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Exhibit 10.14
LICENSE AGREEMENT
This License Agreement ("Agreement") is entered as of May 9th, 2000, (the
"Effective Date") by and between the Parties, A2D, L.P., (Licensor), a
California Limited Partnership having offices at 9200 Sunset Blvd., Suite 1005,
Los Angeles, California 90069, and Marshall & Ilsley Corporation ("Licensee"), a
Wisconsin corporation having offices at 770 N. Water Street, Milwaukee,
Wisconsin 53202.
WHEREAS, Licensor holds a license from Ronald A. Katz Technology Licensing, L.P.
("Patent Holder") under patent and patent application rights relating to
Automated Transaction Processing Utilizing Communication Facilities and/or
Computer Telephone Integration (ACTI patents) and has the right to grant non-
exclusive licenses, releases and covenants not to sue thereunder;
WHEREAS, Licensee inquired of Licensor in 1997 about the availability of
licenses under the ACTI patents, and has since engaged in negotiations with
Licensor for such a license;
WHEREAS, Licensee now desires to obtain certain non-exclusive rights under the
ACTI patents as provided herein;
WHEREAS, Licensor and Licensee (the "Parties") recognize the potential
difficulty and inefficiency to both Parties of negotiating and administering
individual licenses to each of such ACTI patents relating to a given activity of
Licensee;
WHEREAS, the Parties have reviewed the activities of Licensee as related to the
ACTI patents and on the basis of their knowledge have selected appropriate
Fields-Of-Use for the activities of Licensee with respect to the ACTI patents;
WHEREAS, in view of the nature of the ACTI patents, the business and activities
of Licensee, the mutual convenience of and efficiency to the Parties and the
equities of the situation, the Parties have resolved that specific Field-Of-Use
Licenses are proper and appropriate as set forth herein; and
NOW, THEREFORE, in consideration of the mutual premises and other consideration
as set forth herein, the Parties agree as follows:
1. DEFINITIONS
1.1 "Acquiring Person" means the Person or Persons that, in an
Acquisition, come into control, direct or indirect, of another Person or of
substantially all of the assets of another Person.
<PAGE>
1.2 "Acquisition" (and any similar term such as "Acquire") means a
transaction by which a Person that has not previously controlled (as used in
Section 1.9) another Person comes into control of such other Person or becomes
the owner of substantially all of the assets of such other Person.
1.3 "Arbitrator" means a patent attorney acceptable to the Parties having
an electrical engineering, computer science or similar background and licensing
experience in the field of telecommunications and experience in alternative
dispute resolution procedures.
1.4 "Customers" of Licensee are all those to whom Licensee provides
services within the licensed Fields-Of-Use.
1.5 (a) "Field-Of-Use" means an activity defined in Exhibit B.
(b) "Field-Of-Use License" means a license to make, have made and use
(but not sell, lease or otherwise transfer for use by others, except as
specified herein) products and processes of the Licensed Patents within one or
more specified Fields-Of-Use. As specified below in detail, the Fields-Of-Use
of this Agreement are Automated Service Bureau, Automated Credit & Calling Card
Authorizations Services, Employment Verification, Government Licensing
Registration, Government Payment Services and Automated Securities Transactions
Fields-Of-Use, as well as the Product, Technical and Sales Support Field-Of-Use
solely to the extent of providing customer service in support of the sale of
Licensee's own products to Licensee's Customers.
1.6 "Licensed Patents" means all United States and foreign patents listed
in Exhibit A, as well as all United States and foreign patents that have issued
or may issue on applications whose subject matter in whole or in part is
entitled to the benefit of the filing date(s) of any such patents or
applications on which they are based, including, without limitation,
continuations, continuations-in-part, divisions, reissues, reexaminations and
extensions.
1.7 "Licensed Territories" means the United States and its Territories,
and all other jurisdictions in which one or more of the Licensed Patents have
issued and remain in effect at any time during the term of this Agreement.
1.8 "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.
