Exhibit 10.07
IC One, Inc./CardOne Development Co.
PURCHASE AGREEMENT
THIS PURCHASE AGREEMENT (the "Agreement"), dated effective as Dec. 1st,
1998 (the "`Effective Date") is by and between IC One, Inc., a Delaware
corporation with its principal place of business at ▇▇▇ ▇▇▇▇ ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇
▇▇▇ ("IC One") and CardOne Development Company, a Utah corporation with its
principal place of business at ▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇
▇▇▇▇▇-▇▇▇▇ ("CardOne").
RECITALS:
▇. ▇▇▇▇▇▇▇ is the owner of certain trademarks, service marks,
copyrights, trade secrets, know-how, ideas, inventions, patents and/or patent
applications, and other intellectual property (the "Intellectual Property," as
further defined below).
B. Pursuant to the terms of this Agreement, CardOne wishes to transfer
to IC One all right, title and interest in and to the Intellectual Property, and
IC One wishes to purchase the Intellectual Property from CardOne.
AGREEMENTS:
In consideration of the mutual covenants and agreements set forth herein, the
receipt and sufficiency of which is hereby acknowledged, the parties agree as
follows:
1. Definitions.
1.1 "Documentation" shall mean (a) all existing technical, design,
development, installation and maintenance information describing the design and
development of the Intellectual Property, including source documentation, source
listings and annotations, test data and test results and (b) all existing
educational materials, reference manuals and support materials relating to the
Intellectual Property.
1.2 The "Intellectual Property" shall mean all trademarks, service
marks, copyrights, trade secrets, know-how, ideas, inventions, patents and/or
patent applications, and other intellectual property currently owned by CardOne,
including Related Technology (as defined herein) and any software programs or
documents embodying Intellectual Property, as more specifically described in
Exhibit A.
1.3 "Related Technology" means all existing technology acquired,
authored, developed, improved or produced by CardOne and that is necessary to
the development of the Intellectual Property or to the performance by the
Intellectual Property of its intended functions or purposes, whether tangible or
intangible, in any stage of development, including without limitation existing
enhancements, designs, technology, improvements, inventions, works of
authorship, trade secrets, formulas, processes, routines, subroutines,
techniques, concepts, methods, ideas, algorithms, source code, object code, flow
charts, diagrams, coding sheets, source code listings and annotations,
programmers' notes, research, architectural specifications, concepts, work
papers, and work product existing on the Effective Date, development tools and
associated documentation, and all right of any kind in or to any of the
foregoing, including without limitation all proprietary rights and trade secret
and all patents and copyrights (whether pending, applied for or issued) for the
Intellectual Property, regardless of whether any or all of the foregoing
constitutes copyrightable or patentable subject matter.
1.4 All other initially capitalized terms shall have the meanings
assigned to them in this Agreement.
2. Assignment.
2.1 Assignment. CardOne hereby assigns, sells and transfers to IC One,
effective upon the Effective Date, all right, title and interest in and to the
Intellectual Property and Related Technology, including without limitation all
copyrights, trade secrets, patent rights (including, without limitation, patent
applications and patents) and other intellectual property rights therein, free
and clear of all liens, security interests, licenses and encumbrances of any
type, whether accrued, absolute or contingent "Liens").
2.2 Further Assurances. CardOne agrees to assist IC One and to execute
any additional documents, assignments or assurances reasonably requested by IC
One hereafter to further evidence or complete its ownership of the Intellectual
Property, to carry out the transactions contemplated by this Agreement and to
assist IC One to obtain, perfect and protect its interest in the Intellectual
Property. In particular, CardOne shall, at IC One's expense, cooperate with IC
One's reasonable requests concerning prosecution, defense, protection or
registration of any elements of the Intellectual Property, including the
recordation of any assignment or notice of assignment for patents, trademarks or
copyrights with respect to the Intellectual Property.
3. Consideration. In consideration of the assignment and transfer of the
Intellectual Property and other covenants, warranties and commitments made by
CardOne in this Agreement, IC One agrees as follows:
3.1 Lump Sum Payment. IC One shall pay to CardOne the amount of two
hundred thousand dollars ($200,000) on the earlier of (i) three (3) business
days after the date IC One receives a lump sum equity infusion of at least
$2,000,000, or (ii) three (3) business days after IC One receives the cumulative
amount of $7,500,000 from its Regulation 506 offering which is currently in
progress.
