LICENSE AGREEMENT
EXHIBIT
10.3
This
LICENSE AGREEMENT (this “Agreement”),
effective as of July 16, 2010 (“Effective Date”), is
by and between GlobalOptions, Inc., a Delaware corporation (“Seller”) and Xxxx
Group Holdings, LLC, a Delaware limited liability company (“Buyer”).
WHEREAS,
Seller, Parent and Buyer have entered into an Asset Purchase Agreement dated May
13, 2010 (“Asset
Purchase Agreement”) pursuant to which Seller assigned, transferred and
sold to Buyer all of its right, title and interest in and to the Property (as
such term is defined in the Asset Purchase Agreement); and
WHEREAS,
Seller is willing to grant to Buyer an exclusive license to use the Licensed
Technology (as defined below) within the Buyer Field (as defined below) in
accordance with the terms and conditions set forth in this
Agreement.
NOW,
THEREFORE, in consideration of the premises and mutual covenants and agreements
hereinafter set forth, the sufficiency of which is acknowledged, Seller and
Buyer, intending to be legally bound, hereby agree as follows:
1. Definitions.
“Agreement” has the
meaning set forth in the Recitals.
“Asset Purchase
Agreement” has the meaning set forth in the Recitals.
“Business” has the
meaning set forth in the Asset Purchase Agreement.
“Buyer” has the
meaning set forth in the Recitals.
“Buyer Field” means the field of
emergency preparedness and disaster relief recovery.
“Buyer Improvement”
has the meaning set forth in Section 3(a).
“Confidential
Information” means, as to any party (“Disclosing Party”)
all information and data provided by or on behalf of such party to the other
party (“Receiving
Party”) in written or other tangible medium and marked as confidential,
or if disclosed orally, confirmed in writing within thirty (30) days after
disclosure, except any portion thereof which: (a) is in the public domain as of
the date of this Agreement; (b) enters the public domain after the date of this
Agreement through no fault of the Receiving Party; (c) is communicated to the
Receiving Party after the date of this Agreement by a third party free of any
obligation of confidentiality; or (d) is independently developed by the
Receiving Party without use of, access to, or reference to the Confidential
Information of the Disclosing Party.
“Effective Date” has
the meaning set forth in the Recitals.
“Improvements” means,
individually and collectively, all discoveries, inventions, know-how,
techniques, methodologies, modifications, improvements, works of authorship,
designs and data (whether or not protectable under patent, copyright, trade
secrecy or similar Laws) relating to additions, developments, enhancements,
updates and other changes in or to the Licensed Technology.
“Intellectual Property
Rights” means, in any and all jurisdictions throughout the world, all (a)
inventions and discoveries (whether or not patentable or reduced to practice),
patents, patent applications, invention disclosures, industrial designs, mask
works and statutory invention registrations, (b) trademarks, service marks,
domain names, trade dress, trade names and other identifiers of source or
goodwill, including registrations and applications for registration thereof and
including the goodwill symbolized thereby or associated therewith, (c) published
and unpublished works of authorship, whether copyrightable or not (including
Software (as defined below)), copyrights therein and thereto, registrations,
applications, renewals and extensions therefor, and any and all rights
associated therewith, (d) confidential and proprietary information, including
trade secrets, know how and invention rights, (e) rights of privacy and
publicity, (f) database rights, and (g) any and all other proprietary
rights.
“Law” has the meaning
set forth in the Asset Purchase Agreement.
“Licensed
Technology” means
individually and collectively, all Software, Source Materials, data,
information, databases, materials, documentation, tools, inventions, invention
disclosures, proprietary information and know-how (whether or not patentable or
protectable under copyright, trade secrecy or similar Laws) related to or used
in the Business and all Intellectual Property Rights therein that do not
otherwise constitute the Proprietary Rights (as defined in the Asset Purchase
Agreement) sold, transferred and assigned to Buyer pursuant to the Asset
Purchase Agreement including, but not limited to, all of the foregoing with
respect to the “GlobalTrak” Software used or provided in connection with the
Business, but excluding any and all rapid data, rapid video, fraud and special
investigation unit case management codes, and data base objects not related to
or used in the Business, of said “GlobalTrak” Software and certain third party
development and design tools that are not sublicensable by Seller which have
been identified by Seller in writing to Buyer.
