exv10w25



 




EXHIBIT 10.25




(Confidential Portions Omitted)




PATENT LICENSE AND SETTLEMENT AGREEMENT




     This patent license and settlement agreement (“Agreement”), is made
effective this 19th day of December, 2003 (the “Effective Date”), by and
between Pitney Bowes Inc., a Delaware corporation, with its principal place of
business at One Elmcroft Road Stamford, Connecticut 06926-0700 (“PBI”) and
Stamps.com Inc., a Delaware corporation, with its principal place of business
at 3420 Ocean Park Boulevard, Suite 1040, Santa Monica, California 90405
(“Stamps.com”). PBI and Stamps.com shall each be referred to as a “Party” and
collectively as the “Parties.” This Agreement is made with reference to the
following facts:




     A.   
WHEREAS, PBI and Stamps.com have been, or are presently,
involved in certain patent infringement Litigation (as defined in
Section 1), in U.S. District Courts in Delaware, Texas and
California.




     B.   
WHEREAS, Stamps.com and PBI each own and control certain
patents, including patents asserted in the Litigation.




     
C.   WHEREAS, in the Litigation, Stamps.com and PBI each dispute
whether certain products or services of the other infringe patents
asserted in the Litigation.




     
D.   WHEREAS, PBI and Stamps.com desire to settle and compromise
their disputes in the Litigation.




     
E.   WHEREAS, as a part of their settlement and compromise, PBI
and Stamps.com desire to grant each other certain patent licenses,
releases and covenants not to sue, as further specified herein.




     NOW, THEREFORE, the parties agree as follows:




Definition of Terms.




     The following terms shall have the following meanings when used in this
Agreement:




     1.1   PBI Patent(s).
 “PBI Patent(s)” shall mean all patents and published
patent applications owned or controlled by PBI, now or in the future.




     1.2   Licensed PBI Patents.
“Licensed PBI Patents” shall mean




<redacted — Confidential Portions Omitted and Filed Separately with the

Commission>





 








 






     1.3   Stamps Patent(s). “Stamps Patent(s)” shall mean all patents and
published patent applications owned or controlled by Stamps.com, now or in the
future.




     1.4   Licensed Stamps Patents. “Licensed Stamps Patents” shall mean




<redacted — Confidential Portions Omitted and Filed Separately with the

Commission>




     1.5   Related Patents. “Related Patents” for each given or designated
patent or patent application shall mean: (i) all continuations,
continuations-in-part and divisional, reissue, reexamination and priority
patents and patent applications (including all continuations,
continuations-in-part and divisional, reissue, reexamination of such priority
patents and patent applications); patents of addition and utility models; and
(ii) all foreign counterpart or parallel patents and patent applications,
including those that would have been counterparts if timely filed, of all of
the foregoing patents, patent applications and utility models.




     1.6   PBI Field. “PBI Field” shall mean the field of Traditional Metering
Systems; Other Metering Systems; other payment systems; mail and parcel
processing systems; logistics systems; document management systems; and
electronic statement, billing and payment systems. This PBI Field shall
include, without limitation to the above, other products, supplies and services
that are ancillary to and provided in connection with any of the above.




     1.7   Stamps Field. “Stamps Field” shall mean the field of Other Metering
Systems, other payment systems, and document management systems. This Stamps
Field shall include, without limitation to the above, other products, supplies
and services that are ancillary to and provided in connection with the above.




     1.8   Traditional Metering System. “Traditional Metering System” shall mean
a postage evidencing system that employs (i) a specialized (i.e., not generally
commercially available) printer that is dedicated to printing postage indicia
and related functions; and (ii) storage of postage and generation of
indicia/tokens, both within a local (i.e., located entirely at a customer
facility) postal security device PSD, or similar device.




     1.9   Other Metering System. “Other Metering System” shall mean a postage
evidencing system that is not a Traditional Metering System.




     1.10   Sunset Period. “Sunset Period” shall mean <redacted -
Confidential Portions Omitted and Filed Separately with the Commission>
years from the Effective Date.




     1.11   Change of Control. “Change of Control” shall mean any transfer by a
party of more than 50% of its outstanding shares or other rights to vote for
the election of directors.





 








 



     1.12   Subsidiary. “Subsidiary” shall mean, with respect to a Party, any
firm, company, corporation, partnership or other entity which, as of the
Effective Date or in the future, directly or indirectly is owned or controlled
by that Party, but only so long as such ownership or control exists.




     1.13   Restricted List. The “Restricted List” means that list of entities,
set forth on Exhibit G hereto.




     1.14   Litigation. “Litigation” shall mean the following lawsuits (whether
now pending or previously dismissed): Pitney Bowes Inc. vs. Stamps.com Inc.,
Civil Action No. 99-381 (JJF) (D. Del.); Pitney Bowes Inc. vs. Stamps.com Inc.,
Civil Action No. 500CV262 (E.D. Tex.); Pitney Bowes, Inc. v. Stamps.com, Inc.,
Civil Action No. 01-641 (JJF) (D. Del.); Stamps.com, Inc. v. Pitney Bowes,
Inc., Case No. CV-01-05288 CSM (BQRx) (C.D. Cal.); Stamps.com, Inc. v. Pitney
Bowes, Inc., Civil Action No. 02-042 (JJF) (D. Del.); and Pitney Bowes Inc. v.
Stamps.com, Inc., Civil Action No. 02-1660 (JJF) (D. Del.).




