EXHIBIT 99.1
PATENT PURCHASE AGREEMENT
This PATENT PURCHASE AGREEMENT (this "Agreement") is entered into, as of
the Effective Date (defined below), by and between Moonbeam L.L.C., a Delaware
limited liability company, with an office at 000 Xxxxxxxx Xxxxxxxx, 0000
Xxxxxxxxxx Xxxx, Xxxxxxxxxx, Xxxxxxxx 00000 ("Purchaser"), and Blonder Tongue
Investment Company, a Delaware corporation, with an office at 000 Xxxxxxxx
Xxxxxx, Xxxxxxxxxx, Xxxxxxxx 00000 ("Seller"). The parties hereby agree as
follows:
1. BACKGROUND
1.1 Seller owns certain provisional patent applications, patent applications,
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
"Abandoned Assets" means those specific provisional patent applications, patent
applications, patents and other governmental grants or issuances listed on
Exhibit C (as such list may be updated based on Purchaser's review pursuant to
paragraph 3.1).
"Affiliate" means: any corporation, company or other entity of which a party
hereto (i) has voting shares or other voting securities, ownership and control
of more than fifty percent (50%) of the outstanding shares or securities
entitled to vote for the election of directors or similar managing authority of
such entity or (ii) does not have outstanding shares or securities, but has more
than fifty percent (50%) of the ownership interest representing the right to
manage such entity. An entity shall be deemed to be an Affiliate under this
Agreement only so long as all the requirements of being an Affiliate are met as
of or at any time after the Closing, but only as long as (i) or (ii) above
exists.
"Assigned Patent Rights" means the Patents and the additional rights set forth
in paragraph 4.2.
"Assignment Agreements" means the agreements assigning ownership of the Assigned
Patent Rights and, to the extent available to Seller without undue effort or
expense, the Abandoned Assets from the inventors and/or prior owners to Seller.
"Blonder Tongue" means Blonder Tongue Laboratories, Inc., a Delaware corporation
and/or its Affiliates (including, without limitation, Seller as of the Effective
Date).
"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, without limitation, information relating to deadlines,
payments, and filings, which is current as of the Effective Date.
"Effective Date" means the date set forth as the Effective Date on the signature
page of this Agreement.
"Executed Assignments" means both the executed and notarized Assignment of
Patent Rights in Exhibit B and the executed Assignment of Rights in Certain
Assets in Exhibit C, each as signed by a duly authorized representative of
Seller.
"Live Assets" means the provisional patent applications, patent applications,
and patents listed on Exhibits A and/or B (as such lists may be updated based on
Purchaser's review pursuant to paragraph 3.1).
"Patents" means, excluding the Abandoned Assets, all (a) Live Assets; (b)
patents or patent applications (i) to which any of the Live Assets directly or
indirectly claims priority, (ii) for which any of the Live Assets directly or
indirectly forms a basis for priority, and/or (iii) that directly or indirectly
incorporate by reference the Live Assets or are directly or indirectly
incorporated by reference by the Live Assets; (c) reissues, reexaminations,
extensions, continuations, continuations in part, continuing prosecution
applications, requests for continuing examinations, divisions, and registrations
of any item in any of the foregoing categories (a) and (b); (d) foreign patents,
patent applications and counterparts relating to any item in any of the
foregoing categories (a) through (c), including, without limitation,
certificates of invention, utility models, industrial design protection, design
patent protection, and other governmental grants or issuances; and (e) any items
in any of the foregoing categories (b) through (d) whether or not expressly
listed as Live Assets and whether or not claims in any of the foregoing have
been rejected, withdrawn, cancelled, or the like.
"Primary Warranties" means, collectively, the representations and warranties of
Seller set forth in paragraphs 6.1, 6.2, 6.3, 6.4, and 6.5 hereof.
"Prosecution History Files" means the names, addresses, email addresses, and
phone numbers of prosecution counsel and agents, and all files, documents and
tangible things, as those terms have been interpreted pursuant to rules and laws
governing the production of documents and things, constituting, comprising or
relating to the investigation, evaluation, preparation, prosecution,
maintenance, defense, filing, issuance, registration, assertion or enforcement
of the Patents.
"Transmitted Copy" has the meaning set forth in paragraph 8.13.
