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`Case: IPR2018-01592
`Patent No.: 9,320,122
`
`EXHIBIT 1018
`
`PRIME WIRE & CABLE, INC.
`
` Petitioner,
`
`v.
`
`CANTIGNY LIGHTING
`CONTROL, LLC.
`
` Patent owner
`
`JASCO PRODUCTS, INC.
`
` Licensee
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
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`License Aqreement
`WHEREIS Cantigny Lighting Control, LLC fC,JANIIGNY), havirg a pnncipal place of
`business at 2018 Dorsd ttrive, Wh€aton,
`lL @189, wishes to grant to Jasco PrductE Cgnpany
`fJASCO-), having a gincipal pl@ of business at 10 E Memo*al Rd., Okhhoma G:ity, OK 73114,
`a license for US Pateats 9226,373 and 9,320.122 fUCENSED PATENT$). afd VYFIEREAS
`JASCO wishes to iurchase from CANTIGNY 6uch liense, NOW THEREFORE they agree as.
`follows:
`l. lnitial License Grant
`ln consideration for the payments sot forlh bGlmr, CANTlGl.,lY grants to JA€CO, a non-
`transigraHe, norFassignable license for the UCEilISED PATENTS, to make, have made. u6e, sell,
`o$er fsr sab and import products ueing at bast ofle chim of one or more of the LIGENSED
`PATENrS GICE!.ISED PRODUCTS) amrdirg to thefolhying temsr
`0 JASCO shall pay starting with sales on Jrnuary 1,2A17, a royalty of:
`(a) of Net Sales for existing and tutire LTCENSED PRODI,JCTS usirg IICENSED
`PATENT 9,226,373-
`(b) of l,let Sales for existing and future LICENSED PRODUCTS usirg LICENSED
`PATENr 9,320,122 (includirg future products that include dusk and dawn settings thd
`use the LICENSED PATENT 9,32O,1?2t c{her than LICENSED FRODLJCTS tH are
`referend in (c) or (d) below.
`(c) of net sales for LICENSED PR@ucIs that are Lot / TIER PRoDUCTS using
`LICENSED PATENT 9,320,122. LOW TIER PRODUCTS are hbh.volume, low 6st
`dug{n type produds sold to supplemer* produds fucribed in @) above ar}d having
`futtons and ttlrer or.itlets) le;ding to
`redued hardwere fudures (sud| as feurer pes€,t
`lower pst prduc,B relatfue to the otter Froducts despribed in (b)-
`(d) of Nd SaB for LICENSED PRODUCTS thst integrde the use of UGEMiED
`PATENT S,320,122 into JASCO lghting proOucis with LED lbht sources. For instsnce,
`ENBRIGHTEN CAFE LGHTS would be ociTqEd by this section $eUId they integrate
`tec+rnolqy corrgred by the '122 Paler*..
`(ii) The license to JAS'CO of the LICENSED PATENTS is exdusive. HowEver, lf JASCO slBll
`pay CAI.ITIGNY lss tran
`any cairndar y€trfur all LICENSED FRODUCTS for
`which a UCENSED PATENT appliss, tEn BE tiEense for ftat LICENSED PATENT sfiall
`automatically bsromo a non-exdusi\re license. For clarry, at present, there are two grEuF
`of products s$id to the minimums, those whicti are the subje<* of the liense of the 373
`Patent, and those whic-h are the subFct cf the ficense of the '1 22 Patent ThE Perti6 agree
`to total
`in a €hndar
`JASC€ may pay GANTET{Y arry additional amnmt nece€sary
`year sl either LICENSED PATENT, and maintain excft.eMty on the LICENSED PATENT, by
`eending the payment.to CANTIGNY or before January 30e following the applicable ca{endar
`Year. '
`(iiD lf JASCO shall pay CANTIGNY leEs thel
`in any cdendar year for a[ LICEhISED
`PRODiJCTS f6 rryhict a LICENSED PATENI amIcs, CANTIGNY will have the osion to
`terminate the license for that LICENSED PATENT by providing written notiae to JASCO of
`
`1
`
`Case 5:18-cv-00044-RJC-DSC Document 1-5 Filed 03/14/18 Page 1 of 8
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`EXHIBIT 1018Page 1 of 8
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`

