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EXHIBIT 2.1
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ASSET PURCHASE AGREEMENT
BY AND BETWEEN
E-STAMP CORPORATION
AND
▇▇▇▇▇▇.▇▇▇ INC.
AS OF
APRIL 27, 2001
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TABLE OF CONTENTS
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SECTION 1. DEFINITIONS...................................................... 1
(a) "Affiliate"............................................... 1
(b) "Associate"............................................... 1
(c) "Confidential Information"................................ 1
(d) "Closing"................................................. 2
(e) "Closing Date"............................................ 2
(f) "Domain Names"............................................ 2
(g) "E-Stamp Internet Postage Technology"..................... 2
(h) "IBIP" ................................................... 2
(i) "IBIP Open Metering System"............................... 2
(j) "IBIP Vendors" ........................................... 2
(k) "IP Assets"............................................... 2
(l) "Knowledge," "known to".................................. 3
(m) "▇▇▇▇▇▇ Litigation" ...................................... 3
(n) "Loss" or "Losses"........................................ 3
(o) "Material Adverse Change" and "Material Adverse Effect"... 3
(p) "Party" or "Parties"...................................... 3
(q) "Patent Portfolio" ....................................... 3
(r) "Seller's Shipping and Logistics Business"................ 3
(s) "Solvent" ................................................ 4
(t) "Trademarks" ............................................. 4
SECTION 2. SALE OF ASSETS................................................... 4
SECTION 3. CONSIDERATION FOR TRANSFER AND ASSIGNMENT OF THE IP ASSETS....... 4
3.1 Purchase Price. ................................................ 4
SECTION 4. TRANSITION PERIODS; LICENSES BACK TO SELLER...................... 5
4.1 Domain Names IP Addresses. ..................................... 5
4.2 IP License Back.................................................. 5
4.3 Patent Portfolio License Back.................................... 5
SECTION 5. MUTUAL RELEASES; COVENANTS NOT TO ▇▇▇............................ 6
5.1 Mutual Releases. ............................................... 6
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5.2 Seller's Covenant Not to ▇▇▇ Buyer............................... 7
5.3 Buyer's Covenants Not to ▇▇▇ Seller.............................. 7
5.4 Covenants Not Assignable; Termination of Covenants............... 7
SECTION 6. REPRESENTATIONS AND WARRANTIES OF SELLER......................... 8
6.1 Organization and Qualification................................... 8
6.2 Authority Relative to this Agreement............................. 8
6.3 No Conflicts..................................................... 9
6.4 IP Assets........................................................ 9
6.5 No Consent Required.............................................. 10
6.6 Solvency......................................................... 10
6.7 Release of Lien. ............................................... 11
6.8 No Losses. ..................................................... 11
6.9 Neopost Agreement. ............................................. 11
6.10 Disclaimer of Warranties......................................... 11
SECTION 7. REPRESENTATIONS AND WARRANTIES OF BUYER.......................... 11
7.1 Organization and Qualification................................... 11
7.2 Authority Relative to this Agreement............................. 12
7.3 No Conflict...................................................... 12
7.4 No Consent Required.............................................. 12
SECTION 8. COVENANTS OF THE PARTIES......................................... 12
8.1 Aid to Buyer by Seller........................................... 12
8.2 Aid to Buyer by Inventors........................................ 13
8.3 Buyer's Representation by Seller's Intellectual Property Counsel. 13
8.4 No Interference with Domain Names................................ 13
SECTION 9. CONDITIONS TO CLOSING............................................ 13
9.1 Conditions to Obligations of Buyer............................... 13
(a) Representations and Warranties............................ 14
(b) Performance............................................... 14
(c) No Injunctions or Regulatory Restraints; Illegality....... 14
(d) Third Party Consents...................................... 14
(e) No Material Adverse Change................................ 14
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(f) Seller IP Assets............................................ 14
(g) Assignment of Intellectual Property......................... 14
9.2 Conditions to Obligations of Seller................................ 14
(a) Representations and Warranties.............................. 14
(b) Performance................................................. 15
(c) No Injunctions or Regulatory Restraints; Illegality......... 15
SECTION 10. THE CLOSING........................................................ 15
10.1 The Closing........................................................ 15
10.2 Seller Deliveries.................................................. 15
(a) Assignments................................................. 15
(b) Domain Name Transfers....................................... 15
(c) Consents.................................................... 15
(d) Limitation on Documentation................................. 15
10.3 Buyer Delivery..................................................... 15
(a) Consideration............................................... 16
SECTION 11. SURVIVAL OF REPRESENTATIONS, WARRANTIES, COVENANTS AND AGREEMENTS.. 16
SECTION 12. INDEMNIFICATION.................................................... 16
12.1 Agreements to Indemnify............................................ 16
(a) Seller Indemnity............................................ 16
(b) Buyer Indemnity............................................. 16
(c) Indemnification Threshold................................... 17
(d) Subrogation................................................. 17
12.2 Conditions of Indemnification...................................... 17
(a) Notice...................................................... 17
(b) Failure to Assume Defense................................... 17
(c) Claim Adverse to Indemnifying Party......................... 18
(d) Cooperation................................................. 18
(e) Nonassignability............................................ 18
12.3 Remedies........................................................... 18
SECTION 13. ADDITIONAL AGREEMENTS.............................................. 18
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13.1 Confidentiality.................................................. 18
13.2 Press Release.................................................... 19
13.3 ▇▇▇▇▇▇ Litigation................................................ 19
13.4 Payment of Expenses.............................................. 20
13.5 Sales, Transfer and Use Taxes.................................... 20
13.6 Information Relating to Taxes.................................... 20
13.7 Further Assurances............................................... 20
13.8 No Default....................................................... 20
SECTION 14. TERM AND TERMINATION............................................. 21
14.1 Termination of the Agreement..................................... 21
14.2 Insolvency....................................................... 21
14.3 Effect of Termination of the Agreement........................... 22
SECTION 15. GENERAL PROVISIONS............................................... 22
15.1 Amendment and Waiver............................................. 22
15.2 Delays or Omissions.............................................. 22
15.3 Assignment: Binding Upon Successors and Assigns................. 22
15.4 Limitation of Liabilities........................................ 22
15.5 Notices.......................................................... 23
15.6 Incorporation of Schedules and Exhibits.......................... 24
15.7 Affiliates....................................................... 24
15.8 Independent Contractors.......................................... 24
15.9 Captions......................................................... 24
15.10 Severability..................................................... 24
15.11 Governing Law; Exclusive Jurisdiction and Venue.................. 24
15.12 Counterparts..................................................... 24
15.13 Attorneys' Fees.................................................. 25
15.14 Joint Work Product............................................... 25
15.15 No Third Party Beneficiaries..................................... 25
15.16 Further Assurances............................................... 25
15.17 Entire Agreement................................................. 25
15.18 Delivery by Facsimile............................................ 25
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SCHEDULE A Domain Names........................................................ 27
SCHEDULE B IBIP Venders........................................................ 29
SCHEDULE C Patent Portfolio.................................................... 30
SCHEDULE D Trademarks.......................................................... 35
Exhibit A-1 TRADEMARK ASSIGNMENT............................................... 1
Exhibit A-2 PATENT ASSIGNMENT.................................................. 3
Exhibit A-3 DOMAIN NAME ASSIGNMENT............................................. 7
Exhibit A-4 DEED OF ASSIGNMENT................................................. 10
Exhibit A-5 CANADIAN DESIGN REGISTRATION ASSIGNMENT............................ 12
Exhibit A-6 UBERTRAGUNGSERKLARUNG - DECLARATION OF ASSIGNMENT................. 13
Exhibit A-7 ASSIGNMENT......................................................... 15
Exhibit A-8 JAPANESE PATENT ASSIGNMENT......................................... 16
Exhibit A-9 MEXICAN PATENT ASSIGNMENT.......................................... 17
Exhibit A-10 [***]*............................................................ 19
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* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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ASSET PURCHASE AGREEMENT
THIS ASSET PURCHASE AGREEMENT (the "AGREEMENT") is entered into as of
April 27, 2001, by and among E-Stamp Corporation, a Delaware corporation with
its principal place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ as seller and assignor ("SELLER"), in favor of ▇▇▇▇▇▇.▇▇▇ Inc.,
a Delaware corporation with its principal place of business at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, as buyer and assignee
("BUYER").
