PATENT PURCHASE AGREEMENT
Exhibit
10.1
This
PATENT PURCHASE AGREEMENT (this “Agreement”)
is
entered into, as of the Effective Date (defined below), by and between Wegener
Communications, Inc., a Delaware corporation, with an office at 00000 Xxxxxxxxxx
Xxxxxx, Xxxxxx, XX 00000 (“Seller”)
and
EPAX Consulting Limited Liability Company, a Delaware limited liability company,
with an address at 0000 Xxxxxxxxxxx Xxxx, Xxxxx 000, Xxxxxxxxxx, XX 00000
(“Purchaser”).
The
parties hereby agree as follows:
1. Background
1.1
Seller
owns certain provisional patent applications, patent applications, patents,
and/or related foreign patents and applications.
1.2
Seller
wishes to sell to Purchaser all right, title, and interest in such patents
and
applications and the causes of action to xxx for infringement thereof and other
enforcement rights.
1.3
Purchaser
wishes to purchase from Seller all right, title, and interest in the Assigned
Patent Rights (defined below), free and clear of any restrictions, liens,
claims, and encumbrances.
2.
Definitions
“Abandoned
Assets”
means
those specific provisional patent applications, patent applications, patents
and
other governmental grants or issuances listed on Exhibit
C
(as such
list may be updated based on Purchaser’s review pursuant to paragraph
3.1).
“Assigned
Patent Rights”
means
the Patents and the additional rights set forth in paragraph 4.2.
“Assignment
Agreements”
means
the agreements assigning ownership of the Assigned Patent Rights and the
Abandoned Assets from the inventors and/or prior owners to Seller.
“Common
Interest Agreement”
means
an agreement, in the form set forth on Exhibit
E,
setting
forth the terms under which Seller and Purchaser will protect certain
information relating to the Patents under the common interest
privilege.
“Docket”
means
Seller’s or its agents’ list or other means of tracking information relating to
the prosecution or maintenance of the Patents throughout the world, including,
without limitation, the names, addresses, email addresses, and phone numbers
of
prosecution counsel and agents, and information relating to deadlines, payments,
and filings, which list or other means of tracking information is current as
of
the Effective Date.
“Effective
Date”
means
the date set forth as the Effective Date on the signature page of this
Agreement.
“Executed
Assignments”
means
both the executed and notarized Assignment of Patent Rights in Exhibit
B,
the
executed Assignment of Rights in Certain Assets in Exhibit
C,
each as
signed by a duly authorized representative of Seller, and the additional
documents Seller may be required to execute and deliver under paragraph
5.3.
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1
“Live
Assets”
means
the provisional patent applications, patent applications, and patents listed
on
Exhibits
A and/or
B
(as such
lists may be updated based on Purchaser’s review pursuant to paragraph
3.1).
“Patents”
means,
excluding the Abandoned Assets, all (a) Live Assets; (b) patents or patent
applications (i) to which any of the Live Assets directly or indirectly claims
priority, (ii) for which any of the Live Assets directly or indirectly forms
a
basis for priority, and/or (iii) that were co-owned applications that
incorporate by reference, or are incorporated by reference into, the Live Assets
(excluding patent [XXXX]*);
(c)
reissues, reexaminations, extensions, continuations, continuations in part,
continuing prosecution applications, requests for continuing examinations,
divisions, and registrations of any item in any of the foregoing categories
(a)
and (b); (d) foreign patents, patent applications and counterparts relating
to
any item in any of the foregoing categories (a) through (c), including, without
limitation, certificates of invention, utility models, industrial design
protection, design patent protection, and other governmental grants or
issuances; and (e) any items in any of the foregoing categories (b) through
(d)
whether or not expressly listed as Live Assets and whether or not claims in
any
of the foregoing have been rejected, withdrawn, cancelled, or the
like.
“Primary
Warranties”
means,
collectively, the representations and warranties of Seller set forth in
paragraphs 6.1, 6.2, 6.3, 6.4, and 6.5 hereof.
“Prosecution
History Files”
means
all files, documents and tangible things, as those terms have been interpreted
pursuant to rules and laws governing the production of documents and things,
constituting, comprising or relating to the investigation, evaluation,
preparation, prosecution, maintenance, defense, filing, issuance, registration,
assertion or enforcement of the Patents.
“Transmitted
Copy”
has
the
meaning set forth in paragraph 8.12.
3.
Transmittal,
Review, Closing Conditions and Payment
3.1
Transmittal.
Within
twenty (20) calendar days following the later of the Effective Date or the
date
Purchaser receives a Transmitted Copy of this Agreement executed by Seller,
Seller will send to Purchaser, or its legal counsel, the items identified on
Exhibit
D
(the
“Initial
Deliverables”);
provided, however, the Common Interest Agreement will not be required to be
executed on behalf of the Seller if there are no pending patent applications
included in the Patents. Seller acknowledges and agrees that Purchaser may
request, and Seller will promptly deliver to Purchaser or its legal counsel,
as
directed by Purchaser, additional documents based on Purchaser’s review of the
Initial Deliverables (such additional documents and the Initial Deliverables
are, collectively, the “Deliverables”),
and
that as a result of Purchaser’s review, the lists of Live Assets on Exhibits
A and B and
the
list of Abandoned Assets on Exhibit
C,
may be
revised by Purchaser, with mutual agreement of Seller (evidenced by one or
more
Executed Assignments), both before and after the Closing to conform these lists
to the definition of Patents (and these revisions may therefore require the
inclusion of additional provisional patent applications, patent applications,
and patents on Exhibit
A
and
B
or
Exhibit
C).
To the
extent any of the Live Assets are removed for any reason, the payment in
paragraph 3.4 may be reduced by mutual agreement of the parties. If originals
of
the Deliverables are not available and delivered to Purchaser prior to Closing,
Seller will cause (i) such originals of the Deliverables to be sent to Purchaser
or Purchaser’s representative promptly if and after such originals are located
and (ii) Seller will deliver to Purchaser a declaration, executed under penalty
of perjury, detailing Seller’s efforts to locate such unavailable original
documents and details regarding how delivered copies were obtained.
