Exhibit “B” ASSIGNMENT AGREEMENT WITH RESPECT TO UNDIVIDED INTEREST IN PATENTS
Exhibit
10.7
Exhibit
“B”
WITH
RESPECT TO UNDIVIDED INTEREST IN PATENTS
This
ASSIGNMENT
AGREEMENT WITH RESPECT TO UNDIVIDED INTEREST IN PATENTS (“Assignment
Agreement”), dated as of April 3, 2008 (the “Closing Date”), is entered into by
and between Calypso Wireless, Inc., a Delaware Corporation (“Assignor”), and
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, P.C., a Texas professional corporation (“▇▇▇▇▇▇▇▇▇▇”), and
Drago Daic, an individual residing in Houston, Texas (“Daic” with ▇▇▇▇▇▇▇▇▇▇ and
Daic being collectively referred to as “Assignee”). Assignor and Assignee
are each sometimes referred to herein as “Party” and collectively as
“Parties”. Capitalized terms used herein and not otherwise defined
shall have the meanings ascribed thereto in the Settlement Agreement, as defined
below.
WHEREAS, a dispute had arisen
between the Parties with respect to certain patent rights owned by Assignor
commonly known as “ASNAP” and more particularly described as United States
Patent No. US 6,680,923 B1; and “▇▇▇▇▇▇ Patents” and more particularly described
as United States Patent No. ▇▇ ▇,▇▇▇,▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇. ▇▇▇,▇▇▇,▇▇▇,
▇▇▇▇▇▇ ▇▇▇▇▇▇ Patent No. US 6,839,413, and United States Patent No. US
7,031,439.
WHEREAS,
the Parties have entered into a Settlement Agreement dated April 3, 2008,
providing for the resolution of the above described dispute (the “Settlement
Agreement”);
WHEREAS, pursuant to the
Settlement Agreement, Assignor has agreed to enter into this Assignment
Agreement at the Closing of the Settlement Agreement;
NOW THEREFORE, in
consideration of the premises and mutual covenants herein contained, Assignor
and Assignee agree as follows:
1. Assignment.
(a) Assignor does hereby SELL,
ASSIGN, AND TRANSFER to Assignee an undivided twenty five percent (25%) interest
in and to the ASNAP Patent and ▇▇▇▇▇▇ Patents (collectively the “Patent”)
which are more fully described herein below in paragraphs (i) and (ii) and shall
mean as follows:
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(i)
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“ASNAP
Patents” shall mean: (1) United States Patent No. US 6,680,923 B1, U.S.
Patent Application Serial No. 11/040,482, and PCT Application No.
PCT/US01/07528 (2) all patents and applications throughout the world that
claim priority to, directly or indirectly, or from which the foregoing
claim priority, directly or indirectly; (3) all substitutions for and
divisions, continuations, continuations-in-part, renewals, reissues,
patent cooperation treaty applications, foreign applications, national
phase entries, and extensions of the foregoing patents and applications
throughout the world, and including patent applications and applications
throughout the world for like protection that have now been or may in the
future be granted on the invention disclosed in any of the foregoing
patents or applications, including without limitation, those obtained or
permissible under past, present, and future laws and statutes; and (4) all
right, title, and interest in and to any and all rights and causes of
action based on, arising out of, related to, or on account of past,
present, and future unauthorized use and/or infringement of any and all of
the foregoing, including but not limited to all past, present, and future
awards, damages, and remedies related thereto or arising
therefrom.
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(ii)
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The
“▇▇▇▇▇▇ Patents” shall mean: (1) United States Patents No. 6,385,306, No.
6,765,996, No. 6,839,412 and No. 7,031,439; (2) all patents and
applications throughout the world that claim priority to (directly or
indirectly) the foregoing, or from which the foregoing claim priority
(directly or indirectly); (3) all substitutions for and divisions,
continuations, continuations-in-part, renewals, reissues, patent
cooperation treaty applications, foreign applications, national phase
entries, and extensions of the foregoing patents and applications
throughout the world, and including patent applications and applications
throughout the world for like protection that have now been or may in the
future be granted on the invention disclosed in any of the foregoing
patents or applications, including without limitation, those obtained or
permissible under past, present, and future laws and statutes; and (4) all
right, title, and interest in and to any and all rights and causes of
action based on, arising out of, related to, or on account of past,
present, and future unauthorized use and/or infringement of the any and
all of the foregoing, including but not limited to all past, present, and
future awards, damages, and remedies related thereto or arising
therefrom.
