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ASSIGNMENT OF INTELLECTUAL PROPERTY
THIS ASSIGNMENT OF INTELLECTUAL PROPERTY ("Assignment") is entered into
effective as of January 1, 2000 (the "Effective Date"), by and between ESS
Technology, Inc., a California corporation, with an office at 00000 Xxxxxxx
Xxxx., Xxxxxxx, Xxxxxxxxxx 00000 ("Assignor"), and XXXXXX.xxx, a California
corporation, with an office at 00000 Xxxxxxx Xxxx., Xxxxxxx, Xxxxxxxxxx 00000
("Assignee").
WHEREAS, VIALTA is in the business of designing, developing,
manufacturing and marketing a line of Internet appliances such as browsers, set
top boxes and combination products utilizing the integrated technologies in
digital audio, digital video, communication Internet phones and video phones for
sale to the consumer market (the "VIALTA Products");
WHEREAS, ESS is in the business of designing, developing, manufacturing
and marketing highly integrated mixed signal semiconductor multimedia solutions
for sale to desktop and notebook personal computer markets and consumer product
markets (the "ESS Products"); and
WHEREAS, ESS has developed specialized technology regarding (i)
videophone and internet phone applications (the "Videophone Business") and (ii)
web browser technology (the "Web Browser Business");
WHEREAS, Assignor wishes to sell, transfer, assign and convey and
Assignee wishes to purchase, receive and accept all United States rights to
Intellectual Property (as defined below) relating to the Videophone Business and
the Web Browser Business, owned or developed by or for Assignor on the terms and
conditions contained herein.
NOW, THEREFORE, in consideration of the premises and for other good and
valuable consideration, the receipt and sufficiency which is hereby
acknowledged, the parties hereto have entered into this Assignment:
1. DEFINITIONS.
"Intellectual Property" means any and all proprietary rights and
benefits conferred under the laws of the United States and any of its
constituent states or jurisdictions in and to any of the following held by
Assignor relating to the Videophone Business or the Web Browser Business (a)
patents, patent applications, inventions; (b) copyrights, copyright
registrations, moral rights, maskworks and other works of authorship, (c)
trademarks, trade names, service marks, domain names and similar rights, (d)
trade secrets, (e) all other intellectual and industrial property rights of
every kind and nature, and however designated, including processes, formulae,
industrial models, designs and design information, product information,
specifications, data, technology, methodologies, routines, techniques,
engineering information, engineering work papers and notes, computer programs
(including all source codes and documentation), object codes, designs,
algorithms, libraries of software, logos, "rental" rights and any other
confidential and proprietary right or information, whether arising by operation
of law, contract, license or otherwise, and whether or not subject to statutory
registration, (f) all related technical information and technical
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drawings, know-how, and the right to xxx for past infringement, if any, in
connection with any of the foregoing, (g) all rights under the International
Convention for the Protection of Industrial Property, (h) all registrations,
initial applications, renewals, extensions, continuations,
continuations-in-part, divisions or reissues hereof now or hereafter in force
(including any rights in any of the foregoing), and (i) all associated goodwill.
"Intellectual Property" includes without limitation proprietary rights and
benefits conferred under the laws of the United States and any of its
constituent states or jurisdictions in and to the items described in Schedule A
attached hereto.
"LOSSES" means any claim, loss, liability, damage, fine, penalty, cost,
expense, (including, without limitation, interest which may be imposed in
connection therewith, expenses of investigation, and fees and disbursements of
legal counsel and other experts), diminution of value, or the like, whether or
not involving a third-party claim.
2. ASSIGNMENT. Subject to the terms of the Research & Development Service
Agreement dated as of the date hereof, pursuant to which Assignee grants certain
rights relating to the Web Browser Business Intellectual Property back to
Assignor, Assignor hereby grants, sells, assigns, transfers, sets over and
conveys unto Assignee, its successors, legal representatives and assigns forever
all of Assignor's right, title and interest, now and in the future, in its
Intellectual Property, including:
(i) the right to use, reproduce, perform, display, develop, create
derivative works and inventions, exploit, assign, license or sub-license,
transfer, sell and market the Intellectual Property, with no duty to account to
Assignor for royalties or other consideration;
(ii) the right to own, apply for, prosecute, obtain and maintain all
patent, copyright, trademark, and other applications with respect to the
Intellectual Property; and
(iii) the right to independently enforce, without consent from or notice
to Assignor, all rights arising with respect to the Intellectual Property
against any party infringing or misappropriating the same, and to own all
monetary damages generated by such enforcement.
Assignor shall also provide to Assignee a copy of any U.S. Patent
Application Assignment from the inventors of any pending U.S. Patent
Applications listed in Schedule A to Assignor.
3. COMPENSATION. As full and final compensation for assignment under this
Assignment, Assignee shall pay to Assignor One Million Two Hundred Thirty-five
Thousand Dollars ($1,235,000) attributable to the Videophone Business and Eight
Hundred Twelve Thousand Dollars ($812,000) attributable to the Web Browser
Business (collectively, the "Purchase Price"). Assignee shall make such payment
by wire transfer of immediately available funds to the bank account designated
by Assignor 45 days after the invoice date.
4. REPRESENTATIONS AND WARRANTIES. Assignor hereby represents and warrants to
Assignee that the Intellectual Property transferred herein is owned solely and
lawfully by Assignor free and clear of all liens, licenses, third party rights,
claims of infringement, claims for payment, or any other encumbrance whatsoever,
that Assignor has good and full right and lawful authority to
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convey the same in the manner herein set forth and that upon execution and
delivery of this Assignment, Assignee shall have good and marketable title
thereto. Assignor has no knowledge that the Intellectual Property is being
infringed by any third party. Assignor has not granted to any third party any
license, agreement or other permission to use the Intellectual Property. No
claim that any third party has any interest in the Intellectual Property, or
that the Intellectual Property infringes the rights of any third party, is
pending or has been threatened. The Intellectual Property represents all
technology owned by Assignor in the United States.
