ASSET PURCHASE AGREEMENT
Exhibit 10.12
This ASSET PURCHASE AGREEMENT (“Agreement”) is made and entered into as of March 16, 2007
(the “Effective Date”) by and between Actel Corporation, a California corporation with a place of
business at 0000 Xxxxxxxx Xxxxx, Xxxxxxxx Xxxx, XX 00000 (“Actel” or “Buyer”), and
BTR, Inc., a Nevada corporation with a place of business at 00000 Xxxx Xxxxxx Xxxx, Xxxxx 000,
Xxxxxxxxx, XX 00000 (“BTR”), and Advantage Logic Inc, a California corporation with a place
of business at 00000 Xxxx Xxxxxx Xxxx, Xxxxx 000, Xxxxxxxxx, XX 00000 (“ALI” and, together
with BTR, “BTR/ALI”), and, solely as to Sections 1 (Definitions), 6 (Representations and
Warranties of BTR/ALI and the Officers), 8 (Non-Assertion Covenant), 9 (Additional Obligations of
the Parties), 12 (Limitation on Liability), and 13 (Miscellaneous), Xxxxxxxx Xxxx, Xxxxx Pani, and
Xxxxxxx Xxxxxxx (collectively, the “Officers”). The Parties hereby agree as follows:
1. DEFINITIONS
1.1 Unless otherwise defined in this Agreement, capitalized terms are used in this Agreement as
defined in the Settlement Agreement or the License Agreement.
1.1.1 “Affiliate” has the meaning set forth in Rule 12b-2 of the regulations
promulgated under the Securities Exchange Act of 1934 as amended.
1.1.2 “Agreements” means this Agreement and the Settlement Agreement.
1.1.3 “Applicable Federal Rate” means the applicable federal rate for purposes of
Section 1274(d) of the Internal Revenue Code published by the Internal Revenue Service for
the then-current month on the IRS Web site’s index of applicable federal rates for mid-term
transactions that involve interest paid or accrued on an annual basis.
1.1.4 “Arbitration” means Actel Corp. v. BTR, Inc. — JAMS No. 1100046359.
1.1.5 “Assigned Contracts” means the Contracts listed on Attachment A (Assigned
Contracts List).
1.1.6 “Assigned Patents” means the patents and patent applications listed on
Attachment B.
1.1.7 “Business Day” means any day other than a Saturday, Sunday or other day on
which banks in California are authorized or required by law to close.
1.1.8 “Confidential Information” means any and all Confidential Information, as
defined or described in the License Agreement.
1.1.9 “Contracts” means all contracts and agreements related to the IP Assets
(including, without limitation, licenses, patent assignment agreements, consultant
agreements, employee agreements, and law firm engagement agreements), except for any
agreements to which Buyer is a party.
1.1.10 “Deduction” means an amount Buyer may deduct and retain from the Escrow
Amount following a final determination of a claim set forth in a Notice of Claim under this
Agreement. For purposes hereof, “a final determination of a claim” means: (a) entry of a
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final judgment in an arbitration of such claim by an arbitrator in accordance with Section
13.14 hereof; (b) execution of a memorandum setting forth the Parties’ agreement with
respect to such claim; or (c) the failure by BTR/ALI to object after receipt of a Notice of
Claim in accordance with the provisions of Section 5.2 (Procedure for Taking Deductions
from Escrow).
1.1.11 “Escrow Amount” means $3.75 million of the Purchase Price minus any
applicable Deductions.
1.1.12 “Escrow Termination Date” means the fifth anniversary of the Effective Date
of this Agreement.
1.1.13 “Inventors” means all individuals who contributed to the development of the
IP Assets. For avoidance of doubt, “Inventors” includes, but is not limited to, named
inventors on an Assigned Patent.
1.1.14 “IP Assets” means, collectively, all (a) Assigned Patents; (b) Technology and
Confidential Information delivered on or before December 15, 2000 under the License
Agreement; and (c) related copyrights and mask work rights.
1.1.15 “Liability Offset” means the amount of any indemnification obligation or
other liability to Buyer arising under this Agreement that Buyer is not able to collect due
to the provisions of Sections 5 (Escrow) or 12 (Limitation on Liability).
1.1.16 “License Agreement” means the agreement by and between BTR and Actel entered
into as of March 6, 1995, and amended and restated as of December 15, 2000.
1.1.17 “New Claim” means any claim or cause of action asserted against Actel based,
in whole or in part, upon alleged infringement or misappropriation of any patent or other
intellectual property right that is: (a) asserted by BTR/ALI or any Officer; or (b) asserted
by any Person in which an Officer has a greater than 10% direct or indirect ownership or
beneficial financial interest; or (c) asserted by any Person from which BTR/ALI or any
Officer receives more than 10% of the amount of any judgment or award made pursuant to such
claim or cause of action.
1.1.18 “Notice of Claim” means a written notice from a Party (a) stating that the
other Party, or any of its Affiliates, has breached this Agreement and providing a
reasonably detailed description of the nature of the breach or (b)(i) stating that such
Party has paid, sustained, incurred, or accrued a loss for which the other Party would have
liability or an indemnification obligation under this Agreement; (ii ) specifying the
aggregate amount of each loss or a good faith estimate thereof, in each case to the extent
known or determinable at the time; and (iii) providing a reasonably detailed description of
the nature of the breach to which such loss is related.
1.1.19 “Party” means Actel, BTR and ALI (or, when used collectively, BTR/ALI) and,
solely as to Sections 1 (Definitions), 6 (Representations and Warranties of BTR/ALI and the
Officers), 8 (Non-Assertion Covenant), 9 (Additional Obligations of the Parties), 12
(Limitation on Liability), and 13 (Miscellaneous) the Officers.
1.1.20 “Person” means an individual, a corporation, a partnership, an association, a
joint-stock company, a business trust, limited liability company, or an unincorporated
organization.
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1.1.21 “Purchase Price” means $7.5 Million USD to be paid by Buyer as set forth in
Section 4 (Payment) of this Agreement.
1.1.22 “Knowledge” means the actual knowledge, without independent investigation, of
BTR/ALI or the Officers.
1.1.23 “Settlement Agreement” means the settlement agreement of even date herewith
providing, among other things, for dismissal of the Arbitration.
1.1.24 “Technology” means any and all Technology and Joint Technology, as defined in
the License Agreement.
2. PURCHASE AND SALE OF ASSETS
2.1 Purchase and Sale of IP Assets. BTR/ALI hereby sells, transfers, conveys, assigns and
delivers to Buyer, and Buyer hereby purchases and acquires from BTR/ALI, all right, title, and
interest in and to the IP Assets, free and clear of all liens, security interests, and encumbrances
of any kind or nature. BTR/ALI, on behalf of itself and its Affiliates, acknowledges and agrees
that Buyer shall, upon the Effective Date, be deemed the successor-in-interest to the IP Assets for
the purposes of attorney-client, attorney work product and similar privileges.
2.2 Assignment of Contracts. BTR/ALI hereby assigns to Buyer, and Buyer hereby assumes,
each of the Assigned Contracts provided, however, that the rights and obligations of Assigned
Xxxxxxxxx #0, #0, and #4 (as listed on Attachment A (Assigned Contracts List)) are only assigned to
the extent they relate to the IP Assets, those IP Assets being specifically and exclusively limited
to “(a) Assigned Patents; (b) Technology and Confidential Information delivered on or before
December 15, 2000 under the License Agreement; and (c) related copyrights and mask work rights.”
For any Assigned Contract Buyer shall assume all obligations of BTR/ALI thereunder, except that
Buyer shall not assume any liabilities (a) incurred or accrued by BTR/ALI prior to the assignment
of such Contract to Buyer; or (b) triggered by the Parties’ execution of this Agreement, which
liabilities shall remain the sole responsibility of BTR/ALI.
2.3 Expenses. All sales and use taxes and recordation fees, if any, relating to the
transfer of the IP Assets to Buyer hereunder, will be evenly split by Actel and BTR/ALI. All other
taxes, fees, and costs, including but not limited to legal fees, accounting fees, consulting fees,
and other incidental expenses, will be borne by the Party that incurs such fee or cost.
2.4 IP Asset Assignment Forms. On the Effective Date, BTR/ALI shall execute and deliver to
Buyer the assignment forms attached as Attachment B (Assignments of Rights) to this Agreement.
2.5 Provision of Documents and Information. By the Effective Date, BTR/ALI will provide to
Buyer:
2.5.1 Originals or, if originals are not available to BTR/ALI, copies of all material
documents related to the IP Assets, including but not limited to patent prosecution files,
prior art, enforcement letters sent to third parties, documentation regarding the
negotiation of licenses with third parties, documents evidencing BTR/ALI’s rights in the IP
Assets, and any other documentation relating to the development, conception, or reduction to
practice
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of any of the IP Assets, including inventor notebooks, in the form and manner reasonably
requested by Buyer
2.5.2 A schedule of patent maintenance fees due within 12 months of the Effective Date,
along with documentation that BTR/ALI has paid all filing, maintenance, and other fees
associated with the Assigned Patents. In no event shall BTR/ALI be liable for the payment
of filing, maintenance, and other fees associated with the Assigned Patents due and payable
after the Effective Date.
2.6 Patent Prosecution Counsel. By the Effective Date, BTR/ALI will notify the patent
prosecution counsel responsible for the Assigned Patents that ownership of the Assigned Patents,
including all documents and files related thereto, is changing to Buyer. BTR/ALI will provide a
written conflict waiver to the patent prosecution counsel responsible for the Assigned Patents that
allows the counsel to continue to prosecute the Assigned Patents on behalf of Buyer, provided,
however, that BTR/ALI shall have no responsibility or duty with respect to other conflicts that may
exist or arise. BTR/ALI will assign any attorney-client rights, such as attorney-client privilege,
with respect to those matters to Buyer who, with respect to all such rights attaching prior to the
Effective Date, will be a co-holder with BTR/ALI, provided that any attempted waiver of any co-held
privilege by BTR/ALI will not be effective unless BTR/ALI has obtained Buyer’s express written
consent prior to the waiver. There will be no limitations on Buyer’s right to waive any co-held
privilege, except that Buyer will give BTR/ALI ten days’ written notice prior to any waiver.
