Exhibit 1.1

 

 

 

 

 

 

 

 

 

 

 

 

 

FIRST AMENDMENT TO

 

TECHNOLOGY MONETIZATION AGREEMENT

 

THIS FIRST AMENDMENT TO THE TECHNOLOGY MONETIZATION AGREEMENT (this “Agreement”), dated as of the latest execution date below (the “Effective Date’’), is entered into by Equitable IP Corporation, a Nevada Corporation with offices at 10 Balligomingo Road, West Conshohocken, PA 19428 and its affiliated companies (“Equitable”) and Spherix Incorporated, a Delaware corporation (“Parent”). Each may be individually referred to as a “Party” and collectively may be referred to as “the Parties.”

 

WITNESSETH:

 

WHEREAS, Parent and Equitable have previously entered into a Technology Monetization Agreement dated March 11, 2016 (“TMA”); and

 

WHEREAS, Parent and Equitable have been developing a monetization plan consistent with the existing TMA; and

 

WHEREAS, Parent and Equitable desire to amend the existing TMA in order to most efficiently execute the monetization plan; and

 

NOW, THEREFORE, in consideration of good and valuable consideration set forth in this Agreement, the receipt and adequacy of which is hereby acknowledged, and intending to be bound, Parent and Equitable hereby agree to amend the TMA as follows:

 

A.

Section 2. (Litigations To Be Filed) in the TMA is deleted in its entirety and replaced by the following Section 2:

 

2. Litigations To Be Filed. In consultation with Parent, Equitable agrees to file litigations as follows on or before May 1, 2016: (1) Equitable will file at least 3 litigations asserting one or more of the Patents (“Asserted Patents”); (2) such litigations will be filed against parties who are neither licensees to the Asserted Patents nor are members of RPX Corporation; (3) at least 2 of the 3 litigations must involve patents from those owned by Parent or Sub2; Parent hereby agrees to Equitable’s selection of these targets provided Equitable complies with all of the limitations of this Paragraph 2.

 

B.

Section 3. (Option to Terminate) in the TMA is deleted in its entirety and replaced by the following Sections 3., 3.1 and 3.2:

 

3. Option to Terminate. If Equitable fails to meet the requirements of Paragraph 2 above, Parent may, in its sole discretion, terminate this agreement. Such termination shall terminate all obligations of Equitable to pay Legal Fees pursuant to Paragraph 5 of this Agreement.

 

 

 

 

3.1 Equitable agrees to file additional litigations as follows after May 1, 2016 but before August 31, 2016: (1) Equitable will file at least 7 litigations asserting one or more of the Patents (“Asserted Patents”); (2) such litigations will be filed against parties who are not licensees to the Asserted Patents; (3) any such litigations filed before May 24, 2016 must be against parties who are not members of RPX Corporation but any such litigations filed on May 24, 2016 or after may be against members of RPX Corporation; (4) at least 4 of the 7 litigations must involve patents from those owned by Parent or Sub2; (5) at least 2 of the 10 total litigations filed pursuant to either Paragraph 2 or this Paragraph 3.1, before or after May 1, 2016, must be against companies that have a market capitalization in excess of one- billion dollars ($1,000,000,000.00). Parent hereby agrees to Equitable’s selection of these targets provided Equitable complies with all of the limitations of this Paragraph 3.1.

 

3.2 If Equitable fails to meet the requirements of Paragraph 3.1, Parent shall be granted an option to reacquire the Patents, after a waiting period of thirty (30) days has passed, unless during the waiting period, Equitable satisfies all conditions of Paragraph 3.1. There shall be no cost to Parent for the option or for the reassignment of the Patents. If the waiting period expires and Equitable has not satisfied all requirements of Paragraph 3.1, Equitable agrees to execute the neccssary documents to effect the reassignment of the Patents to Parent.

 

C.

The modifications to the TMA specified herein are agreed and accepted by the Parties and shall continue in effect upon execution of this First Amendment to the TMA.

 

D.

All other terms and conditions of the TMA not specifically modified herein remain in full force and effect.

 

IN WITNESS WHEREOF, Parent and Equitable have caused this First Amendment to the TMA Agreement to be duly executed as of the day and year of the latest execution date written below.

 

Equitable IP Corporation
By:	/s/ Erik S. Stamell
Erik S. Stamell
President
Date:	4-22-16
Spherix Incorporated
By:	/s/ Anthony Hayes
Name: Anthony Hayes
Title: CEO
Date: April 22, 2016

 

 

SECOND AMENDMENT TO

 

TECHNOLOGY MONETIZATION AGREEMENT

 

THIS SECOND AMENDMENT TO THE TECHNOLOGY MONETIZATION AGREEMENT (this “Agreement”), dated as of the latest execution date below (the “Effective Date”), is entered into by Equitable IP Corporation, a Nevada Corporation with offices at 10 Balligomingo Road, West Conshohocken, PA 19428 and its affiliated companies (“Equitable”) and Spherix Incorporated, a Delaware corporation (“Parent”). Each may be individually referred to as a “Party” and collectively may be referred to as “the Parties.”

