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Exhibit 10.33
ASSIGNMENT AGREEMENT
THIS AGREEMENT is made and entered into effective as of April __, 1998
(the "Effective Date") by and among Sygnet Wireless, Inc, an Ohio corporation
and its wholly owned subsidiary, Sygnet Communications, Inc., with offices
located at 0000 Xxxxxxx Xxxxx, Xxxxx X, Xxxxxxxx, Xxxx 00000 (hereinafter
collectively referred to as the "Company"); Xxxxxxx X. Xxxxxxxx, Xxxxxxx X.
Xxxxxx and Xxxxx X. Xxxxx, each residents of the State of Ohio and Xxxxxxx X.
Xxxxx, a resident of the State of Pennsylvania (hereinafter collectively
referred to as the "Location Patent Group") and Sycord, Inc., a Nevada
corporation (hereinafter referred to as "Assignee").
RECITALS
A. Each of the members of the Location Patent Group is an employee of
Sygnet Communications, Inc. and was among the original named inventors in U.S.
Patent No. 5,235,633 ("Patent '633") and certain continuations thereof
identified in EXHIBIT A hereto (hereinafter collectively referred to as the
"Xxxxxxxx Patent").
B. Each of the members of the Location Patent Group previously assigned
all of his right, title and interest in the Xxxxxxxx Patent to the Company and
has received from the Company certain consideration in respect of such
assignment and transfer.
C. The Company has made further developments and improvements in
respect of the Xxxxxxxx Patent and has developed or acquired related
intellectual property in the form of related technology and business plans, all
of which it regards as proprietary (collectively with the Xxxxxxxx Patent, the
"Technology").
D. Assignee has been formed for the purpose of acquiring all rights,
title and interest in and to the Technology and other related assets, and
Assignee intends to engage in further development in respect thereto, including
the potential commercial exploitation of the Technology.
E. The parties hereto desire that the Company and the Location Patent
Group assign to Assignee and that Assignee purchase all of the right, title and
interest in and to the Technology and said other related assets, and those
liabilities of the Company to the Location Patent Group, all in accordance with
the terms and conditions of this Agreement.
NOW, THEREFORE, in consideration of the mutual covenants herein
contained, the parties hereby agree as follows:
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1. DEFINED TERMS. For all purposes of this Agreement, the following
terms have the following meanings:
(a) "ASSIGNED ASSETS" means all of each Assignor's right,
title and interest in and to the following, developed or acquired on or prior to
the Effective Date:
(i) the Intellectual Property Rights (defined below);
(ii) all records, files, papers, drawings, plans,
engineering information, computer programs, manuals and data, originals of all
tangible records of Intellectual Property Rights and registrations thereof,
research and development records data, and analyses thereof, other books and
records related to the Technology, whether originals or copies, whether
financial, scientific, technical or otherwise; and
(iii) all filings, authorizations, approvals or
indicia of authority (and any pending applications for any thereof) issued by
any governmental agency, authority or other instrumentality of the United States
or any state or any foreign country or political subdivision thereof relating to
the Technology.
(b) "ASSIGNORS" means the Company and the members of the
Location Patent Group, and "ASSIGNOR" means any one of them.
(c) "XXXXXXXX PATENT" has the meaning provided in Recital A
above.
(d) "INTELLECTUAL PROPERTY RIGHTS" means all intellectual
property rights, whether held by an Assignor as owner or as licensee or
otherwise, associated with, related to, and including the Technology, including
without limitation, Patents (defined below), know-how, unpatented inventions,
trade secrets, secret formulas, business and marketing plans, industrial
property rights, copyrights, trademarks, trade names, logos and service marks
(and all goodwill associated therewith) and all registrations and registration
applications thereof and all technical information, management information
systems, hardware and software, source code, designs, drawings, processes and
quality control data and all similar materials recording or evidencing the
Intellectual Property Rights.
