LICENSE
AGREEMENT
This License Agreement
(“Agreement”), effective as of July 28, 2009
(“the Effective Date”), is entered into between
NeoMedia Technologies, Inc., a Delaware corporation having a
principal place of business at Two Concourse Parkway, Suite 500,
Atlanta, Georgia 30328 (“NeoMedia”) and Mobile Tag,
Inc., a Delaware corporation having a principal place of business
at 400 Perimeter Center Terrace NE, Suite 900, Atlanta,
Georgia 30346 (“Mobile Tag”; together,
“The Parties,” or individually,
“Party”).
WHEREAS, Mobile Tag desires to obtain a license
from NeoMedia under the relevant NeoMedia patents for the Field of
Use and in the Territory as those terms are set forth herein
; and
WHEREAS, NeoMedia is the owner of, or has
acquired rights under, numerous United States and foreign patents
and patent applications, relating to, inter alia , methods
and systems for using automatic identification media to connect
users to and transmit data over the Internet;
WHEREAS, Mobile Tag is a company intending to
provide a system enabling mobile phone subscribers who scan a
machine readable code to connect via indirect access to information
related to the scanned barcodes;
WHEREAS, Mobile Tag is desirous of obtaining a
non-exclusive, limited license under the NeoMedia patents in the
United States; and
WHEREAS, NeoMedia is willing to grant such a
license in consideration of payments and royalties to be made by
Mobile Tag.
NOW, THEREFORE, in accordance with the foregoing
and in consideration of the terms and conditions contained herein,
NeoMedia and Mobile Tag agree as follows:
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“Licensed
Patents” means only the patents and applications owned by
NeoMedia containing claims to any invention(s) useful in or
relating to the Field of Use, strictly limited to the patents and
applications listed on Exhibit A hereto, together with all
divisionals, continuations, continuations-in-part, reissues,
reexaminations, and foreign counterparts thereof, and any other
present or future applications or patents now owned or hereafter
acquired by NeoMedia in which the claims are directed to the Field
of Use as set forth in Exhibit B hereto, to the extent they issue
during the time Mobile Tag is paying royalties in accordance with
the Paragraph 3 herein.
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“Field of
Use” shall be set forth in Exhibit B hereto.
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“Royalty-Based Revenue” means any
gross revenue, derived in any way by Mobile Tag in connection with
or relating to the Field of Use, including without limitation
advertising revenues, transactional revenue generated by barcode
reading, in-kind payments, non-monetary consideration (valued at
market value), clearing-house revenue, service fees, and includes
all action oriented revenue, for example but not limited to content
download and click to subscribe.
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“Territory” shall mean those
countries identified in Exhibit C as amended from time to time by
mutual agreement by the Parties, initially the United States of
America and its territories.
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"Mobile Tag
Clients" shall mean those entities that operate within the Field of
Use by way of illustration and not limitation, brands, agencies,
carriers, subscribers of carriers, and advertising customers of
carriers ( e.g. , brands, agencies, etc.).
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Subject to the
terms and conditions of this Agreement, and for the consideration
recited herein, NeoMedia grants to Mobile Tag a royalty-bearing,
non-exclusive, non-transferable, license within the Field of Use to
make, have made, use, sell, offer for sale, import into the United
States inventions under the Licensed Patents within the
Territory. There is no right to sublicense granted
herein, except that it is understood that parties contracting with
Mobile Tag to operate within the Field of Use under the rights
granted herein to Mobile Tag (“Mobile Tag Clients”)
will fall within the license granted to Mobile Tag subject to
termination of the license as set forth herein and provided that
such Mobile Tag Clients are generating Royalty-Based Revenue
subject to Paragraph 3. If a Mobile Tag Client
participates in a non-Mobile Tag ecosystem, such participation will
not fall within the license granted to Mobile Tag. It is
specifically understood that nothing herein grants any rights under
the Licensed Patents through Mobile Tag or otherwise to any Primary
Code Resolution Authority, including any related parent
corporations, subsidiaries, sister corporations, partnerships,
joint ventures, individuals, trusts, estates, or any similar
organizational structures (“Related Entity”) of a
Primary Code Resolution Authority, including, for example, the
company names set forth in Exhibit E, which may be modified to add
or delete company names from time to time at NeoMedia’s sole
discretion.
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The license
granted in this section to Mobile Tag shall terminate: if Mobile
Tag fails to make any payments due and owing pursuant to Paragraph
3, which the Parties agree is a material breach of this Agreement,
unless cured within thirty (30) days of notice by NeoMedia of such
failure; or upon Mobile Tag’s petition for relief under any
bankruptcy legislation; or upon Mobile Tag’s cessation of
doing business; or upon any other material breach of this Agreement
by Mobile Tag.
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Mobile Tag’s payment obligations to
NeoMedia shall be set forth in Exhibit D
The Term of
this Agreement shall be an initial three (3) years, with automatic
extensions of one year if Mobile Tag is compliant and up to date
with all provisions of the Agreement, as determined by NeoMedia in
its sole discretion. Mobile Tag’s payment
obligation under this Agreement will cease in the event that claims
of the Licensed Patents are found to be invalid or unenforceable
with no appeal remaining, such that Mobile Tag does not practice
the remaining Licensed Patents; or with the last to expire of the
Licensed Patents; or in the events described in the § 2.2
termination provisions of the Agreement; but not as to then accrued
payment obligations. After one (1) year from the
Effective Date and before expiration of the Term, in the event
Mobile Tag ceases to operate within the Field of Use, Mobile Tag
may terminate this Agreement by providing NeoMedia with written
notice and payment of an Early Termination Fee of twenty-five
percent (25%) of the total annual payment for the respective Year
as stated in Exhibit D. Termination will be effective as
of the date of payment of the Early Termination Fee.
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The Parties
agree to follow the procedure set forth below to resolve any
dispute (other than patent infringement, patent validity, patent
enforceability, or any other issue concerning a substantive patent
right), by arbitration administered by a mutually agreed-upon
arbitral entity, or in the event of no such agreement, by the
American Arbitration Association (“AAA”) in accordance
with its Commercial Rules and other applicable rules and procedures
set forth by the AAA. The place of arbitration shall be
Atlanta, GA.
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The procedures
described herein shall be followed if senior management of both
Parties is unable to resolve the dispute within thirty (30) days
after a dispute is identified to the other Party. There
shall be no arbitration until the thirty (30) day discussion period
has elapsed.
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The
arbitrator(s) may award damages, an injunction, or both to the
prevailing party.
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The decision of
the arbitrator(s) shall be final and binding on all Parties, and
judgment on the award of the arbitration panel may be entered by
any Court having jurisdiction. There shall be no
appeal.
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Any costs or
expenses, including reasonable attorneys’ fees, incurred by
the successful party arising out of the arbitration will be
as
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