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Another brilliant post!
Similarities and multiple common denominators.
EX-10.1 2 tivo073113ex101.htm SETTLEMENT AND PATENT LICENSE AGREEMENT
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Exhibit 10.1
SETTLEMENT AND PATENT LICENSE AGREEMENT
This Settlement and Patent License Agreement (“Agreement”), effective as of July 2, 2013 (“Effective Date”), is made by and between TiVo Inc., a Delaware corporation (“TiVo”); Cisco Systems, Inc., a California Corporation (“Cisco”); and Google Inc., a Delaware corporation (“Google”). TiVo, Google and Cisco are each referred to herein as a “Party” and collectively as the “Parties.”
A. TiVo and Google are parties to the following lawsuit pending in the Eastern District of Texas: C.A. No. 5:11-CV-00053-JRG, involving TiVo, Motorola Mobility LLC (formerly Motorola Mobility, Inc., and now owned by Google), General Instrument Corporation (now owned by ARRIS Group, Inc.), Time Warner Cable Inc. and Time Warner Cable LLC (the “Pending Google Litigation”).
B. TiVo and Cisco are parties to the following lawsuit pending in the Eastern District of Texas: C.A. Nos. 2:12-CV-00311-JRG and 2:12-CV-00434-JRG (consolidated), involving TiVo, Cisco, Time Warner Cable Inc. and Time Warner Cable LLC (the “Pending Cisco Litigation”). The Pending Google Litigation and Pending Cisco Litigation are collectively referred to herein as the “Pending Litigation.”
C. The Parties have agreed, among other things, to settle the Pending Litigation and for TiVo and Google and TiVo and Cisco to grant one another releases and patent licenses pursuant to the terms set forth below.
D. Contemporaneously with entering into this Agreement, TiVo is entering into an agreement with ARRIS Group, Inc. (“Arris”), under which, among other things, TiVo is granting Arris a release and patent license in the form substantially as shown in Exhibit A (the “Arris Agreement”).
In consideration of the mutual covenants, representations, warranties, and other terms and conditions contained herein and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the Parties agree as follows:
Section 1. DEFINITIONS
In this Agreement, capitalized terms have the meanings set forth below or otherwise ascribed herein:
1.1. “Acquired DVR Business” has the meaning given to it in Section 10.2.
1.2. “Acquired DVR Patents” has the meaning given to it in Section 10.2.
1.3. “Acquired DVR Supplier” has the meaning given to it in Section 10.2.
1.4. “Acquired Party” has the meaning given to it in Section 10.1.
1.5. “Acquirer” has the meaning given to it in Section 10.1.
1.6. “Acquiring Party” has the meaning given to it in Section 10.2.
1.7. “Affiliate” means, with respect to a given Person (the “Subject Person”), any other Person that now or hereafter controls, is under the control of, or is under common control with the Subject Person, where “control” means direct or indirect ownership or control of more than 50% of the Voting Power of another Person. A Person will be deemed to be an Affiliate of the Subject Person under this Agreement only so long as such control exists.
1.8. “Agreement” has the meaning given to it in the preamble of this Agreement.
1.9. “[***]” means [***], a [***] corporation having a primary place of business at [***], and its Subsidiaries.
1.10. “Arris” has the meaning given to it in recital D of this Agreement.
1.11. “Arris Agreement” has the meaning given to it in recital D of this Agreement.
1.12. “Assert” (or “Assertion”) means to initiate or pursue an action, investigation, or other proceeding alleging patent infringement, whether direct or indirect, before any legal, judicial, arbitration, administrative, executive or other type of body or tribunal, anywhere in the world, that has or claims to have authority to adjudicate such action.
1.13. “Authorized Third Parties” means the Cisco Authorized Third Parties, Google Authorized Third Parties, and/or TiVo Authorized Third Parties, as applicable.
1.14. “Capture Period” means any date on or before the 5-year anniversary of the Effective Date.
1.15. “Change of Control” of a Person (“Subject Entity”) means any of the following: (a) any merger, reorganization, share exchange, consolidation, business combination or other transaction or series of related transactions in which the holders of more than 50% of the Voting Power of the Subject Entity immediately prior to such transaction or series of related transactions will not hold more than 50% of the Voting Power of the surviving Person immediately after such transaction or series of transactions; (b) any sale, lease, transfer or other disposition of all or substantially all of the Subject Entity’s assets where the current holders of more than 50% of the Voting Power of the Subject Entity immediately prior to such transaction or series of related transactions will not hold more than 50% of the Voting Power of the acquiring Person immediately after such transaction or series of transactions; or (c) any Person or “group” (as such term is used in Rule 13d-5 under the United States Securities Exchange Act of 1934) who does not hold more than 50% of the total Voting Power of the Subject Entity as of the Effective Date becomes the “beneficial owner” (as that term is used in Rule 13d-3 under the Securities Exchange Act of 1934), directly or indirectly, of more than 50% of the total Voting Power of the Subject Entity.
1.16. “Cisco Authorized Customers” means [***], including [***], with respect to [***].
1.17. “Cisco Authorized Suppliers” means [***] with respect to [***].
1.18. “Cisco Authorized Third Parties” means the Cisco Authorized Customers and/or Cisco Authorized Suppliers, as applicable.
1.19. “Cisco Combination Product” means any Combination Product of Cisco.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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1.20. “Cisco Covenant Product” means (a) any Cisco Product, or (b) any Cisco Combination Product; but in each case excluding any [***] and any Foundry Products.
1.21. “Cisco Licensed Patents” means any and all Patents worldwide (a) owned, controlled, or acquired by Cisco or any of its Subsidiaries at any time on or after June 6, 2013, and (b) that claim priority (directly or indirectly) to any time during the Capture Period, except any Acquired DVR Supplier Patents. Without limiting the foregoing, Cisco Licensed Patents shall be deemed to include: (a) U.S. Patent Nos. 7,505,592, 7,409,140 and 7,512,315 (collectively, the “Cisco Asserted Patents”); and (b) any continuations, continuations-in-part, divisionals, extensions, reissues, and foreign counterparts of any Cisco Asserted Patents and any other Patents that claim priority directly or indirectly from any Cisco Asserted Patents or the applications from which any Cisco Asserted Patents issued (together with the Cisco Asserted Patents, the “Cisco Asserted Patent Families”).
1.22. “Cisco Licensed Product” means (a) any Cisco Product in the Video Field, or (b) any Cisco Combination Product in the Video Field; but in each case excluding any [***] and any Foundry Products.
1.23. “Cisco Product” means any Standalone Product of Cisco.
1.24. “Cisco Term” means the time period commencing on the Effective Date and ending on the 10-year anniversary of the Effective Date.
1.25. “Combination Product” means, with respect to [***], the combination of [***] with [***] where: (a) [***]; or (b) [***]. Any such combination constitutes a Combination Product [***].
1.26. “Covenant Period” means the time period commencing on the Effective Date and ending on the five-year anniversary of the Effective Date.
1.27. “Covenant Products” means the Cisco Covenant Products, Google Covenant Products, and/or TiVo Covenant Products, as applicable.
1.28. “[***]” means [***], a [***] corporation having a primary place of business at [***], and its Subsidiaries.
1.29. “Dismissal Motions” has the meaning given to it in Section 2.7.
1.30. “DVR” means [***] Product that enables [***] to a [***] storage medium (e.g., a hard disk drive), and [***] the play back of recorded content.
1.31. “DVR Supplier” means: (a) [***] and each of their respective Subsidiaries; and (b) any other Third Party with [***] that [***].
1.32. “Effective Date” has the meaning given to it in the preamble of this Agreement.
1.33. “Escrow Agent” has the meaning given to it in Section 6.1.
1.34. “Existing Licensed Products” has the meaning given to it in Section 10.1.
1.35. “Fee” has the meaning given to it in Section 6.1.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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1.36. “Foundry Product” means, with respect to a Party: (1) any Product [***], or [***], without [***], and: (a) manufactured and sold or otherwise transferred from such Party or its Subsidiaries [***]; (b) [***]; or (c) purchased from a Third Party and [***]; and (2) any Product [***].
1.37. “Google Authorized Customers” means [***], including [***] with respect to [***].
1.38. “Google Authorized Suppliers” means [***] with respect to [***].
1.39. “Google Authorized Third Parties” means the Google Authorized Customers and/or Google Authorized Suppliers, as applicable.
1.40. “Google Combination Product” means any Combination Product of Google.
1.41. “Google Covenant Product” means (a) any Google Product, or (b) any Google Combination Product; but in each case excluding any [***] and any Foundry Products.
1.42. “Google Licensed Patents” means any and all Patents worldwide owned, controlled, or acquired by Google or any of its Subsidiaries at any time on or after June 6, 2013 and through the end of the Google Term, except any Acquired DVR Supplier Patents. Without limiting the foregoing, Google Licensed Patents shall be deemed to include: (a) U.S. Patent Nos. 5,949,948, 6,304,714 and 6,356,708 (collectively, the “Google Asserted Patents”); and (b) any continuations, continuations-in-part, divisionals, extensions, reissues, and foreign counterparts of any Google Asserted Patents and any other Patents that claim priority directly or indirectly from any Google Asserted Patents or the applications from which any Google Asserted Patents issued (together with the Google Asserted Patents, the “Google Asserted Patent Families”).
1.43. “Google Licensed Product” means (a) any Google Product in the Video Field, or (b) any Google Combination Product in the Video Field; but in each case excluding any [***] and any Foundry Products.
1.44. “Google Product” means any Standalone Product of Google.
1.45. “Google Term” means the time period commencing on the Effective Date and ending on July 31, 2018.
1.46. “Home Business” means, individually and collectively, the Home business and the Home segment as those terms are used in the Form 10, as amended, filed by Motorola Mobility Holdings, Inc. with the United States Securities and Exchange Commission on November 30, 2010.
1.47. “Licensed Patents” means the Cisco Licensed Patents, Google Licensed Patents, TiVo-Cisco Licensed Patents, and/or TiVo-Google Licensed Patents, as applicable.
1.48. “Licensed Products” means the Cisco Licensed Products, Google Licensed Products, and/or TiVo Licensed Products, as applicable.
1.49. “[***]” means [***], a [***] corporation having a primary place of business at [***], and its Subsidiaries.
1.50. “Mobile Device Business” means, individually and collectively, the Mobile Devices business and the Mobile Devices segment as those terms are used in the Form 10, as amended, filed by
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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Motorola Mobility Holdings, Inc. with the United States Securities and Exchange Commission on November 30, 2010.
1.51. “MSI” means Motorola Solutions, Inc., a Delaware corporation having a place of business at 1303 East Algonquin Road, Schaumburg, IL 60196.
1.52. “MSI Authorized Third Party” means a Customer or Supplier of MSI or its Subsidiaries that would have been a Google Authorized Third Party if MSI was a current Subsidiary of Google, solely with respect to its activities prior to January 5, 2011 regarding an MSI Released Product.
1.53. “MSI Released Product” means any Product of a Transferred Mobility Business sold prior to January 5, 2011 that would have been a Google Licensed Product if it had been sold after the Effective Date and if MSI was a current Subsidiary of Google.
1.54. “Multichannel Video Programming Distributor” or “MVPD” means a Third Party service provider delivering video-programming services to set-top boxes (e.g., Comcast, Dish), or a Third Party that, as of the Effective Date, controls such a service provider, and in each case any Subsidiaries thereof.
1.55. “Non-Acquired Party” has the meaning given to it in Section 10.1.
1.56. “Non-Acquiring Party” has the meaning given to it in Section 10.2.
1.57. “[***]” means any (a) [***], and (b) Products [***].
1.58. “[***]” means [***],[***] and [***] (including [***]).
1.59. “[***]” means any (a) [***], and (b) Products [***].
1.60. “[***]” means the [***], as applicable.
1.61. “[***]” means any (a) [***], and (b) Products [***].
1.62. “Patents” means all classes or types of patents (including originals, divisions, continuations, continuations-in-part, extensions, reissues or counterparts) and all applications (including provisional applications) for these classes or types of patents, and any other patent rights, in all cases, throughout the world.
1.63. “Pending Cisco Litigation” has the meaning given to it in recital B of this Agreement.
1.64. “Pending Google Litigation” has the meaning given to it in recital A of this Agreement.
1.65. “Pending Litigation” has the meaning given to it in recital B of this Agreement.
1.66. “Person” means any individual, sole proprietorship, partnership, joint venture, trust, unincorporated organization, association, corporation, limited liability company, institution, public benefit corporation, other entity or government (whether federal, state, county, city, municipal, local, foreign, or otherwise, including any instrumentality, division, agency, body or department thereof).
