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EXHIBIT 10.13
SUBJECT TO RULE 408 AGREEMENT
PATENT LICENSE AGREEMENT
This Patent License Agreement (the "Agreement") is between Microsoft Corporation
("Microsoft"), a Washington corporation, having a place of business at ▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, and Immersion Corporation
("Immersion"), a California corporation, having a place of business at ▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, each a "party" and collectively the
"parties". The effective date of this Agreement is the date last signed below
(the "Effective Date").
WHEREAS, Immersion is a technology development business with expertise
and patent rights in the field of force feedback (FF) technologies; and
WHEREAS, Microsoft is also an innovator in and has expertise and patent
rights in the field of FF technologies, and has contributed to the
creation of a substantial market for FF gaming devices; and
WHEREAS, to resolve present patent issues, the parties wish to enter
into a license agreement as set forth herein;
NOW, THEREFORE, in consideration of the payments and promises made hereunder,
the sufficiency of which the parties acknowledge, the parties agree as follows:
1. DEFINITIONS
1.05 DIRECTINPUT refers to the dinput.dll, dinput.vxd, pid.dll,
dinput.h and dinputd.h files contained in either Version 6 or
in Version 7 of DirectX, as they exist as of the Effective
Date, and future versions of such files to the extent (but
only to the extent) they do not contain additional or modified
FF-related functionality. For purposes of this Agreement, the
version of DirectInput contained in DX7 which exists as of the
Effective Date is build 4.07.00.0201.
1.06 END-USER means a consumer who purchases and uses DirectInput,
or software or hardware into which DirectInput is integrated
or with which DirectInput is bundled, solely for his or her
own enjoyment or personal use. END-USERS do not include
developers who use DirectInput to create commercial products
such as hardware devices, software products or webpages.
1.1 FF is an abbreviation for Force Feedback. FORCE FEEDBACK means
the simulation of feel or tactile sensations.
1.2 IMMERSION FF PATENT PORTFOLIO means (i) all FF-related claims
in any utility patents and utility patent applications owned
or acquired by, or licensed to, Immersion or its Subsidiaries
(which, in the case of patents licensed to Immersion or its
Subsidiaries, are permitted to be sublicensed) and that are
filed as of the Effective Date of this Agreement or during the
term of this Agreement, and (ii) all subsequent FF-related
claims in any utility patents (i.e. divisional, continuation,
continuation-in-part, reissue, reexaminations and foreign
patents/applications) that claim priority based on such
patents or patent applications described in (i) above. A
listing of the currently-issued patents comprising the
Immersion FF Patent Portfolio as of the Effective Date is
attached as Exhibit A ("Immersion FF Patent Portfolio").
1.3 IMMERSION FF PATENT PORTFOLIO LICENSEE means any person that
has been or subsequently is licensed by Immersion or its
Subsidiaries to practice at least some of the inventions
claimed in the Immersion FF Patent Portfolio.
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1.4 IMMERSION LICENSEE PRODUCT(S) means FF hardware devices of any
kind shipped in commercial quantities by or on behalf of
Immersion Patent Portfolio Licensees on or before [****] (the
"Immersion Licensee Current Version"), as well as all
substantially similar future versions of such devices. A
device is "substantially similar" within the meaning of the
foregoing sentence if it has substantially the same
appearance, performance, feature set and architecture as the
Immersion Licensee Current Version, notwithstanding (i)
firmware and driver changes made to ensure compatibility with
future versions of Microsoft operating system software; (ii)
changes related to adding USB support; and (iii) cost
reductions to the electronics or existing mechanical design.
1.5 IMMERSION PRODUCT(S) means FF hardware devices of any kind
shipped in commercial quantities by Immersion or its
Subsidiaries on or before [****] (the "Immersion FF Current
Version"), and any future replacement FF hardware devices
marketed and sold by Immersion or its Subsidiaries which are
substantially similar to the Immersion FF Current Version. A
device is "substantially similar" within the meaning of the
foregoing sentence if it has substantially the same
appearance, performance, feature set and architecture as the
Immersion FF Current Version, notwithstanding (i) firmware and
driver changes made to ensure compatibility with future
versions of Microsoft operating system software; (ii) changes
related to adding USB support; (iii) cost reductions to the
electronics or existing mechanical design.
1.6 MICROSOFT FF PATENT PORTFOLIO means (i) all FF-related claims
in any utility patents and utility patent applications owned
or acquired by, or licensed to, Microsoft or its Subsidiaries
(which, in the case of patents licensed to Microsoft or its
Subsidiaries, are permitted to be sublicensed) and that are
filed as of the Effective Date of this Agreement, and (ii) all
subsequent FF-related patent claims in any utility patents
(i.e. divisional, continuation, continuation-in-part, reissue,
reexaminations and foreign patents/applications) that claim
priority based on such patents or patent applications
described in (i) above. A listing of the currently-issued
patents comprising the Microsoft FF Patent Portfolio as of the
Effective Date is attached as Exhibit B ("Microsoft FF Patent
Portfolio")
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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1.7 MICROSOFT PRODUCTS refers collectively to the Sidewinder Force
Feedback Joystick, Sidewinder Force Feedback Wheel and R-4
Force Feedback Wheel products.
1.8 R-4 FORCE FEEDBACK WHEEL means the FF user interface device
manufactured by or for Saitek Ltd. which bears the "R-4 Force
Feedback Wheel" product name as the primary trademark, as such
product exists as of [****] (the "R-4 Current Version") and
any future versions of such product which are substantially
similar to the R-4 Current Version, are introduced into the
commercial marketplace in commercial quantities by [****], and
are branded with "R-4 Force Feedback Wheel" as the primary
trademark.
1.9 SAITEK LICENSE means the Force Feedback technology license
agreement between Saitek Ltd. and Microsoft as such license
agreement exists as of the Effective Date or as it is amended
as set forth in this Agreement.
1.10 SIDEWINDER FORCE FEEDBACK JOYSTICK means (a) the FF joystick
product sold as of May 1, 1999 by Microsoft under the
"Sidewinder Force Feedback Joystick" product name; (b) a
replacement FF joystick product (however named or labeled)
with Substantially Similar Functional Characteristics which is
shipped by Microsoft or its Subsidiaries in commercial volumes
on or before [****] (devices qualifying under (a) or (b) shall
hereinafter be referred to as the "Sidewinder Joystick Current
Version"); and (c) any future replacement FF joystick products
marketed and sold by Microsoft or its Subsidiaries which are
substantially similar to the Sidewinder Joystick Current
Version. A product is "substantially similar" within the
meaning of (c) above if it has substantially the same
appearance, performance, feature set and architecture as the
Sidewinder Joystick Current Version, notwithstanding (i)
firmware and driver changes made to ensure compatibility with
future versions of Microsoft operating system software; (ii)
changes related to adding USB support; (iii) cost reductions
to the electronics or existing mechanical design.
