Exhibit “C” PATENT PROCEEDS ASSIGNMENT
Exhibit
10.8
Exhibit
“C”
THIS PATENT PROCEEDS ASSIGNMENT
(“Patent Proceeds Assignment”) is entered into by and between Drago Daic,
an individual residing in Houston, Texas (“Daic”), Xxxxx Xxxxxxxxxx, P.C., a
Texas professional corporation (“Xxxxxxxxxx PC”) (Daic and Xxxxxxxxxx being
collectively referred to as the “Daic Parties”), and Calypso Wireless, Inc., a
Delaware corporation (“Calypso”), on this ____ day of _________________,
200_.
W I T N E S S E T
H
WHEREAS, a dispute had arisen
between the parties with respect to certain patent rights owned by Calypso
commonly known as “ASNAP” and “Xxxxxx” and more particularly described as
the ASNAP Patents
and Xxxxxx Patents (collectively the “Patent”) which are more fully described
herein below in paragraphs (i) and (ii) and shall mean as
follows:
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(i)
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“ASNAP
Patents” shall mean: (1) United States Patent No. US 6,680,923 B1, U.S.
Patent Application Serial No. 11/040,482, and PCT Application No.
PCT/US01/07528 (2) all patents and applications throughout the world that
claim priority to, directly or indirectly, or from which the foregoing
claim priority, directly or indirectly; (3) all substitutions for and
divisions, continuations, continuations-in-part, renewals, reissues,
patent cooperation treaty applications, foreign applications, national
phase entries, and extensions of the foregoing patents and applications
throughout the world, and including patent applications and applications
throughout the world for like protection that have now been or may in the
future be granted on the invention disclosed in any of the foregoing
patents or applications, including without limitation, those obtained or
permissible under past, present, and future laws and statutes; and (4) all
right, title, and interest in and to any and all rights and causes of
action based on, arising out of, related to, or on account of past,
present, and future unauthorized use and/or infringement of any and all of
the foregoing, including but not limited to all past, present, and future
awards, damages, and remedies related thereto or arising
therefrom.
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(ii)
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The
“Xxxxxx Patents” shall mean: (1) United States Patents No. 6,385,306, No.
6,765,996, No. 6,839,412 and No. 7,031,439; (2) all patents and
applications throughout the world that claim priority to (directly or
indirectly) the foregoing, or from which the foregoing claim priority
(directly or indirectly); (3) all substitutions for and divisions,
continuations, continuations-in-part, renewals, reissues, patent
cooperation treaty applications, foreign applications, national phase
entries, and extensions of the foregoing patents and applications
throughout the world, and including patent applications and applications
throughout the world for like protection that have now been or may in the
future be granted on the invention disclosed in any of the foregoing
patents or applications, including without limitation, those obtained or
permissible under past, present, and future laws and statutes; and (4) all
right, title, and interest in and to any and all rights and causes of
action based on, arising out of, related to, or on account of past,
present, and future unauthorized use and/or infringement of the any and
all of the foregoing, including but not limited to all past, present, and
future awards, damages, and remedies related thereto or arising
therefrom.
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WHEREAS, the Parties have
resolved their dispute to their mutual satisfaction, as further described in a
Settlement Agreement between the parties hereto dated April __, 2008 (the
“Settlement Agreement”);
WHEREAS, pursuant to the terms
of the Settlement Agreement, Calypso conveyed to the Daic Parties an undivided
twenty five percent (25%) interest in and to the ASNAP and Xxxxxx Patents (the
“Patent Ownership Interest”) pursuant to that certain Assignment Agreement with
Respect to Undivided Interest in Patents dated April __, 2008 (the “Assignment
Agreement”);
WHEREAS, pursuant to the terms
of the Assignment Agreement, the Daic Parties were obligated to reconvey the
Patent Ownership Interest to Calypso upon receipt of $20,000,000 in cash
pursuant to the Assignment Agreement and, simultaneous with the reconveyance of
such interest, the Daic Parties and Calypso were to enter into this Patent
Proceeds Assignment;
WHEREAS, the Daic Parties have
received $20,000,000 in cash pursuant to the Assignment Agreement and
simultaneous with the execution of this Patent Proceeds Assignment, the Daic
Parties have reconveyed the Patent Ownership Interest to Calypso;
NOW, THEREFORE, in
consideration of the payments set forth herein, and other good and valuable
consideration, the receipt and sufficiency of which are acknowledged herewith by
the Parties, and the mutual covenants and promises hereinafter made, it is
mutually agreed by and between the parties, as follows:
1. Definitions. The
following capitalized terms used in this Patent Proceeds Assignment have the
following meanings:
“Proceeds”
shall mean the value of all consideration paid to Calypso attributable
to: (i) the revenues or amounts or value realized by Calypso in
connection with the use, sale, or importation of a method or product falling
within at least one claim of an ASNAP Patent, (ii) the license of ASNAP Patent
to a third party, (iii) the assignment of the ASNAP Patents to a third party;
and/or (iv) any and all other revenue of any kind whatsoever realized by Calypso
arising from, by, through or under, the ASNAP Patents, further including but not
limited to all monies, revenues, and non-monetary consideration received in
settlement of or as damages for (including enhanced damages) any dispute, suit,
action, or claim arising out of or related to the Patents.
