INTELLECTUAL PROPERTY TRANSFER AND LICENSE AGREEMENT
Exhibit
99.2
THIS
INTELLECTUAL PROPERTY TRANSFER AND LICENSE AGREEMENT (this
“Agreement”) is made as of July 31, 2007 by and between Terabeam, Inc.,
a
Delaware corporation with its principal executive offices located at 0000 X’Xxx
Xxxxx, Xxx Xxxx, XX 00000 (“Seller”), and Civitas Wireless
Solutions, LLC, a Colorado limited liability company with its principal
executive offices located at 0000 Xxxxxxx Xxxxx, Xxxxx 000, Xxxxxx,
XX 00000 (“Buyer”).
RECITALS
A. Buyer
and Seller’s subsidiary, Ricochet Networks, Inc. (“RNI”), entered into an
Asset Purchase Agreement, dated as of even date hereof (the “APA”),
pursuant to which Buyer agreed to purchase and assume, and RNI agreed to sell
and transfer, specified assets and liabilities of RNI.
B. It
is a condition precedent to closing the transactions contemplated by the APA
that Buyer and Seller enter into this Agreement.
NOW,
THEREFORE, in consideration of the above recitals and the mutual agreements
set
forth below, and for other good and valuable consideration (the receipt and
sufficiency of which are hereby acknowledged), the parties agree as
follows:
1. THE
TRANSFER.
1.1 Effective
as of 11:59 p.m. Mountain Time on the date of this Agreement, Seller hereby
sells, assigns, and transfers, and Buyer hereby purchases and acquires, in
perpetuity and throughout the world, all (except as otherwise contemplated
by
this Agreement) of Seller’s right, title and interest in the Transferred
Intellectual Property (as defined in the next sentence), including but not
limited to all goodwill associated with the Transferred Intellectual Property;
all claims for damages by reason of any past infringement of any Transferred
Intellectual Property and the sole and exclusive right to xxx for and recover
any and all damages for any past, present, or future infringement of such
Transferred Intellectual Property; the sole and exclusive right to prosecute
any
pending application for trademark that is included in the Transferred
Intellectual Property; and the sole and exclusive right to prosecute any reissue
and reexamination proceedings relating to any of the Transferred Intellectual
Property. As used in this Agreement, “Transferred Intellectual
Property” means (a) the trademarks and trademark applications listed on
Schedule A, and (b) the intellectual property listed on Schedule
B. The Transferred Intellectual Property is to be held and enjoyed by
Buyer or its designee(s) as entirely as the same would have been held and
enjoyed by Seller had this sale, assignment, and transfer not been
made. The sale and purchase of the Transferred Intellectual Property
shall be completed, and legal title and ownership in respect of the Transferred
Intellectual Property shall be deemed to pass to Buyer, in each case, with
effect from the close of business, being 11:59 p.m. Mountain Time, on the date
of this Agreement. Seller shall execute and deliver
an
instrument
of transfer in form appropriate for recording in the United States Patent and
Trademark Office in the form attached hereto as Exhibit 1.
1.2 If
any sales tax, value added tax, or other transfer tax is properly chargeable
in
respect of the sale and purchase in Section 1.1, Buyer shall pay to Seller
the
amount of such tax in addition to and at the same time as the purchase price
(also by means of reduction of indebtedness). Seller will issue to
Buyer a proper tax invoice in respect thereof.
1.3 BUYER
HEREBY ACKNOWLEDGES THAT SELLER MAKES NO REPRESENTATION OR WARRANTY TO BUYER
UNDER THIS AGREEMENT, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE TRANSFERRED
INTELLECTUAL PROPERTY (INCLUDING, WITHOUT LIMITATION, WHETHER THE TRANSFERRED
INTELLECTUAL PROPERTY EXISTS), AND THAT THE ABOVE SALE AND TRANSFER IS MADE
TO
BUYER ON AN “AS IS” BASIS. Buyer specifically acknowledges that
government registrations, filings, and fees relating to some of the Transferred
Intellectual Property may not have been made and/or paid and therefore some
of
the Transferred Intellectual Property may have been abandoned, forfeited, or
otherwise lost and may not exist as of the date of this
Agreement. Buyer further specifically acknowledges that Seller
(and/or its predecessors in interest) has previously granted licenses to certain
of the Transferred Intellectual Property, including without limitation to RNI;
that the Transferred Intellectual Property is being sold to Buyer subject to
such licenses; and that such licenses continue in effect unaffected by the
sale
of the Transferred Intellectual Property to Buyer.