1.11 SIDEWINDER FORCE FEEDBACK WHEEL means (a) the FF steering
wheel product sold as of May 1, 1999 by Microsoft under the
"Sidewinder Force Feedback Steering Wheel" product name; (b) a
replacement FF steering wheel product (however named or
labeled) with Substantially Similar Functional Characteristics
which is shipped by Microsoft or its Subsidiaries in
commercial volumes on or before [****] (devices qualifying
under (a) or (b) shall hereinafter be referred to as the
"Sidewinder Wheel Current Version"); and (c) any future
replacement FF steering wheel products marketed and sold by
Microsoft or its Subsidiaries which are substantially similar
to the Sidewinder Wheel Current Version. A product is
"substantially similar" within the meaning of (c) above if it
has substantially the same appearance, performance, feature
set and architecture as the Sidewinder Wheel Current Version,
notwithstanding (i) firmware and driver changes made to ensure
compatibility with future
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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versions of Microsoft operating system software; (ii) changes
related to adding USB support; (iii) cost reductions to the
electronics or existing mechanical design.
1.12 SIDEWINDER PRODUCTS means the collective term for the
Sidewinder Force Feedback Joystick and Sidewinder Force
Feedback Wheel products.
1.13 SUBSIDIARY means a corporation, company or other entity:
a) more than fifty percent (50%) of whose outstanding
shares or securities (representing the right to vote
for the election of directors or other managing
authority) are, as of the Effective Date, owned or
controlled, directly or indirectly, by a party, but
such corporation, company, or other entity shall be
deemed to be a Subsidiary only so long as such
ownership or control exists; or
b) which does not have outstanding shares or securities,
as may be the case in a partnership, joint venture or
unincorporated association, but more than fifty
percent (50%) of whose ownership interest
representing the right to make the decisions for such
corporation, company or other entity is, as of the
Effective Date, owned or controlled, directly or
indirectly, by a party, but such corporation, company
or other entity shall be deemed to be a Subsidiary
only so long as such ownership or control exists.
1.14 SUBSTANTIALLY SIMILAR FUNCTIONAL CHARACTERISTICS means that a
current version of a given product and its replacement version
(e.g., a currently shipping FF joystick product and its
replacement FF joystick product) bear the following
relationship to each other: the replacement product has
substantially the same functionality and feature set as the
current version, [****]
2. IMMERSION LICENSE TO MICROSOFT
2.1 SIDEWINDER PRODUCT PATENT LICENSE: In consideration for the
one-time payment made in Section 5.1 ("Microsoft One-Time
Payment to Immersion") and the license and covenant-not-to-▇▇▇
set forth in Section 3.2 ("License and Covenant-Not-To-▇▇▇
Under Microsoft FF Patent Portfolio"), Immersion and its
Subsidiaries grant Microsoft and its Subsidiaries a worldwide,
nonexclusive license under the Immersion FF Patent Portfolio
(which license shall become irrevocable, perpetual, non-
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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MICROSOFT AND IMMERSION CONFIDENTIAL
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terminable and fully paid-up upon Immersion's receipt of
Microsoft's one-time payment required under Section 5.1) to
make, have made, use, have used, import and have imported,
sell, have sold, and offer for sale Sidewinder Products,
subject to the limitation that, except for reasonable product
transition overlap (including possible manufacturing overlap
as well as marketing efforts to clear the distribution
channels of one product while its replacement product is being
introduced), the foregoing license shall extend to only one
Sidewinder Force Feedback Joystick product and one Sidewinder
Force Feedback Wheel product being manufactured or marketed by
or for Microsoft or its Subsidiaries at any one time. Such
license shall apply to Sidewinder Products without regard to
whether such Sidewinder Products are marketed in a bundle with
other separate products.
2.2 MICROSOFT SUBLICENSING RIGHTS: Immersion and its Subsidiaries
grant to Microsoft and its Subsidiaries a worldwide,
nonexclusive license under the Immersion FF Patent Portfolio
(which license shall become irrevocable, perpetual,
non-terminable and fully paid-up upon Immersion's receipt of
Microsoft's one-time payment required under Section 5.1) (i)
to sublicense third parties to manufacture Sidewinder Products
on behalf of Microsoft or its Subsidiaries for sale by
Microsoft or its Subsidiaries under the licenses granted
herein, and (ii) to sublicense Saitek to make, have made, use,
have used, import and have imported, sell and have sold and
offer for sale R-4 Force Feedback Wheels, solely to the extent
the Saitek License, by its terms, permits such activities as
of the Effective Date. No further sublicensing rights are
granted to Microsoft or its Subsidiaries by this Section 2.2
("Microsoft Sublicensing Rights") except as expressly granted
herein and to the extent the Saitek License grants to Saitek
more extensive rights than those granted by Immersion to
Microsoft or its Subsidiaries for sublicense to Saitek
hereunder, no license by Immersion is implied. Microsoft
hereby agrees that any amendments or modifications it agrees
to make to the Saitek License after the Effective Date shall
not in any way affect the scope of products licensed pursuant
to that Agreement.
2.3 MICROSOFT REFERENTIAL USE OF IMMERSION BRANDING: During the
term of this Agreement, Microsoft agrees to make referential
use of the I-FORCE trademarks by including in each Microsoft
Product (excluding the R-4 Force Feedback Wheel) the following
reference: "Microsoft is a licensee of Immersion Corporation,
the exclusive licensor, under the [INSERT I-FORCE LOGO] logo,
of I-FORCE force-feedback patents and technology."
Specifically, Microsoft agrees to incorporate the foregoing
reference along with a reference (and, to the extent
technically feasible, a hyper-text link) to Immersion's
then-current corporate web site (▇▇▇.▇▇▇▇▇-▇▇▇▇▇▇▇▇.▇▇▇) in
the About Box for the associated driver software control panel
or comparable location. Microsoft also agrees to place or have
placed on the underside (exterior) of the Sidewinder Products
the following notice: "Microsoft is a licensee of Immersion
Corporation, the exclusive licensor of I-FORCE force-feedback
patents
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MICROSOFT AND IMMERSION CONFIDENTIAL
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and technology." Microsoft agrees to exercise its commercially
reasonable best efforts to implement the foregoing references
into Microsoft Products (excluding the R-4 Force Feedback
Wheel) manufactured by or for Microsoft as promptly as
possible, and commits to doing so by no later than ninety (90)
days from the Effective Date. Notwithstanding the referential
use described in this Section 2.3 ("Microsoft Referential Use
of Immersion Branding"), no trademark license is granted to
Microsoft hereunder to use the Immersion trademarks or to
sublicense such Immersion trademarks to third parties.
Immersion hereby agrees to defend, indemnify and hold
Microsoft, its Subsidiaries, distributors and licensees
harmless from and against any and all claims that Microsoft's
including such reference violates a third party's trademarks
or other proprietary rights. In the event Microsoft receives
such a third party claim ("Indemnification Claim"), Microsoft
agrees to promptly notify Immersion in writing of the
Indemnification Claim and to cooperate with Immersion at
Immersion's expense in defending the Indemnification Claim.