3. ASSUMPTION OF LIABILITIES
3.1 No Assumption of Liabilities. Other than any obligations Buyer assumes under an
Assigned Contract, BTR/ALI, on behalf of itself and its Affiliates, acknowledges and agrees that
BTR/ALI shall be solely responsible for the payment of (and Buyer will not assume or become liable
for) any obligations, commitments, or liabilities, whether known or unknown, absolute, contingent,
or otherwise, of BTR/ALI and its Affiliates, including, without limitation, their performance or
obligations under the Assigned Contracts arising prior to the Effective Date, any obligations under
Contracts that are not Assigned Contracts, any obligations to any employees of BTR/ALI, and any
taxes or other amounts relating to the use, ownership or exploitation of the IP Assets prior to the
Effective Date (collectively “BTR/ALI Retained Liabilities”). For any obligations Buyer assumes
under an Assigned Contract, Buyer acknowledges and agrees that Buyer shall be solely responsible
for the payment of (and BTR/ALI will not become liable for) any obligations, commitments, or
liabilities, whether known or unknown, absolute, contingent, or otherwise, of Buyer, including,
without limitation, Buyer’s performance of obligations under the Assigned Contracts arising after
the Effective Date, and any obligations relating to Buyer’s use, ownership or exploitation of the
IP Assets after the Effective date (collectively “Buyer’s Assumed Liabilities”).
4. PAYMENT
4.1 Payment of Purchase Price. As consideration for the purchase of the IP Assets and for
the Settlement Agreement, and subject to the terms and conditions of this Agreement, except as
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otherwise set forth in this Section 4 (Payment), Buyer shall pay by wire transfer to the account(s)
designated by BTR/ALI the Purchase Price in immediately available funds according to the following
terms.
4.1.1 Initial Payment. Buyer shall pay $3.75 Million of the Purchase Price on the
Effective Date (the “Initial Payment”).
4.1.2 Escrow. Buyer shall retain the Escrow Amount in a Buyer-held escrow.
4.1.3 Interest Payments. On each anniversary of the Effective Date in 2008, 2009,
2010, 2011, and 2012, Buyer shall pay BTR/ALI interest at the Applicable Federal Rate on the
then-current Escrow Account. Payment will be made by wire transfer to the accounts
designated by BTR/ALI.
4.1.4 Deductions from the Escrow Amount. Buyer will reduce the Escrow Amount by
deducting from the Escrow Amount any Deductions permitted under this Agreement. Deductions
shall be effective from the date of the applicable Notice of Claim. In the event Buyer has
paid interest under Section 4.1.3 hereof on an Escrow Amount subsequently determined to be
subject to a Deduction, Buyer will reduce the Escrow Amount by the amount of the interest
paid to BTR/ALI that is attributable to such Deduction.
4.1.5 Payment of Escrow. On the Escrow Termination Date, Buyer shall pay by wire
transfer to the accounts designated by BTR/ALI the Escrow Amount remaining in escrow after
giving effect to any Deductions less the amount of any claim included in a Notice of Claim
delivered to BTR/ALI prior to the Escrow Termination Date that has not been finally
determined as of that date. At the time and to the extent that such claim is finally
resolved in favor of BTR/ALI, Buyer shall pay by wire transfer to the account(s) designated
by BTR/ALI the amount due, plus interest (at the Applicable Federal Rate).
4.2 Allocation of Purchase Price. The Purchase Price will be allocated among the IP Assets
in accordance with Attachment G (Allocation of Purchase Price). The Parties agree to be bound by
this allocation and to report these items for federal income tax purposes as allocated. The Parties
agree to execute and deliver Internal Revenue Service Form 8594 reflecting this allocation.
4.3 Effect of Allocation. The Parties agree to abide by the allocation of the Purchase
Price specified in this Agreement, and agree to report the transaction as so allocated for income
tax purposes.
5. ESCROW
5.1 Creation of Escrow. By virtue of this Agreement and as security for the
representations and warranties, covenants (including the Non-Assertion Covenant), indemnification,
and all other BTR/ALI obligations under this Agreement, Buyer shall retain the Escrow Amount, which
will constitute an escrow to be governed by the terms and conditions set forth in this Section 5
(Escrow). BTR/ALI, on behalf of itself and its Affiliates, acknowledges that the Escrow Amount
will be a debt obligation of Buyer and will not be segregated.
5.2 Procedure for Taking Deductions from Escrow. At any time prior to final payment of the
Escrow Amount, Buyer may deduct and retain from the Escrow Amount such amounts as are
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required to cover any liability of BTR/ALI to Buyer under this Agreement, including liability under
Section 11 (Indemnification), subject to the following procedures:
5.2.1 Buyer shall provide BTR/ALI with notice of facts that may give rise to a claim against
BTR/ALI within a reasonable period of time after Buyer becomes aware of such facts, but the
failure to provide such notice shall not constitute a waiver of any claim. Within one year
of Buyer becoming aware of a claim or aggregate of claims against BTR/ALI under this
Agreement in excess of $500,000, Buyer shall deliver a Notice of Claim to BTR/ALI. If Buyer
fails to deliver such Notice of Claim within one year of becoming aware of a claim, such
failure to so deliver shall constitute an irrevocable waiver of such claim.
5.2.2 If BTR/ALI does not object in writing within 30 days after Buyer’s delivery of the
Notice of Claim, such failure to so object will constitute an irrevocable acknowledgment by
BTR/ALI that Buyer is entitled to the full amount of each claim set forth in the Notice of
Claim.
5.2.3 If BTR/ALI objects in writing within 30 days after Buyer’s delivery of the Notice of
Claim, BTR/ALI and Buyer shall attempt in good faith to agree upon the rights of the
respective Parties with respect to each of the claims. If the Parties should so agree, a
memorandum setting forth any agreement reached by the Parties with respect to each claim
will be prepared and signed by both Parties. The Parties will each be entitled to rely on
the memorandum and take any actions contemplated in the memorandum.
5.2.4 If the Parties are unable to agree within 60 days of BTR/ALI’s delivery of its written
objection to the Notice of Claim, either Party may file a request for arbitration in
accordance with the terms of Section 13.14(Arbitration). In the event of an arbitration
filed under this Section 5 (Escrow), the Parties agree that, subject to availability, the
arbitrator will be the Arbitrator from the Arbitration. If the amount of BTR/ALI’s alleged
liability is at issue in pending litigation with a third party, the arbitration, once filed,
will be stayed and will not commence until: (a) the amount of BTR/ALI’s alleged liability is
ascertained; or (b) both Parties agree to pursue the arbitration.
6. REPRESENTATIONS AND WARRANTIES OF BTR/ALI AND THE OFFICERS
6.1 BTR/ALI and Officer Representations and Warranties. BTR/ALI and the Officers make the
following representations and warranties:
6.1.1 BTR is a Nevada corporation, duly organized, validly existing, and in good standing
under the laws of the State of Nevada, and is qualified to transact business in the State of
California.
6.1.2 ALI is a California corporation, duly organized, validly existing, and in good
standing under the laws of the State of California, and is qualified to transact business in
the State of California.
6.1.3 BTR/ALI and the Officers have full legal power and authority to enter into and perform
this Agreement, and this Agreement constitutes a valid and binding obligation of BTR/ALI and
the Officers, enforceable in accordance with its terms. BTR/ALI and the
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Officers shall not enter into any other agreement that would interfere with the performance
of their obligations under this Agreement. BTR and ALI have obtained all necessary consents
and approvals from their respective boards of directors and stakeholders for the adoption
and approval of this Agreement and the transactions contemplated hereby.
6.1.4 The execution and delivery of this Agreement does not, and the performance by BTR/ALI
and the Officers of their obligations under this Agreement will not, conflict with, violate,
or constitute a material default under the terms, conditions, or provisions of any material
agreement or instrument to which BTR/ALI or the Officers is a party, or, to BTR/ALI’s and
the Officers’ Knowledge, any material law, judgment, or order, and will not result in the
creation of any lien, security interest, or encumbrance on any of the IP Assets.
6.1.5 There is no action, proceeding, or claim pending, or, to BTR/ALI’s and the Officers’
Knowledge, threatened, against BTR/ALI or the Officers that would affect the IP Assets or
BTR/ALI’s or the Officers’ ability to consummate the transactions contemplated by this
Agreement.
6.1.6 No consent, approval, or authorization of or declaration, filing, or registration with
any governmental or regulatory authority or consent or approval of any Person, is required
as a precondition to the execution, delivery, and performance by BTR/ALI and the Officers of
this Agreement or the consummation of the transactions contemplated by the Agreement.
6.1.7 BTR/ALI has good and valid title, of record and beneficially, to all of the IP Assets
and at the Effective Date will transfer and deliver to the Buyer legal and valid title to
the IP Assets, free and clear of all liens.
6.1.8 A complete and accurate list of all Contracts is attached hereto as Attachment D
(Contracts List) and BTR/ALI has provided Buyer with a true and correct copy of each
Contract.
6.1.9 BTR/ALI has provided Buyer with true and correct copies of all documents evidencing
BTR/ALI’s rights in the IP Assets. The copies provided shall be replaced with the original
documents, as available, on the Effective Date.
6.1.10 Other than the Contracts listed on Attachment D (Contracts List), there are no valid
and binding Contracts or other agreements, whether written or oral, related to the IP
Assets to which BTR/ALI or the Officers is a party and, to BTR/ALI’s and the Officers’
Knowledge, there are no other valid and binding Contracts related to the IP Assets.
6.1.11 As of the Effective Date, the Officers delivered to BTR and BTR delivered to Buyer
all Confidential Information and Technology they were obligated to disclose, deliver, or
otherwise provide to Buyer under the License Agreement and no Confidential Information or
Technology was delivered, disclosed, or otherwise provided to Buyer under the License
Agreement after December 15, 2000.
6.1.12 Before entering into the License Agreement with Actel, BTR/ALI made efforts to
license or sell the then-existing IP Assets. Except as listed in Attachment C (Prior Use of
IP Assets) during their efforts to license or sell the then-existing IP Assets, BTR/ALI did
not disclose to any Person any confidential information relating to the IP Assets. After
entering into the License Agreement, BTR/ALI’s only Use of the IP Assets was to perform
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its duties under the License Agreement. “Use” means (a) to develop, make, have made, use,
offer for sale, sell, design, modify or create derivative works of devices under the IP
assets, or (b) to license other Persons to develop, make, have made, use, offer for sale,
sell, design, modify or create derivative works of devices under the IP Assets, or (c) to
disclose, sell, license, make efforts to license or sell, offer for sale, or offer for
license any of the IP Assets.
6.1.13 Other than what BTR/ALI are transferring, selling, or assigning to Buyer under this
Agreement, there are no patents, patent applications, trade secrets, confidential
information, know how, copyrights, or other intangible property related to the FPGA
Architecture (as defined in the License Agreement) that were ever owned by (or licensed to)
BTR/ALI or the Officers, and to BTR/ALI’s and the Officers’ Knowledge, there are no such
patents, patent applications, trade secrets, confidential information, know how, copyrights,
or other intangible property related to the FPGA Architecture. Immediately after the
consummation of the transactions contemplated by this Agreement, BTR/ALI and the Officers
will have no license or any other right or interest in or to the IP Assets.
