EXHIBIT 10.22
ASSIGNMENT OF SAPIR TECHNOLOGY
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This Assignment Agreement ("Agreement") is effective this 14th day of
September, 1998, and is by and between XXXXXXX XXXXX, a citizen of Israel,
residing at 00 Xxxxx Xxxxxxxxx, Xxxxxxxxx 00 000, Xxxxxx ("Sapir") and IMAGEK,
INC., a Delaware corporation, having offices at 0000 Xxxxxxx, Xxxxxxxx 0, Xxxxx
Xxxx, Xxxxxxxxxx 00000 ("IMAGEK").
WHEREAS, pursuant to a License Agreement, effective October 7, 1997,
between Irvine Sensors Corporation ("ISC") and Xxxxxxx Xxxxx (the "Xxxxx License
Agreement"), ISC acquired a royalty bearing, exclusive world-wide license under
various U.S. and foreign patents owned by Xx. Xxxxx relating to digital
photographic products, principally a product which allows an unmodified 35 mm
camera to capture digital images;
WHEREAS, ISC has assigned its rights under the Sapir License Agreement
to IMAGEK, a subsidiary of ISC, in an Assignment Agreement effective on even
date herewith;
WHEREAS, Sapir is willing to assign to IMAGEK all rights, title and
interest in and to technology and intellectual property which is the subject of
the Sapir License Agreement and IMAGEK is desirous of receiving such an
assignment from Sapir, subject to terms and conditions provided herein;
NOW, THEREFORE, in view of the foregoing premises and the mutual
promises between the parties, as well as other good and valuable consideration,
the receipt of which is hereby acknowledged, the parties hereto agree as
follows:
A. DEFINITIONS:
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1. "Intellectual Property" shall mean technical information,
inventions, concepts products, components, confidential information, trade
secrets, know-how, techniques, designs, processes, whether patentable or not,
and all improvements thereto, patents, patent applications, including any
patents issuing thereon and any all divisionals, continuations,
continuations-in-part thereof, and any and all reissues and reexaminations of
any such patents, copyrights, copyright registrations and applications, and all
other related intellectual property rights, now existing or hereinafter created
anywhere in the world.
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2. "Licensor Patents" shall have the same meaning as the term "Licensor
Patents" in the Sapir License Agreement.
3. "Technology" shall mean Licensor Patents and all Intellectual
Property relating thereto.
B. ASSIGNMENT
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1. SAPIR agrees to assign and does hereby assign to IMAGEK the
entire right, title, and interest in and to the Technology
throughout the world. In exchange for said assignment, IMAGEK
agrees to continue making the royalty payments to SAPIR set
forth in the Sapir License Agreement.
2. SAPIR hereby covenants and agrees that it will communicate to
IMAGEK, its successors, legal representatives and assigns, any
facts known to it respecting the Technology, and testify in
any legal proceeding, sign all lawful papers, execute all
provisional, regular, divisional, continuing and reissue
applications, make all rightful oaths and generally assist
IMAGEK, its successors, legal representatives and assigns, to
obtain and enforce proper patent protection for the Technology
in all countries. SAPIR hereby appoints IMAGEK as its true and
lawful attorney in fact, with full power of substitution in
SAPIR's name and stead, but for IMAGEK's benefit, to take any
all steps including proceedings at law, in equity or otherwise
to execute, acknowledge and deliver any and all instruments
and assurances necessary or expedient in order to vest the
aforesaid rights in the Technology more effectively in IMAGEK
or to protect the same, or to enforce any claim or right of
any kind with respect thereto. SAPIR acknowledges that this
appointment is coupled with an interest and is irrevocable.
3. SAPIR agrees to perform or cause to be performed any further
acts and execute and deliver any further documents which may
be reasonably necessary or otherwise reasonably required to
carry out or give effect and legality to the provisions of
this Agreement.
4. SAPIR agrees that it will not contest, challenge, or raise any
controversy with respect to IMAGEK's rights in the Technology
or the validity or enforceability thereof.
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C. REPRESENTATIONS AND WARRANTIES
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1. SAPIR represents and warrants the following:
x. XXXXX is the sole and exclusive owner of and has full
legal power to extend the rights in and to the
Technology which are assigned to IMAGEK herein;
b. To the best of its knowledge, the Technology
represents a valid invention or valid inventions and
any commercial embodiments thereof will not infringe
the patent or intellectual rights of any third party;
x. XXXXX has not entered into any contract or other
arrangement or made any commitment that may or will
impair IMAGEK's rights hereunder and SAPIR agrees
that it will not enter into any such contract,
arrangement or commitment; and
x. XXXXX has not granted and will not grant any liens,
encumbrances or security interests on the rights in
and to Technology, and in all respects such rights
are free and clear.
D. INDEMNIFICATION
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SAPIR agrees to indemnify, defend, and hold IMAGEK harmless from any
and all liabilities, claims, obligations, losses, costs, damages, suits,
judgments, and expenses whatsoever, including court costs, expert witness fees,
and attorney's fees, arising from or in any manner connected with: (i) any
inaccuracy in or any breach by SAPIR of any representation or warranty contained
in this Agreement; or (ii) the operation of SAPIR's business as it relates to
this Agreement.
E. CONFIDENTIAL INFORMATION
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SAPIR shall keep in trust and confidence all confidential information,
trade secrets, proprietary, know-how, and business information previously,
concurrently or subsequently received from IMAGEK including but not limited to
information pertaining to the prosecution of the patent applications and
enforcement of issued patents and agrees not to disclose the same to third
parties. SAPIR will not recreate, copy, reproduce, use or disclose to others
such information without the written authorization of IMAGEK. These obligations
of confidentiality will not apply to information which becomes public knowledge
through no fault of SAPIR or information which is obtained by SAPIR from a third
party having an unrestricted and legal right to disclose the information to
others.
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F. MISCELLANEOUS PROVISIOINS
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1. This Agreement is binding on the parties and their respective
officers, agents, employees, affiliated companies and heirs.
2. This Agreement shall be governed and construed in accordance with
the laws of the state of California, USA without regard to choice of
law principles, and the parties agree that it is executed and delivered
in that state.
3. In the event that any legal action becomes necessary to enforce or
interpret the terms of this Agreement, the prevailing party shall be
entitled, in addition to its court costs, to such reasonable attorneys'
fees, expert witness fees and legal expenses as may be fixed by a court
of competent jurisdiction.
4. In the event that any of the provisions or a portion of any such
provision of this Agreement are held to be unenforceable or invalid by
a court of competent jurisdiction, the validity and enforceability of
the enforceable portion of any such provision and the remaining
provisions of this Agreement shall not be adversely affected.
5. This Agreement contains the entire understanding and agreement of
the parties with respect to the subject matter thereof, and there are
no representations, warranties promises or undertakings other than
those contained therein. As to the subject matter thereof, this
Agreement, this Agreement supersedes and cancels all previous
agreements between the parties thereto.
6. No course of conduct or dealing between the parties shall act as
modification or waiver of any provision of this Agreement, and only a
modification or waiver which is contained in a single writing signed by
both parties shall be effective.
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IN WITNESS WHEREOF, the parties hereto have executed this
Agreement in duplicate originals.
XXXXXXX XXXXX
Dated: SEP 14, 98 By: /S/ X. XXXXX
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Signature
Printed Name: Xxxxxx Xxxxx
Title: Mechanical Engineer
IMAGEK, INC
Dated: As of SEPT. 14,1998 By: /S/ XXXXXX XXXXXX
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Signature
Printed Name: Xxxxxx Xxxxxx
Title: President & CEO
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