2. FURTHER
ASSURANCES. Seller hereby covenants and agrees that, at any time
and from time to time after the date of this Agreement, at Buyer’s request and
without additional consideration therefor, Seller will do, execute, acknowledge,
and deliver, or will cause to be done, executed, acknowledged, and delivered,
any and all further acts, conveyances, transfers, assignments, and assurances
that are necessary or advisable in Buyer’s reasonable discretion (a) to more
effectively assure, convey, and confirm unto Buyer entire right, title, and
interest of Seller in the Transferred Intellectual Property and rights attendent
or pertinent to the Transferred Intellectual Property as contemplated by this
Agreement; (b) to provide for Buyer the benefit, use, enjoyment, and possession
of such Transferred Intellectual Property; or (c) to make and prosecute any
and
all applications on the Transferred Intellectual Property. Buyer
hereby covenants and agrees that, at any time and from time to time after the
date of this Agreement, at Seller’s request and without additional consideration
therefor, Buyer will do, execute, acknowledge, and deliver, or will cause to
be
done, executed, acknowledged, and delivered, any and all further acts,
conveyances, transfers, assignments, and assurances that are necessary or
advisable in Seller’s reasonable discretion to provide to Seller the benefit,
use, enjoyment, and possession of the license and other rights granted to Seller
in this Agreement, including, without limitation, providing Seller with copies
of any Transferred Intellectual Property to which Seller is granted license
or
other rights hereunder.
3. LICENSE
BACK.
(a) Buyer
hereby grants to Seller and each of its Subsidiaries (as defined below) a
perpetual, irrevocable, non-exclusive, fully paid, unrestricted, transferable
(as described
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below),
worldwide license, with rights to sublicense as described below, to use the
Transferred Intellectual Property (subject to the exclusions described below)
in
any manner. Seller and its Subsidiaries may sublicense this license
to any customers, distributors, resellers, and other parties who purchase,
lease, or otherwise acquire products from Seller or a Subsidiary above (with
the
right to further sublicense to other purchasers and end users of such
products). This license shall continue and survive after any change
of control of Seller. Seller and each of its Subsidiaries may sell,
convey, assign, or otherwise transfer this license and such company’s rights
hereunder to any acquiror of Seller or a Subsidiary or of all or substantially
all of the assets of Seller or a Subsidiary or of one or more product lines
or
business units from Seller or a Subsidiary. “Subsidiary(ies)”
means any corporation, company, or other entity more than fifty percent
(50%) of
whose outstanding shares or stock entitled to vote for the election of directors
(other than any shares or stock whose voting rights are subject to restriction)
is owned or controlled by Seller, directly or indirectly, now or hereafter,
or
in the case of entities not having voting stock, equivalent ownership or control
thereof. The license granted in this Section 3(a) does not include
any trademarks, trademark applications, domain names, or service marks included
in the Transferred Intellectual Property (except to the extent contemplated
in
Section 3(b) below.
(b) Buyer
acknowledges that RNI has remaining obligations to third parties under contracts
and other agreements that constitute part of the “Excluded Liabilities” (as that
term is defined in the APA). Therefore, notwithstanding any other
provision of this Agreement to the contrary, Buyer agrees that Seller retains
rights in and a license to the Transferred Intellectual Property to the full
extent necessary to permit RNI to perform its remaining obligations to third
parties under contracts and other agreements that constitute part of the
Excluded Liabilities.
4. DISPUTE
RESOLUTION; GOVERNING LAW.
4.1 This
Agreement shall be governed and construed in accordance with the substantive
laws of the State of Delaware without regard to any principles of conflicts
of
law.