R E C I T A L S
1. Seller has been engaged in, among other things, the business of
developing and marketing Internet postage products and services and has
announced its intention to withdraw from such business (the "INTERNET POSTAGE
BUSINESS") in order to concentrate on Seller's Shipping and Logistics Business
(defined below), among other things;
2. Buyer is engaged in, among other things, the Internet Postage
Business and desires to acquire Seller's IP Assets (as defined below) related to
the Internet Postage Business on the terms and conditions provided herein and
Seller desires to sell and wholly assign the IP Assets to Buyer on the terms and
conditions provided herein.
Accordingly, in consideration of the foregoing premises and the mutual
covenants and agreements contained herein, the receipt and sufficiency of which
is hereby acknowledged, Buyer and Seller agree as follows:
A G R E E M E N T
SECTION 1. DEFINITIONS.
(a) "AFFILIATE" means any person, partnership, joint venture,
corporation or other form of enterprise, domestic or foreign, including but not
limited to parents and subsidiaries, which now or in the future directly or
indirectly controls, is controlled by, or is under common control with, the
subject Party.
(b) "ASSOCIATE" means, with regard to a particular Party, each of
such Party's present and former directors, officers, employees, agents and
representatives.
(c) "CONFIDENTIAL INFORMATION" means any information disclosed by a
Party hereto (the "DISCLOSING PARTY") to the other Party (the "RECEIVING
PARTY"), either directly or indirectly, in writing, orally or by inspection of
tangible objects (including without limitation documents, prototypes, samples
and equipment), which is designated as "Confidential," "Proprietary" or some
similar designation within five (5) days of its disclosure to the Recipient;
provided, however, that any information that constitutes or relates to the IP
Assets, or that relates to either Party's product and business plans and
strategies, including, without limitation, proposed orders and pricing, shall be
deemed to be Confidential Information, whether or not so designated. Information
communicated orally shall be considered Confidential Information if such
information is designated, in writing, as being confidential or proprietary
within five (5) days after the initial disclosure and, in any event, is reduced
to or summarized in writing and confirmed to Receiving Party as being
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Confidential Information within five (5) days of the initial disclosure (except
that any information relating to the IP Assets, or either Party's product and
business plans and strategies, shall be deemed to be Confidential Information
whether or not so reduced to or summarized in writing); provided however that
Confidential Information shall be limited by the provisions of Section 13.1
herein.
(d) "CLOSING" has the meaning set forth in Section 10.1 hereof.
(e) "CLOSING DATE" has the meaning set forth in Section 10.1 hereof.
(f) "DOMAIN NAMES" means all Internet domain names registered to
Seller that include the sequential letters "stamp," "post" and/or "mail,"
including, without limitation, those domain names listed on SCHEDULE A attached
hereto and also including any and all domain names at issue in the ▇▇▇▇▇▇
Litigation. "Domain Names" shall also be deemed to include (i) all goodwill
associated therewith and inhering therein, (ii) originals of all files,
correspondence and other records relating to or reflecting Seller's registration
of the Domain Names or any and all right and interest therein, (iii) all claims
of Seller against any third parties relating to the Domain Names and all
documentation and records relating to such claims, (iv) any and all intellectual
property and any other proprietary rights associated therewith existing at any
time under the laws of any jurisdiction anywhere in the world, including,
without limitation, any trademark, service ▇▇▇▇, trade name, brand name and/or
copyright rights relating thereto, all registration and pending applications to
register such rights, together with all such rights inhering in or protecting
names and marks derivative of or similar to the Domain Names and the right to
register any of the foregoing anywhere in the world, and (v) any and all rights
of Seller pertaining to the Domain Names arising under its agreements with any
and all domain name registrars, including without limitation Network Solutions,
Inc.
(g) "E-STAMP INTERNET POSTAGE TECHNOLOGY" means Seller's
Internet-based IBIP Open Metering System known as "PC Postage(TM)" as it existed
on December 31, 2000 (the "CURRENT E-STAMP SYSTEM") and each derivative work of
the Current E-Stamp system, created after the Closing Date, that (i) constitute
IBIP Open Metering Systems; and (ii) have substantially similar functionality to
the Current E-Stamp System, including, without limitation, the use of a secure
hardware device, external to a PC, for the storage of postage value.
(h) "IBIP" means the United States Postal Service ("USPS")
Information-Based Indicia Program.
(i) "IBIP OPEN METERING SYSTEM" means any metering system approved
by the USPS that utilizes a general-purpose computer and a general-purpose
printer which are not dedicated solely to the printing of indicia indicating
postage value.
(j) "IBIP VENDORS" means those entities listed on SCHEDULE B, hereto
and any other entities that as of the Closing Date of this Agreement have sought
or received USPS regulatory approval to offer products or services under IBIP.
(k) "IP ASSETS" has the meaning set forth in Section 2 hereof.
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(l) "KNOWLEDGE," "KNOWN TO" and similar phrases mean with regard to
a Party the actual knowledge of the current directors and executive officers of
the Party with regard to the referenced subject matter.
(m) "▇▇▇▇▇▇ LITIGATION" means the action styled E-Stamp Corporation
vs. ▇▇▇▇ ▇▇▇▇▇▇, Case No. CV-99-9287 (GAF)(MANx) pending in the United States
District Court for the Central District of California, including any and all
appeals thereof.
(n) "LOSS" or "LOSSES" means with regard to a particular subject
matter any and all claims, liens, demands, causes of action, obligations,
damages, liabilities, attorneys' fees, costs and expenses, known or unknown or
of any claim, default or assessment.
(o) "MATERIAL ADVERSE CHANGE" and "MATERIAL ADVERSE EFFECT" mean
with regard to the IP Assets any changes that create a material adverse change
in the right, title, value or enforceability of the IP Assets, taken as a whole,
provided, however, that none of the following shall, alone or together,
constitute Material Adverse Changes to or have a Material Adverse Effect on the
IP Assets: (i) non-final office actions by relevant governmental authorities in
applications for US or foreign patents rejecting or objecting to the substance
or form of the application for such patent; and (ii) non-final office actions by
relevant governmental authorities in registration for trademarks rejecting or
objecting to the registration of the marks covered by such applications or
registrations based upon form or substance.
(p) "PARTY" or "PARTIES" means Seller or Buyer, or both, as the case
may be.
(q) "PATENT PORTFOLIO" means all pending or issued patents or patent
applications of Seller pertaining to the Internet Postage Business, including
without limitation all patents and patent applications listed on SCHEDULE C
hereto, all patents issuing thereon and all continuations,
continuations-in-part, divisionals, continuing prosecution applications,
reexaminations, reissues, extensions or foreign counterparts of any of the
foregoing. The "Patent Portfolio" shall further include, without limitation (i)
the right to all causes of action (either in law or in equity) and the right to
▇▇▇, counterclaim, and recover for past, present and future infringement of, the
entire Patent Portfolio and any portion thereof, in the United States and
throughout the world, subject to Section 5 below; and (ii) the right to claim
priority to any patent or application in the Patent Portfolio to the maximum
extent permitted by law; (iii) those inventions of Seller pertaining to the
Internet Postage Business which were disclosed to Fulbright & ▇▇▇▇▇▇▇▇ L.L.P. or
any other patent counsel to Seller on or before the Closing Date; and (iv) any
file histories, research documentation, inventors' notebooks, and invention
disclosure statements related to the patents, patent applications and inventions
set forth in this Section 1(q).
(r) "SELLER'S SHIPPING AND LOGISTICS BUSINESS" means Seller's past,
current and future activities in the areas of supply chain management,
multi-carrier shipping and internal receiving and distribution, including,
without limitation, the following products of Seller: e-Warehouse(TM),
DigitalShipper(TM) Enterprise and e-Receive(TM) Internal Delivery System;
provided, however that Seller's Shipping and Logistics Business expressly
excludes any products, services, and/or technology contained within the Current
E-Stamp System.
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(s) "SOLVENT" means with regard to a Party and on a particular date
that, at fair valuation, the Party's assets are equal to or greater than the sum
of all of the Party's debts on such date, and that the Party is generally paying
such Party's debts as such debts become due unless such debts are the subject of
a bona fide dispute, and "INSOLVENT" shall mean that the foregoing is not true
with regard to a Party on the particular date.
(t) "TRADEMARKS" means the trademarks, service marks, trade names,
brand names, logos, slogans and trade references, in each case whether
registered, under application or otherwise, owned by Seller that include the
sequential letters "stamp," "post" and/or "mail," including without limitation
those described on SCHEDULE D attached hereto, together with (i) any licenses
with respect thereto; (ii) the goodwill and the business appurtenant thereto;
(iii) any rights, claims or chose in action, related to or deriving from any of
the foregoing; and (iv) any file histories, correspondence, application
documents, search reports, documents concerning the prosecution history,
enforcement or maintenance of rights, or restrictions on use, with respect to
the trademarks, service marks, trade names, brand names, logos, slogans and
trade references set forth in this Section 1(t), including without limitation
any such documents with respect to applications or registrations abandoned on or
before the Closing Date.
