Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 847

Administrative Motion to File Under Seal Samsung's Opposition to Apple's Motion for Partial Summary Judgment filed by Samsung Electronics Co. Ltd.. (Attachments: #1 Trac Declaration in Support of Motion to File Under Seal, #2 Samsung's Opposition to Apple's Motion for Partial Summary Judgment, #3 Hecht Declaration in Support of Opposition to Motion for Partial Summary Judgment, #4 Ex A, #5 Ex B1, #6 Ex B2, #7 Ex C1, #8 Ex C2, #9 Ex D, #10 Ex E, #11 Ex F1, #12 Ex F2, #13 Ex F3, #14 Ex F4, #15 Ex G, #16 Ex H, #17 Ex I, #18 Ex J1, #19 Ex J2, #20 Ex J3, #21 Ex J4, #22 Ex J5, #23 Ex J6, #24 Ex J7, #25 Ex J8, #26 Ex J9, #27 Ex J10, #28 Ex J11, #29 Ex K1, #30 Ex K2, #31 Ex K3, #32 Ex L, #33 Ex M, #34 Ex N, #35 Ex O1, #36 Ex O2, #37 Ex P1, #38 Ex P2, #39 Ex Q1, #40 Ex Q2, #41 Ex Q3, #42 Ex Q4, #43 Ex Q5, #44 Ex Q6, #45 Ex Q7, #46 Ex R, #47 Ex S1, #48 Ex S2, #49 Rosenbrock Declaration in Support of Opposition to Motion for Partial Summary Judgment, #50 Ex 1, #51 Ex 2, #52 Ex 3, #53 Ex 4, #54 Ex 5, #55 Ex 6, #56 Ex 7, #57 Ex 8, #58 Ex 9, #59 Ex 10, #60 Ex 11, #61 Ex 12, #62 Ex 13, #63 Ex 14, #64 Ex 15, #65 Ex 16, #66 Ex 17, #67 Ex 18, #68 Proposed Order Denying Apple's Motion for Summary Judgment, #69 Proposed Order Granting Samsung's Administrative Motion to File Under Seal)(Maroulis, Victoria) (Filed on 4/2/2012) Modified on 4/3/2012 Attachment #1 Trac Declaration placed under seal. Posting of attachments #16, 18, 19, 20 through 33, 37, 38, 47 and 48 are NOT in compliance with General Order 62 (dhm, COURT STAFF).

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EXHIBIT 8 European Telecommunications Standards Institute ETSI 9th General Assembly Nice, 20-21 November 1990 ETSI/GA 9 (90) 9 Date: 16 November 1990 Source: IPRC Chairman Title: Intellectual Property Policy and Prodecures Document for: Information and Discussion Note from the ETSI Secretariat: The attached document, which is a contribution from Mr. R. Nicholson, IPRC Chairman, is an amended version of the document submitted to the 7th Technical Assembly under the reference TA 7 (90) 31. D/524/90/DG/skw Confidential Business Information, Subject to Protective Order S-ITC-003390461 ¢~23 5N2 F~ESSAGE TO: Prof Sagliardi Director 15 November 1990 SUSJECT: £TH eENERAn ASSE~BLEY IP POLler ~D P£--dCEDURES Please find enclosed a copy of the subi~ect document for submission to GA9 as my contribution÷ It is my opinion that apart from the following matters, this paper would be generally acceptable to the majority of the IPRC:~ a~ b~ C~ d~ It is considered that the arbitration provisions should be deleted because disputes between members are a matter for the members. It was concluded that essentiality is a matter for ETSI and not an arbitrator. Thus any disputes concerning essentiality should be settled by ETSi and the members concerned. Since decisions are only binding on the parties to the arbitration, different decisions may therefore arise concerning the essentiality of the same IPR. The manufacturers are concerned that operators will use their purchasing power to obtain licences in respect of non-essentia! IPR and have suggested the inclusion of a clause to prevent this (ie clause 5.!0 of the IPR Undertaking). The operators on the other hand feel that ETSI should only concern itself with essential statutory iPRs because the principle provisions o£ the agreement only relate to such IPRs and are of the opinion that clause 6.10 should be limited to essential statutory IPRs. The extent to which the licence~.~anbe extended to allow the operator to use outside the territory equipment manufactured under licence in the territory, is still a contentious issue. The operators have stated that a viable off-set for this would be the freedom for manufacturers to manufacture components, sub-systems or the like outsi@e the territory. The territorial extent of, a~d the consideration for, the licences are still areas o£ dispute. With kind personal regards rs sincerely ~ EUROPEAN TEL?$QMM~jNICATIONS STANDARDS INSTITIJT~ Ifl,..qT]]UT EIJROP~EN 0[~ NORMES DE T~LECOMMUNICATiON ~UROPAI,SGHES INS""~Tu’T FO~ TELEKOMMLJNIKATION$,~TANOARDS Postal add~e.s$ t ETa! ’B. P. 152.- F-055’61 "i&lbot~,ne C_..,e(J#× FRANCE O~[ce :~,","J~ress t Route des LuCi0!e~ SophiaoA,qt~po’~, V~;b0nne ,FRAt4C~ Confidential Business Information, Subject to Protective Order 7e]. : + 3392 94 42. OC, ’Teief~ : 4. 3.3 93 55 47 !.~ ÷ 33 93 65 28 !7 T61eX ; ~.70 [.)40 F S~RET ~ 348 653 5~2 0001. S-ITC-O03390462 Amended Version 2 Amended 15.11.90 4302s I~AL~~7 POLIC~ -1- Confidential Business Information, Subject to Protective Order S-ITC-003390463 4302s I~TRODOCTZq ii I.i Tae General Esse~bly has recognined that the generation of European Telecomaunications 8taadards (ETSs) may give rise to intellectual property problems and has, ~erefore, esta~llshed an Intellectual Property Rights Oommittee (IPRC) to advise ETSI and its members. 1.2 The IPRC has formulated an Zntsll~ual Property Policy (IPP) for the benefit of ETSI members and ImgBo-mlbillty for the operation of this policy is vested i~ the IF%~C. The IPRC shall be responsible for r~zcamendlng changes to the policy pursuant to in the legal and commercial environment for ratification by the General ~Sambly. POLZC~ OBJECTIVES In pursuance of Article 2 a/ld 3 of the E2SZ S%atutes, the main policy objectives Of ETSI in relation to IPRs are to ensure that. 2.1 2.2 ETSs shall be based on sol~tions ~ich meet the stated technical objectives but a draft BTS s~Kll not be adopted if it is subject to any IPRs for which licenc~ are considered by ETSI to be needed but are not available, on fair,~ reasonable, and non-discriminatory te~s told which’lIE~n~es" ~’%~e~x’~otality are non-prohibitive; 2.3 the investment made ~ ETS~ ~a~ers anti their affiliates in research and development, u~ilised in the establistment of ETSs, shall be adequate!y and £alr~y rewarded. 2.4 m intellectual property righ%s(ZPRs) eo not ~nreasonably hinder the manufacture, sale, supply o ruse o~sys%e~s, equipmemt or services in compliance with ETSs; all ETSI me~ers have real access to telecommunications markets, equivalent to that of j!tdigenmls commercial enterprises, in all countries adopting and implementing ETS~. IPR UNDERTAKINGS S.I As a condition of being, or~ontln~ing to be, a member of ETSI, all members must ~rovide an IFR %tudertaking in the form shown in Appendix "A" zncluding its Annexes whicll is an integral part of this Policy. This IPR ~nderemking is intendea to ensure that IPRs are not employed unreasonably to prevent the adoption of an ETS by ETSX, an~ that ETSI members can cooperate freely an~ without risk in achieving ETSI’s stated objectives and in the develo~ent of co~mon ETSs. 3.2 The I~R undertaking referre~ to in paragraph 3.1 above shall, on signature, apply to all ETSZ standards and supersede any previous undertaking given to ETSI relating to standards for which ETSI is responsible. Confidential Business Information, Subject to Protective Order S-ITC-003390464 3.3 Members of ETS~ shall sign the ~ndertaking referred to in paragraph 3.1 above wi~hln 6 months of a request in writing from ETSI so to do. The proceedings of a Technical Committee (TC) Qr Sub-Commlttee (STC) or any part thereof shall be regarded as non-confldential except as expressly provided below and all information st~zitted to a (TC) or (STC) shall be treated as if in the public domain and shall De available for p%blic inspection unless it i8 identified i~ writing by the originator as confidential at the Sate of submisslon. Proceedings of a TC or STC which relate to confidential informatioll disclosed to the STC or TC shall if minuted to t3at efEect be regarded as confidential themselves. o OWNERSHIP 0F IPRs 5.1 Subject to paragraph 5.2 below, BTSI shail not seek to own IP~s other than those generated by its employees or by secondees to ETSI from non-commerclal or~anisations, such as universities. S.2 The o, nership of t~e copyright subsisting in standards documentation and reports created by TCS or STCs shall vest in ETS! but due acknowledgement shall be given to copyrights owned by third parties that are ideatifSable in ETSI ¢opyrighte~ works. 5.3 Subject to para91-aph 5.4 below, enforcement of IPRe owned by ETSI shall be at the discretion of the IPRC and subject to the approval of the General Assembly. 5.4 Except as provldaa ~u para~aph 5.2 above IFRs owned by ETSI shall De made available, as of riSht and free of charge, to ETSI members bY way of a licence. 