Royalty Report: Security, Semiconductors, Software – Collection: 3885

License Grant

The Beijing parties have entered into three intellectual property license agreements a Technology License Agreement, a Trademark License Agreement and a Copyright License Agreement.

The Chinese Licensor hereby grants the Chinese Licensee, a related party, a non-exclusive and non-transferable license permitting the Licensee to utilize the technologies (Licensed Technologies) as specified in the Agreement.

License Property

Licensed Technologies
1. Dual Interface USB Key (Patent Application No. 03100326.5; Authority for Application Patent Office of the State Intellectual Property Office of China);
  
2. A type of Integrated Circuit Card & Integrated Circuit (Patent Application No. 03156066.0; Authority for Application Patent Office of the State Intellectual Property Office of China);
  
3. An method of fingerprint feature matching inside smart card (Patent Application No. 200310103495.2; Authority for Application Patent Office of the State Intellectual Property Office of China);
  
4. An method of fingerprint matching (Patent Application No. 200310103494.8; Authority for Application Patent Office of the State Intellectual Property Office of China);
  
5. IC card reader with serial port (Patent Application No. 03100326.5; Authority for Application Patent Office of the State Intellectual Property Office of China);
  
6. Chip encapsulation method and Dual interface card embedding process (Patent Application No. 01120065.0; Authority for Application Patent Office of the State Intellectual Property Office of China);
  
7. Prepaid IC card metering Security Management based on ESAM module (Patent Application No. 03137671.1; Authority for Application Patent Office of the State Intellectual Property Office of China);

8. An method of anti-cloning for SIM cards (Patent Application No. 200310103493.3; Authority for Application Patent Office of the State Intellectual Property Office of China);  

9. An method of Auto Payment for Cable TV system (Patent Application No. 200410008918.7; Authority for Application Patent Office of the State Intellectual Property Office of China);  

10. Trade secret technology of Licensor related to embedded data security operating systems or cryptography or security software that may be disclosed from time to time by Licensor to Licensee and identified as a trade secret by Licensor.

The Licensed Technology can be used for product development and commercialization within and only within the boundaries of the People’s Republic of China (excluding Taiwan, Hong Kong Special Administrative Regions, and Macao Special Administrative Regions).

Field of Use

The Licensor licenses the Licensed Technologies to the Licensee strictly for purpose of developing data security products incorporating encryption algorithms owned, controlled or licensed by the PRC government, to be manufactured by the Licensor (through its subcontractors and subvendors as the Licensor deems appropriate); and without the previous written consent of the Licensor, the Licensee shall not grant any sub-license to any third party.  

Licensee is one of the leading providers in China of operating system software with data security and encryption functions.  This software is embedded in decentralized or personal devices such as microprocessor cards, security tokens and other hardware devices. Currently, the software is most commonly deployed in microprocessor cards and is designed to assist customers with a broad range of security requirements, including verification of user identity, maintenance of data confidentiality, protection of data integrity, access control and the establishment of transaction records which cannot be repudiated. Licensee's customers include operators of mobile telecommunications networks, public authorities, health care systems, utility companies, financial services and public transportation systems. Licensee outsources smart card production processes that involve capital-intensive equipment, such as the mechanical assembly of cards, and specialize in the high value-added parts of the supply chain, such as the development of operating systems and personalization.

License Grant

For the Licensee of Japan Products and Trust Services, Licensor grants Licensee of Japan a nonexclusive, nontransferable, and worldwide license, under the Licensed Patents, in the Consumer Media Field, to make, have made, use, sell, offer for sale, lease, import and otherwise transfer Licensee Products and/or operate Licensee Trust Services.

For the Memory Stick, Licensor grants a nonexclusive, nontransferable, and worldwide license, under the Licensed Patents, in the Consumer Media Field, to sublicense third parties the right to make, have made, use, sell, offer for sale, lease, import and otherwise transfer Memory Stick; and to make, have made, use, sell, offer for sale, lease, import and otherwise transfer Memory Stick Capable Products.

License Property

Licensor holds the patent rights relating to, but not limited to; Database Usage Metering and Protection System and Method; Systems and Methods for Secure Transaction Management and Electronic Rights Protection; Systems and Methods Using Cryptography to Protect Secure Computing Environments.

Consumer Media Content means electronic content and information primarily released or published for distribution to and consumption by end-user individual consumers in the consumer market, including audio, video, video games, books, periodicals and other textual publications, and includes associated consumer end-user data obtained in connection therewith.