3. TRANSMITTAL, REVIEW, CLOSING CONDITIONS AND PAYMENT
3.1 TRANSMITTAL. Within twenty (20) calendar days following the later of the
Effective Date or the date Purchaser receives a Transmitted Copy this Agreement
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executed by Seller, Seller will send to Purchaser the Assignment Agreements, the
List of Prosecution Counsel, the Docket, the Prosecution History Files, and all
other files and original documents (including, without limitation, Letters
Patent, assignments, and other documents necessary to establish that Seller's
representations and warranties of Section 6 are true and correct) relating to
the Patents and/or the Abandoned Assets ("Initial Deliverables"). Seller
acknowledges and agrees that Purchaser may request and Seller will promptly
deliver, additional documents reasonably necessary to establish that Seller's
representations and warranties of Section 6 are true and correct, based on
Purchaser's review of the Initial Deliverables (such additional documents and
the Initial Deliverables are, collectively, the "Deliverables"), and that as a
result of Purchaser's review, the lists of Live Assets on Exhibits A and B and
the list of Abandoned Assets on Exhibit C, may be revised by Purchaser both
before and after the Closing to conform these lists to the definition of Patents
(and these revisions may therefore require the inclusion of additional
provisional patent applications, patent applications, and patents on Exhibit A
or B or both); provided, however, that as to the Abandoned Assets, the
Deliverables shall be limited to such information and documents as are available
to Seller without undue effort or expense. To the extent any of the Live Assets
are removed for any reason, the payment in paragraph 3.4 may be reduced by
mutual agreement of the parties. If Purchaser requests any additional documents,
Purchaser will use reasonable efforts to make any such requests for additional
documents within fifteen (15) business days after Purchaser's receipt of the
Initial Deliverables. If more requests for additional documents are made,
Purchaser will use reasonable efforts to make any such requests for additional
documents within ten (10) business days of Purchaser's receipt of any additional
documents in response to such requests. Purchaser understands that Seller
desires that this transaction be closed as soon as possible and Purchaser
therefore agrees that any requests for the additional documents shall be made in
good faith and not for the purposes of delay
3.2 Closing. The closing of the sale of the Assigned Patent Rights and the
assignment of the Abandoned Assets hereunder will occur when all conditions set
forth in paragraph 3.3 have been satisfied or waived (the "Closing"). Purchaser
and Seller will use reasonable efforts to carry out the Closing within thirty
(30) calendar days following the later of the Effective Date or the date on
which the last of the Deliverables was received by Purchaser. If Purchaser does
not request additional documents within fifteen (15) business days after
Purchasers' receipt of the Initial Deliverables, the Closing will occur within
thirty (30) calendar days after Purchaser's receipt of the Initial Deliverables,
provided that all other conditions for the Closing are satisfied.
3.3 Closing Conditions. The following are conditions precedent to Purchaser's
obligation to make the payment in paragraph 3.4.
(a) Signature by Seller. Seller timely executed this Agreement and
delivered a Transmitted Copy of this Agreement to Purchaser's
representatives by not later than 5:00 p.m. Pacific Time on August __,
2006 and promptly delivered two (2) executed originals of this
Agreement to Purchaser's representatives.
(b) Transmittal of Documents. Seller delivered to Purchaser all the
Deliverables.
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(c) Compliance With Agreement. Seller 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.
(d) Representations and Warranties True. Purchaser is satisfied that, as
of the Effective Date and as of the Closing, the representations and
warranties of Seller contained in Section 6 are true and correct.
(e) Patents Not Abandoned. Purchaser is satisfied that, as of the
Effective Date and as of the Closing, none of the assets that are
included in the Patents have expired, lapsed, been abandoned, or
deemed withdrawn.
(f) Delivery of Executed Assignments. Seller caused the Executed
Assignments to be delivered to Purchaser's representatives.
3.4 Payment. At Closing, Purchaser will pay to Seller the amount of two million
U.S. Dollars (US $2,000,000.00). Purchaser may record the Executed Assignments
with the applicable patent offices only upon Closing.
3.5 Termination and Survival. In the event all conditions to Closing set forth
in paragraph 3.3 are not met within ninety (90) days following the Effective
Date, each of Seller and Purchaser will have the right to terminate this
Agreement by written notice to the other party; provided that Seller may only
terminate this Agreement pursuant to this paragraph 3.5 if Seller has complied,
in all material respects, with all of its obligation under this Agreement. Upon
termination, Purchaser will return all documents delivered to Purchaser under
this section 3 to Seller. The provisions of paragraphs 8.1, 8.2, 8.3, 8.4, 8.5,
8.6, 8.7, 8.8, 8.9, 8.10 and 8.11 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
Assigned Patent Rights. Seller understands and acknowledges that, if any of the
Patents are assigned to Seller's affiliates or subsidiaries, Seller may be
required prior to the Closing to perform certain actions to establish that
Seller is the assignee and to record such assignments. On or before Closing,
Seller will execute and deliver to Purchaser the Assignment of Patent Rights in
the form set forth in Exhibit B (as may be updated based on Purchaser's review
pursuant to paragraph 3.1).
