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EXHIBIT 10.33.1
COLLATERAL PATENT ASSIGNMENT
THIS COLLATERAL PATENT ASSIGNMENT (the "Assignment") is made and
entered into this 13th day of June, 1997, by and among Xxxxxx Communications,
Inc., a Delaware corporation and Xxxxxx Communications, Inc., a California
corporation (collectively, "Assignor") and the individuals and entities listed
on Schedule A hereto (individually, an "Assignee" and collectively, the
"Assignees") who are a signatory to this Assignment.
RECITALS
A. Assignor and Assignee are parties to a certain Note Agreement of
even date (together with any and all amendments now or hereafter made thereto,
the "Note Agreement"), which provides for (i) Assignee to purchase one or more
Secured Promissory Notes ("Notes") from Assignor and (ii) the grant by Assignor
to Assignee of a security interest in Assignor's FLASHBACK technology including,
without limitation, its U.S. patents and pending patent applications and any
licensing, manufacturing and/or royalty agreements related thereto; and
B. Assignee has required, as a condition to purchase of the Notes from
Assignor under the Note Agreement, that Assignor execute and deliver to Assignee
this Assignment.
NOW, THEREFORE, in consideration of the premises set forth herein and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, Assignor agrees as follows:
1. INCORPORATION OF NOTE AGREEMENT. The Note Agreement and the
terms and provisions thereof are hereby incorporated herein in their entirety by
this reference. Terms used herein that are not defined in this Agreement shall
have the meanings ascribed to them in the Note Agreement.
2. COLLATERAL ASSIGNMENT OF PATENTS. To secure the complete
and timely satisfaction of all of the Obligations (as defined in the Note
Agreement and hereinafter called the "Obligations"), Assignor hereby grants,
conveys, and assigns to Assignee, as and by way of a first security interest
having priority over all other security interests, with power of sale, to the
extent permitted by law, upon the occurrence and during the continuation of an
Event of Default (as defined in the Note Agreement and hereinafter called an
"Event of Default") all of Assignor's right, title, and interest in and to all
of its now owned or existing and filed and hereafter acquired or arising and
filed:
a. Patents and patent applications related to
Assignor's FLASHBACK technology (including, without limitation, the inventions
and improvements described and claims therein) listed on Schedule B attached
hereto (collectively, "Patents");
b. The reissues, divisions, continuations, renewals,
extensions, continuations-in-part, and improvements thereof; c. All income,
royalties, damages, and payments now and hereafter due and/or payable under and
with respect thereto, including (without limitation) damages and payments for
past or future infringements thereof;
d. The right to xxx and recover for past, present,
and future infringements thereof;
e. All rights corresponding thereto and throughout
the world; and
f. All other proceeds and products of the foregoing,
including (without limitation) any rights pursuant to its licensing,
manufacturing and/or royalty agreements with any other party relating thereto.
The items referred to in items a. through f. are hereinafter
collectively referred to as the "Patent Rights."
3. COVENANTS AND WARRANTIES. Assignor represents, warrants,
and covenants that:
a. The Patents are subsisting, have not been adjudged
invalid or unenforceable in whole or in part;
b. None of the Patents has lapsed or expired;
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c. No claim has been made that the use of any of the
Patents in the conduct of Assignor's business constitutes an infringement of any
senior or dominant U.S. patent or other intellectual property right;
d. Assignor owns the entire right, title, and
interest in and to each of the Patents free and clear of any liens and
encumbrances of every kind and nature, except for the rights granted by Assignor
pursuant to this Agreement; and
e. Assignor shall continue to use, until the
obligations shall have been satisfied in full and the Note Agreement shall have
been terminated, proper statutory notice in connection with its exercise of the
Patents.
Notwithstanding the foregoing, Assignee expressly acknowledges that
Assignor can provide no assurance that (i) any additional patents may be
awarded, (ii) others will not independently develop products or technology that
are equivalent or superior to those of the Company, (iii) the Company will be
able to identify and successfully prosecute infringement of its patents, (iv)
claims will not be made in the future from third parties asserting that the
Company's products infringe the proprietary rights of third parties and (iv) any
particular aspect of the Company's technology will not be found to infringe the
products of other companies.