5.5 ETSI shall, subject to any o~ligation of confidentiality, permit its M~BER$ and their affiliates to reproduce its technical reports and standards specificatlons whether in draft or final form for their own internal ~e. 5o5 ETSI shall, subject to any obligation o£ confidentiality, distribute unofficial ETSI dDculents only to MEKBERS and their affillates, observers, an~ countellors. 5.7 ETSI my conclude agreements with governmental ~dies, public telecommunications operators, industrial associations, teleco~municatlons users associations, and ~ational or regional standards bodies pursuant to which ETSs, draft ETSs, I-ETSs, and ETS~ technical reports may be supplie~ to such bo4ies under conditions of confidence or otherwise. -3- Confidential Business Information, Subject to Protective Order S-ITC-003390465 In accordance with paragraph 2.1 of the PolicT, llcances granted pursuant to the IPR Undertakin~ shall be an fair, reasonable and non-discrlmlnatory terms. It is recommended that llcances 9zanted pursuant to the IPR Undertakings should De in the form annexe~ to,he ~ndertaking set out in Appendix "A" attached hereto. Licensors of essential intellectual propertl rights, who are signatories of the ~ndertaking referred to lnlparagrapI~ 3.1, shall in setting royalty rates take into account that the~xlm~cumulative royalty due in respect of essential IPRs for a particular product or method shall not exceed a predetermined level set by BTSI in accordance with its Rules of Pr~edure, above which level the cumulative royalty is deemed to be prohibitive, that is to say to have the effeut of preventing licensees from conercimlising such produ~or aet~od. 3TSI shall determine the level of the maximum cumulative royalty applicable to such ETS, taking into account normally accepted maximum royalty rates for the type of equipment an~/or me~hods in the f~el8 of the ETS a~d consisteat with pr~iding a fair reward for II~ based on R and D necessary for creating the technology underlying the ETS. m PROCEDURES 7.1 :. , Zn order to facilitate the pSovisi~U of advice on IFR matters to the TCs and/or the STCs, the IPRC will have a Sub-Committee for each of the TCs and each of~hese $ub-Commlttees will: be will be responsible Ca)Totchaired by a eeaber.of the IPRC who to wh~Chhis iiaising with the Chairman Of ~he TC Sub-~mmittee has bean assigned. have a modus operandi deteFaine4 by the IPRC which will ratify and have final responsibility for any actions taken and/or advlcs glvenl~f~he Sub~mmlttees. (C) ¯ make a llst of essential IFRs .hich might obstruct ETSs, and will pass copies of su~ list on a confidential basis to all ~TS~ ~em~ers .... 7.2 ETSI members who disclose information to TCs or STCs shall bear the sole responsibility for taking appropriate measures ~or securing the IPRs they desire in relation to such information prior to disclosure. 7.3 Any document su~nitte4 to a TC or STC containing information which the originator regards as confidential shall be clearly marked as such and any oral statement made to a TC or STC which is regarded as confidential must be identified before disclosure in non-confidential ter~s aad re~ord@~ in the miautes in such terms. ETS7 members who are procurers an~ vendors of equipment specified by reference to an ETS shall equitably share their risks associate~ with infringement of essentia! IFRs which are unidentifie~ prior to the ~ate on which a procurement contract price is binding on the vendor. Confidential Business Information, Subject to Protective Order S-ITC-003390466 7.5 ETS[ shall, to the extel%t t~at it ~ able, ensure its m~J~ers ca~ obtain licences on fair, reasonable and non-discriminatory terms pursuant to essential IPRs, Im particular third party essential IPRS. If a me~ber of ETS2 is ~%able to obtain a licence on fair, reasonable a!%d non-discria!natory ter~s pursuant to an ZPR which is essential to a standard, ETSI shall take i~mediate steps to ~>dify the standard so that such IPR is no longer essential or shall withdraw the standard. ,~, ~ISPUTBS_ In the event of a dinlmte or difference between t/~e SIGHATORY, and a signatory of an eq~ivaleat tmeertaking mutatis mut~Idis arising o~t of or in connection with the UNDERT~/~NG, its interpretation, or application, the parties to the dispute shall first use their best endeavours to settle thQ displte or dif~ere£ce amicably within a period of 3 months after one party has announced in writing to the other that there exists a~ dispute or difference. 8.2 all disputes or differences whlch carmot he settled as provided for in clause 8.1 above shaZl be finally settled by ad hoc arbitration by three arbitrators. One arbitrator shall be appointed by each party to the dispute, and the third arbitrator, who shall act as Chaira~n, shall be appointed by the two first appointed arbitrators. If the firgt ppoi~ted a~bitrators fail to agree two a upon the third arbitrator wi~ 6 W~J~s of the appointment of the second o~ the first two arbitrators, the thir6 arbitrator shall be appointed by the Director of ~T$1. The Chairman of the arbltratio~ panel shall have proven axperiQace in the issues in dispute. 8.3 The arbitrators e~]! follow tAe n~"of conciliiation an--d’ arbitration of the %~ternatio~%l .Chamber of Commerce in its edition current at the time o~ arbitratlon without involving the International Chamber of commerce in administrative matters. 8.4 If there be more ~21an o~e part~ on one, or on both sides, all parties being o~ one side shall ac~ ~ointly and unanimously as a 8.5 single party for the appointae~t of arbitrators and a~y other actlv~ties in the course of arbitration. The arbltr~tors shall use thei~ best efforts to give their final Judgement ~ot later tha~ s~x ~onths ITom the date on which the third arbitrator has been appoiuted. 8.6 Unless otherwise agreed, arbitrators shall have their meetings and hearings in Sophia-A~tlpolis, France. 8.7 The award of the arbitrators shall be final and binding upon the disput i~g parties. 8.8 Issues of IPR infringement and validity shall not be decided b~ the arbitrators, however decisions relating to the ESSENTYALITY of an ~PR ~y be made, as between the Iklrtles, by arbitration and shall be ~ade available by the parties to ~TS~ ~or distribution to all members together with the reasons for ~he arbitrator’s ~eclsion. Confidential Business Information, Subject to Protective Order S-ITC-003390467 If and as long as the SISNATORY is not permitted by law to be a par%y to arbit;ation and a ~ispu~e arises out o£ this Policy which involves the SIGNATORY, the~ suc, h dlsp~te shall be submitted to the jurisdiction of a competent court. 8.10 The costs of arDitratlon shall be Dome ~ the parties thereto and appo~tloned as the arbitrators shall dlr~-t. gQ LAW AND ~TION This policy shall al~ays be opera%ee in a manner which complies with the law and r~tion of the countries in which BTSI members are resident, and where appropriate with the law and requlation of the Buropean Econoaic Community or the Europea~ Free Trade Association. io. PENALTIES Any ~)~’e.ach of this policy by an ETSI member shall be deemed to be a breach, bythat member, of the ETSI Statutes. "’6 m Confidential Business Information, Subject to Protective Order S-ITC-003390468 APPENDIX A This undertaking is given this ....... day of .......... by ...... ... (hereinafter referred to as the SIGNATORY.) who~e registered office is situate at .............. , to the EI~0P~ ~ZCNtT~OHS STANDARDS ~NSTITI;TE whose registered office is situate at Route de8 Lucloles Sophla-Antipolis, Val~onne, France (herelnaftar referred to as ~TSI). 2. 3, The SI~ATOR~ is a member of ETSZ, and fully committed to the objectives of ETSI. The objectives of ETSI are set out ~n Articles 2 aIl~ 3 of the Statutes o£ ETSI. The SIGNATC~X is prepared to grant certain licences which are necessary to furth6r the ob3ectlves of ETSI. The SIGNATORY therefore under~lkes as follows:I. DEFINITIONS The words and phrases set out below shall haw the follc~ing m~anings ascribed to them for the purposes of the U~I11B~r!~G~1.1 "TBZ 8~D~ING" shall ~ this un~er%aklng including any amen~en~s" ~d mo~ificatlons tie£eo~." 1.2 "ST£TUTORX IFR" shall mean any intellectual property right crutedby statute law including applications therefor other ~han trademarks. For the avoidance of doubt rights relating to get-up, confldent~alinforma~ion, ~rade secrets or the like are excluded from the definition o~ STATUTORY IPR. 1.3 RI~I~D~’D (S’~TU~R~) I;~s shall zean STAT~TOR~ l~Rs recorded in an official register including patents, registered desig~s and ~il~t~ ~odels and shall include a~pli~ations therefor. 