Exhibit 10.15
PATENT LICENSE AGREEMENT
This Patent License Agreement (this
“Agreement”) is entered into as of May 15, 2006 (the
“ Effective Date ”) by and between Collaboration
Properties, Inc., a Nevada corporation, having offices at 555 Twin
Dolphin Drive, Redwood Shores, California 94065 (“ CPI
”), Avistar Communications Corporation, a Delaware
corporation, having offices at 555 Twin Dolphin Drive, Redwood
Shores, California 94065 (“AVISTAR”), Sony Corporation,
a Japanese corporation, having offices at 6-7-35 Kitashinagawa,
Shinagawa-ku, Tokyo 141-0001, Japan, (“ SONY
”) and Sony Computer Entertainment, Inc, a Japanese
corporation having offices at 2-6-21 Minami-Aoyama,
Minato-ku, Tokyo 107-0062 Japan, (“SCEI”). SONY and
SCEI and CPI and AVISTAR are each jointly a “Party” and
collectively the “Parties.”
RECITALS
WHEREAS, CPI is the owner of the Licensed
Patents and is willing to grant a nonexclusive license under the
Licensed Patents to SONY and its Affiliates under the terms and
conditions set forth herein; and
WHEREAS, SONY and its Affiliates desire a
nonexclusive license under the Licensed Patents subject to the
terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the mutual
covenants, agreements and undertakings set forth herein, the
parties agree as follows:
1.
Definitions
The
following capitalized terms used in this Agreement shall have the
following meanings. The use of singular shall include the
plural and vice versa, where appropriate:
1.1
“ Affiliate ” shall mean a Person that is under
Control of SONY including, without limitation, SCEI and the
affiliates of SCEI under the Control of SCEI.
1.2
“ Building Local Exchange Carrier System ” shall
mean a multi-tenant building video networking system that provides
building-internal video networks and services in office towers,
industrial parks, hotels, and apartment complexes. Such a system
may include access to broadband carriers, building-internal
switches, building internal video storage servers, and
building-internal multipoint control units.
1.3
“ Control ” shall mean the ownership, directly
or indirectly, of at least fifty percent (50%) of the voting
securities or other ownership interest of a Person or, with respect
to a limited partnership or other similar Person, its general
partner or controlling Person. A Person shall be an Affiliate
only so long as such control exists.
1.4
“ Data-Protocol Transmission Carrier System ”
shall mean a digital transmission system utilizing data
communications protocols as replacements for telephony
time-division transmission formats.
[***] Portions of this exhibit have been
omitted pursuant to a request for confidential treatment filed
pursuant to Rule 24-b-2 promulgated under the Securities
Exchange Act of 1934, as amended, and the omitted portions
represented by [***] have been separately filed with the Securities
and Exchange Commission.
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1.5
“ Disputes ” shall mean any action, dispute,
claim or controversy of any kind, including, without limitation,
issues of patent infringement and claim coverage, whether in
contract or tort, statutory or common law, legal or equitable, now
existing or hereafter arising under or in connection with, or in
any way pertaining to, this Agreement.
1.6
“ Instant Messaging System ” shall mean system
that provides instant messaging call initiation, login-based call
routing, and presence indication. Such a system may be implemented
in hardware, software, or a combination thereof.
1.7
“ Licensed Patents ” shall mean all patents and
patent applications and any patents issuing therefrom worldwide
that have or are entitled to the benefit of a filing date on or
before January 1, 2006 that are owned or licensable by CPI without
the bona fide payment of royalties or other consideration to an
unaffiliated third party, including but not limited to, the patents
listed on Appendix A hereto.
1.8
“ Licensed Products ” shall mean any products of
SONY and its Affiliates which are sold by SONY or its Affiliates
which are covered directly or indirectly by one or more claims of
the Licensed Patents which, absent the license granted to SONY and
its Affiliates hereunder, would directly or indirectly infringe a
claim of any of the Licensed Patents. [***] the [***], [***]
to the [***] that they are [***] Video Conferencing Systems made,
used, sold, offered for sale, imported or otherwise distributed by
SONY or its Affiliates, [***] shall [***], [***] or [***], [***],
[***], [***], [***], and [***]. Licensed Products shall not
mean any third party software bundled or used with laptop personal
computers with an integrated camera.
1.9
“ Metropolitan Area Network System ” shall mean
a networking system that provides interbuilding communications and
services in a local geographical region utilizing cable plant. Such
a system may include a multimedia central office, access to
broadband carriers, switches, multiplexers, routers, video storage
servers, and multipoint control units.
