InComm Lottery Patent Pledge

InComm is committed to promoting innovation to further the overall growth and advancement of technology within the lottery industry and believes that opening up certain of its patents for use may foster innovation and promote technological advancement and cooperation while bringing lottery products to in-lane point-of-sale transactions. The Pledge will allow those within the Lottery Industry (as defined below) to freely and openly use the InComm Pledged Patents without fear of enforcement by e2Interactive, Inc. or InComm (collectively or individually, “InComm”).  InComm is therefore pledging the free use of certain of its patents in connection with on the following terms:

1. InComm pledges that it will not initiate a lawsuit against any party in the Lottery Industry for infringing an InComm patent through activity related to the purchase, sale, activation, use, or redemption of printed or digital lottery tickets (“Use of Lottery Tickets”), for so long as such party is acting in good faith.
2. “InComm Pledged Patents” means the list of patents attached hereto as Schedule A, which may be amended from time-to-time.
3. The “Lottery Industry” means any party or entity, whether private, governmental, national, state, territory, semi-private, semi-governmental, or otherwise who participates in the preparation, processing, printing, sale, processing, drawing, or redemption of random, draw, or instant lottery tickets, whether printed or digital.
4. Defensive Termination. Because this Pledge is a promise not to assert certain InComm patents (the InComm Pledged Patents) without requiring any payment from a Pledge Recipient, we think it is only fair that we condition the Pledge upon the Pledge Recipient (and its affiliates) not asserting or profiting from the assertion of patents against InComm, its affiliates, or its products or services. Accordingly, InComm reserves the right to terminate the Pledge, to the extent InComm deems necessary to protect itself, its affiliates, or its products and services (“Defensive Termination”) with respect to any Pledge Recipient (or affiliate) who is not acting in good faith.A party is “acting in good faith” so long as such party and its related or affiliated companies have not:

   a. Asserted, helped other assert, or had a financial stake in any assertion of any patent or other intellectual property right against InComm or its affiliates; or

   b. Challenged, helped others challenge, or had a financial stake in any challenge to any InComm patent or application.

   Any party who has participated in (a) or (b) above shall be deemed an “Asserting Party.”  Defensive Termination by InComm with respect to an Asserting Party shall have the same effect as if this Pledge was never extended to such Asserting Party in the first instance. InComm, in its sole discretion, shall determine the manner and terms, if any, by which rights under Pledged Patents may be extended to an Asserting Party after that Asserting Party’s lawsuit or other legal proceeding is permanently dismissed, terminated or withdrawn in writing.

5. Mistaken Assertion. Should InComm ever initiate a lawsuit or other legal proceeding for patent infringement based on any product or service which is not the subject of a Defensive Termination, and then receive written notice from the party against whom such lawsuit or other legal proceeding has been filed providing sufficient information for InComm to reasonably determine that such product or service in fact satisfies the requirements of the Pledge, then InComm will use reasonable efforts to withdraw such lawsuit (or the applicable claims therein) or move to terminate such other legal proceeding (or the applicable portions thereof) within sixty (60) days after receiving such written notice.
6. No Waiver. This Pledge, while binding on InComm and its successors, is a forbearance of enforcement of InComm’s remedies against any party for claims of infringement for so long as such party is acting in good faith.  In order for InComm to preserve its ability to enforce the InComm Pledged Patents against any party not acting in good faith, this Pledge is not a waiver of any patent claims (including claims for damages for past acts of infringement) and is not a license, covenant not to sue, or authorization to engage in patented activities, or a limitation on remedies, damages, or claims.  Except as expressly stated herein, no rights shall be deemed granted, waived, or received by implication, exhaustion, estoppel, or otherwise.  This Pledge is not any indication of the value of an arms-length, negotiated license or a reasonable royalty.
7. No Assurances or Warranties. All parties acknowledge that this Pledge is not an assurance that the InComm Pledged Patents are enforceable, or that practicing InComm’s Pledged Patents does not infringe others’ patents or other intellectual property.  InComm is not liable to a party relying on this Pledge for related claims brought by another based on infringement of intellectual property rights or otherwise.  InComm makes no representations and disclaims any and all warranties as to the validity of the InComm Pledged Patents. In addition, InComm makes no representations and disclaims any and all warranties as to or their own non-infringement of third-party intellectual property rights arising from the use or distribution of technologies described and claimed in the InComm Pledged Patents.
8. Continuing Rights in Transfer or Modification.a.   Transfer.  It is InComm’s intent that this Pledge be legally binding, irrevocable (except as otherwise provided herein), and enforceable against InComm and entities controlled by InComm.  Should InComm ever transfer any of the InComm Pledged Patents to a third party, it will do so while protecting the continuing interests of any Pledge Recipient depending hereon (“Depending Party”).  InComm will endeavor to transfer only to a party that agrees to provide the same protection that InComm provided under this Pledge, and to place the same requirement on any subsequent transferee, this may not always be possible.  Notice of any such transfer shall be provided in accordance with the Notice provision set forth below.

   b.    Modifications.  InComm may modify this Pledge by publishing a new edition.  The prior edition (including its treatment of previously held patents and patent applications) will continue to apply to patents and patent applications that InComm holds and identifies as InComm Pledged Patents before the new edition is published.  Any new editions will apply to all patents granted and patent applications filed after the effective date of the new edition and set forth on Schedule A.  Notice of any such modification shall be provided in accordance with the Notice provision set forth below.

   c.    Continuing Rights.  Should the rights granted under this Pledge change in any way, either from (i) transfer of any of the InComm Pledged Patents to a party that does not agree to provide the same protection provided under this pledge or (ii) modification of this Pledge by InComm, any Pledge Recipient that is depending upon this Pledge or an older version of this pledge (“Depending Party”) before such transfer or  modification shall be entitled to continue its reliance on the terms of the previous Pledge subject to the terms below.  If InComm transfers any of the InComm Pledged Patents to a party that does not agree to provide the same protection provided under this pledge, before any such transfer InComm will offer to all Depending Parties a royalty-free, perpetual, non-exclusive, non-transferable, non-sublicensable license to the specific InComm Pledged Patents depended upon (“Protective License”).

   In order to continue it continuing interests, any Depending Party shall provide written notice to InComm identifying the specific InComm Pledged Patents relied upon, no more than ninety (90) days from the notice of modification or transfer.  Notice of the date by which a Protective License must be obtained will be provided in accordance with the Notice provision set forth below.

9. Notice. The terms of this Pledge and information related thereto shall be published on a website associated InComm.  The specific address of this website shall be incomm.com/lottery-patent-pledge (“the Website”). InComm shall post notices of any modification, potential and/or pending Transfer, or other communications related to this Pledge on the Website.  While InComm may reach out to known Depending Parties to extend informal notice, publication of any such notices on the Website shall constitute official notice to any and all participants and/or Depending Parties.  If the address of the Website changes or is moved, notice of such change or move shall be published on the Website at least ninety (90) days prior to any such change or move.
10. Licensing. While InComm intends for this pledge to be a binding statement, InComm may still enter into license agreements under individually negotiated terms for those who wish to use InComm technology but cannot or do not wish to rely on this pledge alone.

Schedule A
 

This Schedule is accurate as of 03 May 2019.