EXHIBIT 10.4
INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement, dated this 31st day of October,
1997, is entered into by and between Western Atlas Inc., a Delaware
corporation ("WESTERN"), and UNOVA, Inc., a Delaware corporation ("UNOVA").
WHEREAS, WESTERN proposes the distribution (the "Distribution") to its
shareholders in a tax-free spin-off of UNOVA which will own WESTERN's
industrial automation systems business, consisting of the automated data
collection and mobile computing businesses operated by Intermec Corporation,
Norand Corporation and United Barcode Industries and the integrated
manufacturing systems, body welding and assembly systems and precision
grinding and abrasive systems businesses operated by various WESTERN
divisions (collectively, the "UNOVA Business");
WHEREAS, WESTERN will retain its oilfield information services businesses
(the "Western Businesses");
WHEREAS, WESTERN and UNOVA each desire to allocate intellectual property
to the business which is using or holding for use the intellectual property:
WHEREAS, WESTERN became a publicly traded company as a result of a
tax-free spin-off from Xxxxxx Industries, Inc., a Delaware corporation
("Xxxxxx"), on March 17, 1994;
NOW, THEREFORE, in consideration of the foregoing premises and other good
and valuable consideration, receipt of which is hereby acknowledged, WESTERN
and UNOVA agree as follows:
1. Definition:
"Intellectual Property" is defined to mean patents, patent applications,
trademarks, service marks, trade names, copyrights, registrations and
applications for registration of trademarks, service marks, trade names
and copyrights, software, mask works, trade secrets and technical
information and licenses relating thereto.
2. Patents:
WESTERN does hereby sell, assign, transfer and convey unto UNOVA, its
successors and assigns, the entire right, title and interest in and to the
patents and patent applications set forth in Attachment A.1 including any
divisions, continuations or continuations-in-part thereof, and any
re-examinations or re-issues thereof, not only for, to and in the United
States of America, its territories and possessions, but for, to and in all
countries foreign
thereto, together with the right to recover for past infringement.
3. Trademarks:
3.1 WESTERN does hereby sell, assign, transfer, and convey unto
UNOVA, its successors and assigns, the entire right, title and
interest in and to the trademark or service xxxx registrations
and applications for registrations set forth in Attachment B.1
including the right to recover for past infringement of said
trademarks and service marks and the good will of the business in
connection with which said trademarks and service marks are used
and which is symbolized thereby.
3.2 UNOVA has adopted and begun to use the name "UNOVA" as a trade
name, trademark and service xxxx. WESTERN is currently the owner
of trademark, service xxxx and/or trade name applications for
registration and/or reservations of "UNOVA" in the United States
of America, several States within the United States of America
and countries foreign thereto. WESTERN does hereby sell, assign,
transfer, and convey unto UNOVA, its successors and assigns, the
entire right, title and interest in and to such "UNOVA"
trademark, service xxxx, and/or trade name applications and
reservations, including the right to recover for past
infringement of said marks and the good will in the business in
connection with which said marks are used and which is symbolized
thereby.
3.3 WESTERN shall retain ownership in the corporate name, trademark
and service xxxx "WESTERN ATLAS," including the trademark and
service xxxx applications for registration and registrations of
"WESTERN ATLAS" in the United States of America and countries
foreign thereto listed in Attachment B.5 whose files shall be
transferred from the present corporate headquarters of WESTERN to
the Houston, Texas, offices of WESTERN upon the Distribution.
4. Assistance:
4.1 The distribution on March 17, 1994, by Xxxxxx which resulted in
the tax-free spin-off of WESTERN included that certain
Intellectual Property Agreement, Annex C of the Distribution
Agreement, under which Xxxxxx was to sell, assign, transfer and
convey unto WESTERN certain patents and trademarks. Some of those
certain patents may still be assigned of record to Xxxxxx and/or
its subsidiaries (or a predecessor in interest to Xxxxxx and/or
its subsidiaries). Attachments A.2, A.3 and A.4 hereto list,
respectively, patents owned by Xxxxxx Industrial Automation
Systems, Inc. (LIAS)(which changed its name to WESTERN); Xxxxxx
Industrial Products, Inc.
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(LIPI); and Xxxxx & Whitney (PW). Some of those certain
trademarks may still be assigned of record to Xxxxxx and/or its
subsidiaries. Attachments B.2, B.3 and B.4 hereto list,
respectively, trademarks owned by Xxxxxx Industries, Inc. (LII);
Xxxxxx Industrial Automation Systems, Inc. (LIAS); and Xxxxxx
Industrial Products, Inc. (LIPI). WESTERN, if requested, will
execute documents as reasonably requested by UNOVA, and without
expense to WESTERN, to obtain the sale, assignment, transfer and
conveyance unto UNOVA, its successors and assigns of the entire
right, title and interest in and to the patents and trademarks
set forth in Xxxxxxxxxxx X.0, X.0, X.0, X.0, X.0 and B.4 hereto.
