8-K

UNITED STATES

SECURITIES AND EXCHANGE COMMISSION

Washington, D.C. 20549

FORM 8-K

CURRENT REPORT

Pursuant to Section 13 or 15(d) of the Securities Exchange Act of 1934

Date of Report (Date of earliest event reported): August 2, 2016

SPHERIX INCORPORATED

(Exact Name of Registrant as Specified in Charter)

Delaware	0-5576	52-0849320
(State or other jurisdiction of incorporation)	(Commission File Number)	(IRS Employer Identification No.)

One Rockefeller Plaza, 11th Floor New York, NY	10020
(Address of principal executive   offices)	(Zip Code)

Registrant’s telephone number, including area code: (212) 745-1374

(Former name or former address, if changed since last report)

Check the appropriate box below if the Form 8-K filing is intended to simultaneously satisfy the filing obligation of the registrant under any of the following provisions:

¨ Written communications pursuant to Rule 425 under the Securities Act (17 CFR 230.425)

¨ Soliciting material pursuant to Rule 14a-12 under the Exchange Act (17 CFR 240.14a-12)

¨ Pre-commencement communications pursuant to Rule 14d-2(b) under the Exchange Act (17 CFR 240.14d-2(b))

¨ Pre-commencement communications pursuant to Rule 13e-4(c) under the Exchange Act (17 CFR 240.13e-4(c))

Item 7.01 Regulation FD

On March 11, 2016, Spherix Incorporated (the “Company”) entered into a collaboration agreement with Equitable IP Corporation, a leading patent enforcement and monetization fund, as amended in April and May 2016 (collectively, the “Equitable Agreement”), to enhance its monetization efforts in connection with a portion of Spherix's patent portfolio, as previously disclosed by the Company in press releases dated March 8, 2016 and May 25, 2016, and as referenced in the Company’s quarterly report on Form 10-Q filed May 16, 2016. 

The Equitable Agreement may require us to take a loss on sale or transfer of patents or an impairment charge with respect to the intangible assets set forth on our balance sheet, and such loss on sale or transfer of patents or impairment charge may be material.

The foregoing descriptions of the Equitable Agreement does not purport to be complete and is qualified in its entirety by reference to the Equitable Agreement (as amended), which is filed as Exhibit 1.1. hereto, which is incorporated herein by reference. The March 8, 2016 and May 25, 2016 press releases are respectively filed as Exhibits 99.1 and 99.2 hereto and incorporated herein by reference.

Item 9.01. Financial Statements and Exhibits

(d) Exhibits.

1.1	Equitable IP Collaboration Agreement, dated as of March 11, 2016 by and between Spherix Incorporated and Equitable IP Corporation, as amended April 22, 2016, April 27, 2016 and May 22, 2016.
99.1	Company Press Release, dated March 8, 2016
99.2	Company Press Release, dated May 25, 2016

SIGNATURE

Pursuant to the requirements of the Securities Exchange Act of 1934, the registrant has duly caused this report to be signed on its behalf by the undersigned hereunto duly authorized.

	Spherix Incorporated
Date:    August 2, 2016	By:	/s/ Anthony Hayes
	Name:	Anthony Hayes
	Title:	Chief Executive Officer

EX-1.1

Exhibit 1.1

 

 

 

 

 

 

FIRST AMENDMENT TO

TECHNOLOGY MONETIZATION AGREEMENT

THIS FIRST AMENDMENT TO THE TECHNOLOGY MONETIZATION AGREEMENT (this “Agreement”), dated as of the latest execution date below (the “Effective Date’’), is entered into by Equitable IP Corporation, a Nevada Corporation with offices at 10 Balligomingo Road, West Conshohocken, PA 19428 and its affiliated companies (“Equitable”) and Spherix Incorporated, a Delaware corporation (“Parent”). Each may be individually referred to as a “Party” and collectively may be referred to as “the Parties.”

