Professional Documents
Culture Documents
Transaction ID 66281178
Case No. 2021-0066-
IN THE COURT OF CHANCERY OF THE STATE OF DELAWARE
CONTINENTAL AUTOMOTIVE )
SYSTEMS, INC., a Delaware )
corporation, )
)
Plaintiff, )
)
v. ) C.A. No. 2021-
)
NOKIA CORPORATION, a Finnish )
corporation, NOKIA OF AMERICA )
CORPORATION, a Delaware )
corporation, NOKIA SOLUTIONS )
AND NETWORKS OY, a Finnish )
corporation, and NOKIA )
TECHNOLOGIES OY, a Finnish )
corporation, )
)
Defendants. )
)
)
VERIFIED COMPLAINT
alleges the following facts and claims against Defendants Nokia Corporation
1
INTRODUCTION
access devices (NADs), and other devices that use telecommunications technology,
brings this lawsuit because of Nokia’s refusal to license its alleged standard-essential
patents (“SEPs”) relevant to the 2G, 3G, and 4G cellular standards to Continental
and its suppliers on fair, reasonable, and non-discriminatory (FRAND) terms and
conditions. Continental is a willing licensee, and seeks to pay a FRAND royalty rate
seeks equitable relief in the form of declaratory and injunctive relief regarding its
rights and Nokia’s breaches of contract law, including the determination and
imposition of the FRAND terms and conditions for a license to the SEPs owned or
controlled by Nokia.
include cellular connectivity. For example, cars use cellular connectivity for
which is the core electronic component that allows it to transmit and receive
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TCU. Baseband processors and NADs are also used in various non-automotive
applications. The TCU is then installed into the car. The TCU includes additional
interface software, and control functions. The car into which the TCU (and thus the
tangential to the main functionality of a car (i.e., transporting people from one
location to another).
Tier 2 supplier of NADs to other Tier 1 suppliers, or incorporates its own NADs into
the TCU (in effect acting as its own Tier 2 supplier). In other instances, Continental
sources its NADs from other Tier 2 suppliers, who in turn source the necessary
baseband processor chipsets that enable cellular connectivity from companies that
connectivity technology outside the automotive industry, e.g., for use in industrial,
cellular standards, such as the second generation (2G), third generation (3G), and/or
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fourth generation (4G) cellular standards adopted by various standard-setting
organizations (SSOs), such as ETSI, ATIS, TIA, ARIB, CCSA and others. Nokia
claims to own patents that have been declared essential to these standards, which are
5. On information and belief, all of the Nokia patents at issue in this case
are subject to the express and voluntary promises Nokia made to the relevant SSOs
pursuant to their Intellectual Property Rights (IPR) Policies. Such IPR Policies all
require Nokia to license its alleged SEPs to any user of the standard that requests a
license, and do so on FRAND terms and conditions. The SSOs relied on such
the standards.
market. Once standardized, a technology is “locked in” and must be practiced by all
who wish to produce standard-compliant products. Such lock-in gives SEP owners
the market power to exclude companies from practicing the standard, and to raise
of the ex ante incremental value of such technology when it still competed with
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alternatives. This phenomenon is often referred to as “hold-up.” Such market power
does not derive from the original patenting of the SEPs at issue, but results directly
from collective action and incorporation into the standards. In order to ameliorate
the risks posed by the existence of this market power, and as a trade-off for having
its proprietary technology included in the standards, which in turn enables the SEP
owner to license a much greater volume of products than would be the case if the
technology was not used in the standards, the SEP owner is requested to make the
FRAND promises to the relevant SSOs. Those promises obligate Nokia to license
repeated attempts to obtain a FRAND license from Nokia have been unsuccessful.
automotive industry at the OEM level, while refusing to license suppliers like
Continental. Continental sought a direct license from Nokia starting in 2017, but for
nearly three years was repeatedly met with refusals to offer a direct license that
and/or lawsuits, and has obtained injunctions against at least one Continental
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customer based on its use of Continental’s products. Nokia’s pursuit of injunctions
based on the alleged infringement of its SEPs is directly contrary to its own prior
advocacy in this Court when Nokia filed suit against Qualcomm for a FRAND
Continental with an offer for a partial direct license, although it continued to wrongly
claim it had no legal obligation to do so. Yet even Nokia’s new offer suffers from
rates that are nowhere close to FRAND, demands royalties from Continental even
when Nokia’s patent rights are exhausted, and includes other material limitations.
There is no reasonable economic, technical, or other valid justification for the high
royalty rates being demanded by Nokia. They are not consistent with the
incremental value of Nokia’s SEPs, if any, and are contrary to Nokia’s own prior
positions and advocacy regarding how to calculate a FRAND royalty rate, including
when Nokia sued Qualcomm in this Court as a prospective licensee. Nokia’s offer
also requires Continental to pay royalty rates to Nokia when Continental is using a
Qualcomm chip in a manner that is contrary to the terms of the license agreement
that arose out of Nokia’s litigation with Qualcomm in this Court. Continental is a
third-party beneficiary of Nokia’s agreement with Qualcomm with the right under
the terms of the agreement to sue Nokia, and thus Nokia’s failure and refusal to
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honor the terms of that agreement for the benefit of Continental constitutes another
products that are alleged to infringe Nokia’s patents, or foregoing such business
activity and the associated profits. Continental is also impaired in its ability and
incentive to invest in new products and markets if it cannot supply its customers with
licensed products, such that Nokia’s patent rights are exhausted. Indeed,
licenses and supply products free of third-party IP rights, and further that Continental
indemnify its customers for the cost of any patent infringement claims related to
Continental’s products, as well as the cost of any license fees paid by the customer.
Continental’s inability to obtain a FRAND license from Nokia interferes with its
ability to manage the financial risks of its business and win new business from its
Nokia began its licensing campaign in the automotive industry, and continuing
through the present, Continental has faced numerous customer demands for
demands that Continental reimburse the customer for royalties paid pursuant to a
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pool license which includes Nokia’s patents. The non-FRAND royalties that Nokia
potentially ruinous liability. Continental could avoid all of these harms if it could
obtain a FRAND license to Nokia’s SEPs, but Nokia has failed and refused to
provide one.
11. Because of Nokia’s refusal to license its 2G, 3G, and 4G SEPs to
Continental and other suppliers on FRAND terms and conditions, Continental has
brought this lawsuit to (1) address Nokia’s breaches of contract, (2) obtain a
declaration that Continental is entitled to a direct license covering all of its products
which practice the cellular standards, (3) obtain a declaration that Nokia’s demanded
terms are not FRAND, and (4) obtain, through injunctive relief, a FRAND license
to Nokia’s SEPs.
organized under the laws of the State of Delaware, with its principal place of
organized and existing under the laws of Germany. Continental AG was originally
Since then, Continental AG has expanded into new automotive business areas,
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becoming one of the leading suppliers to automotive OEMs worldwide.
developing and commercializing the TCUs, NADs, and other innovative telematics
has over 100 employees (full or part time) responsible for development of the
hardware and software platforms for each of the connectivity products developed
and sold by the Continental Group. Plaintiff also handles the quality control aspects
related legal issues (e.g., intellectual property and open source reviews), and handles
the sourcing and purchasing of component parts. Plaintiff also coordinates the
related research and development and sales activity of Continental affiliates around
the globe.
the 2G, 3G, and/or 4G cellular standards, to transmit and receive data used by the
its customers. Instead, Continental is and has always been a leading innovator in the
develop products and related solutions for connected vehicles and other new
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markets.
existing under the laws of Finland, having its principal place of business at
organized under the laws of Delaware, having its principal place of business at 600
Mountain Avenue, Murray Hill, New Jersey 07974. Nokia America is a wholly-
organized and existing under the laws of Finland, having its principal place of
organized and existing under the laws of Finland, having its principal place of
20. Nokia America, Nokia Solutions, and Nokia Technologies are all
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business.
21. This Court has personal jurisdiction over each Defendant based on their
relevant contacts with this judicial district pursuant to Delaware’s long-arm statute,
10 Del. C. § 3104(c), and also based on their consent. Upon information and belief,
each Defendant has conducted and continues to conduct business in this judicial
district, has engaged in continuous and systematic activities in this judicial district,
22. Nokia has used the Delaware courts to resolve disputes related to
FRAND, its SEPs, and the SEPs of others. Notably, when Nokia was seeking a
this very Court, and the case was heavily litigated for several years. Many of the
positions that will be advanced by Continental in this case are the same as positions
advanced by Nokia in its prior case against Qualcomm. That case resulted in a
license agreement between Qualcomm and Nokia that included a promise by Nokia
that it would not sue Qualcomm for patent infringement based on Qualcomm’s
manufacture and sale of chips, including the chips that Qualcomm sells to
that agreement and entitled to enforce its rights thereunder, yet in its negotiations
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with Continental, Nokia has failed to live up to its obligations under its agreement
with Qualcomm, including failing to acknowledge that its patents are exhausted for
Continental a license at the rates agreed to in the license that resolved Nokia’s
in the Court of Chancery in its agreement with Qualcomm, as well as the application
of Delaware law.
Nokia’s 2G, 3G and 4G patents. In that case, Nokia asserted ten patents against
Apple and sought a declaration that it complied with its FRAND obligation pursuant
to the ETSI IPR Policy. Nokia has otherwise regularly litigated patent disputes in
in one of those cases, Nokia referred to Delaware as its “corporate home in the
United States.”
24. Nokia has a variety of other contacts with Delaware related to the
parties’ disputes, including upon information and belief selling products that are
compliant with the 2G, 3G and/or 4G standards in Delaware. Nokia also derives
Delaware, including many companies that reside in Delaware and sell products that
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comply with the 2G, 3G and/or 4G standards in Delaware.
declarations to ETSI (and related SSOs in the United States) for the patents at issue
in this lawsuit. Upon information and belief, Nokia America has engaged the foreign
Nokia entities to act as Nokia America’s licensing agent for the 2G, 3G and/or 4G
SEPs that Nokia America owns. The foreign Nokia entities have been granted the
right and ability to license Nokia America’s 2G, 3G and/or 4G SEPs, and regularly
do so.
FACTUAL ALLEGATIONS
26. As explained below, Continental brings this action for equitable relief
because of Nokia’s unlawful failure and refusal to offer a direct license on FRAND
terms and conditions to Continental for TCUs, NADs, and its other connectivity
products with respect to Nokia’s patents asserted to be essential to the 2G, 3G, and
4G cellular standards.
Cellular standards have evolved over generations, beginning with the “first
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generation standards followed.
emerged to develop and manage the relevant cellular standards. SSOs are voluntary
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3GPP or 3GPP2 scope and transposes 3GPP or 3GPP2 technical specifications into
the Organizational Partner’s own standards. ETSI, ATIS, ARIB, TTC, and CCSA
are all organizational partners of 3GPP. TIA, ARIB, and TTC are all organizational
partners of 3GPP2.
relatively basic functionality, supporting just a few analog signals (as opposed to the
digital signals used today). In the late 1980s, the cellular industry began moving
System for Mobile communications (GSM), the Generalized Packet Radio System
(GPRS), Enhanced GPRS (EDGE), and Code Division Multiple Access (CDMA).
32. In the late 1990s, the cellular industry pushed towards 3G, which
offered higher transmission speeds, ability to support more users, and improved
reliability. The leading 3G standards families were CDMA2000 and the Universal
Terrestrial Radio Access (UTRA), which operated in various modes around the
Code Division Multiple Access (TD-SCDMA). The WCDMA standard was also
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Packet Access (HSPA) which utilized at least two protocols: High Speed Downlink
Packet Access (HSDPA) and High Speed Uplink Packet Access (HSUPA). Once
again, the two main 3G standards were not interoperable, and thus a device
33. In the late 2000s, the cellular industry came together for 4G to develop
Term Evolution (LTE). LTE was adopted almost universally as the 4G cellular
communication standard.
34. Although standards deliver economic benefits, they can also present
anticompetitive risks that potentially impose excessive and unfair costs on users of
the standards, and even hinder broad implementation of the standards. Nokia itself
argued at length about these very risks and concerns, as detailed below, when Nokia
was a licensee of Qualcomm’s patents and sued Qualcomm in this Court based on
standard setting process, SSO participants evaluate and then select the appropriate
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practice the relevant standard. For example, with respect to much of the
functionality within the 3G UMTS and LTE standards, alternative technologies prior
including Continental, could no longer substitute the adopted technologies with any
complying with the standard, like Nokia, possess monopoly power over the standard.
This creates a potential for market-distorting behavior whereby the owners of SEPs
attempt to capture not only the incremental value of their patented technology, but
also the value of standardization itself, as well as the value of technologies outside
the scope of the SEPs. Such behavior could involve refusing to license certain users
participants through injunctions because the market participant using the standard
regards the patent owner’s royalty demand as not FRAND. Such exploitation of
to as patent “hold-up.”
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37. In order to prevent SEP holders from blocking or otherwise inhibiting
SSOs maintain IPR policies which impose certain duties. For example, such policies
require and/or strongly encourage each party that participates in the standard-
development process to disclose on a timely, bona fide basis, all intellectual property
rights they are aware of and believe may be essential to a proposed standard. See,
e.g., ETSI IPR Policy, § 4.1; TIA IPR Policy, § 3.1.2; ATIS Operating Procedure, §
10.4.2 at 10.
38. The relevant SSO IPR policies additionally encourage members who
their asserted SEPs to firms implementing the standard on FRAND terms and
conditions. See, e.g., ETSI IPR Policy, § 6.1; TIA IPR Policy, § 3.1.1; ATIS
SEPs. See, e.g., ETSI IPR Policy, § 6.1bis; TIA IPR Policy, § 3.1.1; ATIS Operating
Procedure, § 10.4.2 at 11. Accordingly, alleged SEP owners like Nokia that have
standards within the automotive supply chain, including component suppliers like
Continental, regardless of their position within that supply chain. This has been
confirmed, for example, by the Director General of ETSI who oversaw development
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of the ETSI FRAND policy, who has explained that “[t]he whole idea [of the ETSI
Patent Policy] was that if a FRAND promise was made, everyone was entitled to a
FRAND license.” Karl Heinz Rosenbrock, Licensing At All Levels Is The Rule
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3064894.
39. When SEPs are not available for FRAND licensing, the relevant SSOs
have an obligation to reassess, and then revise or even abandon the portions of their
standards that rely on such essential proprietary technologies. For example, under
to license an IPR” on FRAND terms pursuant to the policy, ETSI is required to select
another “viable alternative technology” solution “which is not blocked by that IPR
and satisfies ETSI’s requirements.” Id., § 8.1.1. If no such viable solution exists,
then work on the standard “shall cease[.]” The TIA IPR Policy similarly provides
“referred back to the Formulating Group for further consideration[,]” TIA IPR
Policy § 4 at 11-12, and may be withdrawn by TIA, id. § 3.1.3 at 9-10. Other relevant
SSOs have policies similar to the policies at ETSI and TIA. Thus, by making an
displaces the process within the SSOs whereby SSO members are duty-bound to re-
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evaluate their technical specifications when the unavailability of an essential
result of standardization, which significantly expands the pool of licensees who must
practice any essential patents to all those who produce and sell standard-compliant
products. In exchange, the SEP holders agree not to abuse the market power
resulting from the patent’s incorporation into the standard to the exclusion of other
FRAND commitments from SEP holders precisely to impose a limit on the exercise
will always be able to implement the standardized technology and will not be
developing innovative products that may operate with the standard. Unfortunately,
despite SSOs adopting IPR policies incorporating FRAND commitments, some SEP
owners, including Nokia, abuse their monopoly power arising from the
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standards and extract supra-competitive royalty rates after companies are locked into
42. Nokia has participated in the cellular standard setting process through
membership in various SSOs, including ETSI, TIA, and ATIS. Nokia has declared
that certain of its patents or patent applications may be or may become essential to
licenses to the disclosed patents on FRAND terms and conditions. As a result, Nokia
is obligated to license its SEPs on FRAND terms and conditions by virtue of the
43. Nokia made these declarations to ensure that the cellular standards
alleged SEPs. The SSOs, in turn, relied on Nokia’s FRAND licensing commitments
in adopting the technology into the standards. While making such declarations to
the relevant SSOs, Nokia concealed its intent to, among other things, refuse to
license certain users of the standards in a given supply chain, charge supra-
competitive royalty rates, and demand discriminatory terms and conditions for a
license to its alleged SEPs. The intent of this concealment was to deceive and induce
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standards.
labor” at least between the OEMs (i.e., automobile manufacturers) and their Tier 1
suppliers (e.g., Continental). Suppliers like Continental are much more than
and have the in-depth know-how and expertise to manufacture and constantly
research and develop (and re-develop) a large number of complex components that
Automotive OEMs then assemble the various components obtained from their
various Tier 1 suppliers and combine them into the final vehicle. In this sense, Tier
1 suppliers are one of the driving forces in the technological development of the
automotive industry. For example, in the TCU context, Tier 1 suppliers must
determine the sub-components necessary for cellular connectivity and have the
expertise to design a product that not only fits into the OEM’s vehicle, but also
NADs, necessary for the products they manufacture from Tier 2 suppliers.
Sometimes, however, Tier 1 suppliers also build their own NADs, or sell NADs to
other Tier 1 suppliers (in these instances, also acting as a Tier 2 supplier).
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Continental, at times, does both. Tier 2 suppliers source the components necessary
for their products from Tier 3 suppliers (manufacturers of the baseband processor or
design to the Tier 2 suppliers in order to facilitate the making of a tested and
OEMs often initiate fierce bidding competitions in so-called “Request for Quotes”
(RFQs). Often, the winning bid is the supplier with the ability to provide a product
meeting the OEM’s specifications at the lowest price. Additionally, this significant
include assurances that the products supplied to the OEM do not violate patents or
supplier to indemnify the respective OEM for any royalties the OEM might pay for
using and/or selling the product as part of a vehicle. In today’s environment, with
Nokia and other SEP owners aggressively pursuing OEMs with SEP infringement
claims related to the cellular standards, OEMs regularly insist that suppliers like
Continental attest that they have, or commit to obtain, all necessary cellular SEP
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licenses to patents that may cover cellular standards implemented by the products it
between continuing to make and sell products that are alleged to infringe Nokia’s
patents, or foregoing such business activity and the associated profits. Continental
is also impaired in its ability and incentive to invest in new products and markets, as
well as win new business, if it cannot supply its customers with licensed products,
such that Nokia’s patent rights are exhausted. However, Continental has not been
able to obtain such a license because Nokia has failed and refused to grant a license
48. Since at least 2017, Nokia has been targeting Continental customers
(automobile OEMs), asserting that their connected cars practice the cellular
standards purportedly covered by Nokia alleged SEPs, and offering a license to the
alleged SEPs. In so doing, Nokia has demanded non-FRAND rates, and threatened
patent infringement lawsuits and injunctions against the OEMs that would halt
production of their cars simply because they contain a small telematics component
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least one instance, Nokia has succeeded in obtaining injunctions against one of
to enter into licenses by threatening patent injunctions is directly contrary to its prior
patents.
49. Continental learned from its customers that they were being targeted by
Nokia. Understanding that the automobiles sold by its customers connect to the
various cellular networks through the TCUs and NADs provided by Continental
(with the actual practice of the cellular standards occurring at the level of the
knowledge beyond the scope required by car OEMs, who often simply assemble cars
with the components or subsystems that include cellular functionality. While the
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50. Continental contacted Nokia in 2017 in an attempt to negotiate a
FRAND license to the alleged SEPs asserted against its customers. However, all of
misbehavior. For years, Nokia refused to provide Continental with a direct license,
whereby Continental itself would be fully licensed to Nokia’s SEPs. Instead, Nokia
insisted that it would only license its patents at the OEM level. Notably, this was
contrary to Nokia’s own historical practices (wherein Nokia had licensed component
makers in the past), and its own historical advocacy in various litigation and
Continental was not credible, and wanting to avoid regulatory intervention, Nokia
it was willing to deal with Continental and other suppliers. In reality, though,
Nokia’s proposals all stopped well short of offering Continental the full direct
license which the law requires, and which Continental needs to make and sell
products which are alleged to practice Nokia’s alleged SEPs. During this same time
period, Continental proactively made a license offer to Nokia, which would have
afforded it a direct license on FRAND terms and conditions, but Nokia rejected the
offer.
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52. In September 2020, for the first time, Nokia finally offered Continental
a partial direct license to Nokia’s SEPs. However, the offer was still deficient and
rates and other terms that are still not close to being FRAND, and includes other
53. Courts, regulators, and other commentators have all explained that
FRAND principles are only effective when, at least, royalties for essential
technology are limited to the incremental value of the alleged SEPs when they still
competed with other alternatives for inclusion in the standard, and exclude the
additional value the technology gains from being adopted into standards (i.e., the
royalties must capture only the incremental value of the patented technology, not the
value of the standard). Additionally, patent damages law is clear that Nokia is only
entitled to the incremental value of its own inventions, and not any value flowing
from other aspects of the accused product which Nokia did not invent. Nokia has
which Nokia itself has previously advanced, is what is known as the “top-down”
methodology. The top-down methodology starts with the premise that there needs
to be a reasonable, maximum aggregate royalty rate for a license to all SEPs. This
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cumulative royalty burden, otherwise known as a “royalty stack,” needs to be
reasonable. Otherwise, companies whose products implement the standards will not
be able to afford the royalties, and will lack the incentive and ability to develop such
burden for 3G devices, and a “single digit” percentage royalty burden for 4G devices.
These statements were made around the time the standards were being developed
and adopted, in an effort to ease market concerns about the aggregate royalty burden
56. The second step of a top-down approach is to give each SEP owner a
royalty that is reflective of its proportional share of the cumulative royalty burden,
determines the total size of the pie (the reasonable aggregate royalty burden), and
then gives each patent owner an appropriate-sized slice of that pie (the proportional
share). Again, for many years Nokia endorsed this approach to calculating FRAND
57. Unfortunately, the royalty rates and other terms being demanded by
Nokia in the automotive industry are not FRAND, and are completely out of step
with any reasonable application of the top-down methodology. Instead, the rates are
multiples too high, and imply a cumulative royalty burden that is grossly excessive
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and unsustainable relative to the market price of the goods that implement the
cellular standards, i.e., the baseband processor in the first instance, then the NAD,
and finally the TCU. Continental has repeatedly asked Nokia to explain in detail
how it calculated or otherwise determined its demanded royalty rates, but Nokia has
thus far refused to answer with a reasonable level of detail, presumably because
Nokia knows its royalty rates are inconsistent with the very methodology it used to
advance. At most, the explanations offered reflect Nokia explicitly trying to capture
the purported value of the standards (and doing so in a manner that is not reliable),
as opposed to the incremental value of its own patented technology in the devices
technical, or other justification for the high royalty rates being demanded by Nokia.
58. Not surprisingly, the automotive industry has largely rejected Nokia’s
numerous OEMs and Tier 1 suppliers, Continental is informed and believes that not
several OEMs (a very small minority of all OEMs worldwide) are indirectly licensed
to Nokia’s patents through a patent pool that is targeting the automotive industry.
Continental is informed and believes that those OEMs, some of which are
Continental customers, took the pool license because of the coercive fear of a patent
injunction. Those OEM customers, in turn, are now trying to force Continental to
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indemnify them for the non-FRAND royalty rates paid to the pool, including for the
benefit of Nokia.
industry have recognized that Nokia’s demands are far too high, and have conveyed
this to Nokia, Nokia has refused to lower its rates to a reasonable level in accordance
with its FRAND commitment. Instead, it continues to pursue its efforts to hold-up
contradicting all of its prior advocacy when Nokia was seeking a license to
respect. Continental is informed and believes that when Nokia resolved its litigation
with Qualcomm in this Court, the resulting agreement included terms for the benefit
of those who use Qualcomm chips (like Continental), such that Continental is a third-
61. For example, Continental is informed and believes that Nokia gave
Qualcomm the right to practice Nokia’s patents, which in turn would exhaust
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Nokia’s patent rights in Qualcomm products sold downstream (such that Continental
should not owe any royalties to Nokia when it uses a Qualcomm chipset). In
addition, Nokia also agreed to cap the royalty rates it would demand from
Qualcomm’s customers like Continental, albeit at rates that are still in excess of a
62. Continental has sought the benefit of these rights in its negotiations with
Nokia, given that Continental uses Qualcomm chips and otherwise sells products
that are covered by the agreement between Nokia and Qualcomm. However, Nokia
has denied and/or refused to honor those rights in its license offers to Continental,
including by denying any patent exhaustion where Qualcomm chips are used,
refusing to offer Continental the rates set forth in its agreement with Qualcomm, and
instead demanding rates far in excess of the rates set forth in its agreement with
Qualcomm.
the relevant SSOs, such as ETSI, TIA, and/or ATIS, and their respective members,
participants, and implementers relating to the 2G, 3G, and 4G standards. To comply
with the IPR Policies of the relevant SSOs, Nokia either made or is encumbered by
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a binding commitment to those SSOs, their members, and third-party implementers
65. The declarations made pursuant to such IPR Policies created an express
and/or implied contract with those SSOs and their members, including an agreement
that Nokia would license those patents on FRAND terms and conditions. The IPR
Policies of ETSI, TIA, and ATIS, among other relevant SSOs, do not limit the right
to obtain a license on FRAND terms and conditions to their members; third parties
that are not members also have the right to be granted licenses under those patents
on FRAND terms and conditions. Each and every party with products that
implement the 2G, 3G, and 4G standards promulgated by such SSOs is an intended
Nokia’s alleged SEPs, Nokia has failed and refused to license Continental on
relevant products, demanding royalty rates that are not FRAND, and demanding
67. Therefore, Nokia has breached its obligations to relevant SSOs such as
ETSI, TIA, and/or ATIS by refusing to license to all users of cellular standards
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allegedly covered by Nokia’s declared patents, namely Continental.
injured in its business or property and is threatened by imminent loss of profits, loss
of customers and potential customers, and the imposition of non-FRAND terms and
OEM customers).
70. Continental has suffered and will continue to suffer irreparable injury
by reason of the acts, practices, and conduct of Nokia alleged above until and unless
the Court enjoins such acts, practices, and conduct. Namely, Continental requests
(1) that this Court order Nokia to offer a license on FRAND terms and conditions to
Continental, and (2) an adjudication of the FRAND terms and conditions for such a
license.
granted certain rights to its patents to Qualcomm, which in turn exhausted Nokia’s
patent rights for products that utilize a Qualcomm chipset. In that agreement, Nokia
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also agreed to offer licenses to Qualcomm’s customers like Continental at specified
Qualcomm and Nokia, and sells products covered by the agreement. Per the terms
of the agreement, Continental has the right to enforce the agreement against Nokia,
specifically in this Court. In particular, Nokia has sued Continental’s customer for
Continental’s covered product, and yet Continental is unable to enforce its rights
action. Per the terms of the agreement between Nokia and Qualcomm, Continental
thus has the express right to enforce its rights here in this Court.
74. Nokia has failed to offer Continental a license to its patents at rates
consistent with the agreement, and also failed to provide and offer a license that
takes into account that its patents are exhausted by virtue of the agreement, all in
and potential customers, and the imposition of rates that are inconsistent with
Nokia’s patents being exhausted when Continental uses Qualcomm chips, and/or far
higher than the rates set forth in Nokia’s agreement with Qualcomm.
