Royalty Report: Telecommunications Svcs & Equip, Telecommunications Equip, Utilities Svcs – Collection: 546

License Grant

Under the terms of the agreement, the Company obtained a twenty-year exclusive, worldwide, sublicenseable right to use, produce, distribute, and create derivative works of the Products and to sublicense the product technology and materials, in the manufacture, marketing, distribution and sale of the Products and any future products that may be developed by the Company.

License Property

The Products include all models of the seven GDI product families, including EZ-Star, StarPoint, StarStream, StarView, StarPort, StarSpeed and StarPath.

EZ-Star is a single-port end-point interface module, especially for automatic meter reading applications.

StarPoint provides interface for fixed and mobile telemetry end points.

StarStream provides an interface between numerous end-point telemetry protocols and standard communications interfaces with an option to upgrade from analog to CDPD, CDMA, or GSM.

StarPort is a remote access device for secure network environments. StarSpeed provides high-speed connectivity for wireless and wireline operations.

StarPath provides reliable low-speed multipoint communications.

Field of Use

The Company entered into the Agreement to manufacture and market devices used primarily in automatic meter reading (AMR) applications and remote data applications (the Products).

The company’s customers include investor-owned utilities in the electrical power market; and systems integrators and original equipment manufacturers in the transportation and security market.  The Products manufactured under the terms and conditions of this Agreement will carry Licensee's trademark and proprietary marks or such other logo or other proprietary marks.

License Grant

The parties mutually desire to set forth in this Agreement certain terms for their future joint testing and marketing of the Communications Interface Cabinets; whereas, the parties desire to pursue the deployment of the new technology developed to provide reliable wireless and land line communication interfaces between advanced meter devices and central meter data management systems; whereas, the parties desire to validate the new technology developments by successfully implementing advanced metering capabilities through an initial field Beta test program and then a field deployment of Telenetics Communication Interface Cabinets; and whereas, the parties desire to take mutual advantage of the resulting technology advancements through joint efforts to market the communications interface equipment and other automated metering solutions.

License Property

Technology embodies in a series of Communication Interface Cabinets for interfacing electric meters with certain central meter data management systems.

Field of Use

This agreement pertains to the communication industry.

License Grant

Licensor hereby grants to Licensee, one non-exclusive and non-transferable right and license, during the Term of this Agreement, to make, have made, use, offer to sell, sell and otherwise transfer the Product or Products and practice the invention covered by the claims of the Patents solely within the embodiment of the triggerable location and remote control products developed and manufactured by Licensee.  This license is granted for developing, using, manufacturing (including outsourced manufacturing), marketing distribution and sales (including extending its rights under this license to units it sells to its customers for actual use of the licensed products) of Units.  Notwithstanding anything to the contrary contained in this agreement, except for all previously granted licenses and the licenses granted to Licensee, Licensor shall not license the Systems to any other persons or entities except those against whom Licensor has alleged have infringed or may potentially infringe upon Licensor's intellectual property rights.

License Property

The System is a telematics system which combines the following components and electronic circuits (or their functional equivalents) together comprising (i) a location signal generating device such as a GPS system receiver, (ii) a telemetry communication module such as a cellular telephone or satellite transceiver for example, (iii) a central processor unit, (iv) a trigger sensor input/output interface module, (v) a location signal antenna, (vi) a communication signal antenna, and (vii) a power source (the Unit).

Identification of Patents.  Licensee agrees that all rights granted by Licensor to Licensee hereunder are conditioned upon Licensee permanently affixing to the packaging of each Unit incorporating and using the Product and permanently affixing to each Unit incorporating and using the Product a legible notice reading Licensed under Patents No. US- 6,297,768 B1, 6,476,763 B2, 6,484,035 B2, 7,710,738 B2,, substituting any future patent numbers, as applicable.

Licensor has invented, developed and patented certain inventions relating to Wireless Triggerable Location and Remote Control products and Licensor intends to continue to invent, develop, improve and patent second generation Location and Remote Control products related thereto which represent improvements or modifications to the existing inventions (collectively, the Product) which either are currently under the protection of certain Letter Patents described in detail and shown in this document (including any modifications, extensions, renewals, divisions, continuations and continuations-in-parts and all reissues thereof), or will be protected by further patents now pending and obtained by Licensor (collectively, the Patents).

Field of Use

The rights granted relates to location reporting apparatus and methods.  The patent specifications necessary for Licensee to integrate and create the functions of the Product into the Unit are defined in this agreement.  It is understood that Licensee is responsible for all engineering, designs and manufacturing required for Licensee to utilize the intellectual property embodied in the patents.

The technology utilizes the integrated use of telecommunications and informatics to enable users to remotely monitor, track, control and protect a wide variety of asset classes such as, automobiles, and other motorized vehicles, shipping containers, covert vehicles used for law enforcement, and even people. This technology is referred to as “Telematics.”

License Grant

Licensor agreed to offer, for a limited time, the terms of the Special Licensing Program to defendants, including Licensee, in the litigation Network-1 Security Solutions, Inc. v. Cisco, Inc. et. al, Case No. 608-cv-00030, pending in the United States District Court for the Eastern District of Texas, Tyler Division.

License Property

Licensor is the beneficial owner of United States Patent No. 6,218,930.  On June 18, 2008, Licensor commenced an industry-wide “Special Licensing Program” for the ‘930 Patent to vendors of Power over Ethernet equipment.

The Special Licensing Program was of limited duration and was being implemented on an industry-wide basis to offer discounted running royalty rates and exceptions to Licensor’s standard current licensing terms and conditions relating to the ‘930 Patent to PoE vendors who are “early adopters” and enter into License Agreements without delay and to avoid litigation and higher royalties; Licensee and its Subsidiaries desire to obtain a royalty-bearing, non-exclusive, License under the ‘930 Patent, and Licensor is willing to grant Licensee and its Subsidiaries such License subject to the terms and conditions of this Agreement.  

Licensed Products (as of the effective date) include, but are not necessarily limited to  ProSafe L3 Managed Stackable Switches (including FSM 7328PS-100NAS, FSM 7352PSNA, FSM 7326PNA)
ProSafe Smart Switches (including GS 724TP-100NAS, GS 748TP-100NAS, FS 728TP-100NAS, FS 752TPSNA, FS 726T PNA)
ProSafe Unmanaged Desktop Switches (including FS116PNA, FS108PNA)
ProSafe Smart Wireless Controller (including WFS709TP)
ProSafe Light Wireless Access Point (including WGL 102-100NAS)
ProSafe Dual Band Light Wireless Access Point (including WAGL 102)
ProSafe Wireless Access Point (including WG 302NA)
ProSafe 802.11n Dual Band Wireless Access Point (including WNDAP330-100NAS)

License Grant

Licensor hereby grants a personal, non-exclusive, non-transferable, royalty bearing license under the '930 Patent (i) to make, use, lease, sell, offer for sale, import design, Have Made and otherwise transfer Licensed Products, including the right to procure or produce components therefore, (ii) to practice a method or process involved in the manufacture thereof, and (iii) practice any method or process involved in the use thereof.

Licensor agreed to a settlement of its patent infringement litigation against Licensee  and Licensee Systems, in the United States District Court for the Eastern District of Texas, Tyler Division, for infringement of Network-1's Remote Power Patent (U.S. Patent No. 6,218,930).

Field of Use

The Remote Power Patent relates to, among other things, the delivery of power over Ethernet cables in order to remotely power network connected devices including, among others, wireless switches, wireless access points, RFID card readers, VoIP telephones and network cameras.