MANUFACTURING LICENSE AGREEMENT
THIS AGREEMENT made and entered into this 3rd day of September, 2003, by
and between SKYCROSS, INC., having a place of business at 000-X Xxxxx Xxxxx,
Xxxxxxxxx, Xxxxxxx 00000 ("SKYCROSS") and DIRECT2DATA TECHNOLOGIES, A DIVISION
OF PARKERVISION, INC,, having a place of business at 0000 Xxxxxxxxxx Xxx,
Xxxxxxxxxxxx, Xxxxxxx, 00000 ("LICENSEE").
RECITALS
WHEREAS, SKYCROSS has developed and is in possession of certain patents,
technical and manufacturing information, software and other proprietary
information related to antenna technology; and
WHEREAS, LICENSEE desires to secure a licensee under the patents, technical
and manufacturing information, software and other proprietary information
relating to antenna technology on the terms and conditions hereinafter
contained.
NOW THEREFORE, for and in consideration of the premises and mutual
covenants herein contained the parties agree as follows:
ARTICLE I
DEFINITIONS
A. "Field of Use" shall mean wireless local area devices, wireless local
area network access points and wireless local area network personal computer
cards.
B. "Licensed Product" shall mean the antenna manufactured using the
Licensed Technical Information.
C. "Licensed Technical Information" shall mean SKYCROSS trade secret and
proprietary technical information, including patents / patent applications,
data, drawings, operating manuals, reports, parts lists, technical data, and
specifications in electronic, written, printed or non-documented form as used by
SKYCROSS to manufacture the Licensed Product. A list of patented / patent
pending antenna configurations supported and/or covered by Licensed Technical
Information is set forth in Appendix A.
D. "Licensed Patents" shall mean the patents and registered designs and
applications for patents and registered designs of SKYCROSS as set forth in
Appendix B.
E. "Licensed Copyrights" shall mean the copyrights of SKYCROSS protecting
any portion of the Licensed Technical Information or the Licensed Software.
F. "Proprietary Information" is defined as any information, either written
or oral, originated by or peculiarly within the knowledge of the disclosing
party, or its suppliers, and not generally available to others. Proprietary
Information shall include both business and technical information, including but
not limited to, business plans, product plans, proposal plans, technical
specifications, test results, presentations, etc. Such information should be
identified prior to disclosure with an appropriate marking or identification
such as "PROPRIETARY OR CONFIDENTIAL." If such information is disclosed
verbally, then in order to receive the protection pursuant to this Agreement,
such Proprietary Information must be reduced to tangible form otherwise in
compliance with this Agreement and furnished to the receiving party within
fifteen (15) business days of the original verbal disclosure. Whether or not so
marked, all Licensed Technical Information and Licensed Software shall be
considered Proprietary Information.
ARTICLE II
LICENSING GRANTS
A. Upon the terms, payments and conditions set forth herein SKYCROSS hereby
grants to LICENSEE a non-exclusive, worldwide, paid-up and royalty free license
to practice the inventions covered by the claims of, and/or described in, the
Licensed Patents, and divisionals and continuations thereof, to make, have made,
use, sell, offer to sell, import and maintain the Licensed Product within the
Field of Use.
B. Upon the terms, payments and conditions set forth herein, SKYCROSS
hereby grants to LICENSEE a non-exclusive, worldwide, paid-up and royalty free
license in the Licensed Technical Information, the Licensed Software and the
Licensed Copyrights to make, have made, use, sell, offer to sell, import and
maintain the Licensed Product within the Field of Use.
C. Notwithstanding the licenses granted above, SKYCROSS retains the right
to make, have made, use, sell, improve and maintain the Licensed Product using
the Licensed Technical Information and the Licensed Copyrights and to practice
inventions covered by product or process claims of the Licensed Patents.
D. SKYCROSS retains ownership of the Licensed Patents, Licensed Technical
Information, and Licensed Copyrights, and all rights not expressly granted to
LICENSEE under this Agreement are hereby expressly reserved to SKYCROSS.
ARTICLE III
LICENSE FEE
A. The license fee to be paid by Licensee to SkyCross shall be the sum of
$950,000 (nine hundred fifty thousand US dollars). The license fee will be paid
with shares of the common stock, $.01 par value, of the Licensee, the number of
shares to be set forth in Appendix C hereto and to be issued to SkyCross as soon
as practicable and registered all in accordance with the provisions of such
Appendix C. Not later than 10 (ten) business days after the receipt of
2
the initial amount of shares of common stock, which amount is subject to
adjustment as set forth in Appendix C hereto, SkyCross shall furnish all
Licensed Technical Information.
ARTICLE IV
MARKING
LICENSEE agrees to affix to each device incorporating the Licensed Product
a legible notice reading "Patent Pending" and/or "Patent Issued". SKYCROSS will
advise LICENSEE of the issuance of a patent having claims covering the Licensed
Product. LICENSEE will then modify the accompanying documentation to include the
issued patent number.
ARTICLE V
DURATION AND TERMINATION
A. The term of this Agreement shall be perpetual unless otherwise
terminated as hereinafter set forth:
(1) If LICENSEE shall at any time default in rendering any of the
statements required hereunder, or in the payment of any monies payable
hereunder, and such default is not cured within fifteen (15) days after
receiving written notice thereof from SKYCROSS, then SKYCROSS shall have the
right to terminate this Agreement by giving written notice of termination to
LICENSEE; this Agreement thereby being terminated fifteen (15) days after the
notice of termination is mailed to LICENSEE. LICENSEE shall have the right to
cure any such default up to, by not after, the giving of such notice of
termination.
