EXHIBIT - 2.1
ASSET PURCHASE AGREEMENT
This Asset Purchase Agreement (hereinafter "Agreement"), is entered
into as of June ___, 2003 (the "Effective Date'), by and between Auspex Systems,
Inc., a Xxxxxxx 00 xxxxxx xx xxxxxxxxxx, Xxxxxx Xxxxxx Bankruptcy Court for the
Northern District of California (the "Bankruptcy Court"), Case No. 03-52596-mm11
(hereinafter "Seller"), and Network Appliance, Inc., a Delaware corporation
(hereinafter "Purchaser").
Whereas Seller is the owner of full right and title (both legal and
equitable) to certain inventions, patents, and applications, defined herein as
"Seller Patents"; and
Whereas Purchaser is desirous of acquiring the entire domestic and
foreign right title and interest in and to such Seller Patents.
Now, therefore, Seller and Purchaser hereby covenant and agree as
follows:
1. DEFINITIONS
1.1. "Seller Patents" shall mean those patents and applications
identified as such in Exhibit A, and (i) all U.S. and foreign
patents and patent applications that claim priority to such
identified patents and applications and all U.S. and foreign patents
and applications to which such identified patents and applications
relate or claim priority, (ii) any continuations,
continuations-in-part, divisions, reissue applications, extensions,
Patent Cooperation Treaty applications, or derivatives of any of the
foregoing, both foreign and domestic and (iii) all patentable
inventions in the U.S. and every foreign country, described or
embodied in any of the foregoing.
1.2. "Prosecution History Files" shall mean all files, documents and
tangible things, as those terms have been interpreted pursuant to
Federal Rule of Civil Procedure 34, constituting, comprising or
relating to investigation, evaluation, prosecution, filing and
registration of the Seller Patents, and specifically includes e-mail
messages and other electronic or computer stored or generated data.
2. TRANSFER OF RIGHTS
2.1. For good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, Seller hereby agrees to assign and
transfer to Purchaser and its representatives, successors and
assigns its full and exclusive right, title and interest in and to
all Seller Patents. Seller also hereby agrees to assign and transfer
to Purchaser and its representatives, successors and assigns their
full and exclusive right, title and interest in and to all
protectable (e.g., as by patenting) inventions, in the U.S. and
every foreign country, described or embodied in the Seller Patents.
2.2. Seller hereby agrees to assign and transfer to Purchaser and its
representatives, successors and assigns the full and exclusive right
to xxx upon and otherwise enforce the Seller Patents and to recover
all past damages and other potential relief arising from
infringement of the Seller Patents assigned by this Agreement.
2.3. The closing (the "Closing") of the assignment and transfer of the
Seller Patents and other assets described in Section 2.1 and 2.2
(the "Purchased Assets") shall take place on the second business day
following the satisfaction of the conditions set forth in Sections
2.4
1.
through 2.7 and Section 5.19 of this Agreement or at such other
place and time as Seller and Purchaser may mutually agree.
2.4. For the purpose of recordation and in accordance with the transfers
herein, at the Closing, Seller shall execute the assignment document
attached as Exhibit B listing the Seller Patents. Upon the written
request of the Buyer and without additional charge or at the Buyer's
expense, the Seller shall execute and deliver to the Buyer all such
additional instruments of transfer, conveyance, endorsement and
assignment (in a form satisfactory to the Buyer) as shall be
necessary to transfer (or perfect or record the transfer of) the
Seller Patents to Buyer including separate assignments for each
Seller Patent.
2.5. Effective upon the Closing, Seller authorizes and requests the
Commissioner of Patents to issue U.S. patents to Purchaser, its
representatives, successors and assigns relating to the inventions
and applications conveyed by this Agreement.
2.6. Effective upon the Closing, Seller conveys to Purchaser, its
representatives, successors and assigns, the right to make
applications on their own behalf for protection of the inventions
conveyed herein in the U.S. and foreign countries and to claim,
under United States law, the Patent Cooperation Treaty, the
International Convention and/or other international arrangements for
any such application, priority to any earlier application or patent.
2.7. Within 30 days of the Closing, Seller shall i) provide a complete
and accurate docket identifying the relevant dates when any action
or response is due within the next six (6) months in any US and
foreign patent offices with respect to the Seller Patents, and ii)
transfer, at Purchaser's expense, all Prosecution History Files and
related files maintained by Seller outside counsel and in-house
counsel for the Seller Patents to Purchaser.
