREFORE, be it known that, for good and valuable consideration, receipt of which is
`hereby acknowledged, KINETECH hereby sells, assigns, transfers, and sets over to D1, its lawful
`successors and assigns, FIFTY percentage of K.INETECH’s entire right, title, and interest in and to US.
`Patent No. 5,978,791, the invention claimed therein, any other patent applications directed to the
`invention, all counterpart applications, including continuation applications, divisional applications, and all
`Letters Patent of the United States that may be granted thereon, and all reissues, reexaminations, and
`extensions thereof; and all rights to claim priority on the basis of such application, and all counterpart
`applications for Letters Patent that may be tiled for the invention in any foreign country and all Letters
`Patent that may be granted on the invention in any foreign country, and all extensions, renewals, and
`reissues thereof; and
`KINETECH hereby authorizes and requests the Cornmissioner ofPatents and Trademarks of the
`United States and any official of any foreign country whose duty it is to issue patents on applications as
`described above, to issue all Letters Patent for this invention to D1, its successors and assigns, in
`accordance with the terms of this Assignment;
`AND, KINETECH HEREBY further covenants that KINETECH has the full right to convey the
`interest assigned by this Assignment, KINETECH will take all action and execute all documents necessary
`not executed and will not execute any
`to perfect the interest assimed hereby, and
`agreementin conflict with this Assignment;
`AND, KINETECH HEREBY further covenants and agrees thatKINETEClI, through its onicers
`and employees, will, without further consideration, communicate with DI, its successors and assigns, any
`facts known to KINETECH and its officers and employees respecting the invention and testify in any legal
`proceeding, sign all lawful papers when called upon to do so, execute and deliver all papers that may be
`necessary or desirable to perfect the title to the invention in said DI, its successors and assigns, execute all
`divisional, continuation, and reissue applications, make all rightful oaths, and generally do everything
`possible to aid DI, its successors and assigns, to obtain and enforce proper patent protection for the
`invention in the'United States and any foreign coiuttry, it being understood that any expense incident to
`the execution of such papers shall be home by DI, its successors and assigns.
`IN TESTIMONY WHEREOF, each party has caused its authorized representative to execute this
`Assignment
`Digital Island, Inc.
`INC.
`By
`Name
`Title
`Date
`
`_
`
`’
`
`MAJ
`N
`
`By
`Name
`Title
`Date
`
`*
`
`0 U’-E
`no
`
`I:
`
`Witness:
`
`Witness:
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`CONFIDENTIAL ATTORNEYS EYES ONLY
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`CONFIDENTIAL-ATTORNEYS EYES ONLY
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