1.10
“ Person ” shall mean an individual,
corporation, partnership, association, trust, incorporated
organization, governmental authority, other entity or group (as
defined in Section 13(d)(3) of the Exchange Act of 1934, as amended
as of the Effective Date).
1.11
“ PlayStation Products ” shall mean [***] to be
marketed as PLAYSTATION [***] and [***] that incorporate software
that enables a Video Conferencing System and which are covered
directly or indirectly by one or more claims of the Licensed
Patents which, absent the license granted to SONY and its
Affiliates hereunder, would directly or indirectly infringe a claim
of any of the Licensed Patents.
1.12
“ Video Conferencing System ” shall mean a
system having two or more endpoints, each endpoint designed to work
with other endpoints through network or other connections to
implement a two-way video and audio conference. Such a system
comprises a support for active use of a network connection, video
and audio codec functions, a processor for implementing at least
connection control functions, and may be implemented in hardware,
software, or a combination thereof. Such a system may additionally
comprise one or more video monitors, video cameras, audio
microphones, audio speakers, audio echo cancellation capabilities,
network interfaces utilizing unshielded twisted pair network
cabling, graphical user interface capabilities, directories or
databases of user information, directories or databases of the
capabilities of remote equipment,
[***] Portions of this exhibit have been
omitted pursuant to a request for confidential treatment filed
pursuant to Rule 24-b-2 promulgated under the Securities
Exchange Act of 1934, as amended, and the omitted portions
represented by [***] have been separately filed with the Securities
and Exchange Commission.
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multi-point capabilities, and data conferencing capabilities. Such
a system may be implemented in a manner conducive to desktop
operation, meeting room operation, or both.
1.13
“ Video Call Management System ” shall mean a
system designed to work with Video Conferencing Systems through
network connections or other equipment to initiate a video and
audio conference with two or more participants. Such a system
comprises at least connection control functions, and may be
implemented in hardware, software, or a combination thereof. Such a
system may additionally comprise one or more of graphical user
interface capabilities, remote disconnect capabilities, remote hold
capabilities, directories or databases of user information,
directories or databases of the capabilities of remote equipment.
Such a system may be implemented as a component of a Video
Conferencing System.
1.14
“ Video Storage or Playback System ” shall mean
a system comprising video answering functions, video conference
recording, video-on-demand, video presentation applications that
include synchronized text or graphics, storage area networks
supporting video, and video storage servers. Such a system may be
implemented in hardware, software, or a combination thereof.
1.15
“ Voice Over Internet Protocol System ” shall
mean two-way voice telephony communications utilizing data
communications protocols.
2.
Grant of Rights
2.1
License Grant . Subject to the terms of this Agreement
and the payment pursuant to Section 4 below, CPI grants to SONY and
its Affiliates including, without limitation, SCEI and the
affiliates of SCEI under the Control of SCEI a world wide,
non-exclusive, license under the Licensed Patents to make, have
made use, import, offer to sell, sell, lease, license, or otherwise
transfer (whether directly or through resellers or distributors) or
export Licensed Products.
2.2
No [***] Rights . Except as may be expressly set forth
in this Agreement, SONY or any of its Affiliates shall have [***]
to grant any third party any [***] or [***] under the Licensed
Patents [***] the [***] prior [***] of [***]. [***] the
[***], SONY and its Affiliates [***] personal, [***] with no [***]
to [***] further [***] under the Licensed Patents [***] as [***] be
[***] for the [***] and [***] of or [***] to, but [***] any [***]
of, the [***] by [***] thereof and without any [***] to [***] or
[***] the [***] with any item or product (hardware or software)
[***] a [***].
2.3
No Other Rights . CPI reserves all rights not
expressly granted to SONY and its Affiliates in this
Agreement. Without limiting the generality of the foregoing
sentence, no right or license is granted herein under any
intellectual property (including under any patent, copyrights,
trademarks, mask work rights, or trade secret rights) of CPI or any
other Person, other than under the Licensed Patents.
3.
Additional Rights
3.1
[***] by [***] . [***] grants to [***] and its
Affiliates a personal and non-transferable [***] [***] or [***] any
[***] or other [***] for [***].
[***] Portions of this exhibit have been
omitted pursuant to a request for confidential treatment filed
pursuant to Rule 24-b-2 promulgated under the Securities
Exchange Act of 1934, as amended, and the omitted portions
represented by [***] have been separately filed with the Securities
and Exchange Commission.
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of the [***] against [***] and its Affiliates and its and their
respective hardware manufacturers, distributors, customers and
users, mediate and immediate for any and all [***] of [***] for
selling, bundling or using third party software in association with
products made by or for [***] and its [***]. [***]
specifically [***] its right to [***] its [***] and other [***] the
[***] and [***] of such [***] party [***].