Memory Stick means a stand-alone, portable, secure, self-contained semiconductor storage device that is designed to be inserted into and interfaces with Memory Stick Capable Products, and meets the Memory Stick Standard Format Specifications, or any successor product that is a stand-alone, portable, secure, self-contained storage semiconductor device provided that such device will not be considered a successor product while it is sold or distributed by Licensee at the same time as the prior Memory Stick device. Memory Stick shall not include any DRM software, but includes its device drivers and any Licensee authentication or security software running on any embedded, dedicated-purpose processor on such Memory Stick.

Memory Stick Capable Products means any hardware product that incorporates device drivers, and potentially Licensee DRM software, that interface with a Memory Stick, and that does not include or interface with any third-party DRM software or services, nor include or interface with any other stand-alone, portable, secure, self-contained storage device. Notwithstanding the foregoing, Memory Stick Capable Products shall not include any personal computer or set top box, or other products similar to a personal computer or set top box, that contain a general purpose or open operating system, or any general purpose trusted systems or environments.

Licensee Product means any hardware or software product, including but not limited to devices and software products, including DRM software products, made, used, offered for sale, sold, imported or otherwise distributed by or for Licensee, under any Licensee Trademark; and any mobile phones or mobile audio devices made by Licensee, and distributed to a Vertical Partner by or for Licensee, for incorporation into such Vertical Partner’s value–added products under a brand owned by such Vertical Partner.

Licensee Trust Services means any services for Licensee Products that are operated by Licensee, under any Licensee Trademark, to provide key management and renewability, security patches and fixes, and other similar types of security maintenance services.

Field of Use

Consumer Media Field means products and services that are principally intended for end-user individual consumers, to Govern Consumer Media Content. Consumer Media Field excludes any product or service that is intended for use by enterprises, organizations, or governmental entities to Govern their enterprise, confidential, or other proprietary information.

Digital Rights Management (DRM) technology is implemented in software and is most often used to protect digital content, such as music and video clips, from unauthorized copying.

License Grant

The Licensor grants to the Company, and the Company accepts from the Licensor, a license (the License) to utilize the Patent, including the use, manufacture and sub-license of products which utilize the Patent and the patented technology within the Territory (hereinafter defined). During this terms of this Agreement, Licensor shall not grant any license of the Patent to any other company that directly, or indirectly through a subsidiary, affiliate, licensee or otherwise provides users with Internet access or sells, distribute or manufacturers smartcards, nor shall Licensor use the Patent in any way so as to compete with the Company.

License Property

U.S. Patent No.
Issue Date
Title
6,325,285
Sept. 14, 2004
Smart Card With Integrated Fingerprint Reader

A smart card is a card made from plastic or other suitable material that comprises some degree of processing capability. Typically, smart cards may be programmed to perform a wide variety of functions. For example, a single smart card may be programmed to open doors as a key, store medical information, and serve as an electronic credit card. A single smart card therefore has the potential to replace many of the items that people carry and use in their day-to-day lives.

Field of Use

Rights to Use . The license here stated is a license to make use of the Patent for the purpose of developing software, systems and products to be used in the business of the company, namely providing secure transactions over the Internet from home and office computers and/or providing either or an automatic method for connecting to remote computers and/or a method of delivering targeted advertising to home and/or office computers and/or providing identity verification and access control as provided for in the Patent. 5.

License Grant

Licensor hereby grants to Licensee an exclusive worldwide license, with the right to grant sublicenses, to use the Technology for the Exploitation of the Products for the Applications.

License Property

The term 'Technology,' as used in this Agreement, shall mean all proprietary and non-proprietary know-how, technical data, or other information of any kind regarding the design, manufacture, operation, use, or sale of the Products for the Applications based on the Intellectual Property, foreign counterparts of the Intellectual Property, or of the applications leading to such Intellectual Property, any other Intellectual Property now or hereafter owned or controlled by Licensor, and any modification or improvements thereto made by Licensor or Licensee, all as they may relate to the Applications.

The terms 'Product' and 'Products,' as used in this Agreement, shall mean reader/writers and high capacity data storage in a card format.

The term “Application(s)” shall mean health care, patient management, medical, dental and pharmaceutical records, medicare, medicaid or any other health application, including biometric identification. For avoidance of doubt, any other application, including, without limitation, for financial transactions or security and identification shall require the approval of Licensor.

INTELLECTUAL PROPERTY
(1)  Serial Number 09/426,793-2355, PATENT 7,036,739. “Data Storage Device, Apparatus and Method for Using Same.” Filed
10/23/1999.

