Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 1 of 94
`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 1 of 94
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`EXHIBIT 6
`EXHIBIT 6
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`

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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 2 of 94
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`PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before The Honorable Thomas B. Pender
`Administrative Law Judge
`
`
`
`
`
`Investigation No. 337-TA-984
`
`
`In the Matter of
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`CERTAIN COMPUTING OR GRAPHICS
`SYSTEMS, COMPONENTS THEREOF,
`AND VEHICLES CONTAINING SAME
`
`
`
`JOINT MOTION TO TERMINATE INVESTIGATION AS TO THE HONDA
`RESPONDENTS BASED ON CERTAIN AGREEMENTS, INCLUDING AMONG THE
`PARTIES, AND EXPEDITED REQUEST FOR EXTENSION OF PROCEDURAL STAY
`
`Pursuant to 19 U.S.C. § 1337(c) and Commission Rule 210.21(b), Complainant
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`Advanced Silicon Technologies LLC (“Advanced Silicon”) and Respondents Honda Motor Co.,
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`Ltd., Honda North America, Inc., American Honda Motor Co., Inc., Honda Engineering North
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`America, Inc., Honda of America Mfg., Inc., Honda Manufacturing of Alabama, LLC, Honda
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`Manufacturing of Indiana, LLC, and Honda R&D Americas, Inc. (collectively the “Honda
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`Respondents”) (Advanced Silicon and Honda collectively, the “Parties”), hereby submit this
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`Joint Motion to Terminate Investigation 337-TA-984 as to the Honda Respondents, in view of
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`certain agreements resolving the disputes between the Parties. These agreements include: (1) a
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`Patent License and License Option Agreement between Advanced Silicon and Third Party
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`(the “Third Party PLA”) including a sublicense from Third Party
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`to Honda and a sublicense from Third Party
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` to Renesas (Exhibit H to the Third
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`Party PLA), (2) a Release Agreement between Advanced Silicon and Honda (the “Release”) and
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`(3) an Escrow Agreement among Advanced Silicon, Renesas,
`Investigation No. 337-TA-984
`JOINT MOTION TO TERMINATE INVESTIGATION AS TO
`THE HONDA RESPONDENTS BASED ON CERTAIN AGREEMENTS, INCLUDING AMONG THE PARTIES,
`AND EXPEDITED REQUEST FOR EXTENSION OF PROCEDURAL STAY
`1
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` and Citibank
`
`
`
`

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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 3 of 94
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`PUBLIC VERSION
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`N.A. (the “Escrow Agreement”) (together the “Agreements”). The Parties also respectfully
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`request that the stay of the procedural schedule currently in effect be extended until this Motion
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`is decided.
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`A true and correct copy of the Release, redacted to protect the disclosure of confidential
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`business information, is attached as Public Exhibit A, and a confidential unredacted version of
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`the Release is attached as Confidential Exhibit A-1.
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`A true and correct copy of the Third Party PLA, redacted to protect the disclosure of
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`confidential business information, is attached as Public Exhibit B, and a highly confidential
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`unredacted version of the Third Party PLA is attached as Highly Confidential Exhibit B-1.
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`Contemporaneously with a similar motion to terminate filed earlier this week with respect to the
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`Fujitsu Ten Respondents, Advanced Silicon also filed a motion pursuant to Commission Rule
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`210.21(a)(1), requesting that the ALJ limit service of the highly confidential unredacted Third
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`Party PLA to the Parties and Staff. See Motion Dkt. 984-070. For the same reasons set forth in
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`that Motion to Limit Service, Advanced Silicon respectfully requests here that the ALJ limit
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`service of the same agreement in the same way.
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`A true and correct copy of the Escrow Agreement, redacted to protect the disclosure of
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`confidential business information, is attached as Public Exhibit C, and a confidential minimally
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`redacted version of the Escrow Agreement is attached as Confidential Exhibit C-1.1
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`The Release has been executed by Advanced Silicon and the Honda Respondents, and is
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`fully effective as between them. The Agreements contain Confidential Business Information
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`within the meaning of 19 C.F.R. § 201.6(a), including, but not limited to, sensitive license terms,
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`1 Advanced Silicon has not received – and indeed, has no right to receive – a fully redacted version of the Escrow
`Agreement. See Ex. C-1 at Section 4.11. Moreover, the Escrow Agreement has terminated and is no longer in
`effect. See id. at Section 1-7.