6.1.14 The IP Assets constitute the independent work of (a) the Officers (in their capacity
as Inventors) and (b) to BTR/ALI’s and the Officers’ Knowledge, the other Inventors listed
on Attachment E (Inventor Contact Information). BTR/ALI and the Officers also represent
that the Inventor Contact Information contains a complete list of Inventors with accurate
contact information and that the Officers (in their capacity as Inventors) and the other
Inventors have each assigned all of their rights in the IP Assets to ALI or BTR pursuant to
proprietary information and invention assignment agreements in the form provided to Buyer.
6.1.15 The Assigned Patents correctly name the true and correct inventors of the inventions
claimed in the patents. No person who is an inventor has been omitted from the Assigned
Patents, and no person who in not an inventor has been included on any of the Assigned
Patents.
6.1.16 BTR/ALI and Officers are not aware (and to BTR/ALI’s and the Officers’ Knowledge, no
other Inventor is aware) of any information, facts, or circumstances that would render any
of the Assigned Patents invalid or unenforceable. BTR/ALI and Officers are not aware (and
to BTR/ALI’s and the Officers’ Knowledge, no Inventor is aware) of any prior art relevant to
the IP Assets that BTR/ALI has not disclosed to Buyer. For purposes of this provision,
disclosure to the United States Patent and Trademark office in connection with the
prosecution or any other proceeding involving an Assigned Patent will be considered
disclosure to Buyer.
6.1.17 Neither BTR/ALI nor the Officers have (and to BTR/ALI’s and the Officers’ Knowledge
no Inventor has) publicly disclosed any invention covered by or disclosed in an Assigned
Patent prior to any effective filing date of the relevant Assigned Patent; nor sold, or
offered for sale, any device including or produced using an invention covered by or
disclosed in an Assigned Patent prior to any effective filing date of the relevant Assigned
Patent.
6.1.18 Each Assigned Patent was prosecuted by BTR/ALI in good faith before the U.S. Patent
and Trademark Office or applicable foreign agency.
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6.1.19 As of the Effective Date, neither BTR/ALI nor any of the Officers has received notice
from any third party claiming that the operation or exploitation of any of the IP Assets
infringes or misappropriates any intellectual property right of any third party, except as
reflected on Attachment F (Third Party Notices).
6.1.20 To BTR/ALI’s and the Officers’ Knowledge, there is no basis for the assertion of any
claim for any liabilities for unpaid taxes of BTR/ALI or the Officers for which Buyer would
become liable as a result of the transactions contemplated by this Agreement or that would
result in any lien on any of the IP Assets. To the extent applicable to the IP Assets,
BTR/ALI and the Officers have not been delinquent in the payment of any material tax, nor is
there any tax deficiency outstanding, or to BTR/ALI’s or the Officers’ Knowledge, assessed
or proposed against BTR/ALI or the Officers relating to the IP Assets.
6.1.21 As of the Effective Date, BTR/ALI has no Affiliates other than the Officers.
6.1.22 BTR/ALI’s principal business is not the sale of inventory from stock (as such terms
are defined in Division 6 of the California Uniform Commercial Code); and the transactions
contemplated by this Agreement are not subject to the bulk sales provisions of Division 6 of
the California Uniform Commercial Code.
6.1.23 All amounts owed to creditors and other liabilities of BTR/ALI to the Officers or
third parties that exist (a) as of the Effective Date or (b) due to the execution of the
Agreements are fully covered by, and will be paid out of, the Initial Payment.
6.2 Correctness of Representations. No representation or warranty of BTR/ALI or the
Officers in this Agreement contains any untrue statement of material fact or fails to state any
fact necessary in order to make the statements not misleading in any material respect. All
statements, representations, Attachments, and other information provided by BTR/ALI or the Officers
to Buyer shall be true and correct in all material respects on and as of the Effective Date as
though made on that date. Except as set forth in the attachments referenced in this Section 6
(Representations and Warranties of BTR/ALI and Officers), no documents or other information
provided by BTR/ALI or the Officers to Buyer shall be deemed to modify, qualify, or limit the
representations and warranties of BTR/ALI and Officers set forth in this Agreement.
6.3 No Other Warranties. EXCEPT AS OTHERWISE PROVIDED IN THIS AGREEMENT, BTR/ALI TRANSFER
THE IP ASSETS ON AN “AS-IS” BASIS. BTR/ALI AND THE OFFICERS MAKE NO OTHER WARRANTIES WITH RESPECT
TO ANY OF THE IP ASSETS, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION, ANY IMPLIED WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
6.4 Buyer Information. No information originally provided to BTR/ALI or the Officers by
Buyer may be used by Buyer to allege a breach of a representation or warranty by BTR/ALI or the
Officers.
7. REPRESENTATIONS AND WARRANTIES OF BUYER
7.1 Buyer’s Representations and Warranties. Buyer makes the following representations and
warranties:
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7.1.1 Buyer is a California corporation, duly organized, validly existing, and in good
standing under the laws of the State of California, and is qualified to transact business in
the State of California.
7.1.2 Buyer has full legal power and authority to enter into and perform this Agreement, and
this Agreement constitutes a valid and binding obligation of Buyer, enforceable in
accordance with its terms. Buyer has obtained all necessary approvals from its board of
directors for the adoption of this Agreement and the transactions contemplated hereby,
including payment of the Initial Payment, Escrow Amount, and interest payments. Buyer shall
not enter into any other agreement that would interfere with the performance of its
obligations under this Agreement, including payment of the Initial Payment, Escrow Amount,
and interest payments.
7.1.3 The execution and delivery of this Agreement does not conflict with, violate, or
constitute a default under the terms, conditions, or provisions of any agreement or
instrument to which Buyer is a party, or any law, judgment, or order of which Buyer is
aware.
7.1.4 There is no action, proceeding, or claim pending, or, to Buyer’s knowledge,
threatened, against Buyer that would affect Buyer’s ability to consummate the transactions
contemplated by this Agreement, including payment of the Initial Payment, the Escrow Amount,
and interest payments.
7.1.5 No consent, approval, or authorization of or declaration, filing, or registration with
any governmental or regulatory authority is required as a precondition to the execution,
delivery, and performance by Buyer of this Agreement or the consummation of the transactions
contemplated by the Agreement, including payment of the Initial Payment, the Escrow Amount,
and the interest payments.
7.2 Correctness of Representations. No representation or warranty of Buyer in this
Agreement contains any untrue statement of material fact or fails to state any fact necessary in
order to make the statements not misleading in any material respect. All statements,
representations, Attachments, and other information provided by Buyer to BTR/ALI and the Officers
shall be true and correct in all material respects on and as of the Effective Date as though made
on that date. Except as set forth in the attachments referenced in this Section 7 (Representations
and Warranties of Buyer), no documents or other information provided by the Buyer to BTR/ALI and
the Officers shall be deemed to modify, qualify, or limit the representations and warranties of
Buyer set forth in this Agreement.
7.3 No Other Warranties. EXCEPT AS OTHERWISE PROVIDED IN THIS AGREEMENT, BUYER MAKES NO
OTHER WARRANTIES, EXPRESS OR IMPLIED.
8. NON-ASSERTION COVENANT
8.1 No Assertions by BTR/ALI and the Officers. BTR/ALI and the Officers hereby agree, on
behalf of themselves and their Affiliates, not to assert, directly or indirectly, for a period of
five (5) years from the Effective Date, any claim or cause of action based, in whole or in part,
upon alleged infringement or misappropriation by Actel or its suppliers or customers, mediate or
immediate, of any patent or other intellectual property right as a result of the manufacture, use,
offer for sale, sale,
10
lease, development, distribution, support, export, import, or other transfer of products or
services sold or offered for sale by Actel (Non-Assertion Covenant).
8.2 Permitted Assertions by BTR/ALI and the Officers. Notwithstanding the provisions of
Section 8.1 (No Assertions by BTR/ALI and the Officers), BTR/ALI or the Officers may assert,
directly or indirectly, any claim or cause of action based on any intellectual property or other
right against any Person, including Actel, if Actel or any of its Affiliates first asserts any
claim or cause of action based, in whole or in part, upon the purported infringement by BTR/ALI or
their suppliers or customers, mediate or immediate, of any patent or other intellectual property
right as a result of the manufacture, use, offer for sale, sale, lease, development, distribution,
support, export, import, or other transfer of products or services sold or offered for sale by
BTR/ALI, provided that, in no event will BTR/ALI, the Officers, or their Affiliates be permitted to
assert any right or claim released by BTR/ALI or the Officers pursuant to the Settlement Agreement.
8.3 Remedies. In the event of a breach of the Non-Assertion Covenant, Buyer may make a
Deduction pursuant to Section 1.1.10 and the procedures set out in Section 5 (Escrow) and
permanently retain the entire Escrow Amount, which will be the sole and exclusive remedy of Buyer
for any breach of the Non-Assertion Covenant. Notwithstanding the foregoing sentence, neither
Buyer nor any its Affiliates will be precluded or in any way restrained from exercising its rights
under the Non-Assertion Covenant as a complete defense to any claim or action, whether: (a) as an
affirmative defense; (b) as a claim or counterclaim for injunctive relief, specific performance or
similar equitable relief; or (c) in some other form. BTR/ALI and the Officers agree that Buyer’s
immediate and mediate suppliers and customers are third-party beneficiaries of the Non-Assertion
Covenant, and as such will be fully entitled to exercise Buyer’s rights under the Non-Assertion
Covenant on their own behalf.
8.4 Protective Order Claims. For the avoidance of any doubt, any claim of a violation of
the Protective Order by BTR/ALI or the Officers will not be covered by the Non-Assertion Covenant
and no claim by Actel of a violation of the Protective Order will relieve BTR/ALI and the Officers
or their Affiliates of any obligations under the Non-Assertion Covenant.
9. ADDITIONAL OBLIGATIONS OF THE PARTIES
9.1 Assistance. BTR/ALI and the Officers will assist Buyers in obtaining Inventors’
reasonable cooperation and assistance during prosecution and other patent office proceedings
related to the Assigned Patents, including executing all declarations, assignments, and other
necessary forms and in any litigation against a third party related to or arising from the IP
Assets, provided, however, that all costs of such assistance by BTR/ALI and the Officers shall be
advanced or promptly reimbursed by Buyer. Notwithstanding any other provision of this Agreement,
in no event shall BTR/ALI or the Officers be responsible for any patent maintenance fees or similar
fees becoming due and payable after the Effective Date. The Officers listed in Attachment E
(Inventor Contact Information) will update Buyer with any changes in their contact information.
9.2 Documents and Information. In the event BTR/ALI or the Officers become aware of any
documents or other information they are obligated to provide to Buyer, they shall provide Buyer
11
prompt written notice thereof, provide Buyer with the information or a complete and accurate copy
of such document and, at Buyer’s request, provide the original (if available) to Buyer.