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“Proceeds”
shall mean the value of all consideration paid to Calypso attributable
to: (i) the revenues or amounts or value realized by Calypso in
connection with the use, sale, or importation of a method or product falling
within at least one claim of a Xxxxxx Patent(s), (ii) the license of Xxxxxx
Patents to a third party, (iii) the assignment of the Xxxxxx Patents to a third
party; and/or (iv) any and all other revenue of any kind whatsoever realized by
Calypso arising from, by, through or under, the Xxxxxx Patents, further
including but not limited to all monies, revenues, and non-monetary
consideration received in settlement of or as damages for (including enhanced
damages) any dispute, suit, action, or claim arising out of or related to the
Patents.
“Affiliate”
shall mean with respect to any specified Person, any Person that, directly or
indirectly, controls, is controlled by, or is under common control with, such
specified Person, through one or more intermediaries or
otherwise.
“Person”
shall mean any individual, corporation, partnership, joint venture, association,
joint-stock company, trust, unincorporated organization, limited liability
company or government or other entity.
2. Term. This
Patent Proceeds Assignment shall be effective until the expiration of all ASNAP
Patents and all Xxxxxx Patents (the “Term”).
3. Payment. The
Daic Parties shall be paid five percent (5%) of the Proceeds (the “ASNAP and
Xxxxxx Payments”) for the term of this Agreement.
All ASNAP and Xxxxxx Payments shall be
made and delivered to the Daic Parties in care of the Xxxxx Xxxxxxxxxx, P.C.,
trust account. Simultaneous with the execution of this Patent
Proceeds Assignment, Xxxxxxxxxx shall provide Calypso with the details of the
Xxxxx Xxxxxxxxxx, P.C. trust account and shall update such information as it may
change from time to time. To the extent that ASNAP and Xxxxxx
Payments are to be made from revenues received from a third party, whether
through sale, licensing or otherwise, Calypso shall require that such third
party make all ASNAP and Xxxxxx Payments directly to the Xxxxx Xxxxxxxxxx, P.C.
trust account. To the extent of any agreement executed by Calypso
prior to the effective date hereof, which agreements may eventually lead to
payments under this Patent Proceeds Assignment, Calypso shall provide in advance
under such agreements for the possible eventual termination of the Daic Parties
ownership interest in the ASNAP and Xxxxxx Patents and commencement of interest
pursuant to this Patent Proceeds Assignment.
All of said ASNAP and Xxxxxx Payments
shall be due and payable to the Daic Parties and/or their respective designees
(or to his Estate should Daic be deceased) within thirty (30) days of the end of
each calendar quarter for Proceeds received by Calypso or due to Calypso during
the immediately preceding calendar quarter.
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4. Payment
Reports. Along with the ASNAP and Xxxxxx Payments, Calypso
shall also provide to the Daic Parties, within thirty (30) days after the end of
each calendar quarter during which any ASNAP and Xxxxxx Payments are due, a
report, duly certified by an officer or authorized agent of Calypso having
capacity to so certify, specifying: (a) the time period covered by the report;
(b) the total Proceeds received by or due to Calypso in such quarter; and (c)
the ASNAP and Xxxxxx Payments amount payable to the Daic Parties (the
“Reports”).