`
`Investigation No. 337-TA-984
`JOINT MOTION TO TERMINATE INVESTIGATION AS TO
`THE HONDA RESPONDENTS BASED ON CERTAIN AGREEMENTS, INCLUDING AMONG THE PARTIES,
`AND EXPEDITED REQUEST FOR EXTENSION OF PROCEDURAL STAY
`2
`
`
`
`

`

`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 4 of 94
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`PUBLIC VERSION
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`the disclosure of which could impair parties’ ability to enter into agreements. The Agreements
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`collectively completely resolve the dispute between Advanced Silicon and the Honda
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`Respondents in this Investigation.
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`Collectively, the Agreements together with their exhibits reflect the entire and only
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`agreements between the Parties, and any agreements relating to the resolution of the dispute
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`between the Parties, regarding the subject matter of this Investigation. The Parties represent that
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`there are no other agreements, written or oral, express or implied, between the Parties concerning
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`the subject matter of this Investigation.
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`The Parties agree that termination of this Investigation on the basis of the Agreements as
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`to only the Honda Respondents does not constitute a determination as to the violation of section
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`337 of the Tariff Act of 1930, including as to the merits of the claims or defenses raised during
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`this Investigation. See 19 C.F.R. § 210.21(b)(2).
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`In view of the Agreements, there no longer exists a basis upon which to continue this
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`Investigation as to the Honda Respondents. Further, termination of this Investigation as to the
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`Honda Respondents at this stage of the proceedings poses no threat to the public interest.
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`Indeed, it is in the interest of the public and administrative economy to grant this motion.
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`Commission policy and the public interest generally favor agreements, which preserve resources
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`for both the Commission and the private parties, and motions to terminate based on agreements
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`are routinely granted. See, e.g., Certain Communications or Computing Devices and
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`Components Thereof, Inv. No. 337-TA-925, Order No. 37 (June 5, 2015) (terminating one
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`respondent based on agreement); Certain Consumer Electronics with Display and Processing
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`Capabilities, Inv. No. 337-TA-884, Order No. 15 (Aug. 1, 2014) (terminating investigation
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`based on agreements among complainant, certain respondents, and a third party); Certain
`Investigation No. 337-TA-984
`JOINT MOTION TO TERMINATE INVESTIGATION AS TO
`THE HONDA RESPONDENTS BASED ON CERTAIN AGREEMENTS, INCLUDING AMONG THE PARTIES,
`AND EXPEDITED REQUEST FOR EXTENSION OF PROCEDURAL STAY
`3
`
`
`
`

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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 5 of 94
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`PUBLIC VERSION
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`Consumer Electronics and Display Devices and Products Containing Same, Inv. No. 337-TA-
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`836, Order No. 30 at 3 (January 28, 2013) (unreviewed) (terminating investigation based on
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`agreements among complainant, remaining respondents, and a third party); Certain Portable
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`Communication Devices, Inv. No. 337-TA-827, Order No. 15 at 2 (May 31, 2012) (unreviewed)
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`(same) (citation omitted).2
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`Moreover, termination of this Investigation as to the Honda Respondents pursuant to the
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`Agreements will not have any adverse impact on the public health and welfare and/or
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`competitive conditions in the United States. Accordingly, the Administrative Law Judge is
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`authorized to issue an initial determination terminating this Investigation pursuant to 19 C.F.R. §
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`210.21(b).
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`Counsel for the Parties have consulted with the other Respondents and with Commission
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`Investigative Staff Attorney regarding this motion. The other Respondents do not oppose the
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`motion. Commission Investigative Attorney will provide the position of the Office of Unfair
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`Import Investigations after reviewing these papers in more detail.
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`
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`For the foregoing reasons, the Parties respectfully request that the Administrative Law
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`Judge grant this motion and issue an initial determination terminating this Investigation with
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`respect to the Honda Respondents only based on the accompanying Agreements.
