Exhibit 10.12
INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
This INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT (this "Agreement"),
dated as of March 15, 2002 (the "Effective Date"), is made by and between
Geoworks Corporation, a Delaware corporation ("Seller"), and ACCESS Co., Ltd., a
Japanese corporation ("Buyer").
RECITALS
WHEREAS, Seller is the owner of the patents and patent applications
listed on Schedule A attached hereto, which are either issued or pending,
(including the divisionals, continuations, continuations-in-part, extensions,
renewals, re-issues or re-examinations) respectively, in the United States or a
foreign country, (collectively, the "Patents");
WHEREAS, Seller has agreed to sell to Buyer and Buyer has agreed to
purchase from Seller the Patents and to assume certain contracts identified on
Schedule A; and
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is acknowledged, the parties, intending to be legally
bound, do covenant and agree as follows:
0. Assignment of Patents. Subject to the terms and conditions set forth
herein, Seller does hereby assign, transfer, set over, and deliver to Buyer all
of Seller's right, title, and interest in and to the Patents subject to any
rights previously granted therein together with (i) all patents granted on any
applications included in the Patents, all continuations, continuations-in-part,
divisionals, extensions, renewals, reissues and re-examinations of the Patents
and foreign counterparts, and all other issued patents and applications
(currently filed or to be filed in the future) anywhere in the world that claim
the benefit of priority of any patent or application included in the Patents,
(ii) all causes of actions in favor of the Patent, claims and demands or other
rights accruing in favor of the Patent, or arising from any infringement of the
Patents, on or after the Effective Date, and (iii) all rights corresponding
thereto throughout the world (with the exception of existing contractual rights
that survive assignment of the Assigned Contracts (as defined below) and those
causes of action arising from past infringement ), including, but not limited
to, the right to assert any attorney-client or work product privilege related to
the prosecution or analysis thereof, to the extent such privileges have not been
waived prior to the Effective Date, and to the extent assignable without waiving
these privileges with respect to matters unrelated to the Patents.
1. Delivery of Files and Payment. On or before the Effective Date and as
requested by Buyer, Seller shall deliver the complete file history of each of
the Patents and a docket of such Patents to the extent it has such materials in
its possession or under its control. In consideration of the assignment granted
by Seller to Buyer above, Buyer shall pay to Seller the Purchase Price as set
forth in Schedule B by wire transfer to Seller's designated account and shall
enter into the professional services agreement described in Section 8 below.
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2. Further Assurances by Seller. Seller further agrees, without further
consideration, to cause to be performed such customary and lawful acts and to be
executed such further assignments and other lawful documents as Buyer may
reasonably request to effectuate fully this Agreement and to permit Buyer to be
duly recorded as the registered owner and proprietor of the rights hereby
conveyed, including, but not limited to, a separate Assignment in the form of
Schedule C attached hereto.
3. No Maintenance Obligations. Neither Party will be obligated hereunder
to file any patent application, or to secure any patent or patent rights, or to
maintain any patent in force after the Effective Date.
4. Assignment of Contracts.. Seller hereby assigns and Buyer hereby
assumes the rights and obligations of the Seller in the contracts identified on
Schedule A as of the Effective Date (the "Assigned Contracts"). Seller shall
deliver original copies of the Assigned Contracts to Buyer by the Effective
Date.
5. Representations and Warranties. Seller hereby represents and warrants
that, as of the Effective Date: (a) to Seller's knowledge, there are no actions,
claims, liens, suits or proceedings pending or threatened against the Patents,
the Assigned Contracts or Seller's rights therein; (b) to Seller's knowledge,
there are no liens, claims, restrictions, encumbrances or licenses of any kind
on the Patents, except as identified on Schedule D; (c) Seller is the current
owner of each of the Patents and has good title to each of the Patents in
recordable form, (d) Seller has full right and authority to enter into this
Agreement, (e) the execution and delivery by Seller of this Agreement and the
consummation by Seller of the transactions contemplated hereby will not conflict
with, violate, result in a breach or termination of, or constitute a default
under any agreement relating to the Patents, the Assigned Contracts or Seller's
rights therein or constitute a violation of any judgment, injunction, order or
decree or result in the creation of any liens, claims, encumbrances or licenses
of any kind on the Patents, the Assigned Contracts or Seller's rights therein,
(f) no claim by any third party contesting the validity, priority, or
enforceability of any of the Patents has been received by Seller or to the
knowledge of Seller is currently outstanding, except as identified on Schedule
D, and (h) Seller has disclosed to Buyer all of its filed Patents, whether
pending or issued, including all continuations, divisionals,
continuations-in-part, extensions, renewals, reissues, and re-examinations.
