PATENT PURCHASE AGREEMENT
PATENT PURCHASE AGREEMENT (this “Agreement”), effective as of May 13, 2013 (“Effective Date”), by and between Finishing Touches Home Goods Inc., a Nevada company (“Parent”), IP Acquisition Sub I, Inc., a Delaware corporation and wholly-owned subsidiary of Parent (“Purchaser”), and Mesh Comm, LLC., a Delaware corporation (“Seller”), each a (“Party”) and collectively the (“Parties”). In consideration of the mutual promises in this Agreement, the Parties, intending to be legally bound, agree as follows:
1.1 “Affiliate” means, with respect to any specified Person, any other Person that directly or indirectly through one or more intermediaries, controls, or is controlled by, or is under common control with, such specified Person. “Person” means an association, corporation, an individual, a partnership, a limited liability company, a trust or any other entity or organization.
1.2 “Confidential Information” means any information, whether in electronic, written, graphic, oral, machine readable or other tangible or intangible form, that is marked or identified at the time of disclosure as “Confidential” or “Proprietary” or in some other manner so as to clearly indicate its confidential nature. In order to be treated as “Confidential Information,” information that is disclosed orally must be identified at the time of disclosure or promptly thereafter as confidential or proprietary. The obligations under Article 7 shall not apply to the extent that the disclosing party establishes by competent proof that such information: (a) was publicly known and made generally available in the public domain prior to the time of disclosure by the disclosing party; (b) becomes publicly known and made generally available after disclosure by the disclosing party to the receiving party through no act or omission of the receiving party; (c) was already in the possession of the receiving party without confidentiality obligations at the time of disclosure hereunder by the disclosing party; (d) is obtained by the receiving party without confidentiality obligations from a third party without a breach of such third party’s obligations of confidentiality; or (e) is independently developed by the receiving party without use of or reference to the disclosing party’s Confidential Information.
1.3 “Disclaimer Issue” means a terminal disclaimer (including under 35 U.S.C. § 253 or 37 CFR 1.321 or the equivalent laws or regulation of any other patent authority, a “Terminal Disclaimer”) that exists or is or should reasonably be required to be made in a patent or patent application to address a double patenting issue, including such an issue raised in a judicial or administrative proceeding (including any proceeding with the U.S. Patent and Trademark Office or any corresponding foreign patent authority).
1.4 “Patent Documents” means documents, records and files in the possession or control of Seller relating to the Purchased Patents, including (a) the original (or, if the original is not available, a copy) of the patent certificate for each of the Purchased Patents that has issued, (b) complete prosecution files and docketing reports (including patent listing, current status, actions due and deadlines), including materials filed with the U.S. Patent and Trademark Office (or the equivalent authority in any other country) with respect to such Purchased Patents, (c) originals (or, if the original is not available, a copy) of all assignment agreements in its possession relating to the Purchased Patents, including a written assignment to Seller from each inventor for each Purchased Patent, and (d) books, inventor notebooks, and proof of maintenance payments to the U.S. PTO, and (e) any other materials or information in the possession or control of, or known to, Seller that, to Seller’s knowledge, is material to the enforcement of such Purchased Patents; but specifically excluding any portions of the above not related to the Purchased Patents and any attorney-client privileged information contained in any such documents, records and files.
1.5 “Potentially Relevant License” means any non-exclusive license listed in Section 3 of Exhibit D.
1.6 “Purchased Patents” means (a) the patents and patent applications identified in Exhibit A (“Patents”) and the inventions disclosed therein, (b) all reissues, divisionals, continuations, continuations-in-part, extensions, renewals, reexaminations and foreign counterparts thereof, and all other patents, patent applications, certificates of invention and other governmental grants resulting from the Patents, (c) all patents and applications which claim priority to or have common disclosure or common priority with any such patents or patent applications (for the avoidance of doubt, patents which include partial commonalities such as figures or patents whose features of the inventions are different from those of Purchased Patents may be excluded), and (d) all rights corresponding to any of the foregoing throughout the world (including the right to claim the priority date of any of such patents and patent applications and the right to xxx for and recover damages for any past, present or future infringement of such patents and patent applications); in each case, regardless of whether in existence prior to, as of or after the Effective Date.
1.7 “Transfer Documents” means fully executed, original patent transfer documents, in a form agreed to by the Parties and suitable for filing with the relevant governmental entity, in each jurisdiction where the Purchased Patents issued from or have been filed, as the case may be, in each case to record the change of ownership of the Purchased Patents from Seller to Purchaser. Unless otherwise directed by Purchaser, Transfer Documents for U.S. Purchased Patents shall be provided in the form of Exhibit B.