Immersion's obligations under the foregoing indemnity
provision, shall, however, be subject to a total dollar limit
of [****] of all payments by Microsoft to Immersion hereunder
(the "Indemnification Cap"); provided that in the event
Immersion does not within sixty (60) days of receiving notice
from Microsoft of an Indemnification Claim (or within three
(3) days of such notice if the third-party claim is
accompanied by a motion for preliminary injunction or
temporary restraining order that would if granted prevent
Microsoft from shipping product which contains such reference)
agree in writing to fully and completely indemnify and hold
Microsoft harmless with respect to the Indemnification Claim
without regard to the Indemnification Cap, then Microsoft in
its sole discretion may elect to discontinue all future
referential use of the I-FORCE trademarks as set forth in this
Section 2.3 in conjunction with the product sku associated
with the region in which the claim is raised. At such time as
the third-party claim is settled or otherwise resolved in a
manner which permits Microsoft to referentially use the
I-FORCE trademarks, Immersion may request, in writing, that
Microsoft resume referential use of the I-Force trademark as
set forth in this Section 2.3 and Microsoft agrees to do so,
provided that Immersion pays Microsoft's reasonable costs and
allows Microsoft a commercially reasonable amount of time to
make the change. Subject to Microsoft's right to protect its
own trademarks, tradenames and servicemarks, Immersion may
request, in writing, that Microsoft substitute alternative
tradenames, trademarks or servicemarks which may be
substituted for those referred to above or that Microsoft
substitute a different Immersion corporate web site (i.e.,
different from ▇▇▇.▇▇▇▇▇-▇▇▇▇▇▇▇▇.▇▇▇) and Microsoft agrees to
do so, provided that Immersion pays Microsoft's reasonable
costs and allows Microsoft a commercially reasonable amount of
time to make the substitution. Immersion agrees that
Microsoft's obligations to include a hyper-text link under
Sections 2.3 and 6.2 shall not apply to any link to a site
which on a consistent basis (as opposed to the normal
featuring of new products, product reviews, etc.) features a
product
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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sold by a Microsoft competitor more prominently than a product
sold by Microsoft.
2.4 SAITEK BRANDING REQUIREMENT: Microsoft agrees to use its
commercially reasonable best efforts to require Saitek to use
the I-FORCE trademarks and to incorporate them on the bottom
of the R-4 Force Feedback Wheel. In addition, Microsoft agrees
to use its commercially reasonable best efforts to require
Saitek to include the I-FORCE logo in the About Box or
comparable location on the driver software control panel
associated with the R-4 Force Feedback Wheel, or if there is
no About Box, in the associated product manual. Microsoft
agrees to use commercially reasonable best efforts to require
Saitek to implement the foregoing trademark requirements by
September 15, 1999. Microsoft agrees to use commercially
reasonable best efforts to impose on Saitek the obligation to
include the I-FORCE logo on the product packaging for R-4
Force Feedback Wheels and in connection with advertising or
promotional materials associated with the R-4 Force Feedback
Wheels. Microsoft agrees to use commercially reasonable best
efforts to require Saitek to permit Immersion to cite Saitek
as an Immersion FF Patent Portfolio Licensee and to list
Saitek in all materials that list other Immersion FF Patent
Portfolio Licensees.
2.5 LIMITED SOFTWARE LICENSE: Immersion hereby grants Microsoft
and its Subsidiaries a worldwide, non-exclusive license under
the Immersion FF Patent Portfolio (which license shall become
irrevocable, perpetual, non-terminable and fully paid-up upon
Immersion's receipt of Microsoft's one-time payment required
under Section 5.1):
(a) to manufacture, sell, offer for sale, import and use
DirectInput; and
(b) to manufacture, sell, offer for sale, import and use
Microsoft's FF-capable gaming software products
listed in Exhibit C (all of which Microsoft
represents have been distributed by Microsoft to
third parties in commercial quantities on or before
[****] and to manufacture, sell, import and use
successor versions of such gaming software products.
Microsoft and its Subsidiaries and End-Users shall not be
liable to Immersion or its Subsidiaries as a contributory
infringer under 35 U.S.C. Section 271(c) (or the foreign law
equivalent thereof), or for inducing infringement under 35
U.S.C. Section 271(b) (or the foreign law equivalent thereof),
based solely on their manufacture, importation, offer for
sale, use or sale of DirectInput in combination with
third-party software and/or hardware products, nor shall they
be liable for direct infringement under 35 U.S.C. Section
271(a) (or the foreign equivalent thereof) based solely on
their combination of DirectInput with unlicensed Microsoft or
third-party hardware or software if no force feedback element
of the claim or claims asserted against them is contributed by
the Microsoft or third-party hardware or software which they
combine with DirectInput. Except as specifically provided
above, this Section 2.5 shall not be construed to
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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immunize Microsoft or its Subsidiaries from liability under 35
U.S.C. Section 271(a)-(c), or under any other provision of
Title 35 of the United States Code, either expressly, by
implication, by estoppel, or otherwise. However, injunctive
relief in patent infringement actions brought by Immersion or
its Subsidiaries based on Microsoft's or Microsoft's
Subsidiaries' unlicensed hardware or software products, or the
combination thereof with each other or with DirectInput,
shall, unless product integration and/or bundling make it
impractical, be directed to such unlicensed products, and not
to DirectInput itself.
3. LICENSE AND COVENANT-NOT-TO-▇▇▇ UNDER MICROSOFT FF PATENT PORTFOLIO.
3.1 In consideration for the licenses granted herein by Immersion
and its Subsidiaries, the favorable one-time royalty payment
for the licenses granted them herein with respect to the
Immersion FF Patent Portfolio, and the force feedback
evangelism services provided for in Section 6.6, Microsoft and
its Subsidiaries hereby grant Immersion and its Subsidiaries a
royalty-free, worldwide, non-exclusive license (which license
shall be irrevocable and non-terminable during the term set
forth in Section 3.3 upon Immersion's receipt of Microsoft's
one-time payment required under Section 5.1), under the
Microsoft FF Patent Portfolio, to make, have made, use, have
used, import and have imported, sell, have sold and offer for
sale Immersion Product(s), subject to the limitation that,
except for reasonable product transition overlap (including
possible manufacturing overlap as well as marketing efforts to
clear the distribution channels of one product while its
replacement product is being introduced), the foregoing
license shall extend to only one version of a given FF
hardware device being manufactured or marketed by or for
Immersion or its Subsidiaries at any one time (i.e., Immersion
will not have a given Immersion FF Current Version and its
replacement version being manufactured or marketed at the same
time, but may have two or more different Immersion FF hardware
devices on the market at a given time).