6. Non-Assertion by Seller As of the Effective Date, Seller hereby
covenants that, neither it nor its successors or assigns shall assert against
Buyer, its affiliates or their respective successors, customers, assigns or
licensees, any claims for past, present or future patent infringement based upon
use, manufacture, sale, or import of the inventions covered by the Patents and
irrevocably waives all such claims.
7. Non-Assertion by Buyer. As of the Effective Date, Buyer hereby
covenants that, neither it nor its successors or assigns shall assert against
Seller, its wholly-owned subsidiaries or their respective successors, any claims
for past, present or future patent infringement based upon use, manufacture,
sale, or import of the inventions covered by the Patents and irrevocably waives
all such claims. Furthermore, Buyer hereby covenants that, neither it nor its
successors or assigns shall assert against Seller's customers, assigns,
licensees or purchaser(s) of Seller's Mobile Server Plus, AirBoss, GEOS and
GEOS-SC technologies and its or their affiliates, successors, customers, assigns
or licensees, any claims for past, present or future patent infringement of the
Patents based upon use, manufacture, sale, or import of such Mobile Server Plus,
AirBoss, GEOS and GEOS-SC technologies.
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8. Professional Services. Buyer shall pay Seller three minimum payments of
$100,000 each by September 30, 2002, December 30, 2002 and March 31, 2003 (or
within thirty days after any earlier delivery of services and billing) for a
total of $300,000 on account of professional services to be ordered within one
year after the Effective Date. Seller will provide these services pursuant to
its form professional services agreement at the same rates applicable to its
best Japanese customers for an agreed upon scope of work or on any other terms
reasonably acceptable to the parties. The parties shall use reasonable, good
faith efforts to agree on these terms. Additionally, Buyer shall provide its
standard training on its technology to four of Seller's staff in the San
Francisco Bay area at no charge to Seller at mutually agreeable times.
9. Confidentiality.
9.1 Each party (the "Receiving Party") shall keep confidential from third
parties (except for contractors or employees who have a need to have access to
and knowledge of any Confidential Information (as defined below) solely for the
purposes authorized herein and which contractors or employees have signed an
agreement substantially similar to that contained herein) all proprietary and
confidential information ("Confidential Information") of the other party (the
"Disclosing Party") disclosed to the Receiving Party and shall not use the
Disclosing Party's Confidential Information except as authorized under this
Agreement. Patents and all materials relating thereto shall be deemed
Confidential Information of Buyer under this Section after payment of the
Purchase Price.
Section 9.1 imposes no confidentiality obligation with respect to
information that: (i) was known to the Receiving Party without a duty of
confidentiality before receipt from the Disclosing Party as evidenced by written
records made prior to such receipt or disclosure; (ii) is or becomes a matter of
public knowledge through no fault of the Receiving Party or any of its agents;
(iii) is rightfully received by the Receiving Party from a third party without a
duty of confidentiality; or (iv) is independently developed by the Receiving
Party as evidenced by written records of the Receiving Party. The
confidentiality obligations under Section 9.1 shall terminate ten (10) years
after the Effective Date.
9.2 Neither party shall divulge to third parties without the prior written
consent of the other party any of the conditions of this Agreement, unless
disclosure is required by law or by orders of courts or governments; provided in
such case, reasonable advance notice shall be provided to the Disclosing Party
to permit such party to seek appropriate protective orders prior to any
disclosure. Seller can elect to file this Agreement with the Securities and
Exchange Commission as a material exhibit to its public filings without further
notice to Buyer.