3.2 Earn-out Payment. For a period of ten (10) years from the Effective
Date, IC One shall pay CardOne an earn-out payment of two percent (2%) of IC
One's net receipts from sales and licenses of integrated circuit cards and other
products embodying the technology assigned hereunder as part of the Intellectual
Property, less discounts, credits and returns, and excluding taxes, shipping and
handling, bad debts and refunds with respect to such products; provided,
however, that IC One shall not owe CardOne any earn-out payments in excess of
the amount of one hundred thousand dollars ($100,000) per month. Such payments
will be due within sixty (60) days following the end of each calendar month for
receipts from domestic (U.S.) sales and licenses, and within ninety (90) days
for international sales and licenses. IC One's monthly payment shall be
accompanied by a reasonably detailed report, describing the products embodying
CardOne's technology that were distributed by IC One during such quarter and the
calculation of the earn-out payment due.
3.3 Audit Rights. IC One shall keep accurate books of account and
records covering all transactions relating to this Agreement. CardOne shall have
the right, upon ten (10) days prior written notice and during reasonable
business hours, to have a certified public accounting firm examine IC One's
records relating to the Intellectual Property. CardOne shall bear the cost of
such inspection and audit unless the results of such audit indicate
underpayments of more than five percent (5%) for the period under review, in
which case the reasonable cost of the audit will be borne by IC One. Such audits
may be made no more frequently than once every twelve (12) months, unless the
preceding audit revealed a material underpayment. All relevant records shall be
kept available for at least two (2) years after the calendar month to which they
relate.
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3.4 Legal Fees. CardOne agrees to pay within three business days of
receipt of the lump sum payment, all outstanding Intellectual Property and
Related Technology fees owed as of the Effective Date, to the law firm Fenwick &
West.
4. Delivery. CardOne has delivered and will continue to deliver to IC One
all available software, work product, documents, and other tangible materials
describing or embodying the Intellectual Property (including Documentation and
Related Technology), to the extent reasonably necessary for IC One to fully
exercise its rights under this Agreement.
5. Covenant Not to Compete. CardOne hereby covenants and agrees that for
the term of this Agreement and for a period of two (2) years thereafter, it will
not, directly or indirectly, without the prior written consent of IC One,
develop, market or sell, or assist in the development, marketing or sale of, any
product or technology that competes with the Intellectual Property in the United
States and any other geographic areas in which such product or technology is
marketed (a "Competitive Product"); including without limitation providing
consultative services, owning, managing, operating, participating in,
controlling, or being connected as a majority stockholder, partner, or otherwise
with any business, individual or entity that creates, develops or markets a
Competitive Product, and including any such actions by its officers, directors
and key employee(s). CardOne hereby affirmatively represents that it understands
and acknowledges that IC One has a legitimate business purpose in requiring it
to abide by the restrictive covenants contained in this Section 5, and
acknowledge that the restrictions contained herein are reasonable given its
knowledge of the Intellectual Property and its unique and valuable role in
developing the Intellectual Property, and further acknowledges the fact that
competition by it with the Intellectual Property would severely injure IC One.
This Section 5 is intended to be construed as a series of separate covenants,
one for each city, county, state, country or geographic area in which IC One
does or intends to do business. Except for geographic coverage, each such
separate covenant shall be deemed identical in terms.
6. CardOne Warranties.
6.1 Corporate Power, Etc. CardOne hereby represents, warrants, and
covenants to IC One that (a) CardOne has all necessary right and power to enter
into and perform according to the terms and conditions of this Agreement; (b)
all corporate action on the part of CardOne, its directors and its stockholders
necessary for the authorization, execution, delivery and performance of this
Agreement and any other agreements contemplated hereby has been taken; (c) the
terms of this Agreement do not violate or conflict with any other agreement or
obligation of CardOne, including without limitation the intellectual property
license previously granted by CardOne to CardOne Corporation, pursuant to the
License Agreement dated November 17, 1995, and CardOne hereby represents and
warrants that such License Agreement has been effectively terminated; (d) the
License Agreement between CardOne and CardOne Corporation is no longer in force
or effect; and (e) this Agreement is a valid and binding agreement on CardOne.
enforceable in accordance with its terms.
