EX-10.2
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gabriel_ex1002.htm
ASSIGNMENT OF INTELLECTUAL PROPERTY
Exhibit
10.2
ASSIGNMENT
OF INTELLECTUAL PROPERTY
THIS
ASSIGNMENT OF INTELLECTUAL PROPERTY (this “Assignment”) is entered into
effective as of July 1, 2006 (the “Effective Date”), by and between XXXXX
X. XXXXX,
an
individual (“Assignor”), on the one hand, and XXXXXXX
TECHNOLOGIIES CORPORATION,
a
Delaware corporation (“Assignee”), on the other hand.
WHEREAS,
Assignor owns certain Intellectual Property (the “Assigned Intellectual
Property”); and
WHEREAS,
Assignor has agreed to assign, convey, and set over unto Assignee all of
Assignor’s right, title, and interest in and to the Assigned Intellectual
Property and certain Intellectual Property developed by Assignor after the
Effective Date of this Assignment, all in accordance with the terms and
conditions of this Assignment.
NOW,
THEREFORE, in consideration of the premises and the mutual covenants herein
contained, and other good and valuable consideration (including without
limitation the execution of that certain Employment Agreement entered into
as of
July 1, 2006 between Assignee and Assignor (the “Employment Agreement”)), the
receipt and sufficiency of which is hereby acknowledged, the parties hereby
agree as follows:
1. Definition
of Intellectual Property.
As used
in this Assignment, “Intellectual Property” means all of the following (directly
or indirectly related to, in connection with, or resulting from Assignor’s work
as an independent contractor or employee for or with Assignee or any subsidiary
or affiliate of Assignee,
including without limitation Trace Technologies, LLC)
anywhere in the world and all legal rights, title, or interest in the following
(directly or indirectly related to, in connection with, or resulting from
Assignor’s work as an independent contractor or employee for or with Assignee or
any subsidiary or affiliate of Assignee, including without limitation Trace
Technologies, LLC) arising under the laws of the United States, any state,
or
any other country or international treaty regime, whether or not filed,
perfected, registered or recorded and whether now or later existing, filed,
issued or acquired, including all renewals:
(a)
all
patents and applications for patents and all related reissues, reexaminations,
divisions, renewals, extensions, provisionals, continuations and continuations
in part, including but not limited to the patents and patent applications listed
in Appendix A (attached hereto and hereby incorporated by reference into this
Assignment);
(b)
all
copyrights, copyright registrations and copyright applications, copyrightable
works, and all other corresponding rights;
(c)
all
mask works, mask work registrations and mask work applications, and all other
rights relating to semiconductor design and topography;
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(d)
all
industrial designs, industrial models, utility models, certificates of invention
and other indices of invention ownership, and any related registrations and
applications;
(e)
all
trade dress and trade names, logos, Internet addresses and domain names,
trademarks and service marks and related registrations and applications,
including any intent to use applications, supplemental registrations and any
renewals or extensions, all other indicia of commercial source or origin, and
all goodwill of any business associated with any of the foregoing;
(f)
all
inventions (whether patentable or not and whether or not reduced to practice),
invention disclosures, invention notebooks, file histories, know how,
technology, technical data, trade secrets, confidential business information,
manufacturing and production processes and techniques, research and development
information, financial, marketing and business data, pricing and cost
information, business and marketing plans, and customer, distributor, reseller
and supplier lists and information, correspondence, records, and other
documentation, and other proprietary information of every kind, including but
not limited to the inventions and invention disclosures listed in Appendix
A
(attached hereto and hereby incorporated by reference into this Assignment);
(g)
all
computer software including but not limited to all source code, object or
executable code, firmware, software compilations, software implementations
of
algorithms, software tool sets, compilers, software models and methodologies,
development tools, files, records, technical drawings, and data relating to
the
foregoing;
(h)
all
databases and data collections and all rights in the same;
(i)
all
rights of paternity, integrity, disclosure, and withdrawal, and any other rights
that may be known or referred to as “moral rights,” in any of the foregoing;
(j)
any
rights analogous to those set forth in the preceding clauses and any other
proprietary rights relating to intangible property;
(k)
all
tangible embodiments of any of the foregoing, in any form and in any media;
(l)
all
versions, releases, upgrades, derivatives, enhancements and improvements of
any
of the foregoing; and
(m)
all
statutory, contractual and other claims, demands, and causes of action for
royalties, fees, or other income from, or infringement, misappropriation or
violation (including past infringement, misappropriation or violation) of,
any
of the foregoing, and all of the proceeds from the foregoing that are accrued
and unpaid as of, and/or accruing after, the Effective Date.
