Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 1 of 8
`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 1 of 8
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`EXHIBIT 42
`EXHIBIT 42
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`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 2 of 8
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`Electronic Version v1.1
`Stylesheet Version v1.2
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`EPAS ID: PAT3444584
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`SUBMISSION TYPE:
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`NEW ASSIGNMENT
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`NATURE OF CONVEYANCE:
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`ASSIGNMENT
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`CONVEYING PARTY DATA
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`RECEIVING PARTY DATA
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`Nome:«OTE
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`Execution Date
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`05/29/2015
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`Total Attachments: 5
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`PROPERTY NUMBERS Total: 5
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`Application Number:
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`Application Number:
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`Patent Number:
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`Patent Number:
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`60460998
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`14506822
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`8478645
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`8856030
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`PCT Number:
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`US2004010772
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`CORRESPONDENCE DATA
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`(412)281-0717
`Fax Number:
`Correspondencewill be sent to the e-mail addressfirst; if that is unsuccessful, it will be sent
`using a fax number,if provided; if that is unsuccessful, it will be sent via US Mail.
`Phone:
`4124545000
`Email:
`docketingogh@pepperlaw.com
`Correspondent Name:
`PEPPER HAMILTON LLP
`AddressLine 1:
`500 GRANT STREET
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`AddressLine 2:
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`AddressLine 4:
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`SUITE 5000
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`PITTSBURGH, PENNSYLVANIA 15219-2507
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`503397959
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`PATENT
`REEL: 036119 FRAME: 0391
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`

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`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 3 of 8
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`source=Assignment_executed_SevenEchoTO10Tales#pages5.tif
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`source=Assignment_executed_SevenEchoTO10Tales#pagez.tif
`source=Assignment_executed_SevenEchoTO10Tales#page3.tif
`source=Assignment_executed_SevenEchoTO10Tales#page4.tif
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`PATENT
`REEL: 036119 FRAME: 0392
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`

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`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 4 of 8
`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 4 of 8
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`PATENT ASSIGNMENT AGREEMENT
`
`This PATENT ASSIGNMENT Agreement (this “Assignmenf’) is by and
`between SEVENECHO,LLC,a Pennsylvanialimited liability company,(the “Assignor’”) having
`its principal office at 262 East Main Street, Norristown, PA 19401, USA and 1OTALES,INC., a
`Delaware corporation (the “Assignee”) having its principal office at 68 Willow Road, Menlo
`
`Park, CA 94025.
`
`WHEREAS, Assignor and Assignee have entered that certain Contribution
`Agreement dated May 29, 2015 (the “Contribution Agreement’) pursuant to which Assignor
`conveyed to Assignee the Assignor’s rights, title and interest in and to the Contributed Assets as
`defined in the Contribution Agreement,
`including, without
`limitation,
`the patents and
`applications set forth on Schedule A hereto, including any and all substitutions, divisionals,
`continuations,
`continuations-in-part,
`provisional
`applications,
`reissues,
`reexaminations,
`extensions, supplementary protection certificates and the like of any ‘such patents or patent
`applications, any and all counterparts of any of the foregoing in any country of the word and any
`and all patents issued from any of the foregoing (“Patent Properties”); and
`
`WHEREAS,Assignor and Assignee desire to effectuate such assignment of the
`Patent Properties pursuant to the terms and conditions set forth herein.
`
`the receipt and
`NOW, THEREFORE,for good and valuable consideration,
`sufficiency of which are hereby acknowledged, the parties represent, covenant and agree as
`follows:
`
`Defined Terms. Capitalized terms used but nototherwise defined herein
`1.
`shall have the meanings given to them in the Contribution Agreement.
`
`Assignment. Assignor does hereby irrevocably assign, transfer, convey,
`2.
`grant and set over to Assignee, and Assignee agrees to accept any such assignment, transfer,
`conveyance, grant and set over of, as of May 29, 2015 all of Assignor’s worldwide and entire
`right, title and interest in and to the Patent Properties and any andall intellectual property rights
`inherent in the Patent Properties and appurtenant thereto. Any assignment of rights shall be held
`and enjoyed by Assignee, its successors and assigns from and after the date of such assignment
`as fully and entirely as the same would have been held and enjoyed by Assignor had such
`assignment not been made.
`
`Acceptance of Assignment. Assignee hereby accepts the rights and
`3.
`properties hereby assigned and transferred to it herein.
`
`Right to Sue for Past Infringement. Assignor also assigns to Assignee
`4,
`all of Assignor’s right, title, interest and standing to collect, assert, or enforce any claim, right,
`title or interest of any kind under any and all of the Patent Properties,
`including, without
`limitation, the right (i) to sue for all past, present and future infringements, misappropriations or
`other violations of any rights relating thereto; (ii) to settle, defend, compromise and retain
`proceeds from any actions, suits, or proceedings relating to the transferred and assigned rights,
`title, interest, and benefits; and (iii) to do all other such acts and things in relation thereto as
`Assignee, in its sole discretion, deems advisable.
`
`PATENT
`REEL: 036119 FRAME: 0393
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`

