EXHIBIT 10.2
PATENT AND TRADEMARK
ASSIGNMENT AND LICENSE ASSUMPTION AGREEMENT
THIS PATENT AND TRADEMARK ASSIGNMENT AND LICENSE ASSUMPTION
AGREEMENT (the "Agreement") made and entered into as of the 26th day of April,
2006, by and between LIFESTREAM TECHNOLOGIES, INC., a Nevada corporation, having
an office at 000 Xxxxx Xxxxxxxxxx Xxxx, Xxxxxxxx 0000, Xxxxx X, Xxxx Xxxxx,
Xxxxx 00000 ("Lifestream"), and RAB SPECIAL SITUATIONS (MASTER) FUND LIMITED, a
Cayman Islands company, having its registered office at X.X. Xxx 000 GT, Xxxxxx
House, Xxxx Street, Xxxxxx Town, Grand Cayman, Cayman Islands ("RAB").
W I T N E S S E T H:
WHEREAS, Lifestream is indebted to RAB pursuant to that certain Loan
and Security Agreement dated as of November 12, 2004 (the "Loan Agreement") by
and among Lifestream and certain of its affiliates, as Borrowers, and RAB, as
Lender, and the other Loan Documents (as such term is defined in the Loan
Agreement). As of the date hereof, the aggregate indebtedness under the Loan
Agreement constitutes $2,869,740 in principal; and
WHEREAS, Lifestream is further indebted to RAB pursuant to that certain
Amended and Restated Convertible Term Note dated May 12, 2003 in the original
principal amount of $2,400,000, that certain Amended and Restated Convertible
Term Note dated May 12, 2003 in the original principal amount of $500,000, that
certain Amended and Restated Convertible Term Note dated May 12, 2003 in the
original principal amount of $500,000, and that certain Convertible Term Note
dated November 12, 2004 in the original principal amount of $500,000
(collectively, the "Convertible Notes"). As of the close of business on April
28, 2006 the aggregate indebtedness under the Convertible Notes constitutes
$3,480,000 in principal and $0 in accrued interest (all such accrued interest
through such date having been converted into shares by RAB pursuant to the terms
of the Convertible Notes); and
WHEREAS, Lifestream is the owner of all right, title, and interest in
certain patent applications more particularly described on Schedule A hereto
(the "Patents"); and
WHEREAS, Lifestream is a party to a certain Patent License Agreement
dated October 1, 2005 with LifeNexus, Inc. a Nevada corporation ("LifeNexus"),
(which was filed as exhibit 10.37 to Form 8-K filed on October 14, 2005 and is
hereby incorporated by reference), pursuant to which Lifestream has licensed
certain rights in the Patents to LifeNexus; and
WHEREAS, Lifestream is the owner of all right, title, and interest in
certain trademarks more particularly described on Schedule B hereto (the
"Trademarks"); and
WHEREAS, Lifestream is a party to a certain Trademark License Agreement
dated October 1, 2005 with LifeNexus, (which was filed as exhibit 10.38 to Form
8-K filed on October 14, 2005 and is hereby incorporated by reference), pursuant
to which Lifestream has licensed certain rights in the Trademarks to LifeNexus;
and
WHEREAS, Lifestream desires to sell, assign and transfer to RAB,
Lifestream's entire right, title and interest in and to the Patents and the
Patent License Agreement, subject to the provisions of the Patent License
Agreement; and
WHEREAS, Lifestream desires to sell, assign and transfer to RAB,
Lifestream's entire right, title and interest in and to the Trademarks and the
Trademark License Agreement, subject to the provisions of the Trademark License
Agreement; and
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WHEREAS, RAB desires to accept Lifestream's assignment of Lifestream's
entire right, title and interest in and to the Patents, and to assume
Lifestream's obligations under the Patent License Agreement, upon the terms and
conditions hereinafter set forth; and
WHEREAS, RAB desires to accept Lifestream's assignment of Lifestream's
entire right, title and interest in and to the Trademarks, and to assume
Lifestream's obligations under the Trademark License Agreement, upon the terms
and conditions hereinafter set forth.
NOW, THEREFORE, in consideration for the promises and covenants herein
set forth, and for other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties hereto, intending to be
legally bound, agree as follows:
1. Assignment of Patent Rights. Lifestream hereby sells, assigns and
conveys to RAB, all of Lifestream's right, title and interest in and to the
Patents.
