Unassociated Document


    EXCLUSIVE
      LICENSE AGREEMENT

    


    This
      Exclusive License Agreement (“Agreement”)
      is
      entered into by and between eRoom
      System Technologies, Inc.
      (“Licensor”), a corporation having a principal place of business at 1072 Madison
      Avenue, Lakewood, NJ 08701, and ACACIA
      PATENT ACQUISITION LLC (“APAC”),
      a Delaware limited liability company having a principal place of business at
      500
      Newport Center Drive, Suite 700, Newport Beach, CA 92660 (collectively referred
      to herein as the “Parties” and individually as “Party”). The effective date of
      this Agreement shall be the date on which the last Party executes this Agreement
      below (the “Effective Date”).

    


    BACKGROUND

    


    WHEREAS,
      Licensor is the sole and exclusive owner of U.S. Patent No. 4939352, U.S. Patent
      No. 4883948 and U.S. Patent No. 4857714, and all related patent applications,
      corresponding foreign patents and foreign patent applications, and all
      continuations, continuations in part, divisions, extensions, renewals, reissues
      and re-examinations relating to all inventions thereof, which are collectively
      referred to as the “Patents” (the "Patents");
      and

    


    WHEREAS,
      Licensor is willing to grant worldwide exclusive license rights in the Patents
      to APAC and APAC in turn, desires to acquire all substantial rights in and
      to
      the Patents.

     

    NOW,
      THEREFORE,
      in
      consideration of the promises and mutual covenants contained herein and for
      other good and valuable consideration, Licensor and APAC agree as
      follows:

     

    
      
        	
                1.

              	
                GRANT

              


      

       

      
        	 	
                1.1.

              	
                Exclusive
                  License.
                  Effective upon the date of Acceptable Completion (as defined below),
                  Licensor grants to APAC all substantial rights in and to the Patents
                  including the worldwide, exclusive right and license under the
                  Patents to
                  make, have made, use, import, offer or sell products or services
                  covered
                  by the Patents, including the exclusive right to grant sublicenses,
                  to sue
                  for and collect past, present and future damages and to seek and
                  obtain
                  injunctive or any other relief for infringement of the Patents.
                  Licensor
                  expressly retains no rights in or to the Patents, including without
                  limitation, the right to sue for infringement of the Patents prior
                  to any
                  termination of this Agreement and specifically grants APAC all
                  such rights
                  prior to any termination. The exclusive right and license granted
                  herein
                  shall exist for the term as set forth in Section
                  7
                  below. 

              


      

      


      
        	 	
                1.2.

              	
                Investigation
                  Period.
                  Licensor acknowledges and agrees that APAC shall undertake and
                  perform a
                  due diligence investigation of the Patents during the period of
                  up to
                  sixty (60) days following the Effective Date (the “Investigation Period”).
                  In consideration of APAC’s due diligence investigation of the Patents,
                  Licensor agrees that, during the Investigation Period, Licensor
                  shall not
                  discuss, negotiate or pursue with any third parties any offers
                  or
                  proposals with respect to or otherwise relating to any of the Patents.
                  Licensor agrees to cooperate with APAC and to promptly provide
                  to APAC any
                  reasonably requested information regarding the Patents, including
                  prompt
                  delivery for receipt by APAC no later than seven (7) days following
                  the
                  Effective Date of a copy of the complete prosecution history of
                  each of
                  the Patents (each a “File History”) and copies of all files, information
                  and documents in Licensor’s possession or control relating to the Patents.
                  In the event that (i) any of the File Histories in Licensor’s possession
                  or (ii) any of the files, information and documents in
                  Licensor’s possession relating
                  to the Patents are not delivered to APAC within the seven (7) day
                  period
                  following the Effective Date, the Investigation Period shall be
                  automatically extended by the greater of the number of days for
                  which (i)
                  the last of the File Histories in Licensor’s possession or (ii) any files,
                  information and documents in Licensor’s possession relating to the Patents
                  is delayed. Upon completion of the Investigation Period, APAC shall
                  provide written notice to Licensor of its conclusion regarding
                  the
                  investigation of the Patents. The Investigation Period will commence
                  on
                  the Effective Date and conclude on the earlier of: (i) 11:59 P.M.
                  PST,
                  sixty (60) calendar days following, but not including, the Effective
                  Date,
                  subject to the extensions set forth in this Section
                  1.2;
                  or (ii) APAC transmits written notice to Licensor of its conclusion
                  regarding the investigation of the Patents.
                  Notwithstanding the foregoing, this Agreement shall terminate on
                  April 01,
                  2009 if APAC has not given the written notice of Acceptable Completion
                  defined in Section 1.3 below on or before that
                  date.

              


      

       

      
        
           

        

        
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                1.3.

              	
                Due
                  Diligence Completion.
                  If APAC determines, in its sole and absolute discretion, that the
                  Patents
                  are acceptable during the Investigation Period and transmits written
                  notice to Licensor that the Patents are acceptable (“Acceptable
                  Completion”), then this Agreement shall continue with full force and
                  effect following such Acceptable Completion of the Investigation
                  Period.
                  Otherwise,
                  if
                  APAC determines, in its sole and absolute discretion, that the
                  Patents are
                  not acceptable, then (i) APAC shall have no payment obligations
                  or
                  liability to Licensor hereunder; and (ii) this Agreement shall
                  automatically terminate upon completion of the Investigation
                  Period.
                  For the purposes of this Section
                  1.3,
                  written notice of Acceptable Completion may be sent by first class
                  mail,
                  facsimile, recorded delivery or electronic
                  mail.