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76. Continental has suffered and will continue to suffer irreparable injury
by reason of the acts, practices, and conduct of Nokia alleged above until and unless
the Court enjoins such acts, practices, and conduct. Continental requests that this
Court order and declare that Nokia must provide a license to Continental that (1)
confirms that Nokia’s patents are exhausted by virtue of the Qualcomm agreement
such that no royalties are owed for products sold by Continental that incorporate
Qualcomm chipsets, and/or (2) orders and declares that Nokia must provide
agreement with Qualcomm. For the sake of clarity, Continental asserts that a true
FRAND royalty rate is less than the rates set forth in the agreement between Nokia
and Qualcomm, and thus seeks a lower ultimate royalty rate in connection with the
78. Nokia is obligated to license its 2G, 3G, and 4G alleged SEPs on
FRAND terms and conditions. As a result of the acts described in the foregoing
paragraphs, there exists a definite and concrete, real and substantial, justiciable
controversy between Continental and Nokia regarding (1) whether Continental and
other suppliers in the automotive supply chain are entitled to a direct license to
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Nokia’s 2G, 3G, and 4G SEPs on FRAND terms and conditions consistent with
declarations with relevant SSOs, including ETSI, TIA, and/or ATIS, (2) whether
Nokia’s patent rights are exhausted when Continental uses a Qualcomm chip, by
rates no greater than the rates set forth in Nokia’s agreement with Qualcomm, and
(4) what constitutes FRAND terms and conditions for a license to Nokia’s 2G, 3G,
and 4G SEPs. This dispute is of sufficient immediacy and reality to warrant the
Continental and other suppliers’ entitlement to a direct license to Nokia’s 2G, 3G,
and 4G SEPs on FRAND terms and conditions; (2) a determination that Nokia has
not offered Continental a direct license to their alleged 2G, 3G, and 4G SEPs on
FRAND terms and conditions; (3) a determination of what constitutes FRAND terms
and conditions for a license to Nokia’s 2G, 3G, and 4G SEPs, with those terms and
conditions being imposed on the parties; (4) a determination that the FRAND terms
(e.g., the smallest salable patent practicing unit rule); (5) a determination that
Nokia’s patent rights are exhausted when Continental uses a Qualcomm chip, by
36
Continental is entitled to rates no greater than the rates set forth in Nokia’s agreement
with Qualcomm.
PRAYER
A. Adjudge and decree that Nokia is liable for breach of its contractual
commitments to the relevant SSOs, including ETSI, TIA, and/or ATIS, by failing to
offer FRAND terms and conditions for a license to its alleged 2G, 3G, and/or 4G
SEPs to Continental;
B. Adjudge and decree that Nokia is liable for breach of its agreement with
despite its patent rights being exhausted, and also by demanding royalties greater
than the royalties set forth in the agreement when Continental uses a Qualcomm
chipset;
for any and all patents Nokia deems “essential” and/or which Nokia has declared as
“essential” to the 2G, 3G, and 4G standards under FRAND terms and conditions
pursuant to Nokia’s obligations to the relevant SSOs, including ETSI, TIA, and/or
ATIS;
D. Adjudge, decree, and set the FRAND terms and conditions that
37
ETSI, TIA, and/or ATIS, for a license to Nokia’s 2G, 3G, and 4G SEPs;
E. Adjudge and decree that Nokia has not offered a license to its alleged
F. Adjudge and decree that Nokia’s patents are subject to license and
the rates set forth in Nokia’s agreement with Qualcomm when Continental uses a
Qualcomm chipset;
and its customers, to the extent those customers are using Continental products, that
are not consistent with Nokia’s FRAND obligations to the relevant SSOs, including
customers, to the extent those customers are using Continental products, that are
inconsistent with the fact that Nokia’s patent rights are exhausted whenever a
J. Enjoin Nokia from demanding excessive royalties that are greater than
the rates set forth in Nokia’s agreement with Qualcomm when Continental uses a
Qualcomm chipset;
38
K. Order Nokia to offer a license to Continental on the FRAND terms and
M. For such other and further relief as the Court deems just and proper.
39
EFiled: Jan 25 2021 02:17PM EST
Transaction ID 66281178
Case No. 2021-0066-
EFiled: Jan 25 2021 02:17PM EST
Transaction ID 66281178
Case No. 2021-0066-
EXHIBIT 1
case 5:17-cv-00220-LHK Document 1439-2 Filed 01/25/19 Page 2 of 45
Full Text
and Infrastruclure Equipment License Agreement; REGlTAf,S WIEREAS. the Parties intend and
desire that this Agreement will fully supersede and replace the 2001 SULA (cxccpt
WHEREAS , Qualcornm and Nok.ia have previously eokred into a Suhscriber Unil License Agreement
as cxprcssly provided
date-0 April 9, J992, in Sections
wf)jcb 11 - 1 and
was later amended andresca1ed
112 by of lhethis Agreement)
Subscriber as of the
Uni1 and lnfrascructure
EffectiveEqu Date;
iprncnt andLicense WHEREAS,
Agreement dated July the2,Parties
200 I (the "bave entered into a Setlement
200 I SULA");
herein, references
I. H.EAIHNGS, to aCONSTRU
Section of thisA.ND
TION, Agreement
DEFINITIONS include all subsections (eg.
references to Section 4. 1 include Sections 4. 1. 1 and 4. 1. 2, and references to
All beadings U!ied in lb.is Agreemenl are insened for oonveTiience only and are nol imended lo affect the
Section 4meani include Sections
ng or ln1crprc1.a1 4.s Agrecmc
ion of llii 1, 4. 2, rll or43,
any 44,
cla,usc.4. 5, 4. 6, and 4. 7 as well as their
respective sub - Sections) . The definitions of CDMA2000 Standard " and " WCDMA
For 1he purpose of in(eryret;,tion of th is Agreemeot (including the ~It.ached exhibilS, wh.ioh are part of this
StandardA.greenient),
" are intended to be mutually
!be words "inclurlc." •'includes." and exclusive
"i ncludU1g'' and theluding
mea n "inc definitions of CDMA
without limitation" and
StandardOnle.~s
", " c~pre.~sly
GSM Standard ", " OFDM Standard ", " Content
the wntd . "herein." "hereof," .. heieby.'' "hereto,'' and "hereonder" refer !o this Agreemen i as a whole.
Broadcast
Slated 01~rw1sc herein. nefercnce.~ to a Section of this A%~emenl include a\l sub~ec(1ons
Standard ",
and " Local
(e..g .. Arta Network
ret'c rences lo Secti onStandard are intended
4-1 inc lude Sections 4.1.1 and 4to ,) .2,beandmutually
reten:nces locxclusive
Section 4 incl Further,
ude the
definitions of
Sections " Subscriber
4.J, 4 .2, 4 3, 4.4 , 4Terminal
.5, 4 .6, and 4 .7" .
as"wcl
Broadcast Device
I as 1heir respective
'·CDMA2000 Standard" and "WCDMA Sundard" ~e intended 10 be mutually exclusive and lhe
" .
sub-Sec.lio" Local
ns). Area
The defin1 Network
Jions of
Device ",definitions
" Component of "CDMA "Standard",
. " M2M '·GSMModule
Standard'',", ""OFDM
Infrastructure Equipment
Standard", '·Contenr ", and... "
Bcoadcast Standard
Madero Card " are intended to be outually exclusive For the purpose of thisor
ru,d "Local As-ca Network Standard" are inten ded lo be mutually exclusive , Further. lhe definitioos
Agreement, the"I11Jra~lruc1ure
followingEquipment",
definitions apply:Ca,d" " Accessories
arc intended lo be "mutually
means products and
'•Subscriber Termin~I", "Oroadcas1 Delflce", '' Local Area Network Device", "Component'' , "M2M
Module'·, and "Modero .:xclusiVt:,
equipment that are: (i) not required to enable a Subscriber Temunal. M2M Module,
or a Modem Card to initiate and / or receive wireless transmissions, and (ii) Sold
For 1he purpose of this Agre.:ment, 1he followrng definitions apply:
together"Accessories"
or Nokia means / Qualcomm
produel5 and Confidential
equipment that arc WW : (i) notQUALCOMM
requi1eu 10 em,blta a BUSINESS
Subscnlxor Tem1u1a!.
SECRETS - HIGHLY CONFIDENTIAL HIGHLY CONFIDENTIAL - ATTORNEYS '
M 2M M odule, or a Modem Card I.Q i.ojtiate anrl/o r receive wirek~s !fan m,ssions; an<.! (ii) Sold. together or
or more "Broadcast
CDMA2000 Standards,
Componenr· bui (b)s~eific
means application itselfintegrated
does not circuitsimplement
(AS ICs). mulwireless
ti-chip modules,
communication capability in accordance with one or more CDMA2000 Standards. "
integrated circuits. system in package (Sil>) system on chJp (SoC). and/01 families of such devices
(inclotliog flJ"Dlware there.co aod so.Ii.ware that runs on such devices) tbat are for use iD Broadcast Devices.
CDMA2000 / OFDM Products " means: (1) CDMA2000 Subscriber Terminals; (ii)
CDMA2000 Modem Cards, and (6) CDMA2000 M2M Modules, in each case that
"Broadcast De11ice" means a complete end-user 1em11nal. (including firmware ther(!()o and software 1hat
ru11s on ~uch a tcnnioal) H1at : (l) can be utilized, without any addi1ional equipmeot or components being
also implement
a!lacbed theretoa wireless airautltemication
(oibe:r lb.l o an interfacecard, in accordance
.a bartery or 01her like with itca,one or more
routinely counected OFDM
10 lhe
Standards; provided, bowever, that CDMA2000 / OFDM Products
device by end-usc.n when l3k;fng the t.:rroinal in!o use), to receive wirek.."s communica tions ,n accordaocc.
" '' lh one or more of lh.e Conleo,l Broadcast Standards; and (iO does not implcmcnl wirele~s
do not include any
product that: (a) is capability
communica1ioo Sold toman operator
accordA.llcc at ooe
with. any a time
or morewhenof the such operator
DM A S1andArds, GSMisStandards,
not operating
any commercial
and/or-OF OM wireless
Slar,d,uds network that utilizes any OFDM Standard inplemented in
such produce;
"CDMA2000 or (b) as lo which
lofrastructurc it is' rneaos
Equ ipment' objectively
lnCrastruc(uredciconinable
Eqo ipmen{ thatthat such product
implcmenls wireless is
sold to subscribers of an operator that at the time of sale is not operating any
communica1iou capability U1 accordance with one or 1nore CDMAl00O S1andMds For cla.ri.ly,
wireless notairinclude
interfaces both1ha1: in accordance withat a any WCDMA
accordance with one or more OPOM Stancla,ds; provided, however, 1hnt CDMA2000/0fDM Products do
aoy produc( (a) is Sold to an operator time when such operatorStandard and any
is not opcr.niog in
accordance withwlrclcss
commercial any CDMA2000
nc1work 11\al utilizes Standard will constitute
any OfDM Standard itrip lcmcnccdcither " CDMA2000
in su.ch produc1 : or (b} as 10 M2M
Modulesof " sale
or isWCDMA M2M Modules " as set forth in Section 4. 2. 4. 2 Nokia /
which il ·is objcclivcly determinable tbat socb producL is sold 10 subsc r,bel":i ofsn operAtor 1hat a1 tl1e time
not operatini,: a.ny c,lmm e1c ial wireless network 1hat utilizes ;,ny OFDM Standard implemented
Qualcomm in suchConfidential
product. QUALCOMM BUSINESS SECRETS - HIGHLY
CONFIDENTIAL HIGHLY CONFIDENTIAL - ATTORNEYS ' EYES ONLY QICE
"CDMA.2000 M2M Module" mear,s. an M2M Morlule th3( implemen ts a code division multiple .acc,ess
00004219 Q2017MDL10
wireless _ 00081204
;iir interface in accordanu with one CX7728 - 002 JX0046
or more CDMA2000 S1andards.- 002 5 " CDMA2000
Notwithstanding the
Modem Cardforegoing, " means
M2M Modules a Modemimpleme11ting Card thatairimplements
wireless interfaces both inaaccordance code division multiple
wnh any WCDM/\
S<andaJ'(J and in accordance wi1b any CDMA1000 Standard will co11stiru1c ei1hcr '·CDMAlOOO M2M
access wireless
Modules" or" au interface
WCDMA in accordance
M2M Modules'' as sel for1h in with
Sect.ionone4.2. <1 . or more CDMA2000 Standards.
Notwithstanding the foregoing, Modero Cards implementing wireless air interfaces
both in accordance with any WCDMA Standard and in accordance with any
CDMA2000 Standard will constituie either2" CDMA2000 Modem Cards
Nokia/Qualcomm " or "
Confidential
WCDMA Modern Cards " as set forth in Section 4. 2. 4. " CDMA2000 Standards "
means the CDMA - based CDMA2000 family of standards, including 1xRTT, IX
EVDO, IX - EVDO Rev. A lx - EVDO Rev. B BCMCS, and any 2. XG or 3. G updates
or revisions to any of the foregoing standards, in cach case is espective of the
transmission medium or frequency band. For clarity, to the extent that any evolutions
to the CDMA2000 family of standards wclude any OFDM or OFDMA based wireless
air interface,
QUALCOMM BUSINESS such OFDM
SECRETS O OFDMA
- HIGHLY CONFIDENTIAL portion will not be considered a " CDMA2000 QICE 00004219
HSundard " for purposes
IGHLY CONFIDENTIAL - ATTORNEYS' of this EYES Agreement.
ONLY " CDMA2000 SubscriberQ2017MDL Terminal "
10_00081204
means a Subscriber Terminal that implements a code division multiple access CX7728-002
wireless air interface in accordance with one or more CDMA2000 Standards. JX0046-002
Notwithstanding the foregoing, Subscriber Terminals implementing wireless air
interfaces both in accordance with any WCDMA Standard and in accordance with
any CDMA2000
case 5:17-cv-00220-LHKStandard will constitute Document either
1439-2 " CDMA2000 Filed 01/25/19 Subscriber PageTerminals
4 of 45 "
or " WCDMA Subscriber Terminals " as set forth in Section 4. 2. 4. " CDMA
Standards " means the CDMA2000 Standards and WCDMA Standards. "
Components " means application specific integrated circuits (ASICs), multi - chip
modules, Embedded Modules, integrated circuits, system in package (SiP), system
on chip (SoC), and / or families of such devices (including firmware thereon and
software that runs on such devices) that are for use in Subscriber Terrainals, Modem
Cards, Embedded Modules, M2M Modules, and / or In Grastructure Equipment. "
Content Broadcast Standard " means any forward link - only content broadcast
standard, including FLO, DVB, DMB, ISDB - T (ISEG), SBTVD, and ATSC, in each
"CDMA1000 Modem Card'' Joear1:s. a Modem Ca:rd 1ha1 implemenls a code divfaiov mulliple ace=
wireless- air interface i:n accordance wi!h one or ruore COM A.2000 Standard~ . No1wi1hstanding the
case irrespective
foregoing_, Modem of the Cardstransmission
im.plemenling wireless medium o frequency
air i.nterfac~ bolh in accordanceband.with Foranyclarity,
WCDMAthe term
" Content Broadcasi Standard ' excludes any two - way wireless Comunicalions
Sl.al\dard and in ace,orda:Jlu: with any CDMi\2000 Sandard will conslitute either "CDMA2000 Modem
Cards'' or "'WCDMA Modem CMds" as set for\h in Section 4.2.4.
standards operating between a wireless subscriber device and a wireless network,
including"CDMAlOO0
the CDMA Standards,
St.a.Ddards" GSM Standards,
means llic CDMA-based CDMA2000 family and nf OFDMS1a11dards.Standards
iacludiog lx:R.TT. " Costs
l,x-
Revenue: (a) provides a consistent mcasure that provides devicean wdaccurate comparison
or frequency band . For clarily, rhe term ''Content Bro~d"i.s( Standard" ex.eludes any 1wo-way wireless
CQmmuniGalion3 standards opera1ing between a w~relass sub.scriber a wireless network,
year - to - year; and (b) docs not allow Nokia lo shift net revenue from Covered
incluuing the COMA Sra.nda1ds. GSM Standards. aod OFDM Standards.
Products"Costs'
to net ' meansreveoue
the labor,for services,
material, and 0 1hcrsoftware, contentandand
direct cosls, expenses, / or Accessories.
asso~iat~ l;,urdeos, including The
Nokia / Qualcomm Confidential QUALCOMM BUSINESS SECRETS
overhead and general and administ rative expenses co11sis1eo1 ly appHed io ac.:,mlance with NAS.- HIGHLY
CONFIDENTIAL
"Covered Produc1s" HIGHLY means'CONFIDENTIAL
. (i) Nol:ia-Bra.oded WCDMA - ATTORNEYS
Subscribr.:r Terminals; ' EYES ONLY QICE
(ii) Nolcia-Branded
00004220 WCDMA Q2017MDL10
Modem Cards; _ 00081205
(;1i) Nokia-Branded CX7728
WCDMA M2M - 003Modules;
JX0046 (iv) -NokJa-Branded
003 5 " Covered OFDM
Product Modules;
Revenue " will be calculated and reponed inU.S. dollars so thal net sales
S11bscribc.r Tcnninals; (v) Nokia-Branded O.FOM Modern Can.ls : (vi} Nokia-Brandee! OFDM M2M
and (vif) tbose Nokia-Branded CDM A2000/OFDM froducis that are included as Nok1a-
from Covered
Bra11ded OrDMProducts will Tc,
S\Jbscriber beniinals
converted toU.S.OFDM
or Nokia-Uraoded dollars Mndem pursuant
Cards for to Exhibit
royalty purposesE bereto,
For clarity and without limitation, when a Covered Product is Sold together with or in
under !he la~1 paragrapb ofSec11on 4.2 .2.
combination
''Covered with
Produc1(1)Reveoue"
services ruean(including
the nc:r revenuenavigation
(t.e., gross revenueandlessOVD), (2) software
trade discouots) charged by that is not
loaded on Nokia such Covered
for Covered ProductsProduct
in the form al or prior
in which they arctoSold
the(whether
line of or noSale, (3) and
assembled content
wirhou! (including
Sales take place prior to the date on which sucb entily becomes a Subsidiary ofCX7728-003
Nokia. To the extent the fiscal year of Nokia is not the same as the correspondingJX0046-003
calendar year, the Covered Product Revenue for such calendar year will be the
Covered Product Revenue for such Nokia fiscal year adjusted to reflect the
difference io the number of daysDocument
case 5:17-cv-00220-LHK between such 1439-2 calendar Filed year 01/25/19 and fiscal Pageyear, 5 of on 45 a
prorated basis (c. g. if the Nokia fiscal year is 367 days, the adjustment will be made
by multiplying the Covered Product Revenue for such fiscal year by 365 / 367
(where 365 is the number of days during die corresponding calendar year), and if the
Nokia fiscal year is 363 days, the adjustment will be made by multiplying the
Covered Product Revenue for such fiscal year by 365 / 363 (where 365 is the
number of days during the corresponding calendar year)) . For the purposes of this
definition of Covered Product Revenuc, cach successive fiscal year will commence
inmediately following the eud of the previous fiscal year (i. e. there will be no
unreported days or days reported twice) . However, notwithstanding the foregoing, jf,
"Covered Producl Revenue" will be calculated arid reponed m U.S. dollars so lhal a.el sales from Covered
Products will be converted to U.S . dollars pursuant 10 Exhibit E bcreto ,
in any calendar year. Nokia's fiscal year ends more than fifteen (15) days before or
after December For31,
clantythen for purposes
and without limi l.ll(i oa, whenofa delenmining
Covered Product ls the Covered
Sold 1oge(lie1 wilb oProduct
r irt Revenue
(or such calendar year, Covered Product Revenue will be calculated for such
combinatioa with (l) serviceg (includi.Qg navigation and OVT), (2) software tbat is not loaded on such
Covered Producl al or prior lo the time of Sale, (3) eonteol (including music. aod games) tlla l is nol loaded
calendar onyear using Prod\Jct
such Covered the actual Covered
al or prior to I.he time of Product
Sale. and/orRevenue
(4) Accesson.efor such calendar
s (a "Combined Sale"), 1he year
instead ofbased
using on thethe Covered Product
of such Covered Revenue
Product, for~tlch
s uch services, such fiscal
software. such.ycar
aggregate revenue for $U.Ch Cocobrncd Sslc may be allocated amongs1 !11.lch elcxncnts of the Combined Sale
fair value con1c111,and adjusting it in
1md/orsuch
accordance with that
Accessoncs thearcforegoing formula
pan of 1hc Combined Sale,to
but approximate
only to the extent: the actual Covered Product
Revenue for such calendar year. " Embedded Module " means a module containing
(a) sucb services, such sof\waie, such content, aod/.:>J such.Accessories b.-lve an independem
multiple integraled circuits
value: (i.e ., who.n no,(including
provided as. panforware thereon
oft be Combined and
Sa le) that can software
be reasonablythat ons on such
de1ermined,
integrated circuits) mounted
cstablislJcd, on a; and
aod documented circuit board or the like, which module is capable of
being used to {h) implement
that lhc portionwireless communication
of s11ch corabined capability
revcnu.c thal is allocaicd 10 suchin accordance
services, such ,iol\ware, with one
or more GSM such Standards.
conteo1, and/or CDMA Standards,
such Accessories is recordedand / or OFDM
scpafalcly(i .e., not as Standards
p~rt of the net sales wbenfor
embedded within the complele end user product for which it is intended. " Exccution
Covered ProducH,) into Nokiii 's books o.nd reco rds compliant with NAS (which in turn ru-e
compliant w1tb IPRS),
Dale ' has the meaning given to such tern in the sentence immediately preceding the
signatureonlblocks
Sales for this
of Covered ProductsAgreement
by an enchy lhat Nokia
becomes / Qualcomm
a Subsidiary of Nokia Confidential
after the EffectAR
6.-. included in dctem,i ni.og the Covered Product Revenue lo lhe exren, such Sales. take piece prior lo
ive Date wi ll
and (ii) wireless network infrastructure equipmeot, including base stations, RF units
for base stations,
"Embedded Modl:le"channel rneaa.scards
a module for base n1ul1iplc
containing stations, basc
\nreyaced slation
circuits controllers,
(iochidi1\g fin:n1.Yate thereon system
and software thnt runs oo such ,nt.egnted circuits) mouoted on a circujt board oc the Jilce, wtiich module is
switches capable
and elerinis of the corc network, in each case for use
of being used to implcmeol wireless communication c.apab1lity in accordance with one or more in any wireless
network that
GSM opcratcs
Standards. CDMA using one or
Standards, more
and/or OFDM ofStandards
the GSM when Standards,
embedded withinOFDM lhe complete Standards,
end
and / or CDMA Standards " Inter Digital " means Inter Digital Communications
user product for which il 1s intended,
Corporation, InterDigital
"Execution Daleu ha~ thePalents
meaning given Corporation,
re such tenn in lheand / or Later Digital
sentence:jmroediau:Jy preceding Technology
the signaltlre
Corporation. " Inter Digital Patents " meansU.S. Parents Nos. 5, 228. 056; 5, 166,
blocks for this Agreement .
951: 5, 093, 840; 5, 119, 375; and 5, 179, 571 and any continuation, continualion - in
- part, and divisional applicatioo based on sucb palcots, and any foreign
counterparts of such patents, continuations, continuauons - in - part, or divisional
applications " Licensed Products " means Nokia 4
- Branded Subscriber Terminals,
Nokia/Qualcomm Confi.dential
Nokia - Branded Modem Cards, Nokia Branded M2M Modules, and Nokia - Branded
Infrastructure Equipment (other than CDMA2000 Infrastructure Equipment, which is
not licensed under this Agreement unless Nokia Siemens Networks exercises its
option sel forth in Section 4. 1 1) To " Litigate " means 10 commeacc or prosccute
paient infnogement Litigation (whether by claim, counterclaim, or otherwise) "
Litigation " means any administrative, court, judicial, arbitral or other similar
procedue
QUALCOMM for theSECRETS
BUSINESS resolution - HIGHLY of CON
a controversy
FIDENTIAL whether based on a claim, a QICE 00004221
counterclaim,
HIGHLY CONFIDENTIAL defense
- ATTORNEYS'or other EYES like ONLY demand, including any proceeding Q2017MDLbefore 10_the
00081206
United States International Trade Commission (ITC) and any similar proceedingCX7728-004
brought in any other jurisdiction throughout the world. " Local Area Network JX0046-004
Components " means application specific integrated circuits (ASICs), multi - chip
modules, unlegated circuits, system in package (SP), systera on chip (SOC), and /
or familics of sucb devices (including
case 5:17-cv-00220-LHK Document firmwart 1439-2 thereon Filed and01/25/19
softwarc that Pageruns 6 ofon 45
such devices) that are for use in Local Area Network Devices " Local Asca Network
Device " mcaos a complete end - user terminal (including fumware thereon and
software that runs on such a terminal) that: () can be utilized, without any additional
equipment or componcots being attached thereto (other than an authentication card,
a battery or other like item routinely connected to the device by end - users whec
taking the terminal into use), to initiate and / or receive wireless Communications in
accordance with one or more of the Local Area Network Standards; and () docs vol
implement wireless communication capability in accordance with one or more of the
CDMA Standards,
"GSM Standaid"GSM tncaas the Standards,
mMA, based GSM andfamily/ or of-standards
OFDM Standards. (i.ndu.ding GSM,, "G LocalPRS, andArca EDGE}Network
Standardmedium" means anybam.l. local area or close proximity wireless standard, which (except
and any 2 .xG updates or 1c111sions to the foregoing s1andards, io c:3c)l case i1Tespcclive of lhe lransltllssioo
or ffc.quency
for ultra wideband technologies) operates in unlicensed spectrum, including: (1)
IEEE 802. 11a, 802. 11b. Nokia / Qualcomm Confidential QUALCOMM BUSINESS
'' CFRS" means the cben-currera lnternational Financial Reporting Standards (or its wccessor) as issued by
the Intemalional Accounting Sl.a.D.dards Board (or ih successor).
SECRETS - HIGHLY CONFIDENTIAL HIGHLY CONFIDENTIAL - ATTORNEYS '
EYES ONLY QICE 00004222 Q2017MDL10 _ 00081207 CX7728 - 005 JX0046 -
"Infrastructure Equipment" means: (i) fi.xed network infrascrucrure equipmcol, including access
cquip;neot, coar.rolliTJg ~uipmenl, 1raorn1issi.on cquipcneoJ, manageJTlenl equ.iprueal, servers, expansioo
005 5 802.cards,11g,
ro111ers, and 802and
sw irc;hes-, 119; (i) Bluelooth
ga1eways for $ucb fixedand (11)amt
networks; Wireless
(ii) wirelessUSB,
networkin each case
infrasllUclure.
irrespective of the transmission medium and including any revisions or updates to
equiprneo1, inc.ludio,g base stations, RF uni1s forba5e siallons, channel card!> for base s1a1ions, base station
con1rollers,. sys.Lem swi.lebe;; and elements of t he core network, u1 =h case for use i.u auy wifeless
such standards.
neLwork rhal For clarity,
operates using ooc " Local
or n:1orcAreao[ lheNetwork
GSM S1.andards,Standard " does not
OF'DM Standards, and/orinclude
CDM ,A any
wirelessSIAndards.
wide area standards, including the GSM Standards, CDMA Standards or
OFDM Standards.
"lnterDigitaJ" means " M2M Module
CnterDigital " aicans
CornroullJcat a data -lnterDigital
ioTis Corpo1""<1don, only communications
Patents Corpo.,ition , and/or module
coolaining multiple
LiltuDigital integrated
Technology Corpora!lon. circuits mounted on a circuit board or the like Ibat: (i)
does not"loterDigilal
provide P.itcnls''or incorporale me.ans U .S. any PatenL~ duect
Nos. connectors
5,228,056: 5,166,951: os pins which
5,093,840; 5, I Ican
9 ,37S;beandused for
audio input or output; (1) does nol provide a microphone or a meaos of interfacing a
5,179,571 and .my continuation, comioua1 ion-i11-part, and divisional applicatioo based on sucb patents,
capabilityTo in accordance
"Litigate" me.ans 10 with oneororprosccuce
coJUJT1ccce more patCllL
GSMinfTUJgetnent
Standards, CDMA
Litigation (whether Standards,
by claim, and /
or OFDM Standards when connected to another device. " Modem Card " roeans a
coun1erclairn, or otherwi~)
deemed not to be a Sale hereunder by Nokia for purposes of calculaling royalties CX7728-005
payable to Qualcomun. " Noja " " means Nokia Corporation and all present or future JX0046-005
Subsidiaries of Nokia Corporation. For clarity, if an entily that is a Subsidiary of Nokia
Corporation ceases to be a Subsidiary of Nokia Corporation, then beginning on the
datecase
on which it ceases to be a Subsidiary
5:17-cv-00220-LHK Document 1439-2 of Nokia Filed Corporation,
01/25/19it will Pageno longer
7 of 45be
included in the term Nokia and the licenses to and the non - Litigation covenants
protecting such entity hereunder will terminate, but only in relation to such entity,
beguviing on the sixtic ! (60th) day after such cntity ceases to be a Subsidiary of
Nokia Corporation. Similarly, if an anlity is not currently a Subsidiary of Nokia
Corporation, but later becomes one, it will be included in the term Nokia only when
and beginning on the date on which it becomes a Subsidiary of Nokia Corporation.