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Assignee’s
twenty-five percent (25%) interest shall also include twenty-five percent (25%)
of all proceeds arising out of or related to the Patents, including but not
limited to: (a) all monies, revenues, and non-monetary consideration received by
Assignor from the use, manufacture, sale, license, offer for sale or license,
and importation of all methods and products that fall within the scope of at
least one claim of the Patents and (b) all monies, revenues, and non-monetary
consideration received in settlement of or as damages for (including enhanced
damages) any dispute, suit, action, or claim arising out of or related to the
Patents.
(b) With
the exception of those rights expressly transferred by Assignor to Assignee
pursuant to this Assignment Agreement, Assignee transfers to Assignor all right,
title and interest in and to the Patent that Daic may have or heretofore have
acquired, whether pursuant to the litigation between the parties or
otherwise. Assignee further represents and warrants that they have
not, prior to entering into this Assignment Agreement, transferred or assigned
any interest in the Patent to any other party.
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2. Representations
and Warranties of Assignor. Assignor does hereby
represent and warrant to Assignee that:
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(a)
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Neither
the Patent nor any claims thereof has been held invalid or unenforceable
and, to the best of Assignor’s knowledge, the Patent is valid and
enforceable.
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(b)
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Assignor
shall not challenge the validity or enforceability of the
Patent.
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(c)
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The
Patent is not, nor has it ever been, the subject of, or involved in, any
suit, action or reexamination or reissue proceeding other than the suit
that is described in the Settlement Agreement (such litigation being
referred to as the “Litigation”).
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(d)
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To
the best of Assignor’s knowledge, aside from the Litigation, there are no
past or present threatened claims or litigation contesting the validity,
enforceability, infringement, ownership or right to use, make, import,
sell, license, or offer for sale or license any rights in the Patent or,
to the best of Assignor’s knowledge, other than with respect to the
Litigation, is there any basis for such claims or
litigation.
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(e)
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Other
than as provided for in this Assignment Agreement, Assignor owns and holds
all right, title, claim, and interest in and to the Patent and no
assignment, grant, mortgage, lien, restriction, encumbrance, or other
agreement affecting the Patent has been or will be made to others by the
Assignor.
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(f)
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Assignor
possesses the full right to convey the interest conveyed in this
Assignment Agreement in the Patent to Assignee.
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(g)
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There
are no current licenses, or options, commitments or agreements to license
any rights, in and to the Patent.
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(h)
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All
maintenance fees or annuity fees have been paid on the Patent and the
Patent has not expired for failure to pay maintenance or annuity
fees.
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(i)
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Assignor
is not aware of any prior article, document, use, or information that
would invalidate any of the claims of the Patent.
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(j)
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To
the best of Assignor’s knowledge, the applicants’ attorneys, agents, and
other individuals associated with the filing or prosecution of the Patent
disclosed to the appropriate patent office all information known to them
to be material to the patentability of the Patent.
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(k)
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To
the best of Assignor’s knowledge, the inventor named in the Patent is the
original, sole, and true inventor of the inventions claimed in the
Patent.
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3. Covenants of
Assignee. Assignee hereby covenants and promises
that:
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(a)
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Assignee will not use, license or otherwise convey or assign any rights in and to the Patent; and | |
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(b)
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Assignee
will not sell, assign or pledge its rights and interests under this
Assignment Agreement unless the purchaser, assignee or pledgee agrees to
accept and be bound by all the terms of this Assignment
Agreement.
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4. Assignee’s
Rights in the Management of the Patent.