3. NO IMPLIED OR EXPRESS LICENSES
3.1. Except for the Limited Use License (as defined below) set forth as
Exhibit C hereto, Purchaser does not grant to Seller or any other
entity any implied or express licenses or rights whatsoever under
this Agreement. Purchaser does not grant to Seller or any other
entity any implied or express licenses or rights with respect to
any patents other than the Seller Patents. No licenses or rights are
granted to Seller or any other entity regarding subject matter not
invented by employees, contractors or other agents of Seller.
4. PAYMENT
4.1. As consideration for the assignment of the Seller Patents and other
rights granted by Seller herein, Purchaser shall pay to Seller on or
prior to the Closing, the total sum of eight million nine hundred
seventy-five thousand U.S. Dollars ($8,975,000) (hereinafter
referred to as the "Purchase Price"). The assignment and license
provisions set forth herein are contingent upon the payment of the
Purchase Price to Seller on or prior to Closing.
2.
4.2. Payment under Paragraph 4.1 shall be made by electronic funds
transfer. Such payment shall be deemed to be made on the date
credited to the following account:
Pay to: City National Bank
000 Xxxxxxxxxx Xxxxxx
Xxx Xxxxxxxxx, XX 00000
Routing & Transit #: 0000-0000-0
For Credit Of: Xxxxxx Godward LLP FBO Auspex Systems,
Inc.
Credit Account #: 432-654869
(Clearly indicate the originator (Purchaser's Name) and the
beneficiary (Auspex Systems, Inc.)
5. COVENANTS AND OTHER PROVISIONS
5.1. Seller represents and warrants that (a) it has the right to assign
the Purchased Assets, and (b) it is conveying through this Agreement
its undivided right, title and interest in and to the Purchased
Assets and that, to its knowledge, no other party has any claim of
ownership to the Purchased Assets, except as explicitly provided for
herein.
5.2. Seller represents and warrants that no agreements with third parties
under any of the Seller Patents prevent Seller from entering into
this Agreement. Seller further represents and warrants that no
entities have licenses or rights under 11 U.S.C. Section 365(n) with
respect to the Seller Patents.
5.3. Seller represents and warrants that, to its knowledge it has not
taken, and will not take, any action materially adversely affecting
the validity, enforceability, or issuance of the Seller Patents.
5.4. Seller represents and warrants that, to its knowledge, all of the
domestic patent applications listed in Exhibit A are pending in the
United States Patent and Trademark Office and that none of such
applications have been abandoned.
5.5. Seller represents and warrants that except as set forth on Schedule
5.5, no procedures are necessary and no payment of filing,
examination or maintenance fees are required to be paid on or prior
to July 30, 2003 with respect to any issued patents or pending
patent applications included in the Seller Patents to maintain their
compliance with formal legal requirements for filing, issuance and
maintenance.
5.6. Seller represents and warrants that none of the Seller Patents set
forth on Exhibit A is involved in any interference or opposition
proceeding, and to Seller's, knowledge, no such proceeding is being
threatened with respect to any such Seller Patents.
5.7. Seller represents and warrants that subject to appropriate order of
the Bankruptcy Court, it is able to convey the Seller Patents free
and clear of any liens, encumbrances, security interests, or other
claims to the fullest extent of the Bankruptcy Court's authority
to so order, except for the Limited Use License noted in this
Agreement.
3.
5.8. Seller shall pay all transfer taxes imposed on the sale of the
Purchased Assets, including all sales, gross receipts, excise and
gross income taxes.
5.9. Subject to the authority and jurisdiction of the Bankruptcy Court
and except as is consistent with the applicable orders of the
Bankruptcy Court with respect to the procedures relating to the sale
of its assets, Seller covenants and agrees that it shall not execute
any writing or do any act whatsoever conflicting with the terms of
this Agreement, and that, following the Closing, Seller will at any
time upon request, without further or additional consideration, but
at the expense of Purchaser, execute such additional assignments or
other writings and perform such additional acts as Purchaser may
deem reasonably necessary to perfect Purchaser's ownership of the
Purchased Assets. Seller further covenants and agrees, at
Purchaser's expense, to render all reasonably necessary assistance
following the Closing in making application for, prosecuting in any
patent office internationally, and obtaining original, continuation,
continuation-in-part, divisional, reissued, reexamined, and National
phase patents of the U.S. or of any and all foreign countries on the
inventions assigned herein, and in enforcing any rights or choses in
action accruing as a result of the rights assigned herein, and by
executing statements and other affidavits, it being understood that
the foregoing covenant and agreement shall bind, and inure to the
benefit of, the assigns and representatives of all parties hereto.