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10. Indemnification. (a) Seller shall defend, indemnify and hold harmless
Buyer and its officers, directors, employees, shareholders, successors and
assigns from and against any and all loss, damages, liabilities, settlement
costs and expenses (including reasonable legal expenses and the reasonable
expenses of other professionals) as incurred, resulting from or arising out of
(i) any material breach, violation, default non-fulfillment of, or inaccuracy
in, any of the representations or warranties or covenants made by Seller in
Section 5 of this Agreement and (ii) any breach by Seller of the Assigned
Contracts occurring prior to the Effective Date. As a condition to such defense
and indemnification, Buyer will provide Seller with prompt written notice of the
claim and permit Seller to control the defense and settlement of any such claim.
Buyer may employ counsel at its own expense to assist it with respect to any
such claim; provided, however, that if such counsel is necessary because of a
conflict of interest of either Seller or its counsel or because Seller does not
assume control, Seller will bear the expense of such counsel. Buyer shall have
no authority to settle any claim on behalf of Seller. Any claim for
indemnification must be brought within one year after learning of the accrual of
any cause of action.
(b) Buyer shall defend, indemnify and hold harmless Seller and its
officers, directors, employees, shareholders, successors and assigns from and
against any and all loss, damages, liabilities, settlement costs and expenses
(including reasonable legal expenses and the reasonable expenses of other
professionals) as incurred, resulting from or arising out of any breach by Buyer
of the Assigned Contracts occurring on or after the Effective Date. As a
condition to such defense and indemnification, Seller will provide Buyer with
prompt written notice of the claim and permit Buyer to control the defense and
settlement of any such claim. Seller may employ counsel at its own expense to
assist it with respect to any such claim; provided, however, that if such
counsel is necessary because of a conflict of interest of either Buyer or its
counsel or because Buyer does not assume control, Buyer will bear the expense of
such counsel. Seller shall have no authority to settle any claim on behalf of
Buyer. Any claim for indemnification must be brought within one year after
learning of the accrual of any cause of action.
11. Disclaimer of Warranties and Limitation of Liability. EXCEPT FOR THE
WARRANTIES SET FORTH IN SECTION 5 ("REPRESENTATIONS AND WARRANTIES"), UNDER NO
CIRCUMSTANCES SHALL EITHER PARTY BE DEEMED TO HAVE MADE ANY REPRESENTATIONS OR
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE WITH RESPECT TO ANY SUBJECT MATTER OF THIS
AGREEMENT. SELLER SPECIFICALLY DOES NOT WARRANT THE VALIDITY OR ENFORCEABILITY
OF THE PATENTS. EXCEPT FOR A BREACH BY EITHER PARTY OF SECTION 9
("CONFIDENTIALITY"), IN NO EVENT WILL EITHER PARTY HEREUNDER BE LIABLE, IN ANY
ACTION ARISING OUT OF OR RELATING TO THIS AGREEMENT, FOR SPECIAL, INDIRECT,
CONSEQUENTIAL, OR INCIDENTAL DAMAGES, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES. IN NO EVENT WILL EITHER PARTY BE LIABLE OR
OBLIGATED UNDER THIS AGREEMENT OR UNDER CONTRACT, NEGLIGENCE, BREACH OF
WARRANTY, STRICT LIABILITY, OR ANY OTHER LEGAL OR EQUITABLE THEORY FOR ANY
AMOUNTS IN EXCESS OF THE AMOUNT OF $500,000 PAID TO GEOWORKS UNDER SECTION 1
("PURCHASE PRICE"), PLUS, IN THE CASE OF BUYER, AFORESAID $500,000 AND THE
PROFESSIONAL SERVICES FEES DESCRIBED IN SECTION 8.
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12. Miscellaneous
a. Assignment. This Agreement shall be binding on each party's lawful
successors and assigns.
b. Governing Law. THIS AGREEMENT WILL BE DEEMED TO HAVE BEEN MADE IN AND
THE VALIDITY, PERFORMANCE, CONSTRUCTION AND EFFECT OF THIS AGREEMENT AND THE
TRANSACTIONS TO WHICH IT RELATES, SHALL BE GOVERNED BY THE LAW OF THE STATE OF
CALIFORNIA EXCLUDING (i) ITS CHOICE OF LAW RULES AND (ii) THE UNITED NATIONS
CONVENTION ON CONTRACTS FOR THE INTERNATIONAL SALE OF GOODS.
