Exhibit 10.1
Execution Version
PATENT PURCHASE AGREEMENT
This Patent Purchase Agreement, dated as of March 22, 1999, is by and among
Xxxxx X. Xxxx, an individual residing in Dallas, Texas ("Xxxx"), CustomTracks
Corporation, a Texas Corporation ("CustomTracks"), and Petabyte Corporation, a
Delaware corporation ("Petabyte"). Terms used herein with their initial letter
capitalized but not defined herein shall have the meaning given such terms in
that certain Stock Option Agreement, dated as of April 29, 1998, between Xxxx
and CustomTracks.
WHEREAS, Petabyte owns United States Patent Number 5,860,068, entitled
"Method and System for Custom Manufacture and Delivery of a Data Product" and a
related continuation application (collectively, the "Patent") and PCT
Application, filed December 3, 1998, for which the Patent is the "parent"
application (the "Foreign Patent Application").
WHEREAS, pursuant to that certain Assignment (herein so called), effective
May 14, 1998, by and between Xxxx, as assignor, and Petabyte, as assignee, Xxxx
transferred to Petabyte all right, title, and interest in and to the Patent
Rights (which includes the Patent and the Foreign Patent Application), the
Technology, and the Marks (as such terms are defined in the Assignment);
WHEREAS, pursuant to that certain Stock Purchase Agreement (herein so
called), entered into as of May 14, 1998, Xxxx sold to CustomTracks 100% of the
outstanding shares of Petabyte;
WHEREAS, Petabyte desires to transfer to Xxxx the Patent and the Foreign
Patent Application, while retaining a use license, on the terms and conditions
stated herein;
WHEREAS, the parties desire to amend the Assignment and Xx. Xxxx'x
employment agreement, as set forth in the forms of amendments attached hereto
as Exhibit A and Exhibit B;
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NOW, THEREFORE, in consideration of the mutual covenants contained herein,
the parties agree as follows:
1. Patent Transfer; Marks; Patent License. (a) Subject to the provisions of
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the following Subsection (b), Petabyte hereby irrevocably assigns, sells,
transfers, and conveys to Xxxx, Petabyte's entire right, title, and interest in
and to the Patent and the Foreign Patent Application, the same to be now held
and enjoyed by Xxxx for his own use and enjoyment, and for the use and enjoyment
of his successors, assigns, or other legal representatives, to the end of the
term or terms for which the Patent and any international patents that issue
under the Foreign Patent Application are granted or reissued, as fully and
entirely as the same would have been held and enjoyed by Petabyte if this
assignment and sale had not been made, together with all claims for damages by
reason of past infringement of said Patent and any such international patents,
with the
right to xxx for and collect the same for his own use and behalf and
for the use and behalf of his successors, assigns, and other legal
representatives.
Petabyte hereby reserves for the benefit of CustomTracks and its Affiliates,
and Xxxx hereby grants to CustomTracks and its Affiliates, a royalty bearing
(subject to the provisions of the following paragraph, worldwide, nonexclusive,
nontransferable, nonsublicensable license under the Patent and any international
patents that may issue under the Foreign Patent Application to make, have made,
use, sell, import, offer for sale, lease, or otherwise transfer any product,
apparatus, composition of matter and/or article of manufacture and to practice
or have practiced for the benefit of CustomTracks and its Affiliates any method
claimed in the Patent and such international patents. "Affiliate" shall have
the meaning given such term in that certain AMTC Corporation Stock Option
Agreement, effective as of April 29, 1998, between AMTC Corporation and Xxxx
(the "Option Agreement"). With the consent of Xxxx, an Affiliate of
CustomTracks shall continue to have the benefit of the license referred to in
this paragraph after it ceases to be an "Affiliate" (such Affiliates are
hereinafter referred to as "Former Affililates"); otherwise, the license shall
expire when the Affiliate in question ceases to be an "Affiliate," as defined.
This license that is reserved unto and conveyed to CustomTracks and its
Affiliates does not include the right to assert patent infringement claims under
the Patent or the international patents, which right is reserved unto and held
by Xxxx.