2. Assignment of Rights under Patent License Agreement. Lifestream
hereby sells, assigns and conveys to RAB, all of Lifestream's right, title and
interest in and to the Patent License Agreement.
3. Assumption of Obligations under Patent License Agreement. RAB hereby
assumes all of Lifestream's obligations under the Patent License Agreement and,
from and after the Effective Date (as hereinafter defined) agrees to perform all
of Lifestream's obligations under the Patent License Agreement as fully and if
RAB was identified as the licensor thereunder.
4. Assignment of Trademark Rights. Lifestream hereby sells, assigns and
conveys to RAB, all of Lifestream's right, title and interest in and to the
Trademarks.
5. Assignment of Rights under Trademark License Agreement. Lifestream
hereby sells, assigns and conveys to RAB, all of Lifestream's right, title and
interest in and to the Patent License Agreement.
6. Assumption of Obligations under Trademark License Agreement. RAB
hereby assumes all of Lifestream's obligations under the Trademark License
Agreement and, from and after the Effective Date, agrees to perform all of
Lifestream's obligations under the Trademark License Agreement as fully and to
the same extent as if RAB was identified as the licensor thereunder.
7. Assignment of Related Items. In addition to the Patents described in
Section 1 and the Trademarks described in Section 4, Lifestream hereby sells,
assigns and conveys to RAB all records, books or other indicia of the foregoing
to the extent related to the Patents and Trademarks, including, without
limitation: (a)(i) all related software, and all source code, components,
documentation, research and development files, manuals, descriptions and other
intangible rights relating thereto; (ii) the website(s) and related domain
names, and all rights in the trade names, information and materials contained in
such website(s), as well as all names and addresses of registered users of the
website(s) and together with any website development, content development,
product development, costs, and all procedures, research and development files,
data and other records; (iii) any copyrights and copyright applications; and
(iv) design protocols, blue prints, affiliated software, manufacturing protocols
circuit designs and all other related know how (collectively, the "Related IP");
(b) all related equipment and tangible personal property owned or leased by
Lifestream including, without limitation, equipment and smart card printers, and
other related smart card hardware, computers, and servers (collectively, the
"Equipment"); and (c) all related brochures, literature, advertising,
catalogues, photographs, display materials, media materials, art work,
promotional work product, packaging materials and other similar items which have
been produced by or for Lifestream (collectively, the "Promotional Material").
8. Consideration. As consideration hereunder for the assignments by
Lifestream as set forth above, Lifestream's indebtedness to RAB shall be reduced
by $4,500,000, as follows: (a) the Convertible Notes shall be cancelled
effective as of the close of business on April 28, 2006; and (b) effective as of
the close of business on April 28, 2006 or such other date mutually agreed upon
by the parties in writing, the indebtedness pursuant to the Loan Agreement shall
be reduced by $1,020,000.
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9. Further Assurances. Lifestream hereby agrees to execute and deliver
to RAB such other and further documents and instruments as may be necessary in
order to convey to RAB all of Lifestream's right, title and interest in and to
the Patents, Trademarks, Related IP, Equipment, and Promotional Material as
contemplated by this Agreement.
10. Continued Prosecution. RAB shall have the right, but not the
obligation, to continue prosecution of the Patents, as well as further U.S. or
foreign patent applications based on the Patents. Lifestream shall cooperate
with RAB in the prosecution to the extent deemed reasonably necessary by RAB,
such as by signing all necessary documents, at RAB's expense. This section shall
be in full effect with respect to RAB's successors and assigns, as RAB intends
to assign the Patents to LifeNexus contemporaneously herewith.
11. Effect of Assignment and Assumption. From and after the date
hereof, RAB shall perform all of the obligations of Lifestream, as licensor,
under the Patent License Agreement and Trademark License Agreement, and RAB
hereby indemnifies Lifestream for all of losses and damages that Lifestream may
suffer, including reasonable attorneys fees and expenses, by reason of RAB's
failure to perform such obligations from and after the date hereof. Lifestream
hereby indemnifies RAB for all losses and damages that RAB may suffer, including
reasonable attorneys fees and expenses, by reason of (i) Lifestream's failure to
perform its obligations under the Patent License Agreement and/or the Trademark
License Agreement, prior to the date hereof, or (ii) Lifestream's breach of any
material representation or warranty under this Agreement, including without
limitation, the representations and warranties set forth in Section 13(e), (f),
(g), (h) and (i) of this Agreement.