3.2 In further consideration for the licenses granted herein by
Immersion and its Subsidiaries, the favorable one-time royalty
payment for the licenses granted them herein with respect to
the Immersion FF Patent Portfolio, and the force feedback
evangelism services provided for in Section 6.6, Microsoft and
its Subsidiaries hereby grant all present and future Immersion
FF Patent Portfolio Licensees a covenant-not-to-▇▇▇ such
Immersion FF Patent Portfolio Licensees under the Microsoft FF
Patent Portfolio with respect to Immersion Licensee
Product(s), subject to the limitation that, except for
reasonable product transition overlap (including possible
manufacturing overlap as well as marketing efforts to clear
the distribution channels of one product while its replacement
product is being introduced), the foregoing covenant shall
extend to only one version of a given FF hardware device being
manufactured or marketed by or for Immersion FF Patent
Portfolio Licensees at any one time (i.e., a given
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Immersion FF Patent Portfolio Licensee will not have a given
Immersion FF Patent Portfolio Licensee Current Version and its
replacement version being manufactured or marketed at the same
time, but may have two or more different Immersion FF Patent
Portfolio Licensee hardware devices on the market at a given
time). Microsoft warrants that no third party has or will be
granted the right, as an exclusive licensee or patent assignee
of Microsoft or otherwise, to assert any claim as to which
Microsoft has granted the covenant-not-to-▇▇▇ described above.
No third party against whom Microsoft has a pending
infringement claim subsequent to the Effective Date with
respect to the Microsoft FF Patent Portfolio will be granted
the above-described covenant-not-to-▇▇▇ in the event such
third party becomes an Immersion FF Patent Portfolio Licensee
after Microsoft has made a claim against such third party.
3.3 The term of the license provided to Immersion under Section
3.1, and of the covenant-not-to-▇▇▇ provided to Immersion's
licensees under Section 3.2, shall commence on the Effective
Date and end:
3.3.1 With respect to FF joysticks and steering wheels, the
later of (A) [****]; or (b) [****];
3.3.2 With respect to all other FF hardware products, on
[****].
3.4 The covenant-not-to-▇▇▇ granted in Section 3.2 above shall be
terminable upon written notice by Microsoft, with respect to
any particular Immersion licensee, in the event such licensee
(a) files suit against Microsoft or its Subsidiaries alleging
infringement of any FF-related patent or other intellectual
property right; (b) files suit against a Microsoft
distributor, reseller or end user alleging infringement of any
FF-related patent or other intellectual property right with
respect to a Microsoft FF product; or (c) engages in a course
of conduct which, under applicable Federal Circuit Court of
Appeals case law, gives rise to a reasonable apprehension by
Microsoft of such suit.
3.5 As set forth in Sections 3.1 and 3.2 above, Microsoft's
license to Immersion and its Subsidiaries and its covenant not
to ▇▇▇ Immersion's Patent Portfolio Licensees are granted by
Microsoft on a royalty or fee free basis. If Microsoft or its
Subsidiaries have entered or do enter into a license agreement
with a third party with respect to that third party's FF
related claims in patents and patent applications and such
license rights are sublicensable by Microsoft or its
Subsidiaries such that they become part of the Microsoft FF
Patent Portfolio (hereinafter, "Third Party Patents"), then:
(i) if the Third Party Patents are sublicensable by Microsoft
or its Subsidiaries on a royalty free or one-time lump sum fee
basis, then Immersion, its Subsidiaries and the Immersion
Patent Portfolio Licensees shall immediately receive rights to
such Third Party Patents
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the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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pursuant to Sections 3.1 and 3.2 as the case may be and
Immersion, its Subsidiaries and the Immersion Patent Portfolio
Licensees shall not owe Microsoft or its Subsidiaries any
compensation for receiving such rights; (ii) if the Third
Party Patents are sublicensable by Microsoft or its
Subsidiaries solely on a royalty bearing basis, then Microsoft
shall notify Immersion of the Third Party Patent license and
Immersion may elect on behalf of itself, its Subsidiaries and
the Immersion Patent Portfolio Licensees to take a royalty
bearing sublicense (or covenant not to ▇▇▇ as the case may be)
to such Third Party Patents subject to the terms of Sections
3.1 and 3.2 hereof (provided the parties acknowledge that such
a license for Third Party Patents may not necessarily be
irrevocable and non-terminable nor may they run for the term
set forth in Section 3.3), in which event, Immersion, its
Subsidiaries and the Immersion Patent Portfolio Licensees
shall be entitled to receive, as to such Third Party Patents,
the lowest royalties and best terms and conditions as compared
to those paid by Microsoft, its Subsidiaries or any of their
sublicensees.
4. NO MICROSOFT TRADEMARK LICENSE. No trademark license is granted to
Immersion hereunder to use the Microsoft trademarks or to sublicense
such Microsoft trademarks to third parties.
5. MICROSOFT ONE-TIME PAYMENT TO IMMERSION
5.1 ONE-TIME PAYMENT: Within forty (40) days after the Effective
Date and Microsoft's receipt of an invoice from Immersion,
Microsoft shall make a one-time payment of [****] to Immersion
for the licenses granted to Microsoft and its Subsidiaries by
Immersion and its Subsidiaries with respect to the Microsoft
Products under the terms of Section 2.1 ("Sidewinder Product
Patent License") and Section 2.2 ("Microsoft Sublicensing
Rights"). If Immersion or its Subsidiaries have entered or do
enter into a license agreement with a third party with respect
to that third party's FF related claims in patents and patent
applications and such license rights are sublicensable by
Immersion or its Subsidiaries such that they become part of
the Immersion Patent Portfolio (hereinafter, "Third Party
Patents"), then: (i) if the Third Party Patents are
sublicensable by Immersion or its Subsidiaries on a royalty
free or one-time lump sum fee basis, then Microsoft and its
Subsidiaries shall immediately receive rights to such Third
Party Patents pursuant to Sections 2.1 and 2.2 and shall not
owe Immersion or its Subsidiaries any compensation over that
referenced in the first sentence of this Section 5.1 for
receiving such rights; (ii) if the Third Party Patents are
sublicensable by Immersion or its Subsidiaries solely on a
royalty bearing basis, then Immersion shall notify Microsoft
of the Third Party Patent license and Microsoft may elect on
behalf of itself and its Subsidiaries to take a royalty
bearing sublicense to such Third Party Patents subject to the
terms of Sections 2.1, 2.2 and 2.5 hereof (provided the
parties acknowledge that such a license for Third Party
Patents may not necessarily be irrevocable, non-terminable
and/or
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the Commission. Confidential treatment has been requested with respect to
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perpetual), in which event, Microsoft and its Subsidiaries
shall be entitled to receive, as to such Third Party Patents,
the lowest royalties and best terms and conditions as compared
to those paid by Immersion, its Subsidiaries or any of their
sublicensees.
5.2 [****]
5.2.1 [****]
5.2.2 [****]
5.2.3 [****]
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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MICROSOFT AND IMMERSION CONFIDENTIAL
12
5.2.4 [****]
5.2.5 Notwithstanding the above, this Section 5.2 shall not
apply to any license agreement entered into as part
of a settlement of pending litigation between
Immersion or its Subsidiaries, on the one hand, and
Microsoft or its Subsidiaries, on the other; except
that this exception shall not apply if Immersion
fails to notify Microsoft of Microsoft's or its
Subsidiaries' alleged infringement, and engage in
license discussions, prior to filing suit. Microsoft
agrees that after receiving such notice, it will not
file any action or proceeding contesting the
validity, enforceability or non-infringement of the
patent or patents with respect to which Immersion has
given it notice until after the parties have failed,
despite their good faith efforts, to reach agreement
on a license agreement and in no event earlier than
forty-five (45) days following Microsoft's receipt of
Immersion's notice. Similarly, Immersion agrees that
it will not file any action or proceeding alleging
infringement of the patent or patents until after the
parties have failed, despite their good faith
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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MICROSOFT AND IMMERSION CONFIDENTIAL
13
efforts, to reach agreement on a license agreement
and in no event earlier than thirty-five (35) days
following Microsoft's receipt of Immersion's notice.