“Parent” means
GlobalOptions Group, Inc., a Delaware corporation.
“Participating Party”
shall have the meaning set forth in Section 6.2(e).
“Person” has the
meaning set forth in the Asset Purchase Agreement.
“Prosecute” has the
meaning set forth in Section 6.1.
“Seller” has the
meaning set forth in the Recitals.
“Seller Improvement”
has the meaning set forth in Section 3(b).
“Software” means all
(a) computer programs, applications, systems and code, including software
implementations of algorithms, models and methodologies, and Source Code and
object code, (b) Internet and intranet websites, databases and compilations,
including data and collections of data, whether machine-readable or otherwise,
(c) development and design tools, library functions and compilers, (d)
technology supporting websites, and the contents and audiovisual displays of
websites, and (e) documentation, other works of authorship and media, including
user manuals and training materials, relating to or embodying any of the
foregoing or on which any of the foregoing is recorded.
“Source Code” shall
mean code other than object code, and includes code that may be displayed in a
form readable and understandable by a programmer of ordinary skill, as well as
any enhancements, corrections and documentation related thereto. Source Code
includes related Source Code level system documentation, comments and procedural
code, such as job control language.
“Source Materials”
shall mean, in respect of any Licensed Technology comprising Software, the
then-current Source Code, technical documentation, user documentation and
instructions, work instructions, error lists (including each reported error and
then current status) and all other software and documentation required to build,
compile, assemble, translate, bind and load source codes into executable
releases.
2.
Grant of
Rights.
(a) License. Subject
to the terms of this Agreement, and in consideration of the amounts payable by
Buyer to Seller and Parent under the Asset Purchase Agreement and of the mutual
covenants and agreements contained herein and in the Asset Purchase Agreement,
Seller hereby grants to Buyer, and Buyer hereby accepts a worldwide, perpetual,
irrevocable, exclusive, royalty-free, fully paid-up right and license (including
the right to sublicense), under all of Buyer’s Intellectual Property Rights,
solely in the Buyer Field to (i) use, reproduce, distribute, publicly perform,
publicly display, translate, prepare derivative works, modify, develop, license
and sub-license the Licensed Technology, and (ii) make, have, made, import, and
sell and offer to sell, lease, and otherwise distribute or transfer any products
or services that embody or use any portion(s) of the Licensed Technology; provided, however, the Buyer cannot use the name
“GlobalTrak” or any similar name in the operation of its Business; provided,
further, however, Buyer shall be permitted to use, in the operation of its
Business, a xxxx or a name with the word “Trak” in it.
(b) Exclusivity. Seller
shall not use or practice in any manner whatsoever the Licensed Technology or
the Buyer Improvements or the Seller Improvements in the Buyer Field, nor grant,
or permit any third-party to grant, to any third-party any right or license
whatsoever to the Licensed Technology or the Buyer Improvements or the Seller
Improvements for use or practice in the Buyer Field.
(c) Bankruptcy. The
parties agree that the rights to the Licensed Technology and all other
materials, including Intellectual Property Rights therein, licensed by Seller to
Buyer as set forth herein constitute “intellectual property” as defined in
Section 101(35A) of the Bankruptcy Code and that the Agreement shall be governed
by Section 365(n) of the Bankruptcy Code. If Seller voluntarily or
involuntarily becomes subject to the protection of the Bankruptcy Code, and
Seller or the trustee in bankruptcy rejects this Agreement under Section 365 of
the Bankruptcy Code, Buyer shall have the right to: (i) treat this Agreement as
terminated; or (ii) retain Buyer’s rights under this Agreement, specifically
including, without limitation, the right to exercise its rights granted herein
to the Licensed Technology.
(d) Delivery. On
or prior to the Effective Date, Seller shall deliver to Buyer, media (in a
format acceptable to Buyer) embodying or disclosing all of the Licensed
Technology existing as of the Effective Date (including, in each case and
without limitation, a complete and accurate copy of all of the Source Materials
therefor).
3.
Improvements.
(a) Buyer
Improvements. This Agreement does not convey to Buyer any
ownership rights in any Licensed Technology by implication, estoppel or
otherwise; provided however, that Buyer
will own all rights, title and interest in and to any Improvements conceived,
discovered, developed, created or reduced to practice or fixed in a tangible
medium of expression after the Effective Date by Buyer, or one or more of its
employees, agents, consultants or affiliates (“Buyer
Improvements”).
