EXHIBIT 10.1
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PATENT PURCHASE AGREEMENT
This PATENT PURCHASE AGREEMENT (this "AGREEMENT") is entered into on April
20, 2006 (the "EFFECTIVE DATE") by and between Xxxxxx Holdings LLC, a Nevada
limited liability company ("PURCHASER"), and SpeechSwitch, Inc, a New Jersey
corporation, with an office at 000 Xxxxxxx 00, Xxxxxxx, Xxx Xxxxxx ("SELLER").
The parties hereby agree as follows:
1. BACKGROUND
1.1 Seller owns certain United States Letters Patents and/or applications
for United States Letters 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
"ASSIGNED PATENT RIGHTS" means Patents and the additional rights set forth in
paragraph 4.2.
"ASSIGNMENT AGREEMENTS" means the agreements assigning ownership of the Patents
from the inventors and/or prior owners to Seller.
"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 information relating to deadlines, payments, and flings,
which is current as of the Effective Date.
"EXECUTED ASSIGNMENT," means an executed original of the Assignment of Patent
Rights in EXHIBIT B.
"LIST OF PROSECUTION COUNSEL" means the names and addresses of prosecution
counsel who prosecuted the Patents and who are currently handling the Patents.
"Patents" means (i) each of the provisional patent applications, patent
applications and patents listed on Exhibits A and B (as such lists may be
updated based on Purchaser's review of the Deliverables) hereto, (ii) all
patents or patent applications to which any of the foregoing claim priority, and
(iii) all reissues, reexaminations, extensions, continuations, continuations in
part, continuing prosecution applications, and divisions of such patents and
applications; and (iv) foreign counterparts to any of the foregoing, including
certificates of invention, utility models, industrial design protection, design
patent protection, and other governmental grants, and (v) any of the foregoing
in (ii)-(iv) whether or not expressly listed in EXHIBIT A and whether or not
abandoned, rejected, or the like.
"SELLER LICENSE" means the license granted in paragraph 4.3 upon Closing.
"UNLIMITED WARRANTIES" means, collectively, the representations and warranties
of Seller set forth in paragraphs 6.1, 6.2, 6.3, and 6.4 hereof
3. TRANSMITTAL, REVIEW, CLOSING CONDITIONS AND PAYMENT
3.1 Transmittal. Within twenty (20) calendar days following the Effective
Date, Seller shall send to Purchaser the Assignment Agreements, the List
of Prosecution Counsel, the Docket, and all files and original documents
(including, Letters Patents, assignments, and other documents necessary
to establish that the Seller's representations and warranties of Section
6 are true and correct) relating to the Patents, including all
prosecution files for pending patent applications included in the
Patents, and all files relating to the issued Patents ("INITIAL
DELIVERABLES"), Seller acknowledges that Purchaser may request
additional documents based on Purchaser's review of the Initial
Deliverables (such additional documents and the Initial Deliverables,
collectively, the ("DELIVERABLES"), and that as a result of Purchaser's
review, the amount of payment and the assets listed in EXHIBITS A and B
may be revised.
3.2 Closing. The closing of the sale of the Assigned Patent Rights hereunder
will occur when all conditions set forth in paragraph 3.3 have been
satisfied or waived (the "CLOSING"). Purchaser and Seller shall use
reasonable efforts to carry out the Closing within thirty (30) calendar
days following receipt of the last received Deliverables.
3.3 Closing Conditions. The following are conditions precedent to
Purchaser's obligation to make the payment in paragraph 3.4.
(a) Transmittal of Documents. Seller shall have delivered to
Purchaser all the Deliverables and the Executed Assignment.
(b) Compliance With Agreement. Seller shall have 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.
(c) Representations and Warranties True. Purchaser shall be
reasonably satisfied that, as of the Closing, the
representations and warranties of Seller contained in Section 6
hereof are true and correct.
3.4 Payment. At Closing, Purchaser shall pay the amount of One Hundred
Eighty Thousand dollars ($180,000.00) as follows: (a) One Hundred
Forty-Four Thousand dollars ($144,000.00) to Seller; and (b) Thirty-Six
Thousand dollars ($36,000.00) to GlynnTech, Inc, 00 Xxxx Xxxxxx,
Xxxxxxxxxx, Xxx Xxxxxx 00000 to the attention of Xxxxxxx X. Xxxxx,
President. Purchaser may record the Executed Assignment with the United
States Patent and Trademark Office only upon Closing,
3.5 Termination and Survival. In the event all conditions to Closing set
forth in Section 3.3 are not met within ninety (90) days following the
Effective Date, Purchaser shall 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 paragraphs 8.4, 8.5, and 8.7 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 Patents and the Patent Rights (as defined in EXHIBIT B). Seller
understands and acknowledges that if any of the Patents are assigned to
Seller's affiliates or subsidiaries, prior to Closing, Seller may be
required
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to perform certain actions to establish that Seller is the assignee and
to record such assignments.