1.9 "Subsidiary" means a Person or entity controlled by Licensee; such
control being exercised through the ownership or control, directly or
indirectly, of 50% or more of all the voting power of the shares or other
interests entitled to vote for the election of directors or other governing
authority or, solely in the case of Customers Forever, LLC, 40 % or more of
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all such voting power, and a Person or entity shall be considered a Subsidiary
only for the time during which such control exists. Licensee's Subsidiaries on
the date of execution of this Agreement are: M&I Marshall & Ilsley Bank, M&I
Bank of Southern Wisconsin, M&I Bank Northeast, M&I Bank Fox Valley, M&I
Thunderbird Bank, M&I Bank South, M&I Mid-State Bank, M&I First American Bank,
M&I Community State Bank, M&I Northern Bank, M&I Central State Bank, M&I Bank of
Menomonee Falls, M&I Lake Country Bank, M&I Lakeview Bank, M&I Bank of Racine,
M&I First National Bank, M&I Merchants Bank, M&I Bank FSB, M&I Bank South
Central, M&I Bank of Shawano, M&I Bank of Burlington, M&I Central Bank and
Trust, M&I Bank of Eagle River, M&I Bank of La Crosse, M&I Bank of Mayville, M&I
Bank, M&I Citizens American Bank, Marshall & Ilsley Trust Company, M&I Marshall
& Ilsley Trust Company of Arizona, M&I Marshall & Ilsley Trust Company of
Florida, M&I Data Services, M&I Brokerage Services, Inc., M&I First National
Leasing Corp., M&I Investment Management Corp., M&I Mortgage Corp., Richter-
Schroeder Company, Inc., M&I Support Services Corp., Customers Forever LLC.
2. LICENSE GRANT
2.1 Licensor hereby grants to Licensee, and Licensee's Subsidiaries, a
fully paid, non-exclusive, Field-Of-Use License to make, have made, use and
provide services using (but not to sub-license, sell, lease or otherwise
transfer for use by others) products or processes embodying any and all
inventions claimed in the Licensed Patents within the Automated Service Bureau,
Automated Credit & Calling Card Authorizations Services, Employment
Verification, Government Licensing Registration, Government Payment Services and
Automated Securities Transactions Fields-Of-Use, and in the Licensed
Territories, but only so long as Licensee provides all automated call processing
and updates all databases associated with the licensed activities (except
databases maintained by Licensee's Customers to hold data of their customers).
2.2 Licensor hereby grants to Licensee, and Licensee's Subsidiaries, a
fully paid, non-exclusive, Field-Of-Use License to make, have made, use and
provide services using (but not to sub-license, sell, lease or otherwise
transfer for use by others) products or processes embodying any and all
inventions claimed in the Licensed Patents, within the Product, Technical and
Sales Support Field-Of-Use, solely to provide customer service in support of the
sale of its own products to its Customers, and in the Licensed Territories, and
only so long as Licensee provides all automated call processing and updates all
databases associated with the licensed activities (except databases maintained
by Licensee's Customers to hold data of their customers).
2.3 It is expressly understood that the license of Sections 2.1 and 2.2
applies only to activities of Licensee and Licensee's Subsidiaries, and only to
the extent that Licensee and its Subsidiaries provide all automated call
processing and update all databases (except databases maintained by Licensee's
Customers to hold data of their customers) associated with the licensed
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activities. The license does not pass through to Customers or other Persons any
express or implied license to use any service provided by Licensee hereunder
together with any other elements or steps to create a combination or method
falling within the scope of any claim of the Licensed Patents. Furthermore,
there are no intended third party beneficiaries of this Agreement.
Notwithstanding the previous statements, it is expressly understood by the
Parties that the services which Licensee provides to its Customers within the
licensed Fields-Of-Use, and in compliance with the terms of this Section 2, are
fully licensed and Licensor shall have no cause of action against any of
Licensee's Customers arising from them.
2.4 Licensor agrees to release Licensee, Licensee's Subsidiaries and
Licensee's Customers from liability for infringement of the Licensed Patents
based on acts performed by or through Licensee or Licensee's Subsidiaries prior
to the Effective Date and within the Fields-Of-Use of this Agreement.
2.5 The license and release of this Section 2 shall become effective upon
payment in full of the Fixed License Fee of Section 3.
3. CONSIDERATION
3.1 In consideration for the license and release of Section 2, Licensee
shall pay to Licensor a guaranteed, non-refundable and non-cancelable Fixed
License Fee of One Million, Two Hundred Six Thousand, Eight Hundred Forty-One
Dollars and Fifty Cents ($1,206,841.50), payable within ten (10) days of
execution, as follows:
Beneficiary Account Name: - A2D, L.P.
Bank - City National Bank
Bank Address - 400 N. Roxbury Drive, Beverly Hills, CA 90210
Account No. - 001-339-974
ABA No. - 122016066
3.2 Of the Fixed License Fee, One Hundred Thousand Dollars ($100,000)
represents a fee for activity in the licensed Fields-Of-Use prior to the
Effective Date.
