EXHIBIT 10.9
AMENDED AND RESTATED
XXXX OF SALE AND ASSIGNMENT
This Amended and Restated Xxxx of Sale and Assignment (the "Agreement") is
made effective as of October 1, 1999, by and between X10 Ltd., a Bermuda
corporation (the "Assignor") and X10 Wireless Technology, Inc., a Delaware
corporation (the "Company").
RECITALS
A. Assignor and the Company have previously entered into that certain
Xxxx of Sale and Assignment (the "Xxxx of Sale") dated as of October 1, 1999,
pursuant to which Assignor assigned to the Company certain technology,
intellectual property rights and products related to broadband wireless- and
powerline-based home and small office networking;
B. The Xxxx of Sale did not fully set forth the entire understanding
between the parties with respect to the technology, intellectual property rights
and products transferred under the Xxxx of Sale; and
C. The parties now wish to amend and restate the Xxxx of Sale in order to
clarify and memorialize the correct understanding of the parties with respect to
the technology, intellectual property rights and products transferred under the
Xxxx of Sale and to further describe the obligations and practices of the
parties in connection therewith.
AGREEMENT
In consideration of the foregoing, the mutual covenants and conditions
contained in this Agreement and other good and valuable consideration, the
receipt of which is hereby acknowledged, the parties agree as follows:
1. Assignor hereby irrevocably assigns, sells, transfers and conveys to
the Company all right, title and interest in and to the property described in
Exhibit A attached hereto and all applicable intellectual property rights
related thereto, on a worldwide basis, related thereto, including, without
limitation, copyrights, trademarks, trade secrets, patents, patent applications,
moral rights, contract and licensing rights (the "Property"). In consideration
of such transfer of the Property, the cancellation of a promissory note in the
principal amount of One Million Twenty-Four Thousand Three Hundred Dollars
($1,024,300) held by Assignor and for the execution and delivery by Assignor of
other agreements between Assignor and the Company that are effective on even
date herewith, the Company has issued to Assignor Ten Million (10,000,000)
shares of the Company's Common Stock (the "Payment"). Assignor hereby
acknowledges that it retains no right to use the Property and agrees not to
challenge the validity of the Company's ownership of the Property.
2. Upon each request by the Company, and at the Company's expense,
Assignor agrees to promptly execute documents, testify and take other acts as
the Company may deem necessary or desirable to procure, maintain, perfect, and
enforce the full benefits, enjoyment, rights, title and interest, on a worldwide
basis, of the Property assigned hereunder, and render all reasonable assistance
in making application for and obtaining original, divisional, renewal, or
reissued utility and design patents, copyrights, mask works, trademarks, trade
secrets, and all other technology and intellectual property rights throughout
the world related to any of the Property, in the Company's name and for its
benefit. Assignor hereby assigns to the Company any and all claims, of any
nature whatsoever, which Assignor now has or hereafter may have for infringement
of any Property assigned hereunder. In the event the Company is unable for any
reason, after reasonable efforts, to secure Assignor's signature on any
1.
document needed in connection with the actions specified herein, Assignor hereby
irrevocably designates and appoints the Company and its duly authorized officers
and agents as its agents and attorneys in fact, which appointment is coupled
with an interest, to act for and in its behalf to execute, verify and file any
such documents and to do all other lawfully permitted acts to further the
purposes of this paragraph with the same legal force and effect as if executed
by Assignor. Assignor hereby assigns to the Company any and all claims, of any
nature whatsoever, which Assignor now has or hereafter may have for infringement
of any Property assigned hereunder.
3. Assignor further agrees to deliver to the Company upon execution of
this Agreement any and all tangible manifestations of the Property, including,
without limitation, all notes, records, files and tangible items of any sort in
its possession or under its control relating to the Property. Such delivery
shall include all present and predecessor versions. In addition, from and after
the execution of this Agreement, Assignor agrees to provide to the Company, at
the expense of the Company, competent and knowledgeable assistance to facilitate
the transfer of all information, know-how, techniques, processes and the like
related to such tangible manifestations and otherwise comprising the intangible
aspects of the Property.