12. Effective Date. This Agreement shall not become effective unless
and until LifeNexus consents to the terms and conditions of this Agreement and
has delivered its written consent to Lifestream in the form shown as exhibit
10.3 to this Form 10-QSB for the period ending March 31, 2006 (the date on which
the foregoing event occurs, the "Effective Date").
13. Representations and Warranties of Lifestream. Lifestream hereby
represents and warrants to RAB that:
(a) Lifestream is a corporation validly existing and in good
standing under the laws of the State of Nevada;
(b) Lifestream has approved this Agreement and the
transactions contemplated hereby to the extent required by applicable law;
(c) no action or consent of any person is required in order
for Lifestream to consummate the transactions contemplated by this Agreement,
other than the actions and consents of the respective persons contemplated by
Section 12 hereof;
(d) this Agreement contains the valid and binding obligations
of Lifestream and is enforceable in accordance with the terms and conditions
hereof;
(e) Lifestream is the sole and exclusive owner of Patents and
the Trademarks, free and clear of all liens, charges and encumbrances, subject
to (i) security interests currently granted in favor of RAB and (ii) the terms
and conditions of the Patent License Agreement and the Trademark License
Agreement; and (iii) no other person or entity has or will have any claim of
ownership with respect to the Patents and/or the Trademarks;
(f) the Patent License Agreement and the Trademark License
Agreement are in full force and effect and neither party thereto is in material
breach of any of its obligations thereunder;
(g) to the best of its knowledge, the Patents are patentable,
and, if issued, would not currently be infringed by any third party;
(h) the making, having made, using, or selling of products
covered by the Patents, or by inventions disclosed in the Patents, will not
infringe any patent or any other rights of any third party; and
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(i) use of the Trademark does not infringe any rights of any
third party.
14. Representations and Warranties of RAB. RAB hereby represents and
warrants to Lifestream that:
(a) RAB is a company validly existing and in good standing
under the laws of the Cayman Islands;
(b) RAB has approved this Agreement and the transactions
contemplated hereby to the extent required by applicable law;
(c) no consent of any person is required in order for RAB to
consummate the transactions contemplated by this Agreement; and
(d) this Agreement contains the valid and binding obligations
of RAB and is enforceable against RAB in accordance with the terms and
conditions hereof.
15. Governing Law; Jurisdiction; Jury Trial. All questions concerning
the construction, validity, enforcement and interpretation of this Agreement
shall be governed by the internal laws of the State of New York, without giving
effect to any choice of law or conflict of law provision or rule (whether of the
State of New York or any other jurisdictions) that would cause the application
of the laws of any jurisdictions other than the State of New York. Each party
hereby irrevocably submits to the non-exclusive jurisdiction of the state and
federal courts sitting in the City of New York, borough of Manhattan, for the
adjudication of any dispute hereunder or in connection herewith or with any
transaction contemplated hereby or discussed herein, and hereby irrevocably
waives, and agrees not to assert in any suit, action or proceeding, any claim
that it is not personally subject to the jurisdiction of any such court, that
such suit, action or proceeding is brought in an inconvenient forum or that the
venue of such suit, action or proceeding is improper. Each party hereby
irrevocably waives personal service of process and consents to process being
served in any such suit, action or proceeding by mailing a copy thereof to such
party at the address for such notices to it under this Agreement and agrees that
such service shall constitute good and sufficient service of process and notice
thereof. Nothing contained herein shall be deemed to limit in any way any right
to serve process in any manner permitted by law. Each party hereby irrevocably
waives any right it may have, and agrees not to request, a jury trial for the
adjudication of any dispute hereunder or in connection herewith or arising out
of this Agreement or any transaction contemplated hereby.
16. Counterparts. This Agreement may be executed in two or more
identical counterparts, all of which shall be considered one and the same
agreement and shall become effective when counterparts have been signed by each
party and delivered to the other party; provided that a facsimile signature
shall be considered due execution and shall be binding upon the signatory
thereto with the same force and effect as if the signature were an original, not
a facsimile signature.
17. Headings. The headings of this Agreement are for convenience of
reference and shall not form part of, or affect the interpretation of, this
Agreement.
18. Severability. If any provision of this Agreement shall be invalid
or unenforceable in any jurisdiction, such invalidity or unenforceability shall
not affect the validity or enforceability of the remainder of this Agreement in
that jurisdiction or the validity or enforceability of any provision of this
Agreement in any other jurisdiction.