4. NEW PATENTS AND LICENSES. If, before the Obligations are
satisfied in full, Assignor obtains rights to any new patentable inventions,
patents, or patent applications, or any reissue, division, continuation,
renewal, extension, or continuation-in-part of any Patent or any improvement on
any Patent, the provisions of Section 2 above shall automatically apply thereto
and Assignor shall give to Assignee written notice thereof. Assignor hereby
authorizes Assignee to modify this Assignment by amending Schedule B to include
such rights.
5. ROYALTIES; TERMS. Assignor hereby agrees that the use by
Assignee of the Patent Rights shall be worldwide and without any liability for
royalties or other related charges from Assignee to Assignor. The term of the
assignments granted herein shall extend until the earlier of (i) the expiration
of all Patent Rights or (ii) payment in full of the Obligations and termination
of the Note Agreement.
6. GRANT OF LICENSE TO ASSIGNOR. Assignee hereby grants to
Assignor the royalty-free, exclusive, nontransferable right and license to make,
have made, use, and sell the inventions disclosed and claimed in the Patents for
Assignor's own benefit and account and for none other. Such right and license
shall be exercisable by Assignor only until the occurrence of an Event of
Default.
7. ASSIGNEE'S RIGHT TO INSPECT. Subject to existing agreements
with respect to the confidentiality of certain aspects of the Patent Rights,
Assignee shall have the right, at any reasonable time and from time to time, to
inspect Assignor's premises and to examine Assignor's books, records, and
operations.
8. TERMINATION OF ASSIGNEE'S SECURITY INTEREST. This
Assignment is made for collateral purposes only. Upon payment in full of the
Obligations and/or conversion of all amounts due into common stock and warrants
pursuant to the Note Agreement and termination of the Note Agreement, all
remaining right, title, and interest in and to the Patent Rights shall
automatically revert to Assignor. In such event, Assignee shall execute and
deliver to Assignor all termination statements and other instruments as may be
necessary or proper to terminate Assignee's security interest in and to revest
in Assignor all right, title, and interest in and to the Patent Rights, subject
to any prior disposition thereof that may have been made by Assignee pursuant
hereto or pursuant to the Note Agreement.
9. DUTIES OF ASSIGNOR. Until the Obligations are satisfied in
full (through payment or conversion) and the Note Agreement is terminated,
Assignor shall
a. Prosecute diligently any patent application
included in the Patent Rights pending as of the date hereof or hereafter filed;
b. Make application on unpatented but patentable
inventions, as appropriate, giving due consideration to value, importance, cost,
and opinion of counsel as to patentability; and
c. Preserve, maintain, and enforce against
infringement all Patent Rights (other than nonpayment of maintenance fees on
patents which are not necessary or useful in the conduct of Assignor's business
or
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operations).
Any expenses incurred in connection with such applications
shall be borne by Assignor. Assignor shall not abandon any pending patent
application or patent without the written consent of Assignee, which consent
shall not be unreasonably withheld.
10. ASSIGNEE'S RIGHT TO XXX. After the occurrence of an Event
of Default and so long as such Event of Default has not been waived, and after
the provision by Assignee of written notice to Assignor of Assignee's intention
to enforce its rights and claims in the Patent Rights, Assignee shall have the
right, but shall in no way be obligated, to bring suit and take other action in
its own name to enforce or otherwise protect, preserve, or realize upon the
Patent Rights. If Assignee shall commence any such suit or take any such action,
Assignor shall, at the request of Assignee, do any and all lawful acts and
execute any and all proper documents required by Assignee in aid of such action.
Assignor shall, upon demand, reimburse and indemnify Assignee for all costs and
expenses incurred by Assignee in the exercise of its rights under this Section
10.
11. WAIVERS. No course of dealing between Assignor and
Assignee, nor any failure to exercise or delay in exercising, on the part of the
Assignee, any right, power, or privilege hereunder or under the Note Agreement
shall operate as a waiver thereof. No single or partial exercise of any right,
power, or privilege hereunder or under the Note Agreement shall preclude any
other or further exercise thereof or the exercise of any other right, power, or
privilege.