4. Assignor represents and warrants to the Company that (a) Assignor is
the sole owner of the Property and has full and exclusive right to assign the
rights assigned herein, (b) Assignor has full right and power to enter into and
perform this Agreement without the consent of any third party, (c) all of the
Property is free and clear of all claims, liens, encumbrances and the like of
any nature whatsoever, (d) the Property is an original work of Assignor, (e)
none of the Property infringes, conflicts with or violates any copyright,
trademark, trade secret or other intellectual property right of any kind
(including, without limitation, any trade secret) or similar rights of any third
party or, to Assignor's knowledge, any patent, (f) Assignor was not acting
within the scope of employment or any other service arrangements with any third
party when conceiving, creating or otherwise performing any activity with
respect to the Property, (g) the execution, delivery and performance of this
Agreement does not conflict with, constitute a breach of, or in any way violate
any arrangement, understanding or agreement to which Assignor is a party or by
which Assignor is bound, and (h) Assignor has maintained the Property in
confidence and has not granted, directly or indirectly, any rights or interest
whatsoever in the Property to any third party.
5. Assignor further represents and warrants to the Company that no claim,
whether or not embodied in an action past or present, of any infringement, of
any conflict with, or of any violation of any patent, copyright, trade secret or
other intellectual property right or similar right, has been made or is pending
or threatened against Assignor relative to the Property. Assignor agrees to
promptly inform the Company of any such claim arising or threatened in the
future with respect to the Property or any part thereof.
6. Assignor will indemnify and hold the Company harmless from any and all
claims, losses, liabilities, damages, expenses and costs (including attorneys'
fees and court costs) which result from a breach or alleged breach of any
representation or warranty of Assignor (a "Claim") set forth in this Agreement;
provided, that the Company gives Assignor written notice of any such Claim and
Assignor has the right to participate in the defense of any such Claim at its
expense. Each party shall also indemnify the other for any claims relating to
taxes that may be levied on such party that arise primarily as a result of the
other party's conduct of its business and activities.
7. For purposes of not preventing the Company from using the Property,
Assignor hereby grants to the Company a license to any and all ideas, concepts,
inventions, designs, hardware and software, or other property and proprietary
information of Assignor (the "Assignor Property") that is reasonably necessary
for the Company (a) to use the Property for its various intended uses, and (b)
to design, develop and manufacture improvements and modifications to the
Property and new products based upon the Property.
2.
Such license shall be non-exclusive, perpetual, royalty-free, fully-
sublicensable and worldwide, with rights to make, use, copy, reproduce, modify,
distribute, market, import, sell, and offer to sell works deriving from,
incorporating or integrating the Assignor Property, in connection with the
Company's business, and not for use or sale by the Company or any third party as
a standalone product.
8. This Agreement and the Exhibit attached hereto constitute the entire,
complete, final and exclusive understanding and agreement of the parties hereto
with respect to the subject matter hereof, and supersedes any other prior or
contemporaneous oral or written understanding or agreement. This Agreement may
be modified or amended only by mutual written consent of the parties; provided,
however, that after the effective date of the Company's first firm commitment
underwritten public offering of its securities registered under the Securities
Act of 1933, as amended, any such modification or amendment shall be effective
only if it is approved by a majority of the directors serving on the Audit
Committee of the Board of Directors of the Company.
9. This Agreement will be governed and construed in accordance with the
laws of the State of Washington as applied to transactions taking place wholly
within Washington between Washington residents. The parties hereby expressly
consent to the exclusive personal jurisdiction of and venue in the state and
federal courts located in King County, Washington for any lawsuit filed there
arising from or related to this Agreement. Notwithstanding the foregoing,
however, the Company may bring an action for injunctive or equitable relief in
any jurisdiction it deems reasonably necessary to protect its proprietary
rights. This Agreement shall not be subject to or governed by the United
Nations Convention on Contracts for the International Sale of Goods, which is
specifically disclaimed by the parties.
10. If any provision of this Agreement is found invalid or unenforceable,
in whole or in part, the remaining provisions and partially enforceable
provisions will, nevertheless, be binding and enforceable.
11. Failure by either party to exercise any of its rights hereunder shall
not constitute or be deemed a waiver or forfeiture of such rights.
12. The provisions hereof shall inure to the benefit of, and be binding
upon, the successors, assigns, heirs, executors and administrators of the
parties hereto.