Section 4 of the Assignment establishes a royalty payment to be paid for
the use of Patent Rights, Technology, and Marks. Subject to the provisions of
the following sentence, Xxxx hereby waives the right to receive any royalties
under Section 4 of the Assignment. Xxxx'x right to receive royalties shall
revive with respect to the use of the Patent Rights only and Xxxx shall be
entitled to receive the royalties set forth in Section 4 of the Assignment with
respect to the use of the Patent Rights only, as follows:
. With respect to the use of the Patent Rights by CustomTracks and its
Affiliates and Former Affiliates, upon Xxxx'x separation from employment with
the Company and its Affiliates.
. With respect to the use by a Material Subsidiary of the Patent
Rights, a Change of Control occurs with respect to a Material Subsidiary and the
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Material Subsidiary continues to have the license referred to in the preceding
paragraph.
(b) Upon Xxxx'x request, Petabyte will return to Xxxx ownership of the
marks "CustomTracks" and "Petabyte," together with associated goodwill, if they
are not then being used in the conduct of the business of CustomTracks or an
Affiliate and there is no reasonably foreseeable use of them by CustomTracks or
an Affiliate.
2. Payments under Stock Purchase Agreement; Nominal Payment. The parties
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acknowledge that CustomTracks has paid to Xxxx $200,000 pursuant to the Stock
Purchase Agreement. The parties agree that the Future Payments (as defined in
the Stock Purchase Agreement) are hereby eliminated, and CustomTracks shall have
no obligation to make any such Future Payments. CustomTracks hereby agrees to
pay to a charity of Xxxx'x choosing the amount of $50,000.
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3. Miscellaneous.
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(a) Notices. All notices that are required or may be given pursuant to
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the terms of this Agreement shall be in writing and shall be sufficient in all
respects if given in writing and delivered personally or by a recognized
courier service or by registered or certified mail, postage prepaid, to the
parties at the following addresses:
If to: CustomTracks and Petabyte If to: Xxxxx X. Xxxx
CustomTracks Corporation
00000 Xxxx Xxxx 00000 Xxxx Xxxx
Xxxxx 0000 Xxxxx 0000
Xxxxxx, Xxxxx 00000 Xxxxxx, Xxxxx 00000
Attn: General Counsel or to
Xxxx'x residence
Notices shall be effective upon receipt. Any party to this Agreement may
change the address for purposes of giving notice under this Agreement by giving
notice of such change to the other party to this Agreement in accordance with
this Subsection 3(a).
(b) Attorneys' Fees and Costs. In the event that attorneys' fees or
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other costs are incurred to secure performance of any of the obligations in this
Agreement provided for, or to establish damages for the breach thereof or
to obtain any other appropriate relief, whether by way of prosecution or
defense, the prevailing party shall be entitled to recover reasonable
attorneys' fees and costs incurred therein.
(c) Further Assurances. Each party to this Agreement agrees to execute
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any and all documents and to perform such other acts as may be necessary or
expedient to further the purposes of this Agreement and the transactions
contemplated by this Agreement.
(d) Counterparts. This Agreement may be executed in one or more
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counterparts for the convenience of the parties to this Agreement, all of
which together shall constitute one and the same instrument.
(e) Entire Agreement. This Agreement contains the entire understanding
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of the parties relating to the subject matter contained in this Agreement and
supersedes all prior written or oral and all contemporaneous oral agreements
and understandings relating to the subject matter of this Agreement. This
Agreement cannot be modified or amended except in writing signed by the party
against whom enforcement is sought.
(f) Governing Law. This Agreement shall be governed by, and construed
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and interpreted in accordance with, the substantive laws of the State of Texas
without giving effect to any conflict-of-laws rule or principle that might
result in the application of the laws of another jurisdiction.
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IN WITNESS WHEREOF, the parties to this Agreement have executed this
Agreement as of the date first above written.
CUSTOMTRACKS CORPORATION
/s/ Xxxxxx X. Xxxxxxxx
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Its: V.P.
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Date: July 23, 1999
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PETABYTE CORPORATION
/s/ Xxxxxx X. Xxxxxxxx
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Its: V.P.
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Date: July 23, 1999
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/s/ Xxxxx X. Xxxx
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Xxxxx X. Xxxx
Date: July 23, 1999
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Exhibit A
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AMENDMENT TO ASSIGNMENT
This Amendment to Assignment, dated as of March 22, 1999, between Xxxxx X.
