Google Inc. et al v. Egger et al

Filing 126

Declaration of Thomas B. Walsh, IV in Support of 124 Memorandum in Opposition to Motion to Dismiss filed byGoogle Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B - FILED UNDER SEAL, # 3 Exhibit C, # 4 Exhibit D - FILED UNDER SEAL, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K - FILED UNDER SEAL, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O - FILED UNDER SEAL, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R - FILED UNDER SEAL, # 19 Exhibit S - FILED UNDER SEAL, # 20 Exhibit T- FILED UNDER SEAL, # 21 Exhibit U - FILED UNDER SEAL, # 22 Exhibit V - FILED UNDER SEAL, # 23 Exhibit W, # 24 Exhibit X, # 25 Exhibit Y, # 26 Exhibit Z, # 27 Exhibit AA, # 28 Exhibit BB - FILED UNDER SEAL, # 29 Exhibit CC - FILED UNDER SEAL, # 30 Exhibit DD - FILED UNDER SEAL, # 31 Exhibit EE - FILED UNDER SEAL, # 32 Exhibit FF - FILED UNDER SEAL, # 33 Exhibit GG, # 34 Exhibit HH - FILED UNDER SEAL, # 35 Exhibit II, # 36 Exhibit JJ, # 37 Exhibit KK - FILED UNDER SEAL, # 38 Exhibit LL - FILED UNDER SEAL, # 39 Exhibit MM, # 40 Exhibit NN, # 41 Exhibit OO, # 42 Exhibit PP - FILED UNDER SEAL)(Related document(s) 124 ) (Walsh, Thomas) (Filed on 7/24/2009)

Google Inc. et al v. Egger et al

Doc. 126 Att. 2

Case5:08-cv-03172-RMW Document126-3

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EXHIBIT C

Dockets.Justia.com

Case5:08-cv-03172-RMW Document126-3

Filed07/24/09 Page2 of 8 Docket No.: EGG.999
U.S. DEPARTMENT OF COMMERC
and Trademark Offic
E0

07-18..2006
FORM PT )-1595 JAWdIVWe) (Re,.(12i)LUV
OPABNo 0651-0027 (evpS51W02) PW8AREWO3

R
linslifi ini ll,Patent

Tab seit/igs 4W*40

V

103276118

r

v

Tro the Director of the United States Patent and Trademark Office: Please record the attached original documents or copy thereof. 1. Name of conveying party(ies): 1 Name and address of receiving party(ies): 2.
Site Technologies, Inc.

3.,O(o
Additional namnes(s) of conveying party(ies)

Name: Address:

Daniel Egger 2027 W. Club Boulevard

[]Yes
0 Merger

S

No

3. Nature of conveyance: 0
EU

Assignment
Security Agreement

C0 Change of Name

City: Durham

State/Prov.: -ZIP.

NC 27705
QDYes CaNo

IXI Other Biof Sale, Assignment & License Agreement Execution Date: September 16, 1998, September 15, 1998

Country:

USA

Additional namne(s) & addmess(es)

4. Application numiber(s) or patent numbers(s): If this document is~being filed together with a new application, the execution date of the application is: Patent Application No. Filing date B. Patent No.(s) 5,544,352 6,233,571 5,832,494
numbers
Ll

______Additional

Yes N No

5. Name and add:ess of party to whom correspondence concerning document should be mailed: Name: STEPHEN R. WHIT Registration Ncj. 34,75 Address: VOLENTINE FRiANCOS & WHITT, PLLC
ONE FREEDOMi SQUARE 11951 FREEDO N4 DRIVE, SUITE 1260

6. Total number of applications and patents involved: I
7. Total fee (37 CFR 3.41):............ $

120.00

Any excess or Insufficiency should be credited or debited to deposit account
to be charged to deposit accoit 8. Deposit account number:

~IAuthorized

City: RESTON
Country: USA
___________

Stt/rv:y500238
ZIP: 20190 (Attach duplicate copy of this page if paying byd(eposll,Ant)

O S HI5SAE-k 9. Statement and sig nature.0 To the best of mny knowledge and belief, the foregoing information istrue and correct and any attached copy Je true copy of the original Document STEf HEN R.WHITT
Name of Person Signing

Jy

'~d

a.
Signature

JULY 11;2dd6
oat;; V

Total number of pages including cover sheet, attachments, and document:
Mall dommerb,11to be recorded with,reqhuired Cvr..tIfra

IDu,.

