RAPID DATA LICENSE AGREEMENT
EXHIBIT
10.5
This RAPID DATA LICENSE AGREEMENT (this
“Agreement”),
effective as of July 19, 2010 (“Effective Date”), is
by and between GlobalOptions, Inc., a Delaware corporation (“Seller”) and
GlobalOptions Services, Inc., a Delaware corporation (“BUYER”).
WHEREAS, Seller, Parent and BUYER have
entered into an Asset Purchase Agreement, dated as of June 11, 2010 (“Asset Purchase
Agreement”), pursuant to which Seller assigned, transferred and sold to
BUYER all of its right, title and interest in and to the Purchased Assets (as
such term is defined in the Asset Purchase Agreement); and
WHEREAS, Seller is willing to grant to
BUYER an exclusive license to use the Licensed Intellectual Property (as defined
below) within the BUYER Field (as defined below) in accordance with the terms
and conditions set forth in this Agreement.
NOW,
THEREFORE, in consideration of the premises and mutual covenants and agreements
hereinafter set forth, the sufficiency of which is acknowledged, Seller and
BUYER, intending to be legally bound, hereby agree as follows:
1.
Definitions.
“Agreement” has the
meaning set forth in the Recitals.
“Asset
Purchase Agreement” has the meaning set forth in the
Recitals.
“Business” means
Parent’s and Seller’s FSIU Business Unit (as defined in the Asset Purchase
Agreement) as presently conducted and any additional services that BUYER may in
the future elect to provide in connection with insurance underwriting,
regulatory compliance and claims, including without limitation, durable medical
equipment (processing and delivery), transportation and translation services,
Medicare set-asides, home health care, utilization review and xxxx review,
re-employment service and pharmacy benefits management.
“BUYER” has the
meaning set forth in the Recitals.
“BUYER Field” means the fields of
business included in the Business
“BUYER Improvement”
has the meaning set forth in Section 3(a).
“Confidential
Information” means, as to any party (“Disclosing Party”)
all information and data provided by or on behalf of such party to the other
party (“Receiving
Party”) in written or other tangible medium and marked as confidential,
or if disclosed orally, confirmed in writing within thirty (30) days after
disclosure, except any portion thereof which: (a) is in the public domain as of
the date of this Agreement; (b) enters the public domain after the date of this
Agreement through no fault of the Receiving Party; (c) is communicated to the
Receiving Party after the date of this Agreement by a third party free of any
obligation of confidentiality; or (d) is independently developed by the
Receiving Party without use of, access to, or reference to the Confidential
Information of the Disclosing Party.
“Effective Date” has
the meaning set forth in the Recitals.
“Improvements” means,
individually and collectively, all discoveries, inventions, know-how,
techniques, methodologies, modifications, improvements, works of authorship,
designs and data (whether or not protectable under patent, copyright, trade
secrecy or similar Laws) relating to additions, developments, enhancements,
updates and other changes in or to the Licensed Intellectual
Property.
“Intellectual Property
Rights” means, in any and all jurisdictions throughout the world, all (a)
inventions and discoveries (whether or not patentable or reduced to practice),
patents, patent applications, invention disclosures, industrial designs, mask
works and statutory invention registrations, (b) trademarks, service marks,
domain names, trade dress, trade names and other identifiers of source or
goodwill, including registrations and applications for registration thereof and
including the goodwill symbolized thereby or associated therewith, (c) published
and unpublished works of authorship, whether copyrightable or not (including
Software (as defined below)), copyrights therein and thereto, registrations,
applications, renewals and extensions therefor, and any and all rights
associated therewith, (d) confidential and proprietary information, including
trade secrets, know how and invention rights, (e) rights of privacy and
publicity, (f) database rights, and (g) any and all other proprietary
rights.
“Law” has the meaning
set forth in the Asset Purchase Agreement.
“Licensed Intellectual
Property” means
the intellectual property set forth on Schedule A.
“Parent” means
GlobalOptions Group, Inc., a Delaware corporation.
“Participating Party”
shall have the meaning set forth in Section 6.2(e).
“Person” has the
meaning set forth in the Asset Purchase Agreement.