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
(a) inventions and discoveries described in any of the Patents;
(b) 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 of any type related to any of the Patents
and the inventions and discoveries therein;
(c) causes of action (whether currently pending, fled, or otherwise)
and other enforcement rights, including, without limitation, all
rights under the Patents and/or under or on account of any of
the Patents and the foregoing category (b) to (i) damages, (ii)
injunctive relief, and (iii) any other remedies of any kind for
past, current and future infringement; and
(d) rights to collect royalties or other payments under or on
account of any of the Patents or any of the foregoing.
4.3 License Back Under Patents. Upon the Closing, Purchaser hereby grants to
Seller, under the Patents, and for the lives thereof a royalty-free,
non-exclusive, non transferable (except to the limited extent set forth
in this paragraph), non sublicensable, worldwide right and 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"). This license shall apply to the reproduction and subsequent
distribution of Covered Products, 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 License is not
transferable by operation of law or otherwise, except that Seller may
make a one time transfer of this Seller License solely to the Entity
that acquirers substantially all assets of Seller's business that
include the entire NameDialer product line, such product line is
designed to work with speech recognition front ends which connects to a
separate data base, e.g., act goldmine outlook operational through
speech recognition that locates a name in a data base and then dials out
to the intended recipient, as more fully described in EXHIBIT D product
line ("NAMEDIALER"). In the event of such transaction, the Covered
Products shall automatically become limited to the SpeechSwitch, Inc,
NameDialer that had been commercially released by SpeechSwitch, Inc,
prior to the effective date of such transaction; provided, however,
Covered Products shall not include, and in no event shall the Seller
License apply to, any other products, processes or services either of
Seller's Successor or of any other party to a transaction in which the
Seller License may be transferred under this paragraph. The Seller
License is automatically revoked for any transfer other than the
one-time transfer permitted under this paragraph and any purported
transfer to a subsequent purchaser or party different from the entity
that may acquire the Seller License under this paragraph. Seller shall
within thirty (30) days of the Seller License being transferred to a
Seller
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Successor pursuant to this paragraph provide Purchaser notice of (x)
such transfer of the Seller License, (y) the transaction in which the
Seller License was transferred, and (z) specific detail regarding the
NameDialer of the Seller and of the authorized initial purchaser/party
that had been commercially released as of the effective date of such
transaction, If Seller fails to so notify Purchaser of the transfer of
the Seller License pursuant to the terms of this paragraph, the Seller
License is automatically revoked, and any purported transfer of the
Seller License under this paragraph will be void. If Seller or Seller's
Successor assigns, transfers or delegates its rights and obligations
under this license without Purchaser's prior written consent, including
without limitation, any transfer by sale, merger or other working
combination of ownership of, or control of the voting securities or
control of Seller, this license will terminate effective immediately.
5. ADDITIONAL OBLIGATIONS
5.1. Further Cooperation, At the reasonable request of Purchaser, Seller
shall 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 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. In addition, Seller will continue to prosecute the
Patents at its expense until the Closing.
5.2. Payment of Fees. Seller shall 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 payment window opens on or prior to the Closing even if the
surcharge date would be after the Closing.
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 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 all right, title, and interest to xxx
for infringement of the Patents. Seller has obtained and properly
recorded previously executed assignments for the Assigned Patent Rights
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
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Rights, except for the licenses listed in EXHIBIT C, each of which is
nontransferable and nonsublicensable, except as noted on such Exhibit,
and nonexclusive.
6.3 Existing Licenses. No licenses under the Patents, or interest or rights
in any of the Assigned Patent Rights, have been granted or retained,
except for the licenses listed in EXHIBIT C, each of which is
nontransferable and nonsublicensable, except as noted on such Exhibit,
and nonexclusive.
6.4 Restrictions on Rights. Purchaser shall not be subject to any covenant
not to xxx or similar restrictions on its enforcement or enjoyment of
the Assigned Patent Rights as a result of any prior transaction related
to the Assigned Patent Rights.
