Case 5:18-md-02834-BLF Document 550-9 Filed 10/25/19 Page 1 of 23
`Case 5:18—md-02834-BLF Document 550-9 Filed 10/25/19 Page 1 of 23
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`EXHIBIT 5
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`EXHIBIT 5
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`

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`Case 5:18-md-02834-BLF Document 550-9 Filed 10/25/19 Page 2 of 23
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`Highly Confidential - Attorneys' Eyes
`Only
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`PERSONALWEB006795
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`LICENSE
`AGREEMENT
`BETWEEN KINETECH,
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`INC. AND DIGITAL ISLAND, INC.
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`LICENSE AGREEMENT
`
`BETWEEN KINETECH, INC. AND DIGITAL ISLAND, INC.
`
`IN THIS AGREEMENT (the “AGREEMENT”), entered into as of this4 of
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`September 2000 (the “EFFECTIVE DATE”) by and between Kinetech Inc. (“KINETECH”), a
`
`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
`
`its principal place of business at 45 Fremont Street, 12th Floor, San Francisco California
`
`94105, the parties agree:
`
`ARTICLE 1
`
`DEFINITIONS
`
`1.1 THE PATENTS means United States Patent No. 5,978,791 (“The ’791 Patent”) and
`
`all counterpart applications,
`
`including continuation applications, divisional
`
`applications,
`
`reexamination or 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 this License Agreement.
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`1.2 DI FrELD OF USE means, andis 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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`Case 5:18-md-02834-BLF Document 550-9 Filed 10/25/19 Page 3 of 23
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`Highly Confidential - Attorneys' Eyes
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`PERSONALWEB006796
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`LICENSE
`AGREEMENT
`BETWEEN KINETECH, INC. AND DIGITAL ISLAND,
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`INC
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`ARTICLE2 WITNESSETH
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`2.1 WHEREAS, KINETECH represents and warrants and DI acknowledges and agrees
`that KINETECH 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, KINETECH represents and warrants and DI acknowledges and agrees
`that KINETECH has unique and valuable expertise, understanding and know-how in the DI
`Field Of Use andin the field of The Patents; and
`
`2.3 WHEREAS, DIis 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
`following covenants and agreements, KINETECH and DI agreeas follows:
`
`ARTICLE 3 ASSIGNMENT FROM KINETECH TO DI
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`3.1 KINETECH hereby
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`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
`and all accrued causes of action for damagesfor infringement
`
`inventions claimed therein,
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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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`of registered, saleable shares of DI’s publicly traded stock (“Consideration”), where the
`is determined as the greater of either:
`number of shares
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`DI 079221
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`Case 5:18-md-02834-BLF Document 550-9 Filed 10/25/19 Page 4 of 23
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`Highly Confidential - Attorneys' Eyes
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`PERSONALWEB006797
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`LICENSE
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`BETWEEN
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`AGREEMENT
`KINETECH, INC. AND DIGITAL ISLAND,
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`INC.
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`3.2.1 N=$2,000,000 divided by the average closing price of DI’s shares for
`the twenty (20) trading days preceding the Effective Date of this Agreement, rounded upto
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`the next integer value: and
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`3.2.2
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`shares.
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`3.3 KINETECH 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
`part of KINETECH, tothe fullest extent possible.
`
`3.4 KINETECH further agrees to provide testimony in connection with any proceeding
`
`affecting the right, title, interest, or benefit of DI in and to The Patents and to perform any
`
`other acts deemed necessary to carry out the intent of this Agreement. DI shall
`KINETECH for any andall costs reasonably incurred by KINETECH in performance under this
`
`reimburse
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`paragraph.
`
`3.5 In furtherance of this Agreement, KINETECH hereby acknowledges that, from the
`Effective Date forward, DI has succeeded to an fifty percentage (50%) undivided interest of
`KINETECH’s right, title, and standing to receive all rights and benefits pertaining to The
`institute and prosecute all suits and proceedings, and take all actions that DI, in its
`sole discretion, may deem necessary or properto collect, assert, or enforce any claim, right,
`ortitle of any kind under any and all of The Patents, whether arising before or after the
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`Patents,
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`Effective Date, defend and compromise any and all suchactions, suits, or proceedings
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`Case 5:18-md-02834-BLF Document 550-9 Filed 10/25/19 Page 5 of 23
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`Highly Confidential - Attorneys' Eyes
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`PERSONALWEB006798
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`AGREEMENT
`LICENSE
`BETWEEN KINETECH.