4. ASSIGNMENT, ACQUISITION AND DIVESTITURE
4.1 Licensor shall be permitted to assign its rights or delegate its
duties under this Agreement only in connection with the assignment and
delegation of all such rights and duties to a successor that acquires
substantially all of the assets and business of Licensor and expressly agrees in
writing to assume and perform all of the obligations of Licensor.
4.2 The license of Section 2 is indivisible, with the sole exception that
Licensee's business division, M&I Data Services, shall have a separate license
if divested by Licensee after
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the Effective Date. This separate license shall also be indivisible, and shall
be subject to the other terms and conditions of this Agreement, specifically
including this Section 4 but excluding the consideration terms of Section 3.
4.3 The license granted to Licensee, and the separate license available to
M&I Data Services upon divestiture, are personal to these respective entities
(collectively, "the M&I Entities") and may not be transferred or extended to any
other Person, by Acquisition or otherwise, without Licensor's written consent.
Licensor's consent shall not be refused, however, in the case of an assignment
of rights or delegation of duties by one of the M&I Entities to a successor
(other than AT&T, Citibank, Convergys or any Person owned or controlled in whole
or in part, or previously owned or controlled in whole or in part, by any of
them) which agrees in writing to assume and perform all of the obligations of
the applicable M&I Entity and satisfies the following requirements:
(a) negotiate in good faith to determine whether the successor conducts
any activities other than those of Licensee which fall within the
Fields-Of-Use of this Agreement, and to determine an additional fee
("Subsequent License Fee") to reflect any such activities;
(b) negotiate in good faith to determine an additional fee ("Release Fee")
reflecting any existing liability of the successor for past activities
falling with the Fields-Of-Use of this Agreement;
(c) if the Parties cannot negotiate a Subsequent License Fee and/or a
Release Fee within sixty (60) days after a request by Licensor for
commencement of such negotiation, submit the issue to arbitration as though
requested by Licensee;
(d) agree in writing that the license rights received by it are personal
and remain subject to the terms and conditions of this Agreement, including
without limitation this Section 4.
(e) pay the Subsequent License Fee and/or the Release Fee within sixty
(60) days after they are determined.
4.4 Likewise, the licenses to the M&I Entities may not be extended to any
Person Acquired by, or who becomes affiliated with, either of them without
Licensor's written consent. Licensor's consent shall not be refused, however, in
the case of any Acquisition where the applicable M&I Entity (including any
successor to either or both of the M&I Entities) satisfies requirements (a)
through (e) of Section 4.3 above (with the word "Acquired Party" substituted for
"successor"). If either of the M&I Entities, or any entity claiming license
rights through them, Acquires or becomes affiliated with another Person without
satisfying such requirement, the license to it shall immediately terminate.
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4.5 Any Subsequent License Fee or Release Fee determined under the terms
of this Section 4 shall be negotiated utilizing Licensor's then prevailing rates
for the Fields-Of-Use involved.
5. REPRESENTATIONS AND WARRANTIES
5.1 Licensor represents and warrants that, in the two (2) years
immediately preceding the Effective Date, all of its internal Call Center
operations that in any way involved a voice response unit totaled, as follows:
13,123,077 minutes in calendar 1998; and
19,112,307 minutes in calendar 1999;
5.2 Licensor represents and warrants that it holds a license from Patent
Holder under the Licensed Patents and has the right to grant non-exclusive
licenses, covenants not to sue and releases from past infringement thereunder,
that it has the right to enter into this Agreement and is not a party to any
agreements or obligations inconsistent with this Agreement. Licensor also
represents and warrants that there are no previously granted exclusive licenses
granted to any third parties in the Fields-Of-Use. Furthermore, Licensor
represents and warrants that the Licensed Patents constitute all of the patents
that Licensor or Patent Holder owns or has a right to license.
5.3 This license does not and shall not be interpreted or construed to
include: (1) any warranty or representation as to the validity, enforceability
or scope of any Licensed Patent, (2) any warranty or representation that any
specific apparatus or method used by Licensee in connection with any Licensed
Patent is or will be free from infringement of patents of others or other
intangible rights of third parties, (3) any requirement to file any patent
application, secure or maintain any patent, (4) any obligation to bring or
prosecute any action for infringement of any Licensed Patent, (5) any obligation
to furnish any technical or support information, (6) any license or right by
implication or estoppel, or (7) any warranty regarding implementations of
Licensed Patents as with respect to MERCHANTABILITY, NON-INFRINGEMENT OR FITNESS
FOR ANY PARTICULAR PURPOSE OR USE.
6. TERMINATION
6.1 Licensee shall have the right to terminate this entire Agreement at
any time by a written notice to Licensor at least thirty (30) days in advance.