6.5 Conduct. Seller or its agents or representatives have not 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 Seller's patent rights to
a standard-setting organization.
6.6 Enforcement. Seller has not put a third party on notice of actual or
potential infringement of any of the Patents. Seller has not invited any
third party to enter into a license under any of the Patents. Seller has
not initiated any enforcement action with respect to any of the Patents.
6.7 Patent Office Proceedings. None of the Patents has been or is currently
involved in any reexamination, reissue, interference proceeding, or any
similar proceeding, and no such proceedings are pending or threatened.
6.8 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 maintenance fees for which the fee
payment window has opened even if the surcharge date is in the future.
6.9 Validity and Enforceability. The Patents have never been found invalid
or unenforceable for any reason in any administrative, arbitration,
judicial or other proceeding, and 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 or unenforceable.
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.l Purchaser is a limited liability company duly formed, validly existing
and in good standing under the laws 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 FRAUD OR BREACH OF ANY
UNLIMITED WARRANTY BY SELLER, SELLER'S TOTAL LIABILITY UNDER THIS
AGREEMENT SHALL NOT EXCEED THE PURCHASE PRICE SET FORTH IN PARAGRAPH 3.4
OF THIS AGREEMENT. PURCHASER'S TOTAL LIABILITY
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UNDER THIS AGREEMENT SHALL NOT EXCEED THE PURCHASE PRICE SET FORTH IN
PARAGRAPH 3.4 OF THIS AGREEMENT, THE PARTIES ACKNOWLEDGE THAT THESE
LIMITATIONS ON POTENTIAL LIABILITIES WERE AN ESSENTIAL ELEMENT IN
SETTING CONSIDERATION UNDER THIS AGREEMENT,
8.2 Limitation on Consequential Damages, NEITHER PARTY SHALL 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 DAMAGES OR LOSS OF REVENUE, PROFIT, SAVINGS OR BUSINESS
ARISING FROM OR OTHERWISE RELATED TO THIS AGREEMENT, EVEN IF A PARTY OR
ITS EMPLOYEES HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
8.3 Compliance With Laws. Notwithstanding anything contained in this
Agreement to the contrary, the obligations of the parties 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 shall keep the terms and
existence of this Agreement and the identities of the parties hereto and
there affiliates confidential and shall 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, including in confidence to legal and financial advisors
in their capacity of advising a party in such matters; (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 financial transactions; (e) by
Purchaser, in order to perfect Purchaser's interest in the Assigned
Patent Rights with any governmental patent office (including, without
limitation, recording the Executed Assignment in any governmental patent
office); or (f) to enforce Purchaser's right, title and interest in and
to the Assigned Patent Rights; provided that, in (b) through (f) above,
(i) the disclosing party shall 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 shall provide the other party with at least ten (10)
days' prior written notice of such disclosure. Without limiting the
foregoing, Seller agrees that it will cause its agents involved in this
transaction to abide by the terms of this paragraph 8.4, including
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 Publicity and SEC Reporting. Seller and/or iVoice, Inc. ("IVOICE") may
make one public announcement contemporaneously with the signing of this
Agreement and one public announcement contemporaneously with Closing,
each of which announcements will be substantially of the form set forth
in EXHIBIT E. Seller shall submit any such proposed
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announcement to Purchaser at least five business days prior to its or
iVoice's malting 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
E. Seller and/or iVoice is also authorized to file this Agreement
including its appendices with the Securities Exchange Commission
8.6 Governing Law-, Venue/Jurisdiction. This Agreement shall be interpreted,
construed and enforced in all respects in accordance with the laws of
the State of New York, without reference to its choice of law principles
to the contrary. Neither party shall 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 New York. Each
party hereby 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.
8.7 Notices. All notices given hereunder shall be given in writing (in
English or with an English translation), shall refer to Purchaser and to
this Agreement and shall be: (i) personally delivered, (ii) delivered
prepaid by an internationally recognized express courier service, or
(iii) sent postage prepaid registered or certified U.S. mail (return
receipt requested) to the address provided by the other party. Notices
are deemed given on (a) the date of receipt if delivered personally or
by express courier (or if delivery refused, the date of refusal), or (b)
the fifth (5th) calendar day after the date of posting if sent by US
mail. Notice given in any other manner shall 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 provide or change its
address for notices under this Agreement by giving the other party
written notice of such accordance with this paragraph.
8.8 Relationship of Parties. The parties are independent contractors and not
partners, joint ventures, or agents of the other, Neither party assumes
any liability of or has any authority to bind, or control the activities
of the other.