3.2
CPI and AVISTAR Release for Infringement . Subject to the
payment set forth in Section 4.1, CPI and AVISTAR, individually and
on behalf of each of their affiliates and subsidiaries, as
releasors, irrevocably releases SONY, its Affiliates which are
Affiliates as of the Effective Date and its and their respective
distributors, customers and users, mediate and intermediate, from
any and all claims of (i) infringement of CPI’s Licensed
Patents which claims are based on acts, which, had they been
performed after the Effective Date would have been licensed under
this Agreement and (ii) for all past and future claims of
infringement, whether known or unknown, for any product other
than the Licensed Products that has been offered for sale by SONY
or its Affiliates on or before the Effective Date, and any [***] to
the [***] that [***] and [***] already [***] by [***] or its
Affiliates [***] offered [***] on or [***] the [***]. CPI and
AVISTAR specifically reserve the right to assert its patents and
other rights against third party suppliers of hardware and software
employed in such products AVISTAR, on behalf of itself and
its affiliates, agrees [***] to [***] an [***] or [***] the [***]
of [***] and its [***] anytime [***] to [***]. However, SONY,
on behalf of itself and its Affiliates agrees that any [***] that
[***] or its [***] would have [***] to [***] they [***] against
[***] or its [***] on the [***] shall be [***], and [***] or its
[***] will [***] any [***] as being [***] in any [***] or other
[***] to [***].
3.3
SONY Release for Infringement. SONY, as releasor, on
behalf of itself and its Affiliates, which are Affiliates as of the
Effective Date, irrevocably releases AVISTAR, and its affiliates
which are under its Control as of the Effective Date and its and
their respective distributors, customers and users from any and all
claims for all past and future claims of patent infringement,
whether known or unknown, under [***] for any Video Conferencing
System product that has been offered for sale by AVISTAR or by such
affiliates on or before the Effective Date;. SONY
specifically reserves the right to assert its patents and other
rights against third party suppliers of hardware and software
employed in such products,. SONY, on behalf of itself and its
Affiliates as of the Effective Date, represents and warrants that
it has no knowledge of any infringement of patents owned or
licensable by SONY or its Affiliates by products offered for sale
by AVISTAR or such affiliates on or before the Effective Date,
except for those patents that are essential to standardized
technology included in such products such as, for example, video
and audio codecs, and that it has no present intent to initiate an
infringement suit or other action against AVISTAR or any of its
affiliates for any products offered for sale by AVISTAR or such
affiliates on or before the Effective Date. SONY, on behalf of
itself and its Affiliates, agrees [***] to [***] an [***] or [***]
the [***] of [***] and its [***] anytime [***] to [***], except
under those patents that are essential to standardized technology
included in such products. However, AVISTAR, on behalf of
itself and its affiliates agrees that any [***] that [***] or its
[***] would have [***] to [***] they [***] against [***] or its
[***] on the [***] shall be [***] [***], and [***] or its [***]
will [***] any [***] as being [***] of [***] in any [***] or other
[***] to [***].
3.4
Other Transactions . CPI may assign, convey, sell,
lease, encumber, license, sublicense or otherwise transfer to a
third party any and all of the Licensed Patents provided that any
such
[***] Portions of this exhibit have been
omitted pursuant to a request for confidential treatment filed
pursuant to Rule 24-b-2 promulgated under the Securities
Exchange Act of 1934, as amended, and the omitted portions
represented by [***] have been separately filed with the Securities
and Exchange Commission.
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transaction is made subject to all rights and licenses of SONY and
its Affiliates arising from this Agreement and shall not impose any
additional obligations on SONY or any of its Affiliates. To the
extent that any of the Licensed Patents are assigned, conveyed,
sold, leased, encumbered, licensed, sublicensed or otherwise
transferred to a third party by CPI or a successor in interest,
such third party shall agree that it will stand in the stead of
CPI, or any successor in interest, with regard to the covenant not
to sue granted in Section 3.1 and the release granted in Section
3.2.
4.
Payments
4.1
License Payments . In partial consideration of the
licenses, releases and other rights granted to SONY and its
Affiliates under this Agreement, SONY shall pay to CPI five million
United States dollars ($5,000,000). Such payment shall be made
within twenty (20) days after the receipt of any required documents
under the amended US/Japan Tax Treaty (“Convention between
the Government of Japan and the Government of the United States of
America for the Avoidance of Double Taxation and the Prevention of
Fiscal Eva
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