“Prosecute” has the
meaning set forth in Section 6.1.
“Seller” has the
meaning set forth in the Recitals.
“Seller Improvement”
has the meaning set forth in Section 3(b).
“Software” means all
(a) computer programs, applications, systems and code, including software
implementations of algorithms, models and methodologies, and Source Code and
object code, (b) Internet and intranet websites, databases and compilations,
including data and collections of data, whether machine-readable or otherwise,
(c) development and design tools, library functions and compilers, (d)
technology supporting websites, and the contents and audiovisual displays of
websites, and (e) documentation, other works of authorship and media, including
user manuals and training materials, relating to or embodying any of the
foregoing or on which any of the foregoing is recorded.
“Source Code” shall
mean code other than object code, and includes code that may be displayed in a
form readable and understandable by a programmer of ordinary skill, as well as
any enhancements, corrections and documentation related thereto. Source Code
includes related Source Code level system documentation, comments and procedural
code, such as job control language.
“Source Materials”
shall mean, in respect of any Licensed Intellectual Property comprising
Software, the then-current Source Code, technical documentation, user
documentation and instructions, work instructions, error lists (including each
reported error and then current status) and all other software and documentation
required to build, compile, assemble, translate, bind and load source codes into
executable releases.
2.
Grant of Rights and
Approvals
2.1 License. Subject
to the terms of this Agreement, and in consideration of the amounts payable by
BUYER to Seller and Parent under the Asset Purchase Agreement and of the mutual
covenants and agreements contained herein and in the Asset Purchase Agreement,
Seller hereby grants to BUYER, and BUYER hereby accepts a worldwide, perpetual,
irrevocable, exclusive, royalty-free, fully paid-up right and license (including the right to sublicense), , solely in
the BUYER Field to (i) use, reproduce, distribute, publicly perform, publicly
display, translate, prepare derivative works, modify, develop, license and sub-license the Licensed Intellectual Property, and
(ii) make, have made, import, and sell and offer to sell, lease, and otherwise
distribute or transfer any products or services that embody or use any
portion(s) of the Licensed Intellectual Property or Intellectual
Property Rights embodied in the Licensed Intellectual Property. In
addition, to the extent the Licensed Intellectual Property is embedded into the
GlobalTrak software, the foregoing license shall extend to any use or
distribution of the GlobalTrak software that BUYER wishes and without
restriction to the BUYER Field, but only so long as the Licensed Intellectual
Property remains embedded into the GlobalTrak software is not used separately
from such software.
2.2 Exclusivity. Seller shall not, directly use
or practice in any manner whatsoever the Licensed Intellectual Property,
associated Intellectual Property Rights or the BUYER Improvements or the Seller
Improvements in the BUYER Field, nor will Seller grant, or permit any
third-party to grant, to any third-party any right or license that may include
the Licensed Intellectual Property, the associated Intellectual Property Rights
or the BUYER Improvements or the Seller Improvements for use or practice in the
BUYER Field.
2.3 Bankruptcy. The
parties agree that the rights to the Licensed Intellectual Property and all
other materials, including Intellectual Property Rights therein, licensed by
Seller to BUYER as set forth herein constitute “intellectual property” as
defined in Section 101(35A) of the Bankruptcy Code and that the Agreement shall
be governed by Section 365(n) of the Bankruptcy Code. If Seller
voluntarily or involuntarily becomes subject to the protection of the Bankruptcy
Code, and Seller or the trustee in bankruptcy rejects this Agreement under
Section 365 of the Bankruptcy Code, BUYER shall have the right to: (i) treat
this Agreement as terminated; or (ii) retain BUYER’s rights under this
Agreement, specifically including, without limitation, the right to exercise its
rights granted herein to the Licensed Intellectual Property.
2.4 Seller
Delivery. On or prior to the Effective Date, Seller shall
deliver to BUYER, media (in a format acceptable to BUYER) embodying or
disclosing all of the Licensed Intellectual Property existing as of the
Effective Date (including, in each case and without limitation, a complete and
accurate copy of all of the Source Materials therefor).