6.2 Title. CardOne warrants that it has good and marketable title to
the Intellectual Property, which is transferred to IC One free and clear of any
Liens or restrictions on or conditions to transfer or assignment. Except as may
be disclosed in writing to IC One, there are no outstanding licenses or
agreements of any kind relating to the Intellectual Property. No licenses from
or rights (including patent rights) of any third party are necessary to market,
license, sell. modify and/or create derivative works of the Intellectual
Property. CardOne has used diligent efforts to obtain and maintain its ownership
of the Intellectual Property, as well as the confidentiality of any trade secret
or source code portions thereof, and no material portion of the Intellectual
Property is or has become part of the public domain.
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6.3 Litigation. There is no action, suit, investigation, or other
proceeding pending or, to CardOne's knowledge, threatened against or materially
adversely affecting the Intellectual Property or CardOne's right and ability to
consummate the transactions contemplated by this Agreement; nor does CardOne
know or have reason to know of any basis for the same.
6.4 Infringement. CardOne warrants that the Intellectual Property and
elements thereof are solely owned by CardOne and do not violate any copyright,
trade secret, trademark, patent or other personal or proprietary right of any
third party, and that it has not received any notice of such a claim, There are
no existing, pending or, to CardOne's knowledge, threatened claims of
infringement, misappropriation or disputed ownership by any third party relating
to the Intellectual Property and elements thereof and, to CardOne's knowledge,
there is no basis for any such claim. To CardOne's best knowledge, no third
party is infringing or has infringed any rights with respect to the Intellectual
Property.
6.5 Indemnification. CardOne shall indemnify and hold IC One harmless
from any and all claims, demands, costs, liabilities, losses, expenses and
damages (including attorneys' fees) arising out of or in connection with the
breach of any warranty made by CardOne in this Section 6, including defense of
any third party claim that, if true, would constitute such a breach of warranty.
IC One shall give CardOne prompt notice of any claim to which the foregoing
indemnity relates. Notwithstanding anything herein to the contrary, CardOne's
obligations pursuant to this Section shall not apply to any claims related to
any modifications to the Intellectual Property made by IC One, but only to the
extent that such claims would not have arisen but for the modifications made by
IC One.
6.6 LIMITATION OF LIABILITY AND DAMAGES. OTHER THAN AS SET FORTH IN
THIS SECTION 6, EACH PARTY EXPRESSLY EXCLUDES AND DISCLAIMS ALL WARRANTIES,
WHETHER EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. IN NO EVENT SHALL EITHER
PARTY BE LIABLE TO THE OTHER OR ANY THIRD PARTY FOR ANY INDIRECT, INCIDENTAL,
SPECIAL OR CONSEQUENTIAL DAMAGES IN CONNECTION WITH THIS AGREEMENT.
6.7 Survival. The representations, warranties and covenants contained
in or made pursuant to this Agreement shall survive execution and any
termination of this Agreement.
7. Confidentiality. CardOne agrees to treat as highly confidential, and
never to use, copy or disclose to any third party, except as required by law,
any source code or trade secrets which are part of the Intellectual Property and
any other information concerning the Intellectual Property which should
reasonably be understood to be confidential.
8. Breach of Agreement; Remedies. If either party believes that the other
has materially breached any provision of this Agreement, the party alleging the
breach shall deliver notice to the other party, specifying the nature of the
alleged breach. The party alleged to be in breach shall have sixty (60) days
from the date of mailing of such notice in which to attempt to cure the alleged
breach. During such sixty (60) day period, either party may request a personal
meeting between the parties in which to negotiate in good faith to attempt to
resolve the dispute. If such negotiations are unsuccessful and the alleged
breach has not been cured by the end of such sixty (60) day period, the party
alleging the breach may pursue any and all rights and remedies that it has under
this Agreement, at law or in equity. CardOne agrees that the remedy at law for
any breach of its covenant not to compete and its covenant of confidentiality
shall be inadequate and that irreparable harm shall be presumed, and IC One
shall be entitled to injunctive relief, in addition to any other remedy it might
have, including damages and the right to recover reasonable attorneys' fees, if
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it becomes necessary for IC One to enforce such covenants. CardOne specifically
releases IC One from the requirement of posting any bond in connection with
temporary or interlocutory injunctive relief, to the extent permitted by law.