(2) SKYCROSS shall have the right to terminate this Agreement by
giving written notice of termination to LICENSEE in the event of any one of the
following, such termination being effective upon receipt of such notice, or five
(5) days after such notice is mailed, whichever is earlier:
(a) Liquidation of LICENSEE;
(b) Insolvency or bankruptcy of LICENSEE, whether voluntary or
involuntary;
(c) Inability of LICENSEE to meet its obligations hereunder;
(d) Failure of LICENSEE to satisfy any judgment against it;
(e) Appointment of a trustee or receiver for LICENSEE;
(f) Any assignment by LICENSEE for the benefit of creditors.
3
(3) The waiver of any default under this Agreement by SKYCROSS shall
not constitute a waiver of the right to terminate this Agreement for any
subsequent or like default. Any exercise of the right of termination shall not
have the effect of waiving any damages to which SKYCROSS might otherwise be
entitled.
B. Upon termination of this Agreement, all rights granted and obligations
undertaken hereunder shall terminate forthwith, except that each party's
obligations to protect proprietary information as set forth in Article VI and
LICENSEE'S obligation to pay license fee under Article III shall continue.
Further, LICENSEE shall be permitted to sell any Licensed Products on hand at
the time of termination.
C. In the event that SKYCROSS terminates this Agreement for a material
breach by LICENSEE, then upon termination, LICENSEE shall immediately:
(1) Cease use of all Licensed Technical Information and Licensed
Software licensed under this Agreement, return all documents containing such
information, and continue to treat all such information as proprietary in
accordance with Article VI below; and
(2) Cease practicing any inventions covered by Licensed Patents and
the use of information protected by Licensed Copyrights.
D. Provided that Licensee has paid all monies due under this agreement,
Licensee may terminate this agreement with 6 months written notice.
E. If a party materially breaches this agreement, the other party may
terminate this agreement 30 days after providing written notice. The breaching
party is permitted to cure during this 30 day period.
F. In the event Skycross seeks, or is involuntarily placed under the
protection of the bankruptcy law, Title XI, US Code, and the trustee in
bankruptcy rejects this Agreement, Licensee hereby elects, pursuant to Section
365(n), to retain all rights granted to it under this Agreement to the extent
permitted by law.
ARTICLE VI
PROPRIETARY INFORMATION
A. LICENSEE acknowledges that SKYCROSS has spent and will continue to spend
considerable time and money developing the Licensed Technical Information and
the Licensed Patents, and has valuable property rights therein.
B. LICENSEE agrees to disclose the Proprietary Information only to its
employees having a need to know and to third party consultants who agree to
receive the Proprietary Information on a proprietary basis. Further, LICENSEE
agrees to take reasonable measures to maintain the proprietary nature of the
Proprietary Information in the same manner and to the
4
same extent as it protects its own like Proprietary Information. All copies of
the Proprietary Information shall bear the same proprietary markings as the
original.
C. Information provided to LICENSEE shall not be considered Proprietary
Information if it:
(1) Is proved by LICENSEE to have been known to it at the time of
receipt; or
(2) Is published or becomes generally known in the trade through no
wrongful act of LICENSEE; or
(3) Is received from a third party without similar restrictions and
without breach of this license; or
(4) Is approved for release into the public domain by written
authorization of SKYCROSS; or
(5) Is not clearly marked or designated by SKYCROSS as confidential or
proprietary; or
(6) Is independently developed by LICENSEE without resort to the
Proprietary Information.
D. Information shall not be considered in the public domain merely because
certain portions thereof are embraced by general discussions in the public
domain.
E. All Proprietary Information shall remain the property of SKYCROSS. In
the event of the termination of this agreement, all proprietary information
shall be returned, together with all copies thereof, upon written request of
SKYCROSS.
ARTICLE VII
DISCLAIMERS AND WARRANTIES
A. SKYCROSS warrants that it is sole owner of, and has a right to grant a
license for, the Licensed Technical Information, Licensed Patents and Licensed
Copyrights to LICENSEE and has the right and power to enter into this Agreement.
B. SKYCROSS warrants that the Licensed Technical Information and Licensed
Copyrights include all the information used by SKYCROSS to manufacture and test
the Licensed Product. SKYCROSS does not make any representations or warranties
as to the validity or scope of the Licensed Patent.
C. SKYCROSS makes no express warranty and no warranty shall be implied with
respect to any Licensed Technical Information and Licensed Copyrights, other
than the exercise of reasonable care in its preparation and transfer. It is
agreed that SKYCROSS shall not be liable,
5
whether in contract or tort (including negligence and strict liability) or
otherwise in any way responsible for:
(1) The adequacy of the Licensed Technical Information and Licensed
Copyrights furnished or disclosed by SKYCROSS;
(2) Performance of the Licensed Product manufactured by or for
LICENSEE on the basis of Licensed Technical Information and Licensed Copyrights;
(3) Claims that the Licensed Products manufactured by or for LICENSEE
constitute infringement of any intellectual property rights of another; and
(4) Any damages incurred by LICENSEE or damages asserted against
LICENSEE arising out of the manufacture, use or sale of the Licensed Product.
(5) The quality or performance of Licensed Products manufactured by or
on behalf of LICENSEE.
D. THE LICENSED TECHNICAL INFORMATION IS PROVIDED TO LICENSEE "AS IS"
WITHOUT WARRANTY OR CONDITION, EXPRESS, IMPLIED, OR STATUTORY, INCLUDING ANY
WARRANTY OF DESIGN, MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY
WARRANTY ARISING FROM A COURSE OF DEALING OR USAGE IN THE TRADE. FURTHER, NO
WARRANTY OF NON-INFRINGEMENT IS PROVIDED. SKYCROSS DOES NOT WARRANT THAT THE
LICENSED TECHNICAL INFORMATION OR THE PRODUCT WILL MEET LICENSEE'S OR ANY THIRD
PARTY'S REQUIREMENTS OR EXPECTATIONS.