2.5 Sale or
Abandonment. Seller shall not transfer or convey its ownership
interests in the Licensed Intellectual Property to any third party unless BUYER
declines to purchase such Licensed Intellectual Property at the same price and
under the same terms and conditions of such bona fide offer, and such right of
the BUYER shall be for a period of fifteen (15) days from the date of written
notice by the Seller to the BUYER pursuant to this Section 2.5. In
the event Seller ceases to use or commercially exploit any or all of the
Licensed Intellectual Property or otherwise wishes to abandon such Licensed
Intellectual Property, Seller shall notify BUYER and shall sell to BUYER,
subject to any license rights that Seller may have granted to third parties in
compliance with this Agreement, and BUYER shall purchase Seller’s ownership
rights in the such Licensed Intellectual Property (or the applicable part
thereof) for $1.00. BUYER shall provide Seller with the documentation
necessary to transfer such Licensed Intellectual Property to BUYER, and Seller
shall thereafter execute such documentation so that BUYER may record the same
with any appropriate Governmental Authority.
3.
Improvements
3.1 BUYER
Improvements. This Agreement does not convey to BUYER any
ownership rights in any Licensed Intellectual Property by implication, estoppel
or otherwise; provided however, that BUYER
will own all rights, title and interest in and to any Improvements conceived,
discovered, developed, created or reduced to practice or fixed in a tangible
medium of expression after the Effective Date by BUYER, or one or more of its employees, agents, consultants or affiliates (“BUYER
Improvements”).
3.2 Seller
Improvements. Any Improvements conceived, discovered,
developed, created or reduced to practice or fixed in a tangible medium of
expression by one or more employees, consultants, sublicensees or affiliates of
Seller (“Seller
Improvements”) will be the sole and exclusive property of
Seller.
3.3 License for
Improvements.
(a) BUYER
hereby grants to Seller, for no further consideration, and Seller hereby
accepts, a worldwide, perpetual, irrevocable, non-exclusive, royalty-free, fully
paid-up right and license to use the BUYER Improvements outside of the BUYER
Field. Seller
hereby grants to BUYER, for no further consideration, and BUYER hereby accepts,
a worldwide, perpetual, irrevocable, exclusive, royalty-free, fully paid-up
right and license to use the Seller Improvements in the BUYER Field in
accordance with the license granted in Section 2
above. If, at any time after the Effective Date, Seller
(or one of its affiliates) has, obtains or controls any patent or other
Intellectual Property Right (by ownership or license) that could be asserted to
prevent BUYER from using the Licensed Intellectual Property in accordance with
this Agreement, Seller will grant and hereby grants to BUYER a worldwide,
perpetual, irrevocable, exclusive (in the BUYER Field), royalty-free,
fully paid-up right and license to use such patent or other Intellectual
Property Right consistent with the licenses granted in Section 2.1 and in this
Section. For all purposes of this
Agreement, the Seller Improvements to the extent such Seller Improvements relate
to the Licensed Intellectual Property, shall be deemed to be, and shall be
treated as, Licensed Intellectual Property.
(b) (A) With respect to any BUYER Improvements licensed
hereunder, such BUYER Improvements are provided on an “as is” “where is” basis
and BUYER does not make any warranties, express or implied, as to the BUYER
Improvements, including, without limitation, any implied warranty of title,
non-infringement or merchantability or fitness for a particular purpose, quiet
enjoyment, quiet possession, or any warranties implied from any course of
dealing or usage of trade, and hereby disclaims the same. (B) With
respect to any Seller Improvements licensed hereunder, such Seller Improvements
are provided on an “as is” “where is” basis and Seller does not make any other
express or implied warranty as to the Seller Improvements, including, without
limitation, any implied warranty of title, non-infringement or merchantability
or fitness for a particular purpose, quiet enjoyment, quiet possession, or any
warranties implied from any course of dealing or usage of trade, and hereby
disclaims the same.
4.
Limitation of
Liability;
Indemnification.
