Exhibit 10.6
Confidential Treatment Requested:
Confidential portions of this document have been redacted
and have been filed separately with the Commission.
AMENDMENT
NO. 1
TO
PATENT LICENSE AND ASSIGNMENT AGREEMENT
This Amendment No. 1 to Patent License
and Assignment Agreement (this “ Amendment No.
1 ”) is entered into as of November 2, 2006 (the “
Amendment Effective Date ”) by and between Science
Applications International Corporation, a Delaware corporation
(“ SAIC ”), and VirnetX Inc., a Delaware
corporation (“ Transferee ”), herein
individually referred to as a “ Party ” and
collectively referred to as the “ Parties .”
RECITALS
WHEREAS, the Parties entered into that
certain Patent License and Assignment Agreement dated as of August
12, 2005 (the “ Original Agreement ”);
and
WHEREAS, the Parties wish to enter into this Amendment No. 1 in
order to amend certain provisions of the Original Agreement
pursuant to Section 16.6 of the Original Agreement to facilitate
Transferee’s pursuing legal enforcement of the SAIC Patent
Rights against Microsoft Corporation and [***] or any of their
subsidiaries or successors (collectively, the “ M&A
Entities ”) and the Infringement Notice Parties (as
hereinafter defined).
AGREEMENT
NOW, THEREFORE, in consideration of
the mutual promises made herein and for other good and valuable
consideration the receipt and sufficiency of which is hereby
acknowledged, the Parties agree to amend the Original Agreement as
follows:
1.
DEFINITIONS . Terms used herein but not
otherwise defined herein shall have the meanings given them in the
Original Agreement.
2.
ASSIGNMENT OF PATENTS . The Parties hereby
waive any further conditions precedent to the occurrence of the
Assignment Trigger Event, which shall be deemed to be the Amendment
Effective Date for all purposes under the Original Agreement.
Effective as of the Amendment Effective Date and
subject to and contingent upon the grant back license to SAIC as
set out in Section 4.2 of the Original Agreement and subject to the
Reversion as set out in Section 5 of the Original Agreement and
SAIC’s rights in Section 6.3.3 of the Original Agreement,
SAIC hereby unconditionally and irrevocably conveys, transfers,
assigns and quitclaims to Transferee all of its right, title and
interest in and to the SAIC Patent Rights (the “
Assignment ”). SAIC agrees to prepare and
deliver documents consistent with the terms of the Assignment in
this Section for filing with the U.S. Patent and Trademark
Office and appropriate agencies in applicable foreign jurisdictions
on or prior to November 13, 2006. If SAIC fails to do so,
then all deadlines for deliverables owed from Transferee to SAIC
under the terms of the Original Agreement as modified by this
Amendment No. 1 shall be extended by the number of days following
the date the last of such assignment documents are delivered by
SAIC to Transferee.
3.
LITIGATION SUPPORT . In furtherance of the
Party’s mutual obligations to cooperate fully, which are
contained in the Original Agreement (and without superseding them
or limiting their generality), SAIC agrees to the following:
(a)
Access to Counsel Materials . SAIC shall provide
written instructions to McDermott, Will & Emory LLP (“
MWE ”) granting Transferee access to all materials
prepared by or on behalf of MWE in connection with the analysis
undertaken by MWE with respect to the potential infringement of the
SAIC Patent Rights by the M&A Entities and SAIC hereby waives
any conflict of MWE arising therefrom other than MWE representing
Transferee in a dispute with SAIC. The Parties agree
Transferee shall bear all costs, fees or any other charges of MWE
associated in any manner in connection with Transferee’s
accessing such materials.
(b)
Consent to Engagement of Counsel . Transferee is free
to engage any counsel it deems advisable with respect to the
pursuit of any and all potential infringement of the SAIC Patent
Rights. Without limiting the generality of the foregoing,
SAIC hereby expressly consents to the engagement of MWE by
Transferee, at Transferee’s expense, to the extent Transferee
deems it advisable to engage MWE with respect to the pursuit of any
and all potential infringement of the SAIC Patent Rights.
Transferee shall be entitled to compensate its counsel in any
manner it deems advisable, including without limitation, through
contingency fee arrangements or success fee arrangements where
compensation may be a function of the proceeds from resolution of
the matter.
(c)
Access to Personnel . Pursuant to and in accordance
with Section 6.3.3 of the Original Agreement, SAIC shall make its
non-attorney employees and non-attorney consultants reasonably
available to Transferee and its counsel as requested by Transferee
or its counsel for purposes of serving as witnesses, providing
testimony and otherwise assisting with the preparation of the cases
against potential infringers of the SAIC Patent Rights that
Transferee may determine to pursue. Pursuant to and in
accordance with Section 6.3.3 of the Original Agreement, Transferee
agrees that it shall pay SAIC its standard labor rates, costs and
other expenses as necessary for SAIC’s non-attorney staff to
support Licensee’s enforcement of the SAIC Patent Rights
under this Section or to respond to discovery served upon
SAIC by a defendant in any enforcement action brought by
Transferee.
(d)
Party to Litigation . Notwithstanding anything else
herein or in the Original Agreement to the contrary, in the event
that a court of competent jurisdiction issues a ruling holding that
SAIC is an indispensable party and must be joined as a party to a
lawsuit brought by Transferee to enforce the SAIC Patent Rights,
then SAIC shall, at SAIC’s sole option and discretion,
either:
(i)
join the lawsuit within the earlier of (1) ten business days after
receiving notice from Transferee of such court ruling, or (2) one
business day prior to the date Transferee would lose its suit
against such defendant if SAIC did not so join; or
(ii)
if SAIC has not so joined within the periods specified in clause
(i) immediately above (the “ Option to Join Period
”), SAIC agrees to assign to Transferee all of SAIC’s
rights and interest in amounts otherwise owing from Transferee to
SAIC hereunder or under the Original Agreement for amounts
recovered by Transferee from such defendant, including amounts for
past damages for infringement of the SAIC Patent Rights by such
defendant, and agrees to deliver to Transferee on or before the
business day of the expiration of the Option to Join Period,
evidence of such assignment as such evidence may be required by the
court to permit Transferee to proceed with its suit against such
defendant.
(iii)
Notwithstanding the above, at SAIC’s request Transferee shall
use its best efforts to make an in
