Exhibit 10.30
AMENDED AND RESTATED
AGREEMENT
This Amended and Restated Agreement
(this “Agreement”) is made and entered into effective
as of the 1 st day of May, 2005, by and among
Forgent Networks, Inc. and its wholly owned subsidiary Compression
Labs, Inc. (collectively, the “Client”), and Godwin
Gruber, LLP (the “Law Firm”). The Law Firm and the
Client are sometimes collectively hereinafter referred to as the
“Parties.” Any one of the Parties may be sometimes
hereinafter referred to as a “Party.”
This Agreement concerns litigation
and licensing activities with respect to U.S. Patent No. 4,698,672
(the “ ‘672 Patent”), together with any
continuations, continuations-in-part, divisions and/or foreign
counterparts of the ‘672 Patent, and amends and restates in
its entirety, effective as of the date hereof, that certain
agreement, dated January 11, 2005 by and between the Law Firm and
the Client, as previously amended (the “Original
Agreement”). The Client is executing this Agreement for the
purpose of retaining the Law Firm to represent it in connection
with
investigating and asserting claims, including
the filing and prosecution of lawsuits, against any other person
who may be infringing the ‘672 Patent, including the
enforcement of the ‘672 Patent in the civil actions
identified in Exhibit A. Any such claim as to which litigation is
filed is referred to herein as a “Lawsuit.” The Client
is also executing this Agreement for the purpose of retaining the
Law Firm to represent it in connection with negotiating with
infringers who are not parties to any lawsuit relating to the
enforcement of the ‘672 Patent to obtain and secure licensing
or sublicensing agreements between the Client and infringers. Any
such licensing or sublicensing agreements negotiated by the Law
Firm will be referred to herein as a “License
Agreement,” and any negotiations for such License Agreements
will be referred to herein as the “License
Negotiations.” The Client is not engaging the Law Firm to
market or commercialize its technologies to non-infringers. The
Client understands and acknowledges that patent infringement
litigation often presents novel and difficult questions of both law
and fact, and the acceptance of the engagement by the Law Firm in
this matter may preclude engagements by the Law Firm on other
matters.
SPECIAL DISCLOSURE. THE CLIENT
ACKNOWLEDGES THAT IT WAS ADVISED TO RETAIN INDEPENDENT LEGAL
COUNSEL TO REPRESENT THE CLIENT IN CONNECTION WITH THE NEGOTIATION
AND EXECUTION OF THIS AGREEMENT. THE CLIENT FURTHER ACKNOWLEDGES
THAT IT WAS ADVISED THAT THE LAW FIRM HAS A CONFLICT OF INTEREST
THAT PREVENTS IT FROM REPRESENTING THE CLIENT IN ANY WAY WITH
RESPECT TO THE NEGOTIATION AND EXECUTION OF THIS AGREEMENT AND THAT
THE LAW FIRM HAS NOT DONE SO.
NOW, THEREFORE, for and in
consideration of the mutual agreements set forth in this Agreement,
and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged and confessed by each
Party, the Parties agree as follows:
1 Patents and Information Provided by Client.
The Client agrees to use commercially reasonable efforts to provide
the Law Firm with all information and documents in the possession
of the Client or any entities affiliated with the Client reasonably
required in connection with performing its duties and obligations
hereunder.
2 Client’s Patent Rights. The Client
represents and warrants that, to the best of its knowledge after
reasonable investigation, it owns the exclusive right to enforce
all rights with respect to the ‘672 Patent, including,
without limitation, the exclusive right to bring actions against
others for infringement of the ‘672 Patent, to license and
sublicense the ‘672 Patent, and to collect all royalties,
license fees, profits or other revenue or valuable consideration to
be paid or exchanged by anyone else for the right to use the
‘672 Patent. The Client agrees to timely pay all maintenance
fees due on the ‘672 Patent.
3 Contingent Fee Compensation to Law
Firm.
3.1 For services rendered pursuant hereto, the
Client hereby agrees to pay the Law Firm a contingent fee equal to
twenty-two percent (22%) of all License Proceeds and Litigation
Proceeds. For purposes hereof, (i) “License Proceeds”
shall mean any revenues, including but not limited to, royalties or
license fees, money or other valuable consideration received by the
Client through, under or as a result of any License Agreement
and/or any License Negotiations, and (ii) “Litigation
Proceeds” shall mean any recovery realized out of or
collected from or in connection with any Lawsuit, either through
settlement, compromise or judgment, including, but not limited to,
compensatory damages, exemplary damages, attorneys’ fees,
prejudgment interest, and post judgment interest (whether through
trial or settlement of any Lawsuit).