              


      

      


      
        	 	
                1.4.

              	
                INTENTIONALLY
                  LEFT BLANK.

              


      

      


      
        	 	
                1.5.

              	
                Exclusivity
                  to APAC.
                  Notwithstanding anything to the contrary, the grant to APAC of
                  the
                  exclusive right and license under the Patents herein shall be exclusive,
                  even as to Licensor, with respect to any and all Exclusive Parties
                  (as
                  defined below) and APAC shall have the sole and exclusive right
                  under the
                  Patents to deal with one or more Exclusive Parties in any and all
                  matters
                  relating to the Patents, including without limitation any and all
                  direct
                  and indirect offers for sale and sales of products and services,
                  in whole
                  or in part, covered by the Patents to such Exclusive Parties. The
                  term
                  “Exclusive Party” shall mean: 

              


      

      


      
        	 	
                (a)

              	
                a
                  declaratory judgment plaintiff or an infringement defendant under
                  any of
                  the Patents; or 

              


      

      


      
        	 	
                (b)

              	
                a
                  party infringing any claim from any of the Patents; or
                  

              


      

      


      
        	 	
                (c)

              	
                a
                  party with which APAC has initiated or undertaken licensing
                  communications, discussions and/or negotiations or otherwise asserted
                  any
                  of the Patents against, provided that an Exclusive Party shall
                  be deemed
                  to include any and all of its
                  affiliates.

              


      

       

      
        	
                2.

              	
                LICENSE
                  BACK

              


      

      


      
        	 	
                2.1.

              	
                Grant
                  Back License.
                  Subject to Acceptable Completion and Licensor marking each of its
                  products
                  in a conspicuous manner so as to identify each of the applicable
                  Patents
                  embodied in such products (e.g., U.S. Patent No. 4939352), APAC
                  shall
                  grant to Licensor a limited, non-exclusive, non-transferable,
                  royalty-free, personal right and license under the Patents to make,
                  use,
                  offer or sell Licensor’s products or services (the “License”). 

              


      

       

      
        
           

        

        
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                2.2.

              	
                Limitation
                  to Grant Back.
                  Other than as expressly set forth in Section
                  2.1
                  above, Licensor expressly retains no rights in or to the Patents,
                  including without limitation no rights to sue for and collect past,
                  present and future damages and to seek and obtain injunctive or
                  any other
                  relief for infringement of the Patents, and no other rights or
                  licenses
                  under the Patents are granted or
                  implied.

              


      

      


      
        	
                3.

              	
                ROYALTIES
                  AND OTHER PAYMENTS

              


      

      


      
        	 	
                3.1.

              	
                Royalty
                  Payment.
                  APAC shall pay Licensor a continuing royalty equal to fifty percent
                  (50%)
                  of the Net Proceeds, as defined below. For purposes hereof, the
                  following
                  terms shall have the following
                  meanings:

              


      

      


      “Net
        Proceeds”
shall
        mean Total Recoveries less the APAC Costs.

      


      “Total
        Recoveries”
shall
        mean all amounts actually received by APAC from the licensing and enforcement
        of
        the Patents including all licensing proceeds and recoveries from any lawsuits
        or
        settlements. Any non-monetary consideration received by APAC in connection
        with
        licensing or enforcement of the Patents shall be valued at fair market
        value.

      


      “APAC
        Costs”
shall
        mean all costs and expenses incurred with third parties in connection with
        prosecuting, licensing, enforcing or defending the Patents, including without
        limitation:

       

      
        	 	
                (a)

              	
                attorneys'
                  and paralegal fees (whether on an hourly or contingent basis and
                  whether
                  for general or local counsel), costs and disbursements;
                  

              


      

      


      
        	 	
                (b)

              	
                the
                  fees and costs of consultants, experts or technical
                  advisors;

              


      

      


      
        	 	
                (c)

              	
                travel
                  and lodging expenses; 

              


      

      


      
        	 	
                (d)

              	
                duplicating,
                  secretarial, stenographer, postage, courier and similar expenses;
                  

              


      

      


      
        	 	
                (e)

              	
                filing
                  fees and other Patent Office fees or
                  costs;

              


      

       

      
        	 	
                (f)

              	
                court
                  costs;

              


      

       

      
        	 	
                (g)

              	
                legal
                  and other costs related to any re-examination or reissue
                  proceeding;

              


      

       

      
        	 	
                (h)

              	
                legal
                  and other costs incurred in defending any action or counterclaim
                  in
                  respect of the Patents; and

              


      

       

      
        	 	
                (i)

              	
                legal
                  and other costs in prosecuting or processing any U.S. or foreign
                  application, including without limitation, any continuing application
                  or
                  continuation in part application. 

              


      

      


      
        	 	
                3.2.

