Exhibit 4.(a).1
This PATENT PURCHASE AGREEMENT
(“Agreement”) is entered into on June 16, 2005 (“Effective
Date”) by and between Acoustic Technology LLC with an office at 0000-X
Xxxxxxxxxxx XXXXX, Xxxxx 0, Xxx Xxxxx, XX 00000
(“Purchaser”), and Optibase Ltd, with an office at 0
Xxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxx (“Optibase Israel”) and Optibase Inc., a
California Corporation with its principal place of business at 0000 Xxxxx Xxxx Xxx,
Xxxxxxxx Xxxx, Xxxxxxxxxx, 00000, XXX (“Optibase US” and, together with Optibase
Israel) (“Seller”). The parties hereby agree as follows.
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1.1 |
Seller
owns certain United States Letters Patents and/or applications for United States Letters
Patents and/or related foreign patents and applications. |
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1.2 |
Seller
wishes to sell its right, title and interest in such patents and applications to
Purchaser. |
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1.3 |
Purchaser
wishes to purchase such patents and applications. |
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2.1 |
“Assignment
Agreements ” means the agreements assigning ownership of the Patents
from the inventors and/or prior owners to Seller. |
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2.2 |
“List
of Prosecution Counsel” means the names and addresses of prosecution counsel who are
currently handling the Patents. |
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2.3 |
“Patents” means
those patents and applications listed in Exhibit A hereto, and all
reissues, reexaminations, extensions, continuations, continuation in part, continuing
prosecution applications, and divisions of such patents and applications; and foreign
counterparts to any of the foregoing including without limitation utility models. |
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3.1 |
Delivery.
Within thirty (30) days following the Effective Date, Seller shall deliver to Purchaser
an executed original of the Assignment of Patent Rights in Exhibit B hereto,
the Assignment Agreements, the List of Prosecution Counsel, and all files and original
documents owned or controlled by Seller (including without limitation Letters Patents)
relating to the Patents including, without limitation, all prosecution files for pending
patent applications included in the Patents, and its own files relating to the issued
Patents. |
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3.2 |
Payment.
Within thirty (30) days following Seller’s delivery to Purchaser of all the items
listed in Section 3.1, Purchaser shall pay to Seller the amount of one million dollars
($1,000,000.00). |
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4.1 |
Patent
Assignment. Seller hereby sells, assigns, transfers and conveys to Purchaser all
right, title and interest it has in and to the Patents and all inventions and discoveries
described therein, including without limitation all rights to pursue damages, injunctive
relief and other remedies for past, current and future infringement of the Patents. |
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5. |
ADDITIONAL
OBLIGATIONS |
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5.1 |
Further
Cooperation. At the reasonable request of Purchaser, Seller shall use its best
efforts to execute and deliver such other instruments and do and perform such other acts
and things as may be necessary or desirable for effecting completely the consummation of
the transactions contemplated hereby, including without limitation execution.
Acknowledgment and recordation of other such papers, and using best efforts to obtain the
same from the respective inventors, as necessary or desirable for fully perfecting and
conveying unto Purchaser the benefit of the transactions contemplated hereby. |
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5.2 |
Payment
of Fees. Seller shall pay any maintenance fees, annuities, and the like due on the
Patents for a period of thirty (30) days following the Effective Date. |
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5.3 |
Grant
Under Patent Rights. Effective on the Closing Date, Purchaser hereby grants to
Seller, under the Patent Rights (as defined in Exhibit B hereto), and for the lives
thereof, a royalty-free, irrevocable, non-exclusive, non-transferable, worldwide right
and license (the “Seller License”) to practice the methods
and to make, have made, use, distribute, lease, sell, offer for sale, import, export,
develop and otherwise dispose of and exploit any products, processes or services covered
by the Patent Rights (“Covered Products”).
This Seller License is not transferable except to a successor to Seller’s rights (“Seller
Successor”) through a purchase of all, or substantially all, of the operating
assets of Seller’s operating assets (other than cash) or through a merger,
consolidation or similar transaction resulting in the acquisition of all, or
substantially all, of Seller’s outstanding capital stock (a “Succession
Transaction”). Upon consummation of a Succession Transaction, the
Seller License shall apply to Covered Products only to the extent that annual not revenue
realized by Seller Successor from Covered Products does not exceed the applicable Revenue
Limitation (as defined below). Purchaser, however, declares that it is willing to enter
into good faith negotiations with Seller Successor in order to grant Seller Successor a
license to the Covered Products above the Revenue Limitation on reasonable,
non-discriminatory terms. Notwithstanding the foregoing, in no event shall the Seller
License be deemed to include any product, process or service of Seller Successor that was
not Covered Product prior to the Succession Transaction. |
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5.4 |
Revenue
Limitation. The Revenue Limitation for each calendar year shall equal Seller’s
gross revenues from covered Products for the calendar year preceding the Succession
Transaction (the “Baseline Year”), increased by 5% for each calendar year after
the Baseline Year. |
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6. |
REPRESENTATIONS
AND WARRANTIES |
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Seller
hereby represents and warrants to Purchaser as follows: |
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6.1 |
Authority.
