— IPR2014-00171 to 00177
`
`From:
`To:
`
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Q0: RPX agreement modificzalinns
`Tuesday, Ocrr-her 22, 2013 7:38:4/ PM
`20'_I3l.Q;2__Appl_e — RPX ixddendum for Innovation Prcrnu ’ ‘:-
`
`I hanks very much A countersigned agreement is attached.
`
`Best,
`
`c.c2m>,—@_rrmcszL9_.c2m>
`
`RPX (Iv.-rpmnrinrz
`Om: Marl-:E-t Plaza. Stcuarl 'I'm\'m'. .'"-mte 800
`Q,
`2.‘-..
`‘~
`"‘_r 1':
`5
`
`
`
`From= >
`Date: Tue, 22 Oct 2013 16:19:26 -0700
`To: ‘.r.p.><cor1:J.;.c.rm>
`«B
`cc: 2@.:pLc_o;p...c.gm"
`Subject: Re: RPX agreement modifications
`
`~
`
`Executed.
`
`VIRNETX EXHIBIT 2051
`
`RPX v. Virnetx
`
`Trial lPR2014-001 73
`
`

`
`IPR2014-00171 to 00177
`
`RPX CONFIDENTIAL
`
`FIRST A.Dl)l-NIDUM TO THE
`
`MEMBERSHIP AND LICENSE AGREEMENT
`
`This First Addendum to the Membership and License Agreement (this “Addcndum“), dated October 22,
`
`2013 (the “fildendurri Effective Date”), is made by Apple Inc. ("Mernbcr”, “you”, or "y_ggr”) and RPX
`
`Corporation (“E2(_",
`
`or ‘‘Q’') as an addendum to the Membership and License Agreement entered
`
`into by Member and RPX with an Effective Date of December ll, 2008 (the “ grcemcnt"). 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 R.PX‘s efforts to promote
`
`innovation and patent quality, as more fully set forth herein.
`
`NOW,
`
`'l‘Hl‘:'REFORE,
`
`in accordance with Section 9.3 of the Agreement and in consideration of the
`
`promises and mutual covenants herein and other good and valuable consideration,
`
`the receipt and
`
`suflicioncy of which are hereby acknowledged, the Parties agree as follows:
`
`1. Promotion of l.I_1;1Q}{_fl_ll_QI_}__§l]§l_ __Patent Quality.
`
`(21) RPX agrees that, for the period beginning on the Addendum Effective Date and ending on
`December ll, 2014, RPX will collect contributions to the Innovation Promotion Fund (the
`
`“Eur_rd") 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, winch etiorts might include (at RPX’s sole discretion) any of
`
`the following activities, whether pr:r'foiinct1 directly by RPX or indirectly through third
`
`parties at the direction or reqt.rest 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
`
`partes review with respect to patents of questionable quality;
`Educating the general public and industry groups about
`
`(iii)
`
`inefficiencies in the
`
`current patent system and the impact of proposals for relbrms;
`
`(iv)
`
`Conducting prior art searches to assist with challenges against potentially invalid
`
`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 complete control over the selection,
`undertaken pursuant to this Section [(21),
`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
`
`communicate with Member regarding the activities or to otherwise involve Member in any
`
`Page 2 of 3
`
`RPX00125
`
`

`
`IPR2014-00171 to 00177
`
`RPX CONl*‘lD17,NTIAL
`
`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 l .
`
`(b) On or before the next anniversary of the Addendum l-Effective 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.
`
`Contributions. Member will make a one-time lump sum contribution of US$500,000 (“Init_i_gfl
`Cont;ib;tt_ion") 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
`.\/lcmber’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.
`
`_()__tl‘1er_._A_y_i_e_iid_n;igt1_t_. Except. as expressly amended herein, all rights, terms, cotiditions and
`
`agreements in the Agreement shall remain in full force and effect.
`
`TN WIT
`
`NESS WHF.RF,Ol~‘, the Parties have caused this Addendum to be executed and delivered by their
`
`duly authorized officers as ofthc applicable date set forth below.
`
`--
`
`RPX CORPORATION
`'
`;
`,1
`rl
`
`’
`t
`r-
`
`By: J?‘ 6. -~»~L/_....
`,
`t.‘-
`l\’ame:
`J’ by‘,
`: w("/I/Oi
`me:
`CE.‘ i'”T___-
`
`l\/IEMBER
`
`13y':___:i )4<;«;l.._-.i‘./big»
`,
`-3]
`Nan1cI_,_I.3_iYLC_i__h./.I..e|augh .
`Tit1c:._‘?.lF.9CT°.Fv .t?_e_!::»?_r1t_.Li*i9a“0n
`
`.
`
`..*
`
`-
`
`Date.
`
`‘SQ I g’£»\'.3>M___
`
`H_____
`
`Date: Octr_;;_l_3_er 22, 2013
`
`2
`
`"“9°3°'3 — RPX00126