4.1 EXCEPT FOR AMOUNTS PAYABLE WITH RESPECT TO THIRD PARTY
INDEMNIFICATION CLAIMS UNDER SECTION 4.2, NEITHER PARTY SHALL BE LIABLE
TO THE OTHER PARTY FOR LOST PROFITS OR FOR ANY INDIRECT, INCIDENTAL,
CONSEQUENTIAL, SPECIAL, PUNITIVE OR EXEMPLARY DAMAGES IN CONNECTION WITH THIS
AGREEMENT OR THE TRANSACTIONS CONTEMPLATED BY THIS AGREEMENT, HOWEVER CAUSED,
UNDER ANY THEORY OF LIABILITY.
4.2 (i) Seller will indemnify and hold harmless
BUYER and its members, officers, partners, agents, successors and assigns from
any and all losses, liabilities, damages, demands, judgments, assessments and
costs and expenses arising from or in connection with (A) any breach of Seller’s
representations, warranties or covenants under this Agreement, (B) any claim
that any Licensed Intellectual Property or its use infringes or misappropriates
any Intellectual Property Right of a third party, (C) Seller’s use, promotion,
sale or distribution of any BUYER Improvements, and (D) Seller’s use,
promotion, sale or distribution of any of the Licensed Intellectual Property in
BUYER’s Business and/or Field. (ii) BUYER will indemnify and
hold harmless Seller and its directors, officers, partners, agents, successors
and assigns from any and all losses, liabilities, damages, demands, judgments,
assessments and costs and expenses arising from or in connection with BUYER’s
use, promotion, sale or distribution of any Seller Improvements. (iii)
BUYER will indemnify and hold harmless Seller and
its directors, officers, partners, agents, successors and assigns from any and
all losses, liabilities, damages, demands, judgments, assessments and costs and
expenses arising from or in connection with BUYER’s use, promotion, sale or
distribution of any of the Licensed Intellectual Property outside of the BUYER’s
Business and/or Field. Notwithstanding any provision in this Agreement, the
indemnification herein shall be limited to the indemnification set forth in the
Asset Purchase Agreement.
5.
Confidentiality.
5.1 Nondisclosure. Confidential
Information of each party is the exclusive property of such
party. Confidential Information of either party may be used by the
other party only in connection with the performance of this Agreement or the
exercise of the licenses set forth in this Agreement. Each party will
protect the confidentiality of Confidential Information of the other party in
the same manner that it protects the confidentiality of its own proprietary and
confidential information of a similar nature, including, without limitation, by
entering into appropriate confidentiality agreements with employees, independent
contractors and subcontractors. Access to and use of Confidential
Information will be restricted to those of Seller’s and BUYER’s employees or
contractors engaged in a use permitted under this Agreement and who have been
apprised of the confidential nature of such information. Each party
will be responsible for any breaches of this Section 5 by its employees or
contractors.
5.2 Disclosure Upon
Process. In the event either party receives a subpoena, or
other validly-issued administrative or judicial process, requesting that
Confidential Information of the other party be disclosed, it will promptly
notify the other party of such receipt. The party receiving such
request will thereafter be entitled to comply with such subpoena or other
process, only to the extent required by applicable Law; provided that any
receiving party that is required by applicable Law to disclose any Confidential
Information shall provide, so far as practicable and subject to compliance with
Law, the providing party with prompt prior written notice of such request or
requirement, and shall cooperate with the providing party to seek an appropriate
protective order or other remedy or to take steps to resist or narrow the scope
of such request or legal process.
5.3 Breach. Breach
or threatened breach of this Section 5 could cause irreparable harm to the
affected party and such party shall be entitled, without first exhausting other
remedies or procedures, to seek equitable relief, including injunctive relief,
in addition to all of its other rights and remedies at Law or in equity that may
be available to it.
6.
Patent Prosecution; Defense
and Enforcement of Licensed Intellectual Property.