1.4 ~STAhr~AP~" shall mean any standard including o~ions contained therei~ or amended versions anS shall include ~uropean Telecommunications Standards (ETS), £nteri¢ ETSs, l~ormes Europeenes des Telecommunication (~ETs) and drafts thereof, the technical specifications of which are available to all members of ETSI and are agreed and ~romulgated by ETSI. The date on which a STRh~D is considered to be a4opted by ~TSI for the parposes of this UND~E"2AI<ING shall be the date on which the t~hnlcal specification of that ~T~DARD was available to all ETSI members. -7- Confidential Business Information, Subject to Protective Order S-ITC-003390469 1.5 "TERRITORY" shall mea~ tony and all countries: whose national adminlstra%ion for telecommunications is, at the date of a request By a USER pursuant to clause 2.1 below, a muber O~ ETSI, or in which an o~f£¢iall~ recognised national standardization body has formally adoVced ~he STE~RD and in the opini~ o~ ETSI the STANDARD has been £mpl~ented in that country, or in which, in the opinion of ETSI, a major tele~mm~i~ations network operator ~as, or is about to, pr~,~re, on a substantial scale, equipment to a s~clficatlou ~liant with that STANDARD. "USE" shall mean ~VW,~, sell, lease, or otherwise ~ispose in raw T~RI~ of ~UIP~NT so ~t~.tTUFACTUR~ and repair, use, or operate NAN~A~ EQUIPKENT anywhere or use or operate ~F2HODS in t~e TERRITORY. 1.7 "USER" means any competent legal entity and AFFILIATES thereof who is a me~oe~ of E~SI, or who has given an undertaking to STSI of ide~tlcal effect, mutatis mutandis to the UmUEETAKING, for so lon~ as Its undertaking is in force. 1.8 ~UIP~IB~T and ~" s~all mean any system, device, method or operation tu~l~ confor~n~ to a sz~n~P~. 1.9 "ESSENTIAL" as applie~ to ~TA~JT~ IPR means that it is not possible on t~J~nical $zo~ads to ~ak~, use, lease, sell, operate or dispose o~ ~;IP~NT or ~2HOD$ which comply wit~ a STANDARD without infrlngi~ that STATUTORY IPR. For the avoidance of doubt where a ST~ can only be implemented by technical solutions, all of which are infringements of STATUTORY ~, all such STATUTORY IPRs shall be considered ESSENTIAS. l.lO "AFFILIATE" of a firs% legal ~tity means: any other legal eRtit~ directly or indirectly owning or controlling the first legal entir~y or under t~e same dlrect or indirect ownership or control as the first legal eatity, or Confidential Business Information, Subject to Protective Order S-ITC-003390470 directly or indirectly owned or controlled by the first legal entity, for so long as such ownership or control lasts. Ownership or control shall exist through the direct or indirect~ ownership of ~ore than 50% of the nominal value of the Issu~ aqulty share capital or o£ more than 50% of the s~ares emt~tling the holders to vote for the election of ~irectors or persons performing similar functions, or right by any other means to elect or appoint directors, or persons who togetaer can exercise such control. k state, a division of a state or other puDlic entity operating under public la., or any legal entity, linked to the first legal entlt~2 solely throWh a state or any division of a state or other p~blic entity operating under public law, shall be deemed to fall outside the definition of an AFFILIATE. "MANUFACTURE", shall uan production of EQUIPXENT in the TERR.~TORY in accordance wlth Regulation [~C) No 802/68 and 1318/71 as amendeg from time to time - sOn the common definition of the concept of the origin of goods". 1.12 "INFORMATION" shall mean all information disclosed directly or indirectly to ths $~6~ATORY or any of its AFFILIATES in connection with work carried out under the auspices of ETSI by any member of ETSI participating in standardisation work, or by ETSI itself ~Ich that member or ETSI has indicated in writing to be confidently1. I.ii . The SI~AT~Y hereby under~akeE o~ behalf of itself and its AFFZLIATgS o~ request by any USER to grant non-exclusive licences to ~hat USER under and in accordance with any ESSF~TIK5 E~!~_~"6TQR~ IPR which it or its AFFILIATES own (including, ~uD~ect to clause 5 below, jointly owned STATUTORY I..Z~) or control other than STATUTORY IPRs which it has notified to ETSI p~rsuant to Clause 3.1 below in accordance wi~-~ the terms an~ conditions of the U~DERTAKIN~. Such licen=e~ ~mall he in the form set forth in Annex 1 attached hereto unless either the USER or SISMATORY objects. Where the ~otal royalties payable for ~QUIP~ENT an~ METHODS in respect :., ;~ISEI~TIP~L STATUTORY ~PR relatin~ to a particular ~T~NDARD excee~ the maximum cumulative royalty set by ETSX in accordance wit/ paragraph S of the Policy, the S~GNATOR?, if it is the owner of a relevant ESSENTIAL STATUTORY £PR, hereDy undertakes on behalf of itself and its AFFILIATES, on the request of ETSI, to enter m~iti-lateral negotiations with other owners of ESSENTIK5 IPRs relating to that STAN~, and ETS~, to agree reductions in royalty rates on all licences grants4 or to De grante~ in respect of s~ch ESSENTIAL STKTUTORY IPP, s, 2.3 The obligation set ~orth in clause 2.1 above shall only apply to STATUTORY IPRs created during or prior to any period in -9- Confidential Business Information, Subject to Protective Order S-ITC-O03390471 whic.5 a USER is bound by all the terms and conditions of an undertaking to ETSI, identical, mutatis mutandis, to the UMDERTAKINS. For the purpose of this paragraph and clause 8.3.2, the ~ate of crQation of a REGISTERED STATUTORY IFR shall be the date on which the first application for said REGISTERED STA~ IPR Was made anywhere in the world, and the date of creation of all other STAGY IPRs shall be the date on Mii¢3 the i~tallectual property to which said STATUTORY IPPa relate came into existence. 2.4 The obligations set forth in Clause 2.1 shall cease when an ESSEnTIaL ST!~T~X IFR ceases to be ESS~TIAL by virtue of a change in the technical spe=iflcation of a STANDARD or virtue of a c/range in the scope o£ protection of such ESSENTIAL ST~~ Z~R, provided that a USER shall be granted a licorice pursuant to clause 2.1 to the extent necessary to edible hlm to meet all commitments existing to third parties prior to the date of c~ange in the STA~tRD. All licencea in respect of an ESSENTIAL aT~TUTORY IPR granted prior to the date on ~ich that ~SK~TIAL STATUTORY IPR ceases to be F~ENTIAL s~!_l continue to the extent that the licensee’s prior commitments or serious preparations to use, or actual use ~uld be unreasonably prejudiced by termination. 2.5 W~ere a legal entity has, pursuant to clause 3.1 indicated 2.7 The licences ~rant~4 pursuant to clause 2.1 above may be limited to E~SE~TIAL 8TATJTORY ;PRs granted in the TERR’rTOR~ that it is not prepared to licorice a particular ESSENTIAL STATUTORY IPR fora partiLmlar STANDARD which has been adopted by ETSI priorto the ~ate of signature of t~e V~DFaTAKIMG the SI~ATORY’S obllgations pursuant to clause 2.1 above to grant llce~ces to tAat legal entity and its KFFISIAT~8 for that ~tiLmlar ~ shall be suspended %m~ll SUCh tlm~ ~ ~t I~ ~L~L~ Irr~=~l¥ vi~h@mavo its rightt~Tefum~"~it~m, for that parti~tar STAnDaRD in respect of all ESSE~TIKL STETUTORY XPRs which it or its AFFILIATES own or ~ontrol. 2.6 Licencea 9rauted p~reuant to clause 2.1 above shall be nonexclusive, om fair, r~asona~le am~ non-discriminatory terms, shall permit USE of ~IP~T and ~ETHODS in the TERRITORY, shall be of a t~chni~al scope limited to that necessary to enable the USER to comply with t~e STANDARD, and shall conform with ETSI’s p~llshe~ policy on intellectual property rights. ~rovided said !icences permit, in respect ~ a11 ~SSE~TI~ STATUTORY IPRs, ~CTt%~ED E~UIP~E~T to be use~ but not sold or otherwise ~ispose~ of, a~ywhere, an~ ~evices, sub-systems, materials or the like for use in ~F~FACTURE to ~e made or procured anywhere. The 81~NATORY on behalf o£ itself and its AFFILIATES hereby undertakes not to seek an i~j~nction in respect of any ESSENTIAL STATUTORY IPR in respect of: - offers for sale of E~I~E~T and ~r~ODS or parts thereof to a customer in any country by a USER, or - lO - Confidential Business Information, Subject to Protective Order S-ITC-003390472 t/%e supply of EQUIPKENT and KETHODS or parts thereof by a USER tO a customer in any country and the use thereof by the custoaer in any country where it can be demonstrated by objective evidence that it is used OrLl~ for a trial or pilot system directly associated with seeking the adoption of a STANDARD in that country. 