*Filed
under an application for confidential treatment.
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2
3.2
Closing.
The
closing of the sale of the Assigned Patent Rights and the assignment of the
Abandoned Assets hereunder will occur when all conditions set forth in paragraph
3.3 have been satisfied or waived and the payment set forth in paragraph 3.4
is
made (the “Closing”).
Purchaser and Seller will use reasonable efforts to carry out the Closing within
sixty (60) calendar days following the later of the Effective Date or the date
on which the last of the Deliverables was received by Purchaser.
3.3
Closing
Conditions.
The
following are conditions precedent to Purchaser’s obligation to make the payment
in paragraph 3.4.
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(a)
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Signature
by Seller.
Seller timely executed this Agreement and delivered a Transmitted
Copy of
this Agreement to Purchaser’s representatives by not later than May 28,
2008 at 5:00 p.m., Pacific time and promptly delivered two (2) executed
originals of this Agreement to Purchaser’s
representatives.
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(b)
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Transmittal
of Documents.
Seller delivered to Purchaser all the
Deliverables.
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(c)
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Compliance
With Agreement.
Seller performed and complied in all respects with all of the obligations
under this Agreement that are to be performed or complied with by
it on or
prior to the Closing.
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(d)
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Representations
and Warranties True.
Purchaser is satisfied that, as of the Effective Date and as of the
Closing, the representations and warranties of Seller contained in
Section
6 are true and correct.
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(e)
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Patents
Not Abandoned.
Purchaser is satisfied that, as of the Effective Date and as of the
Closing, none of the assets that are included in the Patents have
expired,
lapsed, been abandoned, or deemed
withdrawn.
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(f)
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Delivery
of Executed Assignments.
Seller caused the Executed Assignments to be delivered to Purchaser’s
representatives.
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3.4
Payment.
At
Closing, Purchaser will pay to Seller the amount of One Million Seventy Five
Thousand U.S. Dollars (US $1,075,000) by wire transfer. Prior to Closing, Seller
will furnish Purchaser with all necessary information to make a wire transfer
to
a designated bank account of Seller. Purchaser may record the Executed
Assignments with the applicable patent offices only on or after
Closing.
3.5
Termination
and Survival.
In the
event all conditions to Closing set forth in paragraph 3.3 are not met within
ninety (90) days following the Effective Date, Purchaser will have the right
to
terminate this Agreement by written notice to Seller. Upon termination,
Purchaser will return all documents delivered to Purchaser under this Section
3
to Seller. The provisions of Section 8 will survive any
termination.
4.
Transfer
of Patents and Additional Rights
4.1
Assignment
of Patents.
Upon
the Closing, Seller hereby sells, assigns, transfers, and conveys to Purchaser
all right, title, and interest in and to the Assigned Patent Rights. Seller
understands and acknowledges that, if any of the Patents are assigned to
Seller’s affiliates or subsidiaries, Seller may be required prior to the Closing
to perform certain actions to establish that Seller is the assignee and to
record such assignments. On or before Closing, Seller will execute and deliver
to Purchaser the Assignment of Patent Rights in the form set forth in
Exhibit
B
(as may
be updated based on Purchaser’s review pursuant to paragraph
3.1).
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3
4.2
Assignment
of Additional Rights.
Upon
the Closing, Seller hereby also sells, assigns, transfers, and conveys to
Purchaser all right, title and interest in and to all
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(a)
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inventions,
invention disclosures, and discoveries described in any of the Patents
or
Abandoned Assets that (i) are included in any claim in the Patents
or
Abandoned Assets, (ii) are subject matter capable of being reduced
to a
patent claim in a reissue or reexamination proceedings brought on
any of
the Patents or Abandoned Assets, and/or (iii) could have been included
as
a claim in any of the Patents or Abandoned
Assets;
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(b)
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rights
to apply in any or all countries of the world for patents, certificates
of
invention, utility models, industrial design protections, design
patent
protections, or other governmental grants or issuances of any type
related
to any of the Patents and the inventions, invention disclosures,
and
discoveries therein;
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(c)
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causes
of action (whether known or unknown or whether currently pending,
filed,
or otherwise) and other enforcement rights under, or on account of,
any of
the Patents and/or the rights described in subparagraph 4.2(b), including,
without limitation, all causes of action and other enforcement rights
for
(i) damages, (ii) injunctive relief, and (iii) any other remedies
of any
kind for past, current and future infringement;
and
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(d)
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rights
to collect royalties or other payments under or on account of any
of the
Patents and/or any of the
foregoing.
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4.3
Assignment
of Rights in Certain Assets.
Upon
the Closing, Seller hereby sells, assigns, transfers, and conveys to Purchaser
all of Seller’s right, title, and interest in and to the Abandoned Assets. On or
before Closing, Seller will execute and deliver to Purchaser the Assignment
of
Certain Rights in the form set forth in Exhibit
C
(as may
be updated based on Purchaser’s review pursuant to paragraph 3.1).
4.4
License
Back to Seller under Patents.
Upon
the Closing, Purchaser hereby grants to Seller, under the Patents, and for
the
lives thereof, a royalty-free, non-exclusive, non-sublicensable, right and
license (“Seller
License”)
to
practice the methods and to make, have made, use, distribute, lease, sell,
offer
for sale, import, export, develop and otherwise dispose of and exploit any
Seller products covered by the Patents (“Covered
Products”).
The
Seller License shall apply to the reproduction and subsequent distribution
of
Covered Products under Seller’s trademarks and brands, in substantially
identical form as they are distributed by the Seller, by authorized agents
of
the Seller such as a distributor, replicator, VAR or OEM. The Seller
acknowledges and agrees that the Seller License is not intended to cover foundry
or contract manufacturing activities that the Seller may undertake on behalf
of
any person that is not the Seller. As a result, Covered Products shall exclude
any products or services manufactured, produced or provided by the Seller on
behalf of any person that is not the Seller (a) from designs received in
substantially completed form from a source other than the Seller and (b) for
resale to such person that is not the Seller (or to customers of, or as directed
by, any person that is not the Seller) on essentially an exclusive
basis.