13. Each party to this Agreement acknowledges that Cooley Godward LLP
("Xxxxxx Godward"), outside general counsel to the Company, represents only the
Company with respect to the matters contained in this Agreement and does not
represent Assignor in connection herewith. Assignor acknowledges that and
agrees that it should not rely upon the advice of Cooley Godward with respect to
the matters contained herein, and that it has had adequate opportunity to obtain
the advice of independent legal counsel with respect to the matters contained in
this Agreement.
3.
In Witness Whereof, the undersigned have executed this Amended and Restated
Xxxx of Sale and Assignment as of the date set forth below.
X10 Ltd.
By: /s/ Xxxxxx Xxxxxxxxx
---------------------------------------------
(signature)
Name:
-------------------------------------------
(please print name)
Title:
------------------------------------------
X10 Wireless Technology, Inc.
By: /s/ Xxxx Xxxxxxxx
---------------------------------------------
(signature)
Name: Xxxx Xxxxxxxx
-------------------------------------------
(please print name)
Title: CFO
------------------------------------------
4.
STATE OF WASHINGTON )
) ss.
COUNTY OF KING )
I certify that I know or have satisfactory evidence that
________________________ is the person who appeared before me, and said person
acknowledged that he signed this instrument, on oath stated that he was
authorized to execute the instrument and acknowledged it as the
______________________ of X10 Ltd. to be the free and voluntary act of such
corporation for the uses and purposes mentioned in this instrument.
DATED:
------------------------------ ------------------------------------
Print Name:
-------------------------
NOTARY PUBLIC for the State of
Washington, residing at
------------------------------------
My appointment expires:
------------------------------------
5.
EXHIBIT A
DESCRIPTION OF PROPERTY
I. Products. All of the products owned by X10 Ltd. that relate to multiple
frequency wireless transmittors and cameras and all wireless remotes that are
used in conjunction with the 2.4GHz video senders and all products developed
specifically at the request of X10 Wireless Technology, Inc. (the "Products")
including, without limitation, the products listed below, all right, title and
interest in the designs and development processes of such Products, all
documentation associated with such Products, marketing and promotional materials
for such products and any ancillary technology owned by Assignor that is
necessary for Company to own and fully use the Products.
Product # Product Name
--------- ------------
AK10A MP3 Audio Sender
AK11A MP3 Audio Sender + MP3 Remote
AR10A MP3 Audio Receiver
AT10A MP3 Audio Transmitter
CK17A FireCracker Interface
CK18A FireCracker
CK19A FireCracker II
CM17A Computer Interface, 310 MHz RF Transmitter, powered from serial port
CR12A Camera Scanning Remote
KR19A Keychain remote (SlimFIRE) for Home Control
KR21A Keychain remote (similar to KR19A but 4 # buttons + On/Br-Off/Dim)
KR22A Key chain remote (similar to KR19A but 4 separate ON-OFFs + Br/Dim)
MK19A Mouse Remote and Receiver Kit
MR26A MP3/Multimedia RF Receiver for use with UR51A and UR52A remotes
MS13A HawkEye Indoor Motion Sensor
MS14A EagleEye Indoor/Outdoor Motion Sensor
PHR04 Pro SlimLITE Key fob
PHR05 Pro Keychain Remote, similar to KR19A but 0 XX-XXX xxxxxxx
XXX00 Pro 3 unit + Bright/dim Wireless W.S. (for use with any X-10 RF Receiver)
PHW04D Pro HomePlate (TM)
PHW04D (G) HomePlate (TM) Gold
PMS02 Pro HawkEye (TM) Indoor Motion Sensor
PS10A Addressable Power Supply for Video Senders (replaced by XM10A)
PT30A Power Supply for XX00X
XX00X Power Supply for XX00X
XX00X Power supply for SC16A
PT31A Power supply for SC16A
RCR17 Retail Camera Scanning Remote
RKR24 Retail SlimLITE Key fob
RLM20 Retail Mini Screw-In Lamp Module
RMS19 NITEOwl (TM) Retail Indoor/Outdoor Motion Sensor
RSC20 Retail version of SC15A-W. (WHITE)
RSS18 Retail HomePlate (TM)
Exhibit A-1.
RSS20 Retail HomePlate (TM) Gold
RVK35 Retail Video Sender
RVK54 Retail Scan Cam
RVR35 Retail Video Receiver + PR30A Power Supply
RVT35 Retail Video Transmitter + PT30A Power Supply
RXC15 Retail camera with 2.4 GHz transmitter built-in
RXC16 Retail b/w version Camera with 2.4 GHz transmitter built-in
RXM15 Retail version of XM10A
RXX16 Retail XC10A camera with 2.4 GHz transmitter built-in + XM10A P.S.