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 all
(a) inventions, invention disclosures, 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
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or issuances of any type related to any of the Patents and the
inventions, invention disclosures, and discoveries therein;
(c) causes of action (whether known or unknown or whether currently
pending, filed, or otherwise) and other enforcement rights under, or
on account of, any of the Patents and/or the rights described in
subparagraph 4.2(b), including, without limitation, all causes of
action and other enforcement rights for (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 and/or any of the foregoing.
4.3 Assignment of Rights in Certain Assets. Upon the Closing, Seller hereby
sells, assigns, transfers, and conveys to Purchaser all Seller's right, title,
and interest in and to the Abandoned Assets. On or before Closing, Seller will
execute and deliver to Purchaser the Assignment of Certain Rights in the form
set forth in Exhibit C (as may be updated based on Purchaser's review pursuant
to paragraph 3.1).
4.4 License Back to /Blonder Tongue. Upon the Closing, the Purchaser hereby
grants to Blonder Tongue, under the Assigned Patent Rights and Abandoned Assets
included in the Assignment Agreements, and for the lives of all rights granted
by the Assignment Agreements, a royalty-free, non-exclusive, non-sublicensable,
worldwide right and license ("Blonder Tongue License") to practice the methods
and to make, have made by others, use, distribute, lease, sell, offer for sale,
import, export, develop, and otherwise dispose of and exploit any products
covered by those rights ("Covered Products") All Covered Products manufactured
under the Blonder Tongue License must be marked, consistent with the Federal
Trademark Act, 15 U.S.C. Section 1051, et seq., with at least one of Blonder
Tongue's trademarks or brands, although Covered Products may also be marked with
another party's trademarks or brands (i.e., co-branded); provided, however, that
in the event of transfer of the Blonder Tongue License pursuant to one or more
sales of Blonder Tongue's business lines, as provided in paragraph 4.5 below,
the obligation to xxxx with a Blonder Tongue trademark or brand, Covered
Products of any such business line that is sold, will cease as to such business
line and the foregoing obligation will thereafter apply to the trademark or
brand of the acquirer of such business line. The scope of the Blonder Tongue
License shall include the acts of making, using, distributing, leasing, selling,
offering for sale, importing, exporting, developing, and otherwise disposing of
and exploiting Covered Products by authorized agents of Blonder Tongue such as a
distributor, replicator, value-added reseller ("VAR"), or original equipment
manufacturer ("OEM"). The parties understand that Blonder Tongue may sell
Covered Products under its trademarks and brands to an OEM, VAR, or other
product developer, which OEM, VAR, or other product developer may sell products
that include or are based on the Covered Products under its own trademark or
brand-all within the scope of the Blonder Tongue License; provided, however,
that the Blonder Tongue License does not extend to the combination of one or
more Covered Products with another product or to any product combined with one
or more Covered Products. The Blonder Tongue License is nontransferable, by
operation of law or otherwise, except that Blonder Tongue may transfer the
Blonder Tongue License pursuant to one or more sales of Blonder Tongue's
business lines as provided in paragraph 4.5 or upon written authorization of the
Purchaser.