     1.15   Pending Litigation. “Pending Litigation” shall mean Pitney Bowes
Inc. vs. Stamps.com Inc., Civil Action No. 99-381 (JJF) (D. Del.); Stamps.com,
Inc. v. Pitney Bowes, Inc., Civil Action No. 02-042 (JJF) (D. Del.); and Pitney
Bowes Inc. v. Stamps.com, Inc., Civil Action No. 02-1660 (JJF) (D. Del.).




     1.16   Representatives. “Representatives” shall mean a Party’s directors,
officers, employees, assigns, attorneys, agents, parent corporations or other
entities controlling, controlled by or under common control with the Party.




     1.17   Term. The “Term” of this Agreement shall be five (5) years from the
Effective Date.




2.    Patents Rights Granted




     2.1   Licenses.




     2.1.1   Stamps.com License to PBI. Subject to the provisions of this
Agreement, Stamps.com hereby grants to PBI and its Subsidiaries, a
worldwide non-exclusive license under the Licensed Stamps Patents to
make, have made, use, have used, sell, offer to sell, export or import
products or services in the PBI Field. The foregoing license does not
include any rights to sub-license, except that PBI may sublicense its
respective manufacturing contractors to make, its respective distributors
and partners to sell, use, offer to sell, export and import and its
respective end users to use PBI products and services in the PBI Field.





     2.1.2   PBI License to Stamps.com. Subject to the provisions of this
Agreement, PBI hereby grants to Stamps.com and its Subsidiaries, a
worldwide non-exclusive license under the Licensed PBI Patents to make,
have made, use, have used, sell, offer to sell, export or import products
or services in the Stamps Field. The foregoing license does not include
any rights to sub-license, except that Stamps.com may sublicense its
respective manufacturing contractors to make, its respective distributors
and partners to sell, use,



 








 



offer to sell, export and import and its respective end users to use
Stamps.com’s products and services in the Stamps.com Field.




     2.2   No Other Rights Granted. Except as provided in Sections 2.1.1 and
2.1.2 above (and subject to Section 3 regarding Picks), neither Party grants
any licenses to any other intellectual property rights it now owns or hereafter
may own.




     2.3   Duration of Licenses. All patent licenses granted hereunder extend
for the full term of each of the Licensed PBI Patents and Licensed Stamps
Patents, as the case may be, including any extensions of term that may be
permitted by law.




     2.4   Assignment/License of PBI Patents or Stamps Patents.




     2.4.1   If, after the Effective Date, any PBI Patents or Stamps
Patents are assigned, as part of a spin off or otherwise, or exclusively
licensed to a third party, they shall remain subject to the terms of this
Agreement, including the rights of the Parties to make future Picks as
provided in Section 3 below.




     2.4.2   The parties further agree that, during the term of this
Agreement, neither Party will assign or exclusively license such PBI
Patents or Stamps Patents if the effect of such assignment or license
would be to preclude either party from granting to the other Party, in
connection with a Pick by the other Party, the type and scope of license
defined in this Agreement.




3.    Additional Licensed Patents (Picks).




     3.1   Pitney Picks. PBI may designate




<redacted — Confidential Portions Omitted and Filed Separately with the

Commission>




     3.2   Stamps.com Picks. Stamps.com may designate




<redacted — Confidential Portions Omitted and Filed Separately with the

Commission>




     3.3   The vesting periods for the Pitney Picks and the Stamps.com Picks are
as follows:





 








 



<redacted — Confidential Portions Omitted and Filed Separately with the

Commission>




     3.4   Disputes Concerning Picks.




<redacted — Confidential Portions Omitted and Filed Separately with the

Commission>




4.    Releases and Dismissal of Pending Litigation.




     4.1   Release by PBI. PBI hereby releases and discharges Stamps.com, its
current Subsidiaries, and their respective Representatives from any and all
claims, judgments, damages, actions, causes of action, liability, costs,
expenses, controversies and trespasses of any kind, at law or in equity, known
or unknown, arising from or related to any act of patent infringement committed
by Stamps.com (collectively “PBI Claims”), its current Subsidiaries and their
respective Representatives on or before the Effective Date, including without
limitation all claims or causes of action asserted in the Litigation. This
release shall also apply to any suppliers, manufacturers, distributors,
licensees, customers or users of Stamps.com’s products or services with respect
to PBI Claims arising from their manufacture, distribution, licensing, purchase
or use of Stamps.com’s products or services on or before the Effective Date.