9.3 Contracts. In the event BTR/ALI or the Officers become aware of any Contracts that
were not listed on Attachment D (Contracts List), they shall provide Buyer prompt written notice
thereof, provide Buyer with a complete and accurate copy of the Contract and, at Buyer’s request,
assign such Contract to Buyer. In connection with BTR/ALI’s and the Officers’ assignment to Buyer
of any such Contract that Buyer has requested in writing to be assigned, Buyer shall assume such
Contract and all obligations of BTR/ALI and the Officers thereunder, but Buyer shall not assume any
liabilities incurred or accrued by BTR/ALI and the Officers prior to the assignment of such
Contract to Buyer, which liabilities shall remain the sole responsibility of BTR/ALI and the
Officers.
9.4 IP Assets. In the event that BTR/ALI or the Officers become aware of any IP Assets or
right, title, or interest in or to IP Assets that BTR/ALI is obligated to provide to Buyer under
this Agreement, they shall provide Buyer prompt written notice thereof and take all steps necessary
to transfer, convey, assign, and deliver all such IP Assets, including all right, title, and
interest therein.
9.5 Encumbrances. In the event that BTR/ALI become aware of any lien, security interest,
or encumbrance on an IP Asset, BTR/ALI shall provide Buyer prompt written notice thereof and take
all steps necessary to remove such lien, security interest, or encumbrance.
9.6 Access to Records. Following the Effective Date, and upon reasonable prior written
notice, BTR/ALI will afford the Buyer’s counsel and its accountants, during normal business hours,
reasonable access to the books, records and other data relating to the IP Assets, Contracts, and
other documents in its possession relating to the IP Assets with respect to periods prior to the
Effective Date and the right to make copies and extracts therefrom, to the extent that such access
may be reasonably required by the Buyer in connection with (i) the preparation of tax returns; (ii)
in connection with any actual or threatened action or proceeding, against a third party, relating
to the IP Assets; or (iii) compliance with the requirements of any governmental entity relating to
the IP Assets.
9.7 Additional Assurances. BTR/ALI and the Officers agree: (a) to provide to Buyer all
information and documents in BTR/ALI’s and the Officers’ possession concerning the IP Assets,
including but not limited to documents relating to the development, conception, reduction to
practice, commercialization, registration or enforcement of any of the IP Assets; and (b) to
execute all documents and take all other steps, at the expense of Buyer (subject to Section 2.3
(Expenses)), that are reasonably required or necessary to assist in the perfection of the
assignment of the IP Assets to Buyer, to vest in the Buyer title to the IP Assets or to enable the
Buyer to protect and exercise all rights and benefits of the IP Assets and as otherwise appropriate
to consummate the transactions contemplated by this Agreement. For all original documents retained
by BTR/ALI or the Officers, if any, that relate in whole or in part to the IP Assets, BTR/ALI and
the Officers shall maintain and preserve such records and documents and make such records and
documents available to Buyer upon Buyer’s reasonable request.
12
9.8 Confidentiality.
9.8.1 All information included in the IP Assets transferred under this Agreement will be
considered Actel Confidential Information and may not be used by BTR/ALI or the Officers and
may not be disclosed by BTR/ALI or the Officers, except as follows:
9.8.1.1 BTR/ALI and the Officers will have no confidentiality obligation with
respect to Actel Confidential Information included in the IP Assets that was
publicly disclosed by Actel at any time or by BTR/ALI prior to the date the
Arbitration was filed.
9.8.1.2 BTR/ALI and the officers will have no confidentiality obligation with
respect to any Actel Confidential Information that has been or is publicly disclosed
by Actel or otherwise has entered or enters the public domain through no action or
inaction by BTR/ALI.
9.8.1.3 BTR/ALI and the Officers will have no confidentiality obligation with
respect to Actel Confidential Information to the extent BTR/ALI later receives the
same information from a third party without confidentiality restriction, provided
that the third party is lawfully in possession of the information, free to disclose
it without breaching any confidentiality obligation, and did not receive it,
directly or indirectly, from BTR/ALI or the Officers.
9.8.1.4 For the avoidance of doubt, BTR/ALI and the Officers will have no
confidentiality obligation with respect to any Actel Confidential Information that
was included in any patent office filing made by any Party at any time.
9.8.1.5 BTR/ALI and the Officers may disclose Actel Confidential Information as
required by applicable law, or under a government or court order; provided, however,
that (i) the obligations of confidentiality and non-use shall continue to the
fullest extent not in conflict with such law or order, and (ii) if and when BTR /ALI
or the Officers are required to disclose such confidential or proprietary
information pursuant to any such law or order, BTR shall inform Actel promptly prior
to such disclosure and cooperate with Actel’s efforts to obtain a protective order
or to take such other actions as will prevent or limit public access to, or
disclosure of, such information.
9.9 Additional BTR/ALI Non-Assertion Covenant. BTR/ALI and the Officers hereby agree, on
behalf of themselves and their Affiliates, not to assert, directly or indirectly, any patent or
patent applications owned or controlled by BTR/ALI or the Officers on or before the Effective Date
that is not included in the IP Assets, and any future continuations of such patents and patent
applications to the extent that the claims are the same, against any Actel product at issue in the
Arbitration, and any future members or generations of such products to the extent that the
circuitry is same. This Additional BTR/ALI Non-Assertion Covenant is intended to be a complete
defense against such claims, and the sole and exclusive remedy of Buyer for any breach of this
Additional BTR/ALI Non-Assertion Covenant shall be to raise this Covenant as a complete defense to
any such claim.
9.10 Actel Non-Assertion Covenant. Actel hereby agrees that it will not assert against
BTR/ALI or the Officers, directly or indirectly, any claim under this Agreement after the
13
termination of this Agreement unless a New Claim has first been asserted. This Actel Non-Assertion
Covenant is intended to be a complete defense against such claims, and the sole and exclusive
remedy of BTR/ALI and the Officers for any breach of this Actel Non-Assertion Covenant shall be to
raise this Covenant as a complete defense to any such claim.
10. TERM
10.1 Term. The term of this Agreement will be 5 years from the Effective Date and shall be
non-terminable prior to that date.
10.2 Survival. The following terms and conditions of this Agreement will survive in
accordance with the following: Sections 1, 2, 3, 4, 5, 6, 7, 9, 12, and 13 shall expire on the
expiration date of the last to expire of the Assigned Patents. Notwithstanding the foregoing, the
provisions contained in Sections 6 and 9, to the extent that they apply to a particular Assigned
Patent shall expire on the expiration date of that Assigned Patent.
11. INDEMNIFICATION
11.1 Indemnifications by BTR/ALI. Subject to the limitations set forth in Section 12
(Limitation on Liability) and to the procedures set forth in Section 5 (Escrow), BTR/ALI will
indemnify and hold Buyer, its Affiliates and their respective officers, directors, employees,
stockholders, successors and assigns, harmless from and against any and all losses incurred thereby
from and after the Effective Date in any way arising from or related to (a) all BTR/ALI Retained
Liabilities and any other liabilities associated with BTR/ALI’s and the Officers’ ownership or use
of the IP Assets prior to the Effective Date; (b) the breach of any representation or warranty of
BTR/ALI or the Officers set forth in the Agreements; or (c) the failure by BTR/ALI or the Officers
to observe or perform any other covenant or agreement to be observed or performed under the
Agreements, except for the Non-Assertion Covenant, for breach of which the limited remedies are, as
set forth above, (i) discharge and release of Buyer’s then-outstanding payment obligation under
Section 4.1.5 (Payment of Escrow), pursuant to the procedures set forth in Section 5 (Escrow); and
(ii) raising the Non-Assertion Covenant as a complete defense to any claim or action.
11.2 Buyer’s Indemnifications. Buyer will indemnify and hold BTR/ALI and their Affiliates
and their respective officers, directors, employees, stockholders, successors and assigns, harmless
from and against any and all losses, up to a maximum of the aggregate amount paid by Buyer under
this Agreement, in any way arising from or related to (a) the breach of any representation or
warranty of Buyer or any of its Affiliates set forth in the Agreements; or (b) the failure by Buyer
or any of its Affiliates to observe or perform any other covenant or agreement to be observed or
performed by or under the Agreements.
11.3 Procedure for Bringing Claims for Indemnification by BTR/ALI. For any claim arising
under Section 11.2, BTR/ALI and Actel shall follow the procedures and time-lines set forth in
Sections 5.2.1-5.2.4, notwithstanding the absence of an Escrow related to such claims.
14
12. LIMITATION ON LIABILITY
12.1 No Officers’ Liability. The Officers will have or bear no indemnification obligations
or other financial liability under or in connection with this Agreement or in connection with the
sale by BTR/ALI of the IP Assets.
12.2 BTR/ALI Liability Limited to Escrow. The sole and exclusive remedy of Buyer for any
breach of this Agreement by BTR/ALI and the Officers shall be to make a claim against the Escrow
Amount and, except as provided in Section 12.4 (Liability Offset), the total aggregate liability of
BTR/ALI and the Officers under this Agreement will not exceed the Escrow Amount.
12.3 No Post-Termination Liability. Except as provided in Section 12.4 (Liability Offset),
neither Party will have any financial liability to the other for any claim or action based on this
Agreement asserted after the termination of this Agreement five years from the Effective Date
pursuant to Section 10.1.
12.4 Liability Offset. Notwithstanding anything to the contrary in this Agreement, Buyer
may credit, apply, and deduct the amount of any and all Liability Offsets, up to the total amount
actually paid to BTR/ALI under this Agreement, against any and all financial liability or other
financial obligations of Buyer incurred pursuant to a final judgment or award against Buyer as a
result of any New Claim.
13. MISCELLANEOUS
13.1 Acknowledgments. Each Party acknowledges that a breach of any of its obligations
under the Agreement would cause the other Party irreparable harm and, in the event such Party
breaches or threatens to breach its obligations under the Agreement, the other Party shall be
entitled to seek injunctive and other appropriate equitable relief.