              	
                Application
                  of Total Recoveries.
                  Total Recoveries shall be applied in the following order of priority:
                  first to APAC in an amount equal to the APAC Costs, then to APAC
                  and
                  Licensor in proportion to their respective shares of the Net Proceeds.
                  All
                  Taxes (as defined below) shall be the financial responsibility
                  of the
                  Party obligated to pay such Taxes as determined by the applicable
                  law and
                  neither Party is or shall be liable at any time for any of the
                  other
                  Party’s Taxes incurred in connection with or related to amounts paid
                  under
                  this Agreement. The term “Taxes” shall mean any foreign, federal, state,
                  local, municipal or other governmental taxes, duties, levies, fees,
                  excises or tariffs, arising as a result of or in connection with
                  any
                  amounts paid under this Agreement, including without limitation:
                  

              


      

       

      
        
           

        

        
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                (a)

              	
                any
                  state or local sales or use taxes; 

              


      

      


      
        	 	
                (b)

              	
                any
                  import, value added or consumption
                  tax;

              


      

      


      
        	 	
                (c)

              	
                any
                  business transfer tax; 

              


      

      


      
        	 	
                (d)

              	
                any
                  taxes imposed or based on or with respect to or measured by any
                  net or
                  gross income or receipts of either Party;


              


      

      


      
        	 	
                (e)

              	
                any
                  franchise taxes, taxes on doing business, gross receipts taxes
                  or capital
                  stock taxes; or

              


      

       

      
        	 	
                (f)

              	
                any
                  other tax now or hereafter imposed by any governmental or taxing
                  authority
                  on any aspect of this Agreement and the obligations
                  hereunder.

              


      

      
         

      

      
        	 	 	
                If
                  Taxes are required to be withheld on any amounts otherwise to be
                  paid by
                  one Party to the other, the paying Party shall deduct and set off
                  such
                  Taxes from the amount otherwise due and owed to the receiving Party
                  and
                  pay them to the appropriate taxing authority. Each Party agrees
                  to
                  indemnify, defend and hold the other Party harmless from any Taxes
                  or
                  claims, causes of action, costs, expenses, reasonable attorneys’ fees,
                  penalties, assessments and any other liabilities of any nature
                  whatsoever
                  related to such Taxes to the extent such Taxes relate to amounts
                  paid
                  under this Agreement.

              


      

      

        
          	 	
                  3.3.

                	
                  Reporting.
                    All amounts payable to Licensor shall be due within thirty (30)
                    days after
                    the end of each calendar quarter with respect to Net Proceeds,
                    if any, in
                    such quarter. APAC will provide Licensor with a report of Total
                    Recoveries
                    and APAC Costs for each calendar quarter that Net Proceeds are
                    due to
                    Licensor. Licensor shall have the right to audit such reports
                    in
                    accordance with Section
                    5.2
                    below. All other payments from one Party to the other hereunder
                    shall be
                    due and payable within thirty (30) days following receipt of
                    the
                    applicable invoice.

                


        

      

       

      
      

      
        	 	
                3.4.

              	
                Licensor
                  Availability.
                  Upon APAC’s reasonable request, Licensor will be available from time to
                  time to consult with APAC or its attorneys on matters relating
                  to the
                  Patents. In the event that the testimony of any employee, director,
                  officer, consultant or agent of Licensor is taken in any action
                  relating
                  to the Patents, APAC’s attorneys will represent such party without
                  additional charge, and Licensor and such party will cooperate with
                  APAC
                  and its attorneys in preparing for such testimony. Licensor will
                  grant
                  access to APAC and allow APAC to make copies of all files in Licensor’s
                  possession or control relating to the Patents, including access
                  to such
                  documents as may be necessary to conduct enforcement and licensing
                  efforts. APAC will pay for Licensor’s reasonable out of pocket travel
                  expenses incurred at the request of APAC and any such expenses
                  will be
                  treated as APAC Costs. APAC acknowledges that no employee, director,
                  officer, consultant or agent of Licensor is an inventor on the
                  Patents and
                  that no one at Licensor has any personal knowledge of the Patents
                  or the
                  prosecution of the Patents prior to the acquisition date of the
                  Patents by
                  Licensor.

              


      

       

      
        
           

        

        
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                4.

              	
                REPRESENTATIONS
                  AND WARRANTIES

              


      

      


      
        	 	
                4.1.

              	
                Licensor
                  Warranties.
                  Licensor represents and warrants to APAC that, as of the Effective
                  Date
                  hereof:

              


      

      


      
        	 	
                4.1.1.

              	
                Based
                  upon the written representation of the Inventor of the Patent,
                  Licensor
                  believes it is the sole owner of the Patents and has all right,
                  title,
                  claims, interest and privileges arising from such ownership, free
                  and
                  clear of any liens, security interests, encumbrances, rights or
                  restrictions;

              


      

      


      
        	 	
                4.1.2.

              	
                Licensor
                  has no knowledge of whether the identity of all inventors of the
                  inventions described in the Patents as required by U.S. law has
                  been
                  disclosed to the United States Patent
                  Office;

              


      

      


      
        	 	
                4.1.3.

              	
                The
                  Patents and the inventions described in the Patents are (i) not
                  the
                  product or subject of any joint development activity or agreement
                  with any
                  third party; (ii) not the subject of any consortia agreement or
                  cross-license; and (iii) have not been financed in whole or in
                  part by any
                  third party;

              


      

      


      
        	 	
                4.1.4.

              	
                The
                  issued Patents remain in full force and effect as of the Effective
                  Date of
                  this Agreement;

              


      

      


      
        	 	
                4.1.5.

