Exhibit 10(z)(2)
IP Sale Agreement
between
NCT Group, Inc.
as the Seller
NCT Audio Products, Inc.
as the Licensee
and
New Transducers Limited
as Purchaser
relating to
the sale of intellectual property relating to flat panel speaker technology
THIS AGREEMENT is dated April 11, 2000 and made
BETWEEN:
(1) NCT GROUP, INC. (the 'Seller"). a corporation incorporated under the laws
of Delaware, USA and having its principal office at 00 Xxxxxxx Xxxxxx,
Xxxxxxxx, XX 00000, XXX,
(2) NCT AUDIO PRODUCTS, INC., (the "Licensee"), a corporation incorporated
under the laws of Delaware, USA and having its principal office at 00
Xxxxxxx Xxxxxx, Xxxxxxxx, XX 00000. XXX; and
(3) NEW TRANSDUCERS LIMITED, (the 'Purchaser"), registered in England and Wales
under company number 3135528 and having its registered office at Xxxxxxx
Xxxxx, 00 Xxxxxxx Xxxxx. Xxxxxx XX0 0XX.
Background:
(A) The Seller and NXT plc (the Purchaser's parent company) have entered into
the Framework Agreement for the purpose of reorganising existing
arrangements and entering into new arrangements in relation to the
ownership and exploitation of flat panel speaker technology.
(B) The Licensee is licensed by the Seller to use certain of the intellectual
property which is to be sold to the Purchaser, and has agreed that such
licence should be terminated.
(C) Pursuant to the Framework Agreement, the parties have entered into this
Agreement for the purpose of regulating the sale and licence by the Seller
to the Purchaser of certain intellectual property.
The parties agree that:
1. Definitions
1.1 In this Agreement, the following expressions shall bear the following
meanings:
"Affiliate' means:
(i) any legal entity in which the Seller has an Interest;
(ii) any legal entity which directly or indirectly Controls the Seller -
('Parent");
(iii) any legal entity in which a Parent has an Interest; or
(iv) the company OnActive L.L.C. provided that the percentage of shares held by
the Seller or an Affiliate (as defined in (i) - (iii) above) in OnActive
L.L.C. does not fall below 42.5%.
Control of any entity shall be deemed to exist by virtue of having the right to
influence the operation and affairs thereof by holding directly 51% or more of
each of the equity and voting rights in such entity.
Interest in an entity shall be deemed to exist by virtue of owning voting rights
equal to or greater than 50% of all voting rights in such entity.
"Agreed Form' means, in relation to any document, a document in the terms signed
or initialled by or on behalf of the parties for identification.
"Associated IP" means any invention, know how, confidential information, utility
model, copyright, design right, registered design or similar rights owned by the
Seller or its Affiliates which would be ordinarily used in producing any product
or using any method in accordance with any of the claims of the Patents
"DMC Media Patents" means US patent nos. 6142254 and 6147594, and in addition
all patents and patent applications owned by the Seller or its Affiliates which
claim priority from the same.
"DMC Patents" means the patents and patent applications listed in schedule 2
"Framework Agreement" means the Framework Agreement of even date between NXT
plc, the Purchaser, the Seller and the Licensee.
"NCT Audio Agreement" means any agreement or arrangement between the Seller and
the Licensee under which the Licensee holds any right or interest in the
Patents.
"Net Sales Revenues" means the gross revenues received by the Purchaser from
licensing third parties including Affiliates less royalties payable to third
parties and taxes not based upon income.
"Patents" means, with the exception of the DMC Media Patents.
(i) all patents and patent applications listed in schedule 1 and schedule 2,
(ii) any other patents or patent applications owned by the Seller or its
Affiliates whether now or at any time in the future which relate to flat
panel speakers, acoustic objects, transducers with acoustic objects or
related acoustic technology but excluding such patents or patent
applications which relate exclusively to the reduction, isolation, control
or attenuation of noise or vibration:
(iii)any continuations, continuations in part, divisions extensions, reissues,
re- examinations, or renewals of (i) or (ii) above; and
(iv) any improvements to (i), (ii) or (iii) above existing now or in the future
which are within the power, possession, custody or control of the Seller or
its Affiliates but are not subject to any obligation of confidentiality to
a third party.