SECTION 2. SALE OF ASSETS.
Upon the terms and subject to the conditions set forth in this
Agreement, on the Closing Date (as defined below), Seller shall sell, convey,
assign, grant, transfer, set over and deliver to Buyer, free and clear of all
liens, mortgages, pledges, security interests, restrictions on title, prior
assignments and claims of ownership or property interest of every kind, nature
or character ("LIENS"), and Buyer shall purchase, acquire and receive from
Seller, Seller's entire right, title and interest, in and to the Patent
Portfolio, Trademarks and Domain Names (collectively, the "IP ASSETS").
SECTION 3. CONSIDERATION FOR TRANSFER AND ASSIGNMENT OF THE IP ASSETS.
3.1 PURCHASE PRICE. Upon the Closing, in full consideration of the
transfer and assignment of the IP Assets, Buyer shall pay to Seller a one-time
amount of seven million five hundred thousand U.S. dollars ($7,500,000) at
Closing (defined below). Upon such payment to Buyer, Seller shall be deemed to
have irrevocably assigned all IP Assets to Buyer. Except as expressly provided
in this Agreement, Buyer shall have no obligation to pay Seller any further
amounts, royalties or other proceeds or payments in connection with the
ownership, use and exploitation of the IP Assets by Buyer, its Affiliates,
assigns, licensees, customers or any other parties.
(a) Notwithstanding anything else in this Agreement to the contrary,
Buyer shall not assume, pay, perform, or discharge, and Seller shall solely
retain, pay, perform and discharge, all obligations and liabilities of Seller
relating to all Seller's businesses, including but not limited to Seller's
Internet Postage Business, whether disclosed, undisclosed, direct, indirect,
fixed or contingent, known or unknown, incurred in the ordinary course of
business or otherwise. The foregoing shall not affect the obligations of Buyer
pursuant to this Agreement, including but not limited to Buyer's obligations
under Section 13.3.
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SECTION 4. TRANSITION PERIODS; LICENSES BACK TO SELLER.
4.1 DOMAIN NAMES IP ADDRESSES. The Parties acknowledge that Seller may
require a certain transition period after the Closing Date during which the
Seller will require the continued use of the Domain Names "▇-▇▇▇▇▇.▇▇▇" and
"▇▇▇▇▇▇.▇▇▇" currently used by Seller at the time of the Closing and transferred
and assigned to Buyer pursuant to this Agreement. Accordingly, Buyer will retain
for Seller the existing server IP-addresses (or such other server IP-addresses
as Seller shall specify) for the Domain Names "▇-▇▇▇▇▇.▇▇▇" and "▇▇▇▇▇▇.▇▇▇" and
administrative control thereof, solely for the purposes of allowing Seller to
withdraw from the Internet Postage Business, through [***]*. The IP-address
retention granted to Seller in this Section 4.1 shall expire automatically,
without need for action by either Party, on [***]*. The IP-address retention
granted herein shall not be assignable or transferable in any manner, including
by operation of law.
4.2 IP LICENSE BACK. Further, the Parties also acknowledge that Seller
may require a certain, longer transition period after the Closing Date during
which Seller may desire the continued use of the IP Assets, excluding the Domain
Names, currently used by Seller at the time of the Closing and sold and assigned
to Buyer pursuant to this Agreement. Accordingly, effective upon the Closing
Buyer grants to Seller a worldwide, non-exclusive, royalty-free, fully-paid and
limited right and license, with no right of sublicense, in and to the IP Assets,
but excluding the Domain Names, solely for the purposes of allowing Seller to
withdraw from the Internet Postage Business. The license granted in this Section
4.2 shall expire automatically, without need for action by either Party, on
[***]*. For the avoidance of doubt, the Parties acknowledge that the license
granted herein shall not apply to any products developed by Seller after the
Closing Date. The license granted herein shall not be assignable or transferable
in any manner, including by operation of law. Notwithstanding the preceding to
the contrary, (i) Seller shall have the right to use solely for legal and
financial reporting purposes the name E-Stamp Corporation until such time as
Seller obtains the consent of its stockholders to amend Seller's certificate of
incorporation to change its corporate name, provided that Seller shall seek such
stockholder approval when Seller next requests stockholder consideration of any
other proposal, but in no event later than ninety (90) days after the Closing,
and provided, further, that Seller discontinues all use of the Trademark
"E-Stamp" for purposes of marketing and selling Seller's products and services
(other than in connection with the Internet Postage Business as permitted under
this Section 4.2).
4.3 PATENT PORTFOLIO LICENSE BACK. Further, for the sole benefit of a
purchaser of substantially all of the E-Stamp Internet Postage Technology, upon
the express condition that such purchaser is not an IBIP Vendor, effective upon
the Closing Date, Buyer grants to Seller a worldwide, non-exclusive,
royalty-free, fully-paid and limited right and license, with the right of
sublicense but only to end-user purchasers of postage or other services from
such purchaser of substantially all of the E-Stamp Internet Postage Technology
and only to the extent necessary to enable such end-users to utilize the
portions of the E-Stamp Internet Postage Technology required to obtain postage
and utilize such services provided by such purchaser of substantially all of the
E-Stamp Internet Postage Technology, under the patents
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* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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and patent applications included within the Patent Portfolio to make, have made,
use, sell, offer to sell and import E-Stamp Internet Postage Technology solely
for the benefit of such purchaser. The license granted in this Section 4.3 shall
expire automatically, without need for action by any party, on [***]*. The
license granted herein shall not be assignable or transferable in any manner,
including by operation of law, except, as provided above, to a purchaser of
substantially all of the E-Stamp Internet Postage Technology that is not an IBIP
Vendor.
SECTION 5. MUTUAL RELEASES; COVENANTS NOT TO ▇▇▇.
5.1 MUTUAL RELEASES. Upon the Closing and subject to the limitations set
forth in this Section 5.1:
(a) Buyer hereby waives, releases and forever discharges Seller and
each of Seller's Affiliates and Associates from any Losses that Buyer had, has
or may hereafter have related to any act or omission occurring on or before the
Closing Date which relate to any of the IP Assets or any action of Seller,
Seller's Affiliates or Seller's Associates, or any of them, concerning the
operation of the Internet Postage Business, including without limitation any
claim of infringement of any intellectual property right of Buyer.
(b) Seller hereby waives, releases and forever discharges Buyer and
each of Buyer's Affiliates and Associates from any Losses that Seller had, has
or may hereafter have related to any act or omission occurring on or before the
Closing Date which relate to any of the IP Assets or any action of Buyer,
Buyer's Affiliates or Buyer's Associates, or any of them, concerning Buyer's
business operations similar to the Internet Postage Business, including without
limitation any claim of infringement of any intellectual property right of
Seller.
(c) Buyer and Seller each waive the provisions of California Civil
Code Section 1542, set forth below, in connection with this Agreement and
acknowledge that the provisions of Section 1542 do not apply to the releases in
this Section 5.1:
A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR
DOES NOT KNOW OR SUSPECT TO EXIST IN HIS FAVOR AT THE TIME OF
EXECUTING THE RELEASE, WHICH IF KNOWN BY HIM MUST HAVE MATERIALLY
AFFECTED HIS SETTLEMENT WITH THE DEBTOR.
(d) The releases contained in this Section 5.1 shall not apply to
any Losses that Buyer or Seller had, have or hereafter may have which arise from
any other activities except those expressly released in Sections 5.1(a), 5.1(b)
or 5.1(c) and shall not affect the rights and obligations of the Parties under
this Agreement or under any Ancillary Agreement.
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* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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5.2 SELLER'S COVENANT NOT TO ▇▇▇ BUYER.
(a) Seller hereby covenants and agrees that, effective upon the
Closing until the fourth (4th) anniversary of the Closing Date of this
Agreement, it will not ▇▇▇ Buyer for infringement of any patent now or hereafter
owned or controlled by Seller.
(b) The covenant not to ▇▇▇ under Section 5.2(a) shall terminate
immediately, without further action by any Party, if: prior to the expiration of
the covenant made in Section 5.2(a) Buyer initiates, voluntarily joins or
supports any claim raised in any suit, action or proceeding against Seller, in
any forum, that asserts infringement by Seller (or by any other party based on
that party's making, sale, offer for sale, use or importation of Seller's then
products or services) of any patents then owned or controlled by Buyer,
provided, however, (i) that if Buyer is joined involuntarily to such suit,
action or proceeding and defends itself in connection with such joinder, or (ii)
to the extent that Buyer responds to third-party discovery requests promulgated
in such suit, action or proceeding between other litigants, then Buyer shall not
thereby be deemed to have taken action which terminates Seller's covenant not to
▇▇▇ under Section 5.2(a).