(b) Seller
Improvements. Any Improvements conceived, discovered,
developed, created or reduced to practice or fixed in a tangible medium of
expression by one or more employees, consultants, sublicensees or affiliates of
Seller (“Seller
Improvements”) will be the sole and exclusive property of
Seller.
(c) License for
Improvements.
(i) Buyer
hereby grants to Seller, for no further consideration, and Seller hereby
accepts, a worldwide, perpetual, irrevocable, non-exclusive, royalty-free, fully
paid-up right and license to use the Buyer Improvements outside of the Buyer
Field. Seller
hereby grants to Buyer, for no further consideration, and Buyer hereby accepts,
a worldwide, perpetual, irrevocable, exclusive, royalty-free, fully paid-up
right and license to use the Seller Improvements in the Buyer Field in
accordance with the license granted in Section 2
above. If, at any time after the Effective Date, Seller
(or one of its affiliates) has, obtains or controls any patent or other
Intellectual Property Right (by ownership or license) that could be asserted to
prevent Buyer from using the Licensed Technology in accordance with this
Agreement, Seller will grant and hereby grants to Buyer a worldwide, perpetual,
irrevocable, non-exclusive, royalty-free, fully paid-up right and license to use
such patent or other Intellectual Property Right consistent with the licenses
granted in Section 2(a) and in this Section 3(c). For all purposes of
this Agreement, the Seller Improvements shall be deemed to be, and shall be
treated as, Licensed Technology.
(ii) (A)
With respect to any Buyer Improvements licensed hereunder, such Buyer
Improvements are provided on an “as is” “where is” basis and Buyer does not make
any warranties, express or implied, as to the Buyer Improvements, including,
without limitation, any implied warranty of title, non-infringement or
merchantability or fitness for a particular purpose, quiet enjoyment, quiet
possession, or any warranties implied from any course of dealing or usage of
trade, and hereby disclaims the same. (B) With respect to any Seller
Improvements licensed hereunder, such Seller Improvements are provided on an “as
is” “where is” basis and Seller does not make any other express or implied
warranty as to the Seller Improvements, including, without limitation, any
implied warranty of title, non-infringement or merchantability or fitness for a
particular purpose, quiet enjoyment, quiet possession, or any warranties implied
from any course of dealing or usage of trade, and hereby disclaims the
same.
4.
Limitation of Liability;
Indemnification.
(a) EXCEPT
FOR AMOUNTS PAYABLE WITH RESPECT TO THIRD PARTY INDEMNIFICATION CLAIMS UNDER
SECTION 4(b) AND SUBJECT TO THE LIMITATIONS SET FORTH IN SECTION 10.3 OF THE
ASSET PURCHASE AGREEMENT, NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR
LOST PROFITS OR FOR ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL, SPECIAL, PUNITIVE
OR EXEMPLARY DAMAGES IN CONNECTION WITH THIS AGREEMENT OR THE TRANSACTIONS
CONTEMPLATED BY THIS AGREEMENT, HOWEVER CAUSED, UNDER ANY THEORY OF
LIABILITY.
(b) (i) Seller
will indemnify and hold harmless Buyer and its members, officers, partners,
agents, successors and assigns from any and all losses, liabilities, damages,
demands, judgments, assessments and costs and expenses arising from or in
connection with (A) any breach of Seller’s representations, warranties or
covenants under this Agreement, (B) any claim that any Licensed Technology or
its use infringes or misappropriates any Intellectual Property Right of a third
party, and (C) Seller’s use, promotion, sale or distribution of any Buyer
Improvements. (ii) Buyer will indemnify and hold harmless
Seller and its directors, officers, partners, agents, successors and assigns
from any and all losses, liabilities, damages, demands, judgments, assessments
and costs and expenses arising from or in connection with Buyer’s use,
promotion, sale or distribution of any Seller Improvements. (iii)
Buyer will indemnify and hold harmless Seller and its directors, officers,
partners, agents, successors and assigns from any and all losses, liabilities,
damages, demands, judgments, assessments and costs and expenses arising from or
in connection with Buyer’s use, promotion, sale or distribution of any of the
Licensed Technology outside of the Buyer Field.
5.
Confidentiality.