19. Entire Agreement; Amendments. This Agreement supersedes all other
prior oral or written agreements between RAB, Lifestream, their affiliates and
persons acting on their behalf with respect to the matters discussed herein, and
this Agreement and the instruments referenced herein contain the entire
understanding of the parties with respect to the matters covered herein and
therein and, except as specifically set forth herein or therein, neither
Lifestream nor RAB makes any representation, warranty, covenant or undertaking
with respect to such matters. No provision of this Agreement, any Schedule or
Exhibit, may be amended other than by an instrument in writing signed by
Lifestream and RAB. No provision hereof may be waived other than by an
instrument in writing signed by the party against whom enforcement is sought.
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20. Notices. Any notices, consents, waivers or other communications
required or permitted to be given under the terms of this Agreement must be in
writing and will be deemed to have been delivered: (i) upon receipt, when
delivered personally; (ii) upon receipt, when sent by facsimile (provided
confirmation of transmission is mechanically or electronically generated and
kept on file by the sending party); or (iii) three (3) business days after
deposit with a nationally recognized overnight delivery service, in each case
properly addressed to the party to receive the same. The addresses and facsimile
numbers for such communications shall be:
If to Lifestream: With a copy to:
Lifestream Technologies, Inc. Xxxxxxxxx Xxxxxxxxxx & Beilly LLP
000 Xxxxx Xxxxxxxxxx Xxxx, Xxxxxxxx 0000, Xxxxx X 0000 Xxxxxxxxx Xxxx., XX, Xxxxx 000
Xxxx Xxxxx, Xxxxx 00000 Xxxx Xxxxx, XX 00000
Telephone: (000) 000-0000 Telephone: (000) 000-0000
Facsimile: (000) 000-0000 Facsimile: (000) 000-0000
E-Mail: xxxxx@xxxxxxxxxxxxxx.xxx E-Mail: xxxxx@xxxxxx.xxx
Attention: Xxxxxxx Xxxxxxx Attention: Xxxxxx X. Xxxxxxxxxx, Esq.
If to RAB: With a copy to:
RAB Special Situations (Master) Fund Limited Winston & Xxxxxx LLP
c/o RAB Capital plc 00 Xxxx Xxxxxx Xxxxx
0 Xxxx Xxxxxx Xxxxxxx, Xxxxxxxx 00000-0000
London Telephone: (000) 000-0000
XX0X 0XX Facsimile: (000) 000-0000
United Kingdom E-Mail: xxxxxxxxxxx@xxxxxxx.xxx
Telephone: 00 (0)00 0000 0000 Attention: Xxxxxx X. Xxxxxxxxxx, Esq.
Facsimile: 00 (0)00 0000 0000
E-Mail: xx@xxxxxx.xxx
Attention: Xxxxxx Xxxxxxx
Any party may modify its notice information by written notice given to each
other party no less than five days prior to the effectiveness of such change.
Written confirmation of receipt: (A) given by the recipient of such notice,
consent, waiver or other communications; (B) mechanically or electronically
generated by the sender's facsimile machine containing the time, date, recipient
facsimile number and an image of the first page of such transmission; or (C)
provided by a nationally recognized overnight delivery service, shall be
rebuttable evidence of personal service, receipt by facsimile or receipt from a
nationally recognized overnight delivery service in accordance with clause (i),
(ii) or (iii) above, respectively.
21. Successors and Assigns. This Agreement shall be binding upon and
inure to the benefit of the parties and their respective successors and assigns.
22. Further Assurances. Each party shall do and perform, or cause to be
done and performed, all such further acts and things, and shall execute and
deliver all such other agreements, certificates, instruments and documents, as
the other party may reasonably request in order to carry out the intent and
accomplish the purposes of this Agreement and the consummation of the
transactions contemplated hereby.
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IN WITNESS WHEREOF, Lifestream and RAB have executed this Agreement as
of the date and year first above written.
LIFESTREAM TECHNOLOGIES, INC.
By: ___________________________
Name:______________________
Title:_______________________
RAB SPECIAL SITUATIONS (MASTER) FUND LIMITED
By: ____________________________
Name: ______________________
Title: ______________________
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SCHEDULE A
PATENTS
1. U.S. Patent Application Serial No. 09/892,184.
2. U.S. Patent Application Serial No. 10/649,294.
SCHEDULE B
TRADEMARKS
1. U.S. Trademark Registration No. 2,764,796 (Personal Health Card).
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