(a) Prior
to any sale, license or other transfer (any such transaction being referred to
herein as a “Transfer”) of any rights in the Patent, Assignor shall provide
reasonable information with respect to the proposed Transfer to Assignee such
that Assignee can evaluate the Transfer. Assignor agrees that it will
not Transfer any rights in the Patent to an Affiliate of Assignor, nor will
Assignor enter into any Transfer that is contingent upon entering into a second
transaction if the effect of the combined transactions would be reasonably
construed to unfairly move consideration away from the Transfer to the second
transaction. Assignor agrees that any Transfer of the Patent must be
on an arm’s length basis. Aside from the foregoing, Assignee shall be
obligated to approve any Transfer requested pursuant to notice as provided
herein, so long as (i) the Transfer provides for Assignee to receive its twenty
five percent (25%) interest in the proceeds directly from the recipient of the
Transfer; (ii) the directors of Assignor (the “Directors”) approve the Transfer;
(iii) the decision of the Directors is informed by all material information
reasonably available; (iv) the Directors are disinterested and independent; and
(v) the Directors act with the honest belief that the Transfer is in the best
interest of the owners of the Patent. With the sole exception of the
limited right of approval set forth herein, Assignee shall have no right to
direct or to participate in any way in any negotiations or discussions relating
to any Transfer of the Patent. For purposes hereof, “Affiliate” shall
mean with respect to any specified Person, any Person that, directly or
indirectly, controls, is controlled by, or is under common control with, such
specified Person, through one or more intermediaries or otherwise and “Person”
shall mean any individual, corporation, partnership, joint venture, association,
joint-stock company, trust, unincorporated organization, limited liability
company or government or other entity.
(b) No
Transfer shall be made of the Patent without the written approval of
Assignee. Prior to any Transfer, after being provided with the
information required under paragraph (a) above and assuming the Transfer
complies with the other provisions of paragraph (a), Assignee shall be obligated
to approve the Transfer upon five (5) days notice thereof. In such
event, Assignee shall also be obligated to comply with such reasonable requests
as may be made by Assignor relating to the Transfer, including the documentation
of the Transfer. Formal approval shall be evidenced by the written
consent of either ▇▇▇▇▇▇▇▇▇▇ or Daic.
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(c) Except
as provided herein, Assignee shall have no rights in or to the management of the
Patent.
(d) In
the event that Assignor brings a suit, action or claim related to infringement,
validity, or enforceability of the Patent, Assignee consents to being named as a
co-party in such suit, action or claim (including but not limited to giving its
consent to venue and personal jurisdiction in the venue selected by
Assignor). Assignor shall pay all attorney’s fees and other costs
incurred to bring and prosecute such a suit, action or claim including all
attorney’s fees and other costs with respect to Assignee’s interest in the
Patent. In the event that a recovery is obtained, Assignor shall be
entitled to deduct, from the proceeds of such suit, action or claim payable to
Assignee, the Assignee’s proportionate share of the attorney’s fees and other
costs incurred with respect to the suit, action or claim.
5. Arbitration. In
the event Assignee does not approve the Transfer within the time period
specified above, Assignor shall be permitted to submit its request for approval
of the Transfer to binding arbitration in accordance with this paragraph
4. In such event, Assignor’s right to have the Transfer approved,
including the reasonableness of Assignee’s refusal or failure to approve the
Transfer, shall be settled by arbitration administered by the American
Arbitration Association in Texas in accordance with its Commercial Arbitration
Rules. The matter will be submitted for decision by a single
arbitrator, and judgment on the award rendered by the arbitrator may be entered
in any court having jurisdiction thereof. The parties will request an
expedited schedule in any such arbitration.
6. Notices. Any
notices or other communications required or permitted under, or otherwise in
connection with this Assignment Agreement, shall be in writing and shall be
deemed to have been duly given (i) when delivered in person; (ii) upon
confirmation of receipt when transmitted by facsimile transmission (but only if
followed by transmittal by national overnight courier or hand delivery on the
next Business Day; (iii) three (three) days following deposit in a regularly
maintained receptacle for the United States mail, registered or certified,
postage fully prepaid; or (iv) on the next Business Day if transmitted by
national overnight courier, in each case to the address set forth below or at
such other address as such party may have previously specified by notice
provided in accordance herewith:
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If to Assignor,
to:
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Calypso
Wireless, Inc.
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▇▇▇▇
▇▇ ▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
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▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇
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Attention:
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Facsimile
No.
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5
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with a copy to:
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Zimmerman,
Axelrad, ▇▇▇▇▇, ▇▇▇▇▇ & ▇▇▇▇, P.C.