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`
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`2 See also Certain Equipment for Telecommunications or Data Communications Networks, Including Routers,
`Switches, and Hubs, and Components Thereof, Inv. No. 337-TA-574, Order No. 27 at 4 (May 24, 2007)
`(“termination of litigation under these circumstances is generally in the public interest”); Certain Semiconductor
`Chips and Products Containing Same, Inv. No. 337-TA-753, Order No. 62 at 2-3 (February 22, 2012) (granting joint
`motion to partially terminate investigation on grounds that termination of the investigation based on the agreement
`would have no adverse impact on the public interest); Certain Video Analytics Software, Systems, Components
`Thereof, and Product Containing Same, Inv. No. 337-TA-795, Order No. 19 at 1-2 (February 23, 2012) (granting
`joint motion to terminate, and noting that “[t]he Commission has stated that ‘in the absence of extraordinary
`circumstances, termination of the investigation will be readily granted to a complainant during the prehearing stage
`of an investigation.’”) (citations omitted).
`
`Investigation No. 337-TA-984
`JOINT MOTION TO TERMINATE INVESTIGATION AS TO
`THE HONDA RESPONDENTS BASED ON CERTAIN AGREEMENTS, INCLUDING AMONG THE PARTIES,
`AND EXPEDITED REQUEST FOR EXTENSION OF PROCEDURAL STAY
`4
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`

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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 6 of 94
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`PUBLIC VERSION
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`Dated: August 25, 2016
`
`Respectfully submitted,
`
`By: /s/ Andrew H. DeVoogd
`James M. Wodarski
`Michael T. Renaud
`Andrew H. DeVoogd
`Adam S. Rizkrauh
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY
` AND POPEO, P.C.
`One Financial Center
`Boston, MA 02110
`Phone: (617) 542-6000
`Fax: (617) 542-2241
`
`Aarti Shah
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY
` AND POPEO, P.C.
`701 Pennsylvania Avenue NW
`Suite 900
`Washington, DC 20004
`Phone: 202.434.7300
`Fax: 202.434.7400
`
`Counsel for Complainant Advanced Silicon
`Technologies LLC
`
`
`
`By: G. Brian Busey
`G. Brian Busey
`Lynn I. Levine
`Aaron D. Rauh
`MORRISON & FOERSTER LLP
`2000 Pennsylvania Avenue, N.W.,
`Suite 6000
`Washington, D.C. 20006
`Telephone: (202) 887-1500
`Vincent J. Belusko
`Hector G. Gallegos
`Ryan J. Malloy
`MORRISON & FOERSTER LLP
`707 Wilshire Boulevard, Suite 6000
` Los Angeles, CA 90017-3543
`Telephone: (213) 892-5200
`
`Takahiro Miura
`Yuka Teraguchi
`MORRISON & FOERSTER LLP
`Shin-Marunouchi Building, 29th
`Floor
`5-1, Marunouchi 1-Chome
` Chiyoda-ku, Tokyo 100-6529, Japan
`Telephone: 81-3-3214-6522
`Email: Honda984@mofo.com
`
`Counsel for Respondents Honda Motor
`Co., Ltd., Honda North America, Inc.,
`American Honda Motor Co., Inc.,
`Honda Engineering North America, Inc.,
`Honda of America Mfg., Inc., Honda
`Manufacturing of Alabama, LLC,
`Honda Manufacturing of Indiana, LLC,
`and Honda R&D Americas, Inc.
`
`
`
`
`
`
`
`Investigation No. 337-TA-984
`JOINT MOTION TO TERMINATE INVESTIGATION AS TO
`THE HONDA RESPONDENTS BASED ON CERTAIN AGREEMENTS, INCLUDING AMONG THE PARTIES,
`AND EXPEDITED REQUEST FOR EXTENSION OF PROCEDURAL STAY
`5
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`

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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 7 of 94
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`PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before The Honorable Thomas B. Pender
`Administrative Law Judge
`
`
`
`
`
`Investigation No. 337-TA-984
`
`
`In the Matter of
`
`CERTAIN COMPUTING OR GRAPHICS
`SYSTEMS, COMPONENTS THEREOF,
`AND VEHICLES CONTAINING SAME
`
`
`
`APPENDIX OF EXHIBITS ACCOMPANYING THE JOINT MOTION TO
`TERMINATE INVESTIGATION AS TO THE HONDA RESPONDENTS
`BASED ON CERTAIN AGREEMENTS, INCLUDING AMONG THE PARTIES
`
`Exhibit No.