E. SKYCROSS shall have no obligation to continue prosecution of any
Licensed Patent application.
ARTICLE VIII
NOTICES
A. All notices, requests or demands given to or made upon either party
shall be in writing and shall be mailed properly addressed, postage prepaid,
registered or certified, or delivered to either party by hand, or by other
receipted delivery, with all expenses of delivery being prepaid, at its
respective address set forth in the Agreement. If mailed, such notice shall be
deemed received by the close of business on the date shown on the certified or
registered mail receipt, or whenever it is actually received, whichever is
sooner.
B. The primary, but non-exclusive points of contact for receiving notices
and other documentation related to this Agreement are:
6
To LICENSEE at 0000 Xxxxxxxxxx Xxx
Xxxxxxxxxxxx, XX 00000
Attn: Xxxx Xxxxxx
To SKYCROSS at 000-X Xxxxx Xxxxx
Xxxxxxxxx, Xxxxxxx 00000
Attn: Xxxx Xxxxxx, Controller
Either party may change its point of contact by written notice to the other
party.
ARTICLE IX
DUTY TO EXPLOIT
SKYCROSS and LICENSEE agree that it is in the best interests of both
parties to commercialize the Licensed Product to the greatest extent possible.
Licensee shall use its commercially reasonable efforts to solicit orders for
sales of Licensee products containing the Licensed Products.
ARTICLE X
PUBLICITY
The parties shall agree to the issuance of a mutually acceptable press
release at a mutually agreed upon future date. Any article or publication beyond
the initial press release shall be reviewed and approved by the non-issuing
party.
ARTICLE XI
TRADEMARKS
Except as set forth herein, neither party is licensed to use the common law
trademarks or registered trademarks of the other party hereto.
ARTICLE XII
INDEMNITY AND LIMITATION OF LIABILITY
A. SKYCROSS will defend, at its expense, any action brought in the United
States against LICENSEE to the extent that such action is based on a claim that
permitted use of the Licensed Technical Information within the scope of this
Agreement results in the infringement of any United States patent or copyright
or a misappropriation of any trade secret. SKYCROSS will indemnify Licensee for
all costs, damages and fees incurred by LICENSEE so long as SKYCROSS is given
prompt notification of the claim. SKYCROSS shall have the sole authority to
defend, compromise or settle the claim. LICENSEE will provide all available
information, assistance, and authority to enable SKYCROSS to do so. LICENSEE
shall have no authority to settle any claim on behalf of SKYCROSS.
7
B. Should use of the Licensed Technical Information become or in SKYCROSS'
opinion be likely to become, the subject of a claim of infringement of a patent
or copyright or misappropriation of a trade secret, SKYCROSS may:
(1) Procure for LICENSEE, at no cost to LICENSEE, the right to
continue use of the Licensed Technical Information; or
(2) Replace or modify the Licensed Technical Information at no cost to
LICENSEE to make such Licensed Technical Information non-infringing, provided
that the same function is performed by the replacement or modification; or
(3) If the right to continue use cannot be procured and the Licensed
Technical Information cannot be replaced or modified, terminate this License to
use such and provide LICENSEE with consideration, the details of such
consideration to be mutually agreed upon between SKYCROSS and LICENSEE.
ARTICLE XIII
IMPROVEMENTS TO LICENSED TECHNICAL INFORMATION
A. During the term of this Agreement, each party agrees to communicate to
the other any and all technical improvements (whether or not patented or
patentable) that relate to the design and/or manufacturing methods or processes
pertaining to the Licensed Product. Each party hereby grants to the other a
non-exclusive, paid-up, royalty-free (notwithstanding the provisions of Article
III) license to use and sell Licensed Product incorporating such technical
improvements and to practice and process, method, or procedure embodied within
such technical improvements.
B. Each party hereby grants to the other a non-exclusive, paid-up,
royalty-free license under any United States and foreign patents owned by the
granting party for the lives thereof, that arise out of the technical
improvements as described above, to make, have made, use, sell, offer to sell
and import the Licensed Product.
ARTICLE XIV
FORCE MAJEURE
No failure or omission by the parties hereto, in the performance of any
obligation of this Agreement, with the exception of the payment of the license
fee, shall be deemed a breach of this Agreement, nor create any liability if the
same shall arise from any cause or causes beyond the reasonable control of the
parties, including but not limited to the following: Acts of God, fire, storm,
flood, earthquake, acts of the public enemy, war, rebellion, insurrection, riot,
invasion, strikes and lock-outs. In any event, the party claiming excuse
hereunder shall provide reasonable notice to the other party of any such event,
with such notice to be given within thirty (30) days
8
from the time the claiming party becomes aware of such an event. Upon occurrence
of such an event, the time for such party's performance shall be extended by a
period of time reasonably necessary to overcome the effects of the delay.
ARTICLE XV
TECHNICAL ASSISTANCE
A. Effective upon execution of this Agreement and continuing for two (2)
years thereafter, SKYCROSS will provide LICENSEE with forty (40) person-hours of
technical assistance related to the use of the Licensed Technical Information
and the Licensed Patents for making, having made, using, selling and maintaining
the Licensed Product. These consulting services will be provided on an
as-available basis and with prior reasonable notice to SKYCROSS, at no charge to
LICENSEE. The form and location of such support shall be as determined by the
parties. After expiration of these consulting services, SKYCROSS will provide
additional consulting services on a time and material, as available basis, at
the rate of $105.00 per person-hour.