     4.2   Release by Stamps.com. Stamps.com hereby releases and discharges PBI,
its current Subsidiaries, and their respective Representatives from any and all
claims, judgments, damages, actions, causes of action, liability, costs,
expenses, controversies and trespasses of any kind, at law or in equity, known
or unknown, arising from or related to any act of patent infringement committed
by PBI (collectively “Stamps Claims”), its current Subsidiaries and their
respective Representatives on or before the Effective Date, including without
limitation all claims or causes of action asserted in the Litigation. This
release shall also apply to any suppliers, manufacturers, distributors,
licensees, customers or users of PBI’s products or services with respect to
Stamps Claims arising from their manufacture, distribution, licensing, purchase
or use of PBI’s products or services on or before the Effective Date.




     4.3   Section 1542 of the California Civil Code. Neither Party believes the
releases set forth in Section 4 above constitute general releases within the
meaning of California Civil Code Section 1542. Nevertheless, for the avoidance
of doubt, the Parties each expressly waive any and all rights under Section
1542 of the California Civil Code, or any other federal, state, or local
statutory rights or rules, or principles of common law or equity similar to
Section 1542 (“similar provision”) with respect to any and all claims,
judgments, damages, actions, causes of action, controversies and trespasses of
any kind, at law or in equity, known or unknown, released by it in this
Agreement. Thus, the Parties may not invoke the benefits of Section 1542 or
any similar provision in order to prosecute or assert in any manner any claims,
judgments, damages, actions,




 








 





 causes of action, controversies and trespasses of any kind, at law or in
equity, known or unknown that it has released under this Agreement. Section
1542 provides as follows:




	 		 	A general release does not extend to claims which the
creditor does not know or suspect to exist in his
favor at the time of executing the release, which if
known by him must have materially affected his
settlement with the debtor.






     4.4   Dismissal of Actions. Within five (5) business days of the execution
of this Agreement, the parties shall execute and cause to be filed with the
United States District Court for the District of Delaware stipulated dismissals
with prejudice, in substantially the form attached hereto as Exhibits D, E and
F, to effect dismissal with prejudice of the Pending Litigation, with each
Party to bear its own fees and costs. If for any reason the Court refuses to
enter the stipulated dismissals, the Parties agree to take such other and
further steps as are reasonably necessary to effect dismissal with prejudice of
the Pending Litigation, with each Party to bear its own fees and cost.




<redacted — Confidential Portions Omitted and Filed Separately with the

Commission>




5.    Covenants Not to Sue.




     5.1   Pitney Covenant. During the Term of this Agreement, PBI agrees not to
commence or maintain any patent litigation against Stamps.com, its
Subsidiaries, and their respective Representatives. PBI further agrees, during
the Term of this Agreement, not to commence or maintain any patent litigation
against any suppliers, manufacturers, distributors, licensees, customers or
users of Stamps.com’s products or services, but only to the extent such patent
litigation arises out of Stamps.com’s products or services where Stamps.com
could be liable for direct infringement, contributory infringement or
inducement to infringe but for the licenses and/or covenants not to sue granted
in this Agreement.




     5.2   Stamps.com Covenant. During the Term of this Agreement, Stamps.com
agrees not to commence or maintain any patent litigation against PBI, its
Subsidiaries, and their respective Representatives. Stamps.com further agrees,
during the Term of this Agreement, not to commence or maintain any patent
litigation against any suppliers, manufacturers, distributors, licensees,
customers or users of PBI’s products or services, but only to the extent such
patent litigation arises out of PBI’s products or services where PBI could be
liable for direct infringement, contributory infringement or inducement to
infringe but for the licenses and/or covenants not to sue granted in this
Agreement.




     5.3   No effect on Unlicensed Infringement. Notwithstanding the covenants
not to sue set forth Sections 5.1 and 5.2 above, unlicensed infringement
occurring during the Term of this




 








 





 Agreement is not released and damages for such infringement shall accrue
during the Term of this Agreement. The covenants not to sue in Sections 5.1
and 5.2 shall toll any application of the doctrine of laches, equitable
estoppel or the statute of limitations.




6.    Payments.




     6.1   By PBI: <redacted — Confidential Portions Omitted and Filed
Separately with the Commission>




     6.2   By Stamps.com: <redacted — Confidential Portions Omitted and
Filed Separately with the Commission>




7.    Representations and Warranties.




     7.1   Each Party represents and warrants that (i) it has the full right and
authority to enter into this Agreement; (ii) the terms of this Agreement, and
the Parties entering into and performance of this Agreement do not conflict
with any prior agreements or obligations of such Party; <redacted -
Confidential Portions Omitted and Filed Separately with the Commission> .




<redacted — Confidential Portions Omitted and Filed Separately with the Commission>




     7.4   Except as otherwise provided in this Section 7, neither Party makes
any representations or warranties of any kind, including, without limitation,
any representations or warranties concerning the validity, enforceability, or
infringement of any patent licensed hereunder or concerning the infringement,
non-infringement or other characteristics of any product or service subject to
this Agreement.