`Public Exhibit A
`
`Document Description
`Public Version of the Release Agreement between Advanced Silicon
`Technologies LLC and Honda
`
`Confidential
`Exhibit A-1
`
`Confidential and Unredacted Version of the Release Agreement
`between Advanced Silicon Technologies LLC and Honda
`
`Public Exhibit B
`
`Public Version of the Patent License and License Option Agreement
`between Advanced Silicon Technologies LLC and
`
`
`Highly Confidential
`Exhibit B-1
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`Highly Confidential and Unredacted Version of the Patent License
`and License Option Agreement between Advanced Silicon
`Technologies LLC and Third Party
`
`
`Public Exhibit C
`
`Public Version of the Escrow Agreement between Advanced Silicon
`Technologies LLC, Renesas,
`, and Citibank N.A.
`
`Confidential
`Exhibit C-1
`
`Confidential Version of the Escrow Agreement between Advanced
`Silicon Technologies LLC, Renesas,
`, and Citibank
`N.A.
`
`
`
`
`
`
`
`Investigation No. 337-TA-984
`APPENDIX OF EXHIBITS TO JOINT MOTION TO TERMINATE INVESTIGATION AS TO
`THE HONDA RESPONDENTS BASED ON CERTAIN AGREEMENTS, INCLUDING AMONG THE PARTIES,
`AND EXPEDITED REQUEST FOR EXTENSION OF PROCEDURAL STAY
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`

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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 8 of 94
`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 8 of 94
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`PUBLIC EXHIBIT A
`PUBLIC EXHIBIT A
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`

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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 9 of 94
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`RELEASE TERMS
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`This RELEASE AGREEMENT (“Release Agreement”) is entered into by and between
`Advanced Silicon Technologies, LLC, a Delaware limited liability company with a principal place
`of business at 118 Maplewood Ave, Unit C-2/Box 8, Portsmouth, New Hampshire 03801
`(including its Affiliates, as defined below, “Licensor”), and Honda Patents & Technologies North
`America, LLC, a California corporation with a principal place of business at 700 Van Ness
`Avenue, Torrance, CA 90501 (including its Affiliates, “Honda”), on the last date when this
`Release Agreement has been executed by both Licensor and Honda (the “Effective Date”).
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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 10 of 94
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`“Effective Date” shall have the meaning ascribed to it in the preamble.
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`“Entity” shall mean a corporation, association, business trust, limited liability company,
`proprietorship, unincorporated association, individual or other entity that can exercise independent
`legal standing.
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`“Licensor” shall have the meaning ascribed to it in the preamble.
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`“Licensor Litigation” shall mean U.S. International Trade Commission Investigation No.
`337-TA-984, captioned “In the matter of Certain Computing or Graphics Systems, Components
`Thereof, and Vehicles Containing Same” and the district court action captioned Advanced Silicon
`Technologies, LLC. v. Honda Motor Co., Ltd. et al., Civ. No. 1-15-CV-01179, pending in the U.S.
`District Court for the District of Delaware.
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`“Patents” shall mean: (i) the patents and patent applications identified on Schedule 1
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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 11 of 94
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`“Release Agreement” shall have the meaning ascribed to it in the preamble.
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`“Honda” shall have the meaning ascribed to it in the preamble.
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`Mutual Release.
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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 12 of 94
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`No Admission of Liability. The Parties agree that the settlement of the Licensor Litigation is
`intended solely as a compromise of the disputed claims, and without any acknowledgment of
`liability, fault, damages, or any other merits of the Licensor Litigation.