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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1.67. “Product” means any product, system, apparatus, method, software, service, website or process, or other technology, including any portions thereof.
1.68. “Standalone Product” means, with respect to a Party, any Product of such Party or any of its Subsidiaries provided, directly or indirectly, by or on behalf of such Party or any of its Subsidiaries.
1.69. “Subsidiary” means, as to any Person (“Subject Person”), any other Person that is now or hereafter controlled by the Subject Person, where control means direct or indirect ownership or control of more than 50% of the Voting Power of another Person. A Person shall be a Subsidiary of the Subject Person only during such time as such control exists.
1.70. “Taxes” means all applicable sales, use, withholding, excise, value added, and similar taxes, and duties, surcharges, and other charges levied by any governmental authority in connection with the Fees paid or payable under this Agreement.
1.71. “Term” means: (a) the Cisco Term as it relates to Cisco and its Subsidiaries; (b) the Google Term as it relates to Google and its Subsidiaries; and (c) the Cisco Term or the Google Term, as applicable, as it relates to TiVo and its Subsidiaries.
1.72. “Third Party” means any Person other than TiVo, Google, Cisco, or any of their respective Subsidiaries as of the pertinent time. For clarity, the fact that Arris is a Third Party under this Agreement in no way limits or expands the rights or obligations of Arris under the Arris Agreement.
1.73. “TiVo Authorized Customers” means [***] with respect to [***].
1.74. “TiVo Authorized Suppliers” means [***] with respect to [***].
1.75. “TiVo Authorized Third Parties” means the TiVo Authorized Customers and/or TiVo Authorized Suppliers, as applicable.
1.76. “TiVo-Cisco Licensed Patents” means any and all Patents worldwide (a) owned, controlled, or acquired by TiVo or any of its Subsidiaries at any time on or after June 6, 2013, and (b) that claim priority (directly or indirectly) to any time during the Capture Period, except any Acquired DVR Supplier Patents. Without limiting the foregoing, TiVo-Cisco Licensed Patents shall be deemed to include: (a) U.S. Patent Nos. 6,233,389, 6,792,195, 7,493,015 and 7,529,465 (the “TiVo Asserted Patents”), and (b) any continuations, continuations-in-part, divisionals, extensions, reissues, and foreign counterparts of the TiVo Asserted Patents and any other Patents that claim priority directly or indirectly from any TiVo Asserted Patents or the applications from which any TiVo Asserted Patents issued (together with the TiVo Asserted Patents, the “TiVo Asserted Patent Families”).
1.77. “TiVo Combination Product” means any Combination Product of TiVo.
1.78. “TiVo Covenant Product” means (a) any TiVo Product, or (b) any TiVo Combination Product; but in each case excluding (i) any Foundry Products, and (ii) any [***].
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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1.79. “TiVo-Google Licensed Patents” means any and all Patents worldwide owned, controlled, or acquired by TiVo or any of its Subsidiaries at any time on or after June 6, 2013 and through the end of the Google Term, except any Acquired DVR Supplier Patents. Without limiting the foregoing, TiVo-Google Licensed Patents shall be deemed to include the TiVo Asserted Patent Families.
1.80. “TiVo Licensed Product” means (a) any TiVo Product in the Video Field, or (b) any TiVo Combination Product in the Video Field; but in each case excluding (i) any Foundry Products, and (ii) any [***].
1.81. “TiVo Product” means any Standalone Product of TiVo.
1.82. “Transferred Mobility Businesses” means, individually and collectively, the Mobile Devices Business and the Home Business.
1.83. “TWC” means Time Warner Cable Inc., a Delaware corporation having a principal place of business at 60 Columbus Circle, New York, New York 10023, and its Subsidiaries.
1.84. “Video Field” means any system, apparatus, method, software, service, website, process, or other technology (or any combinations thereof) for [***]. All Cisco Asserted Patent Families, Google Asserted Patent Families, and TiVo Asserted Patent Families are deemed to be in the Video Field.
1.85. “Voting Power” means the right to exercise voting power with respect to the election of directors or similar managing authority of a Person (whether through direct or indirect beneficial ownership of shares or securities of such Person or otherwise).
Unless context otherwise clearly requires, whenever used in this Agreement: (i) the words “include” or “including” shall be construed as incorporating also “but not limited to” or “without limitation”; (ii) the word “day” or “month” means a calendar day or calendar month unless otherwise specified; (iii) the words “notice” and “requests” mean notice or request in writing (whether or not specifically stated) and shall include notices, consents, approvals, and other legally operative communications contemplated under this Agreement; (iv) the words “hereof,” “herein,” “hereby,” and derivative or similar words refer to this Agreement; (v) “and/or” shall be defined to be inclusive and not exclusive and “A, B and/or C” shall mean any and all of A; B; C; A and B; A and C; B and C; and A, B and C; (vi) words of any gender include the other gender; (vii) words using the singular or plural number also include the plural or singular number, respectively; and (viii) references to any specific article, section, or other division thereof shall be deemed to include the then-current amendments thereto.
Section 2. RELEASES AND DISMISSALS
2.1. TiVo Limited Releases. TiVo, on behalf of itself and its current Subsidiaries, hereby irrevocably releases, acquits, and forever discharges (and agrees to release, acquit, and forever discharge) as of the Effective Date:
(a) Cisco and its current and former Subsidiaries and their respective current and former agents, representatives, officers, employees, directors and attorneys in their capacity as such, from any and all claims, losses, damages, or liability of any kind and nature, at law, in equity, or otherwise, known and unknown, with respect to: (i) all claims based on or arising from activities that would have been within the scope of the licenses or covenants under this Agreement if the accused activity had occurred after the Effective Date, and (ii) all claims asserted or that could have been asserted (known or
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
7
unknown) in the Pending Litigation, including all claims based on or arising out of the filing or maintenance of the Pending Litigation;
(b) Cisco Authorized Third Parties from any and all claims, losses, damages, or liability of any kind and nature, at law, in equity, or otherwise, known and unknown, with respect to Cisco Licensed Products that would have been within the scope of the licenses or covenants under this Agreement if the accused activity had occurred after the Effective Date;
(c) Google and its current and former Subsidiaries (excluding Arris and its Subsidiaries) and their respective current and former agents, representatives, officers, employees, directors and attorneys in their capacity as such, from any and all claims, losses, damages, or liability of any kind and nature, at law, in equity, or otherwise, known and unknown, with respect to: (i) all claims based on or arising from activities that would have been within the scope of the licenses or covenants under this Agreement if the accused activity had occurred after the Effective Date, and (ii) all claims asserted or that could have been asserted (known or unknown) in the Pending Litigation, including all claims based on or arising out of the filing or maintenance of the Pending Litigation;
(d) Google Authorized Third Parties from any and all claims, losses, damages, or liability of any kind and nature, at law, in equity, or otherwise, known and unknown, with respect to Google Licensed Products that would have been within the scope of the licenses or covenants under this Agreement if the accused activity had occurred after the Effective Date;
(e) MSI and its current Subsidiaries and their respective agents, representatives, officers, employees, directors and attorneys in their capacity as such, from any and all claims, losses, damages, or liability of any kind and nature, at law, in equity, or otherwise, known and unknown, with respect to (i) infringement (whether direct or indirect and whether or not willful) of the TiVo-Google Licensed Patents occurring before January 5, 2011 solely to the extent that such infringement would have been covered by the licenses or covenants granted to Google and its Subsidiaries under this Agreement if it had occurred after the Effective Date and if MSI was a current Subsidiary of Google, and (ii) all claims asserted or that could have been asserted (known or unknown) in the Pending Litigation based on acts or omissions occurring before January 5, 2011, in each case only for the Transferred Mobility Businesses that were separated from Motorola, Inc. on January 4, 2011; and
(f) MSI Authorized Third Parties from any and all claims, losses, damages, or liability of any kind and nature, at law, in equity, or otherwise, known and unknown, with respect to MSI Released Products, for infringement (whether direct or indirect and whether or not willful) of the TiVo-Google Licensed Patents by such MSI Released Products occurring before January 5, 2011 solely to the extent that such infringement would have been within the scope of the licenses or covenants granted to Google and its Subsidiaries under this Agreement if it had occurred after the Effective Date and if MSI was a current Subsidiary of Google, only for the Transferred Mobility Businesses that were separated from Motorola, Inc. on January 4, 2011.
2.2. Cisco Limited Releases. Cisco, on behalf of itself and its current Subsidiaries, hereby irrevocably releases, acquits, and forever discharges (and agrees to release, acquit, and forever discharge) as of the Effective Date:
(a) TiVo and its current and former Subsidiaries and their respective current and former agents, representatives, officers, employees, directors and attorneys in their capacity as such, from any and all claims, losses, damages, or liability of any kind and nature, at law, in equity, or otherwise, known and unknown, with respect to: (i) all claims based on or arising from activities that would have
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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been within the scope of the licenses or covenants under this Agreement if the accused activity had occurred after the Effective Date, and (ii) all claims asserted or that could have been asserted (known or unknown) in the Pending Litigation, including all claims based on or arising out of the filing or maintenance of the Pending Litigation; and
(b) TiVo Authorized Third Parties from any and all claims, losses, damages, or liability of any kind and nature, at law, in equity, or otherwise, known and unknown, with respect to TiVo Licensed Products that would have been within the scope of the licenses or covenants under this Agreement if the accused activity had occurred after the Effective Date.
2.3. Google Limited Releases. Google, on behalf of itself and its current Subsidiaries, hereby irrevocably releases, acquits, and forever discharges (and agrees to release, acquit, and forever discharge) as of the Effective Date:
(a) TiVo and its current and former Subsidiaries and their respective current and former agents, representatives, officers, employees, directors and attorneys in their capacity as such, from any and all claims, losses, damages, or liability of any kind and nature, at law, in equity, or otherwise, known and unknown, with respect to: (i) all claims based on or arising from activities that would have been within the scope of the licenses or covenants under this Agreement if the accused activity had occurred after the Effective Date, and (ii) all claims asserted or that could have been asserted (known or unknown) in the Pending Litigation, including all claims based on or arising out of the filing or maintenance of the Pending Litigation; and
(b) TiVo Authorized Third Parties from any and all claims, losses, damages, or liability of any kind and nature, at law, in equity, or otherwise, known and unknown, with respect to TiVo Licensed Products that would have been within the scope of the licenses or covenants under this Agreement if the accused activity had occurred after the Effective Date.
2.4. Releases for Future Patents. Except for Acquired DVR Patents, for Patents that become Licensed Patents of a Party or its Subsidiaries (“Future Patents”) on a date after the Effective Date (“Future Patent Date”), such Party, on behalf of itself and its Subsidiaries existing as of the Future Patent Date, shall grant (and agrees to grant) releases under such Future Patents of the same scope as Sections 2.1 (except Sections 2.1(e) and 2.1(f)), 2.2, and 2.3 above for activities (excluding activities of Acquired DVR Suppliers and Acquired DVR Businesses) occurring prior to the Future Patent Date during the Term.
2.5. Former Subsidiary Releases. Notwithstanding Sections 2.1, 2.2, 2.3 and 2.4 above, former Subsidiaries are released only with respect to activities during such time as control existed for such former Subsidiary.
2.6. Waiver of Cal. Civ. Code Sec. 1542. Each Party, on behalf of itself and its current Subsidiaries, hereby irrevocably and forever waives all rights it and they may have arising under California Civil Code Section 1542 (or any analogous requirement of law) with respect to the foregoing releases. Each Party, on behalf of itself and its current Subsidiaries, understands that Section 1542 provides that:
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR DOES NOT KNOW OR SUSPECT TO EXIST IN HIS OR HER FAVOR AT THE TIME OF EXECUTING THE RELEASE, WHICH IF KNOWN BY HIM OR HER MUST HAVE MATERIALLY AFFECTED HIS OR HER SETTLEMENT WITH THE DEBTOR.
Each Party, on behalf of itself and its current Subsidiaries, acknowledges that it has been fully informed by its counsel concerning the effect and import of this Agreement under California Civil Code Section 1542 and other requirements of law.
2.7. Dismissal of Pending Litigation. Concurrently with the execution of this Agreement, Cisco and Google shall cause counsel of record for all parties (other than TiVo) to the Pending Litigation to complete, execute and deliver (or have delivered) to TiVo the joint motions and proposed orders (“Dismissal Motions”) requesting that the Pending Litigation be dismissed in the form attached hereto as Exhibit B. Within one court day of receiving confirmation from the Escrow Agent that Google and Cisco have deposited the Fee, TiVo shall complete, execute and file the Dismissal Motions. The Parties shall cooperate and shall cause any other parties to the Pending Litigation to cooperate, in taking reasonable actions as might be required to dismiss the Pending Litigation.