"Purchaser's Solicitors" means Xxxxxxx 8 Xxxxxxx of CityPoint, One Xxxxxxxxx
Xxxxxx, Xxxxxx XX0X 0XX.
"Sale Assets" means the rights and assets agreed to be sold under clause 3 1.
"Third Party Licences" means the licences described in schedule 3.
2. Termination of the NCT Audio Agreement
2.1 The Seller shall procure that, with effect from the date of this Agreement,
the NCT Audio Agreement is terminated.
3. Sale of Intellectual Property
3.1 With effect from the date of this Agreement, the Seller shall sell or
procure the sale of and the Purchaser shall purchase free from encumbrances
and with full title guarantee:
(A) the Patents;
(B) the Associated IP: and
(C) subject to the Third Party Licences, the right to all damages and any other
remedy in respect of any infringement of the Patents or the Associated IP
prior to the date of this Agreement
4. DMC Patents Licensing Restriction and DMC Media Patents Licence
4.1 The Purchaser undertakes for two years from the date of this Agreement that
it shall not, without the prior consent of the Seller (such consent not to
be unreasonably withheld or delayed), license any third party to use the
DMC Patents in relation to the manufacture and sale of any panels modulated
by Piero ceramic transducers either in standalone or integrated into
loudspeaker assemblies.
4.2 The Seller and the Purchaser are in agreement that one of the DMC Media
Patents (no. 6142254) was exclusively licensed to the Purchaser by virtue
of the New Cross Licence Agreement dated 27'" September 1997 (as amended on
9" February 1999). However, they are in dispute as to whether the other DMC
Media Patent (no. 6147594) was also so licensed. The following provisions
of this clause are agreed in settlement of that dispute.
(A) With effect from the date of this Agreement, the Seller shall grant or
procure the grant of a non-exclusive, royalty free (subject to (C) below),
worldwide, perpetual and irrevocable licence to the Purchaser to use have
used and sub-license the DMC Media Patents for any purpose ("DMC Media
Patents Licence").
(B) The Purchaser agrees that for 5 years from the date of this Agreement, it
shall not include the DMC Media Patents within any licensing arrangements
with third parties. However, if during that 5 year period, any of the
licensees of the Purchaser are subject to proceedings for infringement of
the DMC Media Patents or threats of the same then the Purchaser shall be
entitled to sublicense the DMC Media Patents to such licensees with effect
from the date of any alleged infringement.
(C) Should the Purchaser sub-license the DMC Media Patents for applications
involving the conveying of audiovisual advertising information from a
remote (i.e. off-site) central communication system within two years from
the date of this Agreement, the Purchaser shall account to the Seller for
50% of its Net Licensing Revenues directly arising from any such
sub-licensing. For the avoidance of doubt, the DMC Media Patents Licence
shall become royalty free as from the second anniversary of the date of
this Agreement when any entitlement of the Seller to a share of the
Purchaser's Net Licensing Revenues shall cease.
4.3 The Purchaser may not commence or maintain any proceedings for infringement
of the DMC Media Patents against any third party without the prior written
consent of the Seller. The giving of such consent shall be at the sole
discretion of the Seller.
5. Consideration
5.1 The Seller is to receive certain benefits and rights under clause 2.1 of
the Framework Agreement in consideration for agreeing to the obligations
listed in clause 3.1 of the Framework Agreement, including this sale of the
Sale Assets and licence of the DMC Media Patents. The Seller hereby
acknowledges that the consideration payable by the Purchaser to the Seller
for sale of the Sale Assets shall be an unapportioned part of the benefits
and rights received by the Seller under clause 2.1 of the Framework
Agreement.
6. Assignments
6.1 Upon the execution and exchange of this Agreement, the Seller shall
promptly deliver to the Purchaser assignments of the Sale Assets in Agreed
Form, duly executed by the Seller or its Affiliates (as appropriate).
