Exhibit 10.76
PROPRIETARY
INFORMATION
CONFIDENTIAL PORTIONS OF THIS
DOCUMENT HAVE BEEN REDACTED AND
FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION
PATENT LICENSE AGREEMENT
BETWEEN
INTERDIGITAL COMMUNICATIONS
CORPORATION,
INTERDIGITAL TECHNOLOGY
CORPORATION
AND
NOKIA CORPORATION
PROPRIETARY
INFORMATION
TABLE OF CONTENTS
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ARTICLE
I
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2
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1.1 Definitions
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2
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ARTICLE
II
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2
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2.1 ITC
Grant
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2
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ARTICLE
III
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6
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3.1 Royalty
Payments
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6
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ARTICLE
IV
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19
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4.1 Term
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19
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4.2 Termination
for Default
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19
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ARTICLE
V
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21
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5.1 Payments/Reports
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21
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5.2 Currency
Conversion
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21
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5.3 Oppositions
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21
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5.4 Release
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22
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5.5 Audit
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22
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5.6 Nokia
Identification on Covered Subscriber Units/Covered
Infrastructure
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22
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5.7 Limited
Warranty
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22
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5.8 Affiliate
Performance
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22
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5.9 Limitation
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23
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5.10 Acquisitions/Assignment
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23
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5.11 Entire
Agreement/Amendment
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25
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PROPRIETARY
INFORMATION
PATENT LICENSE
AGREEMENT
THIS IS A PATENT LICENSE AGREEMENT (the
“Agreement”) entered into as of the Effective Date
between InterDigital Communications Corporation, a corporation
organized and existing under the laws of the Commonwealth of
Pennsylvania, with a mailing address at 781 Third Avenue, King of
Prussia, Pennsylvania 19406, InterDigital Technology Corporation
(“ITC”), a Delaware corporation with a mailing address
of 300 Delaware Avenue, Suite 527, Wilmington, DE 19801, and Nokia
Corporation (“Nokia”), a company organized and existing
under the laws of Finland, with a mailing address of Keilalahdentie
4, SF-02150 Espoo, Finland.
PREAMBLE
IDC has developed extensive digital
communications technology experience involving both TDMA and code
division multiple access (CDMA) technologies. ITC has an extensive
and valuable portfolio of patents covering digital wireless
telephone systems utilizing TDMA and CDMA technologies. ITC owns
and has the right to license the ITC Patents.
In conjunction with the execution of this Patent
License Agreement, ITC, IDC and Nokia are executing a TDD
Development Agreement, providing for substantial value to IDC and
ITC in the form of a funded development effort, a significant
opportunity to license others under the Third Generation technology
being developed, and the ability to procure Third Generation
equipment [**].
In consideration of the substantial value being
provided to InterDigital under the TDD Development Agreement, ITC
is willing to grant Nokia a world-wide, non-exclusive license under
the InterDigital Patents, and Nokia desires to obtain such a
license, on the terms set forth below.
NOW, THEREFORE , in consideration of the mutual promises
contained herein, and intending to be legally bound, the parties
agree as follows:
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**
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Confidential
material which has been omitted and filed separately with the
Securities and Exchange Commission.
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PROPRIETARY
INFORMATION
ARTICLE I DEFINITIONS
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1.1
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Definitions . As used herein, the terms set forth in the
Master Agreement, Exhibit 1 thereto, when used with initial
capital letters in this Agreement, including any Exhibits,
attachments or amendments, shall have the meanings described in
such Exhibit 1 .
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ARTICLE II LICENSE
GRANT
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2.1
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InterDigital
Grant . ITC hereby grants
and shall cause IDC and their Affiliates to grant to Nokia a
non-exclusive, non-transferable, worldwide, royalty-bearing license
under the InterDigital Patents (excluding Patents for which the
license is provided under the TDD Development Agreement) to design,
make, have made (if substantially designed by Nokia), use, import,
sell and otherwise distribute Covered Subscriber Units and Covered
Infrastructure.
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The grant above shall not include,
by implication or otherwise, any license for components, except
when used solely as a part and within the licensed products defined
above.
The licenses granted in this
Agreement shall extend to the Affiliates of Nokia but only as long
as and to the extent that such entities remain Affiliates. Any
licenses granted herein shall terminate by the time an entity
ceases to be an Affiliate of Nokia.
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2.2
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Conditions
and Limitations on InterDigital Grant .
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2.1.1
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The license
grant set forth in Section 2.1 shall exclude the right to grant
sublicenses under the InterDigital Patents.
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2
PROPRIETARY
INFORMATION
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2.2.2
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As used in
Section 2.1, Covered Subscriber Units and Covered Infrastructure
shall be that equipment designed by or for Nokia or its Affiliates
and which are used by Nokia or its Affiliates or sold by Nokia or
its Affiliates, in completed form, to its customers, including
without limitation operators, end-users or retail distributors.