c. Consent to Jurisdiction. EACH PARTY HERETO IRREVOCABLY CONSENTS TO THE
EXCLUSIVE JURISDICTION OF THE STATE AND FEDERAL COURTS LOCATED IN SAN FRANCISCO
COUNTY, IN THE STATE OF CALIFORNIA IN CONNECTION WITH ANY ACTION OR PROCEEDING
ARISING OUT OF OR RELATING TO THIS AGREEMENT. EACH PARTY COVENANTS AND AGREES
NOT TO ASSERT, BY WAY OF MOTION, AS A DEFENSE, OR OTHERWISE, IN ANY SUCH ACTION,
SUIT, OR PROCEEDING, ANY CLAIM THAT SUCH PARTY IS NOT SUBJECT PERSONALLY TO THE
JURISDICTION OF SUCH COURT, THAT SUCH PARTY'S PROPERTY IS EXEMPT OR IMMUNE FROM
ATTACHMENT OR EXECUTION, THAT THE ACTION, SUIT, OR PROCEEDING IS BROUGHT IN AN
INCONVENIENT FORUM, THAT THE VENUE OF THE ACTION, SUIT OR PROCEEDING IS
IMPROPER, OR THAT THIS AGREEMENT OR THE SUBJECT MATTER HEREOF MAY NOT BE
ENFORCED IN OR BY SUCH COURT. The prevailing party in any action shall be
entitled to recover its reasonable attorneys' charges in addition to such other
relief as is awarded. Late payments bear interest at the rate of one percent per
month.
d. Notice. All notices and invoices required to be sent by either party
under this Agreement will be deemed given: (a) when sent by confirmed facsimile;
(b) three (3) business days after being sent by commercial overnight courier
with written verification of receipt; or (c) when received after being mailed
postage prepaid by certified or registered mail, return receipt requested, to
the party to be notified. Notices will be sent to the respective addresses set
forth below, or at such other address that may hereinafter be designated in
writing.
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Seller: Geoworks Corporation, 0000 Xxxxxxx Xxxxxx, Xxxxx 000, Xxxxxxxxxx, XX
00000
Buyer: ACCESS Co., Ltd., Hirata-Building, 0-0-00, Xxxxxxxx-Xxx, Xxxxxxx-Xx,
Xxxxx 000-0000
e. Entire Understanding. This Agreement sets forth the entire
understanding of the parties with respect to the subject matter hereof and the
transactions contemplated hereby and supersedes all previous or contemporaneous
negotiations, representations and writings among them relating thereto.
f. Waiver. Any waiver by any party of a breach of any provision of this
Agreement shall not operate as or be construed to be a waiver of any other
breach of that provision or of any breach of any other provision of this
Agreement. The failure of a party to insist upon strict adherence to any term of
this Agreement on one or more occasions shall not be considered a waiver or
deprive that party of the right thereafter to insist upon strict adherence to
that term or any other term of this Agreement.
g. Amendment. No provision of this Agreement may be waived, changed,
terminated, modified or discharged, orally or otherwise, except by a writing of
subsequent date hereto, executed by both parties.
h. Remedies Cumulative. No remedy conferred upon any of the parties by
this Agreement is intended to be exclusive of any other remedy, and each and
every such remedy shall be cumulative and shall be in addition to any other
remedy given hereunder or now or hereafter existing at law or in equity.
i. Separability. In the event any provision hereof, or the application
thereof in any circumstances, is held to be invalid, illegal or unenforceable by
a final or unappealable order, decree or judgment of any court, this Agreement
will be construed as though such provision did not appear therein within the
jurisdiction of such court and the Agreement shall otherwise remain in full
force and effect in such jurisdiction and in its entirety in other
jurisdictions.
j. No Third-Party Beneficiaries. This Agreement is for the sole benefit of
the parties hereto. Nothing herein, express or implied, is intended to or shall
confer upon any person or entity, other than the parties hereto, any legal or
equitable right, benefit or remedy of any nature whatsoever under or by reason
of this Agreement.
k. Relationship Between Parties. Nothing herein contained shall be
construed to place the parties in the relationship of partners, joint venturers,
principal and agent, or employer and employee, and neither party shall have the
power to obligate or bind the other party in any manner whatsoever. Each party
shall be responsible for the acts, negligence and omissions of its employees,
agents and representatives.
l. Headings. The headings of the Articles and Sections contained in this
Agreement are included for convenience only and shall be given no effect in the
construction or interpretation of this Agreement.