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4
5.
Additional
Obligations
5.1
Further
Cooperation.
(a)
At
the
reasonable request of Purchaser, Seller will execute and deliver such other
instruments and do and perform such other acts and things as may be necessary
or
desirable for effecting completely the consummation of the transactions
contemplated hereby, including, without limitation, execution, acknowledgment,
and recordation of other such papers, and using commercially reasonable efforts
to obtain the same from the respective inventors, as necessary or desirable
for
fully perfecting and conveying unto Purchaser the benefit of the transactions
contemplated hereby.
(b)
To
the
extent any attorney-client privilege or the attorney work-product doctrine
applies to any portion of the Prosecution History Files and that is retained
after Closing under Seller or Seller’s representatives normal document retention
policy, Seller will ensure that, if any such portion of the Prosecution History
File remains under Seller’s possession or control after Closing, it is not
disclosed to any third party unless (a) disclosure is ordered by a court of
competent jurisdiction, after all appropriate appeals to prevent disclosure
have
been exhausted, and (b) Seller gave Purchaser prompt notice upon learning that
any third party sought or intended to seek a court order requiring the
disclosure of any such portion of the Prosecution History File. In addition,
Seller will continue to prosecute, maintain, and defend the Patents at its
sole
expense until the Closing.
(c)
Seller
will also, at the reasonable request of Purchaser after Closing, assist
Purchaser in providing, and obtaining, from the respective inventors, prompt
production of pertinent facts and documents, otherwise giving of testimony,
execution of petitions, oaths, powers of attorney, specifications, declarations
or other papers and other assistance reasonably necessary for filing patent
applications, enforcement or other actions and proceedings respect to the claims
under the Patents. Purchaser shall compensate Seller for any reasonable,
documented disbursements and time incurred after Closing in connection with
providing assistance under this subparagraph 5.1(c) in connection with any
enforcement or other infringement action regarding the Patents, under a standard
billable hour rate of Seller; provided that Seller shall have furnished
Purchaser an advance, written estimate of the fees and costs for such assistance
and Purchaser shall have agreed in writing to pay such fees and
costs.
5.2
Payment
of Fees.
Seller
will pay any maintenance fees, annuities, and the like due or payable on the
Patents until the Closing. For the avoidance of doubt, Seller shall pay any
maintenance fees for which the fee is payable (e.g., the fee payment window
opens) on or prior to the Closing even if the surcharge date or final deadline
for payment of such fee would be after the Closing. Seller hereby gives
Purchaser power-of-attorney to (a) execute documents in the name of Seller
in
order to effectuate the recordation of the transfers of any portion of the
Patents in an governmental filing office in the world and (b) instruct legal
counsel to take steps to pay maintenance fees and annuities that Seller declines
to pay and to make filings on behalf of Seller prior to Closing and otherwise
preserve the assets through Closing.
5.3
Foreign
Assignments.
To the
extent the Patents include non-United States patents and patent applications,
Seller will deliver to Purchaser’s representatives executed documents in a form
as may be required in the non-U.S jurisdiction in order to perfect the
assignment to Purchaser of the non-U.S. patents and patent
applications.
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5
6.
Representations
and Warranties of Seller
Seller
hereby represents and warrants to Purchaser as follows that, as of the Effective
Date and as of the Closing:
6.1
Authority.
Seller
is a company duly formed, validly existing, and in good standing under the
laws
of the jurisdiction of its formation. Seller has the full power and authority
and has obtained all third party consents, approvals, and/or other
authorizations required to enter into this Agreement and to carry out its
obligations hereunder, including, without limitation, the assignment of the
Assigned Patent Rights to Purchaser.
6.2
Title
and Contest.
Seller
owns all right, title, and interest to the Assigned Patent Rights, including,
without limitation, all right, title, and interest to xxx for infringement
of
the Patents. Seller has obtained and properly recorded previously executed
assignments for the Patents as necessary to fully perfect its rights and title
therein in accordance with governing law and regulations in each respective
jurisdiction. The Assigned Patent Rights are free and clear of all liens,
claims, mortgages, security interests or other encumbrances, and restrictions.
There are no actions, suits, investigations, claims, or proceedings threatened,
pending, or in progress relating in any way to the Assigned Patent Rights.
There
are no existing contracts, agreements, options, commitments, proposals, bids,
offers, or rights with, to, or in any person to acquire any of the Assigned
Patent Rights.
6.3
Existing
Licenses and Obligations.
There
is no obligation imposed by a standards-setting organization to license any
of
the Patents on particular terms or conditions. No licenses under the Patents
have been granted or retained by Seller, any prior owners, or inventors. After
Closing, none of Seller, any prior owner, or any inventor retain any rights
or
interest in the Assigned Patent Rights as of Closing.
6.4
Restrictions
on Rights.
Purchaser will not be subject to any covenant not to xxx or similar restrictions
on its enforcement or enjoyment of the Assigned Patent Rights or the Abandoned
Assets as a result of any prior transaction related to the Assigned Patent
Rights or the Abandoned Assets.
6.5
Validity
and Enforceability.
None of
the Patents or the Abandoned Assets (other than Abandoned Assets for which
abandonment resulted solely from unpaid fees and/or annuities) has ever been
found invalid, unpatentable, or unenforceable for any reason in any
administrative, arbitration, judicial or other proceeding, and, with the
exception of publicly available documents in the applicable patent office
recorded with respect to Patents, Seller does not know of and has not received
any notice or information of any kind from any source suggesting that the
Patents may be invalid, unpatentable, or unenforceable. If any of the Patents
are terminally disclaimed to another patent or patent application, all patents
and patent applications subject to such terminal disclaimer are included in
this
transaction. To the extent “small entity” fees were paid to the United States
Patent and Trademark Office for any Patent, such reduced fees were then
appropriate because the payor qualified to pay “small entity” fees at the time
of such payment and specifically had not licensed rights in the any Patent
to an
entity that was not a “small entity.”
