EXHIBIT 10E
INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement, dated this day of ,
1997, is entered into by and between Western Atlas Inc., a Delaware corporation
("WESTERN"), and UNOVA, Inc., a Delaware corporation ("UNOVA").
WHEREAS, WESTERN proposes the distribution (the "Distribution") to its
shareholders in a tax-free spin-off of UNOVA which will own WESTERN's industrial
automation systems business, consisting of the automated data collection and
mobile computing businesses operated by Intermec Corporation, Norand Corporation
and United Barcode Industries and the integrated manufacturing systems, body
welding and assembly systems and precision grinding and abrasive systems
businesses operated by various WESTERN divisions (collectively, the "UNOVA
Businesses");
WHEREAS, WESTERN will retain its oilfield information services businesses
(the "Western Businesses");
WHEREAS, WESTERN and UNOVA each desire to allocate intellectual property to
the business which is using or holding for use the intellectual property;
WHEREAS, WESTERN became a publicly traded company as a result of a tax-free
spin-off from Xxxxxx Industries, Inc., a Delaware corporation ("Xxxxxx"), on
March 17, 1994;
NOW, THEREFORE, in consideration of the foregoing premises and other good
and valuable consideration, receipt of which is hereby acknowledged, WESTERN and
UNOVA agree as follows:
1. Definition:
"Intellectual Property" is defined to mean patents, patent applications,
trademarks, service marks, trade names, copyrights, registrations and
applications for registration of trademarks, service marks, trade names and
copyrights, software, mask works, trade secrets and technical information and
licenses relating thereto.
2. Patents:
WESTERN does hereby sell, assign, transfer and convey unto UNOVA, its
successors and assigns, the entire right, title and interest in and to the
patents and patent applications set forth in Attachment A.1 including any
divisions, continuations or continuations-in-part thereof, and any
re-examinations or re-issues thereof, not only for, to and in the United States
of America, its territories and possessions, but for, to and in all countries
foreign thereto, together with the right to recover for past infringement.
3. Trademarks:
3.1 WESTERN does hereby sell, assign, transfer, and convey unto UNOVA, its
successors and assigns, the entire right, title and interest in and to the
trademark or service xxxx registrations and applications for registrations set
forth in Attachment B.1 including the right to recover for past infringement of
said trademarks and service marks and the good will of the business in
connection with which said trademarks and service marks are used and which is
symbolized thereby.
3.2 UNOVA has adopted and begun to use the name "UNOVA" as a trade name,
trademark and service xxxx. WESTERN is currently the owner of trademark, service
xxxx and/or trade name applications for registration and/or reservations of
"UNOVA" in the United States of America, several States within the United States
of America and countries foreign thereto. WESTERN does hereby sell, assign,
transfer, and convey unto UNOVA, its successors and assigns, the entire right,
title and interest in and to such "UNOVA" trademark, service xxxx, and/or trade
name applications and reservations, including the right to recover for past
infringement of said marks and the good will in the business in connection with
which said marks are used and which is symbolized thereby.
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3.3 WESTERN shall retain ownership in the corporate name, trademark and
service xxxx "WESTERN ATLAS," including the trademark and service xxxx
applications for registration and registrations of "WESTERN ATLAS" in the United
States of America and countries foreign thereto listed in Attachment B.5 whose
files shall be transferred from the present corporate headquarters of WESTERN to
the Houston Texas, offices of WESTERN upon the Distribution.
4. Assistance:
4.1 The distribution on March 17, 1994, by Xxxxxx, which resulted in the
tax-free spin-off of WESTERN, included that certain Intellectual Property
Agreement, Annex C of the Distribution Agreement, under which Xxxxxx was to
sell, assign, transfer and convey unto WESTERN certain patents and trademarks.
Some of those certain patents may still be assigned of record to Xxxxxx and/or
its subsidiaries (or a predecessor in interest to Xxxxxx and/or its
subsidiaries). Attachments A.2, A.3 and A.4 hereto list, respectively, patents
owned by Xxxxxx Industrial Automation Systems, Inc. (LIAS)(which changed its
name to WESTERN); Xxxxxx Industrial Products, Inc. (LIPI); and Xxxxx & Whitney
(PW). Some of those certain trademarks may still be assigned of record to Xxxxxx
and/or its subsidiaries. Attachments B.2, B.3 and B.4 hereto list, respectively,
trademarks owned by Xxxxxx Industries, Inc. (LII); Xxxxxx Industrial Automation
Systems, Inc. (LIAS); and Xxxxxx Industrial Products, Inc. (LIPI). WESTERN, if
requested, will execute documents as reasonably requested by UNOVA, and without
expense to WESTERN, to obtain the sale, assignment, transfer and conveyance unto
UNOVA, its successors and assigns of the entire right, title and interest in and
to the patents and trademarks set forth in Xxxxxxxxxxx X.0, X.0, X.0, X.0, X.0
and B.4 hereto.
5. Other Intellectual Property:
The ownership of Intellectual Property not specifically referred to in
Sections 2, 3, 4 and 6 of this Intellectual Property Agreement shall be as
follows:
5.1 Intellectual Property owned by each incorporated subsidiary owned in
whole or in part, directly or indirectly, by WESTERN or UNOVA will continue to
be owned by each such subsidiary.