5.10. At the Closing, Purchaser agrees to execute and deliver to such
party as may be designated by Seller, a limited use license in the
form set forth as Exhibit C (the "Limited Use License").
5.11. This Agreement and all matters relating to this Agreement shall be
construed and controlled by the laws of the State of California. If
any legal proceeding or other legal action relating to this
Agreement is brought or otherwise initiated by the parties to this
Agreement, the venue therefore will be the Bankruptcy court.
Purchaser and Seller hereby expressly and irrevocably consent and
submit to the jurisdiction of the Bankruptcy Court.
5.12. Except as otherwise provided in the Agreement, the parties shall pay
their respective expenses incurred in connection with the
preparation, execution, and delivery of this Agreement and the
consummation of the transactions contemplated hereby.
5.13. All notices, requests, demands, and other communications hereunder
shall be deemed to have been duly given on the day they are (i)
deposited in the U.S. mail, postage prepaid, certified or
registered, return receipt requested; or (ii) sent by air express
courier, charges prepaid, and addressed as follows:
5.13.1. If to Purchaser: Network Appliance, Inc., 000 Xxxx Xxxx Xxxxx,
Xxxxxxxxx, XX 00000 Attention: Xxxx Xxxx, Esq.
4.
5.13.2. If to Seller: Auspex Systems, Inc., c/o J. Xxxxxxx Xxxxx,
Xxxxxx Godward LLP, Xxx Xxxxxxxx Xxxxx, 00xx Xxxxx, Xxx
Xxxxxxxxx, XX 00000.
5.13.3. A copy to Xxxxx Xxxxxxxx, Esq., 0000 Xxxx Xxxxxxx Xx., Xxxxx
000, Xxxxxxxx Xxxxxxx, XX 00000.
5.13.4. Such addresses may be changed, from time to time, by means of a
written notice delivered by the party seeking to change such
address in the manner provided for in this paragraph.
5.14. This Agreement shall be binding upon and inure to the benefit of the
parties and their respective successors and assigns.
5.15. This Agreement may be terminated only by mutual consent of the
parties or by either party upon approval by the Bankruptcy Court of
a transaction or series of transactions involving a sale, transfer
or assignment of all or substantially all the Purchased Assets to a
party other than Purchaser. In the event that this Agreement shall
be terminated pursuant to this Section 5.15, all further obligations
of the parties under this Agreement shall terminate without further
liability or obligation of any party hereunder; provided, that the
parties will remain bound by the provisions of that certain
confidentiality agreement dated May 8, 2003 by and between the
parties.
5.16. The invalidity or unenforceability of any term or provision of this
Agreement or the application of such term or provision to any person
or circumstance shall not impair or affect the remainder of this
Agreement or its application to other persons and circumstances, and
the remaining terms and provisions shall remain in full force and
effect.
5.17. This Agreement constitutes the entire agreement between the parties
and supersedes all prior agreements and understandings, oral and
written, among the undersigned with respect to the subject matter
hereof.
5.18. None of Seller's representations, warranties and pre-closing
covenants contained in this Agreement or in any other agreement,
document or certificate delivered pursuant to this Agreement shall
survive the Closing. Notwithstanding any provision hereof to the
contrary, Seller's undertakings set forth in the second sentence of
Section 2.4, Section 2.7(iii), Section 5.8, and Section 5.9 shall
continue in full force and effect following the Closing. Neither
Seller nor any of its officers, directors, representatives,
employees, advisors or agents shall have any liability to Purchaser
or any other party after the Closing for any breach thereof.
5.19. The Closing and the transactions contemplated herein are and shall
be contingent upon (i) the issuance by the Bankruptcy Court of an
order, in a form reasonably satisfactory to Purchaser, approving the
transactions provided for herein free and clear of liens and
encumbrances to the fullest extent of the Bankruptcy Court's
authority to so order (the "Sale Order"); (ii) execution and
delivery of the documents and other instruments required to be
delivered by Purchaser and Seller on or prior to Closing pursuant to
this Agreement; and (iii) receipt by Seller of the Purchase Price.
The Sale Order shall contain, among other things, a finding that the
sale of the Purchased Assets to Purchaser is in good faith within
the meaning of Bankruptcy Code Section 363(m).
5.
In witness whereof, the parties hereto have caused this agreement to
be made and executed by duly authorized officers as of the dates indicated
below.
Agreed to: Agreed to:
AUSPEX SYSTEMS, INC. NETWORK APPLIANCE, INC.
By:__________________________ By:__________________________
Name:________________________ Name:________________________
Title:_______________________ Title:_______________________
Date:________________________ Date:________________________
6.