5. Other Intellectual Property:
The ownership of Intellectual Property not specifically referred to
in Sections 2, 3, 4 and 6 of this Intellectual Property Agreement
shall be as follows:
5.1 Intellectual Property owned by each incorporated subsidiary owned
in whole or in part, directly or indirectly, by WESTERN or UNOVA
will continue to be owned by each such subsidiary.
5.2 Intellectual Property which is used or held for use by a division
or other unit of WESTERN in the Western Businesses, including
Intellectual Property from discontinued operations of the
oilfield information services business, shall continue to be
owned by WESTERN.
5.3 Intellectual Property which is used or held for use by a division
or other unit of WESTERN in the UNOVA Businesses, including
Intellectual Property from discontinued operations of the UNOVA
Businesses, shall be owned by, and all WESTERN's right, title and
interest is hereby assigned by WESTERN to, UNOVA.
5.4 Intellectual Property used jointly by the Western Businesses and
the UNOVA Businesses listed in Attachment C hereto shall be
retained by WESTERN.
5.5 Copyrights, software, software services and licenses and
agreements relating thereto, presently owned by WESTERN,
including e-mail, which have been used at the corporate
headquarters of WESTERN and which relate to or are utilized
primarily or exclusively by the Western Businesses shall remain
the property of WESTERN. Copyrights, software, software services
and licenses and agreements relating thereto, presently owned by
WESTERN, including e-mail, which have been used at the corporate
headquarters of WESTERN, and which relate to or are utilized
primarily or exclusively by the UNOVA Businesses
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shall become the property of UNOVA, to the extent the same may be
transferred to UNOVA. If requested, WESTERN will assist with the
assignment to UNOVA of any transferable right, title and interest
of WESTERN in such copyrights, software, software services and
related licenses and agreements which relate to or are utilized
primarily or exclusively by the UNOVA Businesses. Copyrights,
software, software services and licenses and agreements relating
thereto, presently owned by WESTERN, including e-mail, which have
been used at the corporate headquarters of WESTERN and which
relate to or are utilized by both the Western Businesses and the
UNOVA Businesses and not primarily by the Western Businesses
shall become the property of UNOVA, to the extent the same may be
transferred to UNOVA, provided, however, that UNOVA will
cooperate with and, if requested, assist WESTERN to obtain
similar copyrights, software, software services and licenses and
agreements relating thereto.
6. Licenses:
6.1 In no event shall UNOVA, or any direct or indirect subsidiary or
division of UNOVA have any interest in or rights under the
non-exclusive license granted to Xxxxxx under the Amalgamation
Agreement dated April 30, 1987 (including Section ll.9(b),
Exhibit M and Schedule M(b)), among Xxxxxx Industries, Inc.
Research Holdings, Inc., a successor-in-interest to Western
Geophysical Company of America, of the first part, Dresser
Industries, Inc., of the second part, and Western Atlas
International, Inc., of the third part, and the Letter Agreement
dated June 10, 1993 among Xxxxxx Industries, Inc., Western Atlas
Inc. and Western Atlas International, Inc. ("Non-Exclusive
License"). The foregoing notwithstanding, WESTERN will cause its
subsidiary, Western Atlas International, Inc. (WAII), to enter
into a license agreement with the UNOVA subsidiary, Intermec
Technologies Corporation (Intermec), granting to Intermec a
non-exclusive, nontransferable license under WAII's GPS patents
in a specified field of use under such terms as are mutually
agreeable to Intermec and WAII at a royalty rate not to exceed
five percent (5%), it being understood that this more favorable
royalty rate is being made available to Intermec as company
currently under common ownership with WAII.
6.2 Promptly following the Distribution Date (as defined in the
Distribution and Indemnity Agreement), UNOVA shall cause all
UNOVA subsidiaries with names that include the words "Western
Atlas" or derivations thereof to change their corporate names to
names that do not include such words or derivations. WESTERN
grants to UNOVA and the UNOVA subsidiaries the right to leave the
Western Atlas name on all buildings, vehicles, inventory and
supplies owned by UNOVA or the UNOVA subsidiaries in the form it
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appears thereon on the Distribution Date, until the sooner of the
date on which all inventory and supplies existing on the
Distribution Date have been consumed or sold or six months
following the Distribution Date; provided, however, that UNOVA
shall indemnify WESTERN for any loss incurred by WESTERN in
connection with such use by UNOVA and the UNOVA subsidiaries.
Nothing in this Section 6.2 shall be construed to grant to UNOVA
or the UNOVA subsidiaries any rights whatsoever in the Western
Atlas name.
WESTERN and UNOVA shall, and shall require their subsidiaries to, take such
actions and execute such documents as required to carry out and complete the
transfer of Intellectual Property contemplated under this Agreement. After the
Distribution should a patent or patent application, or a trademark registration
or application for registration of a trademark be discovered which is assigned
directly to WESTERN, and which is a part of the UNOVA Businesses, WESTERN will
assign such patent, patent application, trademark registration or application
for registration of a trademark to UNOVA.
IN WITNESS WHEREOF, the parties hereto affix their respective hands as of
the date indicated above.
WESTERN ATLAS INC.
By: /s/ Xxxxxxx X. Xxxxx
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UNOVA, INC.
By: /s/ Xxxxxxx X. Xxxxxxxx
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