5.3 BUYER'S COVENANTS NOT TO ▇▇▇ SELLER.
(a) Buyer hereby covenants and agrees that, effective upon the
Closing until the fourth (4th) anniversary of the Closing Date of this
Agreement, it will not ▇▇▇ Seller for infringement of any patent now or
hereafter owned or controlled by Buyer.
(b) Buyer further covenants and agrees that effective upon the
Closing until the last expiration date of any patent or patent application
contained within the Patent Portfolio, that it will not ▇▇▇ Seller for
infringement of any of such patents or patent applications in connection with
(i) Seller's Shipping and Logistics Business, or (ii) acts of Seller in
connection with the Internet Postage Business through the Closing Date, or (iii)
acts of Seller authorized by Sections 4.1, 4.2 or 4.3 of this Agreement.
(c) The covenants not to ▇▇▇ under Sections 5.3(a) and (b) shall
terminate immediately, without further action by any Party, if: within the
effective time period of the relevant covenant made in Section 5.3(a) or (b)
Seller initiates, voluntarily joins or supports any claim raised in any suit,
action or proceeding against Buyer, in any forum (including opposition,
reexamination, protest or similar proceedings in any patent office), that
asserts infringement by Buyer (or by any other party based on that party's
making, sale, offer for sale, use or importation of Buyer's then products or
services) of any patents owned or controlled by Seller, or contests the
validity, enforceability or infringement of any patent or patent application
contained within the Patent Portfolio, provided, however, (i) that if Seller is
joined involuntarily to a suit, action or proceeding and defends itself in
connection with such joinder or (ii) to the extent that Seller responds to
third-party discovery requests promulgated in a suit, action or proceeding
between other litigants, then Seller shall not thereby be deemed to have taken
action which terminates Buyer's covenant not to ▇▇▇ under Section 5.3(a) or (b).
5.4 COVENANTS NOT ASSIGNABLE; TERMINATION OF COVENANTS.
(a) The covenants contained in Section 5 are personal and shall not
be assignable or transferable in any manner, including by operation of law;
provided, however,
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that the covenant granted to Seller in Section 5.3(b) shall be assignable in the
event of an acquisition, merger reorganization, or sale of all or substantially
all assets (each a "CHANGE OF CONTROL") of Seller to any successor in interest
of Seller that is not an IBIP Vendor at any time prior to or contemporaneous
with such Change of Control.
(b) Except for the agreements in Section 5.1, no covenant contained
in Section 5 shall survive a dissolution, winding up, liquidation, assignment
for the benefit of creditors, a filing seeking reorganization, the appointment
of a receiver or bankruptcy of the recipient of the covenant.
SECTION 6. REPRESENTATIONS AND WARRANTIES OF SELLER.
Seller hereby represents and warrants to Buyer, subject to such
exceptions as are specifically disclosed with respect to specific numbered and
lettered sections and subsections of this Section 6 in the disclosure schedule
and schedule of exceptions (the "SELLER DISCLOSURE SCHEDULE") delivered herewith
and dated as of the date hereof, and numbered with corresponding numbered and
lettered sections and subsections, as follows:
6.1 ORGANIZATION AND QUALIFICATION. Seller is a corporation duly
organized, validly existing and in good standing under the laws of the state of
its incorporation, and has full corporate power and authority to conduct its
business as now conducted and to own, use, license and lease its assets and
properties including the IP Assets. Seller is duly qualified, licensed or
admitted to do business and is in good standing as a foreign corporation in each
jurisdiction in which the ownership, use, licensing or leasing of its assets and
properties including the IP Assets, or the conduct or nature of its business,
makes such qualification, licensing or admission necessary, except for such
failures to be so duly qualified, licensed or admitted and in good standing that
could not reasonably be expected to have a material adverse effect on Seller,
taken as a whole, or the IP Assets.
6.2 AUTHORITY RELATIVE TO THIS AGREEMENT. Seller has full corporate
power and authority to execute and deliver this Agreement and the other
agreements which are attached (or forms of which are attached) as exhibits
hereto (the "ANCILLARY AGREEMENTS") to which Seller is a party, to perform its
obligations hereunder and thereunder and to consummate the transactions
contemplated hereby and thereby. The execution and delivery by Seller of this
Agreement and the Ancillary Agreements to which Seller is a party and the
consummation by Seller of the transactions contemplated hereby and thereby, and
the performance by Seller of its obligations hereunder and thereunder, have been
duly and validly authorized by all necessary action by the board of directors of
Seller, and no other action on the part of the board of directors of Seller is
required to authorize the execution, delivery and performance of this Agreement
and the Ancillary Agreements to which Seller is a party and the consummation by
Seller of the transactions contemplated hereby and thereby. This Agreement and
the Ancillary Agreements to which Seller is a party have been or will be, as
applicable, duly and validly executed and delivered by Seller and, assuming the
due authorization, execution and delivery hereof (and, in the case of the
Ancillary Agreements to which Buyer is a party, thereof) by Buyer, each
constitutes or will constitute, as applicable, a legal, valid and binding
obligation of Seller enforceable against Seller in accordance with its
respective terms, except as the enforceability thereof may be limited by
bankruptcy, insolvency, fraudulent conveyance, reorganization, moratorium or
other similar laws relating to the enforcement of creditors' rights generally
and by general principles of equity.
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6.3 NO CONFLICTS. The execution and delivery by Seller of this Agreement
and any other agreements, instruments and documents to be executed and delivered
by Seller pursuant hereto do not, and the performance and consummation by Seller
of the transactions contemplated hereby and thereby will not, conflict with or
result in any breach or violation of or default, termination, forfeiture or Lien
under (or upon the failure to give notice or the lapse of time, or both, result
in any conflict with, breach or violation of or default, termination, forfeiture
or Lien under) any terms or provisions of Seller's charter documents, each as
amended, or any statute, rule, regulation, judicial or governmental decree,
order or judgment, to which Seller is a party or to which Seller or the IP
Assets are subject.
6.4 IP ASSETS.
(a) Section 6.4(a) of the Seller Disclosure Schedule lists any
proceedings or actions pending as of the date hereof before any court or
tribunal (including the United States Patent and Trademark Office (the "PTO") or
equivalent authority anywhere in the world) related to any of the IP Assets.
(b) Except as set forth in Section 6.4(b)(i) of the Seller
Disclosure Schedule, each patent and patent application included in the IP
Assets is owned exclusively by the Seller. Except as set forth in Section
6.4(b)(ii) of the Seller Disclosure Schedule, each trademark application and
registration included in the IP Assets is owned by Seller, although Seller does
not warrant that it has the exclusive right as against any other users of the
same or similar terms comprising each ▇▇▇▇ either individually or in their
entirety for any or all purposes. Except as set forth in Section 6.4(b)(iii) of
the Seller Disclosure Schedule, all Domain Names are registered to Seller. In
each case, except as set forth in Section 6.4(b)(iv) of the Seller Disclosure
Schedule, such IP Assets are free and clear of all Liens. Seller has no
knowledge of any third-party asserting common law rights or any other rights to
use in any of the Trademarks.
(c) With respect to inventions within the Patent Portfolio that are
not, as of the Closing Date, the subject of pending patent applications or
issued patents, Seller has not sold, offered for sale or publicly disclosed such
inventions. Except as set forth in Section 6.4(c) of the Seller Disclosure
Schedule, with regard to any IP Assets that are registered with or for which an
application for registration has been filed with any governmental entity or
domain name registrar as of the Closing Date, all necessary registration fees,
maintenance fees, renewal fees, annuity fees and taxes due as of the Closing
Date in connection with such IP Assets have been paid and all necessary
documents and certificates in connection with such IP Assets have been filed
with the relevant patent, copyright, trademark, domain name registrars or other
authorities in the United States or foreign jurisdictions, as the case may be,
for the purposes of prosecuting and/or maintaining the registration or
application for registration of such IP Assets.
(d) Section 6.4(d) of the Seller Disclosure Schedule contains a true
and complete list of all contracts and licenses (including all inbound licenses)
in effect as of the Closing Date to which the Seller is a party with respect to
any of the IP Assets ("the CONTRACTS") (true and complete copies of which, or,
if none exist, reasonably complete and accurate written descriptions of which,
together with all amendments and supplements thereto and all waivers of any
terms thereof, have been provided to Buyer prior to the execution of this
Agreement). Except as set forth in Section 6.4(d) of the Seller Disclosure
Schedule, there are no Contracts granting any rights to any third party with
respect to any of
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the IP Assets. To Seller's knowledge, there are no Contracts under which there
is any dispute, or facts that may reasonably lead to a dispute, regarding the
scope of such Contract or performance thereunder, including with respect to any
payments to be made or received by the Seller thereunder.
