— IPRZOI4-00171 to 00177
`
`To: Cc: —
`
`Subject:
`Date:
`Attachments:
`
`Re: RPX agreement rnodiéications
`Tues~:Jay, October‘ W, 2013 1:30:47 PM
`20131022 Agpl-3 - RPX Addendum for Innovation Promotion (RPX ciraft_‘,v.docx
`3Ez(_A-ddendum for Innovation Premc-tion RIIDLINE (RPX draft)]_1].doCx
`20131022 Agple -
`
`Thanks‘
`
`Please find attached a revised agreement and redline against your previous version. This should be good
`
`to go on our side.
`
`If you‘d like to discuss, we're generally available after 1 pm today.
`
`Best Regards,
`
`RPX CUI.'puI'zIl.iuIu
`One-. l‘«|2-xrlcel
`l‘la'/.:-1. r’--‘euiavt 'l‘o\\-“er Siilte 800
`-1r
`R
`rm‘
`
`
`
`
`
`From: >
`Date: Mon, 2_‘l. Oct 2013 23:20:49 -0700
`
`To= mmm>
`Cc= " >J
`Subject: RPX agreement modifications
`
`r x r.
`
`n>
`
`Here are some minor edits to the agreement, in clean and redline form.
`
`I have a fair bit of time free
`
`tomorrow if you want to get on a call to discuss.
`
`Applelnc.
`I Infinite l.(!(\['), MS 160-ZXYJ, Ctiperrino, C1lllfi’)l‘l1l2'l 050M
`
`ATTOR.\'EY-CI.lF_NT PRlVlI.ECED & VVORK PRODUCT
`
`'l';1i.-.cnIuIlir1r.ss:i
`tlisizilzuzioiz is pr
`
`:m lizc 3.-.1!-.t tin: uftilc i1.ic:I-{ml rc;i'_.nc1;l(:,l ;I::d um) .3l‘l!!E||l)C(1llll(lc)1llill :m.l prn.'ilL‘.gc<l i:il'nr.:|:~I:m\. An} umtuziu-r:7ul 1\:vir\\,1m:. lll\‘;‘.l(L\‘llI‘c4-I‘
`-'!..lci.l. 11';--.vu arc .]i!| lllc intclnlc-.l zniiricut. pleas: ..'nnl.:;;l the ncudcr by xcply small ;m..l il€.\i'.ll?_V all conic: \’!“l.ll: orii.-inal l1|C.\h('ly_L:.
`
`
`
`VIRNETX EXHIBIT 2052
`
`RPX v. Virnetx
`
`Trial IPR2014-001 71
`
`

`
`—l
`
`IPR2014-00171 to 00177
`RPX C.‘Ol\'FlDET\TTlAI,.
`
`FIRST ADl')l'3'.\lDl,ll\rl T0 T1 IE
`
`MEMBF.RSl—llP AND LICENSE AGREElV1El\"l‘
`
`This First Addendum to the Membership and License Agreement (this “Addendu1n":), dated October 22,
`
`2013 (the “Addendum Effective Date”), is made by Apple Inc. (‘‘Member’‘,
`
`or “yc_)ur_”) and RPX
`
`Corporation (“l_UjX”, “we”, or “us”) as an addendum to the Membership and License Agreement entered
`
`into by Member and RPX with an l:'ffective Date of December 11, 2008 (the “Agrcement”). Except as
`
`expressly set forth herein, all capitalized terms shall have the meaning given in the Agreement.
`
`WllF.RF,AS. the Parties desire to supplement the Agreement to further support RPX‘s efforts to promote
`
`innovation and patent quality, as more fully set forth herein.
`
`NOW, THEREFORE,
`
`in accordance with Section 9.3 of the Agreement and in consideration of the
`
`premises and mutual covenants herein and other good and valuable consideration,
`
`the receipt and
`
`sufficiency of which are hereby acknowledged. the Parties agree as follows:
`
`1. Erontotion of Innovation and Patent Quality.
`
`(a) RPX agrees that, for the period beginning on the Addendum I-_‘.ffective Date and ending on
`
`December 11, 20M, RPX will collect contributions to the Innovation Promotion Fund (the
`
`“flg(_l") from Member and will use reasonable efforts to collect additional contributions
`
`from other RPX members that are interested in patticipating in the Fund to promote
`
`innovation and patent quality, which efforts might include (at Rl’X’s sole discretion) any of
`
`the following activities, whether performed directly by RPX or indirectly through third
`
`parties at the direction or request o FRPX:
`
`(_i)
`
`Gathering and analyzing data relating to costs imposed on operating companies
`
`through patent assertions by non-practiciiig entities;
`
`(ii)
`
`Filing with the United States Patent and Trademark Ofliee (“[_lS_B"l;Q”) requests
`
`for reexamination, or petitions for post grant, covered business method, or inter
`
`partes review with respect to patents ofquestionable quality;
`
`(iii)
`
`iriclliciencies in the
`Educating the general public and industry groups about
`current atent s stem and the irn act of rro osals for relbnns;
`P
`3
`P
`I
`P
`
`(iv)
`
`Conducting prior art searches to assist with challenges against potentially invalid
`
`patents, and cleveloping databases or technologies to improve the efficiency of
`such searches; and
`
`(v)
`
`Creating mechanisms to increase transparency in the patent market.