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`Notice. Any notice or communication required or permitted to be given by either Party hereunder
`shall be in written form and shall be considered to be sufficiently given if mailed by registered or
`certified mail or transmitted by overnight courier, addressed to the Parties hereto as follows:
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`With a copy to (which shall not constitute
`notice):
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`To Licensor:
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`To Honda:
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`Or to such changed address as the addressee shall have specified by written notice in accordance
`with this provision.
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`Governing Law. The Parties hereto agree that this Release Agreement shall be considered to have
`been made in, and construed and interpreted in accordance with the substantive laws of the State of
` of the United States of America.
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`Disputes. The Parties hereto shall use their best efforts to resolve by mutual agreement any
`disputes, controversies or differences that may arise from, under, out of or in connection with the
`Release Agreement. If any such disputes, controversies or differences cannot be settled between
`the Parties hereto within thirty (30) days, they shall be finally brought in federal district court in
`, and the Parties hereby submit to the jurisdiction of, and waive any venue objections
`against, the United States District Court of
` Should the United States District Court of
` lack jurisdiction, the Parties hereby submit to the exclusive jurisdiction of the state
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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 13 of 94
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`courts of the State of
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`Confidentiality. Neither Party will disclose the terms of this Agreement, except:
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`Entire Agreement. This Release Agreement constitutes the entire agreement between the Parties
`concerning the subject matter hereof and supersedes all written and oral prior agreements and
`understandings with respect thereto. No variation or modification of the terms of this Release
`Agreement, nor any waiver of any of the terms or provisions hereof, shall be valid unless in writing
`and signed by an authorized representative of each Party.
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`Counterparts. This Release Agreement may be executed in two counterparts in the English
`language and each such counterpart shall be deemed an original thereof. Facsimile signatures or
`signatures delivered by e-mail in .pdf or similar format will be deemed original signatures for
`purposes of this Release Agreement.
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`[The remainder of this page is blank; signature page follows.]
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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 15 of 94
`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 15 of 94
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`IN WITNESS WHEREOF,the Parties hereto have caused this Agreement to be executed
`as of the Effective Date. Each individual signing below represents and warrants that he or she has
`authority to sign for and enter into this Agreement on behalf of his or her respective Party.
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`TECHNOLOGIES LLC Agreedto:
`Date:
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`HONDAPATENTS & TECHNOLOGIES
`NORTH AMERICA, LLC
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`Agreedto:
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`ADVANCED SILICON
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`By:
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`Name:
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`Title:
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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 16 of 94
`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 16 of 94
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`CONFIDENTIAL EXHIBIT A-1
`CONFIDENTIAL EXHIBIT A-1
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`INTENTIONALLY WITHHELD
`INTENTIONALLY WITHHELD
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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 17 of 94
`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 17 of 94
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`PUBLIC EXHIBIT B
`PUBLIC EXHIBIT B
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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 18 of 94
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`PATENT LICENSE AND LICENSE OPTION AGREEMENT
`
`This PATENT LICENSE AND LICENSE OPTION AGREEMENT (this “Agreement”)
`is entered into by and between Advanced Silicon Technologies LLC, a Delaware limited liability
`company with its principal place of business at 118 Maplewood Ave, Box 8, Portsmouth, New
`Hampshire 03801 (“Licensor”), and
`
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`(the
` on the date when this Agreement has been executed by both Licensor and
`“Effective Date”). Each of
`and Licensor is a “Party”, and collectively, are referenced as the
`“Parties”.
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`WHEREAS, Licensor is the sole and exclusive owner of, and has the right to license in
`the United States and throughout the world, the Patents (as defined below);
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`desires to acquire from Licensor a Patent License (as defined below),
`WHEREAS,
`including the right to grant to
`Licensees (as defined below) a sublicense of the same scope
`and duration as the Patent License, provided that the preconditions to the granting of such rights
`as described herein are met;
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`a Patent License, including the right to
`WHEREAS, Licensor is willing to grant to
`grant to
`Licensees a sublicense of the same scope and duration as the Patent License,
`provided that the preconditions to the granting of such rights as described herein are met; and
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`NOW, THEREFORE, in consideration of the premises and covenants herein contained,
`and Licensor agree as follows:
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`Definitions
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`As used herein, the following terms shall have the following meanings:
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`“Affiliate(s)” of an Entity shall mean any and all Entities, now or in the future and for so
`long as the Control exists, that are Controlled, directly or indirectly, by the Entity. As used
`herein, and otherwise where applicable in the Agreement, the term “Affiliate” shall include the
`affiliate definitions set forth in Exhibit C attached hereto.