5.1 Nondisclosure. Confidential
Information of each party is the exclusive property of such
party. Confidential Information of either party may be used by the
other party only in connection with the performance of this Agreement or the
exercise of the licenses set forth in this Agreement. Each party will
protect the confidentiality of Confidential Information of the other party in
the same manner that it protects the confidentiality of its own proprietary and
confidential information of a similar nature, including, without limitation, by
entering into appropriate confidentiality agreements with employees, independent
contractors and subcontractors. Access to and use of Confidential
Information will be restricted to those of Seller’s and Buyer’s employees or
contractors engaged in a use permitted under this Agreement and who have been
apprised of the confidential nature of such information. Each party
will be responsible for any breaches of this Section 5 by its employees or
contractors.
5.2 Disclosure Upon
Process. In the event either party receives a subpoena, or
other validly-issued administrative or judicial process, requesting that
Confidential Information of the other party be disclosed, it will promptly
notify the other party of such receipt. The party receiving such
request will thereafter be entitled to comply with such subpoena or other
process, only to the extent required by applicable Law; provided that any
receiving party that is required by applicable Law to disclose any Confidential
Information shall provide, so far as practicable and subject to compliance with
Law, the providing party with prompt prior written notice of such request or
requirement, and shall cooperate with the providing party to seek an appropriate
protective order or other remedy or to take steps to resist or narrow the scope
of such request or legal process.
5.3 Breach. Breach
or threatened breach of this Section 5 could cause irreparable harm to the
affected party and such party shall be entitled, without first exhausting other
remedies or procedures, to seek equitable relief, including injunctive relief,
in addition to all of its other rights and remedies at Law or in equity that may
be available to it.
6.
Patent
Prosecution; Defense and Enforcement of
Licensed Technology.
6.1 Prosecution.
(a) Should
Buyer determine that any patent applications covering any of the Licensed
Technology are desired, Buyer may request Seller to
file the same. Should Seller choose not to do so, from and after the Effective
Date, Buyer will then have the right, at its expense and discretion, to prepare,
file (including foreign filings), prosecute and maintain (“Prosecute”) in
Seller’s name, any patents on the Licensed Technology solely in the Buyer
Field. Buyer shall provide Seller with copies of all patent
applications and other related material submissions and correspondence with any
patent authorities with respect to the Prosecution, so as to allow a reasonable
period of time for review by Seller. Buyer will notify Seller, and
will provide Seller with an opportunity to consult with Buyer and its counsel
regarding any material actions to be taken or not taken in connection with
Prosecution of any patents covering any of the Licensed Technology (all such
actions to be taken or not taken, “Prosecution
Actions”). Buyer shall take into consideration the reasonable
requests of Seller regarding Prosecution Actions provided, however, that Buyer
shall not take any Prosecution Action with respect to the Licensed Technology
that would reasonably result in the impairment of Seller’s rights with respect
to the Licensed Technology outside of the Buyer Field. Seller shall
allow Buyer to maintain at its own expense any patents covering any of the
Licensed Technology that Seller otherwise intends to abandon or let
lapse.
(b) From
and after the Effective Date, Seller will have the sole right, but not the
obligation, at its expense and discretion, to Prosecute, at its expense, any
patents on the Licensed Technology. If, at any time after the Effective Date,
Seller obtains any patents on the Licensed Technology, then the claims of such
patents covering the Licensed Technology will be deemed and are hereby licensed
to Buyer within the Buyer Field until the expiration of the term of the
last-to-expire of such patent rights within the Licensed Technology (including
any extension to any such patent rights) under the terms of Section
2.
6.2 Enforcement.
(a) Notice. During
the term of this Agreement, each of Seller and Buyer shall use reasonable
efforts to promptly inform the other in writing of any infringement of the
Licensed Technology by a third party of which it has knowledge and shall provide
the other party with any readily available information relating to such
infringement.