In addition, statements regarding intellectual
property claims made by Immersion or its Subsidiaries
in connection with threatened or actual litigation
with a third-party with whom Immersion has entered
into an Other Immersion Agreement shall not be
admissible in any arbitration conducted pursuant to
Section 5.2.2 above.
6. OTHER TERMS AND CONDITIONS
6.1 PRESS RELEASE: The parties shall jointly prepare a press
release announcing this Agreement, consisting of mutually
agreed-upon text, press date, and city or cities of origin.
Neither party shall issue any other press release, sales or
marketing, promotional material, advertisements, or similar
materials discussing such party's relationship to the other
party, except as may be expressly authorized or required in
this Agreement or with the other party's prior written
agreement to the content and distribution of any such material
or information. Immersion shall be free to cite Microsoft as
an Immersion FF Patent Portfolio Licensee and to list
Microsoft in all materials that list other Immersion FF Patent
Portfolio Licensees.
6.2 PATENT MARKING: As soon as possible after the Effective Date,
and in no event later than ninety (90) days thereafter,
Microsoft shall ▇▇▇▇ all newly-manufactured Sidewinder
Products with (a) a label notifying purchasers that the
product may be governed by one or more patents enumerated in
the "About Box" or comparable location of the software
component of the Product; (b) a statement in the "About Box"
or comparable location that
-----------------------------------------------------------
This product may be subject to one or more of the following
patents owned by Immersion Corporation: __________________
-----------------------------------------------------------
(where the blank has been filled in with the numbers of the
patents set forth in Exhibit A, as such list is amended by
Immersion from time to time); and (c) a reference to
Immersion's then-current corporate web site
(▇▇▇.▇▇▇▇▇-▇▇▇▇▇▇▇▇.▇▇▇) in the About Box for the associated
driver software control panel or comparable location (which
reference shall, to the extent technically feasible, be a
hyperlink). Changes made by Microsoft to the list of patents
based on an amendment of such list by Immersion shall be made
within a commercially reasonable amount of time, and Immersion
agrees to compensate Microsoft for its reasonable costs
necessary to make such changes.
6.3 NO ADMISSION: Microsoft's and its Subsidiaries' license of the
Immersion FF Patent Portfolio and/or payment of the one-time
payment under Section 5.1 ("Microsoft One-Time Payment to
Immersion") and/or
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MICROSOFT AND IMMERSION CONFIDENTIAL
14
Immersion's and its Subsidiaries' license of the Microsoft FF
Patent Portfolio from Microsoft shall not be deemed to be
evidence or an admission that a product infringes any patent
of the other party, or that any patent of a party is valid or
enforceable.
6.4 TAXES:
(a) The amounts to be paid (or deemed paid) by either
party to the other do not include any foreign, U.S.
federal, state, local, municipal or other
governmental taxes, duties, levies, fees, excises or
tariffs, arising as a result of or in connection with
the transactions contemplated under this Agreement
including, without limitation, (i) any state or local
sales or use taxes or any value added tax or business
transfer tax now or hereafter imposed on the
provision of any services to the other party under
this Agreement, (ii) taxes imposed or based on or
with respect to or measured by any net or gross
income or receipts of either party, (iii) any
franchise taxes, taxes on doing business, gross
receipts taxes or capital stock taxes (including any
minimum taxes and taxes measured by any item of tax
preference), (iv) any taxes imposed or assessed after
the date upon which this Agreement is terminated, (v)
taxes based upon or imposed with reference to either
parties' real and/or personal property ownership and
(vi) any taxes similar to or in the nature of those
taxes described in (i), (ii), (iii), (iv) or (v)
above, now or hereafter imposed on either party (or
any third parties with which either party is
permitted to enter into agreements relating to its
undertakings hereunder) (all such amounts, together
with any penalties, interest or any additions
thereto, collectively "Taxes"). Neither party is
liable for any of the other party's Taxes incurred in
connection with or related to the sale of goods and
services under this Agreement, and all such Taxes
shall be the financial responsibility of the party
obligated to pay such taxes as determined by the
applicable law, provided that both parties shall pay
to the other the appropriate Collected Taxes in
accordance with subsection (b) below. Each party
agrees to indemnify, defend and hold the other party
harmless from any Taxes (other than Collected Taxes)
or claims, causes of action, costs (including,
without limitation, reasonable attorneys' fees) and
any other liabilities of any nature whatsoever
related to such Taxes to the extent such Taxes relate
to amounts paid under this Agreement.
(b) Any sales or use taxes described in (a)(i) above that
(i) are owed by either party solely as a result of
entering into this Agreement and the payment of the
fees hereunder, (ii) are required to be collected
from that party under applicable law, and (iii) are
based solely upon the amounts payable (or deemed
payable) under this Agreement (such taxes the
"Collected Taxes"), shall be stated separately as
applicable on payee's invoices and shall be remitted
by the other party to the payee, upon request payee
shall remit to the other
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MICROSOFT AND IMMERSION CONFIDENTIAL
15
party official tax receipts indicating that such
Collected Taxes have been collected and paid by the
payee. Either party may provide the other party an
exemption certificate acceptable to the relevant
taxing authority (including without limitation a
resale certificate) in which case payee shall not
collect the taxes covered by such certificate. Each
party agrees to take such commercially reasonable
steps as are requested by the other party to minimize
such Collected Taxes in accordance with all relevant
laws and to cooperate with and assist the other
party, in challenging the validity of any Collected
Taxes or taxes otherwise paid by the payor party.
Each party agrees to equally share the cost of any
successful other party-initiated ruling and/or appeal
or other determination that concludes that a
Collected Tax is not owing in whole or in part under
this Agreement. Each party shall indemnify and hold
the other party harmless from any Collected Taxes,
penalties, interest, or additions to tax arising from
amounts paid by one party to the other under this
Agreement, that are asserted or assessed against one
party to the extent such amounts relate to amounts
that are paid to or collected by one party from the
other under this Section. If any taxing authority
refunds any tax to a party which the other party
originally paid, or a party otherwise becomes aware
that any tax was incorrectly and/or erroneously
collected from the other party, then that party shall
promptly remit to the other party an amount equal to
such refund, or incorrect collection as the case may
be plus any interest thereon.
(c) If taxes are required to be withheld on any amounts
otherwise to be paid by one party to the other, the
paying party will deduct such taxes from the amount
otherwise owed and pay them to the appropriate taxing
authority. At a party's written request and expense,
the parties will use reasonable efforts to cooperate
with and assist each other in obtaining tax
certificates or other appropriate documentation
evidencing such payment, provided, however, that the
responsibility for such documentation shall remain
with the payee party.