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(b) In addition to that set forth in Section (a) above, and in further consideration for the assignment of rights per Section 2.1 and performance of Seller’s other obligations hereunder, Purchaser is contemporaneously entering into that Consulting Agreement with Xxxxxxx X. Xxxxxxx dated as of the Effective Date (the “Consulting Agreement”) for a term of two (2) years under the terms as further set forth therein. Under the Consulting Agreement, Purchaser agrees to pay to Xxxxxxx X. Xxxxxxx the monthly compensation amount set forth in Section 2 of the Consulting Agreement and part (b) of Exhibit E.
(c) In addition to that set forth in Sections (a) and (b) above, and in further consideration for the assignment of rights per Section 2.1 and performance of Seller’s other obligations hereunder, Purchaser is contemporaneously entering into that Proceeds Interest Agreement with Xxxxxxx X. Xxxxxxx dated as of the Effective Date (the “Proceeds Interest Agreement”) under the terms set forth therein and in part (c) of Exhibit E.
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Term and Survival. The term hereof will commence on the Effective Date and will continue in full force and effect until the date of expiration of the last of the Purchased Patents.
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(a)
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Inventors. The inventors listed on the face of each Purchased Patent are the sole inventors with respect to the Purchased Patents and were either employees or contractors of Seller on the date on which (i) they executed written agreements in favor of Seller assigning each such inventor’s rights to the Purchased Patents and agreeing to cooperate with Seller in a manner consistent with the requirements of this Agreement, and (ii) the inventions disclosed in each Purchased Patent were conceived of and reduced to practice;
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(b)
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Ownership. Seller exclusively owns all right, title and interest in and to the Purchased Patents free of all liens, claims, licenses, covenants, encumbrances and interests (other than the Potentially Relevant Licenses). Seller is not aware of any facts or circumstances that are likely to give rise to any defect, lien, or enbrances on the Purchased Patents;
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(c)
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Notice of Ownership Challenges. Neither Seller nor any of its affiliates has received any notice or claim (whether written, oral or otherwise) challenging the inventorship or Seller’s ownership of any Purchased Patent (in whole or in part) or suggesting that any third party has any claim of legal or beneficial ownership with respect to any Purchased Patent;
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(d)
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Recordations. Seller has obtained and recorded previously executed assignments for all Purchased Patents as necessary to fully perfect Seller’s rights and title therein in accordance with governing law and regulations in each applicable jurisdiction, including written assignments to Seller from each inventor of each Purchased Patent;
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(e)
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No Exclusive Rights Granted. No exclusive right or license has been or is authorized or required to be granted under or to any Purchased Patent;
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(f)
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Standards Setting Organizations. Section 1 of Exhibit D sets forth a complete and accurate list of standards setting organizations of which Seller, any of its affiliates and any predecessor-in-title to any Purchased Patent is or was a member or has participated and which may have intellectual property terms, conditions or policies that may impact one or more Purchased Patents;
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(g)
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Governmental Rights. No governmental entity, governmental agency or university has any right, title, or interest in or to any of the Purchased Patents. No governmental entity, governmental agency or university funding was received, or resources or facilities from any governmental entity, governmental agency or university was used, in connection with the conception, development or reduction to practice of any invention disclosed in any Purchased Patents;
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(h)
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Terminal Disclaimers. If any of the Purchased Patents are terminally disclaimed to another patent or patent application, all patent applications subject to such terminal disclaimer are also included in the Purchased Patents;
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(i)
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Lawsuits and Other Proceedings. No Purchased Patent has been involved in any past or pending action, suit, investigation, claim or proceeding (including any reexamination), nor to the knowledge of the Seller has any Purchased Patent been threatened with any such action, suit, investigation, claim or proceeding, other than those set forth in Exhibit F;
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(j)
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Statutory Bars. To the best of Seller’s knowledge, no acts of Seller or any of its affiliates, or any party acting on behalf of or at the direction of Seller or any of its affiliates, have invalidated or will invalidate any Purchased Patent under the laws of any jurisdiction (including under 35 U.S.C. §102(b)) including through (i) disclosure of the invention or circulation of a printed publication that describes the claimed invention, (ii) public use of the claimed invention, or (iii) sale or offer for sale of the claimed invention more than one year prior to the application for such patent;
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(k)