9. Release of Claims. In consideration for the mutual rights and
agreements contained herein, the parties hereby release each other and their
respective officers, directors, employees, agents and other representatives from
any and all claims or causes of action, in law or equity, as well as any
damages, costs, controversies, promises, representations, liabilities, and
agreements, known or unknown, liquidated or unliquidated, fixed or contingent,
based upon or arising out of any arrangements or agreements made or actions
taken by such party or its representatives prior to the date of this Agreement,
except to the extent such constitutes a breach of warranty under or a violation
of this Agreement.
10. Rights Reserved: Reasonable Efforts to Market. IC One shall have the
right to market the Intellectual Property in any manner and under any name IC
One chooses. Nothing in this Agreement shall impair IC One's right to acquire,
license, independently develop for itself or have others independently develop
for it similar products performing the same or similar functions as the
Software. IC One may decide in its sole discretion, at any time, whether or not
to commercialize and distribute any portion of the Intellectual Property or
whether to discontinue such distribution. Notwithstanding the foregoing, IC One
is required to use reasonable efforts to develop, market and promote the
Intellectual Property, in general, in both U.S. and international markets.
11. Miscellaneous.
11.1 Notice. All notices between the parties shall be in writing and
shall be sent by certified or registered mail or commercial overnight delivery
service, with provisions for a receipt, or by confirmed facsimile transmission,
to the address of the other party listed above (or to such other address as a
party may furnish to the other in writing).
11.2 Entire Agreement; Amendment; Waiver. This Agreement, together with
the Exhibit attached hereto, which is incorporated herein by reference, and any
additional documents required to be delivered hereunder, constitutes the
complete agreement between the parties and supersedes all previous
representations, written or oral, with respect to the Intellectual Property or
other subject matter of this Agreement. Except as otherwise expressly provided
herein, this Agreement may be modified or amended only by a writing signed by
duly authorized representatives of both parties. The waiver by either party of
any default or breach of this Agreement, or any obligation hereunder, shall be
ineffective unless in writing, and shall not constitute a waiver of any
subsequent breach or default. No failure to exercise any right or power under
this Agreement or to insist on strict compliance by the other party shall
constitute a waiver of the right in the future to exercise such right or power
or to insist on strict compliance.
11.3 Governing Law and Jurisdiction. This Agreement shall be governed
by and construed in accordance with the internal laws of the state of Utah and
applicable federal laws. The parties consent to the exclusive jurisdiction and
venue of Utah State and federal courts in any action arising out of this
Agreement.
11.4 Attorneys' Fees. In the event of any default under this Agreement,
the defaulting party shall pay all costs incurred by the other party by reason
of the default, including court costs and reasonable attorneys' fees (whether or
not the attorney is a salaried employee of the non-defaulting party), and also
including such expenses incurred before legal action or bankruptcy proceeding,
during the pendency thereof, and continuing to all such expenses in connection
with appeals to higher courts. If the attorney is a salaried employee of the
non-defaulting party) a reasonable attorney's fee shall be an amount charged by
similarly qualified attorneys in private practice for similar services. If a
party is accused of default by the other, but there is a federal decision by a
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court of law, not overturned on appeal, that the party did not default as
alleged, the party wrongly accused of default shall be entitled to an award of
its costs and reasonable attorneys' fees as described above.
11.5 Cumulative Remedies. All rights and remedies provided in this
Agreement, at law or in equity are cumulative.
11.6 Severability. If any term of this Agreement is held invalid or
unenforceable by a court or arbitrator of competent jurisdiction, including
without limitation the term and geographic scope of the covenant not to compete,
such term shall be reduced or otherwise modified by such court or arbitrator to
the minimum extent necessary to make it valid and enforceable. If such term
cannot be so modified, it shall be severed and the remaining terms of this
Agreement shall be interpreted in such a way as to give maximum validity and
enforceability to this Agreement.
