Exhibit 10.2
SOFTWARE PURCHASE AND LICENSE-BACK AGREEMENT
THIS SOFTWARE PURCHASE AND LICENSE-BACK AGREEMENT ("Agreement") is entered
into this 20th day of September, 2001 ("Effective Date") by and between NEOWORX,
INC. ("NeoWorx"), a Wisconsin corporation with offices at ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ and SHARP TECHNOLOGY, INC. ("Sharp"), a Delaware corporation
with offices at ▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ under the following
circumstances:
On February 7, 2000, the parties executed a Software Development Agreement (the
"Software Development Agreement") pursuant to which NeoWorx agreed to develop
and deliver certain intellectual property, including without limitation object
code and source code constituting the "Hacker Tracker" software (the "Software")
to Sharp;
On April 9, 2001, the parties executed a letter agreement purporting to settle
all remaining unpaid payments due NeoWorx for development contracts with Sharp
(the "Letter Agreement");
The parties hereto are now currently in dispute as to ownership of the Software;
The parties hereto wish to resolve fully and finally all disputes relating to
the Software Development Agreement, the Letter Agreement and the Software,
whether currently known or unknown (the "Disputes"); and
In the near future, it is contemplated that NeoWorx will be acquired by
▇▇▇▇▇▇.▇▇▇ Corporation ("McAfee") (the "Acquisition").
NOW THEREFORE, in consideration of the mutual promises set forth herein,
NeoWorx and Sharp agree as follows:
1. DEFINITION OF INTELLECTUAL PROPERTY. "Intellectual Property" shall
mean patents, copyrights, database rights, trademarks, domain name rights, trade
secrets, and any other similar titles, rights, and interests, and intangible
assets recognized under any laws, or international conventions and in any
country or any jurisdiction in the world, as intellectual creations to which
rights of ownership accrue, and all registrations, applications, disclosures,
renewals, extensions, continuations or reissues of the foregoing now or
hereafter in force.
2. TERMINATION. The Software Development Agreement and Letter Agreement
are hereby terminated (collectively, the "Previous Agreements").
3. ASSIGNMENT. Sharp hereby irrevocably assigns, transfers and conveys to
NeoWorx all of its right, title and interest in and to: (i) the Software; (ii)
all modifications, enhancements, update changes, derivative works or additions
to the Software made by or on behalf of Sharp ("Derivative Works"); (iii) all
copies of the Software ("Copies"); and (iv) all Intellectual Property therein
(the Software, Derivative Works, Copies and all Intellectual Property associated
with the Software and/or Derivative Works shall be collectively referred to as
the "Purchased Software") and NeoWorx hereby accepts such assignment. This
assignment in no way relieves Sharp of any obligation or liability arising under
any agreements entered into by Sharp involving the Licensed Software prior to or
after the Closing Date and Sharp hereby agrees to defend, indemnify and hold
harmless NeoWorx against any claim brought against NeoWorx based on, arising out
of or resulting from any such obligations or liabilities or any other actions of
Sharp which relate, either directly or indirectly, to the Licensed Software.
Sharp shall pay any resulting costs, damages finally awarded by a court or
agreed to in a settlement with Sharp, and reasonable attorney's fees.
4. CONSIDERATION. As consideration for this assignment, NeoWorx will pay
to Sharp Six Hundred Fifty Thousand ($650,000) (the "Purchase Price") within
thirty (30) days of the Acquisition Closing (as defined in Section 9 below) (the
"Closing Date").
5. LICENSE. NeoWorx hereby grants Sharp a non-exclusive, royalty-free,
nontransferable, worldwide license to sublicense the version of the Software
being licensed by Sharp as of the Effective Date (the "Licensed Software") for
the period beginning on the Closing Date and ending 120 days thereafter (the
"120 day license"). NeoWorx agrees to permit the sublicensees of Sharp access
to NeoWorx databases, which NeoWorx, in its sole discretion, determines are
necessary for the operation of the Licensed Software, however, such databases
will include tracing and mapping, through the existence of the 120 day license.
Notwithstanding anything contained herein to the contrary, Sharp may not
sublicense the Licensed Software to those entities identified on Exhibit A
attached hereto and made a part hereof.