Nokia / Qualcomm Confidential AR QUALCOMM BUSINESS SECRETS - HIGHLY
CONFIDENTIAL HIGHLY CONFIDENTIAL - ATTORNEYS ' EYES ONLY QICE
00004223 80'.UQ2017MDL10 _ 00081208
)g, and 802 I In; (ii) B'hle1ooth;, CX7728
and (ii,) Wireless USB.- in006
each JX0046 - 006
case ir,espec1ive
medium a.nd includ·i ng, .iny revisioas er update~ to such standards. for dari\y, "Local Area Network
5 !fa0smiss100
of the Norwithstanding
the above, Nokia Siemens Networks is subject to the more
Staodard" does not include any wireless wide area 51andards, includi11g lhe GSM Standards, CDMA detailed rules set forth in
Section 4. 1. 1 below and, until the occurrence of the Assignment Event as provided
S1aodaros or OFDM Standards,
in Section
"M2M 4 .)Module"
. I, willmeaDsbe deemed a Subsidiarymodule
a data-only comm11nici,1io11s. of Nokia irrespective
1:ootaining of Nokia's
multiple- inlcgrarod circuits
ownership or control
wouoted o n a circuitthereof
board ur 1he " Nokia
like tbat ;-(i)Branded
does not provide means that the
or i.ncorpora1c acy product inonsquestion
di.rec1 connec1 or is
either: (a) substantially designed by Nokia; or (b) branded with at least one
pins which can be used for audio inpul or output; (11) does ,,ot provide a microphone or a mcaos of
intcr{acirig a ruicropbooe (whether by wire 01 wireless connection) to such embedded module; (iii) does
trademark1101 or othera brand
i;nplemem ownedaud
vocoder function: by{iv)
Nokia, and10 is
1s intended be in cach tocase
corn1ectc.d to be subsequently
or incorporated into other
Sold by iodus1riaJ
Nokia "sec;uri(y Nokia Patents " means ibose patents and patent applications in any
devices, including utility mete.rs, vending machJnes, cargo con1amers, home security .sys1ei:ns, and
sys1ems, and (v) is capable of ~ing used 10 implement ma.chirle-to-oo?cbine wircles~
country of the worldcapabili1y
CODlJllun.ication that Nokia, at any
in acco1danc.e with Lime
one or moreduring GSMthe Temi,COM/\
Slandards, owns or otherwise
Standards, and/or bas
the rightOFDM
to license
Standardsto Qualcomm
when without payment of any monetary consideration to
CODlleGted lo another device.
. " Nokiawireless
Siemens Networks
corun:,unication " oncans
capability Nokia
i.o accordance wilh oneSiemens
or more GSM Networks
SLandards, B. CDMA V .,Standards,
Netherlands,
and its Subsidianes. " Nokia Standards Patents " means any Nokia Patents as to
and/or OFDM Standard~ when con.nccted to anol.lJer device by an end user by means of a physical or
wircli:ss consumer interface (i.e., 1s not for use in embedded applications).
which it is, or is claimed by Nokia to be, bol possible on technical (but not
comunercial) grounds taking into account normal technical practice and the state of
"NAS" means the ,hen-current Nokia Accoll:nting St:indards (or iis suceessor) compliant with the IFRS.
medium only
or frequency
when and beginning band.onFor the clarity.
date on whichOFDM Standards
i l beoomes a Subsidiarydoes or not
Nokiainclude Content
Corporation.
Broadcast Standards or Local Area Network Standards. " OFDM Subscriber
Terminal " means a Subscriber Terminal than 6
6) does not implement any code
Nokia/Qualcomm Confidential
division multiple access Wireless air interface in accordance with any CDMA
Standard, and (ii) implements a wireless air interface in accordance with one or
more OFDM Standards. " Party individually means Qualcomm or Nokia and the term
" Parties collectively means Qualcomun and Nokia " Patent family means a group of
parents (wluch may include patent applications as well), in which each patent (or
palent application), except the earliest priority patent (s) or application (s) 10 such
group, coulains
QUALCOMM BUSI NESS SECRETSat least- HIGHLYone claim which claims priority from another parent
CONFIDENTIAL QICE(or00004223
Hpatent application)
IGHLY CONFIDENTIAL in the same
- ATTORNEYS' EYES group.
ONLY Nokia / Qualcomm Confidential QUALCOMM
Q2017MDL 10_00081208
Incorporated
"Nokia but laterPatents''
Stan ,la.rds becomes .rnellns MY one,Nok.i11it P-alents
will be as to included
which ii is, in
or istbe ter by
claimed Qualcomm
Nokla w be, not only
when andpossible
beginning
nn techmc11 on the
I (but nor date on which
CO[l'\)Tlercial) grounds it becomes
taking into accountanormal
Subsidiary
tecbnical pra.ofctice
Qualcomm
and the
state of tbe art generally available at lhc tune of slam:lardization of I.he relevant GSM Sland;ird, CDMA
Incorporated
Standard, " Qualcomm
and/or OFDM Standard, - Branded to make " ,means
s~ll. lease,that be product
otherwise d iSl)ose of, in question
repair, is either:
use, or operate
(a) substantially designed by Qualcomm or (b) branded with at least one traderoark
equipment or mettiods which comply with such OSM Standard, CDMA S1aodard . and/or OFDM St,,ndard
or other brand owned by Qualcoma, and is in each case to be subsequently Sold by
without in fringing such patent .
Nokia Branded
FLASH·OFDM WCDMA solely 10M2M the extent Modules
detail ed sµeci(vi) Nokia
fi carions for -FI.ASH.Of'DM
Branded OFDM Subscriber
arc publ is bed and made
Terminals; (viii)toNokia
available Branded
Nolda S1emeps Networks OFDM1n a formModemand dct;i1l t:hat Cards;
~nables and (ix) Nokia
independent - Branded
lmplernenlation of the
speciiicatioos, ITT e.ic h ca~ irrespect ive of Lhe transmission medi um or frequency band. For clarity.
OFDM M2M OFDMModules.Standards does" no\ Selling
include CementPriceBroadcast
" means the or
Standa.rds gross selling
Loc3l AJe;i, Network price and the value
Standards.
of any other consideration charged by Nokia fos complele Royalty - Bearing
Licenseddivi-sion
Products in a.the
ccess fom in air
which they ·in are soldwithwhether or not assembled
; ;;nd (ii} and
"OFDM !rub~CJiber Terminal" means a Subscri ber Temunal lha1. (i) does ()01 implcmCDI any code
multiple wireles5 interface ~c<:ordance .my CDMA S1a11dard
withour excluding
[mplemcnts a wirdess any Components
air interface io accordance or subassemblies
with one or more OFDM thereof),
Standards.less only lade
discounts"('arty"
allowediodividua! bylyNokia
means QnaJcomm to its customers
or Nokia and thethat are, incollectively
LeTTD '·Parties" fact, taken means by its customers,
Qualcomm and
based onNokia,a written agreement or are otherwise documented by Nokia in the ordinary
course of"Patent
business, as evidenced by Nokia's books and records, as well as the
Farr11ly" means it group of patents (wl.uch may include patent applicatioos a.swell}, in wbie,h each
followingpatent
items incurred
(or palelll upon
applit a1ioo} thetheSale
. ~:< ccp1 earlic:scor importation
pnorhy of such Royalıy
patcnt(s) or applics11on(s) - Bearing
to such. g,roup, coot.1ios
LicensedatProduct to the extent that Nokia does not charge separalely for such items
least one claim which c laims p6ori1y from another patent (or patent applic:ition) in the same group.
and they arc relevant for each such unut: (i) costs of packing the complete Royalty -
Bearing Licensed Product for shipmedi 10 Nokia's customer, as evideoced by
Nokia's books aud records, (ii) costs of insurance 7
and transportation to ship the
N'okia/Qualcornm Cunfid1mt/al
complete Royalty - Bearing Licensed Product to Nokia's customer, as evidenced by
Nokia's books and secords, (in) import, expon, excise, sales, and value added taxes
and custom duties levied or imposed on Royalıy - Bearing Licensed Product that
Nokia remits to the goverment body levying or imposing such taxes or duties, as
evidenced by Nokia's books and records, and (iv) copyright levies that are imposed
on Royaly - Bearing Licensed Products by virtue of laws or regulations and paid by
Nokia toBUSINESS
QUALCOMM the relevant SECRETS body
- HIGHLY / agency
CONFIDENTIAL authorized by applicable laws to collect QICEsuch
00004224
Hlevies, as evidenced
IGHLY CONFIDENTIAL by Nokia's
- ATTORNEYS' EYESbooks ONLY and Nokia / Qualcomm Confidential Q2017MDLpre 10_00081209
continuations, continuations
lbe te1 m Qualcomm onJy when -aod inbeg1.DJUng
- part, onand divisional
r.be dat~ oo ,vhicb it applications)
becomes a Subsidiary and any claims of
of Qualcomm
any patents claiming pnonly from any of the forcgoing. " Sold " (and variations of the
Incorporated
following..Qualcomm
the calendar Patents" quarter
means lhosc in patents
whichandthe firstappshipment
pa1cn1 llc:.ataons in any or country
invoicingof tbc occured.
world th.it For
clarity, if payment
an article of anyis retomed and Nokja reimbusses its customer
Qualcomm. at any time during the Term, owns or olhe.nvisc has lhe right to license (o Nokia wi11lou1
monel.ary consiilcra1lon to any third party (unless Nokia agrees lo reimbursefor some
Qualco1nrn or all of
the salesforprice, then ion).
.such consideral Nokia will not be obligated to pay royalties on the portion of the
sales price reimbursed by Nokia (or if Nokia has alicady paid royalties to Qualcomm
"Royalty-Beari11g Licensed Prnducts" means: (i) Nok.ia-Branrlecl CDMA 2000 Subscnbcr Termina ls; (ii)
for such Nokia-Br.inded
Sale of such Royalty
CDMA2000 - Beanng
Modero Cards; (iii) Licensed
Nolua-BrMdcdProduct, CDMA2000 then Nokia (1v)
M 2M Modules; willNold.i-
be entitled
to apply the reimbursed amount of such sales price
Branded WCDMA Subscriber T enninals; (v) Nok,a-Brallded WCDMA Modem Cards-; (vi) Nokia,
Branded WCDMA M2M Modules; (vii) Nokia-Braoded OFDM Subscr,ber TCTITlioal.s; (viii) Nok.ia -
as a credit to Sales for de fiscal
quarter whenBrandedthe OFDM retur.
Modem Occured)
Cards; and (ix) . For clanity,OfDM
Nokia-Branded products, M2M Moclules. including prototypes and lesl
phones, "Sell1n.g
taken Price" into rneans
use \be by g:cosi;
Nokia aod / or its personnel will not be decmed to bave
selling price aml lhe v-dlue of any olhcr consideration chargc::d by Nokia
been " Sold for o-omplele Royahy-Ac~ring I ,icensed Produc1s io the fomi in which Lbcy are Terminal
" for the purposes of this Agreement. " Subscriber Sold (whe1he rmeans or not a
complete end - user terminal that can be utilized, without any additional cquipment of
.isseoob!ed and withou1 excludi ng any Components or s1Jbassemblies thereof), kss on ly trade discounts
allowed by Nokia to i1s custo1J1ers th.ii arc, in fac1, taken by its customers, based on a wrilten agreement or
components (otherdocumented
are otherwise than a by SIMNokia card,
in llie a battery
ordinary orofather
c.oursc business, like item routinely
as evideoced. by Nokia ·s connected
books
to the device
and records,by endas well- asusers when
the following taking
items incurredthe uponterminal into use)
th.e Sale or impona1ion heing
of s11cb attached
Royalty-Bearing
Palenis " meansU.S. Patent No 4, 969, 192 (including all foreign counterparts and CX7728-008
any reissues, continua 100 - w - pan, and divisional applications) and any claims JX0046-008 of
any patent clamping prionty from any of ibe foregoing. " WCDMA M2M Module "
means an M2M Module that implements à code division puuple access wireless air
interface
case in accordance with one
5:17-cv-00220-LHK or more WCDMA
Document 1439-2 Standards. Filed 01/25/19 Notwithstanding
Page 10 of 45 the
foregoing, MZM Modules implementing wireless air interfaces both in accordance
will any WCDMA Standard and in accordance with any CDMA2000 Standard will
constitute either WCDMA M2M Modules " or CDMA2000 M2M Modules " as sel forth
in Section 4. 2. 4. WCDMA Modern Card " gleans a Modem Card Lhat implemeals a
code division multiple access wireless air interface in accordance with one or more
WCDMA Standards. Notwithstanding the foregong, Modem Cards implementing
wireless air alerfaces both in accordance with any WCDMA Standard and in
accordance with any CDMA2000 Standard will constitute either WCDMA Modem
Cards " orrecords,
CDMA2000 Modem Cards " as set forb in Secuon 4. 2. 4 WCDMA
10 Lhe exlent Iha~ such kvie5 are not reimbursed or otherwise paid <o Nokia. In addition, if
Accelisones are Sold t,;,gether or w comb1natioo with a Royalty-Bearin.g Ljceosed Product, lbe Fajr
StandardMarket" means: (i) any
Value (!IS de.fioc:d aad wireless
subject to wide areasciblandard
the limitations forlh below) withof lbe an air interface
Accessories roay fu,iber andhe / or
communications protocol that is based upon o wplements any form or WCDMA
cte.tlucted from lhe combined gross: sc:lling price of the Rc:>yally-Bcarii:\f( Licensed Product and lhe
(includingabove,
UMTS, HSDPA, HSUPA, HSPA +, beMBMS, and TD -Costs.
CDMA): (i) TD by -
Accessoritis Sold together ti r in combination w,th such Royalty-Bearing Licensed Produi;I. As used
"Faie Market Va•l ue" of Accessories will 1101 grealc:r than Nokia's as evidenced
SCDMA; Nokia's
and (iii) books:anyand 3. x updates
records, to f)t'oduceororrevisions to any plus
buy such Acc.essories of the foregolog,
ao i;mount equal 10 in the each
same case
payable WCDMA
only forStandard Royalty and -1 accordance
Bearingw,th Licensed Products S1.11nda dNokia
\ 111 con/ 1:ru1c
Qualcomm
cnegoin Sul.Jscrilier Tc,u11m,I~ noplc111c,1lln& wi1clCS8 air IJ'lterf ccs hnth in aoconlaoce Wll.h ariy
I
substantially designed by or for Nokia do not cover any Third Party supplier that: (i)
derives fifty
'.3,
per cent (50 %) or more of its annual total revenue from sales to Nokia;
fP SUM PAYMENT TO QUALCO M
and (11) has first Litigated, through uself or any of ilse-1t1nc Affiliates,
payment 16 against
Quulcom.mQualcomm,
-
and (11)c.o~s1is seeking junctive relief or a ban on the importation of any Qualcomm (1he ' Lump Sum Fee ..} l/1 pa.ntnl
er.111on or: J roya Ile ~ paya e or ccna1a 1censc 10 uc1~ Sold tn 2007 1ltld 2008; (11) pre-paid
products,ro until 11, for such Saleslitigation
of Co emt Produces is settled duri11tor1heresolved.
l cnn of t.hl.~For clarity,
Agr~erncot ; andshould
(iii) ~ fully such supplier
paid-l!p
cease lolt'cosc
Litigate against Qualcomm, the above " have
for L1c~nsed Prc"h1crs 1ha1 coCLSdru1u ll")frastruciurc Equ1p1nrnL Sold b Nok ia (01. if 1hc:
lnfra , 1.,_,crur~ Equipment JuglLJs ~re ""'l!Per:l fc; Nokh S1emtns Nci-v11rlts pursua (o Scc1ion 4_1 l . by
made " rgbts would again
cover suchN ok.lasupplier.
SicmcM Ne! For .... o,k~)the during purposes
ihe ! crm or O,is of Agrni.:,oi.m
the above L For license, Licensed
claniy, I.be paymcul Products
o{ r.hc LWDp Sw also
include software
F.:e may be related m&dc in scvenil to Nokia inslallmcotBranded
, if lhc 1ra.aSubscriber
·for of the entire Terroinals
arr1o~n1 10 not that (a) inis011e
f-ea,ibfo
1m1 l lmenl anti pru~tdoc.l th~r lhc l,ump SUll'l Fee ,s paid ,n ful l and on ltrnc
distributed together will or specifically for such Nokia - Branded Subscriber
Tennjnals: (b)foruns onthean
r cl:uity, Lump cud Sum- useree 1s. m product
1dcl11ion 10 L)(such
croyalues aspayable personal
undcrS~!ion~ computer,
4 .2 anll 4 3 . but not a
(excluding Nokia Siemens Networks) will have a lunited, personal, non - exclusive,
worldwide license to make, have made, use, import, offer lo sell, sell, and otherwise
dispose of Nokia - Branded InfrastructureILFquipreal,Noexcept ia/Qualcomm that, as regards
Con{1d ntial sales,
such license will be limited in cach calendar year to Nokia - Branded Infrastructure
Equipment Sold by Nokia with cumulative Net Selling Prices of no more than the
amount of the Annual Cap (as defined in Section 4. 3. 1) for such calendar year If
Nokia Siemens Networks acquires a CDMA2000 Infrastructure Equipment business
or a company engaged in such business that subscquently becomes a Subsidiary or
a part of Nokia Siemens Networks, then Nokia Siemens Networks shall have the
option,Mexercisable
QUALCOM BUSINESS SECRETS- by providing willen nonce la Qualcocom witbin ninety (90)
IGHLY CONFIDENTIAL days
OICE 00004228
Hafter the acquisition,
IGHLY CONFIDENTIAL to include
- ATTORNEYS' EYES CDMA2000
ONLY Infrastructura Equipment as Licensed
O2017MDL10_ 000812.13
ProductsSiemens
wouldNetworks infringe, P:.tent") absent
aod ihat a license,
n.ever was, aod at any Qualcoma
no lime during the TePatents.
mi becomecs, Nola a Nokia shall
Pa1eo1, submit
in writing lo Qualcom, within forty - five (45) days after the end of each calendar
quarter (but not cau lier than Nola Corporation 12
announces its quanerly results), a
Nokia/Qualcomm Confidential
good faith non binding estisdate of the annouol of royalties that Nokia expects to pay
to Qualcom for such calendar quarter. Nokia shall furnish Qualcomm, within sixty
(60) days after the end of each calendar quarter. certificates in the form attacbed
hereto as Exhibit C - 1 reporting tbe royalties payable for Sales of Royalty Bearing
Licensed Products other than Covered Producls during such calendar quaner
Additionally, as regards Covered Products: (1) Nokia shall fumish to Qualcomm,
within sixty
QUALCOMM BUSINESS(60)SECRETS
days after - HIGHLY theCONFIDENTIAL
end of each calendar quarter, a certificate inQICE the00004229
fom
Hallached hereto as
IGHLY CONFIDENTIAL Exbibit CEYES
- ATTORNEYS' - 2 reporting
ONLY the Covered Product Revenue Q2017MDL for10_00081214
such
calendar quarter: (1) if Nokia will pay to Qualcomun an amount that is less (before CX7728-0 12
withholding any taxes allowed to be withheld pursuant to Section 4. 6) ban the JX0046-012
applicable Quarterly Cap for the calendar quarter in question, then Nokia shall
furnish to Qualcomm, within sixty (60) days after the end of such calendar quarier, a
certificare in the form agached hereto
case 5:17-cv-00220-LHK Document as Exhibit
1439-2C -Filed I reporting01/25/19 the royallics
Page 14payable of 45
for Royalty Beaning Licensed Products that arc Covered Products Sold by Nokia
during such calendar quarter; and (ui): Nokia is obligated to pay to Qualcom an
amount that is less (before withholding any taxes allowed to be withheld pursuant to
Section 4. 6) than the applicablc Annual Cap for the calendar year in question, then
Nokia shall furnish to Qualcomm, within sixty (60) days after the cod or such
calendar year, a certificate in the fond attached hcrclo as Exhibit C - l reporting the
royalties payable for Royalty Nokia / Qualcomm Confidential QUALCOMM
BUSINESS SECRETS - HIGHLY CONFIDENTIAL HIGHLY CONFIDENTIAL -
ATTORNEYS ' EYES ONLY QICE 00004231 Q2017MDL10 00081216 CX7728 - 014
wit: be ccmsidered a Nokia S1aodards Patent and will be subjecl 10 Section 5 .3 oo ly if: (A) such NokiJ
Siemens Networks Patent would , if it 1vere a Nokia Pat~t. fall wilbin rbe defuii tion of Nokia S1a11darcs
JX0046 Patents;
- 014 and 5 Bearing
(B) sucb Nolua Liceosed
Siemeos Patenl Products
is entitled thatto a prioriarcty Covered
d.:J.cc on or beforeProducts
the laLer ofSold
the dateby Nokia
during cach
of rueh quaner in such calendar year for which Noboa bad not previously
ass1groocn1 or Decemb er 3J , 2011; and (v t) the Nokia Sie mcl)s
to be Nokia Patents for purposes of, and will be subjc.cl to, ·i hc non-Litigation covenaors a u<l standst ill
Networks Pa rent s will be deemed
providedprovisio
suchnsagranted certificate
by Nokia to Qualcomm
to Qualcomm 421 WCDMA
and ils .supplim;. io Sectio o 5.Subject to Section
Notwilbstanding 4. 3 below,
the foregoing,
Nolja sball
if: (a}pay NokiaQualcomm
Sfemel),~ Networks royallies
exercises its asQptiofollows.
ll below in(a) for each
1hfs Section 4.1.1; Nokia Branded
or (b) at any time after anWCDMA
Subscnber Termal thirty that Nokia Sells ontheOshares aferentilledthe Ellective Date,of an amount equal to
assi gnmem of 1he T,ifrasu-ucrure E.quiprueo1 Rig,b1s Nolda again owns or controls. e!U1e( direclly or
indirectly, per cent (30%) or more of to vote for election diiector& (or other
five per cent
managing (5aulhoriiy)
%) of the or thirtyNet perSelbog
cent (30%)Price or moreof of the such Nokia
equi1_y interesl Branded WCDMA
in '.'Jokia Siemen,; Networks.
Subscriber Terminal; (b) for cach Nokia - Branded WCDMA Modem Card that Nokia
I.hen in each case all Nok.ia Siemens Nclworks Patellis will be considered Nokia S1andards Parenls subjccr
to Sectioo 5.3 for sale& during the Term.
Sells on oi after the Elfective Dale, an amount equal to five per cent (5 %) of the
AveragewQuarterly WCDMA Price, and (c) for each Nokja - Branded WCDMA MZM
After the d~te on ,vruch such assignment is effective, Nokia (excludiJ1g Nolda Sieme ns Networks)
ill .have 1! Ji.mited. per.;onal. non-ex.cJ usive, worldwide ltceos-e to make, have made, use, import, offer 10
Module tbal
s ell, selNokia Sellsdispo~c
l, and otherwise on orofafter the Effective
Nokia -Brandee! lrifm.<ln,ctu.ri, Date, ac amount
Fq11iprnea1, ucept rh;lt , equal
a~ resardsto five per
Sbles,
cool (5 %)suchof thc Average Quanely WCDMA Price, The
license wi..11 be li.rnited in each caleudl!J yc&r to Nokia -Branned lnfrasLruc1ure Equipment Sold by
Nok.la with cumu}ative Net Se:lli.Dg Prices of no more rhao tbe amounl of 1be Annual Cap (as defined iu
Average Quanerly WCDMA
Price " mcans ibe average
Sec1 ion 4 .3.J) for such calCt1dar year. of the Ner Selling Prices of all WCDMA Subscriber
Terminals Sold by Nokia citber: (i) in the caleodar quaner in which the WCDMA
If Nokia Siemens Networks acquires a CDMA2.000 Infrastructure Equ ipmellt businesi; or a
Modem comp~ny
Card or WCDMA
enga· M2M Module
g ed in suc h business 1hat subscqucml forywhichbecomes royalties
a Subsidiary or are heing
a part calculated
of N okia Sieroe11s is
Sald, provided that Nokia has Sold at least VCDMA Subscnber Terminals during
Nc1wo rks. theo Nokia Siemeos Networks s hall liave rhe oplton, ex.erc1s~ble by providi.'1.g written nonce LO
such calendar quader, orbecome(1) inlicensed
the most recent prioron,11uds
calendar quarter
Siemens o which Nokia
Qual comm w11bi n ninety (90) da;r.; after tJ1e acqu1s1tion, lo iocJude. CDMA2000 J11frasiructu re Equipmer11
as Licensed Products 10 from such acquisition lo Nokia Nelworks
Sold at least
under Sec11onWCDMA Subscriber
'I . I above. provided that Terminals.
Nok.ia Siemens 4. 2. 2 agrees
Networks OFDM Subject
LO wntiog 10 be to Section
bound by 1he 4. 3
below, Nokia sball pay Qualcomuto royalties (e .g.,as if follows:
same rullJling royah i6 (ii any) I.hat the rarget compa ny had for its license for CD M A2000 lnfrastructure
Equipment ir.o.medialely prior to suc h acqulsilion ihc 1.Mget company (a) for' s cach
agreementNokia
included Bmnded
OFDM Subscnber
runni.ng roya lrics, Terminal
Nokia Siemens hal Networks
Nokia Sells would be onobligated
or after to the
pay theEffective
same running Date an amount
roy~llics
equal to apphcable
of the Net Selling Price of such Nokia - Branded OFDM Subscriber
lo such l ice nse).
the OFDM Modem ModemCard Card,, or and OFDM MMM2M ModuleModules.for Forwhich tovallies areeveobeing
C DMA2000 Modem Cards, (.i..ii) CDMA2000 M2M Modules, (iv) WCDMA Subsciiber Terminals, (v)
WCDMA (vi) WCDMA clarity, lhe .ibove applies if such
calculatedproductsis Sold,constitute provided
(for purposesthat of thisNokia
Agree men bas Sold000/OFDM
t) CDMA2 at leastProducts. OFDM Subscriber Terminals
chringsmeh calendar ananerari) in the most receni prior calendas quarter in which
Noua Sald at (b) leastNo PFDM
provision Subscriber
s et forth herein Teroiinals;
is to be co11s1roed orso(1)as loin thea nycalendar
grant right or licenquarter
se under in
which the OFM Modem Card for wich ravalies are being calculated is Sold and all
tl:le lnterDigi1a l Pa,1en1s wJlb, rcspeel lo time division multipJe access (TDMA) techoology; provided,
l.towevet, Lbal such h m ital!Oh S will not 111 any w3y lfmit any of lhe l'.]g.111s granted under this Agrecmeot to
pror calendar
utili ze the quarters
lntcrDigitalifP.:1te1m
Nokialo has not Sold
implcroe111 the CDMA at leas OFDM Subscriber
(or noo.-TDMA) 3Specl, of nny L Terguna)
iccoscd s in
any single calendar quan er; or (B) une Average Quarterly
Pr•oducts. even if 5uch Liteuscd Products t11cludc TOMA: provided, however, 111 such case only the non-
TOMA use of such Licensed Product will be licensed UJ1 der tbc lntcrO igital Patents.