RXX17 Retail XC11A b/w camera with 2.4 GHz transmitter plus power supply
SC15A Xcam Anywhere (Indoor/Outdoor) Camera with mic. (XXXX)
SC15A-W Xcam Anywhere (Indoor/Outdoor) Camera with mic. (WHITE)
SC16A Xcam Anywhere (Indoor/Outdoor) Camera with mic. (XXXX)
SC17A Xcam Anywhere (Indoor/Outdoor) Camera with mic. (WHITE)
SC18A Xcam Anywhere (Indoor/Outdoor) Camera with mic. (XXXX) new IC + XM10A
SC20A B/W Xcam Anywhere (XXXX)
SC21A B/W version of Xcam Anywhere (XXXX 60 ft. cord + XM10A)
SS13A StyleSwitch 3 unit + dim
SS15A StyleSwitch 3 unit + dim (Gold Trim)
SW10A MacroRecorder Software
SW11A Fuse Software
SW12A Boom Software
SW15A X-Ray Vision Software
SW16A Boom II Software
SW17A IR Commander software for use with UX17A
UR47A X-10 DVD 6-in-1 RF: TV, VCR, CBL, AUX, ,SAT, DVD
UR51A MP3 Remote, same as UR47A but with PC features added.
UR52A Real Media Remote, same as UR47A but with PC features added.
UX17A RF to IR A/V Blaster with plug-in power supply
VA10A USB to Video Adapter
VA23A VGA to Video Adapter
VC10A Indoor Color Camera
VC12A Indoor Color Camera with mic
VK20A Video Sender kit
VK22A Video Sender kit + UR23A
VK25A Big Picture Kit
VK30A New Video Sender kit
VK32A XCam kit. Xxxxxxxx XX00X, XX00X, XX00X, XX00X, XX00X
XX00X XCam Anywhere kit. Xxxxxxxx XX00X, XX00X, XX00X, XX00X, XX00X
XX00X DVD Anywhere kit. Xxxxxxxx XX00X, XX00X, XX00X, XX00X, XX00X + cable
VK36A MP3 Anywhere kit. Xxxxxxxx XX00X, XX00X, XX00X, XX00X, XX00X + cable
VK37A Xcam with mic Video Sender kit (VR30A, XX00X, XX00X, XX00X, XX00X)
VK38A Video Sender kit with camera, CR12A, XM10A, (qty and mix to TBT)
VK41A SC15A-W and VT30A (includes PT30A)
VK42A VK40A plus IN19A (instructions) Now VR30A + IN19A
VK43A VC10A and VT30A (includes PT30A)
Exhibit A-2.
VK44A SC15A-W + PT31A + 60 ft. cable
VK45A XX10A, VR30A, RCA/RCA cable, FF cable (replaced by VK48A)
VK47A UR51A MP3 Remote plus XX00X Xxxxxxxx
XX00X XX00X, XX00X (xxxx), XXX/XXX cable, FF cable
VK49A XC10A camera + XM10A addressable PS + VR31A Video Receiver
VK50A VA10A USB Video Adapter + SW15A Xray Vision Software
VK51A SC15A + VK30A + VK50A (VA10A + SW15A) + IN22A instructions
VK52A MP3 Anywhere 2000 kit (VK30A, VK47A, SW16A, ZC13A, IN23A
VK53A DVD Anywhere 2000 kit (VK30A, VK47A, SW16A, ZC13A, IN24A
VK55A XRay Vision: XX10A, VR30A, VA10A, SW15A, IN25A
VK56A XCam Anywhere Xxx xxxxx (VK30A, SC15A-W, IN13A)
VR20A Large Video Receiver (part of VK20A and VK22A Kits)
VR30A Small Video Receiver + PR30A Power Supply (* was VK40A)
VR31A Small Video Receiver (ONE audio connector) + PR30A Power Supply
VT20A Large Video Transmitter (part of VK20A and VK22A Kits)
VT24A Large Video Transmitter (part of VK25A Big Picture Kit)
VT30A Small Video Transmitter + PT30A Power Supply (* was VK39A)
XC10A Camera with 2.4 GHz transmitter built-in
XC11A b/w version of XC10A Camera with 2.4 GHz transmitter built-in
XM10A 100mA X10 controlled power supply for the XC10A camera.
