TiVo 2004 Annual Report Download - page 153

SECTION 5. COVENANTS NOT TO ASSERT.
5.1 TiVo Covenant.
(a) During the Term, neither TiVo nor any of its Affiliates will assert against Comcast, Comcast Affiliates, Comcast Vendors (in relation to
Comcast Products), or Comcast Subscribers (in relation to Comcast Products), any claims of infringement of any TiVo Patents (whether arising before
or during the Term), in the following fields:
[*]
The Parties intend that the covenant in this Section 5.1, along with the limitations in this Section 5.1, shall run commensurate with the TiVo Patents and
shall be binding upon any successors or assigns of any such TiVo Patents.
(b) This Section 5.1 [*] (i) with respect to the TIMS Solution and all Updates and Releases thereto, whether created by TiVo or otherwise, and
[*]; provided that in the event of [*]; (ii) with respect to any Comcast Products deployed by Comcast during the Term; and (iii) upon any [*] than a
termination by TiVo for cause pursuant to Section 23.2, and [*], with respect to any Comcast Products deployed by Comcast [*], provided, however,
that, to the extent TiVo [*].
(c) Notwithstanding the provisions of this Section 5.1, if at any time during the Term [*], Comcast, any Comcast Affiliate, or any Comcast
Vendor asserts against TiVo or any TiVo Affiliate or TiVo Vendor (in relation to TiVo Products) any claim of infringement of any of such party's
patents in any of the fields identified in Section 5.1(a) or seeks to invalidate or otherwise challenge any TiVo Patent in any of such fields (other than
defensively in response to a claim of patent infringement), TiVo will have the right to assert its patents in any of the foregoing fields against such party.
5.2 Comcast Covenant. During the Term [*], neither Comcast nor any of its Affiliates will assert against TiVo, TiVo Affiliates, TiVo Vendors (in
relation to TiVo Products) or TiVo Users (in relation to TiVo Products), any claims of infringement of any Comcast Patent that claims an invention which
invention is first embodied [*]. Notwithstanding the foregoing provisions of this Section 5.2, if at any time TiVo, any TiVo Affiliate or any TiVo Vendor
asserts against Comcast or any Comcast Affiliate or Comcast Vendor (in relation to Comcast Products) any claim of infringement of any of such party's
patents in the field of Interactive Advertising Technology or seeks to invalidate any such Comcast Patent (other than defensively in response to a claim of
patent infringement), Comcast would have the right to assert all such Comcast Patents against such party in defense of that party's action. The Parties intend
that the covenant in this Section 5.2, along with the limitations in this Section 5.2, shall run commensurate with the Comcast Patents and shall be binding
upon any successors or assigns of any such Comcast Patents.
SECTION 6. INITIAL DEVELOPMENT.
6.1 TIMS Solution. Subject to the terms and conditions of this Section 6.1, TiVo shall develop and integrate the initial TIMS Solution with all
Qualifying STBs [*] pursuant to specifications to be documented in an initial Statement of Work for the TIMS Solution (the
[*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment
has been requested with respect to the omitted portions.
9.