(e) "NET PROFITS" means the cash or current fair market value
of property received by Assignee in consideration for and attributable to the
license, sublicense or sale of the Assigned Assets, less all of Assignee's costs
in acquiring and maintaining the Assigned Assets (including but not limited to
costs and expenses incurred in connection with the prosecution or defense of
claims relating to the Assigned Assets) and expenses incurred by Assignee
related to the commercialization of the Assigned Assets (including but not
limited to development expenses incurred after the Effective Date and
out-of-pocket expenses incurred by Assignee in connection with the negotiation
and documentation of one or more transactions for the license, sublicense or
sale of the Assigned Assets).
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(f) "PATENTS" means Patent '633 and all patents and patent
applications derived from or related to Patent '633, including but not limited
to U.S. Patent No. 5,546,445, and such other U.S. Patent Applications as
identified in EXHIBIT A attached hereto, including any divisions, substitutions,
continuations, continuations-in-part, reissues, reexaminations, renewals or
extensions thereof, and all corresponding foreign patents and patent
applications filed or issued in any country which are based upon or derived from
such patents or patent applications.
(g) "PATENT '633" has the meaning provided in Recital A above.
(h) "TECHNOLOGY" has the meaning provided in Recital C above.
2. ASSIGNMENT. The members of the Location Patent Group have assigned
all of their interest in the Xxxxxxxx Patent to the Company. Subject to the
terms and conditions set forth in this Agreement, and to the extent not
previously assigned and transferred to the Company by the members of the
Location Patent Group, each of Assignors hereby grants, sells, transfers,
delivers and assigns to Assignee the Assigned Assets. Each of the Assignors
specifically excludes from this assignment all patents issued and applied for in
such Assignor's name that do not involve the Assigned Assets, and expressly
reserves the right to improve, invent, develop, patent, submit for any
application for patent, or other forms of protection, at any time for all past,
present, and future inventions and devices, and to enter into any licenses
and/or assignments or other transactions that do not arise from, relate to or
involve the Assigned Assets.
3. CONSIDERATION. In consideration of the transfer of the Assigned
Assets, Assignee shall:
(a) Contemporaneously with the execution of this Agreement,
pay in cash to the Company the amount of $300,000; and
(b) In the event Assignee is able to commercialize the
Assigned Assets by way of license or commercial sale to an unaffiliated third
party, pay to the Location Patent Group an amount equal to twenty percent (20%)
of the first $1,000,000 of Net Profits realized by Assignee which are
attributable to such Assigned Assets prior to the expiration of Patent '633 and
five percent (5%) of the next $9,000,000 of Net Profits realized by Assignee
which are attributable to such Assigned Assets prior to the expiration of Patent
'633. Each member of the Location Patent Group agrees that the payments required
under this paragraph 3(b) shall be divided equally among them (unless they have
agreed otherwise in writing and provided notice of such agreement in writing to
the Assignee) and may be paid in cash or property with a market value equal to
the amount due to the Location Patent Group at the reasonable discretion of
Assignee.
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4. LOCATION PATENT GROUP RELATIONSHIP TO SYGNET. Each member of the
Location Patent Group hereby agrees that as of the Effective Date the Company
shall have no further obligation to him relating to the Xxxxxxxx Patent or
arising from the Patent Group Compensation Agreement dated as of April 30, 1997.
The parties hereto acknowledge and agree that as of the Effective Date, the
Patent Group Compensation Agreement shall terminate and be of no further force
or effect.