WCDMA Price il Nokia
has never Sold any OFDM Subscriber Temonials Slanine in calendar year 2010,
Nokia wall be entitled to nclude the Specified Percentage (as defined below) of
Nokia Branded CDMA2000 / OFDM Products 13
as Nokia Noki.,,-/Qualcomm
Branded ConfidentiaJ
OFDM Subscriber
Terrainals or Nokia - Branded OFDM Modem Cards (as the case toay be) in its
royalty payments under this Section 4. 22 (which are also subjec to the Annual Cap
in Sechon 43 below) Any such Nokia - Branded CDMA2000 / OFDM Products for
which Nokja pays royalties to Qualcomm under this Section 4. 22 will Dot be subject
16 royally paymenis wide Section 423 bclow. The Sutclied Recentnee " will be in
2010 In 2011, and and eact year thereafter, and Nokia will be entitled to make the
selectionBUSINESS
QUALCOMM of CDMA2000 SECRETS - HIGHLY / OFDM Products to be within the Specified Percentage
CONFIDENTIAL al
QICE 00004230
Hits sole
IGHLY discretion- ATTORNEYS'
CONFIDENTIAL in 2012 42.EYES 1 CDMA2000
ONLY Subject to the last paragraph Q2017MDL of10_00081215
Section
4. 2. 2 above, Nokia sbell pay Qualcomm royalties as Tollows: (a) for each Nokia -
CX7728-013
Branded CDMA2000 Subscriber Terminal Thai Nola Sells og or after the Nokia / JX0046-013
Qualcomm Confidential JX QUALCOMM BUSINESS SECRETS - HIGHLY
CONFIDENTIAL HIGHLY CONFIDENTIAL - ATTORNEYS ' EYES ONLY QICE
00004232 Q2017MDL10 _ 00081217
case 5:17-cv-00220-LHK Document CX7728 1439-2 - 015Filed JX0046 01/25/19 - 015 5Page Effective15 ofDate,
45
an amodul equal to five per cent 15 %) of the Net Selling Price of such Nokia -
Branded CDMA2000 Subscriber Terminal. (b) for each Nokia - Branded CDMA2000
Modem Card that Nokia Sells on or after the Effective Date, an amoun ! equal to live
per cent (5 %) of the Average Quarterly CDMA2000 Price, and (c) for cacb Nokia -
Braided CDMA2000 M2M Module that Nokia Sclis on or afici the Effective Dale, an
amount equal to live per cent (5 %) of the Average Quarterly CDMA2000 Price The "
Average Quarterly CDMA2000 Proc " means ibe average of the Net Selling Prices of
all Nokia Branded CDMA2000 Subscriber Terminals Sold by Nokia either in the
calendar otquarter (c) in Jf, which
at any time.the Noloa
Nokia - Branded
ini tiates a C DMA p;;te.n1CDMA2000)
infringemen, lawsuit
its affiliates (or their customers) asserting tbat a ny product manufactured and sold by to1erOigitaJ for
Modem Card
agai.ost or Nokia -
ln1erDigit.al
Productsduring
(thethe " ODM
Tern,, asProducts)
set fonh below .inNokia Seciioos will, at its4 .2.3,sole discretion, le wnve
colilledoieoceto of have
Qualc,101m, only rllt eacb Royalty-Bearing Licensed Produc t Sold by Nokla duriug each calendar quarter
4.2.1, 4.2.2. 4.2.4. aod 4.J . For the
such ODMs make royally payments (if any) dve under their patent license
1he Parties, royalties wiJl be catcutated .aod paid oo lhe basis or Nokia's wor ldwide Sales of only Royally-
agreemncolsinfringe.withabsc.n~Qualcom
a license, any if such ODMs Patents. are licensed by Qualcomm to make and
Bearing Llceosed Products irrespec1ive of whether any such Royalty -Bearing L icensed Products would
Qualcomm,
sell such ODM Products to Nokia or to burd parties (including Nokja) That are
separately licensed by Qualcodun to make and sell such products. For any ODM
Nokia shall subrnit in w,iting to Q ualcomm, wi1b.in for1y- fi11e (45) days aflcr the end or each
ca lendur quane, (but not tru lie r than Nokia Corporation ~onounces- its quanerly results), a good fai1b non-
Producl Sold
bindi11gby Nokia
estilllate of theforamouoIwhich an ODM
of royalties paysexpects
that Nokia Qualcomm the full for
10 pay to Qualcomm amount of the
s uch calendar
royally owed
qui!J'lcr.
under the ODM's patent license agreement with Qualconu, no royally is
payable to Qualcomm Nokia shall furnis by Nokia h Qualcomm, under wi1hinthis Agreement
si Kty (60) days after For the end clariy,
of eachit calendar
is understood
quarter that
Nokia presenly
.cenifaatesdesires
io the formto bave
attached such
hereto ODMs
as EJChibit make
C-1 reporting
Beanng, f ,1ccm;cd J>roducL~ other lhan Covered Producls during such calendar quaner .
such
tbe royaltpayracts
ies payable forfor such
Sales ofRoya ODMlty-
Products, but that Nokia may change its approach in this regard one or more tioncs
during the Term and lly,
Addiiiona arasils:regards
solcC overed
discrcnon
ProducL~ :Nothing in this paragraph is intended to
owed under Section 4. 2. 1 and which are subject to the royalty caps ser fonb inCX7728-014
Section 43) as follows: Nokia / Qualcomm Confidential QUALCOMM BUSINESS JX0046-014
SECRETS - HIGHLY CONFIDENTIAL HIGHLY CONFIDENTIAL - ATTORNEYS '
EYES ONLY QICE 00004233 Q2017 MDL10 _ 00081218 CX7728 - 016 JX0046 -
016case
5 if the Multi - Mode Product
5:17-cv-00220-LHK is Sold to1439-2
Document ao operator Filedof01/25/19 a networkPage based 16on of any
45
CDMA2000 Standard at a time when such operator is not operating any commercia !
nerwork based on any WCDMA Standard, I will be a CDMA2000 M2M Module,
CDMA2000 Modem Card, or CDMA2000 Subscriber Termual, as the case may be
(b) if the Mulu - Mode Product is Sold to an operator of a Delwork based on any
WCDMA Standard at a lice when such operator IS DOL operating any commercial
network based ou any CDMA2000 Standard, it will be a WCDMA M2M Module,
WCDMA Modem Card, or WCDMA Subscriber Terminal, as the case may be for
Multi - Mode Products that are not covered by clause (a) or (b) above, if one can
otherwiseO~aring objectively determine that an M2M Modulc, Modem Card, or Subsenter
L1ccosed Products 1hal a.re Covered Products Sold by Nokia duri.n_g each quaner 1n sucb calt:Ddar
ei;r for wh ch Nokia bad riol previously provid,d ,such cert\[i :it to Qllalcoram .
Terminal is Sold to be used by subscribers either in a network based on a WCDMA
Standard or ind a network WCDMA
based on a CDMA2000 Standard, including objective
determination SubJ"l by means to cctionof 4 .3thebelow,country
Noba shall ofpaysale,
Qua lcommthe salesroyalties~ebannel, follo,.,s (a or or technical
each Nolm-
means inBraodcd de product
WCOM 5ubscnbe1limitingTerm~o.-.1 such subscnbers
lbal Nok:Ja Sell 0 11' 01choice of network,
aoer lbe .EUec:1,~c then the
niu , ilfl 11moll.Dt ~ualproduct
lo
will be either
five per e<nl (.S¼) of Jhc 'Net Sclhns Pricc.<if s ~ch Noi<.i Brnndcd WCDMA Subsnnbcr Tcnn,nat ; (h) for
a corresponding
cb Nooa-Brandcd WCDMA Modem CDMA2000 product
ard that Nokia. Si:Jls onor or a corresponding
alier the lfective Dale, an WCDMA
amoum
product, cqllal
as the case
lo live may
per CC/ll {5%)be, of theand (d) for
Average all other
Qumerl)' WCDM Multi A PnGC',-and Mode (,) forProducts
each No ·BrillldC'd that are not
covered (by 5%)clauses (a),Quane1l
(b) or WCDMA (c) above. P rice ()T~ onc hallg.r:. (1 / 2) or the cumulative Nct
WCD'MA M2M Module ,bat No ~, Sells on or ~ftcr the Effcclivc Da1e, ao. ~OWJl equal l flvc. per c.cot
of tbe Av~gc ''1'we1 Quanerl WCOMA Prioc" 1Jltall5 1bc
Selling Prices ven,ge of ofthesuch MultiPrice:
Net Selling - Mode of 3)1 \V Products
OM Subsonbu SoldTemun:,lsby Nokia Sold dunngby Noki:; eeachi1bcr ( i)calendar
LO 4he
Sold by Nokia4.2during .2 OFt>M each calendar quarter will treated as Sales of WCDMA M2M
Modules, WCDMA Modem Cards, or WCDMA Subscnber Terminals, as the case
Scctloo 4 .3 bcl w, Nolu~ ball p~y Qu11lcon1m royallle:. n follows: (a) fOI t.acll Nolcla_-
may bc. 4. 3 Annual and cnbcr Ten:runal Jha.LCaps
Quanerly No "' s~nsun WCDMA
on or ~flcr lhe 3d EffccLOFDM1vc Dale. Royalties
a.n !l.ltll\11 n1 equal ltl
Norwüstanding anythiog to the contrary, the tovalues payable
f the l Selli.Jlg Price of Stieb. Nokia- n.nded OFDM 11bscnbcr byT Nokia
rt1l111 I; (b)under
for
• OM Modem C111d 1ha1 Nokia Sells on or fie r the ·rrtc1ive D te, ilJl unourrt equ.al
SecuionsI 4. 2. 1 and 4. 2.fl.be 2 for Salssuneofrl yCovered
OFDM l'rtcc;Products during •each calendar
i::
Avcr.ige and J Jor e.ich-
year will is2/v!noModule event tha texceed
oloa Sellsthe oo 01Annual Cap (as
after 1he effective Da1 e,defined
lln amount below) equal L for such calendar f
royalties Sold,
(clore withbolding anyi) taxes
provi'1cd \hat Nolooh.a.s Sold el le.is
to be withheld pursuaat to Section
I'DM St>bscnber J c,m-w,•l:1
m 111.e mos1 recen1pmn c:i en a; quo,tci u, wh ich Nnlo.i Sold at least
46) payable
by Nokja under Sections 4. 2. 1fl)andSubscribcrTcn:111nal,, 4. 2. 2 for Sales 01 uii)of 1n. Covered
1he~lendar quarter Products in wh1eh dunag
the any
calendar year will in no event exceed the Annual Cap (as defined below)
i. Sold Md I! pnor , aJcndar qu tiers if
FDM Subsmber Ternuna)s m any sin le
for such
calendar year o the The Anousl Cap " () will year rice 2008, i{ No and ·~ ' .s(ii) willSold
never increase
,sny Of.OMor
decrease in all subsequent calendar years dunng the Term by Nokia / Qualcomm
Confidential QUALCOMM S1a11ln ln cal oarBUSINESS year 2010, NokiaSECRETS wil Ile cnrnle<l -10HIGHLY include tne CONFIDENTIAL
Specified Pcrcen1a e (as
HIGHLY CONFIDENTIAL - ATTORNEYS ' EYES ONLY
deftoed belo, ) of Nolti::i- randed CDMA100010FDM ProJuc-1~ a., QICE
Nolo~- Branded 00004234
OPDM S\Jbscnber Q2017
Tenmnals or Nok.ia-Brandod OFDM Modem Cards (as 1he ca1e ni.iy be in jts royalt pay'l'Oents under 1h1s
MDL10 _ u:t.i 00081219
n 4 2 (w hich ar also subiccf ro Lhe Anriu I Cup ln. Section 4 J below Ally !llch NoltJa-B r od d Cap
CX7728 - 017 JX0046 - 017 5 4. 3. 2 Adloun or Quarterly
Except as~DMAlOOO/a result fDM of the Unie
Ploduet.s fo r -which
up payments
N(llti~ p;iys royaor ltiesoffsel
to Qua'lcomm los overpaymco
Ulldcr lhi, Section pursuant4,2 2 will to
Secuon 4. 3. 3 below, Illthe ou quarterly royalties
•••••••• payable by Nokia under both
l)OI be \JbJecl IQ r()r hy r.aymcnl$ w.,d Sc-.ction 4,2 J below. The;• .
2010, ln 20 11, and
Sections nd 4.e~cb
2. 1earand 4. 2.;ind
tl1ere:Jfter, 2 Nokia
for Sales of Covered
w,U be en1itlcd 10 1u.s ~e theProducts
3clecr1on of during each calendar
quarter ofo b2009 and each calendar quarter thereafter during the Tem will be limited
w1tltin lhc Specified Pcrcer,tagc al it a le d screti n
to the Quarterly Cap for such calendar quarter defined below. Tbc " Quanerly Cap "
mcaps: (1) forSubJecl Sales10 by Nokia of Covered Products during
I e Jas1 paras ph or Scc1ion 4.2.2 abo"e, l'Joloa
each of the first three (3)
JI pay Q h:01n.ru royMLies a s
calendarfollow quancrs : (a) forofc;:ich
2009 and each
lJo.lua-6ran cd CDMA2000of theSub firstnl>¢-three
Terminal (3) 1hcalendar
t Nokiri Sells quarters
oa or .ificrof I e each
calendas year thereafter during the Term. one - quarter of the Annual Cap for the
immediately preceding calendar ver for andle 15 the Duanesly 'olda /Qu.:ilcommCan for each 0.0J1denbat of the first
thret calendar quarters of 2009 will be (2) for Sales by Nokia of Covered Products
during the fourth calendar quarter of 2009 and each founh calendar quarter of each
calendar year thercafter during the Term, an amount equal to the Annual Cap for
such calendar year minus the sun of the royalties actually paid by Nokia to
Qualcomm for Sales of Covered Products during the first three calendar quarters of
such calendar year (if this amount is less than zero, then the Quarterly Cap for such
quarter will
QUALCOMM BUSINESS be zero)
SECRETS 4. -3.IGHL 3 Year - End True - Up and Offsel for Overpayment
V CONFIDENTIAL OICENokia
00004232
Hsiall
IGHLYmake an additional payment
CONFIDENTIAL-ATTORNEYS' EYES O(if NLYnecessary) to Qualcomm at the02017MOL10_ time of its000812.17
royally bayment for Sales of Covered Products for the fourth calcadar quarter of CX772B-01 5
each calendar yeas equal to the difference between (a) the Amount Owed and (b) JXO046-O1 5
thc Amount Paid (each as defined below) for that calendar year. The " Amount Oxed
" for a calendar year means the lesser of the total amount of royalties that are
payable
caseby Nokia under both Sections
5:17-cv-00220-LHK Document 4. 2.1439-2 1 and 4.Filed 2 2 (assuming
01/25/19 Page ibat ibe 17Quarterly
of 45
Caps in Section 43 2 would not apply for Nokia's Sales of Covered Products during
such calendar year, and (ii) the Annual Cap for sucb calendar year The " Amount
Paid " means the sum of the quarterly royalties actually paid by Nokia Lo Qualcomin
under both Sections 4. 2. 1 and 42. 2 (as limited by Sections 4. 3 1 and 4. 3 2) for
such calendar ycar If the Amount Paid 15 equal to or greater than the Amount Owed
for the calendar year in question, then Nokia will not owe any additional payments
under this Section 4. 3. 3 for Sales of Covered Products during such calendar year.
If the Amount Paid is greater than the Amount Owed for a particular calendar year,
then Nokia will be
Effec11ve Date.entitled
an acno1>nl to apply
equal 10 livethe excess
oer cent 5%) ofAmount Lhc Net Selling Paid (ie,
Price o[ the
\Uch portion
okia•B!!UlJcd of the
CDMA.2000 llbscri beT Terminal, (b) fo e11cb NoJ,ia.Srandcd CDM/\2000 Modem Card Ilia, t,lok.i~ Sells
Amount Paid on or 11fte1 1he Erfec11ve Date, a..o amouo1 equal to five er CC'Dt {5%) of 1hc: Average Ou11rtcrlyroyalties
that exceeds the Amount Owed) for such calendar year by the
payable by NokiaPrioc
CDMA100D for1 aod
Sales(o) forof Covered
cacob Nokia-t3raadc.d Products
CDMA20DO during
M2M Module the following
that Nokia Sells- calendar
oo or dia year.
18 NokiaThe·• / Qualcomm ver.igc Quan Confidential QUALCOMM BUSINESS SECRETS
Price of ~II -\Jokla--
HIGHLY
the Effoclh1c Q,i!c, an amount P.qual lo Jv,c per e:cnj (5%) of be verage Qtl&r1cr l)I C DMAlllDO Pn~
ly CDMA2000 l" rkc" m ns tbc: average of the Ncr elling
CONFIDENTIALBrandcd CDMAl.000 HIGHLY CONFIDENTIAL
Subscriber Tc:anill.llls Sold by Nokia - ATTORNEYS
c,lhcr (i) in Che catcnd ' EYES ONLY
r quarter in which QICE
the
00004235 ~
Q2017c being MDL10 _ 00081220 CX7728 - 018 JX0046 - 018 5 4. 34 Payment
No a-Branded COMAWOO Modem Carel or Nokia-Br3Jldcd CD A2000 MJ,M Module for which
ca lcul&ted ,s Sold , prov.de.ct 1h~• Nolcia Las old at le<\!it
and Report for 2008 Norw
IIIIIIIIIIIIINokia•B 111nde<l eDMA.2000
dd, Nokia ubscnshall payl 10
er Termtna d Qualcomm e the around
Constituting tbe sole payment by Nokia for any royalues i owes to Qualcorom
/i'IOSl rccellt p1 ior caleoda, quarter Ul wbieb Nokia Sold at leas
randed CDMA2000 S11bscri'be.r lcrminals. Solely [or purpo es o I c e IAJUoc o vcrn e u;in n ly
for
Sales or Covered
COMA2O00 J>rico" Products duragibe
111 1his Sci;lloo '1 ,2,J, "calendar
Nok111-8rand cdyear 2008Subscnoor
CD MA:?.O0O under Sections Term inals" incl 42udesand 43.
The payment any No\aa will -llrnbendedmade
CDMA1000 in two equalTt.mu,a
ubscribt!r installments
ls Sold L Nok.la of l)ypoc on November
a Third Jny 11Dcier a sl!parale15, 2008,
liet.nse agr~cment bocwecn Qolllconun and sllch Third hny t.hnl NoJua then resells during 1he calenda,
and the other
quaner 1n relay
question 2009. Nolaa all submit its report for the Covered Product
Revenue in 2008 to Qualcomm no later than March 1, 2009 4. 4 (Intentionally
For cla.rtty, 1he Annual C~p :wd Quan erly Caps ,n Sut,on d 3 ~ low do not apply lo or hm.i1 lhe
Omitted, royal
4. 5UcMost payableFavoredby Nolcia u.oder Royalty
th.IS Section Rate 4-2 J Iron or after the Effective Date, Qualcomm
grants a license under all or a large portion of the Qualcomm Palunts to a Third
Party to manufacture and,csell subscriber p1oduc1s lemosinals or modem cards (defined
Roy~Jt y- in the
To 1tic cucni No ·a uses so-ullcd origiDal design manufacm.rers ("ODMs··) liccJ1s~d by
Qu3)eom.m 10 tn.:u:iufacru CDMAl0O-O (otller than ln fr:>$lTUCture &juiprnco1) !ba1 arc
Third Party license agreement ID a manner that is the same as or substantially
Bcann2 Liccoscd Prnduc1s {lhe "O.0M Prod\lcls''), Nokia will, ~1 its wl dmret100, be eo1i led lo have
similar toSllCbtheODMs definitions
are h cnsedof bySubscriber
Qualcomm ro m Terminals l(e and ell s\Jcband ODMModem
such O0Ms m-a)(c ,oyahy pa>'rnCnts (if any) due uodc, their p 1e111 hccnse agreemcors with Quala10\m 1f
Prod~CLS Lo CardsNokia or to in btrd
thus parties
Agreement) (1ncl1.1d atu1gaNoloa)
Net 1h11tRoyalty Ratel,ccn~ed
are: $ep anatcly (the larm by QualcommNel Royalty to m3l<;c and Rate ell "'"" solely
h produc1s. forFor the 11nypurpose
of this Section 4. 5 means a royalty rate that is determined by laking into account
OOM ?roltuci nlrt by Noloa ro r which 1111 OD p,1y Q1.ul nm.m Lhr. h.111 amoun1 o 1h roy~II.Y owed
iinder 1he ODM 's pa1en1 litc~sc ag,reement with ualcornm, no roy~hy 1s payable 10 Qu~lcom.m by Nokia
paymentsunder a Third Party For
•his Ag7eeme:n1 makes clari1)', to
1{ isQualcomm
u.oders rood ihat Noloa for apr<:.senlly
license to10Qualcomm
deslrc, bave sucti ODMsPatents, make
and payments by Qualcomm to such Third Party for: (a)
1llc.h pa)"l1lCDl5 ro, such ODM Prudmas. but that Nok.i may ol1aoge it approact1 tJ1 thiJ ri.:~ard m: or more
a license
tune, dw1ng <Ju;. Tern, >11'\d at ils sole di$crchon Not.hi.ng io [h,. par;:;igraph 1s. lnu:nde'cl lU g,uic any dgfilll
to such Third
Party's parents
(exp ,cssly,and (b) royalty
itt1pl iedly, by rip1: ra1io11- shanng
or law, or othe:rw payments'!ic) to anybased ODM under onaoy patent
Qualcomm royalties
Patcots o,
collected modify
by Qualcomun)
Ul ~oy Wlci y orthal is lower
1he 1c1tns thanofthe
or coridit1ons royalty
llrt)I license rale b~1
greemenl payable
wce11 Qualwmmby Nokia uiid anyto
ODM . Uoder no CIFCllID'..t.an.:-es tll bDIIJ No)o3 :..nd any ot 1\$ ODM5 llceosed by Qualcomm have P,
Qualcoma under10 this
obligacion Agreement
pay p!llertt _r()yahies 10 Qoak foromm Subscriber
for the ~am" ODM Terminals or lcomm
Pro(:1uc 1 Q,11\ Modem ogre:csCards that
lbbl ,t ~liall
implement co the sameallainst
discnmmalc wirelessNoltis instandard
1hc lenns ~od as thenssubscriber
condjuo of l s p.ilcnt ]1ce.nse terminals
ai~mcnls or 111i1hmodem
OOMs (i1 cards
bemg under.;lood tb l Qua lcomm may .:onlinuc i1 ' geo1Jral ptau,ce of hccruing ODMs 10 sell ooly Lo t11isd
for wbichpan1 Qualcomm 1bat a,r. 1101granted such lower
Q\131<:omm lrcensce6, ~d ,r uNei !comm Royalty
makes ill1Rate ex cp1ton tolosuch Third
1h,~ {!cnerAI Party,
prawce to then
Qualcomm shall (i) iſ the Third Party license agreement iacludes a license for
allow cer1,11n 01..)Ms, but 001 01.hcr.1, 10 ~11 t o corn panie. ~cporatdy lrcc nserl by Quali;u mm (rndut.lin~
provided that such license does not cover any patents included within the definition
of Qualcomm (d) Patents before such Subsidiary became a Subsidiary of Qualcomp
~ r all olher Multi-Mode Products 1ha1 arc llOl covered by clauses (a). (b or (cl above, (1)
one b If ( 1/2) of the c.wuulaiiv Net S ll111g Prices of such Mulli-Mo~e Producu o ld by
Incorporated. 4. 6 Taxes In thechevent
oki:-l clunng calend.u-suns
quarterpayable
""II be trea under
lw as Sal this of Agreement
CDMAJOOO M2M become
subject to taxes under the tax laws of any country and applicable treaties between
Modules. COMA2000 Modem Cards, or C MA2O0O Subscriber Ttrrruna.1s, .as the c sc
may be, and (11) the olher ouc ha lf {1/2) o lhc cumulauve Net ' ellmg Prices o( uch
the United States and Molti-such country,
Mode Producu Sold Nokia
by Nokia may,
dunoe, eachif and only
calendar qua11toer the exlent
w 1J1 trc;ited required
as Sales of by
law, withhold (rom each \. CDMA payonent
MlM Modules, the\VCDMA
amount Modem of said taxes
d!., or WCDMA required
Sub&cnberto be withheld.
Tmnmals,
Nokia shall furnish asand make available to Qualcomm relevant receipts regarding the
tl1e case m y bo.
payment of any such taxes. Such tax receipts will indicate the amounts that have
been withheld~Ol\1Ji1bs1.Jnding
from the gross amounts due to Qualcomm and that the amounts
aoyilli.o 10 Ille contrary, I.be myalues payable b Nok.ia under Sections ~.'.U and
withheld have been
21 f01 S:'lte-; paid by
Clf Cove.re Nokia.
Products durfo&Each Partyyl!.lr
ead1 calc:ndat shall
will LOproraplly
no evrm e,1tcte<l provide
1he Arµiuthe I Cipother
(as Party
upon its <lewritten request with reasonable assistance to resolve
lined below) ror such cal ndar year and will also he su bject If> t Quancrly p pl'I i\11 cm~ se1 fo rth
below.
any tax dispules
relating to this Agreement with any authority. Except as expressly set forth io this
Section 4. 6, Nokia ~ .. I
will not
Amouol be entitled
or Annual Cap to deduci or withhold any taxes, levies,
charges, or fees Notwil.lmanding c111yini.og to the co1>Lrary,to
from the payments due theQualcomm
101al comb1oc:d ro under this Agreement.
lllric.s (before will.holding any For
clarity, the foregoing sentence is not intended to limit the deductions thai Nokia is
ta ,c.es ro b.: w,1hheJd pursuao 10 Seelluo 4 6) pay3 le hy okia u11dcr Secl,on ~ .2 . 1 11d 4 2 2 for S ales 0(
Cove,ed Product cl~nog any cale, /Ir year 1v1ll i11 no cvcnl exceed th Anuual Cap (as de[ined below) for
entitled to.;u take
h c lendar fory11ar.
purposes of calculating the Selling Prices of Royalty - Beaning
Licensed Products 47 Method of Payment and Conversion to US Dollars The
l"he "'Anou~ I C~p .. (i) will
currencyye;,(of 200 this. Jrit.l
Agreement
(iv will !ntrt:.llRewill
o,- 1be the US dollar. All reports of royalties and Covered
Product Revenues must be made inU.S. dollars and all payments to Qualcomm
under this Agreement musi be made inU.S. dollars by wire - transfer and at a bank
to be designated by Qualcomm. The bank details to be used for making such
payments are as follows and may be changed by Qualcomm jn compliance with
Section 20 hereof: QUALCOMM Incorporated Account # 12330 - 17914 Ref: QTL
Bank of America San Francisco, CA ABA # 0260 - 0959 - 3 SWIFT: BOFAUS3N
Nokia shall conven all amounts to US dollars 17
pursuant to Exhibit E hereto before the
Nok1a/Quakomm Con denh~l
payment or reporting thereof io Qualcomm. Nokia / Qualcomm Confidential
QUALCOMM BUSINESS SECRETS - HIGHLY CONFIDENTIAL HIGHLY
CONFIDENTIAL - ATTORNEYS ' EYES ONLY QICE 00004237 Q2017MDL10
00081222 CX7728 - 020 JX0046 - 020 5 5. OTHER TERMS INVOLVING PATENTS (L
5. 1 Non - Litigation Covenants by Qualcomm S. I. 1 Embedded Modules Qualcomm
agrees not to Litigate based on any of the Qualcoram Patents against: (a) Nokia for
making,BUSINESS
QUALCOMM having SECRETS made, -using, IGHLY selling,
CONFIDENTIAL ofteriug to sell, iroporting, or otherwise OICE 000042:34
Hdisposing of Nokia
IGHLY CONFIDENTIAL - BrandedEYES
- ATTORNEYS' Embedded
ONLY Modules as standalonc products O2017MDL10_ (ie,000812.19
bol
embedded within a larger product), in each case during the Tem; and (6) Nokia's CX772B-017
suppliers solely for roaking Nokia - Branded Embedded Modules for and selling such JXO046-O17
Nokia - Branded Embedded Modules ta, Nokia, in cach case during the Termn,
however, the above non - Lytigadon covenant will in each case be solely liraited to:
(i) the territory
case of the jurisdictionDocument
5:17-cv-00220-LHK (s) where 1439-2 act (s) covered Filed 01/25/19 by said non Page - Liligation
19 of 45
covenant are actually performed by Nokia or its supplier (including acts Constituting
induect patent iofringement) or where Qualcomm attempts to Litigate against Nokia
or its supplier based on an act covered by said non - Litigation covebant; and (i) the
Qualcomm Patents granted in such junsdictions. Notwithstanding tbe foregoing,
Qualconm's agreement not to Liligare based on ibe Qualcomm Patents against a
particular supplier of Nola with respect to making and selling Nokia - Branded
Embedded Modules to Nokia during the Term will be in effect only while such
supplier does not first Litigate, througb itself or its Affiliates, against Qualcomm. For
clarity, should such supplier cease to Litigate against Qualcom within nioety (90)
days after Qualcobro provides written notice to Nokia and such supplier of the
termination of this covenant with respect to such supplier, the above Don - Litigation
covenani by Qualcomm would again apply for such supplier. 5. 1. 2 Software for
Third Party Subscriber Tenpinals, Infrastructure Equipment, Broadcast Devices,
Local Area Network Devices, and Modem Cards Qualcomm agrees oor to Litigate
4 .2 Ap1ouo1 o[Ouaoerly Cap
Pafcols against
11nani:aal tcnns Qualcomm for making. having made using, selling, offering to sell.
iniponing, or otherwise disposing of software solely for execution in Subscriber
Any subslllul •oo of lcmi s Ill aC<ordance \\11U11h15 Seeuoo 4.5 will be eITEellve a:; of rhe d,tc on
Terminals, ,~h ,cInfrastructure Fouipment,
'1 lhuy be<>JlJTI a lleclivc in tlie applrc,iblcBroadcast
Third Party liccr,~Devices, Dgretmen! Tocaland onlArea as to Network
lhe lcmtory,
Devices,liccn,c
and agreement
palc:Qls. /product:1.
or Modem a d S1andaCards, in each
rds to wh.ic:b ~uc~ Necase N.oyaltyduring
Ra1,s aod the Term;
lerms apply however,
\n .. uch Third the Pally above
pon - Litigation covenant will in cach case be solcly lined to the cititory of the
jonsdiction (s) where ack (s) covered by said non - Litigation covenant are actually
perfomed by Qualcomm (including acts construiting indirect patent infnogenient) or
1 K'o 1a)Q,ialcom.m Confidential
where Nokia attempts to Litigate against Qualcomm based on an act covered by
said non - Liligalion covenant; and (ii) the Nokia Paionis granted in such junsdictions.
