Exhibit 10.29
INTELLECTUAL PROPERTY ASSIGNMENT
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THIS ASSIGNMENT dated this 1st day of November, 1999, from
GLENAYRE ELECTRONICS, INC. ("Electronics"), a Colorado corporation having a
place of business at 0000 Xxxxxxxx Xxxxxxxxx, Xxxxxxxxx, Xxxxx Xxxxxxxx 00000,
on behalf of itself, its parent corporation Glenayre Technologies, Inc. ("GTI"),
and all of their respective subsidiaries except WMC (collectively, "Assignors")
to WESTERN MULTIPLEX CORPORATION, a California corporation having a place of
business at 0000 Xxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000 ("WMC").
WHEREAS, pursuant to the Glenayre Omnibus Intellectual
Property Agreement effective December 31, 1994 ("Omnibus Agreement"),
Electronics was designated as sole owner of all present and future intellectual
property rights of Electronics, GTI and their wholly-owned subsidiaries;
WHEREAS, after GTI acquired all of the outstanding capital
stock of WMC in April 1995 (the "Glenayre Acquisition"), and WMC became a
wholly-owned subsidiary thereof, an addendum to the Omnibus Agreement was
executed as of June 20, 1995 (the "Addendum"), whereby all intellectual property
rights of WMC were assigned to Electronics, except for certain trademarks
scheduled in the Addendum;
WHEREAS, pursuant to the Acquisition Agreement by and among
GTI, GTI Acquisition Corp. ("Glenayre"), and WMC dated as of September 30, 1999
("Acquisition Agreement"), Glenayre, a wholly-owned subsidiary of GTI that owned
the shares of WMC as of such date, has agreed to sell the shares of WMC to WMC
Holding Corp.; and
WHEREAS, now that WMC shall no longer be a subsidiary of
Glenayre, Assignors wish to assign to WMC, and WMC wishes to accept the
assignment of all of intellectual property rights that WMC transferred to
Electronics pursuant to the Addendum, and to confirm its ownership of all
intellectual property rights that have remained the property of WMC and were
never transferred to Electronics;
NOW, THEREFORE, for good and valuable consideration (including
that recited in the Acquisition Agreement), the receipt and sufficiency of which
is hereby acknowledged, Assignors hereby assign, transfer and convey to WMC, its
successors, assigns and nominees forever, any and all of Assignors' entire
right, title and interest to and under the following:
1. all intellectual property rights (including without
limitation, all patents, patent applications, inventions, copyrights and
copyrightable works, software, mask works, databases, technology, systems,
know-how, processes, formulae, designs, blueprints, models, confidential or
proprietary information) that (i) WMC or its predecessor owned prior to the
Glenayre Acquisition, or (ii) WMC developed independent from Assignors after the
Glenayre Acquisition, to the extent that Assignors claim any ownership interest
in the foregoing, either pursuant to the Addendum or otherwise;
2. U.S. Patent Application Serial No. 09/033,507, "Method and
Apparatus for Isolating High-Frequency Signals in a Multi-Layer Printed Circuit
Board" (filed March 2, 1998) and a continuing U.S. Patent Application Serial No.
09/053,045, "Method and Apparatus for
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Isolating High-Frequency Signals in a Printed Circuit Board" (filed April 1,
1998), and all reissues, re-examinations, continuations, continuations-in-part,
divisions, inventions, trade secrets, technology and know-how related thereto
(together with 1, the "Assigned IP");
3. any and all other rights, priorities and privileges
provided under United States, state or foreign law, or multinational law,
compact, treaty, protocol, convention or organization, with respect to the
foregoing, and any and all rights in, to and under any and all licenses and
other agreements and documents relating to any of the Assigned IP ("Related
Rights");
4. any and all rights to xxx at law or in equity for any
infringement, imitation, impairment, distortion, dilution or other unauthorized
use or conduct in derogation of the Assigned IP or Related Rights occurring
prior to the Closing Date (as defined in the Acquisition Agreement), including
the right to receive all proceeds and damages therefrom; and
5. any and all rights to obtain renewals, reissues,
re-examinations, continuations, continuations-in-part, divisions, extensions or
other legal protections pertaining to the Assigned IP or Related Rights.
6. To the extent that Assignors do not claim any ownership
interest in any of the Assigned IP or Related Rights, or any other intellectual
property owned or used by WMC, this Assignment shall serve as an acknowledgment
and confirmation by Assignors of WMC's continuing ownership of such intellectual
property and a disclaimer of all current and future ownership rights therein.
Without limiting the generality of the foregoing, Assignors confirm that WMC has
been and remains the owner of (i) the trademarks scheduled to the Addendum as
remaining with WMC; namely:
a. WM, WESTERN MULTIPLEX CORPORATION AND DESIGN (U.S. Reg.
No. 1,317,724);
b. WM AND DESIGN (U.S. Reg. No. 1,298,505); and
c. WESTERN MULTIPLEX, WESTERN MULTIPLEX CORPORATION, WM
AND DESIGN (common law);
(ii) the trademarks WM WESTERN MULTIPLEX CORPORATION (U.S. Reg. No. 2,067,842)
and WM & DESIGN (U.S. Reg. No. 2,076,271); and (iii) the Internet domain name
"xxx.xxxxxxxxxxxxxxxxxxxx.xxx" and all systems, equipment and intellectual
property rights used on or in connection with, or otherwise related to the
Internet web site operated in connection with such domain name, including all
hardware, software, applications, site content, graphics, audiovisual displays,
"look and feel," trademarks and logos (except as otherwise provided in the
Acquisition Agreement), networks, connectivity, and all rights in any
third-party licenses or other agreements relating to such web site.
7. WMC, its successors and assigns, shall hold the rights to
the Assigned IP and Related Rights for and during the existence of the
foregoing, as fully and as entirely as the same would have been held and enjoyed
by Assignors had this Assignment not been made. Assignors
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agree that all Assigned IP and Related Rights are no longer covered or governed
by, or subject to the Omnibus Agreement and/or the Addendum.
8. This Assignment is effective as of the Closing Date.
Assignors shall, at WMC's expense but without further consideration, comply with
any reasonable request by WMC to execute any additional documents and to take
any further action necessary to protect, secure, vest and record good, valid and
marketable title to the foregoing Assigned IP and Related Rights in WMC.
IN WITNESS WHEREOF, the undersigned have caused this
Assignment to be duly executed and delivered as of the date first above written.
GLENAYRE ELECTRONICS, INC.
(on behalf of itself and all other Assignors)
By: /s/ Xxxx X. Xxxxxxx
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Name: Xxxx X. Xxxxxxx
Title:
Date: November 1, 1999
WESTERN MULTIPLEX CORPORATION
By: /s/ Xxxxxxx Xxxxxxxxxxxx
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Name: Xxxxxxx Xxxxxxxxxxxx
Title: C.F.O.
Date: November 1, 1999
