Fourth Amendment to License Agreement between Electronics for Imaging, Inc. and Massachusetts Institute of Technology

Summary

This amendment updates the original License Agreement between Electronics for Imaging, Inc. (EFI) and the Massachusetts Institute of Technology (MIT), effective October 17, 1994. It revises definitions related to licensed products and net sales, clarifies the application of sublicense provisions, and specifies obligations for sublicensees. It also exempts a specific provision from applying to a sublicense agreement between EFI and Apple Computer, Inc. The amendment is signed by authorized representatives of both EFI and MIT.

EX-10.22 4 0004.txt FOURTH AMENDMENT 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 billings 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) billings 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/ Lita Nelsen By: /s/ Lawrence B. Levy -------------------------------- ------------------------- Title: Lita L. Nelsen, Director Title: Vice-Chairman & CFO TECHNOLOGY LICENSING OFFICE -------------------- --------------------------- Date: 27 October 1994 Date: October 27, 1994 --------------------------- -------------------- -2-