`
`From:
`To:
`Cc;
`Subject:
`Date:
`Attachments:
`
`Qu: RPX agreenweri modnfnratunns
`Fucsday, Cztotver 22, 2013 7:38 4/ PM
`
`291}! 13334391;
`{PX Agidcrxdnnn for Inncvatxon Fromq;‘n."‘ 1' wrff
`
`lhanks very nuch‘ A courtersigned agreernenl is attached.
`
`Best
`
`
`
`F ro m= ‘.0-r2vE~:°sJ >
`Date: Tue, 22 Oct 2013 16:19:26 O7C0
`
`To:‘@npTxcorm¢..v rm
`Cc: mogcorp,Lm“ <‘;3rn>,
`Subject: Re‘ RPX agroomnm rmdifirarions
`
`Lxecuted.
`
`'
`
`corp.r.0m>
`
`— RPXW124
`
`Page 1 of 3
`
`VIRNETX EXHIBIT 2057
`RPX v. Virnetx
`
`Trial IPR2014-00176
`
`
`
`— IPR2014-00171 to 00177
`
`RPX C()Nl*'lDE-INTIAL
`
`FIRST ADDENDUM TO THE
`MEMBERSHIP AND LICENSE AGREEMENT
`
`This First Addendum to the Membership and License Agreement (this “Addcndum"), dated October 22,
`2013 (the “&ige;Liu,rn_Fgfl‘_egtiye_Qat_e:”), is made by Apple Inc. ('_’I\,/lgrgllg”, “y_(_)_t_1”, or “y_o_ug”') and RPX
`Corporation (“fl_)§", “w_c”, or ‘'Q’‘) as an addendum to the Membership and License Agreement entered
`into by Member and RPX with an Effective Date of December I1, 2008 { the “Agreemcm"). 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.
`
`in accordance with Section 9.3 of the Agreement and in consideration of the
`NOW, THEREFORE,
`premises and mutual covenants herein and other good and valuable consideration,
`the receipt and
`sufticiency of which are hereby acknowledged, the Parties agree as follows:
`
`I. Promotion of Innovation and Patent Quality.
`
`(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
`“t_-‘gr_i_d”) 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
`irmovation 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 cntitics;
`Filing with the United States Patent {ind Trademark Office (“USPTO”) requests
`for reexamination, or petitions for post grant, covered business method, or inter
`partes review with respect to patents ofqnestionable quality;
`itiefticiencies 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
`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 petitiotis 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
`
`— RPXW125
`
`Page 2 of 3
`
`
`
`IPR20l4—0017l to 00177
`
`RPX C()NFlDF,NTlAl.,
`
`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 Effective Date, RPX will deliver to
`Licensee 11 report providing an overview of the monies raised for the Fund and RI’X’s
`activities pursuant to Section 1 above.
`
`Contributions. Member will make a one«timo lump sum contribution of USS50(),0(lO (“_lr_iit_ig1_l
`
`Contribtttion”) 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
`Member’s Annual Membership and License lice 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 :1 refund of any amounts paid to RPX pursuant
`to this
`Addendum.
`
`I.»
`
`No Other Aingtigligng. Except as expressly amended herein, all rights, terms, conditions and
`agreements in the Agreement shall remain in full force and effect.
`
`WITNESS W HEREOF , the Parties have caused this Addendtiin to be executed and delivered by their
`duly authorized officers as of the applicable date set forth below.
`
`RPX CORl’()RA'l‘!0N
`
`MEMBER
`
`By:
`
`.. By:
`,
`,_
`F
`i._
`/
`Name: David Melaugh A
`Naine: _.’L(,¥‘;_\)_'{.’.<‘<. of
`
`
`
`
`Title:
`
`-mo; Director, Patent Litigation
`
`Date; October 22, 2013
`
`Page 3 of 3
`
`RPX00l26