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2. Intellectual
Property Assignment.
Assignor hereby assigns, transfers and conveys, unto Assignee, and Assignee
accepts the assignment by Assignor of, all of Assignor’s right, title, and
interest, in and to the Assigned Intellectual Property, the same to be held
and
enjoyed by Assignee for its own use and benefit, and for the use and benefit
of
its successors, assigns, or other legal representatives, as fully and entirely
as the same would have been held and enjoyed by Assignor if this assignment
and
sale had not been made.
3. Future
Intellectual Property Assignment.
Assignor hereby further assigns, transfers and conveys unto Assignee all of
Assignor’s right, title, and interest in and to any Intellectual Property and
other assets developed by Assignor after the Effective Date of this Assignment.
For the avoidance of doubt, Assignor and Assignee acknowledge and agree that
no
assignment, transfer, or conveyance is contemplated under this Section of this
Agreement of Assignor’s right, title, and interest in and to any intellectual
property conceived or developed by Assignor after the effective date of the
termination of Assignor’s work as an independent contractor or employee for or
with Assignee; provided, however, that nothing in this sentence shall be
interpreted to change or modify the definition of “Intellectual Property” in
this Agreement or the terms and conditions of the Employment
Agreement.
4. Covenants.
Assignor hereby covenants and agrees that he will, at any time upon request,
consistent with the terms and conditions of the Employment Agreement, execute
and deliver any and all papers that may be necessary or desirable to perfect
title to the Assigned Intellectual Property, and all other rights, title, and
interests assigned hereunder, to Assignee, its successors, assigns, or other
legal representatives. Assignor further covenants and agrees that he will,
at
any time upon request, consistent with the terms and conditions of the
Employment Agreement, communicate to Assignee, its successors, assigns or other
legal representatives, such facts as requested by Assignee relating to the
Assigned Intellectual Property.
5. Representations
and Warranties.
To
induce Assignee to enter into this Assignment with Assignor, the Assignor,
jointly and severally, represents and warrants the following:
(a) Assignor
has all requisite capacity and authority to execute and deliver this Assignment
and any and all other instruments and agreements required to be executed and
delivered by such Assignor pursuant to this Assignment. This Assignment and
any
other agreements executed in connection herewith by Assignor represent valid
and
binding obligations of Assignor enforceable against Assignor in accordance
with
their terms.
(b) Neither
the execution and delivery by Assignor of this Assignment, nor the consummation
by Assignor of the transactions contemplated herein, will violate, or be in
conflict with, or constitute a default (or an event or condition that, with
notice or lapse of time or both, would constitute a default) under, or result
in
the termination of, or accelerate the performance required by, or cause the
acceleration of the maturity of any debt, liability, contract, agreement, or
other arrangement to which Assignor is a party.
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(c) Assignor
has not assigned, transferred, or conveyed, and will not hereafter attempt
to
assign, transfer, or convey, the Assigned Intellectual Property, or any other
rights, title, and interests assigned hereunder, or any interest or right
therein, to any person or entity other than to Assignee pursuant to this
Assignment. Assignor has no knowledge of any claim of ownership by any other
party in and to the Assigned Intellectual Property assigned
hereunder.
6. Indemnification.
To
further induce Assignee to enter into this Assignment, Assignor agrees and
covenants to indemnify, defend, and hold harmless Assignee, and Assignee’s
partners, successors, assigns, agents, and attorneys (collectively, the
“Indemnitees” or, each individually, an “Indemnitee”) from and against all
demands, claims, actions, or causes of action, assessments, losses, taxes,
damages, liabilities, costs, and expenses, including, without limitation,
interest, penalties, and reasonable attorneys' fees and expenses (collectively,
“Damages”), asserted against, assessed upon, resulting to, imposed upon, or
incurred by an Indemnitee by reason of or resulting from a breach or threatened
breach of any representation, warranty, covenant, obligation, or agreement
of
Assignor contained in or made pursuant to this Assignment or any facts or
circumstances constituting such a breach, or any such Damages accruing prior
to
the Effective Date of this Assignment or otherwise arising as a result of
Assignor’s ownership, usage, or handling of the Assigned Intellectual Property,
as well as all other rights, title, and interests assigned hereunder, prior
to
the Effective Date of this Assignment.
7. Assumption
of Liabilities.
Assignee assumes any and all liabilities, if any, associated with the Assigned
Intellectual Property accruing after the Effective Date.
8. Severability.
If any
provision of this Assignment is held to be illegal, invalid or unenforceable
under present or future laws effective during the term hereof, then (a) in
lieu
of such illegal, invalid, or unenforceable provision, there shall be added
automatically as a part of this Assignment a provision as similar in terms
to
such illegal, invalid, or unenforceable provision as may be possible and be
legal, valid, and enforceable; and (b) the legality, validity, and
enforceability of the remaining provisions hereof shall not in any way be
affected or impaired thereby.