2.8. No Admission. This Agreement is entered into in order to compromise and settle disputed claims, without any admission of liability or other acquiescence on the part of any Party as to the merit of any claim, defense, affirmative defense or counterclaim in the Pending Litigation.
2.9. Attorneys’ Fees and Costs. Each Party shall be responsible for its own costs and attorneys’ fees in connection with the Pending Litigation and the negotiation of this Agreement.
Section 3. LICENSES
3.1. Licenses to Cisco.
(a) Term License. TiVo, on behalf of itself and its Subsidiaries, hereby grants and agrees to grant to Cisco, its Subsidiaries (except as provided in Section 10.2), and [***] a worldwide, non-exclusive, non-transferable (except as provided in Sections 10.1 and 10.3) and fully paid-up license, with no right to grant sublicenses, under the TiVo-Cisco Licensed Patents, to make, have made for Cisco and its Subsidiaries, use, offer for sale, sell, import and otherwise dispose of Cisco Licensed Products during the Cisco Term.
(b) Perpetual License. TiVo, on behalf of itself and its Subsidiaries, hereby grants and agrees to grant to Cisco, its Subsidiaries (except as provided in Section 10.2), and [***] a fully paid-up, perpetual, worldwide, non-exclusive, non-transferable (except as provided in Sections 10.1 and 10.3) license, with no right to grant sublicenses, under the TiVo Asserted Patent Families, to make, have made for Cisco and its Subsidiaries, use, offer for sale, sell, import and otherwise dispose of Cisco Licensed Products.
3.2. Licenses to Google.
(a) Term License. TiVo, on behalf of itself and its Subsidiaries, hereby grants and agrees to grant to Google, its Subsidiaries (except as provided in Section 10.2) and [***] a worldwide, non-exclusive, non-transferable (except as provided in Sections 10.1 and 10.3) and fully paid-up license,
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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with no right to grant sublicenses, under the TiVo-Google Licensed Patents, to make, have made for Google and its Subsidiaries, use, offer for sale, sell, import and otherwise dispose of Google Licensed Products during the Google Term.
(b) Perpetual License. TiVo, on behalf of itself and its Subsidiaries, hereby grants and agrees to grant to Google, its Subsidiaries (except as provided in Section 10.2) and [***] a fully paid-up, perpetual, worldwide, non-exclusive, non-transferable (except as provided in Sections 10.1 and 10.3) license, with no right to grant sublicenses, under the TiVo Asserted Patent Families, to make, have made for Google and its Subsidiaries, use, offer for sale, sell, import and otherwise dispose of Google Licensed Products.
3.3. Licenses to TiVo.
(a) Term License from Cisco. Cisco, on behalf of itself and its Subsidiaries, hereby grants and agrees to grant to TiVo, its Subsidiaries (except as provided in Section 10.2), and [***] a worldwide, non-exclusive, non-transferable (except as provided in Sections 10.1 and 10.3) and fully paid-up license, with no right to grant sublicenses, under the Cisco Licensed Patents, to make, have made for TiVo and its Subsidiaries, use, offer for sale, sell, import and otherwise dispose of TiVo Licensed Products during the Cisco Term.
(b) Term License from Google. Google, on behalf of itself and its Subsidiaries, hereby grants and agrees to grant to TiVo, its Subsidiaries (except as provided in Section 10.2), and [***] a worldwide, non-exclusive, non-transferable (except as provided in Sections 10.1 and 10.3) and fully paid-up license, with no right to grant sublicenses, under the Google Licensed Patents, to make, have made for TiVo and its Subsidiaries, use, offer for sale, sell, import and otherwise dispose of TiVo Licensed Products during the Google Term.
3.4. Application of Licenses to [***]. The foregoing licenses with respect to [***] with respect to [***].
3.5. Non-Circumvention. Each Party, on behalf of itself and its Subsidiaries, agrees not to enter into any transaction or arrangement that would circumvent the limitations on the licenses or covenants herein or extend any rights or benefits under such licenses and covenants to any Products that are not otherwise covered under such licenses and covenants, including through: (i) any joint venture, resale arrangement, or other business combination or transaction where the primary purpose of such joint venture, resale arrangement, or other business combination or transaction is to circumvent the limitations on such licenses or covenants or extend any rights or benefits under such licenses and covenants to any Products that are not otherwise covered under such licenses and covenants; or (ii) any agreement to indemnify any Third Party entered into for the primary purpose of causing a Product to be licensed or immune under the Licensed Patents of the other Party or its Subsidiaries. The sole and exclusive remedy for any non-compliance with this Section 3.5 is that such Products shall not be considered Licensed Products or Covenant Products.
3.6. Subsidiary Licenses.
(a) Application to Subsidiaries. Each Party intends for this Agreement to extend to all of its Subsidiaries with respect to the applicable licenses and covenants granted by such Party and its Subsidiaries to another Party and its Subsidiaries under this Agreement (except as provided in Section 10.2). The Parties agree that, to the extent they are not already bound, each Party shall ensure that all such Subsidiaries are bound by the terms of this Agreement.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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(b) Departing Subsidiaries. If a Subsidiary (“Departing Subsidiary”) ceases to be a Subsidiary of a Party on a date after the Effective Date (“Departure Date”), then the licenses, covenants and immunities granted to such Departing Subsidiary under Section 3 and Section 4 shall continue, but only for Licensed Products or Covenant Products (as applicable) of such Departing Subsidiary that are in inventory or were distributed during the time period prior to the Departure Date. If such Departing Subsidiary holds, at or before the Departure Date, any Patents under which another Party and/or its Subsidiaries is licensed and/or granted a covenant, such license and/or covenant shall continue for the Term with respect to such Patents and any divisions, continuations, continuations-in-part, extensions, reissues or counterparts of such Patents.
(c) New Subsidiaries. If a Person becomes a Subsidiary of a Party after the Effective Date, then such Person, upon becoming a Subsidiary, is hereby granted: (i) the applicable license set forth in this Section 3 (except as provided in Section 10.2); and (ii) the applicable covenant set forth in Section 4.
3.7. No Other Rights. No releases, rights, licenses or covenants are granted to any Person or under any Patents except as expressly provided herein, whether by implication, estoppel or otherwise. Without limiting the foregoing sentence: (i) no right to grant sublicenses is granted under the licenses set forth this Agreement; and (ii) no right or license is granted under any copyrights, trademarks, mask work rights, or trade secret rights of either Party or any of its Subsidiaries.
3.8. Marking. During the Term, [***], each Party shall mark those Standalone Products manufactured and shipped for use in the United States that have been identified by the other Party ([***]) as covered under the licenses granted in Sections 3.1, 3.2, and 3.3 above (as applicable) in a commercially reasonable manner with up to 10 TiVo Licensed Patents or up to 10 Google Licensed Patents and/or up to 10 Cisco Licensed Patents (as applicable), in each case a commercially reasonable time after the receipt of written notice from the other Party specifying the applicable Patents and the Standalone Products that are identified as being licensed (as updated by written notice from time to time), unless [***], in which case [***]. The obligations under this Section 3.8 may be satisfied by fixing (or having fixed) on such Standalone Products the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent as permitted under 35 U.S.C. § 287(a). Compliance with this Section 3.8 will not be and not deemed to be an admission or agreement by the marking Party or any of its suppliers or customers that the assertion of the other Party that a particular Product is covered by a particular Licensed Patent is correct, advisable, or required, or that any such Product infringes any of such identified patents.
For purposes of this Section 3.8: (1) if TiVo is the marking Party, Google and Cisco are each the Party identifying Licensed Patents to be marked, (2) if Google or Cisco is the marking Party, TiVo alone is the Party identifying Licensed Patents to be marked.
3.9. No Territoriality. If a particular claim of a Licensed Patent would be exhausted by [***], then the Parties agree and acknowledge that [***].
3.10. Software. Where a Licensed Product is or includes substantially complete software in object code, byte code or executable form, [***] with respect to [***] includes [***].
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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3.11. Distributed Products. Licensed Products that are sold, distributed or otherwise provided during the Term shall (a) continue to be licensed under Section 3 following expiration of the Term and (b) be licensed during the Term for any Licensed Patents owned, controlled, or acquired after the Term.
Section 4. COVENANTS
4.1. Covenants Not to Sue.
(a) Cisco Covenant to TiVo. During the Covenant Period, Cisco and its Subsidiaries covenant to TiVo not to bring or threaten any Assertion (or intentionally assist any Third Party to bring or threaten any Assertion) directed to TiVo Covenant Products against: (i) TiVo or its Subsidiaries; or (ii) any Third Party (subject to Section 4.1(e)).
(b) TiVo Covenant to Cisco. During the Covenant Period, TiVo and its Subsidiaries covenant to Cisco not to bring or threaten any Assertion (or intentionally assist any Third Party to bring or threaten any Assertion) directed to Cisco Covenant Products, against: (i) Cisco or its Subsidiaries; or (ii) any Third Party (subject to Section 4.1(e)).
(c) Google Covenant to TiVo. During the Covenant Period, Google and its Subsidiaries covenant to TiVo not to bring or threaten any Assertion (or intentionally assist any Third Party to bring or threaten any Assertion) directed to TiVo Covenant Products, against: (i) TiVo or its Subsidiaries; or (ii) any Third Party (subject to Section 4.1(e)).
(d) TiVo Covenant to Google. During the Covenant Period, TiVo and its Subsidiaries covenant to Google not to bring or threaten any Assertion (or intentionally assist any Third Party to bring or threaten any Assertion) directed to Google Covenant Products, against: (i) Google or its Subsidiaries; or (ii) any Third Party (subject to Section 4.1(e)).
(e) Application to Third Parties. The foregoing covenants with respect to Third Parties [***].
(f) Subsidiaries. Each Party intends for this Agreement to extend to its Subsidiaries with respect to the applicable covenants granted by such Party and its Subsidiaries to another Party and its Subsidiaries under this Agreement. For the avoidance of doubt, if a Party [***] the foregoing covenants (i) [***], and (ii) do not [***].
(g) Tolling of Damages. For any Assertion brought by a Party or its Subsidiaries after the Covenant Period against an Acquired DVR Supplier or an Acquired DVR Business, the limitations period for patent infringement damages shall be tolled for Products sold, distributed or otherwise provided by such Acquired DVR Supplier or Acquired DVR Business (“Acquired DVR Products”), as applicable, prior to or during the Covenant Period. With respect to any sales of Acquired DVR Products prior to or during the Covenant Period, the covenants not to Assert set forth in this Section 4.1 do not authorize and are non-exhaustive with respect to such sales, and no Party is precluded from seeking, after the Covenant Period, damages based on any such sales.
4.2. [***]. Each Party agrees not to [***]. Notwithstanding the foregoing, if [***] TiVo will be permitted to [***].
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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4.3. [***]. In the event of any action between any Party and another Party, another Party’s Affiliate’s and/or [***], such Party will not [***] related thereto to claim or support any argument for [***]: (a) against a Party, any of its Affiliates, and/or [***]; or (b) in any future litigation related to [***].
Section 5. [***]
5.1. [***]. During the Term and for 6 years thereafter, [***].
Section 6. PAYMENT
6.1. Payment to TiVo. Google and Cisco, within 30 days of the Effective Date, shall collectively make a deposit in the total amount of US $490,000,000 (“Fee”) into an account with a U.S. national bank reasonably acceptable to TiVo to serve as the escrow agent (“Escrow Agent”) for the Fee to be paid to TiVo under this Agreement, and shall create and fully fund an account with such Escrow Agent for such purpose. For clarity, amounts must be deposited by Google or Cisco or their U.S.-based designees. Google and Cisco shall cause the Escrow Agent to pay TiVo the amount of the Fee, with payment being made as one lump sum, immediately upon the later of (a) dismissal of the Pending Litigation; and (b) receipt by Google and Cisco of the appropriate IRS W-9 form from TiVo. In the event of non-payment of the Fee pursuant to this Section 6 and after a [***] day cure period in which the Parties shall work in good faith to resolve the non-payment, TiVo may terminate this Agreement upon written notice to Google and Cisco.
6.2. Payments; Taxes.
(a) The payment of the Fee to TiVo shall be made in U.S. dollars in immediately available funds by wire transfer pursuant to the following instructions (or in accordance with such other wire transfer instructions provided by notice from TiVo):
Bank Name: [***]
SWIFT code: [***]
ABA #: [***]
Account Name: [***]
Account Number: [***]
(b) Upon dismissal of the Pending Litigation and receipt by TiVo of the Fee, the Fee is nonrefundable. Notwithstanding the foregoing sentence, the Parties do not waive and expressly reserve all rights and remedies, in law and in equity, to recover for any breach of this Agreement, including without limitation recovery of damages, costs, attorney fees, and other losses.