              	
                Licensor
                  has not assigned, licensed, granted covenants not to sue, transferred
                  or
                  otherwise conveyed to any other person or entity any of his rights,
                  title,
                  claims, interest or privileges with respect to the
                  Patents;

              


      

      


      
        	 	
                4.1.6.

              	
                Exhibit
                  A
                  includes all related patents, patent applications, foreign counterparts,
                  and all continuations, continuations in part, divisions, extensions,
                  renewals, reissues and re-examinations relating to all inventions
                  thereof,
                  which are in the same respective patent family or families as the
                  Patents;

              


      

      


      
        	 	
                4.1.7.

              	
                Licensor
                  believes that all maintenance fees that have become due with respect
                  to
                  the Patents have been paid in full;


              


      

      


      
        	 	
                4.1.8.

              	
                Licensor
                  believes that the Patents are not and have not been subject to
                  any action
                  or proceeding concerning their validity, enforceability, inventorship
                  or
                  ownership;

              


      

      


      
        	 	
                4.1.9.

              	
                Other
                  than the information disclosed in the prosecution history of the
                  Patents,
                  Licensor has no knowledge of any facts that could give rise to
                  a claim
                  that the Patents are invalid or unenforceable; and Licensor has
                  not
                  engaged in any conduct, or omitted to perform any necessary act,
                  the
                  result of which would invalidate the Patents or preclude their
                  enforceability;

              


      

      


      
        	 	
                4.1.10.

              	
                Licensor
                  has all requisite legal and corporate power and authority to enter
                  into
                  this Agreement, to consummate the transactions contemplated hereby,
                  and to
                  carry out and perform its obligations under the terms of this Agreement;
                  and

              


      

       

      
        
           

        

        
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                4.1.11.

              	
                The
                  execution, delivery, performance of and compliance with this Agreement
                  has
                  not resulted and will not result in any violation of, or conflict
                  with, or
                  constitute a default under (with or without notice or lapse of
                  time, or
                  both), or give rise to a right of termination, cancellation or
                  acceleration of any obligation or loss of any benefit under any
                  agreement
                  to which Licensor is a party.

              


      

      


      
        	 	
                4.2.

              	
                APAC
                  Warranties.
                  APAC represents and warrants to Licensor that, as of the Effective
                  Date
                  hereof:

              


      

      


      
        	 	
                4.2.1.

              	
                APAC
                  is a company duly organized and in good standing under the laws
                  of
                  Delaware;

              


      

      


      
        	 	
                4.2.2.

              	
                APAC
                  has authority to enter into this Agreement and implement its terms;
                  and
                  

              


      

      


      
        	 	
                4.2.3.

              	
                The
                  person executing this Agreement on behalf of APAC is duly authorized
                  to do
                  so.

              


      

      


      
        	
                5.

              	
                RECORDS
                  AND FEES

              


      

      


      
        	 	
                5.1.

              	
                Records.
                  APAC shall keep complete and proper records of the Total Recoveries
                  and
                  APAC Costs.

              


      

      


      
        	 	
                5.2.

              	
                Audit.
                  Licensor shall have the right, during reasonable business hours
                  no more
                  than once per calendar year, to audit, at Licensor’s expense, the
                  correctness of any previously unaudited APAC report by an independent
                  public accountant chosen by Licensor who may examine APAC’s records
                  pertinent to this Agreement. To the extent that the Licensor’s auditor
                  discovers any underpayment error exceeding ten (10%) percent of
                  Licensor’s
                  respective share of Net Proceeds, Licensor shall be entitled to
                  conduct
                  subsequent audits until such audits reveal no further errors. Licensor
                  and
                  his representatives shall hold in confidence any such information
                  and
                  shall not use the information for any purposes other than verifying
                  APAC’s
                  reporting in connection with this
                  Agreement.

              


      

      


      
        	 	
                5.3.

              	
                Patent
                  Prosecution.
                  Subsequent to Acceptable Completion, during the term of the Agreement,
                  APAC shall assume sole control of any and all activities, matters
                  and
                  proceedings before the United States Patent and Trademark Office
                  (the
                  “USPTO”) and foreign patent offices relating to the Patents, including
                  without limitation any reissues or reexaminations of any issued
                  United
                  States patent, the prosecution of any United States or foreign
                  patent
                  applications and the continuing prosecution of any pending United
                  States
                  or foreign patent applications among the Patents and the costs,
                  fees and
                  expenses paid by APAC in connection therewith shall be treated
                  as APAC
                  Costs. APAC will have sole and absolute discretion in filing, prosecuting,
                  abandoning and maintaining the Patents. Licensor hereby grants
                  APAC a
                  power of attorney permitting APAC to assume such sole control of
                  any and
                  all activities, matters and proceedings before the USPTO and foreign
                  patent offices relating to the Patents and Licensor shall fully
                  cooperate
                  with APAC, including without limitation the execution of such documents
                  as
                  APAC shall reasonably require, to timely address and prosecute
                  all such
                  activities, matters and proceedings before the USPTO and foreign
                  patent
                  offices.

              


      

       

      
        
           

        

        
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                6.

              	
                ENFORCEMENT
                  OF PATENT RIGHTS

              


      

      


      
        	 	
                6.1.

