1
Exhibit 10.13
PATENT CONTINUATION IN PART AGREEMENT
This Patent Continuation In Part Agreement (this "Agreement") is made
as of March 30, 1998, by and between Aironet Wireless Communications, Inc., a
Delaware corporation ("Aironet"), and Telxon Corporation, a Delaware corporation
("Telxon").
BACKGROUND
WHEREAS, Telxon is the majority stockholder of Aironet;
WHEREAS, heretofore, United States Patent Application Number 08/789,999
(the "Application") was assigned by its inventor to Telxon;
WHEREAS, in connection with a private placement by Aironet of its
common stock, on the date hereof Telxon is assigning the Application to Aironet;
WHEREAS, pursuant to the applicable patent laws, the Application, and
any patents issued thereon, could be considered prior art to new patent
applications filed by Telxon; and
WHEREAS, Aironet and Telxon each desires to establish procedures that
will allow Telxon to file continuations in part in its own name based on claims
in the Application.
AGREEMENT
NOW, THEREFORE, in consideration of the foregoing premises and the
agreements made herein, and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties agree as
follows:
1. COOPERATION. Upon Telxon's written request, at Telxon's cost and
expense, Aironet will cause its employee named as the inventor in the
Application to execute declarations and required assignment instruments, either
directly in favor of Telxon or in favor of Aironet, which in turn will execute
declarations and required assignment instruments in favor of Telxon, to effect
assignment of such inventor's or Aironet's rights, if any, in continuations in
part invented by or for Telxon. At Telxon's cost and expense, Aironet will
execute, and cause the inventor to execute, such other documents, and will take,
and cause the inventor to take, such other actions as are reasonably required by
Telxon in connection with effecting such continuations in part.
2. GOVERNING LAW; JURISDICTION. This Agreement shall be construed under
and governed by the laws of the State of Ohio, without regard to conflict or
choice of laws statutes, regulations, rules or principles, and by the patent
laws of the United States and any other jurisdiction which may apply. Any action
relating to the execution or performance of this Agreement shall be brought in
the courts, state or federal, sitting in Summit County, Ohio, and each party
hereto consents to the jurisdiction and venue of such courts, and agrees not to
contest venue on the grounds of forum non conveniens or otherwise.
2
3. PRIOR AGREEMENTS SUPERSEDED. This Agreement supersedes all prior and
contemporaneous understandings and agreements, written or oral, between the
parties relating to the subject matter hereof.
4. NUMBER AND GENDER. The use in this Agreement of singular, plural,
masculine, feminine and neuter nouns and pronouns, shall include the others as
the context may require.
5. EXECUTION IN COUNTERPARTS. This Agreement may be executed in two or
more counterparts, each of which shall be deemed an original, but all of which
taken together shall constitute one and the same document. An executed faxed
counterpart of this Agreement shall be binding on the parties and for
evidentiary purposes, shall be deemed to be an original.
6. AMENDMENTS; WAIVERS. Amendments to and waivers of any term of this
Agreement must be in writing and executed by both parties hereto.
7. ASSIGNABILITY. This Agreement is binding upon and shall inure to the
benefit of the parties and their respective successors and assigns.
IN WITNESS WHEREOF, each party has caused this Agreement to be executed
by its duly authorized representative as of the date first set forth at the
beginning hereof.
Aironet Wireless Communications, Inc.
By: /s/ Xxxxx X. Xxxxxx
-------------------------------------------
Xxxxx X. Xxxxxx, President
and Chief Executive Officer
Telxon Corporation
By: /s/ Xxxxxxx X. Xxxxx
-------------------------------------------
Xxxxxxx X. Xxxxx, Senior Vice President and
Chief Financial Officer
2
