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`EX-10.1 2 c04572exv10w1.htm EXHIBIT 10.1
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`Page 1 of 12
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`Exhibit 10.1
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`CONFIDENTIAL –
`FRE RULE 408
`Execution Copy
`
`SETTLEMENT AND LICENSE AGREEMENT
`
`This SETTLEMENT AND LICENSE AGREEMENT (together with all Exhibits attached hereto, the “Agreement”), is made and
`entered into as of May 14, 2010 (the “Effective Date”), by and among Microsoft Corporation, a Washington corporation
`(Microsoft Corporation together with its Affiliates, “Microsoft”), on the one hand, and VirnetX Inc., a Delaware corporation
`(VirnetX Inc. together with its Affiliates, “VirnetX”), on the other hand. As used herein, “Party” refers to any of VirnetX or
`Microsoft individually, and “Parties” refers to VirnetX and Microsoft collectively.
`
`RECITALS
`
`A. VirnetX Inc. has accused Microsoft of infringing U.S. Patent Nos. 6,502,135 B1 and 7,188,180 B2 (the “Patents-In-Suit”)
`in actions filed in the U.S. District Court for the Eastern District of Texas (“the Court”), designated Civ. Action
`No. 6:07CV80 (LED) and Civ. Action No. 6:10CV94 (LED) (“the Actions”).
`
`B. Microsoft Corporation has denied any such infringement of the Patents-in-Suit and challenged the validity thereof.
`Microsoft has also challenged the enforceability of the Patents-in-Suit to the extent allowed pursuant to the Order dated
`January 15, 2010 in Civ. Action No. 6:07CV80 (LED), Docket No. 274 (“the January 15, 2010 Order”).
`
`C. Microsoft admits no liability with respect to any of the claims asserted in the Actions.
`
`NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the
`Parties agree as follows:
`
`AGREEMENT
`
`1 Compromise Only. This Agreement is entered into for purposes of settlement and compromise only. Nothing contained in this
`Agreement, or done or omitted in connection with this Agreement, is intended as or shall be construed as an admission of or by
`any Party, or on behalf of any Microsoft Released Party (as hereinafter defined), of any fault, liability or wrongdoing
`whatsoever, or an admission of or by any Microsoft Released Party that any Licensed Patents (as hereinafter defined) are
`infringed, valid or enforceable.
`
`2 Definitions.
`
`“Licensed Patents” shall mean all VirnetX patents and patent applications in existence and owned by or assigned to
`VirnetX Inc. or its current Affiliates as of the Effective Date (including, without limitation, the Patents-In-Suit and the
`patents and applications set forth on Exhibit A) and all patents and applications related to such patents and applications
`(including, without limitation, parents, continuations, continuations in part, and divisionals).
`
`“Affiliate” means any entity that Controls, is Controlled by or under common Control with Microsoft Corporation or
`VirnetX Inc.
`
`“Control” means direct or indirect ownership of at least fifty percent (50%) of the voting power, capital or other securities
`of an entity.
`
`“Licensees” means Microsoft’s distributors and customers, but only to the extent such third parties exploit any Microsoft
`software which (i) has been licensed, created or developed by Microsoft and (ii) is licensed under this Agreement.
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`MICROSOFT 1075
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`
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`Exhibit 10.1
`
`3. Releases
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`Page 2 of 12
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`3.1 VirnetX, on behalf of itself and its predecessors, successors, assigns, attorneys, directors, shareholders, employees, and
`officers (collectively with VirnetX, the “VirnetX Releasing Parties”), hereby voluntarily, irrevocably and
`unconditionally fully and forever releases, discharges, covenants not to sue, and holds harmless Microsoft and its
`predecessors, successors, assigns, attorneys, insurers, agents, servants, subcontractors, officers, directors, shareholders,
`representatives, employees, and Licensees (collectively, the “Microsoft Released Parties”) from and for any and all
`rights, claims, debts, liabilities, demands, obligations, promises, damages, causes of action and claims for relief of any
`kind, manner, nature and description, known or unknown (collectively, “Claims”), which any of the VirnetX Releasing
`Parties have, may have had, might have asserted, may now have or assert, or may hereafter have or assert against the
`Microsoft Released Parties, or any of them, arising, accruing or occurring, in whole or in part, at any time prior to the
`Effective Date, including, without in any way limiting the generality of the foregoing, any claims or causes of action
`arising out of or related to any of the facts, transactions, matters or occurrences giving rise to or alleged, or that could
`have been alleged in or discovered in, the Actions or under any of the Licensed Patents.