6.6
Conduct.
None of
Seller, prior owner or their respective agents or representatives have engaged
in any conduct, or omitted to perform any necessary act, the result of which
would invalidate any of the Patents or hinder their enforcement, including,
without limitation, misrepresenting the Patents to a standard-setting
organization.
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6
6.7
Enforcement.
Seller
has not put a third party on notice of actual or potential infringement of
any
of the Patents or the Abandoned Assets. Seller has not invited any third party
to enter into a license under any of the Patents or the Abandoned Assets. Seller
has not initiated any enforcement action with respect to any of the Patents
or
the Abandoned Assets.
6.8
Patent
Office Proceedings.
None of
the Patents or the Abandoned Assets has been or is currently involved in any
reexamination, reissue, interference proceeding, or any similar proceeding,
and
no such proceedings are pending or threatened.
6.9
Fees.
All
maintenance fees, annuities, and the like due or payable on the Patents have
been timely paid. For the avoidance of doubt, such timely payment includes
payment of any maintenance fees for which the fee is payable (e.g., the fee
payment window opens) even if the surcharge date or final deadline for payment
of such fee would be in the future.
6.10
Abandoned
Assets.
According to each applicable patent office, each of the Abandoned Assets has
expired, lapsed, or been abandoned or deemed withdrawn.
7.
Representations
and Warranties of Purchaser
Purchaser
hereby represents and warrants to Seller as follows that, as of the Effective
Date and as of the Closing:
7.1
Purchaser
is a limited liability company duly formed, validly existing, and in good
standing under the laws of the jurisdiction of its formation.
7.2
Purchaser
has all requisite power and authority to (i) enter into, execute, and deliver
this Agreement and (ii) perform fully its obligations hereunder.
8.
Miscellaneous
8.1
Limitation
of Liability.
EXCEPT
IN THE EVENT OF BREACH OF ANY OF THE PRIMARY WARRANTIES BY SELLER OR SELLER’S
INTENTIONAL MISREPRESENTATION, SELLER’S TOTAL LIABILITY UNDER THIS AGREEMENT
WILL NOT EXCEED THE PURCHASE PRICE SET FORTH IN PARAGRAPH 3.4 OF THIS AGREEMENT.
PURCHASER’S TOTAL LIABILITY UNDER THIS AGREEMENT WILL NOT EXCEED THE PURCHASE
PRICE SET FORTH IN PARAGRAPH 3.4 OF THIS AGREEMENT. THE PARTIES ACKNOWLEDGE
THAT
THE LIMITATIONS ON POTENTIAL LIABILITIES SET FORTH IN THIS PARAGRAPH 8.1 WERE
AN
ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER THIS AGREEMENT.
8.2
Limitation
on Consequential Damages.
EXCEPT
IN THE EVENT OF SELLER’S INTENTIONAL MISREPRESENTATION, NEITHER PARTY WILL HAVE
ANY OBLIGATION OR LIABILITY (WHETHER IN CONTRACT, WARRANTY, TORT (INCLUDING
NEGLIGENCE) OR OTHERWISE, AND NOTWITHSTANDING ANY FAULT, NEGLIGENCE (WHETHER
ACTIVE, PASSIVE OR IMPUTED), REPRESENTATION, STRICT LIABILITY OR PRODUCT
LIABILITY), FOR COVER OR FOR ANY INCIDENTAL, INDIRECT OR CONSEQUENTIAL,
MULTIPLIED, PUNITIVE, SPECIAL, OR EXEMPLARY DAMAGES OR LOSS OF REVENUE, PROFIT,
SAVINGS OR BUSINESS ARISING FROM OR OTHERWISE RELATED TO THIS AGREEMENT, EVEN
IF
A PARTY OR ITS REPRESENTATIVES HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. THE PARTIES ACKNOWLEDGE THAT THESE EXCLUSIONS OF POTENTIAL DAMAGES
WERE
AN ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER THIS
AGREEMENT.
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8.3
Compliance
With Laws.
Notwithstanding anything contained in this Agreement to the contrary, the
obligations of the parties with respect to the consummation of the transactions
contemplated by this Agreement shall be subject to all laws, present and future,
of any government having jurisdiction over the parties and this transaction,
and
to orders, regulations, directions or requests of any such
government.
8.4
Confidentiality
of Terms.
The
parties hereto will keep the terms and existence of this Agreement and the
identities of the parties hereto and their affiliates confidential and will
not
now or hereafter divulge any of this information to any third party except
(a)
with the prior written consent of the other party; (b) as otherwise may be
required by law or legal process; (c) during the course of litigation, so long
as the disclosure of such terms and conditions is restricted in the same manner
as is the confidential information of other litigating parties; (d) in
confidence to its legal counsel, accountants, banks, and financing sources
and
their advisors solely in connection with complying with or administering its
obligations with respect to this Agreement; (e) by Purchaser, to potential
purchasers or licensees of the Assigned Patent Rights or the Abandoned Assets;
(f) in order to perfect Purchaser’s interest in the Assigned Patent Rights or
the Abandoned Assets with any governmental patent office (including, without
limitation, recording the Executed Assignments in any governmental patent
office); or (f) to enforce Purchaser’s right, title, and interest in and to the
Assigned Patent Rights or the Abandoned Assets; provided that, in (b) and (c)
above, (i) to the extent permitted by law, the disclosing party will use all
legitimate and legal means available to minimize the disclosure to third
parties, including, without limitation, seeking a confidential treatment request
or protective order whenever appropriate or available; and (ii) the disclosing
party will provide the other party with at least ten (10) days’ prior written
notice of such disclosure. Without limiting the foregoing, Seller will cause
its
agents involved in this transaction to abide by the terms of this paragraph,
including, without limitation, ensuring that such agents do not disclose or
otherwise publicize the existence of this transaction with actual or potential
clients in marketing materials, or industry conferences.
8.5
Governing
Law; Venue/Jurisdiction.