5. Audit. Calypso
shall make and retain true and accurate records, files and books of account
containing all the data reasonably required for the full computation and
verification of the ASNAP and Xxxxxx Payments to be paid and the information to
be given in the Reports for no less than three (3) years after each such
calendar quarter. Once each year during the Term of this Agreement,
Calypso shall permit an independent audit of such records, files and books of
account, by an independent accountant of the Daic Parties’ choosing (the “Daic
Parties’ Accountant”), and at the Daic Parties’ cost (except as provided below),
upon reasonable notice to Calypso by the Daic Parties. The selection of the Daic
Parties’ Accountant shall be subject to the approval of Calypso, which approval
shall not be unreasonably withheld or delayed. The Daic Parties’
Accountant shall limit his/her review only to those materials reasonably
necessary, in the discretion of said Daic Parties’ Accountant, to determine the
accuracy of said Reports and the amounts due and owing under this Patent
Proceeds Assignment, if any. The Daic Parties’ Accountant shall
maintain the confidentiality of all materials so reviewed, even as to the Daic
Parties, limiting his/her reporting (herein, the “Daic Parties’ Accountants’
Report”) to the Daic Parties , with a copy to Calypso, only to whether or not
the Reports are accurate and the amount of any discrepancy. If, as a
result of any such audit, it is determined that additional payments were due and
owing to the Daic Parties from Calypso (“Additional Payment”), such Additional
Payment shall be paid to the Daic Parties within thirty (30) days of the mutual
verification of said discrepancy by Calypso. In the event the Parties
are unable to agree as to the Additional Payment, if any, within sixty (60) days
of the submission of the Daic Parties’ Accountant’s Report to the Daic Parties
with a copy to Calypso, then the Parties shall jointly engage the services of
either the Houston office of UHY Ltd. or BKD (so long as none of the parties
have utilized the services of such firm(s) within the five year period prior to
such engagement), as determined by agreement of the Daic Parties and Calypso
(and if no such agreement can be made, then chosen at random by a drawing
supervised by counsel for the Parties), with the accounting firm so chosen
referred to herein as the “Neutral Accountant”. Upon such selection,
the parties shall submit the Reports, together with the Daic Parties’
Accountant’s Report and the work papers of the Daic Parties’ Accountant, to the
Independent Accountant for review, whose determination as to the accuracy of
said Reports and the amount of any discrepancy shall be final. If
both of such firms are excluded as a result of having worked for either of the
Daic Parties or Calypso, the parties shall jointly choose another regional
accounting firm as the Neutral Accountant. The cost of such audit
shall be shared equally by Calypso and the Daic Parties; however, in the event
the Daic Parties’ Accountants’ Report reveals an error in the Reports of at
least five percent in favor of the Daic Parties and either such report is
accepted by Calypso or such an error of not less than five percent is confirmed
by the Neutral Accountant, then the cost of both the Daic Parties’ Accountant’s
Report and the audit of the Neutral Accountant shall be paid by Calypso (or any
amounts already paid by the Daic Parties refunded by Calypso to the Daic
Parties).
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6. General
Provisions: Nothing contained in this Agreement shall be
construed as:
(a) Conferring
to the Daic Parties any ownership in and to said ASNAP Patent or Xxxxxx
Patents.
(b) Requiring
an ownership interest in said ASNAP Patent or Xxxxxx Patents on the part of the
Daic Parties as a condition for receiving the ASNAP and Xxxxxx Payments set
forth herein.
7. Transaction
Restriction. As provided in the Settlement Agreement and
reaffirmed hereby, Calypso shall not license or sell the ASNAP Patent or Xxxxxx
Patents to any Affiliate or other related party, or in any other transaction
that is not at arms length between the parties, without the prior written
consent of the Daic Parties.
8. Notice. Any
notices or other communications required or permitted under, or otherwise in
connection with this Patent Proceeds Assignment, shall be in writing and shall
be deemed to have been duly given (i) when delivered in person; (ii) upon
confirmation of receipt when transmitted by facsimile transmission (but only if
followed by transmittal by national overnight courier or hand delivery on the
next business day; (iii) three (3) days following deposit in a regularly
maintained receptacle for the United States mail, registered or certified,
postage fully prepaid; or (iv) on the next business day if transmitted by
national overnight courier, in each case to the address set forth below or at
such other address as such party may have previously specified by notice
provided in accordance herewith:
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If to Calypso,
to:
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Calypso
Wireless, Inc.