6.1 Prosecution.
(a) Should
BUYER determine that any patent applications covering any of the Licensed
Intellectual Property are desired, BUYER may request Seller to
file the same. Should Seller choose not to do so, from and after the
Effective Date, BUYER will then have the right, at its expense and discretion,
to prepare, file (including foreign filings), prosecute and maintain
(“Prosecute”) in Seller’s name, any patents on the Licensed Intellectual
Property solely in the BUYER Field. BUYER shall provide Seller with copies of all patent
applications and other related material submissions and correspondence with any
patent authorities with respect to the Prosecution, so as to allow a reasonable
period of time for review by Seller. BUYER will notify Seller, and
will provide Seller with an opportunity to consult with BUYER and its counsel
regarding any material actions to be taken or not taken in connection with
Prosecution of any patents covering any of the Licensed Intellectual Property
(all such actions to be taken or not taken, “Prosecution
Actions”). BUYER shall take into consideration the reasonable
requests of Seller regarding Prosecution Actions, provided however, that Buyer
shall not take any Prosecution Action that would reasonably result in the
impairment of Seller’s rights with respect to the Licensed Intellectual Property
outside of the BUYER Field. Seller shall allow BUYER to maintain at
its own expense any patents covering any of the Licensed Intellectual
Property that Seller otherwise intends to abandon
or let lapse.
(b) From
and after the Effective Date, Seller will have the sole right, but not the
obligation, at its expense and discretion, to Prosecute, at its expense, any
patents on the Licensed Intellectual Property. If, at any time after
the Effective Date, Seller obtains any patents on the Licensed Intellectual
Property, then the claims of such patents covering the Licensed Intellectual
Property will be deemed and are hereby licensed to BUYER within the BUYER Field
until the expiration of the term of the last-to-expire of such patent rights
within the Licensed Intellectual Property (including any extension to any such
patent rights) under the terms of Section 2.
6.2 Enforcement.
(a) Notice. During
the term of this Agreement, each of Seller and BUYER shall use reasonable
efforts to promptly inform the other in writing of any infringement of the
Licensed Intellectual Property (and in the case of Seller, the BUYER
Improvements) by a third party of which it has knowledge and shall provide the
other party with any readily available information relating to such
infringement.
(b) Defense and Enforcement only
in the BUYER Field. BUYER shall have the first right, but not
the obligation, to pursue, institute, and control any defense or enforcement of
the Licensed Intellectual Property solely in the BUYER Field, including, without
limitation, restraining or preventing any infringement thereof, responding to
any declaratory judgment action alleging invalidity or non-infringement thereof,
or responding to any counterclaim or response by a Person in connection with an
action for enforcement thereof undertaken by BUYER as permitted
herein. Subject to the terms set forth herein, BUYER may collect and
retain for its own use all damages, profits, settlements and awards of whatever nature recoverable
from such defense and enforcement. BUYER shall have the sole right,
but not the obligation, to pursue, institute and control any defense or
enforcement of the BUYER Improvements within or outside of the BUYER Field and
to collect and retain for its own use, all damages, profits, settlements
and awards of whatever nature recoverable from such defense and
enforcement.
(c) Defense and Enforcement only
outside BUYER Field. Seller shall have the first right, but
shall not the obligation, to pursue, institute and control any defense or
enforcement of the Licensed Intellectual Property, entirely outside of the BUYER
Field, including, without limitation, restraining or preventing any infringement
thereof, responding to any declaratory judgment action alleging invalidity or
non-infringement thereof, or responding to any counterclaim or response by a
Person in connection with an enforcement action undertaken by
Seller. Seller may collect and retain for its own use all damages,
profits, settlements and awards of whatever nature recoverable from such defense
and enforcement.
