microsoft-google orange book offer countersigned on 11jan2013

7/29/2019 Microsoft-Google Orange Book Offer Countersigned on 11JAN2013

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EXHIBIT A

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Case 2:10-cv-01823-JLR Document 655-1 Filed 02/22/13 Page 1 of 8


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I1.264/AVC PATENT CROSS-LICENSE FOR GERM ANYThis Agreement is made as of _ w',3 , 2013 , by and between General instrument Corporation, a DelawareState Corporation, having a principal place of business in Horsham, Pennsylvania, U .S.A. (hereinafter "Gl"), andMicrosoft Corporation, a W ashington State Corporation having a principal place of business in Redmond,Washington , U.S.A. (hereinafter "Microsoft") (also referred to as "a party" respectively or together as "the parties").WH EREA S, GI claims that it is the owner of the Licensed GI Patents.WH EREA S, Microsoft claims that it is the owner of the Licensed Microsoft Patents.WHEREAS, GI has sued Microsoft and two Microsoft Affiliates for infringement of the Licensed Gi Patents beforethe Distr ict Court of Mannheim in Germany, f i le no. 2 0240/11, 2 0376/11,20373/11, 2 0387/11, now onappeal on docket no. 6 U 44/12, 6 U 45/12, 6 U 46/12, 6 U 47/12.WHEREAS, Microsoft submits this Agreement as part of its defense in the above-mentioned proceedings inaccordance with the "Orange Book Standard" decision of the Federal C ourt of Justice (Bundesgerlchlshof, BGH) of6 May 2009 (docket no. KZR 39/06) and the practice by the District Court of Mannheim (Landgerichl Mannheim),in particular the decisions of 27 May 2 011 (docket no. 70 65/10) , of 9 Decem ber 2011 (docket no. 70 122/1 I) andof 2 May 201 2 (in the proceedings mentioned above involving the parties to this Agreement) as expressed in theaccompanying letters to this Agreement which are hereby made part of this Agreement.WHEREAS, the District Court of Mannheim has indicated the Orange Book Standard requires Microsoft, whenproposing specific license fees in this Agreem ent, to set the license fees such that refusal by GI w ould be a blatantviolation of antitrust law.NOW, THEREFORE, Gl and Mic rosoft AGREE AS FOLLOWS:

EFFECTIVE DATE0.1his Agreem ent shall be effective as of its signing by GI.DEFINITIONSThe definitions set forth in this Article shall apply to the following terms wh en used w ith Initial capitalletters in this Agreemen t, its attachments, and am endmen ts hereto.1.1ffiliate - shall mean a G I Affiliate or Microsoft Affiliate, depending on c ontext.1.1.1I Affiliate - shall mean M otorola Mobility Holdings, Inc. and any com pany whichnow or hereinafter is controlled by Motorola Mo bility Holdings, Inc. Such entities shallonly be deem ed to be GI Affiliates hereunder for as long as such control exists. GIAffiliate includes in any event: Motorola M obility, Inc. and Motorola MobilityGermany GmbH.

1.1.2icrosoft Affiliate - shall mean any com pany which now or hereinafter is controlled byMicrosoft. Such entities shall only be deemed to be M icrosoft Affiliates hereunder foras long as such control exists, Microsoft Affiliate includes in any event: M icrosoftDeutschland Gmb H and Microsoft Ireland Operations Ltd.1.2greement - shall mean this license between G land Microsoft , including exhibits, attachments,amendments and modifications hereto.1, 3VC C odec shall mean any single product or thing w hich incorporates the full functionality ofSF I 1737775v.1

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both one AVC D ecoder and one AVC Encoder.1.4VC Decoder - shall mean a decoder used to decode AV C Video,1, 5VC Encoder - shall mean an encoder used to create AVC Video.1.6VC Stand ard - shall mean the video standard defined in ISO/IEC 14496 -10:2008, 4th Edition(2008-09-15) and any subsequent version or extension of this video standard; provided, however,that no subsequent version or extension of Such definition shall reduce the scope of any definitionof the AV C Standard imm ediately prior to the delivery of any such subsequent v ersion orextension,1.7VC V ideo shall mean video encoded in compliance with the AVC Standard.1 ,oogle Acquisition Date shall mean M ay 22, 2012, the date of completion of the acquisition ofMotorola Mobility Holdings, Inc. (and therefore GI) by Google, Inc.1.9oogle's AVC Patent Portfolio License shall mean the AVC Patent Portfolio License betweenGoogle, Inc. as a licensee and MPEG.LA, LLC as licensing administrator,1,10icensed Cl Patents - shall mean DE 6 9232 063 , which is the German part of EP 0538667 BI,and DE 69425919, which is the German part of i3P 0615384 B 1,1.11icensed Microsoft Patents - shall mean:

DE 6993 7462, which is the German part of EP 113593 4 BI;DE 69941964, which is the German part ofEP 1853069 Dl;DE 603 11231, which is the German part of EP 1468566 BI;DE 603 10368, which is the German part of EP 1468567 B1;DE 603 32175, which is the German part of EP 1753244 - 1 ;DE 20222025; andDE 20222026.

1.12icensed Product- shal l mean any product that contains an A VC Decoder or AV C C odec , Thisincludes hardware devices including an AVC Decoder or AVC Codec. This also includessoftware where installation of such software on a computing device would create an AVC Decoderor AVC Codec.1.13ld Product - shall mean a Licensed Produ ct that has been made o r sold by 01 or G I Affiliates, orby Microsoft or M icrosoft Affiliates, prior to the signing of this Agreement. Old Product alsoincludes a Licensed Product that has been made or sold by Skype Communications, which is nowa division of Microsoft, prior to the acquisition of Skype Com munications by M icrosoft.

2.ICENSE GRANT2,1icensed Products. Subject to the terms and conditions of this Agreement, GI hereby grants toMicrosoft (including its divisions, e .g, Skype) an d M icrosoft Affiliates a royalty-bearing,nonexclusive, nontransferable license under the Licensed GI Patents to make, have m ade, sell oroffer for sale in Germ any Licensed Products and for the importation into, use and possession ofSFI 1737775v,I

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such Licensed Products in Germany. Subject to the terms and conditions of this Agreement, forLicensed Products before the Google Acquisition Date, Microsoft hereby grants to 01 and GlAffiliates a royalty free, nonexclusive, nontransferable license under the Licensed M icrosoftPatents to make, have m ade, sell or offer for sale in Germany Licensed P roducts and for theimportation into, use and possession of such Licensed Products in G ermany. Subject to the termsand conditions of this Agreement, for L icensed Products after the Google Acquisition Date,Microsoft hereby grants to GI and GI A ffiliates an option for a royalty-bearing, nonexclusive,nontransferable license under the Licensed M icrosoft Patents to make, have made, sell or offer forsale in Germany Licensed Products and for the importation into, use and possession of suchLicensed Products in Germany. NO OTHER LICENSE iS GRA NTED IN THiS AR TICLE 2.1 ,BY IMPLICATION OR OTHERWISE.2.2ubltcenses. An assignment of the license or granting sub-licenses under the Licensed GI Patents

by Microsoft is only permissible with written approval of GI, A n assignment of the option forlicense, the license or granting sub-licenses under the Licensed M icrosoft Patents by GI is onlypermissible with written approval of Microsoft.2.3cope ot 'License Grant. Notw ithstanding anything to the con trary herein, all l icenses grantedunder this Agreement are lim ited to a field of use of processing for the AVC Standard.ROYALTIES AND PAYMENTS3. 1oyalties for Licenses under the Licensed G I Patents. For those licenses in Article 2 hereofunder the Licensed GI Patents, Microsoft shall pay to GI, throughout the term of this Agreementfor such periods in which any of the Licensed GI Patents is in force, the applicable royalties asfollows:

3.1.1icensed Products before Googte Acquisition Date. The royalty for the licensegranted pursuant to Article 2.1 hereof upon the manufacture or sale in G ermany, beforethe Google Acquisition Date, for each computing device containing an AV C Decoder orAVC Codec provided by M icrosoft or a Microsoft Affiliate (each such device is referredto as a "U nit"):

Unit Salesoyalties Payable perUnitAll Units up to 10 m illion Units per fiscal yearEurocents per UnitAll Units above 10 m illion Units per fiscal yearEurocent per Unit3.1.2icensed Products after Google Acquisition Date. The royalty for tire license grantedpursuant to Article 2.1 hereof upon the manufacture or sale in G ermany, not before theGoogle A cquisition Date, for each Unit provided by Microsoft or a Microsoft A ffiliateshall be set in a manner consistent with A rticle 8.3 of the Google A VC P atent PortfolioLicense. The royalty shall be the part of the "Licensors' per patent share o f royaltieswhich are payable pursuant to A rticle 3" that is attributable to the Licensed GI Patents.This royalty is @ 2100.00 per fiscal year per Licensed G I Patent.