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`such teiminatibn, which shail be effective immediately upon receipt. Uiron such terinination,
`JASCO shall have the rpht to ell off any existing inventory d any LICENSED PRODUCTS
`for whictr such LICENSED PATENT applies subJect only to its obligation to Fy royatties
`thereon at the appropriate rate, but shall have no otter rights (including rights to make, have
`made, or any other rights) under such LICENSED PATENT.
`
`ll. License Grant for Future Patents
`O Cantigny agrees to provide to JASCO, within 30 days of the filing, the pdent rylication
`for any new patent applications related to lighting or lighting cor*rol products and travirE a
`priority datE aft6r the Efisctive Date d this {grBem$t
`
`(ii) For any new patent outside of 100 Series family of patents that grants after the
`EFFECTIVE DATE of this Agreement, CANTIGNY shall notify JASCO of the new patent within
`30 daF of granting, and JASCO shall have a nght of first refusal for a period of 60 rhys afrer
`the notiflcaiion of the patent granting to take a license subject to the terms below for the new
`pateht by informing GANTIGNY in vrriting, at which point the patBnt will become a new
`LICENSED PATENT. A patent 'in the 100 Series family c{ patents' is any patent that claims
`priority, direc'tly or indiredty, to US Patents 8,344,666, 8,34,667,and8,4$,2tr3.
`(a) JASCO shall pay a royaEy of of net sales for UCENSED PRODUCTS using one or
`more new LICENSED PATENTS that are added to this Agreement pursuantto tle riBht
`of tirst lEfu3al oplion, unless otherwise negotiated and agreed to by the Parties.
`Horrever, if a LICENSED PRODUCT use6 PATENT 5,320,122 and also uses one or
`more new LICENSED PATENTS, JASCO shall pay a royalty of of Nat Sales for the
`LICENSED PRODUGT, unless the LICENSED PRODUCT uses at least one elaim ol
`one or more of the new LICENSED PATENTS direc{ed to a numeric keypad or a global
`positioning system (GPS) fedure, in which case JASCO shall pay a royalty of af
`Net Sales for the LTCENSED PRODUCT.
`
`(b) The license to JASCO of the netr LICENSED PATENT shall b€ exrlusive. Horcver, if
`JAS9O shall pay GANTIGIiIY less than
`in any twefue.monfi period beginning
`six months aner JASCO er(ercises it option to lice;E a new LICENSED PATENT for
`all LICENSED PRODUCTStorwhictthe nelvLICENSm PATENT applies, the tiense
`for that new LICENSED PATENT shall automatically become non€xdusive.
`(c) H JASGO shall pay CANTIGNY less than
`in any twelve'morth period @inning
`six.rnonths afler JASCO exercises its option to license a new LICENSED PATENT for
`all LICENSED PRODUGTS for which the iEls UCENSED PATENT applbs,
`CANTIGNY will have the option to terminate the license for that new LICENSED
`PATENT by providing written notice to JASCO as set forth above.
`
`lll. Pdent Mar*ing
`JAS@ agees to mark each UGENSED PRODUCT for which a lioense is granted under this
`Agrcernent with the applkable patent number or numbers ot the LIGENSED PATENT(S). .IASCO
`is not requircd to mark LISENSED PRODT CTS that have already b@n manufactured q ln the
`proc€ss of b€ing manufactured as d ths Efieciive Date.
`
`Case 5:18-cv-00044-RJC-DSC Document 1-5 Filed 03/14/18 Page 2 of 8
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`EXHIBIT 1018Page 2 of 8
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`