WITNESSETH:

WHEREAS, Parent and Equitable have previously entered into a Technology Monetization Agreement dated March 11, 2016 (“TMA”); and

WHEREAS, Parent and Equitable have been developing a monetization plan consistent with the existing TMA; and

WHEREAS, Parent and Equitable desire to amend the existing TMA in order to most efficiently execute the monetization plan; and

NOW, THEREFORE, in consideration of good and valuable consideration set forth in this Agreement, the receipt and adequacy of which is hereby acknowledged, and intending to be bound, Parent and Equitable hereby agree to amend the TMA as follows:

A. Section 2. (Litigations To Be Filed) in the TMA is deleted in its entirety and replaced by the following Section 2:

2. Litigations To Be Filed.In consultation with Parent, Equitable agrees to file litigations as follows on or before May 1, 2016: (1) Equitable will file at least 3 litigations asserting one or more of the Patents (“Asserted Patents”); (2) such litigations will be filed against parties who are neither licensees to the Asserted Patents nor are members of RPX Corporation; (3) at least 2 of the 3 litigations must involve patents from those owned by Parent or Sub2; Parent hereby agrees to Equitable’s selection of these targets provided Equitable complies with all of the limitations of this Paragraph 2.

B. Section 3. (Option to Terminate) in the TMA is deleted in its entirety and replaced by the following Sections 3., 3.1 and 3.2:

3. Option to Terminate. If Equitable fails to meet the requirements of Paragraph 2 above, Parent may, in its sole discretion, terminate this agreement. Such termination shall terminate all obligations of Equitable to pay Legal Fees pursuant to Paragraph 5 of this Agreement.

 

3.1 Equitable agrees to file additional litigations as follows after May 1, 2016 but before August 31, 2016: (1) Equitable will file at least 7 litigations asserting one or more of the Patents (“Asserted Patents”); (2) such litigations will be filed against parties who are not licensees to the Asserted Patents; (3) any such litigations filed before May 24, 2016 must be against parties who are not members of RPX Corporation but any such litigations filed on May 24, 2016 or after may be against members of RPX Corporation; (4) at least 4 of the 7 litigations must involve patents from those owned by Parent or Sub2; (5) at least 2 of the 10 total litigations filed pursuant to either Paragraph 2 or this Paragraph 3.1, before or after May 1, 2016, must be against companies that have a market capitalization in excess of one- billion dollars ($1,000,000,000.00). Parent hereby agrees to Equitable’s selection of these targets provided Equitable complies with all of the limitations of this Paragraph 3.1.

3.2 If Equitable fails to meet the requirements of Paragraph 3.1, Parent shall be granted an option to reacquire the Patents, after a waiting period of thirty (30) days has passed, unless during the waiting period, Equitable satisfies all conditions of Paragraph 3.1. There shall be no cost to Parent for the option or for the reassignment of the Patents. If the waiting period expires and Equitable has not satisfied all requirements of Paragraph 3.1, Equitable agrees to execute the neccssary documents to effect the reassignment of the Patents to Parent.

C. The modifications to the TMA specified herein are agreed and accepted by the Parties and shall continue in effect upon execution of this First Amendment to the TMA.

D. All other terms and conditions of the TMA not specifically modified herein remain in full force and effect.

IN WITNESS WHEREOF, Parent and Equitable have caused this First Amendment to the TMA Agreement to be duly executed as of the day and year of the latest execution date written below.

Equitable IP Corporation
By:	/s/ Erik S. Stamell
Erik S. Stamell
President
Date:	4-22-16
Spherix Incorporated
By:	/s/ Anthony Hayes
Name: Anthony Hayes
Title: CEO
Date: April 22, 2016

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SECOND AMENDMENT TO

TECHNOLOGY MONETIZATION AGREEMENT

THIS SECOND AMENDMENT TO THE TECHNOLOGY MONETIZATION AGREEMENT (this “Agreement”), dated as of the latest execution date below (the “Effective Date”), is entered into by Equitable IP Corporation, a Nevada Corporation with offices at 10 Balligomingo Road, West Conshohocken, PA 19428 and its affiliated companies (“Equitable”) and Spherix Incorporated, a Delaware corporation (“Parent”). Each may be individually referred to as a “Party” and collectively may be referred to as “the Parties.”