(c) TiVo will be responsible for any Taxes to which it is subject as a result of the payment hereunder.
Section 7. TERM AND TERMINATION
7.1. Term. The term of this Agreement shall commence on the Effective Date and shall continue in full force and effect until the expiration of the Cisco Term.
7.2. Remedies; Effect of Termination and Expiration.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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(a) Remedies for Breach. Except as provided in Section 6, this Agreement is not terminable under any circumstance and no Party has the right to seek rescission of this Agreement or any other remedy that seeks to invalidate, terminate, void, or undo this Agreement. If a Party breaches any of its obligations under Sections 2.7 or 6 and such Party does not cure such failure within [***] days after written notice from the other Party, then the other Party shall be entitled to obtain (and the breaching Party hereby waives any right to object to) specific performance of such obligations, without any requirement that such other Party post a bond or other security. In addition, in the event of any proceeding to obtain specific performance of this Agreement, the prevailing Party (as determined by the court) shall be entitled to reasonable attorneys’ fees as determined by the court.
(b) Upon termination of this Agreement for non-payment of the Fee pursuant to Section 6, this Agreement is void ab initio and no provisions of this Agreement shall be effective.
(c) Upon expiration of this Agreement pursuant to Section 7.1, this sentence and Sections 2, 3, 4, 5, 6, 8.2, 9, 10.1, 10.3 and 11 will survive.
For purposes of this Section 7.2(a): (1) if TiVo is the breaching Party, Google and Cisco are each the other, non-breaching Party, and (2) if either Google or Cisco is the breaching Party, TiVo alone is the other, non-breaching Party.
Section 8. REPRESENTATIONS, WARRANTIES, AND COVENANTS
8.1. Representations and Warranties. Each of TiVo and Cisco and TiVo and Google represents and warrants to the other Party that: (a) it is a corporation, duly organized, validly existing, and in good standing under the laws of the jurisdiction of its incorporation and has all requisite power and authority, corporate or otherwise, to execute, deliver and perform this Agreement; and (b) it has the right to grant the releases, licenses, and covenants set forth herein.
8.2. Disclaimer. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN SECTION 8.1, RIGHTS WITH RESPECT TO PATENTS ARE PROVIDED “AS IS,” AND NO PARTY MAKES ANY OTHER REPRESENTATIONS OR WARRANTIES BY VIRTUE OF THIS AGREEMENT, WHETHER EXPRESS OR IMPLIED. Without limiting the foregoing disclaimer, it is understood and agreed that nothing in this Agreement shall be construed as:
(a) a warranty or representation by any Party as to the validity or scope of any of its Patents;
(b) a warranty or representation by any Party that any manufacture, sale, use or other disposition of Products by another Party has been or will be free from infringement of any Patents;
(c) an agreement by any Party to bring or prosecute actions or suits against any other Person for infringement, or conferring any right to another Party to bring or prosecute actions or suits against any other Person for infringement;
(d) except to comply with requirements under Section 3.8, conferring upon any Party or its Subsidiaries any right to include in advertising, packaging or other commercial activities related to its Products licensed under this Agreement, any reference to another Party (or any of its Subsidiaries), its trade names, trademarks or service marks in any manner;
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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(e) conferring by implication, estoppel or otherwise, upon either Party, any right or license under any Patents except for the releases, covenants, immunities, licenses, and other rights expressly granted hereunder; or
(f) an obligation to furnish any technical information, copyrights, mask works or know-how.
Section 9. CONFIDENTIALITY
9.1. Confidentiality. Each Party hereby agrees not to disclose to Third Parties without the prior written consent of the other Parties the terms and conditions of this Agreement. Notwithstanding the foregoing, no Party shall be liable for the disclosure of the terms and conditions of this Agreement or such confidential information (a) pursuant to judicial action or decree, or any requirement of any government or any agency or department thereof having jurisdiction over such Party, provided that in the reasonable opinion of counsel for such Party such disclosure is required and such Party to the extent reasonably practical shall have given the other Parties notice prior to such disclosure sufficient to allow the other Parties to seek a protective order; (b) pursuant to a duly issued subpoena, provided that in the reasonable opinion of counsel for such Party such disclosure is required and such Party shall have given the other Parties notice prior to such disclosure and such disclosure is made only pursuant to a duly entered protective order under the highest level of designated confidentiality (for example, outside counsel’s eyes only); (c) for the purposes of disclosure in connection with the Securities and Exchange Act of 1934, as amended, the Securities Act of 1933, as amended, any other reports filed with the Securities and Exchange Commission, or any other filings, reports or disclosures that may be required under applicable laws or regulations or stock exchange rules, provided that, in the reasonable opinion of counsel of such Party, such disclosure is required (and such Party shall give the other Parties an opportunity to review the initial disclosure of this Agreement and provide comments on its proposed redactions and, in good faith, incorporate such comments into such disclosure to the extent consistent with legal and regulatory obligations); (d) to a Party’s Subsidiaries, employees, consultants, contractors, auditors, legal or financial advisors, accountants, banks, or financing sources and their advisors, actual or prospective investors or acquirers of a Party or a Subsidiary (and their legal and financial advisors), or other representatives so long as such parties have a need to know such confidential information and are expressly bound to keep such information confidential and not use such information for any unauthorized purpose; (e) as reasonably required for due diligence in connection with any proposed assignment of this Agreement or a transaction involving such Party or its Subsidiary, so long as the Person to whom such terms and conditions are disclosed has a reasonable need to know such confidential information in connection with such transaction and is expressly bound in writing to keep such information confidential and not use such information for any unauthorized purpose; (f) as reasonably required in connection with the enforcement of this Agreement or any rights hereunder; (g) to the extent such terms and conditions have become generally known or available to the public other than through the breach of this Section 9 by the Party making the disclosure; or (h) to a good faith purchaser or potential purchaser of any Licensed Patent(s), so long as such purchaser is under a suitable non-disclosure agreement and only receives information regarding the scope of licenses, releases, covenants, or other rights granted under such Licensed Patent(s). A Party may disclose to any of its [***], provided that such disclosure is subject to substantially similar confidentiality obligations as the terms and conditions of this Section 9. A Party may also disclose to any [***] under this Agreement [***], provided that such disclosure is subject to substantially similar confidentiality obligations as the terms and conditions of this Section 9. In addition, any Party may disclose to any Third Party that “the dispute between the parties has been resolved.”
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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Section 10. CHANGE OF CONTROL; DVR SUPPLIER ACQUISITIONS; ASSIGNMENT
10.1. Change of Control. If a Party (the “Acquired Party”) undergoes a Change of Control involving a Third Party (the “Acquirer”), then each of the following subsections shall apply:
(a) The Acquired Party shall give notice to the other Party(ies) (“Non-Acquired Party”) describing in reasonable detail the transaction or series of related transactions no later than 60 days following the closing of such transaction.
(b) The licenses and covenants granted to the Acquired Party and its Subsidiaries will be limited to Products marketed, sold, licensed or publicly announced by the Acquired Party or any of its Subsidiaries prior to the Change of Control in accordance with the terms and conditions of Sections 3 and 4 (“Existing Licensed Products”), updates, upgrades, and bug fixes thereto, and new versions thereof that are substantially similar in function and features. The licenses and covenants will not otherwise extend to the Acquirer or any of its Affiliates. By way of example and not limitation, if Apple or Microsoft, directly or indirectly, acquires control of TiVo, except as expressly set forth in the foregoing sentence with respect to Existing Licensed Products, no rights under this Agreement (whether by license, covenant or otherwise) would extend to Apple or Microsoft or any of their respective Products.
(c) The licenses and covenants granted to the Non-Acquired Party and its Subsidiaries will remain in effect with respect to the Patents of the Acquired Party and its Subsidiaries in accordance with the terms and conditions of Sections 3 and 4. However, no rights, licenses or covenants will be granted to the Non-Acquired Party or its Subsidiaries with respect to any Patents of the Acquirer or its Subsidiaries (other than Patents of the Acquired Party and its Subsidiaries).
(d) Except as otherwise expressly set forth in this Section 10.1, the licenses and covenants granted to each Party and its Subsidiaries (and permitted successors and permitted assigns) will remain in effect after such Change of Control in accordance with the terms and conditions of this Agreement.
For purposes of this Section 10.1: (1) if TiVo is the Acquired Party, Google and Cisco are each the Non-Acquired Party, and (2) if either Google or Cisco is the Acquired Party, TiVo alone is the Non-Acquired Party.
10.2. DVR Supplier Acquisitions. If a Party or one of its Subsidiaries (the “Acquiring Party”) acquires (whether through merger, asset purchase or otherwise, and whether through a single transaction or a series of related transactions) all or substantially all of (i) [***] (an “Acquired DVR Supplier”), or (ii) [***] (an “Acquired DVR Business”), then each of the following subsections shall apply:
(a) The Acquiring Party shall give notice to the other Party(ies) (“Non-Acquiring Party”) describing in reasonable detail the transaction or series of related transactions no later than 60 days following the closing of such transaction.
(b) The licenses granted to the Acquiring Party and its Subsidiaries under this Agreement [***]. The covenants granted to the Acquiring Party and its Subsidiaries under this Agreement [***].
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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(c) The licenses and covenants granted to the Non-Acquiring Party and its Subsidiaries will [***] in accordance with the terms and conditions of [***] except that: (i) [***] (collectively, “Acquired DVR Patents”); and (ii) the covenants granted to the Non-Acquiring Party and its Subsidiaries [***].
(d) Except as otherwise expressly set forth above in this Section 10.2, [***] after such acquisition in accordance with the terms and conditions of this Agreement.
For purposes of this Section 10.2: (1) if TiVo is the Acquiring Party, Google and Cisco are each the Non-Acquiring Party, and (2) if either Google or Cisco is the Acquiring Party, TiVo alone is the Non-Acquiring Party.
10.3. Assignment.
(a) This Agreement may not be assigned by any Party without the prior written consent of the other Party, including by operation of law, except in connection with a Change of Control subject to Section 10.1.
(b) Each Party acknowledges and agrees that the Patents owned and controlled by such Party are intended to be encumbered by the licenses, releases and covenants contained in this Agreement within the scope of such licenses, releases and covenants, and that such licenses, releases and covenants shall run with such Patents and apply to any assignee or transferee of such Patents. No Party nor any Subsidiary thereof shall assign or grant any exclusive right or any right to enforce under any Patent subject to this Agreement unless the applicable assignee or grantee agrees, on or prior to the date of such assignment or grant, in writing to be bound by the terms and conditions of this Agreement with respect to such Patent. Failure to make such assignment or grant subject to this Agreement shall render such assignment or grant void ab initio. Any breach of this Section 10.3(b) by a Party or any of its Subsidiaries shall be regarded as a material breach of this Agreement by such Party, and such Party shall indemnify and hold harmless the other Party, its Subsidiaries and Authorized Third Parties for any and all costs and expenses (including reasonable fees of attorneys and other professionals), liabilities, damages and losses arising out of or resulting from any such breach of this Section 10.3(b), including from any Assertion of any Licensed Patent by a third party that would have been prevented by compliance with this Section 10.3.
(c) Subject to the foregoing, this Agreement shall be binding upon and shall inure to the benefit of the Parties and their respective permitted successors and permitted assigns.
For purposes of this Section 10.3: (1) if TiVo is the assigning Party, Google and Cisco are each the other, non-assigning Party, provided that TiVo shall have the right, for an assignment of this Agreement by TiVo requiring consent of the non-assigning Party under this Section 10.3, to assign the terms and conditions of this Agreement as they relate to one non-assigning Party with the consent of only that non-assigning Party and not the other non-assigning Party, and the terms and conditions of this Agreement shall remain in full force and effect between TiVo and the other non-assigning Party, and (2) if either Google or Cisco is the assigning Party, TiVo alone is the other, non-assigning Party.
Section 11. GENERAL
11.1. Notices. All notices that are required or permitted to be given hereunder shall be in writing and shall be sent by overnight courier service, charges prepaid, written signature of the receiving party requested and received, to the Party to be notified, addressed to such Party at the physical address
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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set forth below, or such other physical address(es) as such Party may have substituted by written notice to the Party providing notice. In the event of any notice concerning breach of payment obligations, the Party providing notice will make reasonable attempts to reach at least one of the persons listed below within 2 business days of sending such notice to speak by telephone to indicate that notice has been provided. The receipt of such notice (in the case of delivery by overnight courier service) or, if the addressee refuses to accept the tender of such notice, then the tender of such notice for delivery shall constitute the giving thereof.
if to TiVo: TiVo Inc.