`

`tV. Royalty Payments
`
`JASCO shall provide to CANTIGNY complete and accurde quartedy reports by email to:
`john. king@kinglawoffce.com lyithin 30 days after each Calendar Quarter ending rrvfth the lastday
`of Marcfi, June, September and December. Royalty paymefis are due for each quarter at the
`sarne time as each quarterly reprt ard shall be made by wire transfier to
`
`. JASGO shall provide
`to CANTIGNY within 30 days of the signing of this Agreer*e.nt, an advanc€ payment of
`which shall be applied against rofaltles due in 20'17.
`
`Each quarterly report shall state:
`
`(a) the LICENSED PRODUCTS to which each LICENSED PATENT applies.
`
`(b) the nurnber of eaci model of LICENSED PRODUCT sok* or otherwise disposed of by
`JASCO during the Calendar Quarter with retpect to wtri0tr tte report is due, fid tE Gross Seles
`associated therewith;
`
`(c) the l,let Sales for the Calendar Quart€r with respec, to whbh the report is due- Net Sales
`shall be ddined as the total salee sf each model of LICENSED PRODUCT sold or otherwise
`dbposed of by JASCO during the Calendar Quarter lesa any r€turnsr promotions or discounts;
`and
`
`(d) the total doltar amount due based upon the royalty rate for the LICENSED PRODUCTS
`soid or othencise disposed of by JASCO.
`
`V. General kovtsions
`
`This Agrebrnent shall be mn'strud in accoldance with the launs of the State of lllinois without
`reference to coiflicts of larls gin$tss-
`
`This Agreement has an EFFECTIVE DATE of the last to sign below
`
`JASCO shall maintain accurate Bcords of aI sales of LICENSED PRODCUTS, and CANIGNY
`shall have the right to conduct an annual audit of the record's to ensure that a payment for sll
`royallies dr.e is made. CANTIGNY shall provide advanc€ notic€ of trvo weeks for the audit ln the
`evenl that an ardit 6hall shorr/ a discrepancy of more than 5%"n the amount of royalties due, the
`audit shail be at JASCO's cmt, o$sryise it shall be at CA$ITIGNYs cost-
`
`JASGO agre* to indemnify, defend and hold CANTIGNY harmbs firom and eainst aft daims
`(including, witho0t limltation, personal injury or product liability chims), slits, losses and danagee,
`arising cxrt of JASCO's manufacturc, usei sale, or other disposa! oJ LICENSED PRO.DUCTS, or
`out of any alhgedly unauthorized qse of any trademafi, seryiee mark, pdent, copyight, prooess,
`idea, or in€thod by JASCO or those actirg under its authority.
`
`JASCO shall have the rtght, but not oblQation, to bring an adion for patenl infringemer* b@ed
`upon a UCENSED PATENT for wtiich .JASCO has an exclr.{sive license. CANTIGNY agre€s
`to
`provide reasoRable assistane in suci aclion, but shall not be obllgated to [ring the action or to
`3
`
`Case 5:18-cv-00044-RJC-DSC Document 1-5 Filed 03/14/18 Page 3 of 8
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`EXHIBIT 1018Page 3 of 8
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`