WITNESSETH:

WHEREAS, Parent and Equitable have previously entered into a Technology Monetization Agreement dated March 11, 2016 (“TMA”); and

WHEREAS, Parent and Equitable have previously entered into a First Amendment to the Technology Monetization Agreement dated April 22, 2016 (“TMA”); and

WHEREAS, Parent and Equitable have been developing a monetization plan consistent with the existing TMA; and

WHEREAS, Parent and Equitable desire to amend the existing TMA and the First Amendment to the existing TMA in order to most efficiently execute the monetization plan; and

NOW, THEREFORE, in consideration of good and valuable consideration set forth in this Agreement, the receipt and adequacy of which is hereby acknowledged, and intending to be bound, Parent and Equitable hereby agree to amend the TMA and the First Amendment to the TMA as follows:

A. Section 2. (Litigations To Be Filed) in the First Amendment to the TMA is deleted in its entirety and replaced by the following Section 2:

2.       Litigations To Be Filed. In consultation with Parent, Equitable agrees to file litigations as follows on or before May 1, 2016: (1) Equitable will file at least 2 litigations asserting one or more of the Patents (“Asserted Patents”); (2) such litigations will be filed against parties who are neither licensees to the Asserted Patents nor are members of RPX Corporation; (3) at least 2 of the 3 litigations must involve patents from those owned by Parent or Sub2; Parent hereby agrees to Equitable’s selection of these targets provided Equitable complies with all of the limitations of this Paragraph 2.

B. Section 3.1 in the First Amendment to the TMA is deleted in its entirety and replaced by the following Sections 3.1:

 

3.1          Equitable agrees to file additional litigations as follows after May 1, 2016 but before August 31, 2016: (1) Equitable will file at least 8 litigations asserting one or more of the Patents (“Asserted Patents”); (2) such litigations will be filed against parties who are not licensees to the Asserted Patents; (3) any such litigations filed before May 24, 2016 must be against parties who are not members of RPX Corporation but any such litigations filed on May 24, 2016 or after may be against members of RPX Corporation; (4) at least 5 of the 8 litigations must involve patents from those owned by Parent or Sub2; Parent hereby agrees to Equitable’s selection of these targets provided Equitable complies with all of the limitations of this Paragraph 3.1.

C. The modifications to the TMA and the First Amendment to the TMA specified herein are agreed and accepted by the Parties and shall continue in effect upon execution of this Second Amendment to the TMA.

D. All other terms and conditions of the TMA and the First Amendment to the TMA not specifically modified herein remain in full force and effect.

IN WITNESS WHEREOF, Parent and Equitable have caused this Second Amendment to the TMA Agreement to be duly executed as of the day and year of the latest execution date written below.

Equitable IP corporation
By:	/s/ Erik S. Stamell
Erik S. Stamell
President
Date:	4-27-16
Spherix Incorporated
By:	/s/ Anthony Hayes
Name: Anthony Hayes
Title: CEO
Date:	4/27/2016

2 

THIRD AMENDMENT TO

TECHNOLOGY MONETIZ ATION AGREEMENT

THIS THIRD AMENDMENT TO THE TECHNOLOGY MONETIZATION AGREEMENT (this ‘‘Agreement”), dated as of the latest execution date below (the “Effective Date”), is entered into by Equitable IP Corporation, a Nevada Corporation with offices at 10 Balligomingo Road, West Conshohocken, PA 19428 together with its affiliated companies (‘'Equitable”) and Spherix Incorporated, a Delaware corporation (“Parent”). Each may be individually referred to as a “Party” and collectively may be referred to as “the Parties.”

WITNESSETH:

WHEREAS, Parent and Equitable have previously entered into a Technology Monetization Agreement dated March 11, 2016 (“TMA”); and

WHEREAS, Parent and Equitable have previously entered into a First Amendment to the Technology Monetization Agreement dated April 22, 2016 (“TMA1”); and

WHEREAS, Parent and Equitable have previously entered into a Second Amendment to the Technology Monetization Agreement dated April 27, 2016 (“TMA2”); and

WHEREAS, Parent and Equitable have been developing a monetization plan consistent with the existing TMA, TMA1 and TMA2 (collectively the “TMAX”); and

WHEREAS, Parent, Sub1 and Sub 2 own additional patents and patent applications not included in the existing TMAX (“Core Patents”); and

WHEREAS, the existing TMAX contemplates Parent delaying transfer of ownership to Equitable some of the Patents owned by Sub1 (“Delayed Patents”) and all of the Core Patents; and

WHEREAS, the Core Patents are identified in Exhibit A attached hereto; and

WHEREAS, the Delayed Patents are identified in Exhibit B attached hereto; and

WHEREAS, the First Patents are identified in Exhibit C attached hereto; and

WHEREAS, Parent and Equitable desire to amend the existing TMAX in order to most efficiently execute the monetization plan; and