5. 3 Computment to License Qualcomm Customers The Sherbrooke Patents are col
subject to this Section 53. Qualcomm will be entitled to disclose information about
thuis Sccrion 5. 3 lo ils Component customers only in compliance with Section 21 of
this Agreement and include in any such disclosure all of the information contained in
Exlubit D
QUALCOMM bereto.
BUSINESS Qualcom
SECRETS - IGHLY agrees that it shall not take ot support the position,
CONFIDENTIAL in any
OICE 00004 236
Hlitigation or dispule (whetherEYES
IGHLY CONFIDENTIAL-ATTORNEYS' or noi ONLY Qualcomm is a party thereto) or O2017MDL10_ D its 00081221
communications with its Component customers, that this Section 5. 3 or any ofCX7728-019 the
non - Litigation covenants in Section 52 (or any other provision in this Agreement) JXO046-O19
results in any exhaustion of the Nokia Palents or otherwise confers any nights
(impliedly, by operation of law. or otherwise) on any Qualcomm Component
customer to use any of the Nokia
case 5:17-cv-00220-LHK Patents without
Document 1439-2 aFiled separate 01/25/19 licensePage from21 Nokia
of 45to
such patents. Nokia compris 10 offer a license for sales dunng The Term under the
Nokia Standards Patents lo cach or Qualcomm's customers who requests such a
license from Nokia or whom Nokia approaches about laking such a license as
follows. (1) With respect to CDMA2000 Subscribe, Terminals and CDMA2000
Modeo Cards, in cache case that incorporate Qualcom - Rsanded Components that
implement a wireless air volerface in accordance with one or more CDMA2000
Standards, at a royalty rate not to exceed 0. 5 % of the net sales price (as such price
is usually defined in Nokia's normal licensing practice) of each such Subscriber
Terminal .iccepts
or, inthe
Inrespect
no event will ofNo\ci.a
Modem Cards,
be eoiitlcd of ibe
lo a .refund " Customer
or credit fo r aoy payments Average
roade priorQuarterly
leruis Qf a Tlnrd Party license ag,eemem under this Section 4 .5, nor will Nolcio be oblig~ted to
to the dale it
Temigals4.5. Sold by the Qualcomm customer either (i) in the calendar Quarter in which
IO assign any of 1he Desigmlled Patef)ls (as defined in Sc.clio11 6. 1) back 10 Nok..ia as a result of (his Soc1io11
the CDMA2000 Moden Card for which rovallies are being calculated is Sold,
provided which
thatQualcomm
the customer has and/or
acqu.iJes patents Soldpatent
ar leasil CDMA2000
appllcations from a Third Party Subscnbci
and grants aTerminals
For cl;\Tlt)', Nokia ·s rights under this Section 'l.S w,ill 001 be triggcrtd by: (1) a 1ransaction in
license at a
donde such lowercalendar
Net Royally Race: quales,
only foror inpateflls
those the most recent
and/or patent pnar calendar
applications (and any otherquarter in which
patents or p01en1
the custoiner Sold at LDMA2000 Subscriber Terminals; or (b) least (2) With respect
applications ia U,e same Paceol family as any acquire<! patent or patent applicalion) back 10 such Thi1'1
Pany (and/or i(s Affiliates); {ii) any ameodments lo 1icensc agroemc.ots existing prior to the Effcclivc Date
to WCDMA unlessSubscriber
such amcodrncnls Terminals,
reduce tbe NetWCDMARoyalty Rate Modem
payable by the Cards.
appJicah]G OFDM
Third Party Subscriber
for a license.
Terminals, and OFDM Modem Cards, in each case thal incorporale
under soma or all Qua lcomJT1 Patents lo manufacture aod sell subscnher Lenn inn Is anti/or modem cards, or
(iii} aoy license granted by Subsidiaries of Qualcomm lncorpon11ed before they became Subsidiari-es of
Qualcoram -
Braided Components
Qualcomm Iucorpora1ed thatprovided
implement lha1 sucha licwireless
ense does no! au cover
ioterface m accordance
any pater.ts iocluded within cbe with one
or more WCDMA Standards
definilioa of Qualcomm Patentsor OFDM
before Siandards,
such Subsidiary became aal a royalty
Subsidiary role not
of Qualcomm to exceed 1 %
lococporated.
of the ger sales 4.6 price Ta:,ces(as such pncc is usually defined in Nokia's normal licensing
practice) oſ cach such Subscriber Terzainal or, in respect of WCDMA Modem
Ir, tho even( sums payable LtndCT this Agreement become su bject to 1.ixes under t.hc tax laws of aoy
Cards, ofcountry
die "and Cuslavier Average
appl icablc creacics be1ween Quarterly
!he United Swies WCDMA PriceNolda
and such 1:ounlry, or, may,
in respect
if a11d onlyof OFDM
lo lhe
Modem Cards,
exlent of the Customer Average Quarterly OFDM Price " . The " Customer
required by l~w, wnhhold. from each pay1,11ent lbe amouot of said taxes rcquucd to be withheld.
Average taxes.
Quarterly
Such Lax WCDMA Pricelbe" amounts
incansthatthe havelessor of (a) the
the average
gross 1l!llou.ntsofdue the
lo net
1okla shall furnish and make avai lable 10 Qualcomm 1clevan1 receipts regardulg the payment of any such
receipts will indicate been withheld from
selling pnces
Qualcocomof .aod
all WCDMA
1hat (be arooun1s Subsciber
withheld haveTerminals
been paid by NoldaSold by 23
, Each J'anyNokia / Qualcomm
shall promplly provide
Confidential QUALCOMM BUSINESS E,xcepl asSECRETS - HIGHLY CONFIDENTIAL
1hc other Party upo11 its written rcquc.~1 wilh 1easonable a.,~ is•~aee 10 resolve any 111 x dispulcs relatir._g 10
1),ts Ag,ecmenl wi"tl-1 any authority. expressly set fortb io !Ms Scccion 4 .6, Nc;,k.ia will ool be
HIGHLY en1i1led
CONFIDENTIAL
to dcduc1 or withhold - ATTORNEYS ' EYES
any t,ixes, le.vies, charge~, ONLY
or fee., from (heQICE p~ymenl~ 00004240
due 10 Qualcomm
Q2017MDL10 _ 00081225 CX7728 - 023 JX0046 - 023 5 The
utider this Agrcemenl. For cla.rity, the fo re.goj11g sente11ce is not iolendcrl to hrni1 lhe deduc1ioos that
Nok.Ja is entitled to take for purposes of calcula ting the S<i!l lng Prices o( Royally-Beanng Licensed
Qualcomm customer
either (i) Produ
in thects . calendar quarter in which the WCDMA Modem Card for which
rovaltics are being ll 7
calculated
Method of Payment is and
Sold provided that the customer has Sold at leas
C:onv~sk,n 10 u.s Dotlars
WCDMA Subscnber Terminals during such calendar quarter; or (11) Loc most recent
prios calendar Thequarter
curreocy in or which the customer
I.his Agn:cmeru will be the U. SoldS- dollarat Allcasirepons
Product Reven ues must be made in U.S. dollars and all payroenis 10 Qualcomm under Lhis Agrecmenr
WCDMAof royallic:s Subscriber
11nd Covered
customer has Ret': Sold QTLat least OFDM Subscriber Terminals during such calendar
Account JI Jl.H0- 17914
witlun Nokia's then - curteal normal licensing practice for licensing Nokia Standards
Patents. (4) Nokia agrees to notify the Qualcomm customer of its rights under this
Section 5, 3 the earlier of: a) when offering20lenios forNukia/Qualcom.m a license under the Nokia
Confiden tial
Standarls Patents; or (b) prior to Litigating the Nokia Slandards Patents against such
Qualcomm customer. The notice provided by Nokia will lclude at least all of be
information contained in Exhibit D For clarity () to the extent CDMA2000 Subscriber
Terminals and CDMA2000 Modem Cards are CDMA2000 / OFDM Products, solely
for the purpose of us Section 53. Nokia sball offer the same rate for such products
sold after 2011 as for OFDM Subscriber Terminals and OFDM Moden Cards, and the
same rate
QUALCOMM BUSIfor
NESS suchSECRETS products- HIGHLYsold prior to 2012 as for CDMA2000 Subscriber
CONFIDENTIAL QICE 00004237
HTerminals and CDMA2000
IGHLY CONFIDENTIAL - ATTORNEYS'Modem EYES ONLY Cards, and (ii) in IcSpece of Subscriber Q2017MDL10_00081222
Terminals and Modem Cards that implement air interfaces both in accordance with CX7728-020
one or more WCDMA Standards and maccordance with one or more CDMA2000JX0046-020
Standards, such devices will constitue WCDMA Subscriber Terminals and WCDMA
Modem Cards solely for the purpose of this Section 5. 3 Qualcomin's Components
customers will be third party beneficiaries
case 5:17-cv-00220-LHK Document of this Section
1439-2 5 3 with the
Filed 01/25/19 Pageright22 to of enforce
45
its terms, provided however, subject to the following paragraph. a Qualcomm
Components customer will be permitted to enforce its rights as a third party
beneficiary of this Section 5. 3 solely as a defense or counterclain in Liugation
initiated by Nokia with such customer car ils distributors or customers for the
accused product) in which Nola Litigates based on any Nokia Standards Palent ('
Nokia - Initiated Litigation"), unless the Qualcomm Components customer is unable
(due the nature and / or venue of the Nokia - Inaviated Litigation) to enforce is rights
as a third party benenciary of this Section 5. 3 as a defense or counterclaim in such
Nokia - Initialed
5.
Liligation in which case the Qualcomin Components customer may
OTHER T'ERMl'i lNVOLVING PATENTS
00004241 Q2017 MDL10 _ 00081226 CX7728 - 024 JX0046 - 024 5 a third party
covenan1 by Qualcomm woul<l again apply for sucb rnppli.:i.
Qualcov Components customer for a license under the applicable Nokia Standards
Patents for a period that is the longer of ()) twelve (12) months after the date on
which Nokia fost solihed such customer of21such customer baving a need to take a
Nokia/ Qualcomm Confidential
license to the Nokia Standards Patents; or (2) six (6) months after the date on which
Nokia notifies such customer in accordance with this Section 5. 3) of its rights under
this Secuion 5. 3, such Qualcomm customer has not entered into a license
agreement with Nokia for a license to the applicable Nokia Standards Patents on
terms compliant with this Section 5. 3; or (b) a particular Qualcomm Components
customer (1) Furst Litigales (through itself or any of its Affiliates) against Nokia, or
(2) Litigates
QUALCOMM BUSINESS through
SECRETS itself or any
- HIGHLY of its Affiliates) against Nokia based on aQICE
CONFIDENTIAL patent00004238
Hthat
IGHLYwould be covered
CONFIDENTIAL - ATTORNEYS' by theEYES definition
ONLY of Nokia Standards Patcots Q2017MDL if such patent10_00081223
were owned by Nolia and if the word " Nokia " in the definition of " Nokia Standards CX7728-021
Patents " were replaced by such Qualcomm customer's pauc, then in each case JX0046-021
such customer will no looger be entitled to benefit from Nokia's couvnitments to
license sei fonh in this Section 5. 3, and (1) the maximum royalties defined in this
conumitment are not of any patent
case 5:17-cv-00220-LHK royalties
Document charged
1439-2 to Nokia
Filed 01/25/19 by thePage applicable
23 of 45
Qualcomm Components customer. If Nokia sells, assigns, or otherwise transfers any
Nokia Standards Patent to any Third Party, the sanic terms shall caosfer to such a
Third Party purchaser, assignce, or other transferce of such patents and Nokia shail
contractually ensure that the combined royalty rales charged by Nokia and the
assignee or Nokia Standards Pategis for the Nokaa Standards Palents comply with
the above maximum royalty rates and other temos of this Section 5. 3. Lo addition,
Nokia agrees that it shall not charge a Qualcomm Component customer lower per
unit royalties for sales during the Terin for a license under the Nokia Standards
Patents for SubscriberNotwit:hst.anding Terminals
the fore.going,orQualcomm's
Modemagrecroent Cards not that to do notbased
Litigate incorporate
oo ,1he Qu.alcq:mm
Patents aga ins1 a panicular supplier of Nokia with respect to mnk.iog and selli.og, okia-Braoded Broadcast
Qualcooun - Branded
Devices or Nok.iil·BraodedCoroponents thanDevices
Local 1\Jea Network for Subscriber
10 Nokia duringTerminals lhe Tenn will or be in Modem
effect onlyCards
that do incorporate Qualcomm Branded Components, in each case implementing
wl'tile sucb s uppl ie.r does not first Li1iga1e, through it.self or its Affiliate, against Qualcomm. For clarity,
the sameprovides
wireless writtenstandards. Forsuch clarity,
supplierthisof tbeSection
terrr,inattoo 5, 3 will notwilhapply
respectto to patents
sllould such supplier cease to Li1ig0te agaiost Qnalcomm within nicety (90) days after Qualcomm
notice to Nokia and of I.his covenam sucb
other than Nokia
supplier, Standards
tbc above- Patents
noo-Ljtigalion c ovenant and will not
by Qualcomm apply
would again to apply beforroyaltics
such supplier,Nokia may
charge for sales 51
made by Qualcomm Components customers before or after the
Non-Li1iea1ion Coveoaots by NoWa
Tem. For clarity, if Nokia offers license terms after the Execution Date that comply
with the terms5,2of.1 this Section 5. 3 Lo a company that is not a Qualcomm Component
Componen1s, Broadcast Comoonenis. and Local Area Network Componerlts
thal the company will have under this Section 5. 3 if it becomes a Qualcomm
Components, Quslcowo-Branded Brnadc.lsl Coo,l'Oner;1ts. and/or Qnl!lcomm-Brandcd Loca l Area
Network Components for, :and selliog Q11alcomm-Br-..:nded Compooents, Quakocru:n-Braoded Br.oadeasi
Coroponent customer,
Componc.ots, then for the purposes
.and/or Qualcomm-Bra.uded Local Area Network of this SectionLo,such
Componenrs Qualcomm,companyin each casewill be
deemed territory
to have of i:be jurisd1ction(s) where act(s) covered by said 1100-Lit-igation covenaQt are actually performed made
been a Qualcomm Components customer
dwiog_ the Tenn: bowevu, the above aoo -li1igatioo covenant will j n each case be solely limited 10: (i) 1/le
at the time Nolaa
its ofTer, 1. t. Nokiaorwill
by QIJako.mro have(including
its supplier no obligation to roake
acts constituli.og indirectapatent
newinfringement)
offer to such or wbere company
Nokia iſ
such company later becomes a Qualcomm Components
allcmp1s 10 Litigate against Qualcomm or ilS supplier based 0.1) an act covered by said 1100.-Litigatioo
covenaot; aod (ii) I.be Nokia Pc1ten1s granted in such jurisdi~lions. customer. 5. 4 Sherbrooke
and VojceCraft Patents Nokia represents and wastants to Qualcomon that: () as of
the Effective Date, Nokia has the exclusive righl to sublicense to Qualcomm the
for clarity, the above non-L,1iga1ion covenant w1I I nor apply to Subscriber 'rerm inals, Broadcasr
Dev,ces. Local Area Network Device,. InfrastIUcrurc £quipmenr, and Modem Cards.
Sberbrooke Patents (for sole use in the codecs for IS - 95 and 3G applications, but
excludingnotITU codecs G. the
No\wtlbstaodt.og 729 and its
foregoing, ~olelyannexes
as regards or G. 723. 1 and
Qu~lcCTJUJ'l·Bra11dcd
subslllnually de1;igncd by or for Quakornro, and (b) are s.u pplied 10 Q uakm:n.m by a supplier who
its annexes)
Componen1s lhai; (a) areand the
VoiceCraft Patents;
derives r,fty per and (ii) Nokia
cent (50%) or more is of agreeing
its annual lolal under
revenue thisfromAgreement
sales lo Qualcomm, to include
Nokia's the
Sherbrooke Palents
agreemeot not lo and the
Litigate VoiceCraft
agaios1 such Qualcomm Patents suppliersunder the noo
w,ch respect - Litigation
to making and :mlJir)g covenants
lo
such that each Qualcomm Components customer pays, as consideration for such
license, no more than a reasonable portion 22
of Nokia's total cost of acquining and
Nokia/Qualcomm Confidential
retaining ils sublicensing rights (t being understood that the royallies or Å¿ees that
Nokia charges for a liceose to the Sherbrooke Paleols tagy be in addition to, and
need not be deducted from or credited against, the royalties Nokia charges for a
license to the Nokia Standards Patenis) . Nokia's obligation to offer licenses to the
Sherbrooke Patents on the above tems to Qualcoinn Components customers will
lerminate generally if Nokia teminales or otherwise discontinues its night lo
sublicense
QUALCOMM the Sherbrooke
BUSI NESS SECRETS - HIGHLY Patents
CONFIDENTIALto third parties, and will terminale with QICE respect to
00004239
Ha particular
IGHLY Qualcomni
CONFIDENTIAL - ATTORNEYS' Componcnis
EYES ONLYcustomer iſ: (a) after Nokia has engaged
Q2017MDL in
10_00081224
good faith negotiations with such Qualcomm Components customer for a liceose CX7728-022
under the Sherbrooke Patents for a period of twelve (12) months after the date onJX0046-022
which Nokia first contacted such customer specifically about licensing the
Sherbrooke Palents and otherwise complied with this Section 5. 4 with respect to
suchcase
customer, such customer has
5:17-cv-00220-LHK Documentnol entered 1439-2 intoFileda liccnsc 01/25/19 agreement Page witb 24 ofNokia45
lor a license to the Sherbrooke Patents on terms compliant with this Section 54 or
(b) such Qualcomm Components Customer Litigates through itself or any of its
Alfiliates) against Nokia afier Nokia has offered such customer a license to the
Sherbrooke Patents on lerons compliant with this Section 5. 4. Other than as set
fond in this Section 5. 4 and Section 5. 7, the Sherbrooke Patents are not covered
by this Agreement 5. 5 Noo - Litigation Covenants for Cerlain Services Qualcomm
and Nokia agro pol to Litigate against the other Party for making, having made,
using. selling, offering to sell, importing, or otherwise disposing, bosling, or providing,
in each case during 5.2.2 thew.i.rcTerm:
for Tb11d (i) Pany content,Terminal
y S1ibscribel entertainent,Inlins1rucrure or application
gu,pmenL litmldCAst distribution,
Devrccs, Loe.it ,6-rca Nc1work Devices. at1d Modem Cards
downloading, remore access or concol, sharing, synchronization, storage and
sucarding services, Nold including
gn:e~ BREW
not to L1tigalt bo,cd On or ooyOviof based
1h J.;oki11 services;
P"l""ls ogau,al- 26 Nokiafor/ Qualcomm
Qualcomm m~king,
liaviog made. IJ:Siog, selling, offering le !.<:I!. 11:nponin~. elf 01 heJVJ1s disposing of software solely for
Confidential
cxeculion QUALCOMMill Subscriber Terminals, BUSINESS Infr.l lrllc SECRETS
me E(!_,11prnenl . 81 - HIGHLY
~doast Devices, CONFIDENTIAL
r.llcal Alea Network
HIGHLY 0eVJC'C.$,
CONFIDENTIAL ilJld/or Modem Cards. - ATTORNEYS
m c'ilch C'l.'-e ll rr g. lh' EYES ONLY1hcQICE
Tcrtr1; howcvu, 00004243
abo v no11-L11ig l!on covi!niinl
Q2017MDL10 00081228 CX7728 - 026 by JX0046
Quafoomm- (,nc:lurling
026 5 (11)
wil l 111 each c:a c be solely 1;uU1cd \oc (i) the lamory of I.he 1unsdJclu)~(s) where acl(s) c "crcd by sa,d
•1on-Lit ig'l!t1on ov~n, a1e tru;lly perfol"ll,l!d ~0cu. anynu1 ,1tngcontent
·,uh.red broadcast
patent
services,lfllncgcn1cn1~
includingorservices wh rt No 1abased aHemprs to onLilany gate Content
aga ns1 QualeBroadcast
rom based 011 an Standard:
1c1 coveroct by (iu)saidany e -
mail or other messaging services, including Eudora and IntelliSync based services;
non-L,11ga1ion cu"cnaot; a d i1) Ilic Nolua P:>1cn1S gra111cd i,i s ch JUnsdicrians.
photo, or video - sbaring services, (xii) customer data and / or profile collection or
analyzingucservices including Smartphone 360 services, and (x1) any services to
Nok.l.i commits tonrru a hcens for salu dunng 1hc Term under lhe Nokt.i Standards Pa1.:n1s .Lo
or Qualcomm 's ct1stot11ers who 1equcm such a liceuse from Nolua or whom Nokia approacbes abou,
tostall, maintain,
1aking such a manage license S' follows or operate
. wieless or fixed networks or Infrastructure
Equipment; however, the above non - Litigation covenant will in each case be solely
(J Wl!J, respecc lo CDMA1OO0 Sub~cribeJ 1c,m.iu.ils ;mJ CDMA.2000 Modeu1 C~cds, rn ca h
limited to:c:asc (a)th the territory
t 111corpori11c of the jurisdiction
Qua/coi:111n-Rranded Cornpo11eois (s) where
thnt unplem actn l (s) covered
11 "i,·e. by saidin pon -
e.s.s air rntcrfoe
Litigationnccord:rnc.c
covenant wu.b ODeareoractually
rno CDMA:20-00 perfomed by~, Nokia
Sllltlcl,irds, royohy or Qualcomm
le 1101 lU ei1cecd 0.5% (as
oflhc the
nel case
sales may
p,ice (:\s s~l\ price ,s usually ddioed Lil Nolua's non,:,al hccosiog prac.1,ce) of ea~h u h Subscriber
be) (including
"'."errr,lnalacis or, in re constituting
spccl of Modem indirect Cards. of tb!:patcat"Cus\omu infringement)
A eragt Quanerl)I or wbee Nokja
CDMA.2000 Price·· The or
Qualcomm attempts
''C s1on,er Aver~cto Litigate anerly CDM/\2000against Price"themeansother th lcsParty or· based
(a) 1be verageon an actnelcovered
or 11,e ,elliog by
p11ces f 211 COMA2000 Subscnber Tcrmioals Suld by •he Qualcom.a> rns10 er cilher (1) in tho lcndar
said non -u~ne, Litigation covenant;
io wlncll lhc CDMAlOOO and (b) the Nokia Palents or Qualcomm Patents
bctn • calcu)a1ed 11 Sold . provided (as
the case may be) granted in such jurisdictions. Notwithstanding anything
CDMA2Cl00 Slll>scnbc, to the
Terrmnals
contrary above, this Section 5. 5 does nol and will nol Cover any activities of any
Third Party. 5. 6 Slandstill In addition to, aod without in any way limuting the licenses
and DOD - Litigation covenants set forth in this Agreement, each Party agrees that it
(2) Wilh n!spi::1 to \\ICDMA Subscriber Temiioals WCDMA. Modcn1 Cards; OFOM Subscnbt....-
shall notTcnuina1s,
Liligateandagainst OFDM Mod themotherC, rd.s, inParty
each 1m: forlhHlamcorp
period of five (5) years
r~le QuaJcomm•Brand.:d after the
oaiponcnlS l);at
EffectiveS1asidllrd~.
Date (the
i111plamco1 " Standstill Period"); provided ihal such standstill will not prevent
a wirele;s au- ioterfo:e · Jee rrl~no wuh n~ or more. WCDMA Sta.otlard1 or OFOM
a1 a royah)I r.;ri;: 110! lo c:x.ct:cd !% of 1hc ncl salcllo pocc (ai ll 11 pncc ,s IJ ualJy defined In
either Party,
Nok.Jo's: ionormal
patent liu,,smginfringement
prDct iac-) o r cacb Litigation
sucb Sub (nber Litigated
1' ,nal 01a, Aer theorexpiation
in respcc, WCDM of the
lodcm
Standsuill Cords, Period, from seeking
or tl1e qCus10u,e1 pasi darages
Averagt Quar1erl)I WCOMA Pnce" based r. 1non alleged
te!fpec.1 of FDM palent
Modem infringement
Card.!! , of
1hc "Cus10111 r Ave gc Qu11Jlerty OFD 1 Pnce" Tbe "Cuslomc, Ave sc QuaT1c1ly WCDMA Price"
during the incans Standsull
t 1e lesser ofPeriod; however,
(a) 1hc 11venge the above
rlhc nc1 selli.c pncc~ orall standsoll
WCDMA Subscriber will in each Tcm,inalcase old by be solely
limited to: (i) the temtory of the jurisdiction (s) where act (s) covered by said standstill
covenant are actually perfomed by Nokia 23 or Qualcomm (as the case may be)
N kia/ u:-1loomm Cunlidtmtial
(including acts constituting indirect palent infriogement) or where Nokia or
Qualcoiden attempts to Litigate against the other Party based on an act covered by
said standstill; and (11) the Nokia or Qualcomm Patents (as the case may be)
granted in sucb jurisdictions. 5. 7 Non - Liligation Covenants Do Not Exhaust
Patents The Parties agree and intend that the Party granting the non - Litigation
covenants and standstill made yoder this Agreemeot 10 immunize the other Party
(and in certain
QUALCOMM BUSINESScases SECRETS- its suppliers)
IGHLY CONFIDENTIAL under any of the granting Party's palents, OICE 00004240
Hincluding those set
IGHLY CONFIDENTIAL forth in Sections
- ATTORNEYS' EYES ONLYS. 11, 5. 1. 2, 5. 1. 3. 5. 2. 1, S2. 2. S. S, and 5.