6.2 Any provision of this Agreement which is capable of being performed after
the date of this Agreement but which has not been performed at or before
the date of this Agreement and all warranties, indemnities and covenants
given under this Agreement shall remain in full force and effect
notwithstanding the execution of assignments pursuant to this clause 6.
6.3 For the purpose of this clause 6, time is of the essence.
7. Third Party Licences
7.1 With effect from the date of this Agreement and excluding the matters
covered by clause 7 2, the Purchaser licenses to the Seller such of the
Patents and the Associated IP as are strictly necessary to enable the
Seller and its Affiliates to perform their respective obligations under the
Third Party Licences while such Third Party Licences remain in force. The
Purchaser gives no warranties or representations in respect of the Patents
or the Associated IP licensed under this clause 7.1, and excludes all
implied warranties or representations to the fullest extent permitted by
law.
7.2 To the extent that the Third Party Licences contain obligations on the
Seller or its Affiliates to prosecute or maintain in force any of the
Patents then, on being informed in writing of the relevant Patents and the
nature and extent of such obligations, the Purchaser shall perform such
obligations on behalf of the Seller The Seller shall promptly reimburse the
Purchaser for the costs of all professional services employed by the
Purchaser and for all fees paid by the Purchaser in the course of
fulfilling such obligations.
7.3 Other than as provided for in clause 7.2, the Purchaser shall not be liable
for any of the obligations of the Seller or warranties given by or implied
on behalf of the Seller or its Affiliates under the Third Party Licences.
Further, the Seller shall indemnify the Purchaser in respect of any costs,
damages or penalties incurred by the Purchaser which result from a claim
that the Purchaser is so liable.
7.4 The Seller shall use all reasonable efforts to procure the termination or
expiry of each of the Third Party Licences at the earliest opportunity.
This clause 7.4 shall not oblige the Seller to place itself in breach of
any of the Third Party Licences nor to incur a liability to pay damages or
compensation for termination of the Third Party Licences. Further, the
Seller shall procure that neither it nor its Affiliates breaches any
provision of the Third Party Licences where to do so prejudices the Patents
or the rights of the Purchaser in the Patents.
7.5 The Seller shall not consent to the amendment, variation or extension of
any of the Third Party Licences without the prior written consent of the
Purchaser.
7.6 The Seller shall promptly notify the Purchaser in writing of:
(A) the termination or expiry of each of the Third Party Licences, and
(B) any request to amend, vary or extend any of the Third Party Licences.
8. Warranties from the Seller
8.1 The Seller warrants and represents to and for the benefit of the Purchaser
in the terms of the warranties and representations set out below (the "IP
Warranties') and acknowledges and accepts that the Purchaser is entering
into this Agreement in reliance upon each of the IP Warranties. The Seller
warrants that:
(A) one of the Seller or its Affiliates are in each case the sole legal,
beneficial and registered owner of the patents and patent applications
listed in schedule 1 and 2;
(B) other than the Third Party Licences, no person has been granted any right,
title or interest in, including without limitation any charge of or pledge
in relation to the Patents or the Associated IP by the Seller or its
Affiliates;
(C) the descriptions of the Third Party Licences in schedule 3 include all
material terms with regard to the rights licensed and the fields of use,
and there are no further agreements or understandings which are relevant to
the effect or interpretation of the Third Party Licences;
(D) other than as described in schedule 3, no other person holds any right,
title or interest in the Patents or the Associated IP:
(E) neither the Seller nor its Affiliates know of or have been notified of any
claim or allegation or have been advised that use of the Patents, the
Associated IP or the DMC Media Patents or the DMC Patents infringes the
rights of any third party or that the Patents are invalid;
(F) the Seller is entitled to grant the licence in the terms set out in clause
4,
(G) none of the patents or patent applications listed in schedule 1 and
schedule 2 is the subject of a challenge, opposition, revocation action or
threat of any of the foregoing which has been notified to the Seller or its
Affiliates,
(H) none of the patents or patent applications listed in schedule 1 and
schedule 2 is the subject of an application to surrender;
(I) so far as the Seller is aware, other than has been communicated to the
Purchaser in writing, there is no deadline arising within 1 month of the
date of this Agreement for filing any pleadings or evidence in respect of
any proceedings concerning the patents or patent applications listed in
schedule 1 and schedule 2.