3 .2oyalties for Licenses under the Licensed Microsoft Patents, For those licenses in A rticle 2hereof under the I..icensed Microsoft Patents, Gi shall pay to Microsoft, throughout the term of thisAgreem ent for such periods in which any of the Licensed Microsoft Patents is in force, theapplicable royalties as follows:3.2.1icensed Products before Google Acquisi tion Date, The l icense granted pursuant toArticle 2,1 hereof upon the manu facture or sale in Germany, before the Goog leSri 1137775Y.1

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Acquisition Date, for each Unit provided by G I or a 01 Affiliate, is a royalty free license.3.2 ,2icensed Products after Coo gle Acquisition Date. If GI exercises its ption for alicense under Article 2.1 for Licensed Products after the Google Acquisition Date, theroyalty for the license granted pursuant to Article 2,1 hereof upon the manufacture or salein Germany, n ot before the Google Acquisition Date, for each Unit provided by GI or aGI Affiliate shall be as follows.Unit Salesoyalties Payable perUnit Per LicensedMicrosoft PatentAll Units up to 7,000 Units per fiscal year,0 Eurocents per Unitper Licensed MicrosoftPatentAll Units above 7,000 and up to 350,000 Units per.2 Eurocents per Unitfiscal yearer Licensed MicrosoftPatentAll Units above 3 50,000 Un its per fiscal year.1 Eurocent per Unitper Licensed MicrosoftPatentBut in no event shall the royalties payable be greater than 2100.00 per fiscal year per LicensedMicrosoft Patent.

3 .3ld Products Provided by Microsof t , For al l comput ing devices containing anVC Decoder orAVC Codec provided by Microsoft or Microsoft Affiliates, which were made or sold before theexecution of this Agreement, w ithin I month after the execution of this Agreem ent, Microsoftshall pay 01 a one-time payment for the L icensed Gi Patents. Any back royalties shall bearinterest, compounded m onthly, at the lesser of ten percent (10 %) per annum or the highest interestrate pennitted to be charged by GI according to the German C ivil Code (Bf]rgerlichesGesetzbuch).

3.4ld Products Provided by 01. For all computing devices containing an AVC D ecoder or AVCCodec provided by Cl or G I Affiliates, which were ma de or sold before the Google AcquisitionDate, GI has a royalty free license to the Licensed Microsoft Patents under Article 3 .2.1. For allcomputing devices containing an A VC Decoder or AV C Codec provided by G I or GI Affil ia tes ,which were made or sold between the Google Acquisition Date and the execution of thisAgreement, w ithin 1 month after the execution of this Agreem ent, if GI exercises its option for alicense under Article 2.1, GI shall pay M icrosoft a one-time payment for the Licensed M icrosoftPatents according to Article 3.2.2.3 .5ayment of Royalties by Microsoft Pursuant to Article 3.1. Royalties payable ursuant toArticle 3.1 of this A greement shall be paid on ly for such periods in which at least one of the

Licensed GI P atents is in force. Royalties are not payable for any period in which n one of theLicensed GI P atents is in force. Under Article 3.1.2, royalties are payable for a given Licensed 01Patent only when that Licensed C l Patent is in force. Where the patent is not in force for a fullfiscal year, payments will be reduced proportionally. Royalties payable pursuant to Article 3.1 ofthis Agreement that accnte after the latest signature date specified on the final page of thisAgreem ent shall be payable on a prorated basis by Microsoft to GI semiannually as measured fromsuch signature date to the last business day of each six-m onth period (or fraction thereof) endingJune 30 or D ecember 3 1 thereafter, for Licensed Products licensed pursuant to Article 2.1 whichare made in Germany or sold in Germany during that period ending June 30 or December 3 1.