Attn: Office of the General Counsel
2160 Gold Street
Alviso, California 95002-2160
if to Google: Google Inc.
Attn: General Counsel
Legal Department
1600 Amphitheatre Parkway
Mountain View, CA 94043
if to Cisco: Cisco Systems, Inc.
Attn: Neal Rubin
Vice President, Litigation
170 W. Tasman Drive
San Jose, CA 95134
United States of America
And copy to:
Cisco Systems, Inc.
Attn: General Counsel
170 West Tasman Drive
San Jose, CA 95134
United States of America
11.2. Governing Law; Venue. This Agreement is governed by the laws of the state of California, without regards to conflict of law rules. The Parties shall bring any disputes arising out of or related to this Agreement exclusively in a state or federal court in the county of Santa Clara County, California, and submit to the personal jurisdiction of such courts. The Parties agree that the United Nations Convention on Contracts for the International Sale of Goods will not apply in any respect to this Agreement or sales of goods.
11.3. Relationship of Parties. Nothing contained in this Agreement shall be deemed or construed as creating a joint venture, partnership, agency, employment or fiduciary relationship between the Parties. No Party or any of its agents has any authority of any kind to bind any other Party in any respect whatsoever, and the relationship of the Parties is, and at all times shall continue to be, that of independent contractors. [***]
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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11.4. Waiver. A waiver, express or implied, of any right under this Agreement or of any failure to perform or breach hereof will not constitute or be deemed to be a waiver of any other right hereunder or of any other failure to perform or breach hereof, whether of the same, or a similar or dissimilar nature thereto.
11.5. Severability. If any provision of this Agreement is unenforceable or invalid under any applicable law or is so held by applicable court decision, such unenforceability or invalidity will not render this Agreement unenforceable or invalid as a whole, and, in such event, such provision shall be changed and interpreted so as to best accomplish the objectives of the Parties within the limits of applicable law or applicable court decision.
11.6. Bankruptcy. All licenses and covenants to Patents granted under or pursuant to this Agreement are, and shall otherwise be deemed to be, for purposes of Section 365(n) of the Bankruptcy Code, licenses of rights of “intellectual property” and rights to “intellectual property” under agreements supplementary thereto as “intellectual property” is defined under Section 101 of the Bankruptcy Code. The Parties agree that any Party shall retain and may fully exercise all of its rights and elections under the Bankruptcy Code in the event of any bankruptcy or insolvency proceeding of any kind or nature. Each Party acknowledges that if a Party granting a license or covenant hereunder, as a debtor in possession, or a trustee-in-bankruptcy for such Party, in a case under the Bankruptcy Code, rejects this Agreement, the Party receiving such license or covenant and its Subsidiaries may elect to retain their rights under this Agreement as provided in Section 365(n) of the Bankruptcy Code.
11.7. Cumulative Remedies. The rights and remedies of the Parties as set forth in this Agreement are not exclusive and are in addition to any other rights and remedies now or hereafter provided by law or at equity.
11.8. Captions and Headings. The captions and headings used in this Agreement are inserted for convenience only, do not form a part of this Agreement, and are not to be used in any way to construe or interpret this Agreement.
11.9. Construction. This Agreement has been negotiated by the Parties and shall be interpreted fairly in accordance with its terms and without any construction in favor of or against any Party.
11.10. Sophisticated Parties Represented by Counsel. The Parties each acknowledge that they are sophisticated Parties represented at all relevant times during the negotiation and execution of this Agreement by counsel of their choice, and that they and their counsel have engaged in robust, arm’s-length negotiation of this Agreement.
11.11. Counterparts. This Agreement may be executed (including by electronic transmission of scanned signature pages) in one or more counterparts with the same effect as if the Parties had signed the same document. Each counterpart so executed shall be deemed to be an original, and all such counterparts shall be construed together and shall constitute one agreement.
11.12. Entire Agreement; Amendment. This Agreement, including the Exhibit(s) attached hereto which are incorporated herein by reference, constitutes the entire understanding and only agreement between the Parties with respect to the subject matter hereof and supersedes any and all prior negotiations, representations, term sheets, memorandums of understanding, agreements, and understandings, written or oral, that the Parties may have reached with respect to the subject matter
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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hereof. No agreements altering or supplementing the terms hereof may be made except by means of a written document signed by the duly authorized representatives of each of the Parties hereto.
[Remainder of page intentionally left blank.]
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by their duly authorized representatives.
TIVO INC.
By: /s/ Naveen Chopra
Name: Naveen Chopra
Title: Chief Financial Officer
Date: July 2, 2013
CISCO SYSTEMS, INC.
By: /s/ Colette Kress
Name: Colette Kress
Title: Senior Vice President, Finance
Date: July 2, 2013
GOOGLE INC.
By: /s/ Allen Lo
Name: Allen Lo
Title: Deputy General Counsel, Patents and Patent
Litigation
Date: July 2, 2013
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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Exhibit A
Arris Agreement
See attached.*
* Exhibit 10.2 to the Company’s Quarterly Report on Form 10-Q for the fiscal quarter ended July 31, 2013 is hereby incorporated by reference as Exhibit A to this Agreement.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Exhibit B
Dismissal Motions
See attached.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TIVO INC.,
Plaintiff,
vs.
CISCO SYSTEMS, INC., TIME WARNER CABLE INC., and TIME WARNER CABLE LLC,
Defendants.
Case No. 2:12-cv-311-JRG
(and consolidated Case No. 2:12-cv-434-JRG)
JURY TRIAL DEMANDED
STIPULATION AND JOINT MOTION TO DISMISS PURSUANT TO
RULE 41 OF THE FEDERAL RULES OF CIVIL PROCEDURE
Pursuant to Rule 41 of the Federal Rules of Civil Procedure and the agreements of the Parties, Plaintiff TiVo Inc. ("TiVo") and Defendants Cisco Systems, Inc. ("Cisco"), Time Warner Cable Inc., and Time Warner Cable LLC (collectively, "Time Warner Cable"), (collectively the "Parties"), by and through counsel, hereby stipulate to the dismissal of this entire action as follows:
1.
All claims and counterclaims TiVo asserted against Cisco in the above-captioned action are dismissed with prejudice in their entirety.
2.
All claims and counterclaims Cisco asserted against TiVo in the above-captioned action are dismissed with prejudice in their entirety, except that all Cisco claims and counterclaims asserting invalidity of TiVo's U.S. Patent No. 6,233,389 ("the '389 patent"), U.S. Patent No. 7,529,465 ("the '465 patent"), U.S. Patent No.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
7,493,015 ("the '015 patent"), and U.S. Patent No. 6,792,195 ("the '195 patent") are dismissed without prejudice.
3.
All claims and counterclaims that TiVo asserted against Time Warner Cable in the above-captioned action are dismissed without prejudice in their entirety.
4.
The Parties shall each bear their own costs and attorney's fees in this action.
Text of an Order of Dismissal has been lodged concurrently herewith.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Dated: July __, 2013
Respectfully submitted,
By: /s/ Richard Birnholz
Richard M. Birnholz
Sam Baxter, Lead Attorney
Texas State Bar No. 01938000
sbaxter@mckoolsmith.com
Garret W. Chambers
Texas State Bar No. 00792160
gchambers@mckoolsmith.com
McKool Smith
300 Crescent Court, Suite 1500
Dallas, Texas 75201
TEL: 214.978.4016
FAX: 214.978.4044
IRELL & MANELLA LLP
Morgan Chu
mchu@irell.com
Andrei Iancu
aiancu@irell.com
Richard M. Birnholz (Pro Hac Vice)
rbirnholz@irell.com
Joseph M. Lipner (Pro Hac Vice)
jlipner@irell.com
Thomas C. Werner (Pro Hac Vice)
twerner@irell.com
1800 Avenue of the Stars, Suite 900
Los Angeles, California 90067-4276
Telephone: (310) 277-1010
Facsimile: (310) 203-7199
Attorneys for Plaintiff TiVo Inc.
/s/ Doug McClellan
Doug W. McClellan
Michael E. Jones
SBN: 10929400
mikejones@potterminton.com
Allen F. Gardner
TX Bar No. 24043679
allengardner@potterminton.com
POTTER MINTON, PC
110 North College
Suite 500
Tyler, Texas 75702
Tel: 903-597-8311
Fax: 903-593-0846
Otis W. Carroll
TX Bar No. 03895700
nancy@icklaw.com
Ireland, Carroll & Kelley, PC
6101 South Broadway, Suite 500
Tyler, Texas 75703
Tel: 903-561-1600
Fax: 903-581-1071
Jared Bobrow
jared.bobrow@weil.com
Arjun Mehra
arjun.mehra@weil.com
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: (650) 802-3000
Facsimile: (650) 802-3100
Doug McClellan
TX Bar No. 24027488
doug.mcclellan@weil.com
Melissa Hotze
TX Bar No. 24049831
melissa.hotze@weil.com
Audrey Maness
audrey.maness@weil.com
TX Bar No. 24060219
WEIL, GOTSHAL & MANGES LLP
700 Louisiana, Suite 1600
Houston, TX 77002
Telephone: (713) 546-5000
Facsimile: (713) 224-9511
Attorneys for Defendant Cisco Systems, Inc.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
/s/ Jennifer H. Doan
Jennifer Haltom Doan
jdoan@haltomdoan.com
Stephen Wheeler Creekmore , IV
screekmore@haltomdoan.com
Haltom and Doan
6500 Summerhill Road
Crown Executive Center Suite 100
P O Box 6227
Texarkana, TX 75505
903/255-1000
Fax: 903/255-0800
Edward J. DeFranco
eddefranco@quinnemanuel.com
Matthew A. Traupman
matthewtraupman@quinnemanuel.com
Quinn Emanuel Urquhart & Sullivan, LLP - NY
51 Madison Ave
22nd Floor
New York, NY 10010
212/849-7000
Fax: 212/849-7100
Attorneys for Defendant Time Warner Cable
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). All other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by certified mail, return receipt requested, on this the __ day of June, 2013.
/s/ Richard Birnholz
Richard Birnholz
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TIVO INC.,
Plaintiff,
vs.
CISCO SYSTEMS, INC., TIME WARNER CABLE INC., and TIME WARNER CABLE LLC,
Defendants.
Case No. 2:12-cv-311-JRG
(and consolidated Case No. 2:12-cv-434-JRG)
JURY TRIAL DEMANDED
[PROPOSED] ORDER ON STIPULATION AND JOINT MOTION TO DISMISS PURSUANT TO RULE 41 OF THE FEDERAL RULES OF CIVIL PROCEDURE
The Court has considered the Stipulation and Joint Motion To Dismiss Pursuant to Rule 41 of the Federal Rules of Civil Procedure and agreements of the parties filed by Plaintiff TiVo Inc. ("TiVo") and Defendants Cisco Systems, Inc. ("Cisco"), Time Warner Cable Inc., and Time Warner Cable LLC (collectively, "Time Warner Cable"), (collectively the "Parties"). The motion is hereby GRANTED.
Accordingly, it is ORDERED that the entire action is dismissed in accordance with Rule 41 of the Federal Rules of Civil Procedure and the Parties' Stipulation, as follows:
1.
All claims and counterclaims TiVo asserted against Cisco in the above-captioned action are dismissed with prejudice in their entirety;
2.
All claims and counterclaims Cisco asserted against TiVo in the above-captioned action are dismissed with prejudice in their entirety, except that all Cisco claims and counterclaims asserting invalidity of TiVo's U.S. Patent No. 6,233,389 ("the
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
'389 patent"), U.S. Patent No. 7,529,465 ("the '465 patent"), U.S. Patent No. 7,493,015 ("the '015 patent"), and U.S. Patent No. 6,792,195 ("the '195 patent") are dismissed without prejudice.
3.
All claims and counterclaims that TiVo asserted against Time Warner Cable in the above-captioned action are dismissed without prejudice in their entirety; and
4.
The Parties shall each bear their own costs and attorney's fees in this action.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TEXARKANA DIVISION
MOTOROLA MOBILITY, INC. and GENERAL INSTRUMENT CORPORATION
Plaintiffs,
vs.
TIVO INC.,
Defendant.
_______________________________________
TIVO INC.,
Counterclaim Plaintiff
v.
MOTOROLA MOBILITY, INC., GENERAL INSTRUMENT CORPORATION, TIME WARNER CABLE INC., and TIME WARNER CABLE LLC,
Counterclaim Defendants.