8.2 Each of the IP Warranties shall be separate and independent and, save as
expressly provided, shall not be limited by reference to any other IP
Warranty, anything in this Agreement, anything in the Framework Agreement,
or any other information known to the Purchaser.
8.3 In this Agreement, references to the awareness of the Seller shall mean any
fact, matter or circumstance which is within the knowledge of or has come
to the attention of any of the officers or employees of the Seller or its
Affiliates.
9. Delivery Up
9.1 Within 20 business days of the date of this Agreement, the Seller shall
deliver up to the Purchaser the following items where they are within the
power, possession, custody or control of the Seller or its Affiliates:
(A) originals of all registration certificates and renewal certificates for the
Patents, and (where no patent has yet been granted) then the application
receipts;
(B) originals (or, if not available, then copies) of all documents concerning
any previous transfers of ownership of the Patents, and
(C) copies of all relevant correspondence, evidence and legal advice which
concerns the validity, enforceability or ownership of the Sale Assets, and
(D) full written details if any of any matter covered by item (iii) of the
definition of Patents.
9.2 In performance of its obligations under clauses 9.1(A), (B) (C) and (D),
the Seller shall notify the Purchaser of the details of all professional
agents who hold the documents and information required under such clauses
and shall instruct such agents to accept the Purchaser's instructions with
regard to any of the Sale Assets (including the provision to the Purchaser
of any documents or information within their possession or control).
10. Further Assurance
10.1 The Seller shall promptly do and shall procure that its Affiliates promptly
do ail such things as may be reasonably required by the Purchaser in order:
(A) to perfect or confirm the Purchaser's ownership of the Sale Assets;
(B) to ensure that the Purchaser is registered as the registered proprietor of
the Patents with the relevant patent offices;
(C) to assist the Purchaser or its licensees to take legal proceedings against
third parties in respect of any infringement of the Patents or the
Associated IP or to defend any proceedings concerning the validity of the
Patents
(D) to give the Purchaser the full benefit of this Agreement
10.2 The Purchaser shall reimburse the Seller for any reasonable disbursements
incurred by the Seller or its Affiliates from the date of this Agreement in
complying with the requirements of the Purchaser under clause 10.1.
11. Assignment
11.1 This Agreement shall be binding upon and enure for the benefit of the
successors of the parties but shall not be assignable.
12. Whole agreement and variations
12.1 This Agreement, together with any documents referred to in it including the
Framework Agreement, constitute the whole agreement between the parties
relating to its subject matter and supersedes and extinguishes any prior
drafts, agreements, and undertakings, whether in writing or oral, relating
to such subject matter, except to the extent that the same are repeated in
this Agreement.
12.2 Each of the parties acknowledges that it has not been induced to enter into
this Agreement by any representation, warranty, promise or assurance by the
other party or any other person save for those contained in this Agreement
or the Framework Agreement.
12.3 No variation of this Agreement shall be effective unless made in writing
and signed by each of the parties.
13. Rights etc cumulative and other matters
13.1 The rights, powers, privileges and remedies provided in this Agreement are
cumulative and are not exclusive of any rights, powers, privileges or
remedies provided by law or otherwise.
13.2 No failure to exercise nor any delay in exercising any right, power,
privilege or remedy under this Agreement shall in any way impair or affect
the exercise thereof or operate as a waiver thereof in whole or in part.
13.3 No single or partial exercise of any right, power, privilege or remedy
under this Agreement shall prevent any further or other exercise thereof or
the exercise of any other r right, power, privilege or remedy.
14. Invalidity
14.1 If any provision of this Agreement shall be held to be illegal, void,
invalid or unenforceable under the laws of any jurisdiction, the legality,
validity and enforceability of the remainder of this Agreement in that
jurisdiction shall not be affected, and the legality, validity and
enforceability of the whole of this Agreement in any other jurisdiction
shall not be affected.