5.2 Intellectual Property which is used or held for use by a division or
other unit of WESTERN in the Western Businesses, including Intellectual Property
from discontinued operations of the oilfield information services business,
shall continue to be owned by WESTERN.
5.3 Intellectual Property which is used or held for use by a division or
other unit of WESTERN in the UNOVA Businesses, including Intellectual Property
from discontinued operations of the UNOVA Businesses, shall be owned by, and all
WESTERN's right, title and interest is hereby assigned by WESTERN to, UNOVA.
5.4 Intellectual Property used jointly by the Western Businesses and the
UNOVA Businesses listed in Attachment C hereto shall be retained by WESTERN.
5.5 Copyrights, software, software services and licenses and agreements
relating thereto, presently owned by WESTERN, including e-mail, which have been
used at the corporate headquarters of WESTERN and which relate to or are
utilized primarily or exclusively by the Western Businesses shall remain the
property of WESTERN. Copyrights, software, software services and licenses and
agreements relating thereto, presently owned by WESTERN, including e-mail, which
have been used at the corporate headquarters of WESTERN, and which relate to or
are utilized primarily or exclusively by the UNOVA Businesses shall become the
property of UNOVA, to the extent the same may be transferred to UNOVA. If
requested, WESTERN will assist with the assignment to UNOVA of any transferable
right, title and interest of WESTERN in such copyrights, software, software
services and related licenses and agreements which relate to or are utilized
primarily or exclusively by the UNOVA Businesses. Copyrights, software, software
services and licenses and agreements relating thereto, presently owned by
WESTERN, including e-mail, which have been used at the corporate headquarters of
WESTERN and which relate to or are utilized by both the Western Businesses and
the UNOVA Businesses and not primarily by the Western Businesses shall become
the property of UNOVA, to the extent the same may be transferred to UNOVA;
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provided, however, that UNOVA will cooperate with and, if requested, assist
WESTERN to obtain similar copyrights, software, software services and licenses
and agreements relating thereto.
6. Licenses:
6.1 In no event shall UNOVA, or any direct or indirect subsidiary or
division of UNOVA have any interest in or rights under the non-exclusive
license granted to Xxxxxx under the Amalgamation Agreement dated April 30,
1987 (including Section ll.9(b), Exhibit M and Schedule M(b)), among Xxxxxx
Industries, Inc. Research Holdings, Inc., a successor-in-interest to Western
Geophysical Company of America, of the first part, Dresser Industries, Inc.,
of the second part, and Western Atlas International, Inc., of the third part,
and the Letter Agreement dated June 10, 1993 among Xxxxxx Industries, Inc.,
Western Atlas Inc. and Western Atlas International, Inc. ("Non-Exclusive
License"). The foregoing notwithstanding, WESTERN will cause its subsidiary,
Western Atlas International, Inc. (WAII), to enter into a license agreement
with the UNOVA subsidiary, Intermec Technologies Corporation (Intermec),
granting to Intermec a non-exclusive, nontransferable license under WAII's
GPS patents in a specified field of use under such terms as are mutually
agreeable to Intermec and WAII at a royalty rate not to exceed five percent
(5%), it being understood that this more favorable royalty rate is being made
available to Intermec as company currently under common ownership with WAII.
6.2 Promptly following the Distribution Date (as defined in the Distribution
and Indemnity Agreement), UNOVA shall cause all UNOVA subsidiaries with names
that include the words "Western Atlas" or derivations thereof to change their
corporate names to names that do not include such words or derivations. WESTERN
grants to UNOVA and the UNOVA subsidiaries the right to leave the Western Atlas
name on all buildings, vehicles, inventory and supplies owned by UNOVA or the
UNOVA subsidiaries in the form it appears thereon on the Distribution Date,
until the sooner of the date on which all inventory and supplies existing on the
Distribution Date have been consumed or sold or six months following the
Distribution Date; provided, however, that UNOVA shall indemnify WESTERN for any
loss incurred by WESTERN in connection with such use by UNOVA and the UNOVA
subsidiaries. Nothing in this Section 6.2 shall be construed to grant to UNOVA
or the UNOVA subsidiaries any rights whatsoever in the Western Atlas name.
WESTERN and UNOVA shall, and shall require their subsidiaries to, take such
actions and execute such documents as required to carry out and complete the
transfer of Intellectual Property contemplated under this Agreement. After the
Distribution should a patent or patent application, or a trademark registration
or application for registration of a trademark be discovered which is assigned
directly to WESTERN, and which is a part of the UNOVA Businesses, WESTERN will
assign such patent, patent application, trademark registration or application
for registration of a trademark to UNOVA.
IN WITNESS WHEREOF, the parties hereto affix their respective hands as of
the date indicated above.
WESTERN ATLAS INC.
By:___________________________________
______________________________________
(Print Name)
______________________________________
(Print Title)
UNOVA, INC.
By:___________________________________
______________________________________
(Print Name)
______________________________________
(Print Title)
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