This
Agreement will be interpreted, construed, and enforced in all respects in
accordance with the laws of the State of Delaware, without reference to its
choice of law principles to the contrary. Seller will not commence or prosecute
any action, suit, proceeding or claim arising under or by reason of this
Agreement other than in the state or federal courts located in Delaware. Seller
irrevocably consents to the jurisdiction and venue of the courts identified
in
the preceding sentence in connection with any action, suit, proceeding, or
claim
arising under or by reason of this Agreement.
8.6
Notices.
All
notices given hereunder will be given in writing (in English or with an English
translation), will refer to Purchaser and to this Agreement and will be
delivered to the address set forth below by (i) personal delivery, (ii) delivery
postage prepaid by an internationally-recognized express courier
service:
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If
to Purchaser
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If
to Seller
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EPAX
Consulting Limited Liability
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Wegener
Communications, Inc.
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Company
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00000
Xxxxxxxxxx Xxxxxx
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0000
Xxxxxxxxxxx Xxxx, Xxxxx 000
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Xxxxxx,
XX 00000
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Xxxxxxxxxx,
XX 00000
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Attn:
Managing Director
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Attn:
Xxxxxx X. Xxxxxx
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Notices
are deemed given on (a) the date of receipt if delivered personally or by
express courier or (b) if delivery is refused, the date of refusal. Notice
given
in any other manner will be deemed to have been given only if and when received
at the address of the person to be notified. Either party may from time to
time
change its address for notices under this Agreement by giving the other party
written notice of such change in accordance with this
paragraph.
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8.7
Relationship
of Parties.
The
parties hereto are independent contractors. Nothing in this Agreement will
be
construed to create a partnership, joint venture, franchise, fiduciary,
employment or agency relationship between the parties. Neither party has any
express or implied authority to assume or create any obligations on behalf
of
the other or to bind the other to any contract, agreement or undertaking with
any third party.
8.8.
Equitable
Relief.
Seller
acknowledges and agrees that damages alone would be insufficient to compensate
Purchaser for a breach by Seller of this Agreement and that irreparable harm
would result from a breach of this Agreement. Seller hereby consents to the
entering of an order for injunctive relief to prevent a breach or further
breach, and the entering of an order for specific performance to compel
performance of any obligations under this Agreement.
8.9
Severability.
If any
provision of this Agreement is found to be invalid or unenforceable, then the
remainder of this Agreement will have full force and effect, and the invalid
provision will be modified, or partially enforced, to the maximum extent
permitted to effectuate the original objective.
8.10
Waiver.
Failure
by either party to enforce any term of this Agreement will not be deemed a
waiver of future enforcement of that or any other term in this Agreement or
any
other agreement that may be in place between the parties.
8.11
Miscellaneous.
This
Agreement, including its exhibits and related letter agreements, constitutes
the
entire agreement between the parties with respect to the subject matter hereof
and merges and supersedes all prior and contemporaneous agreements,
understandings, negotiations, and discussions. Neither of the parties will
be
bound by any conditions, definitions, warranties, understandings, or
representations with respect to the subject matter hereof other than as
expressly provided herein. The section headings contained in this Agreement
are
for reference purposes only and will not affect in any way the meaning or
interpretation of this Agreement. This Agreement is not intended to confer
any
right or benefit on any third party (including, but not limited to, any employee
or beneficiary of any party), and no action may be commenced or prosecuted
against a party by any third party claiming as a third-party beneficiary of
this
Agreement or any of the transactions contemplated by this Agreement. No oral
explanation or oral information by either party hereto will alter the meaning
or
interpretation of this Agreement. No amendments or modifications will be
effective unless in a writing signed by authorized representatives of both
parties. The terms and conditions of this Agreement will prevail notwithstanding
any different, conflicting or additional terms and conditions that may appear
on
any letter, email or other communication or other writing not expressly
incorporated into this Agreement. The following exhibits are attached hereto
and
incorporated herein: Exhibit A
(entitled “Patents to be Assigned”); Exhibit
B
(entitled “Assignment of Patent Rights”); Exhibit C
(entitled “Assignment of Rights in Certain Assets”); Exhibit
D
(entitled “List of Initial Deliverables”); Exhibit
E
(entitled “Common Interest Agreement”); and Exhibit F
(entitled “Press Release”).
8.12
Counterparts;
Electronic Signature; Delivery Mechanics.
This
Agreement may be executed in counterparts, each of which will be deemed an
original, and all of which together constitute one and the same instrument.
Each
party will execute and promptly deliver to the other parties a copy of this
Agreement bearing the original signature. Prior to such delivery, in order
to
expedite the process of entering into this Agreement, the parties acknowledge
that a Transmitted Copy of this Agreement will be deemed an original document.
“Transmitted
Copy”
means
a
copy bearing a signature of a party that is reproduced or transmitted via email
of a pdf file, photocopy, facsimile, or other process of complete and accurate
reproduction and transmission.
Page
9
8.13
Publicity
and SEC Reporting.
Seller
may make one public announcement contemporaneously with the Closing, which
announcements will be substantially of the form set forth in Exhibit
F.
Seller
shall submit any such proposed announcement to Purchaser at least three (3)
business days prior to its making such an announcement for Purchaser’s review
and approval, which approval shall not be unreasonably withheld by Purchaser
so
long as such proposed announcement substantially conforms to Exhibit
F.
After
the Effective Date, Seller shall have the right to file the statement set forth
on Exhibit
F
with
Seller’s Form 8-K filing with the Securities Exchange Commission (“SEC”).
In
any required filing with the SEC, Seller will include only those portions of
this Agreement that are required to be filed with the SEC pursuant to applicable
laws and regulations. In witness whereof, intending to be legally bound, the
parties have executed this Patent Purchase Agreement as of the Effective
Date.
|
SELLER:
|
PURCHASER:
|
|||
|
XXXXXXX
CORPORATION
|
EPAX
Consulting Limited Liability
|
|||
|
Company
|
||||
|
By:
|
/s/
Xxxxxx X. Xxxxxx
|
By:
|
/s/
Xxxxxxx Xxxxxxx
|
|
|
Name:
|
Xxxxxx
X. Xxxxxx
|
Name:
|
Xxxxxxx
Xxxxxxx
|
|
|
Title:
|
Chief
Executive Officer
|
Title:
|
Authorized
Agent
|
|
Effective
Date: May 22, 2008
Page
10
Exhibit
A
PATENTS
TO BE ASSIGNED
|
Patent or Application
|
Title of Patent and First
|
|||||
|
No.
|
Country
|
Filing Date
|
Named Inventor
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
*Filed
under an application for confidential treatment.