(d) This Section 6.4 shall govern the treatment of all
taxes arising as a result of or in connection with
this Agreement notwithstanding any other Section of
this Agreement.
6.5 ESCALATION: In the event of any dispute arising under this
Agreement, authorized representatives of each of the parties
shall meet or communicate by phone or otherwise no later than
ten (10) working days after receipt of notice by either party
of a request for dispute resolution and shall enter into good
faith negotiations aimed at resolving the dispute. If the
representatives are unable to resolve the dispute in a
mutually satisfactory manner within the next five (5) working
days after the initial meeting or phone communication
described above, the dispute shall be
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MICROSOFT AND IMMERSION CONFIDENTIAL
16
referred to the top management level for FF-related matters in
each party, and each party shall designate a top management
executive with authority to resolve the dispute to meet in
good faith in an attempt to resolve the dispute within thirty
(30) days after receipt of the initial notice. This Section
6.5 ("Escalation") shall not limit either party's ability,
after referring the dispute to the top management levels of
the parties and expiration of the thirty (30) day period
following receipt of the initial notice, to seek an injunction
or other equitable relief for breach of obligations related to
intellectual property or as may otherwise be necessary to
protect any other rights of either party.
6.6 FORCE FEEDBACK EVANGELISM SERVICES: Immersion agrees that for
a period of twelve (12) months following the Effective Date,
it shall provide at least [****] per month of force feedback
evangelism services. "Force feedback evangelism services," as
used in this Section 6.6, means marketing services directed to
convincing and/or assisting developers to create force
feedback-capable software products.
7. TERM & TERMINATION
7.1 TERM: The term of this Agreement shall be for a period of time
up through the expiration of the last of the patents in the
Microsoft FF Patent Portfolio and Immersion FF Patent
Portfolio.
7.2 TERMINATION FOR CAUSE: If either party materially breaches any
obligation contained in this Agreement, the other party may
terminate this Agreement upon sixty (60) days' written notice;
provided, however, that cure of such material breach within
such sixty (60) day notice period shall bar termination on
account of such material breach.
7.3 EFFECT OF TERMINATION: In the event of termination of this
Agreement for any reason, except non-payment of the one-time
payment described in Section 5.1 ("One-Time Payment"), the
provisions of Section 2 ("Immersion License to Microsoft"),
Section 3 ("License and Covenant-Not-To-▇▇▇ Under Microsoft FF
Patent Portfolio"), Section 6.2 ("Patent Marking"), Section
6.3 ("No Admission"), Section 7 ("Term & Termination"),
Section 8 ("Confidentiality") and Section 9 ("Miscellaneous")
shall remain in force and shall survive any termination.
8. CONFIDENTIALITY.
8.1 CONFIDENTIALITY: All terms and conditions of this Agreement
shall be deemed Confidential Information as defined herein.
The parties expressly undertake to retain in confidence all
information and know-how transmitted to one party ("Receiving
Party") by the other party ("Disclosing Party") that the
Disclosing Party has designated as proprietary and/or
confidential or that, by the nature of the circumstances
surrounding the disclosure, ought in good faith to be treated
as proprietary and/or confidential ("Confidential
Information"). Confidential Information includes all
information relating to payments and terms under this
Agreement. The parties will make no use of Confidential
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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MICROSOFT AND IMMERSION CONFIDENTIAL
17
Information except under the terms and during the existence of
this Agreement. Confidential Information shall not include any
information that: (i) is or subsequently becomes publicly
available without the Receiving Party's breach of any
obligation owed the Disclosing Party; (ii) became known to
Receiving Party from a source other than Disclosing Party
other than by the breach of an obligation of confidentiality
owed to Disclosing Party; (iii) is independently developed by
Receiving Party. Nothing herein shall prevent a Receiving
Party's disclosure of Confidential Information as required by
applicable statutory or regulatory requirement (including,
without limitation, disclosure to comply with reporting
obligations associated with a legitimate corporate
transaction), or of such terms as directly affect a party's
licensee to said licensee in the event such licensee receives
a notice of infringement from the other party hereto, or
pursuant to a subpoena or document request. If a Receiving
Party is subject to a subpoena or document request calling for
the production of a Disclosing Party's Confidential
Information, the Receiving Party shall notify the Disclosing
Party as soon as practicable to permit the Disclosing Party to
endeavor to minimize disclosure by obtaining a protective
order or otherwise. Receiving Party's obligation under this
Section 8 with respect to any particular information shall
extend to the earlier of such time as such information is
publicly available through no fault of Receiving Party or ten
(10) years following termination of this Agreement.
9. MISCELLANEOUS
9.1 SUFFICIENT RIGHTS: Each party represents and warrants that it
has all legal right and power to grant the other party the
license rights granted in this Agreement, and that its
execution and performance of this Agreement will not violate
any law or agreement.
9.2 NOTICE: Any written notice under this Agreement shall be sent
by certified mail, return receipt requested, or its
equivalent, addressed as follows:
FOR NOTICES TO MICROSOFT: FOR NOTICES TO IMMERSION:
VICE PRESIDENT, HARDWARE ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, PRESIDENT
MICROSOFT CORPORATION IMMERSION CORPORATION
ONE MICROSOFT WAY ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇
WITH A COPY TO: WITH A COPY TO:
MICROSOFT GENERAL COUNSEL ▇▇▇▇▇ ▇. SNOWMAN, ESQ.
LAW & CORPORATE AFFAIRS ▇▇▇▇ ▇▇▇▇ ▇▇▇▇ & FREIDENRICH
MICROSOFT CORPORATION ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
9.3 SEVERABILITY: If any part of this Agreement is found to be in
violation of any law, or is found to be unenforceable,
contrary to public policy, or otherwise legally defective, the
Agreement shall be construed and interpreted without reference
to that part.
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MICROSOFT AND IMMERSION CONFIDENTIAL
18
9.4 ASSIGNMENT: This Agreement is not assignable or transferable
except in the case of a merger, acquisition or assignment or
transfer of all or substantially all of the assets of the
Microsoft Hardware Group of Microsoft or of Immersion and only
if the successor (in the case of a merger or acquisition) or
assignee or transferee (in the case of an asset sale) has
agreed in writing to be bound hereby to the same extent as was
the predecessor entity. Any other attempt to assign or
transfer this Agreement without the prior written consent of
the other party shall be void.
9.5 NO OBLIGATION TO ENFORCE: Neither party shall have any
obligation to enforce its patent rights against third parties.
9.6 NO INDEMNITY: Except as provided in Sections 2.3 and 9.12
hereof, neither party shall be liable to indemnify, defend, or
hold harmless the other party against charges of patent
infringement, trade secret infringement, trademark
infringement, trade dress infringement, or the like, arising
out of the subject matter of this Agreement.
9.7 DISCLAIMER: BOTH PARTIES DISCLAIM ALL WARRANTIES, EXPRESS OR
IMPLIED, EXCEPT AS PARTICULARLY DETAILED HEREIN. THE PARTIES
DO NOT WARRANT THAT THE MANUFACTURE, USE, SALE, IMPORT OR
LICENSE OF THEIR PATENTED INVENTIONS ARE FREE FROM
INFRINGEMENT OF THIRD PARTY PATENT OR OTHER RIGHTS.