`
`3.2 Microsoft, on behalf of itself and its predecessors, successors, assigns (collectively with Microsoft, the “Microsoft
`Releasing Parties”), hereby voluntarily, irrevocably and unconditionally fully and forever releases, discharges,
`covenants not to sue, and holds harmless VirnetX and its predecessors, successors, assigns, attorneys, insurers, agents,
`servants, subcontractors, officers, directors, representatives, and employees (collectively, the “VirnetX Released
`Parties”) from and for any and all Claims which any of the Microsoft Releasing Parties have, may have had, might
`have asserted, or may now have or assert prior to the Effective Date arising out of or related to any of the facts,
`transactions, matters or occurrences giving rise to or alleged, or that could have been alleged in or discovered in, the
`Actions as to VirnetX’s assertion of the Patents-in-Suit, except that Microsoft does not release or discharge (or grant a
`covenant or hold harmless as to) its Claims that the Licensed Patents are invalid, unenforceable, and/or not infringed
`by Microsoft.
`
`3.3 The VirnetX Releasing Parties and Microsoft Releasing Parties expressly waive any and all statutes, legal doctrines
`and other similar limitations upon the effect of general releases. By way of example, and without limitation, the
`foregoing parties waive the benefit of California Civil Code Section 1542, which states as follows:
`
`“A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR DOES NOT KNOW
`OR SUSPECT TO EXIST IN HIS FAVOR AT THE TIME OF EXECUTING THE RELEASE, WHICH IF
`KNOWN BY HIM MUST HAVE MATERIALLY AFFECTED HIS SETTLEMENT WITH THE DEBTOR.”
`
`The VirnetX Releasing Parties and Microsoft Releasing Parties, with the advice of their counsel, waive any rights
`and/or benefits that they, or any of them, might otherwise have under Civil Code Section 1542 and any and all other
`statutes, legal doctrines and/or principles of similar effect in California, Washington, and any other state, federal or
`foreign jurisdiction, to the full extent that such rights and benefits may be waived.
`
`4. Grant of Licenses and Covenant
`
`4.1 [***], VirnetX hereby grants to Microsoft, and Licensees, a worldwide, irrevocable, nonexclusive, non-sublicensable
`fully paid up license and covenant not to sue under the Licensed Patents.
`
`4.2 [***]
`
`4.3 [***]
`
`4.4 [***]
`
`5. Consideration.
`
`5.1. Dismissals. VirnetX shall dismiss with prejudice (and cause Science Applications International Corporation (“SAIC”)
`to join in such dismissal) all claims in the Actions, and Microsoft shall dismiss with prejudice all counterclaims in the
`Actions (except Microsoft’s affirmative defenses and counterclaims of (i) non-infringement and invalidity shall be
`dismissed without prejudice and (ii) unenforceability shall be dismissed without prejudice but continue to be subject to
`the January 15, 2010 Order), by filing (and VirnetX causing SAIC to file) on or before May 21, 2010, Stipulations of
`Dismissal that provide that each of VirnetX Inc., Microsoft Corporation and SAIC will bear its own costs, expenses
`and attorney’s fees in connection with the Actions. In addition, VirnetX Inc. and Microsoft Corporation agree to
`execute such additional papers and motions as may be necessary to cause the Court to effect a disposal of all issues
`before it and a dismissal of the Actions.
`[***] INDICATES PORTIONS OF THIS EXHIBIT THAT HAVE BEEN OMITTED AND FILED SEPARATELY
`WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR
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`Exhibit 10.1
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`Page 3 of 12
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`CONFIDENTIAL TREATMENT.