Exhibit
B
ASSIGNMENT
OF PATENT RIGHTS
For
good
and valuable consideration, the receipt of which is hereby acknowledged, Xxxxxxx
Communications, Inc., a Delaware corporation, with an office at 00000 Xxxxxxxxxx
Xxxxxx, Xxxxxx, XX 00000 (“Assignor”),
does
hereby sell, assign, transfer, and convey unto EPAX Consulting Limited Liability
Company, a Delaware limited liability company, having an address at 0000
Xxxxxxxxxxx Xxxx, Xxxxx 000, Xxxxxxxxxx, XX 00000 (“Assignee”),
or
its designees, all right, title, and interest that exist today and may exist
in
the future in and to any and all of the following (collectively, the
“Patent
Rights”):
(a)
the
provisional patent applications, patent applications and patents listed in
the
table below (the “Patents”);
(b)
all
patents and patent applications (i) to which any of the Patents directly or
indirectly claims priority, and/or (ii) for which any of the Patents directly
or
indirectly forms a basis for priority, and/or (iii) that were co-owned
applications that incorporate by reference, or are incorporated by reference
into, the Patents (excluding patent [XXXX]*).
(c)
all
reissues, reexaminations, extensions, continuations, continuations in part,
continuing prosecution applications, requests for continuing examinations,
divisions, registrations of any item in any of the foregoing categories (a)
and
(b);
(d)
all
foreign patents, patent applications, and counterparts relating to any item
in
any of the foregoing categories (a) through (c), including, without limitation,
certificates of invention, utility models, industrial design protection, design
patent protection, and other governmental grants or issuances;
(e)
all
items
in any of the foregoing in categories (b) through (d), whether or not expressly
listed as Patents below and whether or not claims in any of the foregoing have
been rejected, withdrawn, cancelled, or the like;
(f)
inventions,
invention disclosures, and discoveries described in any of the Patents and/or
any item in the foregoing categories (b) through (e) that (i) are included
in
any claim in the Patents and/or any item in the foregoing categories (b) through
(e), (ii) are subject matter capable of being reduced to a patent claim in
a
reissue or reexamination proceedings brought on any of the Patents and/or any
item in the foregoing categories (b) through (e), and/or (iii) could have been
included as a claim in any of the Patents and/or any item in the foregoing
categories (b) through (e);
(g)
all
rights to apply in any or all countries of the world for patents, certificates
of invention, utility models, industrial design protections, design patent
protections, or other governmental grants or issuances of any type related
to
any item in any of the foregoing categories (a) through (f), including, without
limitation, under the Paris Convention for the Protection of Industrial
Property, the International Patent Cooperation Treaty, or any other convention,
treaty, agreement, or understanding;
(h)
all
causes of action (whether known or unknown or whether currently pending, filed,
or otherwise) and other enforcement rights under, or on account of, any of
the
Patents and/or any item in any of the foregoing categories (b) through (g),
including, without limitation, all causes of action and other enforcement rights
for
*Filed
under an application for confidential treatment.
(1)
damages,
(2)
injunctive relief, and
(3)
any
other remedies of any kind
for
past,
current, and future infringement; and
(i)
all
rights to collect royalties and other payments under or on account of any of
the
Patents and/or any item in any of the foregoing categories (b) through
(h).
|
Patent or Application
|
Title of Patent and First
|
|||||
|
No.
|
Country
|
Filing Date
|
Named Inventor
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
*Filed
under an application for confidential treatment.
Assignor
represents, warrants and covenants that:
(1)
Assignor
has the full power and authority, and has obtained all third party consents,
approvals and/or other authorizations required to enter into this Agreement
and
to carry out its obligations hereunder, including the assignment of the Patent
Rights to Assignee; and
(2)
Assignor
owns, and by this document assigns to Assignee, all right, title, and interest
to the Patent Rights, including, without limitation, all right, title, and
interest to xxx for infringement of the Patent Rights. Assignor has obtained
and
properly recorded previously executed assignments for the Patent Rights as
necessary to fully perfect its rights and title therein in accordance with
governing law and regulations in each respective jurisdiction. The Patent Rights
are free and clear of all liens, claims, mortgages, security interests or other
encumbrances, and restrictions. There are no actions, suits, investigations,
claims or proceedings threatened, pending or in progress relating in any way
to
the Patent Rights. There are no existing contracts, agreements, options,
commitments, proposals, bids, offers, or rights with, to, or in any person
to
acquire any of the Patent Rights.
Assignor
hereby authorizes the respective patent office or governmental agency in
each
jurisdiction to issue any and all patents, certificates of invention, utility
models or other governmental grants or issuances that may be granted upon
any of
the Patent Rights in the name of Assignee, as the assignee to the entire
interest therein.
Assignor
will, at the reasonable request of Assignee and without demanding any further
consideration therefore, do all things necessary, proper, or advisable,
including without limitation, the execution, acknowledgment, and recordation
of
specific assignments, oaths, declarations, and other documents on a
country-by-country basis, to assist Assignee in obtaining, perfecting,
sustaining, and/or enforcing the Patent Rights. The terms and conditions
of this
Assignment of Patent Rights will inure to the benefit of Assignee, its
successors, assigns, and other legal representatives and will be binding
upon
Assignor, its successors, assigns, and other legal
representatives.
IN
WITNESS WHEREOF this Assignment of Patent Rights is executed at Duluth, GA
on
May 27, 2008.
ASSIGNOR:
Xxxxxxx
Communications, Inc.
|
By:
|
/s/
Xxxxxx X. Xxxxxx
|
|
Name:
|
Xxxxxx
X. Xxxxxx
|
|
Title:
|
Chief
Executive Officer
|
(Signature
MUST be notarized)
STATE
OF
GEORGIA )
)
ss.