NOW, THEREFORE, in consideration of good and valuable consideration set forth in this Agreement, the receipt and adequacy of which is hereby acknowledged, and intending to be bound, Parent and Equitable hereby agree to amend the TMAX as follows:

A. Section 4. in the TMAX will now contain the additional provisions as follows:

4.4 Simultaneous with the execution of this Agreement, Parent and Sub1 and Sub2, where appropriate, will execute the patent assignment agreements attached hereto as Exhibits D and E causing the patents specified in the attached assignment agreements (collectively the “First Patents”) to be assigned to Equitable or its subsidiary on May 24, 2016.

4.5 Parent and Sub1 and Sub2 shall not offer, sell, assign, hypothecate, pledge or otherwise transfer or dispose of any or all of the Core Patents or Delayed Patents to any person or entity, without the prior written consent of both Parties.

4.6 Parent and Sub1 and Sub2 agree that any entity that enters into an agreement to purchase Parent, Sub1 or Sub2 will be bound by the provisions of the TMAX and this amendment.

4.7 Upon execution of this agreement, Equitable will have the sole right to license/monetize all of the Core Patents, the First Patents and Delayed Patents, whether transferred to Equitable or not, to any person or entity without the prior consent of Parent or Sub1 or Sub2. All monetization revenue shall be allocated as set forth in Section 5 “Consideration” as set for in the March 11, 2016 TMA. Parent and Sub1 and Sub2 will execute the Exclusive License agreements set forth in Exhibits F and G.

4.8 Equitable shall us its best, commercially reasonable efforts to monetize Parent’s First Patents, Core Patents and Delayed Patents.

4.9 No later than eighteen (18) months after the Effective Date, or at such earlier time that Parent and Equitable agree, Parent, Sub1 and Sub2 will assign the Core Patents and the Delayed Patents to Equitable or its subsidiary.

4.10 The Parties agree that Spherix will be granted a non-transferable, non assignable license, without the right to sublicense, to practice the First Patents, the Core Patents and the Delayed Patents.

4.11 Equitable shall not sell or assign, except to its wholly owned subsidiary, the First Patents, the Core Patents and the Delayed Patents without the consent of Parent, such consent not to be unreasonably withheld.

B. Section 6. in the TMAX will now contain the additional provisions as follows:

6.1.4 that the First Patents, the Core Patents and the Delayed Patents together are all of the the patents and patent applications owned by Parent, Sub1 and Sub2.

6.1.5 Equitable acknowledges that it takes the Patents pursuant to all prior licenses, including licenses to RPX and will take due care not to file suit on the Patents against prior licensees.

2 

C. Exhibit B of the TMAX shall be modified as follows and only with respect to revenue received by Parent or its subsidiaries from RPX Corporation beginning on the Effective Date (“RPX Revenue”):

Equitable shall receive live percent (5%) of RPX Revenue derived from any license agreement (1) executed by RPX Corporation and Parent or its subsidiaries after the Effective Date but prior to May 24, 2016 and (2) paid by RPX Corporation to Parent or its subsidiaries prior to July 1, 2016.

Equitable shall receive fifty percent (50%) of all RPX Revenue paid to Parent or its subsidiaries after July 1, 2016 pursuant to any license agreement between RPX Corporation and the Member or its subsidiaries beginning on the Effective Date.

Equitable shall receive fifty percent (50%) of all RPX Revenue pursuant to any license agreement between RPX Corporation and Parent or its subsidiaries executed on or after May 24, 2016.

Equitable shall receive fifty percent (50%) of all RPX Revenue pursuant to any license agreement between RPX Corporation and Parent or its subsidiaries executed on or after the Effective Date due to options related to new RPX members.

The Parties understand that this Section C modifies terms related to RPX Revenue previously agreed to by the Parties. The Parties further agree that this paragraph supercedes such previous agreement and this paragraph controls the terms and obligations of the Parties with respect to RPX Revenue.

D. All other terms and conditions of the TMAX not specifically modified herein remain in full force and effect.

IN WITNESS WHEREOF, Parent and Equitable have caused this Third Amendment to the TMAX to be duly executed as of the day and year of the latest execution date written below.