              	
                Good
                  Faith.
                  Subject to the terms and conditions of this Agreement, APAC will
                  use its
                  good faith efforts to pursue licensing and enforcement of the Patents
                  at
                  its expense. APAC will attempt to negotiate licenses with companies
                  that
                  APAC believes may be infringing the Patents. Notwithstanding any
                  of the
                  foregoing, APAC may at any time elect not to pursue licensing or
                  enforcement of any of the Patents if APAC determines, in its sole
                  discretion, that any such pursuit would be commercially unreasonable
                  or
                  otherwise unlawful or illegal. 

              


      

      


      
        	 	
                6.2.

              	
                Enforcement
                  Litigation.
                  APAC may, in its sole judgment, decide to institute enforcement
                  actions
                  against certain or all of the companies that APAC believes are
                  infringing
                  the Patents. APAC shall have the exclusive right to bring suit
                  to enforce
                  the Patents. Licensor shall join as a plaintiff at APAC’s request in the
                  event APAC’s counsel determines that Licensor is a necessary party to the
                  action. Licensor hereby grants APAC a power of attorney allowing
                  APAC to
                  (i) add Licensor as a party to any such action and/or (ii) to bring
                  an
                  action directly in Licensor’s name. In the event Licensor joins as a
                  plaintiff at APAC’s request or APAC brings an action in Licensor’s name,
                  or Licensor is named as a party by another party to such action,
                  APAC
                  shall have the power of attorney to settle any claims relating
                  to the
                  Patents on behalf of Licensor and APAC shall defend and indemnify
                  Licensor
                  against all liabilities, costs and expenses for proving infringement
                  and
                  defending validity and title of the Patents, except that, as provided
                  below, Licensor shall be responsible for its own counsel’s fees and costs
                  if it elects to retain separate counsel. Notwithstanding any of
                  the
                  foregoing, in the event that a court holds that Licensor has engaged
                  in
                  fraud, gross negligence, or willful misconduct, APAC shall have
                  no
                  obligation to indemnify Licensor for any judgments, liability,
                  loss,
                  damages, costs and expenses (including reasonable attorneys’ fees and
                  expenses of litigation) in connection therewith. APAC shall promptly
                  notify Licensor of any action wherein Licensor is named as a party
                  by APAC
                  or any other person or entity. Upon Licensor’s request, APAC shall update
                  Licensor on the ongoing licensing and enforcement efforts of APAC
                  with
                  respect to the Patents.

              


      

      


      
        	 	
                6.3.

              	
                Choice
                  of Counsel.
                  In the event that Licensor joins in any suit, either before or
                  after it is
                  initiated, Licensor shall have the right to be represented by counsel
                  of
                  his choice, provided that if Licensor chooses to have representation
                  separate from APAC, Licensor shall be responsible for paying all
                  his own
                  fees and costs related to such representation and APAC shall be
                  solely
                  responsible for the fees and costs incurred by its own counsel.
                  

              


      

      


      
        	 	
                6.4.

              	
                Cooperation.
                  Regardless of whether Licensor is named as a party to any enforcement
                  action, APAC reserves the sole right to select counsel, direct
                  the
                  litigation, and to negotiate and determine the terms of any settlement
                  or
                  other disposition of such action. The parties agree to fully cooperate
                  with each other in any litigation that is brought.
                  

              


      

      


      
        	
                7.

              	
                TERMINATION

              


      

       

      
        	 	
                7.1.

              	
                Term.
                  Unless earlier terminated as provided for in this Agreement, all
                  grants,
                  obligations and provisions recited in this Agreement and relating
                  to the
                  Patents shall continue in full force and effect, until the later
                  of either
                  a) the expiration date of the Patents or b) the conclusion of APAC’s
                  licensing and enforcement of the Patents. Notwithstanding the foregoing,
                  in the event that a final decree of invalidity from which no appeal
                  can
                  be, or is, taken, with respect to the Patents, this Agreement shall
                  terminate at such time. 

              


      

       

      
        
           

        

        
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                7.2.

              	
                APAC
                  Bankruptcy.
                  Licensor may terminate this Agreement in the event that APAC files
                  for
                  bankruptcy protection under any state or federal bankruptcy law
                  or a
                  petition for bankruptcy is filed against APAC and not dismissed
                  within
                  ninety (90) days. 

              


      

      


      
        	 	
                7.3.

              	
                Material
                  Breach.
                  Either party may terminate this Agreement upon written notice to
                  the other
                  if the other party breaches any material representation, warranty
                  or
                  agreement in this Agreement and fails to cure such breach within
                  ninety
                  (90) days of receipt of such written notice detailing the alleged
                  breach.

              


      

      


      
        	 	
                7.4.

              	
                Commercially
                  Unreasonable.
                  APAC may terminate this Agreement, upon the sending written notice
                  to
                  Licensor, if APAC determines, in its sole judgment, that licensing
                  or
                  enforcement of the Patents is not commercially reasonable or
                  practicable.

              


      

      


      
        	 	
                7.5.