(b) Defense and Enforcement only
in the Buyer Field. Buyer shall have the first right, but not
the obligation, to pursue, institute, and control any defense or enforcement of
the Licensed Technology solely in the Buyer Field, including, without
limitation, restraining or preventing any infringement thereof, responding to
any declaratory judgment action alleging invalidity or non-infringement thereof,
or responding to any counterclaim or response by a Person in connection with an
action for enforcement thereof undertaken by Buyer as permitted
herein. Subject to the terms set forth herein, Buyer may collect and
retain for its own use all damages, profits, settlements and awards of whatever
nature recoverable from such defense and enforcement. Buyer shall
have the sole right, but not the obligation, to pursue, institute and control
any defense or enforcement of the Buyer Improvements within or outside of the
Buyer Field and to collect and retain for its own use, all damages, profits,
settlements and awards of whatever nature recoverable from such defense and
enforcement.
(c) Defense and Enforcement only
outside Buyer Field. Seller shall have the first right, but
shall not the obligation, to pursue, institute and control any defense or
enforcement of the Licensed Technology, outside the Buyer Field, including,
without limitation, restraining or preventing any infringement thereof,
responding to any declaratory judgment action alleging invalidity or
non-infringement thereof, or responding to any counterclaim or response by a
Person in connection with an enforcement action undertaken by
Seller. Seller may collect and retain for its own use all damages,
profits, settlements and awards of whatever nature recoverable from such defense
and enforcement.
(d) Defense and Enforcement in
and outside Buyer Field. Seller shall retain all rights, but
shall have no obligation, to pursue, institute and control any defense or
enforcement of the Licensed Technology with respect to possible infringement
occurring both within and outside the Buyer Field; provided, however, that Buyer
will have participation rights (as set forth below) in the Buyer Field with
respect to such suit or action. If, with respect to any
possible infringement, within sixty (60) days following Buyer’s notification
that Buyer requests Seller to enforce or defend the Licensed Technology against
an alleged infringer thereof, Seller does not exercise its option to enforce or
defend such Licensed Technology then, within the Buyer Field, Buyer shall have
the right to pursue the alleged infringer or take control of any action
initiated by Seller at Buyer’s expense, and to collect for its own use all
damages, profits, settlements, and awards of whatever nature recoverable from
such enforcement. In any such case, Seller will, to the extent
permitted under applicable Law, substitute Buyer as party plaintiff for purposes
of pursuing any alleged infringer. Buyer will confer with Seller in
the manner that it will pursue any enforcement or defense of the Licensed
Technology pursuant to this Section 6.2(d) and will keep Seller reasonably
apprised of all notices, communications and other documentation related to such
enforcement or defense action and Seller shall have, at its cost and expense,
“participation rights” in any such actions concerning the Licensed Technology
outside the Buyer Field as set forth in Section 6.2(f) below. The
costs of prosecuting or defending any action pursuant to this Section 6.2(d)
shall be borne by the party prosecuting or defending. Any recoveries
from such action shall first be used to reimburse the parties for the costs of
undertaking the action. The balance shall be divided between the parties in
accordance with the percentage of infringement attributable within the Buyer
Field and outside the Buyer Field. If the infringement is not
resolved through litigation or the court fails to allocate damages in accordance
with infringing activities within the Buyer Field and outside the Buyer Field,
the parties shall negotiate in good faith regarding the portion of the recovery
allocable to each party based upon infringement within the Buyer Field and
outside the Buyer Field.
(e) Participation Rights.
In all instances where a party has participation rights, the party controlling
such suit or action shall provide the other party (the “Participating Party”)
with copies of all pleadings and other documents proposed to be filed and other
related material submissions and correspondence, in sufficient time to allow for
review and comment by the Participating Party. The controlling party
shall provide the Participating Party and its counsel with an opportunity to
consult with the controlling Party regarding the filing and contents of any
documents proposed to be filed by the controlling party, and other material
submissions and correspondence. The parties acknowledge that
information shared by a party regarding enforcement of the Licensed Technology
or Improvements is highly confidential and any disclosure of such information
shall be subject to Section 5 of this Agreement.
(f) Counterclaims. Notwithstanding
the provisions of Sections 6.2(b), (c) (d) and (e), in the event that any
counterclaim or response by a Person in connection with an enforcement action
undertaken by any prosecuting party is filed, where such counterclaim or
response may affect commercially valuable rights in the Licensed Technology in
which the other party has primary defense and enforcement responsibility
pursuant to this Section 6.2, such party shall have “participation rights”, at
its own expense.
(g) Agreement to be
Joined. At Buyer’s request and cost, Seller will join as a
party to any defense or enforcement action pursued by Buyer pursuant to this
Agreement and will cooperate and assist, in all reasonable
respects.