2.9 The SIGNATORY hereby undertakes on behalf of itself and i~s AFFILIATES tO pursue to a conclusion all licence negotiations, both as licensor and licensee, arising from a request made for llcemces pursuant to clause 2.1 above in ~OO4 faith and without undue delay and to refrain from taking egal action against any person who has requestea a licence pursuant to the ~%~RTAKING in respect of any STATUTORY IPR which is or has been acknowledged by the SiGIfATORY as ESSENTIAL STAT~0RZ IPR available for liceace pursuant to clause 2.1 above for infrlngement of that ESSENTIAL STATUTORY IPR, providing that person pursues negotiations relating to said licence in good faith and without undue delay, pending resolution of the terms of such llcence. 2. i0 Where a dispute betwee~ a SIGNATQRr and USER relating to licensing terms and conditions, other than the level of royalty, is referred, pursuant to clause 13, to arbitration, the arbitrators shall, in the absence of reasons to the contrary, take into co~slderation the licensing terms and conditions of the Model Licence Agreement set forth in K~L~ex I. 2.11 Where a legal entity is not an AFFILIATE of any one member of ETSI, but Control;oT that legal entlt¥ can be exercised by two or more members of ETSI or their AFFILIATES including the SI~ATOR~ or his I~TILIATES acting in concert, the SIGNATORY undertakes on behalf of itself an~ its KFFILIATSS to use all reasonable endeavours to ensure sald legal entity signs an undertaking equivalent to the U~DERTAKING. DISCLOSURE OF STATUTORY INTELLECTV~ PROPERTY RIGHTS 3.1 Where the SIGNATORY or any of its AFFILIATES is not prepared to grant licences for a particular STA~DK~D in respect of any particular STATUTORY IPRs which it or any of its AFFILIATES owns or controls, the SI~ATORY on behalf of itself an~ its AFFILIATES undertakes to notify ETSI of the identity, ~efined in a clear and unique manner, of such STATV!DR~ IPRs and the STANDARD proposal tO whic~ ~ey apply in accordance with procedures lald down ~ ~TSI. Where the SIGMATORY or any of its AITILIRTES wish to declare any of their STATUTORY IFRs unavailable for licence in respect of a particular STANDARD adopte~ prior to the date of signature of the U~{DERTAKIMG he undertakes on behalf of himself and his AFFILIATES to make the declaration within 3 months of the said date of signature. 3.~ The $1G~ATOR~ undertakes on behalf of itself and its AFFILIATES to make use of clause 3.1 above only in exceptional cases. - Ii - Confidential Business Information, Subject to Protective Order S-ITC-003390473 3.3 3.4 The SI~ATORY on Im3a~ of itself and its AFFILIATES ~n~ertakes not to wlthhol~ wilfuily from ETSI the identity of any STATUTORY IPR which it or its ~ILIATES own or control, which coul4 result In.a 8TAh3ARD being specifie~ in a manner which would cause sai~ STATUTORY ~PR to be ESSENTIAL. 3.5 Q Where a SI~&TORY fails to notify ETSI in compliance with the procedures referred ~o in clause 3.1 above of the identity of a STATUTORY IPR, the SIGNATORY hereby undertakes on behalf of itself and its AFFILIATE8 to grant licences pursuant to that STATUTORY IPR in accordance with Clause 2 above. The SIGNATCRT on behalf of itself and its AFFILIATES undertakes, when requested by ETSI, to notify ETSI of the maximum royalty rate or the nature of alternative consideration acceptable to offset all or part of sai~ maximum royalty rate it will demand for the grant of licences in respect of a partIE~lar proposed STA~ARD pursuant to any STATUTORY IPRs i~entifled in the request, within 90 ~ays of receipt of ~he request, SOFTWARE AND MASK W~RKS 4.1 4.2 1,or the Rurpose of ~ clause 4, software shall be deemed to include ~puter programs, .interfaces, communication protocols, codes, da -~., data formats, instruction sets or the like. "" The $1G~ATORT and ItSKFFILIATK9 shall not be obliged by this clause 4 to make any: disclosure of INFOR~TION, software or eask works and the li~nces granted pursuant to clauses 2 and 4.3 shall only extand to that which has been proposed to ETSI by the owner of the rights in the software or mask work for standardisatlon purposes. 4.3 Where a SI~ATORY has made a non-confldentlal proRosal of software to ~!SI or ~TSI meaber$ in the course of ETSI standardisatlon work, that software has been incorporated in a STANDAED so that copyright in that software becomes or is deemed to be an ESSENTIAL STATUTORY IPR, the SIGNATORY on behalf of itself and its KUFILIATES undertakes on request by any USER %o grant non-excluslve llcences to that ~SER to enable him to co~ply with the STANDARD pursuant to any copyright which constitutes an ESSENTIAL STATUTORY IPR whi=h it or its AFFILIaTES. own (including, subject to clause 5 below, Jointly owned_~TKTUTORX IPRs) or control on fair, reasonable, non-prohlbitive, and non-~iscriminatory terms to copy, a~apt, an~ translate the software, grant sub-licences to end users of the software, sell, use or lease EQUIPMENT incorporating ~le software or ~Ike such other use of the software as ~ay be necessary to enable the USER to comply with the STANDARD. Confidential Business Information, Subject to Protective Order S-ITC-003390474 The SIGNATORY hereby undertakes on behalf o£ itself and its AFFILIATES to use all reasonable efforts to ensure that all STATUTORY IPP~, which are or may become ESSENTIAL, Yhich it or its AFFILIATES jointt7 otto with third parties, are available for the grant of licences pursuant tm clause 2 above, 6~ 6.1 The SIG~ATORT and its ~ILIETES shall be relieved of their obligation to ~Tant amy llcence under STA~7 IPRs to the extent that they can ahow that they are not contractually free to grant such licences pursuant tca contract pre-dating tJ~e UN~IMG provided that the SIGNATORY and its AFFILIAT~ have made a bona fide attempt to identify and notify ETSI o£ all such prior contracts at the time of execut~g the ~l~T~llq@. Nothing in the U~m~%KING is to be construed as requiring the commission of any.act contrary to law and wherever there is any conflict between any provision of ~he UNDERTAKING and any material statUte, law or o~inance ~he latter shall prevail, but in any such event the provisions of the UNDERTAKING affected mball be cu~ailed and limited only to the extent necessary %0 bring them within the legal requirements, and such provisions, so curtailed and limited together with all other provisions of the UNDERTAKING shall continue i~ full force a~d effec~ in accordance with the terms hereof. 5.3 If the SI~ATORY or ~ of its AFFILIATES acquires ownership or control of ~ IPRs after the date of execution of the UNDERTAKING which ~ue to contractual commitments pre-dating such acquisition are not available for licensing pursuant ~o the YDERTAKIMG, the SIGNATORY shall identify and notify ETSI of su~ ~Y IPRs without undue delay. 5.4 Where a legal entity becomes a nsw AFFILIATE of the SIGNATORY after the date of execution of the U~[~ERT~EING, the S~GNATORY shall use its best endeavours to ensure that the new AFFILIATE is bound by the terms and conditions of the UNDERTAKING. Where a SIG~ATO~ is unable to bind a new AFFILIATE to the terms and conditions of the U~DERTAKI~G, it shall immediately disclose its inability to ETSI together with ~ii details of the reason for its failure, and shall submit to whatever penalty is provided by the ETS~ statutes which, in the worst case, shall be resignation from ETSI. An AFFILIATE who is not bound by an undertaking equivalent to the UMDERTKKING shall not be entitled to enjoy any rights granted by equivalent undertakings signed by members of ETSI and others. a 13 - Confidential Business Information, Subject to Protective Order S-ITC-003390475 6.5 The SIGNATORY on behalf of itself and its AFFILIATES hereby grants and undertakes tm grant, ETSI, non-exclusive licences free of any financial[ consideration, pursuant to any literary or artistic cmv!right whic~ the SIG~ATOR~ owns or controls in non-confi~tlal ~c~ants which the SI~ATORY supplies to ETSI or any committee of BTSI, pen~itting ETSI to reproduce, translate, adapt, edit. or p~blish all or part of such dOCuments in ETSI t~.K~ical reports or standards specifications. Any licence granted smrs~ant to 6.5 shall authorise ETSI to grant sub-llcences to %hlrd parties on ten and conditions determined at the ~is~tion of ~TSI. In particular such sub-licences may be royalty bearing or free, and may authorlse the grant of furtter sub-licences. The SIGNATORY shall have no claim on a~y ~Inancinl return obtained by ETSI from the grant of sue/, sub-licences. i . 6.7 The SIGNATORY on behalf of itself and its AFFILIATES hereby undertakes, wheu r~quQst~ so to 6o by ETSI, to assign any copyright it may own ~n a complete work which comprises an ETSI technical repot%, ETS, or I-ETS as p~blish~ by ETS~. The SIGNATORY and its LvI~ILIETES shall not be required to assign any ~l)yrlght .