FOURTH AMENDMENT
This Fourth Amendment (the "Amendment"), with an effective date of
October 17, 1994, is to the License Agreement dated February 9, 1990 between
ELECTRONICS FOR IMAGING, INC. ("EFI") and MASSACHUSETTS INSTITUTE OF TECHNOLOGY
("MIT") (the "License Agreement").
The parties hereby agree as follows:
1. Paragraph 1.7 of the License Agreement is amended to read in its entirety as
follows:
1.7 A "Licensed Product" shall mean any product, software, or system
(including without limitation input and output devices, which include
without limitation scanners and printers), and any circuitry, software
or subassembly which has been added by LICENSEE to any input and/or
output device when said product, system, software, circuitry or
subassembly:
(a) is covered in whole or in part by an issued,
unexpired claim or a pending claim contained in the
Patent Rights in the country in which any Licensed
Product is made, used or sold; or
(b) is manufactured or is used by using a process which
is covered in whole or in part by an issued,
unexpired claim or a pending claim contained in the
Patent Rights in the country in which any Licensed
Process is used or in which such product or part
thereof is used or sold.
2. Paragraph 1.9 of the License Agreement is amended to read in its entirety as
follows:
1.9 "Net Sales" shall mean LICENSEE's xxxxxxxx for Licensed Products
excluding input and output devices (which include without limitation
scanners and printers) and Licensed Processes produced hereunder less
the sum of the following:
(a) discounts allowed in amounts customary in the trade;
(b) sales, tariff duties, value added taxes and/or use
taxes directly imposed and with reference to
particular sales;
(c) outbound transportation prepaid or allowed;
(d) amounts allowed or credited on returns; and
(e) xxxxxxxx for Licensed Products and Licensed Processes
made and sold outside of the United States.
No deductions shall be made for commissions paid to
individuals whether they be with independent sales agencies or
regularly employed by LICENSEE and on its payroll, or for cost of
collections. Licensed Products shall be considered "sold" when billed
out or invoiced.
3. The provisions of Paragraph 2.2 of the License Agreement shall apply to
sublicenses only when such sublicenses convey exclusivity in any field of use.
4. Paragraph 2.8 of the License Agreement is amended to read in its entirety as
follows:
2.8 LICENSEE agrees that any sublicenses granted by it shall provide
that the obligations to M.I.T. of Articles II, VIII, IX, X and
Paragraphs 13.6 and 15.4, if applicable to such sublicense, shall be
binding upon the sublicensee as if it were a party to this Agreement.
LICENSEE further agrees to attach copies of such applicable Articles
and Paragraphs to sublicense agreements.
5. The provisions of Section 15.4 shall not apply to any sublicense entered into
between EFI and Apple Computer, Inc.
Agreed to for:
MASSACHUSSETS INSTITUTE ELECTRONICS FOR IMAGING,
OF TECHNOLOGY INC.
By: /s/ Xxxx Xxxxxx By: /s/ Xxxxxxxx X. Xxxx
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Title: Xxxx X. Xxxxxx, Director Title: Vice-Chairman & CFO
TECHNOLOGY LICENSING OFFICE --------------------
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Date: 27 October 1994 Date: October 27, 1994
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