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`Exhibit 10.1
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`Page 4 of 12
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`5.2. Payment. In full and complete settlement of all claims asserted against Microsoft in the Actions, and in full and
`complete consideration of the licenses, releases, waivers, and other covenants and rights in this Agreement, Microsoft
`Corporation shall within twenty (20) business days after the later of the Effective Date or the provision by VirnetX
`Inc. and its counsel of an IRS Form W-9 and a letter on its letterhead with payment instructions consistent with this
`paragraph pay to VirnetX Inc., in U.S. dollars, a total payment of two hundred million U.S. Dollars (US$ 200,000,000)
`by wire transfer into the following account:
`
`Account Name: Texas IOLTA Trust Account -McKool Smith Bank Name and Address: Bank of America, N.A., 100
`Crescent Court, Dallas, TX 75201 Beneficiary Name: VirnetX Inc.
`
`6. Term. This Agreement shall remain in full force and effect until six years after the expiration of the last to expire of the
`Licensed Patents.
`
`7. Miscellaneous.
`
`7.1. Confidentiality. The mere existence of this Agreement (including, without limitation, the identification of the Parties
`and any Licensed Patents) is not confidential. On or after a mutually agreed time, the Parties agree to issue the joint
`press release in the form attached as Exhibit B. Subject to the foregoing, no Party may issue a press release or
`otherwise affirmatively attempt to publicize the terms or existence of this Agreement. The Parties further agree that the
`terms and conditions of this Agreement are confidential and shall not be disclosed by any Party to any other person
`except (a) as may be required by law (including, without limitation, SEC reporting requirements, or any other United
`States or foreign regulatory requirements) or stock exchange rule (after prior written notice to the other Party with
`opportunity to comment on the disclosure), (b) during the course of litigation so long as the disclosure of such terms
`and conditions are restricted in the same manner as is the confidential information of the litigating Party, which
`includes designating the Agreement under the highest available level of protection under a protective order; (c) in
`confidence to the professional legal, advisory, and financial counsel representing or auditing such Party; (d) in
`confidence, in connection with the enforcement of this Agreement or rights under this Agreement; (e) in confidence, in
`connection with a merger or acquisition or proposed merger or acquisition of a Party, or the like; (f) in confidence by
`Microsoft to Licensees and any third parties covered by the terms of this Agreement; (g) in confidence, to potential
`acquirers of all or substantially all of VirnetX; (h) in confidence to the insurers and third party claim administrators of
`Microsoft; (i) in confidence to any person covered by the releases, licenses, waivers or other covenants and rights
`granted herein; or (j) as otherwise agreed in writing by the Parties executing this Agreement. Prior to any disclosure by
`VirnetX pursuant to the foregoing subsection (a), VirnetX will provide Microsoft with a draft copy of the proposed
`disclosure or filing (including, without limitation, any filing with the SEC) at least twenty-four (24) hours before such
`disclosure or filing is made, and the Parties will consult in good faith with respect to the content of the proposed
`disclosure and the potential for VirnetX to request confidential treatment with respect to portions of the Agreement
`that VirnetX reasonably believes must be disclosed or filed.
`
`7.2. Representations and Warranties. VirnetX represents, warrants, and covenants to Microsoft that:
`
`(a) VirnetX Inc. is the sole, exclusive, and lawful owner of the Licensed Patents (including, without limitation, the
`Patents-in-Suit) and has all rights to enforce and license them and, thus the right to enter into this Agreement and grant
`all of the releases, licenses, waivers, and other covenants and rights under this Agreement.
`
`(b) Subject to its Patent License and Assignment Agreement between VirnetX Inc. and SAIC, dated August 15, 2005
`(and the amendments thereto as of November 2, 2006 and March 12, 2008), VirnetX Inc. is the sole, exclusive, and
`lawful owner of all interest in and to the Licensed Patents (including, without limitation, the Patents-in-Suit).
`
`(c) No Claim released herein, and no portion of any such Claim, has been assigned or otherwise transferred by VirnetX
`to any other person or entity, either directly, indirectly, or by subrogation or operation of law. VirnetX has not filed,
`commenced, served, or otherwise instituted (in each case, either on its own, or in conjunction with any third party) any
`complaints, claims, causes of action, or demands against Microsoft other than those asserted in connection with the
`Actions.