(e) Except pursuant to the claims described in Section 6.4(e) of the
Seller Disclosure Schedule, Seller has not received notice from any person
claiming that any of the IP Assets infringe or misappropriate the intellectual
property of any person or constitutes unfair competition or trade practices
under any law, including notice of third party patent or other intellectual
property rights from a potential licensor of such rights.
(f) To Seller's knowledge, each patent disclosed in the Patent
Portfolio is valid and enforceable, and, to Seller's knowledge, Seller and
Seller's attorneys have not committed inequitable conduct or otherwise violated
the rule of any patent office during the prosecution of any of the patents or
patent applications contained within the Patent Portfolio.
(g) Neither this Agreement nor any transactions contemplated by this
Agreement will result in Buyer's granting any rights or licenses with respect to
the intellectual property of Buyer to any person pursuant to any contract to
which the Seller is a party or by which any of its IP Assets are bound.
(h) Except for [***]*, the Seller has secured written assignments
from all founders, consultants and employees who are named as inventors on
patents and patent applications in the Patent Portfolio. Except for [***]*, the
Seller has secured written agreements (true and complete copies of which have
been provided to Buyer prior to the execution of this Agreement) from each
founder, consultant and employee who is named as an inventor on the patents in
the Patent Portfolio obligating such person to assist in the prosecution of such
Patents.
6.5 NO CONSENT REQUIRED. Except as set forth on Section 6.5 of the
Seller Disclosure Schedule, no consent, authorization, approval, order, license,
certificate or permit or act of or from, or declaration or filing with, any
foreign, federal, state, local or other governmental authority or regulatory
body or any court or other tribunal to which Seller or the IP Assets are subject
is required for the execution, delivery or performance by Seller of this
Agreement or any of the other agreements, instruments and documents being or to
be executed and delivered hereunder or in connection herewith or for the
consummation of the transactions contemplated hereby or thereby, other than
governmental filings with US and foreign authorities which are necessary to
effect the recordation of transfer as provided for herein of the IP Assets.
6.6 SOLVENCY.
(a) Seller is and will be Solvent as of the Closing Date and the
transactions contemplated by this Agreement will not render Seller Insolvent;
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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(b) As of the Closing Date, Seller is not engaged in business or
transactions, and is not about to engage in business or transactions, for which
any property remaining with Seller immediately after the Closing is an
unreasonably small capital to engage in such business or transactions;
(c) By entering into the transactions contemplated by this Agreement
Seller does not intend to incur, and does not believe that it will incur, debts
that will be beyond Seller's ability to pay as such debts mature; and
(d) Seller is not entering into the transactions contemplated by
this Agreement or incurring any obligation pursuant to this Agreement with the
intent to hinder, delay, or defraud any creditor to which Seller is indebted on
the Closing Date or any creditor to which Seller may become indebted after the
Closing Date.
6.7 RELEASE OF LIEN. As of the Closing, Seller shall have taken all
actions necessary to secure the release of any and all IP Assets from the
TransAmerica Lien (as described in Section 6.4(b)(iv) of the Seller Disclosure
Schedule), including without limitation the filing of all necessary forms and
documents with the California Secretary of State and the United States Patent
and Trademark Office.
6.8 NO LOSSES. Seller agrees that Buyer shall not incur, and that
pursuant to Section 12.1 hereof Seller shall indemnify Buyer for, any Losses
resulting from any claim by or on behalf of Francotyp Postalia or its successors
or assigns in connection with the matters set forth in Section 6.4(d) of the
Seller Disclosure Schedule.
6.9 NEOPOST AGREEMENT. Seller and Neopost have entered into that certain
[***]* Agreement, dated as of [***]*, referenced in Section 6.4(d) of the Seller
Disclosure Schedule ("NEOPOST AGREEMENT"). Due to confidentiality obligations
imposed upon Seller, Seller has provided Buyer with a redacted version of the
Neopost Agreement. The redacted portions of the Neopost Agreement do not have
any material effect on the IP Assets or the transactions contemplated by this
Agreement.
6.10 DISCLAIMER OF WARRANTIES. Except as set forth in this Section 6,
Seller hereby disclaims any express or implied warranties with any assigned
rights hereunder.
SECTION 7. REPRESENTATIONS AND WARRANTIES OF BUYER.
Buyer hereby represents and warrants to Seller, as follows:
7.1 ORGANIZATION AND QUALIFICATION. Buyer is a corporation duly
organized, validly existing and in good standing under the laws of the State of
Delaware. Buyer has full corporate power and authority to conduct its business
as now conducted and to own, use and lease its assets and properties. Buyer is
duly qualified, licensed or admitted to do business and is in good standing in
each jurisdiction in which the ownership, use, licensing or leasing of its
assets and properties, or the conduct or nature of its business, makes such
qualification, licensing or admission necessary, except for such failures to be
so duly
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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qualified, licensed or admitted and in good standing that could not reasonably
be expected to have a material adverse effect on the business or condition of
Buyer or on the IP Assets.
7.2 AUTHORITY RELATIVE TO THIS AGREEMENT. Buyer has full corporate power
and authority to execute and deliver this Agreement and the Ancillary Agreements
to which it is a party, to perform its obligations hereunder and thereunder and
to consummate the transactions contemplated hereby and thereby. The execution
and delivery by Buyer of this Agreement and the Ancillary Agreements to which it
is a party and the consummation by Buyer of the transactions contemplated hereby
and thereby have been duly and validly authorized by all necessary action by the
board of directors of Buyer, and no other action on the part of the board of
directors of Buyer is required to authorize the execution, delivery and
performance of this Agreement and the Ancillary Agreements to which it is a
party and the consummation by Buyer of the transactions contemplated hereby and
thereby. This Agreement and the Ancillary Agreements to which Buyer is a party
have been or will be, as applicable, duly and validly executed and delivered by
Buyer and, assuming the due authorization, execution and delivery hereof by the
Seller and/or the other parties thereto, constitutes or will constitute, as
applicable, a legal, valid and binding obligation of Buyer enforceable against
Buyer in accordance with its respective terms, except as the enforceability
thereof may be limited by bankruptcy, insolvency, fraudulent conveyance,
reorganization, moratorium or other similar laws relating to the enforcement of
creditors' rights generally and by general principles of equity.
7.3 NO CONFLICT. The execution and delivery by Buyer of this Agreement
and any other agreements, instruments and documents to be executed and delivered
by Buyer pursuant hereto do not, and the performance and consummation by Buyer
of the transactions contemplated hereby and thereby will not, conflict with or
result in any breach or violation of or default, termination, forfeiture or Lien
under (or upon the failure to give notice or the lapse of time, or both, result
in any conflict with, breach or violation of or default, termination, forfeiture
or Lien under) any terms or provisions of (i) Buyer's charter documents, each as
amended, or (ii) any statute, rule, regulation, judicial or governmental decree,
order or judgment, or (iii) any agreement, lease or other instrument to which
Buyer is a party or to which Buyer or its assets are subject that, in the case
of clauses (ii) or (iii), has or is likely to have a material adverse effect on
the business, assets, operations or financial condition of Buyer.
7.4 NO CONSENT REQUIRED. No consent, authorization, approval, order,
license, certificate or permit or act of or from, or declaration or filing with,
any foreign, federal, state, local or other governmental authority or regulatory
body or any court or other tribunal or any party to any contract, agreement,
instrument, lease or license to which Buyer is a party or to which Buyer or its
assets are subject that has or is likely to have a material adverse effect on
the business, assets, operations or financial condition of Buyer, is required
for the execution, delivery or performance by Buyer of this Agreement or any of
the other agreements, instruments and documents being or to be executed and
delivered hereunder or in connection herewith or for the consummation of the
transactions contemplated hereby.
SECTION 8. COVENANTS OF THE PARTIES.