9. Confidentiality.
Assignor acknowledges and agrees that this Assignment, the Assigned Intellectual
Property, and all other rights, title, and interests assigned hereunder, as
well
as any and all information pertaining to the business of Assignee is
Confidential Information (herein so called) which is the sole and exclusive
property of Assignee. Assignor agrees that it will not, at any time after the
Effective Date of this Assignment, disclose any such Confidential Information
to
any third party or use such Confidential Information in any other way adverse
to
Assignee without Assignee’s consent. Provisions of this Section shall not apply
to information which is or becomes available to the general public through
no
fault or actions taken by Assignor or which is required by law to be disclosed
by Assignor, provided that Assignor shall give Assignee written notice of such
requirement prior to disclosure so that Assignee may seek a protective order
or
other appropriate relief.
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10. Termination;
Survival of Certain Provisions.
This
Agreement shall terminate on the effective date of the termination of Assignor’s
work as an independent contractor or employee for or with Assignee, subject
to
the survival of certain provisions as set forth in this Section. All
representations, warranties, covenants, and obligations of Assignor shall
survive the termination, expiration, or cancellation of this
Assignment.
11. Successors.
The
provisions of this Assignment will be binding on the assigns, successors in
interest, personal representatives, estates, heirs, and legatees of each of
the
parties hereto.
12. GOVERNING
LAW AND VENUE. THIS
ASSIGNMENT HAS BEEN EXECUTED IN, AND WILL BE GOVERNED BY AND CONSTRUED IN
ACCORDANCE WITH THE LAWS OF THE STATE OF
NEBRASKA. FURTHERMORE, EACH PARTY
AGREES THAT EXCLUSIVE VENUE FOR ANY ACTION, PROCEEDING OR SUIT ARISING FROM
OR
OUT OF, EITHER DIRECTLY OR INDIRECTLY, THIS ASSIGNMENT SHALL BE IN A FEDERAL
OR
STATE COURT IN THE STATE OF
NEBRASKA.
13. Amendment.
This
Assignment may only be amended by the written consent of all of the parties
to
this Assignment at the time of such proposed amendment.
14. Entire
Agreement; Counterparts.
This
Assignment contains the entire understanding among the parties concerning the
subject matter contained herein. There are no representations, agreements,
arrangements or understandings, oral or written, between or among the parties
hereto, relating to the subject matter of this Assignment, which are not fully
expressed in such documents. This Assignment may be executed in one or more
counterparts, all of which taken together will be considered one and the same
agreement.
15. Headings.
The
section headings contained in this Assignment are for convenience only and
should not be construed as part of this Assignment.
16. Waiver.
The
waiver by any party hereto of a breach of any provision of this Assignment
does
not operate as, and should not be construed as, a waiver of any subsequent
breach by any party.
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IN
WITNESS WHEREOF, the parties hereto have caused this Assignment to be executed
by their duly authorized officers or agents, if applicable, effective as of
the
Effective Date.
ASSIGNOR:
/s/
Xxxxx X.
Xxxxx
11/29/06
Xxxxx
X.
Xxxxx, individually
ASSIGNEE:
XXXXXXX
TECHNOLOGIES CORPORATION
By: /s/
Xxxxx X. Xxxxxxxxx
Xxxxx
X.
Xxxxxxxxx
Chief
Executive Officer
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APPENDIX
A
INTELLECTUAL
PROPERTY OF XXXXX X. XXXXX
PATENT
APPLICATIONS
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1)
|
Provisional
Patent No. 60/754,436, filed Dec. 28, 2005, entitled “Apparatus and Method
for Controlling Autonomous and Assisted GPS Modes in a Wireless Mobile
Terminal”; and
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2)
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Provisional
Patent No. 60/754,350, filed Dec. 28, 2005, entitled “Wireless Mobile
Terminal Using Sensors for Controlling Autonomous and Assisted GPS
Modes”.
|
INVENTIONS
AND INVENTION DISCLOSURES
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1)
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One
or more inventions disclosed in the invention disclosure document
entitled
“RF Mesh-based Assisted Location
Elements”;
|
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2)
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One
or more inventions disclosed in the invention disclosure document
entitled
“ReFLEX Campus Operations For aGPS”;
and
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3)
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Method
of Interoperation Between Wireless LAN (802.11/WiFi) and Public Data
Networks (ReFLEX and Others) c/w Support for Assisted
GPS”.
|
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