Patent Cross-license Agreement

PATENT CROSS-LICENSE AGREEMENT


This Patent Cross-License Agreement (the "Agreement") is made as of January 29, 2002 (the "Effective Date") by and between Sportvision, Inc. ("Sportvision") a corporation of the State of Delaware with its principal office at 1450 Broadway, 31st Floor, New York, New York 10018; Fox Sports Productions, Inc. ("Fox") a corporation organized under the laws of the State of Delaware with its principal place of business at 10201 West Pico Boulevard, Los Angeles, California 90035; and Princeton Video Image, Inc. ("PVI"), a corporation organized under the laws of the State of Delaware, with its principal place of business at 15 Princess Road, Lawrenceville, New Jersey 08648. The signatories to this Agreement are referred to jointly as the "Parties."


RECITALS


WHEREAS, Fox owns all title and interest in and to U.S. Patent Numbers 5,917,553 and 6,141,060 (the "Fox Litigation Patents") and Fox has exclusively licensed the Fox Litigation Patents to Sportvision which provides Sportvision with the right to grant sub-licenses to the Fox Litigation Patents;


WHEREAS, Sportvision owns all right, title and interest in and to U.S. Patent Number 6,229,550, (the "Sportvision Litigation Patent") and Sportvision has the right to grant licenses to the Sportvision Litigation Patent and the Fox Litigation Patents;


WHEREAS, PVI owns all rights, title and interest in and to U.S. Patent Number 5,264,933 (the "PVI Litigation Patent") and has the right to grant licenses to the PVI Litigation Patent;


WHEREAS, on October 4th, 1999 Sportvision and Fox Sports Productions ("Plaintiffs") commenced a civil action in the United States District Court for the Northern District of California (San Jose), as subsequently amended, in which Plaintiffs alleged that PVI was infringing the Fox Litigation Patents and the Sportvision Litigation Patent (the "Complaint"); this action is entitled Sportvision, Inc., et al v. Princeton Video Image, Inc., Civil Action No. 99-CV-20998 (the "Action");


WHEREAS, on August 28, 2001, PVI filed an amended answer to the Complaint in which it denied infringement, asserted affirmative defenses, and commenced a counterclaim in the Action alleging that Sportvision was infringing the PVI Litigation Patent;


WHEREAS, concurrent with the execution of this Agreement, the same Parties will enter into a Settlement Agreement in settlement of the Action and the matters described therein; and


Subject to Federal Rule of Evidence 408 and Analogous State Law Principles and Written Nondisclosure Agreement Commitments


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WHEREAS, PVI desires a license to certain patents, including the Sportvision Litigation Patent, the Fox Litigation Patents and patents related thereto, and Sportvision desires a license to certain patents, including the PVI Litigation Patent and patents related thereto, which licenses will provide each Party with the freedom to operate its present and future business to the extent expressly so licensed in, and subject to the limitations of, this Agreement.


The Parties therefore agree as follows:


ARTICLE I
DEFINITIONS


1.1 "Affiliate" shall mean, in relation to any Person, any other Person, now or in the future, that, directly or indirectly through one or more intermediaries, controls, is controlled by or is under common control with, such Person. For purposes of this Agreement "control" (including its use in the terms "controlled by" or "under common control with") shall mean the possession of (i) beneficial ownership of 50% or more of such Person's outstanding or fully diluted share capital or (ii) the power to direct the management of such Person, in each case, whether through the ownership of voting securities, non-voting securities, by contract or otherwise. An Affiliate of a Person shall cease being an Affiliate of such Person if at any time it no longer controls, is controlled by or under common control with such Person.


1.2 "Competitor of the Other Party" shall mean: (i) with respect to PVI, any Sportvision Competitor; or (ii) with respect to Sportvision, any PVI Competitor.


1.3 "Distributor" shall mean, with respect to PVI or Sportvision, any Person engaged by such Party or any of its Affiliates to distribute to End Users any Products/Services owned or licensed by such Party or any of its Affiliates, provided that (i) such Person is not a Competitor of the Other Party, (ii) such Person is not an Affiliate of a Competitor of the Other Party, (iii) 5% or more of the outstanding or fully diluted capital stock of such Person is not directly or indirectly beneficially owned by a Competitor of the Other Party and (iv) no Competitor of the Other Party has any right to any portion of the proceeds generated from the distribution of Products/Services licensed under this Agreement.


1.4 "End Users" shall mean any Person who is an end user of virtual insertion and/or enhancement Products/Services, such as advertisers, television networks, producers of original video content, cable and satellite system operators, Internet service providers and other providers of video content solely in their capacity as such (and not in any capacity as distributors or sellers of virtual insertion and/or enhancement Products/Services to third parties for use in video content not created, distributed and/or advertised in by such Person).


1.5 "Fox Licensed Patents" shall mean the Fox Litigation Patents and any and all


Subject to Federal Rule of Evidence 408 and Analogous State Law Principles and Written Nondisclosure Agreement Commitments


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patents, patent applications, or provisional applications anywhere in the world that claim priority to any of the Fox Litigation Patents or are continuations, continuations-in-part, divisionals, reissues, reexaminations, extensions or improvements of the Fox Litigation Patents.