COUNTY
OF FORSYTH )
On
May
27, 2008,
before
me, Xxxxxxx
X. Sloth,
Notary
Public in and for said State, personally appeared Xxxxxx
X. Xxxxxx,
personally known to me (or proved to me on the basis of satisfactory evidence)
to be the person whose name is subscribed to the within instrument and
acknowledged to me that he/she executed the same in his/her authorized capacity,
and that by his/her signature on the instrument the person, or the entity upon
behalf of which the person acted, executed the instrument.
WITNESS
my hand and official seal.
|
Signature
|
/s/
Xxxxxxx X. Sloth (SEAL)
|
Exhibit
C
ASSIGNMENT
OF RIGHTS IN CERTAIN ASSETS
For
good
and valuable consideration, the receipt of which is hereby acknowledged, Xxxxxxx
Communications, Inc., a Delaware corporation, with an office at 00000 Xxxxxxxxxx
Xxxxxx, Xxxxxx, XX 00000 (“Assignor”),
does
hereby sell, assign, transfer, and convey unto EPAX Consulting Limited Liability
Company, a Delaware limited liability company, having an address at 0000
Xxxxxxxxxxx Xxxx, Xxxxx 000, Xxxxxxxxxx, XX 00000 (“Assignee”),
or
its designees, the right, title, and interest in and to any and all of the
following provisional patent applications, patent applications, patents, and
other governmental grants or issuances of any kind (the “Certain
Assets”):
|
Patent or Application
|
Title of Patent and First
|
|||||
|
No.
|
Country
|
Filing Date
|
Named Inventor
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
US
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
WO
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
WO
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
WO
|
[XXXX]*
|
[XXXX]*
|
|||
|
[XXXX]*
|
WO
|
[XXXX]*
|
[XXXX]*
|
Assignor
assigns to Assignee all rights to the inventions, invention disclosures, and
discoveries in the assets listed above, together, with the rights, if any,
to
revive prosecution of claims under such assets and to xxx or otherwise enforce
any claims under such assets for past, present or future
infringement.
*Filed
under an application for confidential treatment.
Assignor
hereby authorizes the respective patent office or governmental agency in each
jurisdiction to make available to Assignee all records regarding the Certain
Assets.
The
terms
and conditions of this Assignment of Rights in Certain Assets will inure to
the
benefit of Assignee, its successors, assigns, and other legal representatives
and will be binding upon Assignor, its successors, assigns, and other legal
representatives.
DATED
this
27
day
of
May
2008.
ASSIGNOR:
Xxxxxxx
Communications, Inc.
|
By:
|
/s/
Xxxxxx X. Xxxxxx
|
|
Name:
|
Xxxxxx
X. Xxxxxx
|
|
Title:
|
Chief
Executive Officer
|
Exhibit
D
LIST
OF
INITIAL DELIVERABLES
Seller
will cause the following to be delivered to Purchaser, or Purchaser’s
representative, within the time provided in paragraph 3.1 of the attached Patent
Purchase Agreement:
(a)
U.S.
Patents.
For
each item of the Patents that is an issued United States patent, and for each
Abandoned Asset that forms the basis for priority for such issued U.S. patent
(whether a patent or similar protection has been issued or
granted),
(i)
the
original
(A)
ribbon copy issued by the United States Patent and Trademark Office,
(B)
Assignment Agreement(s),
(C)
conception and reduction to practice materials, and
(ii)
a
copy of
(A)
the
Docket,
(B)
each
relevant license and security agreement;
(b)
Non-U.S.
for
each Live Asset for which a non-United States patent or similar protection
has
been issued or granted,
|
(i)
|
the
original ribbon copy or certificate issued by the applicable government,
if available
|
|
(ii)
|
copy
of each pending foreign application
|
|
(iii)
|
the
Docket,
|
|
(iv)
|
the
original Assignment Agreement(s),
|
|
(v)
|
a
copy of applicant name change, if necessary,
and
|
|
(vi)
|
a
copy of each relevant license and security
agreement
|
(c)
Patent
Applications.
For
each item of the Patents that is a patent application,
|
(i)
|
a
copy of the patent application, as
filed,
|
|
(ii)
|
if
unpublished, a copy of the filing receipt and the non-publication
request,
if available,
|
|
(iii)
|
the
original Assignment Agreement(s),
|
|
(iv)
|
the
Docket,
|
|
(v)
|
all
available conception and reduction to practice materials,
|
|
(vi)
|
evidence
of foreign filing license (or denial
thereof),
|
|
(vii)
|
a
copy of each relevant license and security agreement, and
|
|
(viii)
|
the
Prosecution History Files;
|
(d)
Common
Interest Agreement.
Seller
will deliver any Initial Deliverables to be delivered by Seller under paragraph
(c) above to Purchaser’s legal counsel, together with two (2) executed originals
of the Common Interest Agreement.
(e)
Thorough
Search/Declaration.
If
originals of the Initial Deliverables are not available and delivered to
Purchaser prior to Closing, Seller will cause (i) such originals of the Initial
Deliverables to be sent to Purchaser or Purchaser’s representative promptly if
and after such originals are located and (ii) an appropriate executive officer
of Seller to deliver to Purchaser an declaration, executed by such officer
under
penalty of perjury, detailing Seller’s efforts to locate such unavailable
original documents and details regarding how delivered copies were obtained;
and
Capitalized
terms used in this Exhibit D are defined in the Patent Purchase Agreement to
which this Exhibit D is attached.
Exhibit
E
COMMON
INTEREST AGREEMENT
THIS
COMMON INTEREST AGREEMENT (“Agreement”)
is
entered into between the undersigned legal counsel (“Counsel”),
for
themselves and on behalf of the parties they represent (as indicated
below).
1.
Background.