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Invalidity and Unenforceability. Other than as set forth herein, no Purchased Patent that has issued has ever been found invalid, unpatentable or unenforceable for any reason in any administrative, arbitration, judicial or other proceeding. Neither Seller nor any of its affiliates has received any information, notice, or claim challenging or questioning the validity or enforceability or alleging the misuse of any Purchased Patent other than during the prosecution of each particular Purchased Patent before the U.S. Patent and Trademark Office or other corresponding foreign patent office. Other than as set forth below, to the best of Seller’s knowledge and belief, no Purchased Patent that has issued is invalid or unenforceable, and no acts of Seller, its affiliates or anyone acting on their behalf has committed fraud upon the United States Patent and Trademark Office or any other patent office with regard to any Purchased Patent. Other than as set forth below, to the best of Seller’s knowledge and belief, Seller has no information qualifying as prior art that would invalidate any of the Purchased Patents that have issued. To the best of Seller’s knowledge and belief, neither Seller nor any of its affiliates has committed any illegal tying, illegal term extension, patent misuse, other illegal anti-competition activities, laches, estoppel, waiver, inequitable conduct in violation of 35 CFR 1.56 or other law, in each case, that, if litigated, would result in the unenforceability or invalidity of any Purchased Patents. Notwithstanding any of the foregoing, Seller makes no representation or warranty related to invalidity and unenforceability with regard to U.S. Patent No. 8,019,836, U.S. Reexamination Application No. 95/002,000, any international or foreign counterparts thereto, and any prior art or other information, notice, or claim resulting therefrom;
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(l)
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Third Party Notices. Neither Seller nor any of its affiliates has put any third party on notice of actual or potential infringement of any Purchased Patent, other than those set forth in Exhibit F;
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(m)
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Docket. The docket and other Patent Documents provided by Seller are true and correct in all material respects;
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(n)
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Fees. All maintenance, renewal, application, or other fees required to maintain the validity of the Purchased Patents have been paid in full until the date sixty days after the Effective Date, proof of which is attached and included as part of Exhibit C;
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(o)
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Small Entity Status. No “small entity” or “micro entity” fees were paid for any Purchased Patent where such fees were not available for such Purchased Patent at such time under applicable law;
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(p)
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Upcoming Required Actions. There are no known actions that must be taken within 120 days after the Effective Date, including the payment of any registration, maintenance or renewal fees or the filing of any responses to office actions, documents, applications or certificates for the purposes of obtaining, maintaining, perfecting or preserving or renewing any Purchased Patent, except as specifically identified in Exhibit C. Proof of this representation and warranty are attached and included as part of Exhibit C;
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(q)
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Royalties. There are no royalties or honoraria payable by Seller to any third party by reason of the ownership, use, possession, license, sale, or disposition of any Purchased Patents; and
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(r)
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Broker’s Fees. Neither Seller nor any of its affiliates has knowledge of, and has taken no action which would give rise to, any claim for a broker’s or finder’s fee to be paid by Purchaser in connection with the consummation of the transactions provided for hereunder.
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7.1 Purchaser represents and warrants that Purchaser is a Nevada corporation, duly formed, validly existing and in good standing under the laws of the State of Nevada..
7.2 Purchaser represents and warrants that Purchaser has the full power and authority, and has obtained all third party consents, approvals or other authorizations required to enter into this Agreement and to carry out its obligations herein.
7.3 Purchaser represents and warrants that Purchaser’s execution, delivery and performance of its obligations under this Agreement will not conflict with or violate any laws to which Purchaser is subject, or any agreement or other obligation directly or indirectly applicable Purchaser or binding upon Purchaser’s assets.
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If to Seller:
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If to Purchaser:
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Mesh Comm, LLC
0000 Xxxxxxx Xxxxxxx
Xxxxxxx, Xxxxxxx 00000
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Finishing Touches Home Goods Inc,
0 Xxxx Xxxxxx, Xxxxx
Xxxxxxx XX XX0 0XX
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Such notices shall be deemed served when received by the addressee. Either Party may give written notice of a change of address and, after notice of such change has been received, any notice or request shall thereafter be given to such Party at such changed address.
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9.7 Governing Law, Exclusive Jurisdiction and Venue. This Agreement will be interpreted, construed and enforced in accordance with the laws of the State of New York and the federal laws of the United States of America, without regard to conflicts of law principles. Any dispute, controversy or claim arising out of or relating to this Agreement will be referred to and finally determined by arbitration in accordance with JAMS International Arbitration Rules.
9.10 Entire Agreement; Modification. This Agreement (including the Exhibits hereto) contains the entire agreement of the Parties with respect to the subject matter hereof and supersedes all previous communications, representations, understandings and agreements, either oral or written, between the Parties with respect to said subject matter. Except as set forth in Section 9.4, this Agreement may not be amended except by a writing signed by both Parties.
9.11 Counterparts; Scanned Signatures. This Agreement may be executed in two or more counterparts, each of which shall be an original and all of which shall constitute one Agreement. Electronically scanned signatures shall be acceptable as originals and binding on the Parties.
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SELLER- Mesh Comm, LLC. | PURCHASER- IP Acquisition Sub I, Inc. | |||
By:
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By:
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Name:
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Name:
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Title:
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Title:
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Date: | Date: |