EXHIBIT 10.1
SETTLEMENT AND LICENSE
AGREEMENT
This Settlement and License Agreement
(“Agreement”), effective as of October 16, 2009
(“the Effective Date”), is entered into between
NeoMedia Technologies, Inc., a Delaware corporation having a
principal place of business at Two Concourse Parkway, Suite 500,
Atlanta, GA 30328 (“NeoMedia”), and Scanbuy, Inc., a
Delaware corporation having a principal place of business at 54
West 39th Street, New York, NY 10018 (“Scanbuy”)
(together, “The Parties,” or individually,
“Party”).
WHEREAS, NeoMedia and Scanbuy are parties to an
action filed in the United States District Court for the Southern
District of New York, Civil Action No. 1:04-CV-3026 (RJH)
(“the 2004 Lawsuit”) for alleged infringement of United
States Patent No. 5,933,829, entitled “Automatic Access of
Electronic Information Through Secure Machine-Readable Codes on
Printed Documents,” which issued on August 3, 1999; United
States Patent No. 6,108,656, entitled “Automatic Access of
Electronic Information Through Machine-Readable Codes on Printed
Documents,” which issued on August 22, 2000; United States
Patent No. 5,978,773, entitled “System and Method for Using
an Ordinary Article of Commerce to Access a Remote Computer,”
which issued November 2, 1999; and United States Patent No.
6,199,048, entitled “System and Method for Automatic Access
of a Remote Computer over a Network,” which issued March 6,
2001 (collectively “The 2004 Asserted
Patents”);
WHEREAS, Scanbuy, Marshall Feature Recognition,
LLC, a Texas corporation having a principal place of business at
104 East Houston Street, Suite 170, Marshall, Texas 75760
(“MFR”), and NeoMedia are parties to an action
transferred to the United States District Court for the Southern
District of New York, Civil Action No. 1:09-CV-4297 (RJH)
(“the 2009 Lawsuit”) for alleged infringement of United
States Patent No. 6,886,750, entitled “Method and Apparatus
for Accessing Electronic Data via a Familiar Printed Medium,”
which issued on May 3, 2005 (“the MFR Asserted
Patent”); and United States Patent No. 7,287,696, entitled
“System and Method for Decoding and Analyzing Barcodes Using
a Mobile Device,” which issued on October 30, 2007,
(“The Scanbuy Asserted Patent”, and collectively with
the MFR Asserted Patent “The 2009 Asserted Patents”);
and
WHEREAS, NeoMedia and Scanbuy have agreed to
settle and resolve the 2004 Lawsuit and the 2009 Lawsuit by
granting licenses, releases and covenants not to sue under various
patents owned and/or licensable by each of them and as to various
patents that may issue in the future, as set forth
herein;
NOW, THEREFORE, in accordance with the foregoing
recitals, and in consideration of those recitals and the mutual
rights, releases, and covenants contained herein, the Parties agree
as follows:
|
|
|
“NeoMedia
Licensed Patents” means only the patents and patent
applications owned by NeoMedia containing claims to any
invention(s) useful in or relating to the Field of Use (as defined
in Section 1.3), strictly limited to the patents and patent
applications listed on Exhibit A hereto, together with all
divisionals, continuations, continuations-in-part, reissues,
reexaminations, and any other present or future applications or
patents now owned or hereafter acquired by NeoMedia during the term
of this Agreement in which the claims are directed to the Field of
Use (as defined in Section 1.3).
|
|
|
|
“Scanbuy
Licensed Patents” means the Scanbuy Asserted Patent as well
as all divisionals, continuations, continuations-in-part, reissues,
reexaminations of the Scanbuy Asserted Patent, and any other
present or future patent applications or patents now owned or
hereafter acquired by Scanbuy during the term of this Agreement
relating to the Field of Use (as defined in Section
1.3).
|
|
|
|
“Field of
Use” shall be set forth in Exhibit B hereto.
|
|
|
|
“Royalty-Based Revenue” means any
gross revenue, derived in any way by Scanbuy in the Field of Use
and in the Territory (as defined in Section 1.5) in connection with
or relating to a user located in the Territory using a mobile
device to scan a machine readable code, including without
limitation advertising revenues, transactional revenue generated by
barcode reading, in-kind payments, non-monetary consideration
(valued at market value), clearing-house revenue, service fees, and
includes all action oriented revenue, for example but not limited
to content download and click to subscribe. For the
avoidance of doubt, Royalty-Based Revenue does not include any
revenue generated by Scanbuy in connection with or relating to
users using a mobile device to scan a machine readable code while
that user is located outside the Territory, for which such use is
not in any way covered by the license herein.
|
|
|
|
“Territory” shall mean those
countries identified in Exhibit C as amended from time to time by
mutual agreement by the Parties, initially the United States of
America and its territories.
|
|
|
|
“Scanbuy
Clients” shall mean those entities that operate within the
Territory and within the Field of Use serviced by Scanbuy,
including by way of illustration and not limitation, brands,
agencies, carriers, subscribers of carriers, and advertising
customers of carriers ( e.g. , brands, agencies,
etc.). For the avoidance of doubt, an entity that
utilizes Scanbuy’s service to resolve codes that have been
scanned by users within the Territory and within the Field of Use
is a Scanbuy Client even if the entity is entirely located outside
the Territory.
