Transfer of Patents and Additional Rights; License Back¶

Assignment of Patents¶

Upon the Closing, Seller hereby sells, assigns, transfers, and conveys to Buyer, or shall have caused its Affiliates to sell, assign, transfer and convey to Buyer, all of its right, title, and interest in and to the Patents.

Assignment of Additional Rights¶

Upon the Closing, Seller hereby also sells, assigns, transfers, and conveys to Buyer, or shall have caused its Affiliates to sell,, assign, transfer and convey to Buyer, all of its right, title and interest in and to all causes of action (whether known or unknown or whether currently pending, filed, or otherwise) and its other enforcement rights under, or on account of, any of the Patents described in Section 3.1, including, without limitation, all of its causes of action other enforcement rights for (i) damages, (ii) injunctive relief, (iii) any other remedies of any kind for past, current and future infringement, and (iv) rights to collect royalties or other payments under or on account of any of the Patents and/or any of the foregoing (such causes of action and other enforcement rights collectively “Additional Rights”) (excluding any Existing Licenses under Section 3.3).

Existing Licenses¶

The transfers of the Assigned Patent Rights pursuant to Seciton 3.1 and 3.2 are subject to (i) any existing licenses (including transferrable licences) or license rights (including any previous license or other commitments made to a standards development organization regarding the Patents) executed prior to the Effective Data (“Existing Licenses”).
Buyer agrees and covenants that if the Buyer sells, conveys title to, or assigns the right to enforce any of the Assigned Patent Rights to a third party, Buyer will bind the third party as well as the Affiliates of the third party with the language of this Section 3.3. Additionally, Buyer agrees and covenants to oblige any such third party to bind any subsequent transferee to the obligations set forth in this Section 3.3.

License Back¶

Upon Closing, Buyer hereby grants to Seller, for the benefit of Seller and its Affiliates, for the lives of all the Patents, as may be adjusted by applicable law, an irrevocable, non-exclusive, sublicensable (as described below), worldwide, royalty-free, fully paid-up right and license under the Patents, to develop, have developed, make, have made, use, have used, sell, offer to sell, import, license, lease, support, install, service, import, export and otherwise transfer or dispose of, directly or indirectly, any product, service, technology or process and use or practice any method in connection therewith (“Seller License”) from the Closing until the last to expire of each of the Patents. The Seller License extends to all Seller Partners, but only to the extent a claim of infringement is alleged to be based in whole or in part on their activities relating to any Seller Products. The Seller License includes a full release from liability for past damages under the Patents of Seller, its Affiliates and Seller Partners.
For the avoidance of doubt, the Seller License includes the right for the Seller and/or its Affiliates to grant sublicenses to (i) users and customers of Seller and/or its Affiliates, in each case to the extent that they use or integrate, directly or indirectly, any product, service, technology or process of Seller or its Affiliates covered, in whole or in part, by a claim in any Patent (singly “Product” and collectively “products”), and (ii) any of Seller’s or its Affiliates’ suppliers, distributors, resellers, partners, manufacturers, and contractors/ subcontractors, in each case, to the extent that such entities make, have made, use, sell, offer for sale, import, lease, support , service, install or otherwise provide, directly or indirectly, any product, service, technology or process covered by a claim, in whole or in part, in any Patent to, by, and/or on behalf of, the Seller or any Affiliate of the Seller, and (iii) to a successor in interest to any Affiliates, business units or product lines of Seller or its Affiliates upon divestment, but only as such acquisition, merger or spin out, and the purchaser of or successor in interest to the divested Affiliate, business unit or product line, as applicable, shall not enjoy any protections under the Seller License in respect to its preexisting business, products or services. The Seller License shall also include the right of Seller or its Affiliates to have Products manufacturered and rendered by one or more contractors for use and/or subseqent commercialization by and/or on behalf of, the Seller and/or its Affiliates in their ordinary course of business.
Buyer perpetually and irrevocably covenants not to assert any of the Patents against Seller or any Affiliate of Seller. Buyer further covenants not to assert any of the Patents against any Entity for infringement by any products to the extent such Entity sells or otherwise supplies such products to Seller or its Affiliates. Buyer perpetually and irrevocably covenants not to assert any of the Patents against any Entity to the extent that Seller’s or its Affiliates’ products, service, technologies or processes form all or part of the assertion of infringement; for avoidance of doubt, such covenant does not apply where (i) Buyer asserts infringement of any of the Patents against a product, service, technology or process that includes Seller’s or its Affiliates’ products, services, technologies or processes, and (ii) such assertion of infringement does not involve Seller’s or its Affiliates’ products, services, technologies or processes.
Buyer agrees and covenants that if the Buyer sells, conveys title to, or assigns the right to enforce any of the Assigned Patent Rights to a third party, Buyer will bind the third party as well as the Affiliates of the third party with the language of this Section 3.4. Additionally, Buyer agrees and covenants to oblige any such third party to bind any subsequent transferee to the obligations set forth in Section 3.4.

Reimbursement¶

Buyer agrees to reimburse Seller, at Seller’s request, for all expenses reasonably incurred by Seller and its Affiliates, either directly or under an obligation to any prior owner of the Patents and its Affiliates, in satisfying any legal obligations or document production required or compelled pursuant to a contractual obligation or by a court of law or other governmental agency as part of a litigation or legal action concerning the Patents and involving Buyer.