              	
                Termination
                  Period.
                  In the event of Acceptable Completion, Licensor may also terminate
                  this
                  Agreement within a ninety (90) day period, beginning two (2) years
                  from
                  the date of such Acceptable Completion (the “Termination Period”) unless
                  APAC has either (i) filed any action or counterclaim for infringement
                  of
                  any of the Patents, or (ii) generated any Total Recoveries from
                  licensing
                  or enforcement of the Patents (the failure of (i) and (ii) above
                  shall be
                  referred to as a “Termination Event”). In order to terminate this
                  Agreement pursuant to this Section
                  7.5,
                  within the Termination Period, Licensor shall provide APAC with
                  written
                  notice of its intention to exercise its right to terminate this
                  Agreement
                  under this Section
                  7.5,
                  at which time APAC shall have a ninety (90) day period from the
                  time it
                  receives such notice, in which it may cure the Termination Event
                  giving
                  rise to the right of termination (the “Cure Period”) by either (i) filing
                  an action (or counterclaim) to enforce any of the Patents or (ii)
                  generating Total Recoveries and paying Licensor its share of the
                  Net
                  Proceeds, if any. If Licensor does not give APAC notice of its
                  intention
                  to terminate within the Termination Period or APAC cures the Termination
                  Event during the Cure Period, then Licensor’s right to terminate this
                  Agreement under this Section
                  7.5
                  shall lapse.

              


      

      


      
        	 	
                7.6.

              	
                Final
                  Ruling.
                  In the event of any dispute as to whether a party has breached
                  this
                  Agreement pursuant to Section
                  7.3
                  above or whether a cure has been effected, the matter shall be
                  submitted
                  to litigation pursuant to Section
                  9
                  hereof, and there shall be no termination of the license under
                  this
                  Agreement unless and until there is a final ruling that there has
                  been an
                  uncured breach, as provided herein.

              


      

       

      
        
          	 	
                  7.7.

                	
                  Licensor
                    Payments after Termination.
                    Any termination of this Agreement shall not relieve APAC of liability
                    for
                    any payments due to Licensor accrued prior to the effective date
                    of such
                    termination. 

                


        

      

      


      
        	 	
                7.8.

              	
                APAC
                  Payments after Termination.
                  In
                  the event of any termination of this Agreement, regardless of the
                  cause,
                  after payment of any monies due Licensor, APAC shall be entitled
                  to retain
                  or receive the portion of Total Recoveries that it would be entitled
                  to
                  retain or receive if this Agreement were in effect, which (i) accrued
                  or
                  was received prior to the termination date, (ii) accrues or is
                  received
                  after the termination date as a result of any settlement, license
                  agreement or other agreement or transaction that was negotiated,
                  made or
                  occurred prior to the termination date, or (iii) resulted from
                  any lawsuit
                  or negotiations that were pending at or prior to the occurrence
                  of such
                  termination.

              


      

      


      
        	 	
                7.9.

              	
                Licensor
                  Bankruptcy.
                  The parties acknowledge and agree that this Agreement is a contract
                  under
                  which APAC is a licensee of intellectual property as provided in
                  Section
                  365(n) of title 11, United States Code (the "Bankruptcy Code").
                  Licensor
                  acknowledges that if Licensor, as a debtor in possession or a trustee
                  in
                  bankruptcy in a case under the Bankruptcy Code (the "Bankruptcy
                  Trustee"),
                  rejects this Agreement, APAC may elect to retain all of its rights
                  under
                  this Agreement as provided in Section 365(n) of the Bankruptcy
                  Code. Upon
                  written request of APAC to Licensor or the Bankruptcy Trustee,
                  Licensor
                  will not interfere with any of the rights of APAC as provided in
                  this
                  Agreement. 

              


      

       

      
        
           

        

        
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                8.

              	
                ASSIGNMENT

              


      

      


      
        	 	
                8.1.

              	
                Successors.
                  This Agreement shall inure to the benefit of, and be binding upon
                  the
                  respective successors, assigns, heirs, beneficiaries and personal
                  representatives of Licensor and APAC, subject to Section
                  8.2
                  below.

              


      

      


      
        	 	
                8.2.

              	
                Assignability.
                  This Agreement is personal and non-assignable, except it may be
                  assigned
                  by APAC to an affiliate of APAC, provided such affiliate (i) is
                  owned or
                  controlled, directly or indirectly, by APAC or the parent of APAC,
                  and
                  (ii) agrees to be bound by all the terms and conditions of this
                  Agreement
                  in writing, including the obligation to make payments hereunder.
                  Notwithstanding anything to the contrary, Licensor acknowledges
                  and agrees
                  that: (a) Licensor may not at any time directly or indirectly transfer
                  the
                  License, in whole or in part, to any third party, including without
                  limitation any Exclusive Party; and (b) an Exclusive Party may
                  not at any
                  time claim ownership or entitlement to any License or otherwise
                  obtain or
                  be deemed to obtain directly or indirectly any rights, benefits,
                  licenses
                  or immunities, in whole or in part, under any License, whether
                  by,
                  through, as a result of, or otherwise in connection with any agreement,
                  contract, transaction or business combination with Licensor. Except
                  as set
                  forth above with respect to the License and Exclusive Parties,
                  Licensor
                  may transfer or assign all or any part of his interest in this
                  Agreement
                  or sell or transfer all or some of the Patents, provided that (i)
                  the
                  transferee or assignee is not an Exclusive Party; (ii) the transferee
                  or
                  assignee agrees to be bound by the terms of this Agreement in writing;
                  and
                  (iii) Licensor shall continue to be bound by the terms of this
                  Agreement.

              


      

      


      
        	
                9.

              	
                 GOVERNING
                  LAW AND CONSENT TO
                  JURISDICTION

              


      

       

      
        	 	
                9.1.