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`“Agreement” shall have the meaning ascribed to it in the preamble.
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`“Bankruptcy Code” shall have the meaning ascribed to it in Section 5.10.
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`“Claims” shall mean any and all claims, counterclaims, third-party claims, contribution
`claims, indemnity claims, demands, actions, liabilities, damages, losses, causes of action, and all
`other claims of every kind and nature in law or equity, whether arising under state, federal,
`international or other law, which arise from or relate to in any way the Patents, or which are
`(currently or in the future) or were asserted in, could have been asserted in, or which arise from
`the same transactions or occurrences as those claims that are (currently or in the future) or were
`asserted in any Licensor Litigations with respect to the Patents, whether such claims are absolute
`or contingent, in tort, contract or otherwise, direct or indirect, present or future, known or
`unknown, that exist or may have existed prior to the Effective Date.
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`

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`Case 6:22-cv-00466-ADA-DTG Document 37-6 Filed 08/01/22 Page 19 of 94
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`“Control” shall mean the legal, beneficial, and/or equitable ownership of more than fifty
`percent (50%) of (i) the voting power representing the right to vote for directors or other
`managing authority, (ii) equity ownership interest in an Entity, or (iii) other ownership interest in
`an Entity.
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`“Covered Third Party” shall have the meaning ascribed to it in Section 1.2(c).
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`“Effective Date” shall have the meaning ascribed to it in the preamble.
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`“Entity” shall mean a corporation, association, partnership, business trust, joint venture,
`limited liability company, proprietorship, unincorporated association, individual or other entity
`that can exercise independent legal standing.
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`“Escrow Agreement” means that escrow agreement dated August 6, 2016 among
`Licensor,
`.
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`“Form of Dismissal” shall mean the form notice of dismissal in Exhibit E attached hereto.
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`“Initial Licensee” shall mean each Entity identified in Exhibit A, each such Entity’s
`Affiliates, and any business unit or division that such Entity may divest.
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`“Licensor” shall have the meaning ascribed to it in the preamble.
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`“Licensor Litigations” shall mean any and all lawsuits relating to any Patent filed at any
`time by Licensor in any state or federal court in the United States, in any court or tribunal in any
`foreign country, or before the United States International Trade Commission. Any one of the
`Licensor Litigations is a “Licensor Litigation”.
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`“Licensor Litigation Defendants” shall mean the parties adverse to Licensor in any
`Licensor Litigation. Any one of the Licensor Litigation Defendants is a “Licensor Litigation
`Defendant”.
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`“Party” and “Parties” shall have the meanings ascribed to them in the preamble.
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`“Patent License” shall mean a royalty-free, fully paid-up, irrevocable, non-exclusive
`worldwide license under the Patents to make, have made, use, have used, sell, lease, have leased,
`import, offer for sale, have offered for sale, have sold, copy, develop, have developed, operate,
`market, have marketed, import, have imported, own, order, design, purchase, practice, obtain,
`keep, acquire, receive, build, deliver, host, distribute, have distributed, provide, supply, export,
`have exported, and otherwise commercially exploit or dispose of any Licensed Product and
`Service, and for which the term of such license under the Patents shall extend to the expiration of
`each patent comprising the Patents.
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`“PTO” shall mean the United States Patent & Trademark Office.
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`“Release and Dismissal Obligations” shall mean Licensor immediately (i) executing a
`written release agreement containing terms that are substantially similar in scope and effect as
`the Release Terms, and (ii) with respect to any Licensor Litigation Defendant, taking all actions
`and making all necessary filings to resolve all disputes with respect to such Licensor Litigation
`Defendant relating to or arising out of the Licensor Litigations, including without limitation
`executing and filing a dismissal “with prejudice” substantially similar in form and effect to the
`Form of Dismissal (or, with respect to any Licensor Litigation in a non-U.S. jurisdiction, a
`dismissal “with prejudice” in such form as is appropriate for the relevant jurisdiction).