12. SEVERABILITY. The provisions of this Assignment are
severable, and if any clause or provision shall be held invalid or unenforceable
in whole or in part in any jurisdiction, then such invalidity or
unenforceability shall affect only such clause or provision, or part thereof, in
such jurisdiction, and shall not in any manner affect such clause or provision
in any other jurisdiction, or any other clause or provision of this Assignment.
13. MODIFICATION. This Assignment cannot be altered, amended,
or modified in any way, except as specifically provided with respect to the
additions referred to in Section 4 hereof or by a writing signed by the parties
hereto.
14. CUMULATIVE REMEDIES. All of Assignee's rights and remedies
with respect to the Patent Rights, whether established hereby or by the Note
Agreement, or by any other agreements or by law, shall be cumulative and may be
exercised individually or concurrently. Assignee shall have, in addition to all
other rights and remedies given it by the terms of this Assignment, all rights
and remedies allowed by law and the rights and remedies of a secured party under
the Uniform Commercial Code as enacted in any jurisdiction in which the Patent
Rights may be enforced.
15. POWER OF ATTORNEY. Assignor hereby authorizes Assignee to:
a. Make, constitute, and appoint any representative
of Assignee as Assignee may select, in its sole discretion, as Assignor's true
and lawful attorney-in-fact, with power to endorse Assignor's name on all
applications, documents, papers, and instruments necessary or desirable for
Assignee to give effect to the provisions of this Assignment and the intent of
the parties hereto;
b. Take any other actions with respect to the Patent
Rights, consistent with this Assignment, as Assignee deems in the best interest
of Assignee;
c. Following the occurrence of an Event of Default,
grant or issue any exclusive or nonexclusive license under the Patent Rights to
anyone; or
d. Following the occurrence of an Event of Default,
subject to the terms of any existing license agreement, assign, pledge, convey,
or otherwise transfer title in or dispose of the Patent Rights to anyone.
Assignee hereby ratifies all that such attorney shall lawfully do or
cause to be done by virtue hereof. This power of attorney shall be irrevocable
until the Obligations are satisfied in full and the Note Agreement is
terminated.
16. EFFECT ON NOTE AGREEMENT. Assignor acknowledges and agrees
that this Assignment is not intended to limit or restrict in any way the rights
and remedies of Assignee under the Note Agreement but rather is intended to
facilitate the exercise of such rights and remedies.
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17. BINDING EFFECT; BENEFITS. This Assignment shall be binding
upon Assignor and its respective successors and assigns and shall inure to the
benefit of Assignee, its nominees, successors, and assigns.
18. GOVERNING LAW. This Assignment shall be deemed to have
been executed and delivered in California and shall be governed by and construed
in accordance with the internal laws (as opposed to conflicts of law provisions)
of California. IN WITNESS WHEREOF, the undersigned have hereunto set their hands
as of the day and year first above written.
"ASSIGNOR"
XXXXXX COMMUNICATIONS, INC.,
a Delaware corporation
By: /s/ XXXXXX X. XXXX
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Xxxxxx X. Xxxx
President
XXXXXX COMMUNICATIONS, INC.,
a California corporation
By: /s/ XXXXXX X. XXXX
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Xxxxxx X. Xxxx
President
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SCHEDULE A(1)
(IDENTICAL FOR EACH OF NINE PURCHASERS EXCEPT FOR NAME AND AMOUNT)
ASSIGNEE'S SIGNATURE PAGE
TO COLLATERAL PATENT ASSIGNMENT
DATED AS OF JUNE 13, 1997
ASSIGNEE:
(Name of Entity or Person)
By: _____________________________________
Name: ___________________________________
Title: __________________________________
Secured Amount: $_______________________
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SCHEDULE B
PATENTS AND PATENT APPLICATIONS
APPLICATION OR
TITLE PATENT NO. ISSUE DATE INVENTORS
----- -------------- ---------- ---------
Hand-held Record and 5,491,774 February 13, 1996 Xxxxxx X. Xxxxxx,
Playback Device with Xxxxxxx X. Xxxxxxx
Flash Memory and Xxxxxx X. Xxxxxxxxxx
Five Confidential Pending Patent Applications
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