~ey may own in a work incorporated in an ETSI technical report, ETS, or I-ETS, m~less it comprises the entire work. 6.8 ETSI shall respect author’s rightm in documents supplied to ~(I or ita ~r).Img ~ittees by the SIbI(ATORI, and shall indemnify and hold harmless the SIGI[ATORT in respect of any action relating to author’s rights arising from any use by ETSl or :£ts su~-lic~n~es OT 80C~I~ent~ supplied by th# SI~ATORY to ETSI. 6.9 The SI~ATORY on b@Ralf of itsel~ and its RYPI&ZATES undertakes to apply t~ rules set for~ in Annex 3 to the UNI~ERT~IlNG relatingto Joint liabiAtty of the purchaser and vendor of E~UIPI~P~ specified by reference to a STANDARD ~or -:L infring~nt o( ce~ai~ ESSEnTIaL IPRs. 6. i0 The SIGNATORY undertakes on behalf o£ itself and its AFFZLf~%TE$ that in a c~utract relating to EQUIPMENT and ~ETHODS with another party ~ho is a m~er of ETSI or a signatory to an undertaking equivalent to this UNDERTAKI~O or an AF?fLI~tT~ of either, it will not include a term requiring IPRs to be licensed in any other way than in accordance wi~h this V~DERTAKI~G. 6. ii Nothing in the ~]]ERTAKING shall be interpreted as in any way limiting or restricti~.g the freedom of the SIGNATORY to assign or re-assign hi~ employees participating in ETSI work. 7~ COh~FIDt~T IAL ITY 7,1 The SIGNATORY her~ u~ertakes on behalf of itself and its AFFILIATES ~o keep confidential all INFOREATION for a period of two years from the ~ate Of dlsclosure or until the SIG~ATOR~ is rel~ase~ from any obligation of confidentiality - :14 - Confidential Business Information, Subject to Protective Order S-ITC-003390476 in respact of the I~’FOREATiO~ by a written communication issued by the discloser thereof or by ETSI, after having obtained tae consent of the discloser of the I~FORMATION, whichever be the earlier. 7.2.1 use the I~I~OP~tAT~O~ only for purposes associated with f~hering the objectives o5 ETS!, [hereinafter referred to as ~he P~ITTED PURPOSE); 7.2.2 not disclose the I~TIO~ or permit it to be dls~loaed to ~ perso~ (other than an employee of the SI@NRTOEY or its AFFILIATES who needs to know it in connection with the P~ITTED PVRPOSE) without the express writte~ consent of ETSI. 7.2.3 not incorporate any Of the I~FORN~TION in an application for a patent without the express written consent of ETa;. 7.2.4 ensure that all employees of the SIGNATORY or of its AFFILIATES in r~ceipt of IW~AT~ON have either signed a confirmation ~orm as set out in Annex 2 or are otherwise bound by a contractual obligation of confidantlality~ to t~e SI~T~L 7.3 The obligations imposed by 7.1 and ?.2 above shall not apply tO: (a) INFORMATION In the p~lic doaaln otherwise than in breach of the U~~-- (b)INFORMATION which the SIGNATQRY can show to have been already in its possession prior to any disclosure to which the U~DERTKKING relates a~d which came into their possession from a source unrelated to ETSI or a member thereof; (c)INFORMATION which the SIC~NATORY can show that he developed or ~iscovered indepandeatly a~d without reference to any information disclose~ to them under or in connection with the U~DERTAKING; (a)Ih~FOR~%TION obtained from a thir~ party (including an ETSI member) who is free to divulge it without imposing an obligation of confideatiality; (e) INFORMATION requited tm be divulged by order of a court or other competent ttibtmal; 7.4 Any breach of the requir~ents of this clause 7 ~iscovered by the SI~NATOR~ shall JJ~nedlately be ~otifie~ to the Chairman of ETS~’s IPRC ang to the discloser of the ~FORMATIO~. - 15 - Confidential Business Information, Subject to Protective Order S-ITC-003390477 TERX~ATIOH 8.2 The UNDERTAKING may b~teru~ated by the @I~ATORY by giving ETS~ 24 months written notice of its i~tention to terminate the UN~n~TAKING. The S~G~ATORY may not tera!Date the UI~ERTAKIHG unless he simultaneously gives 12 ao~tha notice in writing of termination of his meabership of ETSI. The date of termination for the purposes of clause 8 shall be the date on which the SI~KT~RY ceases to be a member o£ ETSI. B.3 The effects of teminating the UF~T~XI~G are:- 8.1 8.3.1 All licances 9ranted by or to the SIGNATORY pursuant to the ~EKI]~ shall continue in full force and effect. 8.3.2 The obligations o~ the terminating SIGNATORY to grant licenc~ pureuant to the Ub3E~AKING 8ha-ll: - in the case Cf ST~I IPRs identified to or by ~TSI as ~eBE~TIAL, prior to the date on which the SIGNATORY ceases to be a m~er of ETSI, survive termination :until such t~e as said STATUTORY IP~s explre. - ~n the case iQf other STETUTORT IPRs created before teraination of tha U~DERTAKI~S, and identified as 3SS~TI~L within a period of 2 years from the date on which ths.Sl~A~i~ ceases to be a member of ~SI, eurvi~t~ralnatlon of the U~DERTAKI~ until such ti~e aa~said ~! IPRs expire. ° Creation sh~’l~ve-the sau meaning as in clause ~.3 above. 8.4 Where an AFFILIATE of a SIGnATOrY who is not a member of ~TSI in its own right ceases to be an A~TIL~ATE, the ~IGNATOR~ shall cease,, u~on the ~te of cessation, to ~ave any liability whatsoe~er in respect of that legal entity’s compliance or otherwise With the UNDERTAKINg. Any legal entity ceasing to be an ~ILIAT~ Of the SI~ATURY shall be deeme~ to have given ETSI 24 months’ written notice of its i~tentlon to termieate the U~DERTAKIM~ pursuant to clause 8.1 above. 9. WAIVER OF DEYAULT No waiver by ETSI of an~ default of the SI~ATORY shall be hei~ to be a waiver of any other or subsequent defaults. The failure of ETSI at any time to enforce any of the provlsi~ns of the UNDERTKKINe, or to exercise any right hereunder provide~, shall not De construe~ as a waiver of that provision or prevent s%bsequeat exercise of that right. Confidential Business Information, Subject to Protective Order S-ITC-003390478 All communications provided £or hereunder shall be in writing and shall be delivered or mailed by registered mail to the applicable party at the addresses indicated below:- oeeegQ4, ooaee#ee /ooleimooD~e44, e~ ~otices shall be sent to the BTdl at" European Telecommunications Standards Znstitute Route des Lucioles Sophia - Antipolis valbonne FRANCE All such communications shall be effe~ive when delivered. ii. HRADI~GS The head:Lnc~s hereof are included for convenience of reference only and shall not be deemed to be a part Of the U~0ERTAK!NG, 12. COHSTRUCTIO~ The construction, validity and performance of the UNDERTAKING shall be governed in all respect by the laws of Prance. 13.1 In the event o~ a dispute or difference between the 81~ATORY, and a signatory of an equivalent undertaking mutatis mutandis arising out of or in connection with the UNDERTAKING, its interpretation, or application, the parties to the dispute shall first use their best endeavours to settle the dispute or difference amicably within a period of 3 months after one party has announced in writing to the other that there exist~ a dispute or difference. 13.2 All disputes or differences which cannot be settled as provided ~or in clause 13.1 above shall De finally settled by ad hoc arbitration by three arbitrators, one arbitrator shall be appointed by each party to the dispute, and the - 17 - Confidential Business Information, Subject to Protective Order S-ITC-003390479 third arbitrator, who shall act as Chairman, shall be appointed by the two first appointed arbitrators. If the two first appointed arbitrators ~ail to agree upon the third arbitra£or within 6 weeks of the appointment of the second of the first two, the ~hlrd arbitrator shall be appointed Dy the Director of ETSI. ~le Chalrma~ of the arbitration panel shall have proven experiencQ in ~he issues in dispute. 13.3 The arbitrators shall follow the rules Of conciliation and arbitration of the International C~%mber o£ Commerce in its edition ~UTeat at ~/~ time of arbitration without involving the International C~a~ber of Commerce in a~inlstrative matters o 13.4 If there be more ~ one party on one, or on both sides, all parties being on one side shall act jointly and unanimously as a single party for:the appointment of arbitrators and any other activities in the course of arbitration. 13.5 The arbitrators shall use their best efforts to give their final judgQm~t not later th~ six months from the date on which the third arDi£rator has been appointed. 13.6 Unless otherwise a~reed, arbitrators shall have taeir meetings and hearings i ln Sophia-kutipolis. 