`

`bear any cost assooiated wittr such ac{ion. ln the event that such a lawsuit shall rcsult in the filing
`of an IPF or other pcstgrant challeng€
`to any of tho LICENSED PATENTS, JASCO agees to
`defend such challenge at its sole cost. JASCO shall keep any sertlemenb, ju@ements and
`a fiards.arising fiom any sufts it brings on the LICENSED PATENTS The Partbs agree to work
`together in god faith with espect to any legal claims assortd hercurder to efisure JASCO is
`vested with standing in order to pr@e€d. However, JASCO shall have no righl to grarf any sub- -
`Iicsnse to a LICENSED PATEHT without prior written consefit.
`
`CANTIGNY shall dlsmiss tle lawsuit novy pendirg in the Northem Disfict of lllinois, CMI Casa
`No. 16-CV-05794 by notice. Such dismissal shall b€ u,ith prejudice as to JASCO,
`
`CANTIGNY shall pay all USPTOlees necessary to maintain the LIGENSED PATENTS so long
`as they ar€ subjed to this agrcemer( through their date oi expiration.
`
`The paities may amend this agreernent in writing from time to time to inchrde additional patents,
`or ior any purpose. Ani amen&nent to this agreemerf must be in writing, ard sigred by both
`parties.
`
`ln tle event thd ao issue arises relating to this Agreement that the Erties cdnnot resofue thrsugh
`good faith negotidions, such issue shall be finally resohd by bindirg €rb'itration conducted in
`Chicago, lL under the Arbitr-alion rules of the Americen Arbltration Asodation bV a patel of (3)
`arbi!'ators includrng one arbitrabr seleted by each party. The partiec will bear tleir oarn oosts
`in preparing for the artftration, ard tfe cocts of tha arbibators win be eqLealry dry'dscl betlrpon the
`parties.
`
`The terms of this Agpemerfl are deemed confidBntial and sflall not be disclosed to any Third-
`Party except s mufually ?greed in writing, or (i) as required by any c-ourt or governmental
`authority; (ii) as a respomive doaument to a discovery request propounded in a pending lit'rgation
`or a6itratlon in which a protective order in in effect; or (iii) as othryise r€quired by law,
`govemmental agency or publrc company roporting requirements, Prior to any court-ordered
`disclosure, the disclosirg psty must povide written notice to the other parties and provide the
`other parties with ten (10J business days to file any objedions to the dr.sclosule. Any court-
`ordered disclosure must be designated as confidential under arry prdec{iir€ order governing
`produdion-
`
`The r$hts and obligations of this Agreement shall automaticalty ter*nate as to the spsific
`patents licensed hereuder wfien lhey e)eire aE a matter of lay or the claims applicable to
`LICENSED PRODUCTS are found to no lorger be valid by a court or govemmentat ageney with
`jurisdiction over the mater. '
`
`On behalf,cf CANTIGNY
`
`On behaff of JASCO
`
`John
`
`Date
`
`Cameron Trie
`
`L
`
`Case 5:18-cv-00044-RJC-DSC Document 1-5 Filed 03/14/18 Page 4 of 8
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`4
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`EXHIBIT 1018Page 4 of 8
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`

