EXHIBIT 10.1
ASSIGNMENT OF PATENT RIGHTS
This Assignment of Patent Rights (the "Assignment") is made and effective as of
July 18, 2003 (the "Effective Date") by and between Dtomi, Inc., a Nevada
corporation ("Assignor"), and Xxxx Xxxxxxx, an individual ("Assignee").
RECITALS
WHEREAS, Assignor is the owner of the air spring powered lowerable suspension
assembly patent, Patent No. 6,530,580 (the "Patent"); and
WHEREAS, Assignor had previously been assigned the Patent by Assignee by way of
that certain Assignment of Patent Rights, attached hereto as EXHIBIT A, dated
April 7, 2003, and that certain Asset Purchase Agreement, attached hereto as
EXHIBIT B, dated April 7, 2003; and
WHEREAS Assignor and Assignee have entered into that certain Mutual Release
Agreement ("Mutual Release Agreement"), attached hereto as EXHIBIT C, dated July
18, 2003, terminating the rights, obligations, duties, and covenants created in
that certain Asset Purchase Agreement; and
WHEREAS, pursuant to the Mutual Release Agreement, Assignor is obligated to
transfer, and Assignee is entitled to receive all of Assignor's right, title,
and interest in and to the Patent and all ownership interest in all patent
rights associated with the Patent.
AGREEMENT
NOW THEREFORE, in consideration of the mutual covenants and provisions
of this Assignment, and other good and valuable considerations as further set
forth in other agreements between the parties, the receipt and sufficiency of
which are hereby acknowledged, the Parties, intending to be legally bound, agree
as follows:
1. ASSIGNMENT.
(a) As of the Effective Date, Assignor hereby, assigns, transfers and
sets over to Assignee all of Assignor' right, title and interest in and to the
Patent, including all common law rights, all goodwill and all claims for damages
by reason of any past infringement and any other right or interest he may have
in the Patent and all other patent applications, improvements, reissues and
inventions arising therefrom, for Assignee's own use and enjoyment and the use
and enjoyment of Assignee's successors, assigns and other legal representatives,
to the end of the term for which said Patent is granted or reissued, as fully
and entirely as the same would have been held and enjoyed by Assignor if this
Assignment had not been entered into. Assignee hereby accepts the assignment of
such rights, subject to the terms and conditions of this Assignment.
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(b) Upon Assignee's request, Assignor will, without charge to Assignee
and at Assignor's sole cost and expense, sign all papers, take all lawful oaths
and take all other actions necessary, desirable or reasonably appropriate to
record such assignments and to secure and maintain the Patent in any and all
countries and to vest free, clear and lien-free title in and to the Patent
solely in Assignee.
(c) Assignor hereby agrees that a copy of this Assignment shall be
deemed a full legal and formal equivalent of any assignment, consent to file or
like document which may be required in any country for any purpose.
2. INDEMNITY.
(a) Assignor agrees to indemnify and hold Assignee and his nominees,
successors, assigns, affiliates, agents and employees, harmless of and from any
and all liabilities, claims, causes of action, penalties, demands and expenses,
of any kind or nature whatsoever to the extent arising out of, resulting from,
relating to or incident to the Assignor's obligations or use of the Patent prior
to and including the Effective Date and the incorrectness of any representation
or warranty of Assignor contained in this Assignment, and all expenses related
thereto, including, without limitation, court costs and attorneys' fees.
(b) Assignee agrees to indemnify and hold Assignor and his nominees,
successors, assigns, affiliates, agents and employees, harmless of and from any
and all liabilities, claims, causes of action, penalties, demands and expenses,
of any kind or nature whatsoever to the extent arising out of, resulting from,
relating to or incident to Assignee's obligations or use of the Patent
subsequent to the Effective Date and all expenses related thereto, including,
without limitation, court costs and attorneys' fees.
3. REPRESENTATIONS AND WARRANTIES. Assignor represents and warrants to
Assignee as follows:
(a) The Patent is in full force and effect and entitled to all privileges and
protections accorded to the Patent under applicable laws, Assignor is not in
default under any terms of the Patent and the Patent has not been assigned,
terminated, modified or amended;
(b) Assignor holds free and clear title to the Patent, free from any lien, claim
or defect against such title, and has the lawful right to convey all of his
respective interests in the Patent to Assignee; and
(c) Assignor's conveyance of its interest in the Patent to Assignee, the
execution and delivery of this Assignment by Assignor, and the consummation of
the transactions as contemplated hereby, does not and will not violate or result
in a material violation of any provision of any existing law or regulation or
any order, award or decree of any court, arbitrator or governmental authority,
by which Assignor or the Patent are bound.
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4. COUNTERPART AND FACSIMILE EXECUTION. This Assignment may be executed
in one or more counterparts, each of which shall be deemed an original and
together which shall constitute one and the same instrument. Executed copies of
this Assignment transmitted by telecopier shall be valid and binding.
IN WITNESS WHEREOF, the parties hereto have caused this Assignment to
be executed and delivered as of the Effective Date.
ASSIGNOR:
DTOMI, INC.:
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By: Xxxxx X. Xxxx
Title: Chairman of the Board of Directors
STATE OF WASHINGTON
ss
COUNTY OF
--------------------------
I certify that I know or have satisfactory evidence that XXXXX X. XXXX is the
person who appeared before me, and said person acknowledged that (he/she) signed
this instrument, on oath stated that (he/she) was authorized to execute the
instrument and acknowledged it as the CHAIRMAN OF THE BOARD of DTOMI, INC. to be
the free and voluntary act of such party for the uses and purposes mentioned in
the instrument.
WITNESS my hand and official seal hereto affixed this _____ day of __
________, 2003.
-----------------------------------------------------
Notary Public in and for
the State of Washington,
residing at:
----------------------------------.
My commission expires_________.
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IN WITNESS WHEREOF, the parties hereto have caused this Assignment to
be executed and delivered as of the Effective Date.
ASSIGNEE:
--------------------------------------
By: Xxxx Xxxxxxx
STATE OF WASHINGTON
ss
COUNTY OF
--------------------------
I certify that I know or have satisfactory evidence that XXXX XXXXXXX is the
person who appeared before me, and said person acknowledged that (he/she) signed
this instrument, on oath stated that (he/she) was authorized to execute the
instrument and acknowledged it to be the free and voluntary act of such party
for the uses and purposes mentioned in the instrument.
WITNESS my hand and official seal hereto affixed this _____ day of
_________, 2003.
---------------------------------------------------
Notary Public in and for
the State of Washington,
residing at:
----------------------------------.
My commission expires_________.
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