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`Exhibit 10.1
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`Page 5 of 12
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`(d) During the term of this Agreement any consideration required to be paid to any other person, corporation, or entity
`if any, on account of any or all of the releases, licenses, waivers, or other covenants or rights granted under this
`Agreement to any Microsoft Released Parties shall be paid by VirnetX, and no additional consideration shall be
`required of any of the Microsoft Released Parties. VirnetX has not granted and will not grant any licenses, covenants,
`and/or other rights, under the Licensed Patents and/or otherwise, that would conflict with, impair, and/or prevent any
`or all of the releases, licenses, waivers, or other covenants or rights granted under this Agreement. VirnetX Inc. will
`cause its Affiliates to comply with the terms and conditions of this Agreement.
`
`(e) VirnetX has been represented by competent and independent counsel of its own choice throughout all negotiations
`preceding the execution of the Agreement, and has executed this Agreement upon the advice of said competent and
`independent counsel regarding the meaning and legal effect of this Agreement, and regarding the advisability of
`making the agreements provided for herein, and fully understands the same.
`
`7.3. Representations and Warranties. Microsoft represents, warrants, and covenants to VirnetX that:
`
`(a) No Claim released herein, and no portion of any such Claim, has been assigned or otherwise transferred by
`Microsoft to any other person or entity, either directly, indirectly, or by subrogation or operation of law. Microsoft has
`not filed, commenced, served, or otherwise instituted (in each case, either on its own, or in conjunction with any third
`party) any complaints, claims, causes of action, or demands against VirnetX other than those asserted in connection
`with the Actions or the current reexamination proceedings of the Patents-In-Suit.
`
`(b) Microsoft has been represented by competent and independent counsel of its own choice throughout all
`negotiations preceding the execution of the Agreement, and has executed this Agreement upon the advice of said
`competent and independent counsel regarding the meaning and legal effect of this Agreement, and regarding the
`advisability of making the agreements provided for herein, and fully understands the same.
`
`7.4 Mutual Representations and Warranties. Each Party and each person signing this Agreement on behalf of a Party
`represents and warrants to the other that:
`
`(a) Such Party has not entered this Agreement in reliance upon any promise, inducement, agreement, statement, or
`representation other than those contained in this Agreement.
`
`(b) Such Party has the full right and power to enter into this Agreement, and the person executing this Agreement has
`the full right and authority to enter into this Agreement on behalf of such Party and the full right and authority to bind
`such Party to the terms and obligations of this Agreement.
`
`7.5 Notices. All notices and requests which are required or permitted to be given in connection with this Agreement shall
`be in writing and shall be deemed given as of the day they are received either by messenger, delivery service, or in the
`United States of America mails, postage prepaid, certified or registered, return receipt requested, and addressed as
`follows, or to such other address as the Party to receive the notice or request so designates by written notice to the
`other:
`
`If to VirnetX Inc.:
`
`Attn: Kendall Larsen, Chief Executive Officer VirnetX Inc. 5615 Scotts Valley Drive, Suite 110 Scotts Valley,
`California 95066 Facsimile: (831) 438-3078
`
`with a copy to:
`
`Samuel F. Baxter McKool Smith, P.C. 300 Crescent Court, Suite 1500 Dallas, TX 75201 Fax: (214) 978-4044
`
`If to Microsoft Corporation:
`
`Attn: Director of Licensing, LCA Patent Group Microsoft Corporation One Microsoft Way Redmond, WA 98052
`Fax: (425) 936-7329
`
`with a copy to: Attn: Law & Corporate Affairs Microsoft Corporation One Microsoft Way Redmond, Washington
`98052 Fax: (425) 936-7329
`
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`Exhibit 10.1
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`Page 6 of 12
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`Exhibit 10.1
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`Page 7 of 12
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`7.6. Governing Law; Venue. This Agreement shall be construed and controlled by the internal laws of the State of Texas
`(excluding conflict of laws principles) and applicable federal laws. The sole and exclusive venue for any lawsuit
`arising out of or relating to this Agreement shall be the United States District Court for the Eastern District of Texas.
