EXHIBIT 99.11
PATENT ASSIGNMENT
THIS PATENT ASSIGNMENT ("Assignment") is made the 21st day of January,
2005, and is entered into by and between Citel Technologies Limited, company
number 02459517, a corporation organized under the laws of England and Wales
("Purchaser"), and Verso Technologies, Inc., a Minnesota corporation, MCK
Communications, Inc., a Nevada corporation, MCK Communications, Inc., a Delaware
corporation, MCK Telecommunications Inc., a Yukon Territory corporation, and
Digital Techniques, Inc., a Texas corporation (collectively, "Sellers"). Each of
the foregoing parties is referred to herein individually as a "Party" and
together as the "Parties."
RECITALS:
WHEREAS each Seller is the sole and exclusive owner of all rights in and
to the U.S. and foreign patents and pending patent applications as listed in
Annex A hereto and any and all divisions, continuations, continuations in part,
re-issues, re-examinations and extensions of the same and any counterparts and
any applications claiming priority from the same, (the "Assigned Patents"), and
the Sellers and Purchaser have agreed that the Purchaser is to acquire all of
Sellers' right, title and interest in and to the Assigned Patents,
NOW, THEREFORE, each Seller has entered into this Assignment to
acknowledge and confirm the ownership of the Assigned Patents is vested in such
Seller and to assign all interest in the same to the Purchaser.
IT IS AGREED as follows:
1. Assignment.
1.1 Each Seller as the sole and exclusive owner of the applicable Assigned
Patents hereby irrevocably sells, assigns, transfers, conveys and delivers to
Purchaser and its successors and assigns, and Purchaser hereby purchases and
accepts from such Seller, all of Sellers' right, title and interest in and to
the Assigned Patents including without limitation all reissue, reexamination,
continuations, and foreign corresponding patents that may issue therefrom and
the rights to xxx and recover damages and other remedies for past infringements
of the same and all right title and interest in any physical embodiment of the
Assigned Patents.
1.2 To the extent that any rights to be assigned under Clause 1.1 above
are not wholly and/or validly assigned to the Purchaser, the Sellers shall hold
them upon trust for the full and exclusive benefit of the Purchaser.
2. Cooperation and Recordation. Each Seller hereby agrees to cooperate
with Purchaser as reasonably necessary and to execute any further documents
and/or deed and/or do any such things as the Purchaser may require to give full
effect to and perfect the rights of Purchaser in the Assigned Patents and/or the
benefit of this Assignment. The Parties agree that Purchaser may record this
Assignment in the United States Patent and Trademark Office and the
Patent Assignment
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equivalent governmental authority in any jurisdiction applicable to the Assigned
Patents, and take any other action, to effect the transfer of the rights
contemplated herein. Purchaser shall be responsible for all reasonable expenses
and costs associated therewith. Seller hereby authorizes and requests that the
Commissioner of Patents and Trademarks of the United States, and the equivalent
governmental authority in any jurisdiction applicable to the Assigned Patents,
issue to, and record in the name of, Purchaser all right, title, and interest in
and to the Assigned Patents. Sellers will deliver up to Purchaser all documents,
materials and/or other media which may be in the Sellers' possession, power or
control and which comprises or contains any part of or information in relation
to the Assigned Patents (including all patent attorney's files and papers) with
thirty (30) business days after execution of this Agreement, and each Seller
undertakes to take such action as the Purchaser may reasonably require to assist
the Purchaser in bringing or defending any proceedings relating to the Assigned
Patents.
3. Moral Rights. Each Seller irrevocably and unconditionally waives, and
has procured or shall procure from all employees and third parties who have
created works for or on behalf of such Seller in relation to the MCK business,
the irrevocable and unconditional waiver of all their moral rights in such
works.