B. SKYCROSS agrees to provide reasonable assistance to LICENSEE in
marketing and selling Licensed Products. Such assistance may include attendance
at trade shows, demonstrating the Licensed Product and responding to telephone
and Internet inquiries regarding the Licensed Product.
C. LICENSEE agrees to assume all financial and service obligations for
Licensed Products manufactured and/or sold by it.
ARTICLE XVI
DISPUTE RESOLUTION
A. If a dispute arises out of or relates to this Agreement, or the breach
thereof, the parties agree to submit the dispute to a sole mediator selected by
the parties or, if the parties are unable to agree to the sole mediator, the
parties agree to submit the dispute to mediation under the rules of the American
Arbitration Association (AAA). If not thus resolved and if both parties agree,
the dispute will be referred to a sole arbitrator selected by the parties within
ninety (90) days after the conclusion of mediation, or in the absence of such
selection, to AAA arbitration which shall be governed by the United States
Arbitration Act.
B. Any resolution reached through mediation or award arising out of
arbitration (i) shall be limited to a holding for or against a party, and
affording such monetary remedy as is deemed equitable, just and within the scope
of this Agreement; (ii) may not include special consequential or punitive
damages; (iii) may in appropriate circumstances include injunctive relief; and
(iv) may be entered in court in accordance with the United States Arbitration
Act.
C. Arbitration shall not be deemed a waiver of any right of termination
under this Agreement and the arbitrator is not empowered to act or make any
award other than based solely
9
on the rights and obligations of the parties prior to and including such
termination.
D. The arbitrator may not limit, expand, or otherwise modify the terms of
this Agreement.
E. Each party shall bear its own expenses incurred in any mediation,
arbitration, or litigation, but any expenses related to the compensation and the
costs of any mediator or arbitrator shall be borne equally by the parties.
F. A request by a party to a court for interim measures necessary to
preserve a party's rights and remedies for resolution pursuant to this Section
shall not be deemed a waiver of the obligation to mediate; or agreement to
arbitrate.
G. The parties, their representatives, other participants, and the mediator
or arbitrator shall hold the existence, content and result of mediation or
arbitration in confidence.
ARTICLE XVII
DAMAGES
Neither party shall be liable, whether in contract or tort (including
negligence and strict liability) or otherwise liable for any special, indirect,
incidental, or consequential damages whatsoever.
ARTICLE XVIII
COMPLIANCE WITH LAWS
A. Any payment that requires governmental approval or permission under
foreign exchange control laws or other laws, if any, shall be made in accordance
with such laws.
B. LICENSEE agrees to comply with all provisions of the Export
Administration Regulations of the United States Department of Commerce as they
currently exist or as they may be amended from time to time.
ARTICLE XIX
MISCELLANEOUS PROVISIONS
A. If any provisions, or portions thereof, of this Agreement are invalid
under any applicable statute or rule of law, that provision notwithstanding,
this Agreement shall remain in full force and effect. Such provisions shall be
deemed omitted.
B. This Agreement constitutes and expresses the entire agreement and
understanding between the parties and supercedes all previous communications,
representations or agreements, whether written or oral, with respect to the
subject matter hereof.
10
C. This Agreement may not be modified, amended, rescinded, cancelled or
waived in whole or in part, except by a written instrument signed by both
parties.
D. This Agreement is made under and shall be governed by and construed in
accordance with the laws of the State of Florida.
E. The parties shall at all times be independent contractors and shall so
represent themselves to all third parties. Neither party shall have the right to
bind the other, nor represent the relationship as agent, legal representative,
or joint venture.
F. All covenants, stipulations and promises in this Agreement shall be
binding upon and inure to the benefit of the parties hereto and their respective
successors, assigns and legal representatives. Except with the written consent
of the other party, neither party shall have the right to assign or otherwise
transfer its rights or obligations under this Agreement.
IN WITNESS WHEREOF, the respective duly authorized representatives of the
parties have caused this Agreement to be executed as of the date first above
written.
SKYCROSS, INC. NAME OF LICENSEE
By: _____________________________ By: ________________________________
Name: Xxxxxxxxxxx Xxxxxx Name: Xxxxx Xxxxxxxx
Title: Chief Executive Officer Title: Co-Founder and CTO
Date: ___________________________ Date: ______________________________
11
APPENDIX A
LIST OF PATENTED / PATENT PENDING ANTENNA CONFIGURATIONS
TO BE SUPPORTED WITH LICENSED TECHNICAL INFORMATION
1. All manifestations of antenna configurations described in Patent
Application #10/645,862, "Apparatus and Method for Forming a Monolthic
Surface Mountable Antenna".
2. All manifestations of antenna configurations described in Patent
Application #10/313,971, "Multiple Antenna Diversity for WLAN
Applications".
3. All manifestations of antenna configurations described in Patent
Application #10/453,841, titled "Wideband Printed Monopole Antenna".
4. All manifestations of antenna configurations described in Patent
Application #60/447,244, titled "Monolithic Low Profile Omni-directional
Surface Mount Antenna".
00
XXXXXXXX X
LICENSED PATENTS
Non-provisional Patent Application entitled Apparatus and Method for Forming a
Monolthic Surface Mountable Antenna, filed on Aug. 21, 2003 and assigned
application number 10/645,862.
Non-Provisional Patent Application entitled PCB Fabrication Realizaton of the
Printed Monopole Antenna Incorporating Diversity, filed on June 4, 2003 and
assigned application number 10/453,841.