8.    Change of Control.




     8.1   Survival of Licenses; Assumption of Rights and Obligations. If either
Party undergoes a Change of Control (whether with an entity from the Restricted
List or otherwise), the licenses, releases, covenants not to sue and other
rights granted to the acquired Party under this Agreement prior to the Change
of Control shall survive, and be assumed by the acquirer, provided the acquirer
agrees in writing to assume all rights and obligations under the Agreement as
if an original party to the Agreement. Following a Change of Control, any
future Picks by the Party not undergoing the Change of Control may be made only
from those patents or patent applications that: (i) were owned or controlled
by the acquired Party prior to the Change of Control or (ii) have one or more
named inventors who were employees or consultants of the acquired Party on or
before the date of the Change of Control.





 








 



     8.2   Certain Transactions Not A Change of Control. Notwithstanding
anything to the contrary herein, the transfer by one Party of any rights and
obligations under this Agreement as part of any internal restructuring
(re-incorporation or the like) shall be permitted and shall not be considered a
Change of Control invoking the provisions of Section 8.3.




     8.3   Restricted List Change of Control. Any Change of Control by a Party
in favor of one of the entities on the Restricted List (Exhibit G) taking place
before the expiration of the Sunset Period shall be subject to the following
provisions:




     8.3.1   Unexercised Picks Expire. Any unexercised Picks, whether
vested or not yet vested, of the acquired Party only, expire upon the
Change of Control.




     8.3.2   Limits to Covenants Not to Sue. The Covenant Not to Sue
granted by the non-acquired Party (i) shall be deemed amended to be
limited to activity in the acquired Party’s Field; and (ii) does not
impact any previously existing litigation or disputes between any entity
on the Restricted List and the non-acquired Party. The Covenant Not to
Sue granted by the acquired Party shall be deemed limited to those
patents or patent applications that: (x) were owned or controlled by the
acquired Party prior to the Change of Control or (y) have one or more
named inventors who were employees or consultants of the acquired Party
on or before the date of the Change of Control.




     8.3.3   Contingent Royalty Payable by Successor. Following the Change
of Control and until the expiration of the Sunset Period, the acquiring
Party (or its successor in interest) shall pay a royalty to the other
Party based on the amount by which the total postage value printed by the
acquired Party’s customers using its equipment and systems exceeds a
“Base Postage Value,” by more than 100% year-over-year growth. The
“Base Postage Value” is the total postage value printed by the acquired
Party’s customers using its equipment and systems during the twelve (12)
months preceding the Change of Control. For each 12-month period
thereafter until expiration of the Sunset Period, the royalty payment due
shall be <redacted — Confidential Portions Omitted and Filed
Separately with the Commission> of the amount by which the total
postage value printed by the acquired Party’s customers using its
equipment and systems during that 12 months exceeds the multiple of the
Base Postage Value set forth as follows:




	 	 	 
	 
	

	12-Month Period Following	 	Multiple of Base Postage
	Change of Control	 	Value
	

	1st	 	
2 x Base Postage Value
	

	2nd	 	
4 x Base Postage Value
	

	3rd	 	
8 x Base Postage Value
	

	<redacted — Confidential

Portions Omitted and Filed

Separately with the

Commission>	 	
<redacted — Confidential

Portions Omitted and Filed

Separately with the

Commission>
	









 








 






For the final 12-month period that includes the expiration of the Sunset
Period, the payment due, if any, shall be prorated based on the portion
of that 12-month period that occurs prior to the expiration of the Sunset
Period. No payments shall be required with respect to any postage
printed after expiration of the Sunset Period. Any payments under this
paragraph shall be due sixty (60) days after the close of the applicable
12-month period.




     8.3.4   Audit Rights. In the event of a Change of Control in favor of
an entity on the Restricted List during the Sunset Period, the acquiring
entity shall maintain books and records of postage printed reasonably
necessary to perform the calculations called for in Section 8.3.2 above.
The Party not subject to the Change of Control shall have the right to
audit such books and records through outside auditors, no more than once
per year, with respect to payments due for periods through the end of the
Sunset Period. The Party conducting the audit shall pay for the cost of
the audit, except that if the audit reveals an underpayment for any
12-month period of ten percent (10%) or more of the royalties due the
cost of the audit shall be borne by the audited Party and the audit shall
not count toward the one audit per year limit. All audits must be
initiated within eighteen (18) months after the end of the Sunset Period.




9.    After-Acquired Entities and Spun-Off Products/Subsidiaries.




     9.1   After-Acquired Entities. Entities, products and/or services that are
acquired after the Effective Date by a Party to this Agreement become licensed
to the Licensed PBI Patents and Licensed Stamps Patents, as the case may be, as
of the date of acquisition.




     9.2.   Spun-Off Products or Subsidiaries. If a Party (Transferring Party)
transfers a product, service or Subsidiary to a third party (Recipient Party),
then the already existing licenses under this Agreement flow to the transferred
product, service or Subsidiary provided that: (i) the Field definition for the
Recipient Party shall be no broader than the Transferring Party’s Field, and
shall be further limited to only cover the particular products and/or services
being transferred as they exist as of the date of transfer; (ii) the same
Change of Control provisions as set forth in Section 8 above apply to the
Recipient Party; (iii) the Recipient Party cannot exercise Picks; (iv) the
Recipient Party does not receive a license to any Picks that are exercised
after the date of transfer; and (v) Picks with respect to any patents that are
assigned from the Transferring Party to the Recipient Party remain subject to
the requirements of Section 2.4 above.