`
`As between Member and RPX, RPX will have complete control over any and all activities
`
`undertaken pursuant to this Section 1(a),
`
`including complete control over the selection,
`
`initiation, termination, and funding of the activities and the manner and method in which the
`
`activities are undertaken,
`
`the hiring of outside counsel or consultants, and all strategic
`
`decisions in connection with any petitions or proceedings before the USPTO or otherwise.
`
`Other than the report described in Section l(b) below, RPX will have no obligation to
`
`cornmunicate with Member regarding the activities or to otherwise involve Member in any
`
`"a9°2°'5 —l RPX00097
`
`1
`
`

`
`— “R2014-00171 to 00177
`RPX CONFII)l;‘I\"l‘IAL
`
`way.
`
`In no event will RPX disclose to M ember any nonpublic. it1foi't11ati0i1 regarding any
`
`planned or filed petitions or proceedings before the USPTO pursuant to Section 1.
`
`(b) On or before the next ztmtiversary of the Addendum EtI'eetive Date, RPX will deliver to
`
`Licensee a report. providing an overview of the monies raised for the Fund and Rl’X‘s
`
`activities and use of the monies pursuant to Section 1 above.
`
`2. Contributions. Member will make a onetime lump sum contribution of US$500,000 (“_In_i_ti_a_l
`
`Contribution”) for the Fuiiri, and .\/[ember will pay such amount to RPX within thirty (30) days
`
`following the Adclcndum Effective Date.
`
`'I‘his payment shall not have any effect on the
`
`Member‘s Annual Membership and License Fee‘: for any year of the 'l'ern1, and Member has no
`
`obligation to make any additional contributions other than the Initial Contribution.
`
`In no event
`
`will Member be entitled to receive a re-l’uncl of arty amounts paid to RPX pursuant
`Addendum.
`
`to this
`
`L»)
`
`\'0 Other Amendment. Except as expressly amended herein, all rights, terms. conditions and
`
`agree-nteitts in the Agreement shall remain in full force and effect.
`
`IN WITNESS WHEREOF, the Parties have caused this Adclcntlum to be executed and delivererl by their
`
`duly authorized ollieers as ofthc applicable date set forth below.
`
`RPX CORPORATION
`
`MEIVIBER
`
`By:
`
`Name:
`
`Title:
`
`Date:
`
`___fl_“______,________._______m
`
`_j
`
`By:
`
`Name:
`
`'l'it| c:
`
`Date:
`
`2
`
`

`
`IPR2014-00171 to 00177
`
`RPX CONFlDEt\'Tl:\L
`
`FIRST ADDENDUM TO THE
`:‘v‘lE.\rlBERSllll’ AND l,|CE.NSl~I A(iRF.F.tVll~'.l\"l'
`
`'l“nis First Addendum to the l\/Icinhership and License Agreement (this "Atltlcri(‘.yr1i“). dated October 22,
`i7.('tI3 (the ‘Atldendu_ri),§[[ggtjye_Date"), is made by Apple Inc. (:hjle_I1tL__ct"‘.
`or "_\%"') and RPX
`(‘orporation ("iW(", “B~*.'L*.:t1.tb_€_t.:: or
`as an addeiidizin to the l\.'lenibei*siiip and License
`Agreenient entered into by Member and RPX with an F.ffcctt\'e Date of [~
`~-~
`])_e;eii1ber J].
`
`20()tt (the “.§3gr<;cnt_<:nf‘).
`Except as expressly set forth herein, all capilalizul
`tenns shall have the
`meaning given in the Agreement.
`
`WHl:'Rl:'AS, the Parties desire to supplement the Agreement to further support l{}’X's efforts to promote
`innovation and patent qtiality, as more fully set forth herein,
`
`in accorriance with Section 9.3 of the Agreeinent and in consideration of the
`'l‘H[tRE.l~'()Rl€,
`NOW.
`premises and mutual covenants herein and other good and valuable consideration.
`the receipt and
`su fficicncy of which are hereby acknowledged. the Parties agree as follows:
`
`1.
`
`[’romotiort of lnnox-'at_i,on and Patent Quality.