15. Contracts (Rights of Third Parties) Xxx 0000
15.1 No person who is not a party to this Agreement shall have any right under
the Contracts (Rights of Third Parties) Xxx 0000 to enforce any term of
this Agreement.
16. Counterparts
16.1 This Agreement may be executed in any number of counterparts, which shall
together constitute one Agreement. Any party may enter into this Agreement
by signing any such counterpart.
17. Costs
17.1 Each party shall bear its own costs arising out of or in connection with
the preparation, negotiation and implementation of this Agreement.
18. Law and Jurisdiction
18.1 English Law
This Agreement shall be governed by, and construed in accordance with, English
law.
18.2 Jurisdiction
In relation to any legal action or proceedings to enforce this Agreement or
arising out of or in connection with this Agreement ("Proceedings") each of the
parties irrevocably submits to the exclusive jurisdiction of the English Courts
and waives any objection to Proceedings in such courts on the grounds of venue
or on the grounds that the Proceedings have been brought in an inconvenient
forum. This clause operates for the sole benefit of the Purchaser who shall
retain the right to take Proceedings in any other jurisdiction.
18.3 Process Agent
The Seller appoints Noise Cancellation Technologies (Europe) Limited of Xxxx 0,
Xxxxx Xxxxx, 0 Xxxxxxxxx Xxx, Xxx Xxxx, Xxxxxxxxx XX0 0XX as its process agent
to receive on its behalf service of process in any proceedings in England
Service upon the process agent shall be good service upon the Seller whether or
not it is forwarded to and received by the Seller. If for any reason the process
agent ceases to be able to act as process agent, or no longer has an address in
England, the Seller irrevocably agrees to appoint a substitute process agent
with an address in England acceptable to the Purchaser and to deliver to the
Purchaser a copy of the substitute process agent's acceptance of that
appointment within 20 Business Days.
IN WITNESS WHEREOF the duly authorised representatives of the parties have
executed this Agreement on the day first before written.
SCHEDULE 1: THE PATENTS
NCT # XXX/APP # FILED/ISS. COUNTRY TITLE INVENTOR STATUS
----- --------- ---------- ------- ----- -------- ------
-----------------------------------------------------------------------------------------------------------------
121 PRCT/US91/02731 F. 04/19/91 PCT Improvements in and Xxxx, Action Completed
Relating to Xxxxxxxxx
Transmission Line
Loudspeakers
0 580 579 F. 04/19/91 EPO Granted
E 167775 Iss. 06/24/98 Austria Granted
0 580 579 Exp. 04/19/11 Belgium Granted
0 580 579 Denmark Granted
0 580 579 France Granted
0 580 579 691 29 664.2 Germany Granted
0 580 579 Greece Granted
0 580 579 Italy Granted
0 580 579 Granted
0 580 579 Luxemborg Granted
0 580 579 Granted
0 580 579 Netherlands Granted
0 580 579 Spain Granted
0 580 579 Sweden Granted
98112067.6 F. 00/00/00 Xxxxxxx
Xxxxxxxxxxx
XX
Xxxx Xxxx
-----------------------------------------------------------------------------------------------------------------
197 5,473,214 F. 05/07/93 US Low Voltage Xxxxxx Xxxxxxxxxx Granted
Iss. 12/05/95 Piezo Actuators
Exp. 05/07/13
PCT/US94/04553 F. 05/04/94 PCT Action Completed
2,161,412 F. 05/04/94 Canada Granted
Iss. 04/04/00 Granted
Exp. 05/04/14 Granted
0 698 298 F. 05/04/94 EPC Granted
0 698 298 Iss. 02/02/00 France Granted
69422916.4 Exp. 05/04/14 Germany Granted
0 698 298 Italy Granted
0 698 298 Sweden
0 698 298 UK
-----------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------
253 5,828,768 F. 05/11/94 US Multimedia Personal Eatwell, Granted
Computer
Iss. 10/27/98 With Active Noise Kokonsaski,
Reduction &
Exp. 10/27/15 Piezo Speakers XxXxxxxxxx,
PCT/US95/05720 F. 05/09/95 PCT Xxxxx, Action Completed