              	
                Choice
                  of Laws.
                  This Agreement shall be governed by and construed under applicable
                  federal
                  law and the laws of the State of California, excluding any conflict
                  of law
                  provisions. APAC and Licensor each irrevocably consent to the exclusive
                  jurisdiction of any California state or federal court sitting in
                  the
                  Central District of California, over any suit, action or proceeding
                  arising out of or relating to this Agreement. APAC and Licensor
                  hereby
                  waive personal service of any summons, complaint, or other process
                  in any
                  action in any California state or federal court sitting in the
                  Central
                  District of California, and agree that all service thereof may
                  be made by
                  (a) certified or registered mail, return receipt requested, to
                  the other
                  party’s address identified in the opening paragraph of this Agreement;
                  or
                  (b) by such other method authorized by the California Long Arm
                  Statute.

              


      

       

      
        	 	
                9.2.

              	
                Consequential
                  Liability.
                  Neither APAC nor Licensor shall be liable for any consequence or
                  damage
                  arising out of or resulting from the manufacture, use or sale of
                  products
                  under the Patents. In no event shall any party be entitled to special,
                  indirect, consequential damages, including lost profits, or punitive
                  damages for breach of this
                  Agreement.

              


      

       

      
        
           

        

        
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                10.

              	
                CONFIDENTIALITY

              


      

       

      
        	 	
                10.1.

              	
                All
                  information provided pursuant to this Agreement, including without
                  limitation (but not including the existence of this Agreement),
                  the terms
                  of this Agreement, shall be regarded as confidential information
                  (“Confidential Information”). The Parties agree that, other than as
                  required by law, they shall not disclose any Confidential Information
                  and
                  shall use the Confidential Information only for the purposes set
                  forth
                  herein. Either party may disclose Confidential Information to its
                  financial and legal advisors subject to confidentiality obligations
                  at
                  least as stringent as those provided in this Agreement. Licensor
                  acknowledges that APAC’s parent company, Acacia Research Corporation
                  (“Acacia”), is a publicly traded company, and that Acacia may be required
                  to publicly disclose the signing of this Agreement, as well as
                  certain
                  terms of the Agreement. Confidential Information shall not include
                  information that: 

              


      

       

      
        	 	
                (a)

              	
                was
                  already known, otherwise than under an agreement of secrecy or
                  non-use, at
                  the time of its disclosure; 

              


      

       

      
        	 	
                (b)

              	
                has
                  passed into the public domain prior to or after its disclosure,
                  otherwise
                  than through any act or omission attributable to principals, officers,
                  employees, consultants or agents of the receiving party; or
                  

              


      

       

      
        	 	
                (c)

              	
                was
                  subsequently disclosed, otherwise than under an agreement of secrecy
                  or
                  non-use, by a third party that had not acquired the information
                  under an
                  obligation of confidentiality.

              


      

       

      
        	 	 	
                Nothing
                  in this Paragraph 10.1 shall be construed as precluding Licensor
                  or APAC
                  from complying with any security disclosure laws and both APAC
                  and
                  Licensor acknowledge that the other Party is a public company and
                  is
                  required to comply with the disclosure requirements of appropriate
                  state
                  and federal securities laws. 

              


      

       

      
        	 	
                10.2.

              	
                Preservation
                  of Privilege.
                  The Parties agree that they may disclose Confidential Information
                  in
                  furtherance of their common legal interest in exploring business
                  opportunities involving the Patents, including litigation involving
                  one or
                  more of such Patents. Such Confidential Information may be subject
                  to the
                  attorney-client privilege, work product doctrine or other applicable
                  privilege. The parties understand and agree that it is their desire,
                  intention and mutual understanding that the sharing of such Confidential
                  Information is not intended to, and shall not, waive or diminish
                  in any
                  way the confidentiality of such material or its continued protection
                  under
                  the attorney-client privilege, work product doctrine or other applicable
                  privilege. All Confidential Information provided by a party that
                  is
                  entitled to protection under the attorney-client privilege, work
                  product
                  doctrine or other applicable privilege shall remain entitled to
                  such
                  protection under these privileges, this Agreement, and under the
                  joint
                  defense doctrine. Nothing in this Section shall be interpreted
                  to mean
                  that a party hereto would be prevented from using Confidential
                  Information
                  in a legal proceeding against the other party hereto based upon
                  a dispute
                  arising out of this Agreement; provided that the other party has
                  been
                  notified in advance of such use or disclosure and been afforded
                  sufficient
                  opportunity to seek and obtain confidential treatment by the court
                  or
                  other entity having jurisdiction over the matter at
                  hand.

              


      

       

      
        
           

        

        
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                  11.

                	
                  MISCELLANEOUS

                


        

      

       

      
        	 	
                11.1.

              	
                Notice.
                  All notices or communications which either party may desire, or
                  be
                  required, to give or make to the other shall be in writing and
                  shall be
                  deemed to have been duly given or made if and when forwarded by
                  registered
                  mail, certified mail, facsimile or recognized overnight courier
                  to the
                  address set forth above in this Agreement or to such other address
                  as a
                  party shall give to the other in writing delivered at the last
                  address
                  specified in the manner prescribed by this
                  Agreement.

              


      

      


      
        	 	
                11.2.

              	
                No
                  waiver.
                  The failure to act upon any default hereunder shall not be deemed
                  to
                  constitute a waiver of such
                  default.