Such termination shall be effective on December 31 of the calendar year in which
such notice is provided. In the event that Licensee sells or otherwise disposes
of its division, M&I Data Services, either Licensee or M&I Data Services may
terminate this Agreement, but any such termination shall be effective only as to
the respective one of Licensee and M&I Data Services which terminates the
Agreement.
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6.2 Licensor shall have the right to terminate this Agreement and all
rights of Licensee and its Subsidiaries hereunder by giving written notice of
termination to Licensee in the event Licensee becomes delinquent in making any
of the payments required by Sections 3 and 4, which delinquency is not cured
within ninety (90) days of written notice from Licensor to Licensee.
Notwithstanding the foregoing, in the event Licensee sells or otherwise disposes
of its division, M&I Data Services, no subsequent delinquency by M&I Data
Services shall be cause for termination of this Agreement and the rights granted
hereunder to Licensee, and no subsequent delinquency by Licensee shall be cause
for termination of this Agreement and the rights granted hereunder to M&I Data
Services.
6.3 Any termination of the license granted herein shall not relieve
Licensee of the duty and obligation of Licensee to pay in full all amounts due
as of the Effective Date of such termination. In the event that Licensee sells
or otherwise disposes of its division M&I Data Services, any subsequent
termination by Licensee of the license granted herein shall not relieve Licensee
of the duty and obligation of Licensee to pay in full all amounts due as of the
Effective Date of such termination, and any subsequent termination by M&I Data
Services of the license granted herein shall not relieve M&I Data Services of
the duty and obligation of M&I Data Services to pay in full all amounts due as
of the Effective Date of such termination.
6.4 Unless sooner terminated as provided herein, this Agreement shall
continue until the expiration of the last to expire of the Licensed Patents.
7. CONFIDENTIALITY
7.1 Other than as reasonably necessary to exercise the rights granted
hereunder, and other than as set forth in the Section 9, PRESS RELEASE, neither
Party shall disclose the terms and conditions (including payments) of this
Agreement to third parties without the prior written consent of the other Party,
unless such disclosure is:
(a) in response to a valid order of a court or other governmental body
of the United States or any political subdivision thereof; provided,
however, that the Party making the disclosure shall have first given
notice to the other Party prior to providing such response and made a
reasonable effort to obtain a protective order requiring that the
information so disclosed be used only for the purposes for which the
order was issued;
(b) otherwise required by law; or
(c) necessary to establish rights under this Agreement.
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7.2 Notwithstanding the provisions of Section 7.1, Licensor may disclose a
summary of the terms and conditions of this Agreement in confidence to existing
or prospective licensees without specifically identifying Licensee. In addition,
Licensor may disclose the terms and conditions of this Agreement to its general
and limited partners, and its financial and tax advisors, for accounting
purposes in the normal course of its business, and to prospective purchasers of
Licensor, Patent Holder or any of the Licensed Patents, provided that the Party
receiving such information agrees in writing to maintain it confidential. Also,
Licensee may disclose the terms and conditions of this Agreement to its
subsidiaries and its financial and tax advisors, for accounting purposes in the
normal course of its business, and to prospective purchasers of Licensee or M&I
Data Services, provided that in each case the party receiving such information
agrees in writing to maintain it confidential. Each Party's obligation to avoid
disclosure shall be satisfied by that Party's exercising reasonable measures
which it normally exercises to prevent disclosure of private contract
information of its own. In addition, Licensor may disclose, by name, that
Licensee and its Subsidiaries are licensed.
8. ARBITRATION
8.1 No issue of the validity of any of the Licensed Patents,
enforceability of any of the Licensed Patents, infringement of any of the
Licensed Patents, the scope of any of the claims of the Licensed Patents and/or
any dispute that includes any such issue shall be subject to arbitration under
this Agreement unless otherwise agreed by the Parties in writing.
8.2 Except for those issues and/or disputes described in Section 8.1, any
dispute between the Parties concerning the interpretation, construction or
application of any terms, covenants or conditions of this Agreement shall be
resolved by arbitration.
8.3 Arbitration shall be in accordance with the Center for Public
Resources (CPR) Rules for Non-Administered Arbitration of Patent and Trade
Secret Disputes or Rules for Non-Administered Arbitration of Business Disputes,
as appropriate, in effect on the Effective Date by a sole Arbitrator who shall
be appointed in accordance with the applicable CPR rules. Any other choice of
law clause to the contrary in this Agreement notwithstanding, the arbitration
shall be governed by the United States Arbitration Act, 9 U.S.C. Section 1-16.