Mail Stop Assignment RecoMdaton~ Services Director of the United States Patent and Trademark Office P.O. Box 1450, Alexandria, VA 22313-1450

nt

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Case5:08-cv-03172-RMW Document126-3

Filed07/24/09 Page3 of 8

Bill of Sale, Assignment and License Agreement

This Bill of,Sale, Assignment, and License Agreement is made this 14L0%day of September, 1998, (the "Efibctive Date"), by and between Site Technologies, Inc., a Corporation doing busmu'ess in California ("Seller"), and Daniel Egger, a resident of the State of North Carolina ("Buyer"). WHEREAS Seller has agreed to sell,and assign to Bluyer and Buyer has agreed to purchase and accept from Seller, certain intellectual property, software, data bases, and physical assets, defined below, for the consideration and terms set forth herein; and WHEREAS Seller has in addition agreed to license certain software, defined below, as to which Seller desires to retain ownership but is willing to grant Buyer a perpetual, nonexclusive license, for the consideration and terms set fdrth herein; NOW THEREFORE, for good and valuadbI6 consideratibih, the receipt and sufficiency of which are hereby acknowledged, it is hereby agreed-as follows: I1. Purchased Assets. The "Purchased-Assets" shall include the following:

(a) PATENTS: U.S. Patent Number 5,544,352, filed June 14, 1993 (i.e., the "V-Search PaLent"), and any additions, continuations, continuations in part, divisions, or extensions, reissues, renewals, or sub9tit 'utions of such patent (including the "Aha Patent"), and any foreign counterpart of any of the foregoing, as well as all related documents and diagrams in the files of: patent counsel; (b) TRADEMARKS and COPYRIGHTS: All Sellbres fights in "V-Search,." "Alia," "Libeitech," and any terms used in or'associated with the "V-S.earch Publisher's Toolkit" as well, as all logos and marketing and promotional material incorporating such marks; (c) SOFTWARE and DATABASE.St all software, whether source code or compiled, and all databases, associated with the V-Search data-visualization system or the Aha technology, icluding but not limited to all file 'scontained on Drive D of the computer being conveyed as part of the sale (and reproduced in a separate set of tipe backups), and enumerated in the memo prepared by Ron Sauers entitled "HIGH-LEVEL SUMMARY OF THE FILES CONTAINED ON DRIVE D:," attached hereto as Exhibit B and hereby incorporated by reference into this document; (d) THIURD-PARTY LICENSES: rights to all license agreements, including the Folio Irifobase liense, obtained to generate ahd use the SOFTWARE and DATABASES enumerated above; (e) PHYSICAL ASSETS: Extant copies of CD-ROMs-and disks prepared for' demonstrations of the V-Search.technology, extant copies of the V-Seaich Publisher's Toolkit, extant
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mnarketing materials, sales notebaoks, etc., relating exclusively to the V-Search and Aha technologies - as well as the computer and backup tapes upon which the SOFTWARE and DATABASES enumerated above reside, and-