Non-Provisional Patent Application entitled Multiple Antenna Diversity for WLAN
Applications, filed on Dec. 6, 2002 and assigned application number 10/313,971.
Provisional Patent Application entitled Monolithic Low Profile Omni-directional
Surface Mount Antenna, filed on Feb. 13, 2003 and assigned application number
60/447,244.
13
APPENDIX C
----------
REGISTRATION RIGHTS AND LOCK-UP AGREEMENT
-----------------------------------------
This Registration Rights Agreement and Lock-up ("Agreement") is executed by
ParkerVision, Inc., a Florida corporation, with an office at 0000 Xxxxxxxxxx
Xxx, Xxxxxxxxxxxx, Xxxxxxx 00000 (hereinafter referred to as the "ISSUER") and
SkyCross, Inc., a Florida corporation, with an office at the address on the
signature page hereof (hereinafter referred to as the ("PURCHASER") in
connection with PURCHASER'S acquisition of 138,158 shares ("Shares"), subject to
adjustment as herein provided, of common stock $.01 par value ("Common Stock"),
which Shares are being issued in reliance upon the exemption contained in
Section 4(2) of the Securities Act of 1933, as amended ("Securities Act").
Each of the parties hereto represents and warrants to, and agrees with, the
other as follows:
1. REPRESENTATIONS AND OTHER AGREEMENTS.
(a) PURCHASER REPRESENTATIONS. PURCHASER represents and warrants to ISSUER
as follows:
(i) PURCHASER is a corporation duly organized, validly existing and in
good standing under the laws of the State of Florida. The PURCHASER
has all necessary corporate power and corporate authority to make,
execute, deliver and perform this agreement, and this agreement and
the transactions contemplated hereby have been duly authorized and
approved by all required corporate action of the PURCHASER. The
PURCHASER is not subject to any charter, by-laws, mortgage, lien,
lease, agreement, instrument, order, law, rule, regulation, judgment
or decree, or any other restriction of any kind or character, which
would prevent consummation of the transactions contemplated by this
agreement.
(ii) PURCHASER is purchasing the Shares for its own account for
investment purposes and not with a view toward distribution, except in
compliance with federal and state securities laws.
(iii) PURCHASER understands that the Shares have not been registered
under the Securities Act and that such securities are "restricted
securities" as defined in Rule 144 promulgated under the Securities
Act. PURCHASER further understands that the Shares may not be offered,
resold, pledged or otherwise transferred by such PURCHASER except: A)
(1) pursuant to an effective registration statement under the
Securities Act, or (2) pursuant to an available exemption from the
registration requirements of the Securities Act; and B) in accordance
with all applicable securities laws of the states of the United States
and other jurisdictions;
(iv) PURCHASER understands that the purchase of the Shares involves a
high degree of risk and further acknowledges that it can bear the
economic risk of the purchase of the securities, including the total
loss of its investment;
(v) PURCHASER understands that the Shares are being sold to it in
reliance on specific exemptions from the registration requirements of
federal and state securities laws and that the ISSUER is relying upon
the truth and accuracy of the representations, warranties, agreements,
acknowledgments and understandings of PURCHASER set forth herein;
(vi) PURCHASER is sufficiently experienced in financial and business
matters to be capable of evaluating the merits and risks of its
investment, and to make an informed decision relating thereto; and
(vii) In evaluating its investment, PURCHASER has consulted its own
investment and/or legal and/or tax advisors.
(b) CURRENT PUBLIC INFORMATION. PURCHASER acknowledges that PURCHASER has
available to it copies of the ISSUER's Annual Report on Form 10-K for
the year ended December 31, 2002 and Forms 10-Q for the quarters ended
March 31, 2003, and June 30, 2003 and Proxy Statement for the Annual
Meeting held June 26, 2003, all as filed with the Securities and
Exchange Commission (the "SEC"). PURCHASER further acknowledges that
PURCHASER has read and understands the Risk Factors set forth in
ISSUER's Form 10-K for the year ended December 31, 2002, and Forms
10-Q for the quarters ended March 31, 2003 and June 30, 2003.
(c) INDEPENDENT INVESTIGATION; ACCESS. PURCHASER acknowledges that, in
making its decision to purchase the Shares, it has relied on the
publicly available information about the ISSUER and upon independent
investigations made by it and its representatives, if any. PURCHASER
has had the opportunity to ask questions and received satisfactory
answers about the business of the ISSUER.
(d) NO GOVERNMENT RECOMMENDATION OR APPROVAL. PURCHASER understands that
no federal or state agency has passed on or made any finding or
determination relating to the fairness of an investment in the Shares,
or has passed on or made, or will pass on or make, any recommendation
or endorsement of the Shares.
(e) ISSUER REPRESENTATIONS. ISSUER represents and warrants to PURCHASER as
follows:
(i) AUTHORITY. The ISSUER is a corporation duly organized, validly
existing and in good standing under the laws of the Sate of Florida.
The ISSUER has all necessary corporate power and corporate authority
to make, execute, deliver and perform this agreement, and this
agreement and the transactions contemplated hereby have been duly
authorized and approved by all required corporate action of the
ISSUER. The ISSUER, is not subject to any charter, by-law, mortgage,
lien,
2
lease, agreement, instrument, order, law, rule, regulation, judgment
or decree, or any other restriction of any kind or character, which
would prevent consummation of the transactions contemplated by this
agreement.
(ii) VALIDITY. The Common Stock that has been issued or will be issued
pursuant to this agreement, has been or will be duly authorized and
validly issued and is, or will be, fully paid and non-assessable.