`

`Licensa Aore€moit Amendrent A
`The parties to thh agrooment rAMENDME|II AJ h€reby agree to amsnd tie license
`agreemant ('LICENSE AGREEMEND dated Augusl 11, 2016, between Car igny UShtinS
`Control, LLC ("CANTlGt{f), having a principal place ol business at 2018 Dorset Drive, Wheaton,
`lL 60189, and Jasco Products Company ('JASCO), having a principal phce ot busin€ss al 10 E.
`Memorial Rd., Oklahoma Crty, OK, 73114 as descdbed more fully herein. The provisions of lhe
`LICENSE AGREEMENT remain in lull force and eftecl unless expressly modified by the
`provisions of this AMENDMENT A se{ forth belo,\,.
`
`Vl. Right to Grant a Sub-License
`
`ln considerdion for the payments set forth below, CANTIGNY grants lo JASCO th€ right to grant
`one or more non-transfbrable, non-assilnable suFlicenses for LICENSED PATENT 9,320,122,
`to make, have made, use, sell, otfer to( sale and imporl products using d least one claim of the
`LICENSED PATENT 9,320,122 (SUBLICENSED PRODUCTS) accordng to the tollowing terms:
`
`(i) JASCO shall pay CANTIGNY:
`a.
`rf Net Sd6 lor SUB-LICENSED PRODUCTS from ths date of any SuF
`License Agreement betwesn JASCO ard a Sub-Licensee to whom JASCO has
`not provided an infringement notice regarding UCENSED PATENT 9,320,122.
`b.
`. ot Net Sal6s for SUB-LICENSED PRODUCTS from he dde ol any SuF
`Ucense Agreement between JASCO and a Sub-Licensee to whom JASCO has
`provided an infringemont notice regarding LICENSED PATEMr 9320,129.
`minus legal fees and court costs ,ssociated with bringing an aclion tor
`infringemenl regarding LICENSED PATENT 9,320,1?2 against the Sub-
`Lic€nsee,
`including legal f6es in the event such a lawsuil shall result in the
`tiling ot an IPR or dher post{rant challenge 1o LICENSED PATENT 9,320,122.
`Vll. Patent Marking by SuFlic€nse€
`
`JASCO agrees to require each SutrLjcensee lo mark eacfi SUB-LICENSED PRODITCT for which
`a sutslicense is grant€d
`lvith the LICENSED PATENT numbor 9,320,122. JASCO is not requirBd
`to mark SUB-LICENSED PRODUCTS thd hav€ aiready be6n
`to require a SuFLic€nsee
`manulactured or in the process ot being manutastJr€d as of the dde ot a Sub-,Lic6nss Agreoment.
`
`Vlll. Royahy Paynents for SUBLICENSED PRODUCTS
`
`JASCO shall provide to CANTIGNY comdele and accurate quarlerly reports by e-mail to:
`john.king@jkinglawofrice.com wilhin 30 days aftar each Calendar Quarter ending with the last day
`ol March, June, Sept€rnber and December. Floyahy paymer*s are due for each quarter at the
`sam6 tim€ as each quartsrly report and shall be made by wire rans{er to
`
`Each quarterly report shall stat6:
`
`(a) the suB-LTCENSED PRODUCTS;
`
`(b) the number of each model of SUBLICENSED PRODUCT sold or otherwise dispos€d of
`by each Sub-Ucansee during the Calendar Ouaner with respec.t to l'hich the report is due, and
`the Gross Sales associated therewith;
`
`1
`
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`EXHIBIT 1018Page 5 of 8
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`

`

`(c) the Net Sales for ttE Cal€ndar Ouarter with rGpect b which th6 report is due. Ne{ Sales
`shall be dsfined a6 the total sal€s of sacfi mod3l of SU&LICENSEO PRODUCT sold or dte,Uise
`disrced of by Sub-Licensae dudng the Calendar Ouarter less any retums, promolions or
`discounb; and
`(d) the total dollar amounl due based upon the
`royalty rate for the SUB-L|CENSED
`PRODUCTS sold or othe ise disposed of by Sub-Licensee.
`
`Any fees paid 10 CANTIGNY as a rosult ot a SutsLicans€ do not courfi toward ths annual minimum
`royatty of
`that JASCO must pay CANTIGNY to maintain exctusivity ot LTCENSED
`PATENT 9,320,122 per Section l, Sub-Section (ii) ot the LICENSE AGBEEMENT.
`
`IX. LICENSED PATENT 9,226,373
`
`The tems of the license for LICENSED PATENT 9,226,373 are amended as lollorvs:
`
`(i)
`
`(ii)
`
`JASCO shall pay, starting with sales on Fekuary 16, 2().18; a royalty of:
`a.
`of Net Sales for exisling and ftnure LICENSED PRODUSrS using LTCENSED
`PATENT 9,226,373 other than LICENSED PHODUCTS that are refer€ncod
`in (b)
`below.
`b.
`for LICENSED PRODUCTS that integrale the us€ o, LTCENSED
`of Net Sal€s
`PATENT 9,26,373 into JASCO tigtting products with LED light sources. For
`instance, ENBRIGHTEN CAFE LIGFiTS woutd be covered by this section shouu
`they integrate lecfinology covered by LTCENSED PATENT 9,226,379. The
`rate apdies to the first
`in annual royalty tor thes€
`ligt'/ting produsts and
`decreases to
`for all annual royalty in excass ol
`tor th€se
`lighting
`producis.
`JASCO shall pay CANTIGNY by Fekuary 26, 2018 to maintain an exctusive
`for LICENSED PATENT 9,226,373 to. calendar years 2018 and 2019.
`licens€
`
`X. US Patent 9,888,551 , US Pateril 8,508,135 and US Patent 8,558,464
`
`JASCO and CANTIGNY agree to add to th€ LICENSE AGREEMENT US Patont 9,888,551, US
`Patent 8,508,135 and US Patent 8,558,464 as LICENSED PATENTS fFEBBUARY 2018
`PATENTSJ. Allof the Eovbions in the LICENSE AGREEMENT regarding a LICENSED PATENT
`ar6 in efiecl as ot February 16, 2018 tor ths FEBRUARY 2018 PATENTS, with the following
`amendm€nts:
`
`(i)
`
`JASCO shall pay, starting with sales on February 16, 2018, a royalty of:
`a.
`of N€t Sales lor €xisting and tuture LICENSED PRODUCTS usirE one or more
`Of thE FEBRUARY 2018 PATENTS OthEr thAN LICENSED PROOUCTS thAt ATE
`referenced in (b) bdow
`b.
`of Net Sales tor LICENSED PRODUCTS that integrate the use of one or
`more oI the FEBRUARY 2018 PATENTS into JASCO lighting products with LED
`light sourc€s. For instancs, ENBBIGHTEN CAFE LIGHTS would be covered by
`this seclion should they integrate technology coverd by one or more o, ttle
`FEBRUABY 2018 PATENTS. The , rate apdi6 to the first
`rn annual
`
`2
`
`Case 5:18-cv-00044-RJC-DSC Document 1-5 Filed 03/14/18 Page 6 of 8
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`EXHIBIT 1018Page 6 of 8
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`