8.1 AID TO BUYER BY SELLER. Seller covenants and agrees that, at Buyer's
request, Seller shall instruct its then current officers, employees and other
individuals under its direction or control, without further consideration, to
communicate to Buyer any facts
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known to it respecting the IP Assets, and shall authorize and request by a
separate short-form document executed by Seller that the Commissioner of Patents
and Trademarks of the United States and any official of any foreign country
whose duty it is to issue patents on applications as described above, to issue
all Letters Patent for the Patent Portfolio to Buyer, in accordance with the
terms of this Agreement. Seller further covenants and agrees that, at Buyer's
request, it shall instruct its then current officers, employees and other
individuals under its direction and control to testify in any and all legal
proceedings, sign all lawful papers when called upon to do so, execute and
deliver any and all papers that may be necessary or desirable to prosecute,
defend and perfect the title to the IP Assets in said Buyer, execute all
continuation and reissue applications, make all rightful oaths and generally do
everything reasonably possible to aid Buyer to obtain and enforce proper
protection for the IP Assets in the United States and any foreign country;
provided, however that any expense incident to the execution of the foregoing
shall be borne by Buyer. For the avoidance of doubt, from and after the Closing
Date, Buyer shall be solely responsible for all expenses generally related to
(i) prosecuting or defending any claims or matters before the PTO and any
governmental agency or entity which is a domain name registrar regarding the
application, extension or continuation for any patent, trademark, domain name or
other IP Asset to be transferred to Buyer hereunder; and (ii) maintenance fees,
patent fees, trademark fees, registration fees, taxes, annuities and similar
fees with regard to any of the IP Assets.
8.2 AID TO BUYER BY INVENTORS. Seller further covenants and agrees that
it will, at Buyer's written request, enforce such rights as Seller may have
under written agreements with individuals listed as inventors of any invention
disclosed in the Patent Portfolio (with the sole exception of [***]*) for
purposes of causing such inventors to assist in the prosecution and enforcement
of the IP Assets pursuant to the terms of such written agreements, provided that
Buyer indemnifies Seller against all Losses incurred by Seller in connection
therewith.
8.3 BUYER'S REPRESENTATION BY SELLER'S INTELLECTUAL PROPERTY COUNSEL.
[***]*
8.4 NO INTERFERENCE WITH DOMAIN NAMES. Seller further covenants and
agrees that it will not interfere with or obstruct in any manner whatsoever
Buyer's change of the IP-addresses, or any other use of or changes to the
technical or other information pertaining to the Domain Names "▇▇▇▇▇▇.▇▇▇" and
"▇-▇▇▇▇▇.▇▇▇" after [***]*.
SECTION 9. CONDITIONS TO CLOSING.
9.1 CONDITIONS TO OBLIGATIONS OF BUYER. The obligations of Buyer to
consummate the transactions contemplated by this Agreement shall be subject to
the satisfaction at or prior to the Closing of each of the following conditions,
any of which may be waived, in writing, exclusively by Buyer:
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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(a) REPRESENTATIONS AND WARRANTIES. Each of the representations and
warranties made by Seller in this Agreement shall be true and correct in all
material respects (if not qualified by materiality) and in all respects (if
qualified by materiality) when made and on and as of the Closing Date as though
such representation or warranty was made on and as of the Closing Date.
(b) PERFORMANCE. Seller shall have performed and complied with in
all material respects, each agreement, covenant and obligation required by this
Agreement to be so performed or complied with by Seller at or before the
Closing.
(c) NO INJUNCTIONS OR REGULATORY RESTRAINTS; ILLEGALITY. No court of
competent jurisdiction shall have issued any temporary restraining order,
preliminary or permanent injunction or other order blocking the Closing or the
transactions contemplated hereby, nor shall any governmental or regulatory
authority have taken any similar action; nor shall there be by any governmental
authority any action taken, or any law or order enacted, entered, enforced or
deemed applicable to the transactions contemplated by the terms of this
Agreement.
(d) THIRD PARTY CONSENTS. Buyer shall have been furnished with
evidence reasonably satisfactory to it that Seller has obtained any approvals
and waivers and all other consents reasonably deemed necessary by Buyer to
effect transfer of title to the IP Assets and record such transfer (except for
such consents, approvals and waivers the failure of which to receive
individually or in the aggregate could not reasonably be expected to have a
Material Adverse Effect on Buyer).
(e) NO MATERIAL ADVERSE CHANGE. There shall have occurred no
Material Adverse Change in the IP Assets since the date hereof.
(f) SELLER IP ASSETS. Subject to the provisions of Section 6.4(e) of
the Seller Disclosure Schedule, no person shall have (i) commenced, or shall
have notified either Party to this Agreement that it intends to commence, any
action or proceeding or (ii) provided Seller with notice, in either case which
allege(s) that any of the IP Assets infringe or otherwise violate the
intellectual property rights of such person, is available for licensing from a
potential licensor providing the notice or otherwise alleges that Seller does
not otherwise own or have the right to exploit the IP Assets, unless such person
shall have withdrawn such notice and abandoned any such action or proceeding
prior to the time which otherwise would have been the Closing Date.
(g) ASSIGNMENT OF INTELLECTUAL PROPERTY. Buyer shall have received
evidence reasonably satisfactory of transfer to Buyer of the IP Assets as
provided in Sections 10.2(a) and 10.2(b).
9.2 CONDITIONS TO OBLIGATIONS OF SELLER. The obligations of Seller to
consummate the transactions contemplated by this Agreement shall be subject to
the satisfaction at or prior to the Closing Date of each of the following
conditions, any of which may be waived, in writing, exclusively by Seller:
(a) REPRESENTATIONS AND WARRANTIES. Each of the representations and
warranties made by Buyer in this Agreement shall be true and correct in all
material respects (if not qualified by materiality) and in all respects (if
qualified by materiality) when made
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and on and as of the Closing Date as though such representation or warranty was
made on and as of the Closing Date.
(b) PERFORMANCE. Buyer shall have performed and complied with in all
material respects, each agreement, covenant and obligation required by this
Agreement to be so performed or complied with by Buyer at or before the Closing
Date.
(c) NO INJUNCTIONS OR REGULATORY RESTRAINTS; ILLEGALITY. No court of
competent jurisdiction shall have issued any temporary restraining order,
preliminary or permanent injunction or other order blocking the Closing or the
transactions contemplated hereby, nor shall any governmental or regulatory
authority have taken any similar action; nor shall there be by any governmental
authority any action taken, or any law or order enacted, entered, enforced or
deemed applicable to the transactions contemplated by the terms of this
Agreement.
SECTION 10. THE CLOSING.
10.1 THE CLOSING. The closing of the transactions contemplated hereby
(the "CLOSING") shall be held at the offices of Irell & ▇▇▇▇▇▇▇ LLP, Suite 900,
1800 Avenue of the Stars, Los Angeles, California at 11:00 a.m. Pacific Time on
April 27, 2001 or such other place, time and date as Buyer and Seller may
mutually select. The time and date on which the Closing is actually held is
referred to herein as the "CLOSING DATE."
10.2 SELLER DELIVERIES. At the Closing, Seller shall deliver to Buyer
the following:
(a) ASSIGNMENTS. Assignments with respect to the IP Assets in the
forms attached as EXHIBITS ▇-▇, ▇-▇, ▇-▇, ▇-▇, ▇-▇, ▇-▇, ▇-▇, ▇-▇, ▇-▇ and
other recordable instruments of assignment, transfer and conveyance, in form and
substance reasonably satisfactory to Buyer and its counsel, as shall be
effective to vest in Buyer all of the right, title and interest of Seller in and
to the IP Assets free and clear of all Liens.
(b) DOMAIN NAME TRANSFERS. Executed domain name transfer and
assignment agreements relating to the Domain Names (including all necessary
Network Solutions, Inc. or any other registrar assignment and transfer forms) in
form and substance satisfactory to Buyer and its counsel, as shall be effective
to vest in Buyer any and all right and interest of Seller in and to the Domain
Names free and clear of all Liens.
(c) CONSENTS. The third party consents contemplated by Section
9.1(d).
(d) LIMITATION ON DOCUMENTATION. With regard to the documentation of
Seller described in Sections 1(q)(iv) and 1(t)(iv), Seller shall be obligated to
deliver to Buyer only that documentation which, at the Closing, remains in
Seller's possession or control, and subject to Seller's obligations under
Sections 8.1, 8.2 and 13.7 of this Agreement, Seller shall have no obligation to
take any measures to recover from any third person, including former employees
of or consultants to Seller, any such documentation which may be in such third
person's possession either before or after the Closing.
10.3 BUYER DELIVERY. At the Closing, Buyer shall deliver to Seller the
following:
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(a) CONSIDERATION. The cash consideration contemplated by Section 3,
by wire transfer to an account as specified by Seller; provided that such wire
transfer shall be initiated only upon Buyer's receipt of all documents specified
in Section 10.2 and as otherwise specified in the Agreement.