 

WITNESSETH:

 

WHEREAS, Parent and Equitable have previously entered into a Technology Monetization Agreement dated March 11, 2016 (“TMA”); and

 

WHEREAS, Parent and Equitable have previously entered into a First Amendment to the Technology Monetization Agreement dated April 22, 2016 (“TMA”); and

 

WHEREAS, Parent and Equitable have been developing a monetization plan consistent with the existing TMA; and

 

WHEREAS, Parent and Equitable desire to amend the existing TMA and the First Amendment to the existing TMA in order to most efficiently execute the monetization plan; and

 

NOW, THEREFORE, in consideration of good and valuable consideration set forth in this Agreement, the receipt and adequacy of which is hereby acknowledged, and intending to be bound, Parent and Equitable hereby agree to amend the TMA and the First Amendment to the TMA as follows:

 

A.

Section 2. (Litigations To Be Filed) in the First Amendment to the TMA is deleted in its entirety and replaced by the following Section 2:

 

2.       Litigations To Be Filed. In consultation with Parent, Equitable agrees to file litigations as follows on or before May 1, 2016: (1) Equitable will file at least 2 litigations asserting one or more of the Patents (“Asserted Patents”); (2) such litigations will be filed against parties who are neither licensees to the Asserted Patents nor are members of RPX Corporation; (3) at least 2 of the 3 litigations must involve patents from those owned by Parent or Sub2; Parent hereby agrees to Equitable’s selection of these targets provided Equitable complies with all of the limitations of this Paragraph 2.

 

B.

Section 3.1 in the First Amendment to the TMA is deleted in its entirety and replaced by the following Sections 3.1:

 

 

 

 

3.1          Equitable agrees to file additional litigations as follows after May 1, 2016 but before August 31, 2016: (1) Equitable will file at least 8 litigations asserting one or more of the Patents (“Asserted Patents”); (2) such litigations will be filed against parties who are not licensees to the Asserted Patents; (3) any such litigations filed before May 24, 2016 must be against parties who are not members of RPX Corporation but any such litigations filed on May 24, 2016 or after may be against members of RPX Corporation; (4) at least 5 of the 8 litigations must involve patents from those owned by Parent or Sub2; Parent hereby agrees to Equitable’s selection of these targets provided Equitable complies with all of the limitations of this Paragraph 3.1.

 

C.

The modifications to the TMA and the First Amendment to the TMA specified herein are agreed and accepted by the Parties and shall continue in effect upon execution of this Second Amendment to the TMA.

 

D.

All other terms and conditions of the TMA and the First Amendment to the TMA not specifically modified herein remain in full force and effect.

 

IN WITNESS WHEREOF, Parent and Equitable have caused this Second Amendment to the TMA Agreement to be duly executed as of the day and year of the latest execution date written below.

 

Equitable IP corporation
By:	/s/ Erik S. Stamell
Erik S. Stamell
President
Date:	4-27-16
Spherix Incorporated
By:	/s/ Anthony Hayes
Name: Anthony Hayes
Title: CEO
Date:	4/27/2016

 

 

THIRD AMENDMENT TO

 

TECHNOLOGY MONETIZ ATION AGREEMENT

 

THIS THIRD AMENDMENT TO THE TECHNOLOGY MONETIZATION AGREEMENT (this ‘‘Agreement”), dated as of the latest execution date below (the “Effective Date”), is entered into by Equitable IP Corporation, a Nevada Corporation with offices at 10 Balligomingo Road, West Conshohocken, PA 19428 together with its affiliated companies (‘'Equitable”) and Spherix Incorporated, a Delaware corporation (“Parent”). Each may be individually referred to as a “Party” and collectively may be referred to as “the Parties.”

 

WITNESSETH:

 

WHEREAS, Parent and Equitable have previously entered into a Technology Monetization Agreement dated March 11, 2016 (“TMA”); and

 

WHEREAS, Parent and Equitable have previously entered into a First Amendment to the Technology Monetization Agreement dated April 22, 2016 (“TMA1”); and

 

WHEREAS, Parent and Equitable have previously entered into a Second Amendment to the Technology Monetization Agreement dated April 27, 2016 (“TMA2”); and

 

WHEREAS, Parent and Equitable have been developing a monetization plan consistent with the existing TMA, TMA1 and TMA2 (collectively the “TMAX”); and

 

WHEREAS, Parent, Sub1 and Sub 2 own additional patents and patent applications not included in the existing TMAX (“Core Patents”); and

 

WHEREAS, the existing TMAX contemplates Parent delaying transfer of ownership to Equitable some of the Patents owned by Sub1 (“Delayed Patents”) and all of the Core Patents; and

 

WHEREAS, the Core Patents are identified in Exhibit A attached hereto; and

 

WHEREAS, the Delayed Patents are identified in Exhibit B attached hereto; and

 

WHEREAS, the First Patents are identified in Exhibit C attached hereto; and

 

WHEREAS, Parent and Equitable desire to amend the existing TMAX in order to most efficiently execute the monetization plan; and

 

NOW, THEREFORE, in consideration of good and valuable consideration set forth in this Agreement, the receipt and adequacy of which is hereby acknowledged, and intending to be bound, Parent and Equitable hereby agree to amend the TMAX as follows:

 

A.