(:o

GOODWILL and CLAIMS: Any and all goodwill, and all claims and

potential claimis relating to the Purchased Assets described above. 2. Seller warrants that it hereby transfers good and marketable title to the Purchased Assets, free andL clear of all liabilitiesi mortgages, liens, pledges, charges, security interests, encumbrances. or title retention agreements of any kind or nature. .1. 'Except for the'foregoing warranty of title, THE PURCHASED ASSETS AND THE LICENSED SOFTWARE ARE PROVIDED "AS'IS - WHERE IS" AND WITHOUT ANY WARRANTY DF ANY NATURE WHATSOEVER, IT BEING EXPRESSLY UNDERSTOOD AND)AGREED) THAT SELLER DISCLAIMS ALL OTHER WARRANTIES INCLUDING, BUT NOTI.LIMITEr) TO, WARRAN TIES OF MERCHANTABILITY, NONINFRINGEMENT AND FITNESS FOR A PARTICULAR PURPOSE.4. Buyer assumes no liabilities of Seller associated with the Purchased Assets or Licens;ed Softw are or the operation of the businesses relate d thereto prior to the Effective Date. Seller agrees to defend, indemnify', and hold Buyer harmless -against any and all liabilities associated with the Purclused Assets or Licensed Software that arise prior to the Closing that may be asserted against Buyet after the Effective Date, provided (i) Buyer notifies Seller promptly in writing of such claim, (ii) Seller his sole control of the defense and all related settlement negotiations, and (iii) Buyer provides Seller with all reasonably necessary assistance to perform the foregoing. In no event shall Seller be liable under the foregoing for a claim based on modifications, adaptations or changes t6 the Licen sed Software not made by Seller or for combinations of the Licensed Software with materi.als not fLnished by Seller if such infringement would have been avoided but for such combination. Buyer agrees t6 defend, indemnify, and hold Seller harmless against any and all liabilities associated with the Purchased Assets that arise after the Effective Date, provided (i) Seller notifies Buyer promptly in writing of such claimn, (ii) Buyer has sole control of the-defenge and all related settlement negotiations, and (iii) Seller provides Buyer with all reasonably necessa*ry assistance to perform the foregoing. 5. TN NO EVENT SHALL THE MAXIMUM LIABILITY OF EITHER PARTY ARISI'NG UNDER THIS AGREEMENT EXCEED THE AMOUNT PAID BY BUYERHEREUNDER, IN NO EVENT SHALL EITHER PARTY BE LIABLE TO.THE OTHER PARTY FOR ANY LOST DATA OR CONTENT, LOST PROFITS'OR FOR-ANY INDIRECT, INCIDENTAL,, SPECIAL, CONSEQUENTIAL, EXEMPLARY OR PUNITIVE DAMAGES ARISJ:NG OUT OF OR RELATING TQ THE PURCHASED ASSETS OR LICENSED
SOFTWARE PROVIDED HEREUNDER, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, AND NOTWITHSTANDING THE FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY.

6. Purchase Price. In consideration of the Purchased Assets and the Licensed Software provided hereunder, Buyer shall pay Seller $100,000, payable in Uil on the Effective Date hereof.
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7. Licensed Software. Buyer and Seller are aware that several components of Seller's software know'n as "SiteSweeper" are shared with the Purchased Assets. Seller hereby grants Buyer a perpetual, worldwideJuilly paid, nonexclusive license to copy, display, perrm create derivative works, distribute and otherwise use th6 Licensed Software, in source code form, solely in conjunction with the Purchased Assets. "Licensed Software" shall mean: (a) (Ib) (c0) Site Sweeper. Seller shall retain ownership of all copyrights and other rights in toe.Licensed Software, except that although the Licensed Software is us d in certain of the Purchased Assets, Seller shall have no own6orhip ifiter6st in such Purchased Assets. 8. further Assurances. The "crawler" used to build Aha databases; HTI4L Reporter - the reporter engine plus ISAPI extension; and Miscellaneous utility files used by V-Search and/or Aha and also found in

