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1394 PATENT PORTFOLIO LICENSE SUMMARY
This briefing provides an outline of the License. It is for information
purposes only. The actual license agreement provides the only definitive and
reliable statement of license terms.
Following is an overview of the 1394 Patent Portfolio License:
Click here
to download a PowerPoint summary of the 1394 Patent Portfolio License.
Coverage
The 1394 Patent Portfolio License grants rights under patents (listed in
Attachment 1) that are essential to the 1394 Standard (IEEE 1394-1995, IEEE
P1394a (June 30, 1999), IEC 61883-1 and IEEE P1394b (Draft 0.75, August 10,
1999). Each patent is essential because one or more of its claims is infringed
by compliance or implementation. Therefore, any company that makes or uses 1394
products requires a license under these patents. The sublicense grant is
worldwide, nonexclusive and nontransferable, but a Licensee can extend coverage
of the 1394 Patent Portfolio License to its affiliates.
Licensors are obligated to include all of their 1394 Essential Patents
wherever they issue and cannot withdraw coverage of patents to Licensees that
already have signed up during a period when a particular Licensor and/or
patent(s) was in the Portfolio. Evaluation of patents for inclusion in the
Portfolio is ongoing. New Licensors and essential patents will continue to be
added at no additional cost during the current License Term following a
determination of essentiality, and Attachment 1 will be updated on a regular
basis to include them.
Royalties
The royalty is US $0.25 upon the Sale or Manufacture of each 1394 Royalty
Product, meaning a Finished Product offered for Sale in an unmodified and
uncombined form to an End User that, but for the License, would infringe one or
more Portfolio patents. The royalty on each Finished Product is without regard
to the number of components in the product that incorporate the standard.
License Term
The initial term of the License is to January 1, 2010. The License (which is renewable for additional five year periods for the life of any Portfolio patent subject to reasonable amendment of terms and conditions to suit prevailing market conditions, changes in technological environment and available commercial products at the time of renewal) has been extended (and is renewable by past Licensees) for an additional five-year period to January 1, 2015 under the same terms. Other important provisions
A Licensor may instruct the Licensing Administrator to remove its patents
from coverage as to a particular Licensee if that Licensee brings a lawsuit or
other proceeding (1) seeking a declaratory judgment of invalidity regarding
Licensor's 1394 Essential Patents or other of Licensor's patents having one or
more claims that may be infringed by compliance with or implementation of the
1394 standard or (2) for infringement against the Licensor of a 1394 Essential
Patent or other patent having one or more claims that may be infringed by
compliance with or implementation of the standard, and Licensee refuses to
license such patent(s) on which the litigation is based to the Licensor on fair
and reasonable terms (one example of which is the Licensors' per patent share of
royalties payable under the License). The reason for this provision is that the
License is to protect companies from being sued for using 1394 but should not be
used to protect a Licensee so that it can sue others; it encourages negotiation
and innovation in support of the standard.
Of course, any Licensee is free to add 1394 essential patents to the
Portfolio that it or an affiliate may own on the same terms and conditions as
all other Licensors. If a Licensee chooses not to do so, however, it must agree
to license such patents to any Licensor or Licensee on fair and reasonable terms
(one example of which is the Licensors' per patent share of royalties payable
under the License). The purpose of this provision is to assure, for the benefit
of all Licensees, that a Licensee does not take advantage of the 1394 Patent
Portfolio License, on the one hand; yet refuse to license its own 1394 essential
patents on fair and reasonable terms.
A most favorable royalty rates protection is included to assure Licensees
that no Licensee will get more favorable royalty rates than another.
Licensee information is treated as confidential.
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