Seller has the right and authority to enter into this Agreement and to carry out
its obligations hereunder. |
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6.2 |
Title
and Contest. Seller has good and marketable title to the Patents, including without
limitation all rights, title, and interest in the Patents to xxx for infringement
thereof. The Patents are free and clear of all liens, mortgages, security interests or
other encumbrances, and restrictions on transfer. To the knowledge of the Seller there
are no actions, suits, investigations, claims or proceedings threatened, pending or in
progress relating in any way to the Patents. To the knowledge of the Seller, there are no
existing contracts, agreements, options, commitments, proposals, bids, offers, or rights
with, to or in any person to acquire any of the Patents. |
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6.3 |
Existing
Licenses. No rights or licenses have been granted under the Patents. |
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6.4 |
Restrictions
on Rights. Purchaser will not be subject to any covenant not to xxx or similar
restrictions on its enforcement or enjoyment of the Patents as a result of the
transaction contemplated in this Agreement, or any prior transaction related to the
Patents. |
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6.5 |
Conduct.
To the knowledge of Seller, none of Seller or its representatives has changed in any
conduct, or omitted to perform any necessary act, the result of which would invalidate
any of the Patents or hinder their enforcement, including but not limited to
misrepresenting Seller’s patent rights to a standard-setting organization. |
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6.6 |
Enforcement.
Seller has not put a third party on notice of actual or potential infringement of any of
the Patents or considered enforcement action(s) with respect to any of the Patents. |
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6.7 |
Patent
Office Proceedings. To the knowledge of the Seller, none of the Patents have been or
are currently involved in any reexamination, reissue, interference proceeding, or any
similar proceeding and that no such proceedings are pending or threatened. |
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6.8 |
Fees.
All maintenance fees, annuities, and the like due on the Patents have been timely
paid through the Effective Date. |
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6.9 |
Validity
and Enforceability. To the knowledge of Seller the Patents have never been found
invalid or unenforceable for any reason in any administrative, arbitration, judicial or
other proceeding, and Seller has not received any notice or information of any kind from
any source suggesting that the Patents may be invalid or unenforceable. |
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7.1 |
Limitation
on Consequential Damages. NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR LOSS OF
PROFITS, OR ANY SPECIAL CONSEQUENTIAL OR INCIDENTAL DAMAGES, HOWEVER CAUSED, EVEN IF
ADVISED OF THE POSSIBILITY OF SUCH DAMAGE. THE PARTIES ACKNOWLEDGE THAT THESE LIMITATIONS
ON POTENTIAL LIABILITIES WERE AN ESSENTIAL ELEMENT IN SETTING CINSIDERATION UNDER THIS
AGREEMENT. |
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7.2 |
Limitation
of liability. EXCEPT FOR FRAUD, PURCHASER’S AND SELLER’S TO- TAL LIABILITY
UNDER THIS AGREEMENT SHALL BE THE AMOUNT SET FORTH IN SECTION 3. THE PARTIES ACKNOWLEDGE
THAT THESE LIMITA-TOINS ON POTENTIAL LIABILITIES WERE AN ESSENTIAL ELEMENT IN SET-TING
CONSIDERATION UNDER THIS AGREEMENT. |
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7.3 |
Compliance
with laws. Notwithstanding anything contained in this agreement to the contrary, the
obligations of the parties shall be subject to all laws, present and future, of any
government having jurisdiction. Over the parties and this transaction, and to orders,
regulations, directions or requests of any such government. |
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7.4 |
Confidentiality
of terms. The parties hereto shell keep the terms and existence of this agreement and
the identities of the parties hereto confidential and shall not now or hereafter divulge
any of this information to any third party except: (a) with the prior written consent of
the other party; (b) as otherwise may be required by law or legal process, including in
confidence to legal and financial advisors in their capacity of advising a party in such
matters; (c) during the course of litigation, so long as the disclosure of such terms and
conditions are restricted in the same manner as is the confidential information of other,
litigating parties; or (d) in confidence to its legal counsel, accountants, banks and
financing sources and their advisors solely in connection with complying with financial
transactions; provided that, in (b) through (d) above, (i) the disclosing party shall use
all legitimate and legal means available to minimize the disclosure to third parties,
including without limitation seeking a confidential treatment request or protective order
whenever appropriate or available; and (ii) the disclosing party shall provide the other
party with at least ten (10) days prior written notice of such disclosure. |
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7.5 |
Covering
law. Any claim arising under or relating to this agreement shall be governed by the
internal substantive laws of the State Of New York without regard to principles of
conflict of laws. |
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7.6 |
Jurisdiction. Each
party hereby agrees to jurisdiction and venue in the court of the State Of New York or
the Federal courts sitting therein for all disputes and litigation arising under or
relating to this agreement. |
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7.7 |
Entire
agreement. The terms and conditions of this agreement, including its exhibits,