5. REPRESENTATIONS AND LIMITATION OF WARRANTIES
(a) To the best of their knowledge, each Assignor represents
to Assignee that it/he is the lawful owner of all right, title and interest in
and to the Assigned Assets being transferred by such Assignor under this
Agreement, free and clear of all liens, security interests, charges,
encumbrances, equities and other adverse claims. Each of the Assignors
represents to Assignee that it/he is not a party to, nor are any of the Assigned
Assets bound by, any agreement which could have a material adverse effect on the
Assigned Assets or the rights assigned to Assignee under this Agreement. Each of
the Assignors represents to Assignee that to the best of its/his knowledge, no
proprietary technology of any person or entity was used in the design or
development of (or otherwise with respect to) any of the Assigned Assets, and
there is no pending or, to the best knowledge of each of the Assignors,
threatened claim or litigation contesting the validity, ownership or right to
use, sell, license or dispose of any of the Assigned Assets
(b) EXCEPT AS OTHERWISE PROVIDED IN THIS AGREEMENT, EACH OF
THE ASSIGNORS EXPRESSLY DISCLAIMS ANY WARRANTIES OR CONDITIONS, EXPRESS,
IMPLIED, STATUTORY OR OTHERWISE, WITH RESPECT TO THE ASSIGNED ASSETS AND THE
FURTHER DEVELOPMENT OF THE ASSIGNED ASSETS. EXCEPT AS OTHERWISE EXPRESSLY SET
FORTH IN THIS AGREEMENT, THE ASSIGNORS MAKE NO REPRESENTATIONS AND EXTEND NO
WARRANTIES OR CONDITIONS OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING BUT NOT
LIMITED TO, WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
VALIDITY OF THE ASSIGNED ASSETS, PATENTED OR UNPATENTED, NON-INFRINGEMENT OF THE
INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES, OR THAT ANY PATENT WILL ISSUE
BASED ON ANY PATENT APPLICATION WITHIN THE SCOPE OF THIS AGREEMENT.
6. INDEMNIFICATION.
(a) From and after the Effective Date, Assignee shall
indemnify and hold harmless the Company and each member of the Patent Location
Group from and against any and all losses, liabilities, damages, claims,
demands, costs (which costs shall not include the fees and expenses of legal
counsel, if any, retained by such person), obligations, deficiencies and
expenses arising from the Assigned Assets occurring after the Effective Date.
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(b) A party (the "Indemnitee") that intends to claim
indemnification under this paragraph 6 shall promptly notify Assignee in writing
of any loss, claim, damage, liability or action in respect of which the
Indemnitee intends to claim such indemnification, and Assignee shall have the
right to assume control of the defense thereof. The indemnity agreement in this
paragraph 6 shall not apply to amounts paid in settlement of any loss, claim,
damage, liability or action if such settlement is effected without the consent
of Assignee, which consent shall not be unreasonably withheld. The failure to
deliver written notice to Assignee within a reasonable time after the
commencement of any such action, if prejudicial to its ability to defend such
action, shall relieve Assignee of any liability to the Indemnitee under this
paragraph 6 with respect to said action only. At Assignee's request, the
Indemnitee shall cooperate fully with Assignor and its legal representatives in
the investigation and defense of any action, claim or liability covered by this
indemnification and provide full information and cooperation with respect
thereto. Failure of an Indemnitee to provide such cooperation shall relieve
Assignee of its indemnification obligation for such Indemnitee for said action,
claim, or liability only.
7. REPORTS AND PAYMENTS. After the first commercial sale or license of
the Assigned Assets by Assignee, and for so long as payments to the Location
Patent Group are required under this Agreement, Assignee shall make semi-annual
written reports to the Location Patent Group, stating in each such report the
Net Profits received by Assigned in respect of the Assigned Assets during the
period for which the report relates, and the resulting aggregate payment, if
any, due to the Location Patent Group for such period. The members of the
Location Patent Group shall treat all such reports as confidential information
of Assignee. Simultaneously with the making of such reports, Assignee shall pay
to the members of the Location Patent Group the payment, if any, stated in the
report as being due for such period.
8. CONFIDENTIALITY. Each of the Assignors agree that they will not at
any time, directly or indirectly, for their own benefit or for the benefit of
any third party, disclose or divulge to any third party, or use for any purpose,
any of the Assigned Assets without the prior written consent of the Assignee.