1.1
EPAX
Consulting Limited Liability Company, a Delaware limited liability company
(“Purchaser”)
and
Xxxxxxx Communications, Inc., a Delaware company (“Seller”)
(Purchaser and Seller are sometimes hereafter referred to herein as a
“party”
or
the
“parties”),
have
entered into an agreement under which Purchaser will acquire all substantial
rights of Seller in certain patent applications filed or to be filed throughout
the world (the “Patent
Matters”).
1.2
The
parties have a common interest in the Patent Matters and have agreed to treat
their communications and those of their Counsel relating to the Patent Matters
as protected by the common interest privilege. Furtherance of the Patent Matters
requires the exchange of proprietary documents and information, the joint
development of legal strategies and the exchange of attorney work product
developed by the parties and their respective Counsel.
2.
Common Interest.
2.1
The
parties have a common, joint and mutual legal interest in cooperating with
each
other, to the extent permitted by law, to share information protected by the
attorney-client privilege and by the work product doctrine with respect to
the
Patent Matters. Any counsel or consultant retained by a party or their Counsel
to assist in the Patent Matters shall be bound by, and entitled to the benefits
of, this Agreement.
2.2
In
order to further their common interest, the parties and their Counsel shall
exchange privileged and work product information, orally and in writing,
including, without limitation, factual analyses, mental impressions, legal
memoranda, source materials, draft legal documents, prosecution history files
and other information (hereinafter “Common
Interest Materials”).
The
sole purpose for the exchange of the Common Interest Materials is to support
the
parties’ common interest with respect to the prosecution and enforcement of the
Patent Matters. Any Common Interest Materials exchanged shall continue to be
protected under all applicable privileges and no such exchange shall constitute
a waiver of any applicable privilege or protection.
3.
Nondisclosure.
3.1
The
parties and their Counsel shall use the Common Interest Materials solely in
connection with the Patent Matters and shall take appropriate steps to protect
the privileged and confidential nature of the Common Interest Materials. Neither
client nor their respective Counsel shall produce privileged documents or
information unless or until directed to do so by a final order of a court of
competent jurisdiction, or upon the prior written consent of the other party.
No
privilege or objection shall be waived by a party hereunder without the prior
written consent of the other party. The obligations under this paragraph will
not apply either to Purchaser after closing of the acquisition of the Patent
Matters or to Seller with respect to any dispute with Purchaser related to
such
potential acquisition.
3.2
Except as herein provided, in the event that either party or their Counsel
is
requested or required in the context of a, litigation, governmental, judicial
or
regulatory investigation or other similar proceedings (by oral questions,
interrogatories, requests for information or documents, subpoenas, civil
investigative demands or similar process) to disclose any Common Interest
Materials, the party or their Counsel shall immediately inform the other party
and their Counsel and shall assert all applicable privileges, including, without
limitation, the common interest doctrine, the joint prosecution
privilege.
4.
Relationship; Additions; Termination.
4.1
This
Agreement does not create any agency or similar relationship among the parties.
Through the Closing (as defined in the Patent Purchase Agreement executed by
Purchaser and Seller), neither party nor their respective Counsel has the
authority to waive any applicable privilege or doctrine on behalf of any other
party.
4.2
Nothing in this Agreement affects the separate and independent representation
of
each party by its respective Counsel or creates an attorney client relationship
between the Counsel for a party and the other party to this
Agreement.
4.3
This
Agreement shall continue until terminated upon the written request of either
party. Upon termination, each party and their respective Counsel shall return
any Common Interest Materials furnished by the other party. Notwithstanding
termination, this Agreement shall continue to protect all Common Interest
Materials disclosed prior to termination. Sections 3 and 5 shall survive
termination of this Agreement.
5.
General Terms.
5.1
This
Agreement is governed by the laws of the State of Delaware, without regard
to
its choice of law principles to the contrary. In the event any provision of
this
Agreement is held by any court of competent jurisdiction to be illegal, void
or
unenforceable, the remaining terms shall remain in effect. Failure of either
party to enforce any provision of this Agreement shall not be deemed a waiver
of
future
enforcement of that or any other provision.
5.2
The
parties agree that a breach of this Agreement would result in irreparable
injury, that money damages would not be a sufficient remedy and that the
disclosing party shall be entitled to equitable relief, including injunctive
relief, as a non-exclusive remedy for any such breach.
5.3
Notices given under this Agreement shall be given in writing and delivered
by
messenger or overnight delivery service to a party and their respective Counsel
at their last known address, and shall be deemed to have been given on the
day
received.
5.4
This
Agreement is effective and binding upon each party as of the date it is signed
by or on behalf of a party and may be amended only by a writing signed by or
on
behalf of each party. This Agreement may be executed in counterparts. Any
signature reproduced or transmitted via email of a pdf file, photocopy,
facsimile or other process of complete and accurate reproduction and
transmission shall be considered an original for purposes of this
Agreement.
This
Agreement is being executed by each of the undersigned Counsel with the fully
informed authority and consent of the respective party it
represents.
|
Counsel
for EPAX Consulting Limited Liability
|
Counsel
for Xxxxxxx Communications, Inc.
|
|
|
Company
|
|
By:
|
||||
|
Date:
|
Date:
|
Exhibit
F
PRESS
RELEASE
After
execution by both parties:
[City,
State], [Date]/PRNewswire-FirstCall/ — Xxxxxxx Communications, Inc.
announced today that it has signed an agreement to sell selected patents and
patent applications to EPAX Consulting Limited Liability Company for net
proceeds of approximately $1,075,000, subject to customary closing conditions.
The patents and patent applications sold relate to Xxxxxxx Communications,
Inc.’s Xxxxxxx
Communications, Inc. retains a non-exclusive license under the patents for
the
At
Closing:
[City,
State], [Date]/PRNewswire-FirstCall/ — Xxxxxxx Communications, Inc.
announced today that it has completed the sale of selected patents and patent
applications to EPAX Consulting Limited Liability Company for net proceeds
of
approximately $1,075,000. The patents and patent applications sold relate to
Xxxxxxx Communications, Inc.’s
Xxxxxxx
Communications, Inc. retains a non-exclusive license under the patents for
the
.