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`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 5 of 8
`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 5of 8
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`Cooperation. Assignor agrees to execute, acknowledge and deliver, or
`5.
`cause to be executed, acknowledged and delivered, such further instruments and documents and
`to perform such further acts as may be reasonably requested by Assignee to effectuate more fully
`the transactions contemplated by this Assignment.
`
`Entire Agreement. This Assignment, together with the Contribution
`6.
`Agreement, contains the entire agreement of the parties with respect to the subject matter ofthis
`Assignment. No prior agreement or understanding pertaining to any such matter shall be
`effective. This Assignment may only be modified in a written instrument executed by the
`parties.
`
`Binding Assignment. This Assignmentshall be binding upon and inure
`7.
`to the benefit of each of the parties hereto, their successors and assigns.
`
`Governing Law. This Assignment shall be governed by and construed
`8.
`under the laws of the State of Delaware and the federal laws of the United States of America
`applicable therein, excluding any conflicts of laws rule or principle that might refer the
`governanceor construction of this Assignmentto the law of anotherjurisdiction.
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`Severability. If any provision of this Assignment shall be deemed invalid
`9.
`or unenforceable by any court of competent jurisdiction, then such portion shall be deemed
`severed, and the remainderthereof shall be enforceable in accordance with its terms.
`
`Counterparts. This Assignment may be executed in counterparts and by
`10.
`facsimile, each of which shall be deemedan original, but all of which together shall constitute
`one and the same instrument.
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`[Remainder ofPage Intentionally Left Blank; Signature Pages Follow]
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`PATENT
`REEL: 036119 FRAME: 0394
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`

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`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 6 of 8
`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 6 of 8
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`IN WITNESS WHEREOEF,the parties hereto have caused this Patent
`Assignment Agreementto be duly executed.
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`
`
`On this ft day of_J “ , 2015, before me personally appeared
`
`‘ 2 bwbe)
`\: (luste (name),
`( @
`(title), of SEVENECHO, LLC,
`known to be the person named in and who executed the attached document, and acknowledged to
`methat he executed the samefor the uses and purposestherein set forth.
`
`LWANIA
`
`AGEO
`
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`NOTARIAL SEAL bie4
`Mary Winslow, Notary
`Pu
`
`UpperOubiin Twp. pretJy1,208
`
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`My Commission&Expires wy4 i
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`
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`COMMONWEALTH OF PENN YLVANIA
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`NOTARIAL SEAL ofPublic
`
`
`Mary Winslow, Notary
`Upper Dublin Twp. Montgomery Cony
`
`
`My Commission Expires a18,
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`66Ct
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`PATENT
`REEL: 036119 FRAME: 0395
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`

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`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 7 of 8
`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 7 of 8
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`10TALES, INC.
`
`Assignee By:
`
`
`
`
`( Fo
`
`Name:
`Title:
`
`, 2015, before me personally appeared
`)vue
`|sts day of
`On this
`(title), of LOTALES, INC., known
`(22
`Dr! J
`[ls/u- (name),
`to be the person named in and who executed the attached document, and acknowledged to me
`
`that he executed the samefor the uses and purposestherein set forth.
`
`me Commission Expires July 18, 2018
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`NOTARIAL SEAL
`Mary Winslow, Notary Public
`Upper Dublin Twp., Montgomery Ceunty
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`PATENT
`REEL: 036119 FRAME: 0396
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`

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`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 8 of 8
`Case 6:20-cv-00810-ADA Document 28-42 Filed 12/10/20 Page 8 of 8
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`SCHEDULEA
`
`
`Patents
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`Title
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`Country
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`Application/
`Patent No.
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`
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`Filing/
`Status
`Issue Date
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`
`
`
`
`
`
`Method, System And Software
`For Digital Media Narrative
`
`|Europe
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`04759244.9
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`04/07/2004
`
`
`For Associating Attributes
`Within Digital Media
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`Presentations
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`Method, System And Software
`
`
`For Associating Attributes
`
`
`
`Method, System And Software PCT/US2004/010772|04/07/2004=|Expired|WO
`
`For Digital Media Narrative
`Personalization
`
`
`
`Method, System And Software
`For Digital Media Narrative
`Personalization
`Method, System and Software
`for Digital
`
`
`
`
`
`
`
`
`
`|U.S.
`
`|U.S.
`
`US.
`
`
`
`60/460998
`
`04/07/2003
`
`Expired
`
`AN: 10/819404
`PN: 8,478,645
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`F: 04/07/2004 |Granted
`I: 07/02/2013
`
`AN: 10/819514
`PN:8,856,030
`
`F: 04/07/2004 |Granted
`I: 10/07/2014
`
`14/506822
`
`10/06/2014
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`[Published
`
` Abandoned
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`
`
`
`RECORDED: 07/17/2015
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`PATENT
`REEL: 036119 FRAME: 0397
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`