`

`royalty for each of the FEBRUARY 2018 PATENTS tor thse luhting Eoducts and
`decreases to - for all annual royalty in o)(cess of
`r br each of the
`FEBRUARY 2018 PATENTS for rh6e tightirE products.
`The license to JASCO of each of the FEBRUARy 2018 PATENTS is exclusive for
`calsndar yeare 2018 and 2019.
`
`(iD
`
`Xl. Exclusivity, Non-Exclusivtty and Termination for 2m0 and B€yond
`lf JASCO pays CANTIGNY less than
`combined in 2OlB and 2019 for a LICENSED
`PRODUCTS for which LICENSED PATENT 9,2X;,573 an(Uor any of the FEBRUARY 2018
`PATENTS apply, then the license lor each of the tour patents shall automatically become a non-
`exclrisive license. JASCo may pay oANTIGNY any additional amour n@essary ro total
`combined royalties for LTCENSED PATENT 9,2X,313 plus the FEBRUARY z)18
`four pateflts fu zo?f, by sending
`PATENTS for m18 and 2019, and maintain exdusivity on th€
`payment to CANTIGNY on or b€fore January 30, 204).
`l, JASCO pa)rs CANTIGNY less than
`comtrined in 2018 and 2019 for aI LTCENSED
`PRODUCTS lor whic*r LICENSED PATENT 9,?26,3.7} and/or arry of the FEBRUARY 2O1B
`PATENTS apply, CANTIGNY witt have the option to terminate ths lloEns€
`for any or all of the four
`LIoENSED PATEtlrs by providing writt€n notice as set tor$ in section l, &rFsedion (iii) ot the
`LICENSE AGREEMEI{T.
`
`For 2O2O and beyond, LICENSED PATENT 9,226,373 and each of the three FEBRUARY 2018
`PATENTS will be subject to the torms ol Sec,tion l, Sub-seAions (ii) and (iii) ot the LTCENSE
`AGHEEMETIT. By way of darity, each of the lour LTCENSED PATENTS wi be considered
`s€parately without combining the royalties of the four LTCENSED PATENTS tog€the..
`It any ot
`the tour LICENSED PATENTS falls bElow the
`minimum in z}m w b€yond,
`thar
`LICENSED PATENT will automatically become a non-exclusive license, unless JASCO pap any
`additional amount necessilry to total
`lorfiat UCENSED PATENT as set brth in S€ction
`I, Sub-section (ii) ot the LICENSE AGREEMENT. lf any of the tour LTCENSED PATENTS fafls
`belor the
`minimum in 2020 or beyond, CANTIGNY will ha\/6 the option to terminate the
`license for that LICENSED PATENT by providing wriften notice as sst forth in Section l, Sub-
`section (iii) of the LICEi€E AGREEMENT.
`
`Xll. General Provisions oJ AMENDMENT A
`
`This AMENDMENT A shall be conslrued in accordance with the lau,E of the State of lllinois without
`reference to conllicts of larvs principles.
`
`This AMENDMENT A has an EFFECTIVE DATE of the last to sign below, and shall modity the
`LICENSE AGHEEMENT eff€cti\r8 as o, the EFFECTIVE DATE.
`
`JASCO shall maintain a@urate re@rds ot all sales ot SUB-LICENSED PRODCUTS, and
`CANTIGNY shall have the right to conducl an annual audit of the rEcords to ensure thal a payrnent
`for all royalties due is made. CANTIGNY shall ptovide adv"ance notice of two weeks for the audit.
`ln the avent that an audit shall show a discrepancy of more than 5% in the amount of royaltisi
`due, the audit shall be at JASCO's cct, ottEilybe il shall be at CANTIGNYS cost.
`
`3
`
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`
`EXHIBIT 1018Page 7 of 8
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`

