`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`in: RPX agreement modifications
`Tuesday, Octc-her 22, 2013 7:38:41 PM
`2Q'_I_3_l,_Qg2A_Ap,p!_e — R.9X Addendum for Innovation Pram:
`
`
`i ‘:-
`
`I hanks very much I A countersigned agreement is attached.
`
`Best,
`
`RPX (Tr.-rpmnrinr:
`Om: Marlcet Plaza. Stcuarl '|'<J\\'m‘. I"-llitrs 800
`‘P
`V‘
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`("=.r‘r‘,
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`
`
`From: >
`
`Date: Tue, 22 Oct 2013 16:19:26 -0700
`To=‘@.rp.><corp.:.c.rm>
`Cc=:@.L3._._><corp_-.cmn" 9m>,
`
`Subject: Re: RPX agreement modifications
`
`Executed.
`
`03rp_>mLp_.c2m>
`
`VIRNETX EXHIBIT 2055
`
`RPX v. Virnetx
`
`Trial IPR2014-00172
`
`
`
`IPR2014-00171 to 00177
`
`RPX CONFIDENTIAL
`
`FIRST ADDENDUM TO THIS
`
`MEMBERSHIP AND LICENSE AGREEMENT
`
`This First Addendum to the Membership and License Agreement (this “Addcn(lum“), dated October 22,
`
`2013 (the “&lden,t_lL_t_ni_,E_f_l‘c_=_t;_tiv>e Date”), is made by Apple Inc. (”.\rletnber”, “$93”, or "y_ggr”“) and RPX
`
`Corporation (“ET
`
`or ‘‘Q’‘) as an addendum to the Membership and License Agreement entered
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`into by Member and RPX with an Effective Date of Deecnt'ocr I1, 2008 (the “Agrccmcnt"). Except as
`
`expressly set forth herein, all capitalized terms shall have the meaning given in the Agreement.
`
`WHEREAS, 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,
`
`'l‘HEREFORE,
`
`in accordance with Section 9.3 of the Agreement and in consideration of the
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`promises and mutual covenants herein and other good and vrtluzible considertttion,
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`the receipt and
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`sufticiency of which are hereby acknowledged, the Parties agree as follows:
`
`1. Promotion of_Ir1i1o;I,a_tioi3t §l]_Cl_:_P_L\lQ[1l._Ql_.lalli}[.
`
`(a) RPX agrees that, for the period beginning on the Addendum Effective Date and ending on
`December 11, 2014, RPX will collect contributions to the Innovation Promotion Fund (the
`
`“EI_.tngi") from Member and will use reasonable efforts to collect additional contributions
`
`from other RPX members that are interested in participating in the Fund to promote
`
`innovation and patent quality, which efforts might include (at RPX’s sole discretion) any of
`the following activities, whether pr:rft'iinicd directly by RPX or indirectly through third
`
`parties at the direction or request of RPX:
`
`(i)
`
`Gathering and analyzing data relating to costs imposed on operating companies
`
`through patent assertions by non-practicing entities;
`
`(ii)
`
`Filing with the United States Patent and Trademark Office (“USI-"l‘O_"‘) requests
`
`for reexamination, or petitions for post grant, covered business method. or inter
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`partes review with respect to patents of questionable quality;
`Educating the general public and industry groups about
`
`(iii)
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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 searches 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
`
`(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
`
`including cotnplete control over the selection,
`undertaken pursuant to this Section 1(a),
`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
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`communicate with Member regarding the activities or to otherwise involve Member in any
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`Page 2 of 3
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`RPX00l25
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`
`
`IPR20l4-00171 to 00177
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`RPX CONFIDENTIAL
`
`In no event. will RPX disclose to Member any nonpublic information regarding any
`way.
`planned or filed petitions or proceedings before the USPTO pursuant to Section 1.
`
`(b) On or before the next anniversary of the Addendum liltcetive Date, RPX will deliver to
`Licensee a report providing an overview of the monies raised for the Fund and RPX’s
`
`activities pursuant to Section 1 above.
`
`_Qg‘t_ri_l)Ltt_i_g_rt__s. Member will make E1 one-time lump sum contribution of US$500,000 (“Itjaitjfl
`Contri_bttt_i_Qn") for the Fund, and Member will pay such amount to RPX within thirty (30) days
`following the Addendum Effective Date.
`This payment shall not have any effect on the
`Mcmber’s Annual Membership and License Fee for any year of the Term, and Member has no
`obligation to make any additional contributions other than the Initial Contribution.
`In no event
`will Member be entitled to receive 21 refund of any amounts paid to RPX pursuant
`to this .
`Addendum.
`
`3.
`
`Other Ay_1_<:_ttd_n}e_t1t_. Except as expressly amended herein, all rights, terms, cotiditions and
`
`agreements in the Agreement shall remain in full force and effect.
`
`TN WIT
`
`NESS Vt’!-’lF.RE10l-‘, the Parties have caused this Addendum to be executed and delivered by their
`
`duly authorized offleers as ofthc applicable date set forth below.
`
`By:
`
`RPX CORPORATION
`.
`'
`,-,,
`J?’ C ‘
`
`t
`/
`H‘
`i=.,
`E
`3-’ "'
`Name:
`\‘’(.~),
`\
`Title: § . _._._:_e_..
`C} it "’
`
`.... -
`
`1flZR_.:>4tx2lm.i./K”-ié:3r.(l__
`
`Name; David Melaugh _
`
`Ti11g;_Qit_eCTQ_r1 Patent Litigation
`
`Date:
`
`""zI<1».l\;e_-
`
`__-____.
`
`Date; October 2212013
`
`Page 3 of 3
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`RPX00126