`
`7.7. Costs. Each Party shall bear its own costs, expenses and attorneys’ fees incurred in connection with the Actions, the
`making of this Agreement, and its performance under this Agreement. Each Party expressly waives any claim of costs
`and attorneys’ fees from or against the other Party.
`
`7.8. Successors and Assigns. The terms, covenants, conditions, provisions and benefits of this Agreement shall be binding
`upon and inure to the benefit of the Parties and their respective successors and assigns.
`
`7.9. No Construction Against Drafter. This Agreement results from negotiations between the Parties and their respective
`legal counsel, and each Party acknowledges that it has had the opportunity to negotiate modifications to the language
`of this Agreement. Accordingly, each Party agrees that in any dispute regarding the interpretation or construction of
`this Agreement, no statutory, common law or other presumption shall operate in favor of or against any Party by virtue
`of his, her or its role in drafting or not drafting the terms and conditions set forth herein.
`
`7.10. Captions. Captions or headings used in this Agreement are for the convenience of the Parties only, and shall not be
`considered part of this Agreement or used to construe the terms of this Agreement.
`
`7.11. Construction. If any provision of this Agreement shall be held by a court of competent jurisdiction to be illegal,
`invalid or unenforceable or otherwise in conflict with law, the remaining provisions shall remain in full force and
`effect. If any provisions of this Agreement are deemed not enforceable, they shall be deemed modified to the extent
`necessary to make them enforceable. Provisions shall apply, as applicable, to current and successive events, parties,
`and transactions.
`
`7.12. Counterparts. This Agreement may be executed in any number of counterparts and by the different Parties on separate
`counterparts and each such counterpart shall be deemed to be an original, but all such counterparts shall together
`constitute but one and the same Agreement. Execution of this Agreement may be accomplished by signing this
`Agreement and transmitting the signature page to opposing counsel by facsimile or email. The Parties so executing
`and delivering shall promptly thereafter deliver signed originals of at least the signature page(s), but no failure to do so
`shall affect the validity or enforceability of this Agreement.
`
`7.13. Waiver. No waiver of any provision of this Agreement shall be deemed or shall constitute a waiver of any other
`provision, whether or not similar, nor shall any waiver constitute a continuing waiver unless expressly stated in
`writing by the Party making the waiver. No waiver of any provision shall be binding in any event unless executed in
`writing by the Party making the waiver.
`
`7.14. Entire Agreement. This Agreement (including, without limitation, all Exhibits attached hereto) constitutes the entire
`agreement between the Parties with respect to the subject matter hereof, and supersedes all prior and contemporaneous
`written or oral agreements, memorandums of understanding (including the Memorandum of Understanding between
`Microsoft Corporation and VirnetX Inc. dated May 12, 2010), or communications as to such subject matter, all of
`which are superseded, merged and fully integrated into this Agreement. It shall not be modified except by a written
`agreement dated subsequent to the date of this Agreement and signed on behalf of the Parties by their respective duly
`authorized representatives.
`
`7.15 [***]
`
`7.16 Reexamination. [***] Microsoft will also cause to be filed with the United States Patent and Trademark Office
`notifications in the current reexamination proceedings of the Patents-In-Suit indicating that Microsoft Corporation will
`not participate in those reexamination proceedings.
`[***] INDICATES PORTIONS OF THIS EXHIBIT THAT HAVE BEEN OMITTED AND FILED SEPARATELY
`WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR
`CONFIDENTIAL TREATMENT.
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`Exhibit 10.1
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`Page 8 of 12
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`IN WITNESS WHEREOF, VirnetX Inc. and Microsoft Corporation, being fully authorized and empowered to bind themselves
`to this Agreement, have caused this Agreement to be made and executed by duly authorized officers as of the Effective Date.
`
`VIRNETX INC.