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3 .6ayment of Royalties by Cl Pursuant to Article 3.2. If GI exercises its option for a licenseunder Article 2.1, royalties payable pursuant to Article 3.2 of this Agreement shall be paid on ly forsuch periods in wh ich at least one of the Licensed M icrosoft Patents is in force. Royalties are notpayable for any period in w hich none of the Licensed M icrosoft Patents is in force. If Cl exercisesits option for a license under Article 2.1, under Article 3.2,2, royalties are payable for a givenLicensed Microsoft Patent only when that Licensed Microsoft Patent is in force. Where the patentis not in force for a full fiscal year, payments will be reduced p roportionally, Royalties payablepursuant to Article 3 .1 of this Agreem ent that accrue after the latest signature date specified on thefinal page of this Agreement shall be payable on a prorated basis by Cl to Microsoft semiannuallyas measured from such signature date to the last business day of each six-month period (or fractionthereof) ending June 30 or Decem ber 31 thereafter, for Licensed Products licensed pursuant toArticle 2.1 which are made in Germany or sold in Germany during that period ending June 30 orDecember 31 ,3 .7ayments U pon T erminat ion o r Expirat ion. W ithin sixty (60) days af ter the effect ive date oftermination or expiration of this Agreement, M icrosoft shall pay GI any and all amo unts that aredue pursuant to this Agreement as of the effective date of such termination or expiration, and GIshall pay Microsoft any and all am ounts that are due pursuant to this Agreement as o f the effectivedate of such term ination or expiration.3 .8orm of Paym ent. Any paym ent made by M icrosoft under the provisions of this Agreemen t shallbe made In Euros and by w ire transfer to the account designated by G I in writing to Microsoft orother means 01 shall, in its sole discretion, find acceptable. Any paym ent made by G I under theprovisions of this Agreement shall be m ade in Euros and by wire transfer to the account designatedby Microsoft in writing to G I or other means M icrosoft shall, in its sole discretion, find acceptable.3 .9axes. Microsoft shall be entitled to withhold from any p ayments hereunde r the withholding taxes(if any) that are to be withheld pursuant to applicable tax legislation. GI shall be entitled towithhold from any payments hereunder the w ithholding taxes (if any) that are to he withheld

pursuant to applicable tax legislation.3.10reedom to negotiate a new roya lty rate. The parties are free at any time to negotiate a newroyalty rate, or have a new royalty rate determined by a Court of Law , arbitral tribunal, an antitrustauthority or independent third-party charged with giving a binding opinion.4.CCOUNTING4.1icrosoft shall comply with adequate and orderly accounting principles and shall keep properbooks of account, show ing all details necessary for the calculation of royalties according to Article3 above.4. 2f GI exercises its option for a license under Article 2.1, GI shall comply with adequate andorderly accounting principles and shall keep proper books of account, showing all detailsnecessary for the calculation of royalties according to Article 3.2,2, unless GI pays the cappedamount per fiscal year per Licensed M icrosoft Patent.,4. 3f GI exercises its option for a license under Article 2.1, unless GI pays the cap ped am ount perfiscal year per Licensed M icrosoft Patent, for Licensed Products sold by G I or GI Affiliates inGermany after the signing of this Agreement, GI shall render the account on any sold LicensedProduct, shall calculate the royalties due according to A rticle 3 .2.2 for the related fiscal half yearon the basis of the account and shall provide Microsoft with a respective payment of royaltieswithin 60 calendar days after the end of each fiscal half year.4.4fter prior written announcement, Cl may, once a year during the customary office hours ofMicrosoft, have the records and books of account of M icrosoft which relate to royalties paid under

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this Agreement inspected by an independent auditor who - by reason of his profession - is boundby an obligation of confidentiality. The auditor shall only inform GI an d Microsoft of the outcom erelating to the account statements, and is not entitled to comm unicate any further information.Should the inspection reveal errors to the detriment of GI, any resulting amou nts shall be payableby M icrosoft without delay. Microsoft shall only reimbu rse GI for the costs of the inspection if thedifferential amount is at least 5% to the detriment of 01, otherwise GI shall bear the costs of theinspection.5. REPRESENTATIONS AND WARRANTIES

5.1I hereby represents and warrants that it has the right to grant to Microsoft and MicrosoftAffiliates the rights, licenses and release granted under this Agreement for the Licensed GIPatents, and that there are no agreements, assignm ents or encumb rances that affect the ownershipor control of the Licensed Gl Patents or which would restrict the rights, licenses and releasegranted hereunder.