10.    Term.




     This Agreement shall commence as of the Effective Date and shall expire at
the end of the Term. This Agreement may not otherwise be terminated, except by
subsequent written agreement of the Parties.




11.    Confidentiality of Agreement & Governmental Filings.





 








 






<redacted — Confidential Portions Omitted and Filed Separately with the

Commission>




12.    General Provisions.




     12.1   Parties Independent. Each Party is an independent contractor, and
this Agreement shall not be construed as creating a partnership, joint venture
or employment relationship between the parties or as creating any other form of
legal association that would impose liability on one Party for the act or
failure to act of the other Party. Neither of the Parties or their
Representatives is a representative of the other for any purpose, and no Party
has any power or authority to represent, act for, bind, or otherwise create or
assume any obligation on behalf of the other Party for any purpose whatsoever.
All financial obligations associated with each Party’s business are the sole
responsibility of such Party.




     12.2   Assignment, Binding Effect, Benefits. Except as permitted under the
Change of Control Provisions set forth in Section 8 above, this Agreement and
any rights, licenses and obligations hereunder may not be assigned, transferred
or delegated to any other party. This Agreement shall inure to the benefit of
and be binding upon the Parties hereto and their respective permitted
successors and assigns. Nothing in this Agreement is intended to confer on any
person other than the parties hereto or their respective permitted
sublicensees, successors and assigns, any rights, remedies, obligations or
liabilities under or by reason of this Agreement.




     12.3   Dispute Resolution. In the event of any dispute arising under this
Agreement, a Party wishing to initiate legal action shall give notice of the
dispute to the other Party hereunder and the Parties shall thereafter mediate
the dispute, in good faith, before a mutually agreeable neutral mediator. If a
mediator cannot be agreed upon, then each Party shall designate an individual
to assist in locating a mediator; whereby the two designated individuals
cooperate to select a neutral mediator. If the dispute is not resolved within
45 days of such notice then either Party may initiate legal action. The U.S.
District Court for the District of Delaware shall retain jurisdiction to
enforce the terms of this Agreement and all litigation arising under this
Agreement shall be brought in that Court.




     12.4   Governing Law. This Agreement shall be governed by and construed
under the laws of the State of Delaware, U.S.A., without reference to its
conflict of law principles or choice of law rules.




     12.5   Notices. All notices or other communications under this Agreement
shall be in writing and sent by certified or registered air mail with postage
prepaid, return receipt requested, or by hand delivery (e.g., FedEx). Such
communications shall be deemed given and received upon delivery if hand
delivered; or within five (5) days of mailing, if sent by certified or
registered air mail, and shall be addressed to the parties as set forth below,
or to such other addresses as the parties may designate in writing from time to
time.





 








 



     To PBI:




	 		 	Deputy General Counsel

Intellectual Property & Technology Law

Pitney Bowes Inc.

PO Box 3000

35 Waterview Drive

Shelton, CT 06484






	 		 	     and






	 		 	President — Marketing

Global Mailstream Solutions

Pitney Bowes Inc.

1 Elmcroft Road

Stamford, CT 06926






     To Stamps.com:




	 		 	Stamps.com Inc.

3420 Ocean Park Boulevard, Suite 1040

Santa Monica, California 90405

Attn: General Counsel






	 		 	     and






	 		 	Stamps.com Inc.

3420 Ocean Park Boulevard, Suite 1040

Santa Monica, California 90405

Attn: Chief Executive Officer






     12.6   Non-Waiver. Except as expressly provided herein, a failure of any
Party hereto to exercise any right hereunder, or to insist upon strict
compliance by another Party of any obligation hereunder, shall not constitute a
waiver of the first Party’s right to exercise such a right, or to exact
compliance with the terms hereof. Moreover, waiver by any Party of a
particular default by another Party shall not be deemed a continuing waiver so
as to impair the aggrieved Party’s rights in respect to any subsequent default
of the same or a different nature.




     12.7   Rules of Construction.




     12.7.1   Headings. The section headings in this Agreement are
inserted only as a matter of convenience, and in no way define, limit,
extend or interpret the scope of this Agreement or of any particular
section.







 








 






     12.7.2   Tense and Case. Throughout this Agreement, as the context
may require, references to any word used in one tense or case shall
include all other appropriate tenses or cases.




     12.7.3   Severability. The validity, legality or enforceability of
the remainder of this Agreement will not be affected even if one or more
of the provisions of this Agreement is held to be invalid, illegal or
unenforceable in any respect. However, if the invalid, illegal or
unenforceable provision is a material component of this Agreement, then
the Parties agree to negotiate in good faith to produce an amended
provision (replacing the invalid, illegal or unenforceable provision)
that is valid, legal and enforceable and captures as much of the original
intent of the Parties as possible.