8.4 Any award made (i) shall be a bare award limited to a holding for or
against a party and affording such remedy as is within the scope of the
Agreement, (ii) shall be accompanied by a brief statement (not to exceed ten
(10) pages) of the reasoning on which the award rests; (iii) shall be made
within four (4) months of the appointment of the arbitrator; (iv) may be entered
in any court of competent jurisdiction; and (v) any award pertaining to a patent
which is subsequently determined to be invalid or unenforceable or otherwise
precluded from being enforced in a judgment rendered by a court of competent
jurisdiction from which an appeal can or has been taken may be modified as it
relates to such patent by any court of competent jurisdiction upon application
by any party to the arbitration.
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8.5 The requirement for arbitration shall not be deemed a waiver of any
right of termination under this Agreement and the arbitrator is not empowered to
act or make any award other than based solely on the rights and obligations of
the Parties prior to any such termination.
8.6 Each Party shall bear its own expenses incurred in connection with
any attempt to resolve disputes hereunder, but the compensation and expenses of
the arbitrator shall be borne equally.
8.7 The arbitrator shall not have authority to award punitive or other
damages in excess of compensatory damages, and each Party irrevocably waives any
claim thereto.
9. PRESS RELEASE
9.1 A mutually approved press release in the form attached hereto as
Exhibit D may be released by Licensor. Both the Licensee, its officers and
principals, and the Licensor, its officers and principals, agree and undertake
that any and all future statements by them, or any of them, to the public, the
media or business associates, shall be entirely consistent with the Press
Release as mutually approved. Nothing in this Agreement shall be construed to
preclude Licensee or Licensor, or their officers or principals, from making any
disclosures required by law, regulation or judicial process.
10. NOTICES
10.1 All notices and other communications required or permitted hereunder
shall be in writing and shall be mailed by Federal Express or other nationally
recognized overnight carrier, registered or certified mail, postage prepaid, or
otherwise delivered by hand or by messenger, with written indication of delivery
or tender, when applicable, addressed to Licensor or Licensee at the addresses
set forth above, or at such other address as either Party may substitute by
written notice provided to the other Party in such manner. Such notices shall be
deemed to have been served when delivered, or if delivery is not accomplished by
reason of some fault of the addressee, when tendered.
11. PATENT MARKING
11.1 Licensee and its Subsidiaries shall, during the term of this
Agreement, mark hardware, software and any printed materials distributed with
respect to their automated systems, with a notice of the Licensed Patents in the
form of Exhibit C, as appropriate under statutory patent provisions. This
obligation shall be deemed to have been satisfied if Licensee and its
Subsidiaries include a notice in the form of Exhibit C on any brochures
distributed by them regarding their automated call processing or voice response
technology.
12 PARTIAL INVALIDITY
12.1 If any paragraph, provision, clause of this Agreement or claim of any
Licensed Patent shall be found or held to be invalid or unenforceable by a court
or other decision-making
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body of competent jurisdiction, the remainder of the Agreement or Licensed
Patents shall remain valid and enforceable, and to the extent required in the
pursuit of this Agreement, the Parties shall negotiate in good faith a
substitute, valid and enforceable provision which reflects the Parties' intent
in entering the Agreement.
13. ENTIRE AGREEMENT
13.1 The terms and conditions herein constitute the entire Agreement
between the Parties and supersede all previous agreements and understandings,
whether oral or written, between the Parties hereto with respect to the subject
matter hereof, and no prior agreement or understanding varying or extending the
same shall be binding upon either Party hereto.
14. SECTION HEADINGS
14.1 The section headings contained in this Agreement are for reference
purposes only and shall not in any way affect the meaning or interpretation of
this Agreement.
15. GOVERNING LAW
15.1 This Agreement shall be governed and interpreted in accordance with
the patent laws of the U.S.A. and the substantive laws of the state of
California, U.S.A., without reference to conflicts of laws and principles.
16. NO AGENCY
16.1 Nothing herein contained shall be deemed to create or give rise to an
agency, joint venture or partnership relationship, or any confidential or
fiduciary relationship between the Parties.
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IN WITNESS WHEREOF, the Parties have caused their duly authorized officers to
execute this Agreement on the dates indicated below.
LICENSOR
A2D, L.P., a California limited partnership,
its general partner,
By: A2D Corporation, a California corporation,
its general partner,
By:/s/ Ronald A. Katz DATE: May 9, 2000
------------------ ------------------------
RONALD A. KATZ
Its Chief Executive
LICENSEE
Marshall & Ilsley Corporation
By:/s/ Norrie J. Daroga DATE: May 9, 2000
-------------------- ------------------------
NORRIE J. DAROGA
Its Senior Vice President
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EXHIBIT A
---------
RONALD A. KATZ TECHNOLOGY LICENSING, L.P.
