— IPRZOI4-00171 to 00177
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`From: _
`To:
`Cc:
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`Subject:
`Date:
`Attachments:
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`Re: RPX a_qrccme:~.t modifications
`Tuesday, (‘.1‘t<Jbe= 22,, 2013 7: 19:45 PM
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`EXCCL1T.C(l.
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`VIRNETX EXHIBIT 2054
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`RPX v. Virnetx
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`Trial IPR2014-001 72
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`—l
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`IPR2014-00171 to 00177
`RPX CONFIDENTIAL
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`FIRST Al)l)ENDljl\rl TO THE.
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`MEMBERSHIP AND LICENSE AGREEMENT
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`This First Addendum to the Membership and License Agreement (this "fl(.l§l1(luIIl"), dated October 22.
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`2013 (the “i_%_ddenduin Effective Dag’), is made by Apple Inc. ("Mern_ber“, “you_", or ‘‘your''’) and RPX
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`Corporation
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`or
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`as an addendum to the Membership and License Agreement entered
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`into by Member and RPX with an Effective Date of December I l, 2008 (the “A_greernent_”). Except as
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`expressly set forth herein, all capitalized terms shall have the meaning given in the Agreement.
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`WI—lERl3/\S, the Parties desire to supplement the Agreement to further support RPX‘s efforts to promote
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`innovation and patent quality. as more fully set forth herein.
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`NOW, THEREFORE,
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`in accordance with Section 9.3 of the Agreement and in consideration of the
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`premises and mutual covenants herein and other good and valuable consideration,
`sufficiency of which are hereby acknowledged, the Parties agree as follows:
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`the receipt and
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`1.
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`I,’r_omotio.n of Innovation and Patent ( Quality.
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`(a) RPX agrees that, for the period beginning on the Addendum F.ifcctivc Date and ending on
`December i l. 2014, RPX will collect contributions to the Innovation Promotion Fund (the
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`"If_u_i_t;l”) from .VIembcr and will use reasonable efforts to collect additional contributions
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`from other RPX mernbers that are interested in participating in the Fund to promote
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`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
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`parties at the direction or request of RPX:
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`(ii)
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`Gathering and analyzing data relating to costs imposed on operating companies
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`through patent assertions by nompractieing entities;
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`(ii)
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`Filing with the United States Patent and Trademark Ol‘1'ice (“LI_§zP'I,Q”) requests
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`for reexaniination. or petitions for post grant, covered business method, or inter
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`partes review with respect to patents of questionable quality;
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`(iii)
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`Educating the general public and industry groups about
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`inefficiencies in the
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`current patent system and the impact of proposals for reforms;
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`(iv)
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`Conducting prior art scarclies to assist with challenges against potentially invalid
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`patents, and developing databases or technologies to improve the efficiency of
`such searches; and
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`(v)
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`Creating mechanisms to increase transparency in the patent market.
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`As between Member and RPX. RPX will have complete control over any and all activities
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`undertaken pursuant
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`to this Section 1(a),
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`including complete control over the selection,
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`initiation, termination, and funding of the activities and the manner and method in which the
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`activities are undertaken,
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`the hiring of outside counsel or consultants, and all strategic
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`decisions in connection with any petitions or proceedings before the USPTO or otherwise.
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`Other than the repon described in Section l(b) below, RPX will have no obligation to
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`communicate with Member regarding the activities or to otherwise involve Member in any
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`1m
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`l nrxoom
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`I
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`IPR20l4—00l7l to 00177
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`RPX CONFIDENTIAL
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`way.
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`In no event will RPX disclose to \/{ember any nonpublic lI1llJl'1I1£1ll0I1 regarding any
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`planned or iilcd petitions or proceecliiigs befoie the USPTO pursuant to Section 1.
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`(b) On or before the next nnniversaiy of the Addendum Effective Date, RPX will deliver to
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`Licensee a report providing an overview of the monies raised for the Fund and Rl’X’s
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`activities pursuant to Section 1 above.
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`F») Contributions.
`(‘ontribution"‘) for the Fund, and I\/lcmbcr will pay such amount to RPX within thirty (30) days
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`I\-1e_ml)i:r will make a one-time lump sum contribution of US$500.000 (_“Initi:_il
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`following the Addendum l':l‘t’cctive Date. This payiiieiit shall not
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`liavc any effect on the
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`Mcmbcr’s Annual Menibcrship and l.iccnsc Fee for any year of the Tenn, and .\Ile1nber has no
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`ln no event
`obligation to make any additioiial contributions other than the Initial Colitribiitioii.
`will Member be entitled to receive 2! refund of any alTl(_‘Hll1lS paiil
`to RPX purxnzmt
`to this
`Adilcndum,
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`3. No Other ;’\mcndn‘ient. Except as expressly al‘nr’.‘.rl(l{:(l herein, all rights, terms, conditions and
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`agreements in the Agreement shall remain in full force and ct'l'cct.
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`IN WITNFSS WI-ll"-.RF.0l". the Parties have cznrsed this i‘\(.l(.l<.‘l1Llll1’)'l to be executed and delivered by their
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`duly autliorizecl o.tTcers as ol’the applicable date set forth below.
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`RPX c:0.R_I>0RA'’rI()_\‘
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`'
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`IWENIBER
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`By: ____m H
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`By: } I
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`fiv_El___‘_
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`‘llco-. L\
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`Naiiie:
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`_____
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`Name: D3‘/id Mela‘-lgh
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`___m___
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`-r;t_1e;_________V‘
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`Tine; Director, Patent Litigation
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`Date:
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`__ _j
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`1,3,9: __(_Dctober 22, 2013
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`2