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4.5 Limitation on Transferability of Blonder Tongue License. The Blonder Tongue
License with respect to the respective products of the "Addressable Subscriber
Products", "Subscriber Module Interdiction", "VideoMask Interdiction," "TV
Channel Blocker, and "Addressable Multi-Tap" business lines of Blonder Tongue
(each, a "Related Business Line"), may be transferred only once and only to
purchaser(s) of all or substantially all of the operating assets (other than
cash) of a Related Business Line (a "Permitted Transferee"). In the event of
such a transfer of a Related Business Line (a "Transfer"), the Covered Products
will be limited to the products in the Related Business Line in the Transfer
that had been commercially released by Blonder Tongue prior to the effective
date of such Transfer and the merely incremental differences of such products,
and the Covered Products will not include, and in no event will the Blonder
Tongue License extend to, any other products, processes or services of (x) the
respective Permitted Transferee, (y) any affiliate of such purchaser or
successor, or (z) any other person. Blonder Tongue shall, within thirty (30)
days after a Transfer, provide Purchaser with written notice of such Transfer,
which notice will contain: (i) the effective date of the Transfer, (j) a
description of the transaction through which the Transfer occurred, and (k)
detailed information regarding the respective products, processes and services
of Blonder Tongue being transferred, the Permitted Transferee(s), and the
purchasing entity (if applicable), as of the effective date of the Transfer, and
the Blonder Tongue License will immediately terminate in the event that Blonder
Tongue fails to provide such notice as and when set forth above. A Permitted
Transferee may not transfer the Blonder Tongue License (by operation of law or
otherwise). The Blonder Tongue License will immediately terminate upon any
attempted transfer (by operation of law or otherwise) that is not in strict
conformance with this paragraph 4.5, and any such attempted transfer will be
void.
4.6 Additional License for Further Development. In addition to the license
granted in paragraph 4.4, upon the Closing, the Purchaser hereby grants to
Blonder Tongue non-exclusive rights to the rights transferred in paragraph
4.2(a) and 4.2(b) for the limited purpose of further research and development of
such inventions and discoveries described in the Patents in connection with
Blonder Tongue's business. The license set forth in this paragraph 4.6 is
nontransferable, by operation of law or otherwise, except that the license may
transfer solely to a successor of Blonder Tongue by way of a merger of Blonder
Tongue into another entity.
5. ADDITIONAL OBLIGATIONS
Page 6
5.1 Further Cooperation. At the reasonable request of Purchaser, Seller will
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, without
limitation, 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. To the extent any
attorney-client privilege or the attorney work-product doctrine applies to any
portion of the Prosecution History Files, Seller will ensure that, if any such
portion of the Prosecution History File remains under Seller's possession or
control after Closing, it is not disclosed to any third party unless (a)
disclosure is ordered by a court of competent jurisdiction, after all
appropriate appeals to prevent disclosure have been exhausted, and (b) Seller
gave Purchaser prompt notice upon learning that any third party sought or
intended to seek a court order requiring the disclosure of any such portion of
the Prosecution History File. In addition, Seller will continue to prosecute,
maintain, and defend the Patents at its sole expense until the Closing.
5.2 Payment of Fees. Seller will 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 is payable (e.g.,
the fee payment window opens) on or prior to the Closing even if the surcharge
date or final deadline for payment of such fee 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 (except as otherwise specifically limited
below):
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, without limitation, all right, title, and
interest to xxx for infringement of the Patents. Seller has obtained and
properly recorded previously executed assignments for the Patents 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 will
be transferred to the Purchaser on the Closing Date, 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 (to Seller's best knowledge), 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 Rights.
6.3 Existing Licenses. Except for the nonexclusive license granted to Scientific
Atlanta, Inc., under and pursuant to that certain Asset Purchase Agreement dated
March 1, 1998 by and between Blonder Tongue Laboratories, Inc. and Scientific
Atlanta, Inc. (the "Scientific Atlanta License"), no licenses under the Patents,
Page 7
or interest or rights in any of the Assigned Patent Rights have been granted or
retained. The Scientific Atlanta License is a non-exclusive grant or right, and
such license is nontransferable and may not be sublicensed by Scientific Atlanta
to any person, other than to its controlled subsidiaries.
6.4 Restrictions on Rights. Purchaser will not be subject to any covenant not to
xxx or similar restrictions on its enforcement or enjoyment of the Assigned
Patent Rights or the Abandoned Assets as a result of any prior transaction
related to the Assigned Patent Rights or the Abandoned Assets.
6.5 Validity and Enforceability. None of the Patents or the Abandoned Assets
(other than Abandoned Assets for which abandonment resulted solely from unpaid
fees and/or annuities) has ever been found invalid, unpatentable, 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, unpatentable, or unenforceable. To the extent "small entity" fees were
paid to the United States Patent and Trademark Office for any Patent, such
reduced fees were then appropriate because the payor qualified to pay "small
entity" fees at the time of such payment and specifically had not licensed
rights in the any Patent to an entity that was not a "small entity."
6.6 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.
6.7 Enforcement. Seller has not put a third party on notice of actual or
potential infringement of any of the Patents or the Abandoned Assets. Seller has
not invited any third party to enter into a license under any of the Patents or
the Abandoned Assets. Seller has not initiated any enforcement action with
respect to any of the Patents or the Abandoned Assets.