Equitable IP Corporation
By:	/s/ Erik S. Stamell
Erik S. Stamell
President
Date:	5-22-16
Spherix Incorporated
By:	/s/ Anthony Hayes
Name: Anthony Hayes
Title: CEO
Date: May 22, 2016

3 

EX-99.1

Exhibit 99.1

Spherix Announces Collaborative Agreement To Monetize Patents

Spherix Begins Program to Diversify Revenue Options

BETHESDA, MD, March 8, 2016 /PRNewswire/ — Spherix Incorporated (Nasdaq: SPEX) — an intellectual property development company committed to the fostering and monetization of intellectual property and the advancement of technology, today provided an update on the Company's monetization efforts and announced a collaboration agreement with Equitable IP Corporation (“Equitable”), a leading patent enforcement and monetization fund.

Spherix announced that Equitable and the Company have executed a collaborative agreement to monetize a portion of Spherix’s patent portfolio. Equitable is a patent enforcement and monetization fund that has brought together key leadership from the areas of investment fund management, patent litigation, and patent monetization strategy. The initial collaborative effort between Spherix and Equitable will involve monetization of the CompuFill patent portfolio, which relates to the telephonic refilling of patient prescriptions. The Company believes there is widespread infringement of this portfolio.

Anthony Hayes, CEO of Spherix, said, “We are executing on the new strategy announced in our recent shareholder letter. This collaborative effort with Equitable marks the first of what we hope to be many collaborative efforts to monetize our portfolio and deliver shareholder value. Equitable has assembled a powerful and accomplished team including some of the best players from finance, patent litigation and patent monetization. Equitable’s financial resources are significant and the marriage of their resources with our IP will help deliver value to our shareholders. This is a first step in what we hope will be larger effort to monetize our portfolio of assets.”

Dean Becker, Chairman of Equitable IP Corporation, stated, “Equitable is committed to investing and enforcing valuable patent rights. We are pleased to be working with Spherix and we are excited about the potential licensing possibilities from these assets.”

About Spherix

Spherix is committed to advancing innovation by active participation in all areas of the patent market. Spherix draws on portfolios of pioneering technology patents to partner with and support product innovation. Spherix has acquired over 100 patents from Rockstar Consortium Inc., and several hundred patents issued to Harris Corporation, covering a variety of methods and components involved in switching, routing, networking, optical and telecommunication sectors.

Forward-Looking Statements

Certain statements in this press release constitute “forward-looking statements” within the meaning of the federal securities laws. Words such as “may,” “might,” “will,” “should,” “believe,” “expect,” “anticipate,” “estimate,” “continue,” “predict,” “forecast,” “project,” “plan,” “intend” or similar expressions, or statements regarding intent, belief, or current expectations, are forward-looking statements. While the Company believes these forward-looking statements are reasonable, undue reliance should not be placed on any such forward-looking statements, which are based on information available to us on the date of this release. These forward looking statements are based upon current estimates and assumptions and are subject to various risks and uncertainties, including without limitation those set forth in the Company's filings with the SEC, not limited to Risk Factors relating to its patent business contained therein. Thus, actual results could be materially different. The Company expressly disclaims any obligation to update or alter statements whether as a result of new information, future events or otherwise, except as required by law.

Contact:

Investor Relations:	Hayden IR
	Brett Maas, Managing Partner
	Phone: (646) 536-7331
	Email: brett@haydenir.com
	www.haydenir.com
Spherix:	Phone: (703) 992-9325
	Email: info@spherix.com
	www.spherix.com

EX-99.2

Exhibit 99.2

Spherix Releases Update Letter to Shareholders

Company Comments on Recent Multi-Million Dollar License and New Corporate Opportunities

NEW YORK, NY, May 25, 2016 /PRNewswire/ — Spherix Incorporated (Nasdaq: SPEX) — an intellectual property development company committed to the fostering and monetization of intellectual property and the advancement of technology, released a letter to shareholders. The text of the letter is below:

To My Fellow Shareholders:

We continue to make progress on our strategy to monetize our existing assets, generate cash flows and diversify into other sources of equity value and revenue creation.

Our recent May 23, 2016 license agreement was a major milestone for Spherix. The agreement resulted in a cash payment to Spherix of $4.375M and cancellation of 100% of the remaining 381,967 shares of the Company’s outstanding Series H Preferred Stock, which had a total carrying value of $31.89 million at the time the stock was issued to Rockstar Consortium US LP (“Rockstar”).