9.8 RELEASE - IMMERSION TO MICROSOFT: Immersion and its
Subsidiaries hereby fully and forever release and discharge
Microsoft and its Subsidiaries, and their manufacturers,
importers and distributors, licensees and users from any and
all damages, liability, suits, claims and causes of action of
any kind, whether known or unknown, suspected or unsuspected,
arising out of patent infringement or alleged patent
infringement of the Immersion FF Patent Portfolio by:
(a) the manufacture, sale, offer for sale, importation
and use of the Sidewinder Products prior to the
Effective Date;
(b) the manufacture, sale, offer for sale, importation
and use of the R-4 Force Feedback Wheels manufactured
and sold by or for Microsoft's sublicensee, Saitek,
prior to the Effective Date; and
(c) any activities occurring prior to the Effective Date
that would have been licensed under Section 2.5 had
they occurred after the Effective Date.
9.9 MODIFICATION OF DIRECTINPUT: In consideration for the releases
granted by Immersion above, Microsoft on behalf of itself and
its Subsidiaries hereby agrees that they will not modify
DirectInput so as to disadvantage Immersion Products or
Immersion Licensee Products being commercially distributed by
or for Immersion or Immersion Licensees as of the Effective
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MICROSOFT AND IMMERSION CONFIDENTIAL
19
Date as compared to competitive Sidewinder Products being
commercially distributed by or for Microsoft or its
Subsidiaries as of the Effective Date, and further agrees that
DirectInput will support Immersion Products and Immersion
Licensee Products being commercially distributed by Immersion
or Immersion Product Licensees as of the Effective Date for a
period of at least three years from the Effective Date. For
purposes of satisfying these modification and support
obligations, Microsoft will be deemed to be in compliance if
(a) it refrains from modifying DirectInput so as to
disadvantage the Wingman Force and Wingman Formula Force
products currently being shipped by Logitech as compared to
competitive Sidewinder Products being commercially shipped by
or for Microsoft or its Subsidiaries as of the Effective Date;
and (b) for the above-referenced three year period,
DirectInput supports at least the Wingman Force and Wingman
Formula Force products currently being shipped by Logitech.
9.10 RELEASE - MICROSOFT TO IMMERSION: Microsoft and its
Subsidiaries hereby fully and forever release and discharge
Immersion and its Subsidiaries, and their manufacturers,
importers and distributors, licensees and users from any and
all damages, liability, suits, claims, and causes of action of
any kind, whether known or unknown, suspected or unsuspected,
arising out of patent infringement or alleged patent
infringement of the Microsoft FF Patent Portfolio by any and
all FF devices manufactured, used, sold or imported by
Immersion or its Subsidiaries prior to the Effective Date,
which products are listed in Exhibit D hereto.
9.11 NEW INFORMATION: In connection with the waiver and
relinquishment of the matters set forth in Sections 9.8 and
9.9 (hereinafter the "Released Matters"), each of the parties
acknowledges that it is aware that it or its attorneys or
accountants may hereafter discover claims or facts in addition
to or different from those which it now knows or believes to
exist with respect to the Released Matters or the other party
hereto, but that it is its intention hereby fully, finally and
forever to settle and release all of the Released Matters,
which now exist, may exist or heretofore have existed between
Immersion and Microsoft. In furtherance of this intention, the
releases herein given shall be and remain in effect as full
and complete mutual releases as to the Released Matters
notwithstanding the discovery or existence of any such
additional or different claim or fact.
9.12 ASSIGNMENT OF RELEASED MATTERS: Immersion and Microsoft each
warrant and represent to the other that as of the Effective
Date it is the sole and lawful owner of all right, title and
interest in and to all of the respective Released Matters and
that it has not heretofore voluntarily, by operation of law or
otherwise, assigned or transferred or purported to assign or
transfer to any person whomsoever any Released Matter or any
part or portion thereof of any claim, demand or right against
the other. Immersion and Microsoft shall indemnify and hold
harmless the other from and against any claim, demand, damage,
debt, liability, account, reckoning, obligation, cost,
expense, lien, action or cause of action
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MICROSOFT AND IMMERSION CONFIDENTIAL
20
(including payment of attorneys' fees and costs actually
incurred whether or not litigation be commenced) based on or
in connection with or arising out of any such assignment or
transfer or purported or claimed assignment or transfer.
9.13 BENEFICIARIES: Except with respect to the license rights,
covenant-not-to-▇▇▇ and releases granted by this Agreement to
Saitek and/or to Immersion Product Licensees, this Agreement
is not for the benefit of any person who is not a party
signatory hereto or specifically named a beneficiary in this
paragraph or elsewhere in this Agreement. The provisions of
this Agreement and the releases contained herein shall extend
to and inure to the benefit of and be binding upon, in
addition to Immersion and Microsoft and their Subsidiaries,
just as if they had executed this Agreement: the respective
legal successors and assigns of each of Immersion and
Microsoft solely as permitted under the terms of Section 9.4
("Assignment").
9.14 REPRESENTATION: Each party acknowledges to the other party
that it has been represented by independent legal counsel of
its own choice throughout all of the negotiations which
preceded the execution of this Agreement and that it has
executed this Agreement with the consent and on the advice of
such independent legal counsel. Each party further
acknowledges that it and its counsel have had adequate
opportunity to make whatever investigation or inquiry they may
deem necessary or desirable in connection with the subject
matter of this Agreement prior to the execution hereof and the
delivery and acceptance of the consideration specified herein.
9.15 INDEPENDENT CONTRACTOR: Each party shall at all times act as
an independent entity, and shall be solely responsible for any
and all social security, unemployment, Workers' Compensation
and other withholding taxes for any and all of its employees.
Nothing in this Agreement shall be construed as creating a
partnership, joint venture or agency relationship between the
parties. Neither party has authority to make, assume or create
any representation, warranty, agreement, guarantee, claim or
settlement on behalf of the other party with respect to the
subject matter of this Agreement or otherwise. Each party
shall defend, indemnify and hold the other party, its
officers, directors, and employees harmless from all claims,
costs, expenses, fines, fees and damages resulting from any
claim arising out of or related to a breach of the provisions
of this paragraph by such party.
9.16 NO WAIVER: Failure by either party to enforce any provision of
this Agreement will not be deemed a waiver of future
enforcement of that or any other provision.
9.17 GOVERNING LAW: The interpretation, construction, and
performance of this Agreement shall be governed by the laws of
the State of Washington.
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MICROSOFT AND IMMERSION CONFIDENTIAL
21
9.18 AMBIGUITY: This Agreement has been drafted by both Microsoft
and Immersion, and no ambiguity shall be resolved against
either of them by virtue of its role in drafting this
Agreement.