6.8 Patent Office Proceedings. None of the Patents or the Abandoned Assets has
been or is currently involved in any reexamination, reissue, interference
proceeding, or any similar proceeding, and no such proceedings are pending or
threatened.
6.9 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 any maintenance fees for which the fee is payable (e.g., the
fee payment window opens) even if the surcharge date or final deadline for
payment of such fee would be in the future.
6.10. Abandoned Assets. According to each applicable patent office, each of the
Abandoned Assets has expired, lapsed, or been abandoned or deemed withdrawn.
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:
Page 8
7.1 Purchaser is a limited liability company duly formed, validly existing, and
in good standing under the laws of the jurisdiction 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 BREACH OF ANY OF THE PRIMARY
WARRANTIES BY SELLER OR SELLER'S INTENTIONAL MISREPRESENTATION, SELLER'S TOTAL
LIABILITY UNDER THIS AGREEMENT WILL NOT EXCEED THE PURCHASE PRICE SET FORTH IN
PARAGRAPH 3.4 OF THIS AGREEMENT. PURCHASER'S TOTAL LIABILITY UNDER THIS
AGREEMENT WILL NOT EXCEED THE PURCHASE PRICE SET FORTH IN PARAGRAPH 3.4 OF THIS
AGREEMENT. THE PARTIES ACKNOWLEDGE THAT THE LIMITATIONS ON POTENTIAL LIABILITIES
SET FORTH IN THIS PARAGRAPH 8.1 WERE AN ESSENTIAL ELEMENT IN SETTING
CONSIDERATION UNDER THIS AGREEMENT.
8.2 Limitation on Consequential Damages. EXCEPT IN THE EVENT OF SELLER'S
INTENTIONAL MISREPRESENTATION, NEITHER PARTY WILL 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, MULTIPLIED, PUNITIVE, SPECIAL, OR
EXEMPLARY DAMAGES OR LOSS OF REVENUE, PROFIT, SAVINGS OR BUSINESS ARISING FROM
OR OTHERWISE RELATED TO THIS AGREEMENT, EVEN IF A PARTY OR ITS REPRESENTATIVES
HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THE PARTIES ACKNOWLEDGE
THAT THESE EXCLUSIONS OF POTENTIAL DAMAGES WERE AN ESSENTIAL ELEMENT IN SETTING
CONSIDERATION UNDER THIS AGREEMENT.
8.3 Compliance with Laws. Notwithstanding anything contained in this Agreement
to the contrary, the obligations of the parties with respect to the consummation
of the transactions contemplated by this Agreement 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 will use reasonable efforts to
keep the terms and existence of this Agreement and the identities of the parties
hereto and their affiliates confidential and will 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, without limitation, 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
Page 9
litigating parties; (d) in confidence to its legal counsel, accountants, banks
and financing sources and their advisors solely in connection with complying
with its obligations under this Agreement; (e) by Purchaser, in order to perfect
Purchaser's interest in the Assigned Patent Rights or the Abandoned Assets with
any governmental patent office (including, without limitation, recording the
Executed Assignments in any governmental patent office); or (f) to enforce
Purchaser's right, title, and interest in and to the Assigned Patent Rights or
the Abandoned Assets; provided that, in (b) through (d) above, the disclosing
party will use reasonable best efforts to provide the other party with at least
ten (10) days' prior written notice of such disclosure., provided further,
however that notwithstanding anything herein to the contrary, the parties
acknowledge that Seller is a wholly-owned subsidiary of Blonder Tongue,
Laboratories, Inc., which is a public company and that Blonder Tongue
Laboratories, Inc., will be filing a copy of this agreement in a public XXXXX
filing with the Securities Exchange Commission, pursuant to the Securities
Exchange Act of 1934, and may also discuss this transaction in its periodic
filings and annual report to stockholders, as deemed necessary and material by
Blonder Tongue Laboratories, Inc.'s SEC counsel, as to all of which, no notice
in advance of disclosure need by given. Without limiting the foregoing, Seller
will cause its agents involved in this transaction to abide by the terms of this
paragraph, including, without limitation, 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. Blonder Tongue Laboratories, Inc. may make one
public announcement at or about the time of 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 D. To the extent required
by applicable law Seller and/or Blonder Tongue Laboratories, Inc. will also file
a Form 8-K with regard to the subject matter of each of the foregoing public
announcements. Seller and/or Blonder Tongue Laboratories, Inc. is also
authorized to file this Agreement with the Securities Exchange Commission.