(h) Settlements. No
settlement, or consent judgment or other voluntary final disposition of a suit
regarding the Licensed Technology having effect within the Buyer Field may be
entered into by Seller without the consent of Buyer and such consent shall not
be unreasonably denied or delayed. No settlement, or consent judgment
or other voluntary final disposition of a suit regarding the Licensed Technology
having effect outside the Buyer Field may be entered into by Buyer without the
consent of Seller and such consent shall not be unreasonably denied or
delayed.
7.
Term. This Agreement shall
commence as of the Effective Date and shall remain in effect in perpetuity with
respect to the Licensed Technology, and with respect to any patents issued on
the Licensed Technology, until the expiration of the term of the last-to-expire
of the patent rights within such Licensed Technology (including any extension to
any such patent rights). Seller understands and agrees that the
Licensed Technology licensed under this Agreement is critical to Buyer’s
operations and that under no circumstances may Seller seek to cancel or
otherwise limit or terminate Buyer’s right to use the Licensed
Technology,
8.
Representations
and Warranties. The parties hereto agree that the
representations and warranties in Section 5.2(p) of the Asset Purchase Agreement
shall apply equally to the Licensed Technology and Seller and Parent’s use
thereof.
9.
Miscellaneous.
9.1 Relationship of
Parties. For the purposes of this Agreement, each party hereto
shall be, and shall be deemed to be, an independent contractor and not an agent,
partner, joint venturer, representative or employee of any other
party. Neither party shall have authority to make any statements,
representations, compromise of rights or commitments of any kind, assume or
create any obligations, or to accept process for or take any other action which
shall be binding on the other party, except as may be explicitly provided for
herein or authorized in writing by the other party.
9.2 Notices. All
notices and other communications required or permitted under this Agreement
shall be deemed to have been duly given and made if in writing and if served
either by personal delivery to the party for whom intended (which shall include
delivery by Federal Express or similar responsible overnight service) when
received or if sent by facsimile transmission, with a copy by personal delivery,
Federal Express or similar responsible overnight service) on the same day, when
transmitted and receipt is confirmed by telephone, bearing the address shown in
this Agreement for, or such other address as may be designated in writing
hereafter by, such party:
If to
Seller:
GlobalOptions Group, Inc.
00
Xxxxxxxxxxx Xxxxx
Xxx Xxxx,
Xxx Xxxx 00000
Attention: Xxxxxx
X. Xxxxxxxx
with a
copy to: Xxxxxx
Xxxxxxxx Frome Xxxxxxxxxx & Xxxxxxx LLP
Park
Avenue Tower
00 Xxxx
00xx Xxxxxx
Xxx Xxxx,
Xxx Xxxx 00000
Attention: Xxxxxx
X. Xxxxxxxx, Esq.
Facsimile
No.: (000) 000-0000
If to
Buyer: Xxxx
Group Holdings, LLC
0000 X
Xxxxxx, XX
Xxxxxxxxxx,
XX 00000
Attention: Xxxxx
Xxx Xxxx
Facsimile
No.: (000) 000-0000
with a
copy to: Xxxxxxx
XxXxxxxxx, LLP
0000 X
Xxxxxx, XX
Xxxxxxxxxx,
XX 00000
Attention: Xxxxxx
X. Xxx, Esq.
Facsimile
No.: (000) 000-0000
9.3 Entire
Agreement. This Agreement and the Asset Purchase Agreement
herein embody the entire agreement and understanding of the parties hereto with
respect to the subject matter hereof, and supersede all prior and
contemporaneous agreements and understandings, oral or written, relative to said
subject matter.
9.4 Binding Effect;
Assignment. This Agreement and the various rights and
obligations arising hereunder shall inure to the benefit of and be binding upon
Seller, on the one hand, and Buyer, on the other, and their respective
successors and permitted assigns. Neither this Agreement nor any of
the rights, interests or obligations hereunder shall be transferred or assigned
(by operation of Law or otherwise) by the Buyer without the prior written
consent of the Seller, except that Buyer may assign its right and obligations
hereunder without the consent of the Seller, to an affiliate of Buyer or to a
purchaser of all or substantially all of the assets or business of the Buyer or
the surviving entity in any merger or consolidation of the Buyer. Any
transfer or assignment of any of the rights, interests or obligations hereunder
in violation of the terms hereof shall be void and of no force or
effect. Subject to the applicability of the obligations imposed on
Parent or Seller, as the case may be, in Section 9.12 hereof, Seller shall have
the sole and absolute right to assign this Agreement.