Civil Action No. 5:11-00053-JRG
JURY TRIAL DEMANDED
STIPULATION AND JOINT MOTION TO DISMISS PURSUANT TO
RULE 41 OF THE FEDERAL RULES OF CIVIL PROCEDURE
Pursuant to Rule 41 of the Federal Rules of Civil Procedure and the agreements of the Parties, Plaintiffs and Counterclaim Defendants Motorola Mobility, Inc. and General Instrument Corporation (collectively, "Motorola"), and Counterclaim Defendants Time Warner Cable, Inc. and Time Warner Cable LLC (collectively, "Time Warner Cable") and Defendant and Counterclaim
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Plaintiff TiVo Inc. ("TiVo") (collectively the "Parties"), by and through counsel, hereby stipulate to the dismissal of this entire action as follows:
1.
Motorola's Eight and Ninth Causes of Action are dismissed with prejudice in their entirety. All other claims and counterclaims Motorola asserted against TiVo in the above-captioned action are dismissed with prejudice in their entirety, except that all Motorola claims and counterclaims asserting invalidity of TiVo's U.S. Patent No. 6,233,389 ("the '389 patent"), U.S. Patent No. 7,529,465 ("the '465 patent"), and U.S. Patent No. 6,792,195 ("the '195 patent"), are dismissed without prejudice.
2.
All claims and counterclaims TiVo asserted against Motorola in the above-captioned action are dismissed with prejudice in their entirety, except that all TiVo claims and counterclaims asserting invalidity of Motorola's U.S. Patent No. 6,304,714 ("the '714 patent"), 5,949,948 ("the '948 patent"), and 6,356,708 ("the '708 patent"), are dismissed without prejudice.
3.
All claims and counterclaims that TiVo asserted against Time Warner Cable in the above-captioned action are dismissed in their entirety without prejudice.
4.
The Parties shall each bear their own costs and attorney's fees in this action.
Text of an Order of Dismissal has been lodged concurrently herewith.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Dated: July __, 2013
Respectfully submitted,
By: /s/ Jennifer H. Doan
Jennifer Haltom Doan
Texas Bar No. 08809050
Shawn Alexander Latchford
Texas Bar No. 24066603
Stephen W. Creekmore, IV
Texas Bar No. 24080844
HALTOM & DOAN
6500 Summerhill Road
Crown Executive Center, Suite 100
Texarkana, TX 75503
Telephone: (903) 255-1000
Fax: (903) 255-0800
Email: jdoan@haltomdoan.com
Email: slatchford@haltomdoan.com
Email: screekmore@haltomdoan.com
Lance Lee
Texas Bar No. 24004762
5511 Plaza Drive
Texarkana, TX 75503
Telephone: (903) 223-0276
Facsimile: (903) 233-0210
wlancelee@aol.com
Mark Mann
Texas Bar No. 12926150
The Mann Firm
300 West Main Street
Henderson, TX 75652
Phone (903)657-8540
Fax (903)657-6003
mm@themannfirm.com
Charles K. Verhoeven (Pro Hac Vice)
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: (415) 875-6600
Facsimile: (415) 875-6700
charlesverhoeven@quinnemanuel.com
Edward J. DeFranco (Pro Hac Vice)
eddefranco@quinnemanuel.com
Matthew Traupman (Pro Hac Vice)
matthewtraupman@quinnemanuel.com
51 Madison Avenue, 22nd Floor
New York, New York 10010
Telephone: (212) 849-7000
Facsimile: (212) 849-7100
/s/ Richard Birnholz
Richard M. Birnholz
Sam Baxter, Lead Attorney
Texas State Bar No. 01938000
sbaxter@mckoolsmith.com
Garret W. Chambers
Texas State Bar No. 00792160
gchambers@mckoolsmith.com
McKool Smith
300 Crescent Court, Suite 1500
Dallas, Texas 75201
TEL: 214.978.4016
FAX: 214.978.4044
IRELL & MANELLA LLP
Morgan Chu (Pro Hac Vice)
mchu@irell.com
Andrei Iancu (Pro Hac Vice)
aiancu@irell.com
Richard M. Birnholz (Pro Hac Vice)
rbirnholz@irell.com
Joseph M. Lipner (Pro Hac Vice)
jlipner@irell.com
Thomas C. Werner (Pro Hac Vice)
twerner@irell.com
1800 Avenue of the Stars, Suite 900
Los Angeles, California 90067-4276
Telephone:(310) 277-1010
Facsimile:(310) 203-7199
ATTORNEYS FOR TIVO INC.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Marissa R. Ducca
Quinn Emanuel Urquhart & Sullivan, LLP
1299 Pennsylvania Ave. NW, Suite 825
Washington, D.C. 20004
Telephone: (202) 538-8109
Facsimile: (202) 538-8100
marissaducca@quinnemanuel.com
Brian K. Erickson
Texas Bar No. 24012594
brian.erickson@dlapiper.com
John Guaragna
Texas Bar No. 24043308
john.guaragna@dlapiper.com
Aaron Fountain
Texas Bar No. 24050619
aaron.fountain@dlapiper.com
Todd Patterson
Texas Bar No. 24060396
todd.patterson@dlapiper.com
401 Congress Avenue, Suite 2500
Austin, TX 78701-3799
Phone: 512.457.7000
Fax: 512.457.7001
John Allcock (admitted pro hac vice)
john.allcock@dlapiper.com
Sean Cunningham (admitted pro hac vice)
sean.cunningham@dlapiper.com
Erin Gibson (admitted pro hac vice)
erin.gibson@dlapiper.com
Edward H. Sikorski (admitted pro hac vice)
ed.sikorski@dlapiper.com
401 B Street, Suite 1700
San Diego, CA 92101
Telephone: 619-699-2700
Facsimile: 619-699-2701
Andrew N. Stein
D.C. Bar No. 1005411
andrew.stein@dlapiper.com
500 Eighth Street, NW
Washington, DC 20004
Telephone: 202-799-4000
Facsimile: 202-799-5000
ATTORNEYS FOR PLAINTIFFS MOTOROLA MOBILITY, INC. and GENERAL INSTRUMENT CORPORATION and Counterclaim Defendants TIME WARNER CABLE, INC. and TIME WARNER CABLE LLC
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). All other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by certified mail, return receipt requested, on this the 4th day of June, 2013.
/s/ Jennifer H. Doan
Jennifer H. Doan
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TEXARKANA DIVISION
MOTOROLA MOBILITY, INC. and GENERAL INSTRUMENT CORPORATION
Plaintiffs,
vs.
TIVO INC.,
Defendant.
_______________________________________
TIVO INC.,
Counterclaim Plaintiff
v.
MOTOROLA MOBILITY, INC., GENERAL INSTRUMENT CORPORATION, TIME WARNER CABLE INC., and TIME WARNER CABLE LLC,
Counterclaim Defendants.
Civil Action No. 5:11-00053-JRG
JURY TRIAL DEMANDED
[PROPOSED] ORDER ON STIPULATION AND JOINT MOTION TO DISMISS PURSUANT TORULE 41 OF THE FEDERAL RULES OF CIVIL PROCEDURE
The Court has considered the Stipulation and Joint Motion to Dismiss Pursuant to Rule 41 of the Federal Rules of Civil Procedure and agreements of the Parties filed by Plaintiffs and Counterclaim Defendants Motorola Mobility, Inc. and General Instrument Corporation (collectively, "Motorola"), and Counterclaim Defendants Time Warner Cable, Inc. and Time Warner
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Cable LLC (collectively, "Time Warner Cable") and Defendant and Counterclaim Plaintiff TiVo Inc. ("TiVo") (collectively the "Parties"). The motion is hereby GRANTED.
Accordingly, it is ORDERED that the entire action is dismissed in accordance with Rule 41 of the Federal Rules of Civil Procedure and the Parties' Stipulation as follows:
1.
Motorola's Eight and Ninth Causes of Action are dismissed with prejudice in their entirety. All other claims and counterclaims Motorola asserted against TiVo in the above-captioned action are dismissed with prejudice in their entirety, except that all Motorola claims and counterclaims asserting invalidity of TiVo's U.S. Patent No. 6,233,389 ("the '389 patent"), U.S. Patent No. 7,529,465 ("the '465 patent"), and U.S. Patent No. 6,792,195 ("the '195 patent"), are dismissed without prejudice.
2.
All claims and counterclaims TiVo asserted against Motorola in the above-captioned action are dismissed with prejudice in their entirety, except that all TiVo claims and counterclaims asserting invalidity of Motorola's U.S. Patent No. 6,304,714 ("the '714 patent"), 5,949,948 ("the '948 patent"), and 6,356,708 ("the '708 patent"), are dismissed without prejudice.
3.
All claims and counterclaims that TiVo asserted against Time Warner Cable in the above-captioned action are dismissed in their entirety without prejudice.
4.
The Parties shall each bear their own costs and attorney's fees in this action.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Results
TiVo collected more than $1.7 billion through a series of verdicts and settlements, including over $600 million paid by EchoStar after a jury verdict and post-trial proceedings, $490 million paid by Motorola and Cisco, $215 million by AT&T, and $250 million plus future royalties by Verizon. The result demonstrated to start-ups, inventors, and venture capital that patented innovations can be protected against the largest corporations in the world. Irell then represented TiVo in numerous high-value multifaceted licensing deals and other intellectual property transactions. All told, Irell has now helped TiVo obtain several billion dollars in value for its pioneering innovations.
Coincidence? Similarities? A plan of attack?. Great foresight, she told us back in 2014. All plans occur a bump in the road.
TiVo Settlements Now Top $1B
09.2012
Longtime Irell & Manella client TiVo Inc. settled its patent litigation with Verizon and entered into a mutual patent licensing arrangement. Verizon agreed to provide TiVo with total compensation worth at least $250.4 million, bringing the total amount Irell has secured for TiVo to more than $1 billion. The settlement was finalized just days before jury selection and trial were scheduled to begin.
The agreement ends a more than three-year patent dispute between the companies, which began when TiVo, developer of the first commercially available digital video recorder (DVR), filed separate patent infringement suits against Verizon and AT&T Inc. in Texas federal court in August 2009, accusing the companies of infringing three of its DVR technology patents.
Subject matter of the settlement with the 13 cable companies;
1. There was a settlement! Arguements are for or against the size monetary value of the settlement and distribution?
2. IceWeb, turns into Uoip? Chanbond is formed? Uoip then purchases Chanbond and patents, from the CBV?
3. Ipnav is still in play with Leanne, Spangenberg and so on, legal documents seem to support this?
4. There is a spin off of Uoip. UO!P or something like that, why?
5. Information I gather from this board is that, we need Billy. Next day says root for Leanne.
6. We have various lawsuits against all against Billy, the sole manager of Chanbond and UOIP and UO!P.?
7. Can anyone explain UO!P, (I may have the word association out of whack, forgive me)
So we banter, argue, challenge statements on this board, to what is actually happening!
I don't do this for myself. I encourage onlookers to make smart decisions. Penny stocks are a risk! This is a bizarre case! Yet many methodical turn of events seem to have happened? Only 2 cents posted here, folks!
Fraud
Dictionary
Definitions from Oxford Languages · Learn more
Search for a word
fraud
/frôd/
Learn to pronounce
noun
wrongful or criminal deception intended to result in financial or personal gain.
"he was convicted of fraud"
Similar:
fraudulence
sharp practice
cheating
WikipediA
Shill
A shill, also called a plant or a stooge, is a person who publicly helps or gives credibility to a person or organization without disclosing that they have a close relationship with said person or organization. Shills can carry out their operations in the areas of media, journalism, marketing, politics, sports, confidence games, or other business areas. A shill may also act to discredit opponents or critics of the person or organization in which they have a vested interest.[citation needed]
In most uses, shill refers to someone who purposely gives onlookers, participants or "marks" the impression of an enthusiastic customer independent of the seller, marketer or con artist, for whom they are secretly working. The person or group in league with the shill relies on crowd psychology to encourage other onlookers or audience members to do business with the seller or accept the ideas they are promoting. Shills may be employed by salespeople and professional marketing campaigns. Plant and stooge more commonly refer to a person who is secretly in league with another person or outside organization while pretending to be neutral or part of the organization in which they are planted, such as a magician's audience, a political party, or an intelligence organization (see double agent).[citation needed]
Shilling is illegal in many circumstances and under many jurisdictions[1] because of the potential for fraud and damage. However, if a shill does not place uninformed parties at a risk of loss, the shill's actions may be legal. For example, a person planted in an audience to laugh and applaud when desired (see claque), or to participate in on-stage activities as a "random member of the audience", is a legal type of shill.[2]
Opinions and arguements should be available for all to see.