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`INC. AND DIGITAL ISLAND.
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`INC.
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`relating to such transferred and assigned rights, title, interest, and benefits, and doall other
`such acts and things in relation thereto as DI,in its sole discretion, deems advisable.
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`3.6 KINETECH represents and warrants that no consents of any other parties are
`necessary under any agreements concerning any of The Patents in orderfor the transfer and
`assignment of any of The Patents under this Agreement to be legally effective.
`
`3.7 KINETECH represents and warrants that upon consummation of this Agreement,
`DI shall have good and marketable title to a fifty percentage (50%) interest in and to The
`Patents, free and clear of any andall liens, mortgages, encumbrances, pledges, security
`
`interests, or charges of any nature whatsoever.
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`ARTICLE 4
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`FUTURE USE
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`licensing or sublicensing The Patent or the
`4.1 DI will refrain from using, practicing,
`inventions disclosed therein other than in the Field of Use.
`
`4.2 KINETECH will refrain from using, practicing, licensing or sublicensing The
`Patents or the inventions disclosed therein in the DI Field of Use.
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`4.3 KINETECH will refrain from licensing or sublicensing The Patents or the
`inventions disclosed therein for any Web-caching productsto the extent such products are
`being used to compete with DIin the Field of Use (“Competing Web-Caching Products’)
`upon receipt of notice from DI (pursuant to Section 6.1) of known or suspected
`by such Competing Web-Caching Productsor of notice from DI (pursuant to Section 6.3) of
`DI’s intent to file suit for infringement by such Competing Web-Caching Products.
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`infringement
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`PERSONALWEB006799
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`AGREEMENT
`LICENSE
`BETWEEN KINETECH,
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`INC. AND DIGITAL ISLAND,
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`INC.
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`ARTICLE 5 FUTURE LICENSES 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 DI Field of Use.
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`5.2 KINETECH can and shall have the exclusive right to license The Patents in all
`the DI Field of Use. KINETECH can and shall have the right to license or
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`fields other that
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`sublicense The Patents in the DI Field of Use, however, KINETECH shal] 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 KINETECH ten percent (10%) of any andall income received by
`If DI sublicenses any of The
`
`DI from licensing any of The Patents in the DI Field of Use.
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`Patents outside of the DI Field of Use, with KINETECH’s required consent, DI shall pay to
`KINETECH an agreed upon percentage per sub-license.
`
`5.4 If KINETECH sublicenses any of The Patents in the DI Field of Use, with DI’s
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`required consent, KINETECH shall pay to DI an agreed upon percentage per sub-license.
`
`5.5 Prior to granting a license or sublicense to any of The Patents, each party shall
`provide to the other party thirty (30) days notice ofits intent to grant such license or
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`sublicense.
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`5.6 Each party shall accountfor income owedthe 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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`PERSONALWEB006800
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`LICENSE
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`BETWEEN
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`AGREEMENT
`KINETECH. INC. AND DIGITAL ISLAND.
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`INC.
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`include the applicable payment and statement setting forth the information necessary to
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`verify the calculation thereof.
`
`Se
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`ARTICLE 6 ENFORCEMENT AND LITIGATION
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`6.1 Each party to this Agreement shall promptly notify the other party during the term
`of this Agreement of any known or suspected infringementof any of The Patents, and shall
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`provide the other party with all available evidence and information supporting said
`infringement or suspected
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`infringement.