Xxxx ("Xxxx") and Petabyte Corporation, a Texas corporation ("Petabyte") hereby
amends that certain Assignment, made and effective as of May 14, 1998 (the
"Assignment"), between Xxxx and Petabyte.
WHEREAS, Xxxx, Petabyte, and CustomTracks Corporation, a Texas corporation
("CustomTracks"), entered into that certain Patent Purchase Agreement (herein so
called), dated as of March 22, 1999;
WHEREAS, Section 5 of the Assignment conveys to Petabyte the specified
rights to Inventions (as defined) useful in the Business (as defined);
WHEREAS; CustomTracks is not currently actively pursuing the Business and,
under applicable law, CustomTracks is entitled to certain rights with respect to
inventions, copyrightable materials, and other intellectual property inspired by
Xxxx that arise during the course of Xxxx'x employment with CustomTracks;
WHEREAS, in light of the foregoing, Section 5 of the Assignment is
superfluous and the parties desire to amend the Assignment as set forth herein;
In consideration of the premises and the mutual covenants contained herein
and in the Patent Purchase Agreement, the parties agree as follows:
1. The first sentence of Section 4 of the Assignment is deleted and the second
sentence thereof is amended in its entirety to read: "All manner of exploitation
of the Technology and Patent Rights shall be in Petabyte's discretion, subject
to the provisions of this Section 4.
2. The term "Patent Rights" for purposes only of Section 4 of the Assignment
shall mean:
"United States Patent Number 5,860,068, entitled 'Method and System for
Custom Manufacture and Delivery of a Data Product,' any continuation
applications related to such patent, and PCT Application, filed December 3,
1998, for which such United States patent is the 'parent' application."
As used elsewhere in the Assignment, the term "Patent Rights" shall have the
meaning given it in Section 2 of the Assignment.
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3. The parties acknowledge that under Subsection 1(a) of the Patent Purchase
Agreement Xxxx has waived, upon the terms and conditions stated therein, the
right to receive royalties under Section 4 of the Assignment.
4. Section 5 is hereby deleted from the Assignment.
5. Other than as set forth herein, the Assignment remains in full force and
effect as written.
IN WITNESS WHEREOF, the parties to this Agreement have executed this
Agreement as of the date first above written.
PETABYTE CORPORATION
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Its: -----------------------------
Date: -----------------------------
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Xxxxx X. Xxxx
Date: -----------------------------
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Exhibit B
AMENDMENT TO EMPLOYMENT AGREEMENT
This Amendment to Employment Agreement, dated as of March 22, 1999,
between Xxxxx X. Xxxx ("Employee") and CustomTracks Corporation (formerly Amtech
Corporation), a Texas corporation (the "Company") hereby amends that certain
Employment Agreement, effective as of April 29, 1998 (the "Employment
Agreement"), between Employee and the Company.
WHEREAS, Employee and Petabyte Corporation, a Delaware corporation,
entered into that certain Amendment to Assignment (herein so called), dated as
of March 22, 1999, which, inter alia, deletes Section 5 of that certain
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Assignment, made and effective as of March 14, 1998;
WHEREAS, in light of the foregoing, the parties desire to amend the
Employment Agreement as provided herein;
In consideration of the premises and the mutual covenants contained
herein and in the Patent Purchase Agreement and the Amendment to Assignment, the
parties agree as follows:
1. Section 6 of the Employment Agreement is amended by adding the following
two sentences to the end thereof: "The parties agree that the ownership of
intellectual property that is created, conceived, developed, and the like by
Employee during the term of Employee's employment with the Company will be
governed by applicable law. Employee will render to the Company such assistance
as may be reasonably necessary to evidence and protect the ownership of its
intellectual property. If such assistance is required after Employee's
separation from employment with the Company, reasonable compensation will be
paid to Employee for such assistance.
2. Other than as set forth herein, the Employment Agreement remains in full
force and effect as written.
EXECUTED, on the dates set forth below, to be effective as of the date
first set forth above.
CUSTOMTRACKS CORPORATION
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Date:
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Xxxxx X. Xxxx
Date:
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