Importantly, the May 23, 2016 license does not exhaust the value of these assets, but rather reinforces the credibility and strength of our infringement allegations against the entities we’ve identified. The Company’s existing litigations against L3 Communications Inc., TW Telecommunications Inc., Fairpoint Communications Inc., and Uniden will continue in the normal course. Further, the Company, by and through Equitable IP, intends to bring additional new actions against entities that are not currently licensed, and to continue to seek and execute additional and alternative monetization strategies.

As previously reported, our collaborative arrangement with Equitable IP, and its Chairman, Dean Becker (the “Equitable IP Program”) has enabled us to rapidly and cost-effectively initiate three (3) new suits and was an important factor in our recent license agreement. This collaboration will continue to yield benefits as we are able to further leverage our monetization efforts, while substantially lowering our direct costs of those monetization efforts and the costs associated with patent maintenance fees. We believe the net results of the Equitable IP Program will be highly accretive to our financial results.

As referenced in my January 20^th shareholder letter, the patent monetization space is shifting and we are pivoting along with it. Moving forward, Spherix is looking to grow and diversify in an effort to attain additional potential revenue streams both within patent monetization and outside this industry. For example, within the patent monetization space, we have established a new program entitled “IP Monetization Support.” Under this program, Spherix will review a limited number of monetization opportunities and if we deem the opportunity sufficiently worthwhile, we will deploy a small amount of our restricted stock to individual patent holders, in exchange for a percentage of that patent holder’s current patent monetization efforts. Under this program, Spherix will not buy or own the patents at issue. Spherix will not be responsible for paying patent maintenance costs and Spherix will not pay any litigation expenses. Moreover, Spherix will not be a party to any monetization litigation or licensing discussions. Rather, our management team will identify licensing opportunities that are near the revenue generating point and then use our resources to help those patent holders achieve short term liquidity. This new program limits the Company’s downside risk, but allows us to potentially achieve large upside profits. Initially, as we develop this program and test its efficacy, the program will be limited in scope and size. Later as we are able to measure results and fine tune the program, we may expand.

In addition, Spherix is actively exploring viable opportunities outside of the patent monetization space. Part of the use of proceeds from this current license agreement may be used to acquire revenue generating opportunities where patent monetization is not the core business model. To date, we have vetted several such ventures and we are in discussions with an exciting, early stage technology company that is already generating revenue. We expect to continue to review these types of opportunities throughout 2016 and to act opportunistically to acquire assets with immediate or near term revenues and significant opportunities for equity value creation for our shareholders.

Looking ahead to the second half of 2016, we are a company that is now well capitalized, with several exciting opportunities for growth. I want to thank each of you for your support and thank you for being a Spherix shareholder.

Sincerely,

Anthony Hayes

Chief Executive Officer

About Spherix

Spherix Incorporated was launched in 1967 as a scientific research company. Spherix is committed to advancing innovation by active participation in the patent market. Spherix draws on portfolios of pioneering technology patents to partner with and support product innovation.

Forward-Looking Statements

Certain statements in this press release constitute "forward-looking statements" within the meaning of the federal securities laws. Words such as "may," "might," "will," "should," "believe," "expect," "anticipate," "estimate," "continue," "predict," "forecast," "project," "plan," "intend" or similar expressions, or statements regarding intent, belief, or current expectations, are forward-looking statements. While the Company believes these forward-looking statements are reasonable, undue reliance should not be placed on any such forward-looking statements, which are based on information available to us on the date of this release. These forward looking statements are based upon current estimates and assumptions and are subject to various risks and uncertainties, including without limitation those set forth in the Company's filings with the Securities and Exchange Commission (the "SEC"), not limited to Risk Factors relating to its patent business contained therein. Thus, actual results could be materially different. The Company expressly disclaims any obligation to update or alter statements whether as a result of new information, future events or otherwise, except as required by law.

Contact:
Investor Relations:	Hayden IR
	Brett Mass, Managing Partner
	Phone: (646) 536-7331
	Email: brett@haydenir.com
	www.haydenir.com
Spherix:	Phone: (703) 992-9325
	Email: info@spherix.com
	www.spherix.com