EXHIBIT 10.11
ASSIGNMENT AGREEMENT
THIS AGREEMENT is made and entered into as November 6, 1997 by and
between XxxxxxxXxxxxx.xxx, a California corporation (the "Company"), and Xxxxxx
Xxxxxxxxx ("Xxxxxxxxx").
WITNESSETH
WHEREAS, Xxxxxxxxx desires to assign to the Company all of his right,
title, and interest in and to the Work Product and other intellectual property
rights and licenses he acquired pursuant to that certain Development and
License Agreement by and between Xxxxxxxxx and i-Labs, Ltd. dated March 31, 1997
(the "Development Agreement"), and the Company desires to accept such assignment
and assume all rights, licenses and obligations under the Development Agreement
under the term and conditions of this Agreement. As used herein, "Work Product"
shall have the same meaning as set forth in the Development Agreement.
NOW THEREFORE, in consideration for good and valuable consideration,
the receipt of which is hereby mutually acknowledged, the parties hereto,
intending to be legally bound, hereby agree as follows:
Section 1. Transfer and Assignment.
1.1 Conveyance of Rights by Xxxxxxxxx. Xxxxxxxxx hereby transfers,
grants, conveys, assigns, and relinquishes exclusively to the Company all of his
right, title, and interest in and to the Work Product and all other rights and
licenses under the Development Agreement, including, but not limited to, the
following: all right, title, interest, and benefit (including to make, use, or
sell under patent law; to copy, adapt, distribute, display, and perform under
copyright law; and to use and disclose under trade secret law) of Xxxxxxxxx in
and to all United States and foreign patents and patent applications, patent
license rights, patentable inventions, trade secrets, trademarks, service marks,
trade names (including, in the case of trademarks, service marks and trade
names, all goodwill appertaining thereto), copyrights, technology licenses,
know-how, confidential information, shop rights, and all other intellectual
property rights owned or claimed by Xxxxxxxxx embodied in the Work Product.
1.2 Further Assurances. Xxxxxxxxx shall execute and deliver, from time
to time after the date hereof upon the request of the Company, such further
conveyance instruments, and take such further actions, as may be necessary or
desirable to evidence more fully the transfer of ownership of all of the Work
Product and all other licenses and rights under the Development Agreement to the
Company to the fullest extent possible. Xxxxxxxxx therefore agrees to: (i)
execute, acknowledge, and deliver any affidavits or documents of assignment and
conveyance regarding the Work Product, (ii) provide testimony in connection with
any proceeding affecting the right, title, interest, or benefit of the Company
and to the Work Product, and (iii) perform any other acts deemed necessary to
carry out the intent of this Agreement.
1.3 Acknowledgment of Rights. In furtherance of this Agreement,
Xxxxxxxxx hereby acknowledges that, from this date forward, the Company has
succeeded to all of his right title, and standing to: (i) receive all rights and
benefits pertaining to the Work Product and the rights and licenses under the
Development Agreement, (ii) institute and prosecute all suits and proceedings
and take all actions that the Company, in its sole discretion, may deem
necessary or proper to collect, assert, or enforce any claim, right, or title of
any kind in and to any and all of the Work Product, and (iii) defend and
compromise any and all such actions, suits, or proceedings relating to such
transferred and assigned rights, title, interest, and benefits, and do all other
such acts and things in relation thereto as the Company, in its sole discretion,
deems advisable.
Section 2. Representations and Warranties.
Xxxxxxxxx represents and warrants that no consents of any other parties
are necessary or appropriate under any agreements concerning any of the Work
Product or other rights and licenses under the Development Agreement in order
for the transfer and assignment of any of the Work Product or other rights and
licenses under the Development Agreement, and to the best of his knowledge, upon
consummation of this Agreement, the Company shall have good and marketable title
to the Work Product, free and clear of any and all liens, mortgages,
encumbrances, pledges, security interests, or charges of any nature whatsoever,
and full and complete rights to all licenses contained in the Development
Agreement.
Section 3. Miscellaneous.
3.1 All previous agreements and arrangements made by the parties and
relating to the subject matter hereof are hereby superseded and this Agreement,
including its exhibits, embodies the entire understanding of the parties, there
being no promises, terms, conditions or obligations, oral or written, express or
implied, other than those contained herein. This Agreement may only be amended
by a written document signed by both parties.
3.2 Any notice required to be given hereunder shall be in writing and
may be given by facsimile transmission to the facsimile number for such party
set forth below or personal delivery (including by professional courier) at, or
mailing (by first class receipted prepaid mail) to, the address of the party
contained in this Agreement, or such other facsimile number or address as such
party may have notified the other of pursuant to this section. In the case of
facsimile transmission or personal delivery, such notice shall be deemed to have
been given upon the date of such transmission or delivery. In the case of
mailing, such notice shall be deemed to have been given seven days after such
mailing.
3.3 Any dispute or claim arising out of or in connection with this
Agreement shall be finally settled by binding arbitration in San Francisco,
California under the Rules of Arbitration of the American Arbitration
Association by one arbitrator appointed in accordance with said rules. The
arbitrator shall apply California law to the merits of any dispute or claim,
without reference to rules of conflicts of law. Judgment on the award rendered
by the arbitrator may be entered in any court having jurisdiction thereof.
Notwithstanding the foregoing, the parties may apply to any court of competent
jurisdiction for injunctive relief without breach of this arbitration provision.
If any legal action is necessary or brought in any court or arbitration
proceeding, to enforce or interpret the terms of this agreement, the prevailing
party shall be entitled to reasonable attorney's fees, costs, and necessary
expenses, in addition to any other relief to which such party may be entitled.
3.4 If any provision in this Agreement is found or held to be invalid
or unenforceable, then the meaning of said provision shall be construed, to the
extent feasible, so as to render the provision enforceable, and if no feasible
interpretation would save such provision, it shall be severed from the remainder
of this Agreement which shall remain in full force and effect unless the severed
provision is essential and material to the rights or benefits received by either
party. In such event, the parties shall use their best efforts to negotiate, in
good faith, a substitute, valid and enforceable provision or agreement which
most nearly effects the parties' intent in entering into this Agreement.
3.5 No waiver of any term or condition of this Agreement shall be
valid or binding on a party unless the same has been mutually assented to in
writing by both parties. The failure of a party to enforce at any time any of
the provisions of this Agreement, or the failure to require at any time
performance by the other party of any of the provisions of this Agreement, shall
in no way be construed
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to be a present or future waiver of such provisions, nor in any way affect the
ability of a party to enforce each and every such provision thereafter.
IN WITNESS WHEREOF, the parties hereto have executed this Assignment
Agreement as of the day and year first above written.
XXXXXXXXXXXXX.XXX
a California corporation
By: /s/ Xxxxxx Xxxxxxxxx
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Title: COO
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ASSIGNOR:
/s/ Xxxxxx Xxxxxxxxx
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Xxxxxx Xxxxxxxxx
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