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PATENT LICENSE AGREEMENT

Patent License Agreement

PATENT LICENSE AGREEMENT | Document Parties: Avistar Communications Corporation | Collaboration Properties, Inc | Sony Computer Entertainment, Inc | Sony Corporation You are currently viewing:
This Patent License Agreement involves

Avistar Communications Corporation | Collaboration Properties, Inc | Sony Computer Entertainment, Inc | Sony Corporation

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Title: PATENT LICENSE AGREEMENT
Governing Law: California     Date: 11/14/2006
Industry: Computer Peripherals     Sector: Technology

PATENT LICENSE AGREEMENT, Parties: avistar communications corporation , collaboration properties  inc , sony computer entertainment  inc , sony corporation
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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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