`

`JASCO agrees to indemnify, cbfend, and hold CANTIGNY harml€ss
`lrom and against all clalms
`injury or prodrcl liability claims), suits, losses and damag€s,
`(including, ryithout limitation, p€rsonal
`arising out ol sacfi Sub-Licansee's manufacture, us€, sale, or other disposal of SUB-LICENSEO
`PRODUCTS, or out of any allegedly unauthorized use ol any trademark, service mark, patent,
`copynght, process, k ea, or method by Sublicensee or those ading und€r
`its authority.
`
`JASCO shall have no right to grant to any Sub.Licensee tfle i(rht to srrb{icense LICENSED
`PATENT 9,320,122 without prior writtefl consert ot CANTIGi{Y.
`
`The parties may turther amend this AMENDMENT A or lhe LICENSE AGREEMENT in $riting
`from time to time to indude additional patents, or for any BJrpos€. Any amerdment to this
`AMENDMENT A must be in sriting, and signed by bolh partir5.
`
`The rights and obligations ot this AMENDMENT A and the rights and obluations ot any Sub-
`Licenses granted to Sub-Licensees pursuant lolhis AMENDMENT A shall aulomalically torminale
`when LICENSED PATENT 9,320,122 expires as a matter of law or the claims applicable to SUB-
`LICENSED PRODUCTS are lound to no longer be valiJ by a courl or govemmental agency wilh
`jurisdiction over the matter or LICENSED PATENT 9,320,12. is no longer exclusive to JASCO
`pursuanl to the lerms of the LICENSE AGREEMENT. lf JASCO fails to maintain an Exclusive
`Ucense for the LICENSED PATENT 9,320,122 under lhe lerms of the LICENSE AGREEMENT,
`CANTIGNY agrees thal it will, etteciive as of the dale of the lermination ot the Exclusive License,
`license the LICENSED PATENT 9,320,122 to any SutsLicensee at tho same royalty rate for th€
`LICENSED PATENT 9,320,122 thal is paid to JASCO by the SutsLicensee.
`
`On behalf of CANTIGNY
`
`On behalf of JASCO
`
`z-/rs/ts
`
`John
`
`Date
`
`Cameron
`
`nce
`
`z//rp-
`
`Dale
`
`4
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`Case 5:18-cv-00044-RJC-DSC Document 1-5 Filed 03/14/18 Page 8 of 8
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`EXHIBIT 1018Page 8 of 8
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`