(f) FULL SATISFACTION. It is agreed that acceptance of the shares of
Common Stock being issued pursuant to the terms of this agreement (the
initial 138,158 shares to be delivered promptly, but in no event later
than September 30, 2003), will be in full satisfaction of the entire
license fee of $950,000 as set forth in the License Agreement dated
September 3, 2003, as amended, between the parties hereto and to which
this Appendix C is a part ("License Agreement"). It is further agreed
by the parties hereto, except as provided in the adjustments set forth
in Section 4 hereof, that if the value of the Shares increases after
the date of this agreement, the ISSUER will not have any right of a
credit to any other payment or amount due under the License Agreement
for the increase, and if the value of the Shares decreases after the
date of this agreement, the PURCHASER will not have any right of
further payment in cash or shares of Common Stock in respect of
license fee paid by the acceptance of the Shares.
2. LEGEND. PURCHASER understands that the ISSUER will instruct its transfer
agent to place a stop transfer order with respect to the certificates
representing the Shares and that such certificates will bear the following
legend, as well as a legend describing the restriction referred to in Section
3(b) hereof: "The shares represented by this certificate have been acquired for
investment and have not been registered under the Securities Act of 1933, as
amended (the "Securities Act"). Transfer of these shares is prohibited except
pursuant to registration under the Securities Act or pursuant to an available
exemption from registration."
3. REGISTRATION RIGHT.
(a) REGISTRATION. The ISSUER shall file a registration statement under the
Securities Act ("Registration Statement") with the Securities and
Exchange Commission registering the Shares for re-offer and re-sale as
soon as practicable, but in no event later than September 30, 2003,
and use its commercially reasonable efforts to have the Registration
Statement declared effective as soon as possible. Once the
Registration Statement is declared effective, the ISSUER shall keep
the Registration Statement effective and current until all the
securities registered thereunder are sold or may be sold freely by
PURCHASER in any 90-day period without registration under an
appropriate exemption under the Securities Act.
(b) PUBLIC RESALE LIMITATION. After the Registration Statement is declared
effective, the PURCHASER agrees that on any one trading day it will
sell no more than the greater of (i) 2,500 of the Shares or (ii) that
number of Shares equal to 5% of the reported average daily trading
volume of the Common Stock on Nasdaq for the immediately preceding ten
trading days, during the 90 calendar days after the
3
effective date of the Registration Statement, and thereafter without
any restriction as to time or amount, unless the PURCHASER and the
ISSUER mutually agree to some other number of Shares, from time to
time, which agreement shall be in writing.
(c) TERMS. The ISSUER shall bear all of its fees and expenses attendant to
registering the Shares, but PURCHASER shall pay any and all
underwriting or selling commissions and the expenses of any legal
counsel selected by PURCHASER to represent it in connection with the
registration or sale of the Shares. Promptly upon request, ISSUER will
provide to PURCHASER such number of copies of the prospectus forming a
part of the Registration Statement as are reasonably requested by the
PURCHASER, and all supplements to such prospectus. ISSUER will
promptly notify PURCHASER at any time that the Registration Statement
or the prospectus may not be used either due to the change of material
information contained therein or the omission of material information
therefrom or upon the receipt by the ISSUER of a cease and desist or
stop order of the Securities and Exchange Commission. The ISSUER will
use its commercially reasonably efforts to amend or supplement the
Registration Statement to permit its continued use by the PURCHASER.
(d) INDEMNIFICATION BY THE ISSUER. The ISSUER agrees to indemnify and hold
harmless PURCHASER, its directors and officers and each person, if
any, who controls PURCHASER within the meaning of the Securities Act
and/or the Securities Exchange Act of 1934, as amended ("Exchange
Act"), against any losses, claims, damages or liabilities, joint or
several, to which PURCHASER or such person may become subject, under
the Securities Act, Exchange Act or otherwise, insofar as such losses,
claims, damages or liabilities (or actions in respect thereof) arise
out of or are based upon (i) any untrue statement or alleged untrue
statement of a material fact contained (A) in any prospectus or
registration statement for the Shares or (B) in any blue sky
application or other document executed by the ISSUER specifically for
blue sky purposes or based upon any other written information
furnished by the ISSUER or on its behalf to any state or other
jurisdiction in order to qualify any or all of the Shares under the
securities laws thereof (any such application, document or information
being hereinafter called a "Blue Sky Application"), (ii) the omission
or alleged omission by the ISSUER to state in any prospectus or
registration statement for the Shares or in any Blue Sky Application a
material fact required to be stated therein or necessary to make the
statements therein, in light of the circumstances under which they
were made, not misleading, and will reimburse PURCHASER and each such
person for any legal or other expenses reasonably incurred by
PURCHASER or such person in connection with investigating or defending
any such loss, claim, damage, liability or action, or (iii) any
violation by the ISSUER of the Securities Act or any rule or
regulation promulgated thereunder, or any blue sky law or other state
securities laws law or rule or regulation promulgated thereunder,
relating to any action or inaction by the ISSUER in connection with
the issuance and registration of the Shares; provided, however, that
the ISSUER will not be liable in any such case to the extent that any
such loss, claim, damage or liability
4
arises out of or is based upon an untrue statement or alleged untrue
statement or omission or alleged omission made in reliance upon and in
conformity with information regarding PURCHASER which is furnished in
writing to the ISSUER by PURCHASER or its representatives for
inclusion in any registration statement for the Shares or any such
Blue Sky Application ("Non-Indemnity Events").
