EX-10 9 ex107.htm Converted by EDGARwiz


Exhibit 10.7


ASSIGNMENT

THIS ASSIGNMENT is made and entered into by and between Science Applications International Corporation, a Delaware corporation (“SAIC”), and VirnetX Inc., a Delaware corporation (“Transferee”).

RECITALS

WHEREAS, SAIC has the entire rights, title, and interest in and to the issued patents and pending patent applications listed in Exhibit A (the “Patents”);

WHEREAS, SAIC and Transferee entered into an agreement dated as of August 12, 2005 entitled, “Patent License and Assignment Agreement” (the “Original Agreement”);

WHEREAS, SAIC and Transferee entered into an amendment to the Original Agreement on or about November 2, 2006 entitled, “Amendment No. 1 to Patent License and Assignment Agreement” (the “Amendment”); and

WHEREAS, Transferee is desirous of acquiring, and SAIC is desirous of transferring to Transferee, all of SAIC’s rights, title, and interest in and to the Patents pursuant to the terms of the Original Agreement and the Amendment.

NOW, THEREFORE, for good and valuable consideration, the receipt for and sufficiency of which are hereby acknowledged, SAIC does hereby assign, convey, transfer and quitclaim to Transferee all of SAIC’s rights, title, and interest in and to the Patents, including, without limitation, the right to claim priority based on the Patents in subsequent patent applications filed anywhere throughout the world, including, without limitation, any and all international applications, national applications, national stage applications, regional applications, continuations, divisionals, substitutes, renewals, reissues, re-examinations, and extensions of the Patents, which have been or may be filed in the United States or any and all other countries and regions worldwide, including without limitation, any and all Letters Patents which have been or may be issued for the Patents in the United States or in any and all other countries and regions worldwide, including, without limitation, the right to enforce the Patents and such Letters Patents for past infringement, including, without limitation, the right to sue for injunction, damages, and otherwise, and collect damages and fees for Transferee including, without limitation, the right to file in Transferee’s own name applications for patents in the United States and any and all other countries and regions worldwide for inventions claimed in the Patents and to secure in Transferee’s own name Letters Patent or Patents issued thereon.

AND SAIC authorizes and requests the Commissioner of Patents and Trademarks or any other proper officer or agency of any country to issue all said Letters Patents to Transferee.

IN WITNESS WHEREOF, the parties have hereunto set hand and executed this AGREEMENT as of December 21, 2006:

SCIENCE APPLICATIONS
INTERNATIONAL CORPORATION

VIRNETX INC

  

By:   /s/ Pamela J. Bumann

By:   /s/ Kendall Larsen

Name:  Pamela J. Bumann

Name:  Kendall Larsen

Title:  Sr. Vice President

Title:  President & CEO








EXHIBIT A

SAIC PATENT RIGHTS

Country

Patent/Application No.

Filing Date

Title

Docket Nos.

JP

JP Application No.
2000-580354

10/29/99

An Agile Network Protocol For Secure Communications With Assured System Availability

SAIC 98-10-JAP
BW 000479.00042

CA

CA Application No.
2,349,520

10/29/99

An Agile Network Protocol For Secure Communications With Assured System Availability

SAIC 98-10-CAN
BW 000479.00043

AU

AU Application No.
16003/00

10/29/99

An Agile Network Protocol For Secure Communications
With Assured System Availability

SAIC 98-10-AUS
BW 000479.00046

EU

EPO Application No.
99 958693.6

10/29/99

An Agile Network Protocol For Secure Communications
With Assured System Availability

SAIC 98-10-EPO
BW 000479.00047

US

U.S. Application No.
09/429,643

10/29/99

An Agile Network Protocol For Secure Communications
With Assured System Availability

SAIC 98-10-US
BW 000479.84602

US

U.S. Application No.
10/401,551

3/31/03

An Agile Network Protocol For Secure Communications
With Assured System Availability

SAIC 98-10-DIV
BW 000479.00102

JP

JP Application No.
2000-580350

10/29/99

An Agile Network Protocol For Secure Communications
With Assured System Availability