2,188,536 F. 05/09/95 Canada Xxxxxxxxxx Granted
Iss. 02/13/01
Exp. 05/09/15
95918420.1 F. 05/09/95 EPC Pending
98106605.7 F. 06/25/98 Hong Kong Pending
-----------------------------------------------------------------------------------------------------------------
256 5,638,456 F. 07/06/94 US Piezo Speaker & Kokonaski, Granted
Installation
Iss. 06/10/97 Method for Laptop Xxxxxx,
Personal
Exp. 06/10/14 Computer & Other Xxxxxxxx,
Multimedia
PCT/US95/08131 F. 06/29/95 PCT Applications Xxxxxxxx Action Completed
2,194,266 F. 06/29/95 Canada Pending
95924733.9 F. 06/29/95 EPC Pending
98106604.8 F. 06/25/98 Hong Kong Pending
-----------------------------------------------------------------------------------------------------------------
260 5,901,231 F. 09/25/95 US Piezo Speaker for Eatwell, Granted
Improved
Iss. 05/04/99 Passenger Cabin Audio Xxxxxxxx,
Systems
Exp. 09/25/15 Xxxxxxxx
PCT/US96/15323 F. 09/25/96 PCT Action Completed
PI 9611372-3 F. 09/25/96 Brazil Pending
2,230,376 F. 09/25/96 Canada Pending
96933882.1 F. 09/25/96 EPC Pending
99108305.6 EPC (Divisional appln. of Pending
96933882.1)
513811/97 F. 09/25/96 Japan Pending
702136/1998 F. 09/25/96 Korea Pending
1724CAL96 F. 09/27/96 India Pending
-----------------------------------------------------------------------------------------------------------------
260-D1 09/208,320 F. 12/09/98 US Piezo Speaker for Eatwell, Pending
Improved Passenger Xxxxxxxx,
Cabin Audio Systems Xxxxxxxx
(Divisional of 260)
-----------------------------------------------------------------------------------------------------------------
260-C1 6,181,797 F. 01/09/99 US Piezo Speaker for Eatwell, Granted
Improved
Iss. 01/30/01 Passenger Cabin Audio Xxxxxxxx,
Systems
Exp. 09/25/15 (Continuation of 260) Xxxxxxxx
-----------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------
269 5,838,805 F. 11/06/95 US Piezoelectric Warnaka, Granted
Transducers
Iss. 11/17/98 Warnaka
Exp. 11/06/15
1868CAL96 F. 10/25/96 India Pending
PCT/US96/17602 F. 11/04/96 PCT Action Completed
PI 9611417-7 F. 11/04/96 Brazil Pending
2,235,754 F. 11/04/96 Canada Pending
96937877.7 F. 11/04/96 EPC Pending
518254/97 F. 11/04/96 Japan Pending
702723/1998 F. 11/04/96 Korea Pending
-----------------------------------------------------------------------------------------------------------------
269C 6,195,440 F. 11/17/98 US Piezoelectric Warnaka, Granted
Transducer
Iss. 02/27/01 (CIP of 269) Warnaka,
Exp. 11/06/15
-----------------------------------------------------------------------------------------------------------------
277 08/720,163 F. 09/25/96 US Vehicular Loudspeaker Warnaka, Pending
System
PCT/US97/17231 F. 09/25/97 PCT Warnaka, Action Completed
2,266,362 F. 09/25/97 Canada Xxxxxxxx Pending
97944454.4 F. 09/25/97 EPC Pending
515907/98 F. 09/25/97 Japan Pending
7002521/1999 F. 09/25/97 Korea Pending
-----------------------------------------------------------------------------------------------------------------
339 08/878,696 F. 06/19/97 US Loudspeaker Assembly Warnaka, Abandoned
PI 9802728 F. 06/18/98 Malaysia Warnaka Pending
969CAL98 F. 06/01/98 India Pending
PCT/US98/11258 F. 06/02/98 PCT Action Completed
98925159.0 F. 06/02/98 EPC Pending
11-504460 F. 06/02/98 Japan Pending
-----------------------------------------------------------------------------------------------------------------
339C 09/434,165 F. 11/04/99 US Loudspeaker Assembly Warnaka, Pending
(CIP of 339) Warnaka
-----------------------------------------------------------------------------------------------------------------
340 08/854,589 F. 05/12/97 US Vehicular Loudspeaker Warnaka, Pending
System
PI 9802094 F. 05/08/98 Malaysia Warnaka, Pending
792CAL98 F. 05/04/98 India Xxxxxxxx Pending
PCT/US98/08889 F. 05/01/98 CT Action Completed
98920125.6 F. 05/01/98 EPC Pending
10-549268 F. 05/01/98 Japan Pending