XM11A 200mA X10 controlled power supply for the XC10A camera
XPC10 Pro XX00X xxx XX00X (xxxxxxxx XX00X)
XPC20 Pro SC15A-W and VT30A (includes PT30A)
XSC15 Pro Xcam Anywhere (Indoor/Outdoor) Camera with mic. (WHITE)
XSC17 Pro SC15A-W + PT31A + 60 ft. cable
XVC10 Pro Indoor Color Camera
XX10A XC10A camera with 2.4 GHz transmitter built-in + PT30A power supply
XX11A XC10A camera with 2.4 GHz transmitter built-in + XM10A power supply
XX12A XC11A b/w camera with 2.4 GHz transmitter plus power supply
ZB10A-100 Battery Pack for XC10A camera
ZB10A-200 Battery Pack for XC10A camera with on/off switch
ZC13A MP3 cable
ZC14A XCam Anywhere Adapter Cable
ZT10A Tripod for XCams
II. Technology. Any and all ideas, concepts, know-how, inventions, designs,
hardware and software, or other proprietary information of Assignor, related to
multiple frequency wireless transmittors or otherwise, that is used or applied
in the design, development or manufacture of wireless products, including,
without limitation, the Products.
III. Intellectual Property Rights. All patents, patent applications,
copyrights, logos, trademarks and service marks related to the Products and the
Technology and now or hereafter owned by Assignor including, without limitation,
the following:
Patents and Patent Applications
Multi-Camera Surveillance and Monitoring System (No. 09/539,986)
Exhibit A-3.
Voice-Operated R/C PC Jukebox (No. 09/566,008)
RF PC Interface (No. 09/390,540)
Method For Determining Extent of Graphics Content to Deliver to Network
User (No. pending)
[Logos]
[LOGO OF BIG GAME(TM)] [LOGO OF BIG PICTURE(TM)] [LOGO OF BOOM(TM)] [LOGO OF BOOM 2000(TM)]
[LOGO OF DVD ANYWHERE 2000(TM)] [LOGO OF EAGLE EYE(TM)] [LOGO OF FIRECRACKER(TM)] [LOGO OF GIGACAM(TM)]
[LOGO OF HAWKEYE MOTION SENSOR(TM)] [LOGO OF MACRO RECORDER [LOGO OF MP3 DIGITAL STUDIO [LOGO OF MP3(TM)]
FIRECRACKER] ANYWHERE 2000]
[LOGO OF MP3 DIGITAL STUDIO [LOGO OF SCAN CAM(TM)] [LOGO OF SLIMLINE SWITCH(TM)] [LOGO OF SLIMLINE GOLD
ANYWHERE] GOLD SWITCH(TM)]
[LOGO OF SOCKET ROCKET(TM)] [LOGO OF SOCKET ROCKET(TM)] [LOGO OF STICK-A-SWITCH(TM)] [LOGO OF STYLE SWITCH(TM)]
[LOGO OF ULTIMATE REMOTE(TM)] [LOGO OF X10 WIRELESS [LOGO OF X10 WIRELESS [LOGO OF X10 WIRELESS
TECHNOLOGY, INC.(R)] TECHNOLOGY, INC.(R)] TECHNLOGOY, INC.(R)]
[LOGO OF XCAM2(TM)] [LOGO OF X10 XRAY [LOGO OF XRAY VISION(TM)] [LOGO OF XCAM(TM)]
VISION(TM)]
[LOGO OF DVD VIDEO
ANYWHERE]
Exhibit A-4.
Trademarks
Registered Trademarks and Trademark Applications
Firecracker (No. 75/831400 )
Common Law Trademarks
Xcam
Xcam II
Gigacam
ScanCam
Xray Vision
Ultimate Remote
DVD Anywhere
MP3 Anywhere
DVD Anywhere 2000
MP3 Anywhere 2000
Big Picture
Big Game
Firecracker
Hawkeye
Eagleeye
Stick-A-Switch
StyleSwitch
Slimline
Slimline Gold
MacroRecorder
Fuse
Boom
Boom II
MouseREMOTE
SlimFire
Digipad
IR Commander
X10 Wireless Technology
Socket Rocket
Ultimate Remote
Video Sender
Exhibit A-5.