8.6 Governing Law; Venue/Jurisdiction. This Agreement will be interpreted,
construed, and enforced in all respects in accordance with the laws of the State
of Delaware, without reference to its choice of law principles to the contrary.
Seller will not 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 Delaware. Seller 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 will be given in writing (in English or
with an English translation), will refer to Purchaser and to this Agreement and
will be: (i) personally delivered, (ii) delivered postage 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 set forth below:
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If to Purchaser If to Seller
Moonbeam L.L.C. Blonder Tongue Investment Company
103 Springer Building c/o Blonder Tongue Laboratories, Inc.
0000 Xxxxxxxxxx Xxxx One Xxxx Xxxxx Rd.
Wilmington, DE 19801 Xxx Xxxxxx, XX 00000
Attn: Managing Director Attn: Chief Executive Officer
With a copy to:
Xxxxxxxx Ronon Xxxxxxx & Xxxxx, LLP
0000 Xxx Xxxxxxxx Xxxxxx
Xxxxxxxxxxxx, XX 00000
Attn: Xxxx X. Xxxxxxxxx, Esquire
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 U.S. mail. Notice
given in any other manner will 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 change its address for notices under this Agreement by giving the other
party written notice of such change in accordance with this paragraph.
8.8 Relationship of Parties. The parties hereto are independent contractors.
Nothing in this Agreement will be construed to create a partnership, joint
venture, franchise, fiduciary, employment or agency relationship between the
parties. Neither party has any express or implied authority to assume or create
any obligations on behalf of the other or to bind the other to any contract,
agreement or undertaking with any third party.
8.9 Equitable Relief. Seller acknowledges and agrees that damages alone would be
insufficient to compensate Purchaser for a breach by Seller of this Agreement
and that irreparable harm would result from a breach of this Agreement. Seller
hereby 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 will have full force and
effect, and the invalid provision will be modified, or partially enforced, to
the maximum extent permitted to effectuate the original objective.
8.11 Waiver. Failure by either party to enforce any term of this Agreement will
not be deemed a waiver of future enforcement of that or any other term in this
Agreement.
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. Neither of the parties will be
bound by any conditions, definitions, warranties, understandings, or
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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 will not affect in any way the meaning or
interpretation of this Agreement. No oral explanation or oral information by
either party hereto will alter the meaning or interpretation of this Agreement.
No amendments or modifications will be effective unless in a writing signed by
authorized representatives of both parties; provided, however, that, both prior
to and after Closing, Purchaser may update Exhibits A and B to include any
patents or patent applications within the definition of Patents, based on its
review of the Deliverables as defined in paragraph 3.1, by providing updated
Exhibits A and B to Seller. The terms and conditions of this Agreement will
prevail notwithstanding any different, conflicting or additional terms and
conditions that may appear on any letter, email or other communication or other
writing not expressly incorporated into this Agreement. The following exhibits
are attached hereto and incorporated herein: Exhibit A (entitled "Patents to be
Assigned"); Exhibit B (entitled "Assignment of Patent Rights"); Exhibit C
(entitled "Assignment of Rights in Certain Assets") and Exhibit D (entitled
"Press Release Content").
8.13 Counterparts; Electronic Signature; Delivery Mechanics. This Agreement may
be executed in counterparts, each of which will be deemed an original, and all
of which together constitute one and the same instrument. Each party will
execute and promptly deliver to the other party a copy of this Agreement bearing
the original signature. Prior to such delivery, in order to expedite the process
of entering into this Agreement, the parties acknowledge that a Transmitted Copy
of this Agreement will be deemed an original document. "Transmitted Copy" means
a copy bearing a signature of a party that is reproduced or transmitted via
email of a .pdf file, photocopy, facsimile, or other process of complete and
accurate reproduction and transmission.
In witness whereof, intending to be legally bound, the parties have
executed this Patent Purchase Agreement as of the Effective Date.
SELLER: PURCHASER:
BLONDER TONGUE INVESTMENT COMPANY MOONBEAM L.L.C.
By: Xxxxx X. Xxxxxx By: Xxxxx Xxxxxxx
Name: Xxxxx X. Xxxxxx Name: Xxxxx Xxxxxxx
Title: CEO Title: Authorized Representative
Effective Date: September 12, 2006
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