4. Miscellaneous. This Assignment shall be governed by, and interpreted in
accordance with, the laws of England and Wales, without reference to its
conflict of laws rules. Any provision of this Assignment may only be amended,
modified, waived or supplemented in whole or in part at any time by an agreement
in writing among the Parties executed in the same manner as this Assignment. No
failure on the part of any Party to exercise, and no delay in exercising, any
right shall operate as waiver thereof, nor shall any single or partial exercise
by either Party of any right preclude any other or future exercise thereof or
the exercise of any other right. This Assignment shall bind and inure to the
benefit of the respective parties and their assigns, transferees and successors.
It is intended by the Parties that this Assignment shall be effected as a deed
and may be executed in two or more counterparts, each of which shall be deemed
to constitute an original, but all of which together shall constitute one and
the same document.
[Remainder of Page Intentionally Left Blank]
Patent Assignment
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IN WITNESS WHEREOF, the Parties have caused this Patent Assignment to be
executed and delivered as a deed on the date first written above by their
respective officers thereunto duly authorized.
SELLERS:
Executed as a deed by Executed as a deed by
VERSO TECHNOLOGIES, INC. in accordance with MCK COMMUNICATIONS, INC. (NV) in
its Articles of Incorporation accordance with its Articles of Incorporation
By: /s/ Xxxxxx X. Xxxxxxx By: /s/ Xxxxxx X. Xxxxxxx
-------------------------------- ------------------------------
Name: Xxxxxx X. Xxxxxxx Name: Xxxxxx X. Xxxxxxx
------------------------------ ----------------------------
Title: Executive Vice President and Title: Vice President
Chief Financial Officer ---------------------------
-----------------------------
Executed as a deed by Executed as a deed by
MCK COMMUNICATIONS, INC. (DE) in MCK TELECOMMUNICATIONS INC. in
accordance with its Certificate of Incorporation accordance with its Articles of Incorporation
By: /s/ Xxxxxx X. Xxxxxxx By: /s/ Xxxxxx X. Xxxxxxx
------------------------------ ------------------------------
Name: Xxxxxx X. Xxxxxxx Name: Xxxxxx X. Xxxxxxx
---------------------------- ----------------------------
Title: Vice President Title: President
--------------------------- ---------------------------
Executed as a deed by
DIGITAL TECHNIQUES, INC. in accordance with
its Articles of Incorporation
By: /s/ Xxxxxx X. Xxxxxxx
----------------------------
Name: Xxxxxx X. Xxxxxxx
--------------------------
Title: Vice President
-------------------------
PURCHASER:
Executed as a deed by
CITEL TECHNOLOGIES LIMITED in accordance
with its constitution
Acting by:
/s/ Xxxxxxx Xxxxxx Xxxxxxxx
-------------------------------
Director
/s/ Xxxxxxxx X. Xxxxxxx
-------------------------------
Director / Secretary
Patent Assignment
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ANNEX A
ASSIGNED PATENTS AND PATENT APPLICATIONS
ISSUED PATENTS
U.S. PATENT
PATENT NUMBER DATE ISSUED OWNER
PBX Phone Port to Remote Phone Device US 6,516,061 02/04/2003 MCK Communications, Inc., a Nevada
B2 corporation
US5,757,897 05/26/98 Digital Techniques, Inc.
Telephone Switch Call Control Unit a Texas corporation
PATENT APPLICATIONS
United States Patent Application No. 10/199,178: System for and method of
hairpinning a remote PBX or KTS or gateway phone call to a local call,
filed on July 19, 2002.
European Patent Application Pending: System for and method of extending a
PBX phone port to a remote phone device, filed on September 18, 2001.
Japanese Patent Application Pending: System for and method of extending a
PBX phone port to a remote phone device, filed on September 18, 2001.
International PCT Patent Application No. PC/US01/29122: System for and
method of extending a PBX phone port to a remote phone device, filed on
September 18, 2001.
International PCT Patent Application No. PCT/USO3/21557: System for and
Method of Hairpinning a Remote PBX or KTS or Gateway Phone Call to a Local
Call, filed on July 19, 2002
Patent Assignment
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