              


      

      


      
        	 	
                11.3.

              	
                Entire
                  Agreement.
                  This Agreement constitutes the entire understanding of the parties
                  with
                  respect to its subject matter and may not be modified or amended,
                  except
                  in writing by the parties. Nothing in this Agreement, whether expressed
                  or
                  implied, shall be construed to give any person (other than the
                  Parties and
                  their respective permitted successors and assigns), any legal or
                  equitable
                  right, remedy or claim under or in respect of this Agreement or
                  any
                  covenants, conditions or provisions contained herein, as a third
                  party
                  beneficiary or otherwise.

              


      

      


      
        	 	
                11.4.

              	
                Provision
                  Invalidity.
                  If for any reason in any jurisdiction in which any provision of
                  this
                  Agreement is sought to be enforced, any one or more of the provisions
                  of
                  this Agreement shall be held invalid, illegal or unenforceable
                  in any
                  respect, such holding shall not affect any other provision of this
                  Agreement and this Agreement shall be construed as if such invalid,
                  illegal or unenforceable provision had never been contained
                  therein.

              


      

      


      
        	 	
                11.5.

              	
                Counterparts.
                  This Agreement may be executed in several counterparts, each of
                  which
                  shall constitute an original, but all of which together shall constitute
                  one and the same instrument. A faxed or e-mailed copy of a signature
                  page
                  shall be considered an original for purposes of this
                  Agreement.

              


      

      


      
        	 	
                11.6.

              	
                Headings.
                  The headings contained in this Agreement have been inserted for
                  convenient
                  reference only and shall not modify, define, expand or limit any
                  of the
                  provisions of this Agreement.

              


      

       

      
        	
                IN
                  WITNESS WHEREOF,
                  the Parties have executed this Agreement on the Effective
                  Date. 

              


      

       

      
        	
                eRoom
                  System Technologies, Inc.

              	 	
                ACACIA
                  PATENT ACQUISITION LLC

              
	
                 

                By:/s/
                  David Gestetner

              	 	
                 

                By:
                  /s/ Dooyong Lee 

              
	
                 

                Print
                  Name: David Gestetner

              	 	
                 

                Print
                  Name: Dooyong Lee

              
	
                 

                Title:
                  CEO

              	 	
                 

                Title:
                  Executive Vice President

              
	
                 

                Date:
                  November 11, 2008

              	 	
                 

                Date:
                  November 11, 2008

              


      

      


      
        
           

        

        
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      EXHIBIT
        A

       

      U.S.
        PATENTS & APPLICATIONS

      

        
          	
                  US

                  Patent
                    No.

                	
                  US

                  Application

                  No.

                	
                  Filing
                    Date

                	
                  Issue
                    Date

                	
                  Title

                
	
                  4939352

                	
                  07/430,889

                	
                  11-02-1989

                	
                  07-03-1990

                	
                  CREDIT
                    CARD BILLING SYSTEM

                
	
                   

                	
                  *07/547,322

                	
                  07-02-1990

                	
                   

                	
                   

                
	
                  4883948

                	
                  07/338,740

                	
                  04-17-1989

                	
                  11-28-1989

                	
                  CREDIT
                    CARD STORAGE SYSTEM

                
	
                  4857714

                	
                  07/170,310

                	
                  03-18-1988

                	
                  08-15-1989

                	
                  CREDIT
                    CARD STORAGE SYSTEM

                


        

      

      

        
          	
                  *

                	
                  EXPIRED
                    OR ABANDONED

                


        

      

       

       

      FOREIGN
        PATENTS & APPLICATIONS 

      

        
          	
                  Foreign

                  Patent
                    or Publication No.

                	
                  Application

                  No.

                	
                  Publication
                    Date

                	
                  Country

                	
                  Title

                
	
                  WO9013080A1

                	
                  WO1989US0003494

                	
                  01-11-1990

                	
                  WTO

                	
                  CREDIT
                    CARD STORAGE SYSTEM

                
	
                  JP04504768T2

                	
                  JP1989000509548

                	
                  08-20-1992

                	
                  JAPAN

                	
                   

                
	
                  EP0468961B1

                	
                  EP1989000910033

                	
                  03-01-1995

                	
                  EU

                	
                  CREDIT
                    CARD STORAGE SYSTEM

                
	
                  DE68921494C0

                	
                  DE1989068921494

                	
                  04-06-1995

                	
                  DE

                	
                  DURCH
                    KREDITKARTE BETAETIGTER SAFE.

                
	
                  CA1327240A1

                	
                  CA1989000608320

                	
                  02-22-1994

                	
                  CA

                	
                  CREDIT
                    CARD STORAGE SYSTEM

                
	
                  BR8907887A

                	
                  BR1989000007887

                	
                  12-24-1991

                	
                  BR

                	
                  SISTEMA
                    DE ARMAZENAMENTO OPERAVEL COM CARTAO DE CREDITO

                
	
                  AU4201489A1

                	
                  AU1989000042014

                	
                  11-16-1990

                	
                  AU

                	
                  CREDIT
                    CARD STORAGE SYSTEM

                
	
                  AT0119304E

                	
                  AT1989000910033

                	
                  03-15-1995

                	
                  AT

                	
                  DURCH
                    KREDITKARTE BETAETIGTER SAFE.

                


        

         

        
          
             

          

          
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