11.7 Binding Effect; Assignment. This Agreement is binding upon the
parties and their respective successors, representatives and assigns; however,
neither party may not assign or transfer this Agreement or any of his rights or
duties hereunder without prior written consent of the other party, which shall
not be unreasonably withheld.
11.8 Language. The language used in this Agreement shall be deemed to
be the language chosen by the parties to express their mutual intent, and no
rule of strict construction shall be applied against either party.
11.9 Force Majeure. Neither party shall be liable for any failure or
delay in performing hereunder, if such failure or delay is due to war, strike,
government requirements, acts of nature, acts or omissions of carriers, or other
cause(s) beyond its reasonable control.
11.10 Counterparts. This Agreement may be executed in counterparts, and
all counterparts shall be deemed to be one and the same agreement.
11.11 No Agency. The parties are independent contractors, and this
Agreement shall not be construed to create any agency or partnership between
them. Neither party has authority to bind the other, to incur any liability or
act on behalf of the other, or to direct the others' employees.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the
Effective Date.
CardOne Development Company IC One, Inc.
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇
----------------------------- --------------------------
Print Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇ Print Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Title: President Title: Corp. Secretary
Date: 18/Nov/98 Date: 18 Nov 98
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Exhibit A
Intellectual Property
CardOne Development Company
PATENTS
Title Serial No. Filing Date Country Status
----- ---------- ----------- ------- ------
------------------------------------------- ----------- ---------------------- ------------- -------------------------
System and Method for Authorizing 08/456,546 06/01/95 United Abandoned
Acceptance of Checks as Likely to be States
Collected
------------------------------------------- ----------- ---------------------- ------------- -------------------------
Method and System for Allocating and 08/192,004 02/04/94 United Abandoned
Redeeming Incentive Credits States
------------------------------------------- ----------- ---------------------- ------------- -------------------------
Method and System for Allocating and 08/676,809 07/08/96 United Issued 09/08/98
Redeeming Incentive Credits States ▇▇▇. No. 5,806,045
------------------------------------------- ----------- ---------------------- ------------- -------------------------
Method and System for Allocating and 96/03,161 Based on PCT/US Mexico Pending
Redeeming Incentive Credits 95/01432 filed
02/02/95
------------------------------------------- ----------- ---------------------- ------------- -------------------------
Method and System for Allocating and 2,182,596 Based on PCT/US Canada Maintenance Fee due
Redeeming Incentive Credits 95/01432 filed 02/02/99
02/02/95
------------------------------------------- ----------- ---------------------- ------------- -------------------------
Method and System for Allocating and 17442/95 Based on PCT/US Australia Pending; Objections
Redeeming Incentive Credits 95/01432 filed must be overcome by
02/02/95 02/21/99
------------------------------------------- ----------- ---------------------- ------------- -------------------------
Method and System for Allocating and 7-520773 Based on PCT/US Japan Deadline for filing a
Redeeming Incentive Credits 95/01432 filed Request for Examination
02/02/95 is 02/02/03
------------------------------------------- ----------- ---------------------- ------------- -------------------------
------------------------------- ---------------------------- ---------------------------- ----------------------------
▇▇▇▇ Serial No. Filing Date Status
------------------------------- ---------------------------- ---------------------------- ----------------------------
IC ONE 75/415,581 01/09/98 Published for Opposition
------------------------------- ---------------------------- ---------------------------- ----------------------------
IC ONE TRAVEL 75/415,766 01/09/98 Pending
------------------------------- ---------------------------- ---------------------------- ----------------------------
IC ONE TRAVEL 75/415,702 01/09/98 Pending
------------------------------- ---------------------------- ---------------------------- ----------------------------
EDUCENTS 75/415,765 01/09/98 Pending
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IC BUCKS 10/24/94 Registered 10/01/96
Registration Number
2,004,979
------------------------------- ---------------------------- ---------------------------- ----------------------------
SMART BANK 10/24/94 Registered 10/01/96
Registration Number
2,004,978
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IC KIDS CARD 75/347,491 08/26/97 Allowed
Statement of Use Due
03/08/99
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