-----------------------------------------
ISSUED U.S. PATENTS
Expired Patents
<TABLE>
<CAPTION>
Patent No. Title
<S> <C>
4,071,698 Telephone System for Audio
Demonstration and Marketing of
Goods or Services
UNEXPIRED PATENTS
Patent No. Title Issue Date
<S> <C> <C> <C>
1. 4,792,968 Statistical Analysis System for 12/20/1988
Use With Public Communication
Facility
2. 4,845,739 Telephonic-Interface Statistical 7/4/1989
Analysis System
3. 4,930,150 Telephonic Interface Control 5/29/1990
System
4. 4,932,046 Telephone Programming System for 6/5/1990
Automated Calling
5. 4,939,773 Multiple Party Telephone Control 7/3/1990
System
</TABLE>
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Patent No. Title Issue Date
6. 4,975,945 Universal Telephone Call Relay 12/4/1990
System
7. 4,987,590 Multiple Party Telephone Control 1/22/1991
System
8. 5,014,298 Voice-Data Telephonic Control 5/7/1991
System
9. 5,016,270 Expanded Telephone Data 5/14/1991
Organization System
10. 5,048,075 Telephonic-Interface Statistical 9/10/1991
Analysis System
11. 5,073,929 Voice-Data Telephonic Control 12/17/1991
System
12. 5,091,933 Multiple Party Telephone Control 2/25/1992
System
13. 5,109,404 Telephone Call Processor With 4/28/1992
Select Call Routing
14. 5,128,984 Telephone Interface Call 7/7/1992
Processing System With Call Selectivity
15. 5,185,787 Multiple Party Telephone Control 2/9/1993
System With Random Dialing For Polling
16. 5,218,631 Telephonic-Interface Game Control 6/8/1993
System
17. 5,224,153 Voice-Data Telephonic Interface 6/29/1993
Control System
18. 5,251,252 Telephone Interface Call 10/5/1993
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Patent No. Title Issue Date
Processing System With Call Selectivity
19. 5,255,309 Telephonic-Interface Statistical 10/19/1993
Analysis System
20. 5,259,023 Telephonic-Interface Statistical 11/2/1993
Analysis System
21. 5,297,197 Multiple Party Telephone Control 3/22/1994
System
22. 5,349,633 Telephonic-Interface Game Control 9/20/1994
System
23. 5,351,285 Multiple Format Telephonic 9/27/1994
Interface Control System
24. 5,359,645 Voice-Data Telephonic Interface 10/25/1994
Control System
25. 5,365,575 Telephonic-Interface Lottery 11/15/1994
System
26. 5,442,688 Multiple Party Telephone Control 8/15/1995
System
27. 5,553,120 Telephonic-Interface Game Control 9/3/1996
System
28. 5,561,707 Telephonic-Interface Statistical 10/1/1996
Analysis System
29. 5,684,863 Telephonic-Interface Statistical 11/4/1997
Analysis System
30. 5,787,156 Telephonic-Interface Lottery 7/28/1998
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Patent No. Title Issue Date
System
31. 5,793,846 Telephonic-Interface Game Control 8/11/1998
System
32. 5,815,551 Telephonic-Interface Statistical 9/29/1998
Analysis System
33. 5,828,734 Telephone Interface Call 10/27/1998
Processing System With Call Selectivity
34. 5,835,576 Telephonic-Interface Lottery Device 11/10/1998
35. 5,898,762 Telephonic-Interface Statistical 4/27/1999
Analysis System
36. 5,917,893 Multiple Format Telephonic 6/29/1999
Interface Control System
37. 5,974,120 Telephone Interface Call 10/26/1999
Processing System With Call Selectivity
38. 6,016,344 Telephonic-Interface Statistical 1/18/2000
Analysis System
39. 6,035,021 Telephonic-Interface Statistical 3/07/2000
Analysis System
40. 6,044,135 Telephone Interface Lottery System 3/28/2000
15
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ISSUED FOREIGN PATENTS
<TABLE>
<CAPTION>
Country/ Title Issue Date
Patent No.