Let folks decide for themselves, on how to interpret information given on this board.
At the end of the day, I believe all these posts are irrelevant.
The Original Cabal vs Shareholder Cabal.
The saga continues.
We argue on this board. Which is appropriate.
Why else have a board?
I agree with Allin here. Re-read his or her post.
I get a lot of information from, about 10 people who post on this board. Not much to go on.
A lot of information I get is from folks, who say, the settlement was a pittance. They settlement is secure in other countries. As months go on, folks on this board infer the settlement keeps getting smaller? Stories change, why?
People state they know Billy and his habits. Folks know Brauerman and he reveals specific info. People see other people in court and proclaim that the shareholder cabal shloud disolve. Folks say, trust Billy, don't spend unnecessary money on Radar. Billy will produce shekels and crumbs for shareholders, when all is settled. Who sends out this information?
Why has Billy not issued any statement, on anything? Someone on this board should be able to reply to that? As they post where the settlement money is. How much it is. Where Billy is, which is gone, and so on?
Huh? It all makes perfect sense!
Sorry folks, another definition, opinion;
Is a summary Judgement a good thing?
Very, very bad. Summary judgment occurs in a lawsuit after all the facts are known to all of the parties, but before the actual trial has begun. When asked by either party, the judge will review these facts and may make a determination that it is impossible for one of the parties to win the case.Aug 14, 2021.
That was from Google search.
Summary judgement?
From a previous post;
The situation is that the settlement was nowhere near the amount that Dr Teese recommended as a settlement in the summary judgement hearing, or predictions on this board.
What was the Summary Judgement ruling? What was Judge Andrews ruling on the Summary judgement, pertaining to Dr Teese?
Predictions on a social media board are irrelevant.
I may have missed the judges ruling on summary judgement, he should have signed off on this ruling .
Can anyone post the judge's summary judgement order, pertaining to Dr. Teese?
Radar bad.
Billy and Brauerman good.
Deidre bad.
Deidre good.
Billy bad, illegal take.
Brauerman bad, collusion with Billy good.
Original cabal, good.
New cabal bad.
Settlement NDA, we will never know? Yet it is known on this board?
Righteousness has seemed to have played out. No money here folks.
The parties have agreed to, apparently nothing? Nothing to see here. Billy will be paying legal fees for a thousand years, maybe 10,000 years. Cable companies, Cisco, Arris, CommScope, Comcast, Charter and so on.... have already forgotten the pittance. $250 million, $500 million, $1 billion or $2, and so on, is a pittance, shekels and crumbs to the cable industry and major conglomerates, I think that is factual.
Arguements to a post;
Not Quite, Scruff. You have to evaluate what you can do vs the now reality of the situation. The situation is that the settlement was nowhere near the amount that Dr Teese recommended as a settlement in the summary judgement hearing, or predictions on this board.
This is a factual statement, stating the settlement amount is known! How do you know? This is a NDA? Collusion?
Next;
Since they filed the CBV case vs Deirdre, both sides agreed to keep that money in escrow pending a decision in that case. Billy's take from the settlement is unknown from filings. What is able to be fought is by shareholders is that which is not legally contracted in the settlement.
So now Billy gets a settlement, I thought he spent it all? In various countries? Why do you have all this detailed info of the settlement?
Next;
Deirdre has already filed a derivative case vs Billy on his illegal take, and is paying the bill. At the end of her filing, she states she wants nothing from the derivative action but the costs incurred in bringing it. That means that her lawyer gets paid, not the shareholder lawyers filing a later case, arguing the same case.
So Deidre does not want nothing more than to pay lawyers? Now Billy has an illegal take in the settlement?
Southern Gentleman to now illegal take? Deidre wants nothing more than to bring Billy to justice? Hearsay in court to protect Billy and Brauerman, yet now he has an illegal take in funds conducted by his legal team?
Words of choice:
1. Promoted by the cabal. Fair enough, not only one cabal posting here.
2. It took 6 years to litigate, yet took 6 hours to settle. Sure. Ask Brauerman for copy and paste details.
3. They took 6 hours to stop the trial. So Billy, Brauerman, Whitman threw in the towel after 6 years. Now those are ,Southern Gentleman, not my words.
4. No hard negotiations? Soft negotiations? Well after 6 years call a truce? Must of been! These are nice folks!
5. Lower, insignacient settlement, told by the original cabal,? Clarification of the original cabal as follows, a pittance, shekels, and crumbs.
6. The other cabal is shareholders?
7. Not my verbage here, applying the original cabal verbage?
8. NC case, is that UO!P or UOP! or U!OP, why the need for so many UOIP's? Maybe Billy can answer in copy and paste response?
Ok, 2nd fun fact of the day. Imports? ITC? Imports to where?
TiVo says court upholds import ban on Comcast cable boxes
By Ben Munson
Mar 2, 2020 11:28am
TiVo said today that the U.S. Court of Appeals for the Federal Circuit has sided with the company in the latest chapter of an ongoing patent suit against Comcast.
TiVo said the court affirmed the International Trade Commission’s (ITC) jurisdiction and its decision to ban the importation of Comcast’s set-top boxes that infringe on TiVo’s and Rovi’s patents.
“The Federal Circuit affirmed the ITC’s Final Determination and what we at TiVo have known for years – Comcast infringed Rovi’s patents and its business is subject to the ITC’s jurisdiction. This ruling maintains the ITC’s import ban against Comcast’s set-top boxes, and showcases the strength of Rovi’s battle-tested patent portfolio,” said Arvin Patel, executive vice president and chief intellectual property officer at Rovi, in a statement. “We understand the value of our patented technology and why Comcast has relied on it heavily since launching its X1 platform. But Comcast cannot continue to use Rovi’s patented technology without paying for a license. We are hopeful today’s announcement will encourage Comcast to put their customers first and license our IP just as the other top 9 U.S. Pay-TV providers do.”
Another news article.
Fun fact from a news article, old news, a brief read;
Comcast and TiVo Reach Agreement, End 4-Year Patent Fight
By Daniel Frankel published November 09, 2020
NextTv
New TiVo parent company Xperi Holdings reaches retroactive IP licensing deal with cable giant that runs from 2016-2031
Four years of disruption and chaos are finally over!
Monday, the pair finally reached agreement on a new, 15-year IP licensing pact, according to a press release jointly issued by Comcast and new TiVo parent company Xperi Holdings.
Xperi said that the agreement terms are “consistent with TiVo’s well-established licensing program for the pay TV market.
“The agreement provides for an initial payment upon execution and ongoing payments through the remainder of the agreement,” the joint press release added.
The deal is retroactive to 2016 and runs through 2031.
End of article....
I was able to copy and paste this article.
Refresh my memory;
El Jadida
City in Morocco
Wasn't this posted as the last location of Billy and the settlement?
These are arguements.
Arguements for or against the theory of a pittance, shekels or crumbs, in relation to the settlement.
I think that is what this board argues.
We having varying views points.
No one is going to win or lose on a social media board.
This is a fascinating case.
I hope more post, their thoughts, opinions, news articles and so on.
At some point this will all be resolved!
Who saw who in court is meaningless. Hearsay, weak, but I will believe you!
I could say, I saw Billy in the Bahamas, or Morroco, or Shekelsville, and he spent the entire settlement. Would you believe me? Of course you would, I just said it! Hearsay, no evidence to support the claim though.
I can say, after 6 years of litigation against the 13 major cable companies, Billy, Whitman, Brauerman, lost the case. Maybe Biily and crew settled with the 13, saying, you got us, what terms would you agree to. Speculation and Opinion, documented with no facts. I just said it, must be true.
Maybe opposing counsel said, you pay your own legal fees. Although the patents are legitimate, we will give you a few bucks for them, don't tell anyone we gave you any money, because it would put the cable industry in heavy distress and may distroy they industry. Then the White House would get involved. Opinion and hearsay, backed by no facts or documents. Extremely believable!
I can say, if Spangenberg and Leanne did not pursue international infringement, it goes against what they do. They probably figured, we don't need that money. Hearsay again, maybe a made up Opinion. Yet you should belive me.
I hope Brauerman, Whitman can find work after taking on a case that failed. Who will be willing to hire these folks, who had a golden egg, that just so happened to land in their lap, yet laid an egg in a, settlement agreement!.
Example;
Why did Billy and Brauerman accept a pittance for the settlement.?
No one will give the math to that question?
We know that.
Logic says- Why have a NDA if the settlement is worth, a pittance, shekels, crumbs?
Cisco, CommScope, Comcast, Time Warner, Cox, and so on would probably welcome a pittance and refute damages in the media, as Cisco did as non material, nothing to see here, in their financials. They only make 50 billion a year.
Wait, Comcast is the media.
It's not about getting answers. Rhetorical questions.
Present an arguement.
Watch, read, interprit responses.
It will tell you, all you need to know.
I'm still looking for the answers to the following questions;
Why was a pittance accepted by Billy and Brauerman?
Why were crumbs accepted by Billy and Brauerman?
Why were shekels accepted by Billy and Brauerman?
International stuff is on the table.
I do believe Spangenberg and Leanne are smart, shrewd folks in their craft. Not sure how Billy plays a part here, the shell company?
How did the 13, US cable companies,
convince, Billy and Brauerman to accept the lowest possible settlement imaginable?
What was the settlement formula?
Folks on this board declare, a pittance was delivered, shekls were accepted, crumbs are left over which were negotiated by Billy and Brauerman.
I get the waterfall (that's another story) legal fees should have been paid by the 13. So that frees up 1/3rd of the settlement?
I never brought up Teece...
I opinied general settlement theories.
One must have been reached. Settlement happened.
So which one is it?
I'm just arguing the pittance, schekel theory.
Where is the math, for crumbs?
Where is the settlement formula?
For a mere pittance?
Did Brauerman not fight for legal fees, at one time the team did vs Comcast!
Lawyers fees could have, should have been paid as part of the settlement?
1. Chanbond LLC formed 2014?
2. Ice Web changes to UnifiedOnline in 2015?
3. UO!P designated to a NC undisclosed address.
4. IPnav Spangenberg and Leanne.
5. Leanne Ceo of Ipnav 2013 or 2014?
6. Leanne VP of licensing at Technicolor 2016?
7. Technicolor buys into a division of Cisco set top boxes, for $600 million.
Technicolor's combined unit will control around 15 percent of the market for pay-TV set-top boxes, routers and switches, compared to about 25 percent for Arris-Pace.
By Daniel Frankel
Nov 20, 2015 10:05am
Share
8. Cisco indemnified their clients in patent infringement case. Conflict of interest?
9. . The global STB (set top boxes) market size was valued at USD 22.6 billion in 2020 and expected to reach USD 23.5 billion in 2021.
10. In case you’ve forgotten, former FCC Chairman Tom Wheeler noted in 2016 that the average pay-TV subscriber shelled out $231 a year to lease a set-top box from their service provider. The collective tab for that racket was $20 billion a year.
BY DAVID LAZARUSCOLUMNIST
OCT. 30, 2018 3 AM PT.
11. So how was the settlement decided;
Based on Revenue?
Based on number of units impacted?
Based on relevance of patents?
Based on. Gross sales?
Frand licensing?
Is this global or US only?
12. This all started in 2015, coincidence?
13. Comcast notified in 2012?
14. Patent expiration dates, into the 2030's?
I still don't buy a pittance or schekls, again we disagree, we form opinions and so on.
Direct quote from Zomby,
"How can you argue the settlement is a pittance? Pretty easy. The CBV case and the statement from Billy that her 22% take will use up the balance of the net are dead giveaways in public sources of info. The inventors got their $1 mil, plus as they were contracted-50% of the net settlement."
1. So the settlement was for 2 million dolars?
2. Not my words, my interpretation from what was said.
3. Another direct quote from Zomby;
"While TA's have confirmed 1.6B in the past, Brauerman told me it will be a problem locating all the shares due to poor records. If you are in a major brokerage, that shouldnt be a problem.
4. Why is Brauermann talking to anyone about details of his personal case?
5. So after paying lawyers, Billy is in the negative. Deidre gets nothing? Lawyers are under paid, after 6 years of work, which included fighting one of the most powerful industries on the planet. Cisco said they indemnified their customers in the Chanbond infringement. . Cisco's revenue for 2021, 49.8 billion.
6. Cable companies on average make 80 billion a year.
Seems odd this was all over, maybe $10,000,000 dollars.
My interpretation only. Fun stuff to debate, wild stuff!
Here is a general thought.