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m. Survival. All of the provisions of this Agreement will survive any
expiration or termination of this Agreement.
n. Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be deemed an original, and all of which shall
together constitute one and the same instrument. This Agreement shall become
binding when one or more counterparts hereof, individually, or taken together,
shall bear the signatures of all of the parties reflected hereon as the
signatories. Execution may be effected by delivery of facsimiles of signature
pages (and the parties shall follow such delivery by prompt delivery of
originals of such pages).
IN WITNESS WHEREOF, the undersigned have caused this Intellectual Property
Assignment Agreement to be executed as of the Effective Date.
Seller: Geoworks Corporation
By: \S\
---------------------------------------
Xxxxxxx Xxxxxx, Chief Financial Officer
Buyer: ACCESS Co., Ltd.
By: \S\
---------------------------------------
Nobuya Murofushi,
Executive Director
Chief Financial Officer
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SCHEDULE A TO
INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
PATENTS AND APPLICATIONS
The following list includes all Patents including issued and pending
applications and all continuations, continuations-in-part, divisionals,
extensions, renewals, and reissues and re-examinations, and all foreign
counterparts.
Patent No. / Issued/
Jurisdiction Patent (App. No.) (Date App.)
------------ ------ --------- -----------
US #5,327,529 05 Jul 0000
Xxxxx #2,794,339 03 Sep 1998
US #5,742,905 21 Apr 1998
US #6,317,781 13 Nov 2001
US #6,173,316 09 Jan 2001
As well as:
- Application No. 87527/91 (through PCT) in Australia as a
foreign counterpart of US '529 patent.
- EP Application No. 1070288 (through PCT) as a foreign
counterpart of US '316 patent.
- EP Application No. 1152332 as a divisional of above ' 288 EP
application.
- EP Application No. 1152333 as a divisional of above ' 288 EP
application.
- Application No. 35503/99 (through PCT) in Australia as a
foreign counterpart of US '316 patent.
- US 5742668 patent as a continuation of US '905 patent.
- Japanese Application No. H9-511884 (through PCT) as a foreign
counterpart of US '905 patent.
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- EP Application No. 782805 (through PCT) as a foreign
counterpart of US '905 patent.
- Canadian 2199802 patent as a foreign counterpart of US '905
patent.
- Taiwanese 307080 patent as a foreign counterpart of US '905
patent.
- Thai 087464 patent as a foreign counterpart of US '905 patent.
- Singaporean 56289 patent as a foreign counterpart of US '905
patent.
- Australian 706391 patent as a foreign counterpart of US '905
patent.
- Indonesian 5742668 patent as a foreign counterpart of US '905
patent.
ASSIGNED CONTRACTS*
* all licenses for Flex UI (US Patent No. 5,327,529 and Japan Patent No.
2,794,339)
Company Effective
Licensee Size(1) Term Date Termination Date
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Apache Software Consulting Inc. Small 1 yr. 1/1/2001 1/1/2002
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Xxxxxxx Xxxxxx & Co., Inc. Large Full Term 11/1/2000 Annual payment
required
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Digital Paths Small 1 yr. 2/18/2000 Auto Renewal
------------------------------------------------------- ------------- ------------- ----------------- -----------------
------------------------------------------------------- ------------- ------------- ----------------- -----------------
FusionOne, Inc. Small 1 yr. 8/1/2001 Auto Renewal
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Harbourlight Production, Inc. Small 1 yr. 2/1/2001 2/1/2002
------------------------------------------------------- ------------- ------------- ----------------- -----------------
HiddenMind Technology, Inc. Small 1yr. 5mos. 8/1/2001 Auto Renewal
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Jataayu Software (P) Ltd. Small 1 Yr. 5/1/2001 5/1/2002
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Kyocera Wireless Corporation Large 3 Yrs. 4/11/2001 Auto Renewal
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Matsushita Electric Industrial Co., Ltd. Large Full Term 11/1/2000
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Mitsubishi Electric Corporation Large Full Term 3/31/2001
------------------------------------------------------- ------------- ------------- ----------------- -----------------
MobileID Inc. ? 1 Yr. 6/15/2000 Auto Renewal
------------------------------------------------------- ------------- ------------- ----------------- -----------------
My Docs Online, Inc. Small 1 Yr. 5/1/2000 Auto Renewal
------------------------------------------------------- ------------- ------------- ----------------- -----------------