Provided Nokia is not in default of its obligations hereunder,
Nokia’s and its Affiliates’ customers that without
limitation are operators, resellers and end-users but who are not
also telecommunications suppliers (other than retail) will receive
a pass-through license for sale (including lease) or use of Covered
Subscriber Units and Covered Infrastructure for which a royalty has
been paid hereunder (to the extent royalties are payable
hereunder). Neither this Agreement nor any payments made hereunder,
are intended, nor should they be construed, as exhausting
ITC’s rights to royalties or damages or other compensation
from unlicensed purchasers.
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2.2.3
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The Nokia Group
shall have no rights to transfer licenses under the InterDigital
Patents through the sale of ASICs, software or other parts to third
parties; provided, however, the foregoing limitation will not limit
the Nokia Group’s right to provide spare parts and
enhancements for licensed Covered Subscriber Units and Covered
Infrastructure.
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2.2.4
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The sale of any
item of Covered Subscriber Units or Covered Infrastructure shall
not convey any licenses or other rights to Subscriber Units or
Infrastructure made by third parties used in conjunction with such
Covered Subscriber Units and Covered Infrastructure. For example,
sale or use of a Nokia master switching center with a base station
manufactured by Ericsson will not convey any rights under the
InterDigital Patents to such base station or its use. ITC shall
have the right to initiate legal action against such third parties
for direct or contributory infringement to the same extent as if
this license had not been executed.
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3
PROPRIETARY
INFORMATION
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2.3
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Nokia
License Grant . Nokia
hereby grants and shall cause its Affiliates to grant to ITC a
non-exclusive, non-transferable, worldwide, [**] (except for
Section 5.15.1) license under the Nokia Patents (excluding Patents
for which the license is provided under the TDD Development
Agreement) to design, make, have made (if substantially designed by
ITC), use, import, sell and otherwise distribute Covered Subscriber
Units, Covered Infrastructure, UltraPhone Products and B-CDMA
Products.
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The grant above shall not include,
by implication or otherwise, any license for components, except
when used solely as a part and within the licensed products defined
above.
The licenses granted in this
Agreement (including without limitation Section 2.5) shall extend
to IDC and the Affiliates of IDC but only as long as and to the
extent that (i) ITC is Controlled by IDC and (ii) such other
entities remain Affiliates of IDC. Any licenses granted herein in
respect of a particular entity shall terminate by the time an
entity ceases to be an Affiliate of IDC or ITC ceases to be
Controlled by IDC.
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2.4
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Conditions
and Limitations on Nokia Grant .
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2.4.1
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The license
grant set forth in Section 2.3 shall exclude the right to grant
sublicenses under the Nokia Patents.
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2.4.2
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As used in
Section 2.3, Subscriber Units and Covered Infrastructure shall be
that equipment designed by or for IDC or its Affiliates and which
are sold by IDC or its Affiliates, in completed form, to their
customers, including without limitation operators, end-users or
retail
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**
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Confidential
material which has been omitted and filed separately with the
Securities and Exchange Commission.
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4
PROPRIETARY
INFORMATION
distributors. Provided IDC is not in
default of its obligations hereunder, IDC’s and its
Affiliates’ customers that are, without limitation,
operators, resellers and end-users but who are not also
telecommunications suppliers (other than retail) will receive a
pass-through license for sale (including lease) or use of Covered
Subscriber Units, Covered Infrastructure, for which a royalty has
been paid hereunder (to the extent royalties are payable
hereunder). Neither this Agreement nor any payments made hereunder,
are intended, nor should they be construed, as exhausting
Nokia’s or its Affiliates rights to royalties or damages or
other compensation from unlicensed purchasers.
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2.4.3
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InterDigital
shall have no rights to transfer licenses under the Nokia Group
Patents through the sale of ASICs, software or other parts to third
parties; provided, however, the foregoing limitation will not limit
InterDigital’s right to provide spare parts and enhancements
for licensed Covered Subscriber Units Covered Infrastructure,
B-CDMA Products and UltraPhone Products.
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2.4.4
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The sale of any
item of Covered Subscriber Units or Covered Infrastructure shall
not convey any licenses or other rights to Subscriber Units or
Infrastructure made by third parties used in conjunction with such
Covered Subscriber Units and Covered Infrastructure. Nokia shall
have the right to initiate legal action against such third parties
for direct or contributory infringement to the same extent as if
this license had not been executed.
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2.5
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Nokia
[**] . Nokia hereby
agrees [**] (and shall ensure that its Affiliates [**] of the Nokia
Group Patents [**] (i) ITC as regards the design, manufacture, have
made, sale, import, distribution or use of B-CDMA ASICs or modems
in or
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**
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Confidential
material which has been omitted and filed separately with the
Securities and Exchange Commission.