5. INDEMNIFICATION. Assignor shall indemnify and hold harmless Assignee, its
officers, directors, employees, agents and representatives from and against any
and all Losses arising out of or resulting from (a) any breach of any of the
representations or warranties made by Assignor in this Assignment; or (b) any
failure by Assignor to perform any of its covenants or agreements contained in
this Assignment; provided, however, that notwithstanding the foregoing, the
liability of Assignor hereunder shall not, except in the event of intentional
misconduct or gross negligence, exceed the Purchase Price.
6. ASSISTANCE BY ASSIGNOR. Assignor shall, whenever counsel of the said
Assignee, or the counsel of its successors, legal representatives and assigns,
shall advise that any proceeding in connection with the Intellectual Property in
any country, including interference proceedings, is lawful and desirable, or
that any division, continuation or continuation-in-part of any application for
the Intellectual Property or any reissue or extension of the Intellectual
Property, to be obtained thereon, is lawful and desirable: sign all papers and
documents, take all lawful oaths and do all acts necessary or required to be
done for the procurement, maintenance, enforcement and defense of the
Intellectual Property, without charge to said Assignee, its successors, legal
representatives and assigns, but at the cost and expense of Assignee, its
successors, legal representatives and assigns.
7. CONFIDENTIALITY. "Confidential Information" means any proprietary
information, technical data, trade secrets, know-how or other non-public
information relating to the Intellectual Property assigned hereunder, including
but not limited to, research, product plans, products, designs, flow-charts,
algorithms, suppliers, software, developments, inventions, laboratory notebooks,
processes, formulas, technology, designs, drawings, engineering, hardware
configuration information, marketing, licenses, finances, budgets or other
business information. Confidential Information does not include any of the
foregoing items which has become publicly and widely known and made generally
available through no wrongful act of Assignor or of others who were under
confidentiality obligations as to the item or items involved. Assignor has
agreed, and hereby agrees, forever to hold in strictest confidence, and not to
use, except for the benefit of the Assignee, or to disclose to any person, firm,
corporation or other entity without written authorization of Assignee, any
Confidential Information. In the event that Assignor become legally compelled to
disclose any Confidential Information, Assignor will provide prompt written
notice to Assignee so that Assignee may seek a protective order or other
appropriate remedy. In the event that such a protective order or other remedy is
not obtained, Assignor shall furnish only that portion of the Confidential
Information which Assignor is advised by written opinion of counsel is legally
required and will exercise Assignor's best efforts to obtain reliable assurances
that confidential treatment will be accorded to that portion of the Confidential
Information so disclosed.
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8. NOTICES. All notices, requests, demands, and other communications required or
permitted to be given by a party under this Assignment shall be in writing in
the English language and shall be conclusively deemed to have been duly given
(a) when hand delivered to the other party; or (b) when received when sent by
facsimile at the address and number set forth below; or (c) five (5) business
days after the same have been deposited in a post office by registered or
recorded delivery international air post requested postage prepaid and addressed
to the parties as set forth below; or (d) three (3) business days after the same
have been deposited with a reputable international delivery service, postage
prepaid, addressed to the parties as set forth provided that the sending party
receives a confirmation of delivery from the delivery service provider.
If to Assignor, to:
ESS Technology, Inc.
00000 Xxxxxxx Xxxx.
Xxxxxxx, XX 00000
Attn: Xxx Xxxxx
Fax:
Telephone: 000-000-0000
If to Assignee, to:
XxXxxx.xxx
00000 Xxxxxxx Xxxx.
Xxxxxxx, XX 00000
Attn: Xxxx Xxxx
Fax:
Telephone: 000-000-0000
9. ENTIRE AGREEMENT. This Assignment constitutes the entire agreement between
the parties with respect to the subject matter hereof and supersedes all prior
agreements and undertakings among the parties relating to the subject matters
hereof.
10. AMENDMENT. This Assignment may be amended, supplemented or modified only by
a written instrument duly executed by or on behalf of each party hereto.
11. GOVERNING LAW. This assignment shall be governed by and construed in
accordance with the laws of the State of California, U.S.A., without regard to
conflict of interest rules.
12. FURTHER ASSURANCES. Assignor shall execute and deliver such other documents
and instruments, provide such materials and information and take such other
actions as may reasonably be requested by Assignee to fulfill the objectives of
this Assignment.
13. WAIVER. Any term or condition of this Assignment may be waived at any time
by the party that is entitled to the benefit thereof, but no such waiver shall
be effective unless set forth in a written instrument duly executed by or on
behalf of the party waiving such term or condition. No
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waiver by any party of any term or condition of this Assignment, in any one or
more instances, shall be deemed to be or construed as a waiver of the same or
any other term or condition of this Assignment on any future occasion.
14. SCOPE OF ASSIGNMENT. This Assignment is binding upon, inures to the benefit
of and is enforceable by the parties hereto and their respective successors and
assigns.
[Signature Pages Follow]
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IN WITNESS WHEREOF, the parties have executed this Assignment as of the
day and year first above written.
ESS TECHNOLOGY, INC.
By: /s/ XXXXXX X. XXXXX
-----------------------------------
Title: CEO
XXXXXX.XXX
By: /s/ XXXX X.X. XXXX
-----------------------------------
Title: CEO
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SCHEDULE A
[*]
* Confidential treatment is requested with respect to this portion of this
agreement.