NEC Corporation Large 3 Yr. 4/10/2001 Auto Renewal
------------------------------------------------------- ------------- ------------- ----------------- -----------------
------------------------------------------------------- ------------- ------------- ----------------- -----------------
PhoneFish Small 1 Yr. 1/1/2001 1/1/2002
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Practical Sales Tools Small 1 Yr. 1/1/2001 1/1/2002
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Seagull Software Systems, Inc. Large 3 Yr. 3/31/2001 Auto Renewal
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Xxxxxx.xxx, Inc. Small 1 Yr. 7/1/2000 Auto Renewal
------------------------------------------------------- ------------- ------------- ----------------- -----------------
XxxxXxx.xxx Small 1 Yr. 8/1/2000 8/1/2001
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Systems Engineering Consultants Co., Ltd. Large 1 Yr. 7/10/2000 Auto Renewal
------------------------------------------------------- ------------- ------------- ----------------- -----------------
Zygo Communications Ltd. Small 1 Yr. 2/1/2000 Auto Renewal
------------------------------------------------------- ------------- ------------- ----------------- -----------------
(1) Large companies have revenues of $1,000,000 or more; small companies have
revenues under $1,000,000
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SCHEDULE B TO
INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
The "Purchase Price" for all Patents listed in Schedule A is equal to: US$
500,000 which is payable by wire transfer to the account designated by Seller as
follows:
(i) US$ 300,000 on the Effective Date;
(ii) US$ 200,000 within twenty (20) days after Buyer's registration as an owner
of all US patents included in the Patents at the US Patent and Trademark
Office.
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SCHEDULE C TO
INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
ASSIGNMENT OF PATENTS
This ASSIGNMENT OF PATENTS, dated as of _________,("Assignment"), by
_______________ ("Assignor"), with an address __________________________, in
favor of ______________, a __________corporation ("Assignee"), with its
principal place of business at __________________________.
RECITALS
WHEREAS, Assignor is the owner of the patents, patent applications
and utility models listed on Exhibit A attached hereto, which are either issued
or pending (including the divisionals, continuations, continuations-in-part,
extensions, renewals, re-issues or re-examinations), respectively, in the United
States or a foreign country (collectively, the "Patents"); and
WHEREAS, Assignor and Assignee are parties to that certain
Intellectual Property Assignment Agreement, dated as of March 15, 2002, pursuant
to which Assignor has agreed to sell to Assignee and Assignee has agreed to
purchase from Assignor the Patents.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, subject to the terms and conditions
of that certain Intellectual Property Assignment Agreement dated as of March 15,
2002, Seller does hereby assign, transfer, set over, and deliver to Buyer all of
Seller's right, title, and interest in and to the Patents subject to any rights
previously granted therein together with (i) all patents granted on any
applications included in the Patents, all continuations, continuations-in-part,
divisionals, extensions, renewals, reissues and re-examinations of the Patents
and foreign counterparts, and all other issued patents and applications
(currently filed or to be filed in the future) anywhere in the world that claim
the benefit of priority of any patent or application included in the Patents,
(ii) all causes of actions in favor of the Patent, claims and demands or other
rights accruing in favor of the Patent, or arising from any infringement of the
Patents, on or after the Effective Date, and (iii) all rights corresponding
thereto throughout the world (with the exception of existing contractual rights
that survive assignment of the Assigned Contracts and those causes of action
arising from past infringement ), including, but not limited to, the right to
assert any attorney-client or work product privilege related to the prosecution
or analysis thereof, to the extent such privileges have not been waived prior to
the Effective Date, and to the extent assignable without waiving these
privileges with respect to matters unrelated to the Patents.
Assignor further agrees, without further consideration, to cause to
be performed such customary and lawful acts and to be executed such further
assignments and other lawful documents as Assignee may reasonably request to
effectuate fully this Assignment and to permit Assignee to be duly recorded as
the registered owner and proprietor of the rights hereby conveyed.