(d)
Defense and
Enforcement in and outside BUYER Field. Seller shall retain all rights,
but shall have no obligation, to pursue, institute and control any defense or
enforcement of the Licensed Intellectual Property with respect to possible
infringement occurring both within and outside the BUYER Field; provided, however, that BUYER
will have participation rights (as set forth below) in the BUYER Field with
respect to such suit or action. If, with respect to any
possible infringement, within sixty (60) days following BUYER’s notification
that BUYER requests Seller to enforce or defend the Licensed Intellectual
Property against an alleged infringer thereof, Seller does not exercise its
option to enforce or defend such Licensed Intellectual Property then, within the
BUYER Field, BUYER shall have the right to pursue the alleged infringer or take
control of any action initiated by Seller at BUYER’s expense, and to collect for
its own use all damages, profits, settlements, and awards of whatever nature
recoverable from such enforcement. In any such case, Seller will, to the extent
permitted under applicable Law, substitute BUYER as party plaintiff for purposes
of pursuing any alleged infringer. BUYER will confer with Seller in the manner
that it will pursue any enforcement or defense of the Licensed Intellectual
Property pursuant to this Section and will keep Seller reasonably apprised of
all notices, communications and other documentation related to such enforcement
or defense action and Seller shall have, at its cost and expense, “participation
rights” in any such actions concerning the Licensed Intellectual Property
outside the BUYER Field as set forth in Section 6.2(e) below. The costs of
prosecuting or defending any action pursuant to this Section shall be borne by
the party prosecuting or defending. Any recoveries from such action shall first
be used to reimburse the parties for the costs of undertaking the action. The
balance shall be divided between the parties in accordance with the percentage
of recovery attributable to infringement within the BUYER Field and outside the
BUYER Field. If the infringement is not resolved through litigation or the court
fails to allocate damages in accordance with infringing activities within the
BUYER Field and outside the BUYER Field and it is not otherwise clear given the
nature of the enforcement action (e.g., BUYER’s enforcement solely within the
BUYER Field would result in only damages attributable to the BUYER Field), the
parties shall negotiate in good faith regarding the portion of the recovery
allocable to each party based upon infringement within the BUYER Field and
outside the BUYER Field.
(e) Participation
Rights. In all instances where a party has participation
rights, the party controlling such suit or action shall provide the other party
(the “Participating
Party”) with copies of all pleadings and other documents proposed to be
filed and other related material submissions and correspondence, in sufficient
time to allow for review and comment by the Participating Party. The
controlling party shall provide the Participating Party and its counsel with an
opportunity to consult with the controlling Party regarding the filing and
contents of any documents proposed to be filed by the controlling party, and
other material submissions and correspondence. The parties
acknowledge that information shared by a party regarding enforcement of the
Licensed Intellectual Property or Improvements
is highly confidential and any disclosure of such information shall be
subject to Section 5 of this Agreement.
(f) Counterclaims. Notwithstanding
any other provisions herein, in the event that any counterclaim or response by a
Person in connection with an enforcement action undertaken by any prosecuting
party is filed, where such counterclaim or response may affect commercially
valuable rights in the Licensed Intellectual Property in which the other party
has primary defense and enforcement responsibility hereunder, such party shall
have “participation rights”, at its own expense.
(g) Agreement to be
Joined. At BUYER’s request and cost, Seller will join as a
party to any defense or enforcement action pursued by BUYER pursuant to this
Agreement and will cooperate and assist, in all reasonable
respects.
(h) Settlements. No
settlement, or consent judgment or other voluntary final disposition of a suit
regarding the Licensed Intellectual Property having effect within the BUYER Field may be entered into
by Seller without the consent of BUYER and such consent shall not be
unreasonably denied or delayed. No settlement, or consent judgment or
other voluntary final disposition of a suit regarding the Licensed Intellectual
Property having effect outside the BUYER Field may be entered into by
BUYER without the consent of Seller and such consent shall not be unreasonably
denied or delayed.
(i) Cooperation. Seller
shall cooperate with BUYER, including executing authorizations if needed, to
enable BUYER to exercise the rights set forth in Sections 6.2(b), 6.2(d) and
6.2(e).
7.
Term.
This Agreement shall commence as of the
Effective Date and shall remain in effect in perpetuity with respect to the
Licensed Intellectual Property, and with respect to any patents issued on the
Licensed Intellectual Property, until the expiration of the term of the
last-to-expire of the patent rights within such Licensed Intellectual Property
(including any extension to any such patent rights). Seller
understands and agrees that the Licensed Intellectual Property licensed under
this Agreement is critical to BUYER’s operations and that under no circumstances
may Seller seek to cancel or terminate BUYER’s right to use the Licensed
Intellectual Property. Seller shall have the right to enforce the
limitations of such license under this Agreement.
8. Representations and
Warranties. The parties hereto agree that the representations
and warranties in Section 4.11 of the Asset Purchase Agreement shall apply
equally to the Licensed Intellectual Property and Seller and Parent’s use
thereof.