1.6 "Licensee" shall mean the Party to which patent rights are being granted hereunder.


1.7 "Licensed Products" shall mean Products/Services included within the definition of PVI Licensed Products/Services and/or Sportvision Licensed Products/Services.


1.8 "Parties" shall mean the signatories to this Agreement, and may be used in singular or plural, as indicated by the context, and when permitted shall include their successors and assigns.


1.9 "Person" or "person" means an individual, a corporation, a partnership, an association, a trust or any other entity or organization, including a government or political subdivision or any agency or instrumentality thereof.


1.10 "Products/Services" shall mean products, services, processes, machines, manufactures, equipment, systems, software, scripts or combinations thereof, independent of location.


1.11 "PVI Competitor" shall mean any Person (other than (i) PVI, Sportvision and their respective Subsidiaries, (ii) Cablevision Systems Corporation, Presencia en Medios, S.A. de C.V. and their respective Subsidiaries and (iii) any End Users of any of the Products/Services of the foregoing entities) that is engaged in the distribution and/or sale of virtual insertion or enhancement Products/Services that are in competition with the Products/Services of PVI, or its Affiliates at any time. PVI Competitors shall be deemed to include, but shall not be limited to, Symah Vision-SA, Orad Hi Tech Systems Ltd., SciDel Technologies Ltd., and Mirage.


1.12 "PVI Licensed Patents" shall mean the PVI Litigation Patent and any and all patents, patent applications, or provisional applications anywhere in the world that (i) are owned, will be owned, are enforceable or are licensable by PVI or its Affiliates, and that are issued or pending as of the Effective Date of this Agreement; or (ii) claim priority to the any of the patents or applications set forth in (i); or (iii) are continuations, continuations-in-part, divisionals, reissues, reexaminations, extensions or improvements of the PVI Litigation Patent, or the patents or applications set forth in (i) or (ii) above.


1.13 "PVI Licensed Products/Services" shall mean any and all Products/Services that are individually or collectively covered, directly or indirectly, by any claim of a patent in the Sportvision Licensed Patents or the Fox Licensed Patents.


Subject to Federal Rule of Evidence 408 and Analogous State Law Principles and Written Nondisclosure Agreement Commitments


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1.14 "Settlement Documents" shall mean the Settlement Agreement dated January 29, 2002 between PVI on the one hand and Sportvision and Fox on the other hand, and all attachments thereto.


1.15 "Sportvision Competitor" shall mean any Person (other than (i) PVI, Sportvision and their respective Subsidiaries, and (ii) any End Users of the Products/Services of Sportvision and its Subsidiaries) that is engaged in the distribution and/or sale of virtual insertion or enhancement Products/Services that are in competition with the Products/Services of Sportvision or its Affiliates at any time. Sportvision Competitors shall be deemed to include, but shall not be limited to, Symah Vision-SA, Orad Hi Tech Systems Ltd., SciDel Technologies Ltd., and Mirage.


1.16 "Sportvision Licensed Patents" shall mean the Sportvision Litigation Patent, the Fox Litigation Patents and any and all patents, patent applications, or provisional applications anywhere in the world that (i) are owned, will be owned, are enforceable or are licensable by Sportvision or its Affiliates, and that are issued or pending as of the Effective Date of this Agreement; (ii) are owned by Fox or its Subsidiaries and licensed to Sportvision and that are issued or pending as of the Effective Date of this Agreement; (iii), claim priority to any of the patents or applications set forth in (i) or (ii), above; or (iv) are continuations, continuations-in-part, divisionals, reissues, reexaminations, extensions or improvements of the Sportvision Litigation Patent, the Fox Litigation Patents, or the patents or applications set forth in (i), (ii) or (iii) above.


1.17 "Sportvision Licensed Products/Services" shall mean any and all Products/Services that are individually or collectively covered, directly or indirectly, by any claim of a patent in the PVI Licensed Patents.


1.18 "Subsidiary" shall mean, in relation to any Person, any other Person, now or in the future, including any Competitor of the Other Party, that directly or indirectly through one or more intermediaries, is controlled (as such term is defined in Article 1.1 hereof) by such Person. A Subsidiary of a Person shall cease being a Subsidiary of such Person if at any time it is no longer controlled by such Person.


ARTICLE 2
LICENSE GRANTS AND COVENANTS


2.1 (A) To the extent, and only to the extent, provided in Article 2.1(B),
PVI hereby grants, under the PVI Licensed Patents:


Subject to Federal Rule of Evidence 408 and Analogous State Law Principles and Written Nondisclosure Agreement Commitments


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(1) To Sportvision and its Subsidiaries, a worldwide,
non-exclusive, irrevocable, royalty-free license to make, have made,
use, import and/or export Sportvision Licensed Products/Services;


(2) To Sportvision, its Subsidiaries and their respective
Distributors, a worldwide, non-exclusive, irrevocable, royalty-free
license to sell, offer to sell, distribute or otherwise provide
Sportvision Licensed Products/Services for the exclusive use by such
Persons' customers wh ...