<S> <C> <C> <C>
1. Europe (established Statistical Analysis System And 2/16/1994
in Germany, U.K., Method For Use With Public
France, Sweden, Communication Facility
Netherlands)/
0229170B1
2. Europe (established Interactive call-handling 3/22/1995
in Germany, U.K.,
France, Sweden,
Netherlands)/
0342295B1
3. Europe (established Data analysis systems and methods 10/6/1999
in Germany, U.K.,
France, Sweden,
Netherlands)/
0568114B1
4. U.K./ Communication Methods and Systems 7/7/1993
GB2230403
5. Canada/ Voice-Data Telephonic Control 6/11/1996
2009937 System
6. Japan/ Statistical Analysis System For 8/22/1996
2552469 Use With Public Communication
Facility
7. Japan/ Voice-Data Telephonic Control 7/2/1999
2948253 System
8. France/ Voice-Data Telephonic Control 8/14/1996
2,643,526 System
9. France/ Voice-Data Telephonic Control 3/6/1998
2,733,109 System
</TABLE>
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EXHIBIT B
---------
Ronald A. Katz Technology Licensing, L.P.
-----------------------------------------
Fields Of Use
-------------
Full Portfolio
--------------
This rate structure entitles the licensee to use all of the patents in the
current portfolio as well as any continuations, CIP, Div. on pending patents,
etc. This rate structure entitles the licensee to participate in all the Fields
of Use described herein.
Fields of Use
-------------
Automated Credit & Calling Card Authorizations Services (excluding prepaid
cards)
The provision of credit card authorization service by the credit card
firm or designee using interactive voice response (or combined live
operator/interactive systems) as a stand alone offering. (Note: This is as
opposed to the obtaining of an authorization as a part of processing a call for
another purpose, i.e. an automated order, which is included in the Automated
Service Bureau Field of Use.)
Automated Securities Transactions (buy/sell)
Interactive call processing (or combined live operator / interactive systems
processing) on an on-going basis, operated by the broker or dealer of the
securities, which allows callers to purchase, sell, or trade securities such as
stock and mutual funds, or transfer funds between such securities. May include
automated customer service functions such as automated order status information
and cancellation.
Automated Service Bureau
All forms of fully automated call processing or combined automated and live call
processing (except as described in each of the other Fields of Use defined
herein) using interactive voice services, where an independent bureau offers
call termination services, often including transport and call handling, to a
sponsoring organization or an internal group.
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This Field of Use includes prepaid card use and automated ordering, which in
turn may include the obtaining of a credit card authorization as part of such an
order or other interactive process. Ongoing automated ordering on behalf of a
television- shopping network and Television Shopping Systems via Cable
Facilities would be excluded - as they represent other Fields of Use.
Electronic Personal Classifieds
The use of interactive voice services (or combined live operator / interactive
systems) to allow advertisers and interested respondents to contact each
another. Typically, advertisers create and store voice messages which can be
heard by potential respondents who can, in turn, leave recorded voice messages
for the advertisers. Finally, advertisers have the ability to retrieve stored
responses. Advertisers may also have the ability to store attributes of that
which is being advertised via touch tone entry, for the purpose of automatically
matching similar attributes or requirements of the respondents
Employment Verification
The use of interactive voice services (or combined live operator / interactive
systems) to collect and distribute information regarding employment status and
salary or to support the process of collecting and distributing this employment
information.
Enhanced Cable Customer Service:
Cable related customer service (not including Pay per View or Interactive
Transactions Through Cable Communications Facilities) typically involving
communications with customers concerning cable accounting, billing, ordering of
service and cable service related equipment, coordination of installation,
repairs, or other cable services. These communications are all related to the
provision and support of cable services only. Communications related to any
other area such as Enhanced Telephony or Wireless Services would be embraced in
another Field of Use
Enhanced Telephony Customer Service:
Telephony related customer service (including Wireless Services) typically
involving communications with customers concerning local, long distance or other
telephony accounting, billing, ordering of service and service related
equipment, coordination of installation, repairs, or other services. These
communications are all related to the provision and support of telephony
services only. Communications related to any other area such as cable service,
or Automated Service Bureau, would be embraced in another Field of Use.
Government Licensing Registration (i.e. automotive registration)
The use of interactive voice services (or combined live operator / interactive
systems) operated by a Government entity or its designee to handle the process
of a caller renewing a license.
Government Payment Services
The use of interactive voice services (or combined live operator / interactive
systems) operated by a government entity or its designee to handle the
processing of a caller's payment to the government entity or to support such
payments (this FOU would not embrace the activities covered by any other FOU, in
particular Government Licensing Registration).
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Group Conferencing (including "broadcast" services)
One Example: Automated bridging of more than two callers utilizing some form of
"listen only" (unilateral) communication, which may be combined with some form
of interactive communication.