constitutes the entire agreement between the parties with respect to the subject matter
hereof, and merges and supersedes all prior and contemporaneous agreement,
understandings, negotiations and discussions. Neither of the parties shall be bound by
any conditions, definitions, warranties, understandings, or representations with respect
to the subject matter hereof other than as expressly provided herein. The section
headings contained in this Agreement are for reference purposes only and shall not affect
in any way the meaning or interpretation of this Agreement. No oral explanation or
information by either party hereto shall alter the meaning or interpretation of this
Agreement. No amendments or modification shall be effective unless in a writing signed by
authorized representatives of both parties. These term and conditions will prevail
notwithstanding any different, conflicting or additional term and conditions which may
appear any purchase order, acknowledgment or other writing not expressly incorporated
into this Agreement. This Agreement may be executed in tow (2) or more counterparts, all
of which, taken together, shall be regarded as one and the same instrument. The following
exhibits are attached hereto and incorporated herein: Exhibit A (entitled
“Patent Rights to be Assigned”) and Exhibit B (entitled“Assignment
of Patent Rights”). |
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7.8 |
Notices: All
notices required or permitted to be given hereunder shall be in writing, shall make
reference to this Agreement, and shall be delivered by hand, or dispatched by prepaid air
courier or by registered or certified airmail, postage prepaid, addressed as follows |
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If to seller |
If to purchaser |
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Optibase Ltd. and Optibase Inc. |
Acoustic Technology LLC |
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Optibase Ltd. |
0000-X Xxxxxxxxxxx xxxxx, suite 5, |
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0 Xxxxxxx Xxxxxx |
Xxx Xxxxx, XX 00000 |
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Herzeliya, Israel |
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Optibase Inc. |
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0000 Xxxxx Xxxx Xxx |
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Xxxxxxxx Xxxx, Xxxxxxxxxx, 00000 |
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Attn: Xxxxx Xxxxxxxx |
Attn: Managing Director |
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Such
notices shall be deemed served when received by addressee or, if delivery is not
accomplished by reason of some fault of the addressee, when tendered for delivery. Either
party may give written notice of a change of address and, after notice of such change has
been received, any notice or request shall thereafter be given to such party at such
changed address. |
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7.9 |
Relationship
of Parties. The parties hereto are independent contractors. Neither party has any
express or implied right or authority to assume or create any obligations on behalf of
the other or to bind the other to any contract, agreement or undertaking with any third
party. Nothing in this Agreement shall be construed to create a partnership, joint
venture, employment or agency relationship between Seller or Purchaser. |
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7.10 |
Equitable
Relief. Seller agrees that damages alone would be insufficient to compensate
Purchaser for a breach of this Agreement, acknowledges that irreparable harm would result
from a breach of this Agreement, and consents to the entering of an order for injunctive
relief to prevent a breach or further breach, and the entering of an order for specific
performance to compel performance of any obligations under this Agreement. |
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7.11 |
Severability.
The terms and conditions stated herein are declared to be severable. If any paragraph,
provision, or clause in this Agreement shall be found or be held to be invalid or
unenforceable in any jurisdiction in which this Agreement is being performed, the
remainder of this Agreement shall be valid and enforceable and the parties shall use good
faith to negotiate a substitute, valid and enforceable provision which most nearly
effects the parties’ intent in entering into this Agreement. |
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7.12 |
Waiver.
Failure by either party to enforce any term of this Agreement shall not be demand a
waiver of future enforcement of that or any other term in this Agreement or any other
agreement that may be in place between the parties. |
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7.13 |
Assignment.
The terms and conditions of this Agreement shall inure to the benefit of Purchaser, its
successors, assigns and other legal representatives, and shall be binding upon Seller,
its successor, assigns and other legal representatives. |
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Acoustic Technology LLC
/s/ Xxxxx Xxxxxx
Xxxxx Xxxxxx
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Signature |
Optibase Ltd. and Optibase, Inc
/s/ Xxx Xxxxxx /s/ Xxx Xxxxx
Xxx Xxxxxx Xxx Xxxxx
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Signature |
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Xxxxx Xxxxxx
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Printed Name |
Xxx Xxxxxx Xxx Xxxxx
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Printed Name |
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Managing Director
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Title |
CEO Chairman
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Title |
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6/16/2005
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Date |
6/16/2005
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Date |