(2)  Serial Number 60/161/302, “Data Storage Device, Apparatus and method for Using Same.” Filed 10/23/1999.

(3)  Serial Number 09/693,271-7503. “Data Storage Device, Apparatus and Method for Using Same.” Filed 10/23/1999.

(4)  Serial Number 09/502.812-5712. ALLOWED PATENT, waiting for issuance. “Article Having An Embedded Accessible Storage Member, Apparatus and Method For Using Same.” Filed 2/9/2000.

(5)  Serial Number PCT/US00/41444. NATIONAL STAGE ENTERED. “Data Storage Device, Apparatus and Method For Using Same.” Filed 10/19/2000.

(6)  Serial Number 11256525. PATENT 7,201,324. Data Storage Device, Apparatus and Method For Using Same.” Filed 10/19/2000.

(7)  Serial Number 00986831.6. PENDING “Data Storage Device, Apparatus and Method For Using Same.” Filed 10/19/2000.

(8)  Serial Number 2001-534145. PENDING. “Data Storage Device, Apparatus and Method For Using Same.” Filed 10/19/2000.

(9)  Serial Number 12210064. PENDING. “Article Having An Embedded Accessible Storage Member, Apparatus And Method For Using Same.”  Filed 9/12/2008.

(10)  Serial Number 12210083. PENDING. “Article Having An Embedded Accessible Storage Member, Apparatus and Method For Using Same.”  Filed 9/12/2008.

(11)  Serial Number 09/410.679. PATENT 6,410,330 BI. “Data Storage Device, Apparatus and Method For Using Same. Filed 10/1/1999. UltraCard and Komag.

(12)  Serial Number 08/215,140. PATENT 5,521,774. “Memory Storage Module For Storing and Accessing.” Filed 3/18/1994.

(13)  Serial Number 08/606,359. PATENT 5,621,583. “Method and Device For Reading and Writing Magnetically Encoded Data On Linear Tracks.” Filed 2/23/1996.

(14)  Serial Number 08/606,170. PATENT 5,739,975. “Memory Storage Module For Storing and Accessing Magnetically Encoded Data On Linear Tracks.” Filed 2/23/1996.

(15)  Serial Number PCT/US99/14424. National Stage Entered. “Data System With Support Surfaces For Reciprocating Data Head.” Filed 6/24/1999.

(16)  Serial Number 07/342,217. PATENT 5,107,099. “Drive Apparatus For Data Storage Device.” Filed 4/24/1989.

(17)  Serial Number 07/871,447. “Drive Apparatus For Data Storage Device.” Filed 4/21/1992. Abandon.

(18)  Serial Number 09/113,783. PATENT 6,131,816. “Data System With Support Surfaces For Reciprocating Data Head.” Filed 7/10/1998.

(19)  Serial Number 09/663,658-2181. PATENT 6,871,787. “Data Storage Having A Glass Substrate And Data Surface Region And Method For Using Same.” Filed 9/15/2000.

(20)  Serial Number 09/654,542-6237. PATENT 6,875,569. “Data System.” Filed 9/1/2000.

(21)  Serial Number 09/654,542. PATENT 6,938,825. “Data System.” Filed 9/1/2000.

(22)  Serial Number 11/033,342-5932. PATENT 7,073,719. “Data System”, Filed 1/10/2005.

(23)  Serial Number PCT/US90/02225. National Stage Entered. Improved Magnetic Disk Drive Apparatus And Method.” Filed 4/24/1990.

(24)  Serial Number 29/152,431-8904. PATENT D494, 999 S. “Credit Card With Accessible Rotatable Storage Member.” Filed 12/14/2001.

(25)  Serial Number 29/152,432-8903. Continuation. “Credit Card With Internal Rotatable Storage Member Accessible From A Surface Of A Credit Card.” Continuation 1/27/2005.

(26)  Serial Number 29/222,379-6313. PATENT D510,595. “Credit Card With Internal Rotatable Storage Member Accessible From A Surface Of A Credit Card.” Filed 1/27/2005.

(27)  Serial Number 29/152,434-8902. PATENT D509,847. “Removable and Reinsertable Storage Member For A Credit Card’. Filed 12/14/2001.

(28)  Serial Number 60/341,662-9376. “Credit Card With Accessible Rotatable Storage Member, Data Processing System And Method For Using Same.” Filed 12/14/2001. Abandon.

(29)  Serial Number 09/663,832-4031. PATENT 6,969,006. “Rota table Portable Card Having A Data Storage Device, Apparatus and Method For Using Same.” Filed 9/15/2000.

