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EXHIBIT
10.85
PROPRIETARY
INFORMATION
CONFIDENTIAL PORTIONS OF
THIS DOCUMENT HAVE BEEN REDACTED AND
FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION
TDMA PATENT LICENSE
AGREEMENT
BETWEEN
INTERDIGITAL TECHNOLOGY
CORPORATION
AND
SAMSUNG ELECTRONICS CO.,
LTD.
PROPRIETARY
INFORMATION
TABLE OF
CONTENTS
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Page
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| ARTICLE 1 - DEFINITIONS |
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1 |
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| 1.1. |
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Definitions |
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1 |
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| ARTICLE 2 - LICENSE GRANT |
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1 |
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| 2.1. |
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ITC
License Grant |
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1 |
| 2.2. |
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Limitations on License Grant |
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1 |
| 2.3. |
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General
Limitations on License Grants |
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2 |
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| ARTICLE 3 - WARRANTIES |
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2 |
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| 3.1. |
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Mutual
Warranties |
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2 |
| 3.2. |
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ITC
Warranties |
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3 |
| 3.3. |
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Limitation of Liability |
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3 |
| 3.4. |
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Limitation of Warranties |
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3 |
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| ARTICLE 4 - ADDITIONAL COVERED STANDARDS |
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3 |
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| 4.1. |
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Right to
Designate |
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3 |
| 4.2. |
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Objection
to Additional Designation |
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3 |
| 4.3. |
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Royalty
Rates |
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3 |
| 4.4. |
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Effect on
Advance Payment Amount |
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3 |
| 4.5. |
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No
Stacking of Royalties |
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4 |
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| ARTICLE 5 - TERM; TERMINATION |
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4 |
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| 5.1. |
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Term |
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4 |
| 5.2. |
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Termination. |
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4 |
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| ARTICLE 6 - PAYMENT OF LICENSE FEES |
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4 |
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| 6.1. |
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Royalty
Rate |
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4 |
| 6.2. |
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Cap on
Royalties. |
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5 |
| 6.3. |
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[***] |
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5 |
| 6.4. |
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No
Stacking |
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6 |
| 6.5. |
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Pending
Applications |
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6 |
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| ARTICLE 7 - WIRELESS LOCAL LOOP SUBSCRIBER UNITS |
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6 |
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| 7.1. |
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ITC
Option |
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6 |
| 7.2. |
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Cross
License |
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6 |
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| ARTICLE 8 - ADJUSTMENTS TO ROYALTIES |
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6 |
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| 8.1. |
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Adjustment Meeting |
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6 |
| *** |
Confidential material which has been omitted and filed
separately with the Securities and Exchange Commission. |
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PROPRIETARY
INFORMATION
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| 8.2. |
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Adjustment Effective Date |
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6 |
| 8.3. |
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Effect on
Advance Payment Amount |
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6 |
| 8.4. |
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Manner of
Application |
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| 8.5. |
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Notice |
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7 |
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| ARTICLE 9 - PAYMENTS |
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8 |
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| 9.1. |
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Reports;
Timing |
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8 |
| 9.2. |
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No Set
Off |
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8 |
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| ARTICLE 10 - CROSS-LICENSES |
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8 |
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| 10.1. |
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SEC
License Grant |
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8 |
| 10.2. |
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Additional Patent Licenses |
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8 |
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| ARTICLE 11 - ADVANCE PAYMENT |
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9 |
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| ARTICLE 12 - MISCELLANEOUS |
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9 |
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| 12.1. |
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Incorporation by Reference |
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9 |
| 12.2. |
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Affixation |
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| 12.3. |
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Limitation on Actions |
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10 |
| 12.4. |
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Litigation |
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10 |
| 12.5. |
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Reports
Until Advance Payment Amount Exhausted |
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10 |
-ii-
PROPRIETARY
INFORMATION
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| Exhibit A |
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List of
Licensed Patents |
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| Schedule 1 |
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Application of Advance Payment |
-iii-
PROPRIETARY
INFORMATION
PATENT LICENSE
AGREEMENT
THIS AGREEMENT is entered into as
of the date each party hereto has fully executed this Agreement, by
and between InterDigital Technology Corporation, a Delaware
corporation with offices at 900 Market Street, Second Floor,
Wilmington, DE 19801 (“ITC”), and Samsung Electronics
Co., Ltd., a corporation existing under the laws of the Republic of
Korea with offices at Samsung Main Building, 250, 2-Ka,
Taepyung-Ro, Chung-Ku, Seoul, Korea 100-742
(“SEC”).