8.9 Equitable Relief. Seller agrees that damages alone would be insufficient
to compensate Purchaser for a breach of this Agreement, acknowledges
that irreparable harm would result from a breach of this Agreement, and
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.
8.10 Severability. If any provision of this Agreement is found to be invalid
or unenforceable, then the remainder of this Agreement shall have full
force and effect, and the invalid provision shall be modified, or
partially enforced, to the maximum extent permitted to effectuate its
original objective.
8.11 Waiver. Failure by either party to enforce any term of this Agreement
shall 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.
8.12 Miscellaneous. This Agreement, including its exhibits, 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.
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Neither of the parties shall 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 shall not affect in any way the meaning or interpretation of
this Agreement. No oral explanation or oral information by either party
hereto shall alter the meaning or interpretation of this Agreement. No
amendments or modifications shall be effective unless in a writing
signed by authorized representatives of both parties. These terms and
conditions shall prevail notwithstanding any different, conflicting or
additional terms and conditions that may appear on any purchase order,
acknowledgment or other writing not expressly incorporated into this
Agreement. The following exhibits are attached hereto and incorporated
herein: EXHIBIT, (entitled "Patents to be Assigned"); EXHIBIT B
(entitled "Assignment of Patent Rights"); EXHIBIT C (entitled "Existing
Licenses") EXHIBIT D (entitled"NameDialer Product Brochure") and EXHIBIT
E (entitled "Press Release").
8.13 Counterparts; Electronic Signature. This Agreement may be executed in
counterparts, each of which shall be deemed an original, and all of
which together constitute one and the same instrument. Each party shall
execute and deliver to the other parties a copy of this Agreement
bearing its original signature. Prior to such execution and delivery, in
order to expedite the process of entering into this Agreement, the
parties acknowledge that Transmitted Copies of this Agreement shall be
deemed original documents. "Transmitted Copies" means copies that are
reproduced or transmitted via email of a pdf file, photocopy, facsimile
or other process of complete and accurate reproduction and transmission.
THE REMAINDER OF THIS PAGE INTENTIONALLY LEFT BLANK
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In witness whereof, the parties have executed this Patent Purchase
Agreement as of the Effective Date,
SELLER: PURCHASER:
SPEECHSWITCH, INC. LAMSOM HOLDINGS LLC
By: Jankinda Management LLC
By:_______________________________ By:___________________________
Name: ____________________________ Name: _______________________
Title: ___________________________ Title: _______________________
Date: ____________________________ Date:_________________________
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EXHIBIT A
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Patents To Be Assigned
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE AND INVENTORS
6,563,911 United 01/23/2001 SPEECH ENABLED,
States AUTOMATIC TELEPHONE
DIALER USING NAMES,
INCLUDING SEAMLESS
INTERFACE WITH
COMPUTER.
BASED ADDRESS BOOK
PROGRAMS
6,671,354 United 02/28/2003 SPEECH ENABLED,
States AUTOMATIC TELEPHONE
DIALER USING NAMES,
INCLUDING SEAMLESS
INTERFACE WITH
COMPUTER
BASED ADDRESS BOOK
PROGRAMS, FOR
TELEPHONES
WITHOUT PRIVATE BRANCH
EXCHANGES
Xxxxxx Xxxxxxx
-------
6,940,951 United 01/23/2002 TELEPHONE APPLICATION
States PROGRAMMING INTERFACE
BASED, SPEECH ENABLED
AUTOMATIC TELEPHONE
DIALER USING
NAMES Xxxxxx
Xxxxxxx
-------
10/696,531 United 10/28/2003 Product location
States method utilizing
product bar code and
aisle-situated,
aisle-identifying bar
code Xxxxxxx Xxxxx
-----
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EXHIBIT B
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ASSIGNMENT OF PATENT RIGHTS
For good and valuable consideration, the receipt of which is hereby
acknowledged, SpeechSwitch, Inc. a New Jersey corporation having offices at 000
Xxxxxxx 00, Xxxxxxx, Xxx Xxxxxx 00000 ("ASSIGNOR"), does hereby sell, assign,
transfer and convey unto Xxxxxx Holdings LLC a Nevada limited liability company
("ASSIGNEE"), or its designees, all right, title and interest that exist today
and may exist in the future in and to all of the following (the "PATENT
RIG/ITS"): (a) the provisional patent applications, patent applications and
patents listed below, (b) all patents or patent applications to which any of the
foregoing claim priority, and (c) current or future rights to (i) provisional
patent applications, patent applications, and patents of any kind relating to
any inventions and discoveries described in any provisional patent applications,
patent applications and patents listed below; (ii) reissues, reexaminations,
extensions, continuations, continuations in part, continuing prosecution
applications, and divisions of such patents and applications; and (iii) foreign
counterparts to any of the foregoing, including, without limitation,
certificates of invention, utility models, industrial design protection, design
patent protection, and other governmental grants; (d) the rights to all
inventions and discoveries described in any provisional patent application,
patent application or patent listed below and all other rights arising out of
such inventions and discoveries; (e) 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 of
any type related to the any of the foregoing categories (a), (b), (c) and (d),
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; (f) causes of action (whether
currently pending, fled, or otherwise) and other enforcement rights, including,
without limitation, all rights under the provisional patent applications, patent
applications and patents listed below and/or under or on account of any of the
foregoing categories (b), (c) and/or (d) to
(i) damages,
(ii) injunctive relief and
(iii) other remedies of any kind
for past, current and future infringement; and
(g) all rights to collect royalties and other payments under or on account of
any of the foregoing.