-----------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------
CIT 347 5,355,417 F. 10/21/92 US Active Control of Burdisso, Granted
Aircraft Engine
Iss. 10/11/94 Inlet Noise Using Xxxxxx,
Compact Sound O'Xxxxx,
Exp. 10/11/11 Sources and Xxxxxx,
Distributed Error Xxxxxx
Sensors
-----------------------------------------------------------------------------------------------------------------
CIT 347A 5,515,444 F. 10/07/94 US C-I-P of CIT 347 Granted
Iss. 05/07/96
Exp. 05/07/16
PCT/US95/12541 F. 10/06/95 PCT Action Completed
2,200,296 F. 10/06/95 Canada Pending
95936219.5 F. 10/06/95 EPC Pending
F. 10/06/95 Japan Pending
-----------------------------------------------------------------------------------------------------------------
402 9621523.1 F. 10/16/96 GB A Flat Panel McDonald, Abandoned
Loudspeaker
PCT/GB97/02728 F. 10/06/97 PCT Arrangement and Hands Davis, Stone, Action Completed
Free
2,266,361 F. 10/06/97 Canada Telephone System Using Pain Pending
the
0 932 523 F. 10/06/97 EPC Same Granted
0 932 523 Iss. 06/14/00 Austria Granted
0 932 523 Exp. 10/06/17 Belgium Granted
0 932 523 France Granted
0 932 523 Granted
0 932 523 Germany Granted
0 932 523 Italy Granted
0 932 523 Spain Granted
518085/98 F. 10/06/97 UK Pending
7003301/1999 F. 10/06/97 Japan Pending
09/284,780 F. 06/10/99 Korea Pending
1906/CAL/97 F. 10/13/97 US Pending
PI 9704852 F. 10/15/97 India Pending
Malaysia
-----------------------------------------------------------------------------------------------------------------
-----------------------------------------------------------------------------------------------------------------
405 9626439.5 F. 12/20/96 GB A Multiple Panel McDonald Abandoned
Electroacoustic
405/6 PCT/GB97/03090 F. 11/11/97 PCT Transducer Xxxxx, Xxxxxx Action Completed
2,273,025 F. 11/11/97 Canada Pending
97912313.0 F. 11/11/97 EPC Pending
528498/98 F. 11/11/97 Japan Pending
7005546/1999 F. 11/11/97 Korea Pending
09/331,469 F. 06/18/99 US Pending
2173/CAL/97 F. 11/18/97 India Pending
PI 9706136 F. 12/18/97 Malaysia Pending
-----------------------------------------------------------------------------------------------------------------
VPI 4,715,559 F. 05/15/86 US Apparatus and Method Xxxxxx Granted
for Global
Iss. 12/29/87 Noise Reduction
Exp. 12/29/04
-----------------------------------------------------------------------------------------------------------------
Disclosures
--------------------------------------------------------------------------------
NCT # Title Disclosure Date
--------------------------------------------------------------------------------
321 Flat Electromagnetic Motor 01.16.97
--------------------------------------------------------------------------------
323 Speaker Driver 03.13.97
--------------------------------------------------------------------------------
333 Non-Flat Diaphragm Driven by a Piezo 03.24.97
Activated Flat Plate
--------------------------------------------------------------------------------
602 Portable Speaker 04.24.97
--------------------------------------------------------------------------------
605 Attaching Voice Coils to a Flat Panel 04.22.97
--------------------------------------------------------------------------------
622 Using the Interior Panels of an Airplane 09.26.97
to Reproduce Sound
--------------------------------------------------------------------------------
623 Method for Achieving Stereo Separation 09.29.97
when Driving a Single Panel
--------------------------------------------------------------------------------
651 Thin Loudspeaker with NXT Drivers 07.16.98
--------------------------------------------------------------------------------
SCHEDULE 2: THE DMC PATENTS
NCT # XXX/APP # FILED/ISS. COUNTRY TITLE INVENTOR STATUS
----- --------- ---------- ------- ----- -------- ------