SECTION 11. SURVIVAL OF REPRESENTATIONS, WARRANTIES, COVENANTS AND AGREEMENTS.
Notwithstanding any waiver by Buyer or Seller of any condition to
Closing set forth in Section 9, each Party shall have the right to rely fully
upon the representations, warranties, covenants and agreements of the other
Party contained in this Agreement or in any instrument delivered pursuant to
this Agreement. All of the representations, warranties, covenants and agreements
of Buyer and Seller contained in this Agreement or in any instrument delivered
pursuant to this Agreement shall survive the Closing for a period of three
years, provided, however, that if Buyer, before the third anniversary of the
Closing, consummates a Merger with an IBIP Vendor or assigns its rights under
this Agreement to an IBIP Vendor, then the representations and warranties of
Seller under this Agreement shall expire as of immediately prior to such
consummation or assignment. For the purposes of this Agreement, the term
"MERGER" means (i) any merger, consolidation or business combination of Buyer
with any other corporation or business entity after which the stockholders of
Buyer immediately before such transaction own, immediately after the
consummation of such transaction, less than 50% of the equity interests in the
surviving entity; or (ii) any sale of all or substantially all of the assets of
Buyer in one or a series of related transactions. The date on which
representations and warranties of a Party expire hereunder shall be referred to
as that Party's "CLAIMS BAR DATE."
SECTION 12. INDEMNIFICATION.
12.1 AGREEMENTS TO INDEMNIFY.
(a) SELLER INDEMNITY. Subject to the terms and conditions of this
Section 12 and Section 15.4, Seller hereby agrees to indemnify, defend and hold
Buyer and Buyer's employees, directors, officers and agents (Buyer and such
other persons as indemnitees under Section 12, each an "Indemnified Party")
harmless from and against any and all Losses suffered, sustained, incurred or
required to be paid at any time by any of them, in each case, to the extent such
Loss results from (i) the inaccuracy or breach of any representation, warranty,
covenant or agreement of Seller made in this Agreement; (ii) any claim by any
third party against Buyer based upon acts or omissions of Seller in connection
with the Internet Postage Business; (iii) the TransAmerica Lien (as described in
Section 6.4(b)(iv) of the Seller Disclosure Schedule); or (iv) any claim by or
on behalf of Francotyp Postalia or its successors or assigns in connection with
the matters set forth in Section 6.4(d) of the Seller Disclosure Schedule.
Seller, as an indemnitor under this Section 12, shall be referred to as an
"Indemnifying Party."
(b) BUYER INDEMNITY. Subject to the terms and conditions of this
Section 12 and Section 15.4, Buyer hereby agrees to indemnify, defend and hold
Seller and its employees, directors, officers and agents (Seller and such other
persons as indemnitees under Section 12, each an "Indemnified Party") harmless
from and against all Losses suffered, sustained, incurred or required to be paid
by any of them, in each case, to the extent such Loss results from the
inaccuracy or breach of any representation, warranty,
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covenant or agreement of Buyer made in this Agreement. Buyer, as an indemnitor
under this Section 12, shall be referred to as an "Indemnifying Party."
(c) INDEMNIFICATION THRESHOLD. No claim for indemnification will be
made by either Party hereunder unless the aggregate of all Losses incurred by
such Party otherwise indemnified against hereunder exceeds [***]*, at which such
time claims may be made for all Losses incurred or sustained.
(d) SUBROGATION. Subject to Section 12.2(e), if the Indemnifying
Party makes any payment under this Section 12 in respect of any Losses, the
Indemnifying Party shall be subrogated, to the extent of such payment, to the
rights of the Indemnified Party against any insurer or third party with respect
to such Losses; provided, however, that the Indemnifying Party shall not have
any rights of subrogation with respect to the other Party hereto or any of its
Affiliates or any of its Affiliates' officers, directors, agents or employees.
In the event that the Indemnifying Party has or acquires subrogation rights
under this Section 12.1(d), the Indemnified Party (i) shall assist the
Indemnifying Party as reasonably necessary to secure such rights, and (ii)
subject to the Indemnified Party's rights under Section 12.2(b) and the
Indemnifying Party's rights under Section 12.2(c), in each case, regarding
defense and settlement of indemnity claims, shall do nothing to prejudice such
subrogation rights.
12.2 CONDITIONS OF INDEMNIFICATION. The respective obligations and
liabilities of the Indemnifying Party to the Indemnified Party under Section
12.1 shall be subject to the following terms and conditions:
(a) NOTICE. Within 15 days after receipt of notice of commencement
of any action or the assertion of any claim by a third party (but in any event
at least ten days preceding the date on which an answer or other pleading must
be served in order to prevent a judgment by default in favor of the party
asserting the claim), the Indemnified Party shall give the Indemnifying Party
written notice thereof together with a copy of such claim, process or other
legal pleading, and the Indemnifying Party shall have the right to undertake the
defense thereof by representatives of its own choosing that are reasonably
satisfactory to the Indemnified Party. Notwithstanding any other provision of
this Agreement, no claim for indemnification under this Agreement may be noticed
or first asserted against any Indemnifying Party after the passage of such
Indemnifying Party's Claims Bar Date.
(b) FAILURE TO ASSUME DEFENSE. If the Indemnifying Party, by the
fifteenth day after receipt of notice of any such claim (or, if earlier, by the
fifth day preceding the day on which an answer or other pleading must be served
in order to prevent judgment by default in favor of the person asserting such
claim), does not elect to defend against such claim, the Indemnified Party will
(upon further notice to the Indemnifying Party) have the right to undertake the
defense, compromise or settlement of such claim on behalf of and for the account
and risk of the Indemnifying Party; provided, however, that the Indemnified
Party shall not settle or compromise such claim without the Indemnifying Party's
consent, which consent shall not be unreasonably withheld; and provided further
that,
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
-17-
24
the Indemnifying Party shall have the right to assume the defense of such claim
with counsel of its own choosing at any time prior to settlement, compromise or
final determination thereof.
(c) CLAIM ADVERSE TO INDEMNIFYING PARTY. Notwithstanding anything to
the contrary in this Section 12.2, if there is a reasonable probability that a
claim may materially adversely affect the Indemnifying Party other than as a
result of money damages or other money payments, the Indemnifying Party shall
have the right, at its own cost and expense, to compromise or settle such claim,
but the Indemnifying Party shall not, without the prior written consent of the
Indemnified Party which will not be unreasonably withheld, settle or compromise
any claim or consent to the entry of any judgment which does not include as an
unconditional term thereof the giving by the claimant or the plaintiff to the
Indemnified Party a release from all liability in respect of such claim.
(d) COOPERATION. In connection with any such indemnification, the
Indemnified Party will cooperate in all reasonable requests of the Indemnifying
Party.
(e) NONASSIGNABILITY. Notwithstanding any other provision of this
Agreement, no claim for indemnification for Losses under this Section 12 may be
assigned by any Indemnified Party hereunder to any IBIP Vendor, whether by sale,
assignment or otherwise, whether through voluntary or involuntary transfer or
transfer by operation of law or otherwise, and any attempt to sell, assign or
transfer such claim for indemnification under this Agreement to any IBIP Vendor
shall render such claim null and void and discharge the Indemnifying Parties
from any liability to the Indemnified Parties thereon.
12.3 REMEDIES. Subject to Section 15.4, no remedy conferred on Buyer or
Seller by any of the specific provisions of this Agreement is intended to be
exclusive of any other remedy, and each and every remedy shall be cumulative and
shall be in addition to every other remedy given hereunder or now or hereafter
existing at law or in equity or by statute or otherwise. The election of one or
more remedies by Buyer or Seller shall not constitute a waiver of the right to
pursue other available remedies.
SECTION 13. ADDITIONAL AGREEMENTS.