Background
ITC owns an international portfolio of
patents that relate to digital wireless communications systems. SEC
is in the business of manufacturing and selling digital wireless
communications systems and desire licenses under the ITC patents to
make, use and sell digital wireless infrastructure equipment and
subscriber units on the terms and conditions set forth herein. SEC
and ITC, along with InterDigital Communications Corporation
(“IDC” and, together with ITC,
“InterDigital”), desire to enter into the other Related
Agreements and in consideration of the terms and conditions
contained herein and in the other Related Agreements, the parties
hereto agree to the following terms and conditions:
NOW THEREFORE , in consideration
of the mutual covenants herein contained, the parties hereto,
intending to be legally bound, agree as follows:
ARTICLE 1 -
DEFINITIONS
| 1.1. |
Definitions . As used herein, the “Master
Agreement” means the agreement entitled “Master
Agreement” between and among SEC, IDC and ITC of even date
herewith, and the Related Agreements mean the agreements required
to be executed pursuant to the Master Agreement. As used herein,
the terms in Exhibit A of the Master Agreement, when used
with initial capital letters in this Agreement, including any
Exhibits, attachments or amendments, shall have the meanings
described in Exhibit A of the Master Agreement. |
ARTICLE 2 - LICENSE
GRANT
| 2.1. |
ITC License Grant . ITC grants to the SEC Group a
non-exclusive, worldwide, royalty bearing, perpetual license for
the life of and under the Licensed Patents, including the Patents
listed in Exhibit A hereto, to make, have made, use, sell,
lease or otherwise dispose of Covered TDMA Subscriber Units,
Covered TDMA Infrastructure Units and components and subassemblies
intended for use with Covered TDMA Subscriber Units and/or Covered
TDMA Infrastructure Units. |
PROPRIETARY
INFORMATION
| 2.2. |
Limitations on License Grant . The license grant of
Paragraph 2.1 is subject to the following limitations: |
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2.2.1. |
Third party purchasers of Covered Subscriber or Covered
Infrastructure Units purchased directly or indirectly from SEC
shall have the right to use and sell such purchased products for
their normal or expected uses without obligation under patents to
ITC or its Affiliates. |
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2.2.2. |
Notwithstanding the terms of Section 2.2.1, no license is
granted by estoppel or implication to any third party customer of
Covered Subscriber Units to make, use or sell Infrastructure
Equipment, and no license is granted by estoppel or implication to
any third party customer of Covered Infrastructure Units to make,
use or sell Subscriber Units, and any claims that ITC may have
against a third party manufacturer of Subscriber Units that the use
of such Subscriber Units with Infrastructure Equipment licensed
under this Agreement contributorily infringe or induce the
infringement of any claims of any of the Licensed Patents are
expressly reserved by ITC. |
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2.2.3. |
Notwithstanding the terms of Section 2.2.2, in no event
shall SEC be held liable for contributory infringement or inducing
infringement (or under any similar theory of liability), based on
the uses made of Covered Subscriber Units or Covered Infrastructure
Units by direct or indirect purchasers, regardless of the manner in
which such Covered Subscriber Units or Covered Infrastructure Units
are sold, marketed or promoted by SEC. |
| 2.3. |
General Limitations on License Grants . Nothing in this
Agreement shall be construed as: |
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(i) |
requiring the maintenance of the Licensed Patents; |
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(ii) |
a warranty as to the validity or scope of the Licensed
Patents; |
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(iii) |
a warranty or representation that any product will be free from
infringement of patents of third parties; |
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(iv) |
an agreement to bring or prosecute actions against third party
infringers of the Licensed Patents provided, that ITC, in
determining whether to bring or prosecute actions against third
party infringers, shall act in a commercially reasonable manner in
light of the parties’ mutual interest in protecting the value
of the Licensed Patents; or |
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(v) |
conferring any license or right under any patent other than the
Licensed Patents. |
ARTICLE 3 -
WARRANTIES
| 3.1. |
Mutual Warranties . Each party represents and warrants
that it has the right and authority to enter into this
Agreement. |
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PROPRIETARY
INFORMATION
| 3.2. |
ITC Warranties . ITC represents and warrants
that: |
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3.2.1. |
it owns the patents that it is licensing hereunder;
and |
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3.2.2. |
it has the right and authority to convey the rights that it is
granting hereunder. |
| 3.3. |
Limitation of Liability . Neither of the parties hereto
shall be liable to the other party in tort, contract or otherwise
for any consequential, incidental, exemplary, punitive, indirect or
special damages of any kind, including, but not by way of
limitation, damages for loss of profit by ITC or SEC, even if the
possibility of such damages was disclosed to, or could reasonably
have been foreseen, by the injuring party. |
| 3.4. |
Limitation of Warranties . THE PARTIES MAKE NO
WARRANTIES EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION,
IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE, OTHER THAN THE WARRANTIES SET FORTH IN THIS ARTICLE
. |
ARTICLE 4 - ADDITIONAL
COVERED STANDARDS
| 4.1. |
Right to Designate . ITC and SEC shall each have the
right to designate additional standards (including, without
limitation, SEC product architectures, even if such architectures
are not the subject of an industry standard) as candidates for
adoption as Covered Standards, by giving written notice to the
other. Any such designation shall include a full description of the
standard, and a list of those patent claims which are deemed to
cover the use and operation of SEC’s products in conformity
with that standard. |
| 4.2. |
Objection to Additional Designation . If candidates for
adoption as additional Covered Standards are designated by ITC, SEC
shall retain the right to object to such designation on the ground
that such candidate is not a Covered Standard. If the parties are
unable to reach agreement on this issue, this dispute will be
resolved under the dispute resolution provisions of Article 5 of
the Master Agreement. |
| 4.3. |
Royalty Rates . If a candidate for adoption as an
additional Covered Standard is adopted as such, either by agreement
of the parties or through the dispute resolution process, the
parties shall enter into good faith negotiations to determine an
appropriate royalty applicable to Covered Subscriber Units or
Covered Infrastructure Units which comply with such additional
Covered Standard. Such negotiations shall take into consideration
the Manufacturer’s Average Selling Price of such product, the
Licensed Patents covering such product and the royalty rates and
terms contained herein. |
| 4.4. |
Effect on Advance Payment Amount . In the event that an
additional Covered Standard is adopted prior to the exhaustion of
prepaid royalties, SEC shall have the option to apply prepaid
royalties towards products compliant with such additional Covered
Standard. Such prepaid royalties will be applied at a rate
consistent with the ratio between the royalty rate applicable to
already covered products and the royalty rate applicable to newly
covered products. |
-3-
PROPRIETARY
INFORMATION
| 4.5. |
No Stacking of Royalties . [***] . |
ARTICLE 5 - TERM;
TERMINATION
| 5.1. |
Term . The term of this Agreement shall commence on the
Effective Date and terminate upon the last-to-expire of the
Licensed Patent applicable to any Covered Standard, unless sooner
terminated as provided herein. |
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