13.7 The award of ~he arbitrators shall be final and binding upon the disputing par~les, 13.8 Issues Of IPR L~fri.gaent an~ validity shall not be decided k~-the ~rbitrators, hovever ~isloas relatin9 t~ t~e ESSEIqTIALIT7 of an ZPR may be made, as between the parties, by ar~itration and shall be ma~e availa~ie by the parties to ~"~sI for distri~ution to all m~lbers, toqether with the reasons for ~be arbitrator’s decision. If and as long as ~he SZ~aTOR~ is not permitted by law to be a par~y to arbitration and a dispute arises out of the UNDERTAKING which involves the SIGNATORY, rhea sUch dispute shall be su~itted to the ~uris~iction of a competent court. 13.10 The cOStS of arbitration shall be borne by the parties thereto and apportioned as the arbitrators shall ~ir~-t. 14. RETROACTIVE EFFECT 14.1 The U~DERTKKI~S shall supersede and replace all previous undertakings given to ~TSI by the 8TG~ATORv. ~hich relate to ESSENTIAL STRTUTORY IP~. Eli such prior undertakings shall be regarde~ as null and void ~/ E~SI and its mea~ers. However, where the t~ and conditions of licences granted Confidential Business Information, Subject to Protective Order S-ITC-003390480 or offered pursuant to such earlier undertaking vould be more favourable as a whole than the terms and conditions of a licsnce granted pursuant to the UNDERTAKIMG, the SIGNATORY undertakes on behal@ of itself and its A~rfILZATES if so request~ to grant 1.:tcence~ ~ respect of ESSENTIAL STATt~ORY IPRs on the terms and conditions specified in said earlier undertaklng. 15. COMPLIANCE WITH ~TSI POLIC~ The SIGNATOR7 on behalf oF itself and its 3FFILIATES accepts that its AYfZLIATES are subject to the Statutes of RTSI as though they were members of ETSI and under~es ~hat it and its ~FFILIATES will comply with ETSI’s IPR poli=y and any ruling made by ETSI pursuant to that policy or ETSI’s Statutes. For and on behalf of ............................... Position ....................... ,... Confidential Business Information, Subject to Protective Order S-ITC-003390481 4302s LIt’~CE kGREEME~ made ~ ...... this,.... &~, of ...... between ...... whose reglstezecl office is si~uateat . ....,.. (hereinafter referre~ to as ~the LICENSORN and .. ..... whose reqi~ere~:offlce Is aituate at ........ (hereinafter referred to as "the LI~SEE’). I. The LICENSOR has given an undertaking to ETSI ~ated ..... to grant licences in respect of ESSE~I~L STAT~TOR7 IPRs owned or controlled by the LICENSOR, and 2. The L£CENS~ is the proprietor of certain E%~g~IAL STATUTORY IPRs listed in Annex 1 attached hereto. 3. The LIC~S~ has glvem an ,nd~ing %o KTSI dated ............... on terms equivalent, mutatis mutanais, to the undertaking given to ETS~ by the LICENSOR. ,, 4. The LIC~S~ wishes to obT~rin li(M~Ice8 frOl the LICENSOR to USE LICENSED PRODUCTS and PROCESSES, and the LICEh~8~R is prel~r~ to grant such licenses to the. LIC~SE~ Upo~ t~e ter~s an~ ¢o~i.t~O~s hereinafte~ set forth. T~ P~TI~B ~RETO ~GREE IS’~~- ~ i. DEFINITIONS ~cr the pur~ses of the k~i~T, unless the context clearly or necessarily indicates otherwise, the followin~ wor~ and phrases shall have the meanings se~: forth below:1.1 "~~" shall mean ~ licence agreement. "LICENSED PRODUCT8 a~ ~" shall mean any system, device, method or operation i~’ully ~f~n~iag to ~he ST~ARD and which is, in the case of LICENSED PROINCT ~ACTURED in the TERRITORY. 1.3 "~TSI" shall mean the ~TELECO~UNICATIONS STANDARDS INSTITUTE. 1.4 The "~TA~DARD" shall eeen the standard including its optional versions for ...... - 20 - Confidential Business Information, Subject to Protective Order S-ITC-003390482 1.5 "STAT~TGRY IPR" shall mean a~y intellectual property right created by statute law oIuher than trademarks. Por the avoidance of doubt rights relating to get up, confldeatial information, trade secrets or t~e like are e~luded from the definition of STATUTORY IPR. L~CENSED IPRs shall mea~ the ESSE~IAL STATUTORY IPRS listed in Annex A. (Annex A shoRld li~t pata~te and the claims thereof which are licensed toqether with all other STATJTORY IPRs licensed. Where a STATUTORY IPR is not licensed as a whole a clear una~bi~ous ~eflaltlon of tSQ exteat of the licence aus~ be provided. ) 1.7 1.8 1.9 "PENDING" as apPlle~ to an IPR m~ns that an application has been made for the grant of that IPR, the a;~llcation has neither bee~ ~ranted nor refused, and oa gra~t of the IPR the proprietor thereof zs entitled to payment by virtue of law or regulation for any acts performed by another wlthi~ the scope of protection of the IPR during the period it was PE~I~S. "ESSE~TIKL~ as applie~ to STAGY iPR means that it is not possible on te~2~nical groun~e to make, use, sell, lease, operate or dispose of L~CENSED PRODUCTS or PROCESSES which comply with the STANDARD without IBfringL~g ~t S~TUTORY IPR. For the avoidance o£ doubt where a STANDARD c~ o~.y De implemente~ by technical solutions, all of which are infr~.ngements of STRTUTORY IPRS, all such ST~TUTCR~ IPRs shall be Considered ESSEh~IAL. "AFFILIATE" of a PARTY means: any legal ~mtlty - directly or Indlz~:~3.7 ow~n~ or controlllng the .p~, under the s~ ~if6~d~ ~ndlr~ owners~i~ or control as the ~ART¥, or directly or indirectly~ owne~ or controlled by the PARTY for so long as such ownership or control lasts. Ownership or contrDl shall ~ist through the direct or indirect: ownership of more than 50% of the ~ominal value of the issued equity share capital or, of more than 50% of the shares entitlin~ ~!~e holders ~o vote ~or the election of directors or persons performi~@ similar functions, or right by any other mea~ to elect or appoint directors, or p~rsons who together can ex~rcise such control. ° A state, any division of a state, or ot~er public entity operatinq under public law, or any legal entity linked to a PARTY solely through a state or any division of a state or other public entity operating un@er public law shall be deemed to fall outside the ~efinition of an AFFILIATE. i.i0 ’NET SALES VALUE" shall meal% the ~ross sales value of LICENSED PRODUCTS less t~e total of a~y value added taxes, freight, packaging and insurance char~es shown separately upon an invoice, if charges for packing, insurance and freight are not s~own separately, a sum equal to 1.St of the total amount invoiced less sales and/or value added tax may be ~e~ucted. l°ll "SALE" (~)r "SOLD") shall mean eels or disposal an~ shall include lease. Confidential Business Information, Subject to Protective Order S-ITC-003390483 i. 12 "THE TERRITORY" shall mean auk7 and all countries: whose national administration for telecommunications is, at the ~ate of USE a member o£ ETSI, or in which an officially recognised national standardization body has formally ado~ and, i~ ~he opinion of ETSI, the STAm~t~ has been laplemanted in that country or in which in the opinion of ETSI, a major telecommunications network operator, has or is about to procure equipment on a substantial scale conformiag to a specification co~pliant with the STY. 1.13 "USN" shall mean ~h%W~ACT~E, sell, lease or otherwise dispose in the TERRITORY of L~CEI(SED PRODUCTS and repair, use or operate LICENSED PRODUCTS anywhere or use or operate LICENSBD PROCESSES in the TERRITORY. i. 14 "MANUFACTURE" shall mean production of LIC~SED PRODUCTS in the TERRITORY in accordance wlth Reg~!ation (~C) ~o 802/68 and 1318/71 as amended from time to time - "On the co~om definition of the concept of the origin of goods." The A~E~NT shall come into effect on the date first before mentioned and unless terminated in accordance with the provisions hereof shall continue in (orce and e~fect, until expiration of the last STAT~TORY IPR licensed hereunder. D 3. i" ~e" L TCENSOR "hereby 9Tant8 ~to the ~iICE~SE~ a non ~clusive licence ~urst~.~t to LICENSED IPRs to~3. I.i USE LICENSED PRODUCTS and PROCESSES. 3.1.2 Manufacture or procure anywhere devices, sub-systems materials or t~e like solel~ for use in ~UFACTURE. ROYALTY P~YMENTS 4.1 The 51CE~SEE shall pay to the LICENSOR a royalty of .... % of the ~ET SALE V~LUE of the LIC~SED PROV~CT8 manufactured or sold by him. (- Alternative modes of payment may be agreed. ) - 22 - Confidential Business Information, Subject to Protective Order S-ITC-003390484 4.2 Royalties shall accrue to the L~C~SOR on the ~ate on which a LICENSED PRODUCT is dispatched to a customer. Royalties due in respect of transactions whic~ do not involve sale shall be based on the ~ET SALES VAL~ £or an arm’s len~h sales transa~tlon. 4.3 Royalties shall be ;mid only onto per LICENS~ PRODUCT, and only if a LICENSED IPR is la fo~co at the ~ate on which t!le royalty accrues ia a COU~!RT in which the LXC~S~ ~92[~~, sells, uses, l~ases or otherwise disposes of a LIC~SED FRODUCT. In respect o~ any PE~DIBG LICENSED IPR, the royalty shall ~e ~ue with retroactive effect from the ~ate, on which under the applicable law, the applicant has a right to payment provided t~at the LIC~SED IPR is grant~. 