1. Why give Deidre a specific amount of 44,500,000 million shares?
2. Why give her 5 million dollars a month, in late fees? A specific amount, if past due?
3. Billy has 900,000,000 million shares, a specific amount.
4. Outstanding share count, of UOIP shares?
5. We all have shares.
These numbers surely weren't grabbed out of thin air?
We are fighting one of the biggest industries on the planet.
Which shareholders won, lots of secrets, must be for a reason.
So this is good substance from Zomby. It is telling a story which we all follow, debate and disagree on.
1. Who made the waterfall agreement, I say Billly and his lawyers did, along with Deidre. My opinion.
2. So Deidre was given 22% in the agreement. So Billy now says in the NC filing, that he wants shareholders to get that amount. That is a clear contradiction. Makes no sense.
3. Now I do belive that Billy would reroute 20% of the settlement to his fraudulent UO!P, instead of shareholders getting that amount. Again my opinion on that one.
4. Deidre says Billy forged documents?
5. CBV says Deidre forged documents?
6. I think Deidre gave away power and control with the 44,500,000 shares of UOIP shares and the 5 million dollar month late penalties. Which pretty much gave Billy power and not her.
So how can anyone argue that the deal with the 13 is worth, sheckles, a pittance, just enough to pay lawyers. The Deidre deal at point number 6, disproves that theory. My opinion.
Factors affecting patent licensing royalty rates
There are a number of factors that can affect what rate can be reasonably proposed for patent royalties. These include:
Whether the licensee has paid upfront compensation
What stage the patent is at
The patented invention’s market potential
The industry
The level of competition in the market
The market size
How unique the invention is
The exclusivity of the patent license
As such, when it comes to determining fair royalty rates, the above factors must be taken into account. Whether you are analyzing transfer pricing, setting royalty rates for a license agreement or valuing a patent, the rate you set needs to reflect the individual circumstances of the patent.
Article – October 2019 | RoyaltyRange
Royalty rates. Again too much info to post.
Yet;
1. So Deidre was consulting Billy and due 22% of settlement.
2. What was Deidre consulting Billy on?
3. My guess is licensing agreements with the 13.
4. Deidre has European ties IPnav and Tivo? And the master Spangenberg, love or hate em, again this is what these folks do.
5. When do patents expire?
6. Brauermann and folks, going international.
Facts, arguements, data, definitions vs an emotional charged post implying that, there is nothing to see here.
IPNav (IP Navigation Group, LLC) is the leader in full-service patent monetization, offering turnkey solutions to patent owners seeking to maximize the value of their IP assets. Since 2003, the IPNav team has negotiated over 600 licensing transactions on behalf of its clients and affiliated companies, producing over half a billion dollars in direct licensing revenue and cash settlements. IPNav’s headquarters is located in Dallas, TX with offices in Dublin, Paris, Shanghai, and Tel Aviv. Follow us on Twitter: @IPNav
Not sure the date on this. Probably predates the current happenings. I would bet the cable companies, deal, dwarfs all previous wins.
Who has the "math" to explain or dispute, how the 13, settled for shekles, a pittance, made just enough to pay lawyers fees. What was Billy's argument, just pay my lawyers? Who has the math, to analyze licensing agreements, and the monetary value of possible worldwide agreements? One who can argue with math, disprove math, or derive an equitable equation with math, would present the best arguement for their, opinion.
Mathematics
MATH: Mathematics
The full form of MATH is “Mathematics“. Mathematics is the science that deals with the logic of form, quantity, and disposition. Mathematics includes the study of topics such as quantity (number theory), structure (algebra), space (geometry) and change (mathematical analysis).
Estimated revenue of U.S. providers of cable and other subscription programming from 2005 to 2020(in billion U.S. dollars)
table
column chart
Characteristic Estimated revenue in billion U.S. dollars
2020 86.25
2019 84.74
2018 91.42
2017 89.1
2016 85.93
2015 82.06
2014 74.4
2013 69.3
So this
6 (page 6 from Judge Andrews)
even if Ms. Leane had the right to veto ChanBond’s grant of a license, that still would not affect
ChanBond’s standing as such a veto does not deprive the patent owner of standing to sue in its
own name. (Id. at 14-15).
“Standing must be present at the time the suit is brought.” Simcom Sys., Ltd. v. Agilent
Techs., Inc., 427 F.3d 971, 975-76 (Fed. Cir. 2005). A patent is “a bundle of rights which may be
divided and assigned, or retained in whole or part.” Vaupel Textilmaschinen KG v. Meccanica
Euro Italia SPA, 944 F.2d 870, 875 (Fed. Cir. 1991). When “a sufficiently large portion of this
bundle of rights is held by one individual, we refer to that individual as the owner of the patent
and that individual is permitted to sue for infringement in his own name.” Alfred E. Mann
Found. For Sci. Research v. Cochlear Corp., 604 F.3d 1354, 1360 (Fed. Cir.
So, Leanne contacts the 13, to reopen discovery. Look up in the bold, Andrews is saying, that Deidre cannot veto, Billy, Chanbond,Uoip from licensing agreements with the 13.
Licensing agreements to the 13 or world wide, is more than sheckles, a pittance, or a settlement so low, why even bother.
The top portion is a snip it from Judge Andrews. April 16, 2021.
People also ask
How much money do cable companies make?
In 2020, American cable and pay TV providers generated a total revenue of 86.25 billion U.S. dollars, an increase from 84.74 billion U.S. dollars in 2019. In addition, the revenue grew consistently between the time frame of 2005 to 2018, amounting to 91.42 billion dollars in 2018.Nov 23, 2021
People also ask
How much money do cable companies make?
How much is the cable industry worth?
b. The global wires & cables market was estimated at USD 183.14 billion in 2020 and expected to reach USD 192.48 billion in 2021.
From Justia,
Royalties and Deductions From Licensing Inventions
Unless an inventor decides to manufacture their own invention, they usually will obtain income through royalties from licensing the invention to other companies. These entities control the manufacturing, distribution, and marketing processes. Royalties are usually measured in terms of net sales. This means that they are a percentage of the net sales derived from the invention.
1. There was a settlement.
2. Royalties, could out weigh the settlement.? There is a debate, arguement.
3. Cable companies are no small French Fries, add Cisco as a side dish, no small fish either.
4. Patents good for 20 years?
5. Meat left on the bone, I would say.
Opinion only.
A patent or invention non-disclosure agreement is a unilateral (1-way) agreement that is used to protect an invention. Due to the confidential nature of an unexecuted idea for a product, an NDA can be essential for an inventor when sharing confidential information to 3rd parties.Dec 17, 2021
1. Lots of info on NDA's
2. Unilateral, Bilateral and so on.
3. Too much to post.
4. What about licensing agreements with the 13?
5. Was it assumed, the patents were sold?
6. Maybe I missed those arguements?
7. Who wanted the NDA, and why?
More here than meets the eye it seems. Opinion only.
1. So this went to the Supreme Court.
2. Lasted 6 years or so.
3. This is the cable industry, beaucoup bucks.
4. So this was all for show.
5. Just to pay lawyers.
6. Maybe give Bill and Leanne got a nice vacation. Maybe Erich a new car.
7. Actually all the money is spent, Bill did that in a weekend or so, if I remember correctly.
8. Now the 13 saved money by not hiring experts.
9. I bet the Supreme Court gives out coupons to lawyers, spend a dollar, get half off.
10. Here is the kicker, so if Billy only got say $10,000,000 or $50,000,000 million, or $100.00 bucks. Why have a non-disclosure agreement over a 6 year period, for a pittance, not my words;
pit·tance
/'pitns/
Learn to pronounce
noun
a very small or inadequate amount of money paid to someone as an allowance or wage.
11. Sounds like Billy got free cable service for life.
12. Those darn definitions.
13. Any documents to support theories are welcome.
Again, a nice debate, I could well be wrong, in my opinion, and without verified legal documents....we are bantering on a social media board, or trying to dictate a narrative.
I agree, without a shareholder lawsuit, zero, would have been our outcome. I've been skeptical at times, which one should be in Penny Stocks. Due diligence is all you can do, and take the risk vs reward, or not!
Which of the following cases can be brought in Delaware's Court of Chancery?
The Court of Chancery has jurisdiction to hear all matters relating to equity. The litigation in this tribunal deals largely with corporate issues, trusts, estates, other fiduciary matters, disputes involving the purchase of land and questions of title to real estate as well as commercial and contractual matters.
Interesting. Good to debate. I'm no lawyer seems intellectual property (equity) would apply here?
People also ask
What does going into chancery mean?
in chancery in American English
1. in process of litigation in a court of equity. 2. in an awkward or helpless situation.
So I am lead to believe, (Definition of lead to believe
: to be influenced to a certain belief because of something heard, seen, or read) So shareholders should believe, any action, by any lawyer, on behalf of shareholders, is hopeless.
This is a rebuttal, that a shareholders voice is, chancery, in a United States Court.
DEFINITION FOR RELEVANCE (1 OF 1)
noun
the condition of being relevant, or connected with the matter at hand:
Some traditional institutions of the media lack relevance in this digital age.
ChanBond, LLC is a wholly owned subsidiary of UnifiedOnline, Inc. (“UnifiedOnline”). UnifiedOnline is a publicly traded company (OTCBB: UOIP).
1.
From Supreme Court documents, see the above.
2. So if I own Uoip shares in a patent infringement case, that Mischon, Whitman, etc (pardon spelling errors, thx) litigated on behalf of UOIP, the parent company, of Chanbond, should I be awarded a monetary award, in the settlement of the 13 major cable companies?
3. Was there an effort to change, decieve, UOIP shareholders with a shell company of Uoip, or was Uoip always a shell company?
I believe these are "relevant" questions in relation to, a shareholders derivative lawsuit.
IN THE
Supreme Court of the United States
————
RPX CORPORATION,
Petitioner,
v.
CHANBOND, LLC,
Respondent.
————
On Petition for a Writ of Certiorari to the United States Court of Appeals for the Federal Circuit
————
BRIEF IN OPPOSITION
————
ANDREA PACELLI
Counsel of Record
ROBERT A. WHITMAN
MISHCON DE REYA
NEW YORK LLP
156 Fifth Avenue, Suite 904
New York, New York 10010 (212) 612-3270 andrea.pacelli@mishcon.com
Counsel for Respondent
WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D.C. 20002
QUESTION PRESENTED
Whether a party dissatisfied with a final written decision of the Patent Trial and Appeal Board has Article III standing to appeal that decision based solely on the statutory provisions of 35 U.S.C. §§315, 318, and 319, regardless of whether the appellant otherwise suffered an injury in fact.
(i)
CORPORATE DISCLOSURE STATEMENT
Pursuant to Supreme Court Rule 29.6, Respondent ChanBond, LLC states as follows:
ChanBond, LLC is a wholly owned subsidiary of UnifiedOnline, Inc. (“UnifiedOnline”). UnifiedOnline is a publicly traded company (OTCBB: UOIP).
TABLE OF CONTENTS
Page
Introduction .................................................................. 1
Statement ...................................................................... 3
I. Statutory Framework ..................................... 3
A. Inter Partes Review Procedure .............. 3
B. IPR Estoppel, Time Bar, and the
“Real Party in Interest” Disclosure
Requirement .............................................. 4 II. Petitioner’s Business ....................................... 5
III. Procedural Background .................................. 6
A. The PTAB Upholds ChanBond’s
Patents ..................................................... 6
B. The Federal Circuit Dismisses for
Want of Injury in Fact ........................... 7
Reasons for Denying the Petition ............................. 9
I. The Question Is Not Properly Presented .... 9
A. The Question Presented Is Premised on an Argument
Petitioner Waived Below .......................... 9
B. Additional Waivers Render This
Case a Particularly Flawed Vehicle ........ 12
II. This Case Presents the Issue in a
Narrow and Unusual Context ........................ 13
A. The Petition Has Limited Effect for a Narrow Group of Third-Party
Patent Challengers ................................... 13
B. The Question Has Little Impact on
Conventional IPR Appeals ....................... 15
(iii)
TABLE OF CONTENTS—Continued
Page
III. The Federal Circuit’s Decision Is
Consistent with Precedent ............................. 18
A. The Opinion Below Is Consistent
with This Court’s Cases ......................... 18
B. The Opinion Below Is Consistent with Other Circuits’ Decisions .............. 22
Conclusion ..................................................................... 25
Again old news.
Supreme Court says Chanbond, "ChanBond, LLC is a wholly owned subsidiary of UnifiedOnline, Inc. (“UnifiedOnline”). UnifiedOnline is a publicly traded company (OTCBB: UOIP).
This is a snip it, from 8/22/2018, I believe?
Facts are hard to erase?