5.2icrosoft hereby represents and warrants that it has the right to grant to GI and G l Affiliates therights, licenses and release granted under this Agreem ent for the Licensed Microsoft Patents, andthat there are no agreem ents, assignments or encum brances that affect the ownership or control ofthe Licensed M icrosoft Patents or which wo uld restrict the rights, licenses and release grantedhereunder.5.3n case of a sale or assignm ent of the Licensed Gi Patents, the rights of Microsoft and M icrosoftAffiliates will remain unaffected, cf. Para. 15 III of the Germ an Patent Code (Parentgesetz).5.4n case of a sale or assignm ent of the Licensed M icrosoft Patents, the rights of 01 and GI A ffiliateswill remain unaffected, cf. Para, 15 111 of the Germ an Patent Code (Patentgesetz).

6. CONFIDENTIAL INFORMATION6.1his Agreement shal l be handled as confident ial informat ion, subject to any agreemen t betweenthe parties governing the handling of confidential information. Unless required by law, or w ith theexpress written consent of the other party, or subject to said agreement between the partiesgoverning or in the situations described in Article 6.2, the terms and conditions of the Agreemen tshall not be disclosed to any third party.6.2n any event, Microsoft and Gi are entitled to submit this Agreement in the infringementproceedings before the Higher Regional Cour t of Kar lsruhe in Germany, f i le no. 6 U 44/12, 6 U45/12, 6 U 46/12, 6 U 47/12, in proceedings before a U.S. court, and in proceedings before anyantitrust authority.

7. TERM AND TERMINATION.7.1erm. Unless otherwise terminated as exp ressly provided in this Agreement, this Agreement shallremain continuously in effect until the last of the Licensed G I Patents or Licensed M icrosoft

Patents expires or is no longer enforceable.7.2ermination. This Agreement, including future paym ent obligations under Art. 3 of thisAgreem ent, shall terminate immediately if, by final decision of a court of law, the Licensed G iPatents or the Licensed M icrosoft Patents are held invalid or unenforceable. If such a decisionapplies only to one of the Licensed GI Patents or Licensed Microsoft Patents, the Agreemen t shallterminate immediately with respect to that patent and shall remain in effect for the other LicensedGI Patent(s) and Licensed M icrosoft Patents not held invalid or unenforceable. GI shall have theright to immed iately terminate this Agreemen t if Microsoft initiates a nullity action against any of

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the Licensed GI Patents.7.3efunds . Even if this Agreement is terminated, no refunds of any kind will be due to Microsoftfor royalties already due or paid under this Agreement, and Microsoft agrees to pay in accordancewith Article 3 an y unpaid royalties due or incurred under this Agreemen t at the time thisAgreement is terminated, Even if this Agreement is terminated, no refunds of any kind will be dueto GI for royalties already due or paid under this Agreem ent, and GI agrees to pay in accordancewith Article 3 an y unpaid royalties due or incurred under this Agreement at the time thisAgreement is terminated.8.ISCELLANEOUS PROVISIONS.8.1he Agreement is governed by and construed in accordance with German law without regard to itsrules of choice of law.8,2he Mannlucim District Count of Germany shall have exclusive jurisdiction for any and all disputes

arising from or in connection with this Agreemen t.8.3n the event of any dispute or differences between the parties in respect of any right, obligation orliability of any party under this Agreement, including any dispute regarding the validity orinvalidity of this A greement or any of its provisions, the parties shall use their best efforts to cometo an am icable resolution.8.4hould any provis ion of this Agreement be invalid or unenforceable , the remaining provisionsshall remain valid. In place of an invalid or unenforceable provision, a valid provision whichconics econom ically closest to the one intended by both parties is deemed to be agreed upo n. Thesame applies in case a provision has been inadvertently omitted.8.5ny changes and m odifications to this Agreement require written form. This also applies to thisprovision.

General Instrument C orporation/

B y:Date: ~ `~~~

Microsoft' ionDate:

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microsoft-google orange book offer countersigned on 11jan2013

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