(30)  Un-filed. “Data Card With Accessible Rotatable Storage Member, Data Processing System And Method For Using Same.” Opened 1/26/20048

(31)  There are twenty seven serial number files that have been consolidated into other broader filings and some others have been abandoned but will be transferred.

(32)  PATENTS 7,988,061, issued August 2, 2011; 7,988036, issued August 2, 2011; 7,487,908, issued February 10, 2009.

License Grant

Licensor hereby grants to Chinese Licensee a personal, royalty-bearing, internal, non-transferable, non-sublicensable, license under Licensors Intellectual Property Rights in and to the Licensor Product Technology to
(a) make (but not have made), in each case solely at the Licensee Facility, Licensed Products;
(b) sell and offer for sale Licensed Products, and deliver such Licensed Products solely to customers in Greater China for end use in products solely for sale and use in Greater China;
(c) make a reasonable number of copies of the Licensor Product Technology, other than the Licensor Maskworks, as necessary to exercise the license above and to test the Licensed Products; and
(d) Subject to Licensors prior written approval to use, copy and distribute certain non-confidential Licensor documents in connection with the marketing and sale by Licensee of Licensed Products.

License Property

Licensor Product Technology means the Licensor Maskworks, and copies of any Licensor Product information and specifications, testing requirements and procedures and any other Technology, in each case provided by Licensor to Licensee under this Agreement for purposes of Product Qualification, or the manufacturing and testing of Licensor Products and/or Licensed Product under the Product License Agreement.

Licensed Products means those semiconductor devices manufactured by Licensee using the Licensor Maskworks and other Licensor Product Technology that are sold in wafer, die or packaged form as part of a Licensee product, excluding in all cases any Licensor Product.

Licensor Maskworks means those specific Maskworks sets provided or to be provided by Licensor to Licensee as set forth in this agreement to include but not limited to Ultratech-based Mask Sets and Nilon-based Mask Sets.

Intellectual Property Rights means the United States and foreign rights associated with the following (i) patents and patent applications (Patent Rights); (ii) copyrights, copyright registrations and applications therefor (Copyrights); (iii) Maskworks, Maskwork registrations and applications therefor (Maskwork Rights); (iv) trade-secret rights and all other trade secret or similar proprietary rights in confidential business or technical information (Trade Secret Rights); and (v) any similar, corresponding or equivalent rights to any of the foregoing any where in the world. For purposes of this Agreement, Intellectual Property Rights excludes any United States and foreign rights associated with Trademarks.

Licensor is engaged in the business of designing, manufacturing and marketing high performance, analog integrated circuits that are used primarily by original equipment manufacturers operating in the computing, consumer electronics, communications and networking infrastructure markets.

Field of Use

This agreement covers foundry manufacturing, product licenses, process technology transfers and fab equipment sales.

Licensee is an integrated circuit design company focused on integrated circuits used in audio/video equipment and other consumer products in China.

License Grant

The Licensor hereby grants and conveys to Licensee, subject to the express limitations of this Agreement, a license to test, experiment with and use for First Prototype,  and a worldwide exclusive license to make, use, sell, sublicense, or otherwise transfer the System of any component thereof in the Field of License but only in the Field of License, to use such certification mark(s), trademark(s) and/or other marking(s) on Licensed Products,  and to disclose the System to the Authorized Sources and others necessary for its practice by Licensee and its sublicenses.

License Property

Licensor owns all right title and interest in United States Patent No. 5,623,552 dated April 22, 1997, and entitled “Self-Authenticating Identification Card With Fingerprint Identification”.

Field of Use

“Field of License” means identification, access, and security cards, associated systems and equipment of any and all types used in any location worldwide by

(1) Medical and health care organizations, meaning private or public hospitals, medical clinics, doctor’s offices, and other organizations that provide medical health care;
(2) Medical insurance organizations, meaning private or public organizations that provide medical health care insurance; and/or
(3) Retail pharmacy organizations, meaning private or public organizations that provide pharmaceutics to the public and/or to medical and health care organizations.

It is understood and agreed that the organizations identified  may use the System for activities that relate to the operation of medical and health care services, insurance, and retail pharmacy services, respectively, including but not limited to storage, retrieval, and processing of medical and/or patient information, billing data, parking security and management, inventory control, and patient or doctor, nurse and employee security, as well as storage, retrieval, and processing of medical and/or patient information including but not limited to Medicare, Medicaid, and other government-sponsored and/or controlled programs.