9.
Miscellaneous
9.1 Relationship of
Parties. For the purposes of this Agreement, each party hereto
shall be, and shall be deemed to be, an independent contractor and not an agent,
partner, joint venturer, representative or employee of any other
party. Neither party shall have authority to make any statements,
representations, compromise of rights or commitments of any kind, assume or
create any obligations, or to accept process for or take any other action which
shall be binding on the other party, except as may be explicitly provided for
herein or authorized in writing by the other party.
9.2 Notices. All
notices and other communications required or permitted under this Agreement
shall be deemed to have been duly given and made if in writing and if served
either by personal delivery to the party for whom intended (which shall include
delivery by Federal Express or similar responsible overnight service) when
received or if sent by facsimile transmission, with a copy by personal delivery,
Federal Express or similar responsible overnight service) on the same day, when
transmitted and receipt is confirmed by telephone, bearing the address shown in
this Agreement for, or such other address as may be designated in writing
hereafter by, such party:
If to
Seller: GlobalOptions
Group, Inc.
00 Xxxxxxxxxxx Xxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xxxxxx X.
Xxxxxxxx
with a copy to:
Xxxxxx Xxxxxxxx Frome Xxxxxxxxxx &
Xxxxxxx LLP
Park Avenue Tower
00 Xxxx 00xx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xxxxxx X.
Xxxxxxxx, Esq.
Facsimile No.: (000)
000-0000
If to
BUYER: GlobalOptions Services,
Inc.
0000 Xxxxxxxxx Xxxxxxxx Xxxxx, Xxxxx
000
Xxxxxxx, Xxxxxxx 00000
Attention: Xxxxx
Xxxxxx
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
with a copy to:
Xxxxx Xxxxx LLP
0000 Xxxxxxxx
Xxx Xxxx,
XX 00000
Attention: Xxxxxx X.
Xxxxxx
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
9.3 Entire
Agreement. This Agreement and the Asset Purchase Agreement
herein embody the entire agreement and understanding of the parties hereto with
respect to the subject matter hereof, and supersede all prior and
contemporaneous agreements and understandings, oral or written, relative to said
subject matter.
9.4 Binding Effect;
Assignment. This Agreement and the various rights and
obligations arising hereunder shall inure to the benefit of and be binding upon
Seller, on the one hand, and BUYER, on the other, and their respective
successors and permitted assigns. Neither this Agreement nor any of
the rights, interests or obligations hereunder shall be transferred or assigned
(by operation of Law or otherwise) by the BUYER without the prior written
consent of the Seller, except that BUYER may assign its right and obligations
hereunder without the consent of the Seller , to
an affiliate of such party or to a purchaser of all or substantially all of the
assets or business of the BUYER or the surviving entity in any merger or
consolidation of the BUYER. Any transfer or assignment of any
of the rights, interests or obligations hereunder in violation of the terms
hereof shall be void and of no force or effect. Subject to the
applicability of the obligations imposed on Parent or Seller, as the case may
be, in Section 9.12, Seller shall have the sole and absolute right to assign
this Agreement.
9.5 Captions. The
Section headings of this Agreement are inserted for convenience only and shall
not constitute a part of this Agreement in construing or interpreting any
provision hereof.
9.6 Waiver;
Consent. This Agreement may not be changed, amended,
terminated, augmented, rescinded or discharged (other than by performance), in
whole or in part, except by a writing executed by each of the parties hereto,
and no waiver of any of the provisions or conditions of this Agreement or any of
the rights of a party hereto shall be effective or binding unless such waiver
shall be in writing and signed by the party claimed to have given or consented
thereto. Except to the extent that a party hereto may have otherwise
agreed to in writing, no waiver by that party of any condition of this Agreement
or breach by any other party of any of its obligations, representations or
warranties hereunder shall be deemed to be a waiver of any other condition or
subsequent or prior breach of the same or any other obligation or representation
or warranty by such other party, nor shall any forbearance by the first party to
seek a remedy for any noncompliance or breach by such other party be deemed to
be a waiver by the first party of its rights and remedies with respect to such
noncompliance or breach.