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`6.2 In the event of infringementof any of The Patents by a third party, either party to
`this Agreement shall have the right, except as otherwise limited by this Agreement, but not
`includingto initiate an
`to take such action as it deems appropriate,
`the obligation,
`infringement or other appropriate suit against any third party whoat 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 infringementor other suit against
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`any third party for infringement of any of The Patents, a party to this Agreement shall first
`provide the other party to this Agreement with written notice of the party’s intentto initiate
`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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`6.4.1 DI shall have the first right to institute suit for infringement(s) of any
`of The Patents (a) in the DI Field of Use and (b) for any Web-caching productsto the extent
`such products are being used to compete with DIin the DI Field of Use. However,
`
`if DI
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`DI 079225
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`PERSONALWEB006801
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`LICENSE
`AGREEMENT
`BETWEEN KINETECH,
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`INC. AND DIGITAL ISLAND,
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`INC
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`does not institute suit for infringement(s)
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`(or enter into a license or settlement agreement
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`regarding said infringement(s) with the allegedly infringing party) within one hundred and
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`eighty (180) days of receipt of written notice from KINETECH, per Section 6.3, of
`KINETECH’s desire to bring suit for infringement in its own nameandonits own behalf,
`KINETECH may,at its own expense, bringsuit or take any other appropriate action without
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`then
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`any further notice to DI.
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`6.4.2
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`KINETECH shall have the exclusive right to institute any
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`infringement
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`suit or other suit against any third party 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 againsta third party shall have the right, subject to
`the other party’s approval, to select counsel for any such action and shall payall expenses of
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`the action,
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`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
`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
`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
`the other party shall, at the requestof the initiating party, cooperate in
`enforce The Patents,
`all 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, information, samples and the
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`like, at the initiating party’s expense.
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`DI 079226
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`PERSONALWEB006802
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`LICENSE
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`BETWEEN
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`AGREEMENT
`KINETECH, INC. AND DIGITAL ISLAND.
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`INC.
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`6.8 For any actions or suits initiated by DI, DI shall compensate KINETECH for
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`out-of-pocket expenses actually incurred by KINETECH including areasénable perdiem
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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,
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`including any license
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`granted under suchsettlement, 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’
`court costs shall be reimbursedto the initiating party. The remaining balance, if any, shall be
`
`fees and
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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
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`(4:1).
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`6.10
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`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
`written consentof 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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`DI 079227
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`Case 5:18-md-02834-BLF Document 550-9 Filed 10/25/19 Page 10 of 23
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`PERSONALWEB006803
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`AGREEMENT
`LICENSE
`BETWEEN KINETECH. INC. AND DIGITAL
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`ISLAND,
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`INC.
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`agreements executed by KINETECH priorto the Effective Date of this Agreement, as listed in
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`Schedule 7.1 hereto.
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`Notwithstanding anything to the contrary in this Agreement,
`
`including
`
`specifically ARTICLE 1 and Section 5.4 above, DI shall not be entitled to and shall not
`receive any payment or royalties for any outstanding licenses, options to acquire licenses, or
`other rights existing in third parties under agreements executed by KINETECH priorto the
`
`Effective Date of this Agreement, as listed in Schedule 7.1 hereto.
`
`ARTICLE 8
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`PROSECUTION AND MAINTENANCE OF THE PATENTS
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`8.1 DI agrees to share equally 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
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`fees,
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`maintenance fees and attorney fees and costs.
`
`8.2 KINETECH shall control and direct the prosecution of all counterpart applications,
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`continuation applications, divisional applications, reexamination or reissue applications or
`
`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,
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`including continuation applications, divisional
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`applications,
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`reexamination or reissue applications or extensions thereof of The ’791 Patent; and any
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`counterpart
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`foreign patent applications of The ’791 Patent.
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`PERSONALWEB006804
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`LICENSE
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`BETWEEN
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`AGREEMENT
`KINETECH, INC. AND DIGITAL ISLAND,
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`INC.
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`8.4 In the event that DI wishes to file A Patent Application or to add and/or modify
`claims of a pending Patent Application, DI shall notify KINETECH ofits desire and shall
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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 KINETECH’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.
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`If KINETECH elects not to proceed with suchfilings, DI, at its own expense and
`in the name of both parties, may proceed therewith.
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`8.5 KINETECH 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
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`TERMINATION
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`9.1 Term of Agreement. The term of this Agreement shall
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`commence upon the
`
`Effective Date and this Agreement shall remain in effect as long as there are enforceable
`
`rights under any of The Patents.
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`9.2 Survival Of Obligations. Notwithstanding the foregoing Section 9.1, the parties’
`rights and obligations that, by their nature, would continue beyond the termination,
`
`cancellation, or expiration of this Agreement, shall survive such termination, cancellation or
`
`termination.