13.2 Notices. Whenever any matter in the Agreement provides for notice or other written
communication to be given to Buyer or BTR/ALI or the Officers, such notice shall be given at the
address of such Party set forth below, or such other address as such Party shall provide, in
writing to the other Party. All notices may be given by being personally delivered, by being sent
by prepaid air freight, delivery of which, within one Business Day of receipt by the air freight
company, is guaranteed, or by being sent by facsimile, the receipt of which is acknowledged,
addressed to the Party hereto to whom notice is to be given at the above-described address. Each
such notice shall be deemed to be effective upon receipt, if personally delivered, one Business Day
after receipt by the airfreight company, if sent by airfreight, and one Business Day after being
sent by facsimile. Notices sent to BTR/ALI or the Officers in accordance with the provisions of
this Section will be deemed to have been sent to BTR/ALI and the Officers.
| If to Buyer: | If to BTR/ALI and the Officers: | |
Actel Corporation
|
BTR, Inc. | |
0000 Xxxxxxxx Xxxxx
|
c/o Advantage Logic, Inc. | |
Xxxxxxxx Xxxx, XX 00000
|
00000 Xxxx Xxxxxx Xxxx, Xxxxx 000 | |
Attn.: Xxxxx X. Xxx Xx Xxx
|
Xxxxxxxxx, XX 00000 | |
Fax: (000) 000-0000
|
Attn.: Xxxxxxx Xxxxxxx | |
Email:
xxxxxxxx@xxxxx.xxx
|
Fax: 000-000-0000 | |
xxxxx.xxxxxx@xxxxx.xxx
|
Email: xxxxxxxxx@xxx.xxx |
15
13.3 Attorneys’ Fees. Should any litigation or arbitration be commenced between the
Parties hereto concerning the Agreement, or the rights and duties of the Parties in relation to the
Agreement, the Party prevailing in such litigation or arbitration shall be entitled, in addition to
such other relief as may be granted, to a reasonable sum for attorneys’ fees in connection with
such litigation or arbitration, which sum shall be determined by the trier of fact in such
litigation or arbitration or in a separate action brought for that purpose.
13.4 Assignment. The Agreement shall be binding upon, and inure to the benefit of, the
respective legal representatives, successors and permitted assigns of the Parties hereto. Neither
BTR/ALI nor the Officers may assign or transfer this Agreement, or any rights or obligations
herein, by operation of law or otherwise, without the express written consent of Buyer, which shall
not be unreasonably withheld, but after termination of this Agreement pursuant to Section 10.1,
either BTR or ALI may assign its rights and obligations under this Agreement to the other in
connection with a winding down of the assigning corporation. Buyer may not assign or transfer any
of its rights under the Non-Assertion Covenant by operation of law or otherwise, without the
express written consent of BTR/ALI, which shall not be unreasonably withheld, but may otherwise
assign its other rights and obligations under this Agreement to a successor to all or substantially
all of its stock, business, or assets whether by sale, merger, or otherwise.
13.5 Injunctive Relief. Notwithstanding anything in this Agreement to the contrary,
neither Party shall be precluded or in any way restrained from seeking injunctive relief for any
material breach of this Agreement.
13.6 Severability. Should any portion or provision of the Agreement be declared invalid or
unenforceable in any jurisdiction by a court of competent jurisdiction, then such portion or
provision shall be deemed to be severable, to the extent invalid or unenforceable, from the
Agreement as to such jurisdiction (but, to the extent permitted by law, not elsewhere) and shall
not affect the remainder thereof. Notwithstanding the foregoing; (a) such provision of the
Agreement shall be interpreted by the Parties and by any such court, to the extent possible, in
such a manner that such provision shall be deemed to be valid and enforceable; and (b) such court
shall have the right to make such modifications to any provision of this Agreement as do not
materially affect the rights or obligations of the Parties under the Agreement and as may be
necessary in order for such provision to be valid and enforceable.
13.7 Waiver. No waiver of any right or obligation of Buyer or BTR/ALI of the Officers
under the Agreement shall be effective unless in a writing, specifying such waiver, executed by the
Party against which such waiver is being enforced. A waiver by either Party hereto of any of its
rights under the Agreement on any occasion shall not be a bar to the exercise of the same right on
any subsequent occasion or of any other right at any time.
13.8 Other Terms. The terms and provisions set forth in the Agreement shall control over
any terms and provisions set forth in any purchase order or other document or instrument submitted
to BTR/ALI by Buyer, and no such purchase order or other document or instrument or course of
16
conduct or trade practice may be used to modify, vary or supplement any terms set forth herein
unless all Parties to this Agreement expressly agree in writing to such modification, variation or
supplement.
13.9 Headings and Titles. The designation of a title, or a caption or a heading, for each
section of the Agreement is for the purpose of convenience only and shall not be used to limit,
enlarge, interpret, or modify the provisions of the Agreement.
13.10 Presumptions. Because each of the Parties hereto has participated in drafting the
Agreement, this Agreement shall not be interpreted in favor of, or against, any Party on the ground
that such Party was responsible for preparing the Agreement or any part thereof.
13.11 Amendment or Modification. The Agreement may be amended, altered, or modified only by a
writing, specifying such amendment, alteration or modification, executed by Buyer and BTR/ALI.
13.12 Counterparts. The Agreement may be executed in two or more counterparts, each of
which shall be deemed an original, but all of which shall constitute one and the same instrument.
13.13 Governing Law; Jurisdiction. This Agreement, and the rights and obligations of the
Parties hereunder, shall be governed by and construed in accordance with the laws of the State of
California. Subject to Section 13.14 (Arbitration), any action with respect to the Agreement filed
by one Party against the other may only be brought in the United States District Court for the
Northern District of California or the Superior Court of the State of California in and for the
county of Santa Xxxxx.
13.14 Arbitration. Any controversy or claim arising out of or relating to this Agreement
or its breach shall be settled by arbitration in accordance with the Commercial Arbitration Rules
of the American Arbitration Association then in effect. In any arbitration hereunder, BTR/ALI and
Buyer may agree on the selection of a single arbitrator, but if they cannot so agree, each such
Party shall select an arbitrator and the two selected arbitrators shall select a third arbitrator.
No arbitrator may be affiliated, whether directly or indirectly, with any of the Parties,
including, without limitation, as an employee, consultant, partner or shareholder. The
arbitrator(s) shall permit each of the Parties to the arbitration to engage in a reasonable amount
of discovery. In the event either Party requests such an arbitration, the arbitration shall be
held in Santa Xxxxx County, California. At the conclusion of the arbitration, the arbitrator or
arbitrators will issue a written opinion including the decision and the reasons for the decision.
The award by the arbitrator or arbitrators shall be final, and judgment upon the award rendered may
be entered in any court having jurisdiction thereof. Notwithstanding the foregoing, neither Party
shall be prevented from seeking injunctive relief, including, without limitation, a temporary
restraining order, as contemplated by Section 13.1 (Acknowledgments), from the courts specified in
Section 13.13 (Governing Law; Jurisdiction).
13.15 Complete Agreement. The Agreement constitutes the complete understanding of the
Parties hereto regarding the subject matter thereof and supersedes all prior or contemporaneous
agreements of the Parties, whether written or oral, with respect to such subject matter.
[Signature page follows]
17
IN WITNESS WHEREOF, the Parties hereto have caused
this Asset Purchase Agreement to be executed as of
the Effective Date.
| BUYER | ||||||
| ACTEL CORPORATION | ||||||
Date
|
Signature | Printed Name | Title | |||
| BTR/ALI | ||||||
BTR, INC. |
||||||
Date
|
Signature | Printed Name | Title | |||
| ADVANTAGE LOGIC, INC. | ||||||
Date
|
Signature | Printed Name | Title | |||
| OFFICERS | ||||||
| XXXXXXX XXXXXXX | ||||||
Date
|
Signature | Printed Name | ||||
XXXXX PANI |
||||||
Date
|
Signature | Printed Name | ||||
| XXXXXXXX XXXX | ||||||
Date
|
Signature | Printed Name | ||||
18
ATTACHMENT A
Assigned Contracts List
| Contract Title | Parties | Date | ||||
1.
|
Agreement for Assignment of Rights in Intellectual Property and Covenant Against Disclosure | XXX Xxxxx Pani |
September 23, 1993 | |||
2.
|
Agreement for Assignment of Rights in Intellectual Property and Covenant Against Disclosure | XXX Xxxxxxx Pelham |
September 23, 1993 | |||
3.
|
Agreement for Assignment of Rights in Intellectual Property and Covenant Against Disclosure | ALI Xxxxxxx Xxxxxxx |
September 23, 1993 | |||
4.
|
Agreement for Assignment of Rights in Intellectual Property and Covenant Against Disclosure | ALI Xxxxxxxx Xxxx |
September 23, 1993 | |||
5.
|
Assignment of Patent Application | ALI Xxxxxxxx Xxxx |
October 30, 1993 | |||
6.
|
Agreement for Assignment of Rights in Intellectual Property and Covenant Against Disclosure | ALI Xxxx Xxxxxxxx |
September 23, 1993 | |||
7.
|
Consulting Agreement | ALI Xxxxxx Xxxx |
April 7, 1995 | |||
8.
|
Consulting Agreement Addendum | ALI Xxxxxx Xxxx |
June 29, 1995 | |||
9.
|
Confidential Disclosure Agreement | ALI Xxxxxx Xxxx |
December 14, 1993 | |||
10.
|
Assignment of Trade Secrets | BTR Xxxxxxxx Xxxx |
March 14, 2007 | |||
11.
|
Nondisclosure Agreement | ALI AMD |
April 14, 1994 |
A-1
| Contract Title | Parties | Date | ||||
12.
|
Technology Evaluation Agreement | ALI Xilinx |
November 10, 1994 | |||
13.
|
Undertaking of Confidentiality | XXX Xxx Leeds |
November 8, 1994 | |||
14.
|
Corporate Non-Disclosure Agreement and Confidential Information Transmittal Record | ALI Intel |
February 9, 1994 | |||
15.