9.7 No Third Party
Beneficiaries. Nothing herein, expressed or implied, is
intended or shall be construed to confer upon or give to any Person, firm,
corporation or legal entity, other than the parties hereto, any rights, remedies
or other benefits under or by reason of this Agreement.
9.8 Counterparts. This
Agreement may be executed in multiple counterparts, each of which shall be
deemed an original, but all of which taken together shall constitute one and the
same instrument.
9.9 Governing Law; Consent to
Jurisdiction. This Agreement shall be governed by and
construed in accordance with the domestic Laws of the State of Delaware without
giving effect to any choice or conflict of Law provision or rule (whether of the
State of Delaware or any other jurisdiction) that would cause the application of
the Laws of any jurisdiction other than the State of Delaware.
9.10 Exhibits and
Schedules. Each reference in this Agreement to an Exhibit or
Schedule shall mean an Exhibit or Schedule annexed to this Agreement and shall
be incorporated into this Agreement by such reference.
9.11 Severability. With
respect to any provision of this Agreement finally determined by a court of
competent jurisdiction to be unenforceable, such court shall have jurisdiction
to reform such provision so that it is enforceable to the maximum extent
permitted by Law, and the parties shall abide by such court’s
determination. In the event that any provision of this Agreement
cannot be reformed, such provision shall be deemed to be severed from this
Agreement, but every other provision of this Agreement shall remain in full
force and effect.
9.12 Merger;
Consolidation. If Parent, Seller or any of their successors or
assigns (a) consolidates with or merges into any other Person and shall not be
the continuing or surviving corporation or entity of such consolidation or
merger, (b) directly or indirectly sells, transfers or conveys to a Person
(other than BUYER) all or substantially all of its assets in a single
transaction or a series of related transactions, (c) transfers, sells or assigns
the Licensed Intellectual Property to a third party, or (d) consummates a
transaction the result of which is that any “person” or “group” (as such terms
are used in Section 13(d) and Section 14(d) of the Securities and Exchange Act
of 1934, as amended) becomes the owner, directly or indirectly, beneficially or
of record, of shares representing more than fifty percent (50%) of the voting
power represented by the Parent’s issued and outstanding capital stock on a
fully diluted basis, then, Parent or Seller shall provide BUYER notice prior to
the consummation of any of the transactions described in clauses (a) – (d) of
this Section 9.12, and proper provision shall be made so that such transferees, successors and assigns of
Parent or Seller, as the case may be, shall assume the obligations set forth in
this Agreement.
9.13 Further
Assurances. Each of the parties to this Agreement shall use
its reasonable best efforts to effectuate the transactions contemplated
hereby. Each party hereto, at the request of another party hereto,
shall execute and deliver such other instruments and do and perform such other
acts and things as may be reasonably necessary or desirable for effecting
completely the consummation of the transactions contemplated by this
Agreement.
[signature page
follows]
IN WITNESS WHEREOF the parties have
caused this Agreement to be executed by their authorized representatives as an
instrument under seal as of the Effective Date.
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SELLER
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By:
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/s/ Xxxxxx X. Xxxxxxxx,
Ph.D.
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Name: Xxxxxx
X. Xxxxxxxx, Ph.D.
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Title: Chief
Executive Officer
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BUYER
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By:
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/s/ Xxxxx Xxxxxx
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Name: Xxxxx
Xxxxxx
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Title: President
and Chief Executive
Officer
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SCHEDULE
A
LICENSED
INTELLECTUAL PROPERTY
Individually
and collectively, all Software, Source Materials, data, information, databases,
materials, documentation, tools, inventions, invention disclosures, proprietary
information and know-how (whether or not patentable or protectable under
copyright, trade secrecy or similar Laws) related to or used in the Business and all Intellectual
Property Rights therein that do not otherwise
constitute the Purchased Assets (as defined in the Asset Purchase Agreement)
sold, transferred and assigned to BUYER pursuant to the Asset Purchase Agreement
including, but not limited to, all of the foregoing with respect to the “Rapid
Data Module” and “Rapid Video Module” Software used or provided in connection
with the Business.