9.19 PERSONAL INJURY AND PROPERTY DAMAGE CLAIMS: Each party or its
Subsidiaries who manufactures or sells any product
("Manufacturer") shall indemnify, protect, defend and hold the
other party ("Licensor") harmless from any claims, damages,
liabilities, judgments, settlements, losses, costs and
expenses (including court costs and reasonable attorneys' and
experts' fees) (collectively, "Costs") suffered or incurred by
the Licensor in respect of any third party claim to the extent
such third party claim or threatened claim arises from a
personal or alleged personal injury or damage or alleged
damage to property arising out of the third party's use of an
FF product manufactured or sold by the Manufacturer,
notwithstanding any license or covenant-not-to-▇▇▇ granted the
Manufacturer by the Licensor hereunder.
9.20 NEGATION OF WARRANTIES AND OTHER OBLIGATIONS: Nothing in this
Agreement shall be construed:
(i) as a warranty or representation by a party as to the
validity or scope of any patents;
(ii) as granting by implication, estoppel or otherwise any
licenses or rights under patents or other
intellectual property rights of a party other than
expressly granted herein;
(iii) to require a party to file any patent application
relating to Force Feedback;
(iv) as a warranty that a party will be successful in
securing the grant of any patent relating to Force
Feedback or any reissue or extensions thereof; or
(v) to require a party to pay any maintenance fees or
take any other steps to maintain such party's patent
rights relating to Force Feedback.
9.21 ENTIRE AGREEMENT: This Agreement embodies the entire
understanding of the parties regarding the subject matter of
this document and supersedes all prior or contemporaneous
understandings and agreements, whether written or oral, and
can be modified only by a writing signed by both parties, or
their successors.
9.22 SUGGESTIONS AND FEEDBACK: Either party may from time to time
provide suggestions, comments or other feedback to the other
party with respect to Confidential Information provided
originally by the other party (hereinafter "Feedback"). Both
parties agree that all Feedback is and shall be entirely
voluntary and shall not, absent separate agreement, create any
confidentiality obligation for the receiving party. However,
the receiving
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MICROSOFT AND IMMERSION CONFIDENTIAL
22
party shall not disclose the source of any feedback without
the providing party's consent. Feedback shall be clearly
designated as such and, except as otherwise provided herein,
each party shall be free to disclose and use such Feedback as
it sees fit, entirely without obligation of any kind to the
other party. The foregoing shall not, however, affect either
party's obligations hereunder with respect to Confidential
Information of the other party.
9.23 COUNTERPARTS: This Agreement may be executed in counterparts,
which when taken together shall constitute a single, binding
agreement between the parties.
THEREFORE, the authorized representatives of the parties have executed this
Agreement in duplicate originals.
MICROSOFT CORPORATION IMMERSION CORPORATION
Signed: /s/ D. ▇▇▇▇▇▇ ▇▇▇▇▇▇ Signed: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
----------------------------- -----------------------
Name: D. ▇▇▇▇▇▇ ▇▇▇▇▇▇ Name: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
------------------------------- -------------------------
Title: GM Hardware Title: President
------------------------------ ------------------------
Date: 7/19/99 Date: 7/19/99
------------------------------- -------------------------
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MICROSOFT AND IMMERSION CONFIDENTIAL
23
Exhibit A
Immersion FF Patent Portfolio
U.S. Patent Number Issue Date Title
------------------ ---------- -----
4,823,634 4/89 Multifunction Tactile
Manipulative Control
5,185,561 2/9/93 Torque Motor as a Tactile
Feedback Device in a Computer
System
5,220,260 6/15/93 Actuator Having
Electronically Controllable
Tactile Responsiveness
5,389,865 2/14/95 Method and System for
Providing a Tactile Virtual
Manipulator Defining an
Interface Device Therefor
5,414,337 5/9/95 Actuator Having
Electronically Controllable
Tactile Responsiveness
5,459,382 10/17/95 Method and System for
Providing a Tactile Virtual
Reality
5,513,100 4/30/96 Velocity Controller with
Force Feedback
5,559,412 9/24/96 Actuator Having
Electronically Controllable
Tactile Responsiveness
5,576,727 11/19/96 Electromechanical
Human-Computer Interface With
Force Feedback
5,589,854 12/31/96 Touching Feedback Device
5,629,594 5/13/97 Force Feedback System
5,691,898 11/25/97 Safe and Low Cost Computer
Peripherals With Force
Feedback for Consumer
Applications
5,701,140 12/23/97 Method and Apparatus for
Providing a Cursor Control
Interface With Force Feedback
5,721,566 2/24/98 Method and Apparatus for
Providing Damping Force
Feedback
5,731,804 3/21/98 Method and Apparatus for
Providing High Noise
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MICROSOFT AND IMMERSION CONFIDENTIAL
24
Mechanical I/O for Computer
Systems
5,734,373 3/31/98 Method and Apparatus for
Controlling Force Feedback
Interface Systems Utilizing a
Host Computer
5,739,811 4/14/98 Method and Apparatus for
Controlling Human Interface
Systems Providing Force
Feedback
5,769,640 6/23/98 Method and System for
Simulating Medical Procedures
including Virtual Reality and
Control Method and System for
Use Therein
5,754,023 5/19/98 Gyro-Stabilized Platforms for
Force-Feedback
B1 5,459,382 6/9/98 Method and System for
Providing a Tactile Virtual
Manipulator Defining an
Interface Device Therefor
5,767,839 6/16/98 Method and Apparatus for
Providing Passive
Human-Computer Interface
Systems
5,790,108 8/4/98 Controller
5,805,140 9/8/98 High Bandwidth Force Feedbck
Interface Using Voice Coils
and Flexures
5,821,920 10/13/98 Control Input Device for
Interfacing an Elongated
Flexible Object With a
Computer System
5,825,308 10/20/98 Force Feedback Interface
Having Isotonic and Isometric
Functionality
5,828,197 10/27/98 Mechanical Interface Having
Multiple Grounded Actuators
5,831,408 11/3/98 Force Feedback System
5,844,392 12/1/98 Haptic Browsing
5,872,438 2/16/99 Whole-Body Kinesthetic Display
5,880,714 3/9/99 Three-Dimensional Cursor
Control Interface With Force
Feedback
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MICROSOFT AND IMMERSION CONFIDENTIAL
25
5,889,670 3/30/99 Method and Apparatus for
Tactilely Responsive User
Interface
5,889,672 3/30/99 Tactilely Responsive User
Interface Device and Method
Therefor
5,907,487 5/25/99 Force Feedback Device With
Safety Feature
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MICROSOFT AND IMMERSION CONFIDENTIAL
26
Exhibit B
Microsoft FF Patent Portfolio
[****]
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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MICROSOFT AND IMMERSION CONFIDENTIAL
27
Exhibit C
Microsoft FF-Capable Gaming Products
Combat Flight Simulator
Flight Simulator 98 (and prior versions thereof)
Cart Precision Racing
Midtown Madness
Motor Cross Madness
Monster Truck Madness 2 (and predecessor)
Mech Warrior 3 (and predecessors)
Starlancer
Urban Assault
Baseball Version 3D Fighter Ace (online version only)
Allegiance (online version only)
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MICROSOFT AND IMMERSION CONFIDENTIAL
28
Exhibit D
Released Immersion Products
[****]
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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MICROSOFT AND IMMERSION CONFIDENTIAL