SAIC 98-10-JAP2
BW 000479.00040

CA

CA Application No.
2,349,519

10/29/99

An Agile Network Protocol For Secure Communications
With Assured System Availability

SAIC 98-10-CAN2
BW 000479.00041

AU

AU Application No.
14553/00

10/29/99

An Agile Network Protocol For Secure Communications
With Assured System Availability

SAIC 98-10-AUS2
BW 000479.00048

EU

EPO Application No.
99 971606.1

10/29/99

An Agile Network Protocol For Secure Communications
With Assured System Availability

SAIC 98-10-EPO-2
BW 000479.00049

US

U.S. Patent No.
6,502,135

2/15/00

Agile Network Protocol for Secure Communications with Assured System Availability

SAIC 10003
BW 000479.85672

EU

EPO Application No.
01 910528.7

2/15/00

Improvements to an Agile Network Protocol for Secure
Communications with Assured System Availability

SAIC 10003-EPO
BW 000479.00080

JP

JP Application No.
2001-560062

2/15/00

Improvements to an Agile Network Protocol for Secure
Communications with Assured System Availability

SAIC 10003-JAP
BW 000479.00081

US

U.S. Patent No.
6,618,761

2/26/02

Agile Network Protocol For Secure Communications With Assured System Availability

SAIC 10003-DIV
BW 000479.00067

US

U.S. Patent No.
6,907,473

3/31/03

Improvements to an Agile Network Protocol For Secure
Communications With Assured System Availability

SAIC 10003-DIV-1
BW 00049.00101

US

U.S. Patent No.
6,834,310

2/26/02

Preventing Packet Flooding of a Computer on a Computer Network

SAIC 10003-DIV-2
000479.00068

US

U.S. Application No.
10/259,494

9/30/02

Establishment of a Secure Communication Link Based on a Domain Name Service (DNS) Request

SAIC 10003-DIV-3
BW 000479.00082

EU

EPO Application No.
01 932629.7

4/26/00

Improvements to an Agile Network Protocol for Secure
Communications with Assured System Availability

SAIC 10006-EPO
BW 000479.00085

JP

JP Application No.
2001-583006

4/26/00

Improvements to an Agile Network Protocol for Secure
Communications with Assured System Availability

SAIC 10006-JAP
BW 000479.00086

US

U.S. Patent No.
6,839,759

11/7/03

Method for Establishing Secure Communications Link
Between Computers of Virtual Private Network Without User Entering Any Cryptographic Information

SAIC 10006-Cont
BW 000479.00110

EU

EPO Application No.
01 932628.9

4/26/00

Improvements to an Agile Network Protocol for Secure
Communications with Assured System Availability

SAIC 10007-EPO BW
000479.00087

JP

JP Application No.
2001-501144

4/26/00

Improvements to an Agile Network Protocol for Secure
Communications with Assured System Availability

SAIC 10007-JAP
000479.00088

US

U.S. Application No.
10/714,849

11/18/03

An Agile Network Protocol for Secure Communications
Using Secured Domain Names

SAIC 10007-Cont
000479.00111

EU

EPO Application No.
05 102086.5-2413

3/16/05

Improvements to an Agile Network Protocol for Secure
Communications with Assured System Availability

SAIC 10007-EPO-DIV
BW 000479.00145

US

U.S. Application No.
09/874,258

6/6/01

Third Party VPN Certification

SAIC 10101-US
BW 000479.00032

EU

EPO Application No.
02 718836.6

1/17/02

Third Party VPN Certification

SAIC 10101-EPO
BW 000479.00108

US

U.S. Application No.
10/702,486

11/7/03

Method for Establishing Secure Communication Link
Between Computers of Virtual Private Network

SAIC 10006-DIV(1)
BW 000479.00112

US

U.S. Patent No.
6,826,616

11/7/03

Method for Establishing Secure Communication Link
Between Computers of Virtual Private Network

SAIC 10006-DIV (2)
BW 000479.00113




A-1