`
`9.3 Attorneys’ Fees. The prevailing party in any dispute, claim or litigation relating
`to an alleged breach of this Agreement shall be entitled to reimbursement of all ofits costs
`
`and expenses,
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`including reasonable attorneys’
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`fees,
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`incurred in connection with such dispute,
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`claim or litigation, including any appeal therefrom. For purposes of this Section,
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`PERSONALWEB006805
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`LICENSE AGREEMENT
`BETWEEN KINETECH,
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`INC, AND DIGITAL ISLAND,
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`INC.
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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
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`jurisdiction or independent party (i.e., mediator or arbitrator) that
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`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
`facts or circumstances would permit a party to seek such equitable relief in a court of
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`competent
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`jurisdiction.
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`ARTICLE 10 LIMITATION OF LIABILITY.
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`Limitation Upon Types of Recoverable Damages.
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`EXCEPT AS OTHERWISE
`
`PROVIDED IN THIS AGREEMENT, NEITHER PARTY SHALL BE LIABLE FOR ANY
`
`CONSEQUENTIAL,
`
`INCIDENTAL,
`
`INDIRECT,
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`EXEMPLARY,
`
`SPECIAL
`
`OR
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`PUNITIVE DAMAGES, REGARDLESS OF WHETHER THE CLAIM GIVING RISE 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
`
`POSSIBILITY THEREOF.
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`ARTICLE 11
`
`RELEASE FOR PAST INFRINGEMENT
`
`KINETECH, foritself, 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
`transferees from any and all promises, causesof action, claims, and demands whatsoever in
`law or in equity arising or claimed toarise outof any infringementor asserted
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`infringement
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`PERSONALWEB006806
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`LICENSE
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`BETWEEN
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`AGREEMENT
`KINETECH, INC. AND DIGITAL ISLAND,
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`INC.
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`of any patent, issued or issuing at any time, by any systems manufactured, used, sold, or
`otherwise transferred by DI at any time priorto the Effective Date of this Agreement.
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`ARTICLE 12
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`MARKING
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`DI agrees to observe the reasonable requirements of KINETECH with respect to the
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`marking ofarticles sold under the license herein granted with the word “Patent,” followed by
`the number or numbers ofthe patent or patents applicable thereto under which a license is
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`granted hereunder.
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`ARTICLE 13
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`PUBLICITY
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`Each party may issue or release any statements, articles, advertisements, and
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`announcements
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`regarding this Agreement.
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`ARTICLE 14
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`NEGATION OF IMPLICATIONS BY KINETECH
`
`14.1
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`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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`14.1.2 A warranty or representation that anything made, used, sold, or
`otherwise disposed of under any license granted in this Agreement is or will be free from
`infringement of patents of third parties; or
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`14.1.3 A requirement that KINETECH shall file any patent application,
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`secure
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`any patent, or maintain any patent in force; or
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`LICENSE
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`BETWEEN
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`KINETECH, INC. AND DIGITAL ISLAND,
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`INC.
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`14.1.4 An obligation to bringor prosecute actions or suits against third parties
`=
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`infringement,
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`14.1.5 An obligation to furnish any manufacturing or technical
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`information;
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`for
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`or
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`14.1.6 Granting by implication, estoppel, or otherwise, any licenses or rights
`
`under patents of KINETECH other than The Patents, regardless of whether such other patents
`are dominant of or subordinate to any of The Patents.
`
`14.2.
`
`KINETECH makes no representations; extends no warranties of any kind,
`either express or implied; and assumes no responsibilities whatever with respect to use, sale,
`or other disposition by DIor its vendees or other transferees of products incorporating or
`made by use of (a) inventions licensed under this Agreement or (b) information,if any,
`furnished under the Agreement.
`
`ARTICLE 15
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`MODIFICATION OF DI FIELD OF USE
`
`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 ofthe parties to this
`Agreement or their successors and permitted assigns.
`
`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 permitted expansionof the DI Field of Use.
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`PERSONALWEB006808
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`AGREEMENT
`LICENSE
`BETWEEN KINETECH, INC. AND DIGITAL ISLAND,
`
`INC
`
`ARTICLE 16
`
`ASSIGNMENT
`
`16.1.