`
`Name: /s/ Kendall Larsen
`Title: President, Chairman and CEO
`Date: 5/14/2010
`
`MICROSOFT CORPORATION
`
`Name: /s/ Frank H Brod
`Title: Corp Vice President
`Date: 5-14-2010
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`Exhibit 10.1
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`Page 9 of 12
`
`Country
`WO
`AU
`CA
`EP
`EP-GB
`EP-DE
`EP-FR
`EP-IT
`JP
`JP
`US
`US
`US
`US
`US
`WO
`EP
`JP
`US
`US
`US
`US
`US
`US
`WO
`AU
`CA
`EP
`JP
`US
`WO
`EP
`EP
`EP
`HK
`HK
`JP
`US
`US
`US
`US
`US
`US
`WO
`EP
`EP CH
`
`Exhibit A Certain Licensed Patents
`
`App. No.
`PCT/US99/25325
`00/14553
`2,349,519
`99971606.1
`99971606.1
`99971606.1
`99971606.1
`46406/BE/2009
`2000-580350
`2009-246033
`09/429,643
`10/401,551
`11/301,022
`11/839,937
`09/429,643
`PCT/US01/04340
`01910528.7
`2001-560062
`10/082,164
`10/401,888
`10/082,285
`10/259,494
`11/839,969
`11/924,460
`PCT/US99/25323
`00/16003
`2,349,520
`99958693.6
`2000-580354
`09/558,209
`PCT/US01/13261
`01932629.7
`06014499.5
`06014500.0
`07109112.7
`07109113.6
`2001-583006
`10/702,486
`11/679,416
`11/839,987
`10/702,522
`10/702,580
`09/558,210
`PCT/US01/13260
`01932628.9
`01932628 9
`
`Filing date
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`03/31/2003
`12/13/2005
`08/16/2007
`02/15/2000
`02/12/2001
`02/12/2001
`02/12/2001
`02/26/2002
`03/31/2003
`02/26/2002
`09/30/2002
`08/16/2007
`10/25/2007
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`04/26/2000
`04/25/2001
`04/25/2001
`04/25/2001
`04/25/2001
`08/21/2007
`08/21/2007
`04/25/2001
`11/07/2003
`02/27/2007
`08/16/2007
`11/07/2003
`11/07/2003
`04/26/2000
`04/25/2001
`04/25/2001
`04/25/2001
`
`Patent No.
`
`761,388
`
`1125419
`1125419
`1125419
`1125419
`1125419
`4,451,556
`
`7,010,604
`7,133,930
`
`Issue Date
`
`09/18/2003
`
`08/26/2009
`08/26/2009
`08/26/2009
`08/26/2009
`08/26/2009
`02/05/2010
`
`03/07/2006
`11/07/2006
`
`6,502,135
`
`12/31/2002
`
`6,618,761
`6,907,473
`6,834,310
`7,490,151
`
`09/09/2003
`06/14/2005
`12/21/2004
`02/10/2009
`
`765914
`
`01/15/2004
`
`7,188,180
`
`03/06/2007
`
`6,839,759
`6,826,616
`
`1284079
`1284079
`
`01/04/2005
`11/30/2004
`
`01/18/2006
`01/18/2006
`
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`Exhibit 10.1
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`Page 10 of 12
`
`Patent No.
`
`761,388
`
`1125419
`1125419
`1125419
`1125419
`1125419
`4,451,556
`
`7,010,604
`7,133,930
`
`Issue Date
`
`09/18/2003
`
`08/26/2009
`08/26/2009
`08/26/2009
`08/26/2009
`08/26/2009
`02/05/2010
`
`03/07/2006
`11/07/2006
`
`6,502,135
`
`12/31/2002
`
`6,618,761
`6,907,473
`6,834,310
`7,490,151
`
`09/09/2003
`06/14/2005
`12/21/2004
`02/10/2009
`
`765914
`
`01/15/2004
`
`Country
`WO
`AU
`CA
`EP
`EP-GB
`EP-DE
`EP-FR
`EP-IT
`JP
`JP
`US
`US
`US
`US
`US
`WO
`EP
`JP
`US
`US
`US
`US
`US
`US
`WO
`AU
`CA
`EP
`JP
`US
`WO
`EP
`EP
`EP
`HK
`HK
`JP
`
`App. No.