02017MOL10_00081225
6 above, is pot receiving compensation from the other Party for such non - Litigation CX772B-023
covenants and ibat, instead, the granting Party intends to license is relevant patents JXO046-O23
to, enforce its relevant patents in any manner against (subject to Section 5. 3), and /
or collect consideration for its patents from the other Party's customers and
commercial end - users, in eachDocument
case 5:17-cv-00220-LHK case without 1439-2 said non Filed- Litigation
01/25/19 covenants Page 25 of 45
preventing or otherwise adversely impacting such licensing, enforcement, or
collection of consideration in any manner (subject to Section 5. 3) . The Parties
further agree that the ability to seek and collect royalties or other consideration fron
such customers and such end - users of the other party constitutes a material part of
the consideration hereupider for loc Party who is entided to seek and collect such
royalties or other cousideralion Notwithstanding the above, the grantee (and in
certain cases its suppliers) of the non Litigation covenants will benefit from the non -
Litigation covenants granted to it under this Agreement The Panies funther agree
and intend lhe that
Qualcomm the cu~tumc1
non - Litigationd1her· (i) ia the.covenants
caJc.cd.:ir quarterand m which standstill WCDMA set- forth inr this ~ r wJ,ich
r II c being t31culated , S ld. pr v1dcd that U1c cu~lomt h3s old al leas
Agreement, ~ including COMAthose Sub.cnber setTcmunal
forth in Sections
au~ing ucb r:alcndar 5. 1.\lat1er1, ·S. m 12. Ji UJ 5.tile 1.
mos3,rec:cn1
5. 2.pnor 1. 5. 2. 2,
5. 5, and 5. 6 above: (a) may not be crcumvented by any Lisgauon based, in whole
uler.dar qu~r rn 1>-·hiccb the "ltslomc-i S.-il d al l,:;isl • • • • • • • • • • VCl):-dA
limited herein)
s, ndardswith any form of conscpl, authorization, license, sublicense, or oiher
from U,c r~oge of terms willun Noki~ 's the-n.cun:tal nom1al lic.cmlng pra.:u~e for licensing Nokia
Fatcnts.
right to make, have made, use, por, offer to sell, sell, or oberwise dispose of any
product orearlier
service{~)
provided by a Party that is subject to such non Litigation
Nok.i~ agrees 10 notify th QuolcoR\ltl cu 1o,ncr of ,to rig.bu 1-Ulder 1.b.u Sc:e1icit1 5•.3 Lhc
of: [:a) wh,:n offcri.n_ lenn& for a Ji.-,i,:.n~e uodcr the Noll., S1.andanis P111cnLS, m (b) prior lo
covenants or standstill
Li1iga11ng (or anyPa1cn1
the Nol.i a Standard other aga1 product
ruL such Qua\c()mm or service cusLOm~r that Thecornbides
n01ice providedor by JIJok.i:i
incorporales, or isat based
will 111cludc least all of(hc onu1forrua1i01
or derived from
conl.lined or produced
in Exhib;t D, through the use of a
product or service provided
~or clllrity (i) to tbc exlcnlby aCDMl\1000
Party), even Subscriber if (be
Termiools producti.nd CDMA2O0Oor service t.:!odcmprovided
C.irds arc by a
Party hasCDMA1000/OFDM
no non - infringing Products. use. solcJy forExcepl
the purp as expressly
e. of Lrus Su.1100 5set 3. Nokia forth sballbelow,
offer 1bccach ~me r-11Party
c
covered by both
anyaci::orda.t)ce
CDM/\2000 non
in
or not the other party is a party to such Litigation), that any non - Litigation covenant CX772B-024
granted herein would operate in a manner os bave an effect coplicting with what JXO046-O24 is
said above; or (ii) fuod or otberwise assist the making of any such clairus or
assertions in any Liugation, 5. 8 Access to the Technologies of the Other Party Prior
to itscase
acquisition of Symbian Limited
5:17-cv-00220-LHK Document ("Symbian) 1439-2being Filed finalized,
01/25/19 Nokia Page agrees
26 ofto 45use
reasonable efforts in order to persuade Symbian lo granı R & D licenses (including
commercially available software component parts reasonably necessary for
Qualcomm) for the Symbian operating system to Qualcomm on terns that do not
require Qualcomın to grant any licenses, rights or immunities under any
Qualcomm Palenis in favor of Tbud Parties other than Symbian itself or ils Affiliates.
Qualcomm agrees to offer licenses to Nokia for the BREW client software (including
commercially available software component paris reasonably necessary for Nokia)
that Qualcomm makes commercially available to Third Parties on terus thai aje oot
less favorable
a third partythan thoseofofthisQualcomm's
beneficiary otherbe1Wecn
Section 5 .3 io Litigation large suchcustomers,
customer (or and
customer.; for the accused product) and Nokia, unless and until Qu,;ilcomm withdraws tbe clairn it Ii.as
withoutor asking
its distributors
any licenses,
asserted riglits or immunities
ia Litiga1i'oo against Nokia a sunder 10 such any Qualcomm Nokia Patents
Componcms beyond
Cll51amer, and then thisonlyAgreement.
i'n a Il
Qualcomm cannot obtain an R & D ticense for the Symbian operatog system 28
Nolc,a.[niLiated I .i tigation nr as otherwi;;e provided in !he previous paragraph. For cla.rir.y, the foregoing
conditionSection
to providing futurecustomer
releases has norof BREW client~grcemcaL
software to Nokia, patent terms
date oa which Nokia notifies. such customer (in accordanet: wilh this Section 5 .J) of iLs ri_glits uodor lhis
5-3, such Qualcomm c.niercd into a Hccn5e with .Nokia for a llceose to
of equivalent scope and type as the patet terms that Symbian or the Symbiap
the applicable Nokia Stillld.ards Patents on temis compli ant with this Section :U; or (b) n pa.nicular
Foundation or (2)isL11iga1es
requesting fromor Qualcomm for agalnst
access tobased
the on
Qualcomm Comp0neo1s customer (I) fir~l Litigates (through itself or any of ilS Affilia1es) against Nokia,
(1brough uself any of its AITLl iatcs) Nokia Symbian
a patent 1hat operating
would be.
system at thatbylire,
covered but only
the definition so long
of Nokia as!?at
S1andards either Qualcomm
cuts if -sucb has byagreed
paleot were owned Nokia andto if such
the wordtems or
Symbiancame, or the Syru bjan Foundation continues to request sucb Cras from
"Nokia " io the definition nr "Nolcfa St.aodards Pa tents" wue repl~ced by such Qualcomm customer's
tJ,en io each case such customer w1U no Jooge-r be ent itled to benefit from Nokia's commitments co
Qualcomm If set
license Nokia
fonh inaccepis
this Section such5.3; and temas requested by Qualcom based on uus
Section 5. 8, Qualcomo
(,i}
shall (if it has not already agreed to the terms soughi by
the maximum royalt ies defined In tbi s Con\1\1hn1ent are net of a11y pateht royalties c.ha!ged
Symbiantoor thebySyrobian
Noi<.ia the applicable Foundation
Q\laltonu:n Components. grant liccnscs, nights or immunities regarding
c.ustOJllCT.
the Symbian operating system under any Qualcom Palenis in favor of Third Parties
If Nola a se lls, assigns, or othen.visc. l.ra.llsfors MY Nokia S1and11rds Paten! 10 aoy Third Party, the
in addirionsame10 Symbian
terms shall transferand bea Third
to such Sytubian Foundation
Party purchaser, assi191ee, oron the
other above
transferee described
of such pa.tents a~d lemns)
on the terms thalcootrac1ually
Nokia shail Symbianensure or Symbian Foundation
(hat the combi!'.led roya lty raie..s requested
char2,ed hy Nokia from
a(ld iheQualcomm
as~ig,1ee of furber,
to or exclusive
the VoiccCraft nghe lo any
Pa1en1s under ofthe such patents
noo-Litigotion covenantsor that could
seL fortti require
i.D Sectioo 5 10 I.heQualcora lo offer or
ful!csc cxte.ol (and
grant royalty
onJy lhe- fulles1
frcc e.xte111)
licenses as bas
that Nokia a result
1be righl of to do any coinnituent
so. Nokia or wodertaking
agrec:s Lhal Qualcomm made to a
will not b.o required
slandards tht:.-Term
setting organization), in cach case with respect la clauses (b) through (b)
10 pay Nokia any royahie.s or other fioa,,cial consideration for such rights wlth re-spccl ro activities during
.
above only those undertakings, licenses, obligationis, options, covenanks, rights,
and encurabrances that existed, andPaten in thels Bndform they existed,
The Parties acknowledge and agree lhal Lbe 000.-Lit[gahon covenants grante<l u.odcr th.is
Agreement with respect lo the. Sherbrooke !he Voi~Crafl Palents wlll prior
commeoce to the
on theEffective
fi rsr
Date, and day(b) I.barNolua's
Lhc Sherbrooke patcal license
Patents and tbe agreements
V oi ceCraft Paten(&with are co Sonim Technologies,
longer subJccl lo the non-assen Inc. with
the effective date of July 1, 2008 (the " Sonid Agrcement")
covenants under the 2001 Sl,'LA so that there ts DO gap in Qualcorum 's pro1ec1ion under t.he non-assen or
non•Litigalion cove nants under the Sherbrooke Patents and the VokeCraft Potenu betwccr, lhc 2001
and Chi Mei
Communications
SULA and thisSystems, Agreement Inc. with the effective date of April 1. 2008 (the " CMCS
Agreement") in the form they existed as of the Effective Dale. The form of patent
1ne Sherbrooke Patents are DOl wbject lo Section 5.3 . However. Nokia agrees to offer
assignment to be executed
Qua lcomm Component customers by Noksa
a separate and licensedelivered
to the Sberbro to ok.c Qualconm
Pa1e11cs sucb th.utis eachallacbed
Qualcommhereto
as Exbibit B Nokia represents thal the information it has provided to Qualcomm
Component,; cusromcr pays, as consideration for such license. no more thao a reasonable ponion of with
Nokia'<; total co,I of acquiring and retaining its subhccnsiog rights (it being understood tba1 the royalties
respect to thelhal
or fees CMCS Agreement
Nok:la charges for a J1ceo5eistoaccurate
1he Sherbrooke andPaltnlsacknowledges
ro11y be in addition 10, thalandQualcomm
m:ed DOI b¢ is
relying on suchfrom
deducted information in agrecing
or credited aga}J,st, 1he royall ies toNokia
include charges the forCMCS
a lkense Agreement
to the NoJda Sla.ndards in clause
Patents). Nokia's obLigation lo offer lianses to the Sherbrooke Patents on the above terms 10 Qua !comm
(above. Forclarity,
Componeors customers (x) Nokia will continue
wi ll rerminate gent:rally if to Nokiabe1em,inaLes
boundorby all ofdiscooli.nucs
01herwist' its definitive iis rig/lLlicense
10
agreements covering
sublic.ense The Designated
the ShcLbruol:e l'atenlS to lhictl Palentsp~rties. and that Nokia entered
will rerminale with respectinto LO a before
pafticulai the
Ellective Qualcomm
Date hereof as well asforthe Sonic Agreement
the Sherbroolc.e aod PatentsCMCS Agreemeal,
or twelve (12) in
Qualcomm Components cu~!omer if: (a) afle1 Nokia has c11g~ged i.n good fai1h negotiations wilh ~uch
Coroponenls custoruer a license under for a period
each case for afler
moi;iths the the remaining
date on wbi_cb termNokia offirst
such agreements
C.C,IJt.!cted such cuslomerand only as
spcc.irically about lo licensing
the tennis tb.e in
such agreements that existed as of the Filleclive Dale, and
Sberb.rooke Pate111S and otherwise complied ,vi1h !his Section S 4 with .r~pe,:i1 10 such customer, such
customer has not en tered i.uto a license agreement wirb Nok.Ja for a hcense Lo the Sherbrooke Palcnls on (y) Nokia will be entitled
to continue
termsto receive
compliant withany sod all
th,.~ Scc1ioe1 5 4:hedefiis,
r;,r (h) such Qincluding
u~lcomm Components palent cus1orncr
royalties, ansing
l.it,galci llhroug,hout of
such patenl license agreements. For clarity, the remaining
itse:f or any of its AJTiliatcs} against Nokia After Nokia has offered -Such cuslnmc.r a license Lo lhc
Sherbrooke PatenLs on terms compliant with th1s Section 5.4 ,
icon of agreements will
cover potential renewal of existing palcol licenses in the event a license excrcises its
unilateralbyoption Other
this AgrcemenL
totban
extend
as set fonbthein th.is
term, Section butSAsolelyand SeGnon to 5.7,
therbeexten Sherbrookesucb option
Patents are 1101to exlend
covered
existed (and potun any broader loban Il existed) as of the Effective Date 63 Rights
Relined by Nokia 5.5 Nokia retains
Non-Lillgation perpetual.
C:ovenao1s for Certa1nirevocable,
Services and royalty - free licenses and
Dalent exhaustive nights
Qualcol'tl.m under
and Nokia agree cach
001 to of the Designated
L111,gate againsl the other Pany Patents to make,
for mak.l.ng, having made,have inade,
usc, import,
using.olà ct to
seUiog, sell,losell,
offering and otherwise
sell , importing. or otherwisedispose disposing, of anyorproducts,
bosli.og, providi ng, in sofiware,
each case and
services.control,
Without prejudice to the preceding
and suc=ing sentence, Qualcomm
during 1bc Tenn: (il any content, cmenainmeni, or a))plication d1suibt11 lon, downloading, reooore access or
sh,uing, synch10ni1.atioo, storage services, including BREW or Ovi agrees based services;to
perpetually refrain from Litigating based on any Designated Palent against Nokia,
and against any of Nokia's suppliers, but solely 26
to beNokia/Qualcomm
extent they supply ConfidentiaJ
lo Nokia 6. 4
Information Regarding Designated Parents Dundg the patent selection process set
forth in Section 6. 1 and 6. 2 above (and, al Qualcomm's request, before Qualcom
wakes us selection), Nokia shall provide the followig In Tondalion (be Paleni
Information to Qualcomm regarding the patents included in the Paten Families listed
on Foxhibil A as follows. (1) which of the Usted palenis Nokia has not expressly
licensed, or otherwise graded rights, to specific conipanies identified by Qualcomm
(provided
QUALCOMM thal Qualcomm
BUSINESS SECRETS - HIGHLY mayCONFIDENTIAL
identify no more than thirty seven (37) specific QICE 00004243
Hcompanies) and what kind ofEYES
IGHLY CONFIDENTIAL-ATTORNEYS' products
ONLY (from a list of five (5) productQ2017MUL10_00081228 categories 30
Nokia / Qualcomm Conhdential QUALCOMM BUSINESS SECRETS - HIGHLYCX7728-026
CONFIDENTIAL HIGHLY CONFIDENTIAL - ATTORNEYS ' EYES ONLY QICE JX0046-026
00004247 Q2017 MDL10 _ 00081232 CX7728 - 030 JX0046 - 030 5 provided by
Qualcoran) are not covered by the license or other rights granted to each such Third
Party,
caseand5:17-cv-00220-LHK
(0) which of the listedDocument palents have 1439-2 beenFiled declared 01/25/19 LO ETSI Page or 28 anyofolber
45
standards - setting organization as essential, or potentially csscnlial, to any industry
standard, as well as whether (F) AND ((Haw) Reasonable and Non - Discriminatory)
commitments or undertakings have beco made for the same and, each case, the
identity of each such standards - setning organization Nokia shall provide the Patent
Informanon for the Paleol Families on Exhibit A on or before September 16, 2008 Ar
the same time as Nokia notifies Qualcomm of the Palent Families selected by Nokia,
Nokia shall also provide Qualcom with the Patent Information for each of the patents
in these Patent Families Nokia shall use its reasonable efforts to ensure that the
Patent Infomation
(ii) any content provided to Qualcom
broadcast scJViccs. is accurate
inti uding scrv1c;es based on aayand Co1Hent complete
Broadcnst Staodard;lo Nokia's (iii) ;my
been declared byoo Nokia to ETSI hy saidor any other standards - setting organization
or Qualcomm as
indirect patent iD.fri.ngemen1) or wbeTe Nokia or Qualcomm attemplS 10 Litigate agalnst lhe 0 1her
Party based an acl. covered non-Litiga1ion covenao1; and (b) the Nokia Patents
essential, or potentially
Patent,: (as tl,e case may essential
be) graoted to anyjurisdictions.
,n sU<:11 industry standard, Nolwitbslaoding asaD}1hi.n~
well as whether
lo Lbe contrary (F)
RAND ((Fair) Reasonable and Non Discriminatory) commitments or undertakings
above, this Sec\ioo 5.5 doi:s nol a.n<l wjll not cover aoy activities oJ any Third Party.
have been made 5.6 for the same and, in each case, the identity of each such standards
Standstill
setting organization. Nokia sball use its reasonable efforts to ensure that the in
In addition to, aod wichout io any way limiting tbe licenses and POD-Litigation coveeants sei forth
foration provided
in !ll:is Agreement.to Qualcomm
eacb Party agreesin thatrespoose lo Qualcomm's
it shall oot Litigllle aga.inst the other Parry request is accurate
for /J period of five (5) and
completeyears to Noma's knowledge For clarity, if any of the infondation
al\er lhe Ef-fec.1111c Date (the "Srand$lill -Period"); provided lh:it svc~ standstill will not prevent ei1her
Pany, i11 pateo1 infringement Litigation Li1 iga1ed after the exp i:rarnm o t the Stand$lill Period, from seeking
requested by
Qualcomm pas{ under
damages this based Section 6. 4 10fnngeruent
o.n alleged patCJ'.lt is subjectdurini to noo - usclosure
I.he Standsllll obligations
Period; however, 1he above
preventing such disclosure to Qualcoms, the Parties shall negoale in good
st.andsuU will in each ease be so lely limiled 10: (i) the 1enitory of the jurisdiction(s)
by sa id standstill covenant ace actually performed b y Nokia or Qualcomm (as tl,e ca~ may be} (including
where act(s) covered faith to
attempt to aclsfind a conlidential
constituLiog indirect palent and reasonable
infriogemem) method
or w.llete Nolda for providing
or Qualcomm atlernp1s to Qualcomm
Liti gate against with
such infornation
the other Pany tobased
the onextent reasonable
an acl covered under
by said s1ll.l)dstil L: aodthe curcumstances
(it) the Nokla or Qualcomm Patents 6. 5 Transfer
(as tbe of
ta~e may~) gra nted i.n sucbjurisdict\ons.
Patient Files Within thirty (30) days after the Designated Palenis are assigned to
Qualcomm, Nokia 5.1 sball deliver
Noo-Li1igati to Qualcom
op. CovcnaoLS bo Not Exhaust thePatents
following information, at Nokia's sole
cast and expense, The Parties foragree
cach andof thetJ,aL
inte.od Desigualed
Lhe Puty granting Patents: (i) the covenants
lhe non-Litigation assignment records, if
and s1andsti1J
any, andmade (i) information
uoder 1his Agree.meat on any upcoming
10 i.rnmuniz.e the other deadlines
Par1y (and in certain related cases to the Designated
ils suppliers) under any o f
Palents due withinis notthe next vinety (90) days olh<:rfrom thesuebassignment. Futber. and withio
1he gran\1 ng P~rty's paJen is. inc luding Ihose set forih iJ1 Sections 5, I.I, 5 . I ,2. S. 1.3. 5. 2.1 , 5 2. 2. 5 .5, and
S.6 above. (CCCivi.ng coropcnsa11on frQIJl lhc. Party for non-Li1ige1ion coveoaots 1bal,
ninety (90) days after the Designated Paleals are assigned to Qualcomm,io Nokia
inslead, the gJ"dDling Pa11y rnteuds IO license its reJevanl patents lo, enforce i<s releva111 patents any
shall, at its solellrtd cost and expense,
end -users, in cause each case its prosecuting counsel
tn.1nner agai.osl (subj1:c1 10 Section 5 .3), and/o r collect consideration for ils pa!ents from the other Party's
customers commercial witbout said non-Li1iga1ion covcoants lo preventing
transferorthe
applicable patent
olberwisc prosecution
adversely unpacting sucb files la Qualcoane,
liceasing, enforcemeni, or to the extent
collecoon reasonably
of consideration in MY maMe.r available
For clarity, Nokia will not be obliged to deliver to Qualeomm copies of any contracts
(subject lo Soclion 5,J). The Pan ics further agree that the ability lo seek and collect royalties or ot/ier
consideration fro.lJ'I such customers and sucb cod-users of the -0Lh.er Party cons·1itutes a material pan of the:
or agreements
consideration. pursuant
hereunder to for which
lbc PartyNokia who is has licensed
en1iLled to seek and a Designated
colic.cl such royallics Palcot to any
or o!he1
Third Party or granled any other nghis or immunities to any Third Party Nolus- aiso
cousidcrauoa Notwithstanding lh c above, the grantee (and in certain cases
Litiga1ioo 1:ovenan1s wil l benefit froru 1be nuo.-L.illga1ioo covcnmts granted 10 {1 under!/lis Agreement .
its suppliers) of the 1ton
any Third Party with respect to any of the Desigualed Patents: (c) Nokia has not CX7728-027
granted (and will pol ganl) any licenses or other aghts of any nature in any of the JX0046-027
Desigoated Patents to any Third Party at any time on or after July 22, 2008 other
than those granted under the Sonim Agreement and CMCS Agreement (in each
casecase
as defined
5:17-cv-00220-LHK in Section 6. 2 Document above and 1439-2 in the form Filed such agreements
01/25/19 Pageexisted 29 of 45 as of
the Effective Date) and other than any licenses granted by Nokia upon the exercise
of unilateral options (including renewals) existing (and in the form they existed) prior
10 the Efiective Date: (d) to the best of Nokia's knowledge, none of the Designated
Patents bas been adjudicated to be invalid or uned forccable; and (e) none of the
patents in the Designated Patenis is subject lo a royalty - free licensing commitment
or obligalioo as a result of any comroitment or undertaking made to a standards -
scitiag organization. Except for the express representations and warranties in this
Section 6. 6, the Designated Paleots are assigned to Qualcomm " as is " and Nokia
disclaims1crn1orial
all other p~i.entrepresentations
infrin_gcrneill or indirectand warranties,
inf.riugcmeDl; aud (b) will express
nm. whether orexpressly,
ifplied.impliedly,
The Partiesby
further agrce
providethat thePany disclaimers set sforth in asSection 9. 2 apply fully to all
esloppel, by operation of law , or othe.rwisc, exhaust aoy of the Parties' pntcn1 rights or grant or otherwise
any Third (other tbao a Party' suppliers, e1<_pressly provided and limited hereio) with .wy
Designated Patents, except that 0 Nokia sball pot allow any Designaled Pater
fonn of conscol, authoriia1iori, l,ce"sc, subliceJlSe, or 01her rii;h1 to make, have made, use. import, offer 10 to be
abandoned or otherwise lapse or expire prior to the assignment of the Desigualed
sell • .sell . or 01bcrwise dispo,e of any producl or se,-.,ice provided by a Party 1hal is subject to such non-
L1tigatioo covenants or s1a.nds1ill (or any 011.l.cr product or suvioe tl11!1 combines. or incorporalc:s, or is
Patepts to basedQualconim,
on or derived from and (ii) thet~ough
01 produced disclaimers
I.he use of, ain Section
product or service9.pro 2,vided
solely to the
by a Party) extent
even if
conflicting with the express representations and warranties in this Section 6. 6. do
rbe produc~ or service provided by a Parry has oo non-infringin.g use.
Nokia of n:iming
such Qualcomm undertaking or Nokuwill only polto theconstitute
same ex1ect Lb.atathey breach of ibis
patent Agreement by
customers of Laogible produc rs (ioclud iog software), 11,e Parties shall use ,he language in Exhib.it F,
name other owners . The obligadons
Qualcomm 7. WITHDRAWAL OF NOKIA'S EUROPEAN COMMISSION
in rcspec, of ooliccs under clause (b) above extend only to new agreeruen1s excculed after 1hc Ex~utioo
COMPLAINT Nokia will, within five (5) days after the Execution Date and in writing,
Date. Notwiths1aDding the fore going, neither Party will be required 10 provide notices to cod user
conslllllers w,Lh respcc( to ,oftwa.re provided by such Party to such coos LUDers.
withdraw its complaint to the European Commission in whicb Nokia alleges that
Qualcomm breaches EU competition law, and promptly provide a copy of such
If. despite the Parties' joint i.ntent, it is adjudicaled in any country or j uri sdiction <hat aoy of the
non-Liligatioo covc:naots or the standslilJ set forth i n ibis A._greemeol exbausrs aoy or the Pa.nies· pa1eol
written withdrawal
rights oc grantsto or Qualcomm.
otherwise providcsHowever, t-0 any 'fb.inJ notwithstanding
Pany (other I.ban a Pany·s anything
suppl ier;, as to expressly
the contrary
in this Agreement, Nokia will not waive any rights it may have based on any
provided and limJted, berein). whether expr~ssly, impli edly, by csroppc.J, by opcrat ioo uf law. or otherwise,
any form of consent, aut1tonz.a11on, license, subhcense, or ot/ler right to make. have made, use. impcm.