4.4 The LICENS~ shall submit ~ the LIC~SOR on or before ...... and ..... respectively in each year ~rinq the term of the AGREe, a statement of all royalty bearing a~Ivlty made Dy ~he LICENSEE ~uring the SiX ~n%h period commencing eight months prior to the date on which the star,ant ~or royalty h~arlng a~ivity is due. ~ "nil" statement shall be made when appropriate. The LICENSEE shall pay all su~s due hereunder at the sa~e time as suD~iss~on of the statement. Tl~e LICENSEE shall pay, together with the fir@t s~at~ent, any amounts ~e for infringements which accrued before the effective ~ate of the AGREEMENT, and shall pay, together with the statement followi~g the ~ate of gra~t of a PEKDING L~C~S~/ IPR, any a~ounts due up to the date of grant. %.5 The nICE~SEE agrees to keep true an~ accurate books of account wi~ regar~ to all royalty b~aring activity. T~e L~CE~SOR shall have the right from time to time to cause ~he LI~SE~’S relevant r~cor~S to be Inspected and audlt~4 ~y a prof~ional accountant appointed by the LICENSOR and acceptADle to t~e LI~S~E. Fo~ the above ~!rposes the L~ENSEE sh~ll allow ac~es~-~o it~q~es to the ap~oi~t~ accountant and disclose the relevant accouat~ and records. If the auditln~ s~ows an error in payments made of at l~as% 5%, to %he disadvantage of t~e L~C~NSOR, the LICENSEE shall bear the ~ost~ of ~he audit. All unpaid royalties and audit fees ~ue shall be paid immediately. 4.6 In ag~itlon to payments mad~ F~rsua~ to clause 4.1 above, the LIC~SEE shall pay go the LrC~ any value added tax or equivalent tax which the L!CENSOR is lla~l~ to pay referable to the payments referred go in clause 4,1. 4.7 The LICENSEE shall be ~ntit!ed to deduct any income tax which he is required to withhold at source from the sums payable hereunder, provide~ t~at he shall do a!l things ~ecessary to enable the LICENSOR to claim exemption therefro~ ~nder any treaty ~or the avoidance of double taxation. MISCELLANEOUS PROVISIONS 5.1 The LICENSOR shall not De liable to indemnify the LICE~SEE against any loss sustained by him as a result of any claJ~ made or action brought any ~hirdpar%y for infringement o~ any intellectual property right Dy reason of ~SE of LICF~SED ~D~CTS. - .23 - Confidential Business Information, Subject to Protective Order S-ITC-003390485 5.2 The Fights and obligations of either PA~T~ to the agreement may be assigned oF sub-licensed to a~y KFfILIATE of that PARTY at any time during the period o£ the A~%~T, pr~vlde4 that the assignee or sub-licensee undertakes to be bound ~2 the terms and conditions of the AGREEMENT as though he was the assignor or stt~-lice~sor, mutatis mutandis, and to indeauify ~he other PK4TZ to the A~T against any loss or damage resulting from the usi~ent or s~lb-l~cence, subject to the prior agreement of the other P~RT], which agreement shal! not be unreasonably withheld. 5.3 For the awidance of dour, and s~bgect to clause 5.2 above, the licences herein granted do not i~lude the right to grant suD-llcences or the right to have LICENSED P~O~CT~ made. 5.4 Except as provided for in clause 5.2 above, the r lC~S~ shall not assign, trans£er, mortgage, charge (e~capt ~or any floating charge on company assets} or part with, any of his rlghts, duties or obligations under the ~~. 5.5 Where tile LICENSEE sells LICENSED PRODUCTS in a cotultry whose law requires goo~s subject to IPRs to bear a mark identifying the IFRs or whose laws impose any penalty or d~sadvantage on the proprietor of IFRs when goods ~o not Dear such a mark, the LIC~SK~ shall use his reasonable endeavours to appropriately mark ~I~:~$~D P~ODUC2S in accoreance with the law of the country in which they. are sol~. S. 6 The LICENSOR does not warran~ t~at any of the LICENSED IFRs are valid and does not undertake to maintain any of them. 5.7 The LIt~NSOR does not ~ar~n~ee the succems of production by the LICE~ R~r ~he" q~q!Ity ~d ft~%llty of LIC~SED PRODUCTS made by the LICENSE~, nor does it make any ~mrrant¥ of merchantability of LICESSED PRODUCTS. The liability ~or technic~l ~efects, including product liability, shall rest e~lusivel~ witA the LIC~S~. S.8 ~o the extent ~ermitted by the appltca~ie law specifie~ in clause 12 of this AGREEKE~T, the liability of "the LICENSOR sha!l be determined solely by the term~ of the A~EE~Ff. The LICEnsoR does not accept liability for damage suffered by thir@ parties and consequential damage. 5.9 The LIC~I~$EE ~ndertakes, on ]~half of itself and its AFF[LLKTES, ~uring the perio~ in which the LIC~SK~ is bound by an undertaking to ETSZ, and to the extent that the LIC~SEE is oblige4 to 4o so pursuant to such undertaking, to ~rant licences to the 51CE~SOR and its AFFILIATES in respect of ESSENTIAL STAGY IPRs, ~B 6.1 The agreement may only be tefalnata~ by the LICENSOR on written notice to the LICENSEE if the LIC~Ematerlally breaches any of the terms of the A~~T and such breach is not reaedied within a period of 60 days after notification thereof, such notification stating the intention to terminate if such breac~ is not remedled. Confidential Business Information, Subject to Protective Order S-ITC-003390486 6.2 The AGREEmEnT may be terminated by the LXCEMSEE by giving the LICENSOR 12 month’s written notice of h~s intQnt!on to terminate the AGRBK~ o e.3 The A~REEMENT shall expire if not terminated earlier on the date of expiration of the last LICENSED IPR to expir~. 6.4 Upon termination of the A~ pursuant to clause 6. I and 6.2 all rights granted and obllqationa Impos~4 by the AGREEMENT are terminated save that the LIC~SE~ remalns obliged to pay any sums due pursuant to clause 4, ~othing in the AGRE~T is to be construed as requiring the commission of any act contrary to law a~d wherever there is any conflict between any provision of the AGI~ and any material statute, law or ordinance the latter shall ~evail, but ia any such only ~othe provisions of theto bring them within the curtailed and llmite~ even% the ex~e~t necessary AGREEMENT affected shall legal requirements, and s~ch prov~ions, so cur%ailed and limited, together with all other provisions of the AG~ shall continue in full force and effect in accordance wi~h the terms hereof. e WAIVER oP DEFAULT No waiver by either PARTY of any default of the other PARTY shall be hel8 to be a waiver of any other or subsequent 8efaults. The failure o~ either P~RTI at any t~me to enforce any of the provisions of the AGREEMR~T, or to exercise any right hereunder proviged, shal! not be constru~ as a waiver o~ that provision or prevent "subSequent e~eru~Se of ~3at right. All comauni~atlons provlded for hereunSer shall be L~ writing an~ shall be ~ellvered or mailed by reglster~ (air) mail to the applicable ~RT¥ at the addresses Indicate4 below:- ~otlces shall be sent to the LICE~SOR at: ~ot~ces shall be sent to the LICENSEE at: veevm~e~ve~e~ All suc~ communications shall ~e efSectlve when ~elivere~. Confidential Business Information, Subject to Protective Order S-ITC-003390487 10. I0.1 The AGREEMEh~ c~netitutes th6 enti~e agreement between the PARTIES and shall not be modlfim~ or am~d~ ~ b~ an instrument in writing of subsequent ~ate berne ~ly ~ted ~ ~ of the PARTIES. 10,2 R/~nex i shall from time to t~me bm amended subject to the agreement of ~ PARTIES to the ambient and any other consequential nen~ment of We A~REE~hT. ~o~vA~tanding clause i0. i, ~he LIC~SE~ may ~nilaterall~ delete any LIC~ r~ frQQ Annex 1 from the date o£ receipt by the LZC~SOR of notiflcat~oa in writlng of the LICENSEE’S decislon to u~ilaterally Q~le~e such LIC~ED IPR. 10.3 At the LICENSEE’S z’.e~est_the LICENSOR a~rees to r emegotiate the re,alLy ra~es or thelr equlv~l~m~, ~.~ ~ e~zfl~ in clause ~.i a~ove in the event that the LICE~ is r~q%tir~ tO make payments, in respect Of ESSEFTIAL IPR whose existence w~ unkno~ to the Licensor or Licensee at the ~ate firs~ before mentioned for ~B of ~/~e same LICENSED PRODUCTS OR PROC~SSZS in the same co~nt~2, if n~ces~ary in order to comply with paragraph 6 of 5TSI’s IPR polic~. ~wever, nothing in this paragraph shall require ~he LIC~S~R to refum~ ~en~s already efft~’~e~. ii. ~Y.KDIN~S T~e headings hereof are included for onvenience o~ reference only and shall not be ~e~ed to be a part of ~be A~. 12. CO~STRUCTI0~ T~ OnStz./ction, validity ~nd ~w.~fo~ of ~8"~ shail be governed in all respect by the laws o£ ,., ...... 