`PCT/US99/25325
`00/14553
`2,349,519
`99971606.1
`99971606.1
`99971606.1
`99971606.1
`46406/BE/2009
`2000-580350
`2009-246033
`09/429,643
`10/401,551
`11/301,022
`11/839,937
`09/429,643
`PCT/US01/04340
`01910528.7
`2001-560062
`10/082,164
`10/401,888
`10/082,285
`10/259,494
`11/839,969
`11/924,460
`PCT/US99/25323
`00/16003
`2,349,520
`99958693.6
`2000-580354
`09/558,209
`PCT/US01/13261
`01932629.7
`06014499.5
`06014500.0
`07109112.7
`07109113.6
`2001-583006
`
`Filing date
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`03/31/2003
`12/13/2005
`08/16/2007
`02/15/2000
`02/12/2001
`02/12/2001
`02/12/2001
`02/26/2002
`03/31/2003
`02/26/2002
`09/30/2002
`08/16/2007
`10/25/2007
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`10/29/1999
`04/26/2000
`04/25/2001
`04/25/2001
`04/25/2001
`04/25/2001
`08/21/2007
`08/21/2007
`04/25/2001
`
`http://www.sec.gov/Archives/edgar/data/1082324/000095012310074687/c04572exv10w1....
`
`8/29/2013
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`10
`
`
`
`Exhibit 10.1
`
`Page 11 of 12
`
`Exhibit B
`
`Press Release
`FOR IMMEDIATE RELEASE
`
`MICROSOFT AND VIRNETX SETTLE PATENT INFRINGEMENT CASES
`
`REDMOND, WA and SCOTTS VALLEY, CA – May 14 2010 – VirnetX Holding Corp. (AMEX:VHC) and Microsoft Corp.
`today announced that they have settled the patent infringement cases brought by VirnetX before the U.S. District Court for the
`Eastern District of Texas. Pursuant to the settlement, both lawsuits will be dismissed.
`
`As part of the settlement, Microsoft takes a license to the VirnetX patents for Microsoft’s products and will make a one-time
`payment of $200 million to VirnetX. All other aspects of the settlement and license were not disclosed.
`
`“This Agreement highlights the need for VirnetX’s Secure Domain Name Initiative, and we believe that this successful
`resolution of our litigation with Microsoft will allow us to focus on the upcoming pilot system that will showcase VirnetX’s
`automatic Virtual Private Network technology,” said Kendall Larsen, Chief Executive Officer and Chairman of VirnetX Holding
`Corp. “We look forward to our continued work with our Secure Domain Name Initiative partners in that effort.”
`
`“We are pleased to work with VirnetX to bring these cases to a successful resolution through this settlement,” said Tom Burt,
`corporate vice president and deputy general counsel, Microsoft Corporation. “We look forward to VirnetX’s continued progress
`as it develops its technologies.”
`
`About Microsoft Founded in 1975, Microsoft (Nasdaq ‘MSFT’) is the worldwide leader in software, services and solutions that
`help people and businesses realize their full potential.
`
`http://www.sec.gov/Archives/edgar/data/1082324/000095012310074687/c04572exv10w1....
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`
`
`Exhibit 10.1
`
`About VirnetX
`
`Page 12 of 12
`
`VirnetX Holding Corporation, an Internet security software and technology company, is engaged in commercializing its patent
`portfolio, developed from work done for the Central Intelligence Agency, by developing a licensing program as well as
`developing software products designed to create a secure environment for real-time communication applications such as instant
`messaging, VoIP, smart phones, eReaders and video conferencing. The Company’s patent portfolio includes over 48 U.S. and
`international patents and pending applications that were recently declared as essential for 4G security specifications and provide
`the foundation for the Company’s unique GABRIEL Connection Technology. For more information, please visit
`www.virnetx.com.
`
`http://www.sec.gov/Archives/edgar/data/1082324/000095012310074687/c04572exv10w1....
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`8/29/2013
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