`
`_
`To:
`Cc: —
`Subject:
`I12: RPX agreement modaficatior-.5
`Date:
`TJesday, Cctober 22, 2013 7‘19:4S PM
`Attachments:
`29171377 I‘«ppl£! RPX Addgndum tor.
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`— RPXW21
`
`Page 1 of 3
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`VIRNETX EXHIBIT 2056
`RPX v. Virnetx
`
`Trial IPR2014-00176
`
`
`
`— IPR2014-00171 to 00177
`RPX CONFIDENTIAL
`
`FIRST ADDENDUM TO THE
`MEMBERSHIP AND LICENSE AGREEMENT
`
`This First Addendum to the Membership and License Agreement (this "_A5lgent1um")_. dated October 22.
`20l3 (the "A.ddendum Effective Date”), is made by Apple Inc. (’f_Mc111bg"’, “ygu", or "ygg") and RPX
`
`or “u_s") as an addendum to the Membership and License Agreement entered
`Corporation ("Rl’X".
`into by Member and RPX with an Effective Date of December I 1, 2008 (the “Agrec1ncnt"l. 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 Rl’X’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,
`sufficiency of which are hereby acknowledged, the Parties agree as follows:
`
`the receipt and
`
`1. Promotion of Innovation and Patent (_)gal_ity,
`
`(a) 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
`
`“f_u_n_Ll") 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 performed directly by RPX or indirectly through third
`parties at the direction or request of RPX:
`
`(i)
`
`(ii)
`
`(iii)
`
`(iv)
`
`Gathering and analyzing data relating to costs imposed on operating companies
`through patent assertions by non-practicing entities;
`Filing with the United States Patent and Trademark Office (“USPTO”l requests
`for reexamination. or petitions for post grant. covered business method. or inter
`panes review with respect to patents of questionable quality:
`inefficiencies in the
`Educating the general public and industry groups about
`current patent system and the impact of proposals for reforms;
`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,
`to this Section 1(a),
`undertaken pursuant
`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
`
`RPX00122
`
`1—
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`Page 2 of 3
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`
`
`— IPR2014-00171 to 00177
`RPX C ONFIDIZ.\'TI1\I.
`
`In no event will RPX disclose to =.\1ember any nonpublic information regarding any
`way.
`planned or filed petitions or proceedings before the USPTU pursuant to Section 1.
`
`(b) On or before the next zuiniversairy of the Addendum Effective Date, RPX will deliver to
`Licensee a report providing an overview of the monies raised for the Fund and RPX’s
`activities pursuzmt to Section 1 above.
`
`Id Contributions. Member will make a one—timc lump sum contribution of lJS$S00,000 (“Initial
`Coii_t,,rit_i,i_it_iQivi.") for the Fund, and Member will pay such amount to RPX within thirty (30) days
`
`Tliis payment shall not have any effect on the
`following the Addendum Effective Date.
`Member’s Annuzil l\/lembership and License Fee for any year of the Term, and Member has no
`
`In no event
`obligation to make any zitlditional contributions other than the Initial (.‘ontiibutior1.
`will Member be entitled to receive a refund of any amounts paicl
`to RPX pursuant to this
`Addendum,
`
`3.
`
`.\'o Qtlier .t_\m_e}i_d_nieii_t. Except as expressly amended herein, all rights,
`
`terms, conditions and
`
`agreements in the Agreement shall i'emain in full force and etlect.
`
`IN WlTNl"2S..\' W}-IERI-I01". the Parties have caused this Addendum to be executed and delivered by their
`
`duly authorized officers as ol'the applicable date set forth below.
`
`RPX CORI’()RATlOl\'
`
`l\"lEMBl':R
`
`By:___ ..
`
`Name:
`
`By:
`
`iD.<vF.iM..ijh‘1iI~-7L‘
`
`l\'ame: David Melaugh
`
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`me: Pit9¢t9rePa,t§J£..LJti9§ti9n_
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`Dam;
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`Dam. “Qetober 22*, 2018
`
`RPX00123
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`2—
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`Page 3 of 3