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`“Release Terms” shall mean the terms and conditions in Exhibit D attached hereto.
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`shall have the meaning ascribed to it in the preamble.
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`Licensee” shall have the meaning ascribed to it in Section 1.2(a).
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`“Section 1542” shall have the meaning ascribed to it in Section 4.3(b).
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`“Underlying Claim” shall have the meaning ascribed to it in Section 4.2(b).
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`Section 1.
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`1.1
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`Patent License
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`1.2
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`Effective upon
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`1.1, Licensor shall automatically be deemed to grant, and does hereby grant, to
`the Patent
`License, which Patent License shall include:
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`Representations and Warranties
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`Section 2.
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`Representations and Warranties of Licensor. Licensor, on behalf of itself and its
`2.1
`Affiliates, represents and warrants that, as of the Effective Date:
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`it has all requisite legal right, power, and authority to execute and deliver all
`(a)
`documents required to be executed (including this Agreement), and to perform all of its
`obligations under and grant all rights in accordance with this Agreement;
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`(f)
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`oa‘4a&
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`represents and warrants that it has all
`Representations and Warranties of
`2.2
`requisite legal right, power, and authority to execute, deliver, and perform this Agreement.
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`Section 3. Covenants of Licensor. In addition to and without limiting any other covenants
`contained in this Agreement, Licensor, on behalf of itself and its Affiliates, further covenants as
`follows:
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`4.3
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`Section 5. Miscellaneous
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`. This Agreement shall not be binding upon the Parties
`Binding Effect
`5.1
`until it has been signed herein below by or on behalf of each Party.
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`Notices. Notices and other communications relevant to this Agreement or to any of the
`5.2
`Patents shall be sent by electronic mail, hand delivery, or by registered or certified mail to the
`following address, or to such other address as may be given by notice hereafter, and shall be
`effective upon sending, if sent by electronic mail, as proven by electronic date stamp, or upon
`receipt if sent by registered or certified mail, as proven by a post office delivery receipt:
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`For Licensor:
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`Severability. If any section of this Agreement is found by competent authority to be
`5.3
`invalid, illegal, or unenforceable in any respect for any reason, the validity, legality, and
`enforceability of any such section in every other respect and the remainder of this Agreement
`shall continue in effect so long as the Agreement still expresses the intent of the Parties.
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`Governing Law. This Agreement, including its formation, shall be governed by and
`5.4
`construed, and the legal relations between the Parties hereto shall be determined, in accordance
`with the law of the State of
` United States of America, as such law applies to contracts
`signed and fully performed in such State, without regard to the principles of conflicts of law
`thereof.
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`Section Headings. The headings of sections are inserted for convenience of reference
`5.5
`only and are not intended to be part of or to affect the meaning or interpretation of this
`Agreement.
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`Confidentiality. Neither Party hereto shall disclose the terms of this Agreement to any
`5.6
`third party, without the prior written consent of the other Party. This obligation is subject to the
`following exceptions:
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`5.7
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`Counterparts. This Agreement may be executed by the Parties in one or more
`5.8
`counterparts, each of which shall be an original and all of which shall together constitute one and
`the same instrument.
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`Relationship of the Parties. Nothing contained herein, or done in pursuance of this
`5.9
`Agreement, will constitute the Parties entering into a joint venture or partnership or will
`constitute either Party hereto being the agent for the other Party for any purpose or in any sense
`whatsoever.
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`5.10
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`5.11
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`5.12
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`5.13
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`to be
`the Parties hereto have caused this Agreement
`IN WITNESS WHEREOF,
`executed as of the Effective Date. Each individual signing below represents and warrants that he
`or she has authority to sign for and enter into this Agreement on behalf of his or her respective
`Party.
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`Agreed to:
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`Agreed to:
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`TECHNOLOGIES LLC
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