13. S~ O~ DXSPUTSS 13. In the even~ o~ a ~is~te or difference ~etveeu ?ART£ES to the i ~~ t~e e~ES s~tl f~st use their ~est endeavours to settle the dispute or ~iffer~nco amim~ly wlt~in a period of 3 ~onths after one part~ has a~o~nced in writing to the other that there exists a ~ispute or ~iffer~e. 13 ¯All disputes or ~i~f~’ences which cannot be settle~ as provide~ ~or 2 in clause 13.1 above shall be finally settled ~2 ad hoc arbitration ~,~ three arbitrators. One arbitrator shall ~ appointed Dy each party to the dispute, an~ the %hi~ a~bitrator, who shall act as chairman~ shall be appointed ~ the two first appointe~ arbitrators. ~f ~he two first al~poimted arbitrators fail to agree upon the thir~ arbitrator wit~i~ S weeks of.t~e appointment o~ the secon~ of the first two arbitrators, the thLrd arbitrator shall be appointe~ Dy the Director of ~TSIo The Chairman of the arbitration panel shall have ~’oven ex~erlence i~ the issues in dispute. - 2~- Confidential Business Information, Subject to Protective Order S-ITC-003390488 13.3 The arbitrators sh~ll follow tbQ rules of concilliation and arbitration o~ the International C~m~er of Commerce in its edition ~rent at the ~ime o~ ~bltration wi~out involvicg the International ~Le~er o£ ~erce ~ administrative matters. 13.4 ~:z there be more ~ one m~:y on one, or on both ~ide,, all pestles being on onQ side~hall act Jotn~¥ ~d unanlaously as a single l~arty £Or ~e appol~taent of a~bitrators an~ any other activities in the course of arbitration. 13.S The arbttratoL’s Shall use theh- best efforts to give their final judgement not later than six aont~ £rcm ~e dats on vbich the third ~rbitrator h~s b~en a~ointed. 13 ¯ 5 gnlus otherwise agreed, arbitrators s~ll l’~ve their meetings and bearings in So~hla-~tipo~s, l~ce. 13.7 The award of t~e a~bitratorS shall be ~i~al an~ binding upon t~e dis~mt~mg parties. 13,8 Issues of II~ Infr~eae~t and validit? shall not be declde6 by the arbitrators, however decisions relating ~o the ~SFJ~TI~L~TY o~ an ~I~ say be made, as between the partly, by arbitatlon a~d shall be made available by the ~es to &~SI ~or distribution to all ~e~bs~s, to~e~her with the reasons ~or the arbitrator’s decision. 13.8 IZ and as long as one O~ the ~I~ is not permitted by law to be a party to arbitration an~ a dispute arises out of the A~, then such dispute shall be eul~Itta~ to the juris~ic~ion o~ a compet~t court. The ~ost~ of arbi~atlon g~ll be borne by the parties thereto ~6cd apportioned as the arbltrators g~l,1 direct. For and on ~alf of ................. ,.. .......... meoeeea~eoe~eo~ mm~ $eeemoe~ee POsitio. .......................... Por ~m~ on behal~ of ............................... Position ........................... - 27 - Confidential Business Information, Subject to Protective Order S-ITC-003390489 (the ~LO~) hal si~ed an UNDERTAKING. The tens In accordance vlth the above-nentioned ~@RTAKING the B~FLOYER is obliged to ensure that all its ~plo~ees involved in ETSI work have signed a CO~fIP~ATIOM ~R~ in orde~ to confirm that the employee has been informed of the obligations in the ~XNG relating to confiaen~iality. 3. I confirm that I am an employee of 0the E~LOYER and that I have read and understood the annexed terms of the ~~I~S. m~ ee..s~......~oo,,e*.,*se~e, e4mmmo~eoQse~g~ em sme - 28 -- Confidential Business Information, Subject to Protective Order S-ITC-003390490 ANNEX 3 TO APP~DL~ A i. ~e rules set out in t~!s Annu for shar~g the ri~ks associated with infringement of ESs~rIIAL ST~T~’IX~ IPRs 8b~Ii only aI~lY to £nfringement of ESS~TIA5 STATIr~R! IPRs which were not £deatlfled as ESSENTIAL or potentially ESSE~TIK5 on an o~flcial ~I Iiet available to all ~BERS immediately prior to the date on ~Ich the ~EW~ to which the BSSE~TIAS STA~I IPRs relate Is a~ilable to clause 1.4 of the ~RTAKIWQ, or is ~ilable to both parties of a l ~ ~S of ~S I aS Set OUt relevant pro~rement contract at l~t fo~teen &~ prior to the date on which the procurement contract price was bln~g on the v~dor, whichever llst was las~ available. 2. Sembers shall include terU and oRdi~!o~s ~ch ~ive effect to the rules set out in this Annex in all contracts for procuraent of E~.P~%T and ~HODS or part t~ereof (hereinafter referred to as ~ODS) which ara specified in the contract, by re~erence to a ~ . 3. The iL~biliti~, incurred thr~ Infrln~aent of ~SE~TIA5 STATV~RI IPRs, that are to be equitably shar~ are l£~it~ to~a) the price of C~ delivered and/or ~)0~ £n stock and the cost incurred of ~OD8 i~ t~e course of manufacture directly a~tributable to a relevant procurement contract s~b~ect to di~countlng tot z~--~le pa.~s and c~on~nts; b) 4amages awar4e~ b~*~c~Rrt ~f la~or ar~rat~ ~ payments associated wit~ the settlement O~ iMrin~e~ent o~ such ESSE~TIA~ STA~ IPR togather vlth t~e associated legal . costs whic~ are clearl~ l~eatified ~th the supply of ~OO$ to whlc~ the contract relates; c) sums payable ~or any licences ~trsuant to such ESSENTIAL STAT~TORI IPR which ca~ be objectively verified as relating solely to ~DODS supplied under a relevant ~rccurement contract. ~) %he cost o~ modi~ing socks to avoid infringement o£ zSB~TI~5 STAT~2OR£ IPRs. For the avol~ance of doubt liabilities directly reZated to ~e £n~ringement of ESSENTIAb STAGY IPRS which arls~ from use of GOODS by t~e purchaser where: t~e use is eltber explicitly set out in t~e relevant procurement contract or in ab~auce thereo~ the use is that use for which the ~ were ~igned, and the infringement ariges solely by virtue ol use of the ~OODS as supplie~ ~ndsr the relevant procurem~t contract; shall be equitably share~ ~y the partias to a relevant procurement ¢on~r&~. ¯ (Explanatory note: procurement contracts are sometiaes placed before a standard ep~ification referred to in the contract is published. ) Confidential Business Information, Subject to Protective Order S-ITC-003390491 4. For the avoldance of ~ indirect losses, consequential losses and losses other than those referred to in paragraph 3 above shall not be shar~ but sha!l lle where they fall. ~or the purposes of ~ 6~ deAlver~ shall be ~e contract price discounted kunex the-price ofcalendar year between by 10~ for each full the date of delivery of the GOOD~ and the date on ~ the purchaser first ceased ~sing the ~DS because of infringement of an ~I~6 STATUTORY IPR by the GOODS or use of the GOOD~. 6. Pot the parpo~es of this Ann~ ~OC~S, or .~e of GOODS, shall be deemed to infringe an ISSE~TL~L ST~ IPR either: by agreement of the parties to a relevant procurement contract, OF by virtue of a decision by a court o~ law competent to determine issues of Ira tnfringeaent. 7. Upon discovery that GOODS supplied or to be supplied under a relevant procurement contract may infringe an ESSPaTIAL ~TUT~Y IPR, the parties shall meet and use their reasonable enduvours to agree upon a course of action which Ltuiaises the total losses of all parties to the procurement contract. ~i, In co.sidering the course of action to.he followld the parties shall give favourable consideration to courses of action which luclude modlflcatlon even if such modification results in the GOODS as ~o~ifle~ no longer Complying with the relevant ~ or, shoul~ it prove impractical to modify the O~ODS~ repurchase of the ~0~ by~ the supplier at the Ftice epecif~e~ in Clause 5 of ~ Annex, The repurchase price less any sums recovered by resale of the GO0~ or reuse of the parts thereo£ shall be a~ded to the costs to be shared by the parties. 8. Where it can be demonstrated that ltcences are not available on fair zmd reasonable terms in respect of an ~I~ $TATUTOR~ IPR which is infringed by the supply or use of GOO~ ~rsuant to a ~rocurement contraut¢ failure to supply or accept ~X)DS shall not be deemed a breach of that contract. However, ~he parties:~may in accordance with paragraph 5 a~ove where this is agree~ modify GOODS to avoid infringement. 9. For the avoi~ance o£ ~oubt any licence which requires payment of a royalty ]~t$~ on the extent of use ~f ~ shall De ~eeme~ to be on unfair and unreasonable terms. " j. Confidential Business Information, Subject to Protective Order S-ITC-003390492 I0. The contribution by one party (including ~epurchasing costs) whether by way of payment to the other party or by contribution to the cost of modification of GOODS pursuant to equitable sharing of liabilities payable as a result of infringement of ESSENTIAL STATUTORY iPR shall not exceed the price to be paid for GOODS in the original Contract for supply of those GOODS. ii. Subject to paragraph ]0 above equitable sharing of liabilities set out in Clauses 3a-3c above shall be sharing in equal parts between the parties to a relevant procurement contract. 12. Nothing in this Annex shall be taken as requiring the SIGNATORY or its AFFILIATES to refer any dispute relating to a procurement contract to arbitration. Confidential Business Information, Subject to Protective Order S-ITC-O03390493

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