(e) INDEMNIFICATION BY THE PURCHASER. The PURCHASER agrees to indemnify
and hold harmless the ISSUER, each officer and director of the ISSUER,
and each person, if any, who controls the ISSUER within the meaning of
the Securities Act and/or the Exchange Act against any losses, claims,
damages or liabilities, joint or several, to which the ISSUER or such
person may become subject, under the Securities Act, Exchange Act or
otherwise insofar as such losses, claims, damages or liabilities (or
actions in respect thereof) arise out of or are based upon any
Non-Indemnity Event; and will reimburse the ISSUER and such persons
for any legal or other expenses reasonably incurred by the ISSUER in
connection with investigating or defending any such loss, claim,
damage, liability or action provided that such loss, claim, damage or
liability is found ultimately to arise out of or be based upon any
Non-Indemnity Event; provided that the maximum amount of the
indemnification payments by PURCHASER shall not exceed the net sale
proceeds of any of the Shares or shares of Common Stock underlying the
Purchase Option sold by the PURCHASER pursuant to the registration
statement.
(f) PROCEDURE. Promptly after receipt by an indemnified party under this
Section 3 of notice of the commencement of any action, such
indemnified party will, if a claim in respect thereof is to be made
against any indemnifying party under this Section 3, notify in writing
the indemnifying party of the commencement thereof; and the omission
so to notify the indemnifying party will relieve the indemnifying
party from any liability under this Section 3 as to the particular
item for which indemnification is then being sought (if such failure
materially prejudices the indemnifying party), but not from any other
liability which it may have to any indemnified party. In case any such
action is brought against any indemnified party, and it notifies an
indemnifying party of the commencement thereof, the indemnifying party
will be entitled to participate therein, and to the extent that it may
wish, jointly with any other indemnifying party, similarly notified,
to assume the defense thereof, with counsel who shall be to the
reasonable satisfaction of such indemnified party, and after notice
from the indemnifying party to such indemnified party of its election
so to assume the defense thereof, the indemnifying party will not be
liable to such indemnified party under this Section 3 for any legal or
other expenses subsequently incurred by such indemnified party in
connection with the defense thereof other than reasonable costs of
investigation. Any such indemnifying party shall not be liable to any
such indemnified party on account of any settlement of any claim or
action effected without the consent of such indemnifying party, which
consent shall not be unreasonably withheld.
(g) CONTRIBUTION. If the indemnification provided for in this Section 3 is
unavailable to any indemnified party in respect to any losses, claims,
damages, liabilities or
5
expenses referred to therein, then the indemnifying party, in lieu of
indemnifying such indemnified party, will contribute to the amount
paid or payable by such indemnified party, as a result of such losses,
claims, damages, liabilities or expenses in such proportion as is
appropriate to reflect the relative fault of the ISSUER on the one
hand, and of the PURCHASER on the other hand, in connection with the
statements or omissions which resulted in such losses, claims,
damages, liabilities or expenses as well as any other relevant
equitable considerations. The relative fault of the ISSUER on the one
hand, and the PURCHASER on the other hand, will be determined with
reference to, among other things, whether the untrue or alleged untrue
statement of a material fact or the omission to state a material fact
relates to information supplied by the ISSUER, and its relative
intent, knowledge, access to information and opportunity to correct or
prevent such statement or omission.
(h) EQUITABLE CONSIDERATIONS. The ISSUER and the PURCHASER agree that it
would not be just and equitable if contribution pursuant to this
Section 3 were determined by pro rata allocation or by any other
method of allocation which does not take into account the equitable
considerations referred to in the immediately preceding paragraph.
(i) ATTORNEYS' FEES. The amount payable by a party under this Section 3 as
a result of the losses, claims, damages, liabilities or expenses
referred to above will be deemed to include any legal or other fees or
expenses reasonably incurred by such party in connection with
investigating or defending any action or claim (including, without
limitation, fees and disbursements of counsel incurred by an
indemnified party in any action or proceeding between the indemnifying
party and indemnified party or between the indemnified party and any
third party or otherwise).
(j) DOCUMENTS TO BE DELIVERED BY PURCHASER. PURCHASER represents to the
ISSUER that it does not own any shares of Common Stock or have the
right to acquire any Common Stock, except as provided under this
agreement, that it has no contract or arrangement currently for the
sale of the Shares, and that it has read and agrees that the plan of
distribution set forth in the form of Registration Statement is its
proposed plan for the sale of the Shares. PURCHASER agrees to update
any these representations promptly to the ISSUER. Within five business
days, PURCHASER shall furnish to the ISSUER, at ISSUER=S request, a
completed and executed questionnaire provided by the ISSUER requesting
information customarily sought of selling security holders.
(k) NO PURCHASES AND SALES. PURCHASER represents that it has not purchased
or sold any shares of Common Stock within the 60 days prior to the
date of the License Agreement, and it will not purchase or short sell
any shares of Common Stock while it holds any of the Shares or has the
right to acquire any of the Shares.
6
4. RECALCULATION AND ADDITIONAL SHARE AND PENALTY CALCULATION.
(a) Two days prior to the effectiveness of the Registration Statement, the
ISSUER will determine the number of shares of Common Stock that is
equal to $950,000 divided by the average of the closing prices of a
share of Common Stock for the 10 trading days ending on the third
business day before the proposed effective date of the Registration
Statement, times 1.05. If the number determined by the preceding
sentence is greater than the number of Shares previously issued to the
PURCHASER, then the ISSUER will issue additional shares of Common
Stock to the PURCHASER equal to such difference and amend the
Registration Statement to include such additional shares of Common
Stock, and such additional shares shall be considered "Shares" for the
purposes of this agreement. If the number determined by the first
sentence of this paragraph is less than the number of Shares issued
hereunder to the PURCHASER, then the PURCHASER will surrender to the
ISSUER that number of Shares equal to the difference for cancellation,
and the ISSUER will amend the Registration Statement to reduce the
number of Shares being registered and subject to this agreement.