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5
PROPRIETARY
INFORMATION
for B-CDMA Products or UltraPhone
ASICs or modems in or for UltraPhone Products, or (ii) any Existing
InterDigital UltraPhone Licensee or Existing InterDigital B-CDMA
Licensee as regards the design, manufacture, have made, sale,
import, distribution or use of UltraPhone Products or B-CDMA
Products to the extent licensed by ITC or (iii) any purchaser of
B-CDMA or UltraPhone ASICs or modems from ITC as regards the
design, manufacture, have made, sale, import, distribution or use
of such modems or ASICs in B-CDMA Products or UltraPhone Products
but with such [**] extending to only those Patent claims that are
technically necessary for the features, functions, or processes
performed by the B-CDMA or UltraPhone ASIC or modem; provided
further, however, that such [**] set forth in (ii) and (iii) shall
not apply as to (a) any portion of the B-CDMA Product or UltraPhone
Product built to comply with a Covered Standard or (b) entities set
forth in (ii) if such entities assert their patents against Nokia
TDD Products or Covered Subscriber Units and Covered Infrastructure
complying with TETRA, or entities set forth in (iii) if such
entities assert their Patents against Nokia Group.
ARTICLE III ROYALTY
RATES/PAYMENTS
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(A)
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Initial
Payment . Subject to the
provisions of Section 3.1.1 (C), 3.1.1(D), and 5.10.2, Nokia, in
satisfaction of its royalty obligation for Covered Subscriber Units
or Covered Infrastructure (excluding Covered Subscriber Units and
Covered Infrastructure complying with [**]) sold by Nokia or its
Affiliates (but only during the period of affiliation) up to
the
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**
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Confidential
material which has been omitted and filed separately with the
Securities and Exchange Commission.
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6
PROPRIETARY
INFORMATION
end of Period 1, shall pay to ITC
thirty-one million, five hundred thousand U.S. dollars
($US31,500,000.00). Such payment shall be irrevocable and
non-refundable.
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(i)
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Nokia shall pay
ITC an additional, non-refundable amount of $U.S.[**] for each
Covered Subscriber Unit complying with [**] (“Per Unit
Rate”) sold by Nokia or its Affiliates on or after the
Effective Date. This payment is intended to cover the [**]
functionality of the [**] Covered Subscriber Units and additional
consideration for the functionality implementing other Covered
Standards (excluding that functionality covered under any
royalty-free license granted to Nokia under the TDD Development
Agreement for TDD Products) shall be provided under the provisions
of Section 3.1.1(A), as adjusted in Sections 3.1.1(C) and (D). In
consideration of the payment set forth in Section 3.1.1(A), ITC
hereby releases and acquits Nokia and its Affiliates (as of the
Effective Date and only during the period of Affiliation) from any
and all claims of infringement of the InterDigital Patents by the
making, selling or distributing of Covered Subscriber Units built
to comply with only [**] prior to the Effective Date. Nokia and ITC
shall also negotiate in good faith on the royalty to be payable if
and when Nokia or its Affiliates begin to manufacture
Infrastructure complying with [**].
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**
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Confidential
material which has been omitted and filed separately with the
Securities and Exchange Commission.
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7
PROPRIETARY
INFORMATION
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(ii)
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Provided Nokia
is not in default of its obligations hereunder, Nokia shall be
treated as a most favored licensee (“MFL”) under the
InterDigital Patents with regard to Covered Subscriber Units
complying with [**] Products sold by Nokia or its Affiliates during
Period 1, such MFL being as to those previously entirely
un-licensed entities having assets in excess of $US[**] or sales at
time of agreement execution in excess of [**] Covered
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Subscriber Units (“Large
Entity”) and executing a license agreement with ITC covering
[**]. If a Large Entity executing such agreement with ITC was
partially licensed by ITC prior to the Effective Date, Nokia shall
also have the right to substitute a revised Per Unit Rate in this
Agreement with the terms in such agreement if such agreement (a)
covers at least one previously unlicensed Patent that is
technically necessary when manufacturing, selling or using
Covered
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**
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Confidential
material which has been omitted and filed separately with the
Securities and Exchange Commission.
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8
PROPRIETARY
INFORMATION
Subscriber Units complying with [**]
or, (b) extends to multimode products, combining [**] and any other
previously unlicensed air interface technology, but only to the
extent such patent is used in Covered Subscriber Unit. In
determining the revised Per Unit Rate, all the relevant factors
under the applicable or related license agreements (including the
amendment thereto) by the licensee shall be considered in arriving
at a revised Per Unit Rate for the [**] functionality of the
Covered Subscriber Units to be compared with Nokia’s Per Unit
Rate hereunder. Within thirty days of executing any such license
agreement as set forth in this Section, ITC shall within thirty
(30) days provide Nokia with a copy of such agreements on a
confidential basis. Nokia shall make such election within sixty
(60) days of receipt of the subj