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0000
XX 00xx
Xxxxxx, Xxxxx 000
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Xxxxx,
Xxxxxxx 00000
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Attention:
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Facsimile
No.
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with a copy
to:
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Zimmerman,
Axelrad, Xxxxx, Xxxxx & Xxxx, P.C.
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0000
Xxxx Xxx Xxxxxxxxx, Xxxxx 0000
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Xxxxxxx,
Xxxxx 00000-0000
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Attn: Xxxxx
Xxxxxxxxx
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Facsimile
No. (000)000-0000
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If to the Daic Parties, to:
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Drago
Daic
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xx
xxxx xxxxxxxx xxxx xxxxx
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xxxxxx
xxxxx xxxxx
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xxxxxxxxx
xx xxxxxxxxxx
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and
to:
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Xxxxx
Xxxxxxxxxx, P.C.
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0000
Xxxxxx Xxxxxxxxx
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Xxxxxxx,
Xxxxx 00000
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Facsimile
No. (000)000-0000
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with a copy
to:
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Xxxxx
& Xxxxxx, P.C.
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0000
Xxx Xxxxxx, Xxxxx 0000
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Xxxxxxx,
Xxxxx 00000
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Attention: Xxxx
X. Xxxxxx
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Facsimile
No.: (000) 000-0000
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9. Limitations
on Restrictions. Nothing contained in this Agreement shall be
construed as restricting the rights of Calypso to make, have made, import, use,
sell or ship goods covered under the ASNAP Patent or the Xxxxxx Patents, or
except as expressly provided herein, to restrict Calypso’s rights to license or
assign the ASNAP Patent and the Xxxxxx Patents.
10. Enforceability. If
any provision of this Agreement shall be held to be invalid or unenforceable for
any reason, the remaining provisions shall continue to be valid and
enforceable. If a court finds that any provision of this Agreement is
invalid or unenforceable, but that by limiting such provision it would become
valid and enforceable, then such provision shall be deemed to be written,
construed, and enforced as so limited.
11. Authority. Each
party represents and warrants to the other that it has the full right, power and
authority to enter into this Agreement and to perform all of its obligations
hereunder, and that its below-signed representative has authority to execute
this Agreement on its behalf.
12. No Waiver
or Release of Settlement Agreement. By entering into this
Assignment, the parties do not waive or release any provision of the Settlement
Agreement.
13. Applicable
Law. It is agreed by the parties that this Agreement
shall be construed according to the laws of the United States and of the State
of Texas, U.S.A., and that any actions to enforce the terms hereof, or for
breach hereof, shall be brought in either the federal or state courts of the
State of Texas, without regard to principles of conflicts of
laws.
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14. Entire
Agreement. This Agreement, the Settlement Agreement, and
the other documents described in the Settlement Agreement set forth the entire
agreement and understanding between the parties as to the subject matter hereof
and merge all prior discussions between them, and none of the parties shall be
bound by any conditions, definitions, warranties, understandings or
representations with respect to such subject matter other than as expressly
provided herein or as duly set forth on or subsequent to the date hereof in
writing and signed by a proper and duly authorized officer or representative of
the party to be bound thereby.
15. No
Partnership. Nothing in this Agreement shall in anyway be
interpreted as creating a partnership, joint venture or any other joint business
endeavor between Calypso and the Daic Parties, or either of
them.
16. Headings. The
paragraph order and headings are for convenience only, and shall not be deemed
to affect in any way the language, obligations or the provisions to which they
refer.
IN WITNESS WHEREOF, this
Patent Proceeds Assignment has been signed by the respective parties by their
duly authorized officers or representatives as of the day and year first above
written.
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CALYPSO:
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CALYPSO
WIRELESS, INC.,
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a
Delaware corporation
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By: /s/
Xxxxxx X.
Xxxxxx
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Name: Xxxxxx
X.
Xxxxxx
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Title: CFO
&
Director
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ASSIGNEE:
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XXXXX
XXXXXXXXXX, P.C.,
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a
Texas professional corporation
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By:_________________________________
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Xxxxx
Xxxxxxxxxx, President
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____________________________________
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DRAGO
DAIC
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