9.5 Captions. The
Section headings of this Agreement are inserted for convenience only and shall
not constitute a part of this Agreement in construing or interpreting any
provision hereof.
9.6 Waiver;
Consent. This Agreement may not be changed, amended,
terminated, augmented, rescinded or discharged (other than by performance), in
whole or in part, except by a writing executed by each of the parties hereto,
and no waiver of any of the provisions or conditions of this Agreement or any of
the rights of a party hereto shall be effective or binding unless such waiver
shall be in writing and signed by the party claimed to have given or consented
thereto. Except to the extent that a party hereto may have otherwise
agreed to in writing, no waiver by that party of any condition of this Agreement
or breach by any other party of any of its obligations, representations or
warranties hereunder shall be deemed to be a waiver of any other condition or
subsequent or prior breach of the same or any other obligation or representation
or warranty by such other party, nor shall any forbearance by the first party to
seek a remedy for any noncompliance or breach by such other party be deemed to
be a waiver by the first party of its rights and remedies with respect to such
noncompliance or breach.
9.7 No Third Party
Beneficiaries. Nothing herein, expressed or implied, is
intended or shall be construed to confer upon or give to any Person, firm,
corporation or legal entity, other than the parties hereto, any rights, remedies
or other benefits under or by reason of this Agreement.
9.8 Counterparts. This
Agreement may be executed in multiple counterparts, each of which shall be
deemed an original, but all of which taken together shall constitute one and the
same instrument.
9.9 Governing Law; Consent to
Jurisdiction. This Agreement shall be governed by and
construed in accordance with the domestic Laws of the State of Delaware without
giving effect to any choice or conflict of Law provision or rule (whether of the
State of Delaware or any other jurisdiction) that would cause the application of
the Laws of any jurisdiction other than the State of Delaware.
9.10 Exhibits and
Schedules. Each reference in this Agreement to an Exhibit or
Schedule shall mean an Exhibit or Schedule annexed to this Agreement and shall
be incorporated into this Agreement by such reference.
9.11 Severability. With
respect to any provision of this Agreement finally determined by a court of
competent jurisdiction to be unenforceable, such court shall have jurisdiction
to reform such provision so that it is enforceable to the maximum extent
permitted by Law, and the parties shall abide by such court’s
determination. In the event that any provision of this Agreement
cannot be reformed, such provision shall be deemed to be severed from this
Agreement, but every other provision of this Agreement shall remain in full
force and effect.
9.12 Merger;
Consolidation. If Parent, Seller or any of their successors or
assigns (a) consolidates with or merges into any other Person and shall not be
the continuing or surviving corporation or entity of such consolidation or
merger, (b) directly or indirectly sells, transfers or conveys to a Person
(other than Buyer) all or substantially all of its assets in a single
transaction or a series of related transactions, (c) transfers, sells or assigns
the Licensed Technology to a third party, or (d) consummates a
transaction the result of which is that any “person” or “group” (as such terms
are used in Section 13(d) and Section 14(d) of the Securities and Exchange Act
of 1934, as amended) becomes the owner, directly or indirectly, beneficially or
of record, of shares representing more than fifty percent (50%) of the voting
power represented by the Parent’s issued and outstanding capital stock on a
fully diluted basis, then, Parent or Seller shall provide Buyer notice prior to
the consummation of any of the transactions described in clauses (a) - (d) of
this Section 9.12, and proper provision shall be made so that such transferees,
successors and assigns of Parent or Seller, as the case may be, shall assume the
obligations set forth in this Agreement.
9.13 Further
Assurances. Each of the parties to this Agreement shall use
its reasonable best efforts to effectuate the transactions contemplated
hereby. Each party hereto, at the request of another party hereto,
shall execute and deliver such other instruments and do and perform such other
acts and things as may be reasonably necessary or desirable for effecting
completely the consummation of the transactions contemplated by this
Agreement.
[signature page
follows]
IN WITNESS WHEREOF, the
parties have caused this Agreement to be executed by their authorized
representatives as an instrument under seal as of the Effective
Date.