`
`This Agreement shall be binding upon and inure to the benefit ofthe parties’
`
`respective successors and permitted assigns. Neither party may assign this Agreement and/or
`any ofits rights and/or obligations hereunder without the prior written consent of the other
`
`party and any such attempted assignment shall be void, except that either party may assign
`this Agreement and/or any ofits rights and/or obligations hereunder, upon written notice to
`
`the other party to another entity in the event of that party’s merger or consolidation with
`another entity, without the consent of the other party, provided that the assignee is capable of
`fulfilling and expressly assumes to fulfill the obligations of the assigning party under this
`
`Agreement.
`
`The parties agree that no assignment will relieve the assignor from any liability
`
`hereunder.
`
`16.2
`
`Notwithstanding anything to the contrary in ARTICLE 15 above, in the event
`
`of a acquisition, merger or consolidation of DI, the DI Field of Use shall not be construed or
`
`expanded beyond the scope of the DI Field of Use as it was prior to said acquisition, merger
`
`or consolidation.
`
`16.3.
`
`No mergeror consolidation of DI with another entity, or acquisition of DI by
`another entity shall release said other entity from any causesof action, claims, or demands in
`law or in equity arising or claimedto arise out of any infringement or asserted
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`infringement
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`of any The Patents by said other entity.
`
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`LICENSE
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`BETWEEN
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`AGREEMENT
`KINETECH, INC. AND DIGITAL ISLAND.
`
`INC.
`
`ARTICLE 17
`
`NO PARTNERSHIP
`
`This Agreement does not constitute and shall not be construed as constituting a
`partnership or joint venture between DI and KINETECH. Neither party shall have any right to
`
`obligate or bind the other party in any manner whatsoever, and noting herein contained shall
`
`give, or is intended to give, any rights of any kind to any third persons.
`
`ARTICLE 18 DISPUTE RESOLUTION
`
`Except as provided in Section 18.4 below and unless otherwise required in
`order to comply with deadlines under the law,neither party shall file an actionor institute
`
`legal proceedings with respect to any dispute, controversy, or claim arising out of, relating to,
`
`or in connection with, this Agreement until: (a) the aggrieved party has given the other party
`involved, if
`written notice ofits gnevance setting forth the nature of the dispute, the amount
`
`any, and the remedy desired, and delivering same by certified mail; (b) the other party has
`
`failed to provide a prompt and effective remedy; (c) the aggrieved party has requested senior
`executives for both parties to meet and discuss the matter in order to consider informal and
`
`amicable means of resolution; and (d) either such meeting failed to occur within twenty (20)
`
`days after such request or the meeting did not produce a mutually satisfactory resolution to
`
`the matter.
`
`18.2
`
`Arbitration. Any and all disputes, controversies and claims arising out ofor
`relating to this Agreement or concerning the respective rights or obligations of the parties
`hereto shall be settled and determined by arbitration before a panel of one(1) arbitrator
`
`pursuant
`
`to the Commercial Rules then in effect of the American Arbitration Association.
`
`Each party shal] have no longer than three (3) days to present its position. Judgment upon
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`LICENSE
`AGREEMENT
`BETWEEN KINETECH, INC. AND DIGITAL ISLAND,
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`INC.
`
`the award rendered may be entered in any court having jurisdiction or application may be
`made to such court for a judicial acceptance of the award and an order of enforcement. The
`parties agree thatthe arbitrators shall have the power to award damages. injunctive relief and
`fees and expenses to any party in such arbitration, subject to the
`
`reasonable attorneys’
`
`limitations of ARTICLE 10 above.
`
`18.3
`
`Voluntary, Non-Binding Mediation regarding Field of Use.
`anythingin Section 3.2 above, the parties may, but shall not be obligated to,
`mutually agree in writing to submit a dispute regarding the scope of DI Field of Use to non-
`
`Notwithstanding
`
`binding mediation. Mediation must occur within five (5) business days after the parties agree
`
`to submit the dispute to mediation, and the duration of the mediation shall be limited to one
`
`(1) business day. The parties mutually shall select an independent mediator experienced in
`patent disputes, and each shall designate a representative(s) to meet with the mediator in
`
`good faith in an effort to resolve the dispute. The specific format for the mediation shall be
`
`left to the discretion of the mediator and the designated party representatives and may include
`
`the preparation of agreed-upon statements of fact or written statements of position furnished
`
`to the other party.