remediesoffer that thesell,
lo sell. European
or otherwiseComission
dispose of aoy product may impose or service, then On such Qualcomm
non-Litigationincovenant
connection
or
with its current
su1ndstill wi)I investigation
10 such extent be or to
deemed any w be action
null, void. by Nokia
and to
ineffective
from i.ls inception, and the Pmies agree 10 meet promptly 10 ncgo1ia1c: ,n good faith a mutually acceptable
enforce
in such countryany orsuch remedies
jurisdiction
based onsubsiitutc
breach (es) for
provision ofsuch
competition law. Nokia
cou.o\1y or jurisdictioo represents
that e!Tectuaics tbe Parties· and-above warrants
staled in1cn,, to
Qualcomm that Nokia bas not filed any complaints against Qualcomm's business
conduct with
whethergovements
or n0t the otherof, oris regulators
a parry 10 such in any other country or jurisdiction (other
Fuo1her, e.lch Pany agrees 1.h-a1 it ,hall not : (i) claim or assert , in a ny Litiga1ion (irre.,pective of
Party Litigation). 1hat any non-Li1i gation covenant granted
than the bcrem
complaint would operalc filedinwith a manner theo European
r ba\/e an effect Commission)
coollicting wiili what . RESTRICTIONS
is said above; or (i1) fund ON or
Representations
omponenu, and Warranties
,ll\y licenses, Qualcomo
ngh1s, or ,mm11oi1ies uodu-hereby
nny Nokia represents
ra,ents be ond tho and warrants
c se.1 fonh in thisto Nokia
that (a) Qualcomm
greemco1 Incorporated: () is a duly organized corporation in good standing
under the6. lawsASSIGNMENT of the State OF of OKJADelaware; (1) bas all requisite corporate power and
PATENT TOQUALCO.M};J
authority to enter into this Agreement and to consumismate the transactions
election of De 1en:11ed p tr.n•~
contemplated 6.hereby, 1
and (117) will ensure that all of us Subsidiaries comply wills
this Agreement (includingA.,i:ree1TPent
Att;icl>ed 10 clus the grant or licenses
as .Exhibit 1\ 1s a lis1 to of Nokia and theprovided making by of
Nokianon -
Litigation,1.ri11tn
covenants to Nokia and its suppliers); and (b)
WiL"in !b\J'ty (.30) days aflu th~ Execution Dal~ of lrus A!!,J'e roen • Q uokomm shall $el~ {by ptol'ld111g
oolic to Nokia) ••••••••• the execution
t irom Exhibit A. \ th II tlui:e (3) bllsio s da aOer
and delivery of
this Agreement
Q11 lco,,1m have proy,del;beennotice of duly authonzed
its selection (but 111 110 by c seall requisite
earlier corporate
th11.n September 24, 2008).action on als
olua sh~11
part. Nokia / Qualcomm Confidential QUALCOMM BUSINESS SECRETS - HIGHLY
eleci (b pr v1dtn written u lice 10 Qu~lcomm), at 113 i.ole d ise:rcl10!\, an at1ditio11a1
from Nokia ' s po nfol lo The plllCnls and l?alenl 11pplic~1ion~ m Judc;:d with,n 1he
CONFIDENTIAL HIGHLY
selllcled by Qualc<'inm CONFIDENTIAL
and 1bc add11tonal -• ATTORNEYS ·••••••• ' EYES
•eltctcdONLY by NokJaQICE are
00004250 co Q2017
~1111ety MDL10
rcferrtd to _
l:ierein 00081235
as 1be CX7728
"Dc,,gnated
inc luclcd in Nokia Sti\1\darcs Pa1en1, for purposes of IM, .Agreement
PaL.cn -
•·. 033For JX0046
cl:int.v, - 033
Dcs1g;naled P 5 ,enuNokia
arc not hereby
represents and warrants to Qualcomm that (a) Nokia Corporation: (i) is a duly
organized corporation in good standing uader the laws of Finland; (ii) has all
requisite corporate power and authority to enter into this Agreement and to
consumubale ibe transactions contemplated bereby; and (ii) will ensure that all of its
Subsidiaries comply with this Agreement (including 29
the making of non Litigalion
Nolda/ ua.lcomm 0 1u1denl-\:ll
covenants to Qualcomm and its suppliers); and (b) the execution and delivery of this
Agreement have been duly authonized by all requisite corporate action on its part
Each Party bcreby represents and warrants to the other Party that this Agreement is
freely entered 1olo and the result of good - faith, arm's - length negovations. 9. 2
Disclaimers Excepi as expressly provided in this Agrocnent, nothing in this
Agreement shall be construed as: (i) rcquiring the filiog of any palcot application, the
securingBUSINESS
QUALCOMM of any SECRETS- patent, orIGHLY the CONFIDENTIAL
maintaining of any patent in force: (11) a warranty or
OICE 00004246
Hreprescotation by cÃther Party
IGHLY CONFIDENTIAL-ATTORNEYS' EYES asONLY to the validity, cn forceability, value, or scope
02017MOL10_ of
00081231
any paleol, copyright, or other intellectual property right: (111) a warranty or CX772B-029
representation that any manufacture, sale, offering to sell, lease, use, importation, or
JXO046-O29
other disposal will not infringe or will be free from infringement of palenis, copynghts,
or other intellectual property nghts of others and it will be the sole respossibility of
each Pany5:17-cv-00220-LHK
case to make such dererinination Document as1439-2
is necessary Filed with 01/25/19 respectPage to its31 acquisition
of 45
of licenses under palents and other intellectual property of Third Parties): (iv) an
agreedent to bring or prosecute actions or suits against Third Parties for
infringement; (v) an obligation to furtish any manufacturing assistance or information,
or (vi) confemng any rigbl lo use (un advertising, publicity, or otherwise) any name,
trade name, or trademark of tbe other Party or any contraction, abbreviation, or
Simulation thereof. 10. ACQUISITION OF A PARTY In this Section 10, the term
Acquisition " (and vanations such as " Acquired") means any acquisition of a Party,
including (a) mergers or consolidations that result in a cbange in the ultimate
beneficial ownership 6.2 of a majority
Asstll:llil'.lcnL ofDesirnalcd (morePatentsthan fifty per cent of the shares or other
securities in the Party entitled to vote for the election of directors or other managng
authority: (b) the sale or other transfer to a Third Party of the beneficial ownership of
all or the roajority (more than fifty per cent) of the shares or Other securities in the
Party entitled to vote • . for •J':1'1tclection of• directors or other managing authonty; or (c) the
sale of all okia.;
or substantially all of the assets of the Party lo a Third Party. 10. 1
undenaklng, made by ol:,ia to any 61.llndard seLliog organizalioo; (c) iU DOJl-CXclu~ivc licenses gra.n1c-0 by
(cl) all obhg:illans lo ofrer :,nd/or gr:io1 noa -r. cl'ls1ve liee11se1; (e all o pltoos granted by Nolua for
Acquisition of rdQualcorum
any Tlu Party lo lake or If Qualcomm
extend Incorporated
in 11me any 11oo•exclu~1vc hccnsesisaxid Acquired,
all ooo--exclu.s1vcthen the lonon
J1t.ense.s be -
Litigationcovcnanrs-nol-lo-suc
covenants made
gra01cd as a r-csult of 1bc by Nokia hereunder will remain in force and will continue
exercise of such opuoos: (f) all non-assen covct11101s
wa.n1ed by Noti;1; and (b) all 01.bcr rights or orher encue1brantc.s app icablc, 10 sucb
gron1ed b Nok1,; (g) sll
to apply 10 Qualcomm
pttlC1llB (0111cc than ri gh1.s Incorporated
or cncumbntJ•c;c~(or lba.1the
couldsurviving.
regu~ QuaJeolllID resulting,
to pmV1dt: ora oiber
Tbis-d P successor
y, or
entity) and all ofre.:.ult
oLhcrwl!il: ils inSubsidiarics,
a Third Party h;iving but will be any
or obraloi.JJe. limited to the anual sales of products and
ow11 ~hip LDIGl"C31 w or c-Jtclu~ive n gh1 10 ~ny r
;uch p.iteni. r tbat could require Qualcornru to offor er gran, royally-free liccn ~ as rC$\lh of :iny
services eo,ruoitrueot
covered orby such covenants
uodertwng 01adc lo a sto.ndards- with lli.rii;
a lolalorgan,cumulative
110n). in eack ca selling
w,1.h re.price
ei:l lo no
clau$greater
than the (b)
total1ru-ou cumulative
h (b) above selling price of allhccn
ly lhose undemiklng~, corresponding
es, obhga11ons, opuons. products covenaocs, and services
rit:hts , ~nd
Covedants for Transferred Patents Each Pany represents to the other Party that any
CX7728-030
paleols of patent applications that the fusi Party has transferred to any Third Party JXO046-O3O
since July 2, 2001 (the " Transferred Patents ') were transferred subject to all
existing nghis and obligabons ouder the 2001 SULA (either by specific reference to
the case
2001 SULA
5:17-cv-00220-LHKor by general reference Document to 1439-2
all exisbong Filednghts 01/25/19 and obligations)
Page 32 of. 45 Each
Party agrees to and hereby does extend only the covenants not to assent to each
Party set forth in Sections 6. 1. 1 and 6. 2 of the 2001 SULA (but no other part of the
2001 SULA or its Sections 6. 1. 1 and 6. 2) solely with respect to such Transferred
Palents as if Nokia had elected the Later Patent Extension under the 2001 SULA
thereby extending such covenants not to assert set forth in Sections 6. 11 and 6. 2 of
the 2001 SULA solely with respect to such Transferred Palents, and cach Party
agrees that such extended non - assert covenants to cach Party will survive the
termination of the 2001 SULA solely with respect to such Transferred Patents.
However,provider.l
a Party will not are
by Qualcorosn) benotincovered
breach by the ofJicemc-
this orAgreement
other cights gramed iſlosuch each such extended
Third Party;
aod (11 which or be hsleJ p Lcn\s ~lie: baa decla1eo to ETSI or o 01bcr sLandaid •Sc:niJlg rgan1221ion
covenants are found
OS' es~efl11<1 not to csscnliat,
I, or pntenlially cover such Transſerted
tn iiny ,l!rluslry slrind!lrd, as Patents.
well a whether In the(F)RANL>event any one
({t-air)
or more of the Traosferred Patents are Litigated against the other Pany: () the
Reasonable and Non-Discnroinaiory} comn1it r11entS o under1aki11gs have been made for 1be s,1Jt1e and, "' Party
making the representation
for the P.11eot F shall _mill- reasonably it A on. orco b~ fo- reoperate
September with tbcAlother Party
time DS(unless
cb case-. 1h11 iden1iry of cnch such srandards-se111ng org ,uilinn Noloa snail p1ovide. 1hc Patem
lnforoinnon 16, 2008 the sarnc
such co - oki~operation will result
no1ifics Qualcomm of Ilic in liabilityali:nl to Families
such Party selected under
by Noll..ia,its Noloagreemeal
shall also provide in the forte
it existedft.asona
as ofblethe Effective Dale) with the transferee of such Transferred Patent (s))
Qual~umrn will\ rb1i Patem In!orma11on or each of the pa1en1s in I ese Patent Fa1UJHes, Nolua shall use its
dfort lo c.nswc. tb:11 I.he Paleo I loformaL100 ptQvided lo Qualcomm ,s accural<!: a.cd eompletc to
. at such r,lo
other Party's
~·s knowled e cost and expense, in any defense against such Transferred
Patents, and (ii) the fust Party (i. e ., thc Party making the representation) shall pay
After uie 1ra.nsfer of1he Des1gna1ed Paten~s o Qus lcomm and al Qoillc-0lJlJll 's request, No ..ia sba U
to the other Party any
use re.lSoo:ible eff0t1sand all amounts
ro pTOVlde lO Q\lalcotwll, that
wilhoultheundu first Party
e delcy from receives
Q:ualc:omm ·~ fromwnltco a Third Pany
req1.1c.sl,
as a result of
lbe followmg the Liligation
1cformat1on-reg.ud1ngof such eac)lTransferred
specific Oes1g;rmed Palenis
Patent wh against
reques1: (1) whether Nolda has ool :;nolcd a II ense or o1he& rights u11de-r ~u111> p tel'II lo a spceirK
ich ,~ 1hc subjce(the other
of Quak,0mm Pany. 1s
Neither Party
companyshall or listLake or support
of companie-') d th~ in any
k.inds way any
of produces (fromposition
Ille lisc of five that (5)the
proouc1covenants
categoncs in
Sectionslb.at
6. Nokia
1. 1y,ha~
providc.d and 6.
Oualc.0m01 2 u of
n.\!e1the 2001
1he prcccdloi;
gt,anled Ii') .~uch company w,dcr the
SULA
par;,grap),)have11\,,1 arenot been
not covered extended
P)I ny l icense Orwith
i!lml(e )>31cnl~ '4ntl ii) wheiluer sud patent has
other respect
ri~ h~ to
the Transferred Parents or that such covenants do not
been declared by ok.ia to ErSl or any o1her lalldards,!>el1i g organization a ~cnt,~l. r pnten11alJy cover the Transferred
Patents. cssc~hal,
112 Survivine (o an ind\.1.$1.lyRights Thc :tSPartics
s~d8Jd, wcU ai acknowledge
wbelher ('P)RAND and ((F,m agreeRtasoaobl~ that,andupon Noo- the
cffectiveness
of ~eh of this Agreement and subject to Section 111 above, dfon~ to all obligations
Oiscrlmina1ory) cornmitmeo\S or uodcrukiogs ha-Ve been made for tbe ~a.me and, in each case, the idcotlry
such standard,-scttil\g crg:l.l'iz:ition. Nolcia sball tJ~e its rc:>oon:ibtc ensuni that the
under the 2001 SULA archereby satisfied and discharged. The Parties further
,11rom1stion pro111dctl lo Qua)cnlD!TI in rci,poosc 10 Ql.raleom.-n's rcq u 1 1! accu.rale and c..omplelc to
acknowledge and agree that Nokia's license under Qualcomni's Early Patents (as
okJa's kn wlcdgc,
agreements entered
graot) anyinto (oror amended) between Qualcomm
gn11ted to any Third Pany with respec t to aoy or Ll:tc Desit,>oa ted Pat?;nts~ (c) Nok.ia has r101 g,anled (and
will not llce11ses other rights of ,my na1·11re in any of the Deslgooted andPatents a Third to anyPany Thtrcl after
the Effective Date and during the period of time following any previous audit
Party at illl)' time on or a/kc- Jul)' 2;2, 2008 orher than !hose granted uoder the Sonirn Agreement andunder
this Section 13. 1, and provided that such CPA Fina agrees to keep such information
CMCS Agreement (1n uch case as defined in Sect ion 6,1 above and in the form such agreements ex.istecl
as of the EO-ective Oate) and other than any licenses granted by- Nokia upon the exercise of unilateral
in conidence
oplio osand repon
(inclllding to Nokia
renewals) existing (an,donlyin thewhether
fom\ lheyQualcomm
e-xlsted) prio r to the has compied
Effective Date; (d) ortonorthe
complieduncoforccablc;
with the lemos
best o f Nokia"s of Section 4. S, and in the case of non - compliance,
lcriow1edge, none of the Designated Patc nls bas been adjudica
and (e) none of the patents. in lhe Designated P<1 te01 s is subject lo a royally- free licensing
te.cl to be invalid or only
the information
commillllent thai Qualcomo
or obliga.iioa as a resultwould of any have beenor36undertaklng
comroitmen1 Nokia /mQualcomm ad'c:. to a stao dards-sclliagConfidential
QUALCOMM BUSINESS SECRETS - HIGHLY CONFIDENTIAL HIGHLY
organ ization. Exce pt for the exp,ess fe prescotaUons and warranties in this S,:c;lioo 6 .6. I.hi:. D esignated
CONFIDENTIAL - ATTORNEYS
The Par1ies further' agree EYES thal tONLY QICE 00004253 Q2017MDL10
app ly fully 10 a ll _
Patents ace assigoed lo Q ual comm "as is.'' and Nokia di.sclaims all other represcnLations and wamml ics,
eJ1pn:ss or i.mplied, he disclaimers set forth iJ1 Sec1ion 9.2
00081238 CX7728
Oe:.ignaled - 036
Patcnts, exceµt JX0046
tlHd (i) Nuk.ia - 036 sball5 not
required
al low any to provide
Design.ated to Nokia
Psteot 10 be abandoned underorSection
4, 5 with disc
respect
lai mers u:ito ibe Third Pany license agreement thatreprl';sentalions
the auditors contend
o tborwi:;e lapse or c.xpire prio, 10 lhe assignroeol oft.he Oe;lgoaied Patents to Qualcomm, and (ii) tl,e
See1ion 9.2, solely <o tbe extent conflicring with the exprc~s 11nd warra.ol ies
created such pon -6.6,
in I.his Sec.tioo compliance.
do c ot O\/Crnde I.Ile The audits
ell.press will bea.pdconducted
represeota6ons wa.'7'anlies M!-1 fonh at the ui th.ispremises
Section 6-,6. chosen
by Qualcomm.Qualcomm Such audits representsmay ai;id wbe conducted
~rratits no more
that it will compl)' with allthan once(F).R.AND
applicab1e per calendar ((Fa.ir) year
and the costs
Reasonable. of each and Non-D such apdit, including
iscriminatory) undertakings or the CPA
other Fimm costs
lik.e u11der1a.Juogs madeand by Nokia fees, to will
:my be
paid by Nokia, valcss Qualcomm is in non compliance with
s1andMds -seuiJlg org_anizaLion prior to !he Effect ive Dale that are applicable to the Designated Patents.
pro..,ided 1ba1 any failure by Qualcomm 10 comply wi th any sucb undenaking prior lo the date that
Section 4S, in which
case Qualcomm
Qualcomm isshall, oolifit:din by addition
Nokia of such toUDdcrlaking
any other will retoedy
uol constitute toa which
breach ofNokia 1his Ag,eemenr ray bebyeolitled,
pay the CPA
Qualcomm.
Firm's reasonable costs and Å¿ees for such audi ! . Qualcomm shal
preserve7.and maintainWITT-IDRAWAL all relevant
OJ,' NOKJA 'S documents,
EUROPEAN COMMISSION books andCOMPLAINT records required for such
audits for a period of three (3) years after the end of each Giscal year of Qualcomm
Nokia will , within five (S) days ilfier rhe Exccuu on Date and u, wriung, withdraw its complain( lo
in which Lhe
such books
E uropean C omm andis sionrecords
in wbicb Nokia werealleges created. Lo thebreaches
I.hat Q ualcomm eveolEUthat Nokia's
competition 1:iw,auditors
and
répon to Nokia
promp1ly thata cop)'
provide: Qualcorum
of sucb written has not
withdra walcomplied
to Quakomm.with Section
However, 4. 5, Qualcomm
notwit.hstandlng anything to and
th<! contrary in Ihis Agreement, Nokia writ r,ot wai,..e any righ l~ i1 may ha"e bas.ed an any remedies lha1
Nokia agree to negotiate
the Ew-opea11 Como1i~sio,11jomay good impose faith lo determine
o n Qualco11'1J'11 in connection a confidential and reasonable
with HS curre1u in\/estigation or to
method for notifying
any actioo by Noloa Nokia of the
to eaforoe-any suchidentity of the
rcmed ,cs based on bThird
reach(es)Pany whose
of compelitioTI la w.agreement the
police, during
8. Nokia's normal
RESTJUCTIONS business hours,
ON DISCLOSURE OF INFORMATIONof Nokia's books and records
reasonably necessary 8.1
to confirm
Nokia<~ Financial To formation
that Nokia bas correctly calculated and reported
the Covered Product Revenue and to confirm the amount of royalties payable by
Nokia to finan
Qualcomm, The Partiesin each
agree case
(ba t in in accordance
the cour~e of performance under withthis theAgreement,
cial inforroa1ion a ssociated wilh tb e payme nt of royalL,es as required under this Agreement , which
terms of Nokia this willAgreement.
disclose
previous Qaudit underpu rsuantthis Section 13.only 2. 10Such audits will be subject tonecessary
a soparate
employees aod ageuts (including any independent ccn ified public accounting flfJJ) perfonning an aud il for
ualcomm to Scc1io11 13), and the e.x1en1 such <listlosure is reoso nab ly in
reasonable non -with
cor1nection disclosure
Qua lcomm·s agreeincot
exercise or en lbrccmenl to be or concluded betweenofNokia
11s righis, or _performance jts ubllgatiand ons,the
whether impliedly,
reasonab le e(fons byloestoppel,
provide Qualcomm or otherwise,
wjlh reasonable under
ad vance:any
wrillen patents
11olke 1hereof or other intellectual
and, if possible
property rights
under t.he owned,circu.msranccs, controlled,
an opportuni1yor otherwise
iv object 10 and to try licensable
lo prevent suchby either Party The
disclosure.
Agreemel, 9. as applicable,
REPRESENT ATlONS as if A.J'\/DsuchWirn.R.A.NTI
acts had£Soccurred after the Effective Date but
without the payment 9.1
of any further
Re.presentatiom and Wamntic s
consideration or royalties for such acts under this
Agreement. Notwithstanding the foregoing, Sections 1 and 4 of the Settlement
Agreement doQuslcorru:n
not cover any claims for patent infringement based on acis occurring,
here by rc:prese.nis and warrants to Nolda that (a) Q ualco1nm l.n corporatcd : (i) ls a duly
orgar.1ized cor;iora11011 i n good ~tending under lhe laws of the State of Delaware; (1i) bas all requisire
includingcorporate
the sale powerof products,
and authority oo or after
to enter into 1his theAgreement
Effective and Date 15. ASSIGNMENT
10 consum.mal- e \he Lransaotions 15. 1
Limited Assignment of Rights under Agreement Except as expressly provided in
contemplated hereby, and (iii) wil l ensure that all of i1s Subsidiaries comp ly will, th,s A.gree:men1
(including the gram of licenses to Nokia and the 11\Bkiog of non -T,itigatioo covenants tO Nokia and 11s
Sections suppl
4. 1. 1.and
1ers); 15. (I,) 3,
the and
execuuon 15.and4.delineithervery of llusPanyAgrcemem may assign
have been du Iythis Agreement
au1honzed or any
by ell requisite
right or interest
corporate acuon under on ns this
part .Agreement (an " assignment), without the other Party's
prior written consent, which couscot may be given or withheld al such other party's
sole discretion. Any allempled assignment in contravention of this Section 15. I shall
be void and ineflecuve. However, an assigament that occurs by operation of law as a
33 Nokia/Qualcomm Confidential
result of a Party bcing Acquired will not require the consent of the other party and
will be subject to Section 10. 1 or 10. 2, as applicable. Nokia / Qualcomm
Confidential QUALCOMM BUSINESS SECRETS - HIGHLY CONFIDENTIAL
HIGHLY CONFIDENTIAL - ATTORNEYS ' EYES ONLY QICE 00004255
Q2017MDL10 _ 00081240 CX7728 - 038 JX0046 - 038 5 15. 2 Assignment of
Patenus Neither Party may assign or otherwise release or transfer any of its rights
under any
QUALCOMM patents
BUSINESS SECRETSthat -are HIGHLY licensedCONFIDENTIAL or the subject of any non - Litigation covenant OICE 00004250
Hunder this Agreement
IGHLY CONFIDENTIAL - ATTORNEYS' unlessEYES such ONLYassignment, release, or transfer Q2017MDL is made10_0008 subject
1235
to the ful majotenance of all liceases and all oon - Liugation covenants grantedCX7728-033
under this Agreemeni. 15. 3 Assigrument by Nokia Nokia will be entitled to assignJX0046-033 in
writing its licenses and the non - Litigatior covenants protecting Nokia (and jis
suppliers) (and delegate its corresponding royalty payment and other applicable
obligations) set forth in this Agreement
case 5:17-cv-00220-LHK Document as 1439-2
to Subscriber Filed Tertowals,
01/25/19 Broadcast Page 35 of 45
Devices, Local Area Network Devices, Modem Cards, M2M Modulcs, and
Embedded Modules (all six together " Nokia's Subscriber Device Business " solely
for the purpose of this Section) to a successor to all, or substantially all, of Nokia's
Subscriber Device Business, provided tbal such successor and its Affiliates grant
royalty - free pon - Litigation covenants under their patents to Qualcomm of
equivalent scope as those granted by Nokia to Qualcomm under this Agreement 15.
4 Assigamot by Qualcomm 15. 4. 1 Components Qualcomm will be entitled to assign
in writing the non - Litigation covenants protecting Qualcomun (and its suppliers)
Under SectionNokia 5 with hereby respect
represents-to andComponents,
warran1s to Qualcomm Broadcast
Lbat (a) Noki,i Compotents
Corpora1io.n: (i)and Local
is a duly
Area Network Components all the together " Qualcomm's Components Business "
orgaT\ized corporac ion in good ;(anding uoder the laws of Finland; (ii) has ~ll requisite corporate powu
alld authority \Cl enter 11110 this Agreement aod to cons\lJl'\JDate 1be transa ctioos coolempla(cd hereby; aIJd
solely for the purpose of this Section) to a successor to all, or substantially all, of
(iii) will ensure that all of ils Subsidiaries comply with this Agreemeot (inch.1.ding 1be rnak.111g of no11-
Parties, that
scope are of anynecessary foror Nokia to upplement MediaFLO
(iii) a wananlyservices in its
pateot Ill force, (it) a warranty or rcprc.seatarion by either Party as to tllc validity. e nforceability, v.ilue, or
palccl, copyrignl, otbcr inlellcclual property righl; o r rc_prcsentat.iou thal
Subscriber Terminalssale,without
any manufocture, offering 10seeking from
sell , lease, use, Nokiaorany
import.a<ion, other licenses,
disposal wiJ I notnghts,
infringeor immunities
or w1U be
under any Nokia Patents. Further, co the extent that Qualcomm does not charge
free fro Ill infrinRemeot of pa1en1s, copyrights, or other intellectual property ng)ns of others (and it will be
the sole respoosibili(y of eacn Party to make such dere.rrni nation as is oecess11,ry with respect to its
Third Party suppliers
acqu 1si1 ion of licenses ofunderSubscriber
pa1ents and otherTerminals
int el lccruaJ for licenses
property of Third to the (iv)
Par1ie~): above software
an agreecneol to or
technologies, Qualcomm shall not charge Nokia for similar licenses
bring or prosecute actions or suits against Third Parties for i.nfri.ngeroen1 ; (v) an obligaflon to furni sh 3.ll)'
rnaoufactu.ring assistaoce or infonnatioo; or (vi) confcrrir1i any rigbl lo use (in advertising, publicity. or
to such software
or technologies,
otbenvise) any Oualcomm
name, trade naruc, will orbetradcrnarlc
entitled to other
of lbe assign Part)' in woring
o~ any the non
contraction, - Litigation
abbreviation, or
covenants protecting Qualcomm under Section 5. 5 with respect to content
simulation thereof.
broadcast 10.services ACQUISJTTON provided OF Ain the United States to MediaFLO USA ("MUI ", a
J>ART\'
Qualcomm Subsidiary as of the Effective Date), ir MUI ceases to be a Subsidiary of
In th1s Section I 0, 1bc term •· Acquis11.Jon'' (and vanat,ons. such as "Acquiredj means any
Qualcomm, provided
acquisition of a Party,that: () MUI
including and itsor Affiliates
(a) mergers consolida1ionsgrant royalty
1ba1 result - free
i.n a change liceoses
in tbc ultimate and
non - Litigation covenants
beneficial ownership under
of a majoriiy their
(more titanpatents to
fifty per cc.or) Nokia
o( 1be sharesof cquivalent
or olher securitiesscope
enrirlcd to vote for the e!c.:.rion of directors or other managing autJ10ri1y (b) the sale o r orhcr transfer to a
m lbe Pany as those
granted byThird Qualcomm to Nokia
Par1y of lhc bcTJcficial under
ownership of allthis
or theAgreement;
raajorily (more tJ1a.n and fifty(ii)
per Qualcomm
cent) of 1hc shares andor MUI
shall contique to offer
other securities in lheto Nokia
Party coli tie daccess
to vote for and
clcc1ionlicenses
of dirccJors or onolhcrcommercially
mc1ruiglng au1horlty; reasonable
or (e) rhe
terms and conditions to the versions of MediaFLO client software and other
sale of all or substantially al l of 1hc 11Ssels oft.be Party lo a Third PM1y .
technologies or JO . software,
I Acqui.-i1ionin ofeach
Oualcoro,.mcase that Qualcomm or MUI makes commercially
available to Third If Qualcomm lncorporated is necessary
Paries, that are Acquired, then for the Nokia
non-Lihgation 10 implement
covenants madeMediaFLO by NolJa
services in its Subscriber Terminals without requiring Nokia lo grant
he reund<:.r will remain in force and will continue 10 apply 10 Qua lcomm lncorporated any
(or the licenses,
survivi ng,
rights, orproducts
immunities undercov~redany NokiacoveJ\ilPatents. Further,
cumu(a1iveto thep1ice
resulting, or 01he1 successor en1i1y) and a ll o f ii~ Sub~id iancs, but will be Jimil cd 10 1be aru1ual sale5" of
a.nn services by such nt6 with a lotal sellin,g exteni tbatLban
no greater Qualcomun
1he
or MUI does not charge
total cumulative selling Third
price of Party suppliers
all corresponding of aSubscriber
producL<: nti ~erviccs sold Terminals
by Qualcomm during for licenses
the
Nokia / Qualcomun Confidential QUALCOMM BUSINESS SECRETS - HIGHLY
rwe!ve ( I 2'i mt,mh~ immediately before ihe date of the acqu isition plus ao an11uaJ growth rate of ten per
cent (10%) for ea~h year fhercafter d1.1ru1g the Tem1. Notwitbstaodlng rbe foregoi.og, >lok"ia will be
CONFIDENTIAL HIGHLY
entitled to 1.ermUlale CONFIDENTIAL
suc h ooo-L1 1igalion covenanrs made - ATTORNEYS
by Nokia if (a) the' Third EYES PartyONLY QICE
thal Acquired
00004256 Q2017MDL10 00081241 CX7728 - 039 JX0046 - 039 5 to the above
Qualcomm or any o f such T htrd Party'·s Affiliates Litigates based on aoy patents aga inst: (i) Nokia: (ii)
Nokia's customers., with r spect 10 producrs or services supplied by Nokia: or (iii) Nokia 's suppliers, wirh
softwaren;spr:ct
or technologies,
Lo products or services Qualcommsupplied to OT Nokia;MUI (as
and (b) such the ihirdcasePartymay{or its be) shall
Affiliale) doesnotno\ charge
Nokia for similar
ill)draw such licenses
Luigat ion withinto such ni,nctysoftware
(90) days after orreceiv-iog
technologies.
written noliceFor from clarity,
Nokia seekmg after such
such
,vithd.rawal. For clarity, it is tbe in1en11on of the rar1 ics rliar Nokia's Tights under rhis Agcccm,cnt will not
assigruncor Qualcomm
be adversely affci;ted bywill oot bonchit
any Acquisition from Incorporalc.d
of Qualcomm non - Liligalion. covenants set forth in
Section 5. 5 in respect of content broadcast services provided in the United States.