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IN WITNESS WHEREOF, the undersigned has caused this Assignment to be
executed by his signature as of the date above first written.
ASSIGNOR: Geoworks Corporation
By: ________________________________
Xxxxxxx Xxxxxx, CFO
Acknowledged and
Accepted:
ASSIGNEE: ACCESS Co., Ltd.
By: _______________________________
Nobuya Murofushi
Executive Director
Chief Financial Officer
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Exhibit A TO ASSIGNMENT OF PATENTS
PATENTS AND APPLICATIONS
The following list includes all Patents including issued and pending
applications and all continuations, continuations-in-part, divisionals,
extensions, renewals and reissues and re-examinations, and all foreign
counterparts.
Patent No. / Issued/
Jurisdiction Patent (App. No.) (Date App.)
------------ ------ --------- -----------
US #5,327,529 05 Jul 0000
Xxxxx #2,794,339 03 Sep 1998
US #5,742,905 21 Apr 1998
US #6,317,781 13 Nov 2001
US #6,173,316 09 Jan 2001
As well as:
- Application No. 87527/91 (through PCT) in Australia as a
foreign counterpart of US '529 patent.
- EP Application No. 1070288 (through PCT) as a foreign
counterpart of US '316 patent.
- EP Application No. 1152332 as a divisional of above ' 288 EP
application.
- EP Application No. 1152333 as a divisional of above ' 288 EP
application.
- Application No. 35503/99 (through PCT) in Australia as a
foreign counterpart of US '316 patent.
- US 5742668 patent as a continuation of US '905 patent.
- Japanese Application No. H9-511884 (through PCT) as a foreign
counterpart of US '905 patent.
13
- EP Application No. 782805 (through PCT) as a foreign
counterpart of US '905 patent.
- Canadian 2199802 patent as a foreign counterpart of US '905
patent.
- Taiwanese 307080 patent as a foreign counterpart of US '905
patent.
- Thai 087464 patent as a foreign counterpart of US '905 patent.
- Singaporean 56289 patent as a foreign counterpart of US '905
patent.
- Australian 706391 patent as a foreign counterpart of US '905
patent.
- Indonesian 5742668 patent as a foreign counterpart of US '905
patent.
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SCHEDULE D TO
EXCEPTIONS INDICATED IN SECTION 5. (b) and (f)
1. See the list of Flex UI licensees listed on Schedule A.
2. In the Settlement and License Agreement dated December 28th, 2000 with
Openwave Systems, Inc., Seller settled litigation with Openwave and cross
licensed the Flex UI patents along with one other patent then or within eighteen
months thereafter owned by Geoworks to be selected by Openwave by the end of
this eighteen month period. Therefore, the Flex UI patents are and potentially
one additional Patent could be subject to the terms of this agreement.
3. In the Cross-License Agreement dated September 1, 2000 with
Telefonaktiebolaget LM Ericsson, the Flex UI patents, US patent #5,742,905, US
patent #6,317,781 and US #5,742,668 patent (as a continuation of US '905
patent), were cross licensed to Ericsson and its affiliates and will remain
subject to the terms of this agreement.
4. In connection with the purchase of the AirBoss business unit from
Telcordia Technologies, Inc., Telcordia assigned several patents to Geoworks,
including US patents #5,742,905 and #5,742,668 patent (as a continuation of US
'905 patent), and Geoworks licensed back the rights to these patents to
Telcordia and its affililates. Therefore, the #905 Patent remains subject to the
terms of this agreement.
5. In the License Agreement dated October 8, 2001 with GoAmerica Corporation,
the Flex UI patents were licensed to GoAmerica and its affilates along with
another patent of Geoworks. The Flex UI patents will remain subject to this
agreement.
6. In the conduct of its business, Geoworks sold and licensed various
products that may have incorporated technologies infringing on the Patents to
various persons. Also, in connection with the sale of its legacy assets, i.e.,
the AirBoss, Mobile Server Plus, GEOS and GEOS-SC technologies, Geoworks has
agreed that neither it nor any successor in interest to any of the Patents would
xxx such purchaser, its suppliers or customers for any infringement of the
Patents occasioned by the manufacture, use or distribution of such legacy
assets. Therefore, Buyer's ability to xxx such persons for infringement would be
limited by such agreements.
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