6. REPRESENTATIONS AND WARRANTIES. Sharp represents and warrants to
NeoWorx as of the Effective Date:
A. Execution and performance of this Agreement by Sharp is not
violative of any agreement to which Sharp is bound or a party;
▇. ▇▇▇▇▇ has fully power and authority to enter into this Agreement,
to grant to NeoWorx the rights set forth herein, and that this Agreement is
valid and binding upon Sharp;
C. On or before the Closing Date, Sharp shall deliver to NeoWorx all
of the Purchased Software including but not limited to all Derivative Works
and all Copies;
D. The Purchased Software does not infringe any valid patent,
copyright, trademark, trade secret or other proprietary right of any third
party; and
▇. ▇▇▇▇▇ has title to the Purchased Software free and clear of all
security interests, liens, mortgages, conditional sales contracts,
attachments, judgments, easements, restrictions on transfer, claims and
encumbrances of every kind and nature ("Encumbrances"), and will vest good
and marketable title in the Purchased Software in NeoWorx free and clear of
all Encumbrances.
7. RELEASE. Each party covenants and agrees as of the Closing Date to
fully release and discharge the other party and its affiliates, officers,
investors, shareholders, directors, employees, representatives, attorneys,
insurers, administrators agents, predecessor and successor corporations, and
assigns, ("Released Parties") from any and all debts, claims, demands,
contracts, damages, liabilities, costs or expenses, financial or otherwise,
causes of action, complaints, and any and all other claims and obligations
whatsoever of every kind and nature, whether , known or unknown, disclosed or
undisclosed, suspected or unsuspected, both at law and equity, which one party
may have, or may have ever had against the other arising out of the Previous
Agreements or otherwise related to the Purchased Software. The parties
understand that as of the Closing Date each is releasing and forever discharging
each other and the Released Parties from the beginning of time up through the
Effective Date. However, nothing set forth in this Section shall release the
parties to this Agreement from their respective obligations under this
Agreement, including without limitation the representations and warranties
outlined in Section 6 above.
8. FURTHER ASSURANCES. Promptly upon any request of NeoWorx at any time
following the Closing Date, Sharp shall, without charge, as may be reasonably
requested by NeoWorx, its successors and assigns in order to protect all right,
title and interest in the Purchased Software, perfect the assignments and
transfers contained herein and enable NeoWorx to obtain the full benefits of
this Agreement and the transactions contemplated hereby, (i) execute,
acknowledge, and deliver, or cause to be delivered, such further instruments of
assignment, transfer, conveyance; (ii) deliver to NeoWorx records, data and
other documents relating to the Purchased Software that are in Sharp's
possession; and (iii) take other actions, render other assistance and execute
other documents. Sharp will also assist NeoWorx in filing and prosecuting
United States and foreign patent applications claiming the Intellectual
Property.
9. ACQUISITION. Both parties acknowledge and agree that the terms and
obligations (including, without limitation, the obligations in Sections 3 and 4
and the releases set forth in Section 7) of this Agreement will only be binding
and are contingent upon a closing of the Acquisition (the "Acquisition
Closing"). If NeoWorx reasonably believes the Acquisition will not occur,
NeoWorx may terminate this Agreement at any time by providing Sharp with written
notice of such termination. In any event, either party may terminate this
agreement if the Acquisition Closing does not occur within 45 days of the date
of this agreement. Upon such termination, this Agreement will become null and
void and all terms and obligations herein will immediately terminate, including
those rights and obligations outlined in Sections 3, 4 and 6.
10. CONFIDENTIALITY. Both parties agree and acknowledge that this
Agreement and its terms as well as any circumstances underlying this Agreement
shall be considered confidential information and both parties agree not to
disclose any information concerning this Agreement to any outside parties other
than each party's legal and business advisors or as otherwise required by law.
Notwithstanding the foregoing, NeoWorx may disclose this Agreement to McAfee and
McAfee's legal and business advisors.
11. VOLUNTARY EXECUTION. Both parties specifically acknowledge, warrant,
and represent that they have discussed all of the terms of this Agreement with
their respective attorneys, have read, understood and intend to be bound by the
contents of this Agreement, and hereby knowingly and willingly enter into this
Agreement voluntarily of their own free will.
12. MISCELLANEOUS. This Agreement may be executed in counterparts, which
taken together shall constitute the complete and binding Agreement. This
Agreement will inure to the benefit of and bind NeoWorx and Sharp and their
respective successors, assigns, heirs and legal representatives. This Agreement
is the complete agreement with respect to the subject matter hereof. The terms
of this Agreement will be construed in accordance with the laws of the state of
Ohio. Sharp may not assign this Agreement without the written consent of
NeoWorx. The representations, warranties, covenants, rights, duties and
obligations of the parties contained in Sections 3, 4, 5, 6, 7, 8, 10, 11 and 12
shall survive the Closing Date.
IN WITNESS WHEREOF, this Agreement is effective as of the Effective Date.
NEOWORX, INC. SHARP TECHNOLOGY, INC.
By; /s/ ▇. ▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇
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