Further, if MUI is Acquired (as such lerro is defined in Section 10 and applied as if
Nokia/Qualcomm Confidential
MUT were still a Party), then the non Litigation covenants sel forth in Section 5S will
remain in force and will contiue to apply to MUI (or the surviving, resulting or other
successor entity), but will be limited to the annual sales of products and services
covered by such covenants with a total cumulative selling price 10 grealer than r-..f-the
total cumulative selling price of all corresponding products and services sold by MUI
during the twelve (12) months in mediately before the date of the acquisition plus an
annual growth
QUALCOMM BUSI NESSrate SECRETS often per cent
- HIGHLY (10 %) for cach year thereafter during the
CONFIDENTIAL QICETerm.
00004251
HNorwithstanding
IGHLY CONFIDENTIAL -the forcgoing,
ATTORNEYS' EYES Nokia
ONLY will be entitled to terminale said oon - 10_00081236
Q2017MDL Litigation
covenants madc by Nokia if (a) the Third Party that Acquired (as such term is CX7728-034
dcfined in Section 10 and applied as if MUI were still a Party) MUI or any of such JX0046-034
Third Party's Affiliates Litigates based on any patents against: (0) Nokia; (ii) Nokia's
customers, with respect to products or services supplied by Nokia; or (111) Nokia's
suppliers, with respect to products
case 5:17-cv-00220-LHK Documentor services 1439-2 supplied Filedto01/25/19 Nokia; and Page () Such 36 ofThird45
Party (or its Affiliate) does not withdraw such Litigation within sinety (90) days after
receiving written notice from Nokia scekang such withdrawal. 15. 5 Notice of
Assignment If either Parly makes an assignment under Section 15. 3 or 15. 4, it shall
promptly goofy the other Party of such assignment in compliance with Sectioo 20.
15. 6 Treatment of Royaltics upon Assignment Any assignment made pursuant to
Section 15. 3 OF 15. 4 will be effective only on a going - forward basis from the date
of the assignment. For example, and without limiting the generality of the foregoing,
any Sales made by the assigning Party before the date of the assignment will
continue to bel0.2 protected by the applicable liceases and non - Liligation covenants in
Acquisition of Nokia
provision or requirement)
)J.J (111) disclosure
Sl)LA to effect have - nade ngbes, and (iv)
disclosure with respect to the not to exceed royalty rates set forth in Section 5. 3 (in
No1witbi;1ancling anything to u,e contrary i.n lhc 2001 SULA, the 200l SULA between Nokia and
the mannerQualcommspecifici in Section
is 11.:rmioa1cd in 11s colin:ry,5. subject
3) . Prioronly lu to making
Sections 1 I.I and aul 1.2coumerated
above. disclosure to a
Third Party, the Party making such disclosure shall obtain the written agreement of
J2. TERMlNATlON
such Tbird Pany that such Third Party will not disseminate the information disclosed
regarding the 12. lensl of Ternlinulion
No this Agreement to any subsequeot Third Party. Notwithstanding
the above, in The do Parties.
eventacknowledge
shall either and auee Parly <hat,disseminate
wilh rl\e sole excep1 the ioo Terms
of SectionofJ2this .2 , uponAgreement
Nolda to
any Third Party that does not reasonably need access to such information. If either
ha ving paid the Lump Sum Fee to Qu-alcorn.m, lb.i s Agreement is nol subject lo te rminati on during il$
Party is required
wi-1b Section to anddisclose this Agreemeut wit:hio tlurtyor any daysof
Term. If Nokia fail;, lo pay the Lump Sum Fee in fu ll lo Qualcomm in a timely manne r in accordance
does noL cure the breach (30) itsh~ving
a·lter terms been or provisions
informed thereo f byby law.
order, or regulation of a governcocal agency or a court of competent jurisdiction,
Qualcomm, Qualcomm may terminate this Agreement a nd a ll of Nokia's surviving rights under the 2001
then such disclosing Party shall use reasonable efforts to provide the other party
SULA io their eutiret)' by wnlteo notice 10 Nolcia. For clarity, the fore.g oing termm a11 on right d~s nm
apply to a failure by Nokia LO pay an Addit.ioual P ayiu~nl (as dcftned in Section 3).
with reasonable advance written notice thereof and, if possible under the
circumstances, 12.2an Bankruptcy,
opportunity to object
Dissolution. to and to lry to prevent such disclosurc, The
or Liguidalioa
irrevocably coosenis to, and waives any objection to the jurisdiction of venge of the
Delaware Cours with respect to such dispute. In the case of a conflict between the
provisions of Section 5. 3 and this Section 22, Section 5. 3 will control. 42 Nokia /
Qualcomm Confidential QUALCOMM BUSINESS SECRETS - HIGHLY
CONFIDENTIAL HIGHLY CONFIDENTIAL - ATTORNEYS ' EYES ONLY QICE
00004259
QUALCOMM Q2017MDL10
BUSINESS SECRETS - HIGHLY _ 00081244 CON FIDENTIAL CX7728 - 042 JX0046 - 042 5 23. LATE OICE 00004253
HCHARGE Each Party
IGHLY CONFIDENTIAL may charge
- ATTORNEYS' EYES ONLY the other Party a late charge, withQ2017MDL cespect to any
10_00081238
amounts that the other Party owes hereunder and fails lo pay on or before the due CX7728-036
date, in an amount equal to an annual rate of the London Interbank Offered RateJX0046-036
plus five per cent (LIBOR + 5 %) . Por clanty, Qualcomm will not owe any late
charges under this Section 23 on any amounts that Nokia claims it overpaid to
Qualcomun under this Agreement.
case 5:17-cv-00220-LHK 24. ATTORNEYS
Document 1439-2 Filed ' FEES01/25/19 In the event
Page 38 of anyof 45
litigation between the Panics arising from or relating to this Agreement, the
prevailing Party in such action, as determined by the court, will be entitled to
reasonable allomcys ' fees as fixed by be court. 25. ENTIRE AGREEMENT This
Agreement supersedes the 2001 SULA (except for the provisions of the 2001 SULA
which survive and remain in effect as expressly provided in Section 11 of this
Agreement), the Ter Sheet (but not the remainder of the Settlement Agrecment,
which remains in full force and effect), and all other prior or contemporaneous oral or
written understandings between the Partics with respect to the subject matter hereof,
and constitutes,
required 10 providesolelyto with respect
Nokia under Sec tionproducts,
4,5 w ith respu:1 services,
to 1be Thirdor software
P arty sold or
lic ense ~greement that licensed
the
The cosl of each s uch audit will be borne ·b y QualcoOU'O, unless Sllcb aud it de1ermincs that Nokia
has underpaid the royalties hereunder by more than 1lu'ee per ecol (3%) dunng tile audit penod: in wrucb
c ase , Nok:in sha ll, in addition to paying 1he deficiency plus la1e payment charges, pay the accounting,
Jinn's re asonable cos1s.and fees for such aud it.
Nokia shalJ prescn,e an d ma 111lain lhe tx.ioks and records necessary for suc h ~udlts for a period of
1hrce 0) years a ft er 1hc cn<l ofeacb fiscal year for which the books and recor ds apply. provid(;d thal Noklil
will lllso presef'te .ind maintain the books and records necessary for any pending audit until sucb audit i~
conc lu ded hy I he Pan 1es.
CX7728-037
JX0046-037
case 5:17-cv-00220-LHK Document 1439-2 Filed 01/25/19 Page 39 of 45
14. MISCELLANEOUS
l4 .l Oppositions
The Parties acknowledge and agree Iha! the Senlerue111 Agseemeot requires both Parties to
wi1hdraw from. iwd no longer pa r1icipate i.n, any cvm:ntly pcodiog interference, rc-c:irnminatioa or othe.r
proceeding in which owoer.;hip , validity, scope, priority d.a1e, R.Od/or enforccabihty of a patem or patent
appli catio n of I.he other Pmy is being challenged ("Oppositions!'), proyidt:d that sui:h withdrawa l wjll not
lfmil \he Par1y's abi lity ro challenge t he validi ty ofltie patent later, if such pa lc:JJ I is Litiga ted against such
Party. Subject to !be p,ecerling semence, eacb Party shall wi!.bdraw from any pend1ng Opposition oftJie
other Pany's pa teols or pate:nl applic.a1ions no later titan fhi.rty (30) days after the Execution Da te ,
Except for the liceoses aod non•Lirigation covenants expressly sel forth il1 this Agreement, no
othcl', further, -or differenl licenses or non -Lit igatio n covenants or other righ ts or immunities a, e granted,
whether impl iedly, hy cstoppel, or OLhenv i; c. under afi y p~lenls or o lh er in 1.cl lec1ua l property righ ts
ow ned, contro lled, or othecw1selicem.able by either Pany. T he licenses granted i_ri th is Agreement do noL
include aDY rights 10 sublicense.
14 .4 Release
Notw11hs1a mli11g aoylhi.ng 10 the conln!ry in St:clion~ I and 4 of th<:: Sellh;;rrn.:nt Agreement. 1hc:
Par1Les acknowledge and agree that any claim~ uf pa1enl in fringe ment based on acts prio r to tbe Efrec1ive
Da te sha ll be treated as su bject to the licenses and e-0vcnan1S not to Lili.ga te set fo nh m Seclioru, 4 and 5 of
this Agree01ea1, a s appli cable, as if &uch acts had oce1.1 rred :ifter Lhe Effective Date but wnhout 1.he
payment of any further coo&ide.ration or roya lties for ~uch acts under th is Agreement. No twithstandiJlg the
foregoing, Scccioos I and 4 or 1hc Se1tlemeor Agreement do not cover any claims for paten ( infringen,eni
baserl on acls oc.cuning, 1ncl11d,ng rhesal e of prorlucts, oo or after 16e Effec tive 0~1e.
15. ASSJGN~a.N'f
Except as expressly pcov1deo in Sections •I. I.J. 15.J, and I 5.4, neither Pany may assign this
Agr<Zmeot or any right or i nterest undenJ1is Agreement (an "assignme.nt" ), without the other Party 's prior
wrilten consent , which consent may be giveo or withheld at such o ther Party's sole -discretion. Any
a1temp1ed assignment i.o contravenlion of lhis Section 15. 1 shall be void and ineffec.tive. J-lowcvcr, an
assigrunCtit that occurs by operation of Jaw as a resul( of a Party being Acquirc:d will ool rcquiJe the
consent u[{ho other J>any aod wiU be subjo.t:1 to Section I 0. 1 or l0.2 . as ~pp ljcable.
v'
QUALCOMM BUSINESS SECRETS - HIGHLY CONFIDENTIAL QICE 00004255
H IGHLY CONFIDENTIAL - ATTORNEYS' EYES ONLY Q2017MDL10_ 00081240
CX7728-038
JX0046-038
case 5:17-cv-00220-LHK Document 1439-2 Filed 01/25/19 Page 40 of 45
Nok:ia will be entitled to a.ssjgn in writing its llcellse.s and the non-Litigatior. covenants protecting
Nokia (~ nd its suppliers) (and dclcgau: its corresponding royalty payment and other applicable
obliga1ions) sel limb io this A.greement as to Subscriber Terroi.ollls, Broadca,t Oevii:es, Local Area
Ne1wor.k Devices, Modem Ca rds, M2M Modules, aod Emoctldcd Modu les (all six together "Nokia's
Subscriber Device Business" solely for the purpose of thi s Section) 10 a succ.:~sor to all , or sobslMLiaUy
all, of Nokia's Subscriber Device Business, provided tha t such s-ucce$SOr and its Affilial cs grant
royalty- free non -Li1igalion covenoots uodcr the ir pa tents to Qualcomo1 of equiva)eor scope as I.hose
granted by Nokia Lo Qualcomm under this Agreement.
l 5.4 , l Conu~onen ts
Qu alcomm will be eo.ti1Jcd Lo a&s1go. in wntmg the non-Litigation c.ovenants protecting Qualcomm
(and its suppljcrs) under Sect.ion 5 with respect to Components, Broadcast Cornpoo~nts aod Local /ue:a
Network ComponenlS (all three together " Qualco0)11'l's Compoo.f.llls Business" sote)y for the purpose of
lhis Sectioo) 10 a successor 10 all, or subs111111iaUy a ll, of Qualcomm 's Compon.e nls. business, provido<l lhal
such sucet:SSor and its Affiliares granl royal ly-free licenses and nori-Liti.gatioo coven!IJ1ts under lbeir
pa!eL11s lo Nokia of cq(uvalent scope as those s,-aru.e.d by Qualcomm lO Nol. ia under Lhis AgreemcnL,
Qualcomro shall offer Nok.ia access and licenses dunng the Tonn on conl.lncrcially r,;.asooable
term., arid condl1ions Lo the versions of McdfoFLO clicnf software and other tcch.no\ogks or software, io
e,ic h case that Qualc.omm make s co.rome1cially available lo T hi.rd Panics, that are 11ecessary fru Notis to
iroplement Me.di3l-'LO seivices in its Sllbsc11ber TerminaJs withouL seeking fiom Nokia any lic'!:n.es,
nghts, or imnnlrut-ies under any Nokia Patents. Fu t1her, <o (he ex.tent thal Qualcomm does not cbarg_e
Third P:u-ty suppliers or Subscriber Termina ls for licenses 10 the above so ftware or tecboo)ogics,
Qualcorn.rn sha ll not charg_e Nokia for similar licenses ro such software or tecb.nologies .
Qu alcomm will be enti1lc<l to as..~1gn in w1i1ing the non-Litiga1ion covenants protect lag Qualcomm
urider Sec t)on 5.5 wirh re.~pecl In conIen1 broadcasl services provided i.o tbe United States. to Mt:diaFLO
USA (" MUl '', a Qu alco mm Subsidiary as of the F.ffective Date). i f M1JT ce&ses 10 be a Subsi cl iary of
Qualcomm, provided that: (1) MU! a nd its Affiliiues .grnnl royalt y-free liceoses and n on-Litigation
covenants uncler tJ,eir patents to Nokia of equ1v3 lent s cope as those granted by Qualco mm to Nokia uoder
this Agreement; and (ii } Qualcomm aod Y1Ut shall contiou<> to olTcr lo Nokia access and licenses on
commercialty re.isonable terms a nd conditions to the versions of McdfaFLO clieot software and other
technologies or software. in each c.ase thal Qualcomm or MlJl makes commercially available to Third
Pan ics, !hat ate necessary for Nokia to iruplemer,t MediaFLO services in its Subscriber Tenui.nab wit hout
requiring Nokia 10 grant any Hci!:nscs, righ1s, or immon ities un.der any Nokul Parents. Forthet. (0 tbc
exrcot tbal QualooJTUl) or MUI does not c)Jbrge Third Pany suppliers of Subscriber Tennin~ls for licenses
10,t he above software or <echnoloties. Qu;ilcotnm or MUl (as the case may be) sha ll not charge Nokia for
similar licenses to such software or technologies.
for darity, afte, such assig:nmc.oL Qualcomm w :ll oot benefit from 1J01J-Li(igalion coverum rs set
forth in Scc1ion .'i.5 iD respect of c.onie11t brnadel!st serJic~ provided ui the Uruted Sti11es. Further, ,f MUI
i-s Acquired (as such terro is. defined io Section IO amt applied as if MUI were still a Partyt U1en the oon-
Litigatioo covenants sel forth in Seclion 5.5 will rerliaio in fo1ce and will conri.uue 10 apply 10 ~ I (or the
surv1v1J1g, resulting or 01her successor entity), but will be limited to I.he annual sa les of products ruid
services covered by such covena.ot5 w1lh a total C1lmul~1i11e sel li ng price no greater than 1he total
cumulative se!ling price of all correspood ing products arid 5orvices sold by MUI during !he twelve (12}
months immediately bcf01e the dale of the acquisition plus an annual growlJi rate of len per ceJ1l (10%) for
each yeas thereafter during 1he Tenn .
Notwithstanding lbe foregoi.Dg, Nokia will be entitled to terminate said oon-Li1iga1ion covenanli
made by Nokia if (a) the Th.ird Party lhl'll Acquired (a.s such. term is defined in Section l O and applied as if
MUi we re still a Party} Mtn or any of such Th ird Party's Affilietos Li tigates based oo aoy patents ag£inst:
(i) Nokia ; (ii) Nnkia'~ cuslOmers, with respect to pcoducts or services su p.p lied by Nokia; or (iii) Nok.ia"s
suppl iCN, with rcspecl 10 products o, services supplied 10 Nokia; and (b) such Third )>arty (or its Affiliate)
does not wi1hdraw such l.itig.irion within ninety (90) days after receiving wrinen notice from Nokia
seeking ru ch withdrawa l.
If eitheT PaJ1y makes an -assignment under Section J 5.3 Of 15 .4, it shall promptly ooGfy the other
Party of s uch a&signmt\l\Ci11 coropl iancc wilh Sectioo 20.
AJ:iy assjgnrnenl made pursuant to Scc1ion JS .3 or 15.4 ,1111t be effective only on a gowg-forward
basis from the date of 1be as;i_gnmenL Foe e~arople, and with.out lim lting the generality of the foregoing ,
any Sales 01ade by the assig,n rng Party befo re the elate of 1l1e assignment will cont inue to be pro tected by
the applicable li.ccoses and non-L1tiga1ion covenants in 1hfs A greement and if roya llies are owed for such
Sak.s, the assigning PaJty will be solely re sponsible for paying such royalties . In the case of royalties
subject to lbc Annual Cap in Section 4. ?.. the Annual Cap and the Quarterly Cap Amount for lhe relevant
year and qua.r1er will be prora1ed be1wcen Nolda and its assi~cc based 011 tbe ti\.U'l1bcr of days claps~
befo~ an d iodllding, aod the number of days rem.iining after, the dale on whlcb tb.e assign.a:,ec.1 was
made, uch th~, Qualcomm win receive the same amount II wou ld lia vc Ieccived if no assignmenl had
been 01ade And Sales made by I.he a~s1gnee alter the dare of theassignmenl had been made by Nokia .
16. NON-CIRCUMVENTlON
(j) Nokia and QuakoJIJ./11 agree 1ha1 tLey will uo t seek ro ci,c-urnvr.111 1.his Agreement in any
way during its Term; and
{ii) Nokia agrees Lhal ii will not, duri ng. the Tem1, claim or take the position (based 0/1 atty
legal , equitab le. or other lheory 01 pnociple of any nnture) in. any litigation, djspu1e. or
regulatory p roceeding tbat Nokfo rs no1 obligated to pay rile full amount of royalties owed
under S<:ctions 4 .2 and 4.3 (as specified in such Sections) of lbi:s A,g1ecn1en1 for Royally-
Rearing Products Sold by No1tia during the Term {ii bei(\g. undas1ood 1b;i1 if a good-fa ith
40 Nokia/Qualcomm Confidenlial
CX7728-040
JX0046-040
case 5:17-cv-00220-LHK Document 1439-2 Filed 01/25/19 Page 42 of 45
dispute arises concl!roing !he interpretation of lh.is Agreemco1 wilb respect co the amount
of royalties actually owed uoder Sec1ions. 4.2 and 4 .3. neither Pa.rty will be precluded
from <J<lvoc~1,ng its po~ition re.gard.ing 1ho ioterpretat ion offho roya lty oblig.alions in these
provis ions).
The Par1ies' rights and obligations under Sections 6 . 8, 9.2. 13 (for a penod of th ree (3) years after
lhe e.xplfation or tennination of lh1s Agreement), 14.3, 14.4, l 6 (solely wi1l1 TC$pec.l to acts occurring, and
products, software alld services sold or !i~ased. during the Term}, 19 , 20, 2 I, 22. 23, 24, 25 (solely wiib
respe<:c 10 aclS occuning, and products, softwate aod services sold or licensed, during tile Term), and 26 of
•his Agreemea1. as well as Nok.Ja •s obliga tio ns. to pay royaJ11es o n Sales of Roya lly- Be.aring Licensed
Products prior to such expiration or tcnnmatlon. will 511.(Vivc the OKpiratioa of the Term of I.he Agreement
or ilflY tenniJlalion oftWs Agrecrncnt..
Excepl as set forth b~ein, if any provision 10 this Agrecme!l l u held 10 be invalid or
unenforceable. the remaining portions will remain in effect and the Parties ,hall promplly negociate a
replacement provisi on which has the same economic effect.
19. NON-WAIVER
No waiver of the terms aod cood i1ions of this Ag1e(:meo1, OI' the fai lute of ei ther Party s1ric1ly to
enforce any SLlch 1eim or condition on o oc or more occasions, shal l be coni.trued as a waiver of the same
or of any other lerro or condition of this Agreemenl on any 01her occasion .
20. i'IOTICES
N l notices, requests, deD'lands, and otber communicanons reqLJircd or pennitted lo be given under
Ibis Agreement shal l be in writi.Dg and sh-al l be delivered 10 the Pany 10 whom notice 1s to be; given, by
fa~imile-, and confumcd by firs1 class mall, postage prepaid, and proper ly addressed as fullow ( in which
ca. e such notice .shall be dee med Lo have been du ly g iven on the day t he notice is fi rst n::ccivcd by lhc
Par1y) :
The above addresses aod numbers can be changed by providing 11,01ice to 1he 01.bei; Pany io
accmdance wi ll\ this Sect[on W .
41 Nokia/Qualcomm Confidential
CX7728-041
JX0046-041
case 5:17-cv-00220-LHK Document 1439-2 Filed 01/25/19 Page 43 of 45
Absent 1be wrinen consent of lhe orher Party and except as p1·ov,ded below and tn Section 5.3,
each Party sball keep t.he terms of this Agreemem collfidential and shall not disclose lhem to aoy Third
Party_
The Parties recognize that conain enumerated di.sclosUJes of certain terms of this Agreement may
be rcasoc_ably necessary for tho eajoyrnent of thei r rights and the performance of their obligalioDs
berel.l.tlder, and rb.&t such disclos111es will we require tbe other Pany's coosent. The enulJlera1ed
disc losures are: (i) rusc)osure 10 lhc extent reasonably necessary for anangjng any equity or debt
finan cing; (ii) di:sclosure eilher required by (or to rebut a claim under) a "most favored licensee" or "most
favored roya lty rate" provhion Or rc.qui cc r:nent in Third Pi!fly license agreemCJ.1 ts (including di~clnsures
i111ende<l 10 estabtisb lhe invalidity of a Third Pany·s c laim u11der such a prov:is10r> o r requirement); (iii)
disclosure lo effect have-made ogbts , and {iv) disclosure w11 respect 10 tbe not 10 exceed roya lly ra1es "SCI
forth Lil Section 5.J {in the manner sp0cificd io Scc1 ioo 5,3) . Priorto makiol?, ao enu merated disclosw-e lO
a Third Party , the Party ma.king suc-h disclo,-ur-c shaJI obtam 1hc written agrec1Dent of such Third Pan y that
such Third Party w ill not dissel'OJn3le the informauon disc lose d regarding the tM11s of th.is Agreemen1 to
any subsequea l Third Parry. Notwit.li stao di.n g lhe above, in oo event shaJJ either Party dissemina te the
terms of1hls Ai;reetr1en1 to any Thi.(d Pal1)' that docs not rea..!;ooabJy n eed access lo such information.
If e flil.eT Party is required 10 disclose this Agreemeut or any of its terms or provisions hy law ,
order, or regulalion of a govcrnmeat.al agency or a c ourt of compc1eJ11 juri~d ic1ioo , then such d1sclosin,g
Party shall use reasonable effor1s to provide the other Pany with reasonable advance wnUen 1101 ice thereof
and, i( possible1Jnder Lhe circum stanix s, ao opportunity to object lo and lo lry to prevent such disc)OSUic,
The Parties' obligations wider t.his Sec.lion. 21 wil l not apply to any information th at : (a) is or
becomes ~enerally avai lable lo the public UlJOUgh no wrong fiJ I ac t o r omi ssion on the part of the
disclos,ag Party; or (b) is rclca.sed from confi deotial lreatwCDt by 1he olber Party 's pnor wn11eo consenl
spectfica11y 1dentifying the information covered by s uc.h consent.
This Agreement is made and entered in,o i11 1be S tate of Delaware and will be governed by and
consmied and tnfo1c.ed in accorda.oce with Ilic laws of the Sla te of Defow;u-;: without regard to confl ict of
laws principles. The Patties agru. lh.11 a.oy dispure ans.in::, under or relating to this Agreco.1en1 shall be
litigated in !be Court of Chane.cry of the State of Deli1ware, pursu3Jl t 10 IO Del. C. § 346 . The ?artie;.
agree 10 rubm,1 to the juriwiction of the Court of Chancery of the St&te of Delaware aod w;iivc trial by
JUf'Y .
Notwithstanding 1be lbtegoin_g, if there is a determination that any djspute arising UDd er or
relatwg 10 this Agreement is no1 s ubject 10 IO Del. C . Seclion 3<16, the Pani.e.s agiee tbal: (i) if l11e
DelawaJe Chancery Court has subject matter jurisdictioll ove such d;spw e, then such dispu te will be
adJ udie111ed <rnly by, and will be subject 10 the e.xc lu sive Jl1risdic11on and venue or, tbe Delaware Cbaocecy
Oourt; or (1i) irlhe lJeta waJe Chancery Coun docs not bavo subject oiauer juri,dicl.Jon over such displlt-e,
tlJen suc h dispute will be adjudicaced only by, and will be subJccl lo the exclusivejunsdic1io11 and veoue
of, tbe S upcnor Court of Oelawore. a nd eacb l:'llrty hereby irrevocably coosen1s 10, and waives an)'
objeclio n 10, the j urisdJct,on or venue of the Dclaware Cour.s with respect to sue1, d ispute.
ln the ca c of a coo ruct beLween the provisions of See r ion S.3 and this Sec1ion 22 . Secuon 5.3 w1\I
COT\1.IOJ.
42 Nokia/QuaJcomm Coniidential
lo the eveot of any lit igat ion bc1wccn the Panics arising from or re lali"8 10 this Agreement , the
prevailing Pa.ny in such action . as deterrnmed by Lbe court. will be entit led 10 reasoDa!>Je anomcyi' f~ as
fixed by 1be coun.
This Agreement sup~sedes tbe 200 I SU!.A (except for the provisions of rhe 200 l SULA which
survive and remai.o io effect as ex pressly provided i.n Soclion 11 of this Agreement) , lhc TcflD Sheet (bU1
not the remainder of !he Schlccnc,ot Agreement, wbi cb remains in fuJl force and effect) , and all ot.herprior
or contemporaneous oral or written undcrstandmgs between the PartiC1i w ilh respect 10 tbe subject maucr
hereof, and cnilst iruies, .i;olely ,vi1h resptet produc{S, services, or sofiware sold or licensed during tbe
Term, lbc entire agreement oflhc Panics with respect to such subject matter.
26. AMENDM.ENTS
The terms and condit1cm~ of tbis Agreeme!ll can be modified or an\endcd ocly by a l"ritiug signe•d
byautbori:ted fepreseniatives of both Partiei; 1na1 ,--pecificalJy refers 10 this Agreement aod expressly s1ates
the Panies · int~cuon lo amend or modify 11.
The relationship between Qua lcorrun and Nokia is that of iodependcnt contractors. Qualcomm
and Nokia arc not jairu ven1urers. panners, prioclpal and agent. master and servant, o.- employe-r or
employee, and have no other relationship other tl)an indcpeodenL contracting parties.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be exe.a.tted, through their duly
authorized rep~en,ativc.s, as of Sep1ember 16, 2008 (the "Execution Date"), in two {2) idc11tical copies,
onc(l) for each Party.
SlGNATURE: ~~ ~
BY: _ _iLl<l<:A
____ R,11,.kNA-S
__ _ __ ·~ _
TITLE; _ _ \J_.P__.__J_f_()_
_ _ _ __