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▇▇▇▇
▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
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▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
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Attn: ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇
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Facsimile
No. (▇▇▇)▇▇▇-▇▇▇▇
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If to Assignee,
to:
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Drago
Daic
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xx
xxxx xxxxxxxx xxxx xxxxx
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xxxxxx
▇▇▇▇▇ ▇▇▇▇▇
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xxxxxxxxxx
xx xxxxxxxxxxx
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and
to:
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▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, P.C.
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▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
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▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇
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Facsimile
No. (▇▇▇)▇▇▇-▇▇▇▇
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with a copy
to:
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▇▇▇▇▇
& ▇▇▇▇▇▇, P.C.
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▇▇▇▇
▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
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▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇
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Attention: ▇▇▇▇
▇. ▇▇▇▇▇▇
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Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
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7. Further
Actions. When requested and at the expense of the
Assignee, Assignor shall carry out in good faith the intent and
purpose of this Patent Assignment and generally do everything possible which the
Assignee shall consider desirable for vesting in the Assignee the undivided
interest in the title to the Patent described herein.
8. Reconveyance
to Assignor. At such time as Assignee has received an
aggregate of $20,000,000 in cash as a result of the ownership interest in the
Patent conveyed pursuant hereto, Assignee shall reconvey to Assignor all rights
received pursuant to this Patent Assignment. Simultaneous therewith,
Assignor and Assignee shall execute and deliver to the other the Patent Proceeds
Assignment in the form attached hereto as Exhibit
“C”.
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9. Counterparts. This
Patent Assignment may be executed in any number of counterparts, and each
counterpart hereof shall be deemed to be an original instrument, but all such
counterparts shall constitute but one agreement.
10. Descriptive
Headings. The descriptive headings of this Patent Assignment
are inserted for convenience only and shall not be deemed to affect the meaning
or construction of any of the provisions hereof.
11. Governing
Law. The terms of this Patent Assignment shall be construed
and enforced under the laws of the State of Texas, without regard to principles
of conflicts of laws.
12. Binding
Effect. This Patent Assignment, and all the terms and
provisions hereof, shall be binding upon and shall inure to the benefit of
Assignor and Assignee, and their respective successors and assigns, as the case
may be.
[REMAINDER
OF PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, this
Assignment Agreement has been duly executed and delivered as of the date first
above written.
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ASSIGNOR:
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CALYPSO
WIRELESS, INC.,
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a
Delaware corporation
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By:
/s/ ▇▇▇▇▇▇ ▇.
▇▇▇▇▇▇
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Name:
▇▇▇▇▇▇ ▇.
▇▇▇▇▇▇
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Title:
CFO &
Director
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Date:
April 4,
2008
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ASSIGNEE:
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▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, P.C.
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a
Texas professional corporation
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By:
/s/ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
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▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, President
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| /s/ Drago Daic | |
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DRAGO
DAIC
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STATE
OF _______
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§
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§ ss.
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COUNTY
OF _____
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§
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BEFORE ME, the undersigned authority,
on this _____ day of ______________, 2008, personally appeared ______________________,
the _______________________ of Calypso Wireless, Inc., a Delaware corporation,
known to me to be the person and officer whose name is subscribed to the
foregoing instrument and acknowledged to me that he executed the same of his own
free will for the purposes and consideration therein expressed and on behalf of
said corporation.
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_____________________________________
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Signature
of Notary
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[Seal]
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STATE
OF TEXAS
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§
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§ ss.
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COUNTY
OF ▇▇▇▇▇▇
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§
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BEFORE ME, the undersigned authority,
on this 3 day of April,
2008, personally appeared ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, President of ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, P.C.,
a Texas professional corporation, known to me to be the person and officer whose
name is subscribed to the foregoing instrument and acknowledged to me that he
executed the same of his own free will for the purposes and consideration
therein expressed and on behalf of said corporation.
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/s/
▇▇▇▇▇▇ ▇. Page
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Signature
of Notary
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[Seal]
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STATE
OF TEXAS
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§
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§ ss.
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COUNTY
OF ▇▇▇▇▇▇
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§
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Before
me, a notary public, on this 2
day of April,
2008, personally appeared Drago Daic, known to me to be the person
whose name is subscribed to the foregoing document and, being by me first duly
sworn, declared that the statements therein contained are true and
correct.
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/s/ ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
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Notary
Public, in and for the State of
Texas
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[Seal]
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