4.2 If
a dispute arises out of this Agreement, or the interpretation, breach,
termination or validity thereof, each of the parties agrees to first request
a
meeting of senior management of the parties in a written notice that references
this paragraph. That meeting shall occur at a mutually agreeable time
and place within twenty (20) days of any such written notice. Neither
party shall assert any claim of laches, waiver, estoppel, or the like based
on
the time elapsed by following this procedure. If the dispute is
unresolved in whole or in part within twenty (20) days of such meeting, either
party may commence a legal proceeding. Each party hereby irrevocably
agrees that any legal action or proceeding by or against it arising out of
this
Agreement or the transactions contemplated hereby shall be brought only in
the
courts of the State of Delaware in and for the County of New Castle or (if
it
has jurisdiction) the U.S. District Court for the District of
Delaware. Each of the parties hereto irrevocably consents to the
exclusive jurisdiction of any such state or federal court in connection with
any
matter based upon or arising out of this Agreement or the matters contemplated
herein, agrees that process may be served upon them by mailing copies thereof
by
registered United States mail, postage prepaid, to their address as specified
in
or pursuant to Section 5.3 or in any manner authorized by the
laws
3
of
the
State of Delaware for such persons, and waives and covenants not to assert
or
plead any objection which they might otherwise have to such forum, such
jurisdiction, and such process.
5. MISCELLANEOUS.
5.1 This
Agreement (including the Schedules and Exhibits, which are hereby incorporated
in the terms of this Agreement) sets forth the entire understanding and
agreement among the parties as to matters covered herein and therein and
supersedes any prior and contemporaneous understanding, agreement or statement
(written or oral) of intent among the parties with respect to the subject matter
hereof. No provision of this Agreement may be altered, amended,
modified, waived, or otherwise changed in any way except by a written
instrument, which specifically identifies the intended alteration, amendment,
modification, waiver, or other change and clearly expresses the intention to
so
change this Agreement, signed by Buyer and Seller.
5.2 This
Agreement may be executed in one or more counterparts, any one of which need
not
contain the signatures of more than one party, but all such counterparts taken
together shall constitute one and the same agreement. This Agreement
may be executed by facsimile signature or electronic exchanges of documents
bearing a scanned signature, and a facsimile or copy of a signature is valid
as
an original.
5.3 Any
notice required or permitted by this Agreement shall be in writing and shall
be
delivered as follows with notice deemed given as
indicated: (i) by personal delivery when delivered; (ii) by
overnight courier upon written verification of receipt; (iii) by facsimile
transmission when confirmed by facsimile transmission; or (iv) by certified
or registered mail, return receipt requested, upon verification of
receipt. All notices must be sent to the addresses first described
above or to such other address that the receiving party may have provided for
the purpose of notice in accordance with this Section.
5.4 The
failure of either party hereto to exercise any right hereunder shall not be
deemed to be a waiver of such right. The failure of either party to
require performance by the other party of any provision of this Agreement shall
not affect the full right to require such performance at any time thereafter;
nor shall the waiver by either party of a breach or any provision hereof be
taken or held to be a waiver of the provision itself. All rights and
remedies of any party are cumulative and concurrent, and the exercise of one
right or remedy shall not be deemed a waiver or release of any other right
or
remedy.
5.5 If
any part, term or provision of this Agreement not being of a fundamental nature
is held illegal or unenforceable by any court of competent jurisdiction, that
part, term or provision shall be deemed automatically adjusted to conform to
the
requirements for validity (or deleted if it cannot be so adjusted) and the
validity and enforceability of the remainder of this Agreement shall not be
affected.
5.6 Except
as otherwise expressly provided in Section 3 hereof, no provision of this
Agreement shall give any rights, remedies, or other benefits to any person
or
entity other than Buyer and Seller.
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5.7 The
titles and headings of the various sections of this Agreement are used for
convenience of reference only and are not intended to and shall not in any
way
enlarge or diminish the rights or obligations of the parties or affect the
meaning or construction of this document.
5.8 Buyer
and Seller shall each pay its own costs, charges and expenses incurred in
connection with the preparation and implementation of this Agreement and the
transactions contemplated by it.
5.9 This
Agreement shall apply to, shall be binding in all respects upon, and shall
inure
to the benefit of, the respective successors and assigns of the parties
hereto.
[Signature
Page(s) to Follow]
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IN
WITNESS WHEREOF, this Agreement has been signed by or on behalf of the parties
effective the day and year first written above.
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TERABEAM,
INC., a Delaware corporation
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CIVITAS
WIRELESS SOLUTIONS, LLC, a Colorado limited liability
company
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By:
/s/ Xxxxx X. Xxxxxxx
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By:
/s/ Xxxx X. Xxxxx
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Print
Name: Xxxxx X. Xxxxxxx
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Print
Name: Xxxx X. Xxxxx
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Title:
Vice President
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Title:
Manager
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