(b) If PURCHASER sells all the Shares prior to the 90th day after the
effective date of the Registration Statement, and the net proceeds
(being the sales price less customary commissions, selling costs and
taxes) from those sales of Shares ("Net Proceeds") are less than
$950,000, then upon written request ("Request") by the PURCHASER to
the ISSUER, which Request must be received by ISSUER no later than the
95th day after the effective date of the Registration Statement and
include supporting documentation of the Net Proceeds amount, the
ISSUER shall promptly issue that number of additional shares of Common
Stock ("Additional Shares") equal to $950,000 minus the Net Proceeds,
divided by the average of the closing prices of a share of Common
Stock for the 10 trading days ending on the second business day before
the date of the Request, times 1.05. Upon issuance of the Additional
Shares, the ISSUER will file a new registration statement ("New
Registration Statement") with the SEC no later than the twentieth day
from the date of the Request, and use its reasonable commercial
efforts to have the New Registration Statement declared effective
sixty days after the date of filing of the New Registration Statement.
Once the New Registration Statement is declared effective, the ISSUER
shall keep the New Registration Statement effective and current until
all the securities registered thereunder are sold or may be sold
freely by PURCHASER in any 90-day period without registration under an
appropriate exemption under the Securities Act. If the New
Registration Statement is declared effective, then the provisions set
forth in Section 3(c) through 3(k) above shall apply the New
Registration Statement. Notwithstanding the foregoing, if ISSUER is
obligated to issued any Additional Shares pursuant to this Section
4(b), it may either file and have declared effective the New
Registration Statement, include the Additional Shares on any other
registration statement where permitted, issue the Additional Shares
under a shelf registration statement, if permitted, or in lieu of
issuing Additional Shares pay to the PURCHASER, the difference between
the Net Proceeds and $950,000 in cash rather than shares of Common
Stock.
7
If all the Shares are not sold by the PURCHASER prior to December 31,
2003, because the volume limitations and terms set forth in Section
3(b) made their sale impossible, and the ISSUER and the PURCHASER have
not modified the volume limitations after the date of this agreement
in such a way as would have permitted the sale of the Shares prior to
December 31, 2003, then, the ISSUER will pay to the PURCHASER the sum
of $50,000.
5. GOVERNING LAW. This Agreement shall be governed by and interpreted in
accordance with the rulings of the laws of the State of Florida without regard
to conflicts of law. The ISSUER and PURCHASER each hereby agrees that any
action, proceeding or claim against it arising out of, or relating in any way to
this agreement shall be brought and enforced in the courts of the State of
Florida or of the United States of America for the Middle District of Florida,
Jacksonville Division and irrevocably submits to such jurisdiction, which
jurisdiction shall be exclusive. The ISSUER and PURCHASER hereby waives any
objection to such exclusive jurisdiction and that such courts represent an
inconvenient forum. Any process or summons to be served upon the ISSUER and
PURCHASER may be served by transmitting a copy thereof by registered or
certified mail, return receipt requested, postage prepaid, addressed to it at
its address set forth herein. Such mailing shall be deemed personal service and
shall be legal and binding upon the ISSUER and PURCHASER in any action,
proceeding or claim. The ISSUER and PURCHASER agrees that the prevailing
party(ies) in any such action shall be entitled to recover from the other
party(ies) all of its reasonable attorneys' fees and expenses relating to such
action or proceeding and/or incurred in connection with the preparation
therefor.
6. ENTIRE AGREEMENT. This agreement and the License Agreement constitute the
entire agreement among the parties hereof with respect to the subject matter
hereof and supersedes any and all prior or contemporaneous representations,
warrants, agreements and understandings in connection therewith. This Agreement
may be amended only by a writing executed by all parties hereto.
7. NOTICES. Any notice or other document required or permitted to be given or
delivered to the parties to this agreement shall be personally delivered or sent
by facsimile or other form of electronic transmission to the party at the
address or addresses or telecopier number on the signature page hereto. Unless
otherwise specified in this agreement, all notices and other documents given
under this agreement shall be deemed to have been duly given when delivered, if
personally delivered, and when transmitted if sent by facsimile or other form of
electronic transmission.
8
IN WITNESS WHEREOF, this Agreement was duly executed on the date first
written below.
Dated this 19th day of the month of September, 2003.
SKYCROSS, INC.. PARKERVISION, INC.
By: /s/ Xxxxxxxxxxx Xxxxxx By: /s/ Xxxxxxx X. Xxxxxxxxx
------------------------------ ----------------------------
Name: Xxxxxxxxxxx Xxxxxx Name: Xxxxxxx X. Xxxxxxxxx
Title: Chief Executive Officer Title: President
Notice Addresses: Xxxxxxx X. Xxxxxxxxx, President
SkyCross, Inc. ParkerVision, Inc.
000-X Xxxxx Xxxxx 0000 Xxxxxxxxxx Xxx
Xxxxxxxxx, Xxxxxxx 00000 Xxxxxxxxxxxx, Xxxxxxx 00000
Facsimile: (000) 000-0000 Facsimile: (000) 000-0000
with a copy to with a copy to
Xxxxxxx X. Xxxxxx Xxxxx Xxxx Xxxxxx, Esq.
Akerman Senterfitt Xxxxxxxx Xxxxxx
One Southeast Third Avenue 000 Xxxxx Xxxxxx
00xx Xxxxx Xxx Xxxx, XX 00000
Xxxxx, Xxxxxxx 00000-0000 Facsimile: (212) 818-888
Facsimile: (000) 000-0000
9