3.2 The Law Firm will receive its percentage
interest in the License Proceeds and Litigation Proceeds as they
are paid to the Client or, at the election of the Client, based
upon the present value of the amount of money that is to be paid to
the Client over time. If the Client chooses to waive any such
future payments, it will pay the Law Firm an amount equal to the
Law Firm’s interest in those payments as they otherwise would
have been made to the Client. The Parties agree that (x) the
License Proceeds shall include the full fair market value of any
non-monetary proceeds and shall not be reduced by any
cross-license, cross-action, setoff or other payment by Client,
which shall be the sole responsibility of Client, and (y) the
Litigation Proceeds shall include the full fair market value of any
non-monetary
relief obtained or received directly by the
Client or any related entity as a proximate result of any Lawsuit,
such as injunctive relief. The Law Firm’s contingent fees
based on License Proceeds and Litigation Proceeds shall
collectively be referred to herein as the “Contingent
Attorneys’ Fees.”
3.3 The Client shall pay the Contingent
Attorneys’ Fees to the Law Firm quarterly, on or before the
10 th day of each succeeding fiscal
quarter. With each such lump sum payment, the Client shall provide
the Law Firm with a (i) detailed accounting of all License Proceeds
and Litigation Proceeds received by the Client during the
immediately preceding fiscal quarter, and (ii) a calculation of the
quarterly lump sum amount being tendered to the Law Firm. The Law
Firm shall have 30 days following its receipt of each quarterly
payment and the accompanying detail within which to verify and/or
object to the Client’s calculation of the quarterly payment
amount. If the Law Firm fails to object to any quarterly
calculation within such 30 day period, the calculation and the
payment received shall, absent fraud by the Client, be deemed to
have been accepted by the Law Firm and shall be final.
3.4 Anything herein to the contrary
notwithstanding, the Law Firm shall not be entitled to receive, and
the Client shall not be required to pay the Law Firm, any
Contingent Attorneys’ Fees under this Paragraph 3 or
otherwise out of or with respect to the first $6 million of
“Gross Recoveries” received by the Client on or after
October 27, 2004, in recognition of Client’s existing
obligations under that certain Resolution Agreement, dated December
22, 2004 (the date on which the Law Firm first becomes entitled to
receive any Contingent Attorneys’ Fees in accordance with
this paragraph 3(d), whether or not the Law Firm actually receives
any Contingent Attorneys’ Fees on such date, shall
hereinafter be referred to as the “Contingent Fee Start
Date”).
4 Additional Hourly Rate Compensation to Law
Firm. In addition to the Contingent Attorneys’ Fees, the
Client shall also compensate the Law Firm for services rendered
hereunder by paying the Law Firm a fixed fee of Two Hundred
Thousand Dollars ($200,000) per month (the “Fixed Fee”)
during the term hereof. Client shall pay the Fixed Fee monthly, in
arrears, on or before the fifth (5 th ) day of each succeeding calendar
month.
5 Client Payment of Enforcement Expenses. For
purposes hereof, “Enforcement Expenses” shall mean
those third-party expenses reasonably incurred by Law Firm on the
Client’s behalf hereunder (but only if approved by the Client
in advance), including but not limited to, travel expenses, long
distance calls, investigation fees, consultant fees, expert and
witness fees, charts, photographs, deposition fees and costs, court
costs, photocopying and other document reproduction costs, postage
charges, fax charges, on-line computer research.
So long as the Law Firm is not
entitled to receive any Contingent Attorneys’ Fees under
Paragraph 3(d) above, the Client shall pay when due all Enforcement
Expenses. Once the Law Firm becomes entitled to receive Contingent
Attorneys’ Fees in accordance with Paragraph 3(d) above,
Enforcement Expenses shall be reimbursed to the Client out of any
License Proceeds or Litigation Proceeds up to, but not to exceed,
20% of any such License Proceeds or Litigation Proceeds recovered
from any person(s) at any one time. For example, if License
Proceeds or Litigation Proceeds are recovered from a Licensing
Negotiation or any Lawsuit from any person, then up to 20% of such
total proceeds will be paid to the Client as reimbursement for
Enforcement Expenses incurred, and the remainder of the License
Proceeds or Litigation Proceeds will be distributed to the Law Firm
and the Client in accordance with the provisions of Paragraph 3(a)
above. In the event that the total amount of License Proceeds or
Litigation Proc