`
`18.4
`
`Injunctive Relief. DI and KINETECH hereby acknowledge and agree that
`damages at law and the dispute resolution provisions of Section 3.1 may be inadequate
`remedies for the breach of certain Sections hereof, and, accordingly, DI and KINETECH
`hereby agree that DI and/or KINETECH may be entitled to temporary and permanent
`
`injunctive or other equitable relief with respect to any such breach without the necessity of
`proving actual damagesor posting a bond or other security or resorting to the provisions of
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`LICENSE AGREEMENT
`KINETECH, INC. AND DIGITAL ISLAND.
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`BETWEEN
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`INC
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`Section 3.1. The rights set forth in this Section 3.4shall be in addition to any other rights
`which the parties may haveat law orin equity.
`
`ARTICLE 19
`
`MISCELLANEOUS
`
`19.1
`
`Severability. Should any part or provision of this Agreement be held
`
`unenforceable or in conflict with the law of any jurisdiction,
`
`the validity of the remaining
`
`In the event a part or provision of
`parts or provisions shall not be affected by such holding.
`this Agreement held unenforceable or in conflict with law affects consideration to either
`party, the parties agree to negotiate in good faith amendment of such part or provision in a
`
`manner consistent with the intention of the parties as expressed in this Agreement.
`
`19.2
`
`Force Majeure. Neither party shall be responsible or liable to the other party
`for nonperformance or delay in performance of any termsor conditions of this Agreement
`due to acts or occurrences beyond the control of the non-performing or delayed party,
`
`including, but not limited to, acts of God, acts of government, wars, riots, strikes or other
`labor disputes, shortages of labor or materials, fires, and floods, provided the non-performing
`
`or delayed party provides to the other party written notice of the existence of and the reason
`
`for such nonperformance or delay.
`
`19.3
`
`Integration. This instrument contains the entire and only agreement between
`the parties and supersedes all preexisting agreements between them respecting its subject
`
`matter. Any representation, promise, or condition in connection with such subject matter that
`
`is not incorporated in this Agreement shall not be binding on either party. No modification,
`renewal, extension, or waiver, and no termination of this Agreement oranyofits provisions,
`
`shall be binding on the party against whom enforcement of Sach modification,
`
`renewal,
`
`extension, waiver, or termination is sought, unless made in writing and signed on behalf of
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`LICENSE AGREEMENT
`KINETECH, INC. AND DIGITAL ISLAND,
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`BETWEEN
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`INC.
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`such party by one of its executive officers. As used herein, the word “termination”
`any andall means of bringing to an end priorto its expiration by its own termsthis
`
`includes
`
`Agreement, or any provision thereof, whether by release, discharge, abandonment, or
`
`otherwise.
`
`19.4
`
`Choice of Law and Venue. This Agreement,
`
`including all matters of
`
`construction, validity, and performance, shall be governed by and construed and enforced in
`accordance with the lawsof the State of California, as applied to contracts made, executed,
`and to be fully performedin such state by citizens of such state, without regard to its conflict
`
`of law rules. The parties hereto agree that the exclusive jurisdiction and venue for any action
`brought betweenthe parties under this Agreement shall be the state and federal courts sitting
`
`in California, and each ofthe parties hereby agrees and submits itself to the exclusive
`
`jurisdiction and venue of such courts for such purpose.
`
`19.5
`
`Notice. Any notice, report, request, or statement provided for in this
`
`Agreement shall be deemed sufficiently given when sent by certified or registered mail
`addressed to the party for whom intendedat the address given at the outset of this Agreement
`or at such changed address as the party shall have specified by written notice. Notices shall
`be addressed as per the address given in Schedule 4.5 hereto. Either party may change its
`for the purpose of this paragraph by notice given pursuantto this paragraph.
`
`address
`
`19.6
`
`No Construction Against Drafter. The parties agree that any principle of
`
`construction or rule of law that provides that an agreement shal