|
Mutual Non-Disclosure Agreement | ALI Motorola |
February 24, 1994 |
A-2
ATTACHMENT B
Assignments of Rights
List of Assigned Patents
| 1 | U.S. patents and patent application nos. 5,457,410 ; 08/484,922; 6,433,580; 6,507,217; 6,703,861; 7,017,136; 11/299,248; US94/07187; 08/186,770; 5,640,327; US95/00313; 08/229,923; 08/534,500; 6,051,991; 6,462,578; 6,597,196; 6,747,482; 6,989,688; 7,078,933; 7,142,012; US95/04639; 08/433,041; 6,088,526; 6,300,793; US96/05964; 5,850,564; 6,417,690; 7,009,422; 7,126,375; US96/05982; 6,320,412; US00/35019; 5,640,344; US96/09889; 6,034,547; 6,329,839; 6,504,399; 6,624,658; 6,781,410; 6,975,138; 11/219,597; and US97/15614. | ||
| 2 | All foreign counterparts of the above-listed U.S. patents or patent applications (whether or not the foreign counterparts claim priority from such U.S. patents or patent applications), including EU: 0712548; EU: 0,806,836; France: 0,806,836; Germany: 0,806,836; UK: 0,806,836; Japan: 505821/95; Korea (South): 413,881; China: ZL94,192,983.3; Singapore: 44,600; 95907356.1; 9605244-4; EU: 00,755,588; Austria: 00,755,588; Belgium: 00,755,588; Denmark: 00,755,588; France: 00,755,588; Germany: 00,755,588; Greece: 00,755,588; Ireland: 00,755,588; Italy: 00,755,588; Luxembourg: 00,755,588; Monaco: 00,755,588; Netherlands: 00,755,588; Portugal: 00,755,588; Spain: 00,755,588; Sweden: 00,755,588; Switzerland: 00,755,588; UK: 00,755,588; China: ZL95,193,431.7; Singapore: 34,648; Japan: 3,581,152; Korea(South): 96-705,754; EU: 1,162,746; France: 1,162,746; Germany: 1,162,746; UK: 1,162,746; EU: 01118849.7; EU: 05015294.1; EU: 0,824,791; UK: 0,824,791; EU: 02024873.8; China: ZL96,194,985.6; Japan: 3,727,065; Korea (South): 97-707796; Singapore: 46,840; Taiwan: NI-082,978; EU: 0,824,792; UK: 0,824,792; Japan: 3,684,241; Korea (South): 97-707797; China: ZL96,194,984.8; Taiwan: NI-081,900; Singapore: 53,402; EU: 0,840,930; France: 0,840,930; Germany: 0,840,930; Monaco: 0,840,930; Portugal: 0,840,930; UK: 0,840,930; Japan: 3,881,020; Korea (South): 397,062; China: ZL96,196,964.4; Singapore: 51,262; EU: 97939805.4; EU:00000000.6; and Japan: 511084/98. | ||
| 3 | Any and all revisions, reexaminations, continuations, divisions, substitutions, reissues, renewals, continuations in part, continuing prosecution applications, divisions, parents, counterparts, and extensions thereof, and all other patents and patent applications, whether filed in or granted by the United States or another country, claiming, in whole or in part, the benefit of the filing date of any of the above-listed patents or patent applications. |
A-3
ASSIGNMENT OF PATENT RIGHTS BY BTR
This ASSIGNMENT OF PATENT RIGHTS, dated March 16, 2007 (this “Agreement”), is entered into by
BTR, Inc., a Nevada corporation with a place of business at 00000 Xxxx Xxxxxx Xxxx, Xxxxx 000,
Xxxxxxxxx, XX 00000 (“BTR” or “Assignor”), with and for the benefit of Actel Corporation, a
California corporation with a place of business at 0000 Xxxxxxxx Xxxxx, Xxxxxxxx Xxxx, XX 00000
(“Actel” or “Assignee”).
WHEREAS, Assignor has agreed to sell and assign, and Assignee has agreed to buy and acquire
all of Assignor’s rights, title and interests in and to the patents and patent applications set
forth in Exhibit A attached hereto (the “Assigned Patents”).
NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, Assignor hereby assigns and transfers to Assignee any and all worldwide
rights, title and interests Assignor holds, or may hold, in and to the Assigned Patents together
with all rights derived therefrom, including but not limited to the right to xxx for and collect
damages for past, present and future infringement.
Assignor further agrees that, should additional or further documentation of the assignment be
required for whatever reason, Assignor will, without further consideration, provide or execute such
other information or documents as may be necessary upon Assignee’s reasonable request.
This Agreement shall be binding on and shall inure to the benefit of, the Parties hereto and
their respective successors and assigns. This Agreement will be governed by, and construed in
accordance with, the internal laws of the State of California applicable to contracts executed and
performed entirely therein, without regard to the principles of choice of law or conflicts or law
of any jurisdiction. If any term or other provision of this Agreement is invalid, illegal or
incapable of being enforced by any rule of law or public policy, all other conditions and
provisions of this Agreement will nevertheless remain in full force and effect so long as the
economic or legal substance of the transactions contemplated hereby is not affected in any manner
materially adverse to any Party. Upon such determination that any term or other provision is
invalid, illegal or incapable of being enforced, the Parties hereto will negotiate in good faith to
modify this Agreement so as to effect the original intent of the Parties as closely as possible in
a mutually acceptable manner in order that the transactions contemplated hereby be consummated as
originally contemplated to the greatest extent possible.
A-4
IN WITNESS WHEREOF, Assignor has caused this Assignment of Patent Rights to be executed by its
duly authorized representatives effective as of the date first written above.
| BTR, Inc. | ||||||
| By: | ||||||
| Name: | ||||||
| Title: | ||||||
STATE OF
|
||||
COUNTY OF |
||||
On this ___day of , 2007, before me, a Notary Public in and for said State,
personally appeared
personally known to me (or proved
to me on the basis of satisfactory evidence) to be the person(s) whose names(s) is/are subscribed
to the within instrument and acknowledged to me that he/she/they executed the same in his/her/their
authorized capacity(ies), and that by his/her/their signature(s) on the instrument the person(s),
or entity upon behalf of which the person(s) acted, executed the instrument.
WITNESS, my hand and official seal.
A-5
EXHIBIT A
TO
ASSIGNMENT OF PATENT RIGHTS BY BTR
ASSIGNED PATENTS
| Appl. No. | Issue Number | Filing Date | Title | Inventors | ||||
08/101,197 |
5,457,410 | 08-03-1993 | ARCHITECTURE AND | Xxxxxxxx X. Xxxx | ||||
| INVALIDATED/ABANDONED | INTERCONNECT SCHEME | Saratoga, CA | ||||||
08/484,922 |
ABANDONED | 06-07-1995 | FOR PROGRAMMABLE | |||||
09/034,769 |
6,433,580 | 03-02-1998 | LOGIC CIRCUITS | |||||
09/955,589 |
6,507,217 | 09-13-2001 | ||||||
10/269,364 |
6,703,861 | 10-11-2002 | ||||||
10/692,880 |
7,017,136 | 10-23-2003 | ||||||
11/299,248 |
PENDING | 12-09-2005 | ||||||
94922455.4 |
EU: 0712548 | 06-24-1994 | ||||||
94922455.4 |
UK: 0712548 | 06-24-1994 | ||||||
97111287.5 |
EU: 0806836 | 07-04-1997 | ||||||
97111287.5 |
France: 0806836 | 07-04-1997 | ||||||
97111287.5 |
Germany: 0806836 | 07-04-1997 | ||||||
97111287.5 |
UK: 0806836 | 07-04-1997 | ||||||
000000/00 |
Xxxxx: PENDING | 06-24-1994 | ||||||
96-700569 |
Korea (South): 413881 | 02-03-1996 | ||||||
US94/07187 |
Entered National Phase | 06-24-1994 | ||||||
94192983.3 |
China: 49812 | 06-24-1994 | ||||||
9603530-8 |
Singapore: 44600 | 02-22-1996 | ||||||
08/186,770 |
ABANDONED | 01-25-1994 | APPARATUS AND METHOD FOR PARTITIONING RESOURCES FOR INTERCONNECTIONS | Xxxxxxxx X. Xxxx Saratoga, CA |
||||
08/559,122 |
5,640,327 ABANDONED | 02-09-1996 | ||||||
95907365.1 |
ABANDONED | 01-10-1995 | ||||||
US95/00313 |
Entered National Phase | 01-10-1995 | ||||||
9605244-4 |
ABANDONED | 02-03-1996 |
A-6
| Appl. No. | Issue Number | Filing Date | Title | Inventors | ||||
08/229,923 |
ABANDONED | 04-14-1994 | ARCHITECTURE AND INTERCONNECT SCHEME FOR PROGRAMMABLE LOGIC CIRCUITS | Xxxxxxxx X. Xxxx Saratoga, CA |
||||
08/534,500 |
ABANDONED | 09-27-1995 | ||||||
08/909,928 |
6,051,991 ABANDONED | 08-12-1997 | ||||||
09/482,149 |
6,462,578 | 01-12-2000 | ||||||
10/117,875 |
6,597,196 | 04-05-2002 | ||||||
10/428,724 |
6,747,482 | 05-01-2003 | ||||||
10/829,527 |
6,989,688 | 04-21-2004 | ||||||
11/233,290 |
7,078,933 | 09-21-2005 | ||||||
11/432,425 |
7,142,012 | 05-10-2006 | ||||||
95916402.1 |
EU: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Austria: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Belgium: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Denmark: 00755588 | 04-14-1995 | ||||||
95916402.1 |
France: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Germany: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Greece: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Ireland: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Italy: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Luxembourg: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Monaco: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Netherlands: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Portugal: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Spain: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Sweden: 00755588 | 04-14-1995 | ||||||
95916402.1 |
Switzerland: 00755588 | 04-14-1995 | ||||||
95916402.1 |
UK: 00755588 | 04-14-1995 | ||||||
95193431.7 |
China: ZL95193431.7 | 04-14-1995 | ||||||
9611526-6 |
Singapore: 34648 | 04-14-1995 | ||||||
527117/95 |
Japan:0000000 | 10-14-1996 | ||||||
96-705754 |
Korea (South): ABANDONED | 10-14-1996 |
A-7
| Appl. No. | Issue Number | Filing Date | Title | Inventors | ||||
0119441.2 |
EU: 1162746 | 08-13-2001 | ||||||
0119441.2 |
France: 1162746 | 08-13-2001 | ||||||
0119441.2 |
Germany: 1162746 | 08-13-2001 | ||||||
0119441.2 |
UK: 1162746 | 08-13-2001 | ||||||
01118849.7 |
EU: Abandoned | 08-13-2001 | ||||||
05015294.1 |
EU: Abandoned | 07-14-2005 | ||||||
US95/04639 |
Entered National Phase | 04-14-1995 | ||||||
08/433,041 |
Abandoned | 05-03-1995 | SCALABLE MULTIPLE | Xxxxxxxx X. Xxxx | ||||
08/951,814 |
6,088,526 ABANDONED | 10-14-1997 | LEVEL TAB ORIENTED | Saratoga, CA | ||||
09/377,304 |
6,300,793 | 08-18-1999 | INTERCONNECT | |||||
96915392.3 |
EU: 0824791 | 04-30-1996 | ARCHITECTURE | Xxxxx X. Pani | ||||
96915392.3 |
UK: 0824791 | 04-30-1996 | Mountain View, CA | |||||
02024873.8 |
EU: PENDING | 11-08-2002 | ||||||
96194985.6 |
China: ZL96194985.6 | 04-30-1996 | ||||||
000000/00 |
Xxxxx: 0000000 | 11-04-1997 | ||||||
97-707796 |
Abandoned | 11-04-1997 | ||||||
US96/05964 |
Entered National Phase | 04-30-1996 | ||||||
8510228 |
Taiwan: NI-082978 | 05-01-1996 | ||||||
9705151-0 |
Singapore: 46840 | 04-30-1996 | ||||||
08/434,980 |
5,850,564 Abandoned | 05-03-1995 | FLOOR PLAN FOR | Xxxxxxxx X. Xxxx | ||||
09/089,298 |
6,417,690 | 06-01-1998 | SCALABLE MULTIPLE | Saratoga, CA | ||||
10/021,744 |
7,009,422 | 12-05-2001 | LEVEL TAB ORIENTED | |||||
11/326,543 |
7,126,375 | 01-04-2006 | INTERCONNECT | Xxxxx X. Pani | ||||
96920113.6 |
EU: 0824792 | 04-30-1996 | ARCHITECTURE | Mountain View, CA | ||||
96920113.6 |
UK: 0824792 | 04-30-1996 | ||||||
533412/96 |
Japan:0000000 | 04-30-1996 | ||||||
97-707797 |
Abandoned | 11-03-1997 | ||||||
96/05982 |
Entered National Phase | 04-30-1996 | ||||||
96194984.8 |
China: ZL 96194984.8 | 04-30-1996 |
A-8
| Appl. No. | Issue Number | Filing Date | Title | Inventors | ||||
85105227 |
Taiwan: NI-081900 | 05-01-1996 | ||||||
9706178-2 |
Singapore: 53402 | 04-30-1996 | ||||||
09/467,736 |
6,320,412 | 12-20-1999 | ARCHITECTURE AND | Xxxxxxxx X. Xxxx | ||||
US00/35019 |
Abandoned | 12-20-2000 | INTERCONNECT FOR | Saratoga, CA | ||||
| PROGRAMMABLE LOGIC CIRCUITS | Xxxxx X. Pani | |||||||
| Mountain View, CA |
A-9
ASSIGNMENT OF PATENT RIGHTS BY ALI
This ASSIGNMENT OF PATENT RIGHTS, dated March 16, 2007 (this “Agreement”), is entered into by
Advantage Logic Inc, a California corporation with a place of business at 00000 Xxxxxxx Xxxxx
Xxxx., 000, Xxxxxxxxx, XX 00000 . (“ALI” or “Assignor”), with and for the benefit of Actel
Corporation, a California corporation with a place of business at 0000 Xxxxxxxx Xxxxx, Xxxxxxxx
Xxxx, XX 00000 (“Actel” or “Assignee”).