Interactive Transactions through Cable Communications Facilities
Automated interactive transactions of various types (e.g. games contests,
lotteries and polls) conducted over a cable distribution media (e.g. coaxial or
fiber media).
Pay per View
Automated ordering of pay-per-view movies. Typically involves automated ordering
of a movie or event from a cable company utilizing automatic identification
capabilities and/or voice processing capabilities to capture the number from
which the subscriber is calling or the caller's account number, to speed the
order and increase security.
Product, Technical and Sales Support
The interactive processing of calls operated by the manufacturer of the product
or the provider of the service, to provide product support, technical support,
customer support, sales support, including but not limited to support provided
to employees and stockholders of the Licensee, regardless of whether a fee is
charged for such activities.
State Lottery Prepaid Tickets or Cards
The use of interactive voice services (or combined live operator / interactive
systems) operated by a State or its designee for the purpose of allowing a
caller to enter a state lottery utilizing interactive call processing
technology.
Television Shopping Systems (automated ordering)
The use of interactive voice services (or combined live operator / interactive
systems) operated by a television shopping network, to handle ongoing orders for
products or services in an automated fashion. Typically, this involves the
processing of credit card information for payment.
Television Shopping Systems via Cable Facilities (automated ordering)
The use of interactive voice services (or combined live operator / interactive
systems) operated by a television shopping network, to handle ongoing orders
(over cable distribution media) for products or services based on television
programming, where the order processing is offered directly by the licensee
without an interactive voice component.
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EXHIBIT C
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Patent Notice
Marshall & Ilsley Corporation is licensed under the following, and related
Ronald A. Katz Technology Licensing, L.P. United States Patents: 4,845,739;
5,255,309; 5,259,023; 5,349,633; 5,351,285; 5,365,575; 5,251,252; 5,359,645;
5,297,197; 5,561,707; 5,684,863; and others.
<PAGE>
EXHIBIT D
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PRESS RELEASE
-------------
Ronald A. Katz Technology Licensing, L.P.
For Immediate Release
May X, 2000
Marshall & Ilsley Corporation
Purchases a License Under
The Ronald A. Katz Technology Licensing L.P. Patents.
Los Angeles, CA - It was announced today that Marshall & Ilsley Corporation
(M&I) based in Milwaukee, Wisconsin has acquired a license under the patent
portfolio held by Ronald A. Katz Technology Licensing L.P.
The license covers services provided by Marshall & Ilsley companies to their
customers including automated forms of: Telephone Banking and Bill Payment and
Credit Card Activation. In addition, the license covers telephone based Vehicle
Registration service provided through State Departments of Transportation to
their customers. Other terms of the license were not disclosed.
The 40 United States patents held by Ronald A. Katz Technology Licensing L.P.,
and numerous foreign equivalents, cover a wide range of interactive technology
including automated forms of: customer service, merchandising, prepaid
services, telephone conferences, registration, home shopping, as well as
functions involved in securing information from databases by telephone,
interactive cable transactions, and various other uses of 800, 900 and local
numbers. Fourteen additional patents are currently pending in this portfolio.
According to Michael A. Hatfield, Senior Vice President, Marshall & Ilsley
"After an extensive study of the Katz Patents, we recognize the significance of
these license rights in implementing and enhancing M&I's various services."
Ronald A. Katz, chief executive of Ronald A. Katz Technology Licensing L.P.
added "We are very pleased to welcome M&I to the increasing list of companies
who have purchased license
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rights under this portfolio. M&I is now licensed to implement new cost saving
technologies which will increase customer convenience and security."
A large number of companies are licensed under the Katz portfolio, they include
First Data Corporation, American Express, MoneyGram Payment Systems Inc., MCI
Telecommunications Corp., Sprint, Tele-Communications Inc., The Gallup
Organization, Home Shopping Network Inc., and West Interactive Corporation.
Mr. Katz is the named inventor on over 50 patents primarily in the fields of
telecommunications and computing. He formed Telecredit, Inc. the nation's first
on-line real time credit and check cashing authorization system, and was awarded
a patent as co-inventor of that technology.
Marshall & Ilsley Corporation is a multibank holding company headquartered in
Milwaukee, Wis. with $24.9 billion in assets. The Corporation has 26 banks
serving the state from more than 200 offices, one bank in Phoenix, Ariz. with 13
offices and one bank in Nevada with offices located in Illinois and Florida. In
addition, the holding company owns and operates 49 offices throughout the
country that provide trust and investment management, equipment leasing,
mortgage banking, financial planning, investments, insurance and data
processing.
Contact:
--------
Brian Rivette
A2D,L.P.
310-247-8191
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