Further, no party to this Agreement shall make or authorize the making of any
public announcements in respect of this Agreement or otherwise communicate with
any news media without prior notification to the other Parties, and all Parties
shall cooperate as to the timing and contents of any such announcement.
9. AMENDMENT. Except as otherwise provided herein, this Agreement may
not be amended, supplemented, or otherwise modified except by an instrument in
writing signed by all parties to this Agreement.
10. WAIVER. No waiver of any term, provision, or condition of this
Agreement, whether by conduct or otherwise, in any one or more instances, shall
be deemed to be construed as a further or continuing waiver of such term,
provision or condition of this Agreement.
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11. NOTICES. All notices and other communications given or made
pursuant to this Agreement shall be in writing and shall be sent by certified
mail (postage prepaid, return receipt requested), or facsimile transmission with
confirmation sent by certified mail as above, or by courier, such as Federal
Express, DHL, or the like, with confirmation of receipt by signature requested,
directed to the other parties at the mailing addresses first set forth below, or
to such other mailing address as the respective party may from time to time
designate by prior notice in compliance herewith. Any such notice or
communication sent in accordance with the requirements of this paragraph 11
shall be deemed to be fully given upon dispatch, subject to proof of receipt.
12. SUCCESSORS AND ASSIGNS. This Agreement and all or any part of the
Company's and Assignee's rights and obligations hereunder may be assigned at any
time by the Company and Assignee, respectively. This Agreement and all or any
part of the Location Patent Group's rights and obligations hereunder may not be
assigned without prior written consent of Assignee, which consent shall not be
unreasonably withheld. This Agreement shall inure to the benefit of and be
binding upon each party's successors and assigns.
13. HEADINGS. The headings contained in this Agreement are for
reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement.
14. ENTIRE AGREEMENT. This Agreement sets forth the entire agreement
and understanding among the parties as to the subject matter hereof, and
supersedes, integrates and merges all prior discussions, correspondence,
negotiations, understandings or agreements. The parties each represent and
warrant that there are no conditions, definitions, warranties, promises,
agreements, understandings or representations, or remaining obligations, written
or oral, with respect to the subject matter of this Agreement, other than as
expressly provided in this Agreement.
15. GOVERNING LAW. This Agreement shall be construed in accordance with
the laws of the State of Ohio without reference to choice of law principles, as
to all matters, including, but not limited to, matters of validity,
construction, effect or performance.
16. SEVERABILITY. If any term or provision of this Agreement, or the
application thereof to any person or circumstance, shall to any extent be held
invalid or unenforceable under any controlling law, that provision shall be
considered severable and its invalidity shall not affect the remainder of this
Agreement, which shall continue in full force and effect.
17. FURTHER ASSURANCES. Each Assignor agrees to execute all necessary
papers, and to cooperate fully with Assignee to obtain, maintain or enforce for
itself or its licensee or designee, patents, copyrights or other legal
protection for the Assigned Assets.
[Signature page follows]
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IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed in triplicate originals effective as of the day and year first written
above.
Assignee Company
SYCORD, INC. SYGNET WIRELESS, INC.
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By: By:
Address: Address: 0000-X Xxxxxxx Xxxxx
---------------------------- Xxxxxxxx, XX 00000
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Patent Location Group:
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Xxxxxxx X. Xxxxxxxx
Address: 000 Xxxxxxxx Xxxxx
Xxxxxxxx, XX 00000
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Xxxxxxx X. Xxxxxx
Address: 0000 Xxxxxx Xxxx
Xxxxxxxx, XX 00000
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Xxxxxxx X. Xxxxx
Address: 00 Xxxxxx Xxxx
Xxxx Xxxxxxxxx, XX 00000
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Xxxxx X. Xxxxx
Address: 0000 Xxxxx Xxxx
Xxxxxxxxxx, XX 00000
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