WHEREAS, Assignor has agreed to sell and assign, and Assignee has agreed to buy and acquire
all of Assignor’s rights, title and interests in and to the patents and patent applications set
forth in Exhibit A attached hereto (the “Assigned Patents”).
NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, Assignor hereby assigns and transfers to Assignee any and all worldwide
rights, title and interests Assignor holds, or may hold, in and to the Assigned Patents together
with all rights derived therefrom, including but not limited to the right to xxx for and collect
damages for past, present and future infringement.
Assignor further agrees that, should additional or further documentation of the assignment be
required for whatever reason, Assignor will, without further consideration, provide or execute such
other information or documents as may be necessary upon Assignee’s reasonable request.
This Agreement shall be binding on and shall inure to the benefit of, the Parties hereto and
their respective successors and assigns. This Agreement will be governed by, and construed in
accordance with, the internal laws of the State of California applicable to contracts executed and
performed entirely therein, without regard to the principles of choice of law or conflicts or law
of any jurisdiction. If any term or other provision of this Agreement is invalid, illegal or
incapable of being enforced by any rule of law or public policy, all other conditions and
provisions of this Agreement will nevertheless remain in full force and effect so long as the
economic or legal substance of the transactions contemplated hereby is not affected in any manner
materially adverse to any Party. Upon such determination that any term or other provision is
invalid, illegal or incapable of being enforced, the Parties hereto will negotiate in good faith to
modify this Agreement so as to effect the original intent of the Parties as closely as possible in
a mutually acceptable manner in order that the transactions contemplated hereby be consummated as
originally contemplated to the greatest extent possible.
A-10
IN WITNESS WHEREOF, Assignor has caused this Assignment of Patent Rights to be executed by its
duly authorized representatives effective as of the date first written above.
| ALI | ||||||||
| By: | ||||||||
| Name: | ||||||||
| Title: | ||||||||
STATE OF
COUNTY OF
On this day of , 2007, before me, a Notary Public in and for said State,
personally appeared
personally known to me (or proved
to me on the basis of satisfactory evidence) to be the person(s) whose names(s) is/are subscribed
to the within instrument and acknowledged to me that he/she/they executed the same in his/her/their
authorized capacity(ies), and that by his/her/their signature(s) on the instrument the person(s),
or entity upon behalf of which the person(s) acted, executed the instrument.
WITNESS, my hand and official seal.
A-11
EXHIBIT A
TO
ASSIGNMENT OF PATENT RIGHTS BY ALI
ASSIGNED PATENTS
| Appl. No. | Issue Number | Filing Date | Title | Inventors | ||||
08/506,828 |
5,640,344 | 07-25-1995 | PROGRAMMABLE | Xxxxx X. Pani | ||||
96921471.7 |
EU: 0,840,930 | 06-14-1996 | NON-VOLATILE | Mountain View, CA | ||||
96921471.7 |
France: 0,840,930 | 06-14-1996 | BIDIRECTIONAL | |||||
96921471.7 |
Germany: 0,840,930 | 06-14-1996 | SWITCH FOR | Xxxxxxxx X. Xxxx | ||||
96921471.7 |
Monaco: 0,840,930 | 06-14-1996 | PROGRAMMABLE LOGIC | Saratoga, CA | ||||
96921471.7 |
Portugal: 0,840,930 | 06-14-1996 | ||||||
96921471.7 |
UK: 0,840,930 | 06-14-1996 | Xxxxx Xx | |||||
XX00/00000 |
Entered National Phase | 06-14-1996 | Saratoga, CA | |||||
507580/97 |
Japan: 3,881,020 | 06-14-1996 | ||||||
98-700209 |
Korea (South): 397,062 | 01-12-1998 | ||||||
96196964.4 |
China: ZL96,196,964.4 | 06-14-1996 | ||||||
0000000-0 |
Xxxxxxxxx: 51,262 | 06-14-1996 | ||||||
08/708,403 |
6,034,547 Abandoned | 09-04-1996 | METHOD AND | Xxxxx X. Pani | ||||
09/243,998 |
6,329,839 | 02-04-1999 | APPARATUS FOR | Mountain View, CA | ||||
09/960,916 |
6,504,399 | 09-24-2001 | UNIVERSAL PROGRAM | |||||
10/231,320 |
6,624,658 | 08-28-2002 | CONTROLLED BUS | Xxxxxxxx X. Xxxx | ||||
10/412.975 |
6,781,410 | 00-00-0000 | XXXXXXXXXXXX | Xxxxxxxx, XX | ||||
10/811,422 |
6,975,138 | 03-25-2004 | ||||||
11/219,597 |
PENDING | 09-01-2005 | ||||||
97939805.4 |
EU: PENDING | 09-04-1997 | ||||||
04021656.6 |
EU:PENDING | 09-11-2004 |
A-12
| Appl. No. | Issue Number | Filing Date | Title | Xxxxxxxxx | ||||
000000/00 |
Xxxxx: PENDING | 09-04-1997 | ||||||
US97/15614 |
Entered National Phase | 09-04-1997 |
A-13
ATTACHMENT C
Prior Use of IP Assets
1. Presentation of confidential information relating to then existing IP Assets to Intel
Corporation under CNDA dated February 9, 1994, terminated on September 12, 1994.
2. Presentation of confidential information relating to then existing IP Assets to Motorola, Inc.,
under Mutual Non-Disclosure Agreement dated February 24, 1994, terminated June 24, 1994.
3. Presentation of confidential information relating to then existing IP Assets to Advanced Micro
Devices, Inc., under Advanced Micro Devices NDA 10000 dated April 14, 1994 (no termination date).
4. Presentation of confidential information relating to then existing IP Assets to Xilinx, Inc.,
under Technology Evaluation Agreement dated November 10, 1994, between Xilinx, Inc. and Advanced
Logic, Inc., and Undertaking of Confidentiality dated November 4, 1994, between Xxxxxxx X. Xxxxx
and Advantage Logic, Inc., terminated December 1, 1994.
A-14
ATTACHMENT D
Contracts List
| 1. | NDA between Ting and Pani dated May 18, 1993 | |
| 2. | NDA between Ting and Ma dated May 24, 1993 | |
| 3. | NDA between Ting and Xxxxxxxx dated June 7, 1993 | |
| 4. | NDA between Ting and Pelham dated June 18, 1993 | |
| 5. | Agreement between Ma and ALI dated May 7, 1995 | |
| 6. | Amendment to Agreement between Ma and ALI, dated December 22, 2004 | |
| 7. | Exclusive Royalty Sharing Agreement between Pelham and BTR dated October 27, 1995 | |
| 8. | Amendment to Exclusive Royalty Sharing Agreement between Pelham and BTR, dated May 10, 1998 | |
| 9. | Exclusive Royalty Sharing Agreement between Xxxxxxxx and BTR dated April 26, 1995 | |
| 10. | Amendment to Exclusive Royalty Sharing Agreement between Xxxxxxxx and BTR, dated May 1, 1998 | |
| 11. | Oral Agreement with Niantsu Wang: On or about 1996, BTR/ALI had an oral agreement to pay Wang for design and implementation of Actel’s Specification for the DLL | |
| 12. | Agreements listed in Attachment A (Assigned Contracts List) | |
| 13. | Agreements listed in Attachment C (Prior Use of IP Assets) |
A-15
ATTACHMENT E
Inventor Contact Information
| Inventor Name | Address | Phone | ||||
1.
|
Xxxxx X. Pani | 00000 Xxxx Xxxxxx Xxxx, Xxxxx 000 Xxxxxxxxx, XX 00000 |
(408) 253-5870 | |||
2.
|
Xxxxxxxx X. Xxxx | 00000 Xxxx Xxxxxx Xxxx, Xxxxx 000 Xxxxxxxxx, XX 00000 |
(408) 253-5840 | |||
3.
|
Xxxxxx X. Xxxx | 000 Xxxxxxxxxx Xxxxx Xxx Xxxxx, XX 00000 |
(408) 395-1694 | |||
4.
|
Xxxxx Ma | 0000 Xxxxx Xxxxxxxx Xxx. Xxxxxxxx, XX 00000 |
A-16
ATTACHMENT F
Third Party Notices
1. Patent and Trademark Office Notice of Action dated 5/08/1997, Interference No. 103,833, filed by
Xilinx, Inc. on 3/29/1996.