     12.7.4   Agreement Negotiated. The Parties hereto are sophisticated
and have been represented by lawyers who have carefully negotiated the
provisions hereof. All provisions of this Agreement shall be deemed
jointly drafted by both Parties and neither Party shall be deemed the
drafter for purposes of any rule of construction against a drafter.




     12.7.5   Days. Except where otherwise noted, all periods of days
specified herein refer to calendar days.




     12.8   Counterparts; Facsimiles. This Agreement may be executed in
counterparts, each of which shall be deemed an original. In addition,
facsimile signatures shall be deemed original signatures for the purposes of
this Agreement. Each Party agrees to provide two original, executed copies of
this Agreement to the other Party within 30 days after transmitting a facsimile
of such an executed copy to the other Party.




     12.9   Currency. Any amounts payable under this Agreement shall be paid in
U.S. dollars in immediately available funds.




     12.10   Incorporation By Reference. All exhibits and schedules attached
hereto or referred to herein are hereby incorporated by reference and made a
part hereof.




     12.11   Survival of Provisions. <redacted — Confidential Portions
Omitted and Filed Separately with the Commission>




     12.12   Attorneys’ Fees to Prevailing Party.




<redacted — Confidential Portions Omitted and Filed Separately with the Commission>




     12.13   Entire Agreement. This Agreement and its exhibits constitute the
entire agreement of the Parties with respect to the subject matter thereof and
supersedes all prior or contemporaneous oral or written agreements and
understandings between the Parties relating thereto. No representation,
warranty, promise, inducement or statement of intention has been made by any
Party that is not set forth in this Agreement and Exhibits, and no Party shall
be bound by or be liable for, any alleged representation, warranty, promise,
inducement or intention not embodied herein. No alteration, modification,
variation or waiver of this Agreement, or any of the provisions hereof shall be
effective unless executed by both Parties in writing.





 








 



     IN WITNESS WHEREOF, the parties intending to be bound hereby have caused
this Agreement to be executed on the dates indicated below, effective as of the
Effective Date first above written.




	 	 	 	 	 	 	 
	PBI:	 	 	 	 
	 	 	 	 	 	 	 
	Pitney Bowes Inc.	 	 	 	 
	 	 	 	 	 	 	 
	By:	 	 	 	Attest:	 	 
	 	 	
	 	 	 	 
	 	 	 	 	 	 	 
	Name:	 	 	 	By:	 	 
	 	 	
	 	 	 	

	 	 	 	 	 	 	 
	Its:	 	 	 	Name:	 	 
	 	 	
	 	 	 	







	 	 	 	 	 	 	 
	Dated:	 	, 2003	 	Dated:	 	, 2003	 
	 	
	 	 	 	
	 	 






	 	 	 	 	 	 	 
	Stamps.com:	 	 	 	 
	 	 	 	 	 	 	 
	Stamps.com Inc.	 	 	 	 
	 	 	 	 	 	 	 
	By:	 	 	 	Attest:	 	 
	 	 	
	 	 	 	

	 	 	 	 	 	 	 
	Name:	 	 	 	By:	 	 
	 	 	


	 	 	 	

	 	 	 	 	 	 	 
	Its:	 	 	 	Name:	 	 
	 	 	


	 	 	 	







	 	 	 	 	 	 	 
	Dated:	 	, 2003	 	Dated:	 	, 2003	 
	 	
	 	 	 	
	 	 








 








 






EXHIBIT A




LICENSED PBI PATENTS




     <redacted — Confidential Portions Omitted and Filed Separately with the
Commission>





- 16 -








 



EXHIBIT B




LICENSED STAMPS PATENTS




<redacted — Confidential Portions Omitted and Filed Separately with the

Commission>





- 17 -








 






EXHIBIT C




PRESS MATERIALS




(Press Release and Q&A Materials)




<redacted — Confidential Portions Omitted and Filed Separately with the

Commission>





- 18 -








 






EXHIBIT D




PROPOSED STIPULATED DISMISSAL WITH PREJUDICE – PITNEY I




UNITED STATES DISTRICT COURT

DISTRICT OF DELAWARE




	 	 	 	 	 	 	 
	
	 	 	 
	 	 	 	 	)	 	 
	PITNEY BOWES INC,	 	 	 	)
	 	C.A. 99-381 (JJF)
	 	 	
Plaintiff,
	 	)	 	 
	 	 	 	 	)	 	 
	v. 	 	 	 	)	 	 
	 	 	 	 	)	 	 
	STAMPS.COM INC. 	 	 	 	)	 	 
	 	 	
Defendant. 
	 	)	 	 
	
	 	 	 






STIPULATED ORDER OF DISMISSAL




     Whereas the parties, Pitney Bowes Inc. and Stamps.com, Inc., have entered
into a Patent License and Settlement Agreement effective December    , 2003
(the “Settlement Agreement”), the parties, through their respective counsel,
stipulate, subject to the approval of the Court, that:




     1. All claims and counterclaims in this action are dismissed, with
prejudice.




     2. Each party will bear its own fees and costs in this action.




     3. The Court shall retain jurisdiction of this matter for purposes of
enforcing the Settlement Agreement.





- 19 -








 



	 	 	 
	Dated: December    , 2003	 	
Dated: December    , 2003
	 	 	 
	 	 	 
	
	 	


	 	 	 
	Jack B. Blumenfeld (#1014) 

Rodger D. Smith (#3778) 

MORRIS, NICHOLS, ARSHT & TUNNELL 

1201 N. Market Street 

P.O. Box 1347 

Wilmington, DE 19899 

Telephone: (302) 658-9200	 	
Josy W. Ingersoll (#1088) 

John W. Shaw (#3362) 

YOUNG CONAWAY STARGATT & TAYLOR LLP 

The Brandywine Building 

1000 West Street, 17th Floor 

Wilmington, DE 19899 

Telephone: (302) 571-6600
	 	 	 
	Jesse J. Jenner 

Avinash S. Lele 

A. Peter Adler 

FISH & NEAVE 

1251 Avenue of the Americas 

New York, NY 10020 

Telephone: (212) 596-9000	 	
Gary N. Frischling 

Elliot N. Brown 

IRELL & MANELLA LLP 

1800 Avenue of the Stars, Suite 900 

Los Angeles, CA 90067 

Telephone: (310) 277-1010
	 	 	 
	Kelsey I. Nix 

WILKIE FARR & GALLAGHER LLP 

787 Seventh Avenue 

New York, NY 10019 

Telephone: (212) 728-8000	 	 
	 	 	 
	Attorneys for Plaintiff 

Pitney Bowes Inc.	 	
Attorneys for Defendant 

Stamps.com, Inc.






	 	 	 	 	 	 	 
	IT IS SO ORDERED.	 	 
	 	 	 	 	 	 	 
	Dated:	 	 	 	, 2003	 	 
	 	 	


	 	 	 	

	 	 	 	 	 	 	UNITED STATES DISTRICT JUDGE








- 20 -








 






EXHIBIT E




PROPOSED STIPULATED DISMISSAL WITH PREJUDICE – PITNEY III




UNITED STATES DISTRICT COURT

DISTRICT OF DELAWARE




	 	 	 	 	 	 	 
	
	 	 	 	 
	 	 	 	 	)	 	 
	STAMPS.COM INC,	 	 	 	)
	 	C.A. 02-042 (JJF)
	 	 	
Plaintiff,
	 	)	 	 
	 	 	 	 	)	 	 
	v. 	 	 	 	)	 	 
	 	 	 	 	)	 	 
	PITNEY BOWES INC. 	 	 	 	)	 	 
	 	 	
Defendant. 
	 	)	 	 
	
	 	 	 	 






STIPULATED ORDER OF DISMISSAL




     Whereas the parties, Pitney Bowes Inc. and Stamps.com, Inc., have entered
into a Patent License and Settlement Agreement effective December    , 2003
(the “Settlement Agreement”), the parties, through their respective counsel,
stipulate, subject to the approval of the Court, that:




     1. All claims and counterclaims in this action are dismissed, with
prejudice.




     2. Each party will bear its own fees and costs in this action.




     3. The Court shall retain jurisdiction of this matter for purposes of
enforcing the Settlement Agreement.





- 21 -








 



	 	 	 
	Dated: December    , 2003	 	
Dated: December    , 2003
	 	 	 
	 	 	 
	
	 	


	 	 	 
	Jack B. Blumenfeld (#1014) 

Rodger D. Smith (#3778) 

MORRIS, NICHOLS, ARSHT & TUNNELL 

1201 N. Market Street 

P.O. Box 1347 

Wilmington, DE 19899 

Telephone: (302) 658-9200	 	
Josy W. Ingersoll (#1088) 

John W. Shaw (#3362) 

YOUNG CONAWAY STARGATT &
TAYLOR LLP 

The Brandywine Building 

1000 West Street, 17th Floor 

Wilmington, DE 19899 

Telephone: (302) 571-6600
	 	 	 
	Jesse J. Jenner 

Avinash S. Lele 

A. Peter Adler 

FISH & NEAVE 

1251 Avenue of the Americas 

New York, NY 10020 

Telephone: (212) 596-9000 
	 	
Gary N. Frischling 

Elliot N. Brown 

IRELL & MANELLA LLP 

1800 Avenue of the Stars, Suite 900 

Los Angeles, CA 90067 

Telephone: (310) 277-1010
	 	 	 
	Kelsey I. Nix 

WILKIE FARR & GALLAGHER LLP 

787 Seventh Avenue 

New York, NY 10019 

Telephone: (212) 728-8000	 	 
	 	 	 
	Attorneys for Defendant 

Pitney Bowes Inc.	 	
Attorneys for Plaintiff  

Stamps.com, Inc.







	 	 	 	 	 	 	 
	IT IS SO ORDERED.	 	 
	 	 	 	 	 	 	 