`
`(.3) RPX agrees that, _tl‘l§‘p§:t:l’(,‘,_(_l_btglilllll3g on the Acidcnclum Effective Date and ¢t15,.t,l'Ig 0}]
`mgerribgg t__1‘_;’,tj-fl .1. RPX wilt collect t:ontn'buti(>n=: to the lnnovatiori Prornotton Fund (the
`“,Fun_d7') from Membcr and Will,U33.l'¢§i§Ql1£tl!l¢._Q[fQ[L$...?Q..§fll§£L.§.(lClL®D.§l..§fllLflb_lBi9l1§
`£m;n_othe: RPX tttembers m..participating in the Fund to pron‘-ore
`innovation and patent quality. which efforts might include (at Rl’X‘s sole discretion) any of
`the following activities. whether perfonitetl directly by RPX or indirectly tlirougli
`third
`|’)i.ll".lt':5 at the t.‘.ircctiort or request ofRPX;
`
`~|"#§ém$i£éa{'¥J.ju¢ritpe
`
`(i)
`
`(ii)
`
`(iii)
`
`(iv)
`
`Gathering and analyzing data relating to costs imposed on operating companies
`thmttgli patent assertions by non-practicing entities;
`Filing with the United States Patent and Trademark ()fficc ("U§_P'l'_l__)"_) requests
`for reexamination. or petitions for post grartt, covered hllSlllt.‘SS riietliod, or inter
`partcs review with respect to patents ofquestionable quality;
`iiielliciencics in the
`Educating the general public and industry groups rtbout
`current patent system and the impact of proposals for reforms;
`Conducting prior art searches to assist with challeiiges against potcntialt)-' invalid
`patctits, and developing databases or technologies to improve the efficiency of
`such searcltes; and
`
`(v)
`
`(‘rearing mechanisms to increase transparency in the patent market.
`
`As betweeit lvlember and RPX, RPX will have complete control over any and all activities
`undertaken pursuant to this Section l(a), including complete control over the selection,
`initiation, termination. and funding ofthc activities and the manner and method in whicli the
`activities are undertaken,
`the hiring of outside counsel or consultants, and all strategic
`decisions in connection with any petitions or proceedings before the USPTO or Otherwise.
`Other than the report described in Section !(b) below, RPX will have no obligation to
`
`Page 4 of 5
`
`RPX00099
`
`

`
`IPR20l4-00171 to 00177
`
`.._.....__-.._..-.....t....._____.......t.........................._..,
`
`I Fnrnintted: Lil rdei-line
`
`R PX C()Nl’lDF.NTlAl.
`
`cuttiniuiticatc with Meinliei rc-gardin_i; the ztctivities or to ollieruise involve l\'l:*:iil>-er in any
`way.
`In no event will RPX (ll5Cl0S:.' to Meizibet aiiy nonpubiic iitlbiiiiatiozi regarding any
`planned or tiled petitions tit‘ proceedings before tlie1iSP'l‘0 pursuant to Section I.
`
`(b)
`
`3l'—lie+:te+i-vilies—tHtdert+il\etiia—SeeHunl~ 5-hull cotitimie so long as there are sufficient mosiies in
`the-4‘»ui=.e+—0ii—er—be€oit-—-eaelion or before the next £Il1I1l‘s'€)‘S€ll’)’ of the /\ddendum Effective
`Date, RPX will deliver to licensee a report providing an ovtrrvicw ofthc mmiics raised for
`the l‘imd and Rl’X‘s activities and use ofthe monies ptirsu-tint to Section I Hb()\'(.'.
`
`2.
`
`(_‘;|i_iit_igil_
`\/leiiiher will make a nne~time lump =.ui7i contrthimnn of lJS.'>'.S-:]tL[‘.t)i'l
`(Tpiitiihiitiotis.
`_(j_qntr:l>tirioii“) for the Fund, and l\1ei'nE.>cr will pay such amount to Rl-‘X within thirty (31?) days
`lblltiwiiig Eli: Atldenilzim Effmzlii-‘c Dale.
`This }i2ty'tIt:iil slittll not
`ll'¢l‘/C any effect on the
`i\'lcinbcr’s Annual l\’lt.-iiibcrsliip mid l..l'.‘L'll.iL' Fcc l'ur any year of tlic Term. and lvlcm‘Dct' has no
`obligazion to make any additic-nal contributions other than the lnitzal (,‘miti*ihi;tinn.
`In no event
`will Mcrnhur be entitled to l'CCL'l\-C .1 rcfuntl of any 2ll!‘lULllllS paid to RPX gitnsiiaiii
`in this
`Addcntiuni. ~&m&wi-ilrzii§.r in-the Agrt-.-etiient; Pyle-iiibt:i'—eclmo+\=i~ed4_ge5
`and agrees that they lOl'€gC'llIg €Htl§)ulll will not-be»-inel-adeel-iii—c«1lctHatiiifg—M-enil9er4sw3n1i:\*l-lrliee
`nudesSeetien-:-8l3-the—A'greeiné»nt';-
`
`N0 Otlrci Aiiteiidiiieiit. Except as expresslv amended lierc-in, all rights, terms, conditions and
`agreeiiierits in the Agreement shall remain in .“i:|| force and ei‘Tec‘..
`
`IN Wl l'Nl:S$é WHER F.(')F, the Parties hEl‘.'t: cziusul this Addctiduitt. to l)C CI\L‘C1.ll.L'l§ zuid dclix-cicd by their
`dul)’Z1ulllGrlZCCl officers as of the applicable date set forth below.
`
`RP.\’ CORPORATION
`
`ME.Vll3ER
`
`By; :___fl_ _
`
`Name.
`
`Title
`
`Dale:
`
`_
`
`By:
`
`Name:
`
`Title;
`
`Dale:
`
`2
`
`"a9°5°'5 —
`
`RPX00100