Section 4. in the TMAX will now contain the additional provisions as follows:

 

4.4

Simultaneous with the execution of this Agreement, Parent and Sub1 and Sub2, where appropriate, will execute the patent assignment agreements attached hereto as Exhibits D and E causing the patents specified in the attached assignment agreements (collectively the “First Patents”) to be assigned to Equitable or its subsidiary on May 24, 2016.

 

 

4.5

Parent and Sub1 and Sub2 shall not offer, sell, assign, hypothecate, pledge or otherwise transfer or dispose of any or all of the Core Patents or Delayed Patents to any person or entity, without the prior written consent of both Parties.

 

4.6

Parent and Sub1 and Sub2 agree that any entity that enters into an agreement to purchase Parent, Sub1 or Sub2 will be bound by the provisions of the TMAX and this amendment.

 

4.7

Upon execution of this agreement, Equitable will have the sole right to license/monetize all of the Core Patents, the First Patents and Delayed Patents, whether transferred to Equitable or not, to any person or entity without the prior consent of Parent or Sub1 or Sub2. All monetization revenue shall be allocated as set forth in Section 5 “Consideration” as set for in the March 11, 2016 TMA. Parent and Sub1 and Sub2 will execute the Exclusive License agreements set forth in Exhibits F and G.

 

4.8

Equitable shall us its best, commercially reasonable efforts to monetize Parent’s First Patents, Core Patents and Delayed Patents.

 

4.9

No later than eighteen (18) months after the Effective Date, or at such earlier time that Parent and Equitable agree, Parent, Sub1 and Sub2 will assign the Core Patents and the Delayed Patents to Equitable or its subsidiary.

 

4.10

The Parties agree that Spherix will be granted a non-transferable, non assignable license, without the right to sublicense, to practice the First Patents, the Core Patents and the Delayed Patents.

 

4.11

Equitable shall not sell or assign, except to its wholly owned subsidiary, the First Patents, the Core Patents and the Delayed Patents without the consent of Parent, such consent not to be unreasonably withheld.

 

B.

Section 6. in the TMAX will now contain the additional provisions as follows:

 

6.1.4

that the First Patents, the Core Patents and the Delayed Patents together are all of the the patents and patent applications owned by Parent, Sub1 and Sub2.

 

6.1.5

Equitable acknowledges that it takes the Patents pursuant to all prior licenses, including licenses to RPX and will take due care not to file suit on the Patents against prior licensees.

 

 

C.

Exhibit B of the TMAX shall be modified as follows and only with respect to revenue received by Parent or its subsidiaries from RPX Corporation beginning on the Effective Date (“RPX Revenue”):

 

Equitable shall receive live percent (5%) of RPX Revenue derived from any license agreement (1) executed by RPX Corporation and Parent or its subsidiaries after the Effective Date but prior to May 24, 2016 and (2) paid by RPX Corporation to Parent or its subsidiaries prior to July 1, 2016.

 

Equitable shall receive fifty percent (50%) of all RPX Revenue paid to Parent or its subsidiaries after July 1, 2016 pursuant to any license agreement between RPX Corporation and the Member or its subsidiaries beginning on the Effective Date.

 

Equitable shall receive fifty percent (50%) of all RPX Revenue pursuant to any license agreement between RPX Corporation and Parent or its subsidiaries executed on or after May 24, 2016.

 

Equitable shall receive fifty percent (50%) of all RPX Revenue pursuant to any license agreement between RPX Corporation and Parent or its subsidiaries executed on or after the Effective Date due to options related to new RPX members.

 

The Parties understand that this Section C modifies terms related to RPX Revenue previously agreed to by the Parties. The Parties further agree that this paragraph supercedes such previous agreement and this paragraph controls the terms and obligations of the Parties with respect to RPX Revenue.

 

D.

All other terms and conditions of the TMAX not specifically modified herein remain in full force and effect.

 

IN WITNESS WHEREOF, Parent and Equitable have caused this Third Amendment to the TMAX to be duly executed as of the day and year of the latest execution date written below.

 

Equitable IP Corporation
By:	/s/ Erik S. Stamell
Erik S. Stamell
President
Date:	5-22-16
Spherix Incorporated
By:	/s/ Anthony Hayes
Name: Anthony Hayes
Title: CEO
Date: May 22, 2016