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE AND INVENTOR(S)
6,563,911 United 01/23/2001 SPEECH ENABLED,
States AUTOMATIC TELEPHONE
DIALER USING
NAMES, INCLUDING
SEAMLESS
Page 1
EXHIBIT B
---------
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE AND INVENTOR (S)
INTERFACE WITH
COMPUTER BASED ADDRESS
BOOK PROGRAMS
6,671,354 United 02/28/2003 SPEECH ENABLED,
States AUTOMATIC TELEPHONE
DIALER USING NAMES,
INCLUDING SEAMLESS
INTERFACE WITH
COMPUTER
BASED ADDRESS BOOK
PROGRAMS, FOR
TELEPHONES WITHOUT
PRIVATE BRANCH
EXCHANGES
Xxxxxx Xxxxxxx
6,940,951 United 01/23/2002 TELEPHONE APPLICATION
States PROGRAMMING INTERFACE
BASED, SPEECH ENABLED
AUTOMATIC TELEPHONE
DIALER USING NAMES
Xxxxxx Xxxxxxx
10/696,531 United 10/28/2003 Product location
States method utilizing
product bar code and
aisle-situated,
aisle-identifying bar
code Xxxxxxx Xxxxx
-----
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, make the assignments, and to carry out its obligations under
this Assignment of Patent Rights;
(2) Assignor owns 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.
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EXHIBIT B
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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 that may be granted upon
any of the Patents Rights in the name of Assignee, as the assignee to the entire
interest therein.
Assignor shall, 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. Such assistance shall include
providing, and obtaining from the respective inventors, prompt production of
pertinent facts and documents, giving of testimony, execution of petitions,
oaths, powers of attorney, specifcations, declarations or other papers and other
assistance reasonably necessary for filing patent applications, complying with
any duty of disclosure, and conducting prosecution, reexamination, reissue,
interference or other priority proceedings, opposition proceedings, cancellation
proceedings, public use proceedings, infringement or other court actions and the
like with respect to the Patent Rights.
The terms and conditions of this Assignment of Patent Rights shall inure to
the benefit of Assignee, its successors, assigns and other legal
representatives, and shall be binding upon Assignor, its successor, assigns and
other legal representatives.
IN WITNESS WHEREOF this Assignment of Patent Rights is executed at
______________ _______________on ______________________
ASSIGNOR
By: _____________________________
Name: __________________________
Title: ________________________
(Signature MUST be notarized)
STATE OF ______________________
COUNTY OF _______________________
On__________________ , before me, ______________________ Notary Public in
and for said State, personally appeared ____________________ personally known to
me (or proved to me on the basis of satisfactory evidence) to be the
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EXHIBIT B
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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__________________________ (Seal)
Page 4
EXHIBIT C
---------
EXISTING LICENSES
None.
Page 1
EXHIBIT D
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NAMEDIALER PRODUCT BROCHURE
Page 1
EXHIBIT E
---------
PRESS RELEASE
________________, NJ, Feb xx /PRNewswire-FirstCall/ -- SpeechSwitch Corporation
(Nasdaq:) announced today that it has completed the sale of selected patents to
Lamsom Holdings LLC, for net proceeds of approximately $180,000, The patents and
patent applications sold relate to SpeechSwitch's NameDialer product line,
SpeechSwitch retains a worldwide, nonexclusive license under the patents for the
NameDialer product line.
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