(a) Seller agrees to instruct patent counsel, Dorsey and Whitney of Washington, D.C., that Seller has assigned to Buy.erall such patent rights described above and such counsel is authorized and directed to make available and/or to deliver to Buyer all Seller's records relating to such patent rights. Buyer may provide a copy of this Agreement to such counsel and'dhis Agreement shall constitute Seller's authorization to release such files to Buyer. (b) Seller agrees from time to time, upon the request of the Buyer, to execute, acknowledge, and deliver all such further instruments, or perform such further acts, as may be necessary, in the opinion of the Buyer, in,connection with -the.sale, assignment, conveyance, transfer and delivery of the Purchased Assets or the Licensed Software. 9. Teniatio. Either party may terminate this Agreement in the event of Any material breach of the terms and conditions of this Agreement by the other party, which default continues in effect: after the defaulting party has been provided with written notice of default and thirty (30) days to cure such default. Sections 1, 3, 4, 5, 6, 9 and 10 shall survive any termination of this Agreement. 10, this Agreement, including the exhibits attached hereto, constitute the entire agreement and understanding of the parties with respect to the subject matter contained herein and supersede or cancel all prior agreements respecting such subject matter. This Agreim6nt may be amended only by a written instrument executed by all the parties or- their successors or assigns. This Agreement shall inure to the benefit of and be binding upon the parties hereto and their successors and assigns. In the event. any provision of,this Agreement shall be held.to-be invalid, the remaining provisions of this Agreement shall be unipaired g4hd the piarties'willsubstitute &new enforceable pro ,vi:sion of like economic intent, and effed. This Agreenment may be executed in one or more counterparts an d each counterpart deemed dn original. This Agreement may also be executed and
CASC,,IIINDOWS\TEMP\SiteTechamignmedtd4oc
.-

3-

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delivered in couinterparts executed and delivered via.facsimile transmission, and any such counterpaqt sha)l be deemed an original for all intents and purposes.

Case5:08-cv-03172-RMW Document126-3

Filed07/24/09 Page6 of 8

IN WITbSHEREOF, theparties have caused this Agreement to beexecuted asolfthe EffectieD
Buyer:__

Danel Egge

I6 '18

Date:

'

t /S 79ir

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EXHIBIT A ASSIGNMNENT OF PATN WHEREAS the undersigned SITE TECHNOLOGIES, INC., aPCalifornia corporation ("Assijgnor"), is the sole owner of Patent number 5,544,352, issued August 6, 1996; WHERE?AS DANIEL EGGER, a resident of the State of North Carolina having his principal residence at 2027 W. Club.Boulevard, Durham, NC 2t705 ("Assignee"), is desirous*of obtaining the entire right, title and interest in, to and under the said Patent; NOW THEREFORE, in consideration of the sum of One Dollar ($1.00) tothe undersigned in hand paid, and other good and valuable consideration, the receipt of which is hereby acknowledged, the undersigned, the said Assignor, has sold, assigned;, transferred and set-over, and by these presents does hereby sell, assigni,'tranisfer and set over, unto the said Assignee, its successors, legal representatives and assigns, the entire right tile and interest in, to and under the said Patent and all divisions, renewals and continuations thereof, and all issuews and extensions thereof, itid all applications for industrial property protection, including, 'without limitation, all applications for patents, utility models, and designs which may hereafter be.filed for the invention(s).claimed in such Patent in any country or co 'untries foreign tothe United States, together with the right to tile such applications and the right to claim for the same the priority. rights derived from said United States Patent under the Patent Laws 6£ the United States, the International Convention for the Protection of Industrial Property, or any other international agreement or the domestic laws of the country in which any such application is filed, as may be applicable; and all forms of industrial property protection, ificluading, without limitation, patents, *utilitymodels, inventors' certificates and designs which. may be granted for said inventions in any country or countries foreign to the United States and allI extensions, renewals and reissues thereof, AND THE UNDERSIGNED HERESY authorizes and requests the Commiisioner of Patents and Trademarks pf the United States, and any Official of any country or countries foreign to the United States, whose duty is to issue patents or other evidence or forms.of industrial property protection 'on applications as aforesaid, to issue the same, to the said Assignee, its success 6 rs, legal representatives and assigns, in accordance with the terms of this instrument;' AND THE UNDERSIGNED HEREBY covenants and agrees that it has Rill right to convey the entire interest herein assigned,'and that it ha's not executed, and will not execute, any agreement in conflict herewith; AND THE UNDERSIGNED HEREBY further covenants and agrees that it will corn___________________________________and

assigns any facts known.

ATTEST:

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Case5:08-cv-03172-RMW Document126-3 Z n i-7z=ri.Secretary ;n

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CASf-.IW1NDOWS\TM4M\itaTech.usiupnmt.doc

IPATENT

RECORI)ED: 07113/2006

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