-----------------------------------------------------------------------------------------------------------------
624 60/070686 F. 01/07/98 US Thin Loudspeaker Hayes, Conley, Provisional
Filing
09/209,234 F. 12/10/98 US O'Brien, Pending
PCT/US98/26304 F. 12/10/98 PCT Xxxxxxxx, Action Completed
98963059.5 F. 12/10/98 XXX Xxxxxxxxx, Pending
F. 00/00/00 Xxxxx Xxxxxx, Xxxxx Pending
Disclosures
--------------------------------------------------------------------------------
NCT # Title Disclosure Date
--------------------------------------------------------------------------------
330 Process for Making Flat Panel Transducers 03.12.97
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331 Speaker Grill with Picture 03.24.97
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335 Placement of Piezoelectric Element on a 04.04.97
Diaphragm to avoid degeneracy of Surface
Modes while Providing Balance
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337 Design of a Flat Hybrid Panel to Optimize 04.24.97
Piezoelectric Performance
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338 Using a Combination of Drivers to Obtain 04.24.97
Improved Sound Dispersion Characteristics
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600 Process for Making Flat Panel Speakers 04.30.97
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606 Thin Speaker Grill 04.22.97
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609 Fabrication of Flat Panel Speakers 05.05.97
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612 Speakers Enclosure Design 06.17.97
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614 Attaching a Speaker Cover to a Loudspeaker 07.10.97
Enclosure
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634 Piezoelectric Driver Assembly 02.26.98
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635 Piezoelectric Loudspeaker 03.02.98
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638 Piezoelectric Driver Assembly 04.08.98
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640 Arrangement of Piezoelectric Elements 04.09.98
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642 Back Volume for a Thin Loudspeaker 05.15.98
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SCHEDULE 3: THIRD PARTY LICENCES
Xxxxxx Manufacturing, Inc. and subsidiary companies have an exclusive but
restricted field of use license, for the purposes only of the control,
isolation, attenuation and/or cancellation of noise or vibration, to the
following patents, identified by their NCT number:
121, 197, 253, 256, CIT 347, CIT 347A, VPI
Xxxxxx Universal, Inc, a subsidiary of Xxxxxxx Controls, Inc. ("JCI") and JCI's
subsidiary companies have an exclusive but restricted field of use license to
the following patents, identified by their NCT number:
197, 260, 269, 269C, 277, 339, 339C, 340, CIT 347, CIT 347
This license is restricted to Ground Based Vehicles and is contained in (a) an
Agreement dated December 6, 1995 between OnActive Technologies LLC and Xxxxxxx
Controls, Inc. and (b) A License Agreement dated 31st May 1996 between OnActive
Technologies LLC and Noise Cancellation Technologies Inc.
Electrolux has the rights to use all existing and future NCT patents relating to
the control, isolation, attenuation and/or cancellation of noise, as they apply
to Electrolux quiet products.
Ultra Electronics and subsidiary companies have an exclusive but restricted
field of use license, for the purposes only of the control, isolation,
attenuation and/or cancellation of noise, to use certain of NCT's patents
including VPI.
Signed by
/s/XXXXXXX X. XXXXXXXX
CEO
For and on behalf of
NCT GROUP INC
Signed by
/s/XXXXXXX X. XXXXXXXX
CEO
For and on behalf of
NCT AUDIO PRODUCTS, INC
Signed by
/s/XXXXX X. XXXXX
Director
For and on behalf of
NEW TRANSDUCERS LIMITED