A-17
ATTACHMENT G
Allocation of Purchase Price
Table G-1: BTR Patents: $6,500,000
| L/T or S/T Capital | ||||||||||
| Appl. No. | Issue Number | Filing Date | Assigned Price | Gains | ||||||
| P001 Family: $2,500,000 |
||||||||||
08/101,197 |
5,457,410 | 08-03-1993 | ||||||||
| INVALIDATED/ABANDONED | ||||||||||
08/484,922 |
ABANDONED | 06-07-1995 | ||||||||
09/034,769 |
6,433,580 | 03-02-1998 | $ | 200,000 | L/T | |||||
09/955,589 |
6,507,217 | 09-13-2001 | $ | 200,000 | L/T | |||||
10/269,364 |
6,703,861 | 10-11-2002 | $ | 200,000 | L/T | |||||
10/692,880 |
7,017,136 | 10-23-2003 | $ | 200,000 | L/T | |||||
11/299,248 |
PENDING | 12-09-2005 | $ | 200,000 | L/T | |||||
94922455.4 |
EU: 0712548 | 06-24-1994 | $ | 750,000 | L/T | |||||
94922455.4 |
UK: 0712548 | 06-24-1994 | ||||||||
97111287.5 |
EU: 0806836 | 07-04-1997 | ||||||||
97111287.5 |
France: 0806836 | 07-04-1997 | ||||||||
97111287.5 |
Germany: 0806836 | 07-04-1997 | ||||||||
97111287.5 |
UK: 0806836 | 07-04-1997 | ||||||||
000000/00 |
Xxxxx: PENDING | 06-24-1994 | $ | 375,000 | L/T | |||||
96-700569 |
Korea (South): 413881 | 02-03-1996 | $ | 150,000 | L/T | |||||
US94/07187 |
Entered National Phase | 06-24-1994 | ||||||||
94192983.3 |
China: 49812 | 06-24-1994 | $ | 150,000 | L/T | |||||
9603530-8 |
Singapore: 44600 | 02-22-1996 | $ | 75,000 | L/T | |||||
| P003 Family: $0 |
||||||||||
08/186,770 |
ABANDONED | 01-25-1994 | ||||||||
08/559,122 |
5,640,327 ABANDONED | 02-09-1996 | ||||||||
95907365.1 |
ABANDONED | 01-10-1995 | ||||||||
US95/00313 |
Entered National Phase | 01-10-1995 | ||||||||
A-18
| L/T or S/T Capital | ||||||||||
| Appl. No. | Issue Number | Filing Date | Assigned Price | Gains | ||||||
9605244-4 |
ABANDONED | 02-03-1996 | ||||||||
| P004 Family: $2,000,000 |
||||||||||
08/229,923 |
ABANDONED | 04-14-1994 | ||||||||
08/534,500 |
ABANDONED | 09-27-1995 | ||||||||
08/909,928 |
6,051,991 ABANDONED | 08-12-1997 | ||||||||
09/482,149 |
6,462,578 | 01-12-2000 | $ | 125,000 | L/T | |||||
10/117,875 |
6,597,196 | 04-05-2002 | $ | 125,000 | L/T | |||||
10/428,724 |
6,747,482 | 05-01-2003 | $ | 125,000 | L/T | |||||
10/829,527 |
6,989,688 | 04-21-2004 | $ | 125,000 | L/T | |||||
11/233,290 |
7,078,933 | 09-21-2005 | $ | 125,000 | S/T | |||||
11/432,425 |
7,142,012 | 05-10-2006 | $ | 125,000 | S/T | |||||
95916402.1 |
EU: 00755588 | 04-14-1995 | $ | 625,000 | L/T | |||||
95916402.1 |
Austria: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Belgium: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Denmark: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
France: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Germany: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Greece: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Ireland: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Italy: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Luxembourg: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Monaco: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Netherlands: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Portugal: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Spain: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Sweden: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
Switzerland: 00755588 | 04-14-1995 | ||||||||
95916402.1 |
UK: 00755588 | 04-14-1995 | ||||||||
0119441.2 |
EU: 1162746 | 08-13-2001 | ||||||||
0119441.2 |
France: 1162746 | 08-13-2001 | ||||||||
X-00
| X/X xx X/X Xxxxxxx | ||||||||||
| Xxxx. No. | Issue Number | Filing Date | Assigned Price | Gains | ||||||
0119441.2 |
Germany: 1162746 | 08-13-2001 | ||||||||
0119441.2 |
UK: 1162746 | 08-13-2001 | ||||||||
01118849.7 |
EU: Abandoned | 08-13-2001 | ||||||||
05015294.1 |
EU: Abandoned | 07-14-2005 | ||||||||
95193431.7 |
China: ZL95193431.7 | 04-14-1995 | $ | 200,000 | L/T | |||||
9611526-6 |
Singapore: 34648 | 04-14-1995 | $ | 100,000 | X/X | |||||
000000/00 |
Xxxxx: 0000000 | 10-14-1996 | $ | 325,000 | L/T | |||||
96-705754 |
Korea (South): ABANDONED | 10-14-1996 | ||||||||
| P005 Family: $750,000 |
||||||||||
US95/04639 |
Entered National Phase | 04-14-1995 | ||||||||
08/433,041 |
Abandoned | 05-03-1995 | ||||||||
08/951,814 |
6,088,526 ABANDONED | 10-14-1997 | ||||||||
09/377,304 |
6,300,793 | 08-18-1999 | $ | 300,000 | L/T | |||||
96915392.3 |
EU: 0824791 | 04-30-1996 | $ | 225,000 | L/T | |||||
96915392.3 |
UK: 0824791 | 04-30-1996 | ||||||||
02024873.8 |
EU: PENDING | 11-08-2002 | ||||||||
96194985.6 |
China: ZL96194985.6 | 04-30-1996 | $ | 50,000 | X/X | |||||
000000/00 |
Xxxxx: 0000000 | 11-04-1997 | $ | 100,000 | L/T | |||||
97-707796 |
Abandoned | 11-04-1997 | ||||||||
US96/05964 |
Entered National Phase | 04-30-1996 | ||||||||
8510228 |
Taiwan: NI-082978 | 05-01-1996 | $ | 50,000 | L/T | |||||
9705151-0 |
Singapore: 46840 | 04-30-1996 | $ | 25,000 | L/T | |||||
| P006 Family: $750,000 |
||||||||||
08/434,980 |
5,850,564 Abandoned | 05-03-1995 | ||||||||
09/089,298 |
6,417,690 | 06-01-1998 | $ | 100,000 | L/T | |||||
10/021,744 |
7,009,422 | 12-05-2001 | $ | 100,000 | L/T | |||||
11/326,543 |
7,126,375 | 01-04-2006 | $ | 100,000 | S/T | |||||
96920113.6 |
EU: 0824792 | 04-30-1996 | $ | 225,000 | L/T | |||||
A-20
| L/T or S/T Capital | ||||||||||
| Appl. No. | Issue Number | Filing Date | Assigned Price | Gains | ||||||
96920113.6 |
UK: 0824792 | 04-30-1996 | ||||||||
000000/00 |
Xxxxx: 0000000 | 04-30-1996 | $ | 100,000 | L/T | |||||
97-707797 |
Abandoned | 11-03-1997 | ||||||||
96/05982 |
Entered National Phase | 04-30-1996 | ||||||||
96194984.8 |
China: ZL 96194984.8 | 04-30-1996 | $ | 50,000 | L/T | |||||
85105227 |
Taiwan: NI-081900 | 05-01-1996 | $ | 50,000 | L/T | |||||
9706178-2 |
Singapore: 53402 | 04-30-1996 | $ | 25,000 | L/T | |||||
| P010 Family: $500,000 |
||||||||||
09/467,736 |
6,320,412 | 12-20-1999 | $ | 500,000 | L/T | |||||
US00/35019 |
Abandoned | 12-20-2000 | ||||||||
A-21
Table G-2: ALI Patents: $500,000
| L/T or S/T Capital | ||||||||||
| Appl. No. | Issue Number | Filing Date | Assigned Price | Gains | ||||||
| P007 Family: $250,000 |
||||||||||
08/506,828 |
5,640,344 | 07-25-1995 | $ | 100,000 | L/T | |||||
96921471.7 |
EU: 0,840,930 | 06-14-1996 | $ | 75,000 | L/T | |||||
96921471.7 |
France: 0,840,930 | 06-14-1996 | ||||||||
96921471.7 |
Germany: 0,840,930 | 06-14-1996 | ||||||||
96921471.7 |
Monaco: 0,840,930 | 06-14-1996 | ||||||||
96921471.7 |
Portugal: 0,840,930 | 06-14-1996 | ||||||||
96921471.7 |
UK: 0,840,930 | 06-14-1996 | ||||||||
US96/09889 |
Entered Xxxxxxxx Xxxxx | 00-00-0000 | ||||||||
000000/00 |
Xxxxx: 3,881,020 | 06-14-1996 | $ | 25,000 | L/T | |||||
98-700209 |
Korea (South): 397,062 | 01-12-1998 | $ | 20,000 | L/T | |||||
96196964.4 |
China: ZL96,196,964.4 | 06-14-1996 | $ | 20,000 | L/T | |||||
0000000-0 |
Xxxxxxxxx: 51,262 | 06-14-1996 | $ | 10,000 | L/T | |||||
| P008 Family: $250,000 |
||||||||||
08/708,403 |
6,034,547 ABANDONED | 09-04-1996 | ||||||||
09/243,998 |
6,329,839 | 02-04-1999 | $ | 150,000 | L/T | |||||
09/960,916 |
6,504,399 | 09-24-2001 | ||||||||
10/231,320 |
6,624,658 | 08-28-2002 | ||||||||
10/412.975 |
6,781,410 | 04-11-2003 | ||||||||
10/811,422 |
6,975,138 | 03-25-2004 | ||||||||
11/219,597 |
PENDING | 09-01-2005 | ||||||||
97939805.4 |
EU: PENDING | 09-04-1997 | $ | 50,000 | L/T | |||||
04021656.6 |
EU: PENDING | 09-11-2004 | ||||||||
000000/00 |
Xxxxx: PENDING | 09-04-1997 | $ | 50,000 | L/T | |||||
US97/15614 |
Entered National Phase | 09-04-1997 | ||||||||
A-22
Table G-3: BTR Technology, Confidential Information, and Mask Works
| BTR Technology, | Assigned | |||||||||
| Confidential Information, | Price | Assigned Price | L/T or S/T | |||||||
| Mask Works, Copy | Intangibles | Tangible | Capital | |||||||
| Rights, etc. | Delivery | Delivery | Gains | |||||||
Assignment
of trade secret rights in
Technology
previously
delivered under the
License Agreement |
$ | 225,000 | L/T | |||||||
Delivery of Originals in Paper
or Media |
$ | 25,000 | L/T | |||||||
Assignment
of mask work rights in Mask
Works Installed on
site by BTR and
assignment of
Copyrights, etc. |
$ | 250,000 | L/T | |||||||
A-23
Table G-4: Summary of Allocations and Payments
| Assigned Price | Assigned Price | Assigned Price | ||||||||||
| BTR/ALI | Patents | Technology, etc. | Mask Works, etc. | |||||||||
BTR |
$ | 6,500,000 | $ | 250,000 | $ | 250,000 | ||||||
ALI |
$ | 500,000 | ||||||||||
| Percentage of Escrow | Percentage of Each | |||||||||||
| Initial Payment | Payment | Interest Payment | ||||||||||
BTR |
$ | 3,500,000 | 93 | % | 93 | % | ||||||
ALI |
$ | 250,000 | 7 | % | 7 | % | ||||||
Total |
$ | 3,750,000 | 100 | % | 100 | % | ||||||
A-24