|
|
|
|
Subject to the
terms and conditions of this Agreement, and for the consideration
recited herein, NeoMedia grants to Scanbuy a royalty-bearing,
non-exclusive, license within the Field of Use under the NeoMedia
Licensed Patents within the Territory. There is no right
to sublicense granted herein, except that it is understood that
Scanbuy Clients contracting with Scanbuy to operate in the
Territory and within the Field of Use under the rights granted
herein to Scanbuy will fall within the license granted to Scanbuy,
subject to termination of the license as set forth herein and
provided that such Scanbuy Clients are generating Royalty-Based
Revenue subject to Section 3, but such Scanbuy Clients have no
rights separate and apart from those extended to Scanbuy
herein. For the avoidance of doubt, if an entity
participates in an ecosystem in which Scanbuy does not participate
or in which Scanbuy does not obtain or share in revenue derived
from activities within that ecosystem, those activities by the
entity will not fall within the license granted to
Scanbuy. No license or other right is extended to MFR
under the NeoMedia Licensed Patents.
|
|
|
|
Subject to the
terms and conditions of this Agreement, and for the consideration
recited herein, Scanbuy grants to NeoMedia (a) a paid-up,
irrevocable, non-exclusive license under the Scanbuy Licensed
Patents within the Territory and (b) a paid-up, non-exclusive
sublicense under the MFR Asserted Patent as well all of the patents
of MFR licensed to Scanbuy (collectively, “MFR Licensed
Patents”), for all systems and methods, in whole or in part,
made, used, offered for sale, sold or imported in the United States
by which a cellular/mobile device is used or can be used to read or
enter bar codes or other machine readable codes to access content
or information or trigger phone functionalities. There
is no right to sublicense granted herein, except that it is
understood that parties contracting with NeoMedia to operate in the
Territory and within the Field of Use under the rights granted
herein to NeoMedia (“NeoMedia Clients”) will fall
within the license and sublicense granted to NeoMedia, but such
NeoMedia Clients have no rights separate and apart from those
extended to NeoMedia herein.
|
|
|
|
The NeoMedia
license granted in this section to Scanbuy shall terminate: if
Scanbuy fails to make any payments due and owing pursuant to
Section 3, which the Parties agree is a material breach of this
Agreement, unless cured within thirty (30) days of notice by
NeoMedia of such failure; or upon Scanbuy’s petition for
relief under any bankruptcy legislation; or upon Scanbuy’s
cessation of doing business; or upon any other material breach of
this Agreement by Scanbuy; or upon breach of Scanbuy’s
representation and warranty that it has the right to settle the
2009 Lawsuit on behalf of MFR; or upon breach of Section 2.4 by
Scanbuy. For the avoidance of doubt, the Scanbuy license
granted to NeoMedia shall not terminate, but the Scanbuy sublicense
granted to NeoMedia is terminable as described in Section
2.4.
|
|
|
|
The Scanbuy
sublicense to NeoMedia in this section is expressly conditioned
upon Scanbuy fulfilling its obligations under the “Exclusive
Patent License Agreement,” dated March 5, 2008, between
Scanbuy and MFR, provided however that Scanbuy shall take no action
to terminate the Exclusive Patent License Agreement solely in order
to terminate the sublicense granted to NeoMedia
herein. The sublicense to NeoMedia granted in this
section shall subsist so long as Scanbuy has a license to MFR
Licensed Patents,
|
Scanbuy’s payment obligations to NeoMedia
shall be set forth in Exhibit D.
|
|
Dismissal of
the Lawsuits .
|
|
|
|
As a condition
of execution of this Agreement, NeoMedia, Scanbuy and MFR shall
have their respective counsel execute an Agreed Order dismissing
all claims and counterclaims made in the 2004 Lawsuit and the 2009
Lawsuit substantially in the forms attached hereto as Appendix
E. The claims and counterclaims between and among
NeoMedia, Scanbuy, and MFR shall be dismissed with prejudice,
provided, however, that NeoMedia reserves all right and ability to
challenge the validity, enforceability and infringement of the MFR
Asserted Patent in the event that the sublicense is terminated, and
no issue preclusion or res judicata effect will apply in that
event. NeoMedia’s counsel shall file said
Agreed Order for the 2004 Lawsuit and said Agreed Order for the
2009 Lawsuit within five (5) business days after execution of this
Agreement.
|
|
|
|
The Parties
agree that this Agreement constitutes the full and complete
settlement of the disputed claims and counterclaims. It
does not and shall not constitute an admission of liability by any
of the Parties and shall not be used by any of the Parties or any
other person or entity in any litigation or proceeding for that
purpose. The Parties further agree that the disputes and
allegations that resulted in the Lawsuit and are subject to this
Agreement shall not be discussed or disclosed publicly
except as may be required to respond truthfully to
governmental inquiries or required testimony, or to enforce the
terms of the Agreement itself.
|
|
|
|
The Parties
agree to bear their own costs and attorneys’ fees in
connection with the 2004 Lawsuit and the 2009 Lawsuit and in
connection with the negotiation of this Agreement.
|
|
|
|
As a condition
for granting the licenses and releases in this Agreement, within
ten (10) days from the Effective Date Scanbuy shall file with the
appropriate patent office papers to withdraw all opposition
proceedings or other adverse proceedings which seek to invalidate
any NeoMedia intellectual property right, including those related
to any NeoMedia (or a foreign Affiliate’s) pending patent
application anywhere in the world. Scanbuy shall inform
NeoMedia promptly when the request to withdraw the opposition or
other adverse proceeding has been made, and where those proceedings
had been pending.
|
|
|
Covenants
Not to Sue and Releases .
|
|
|
|
Subject to the
fulfillment of the terms and conditions of this Agr
|
|