	Dated:	 	 	 	, 2003	 	 
	 	 	


	 	 	 	

	 	 	 	 	 	 	UNITED STATES DISTRICT JUDGE






- 22 -








 






EXHIBIT F




PROPOSED STIPULATED DISMISSAL WITH PREJUDICE – PITNEY IV




UNITED STATES DISTRICT COURT

DISTRICT OF DELAWARE




	 	 	 	 	 	 	 
	
	 	 	 	 
	 	 	 	 	)	 	 
	PITNEY BOWES INC,	 	 	 	)
	 	C.A. 02-1660 (JJF)
	 	 	
Plaintiff,
	 	)	 	 
	 	 	 	 	)	 	 
	v. 	 	 	 	)	 	 
	 	 	 	 	)	 	 
	STAMPS.COM INC. 	 	 	 	)	 	 
	 	 	
Defendant. 
	 	)	 	 
	
	 	 	 	 






STIPULATED ORDER OF DISMISSAL




     Whereas the parties, Pitney Bowes Inc. and Stamps.com, Inc., have entered
into a Patent License and Settlement Agreement effective December    , 2003
(the “Settlement Agreement”), the parties, through their respective counsel,
stipulate, subject to the approval of the Court, that:




     1. All claims and counterclaims in this action are dismissed, with
prejudice.




     2. Each party will bear its own fees and costs in this action.




     3. The Court shall retain jurisdiction of this matter for purposes of
enforcing the Settlement Agreement.





- 23 -








 



	 	 	 
	Dated: December    , 2003	 	
Dated: December    , 2003
	 	 	 
	 	 	 
	
	 	


	 	 	 
	Jack B. Blumenfeld (#1014) 

Rodger D. Smith (#3778) 

MORRIS, NICHOLS, ARSHT & TUNNELL 

1201 N. Market Street 

P.O. Box 1347 

Wilmington, DE 19899 

Telephone: (302) 658-9200	 	
Josy W. Ingersoll (#1088) 

John W. Shaw (#3362) 

YOUNG CONAWAY STARGATT &
TAYLOR LLP 

The Brandywine Building 

1000 West Street, 17th Floor 

Wilmington, DE 19899 

Telephone: (302) 571-6600
	 	 	 
	Jesse J. Jenner 

Avinash S. Lele 

A. Peter Adler 

FISH & NEAVE 

1251 Avenue of the Americas 

New York, NY 10020 

Telephone: (212) 596-9000	 	
Gary N. Frischling 

Elliot N. Brown 

IRELL & MANELLA LLP 

1800 Avenue of the Stars, Suite 900 

Los Angeles, CA 90067 

Telephone: (310) 277-1010
	 	 	 
	Kelsey I. Nix 

WILKIE FARR & GALLAGHER LLP 

787 Seventh Avenue 

New York, NY 10019 

Telephone: (212) 728-8000	 	 
	 	 	 
	Attorneys for Plaintiff 

Pitney Bowes Inc.	 	
Attorneys for Defendant 

Stamps.com, Inc.







	 	 	 	 	 	 	 
	IT IS SO ORDERED.	 	 
	 	 	 	 	 	 	 
	Dated:	 	 	 	, 2003	 	 
	 	 	


	 	 	 	

	 	 	 	 	 	 	UNITED STATES DISTRICT JUDGE






- 24 -








 






EXHIBIT G




RESTRICTED LIST




     The following 23 entities:




	 	 	 
	 
	

	<redacted - Confidential	 	 
	Portions Omitted and Filed	 	<redacted - Confidential
	Separately with the	 	Portions Omitted and Filed
	Commission>	 	Separately with the Commission>
	

	

	

	

	

	

	

	

	

	

	Additionally, the following entity

categories:	 	 
	

	Any postal authority

	

	Any private/public mail or parcel carrier

	

	Any mailing equipment manufacturer or distributor with more than $200 million in annual gross revenues including parent, subsidiary and controlled entities

	








- 25 -








 




EXHIBIT H




REDACTED COPY OF THIS AGREEMENT





- 26 -








 






SCHEDULE A




PBI PATENTS (US PATENTS AND PUBLISHED APPLICATIONS ONLY) WITH

PRIOR OUTSTANDING RESTRICTIONS




	 
	<redacted — Confidential

Portions Omitted and Filed

Separately with the

Commission>







- 27 -








 




SCHEDULE B




STAMPS PATENTS (US PATENTS AND PUBLISHED APPLICATIONS ONLY)

WITH PRIOR OUTSTANDING RESTRICTIONS




	 
	<redacted — Confidential

Portions Omitted and Filed

Separately with the

Commission>








- 28 -








 






SCHEDULE C




ASSIGNMENTS BY PBI WITHIN FIVE (5) YEARS PRIOR TO THE

EFFECTIVE DATE



<redacted — Confidential
Portions Omitted and Filed
Separately with the

Commission>





- 29 -








 






SCHEDULE D




ASSIGNMENTS BY STAMPS.COM WITHIN FIVE (5) YEARS PRIOR TO THE

EFFECTIVE DATE



<redacted — Confidential Portions Omitted and Filed Separately with the

Commission>






- 30 -