13.1 CONFIDENTIALITY. From the effective date of this Agreement, the
Receiving Party shall hold in confidence and use its reasonable efforts to have
all of its employees, agents, representatives and Affiliates hold in confidence
this Agreement, all Confidential Information and all related documents and other
written material containing information of a confidential nature (including, but
not limited to, all intellectual property contained in the IP Assets) of the
Disclosing Party, and, except as contemplated by this Agreement, shall not
disclose, publish, use or permit others to use the same. Following the Closing,
Buyer shall be deemed the Disclosing Party and Seller the Receiving Party, with
respect to all Confidential Information contained in and sold to Buyer as part
of the IP Assets. Seller shall not disclose, publish, use or permit others to
use Confidential Information directly related to the IP Assets that is not
contained in and sold to Buyer as part of the IP Assets (the "Retained
Confidential Information") without the prior written consent of Buyer, which
shall not be unreasonably withheld. Notwithstanding the foregoing and without
requiring Buyer's consent, Seller may (i) disclose, publish, use and permit
others to use any or all of the Retained Confidential Information solely as
reasonably required for Seller to exercise its license rights under Section 4.2
and to sell the E-Stamp Internet Postage Technology to a
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purchaser as permitted under Section 4.3, and such purchaser may disclose,
publish, use and permit others to use any or all of the Retained Confidential
Information solely as reasonably required to exercise the license rights granted
in Section 4.3 and (ii) sell or assign the source code from its computer
software programs [***]* included in the E-Stamp Internet Postage Technology
free of any confidentiality restrictions and permit the assignee access to all
documentation containing Retained Confidential Information which are related
specifically to such software. The restrictions set forth in this Section 13.1
shall not apply to any of the foregoing information (and such information shall
not be deemed "Confidential Information") which:
(a) becomes generally available to the public in any manner or form
through no fault of the Receiving Party, or its Associates;
(b) is disclosed as required by a court or a governmental agency,
the rules and regulations of the securities exchange or trading market on which
the Receiving Party's securities are listed or admitted to trading and the rules
and regulation of the National Association of Securities Dealers, provided that
the Receiving Party shall provide the Disclosing Party with advanced written
notice of such disclosure as soon as practicable and with the opportunity to
review and challenge such disclosure, and further provided that the Receiving
Party shall seek confidential treatment of such disclosure when allowed and
shall allow the Disclosing Party to initially select portions of such disclosure
for redaction when allowed.
(c) Notwithstanding anything to the contrary herein, the Parties
acknowledge and agree that Buyer shall file such notices or registration with
the United States Patent and Trademark Office and such other offices throughout
the world as are necessary to perfect the assignments to the IP Assets granted
to Buyer pursuant to this Agreement as Buyer sees fit through a separate short
form document. Seller agrees to sign or otherwise execute all such documents.
13.2 PRESS RELEASE. Buyer shall provide Seller with at least one (1)
business day advance notice prior to the issuance of the first press release
disclosing the acquisition of the IP Assets ("PRESS RELEASE") and shall further
send to Seller by e-mail an advance copy of such press release at least three
hours of such press release being finalized. Seller shall have no objection
rights to such press release. Seller may issue a press release of similar nature
following the issuance of Buyer's press release, but shall not issue a press
release or otherwise notify any person or entity of this Agreement or the
transactions contemplated hereby prior to such event. Notwithstanding any other
provision of this Agreement, Buyer shall issue the Press Release before the
commencement of extended hours trading on Monday May 7, 2001, and if Buyer fails
to do so, Seller may announce the execution of this Agreement and the
transactions contemplated hereby in any report or registration statement filed
with the Securities and Exchange Commission.
13.3 ▇▇▇▇▇▇ LITIGATION. Seller shall cooperate with Buyer and take all
actions as reasonably necessary to transfer and assign to Buyer all benefits and
burdens inuring to
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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Seller pertaining to the ▇▇▇▇▇▇ Litigation, provided that Buyer indemnifies
Seller against all Losses incurred by Seller in connection therewith.
13.4 PAYMENT OF EXPENSES. Whether or not the transactions contemplated
by this Agreement are consummated and, except as otherwise may be expressly
provided herein, each Party shall pay its own fees, expenses and disbursements
and those of its respective agents, representatives, consultants, accountants
and counsel incurred in connection with this Agreement and all other costs and
expenses incurred in the performance and compliance with all conditions to be
performed by such Party under this Agreement.
13.5 SALES, TRANSFER AND USE TAXES. Seller shall pay all sales, transfer
and use taxes arising out of the transfer of the IP Assets.
13.6 INFORMATION RELATING TO TAXES. Seller shall furnish to Buyer from
time to time after the Closing Date any information reasonably requested by
Buyer which is in the possession of or reasonably available to Seller to permit
Buyer: (i) to file on a timely basis its federal income tax returns and its
estimated federal income tax returns and any other tax returns which may be
required by any federal, state, local or foreign tax authority, and (ii) to
comply with orders issued by any federal, state, local or foreign governmental
authority.
13.7 FURTHER ASSURANCES. Seller agrees to cooperate fully with Buyer and
to execute such further instruments, documents and agreements and to take such
actions as may be reasonably requested by Buyer to evidence and reflect the
rights granted herein and contemplated hereby, and to carry into effect the
intents and purposes of this Agreement. Specifically, Seller will execute and
deliver all documents and instruments and take such other actions as Buyer may
deem necessary in order to document, obtain, maintain, assign, record, make or
prosecute domestic or foreign applications for patents, trademarks, domain names
or other related intellectual property protection of the IP Assets, including
without limitation a short-form assignment with respect to any of the IP Assets
for recordation with the U.S. Patent and Trademark Office, the necessary Network
Solutions, Inc. "Registrant Name Change Agreements" pertaining to the Domain
Names (and in the event that Network Solutions, Inc. identifies any error in any
Registrant Name Change Agreement, Seller shall promptly notify Buyer of the
error and rejection by Network Solutions, Inc., and shall complete, execute,
properly notarize and deliver to Seller the corrected Registrant Name Change
Agreement(s) to replace the incorrect version(s)). In the event that Seller
fails to execute any such aforementioned documents or instruments or to take any
such actions within three (3) business days after Buyer's request therefor,
Seller hereby irrevocably designates and appoints Buyer as Seller's
attorney-in-fact to execute and deliver such documents and instruments and take
such actions for and in Seller's behalf and stead and to do all other lawfully
permitted acts as reasonably necessary to further the prosecution, issuance, and
enforcement of patents, trademarks or other rights or protections including in
or related to the IP Assets with the same force and effect as if executed and
delivered by Seller, which power is coupled with an interest and is therefore
irrevocable.
13.8 NO DEFAULT. Seller has entered into a merger agreement with
▇▇▇▇▇▇.▇▇▇ which contemplates the merger of Seller and ▇▇▇▇▇▇.▇▇▇ during the
third quarter of 2001. The parties agree that such merger will not cause Seller,
by assignment or otherwise, to breach any representation or warranty or default
upon any of its covenants or obligations under this Agreement.
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SECTION 14. TERM AND TERMINATION.
14.1 TERMINATION OF THE AGREEMENT. This Agreement may be terminated at
any time prior to the Closing Date:
(a) by mutual agreement of Seller and Buyer;
(b) by Buyer or Seller if: (i) the Closing Date has not occurred
before 5:00 p.m. (Pacific Time) on April 30, 2001 (provided, however, that the
right to terminate this Agreement under this Section 14.1(b)(i) shall not be
available to any Party whose failure to fulfill any obligation hereunder has
been the cause of, or resulted in, the failure of the Closing Date to occur on
or before such date);
(c) by Buyer if there shall be any action taken, or any law or order
enacted, promulgated or issued or deemed applicable to the Agreement, by any
governmental or regulatory authority, which would: (i) prohibit Buyer's
ownership or use of all or any of the IP Assets or (ii) compel Buyer to dispose
of or hold separate all or any material portion of the IP Assets;
(d) by Buyer if it is not in material breach of its representations,
warranties, covenants and agreements under this Agreement and there has been a
breach of any representation, warranty, covenant or agreement contained in this
Agreement on the part of Seller such that the condition to the Closing in
Section 9.1(a) will not be satisfied as of the time of such breach, and Seller
is not using its reasonable efforts to cure such breach, or has not cured such
breach within thirty (30) days, after notice of such breach to Seller (provided,
however, that, no cure period shall be required for a breach which by its nature
cannot be cured); and
(e) by Seller if it is not in material breach of its
representations, warranties, covenants and agreements under this Agreement and
there has been a breach of any representation, warranty, covenant or agreement
contained in this Agreement on the part of Buyer such that the condition to the
Closing in Section 9.2(a) will not be satisfied as of the time of such breach,
and Buyer is not using its reasonable efforts to cure such breach, or has not
cured such breach within thirty (30) days, after notice of such breach to Buyer
(provided, however, that no cure period shall be required for a breach which by
its nature cannot be cured).
14.2 INSOLVENCY. Should Seller: (a) become Insolvent, (b) make an
assignment for the benefit of creditors, (c) file or have filed against it a
petition in bankruptcy or seeking reorganization which is not dismissed within
sixty (60) days, (d) have a receiver appointed to take possession of all or
substantially all of the assets of Seller or of any of the IP Assets, (e)
institute any proceedings for liquidation or winding up, then Buyer may, at its
option and in addition to other rights and remedies it may have under this
Agreement or at law or in equity, (x) if any event in clauses (a) through (e) of
this paragraph occurs before the Closing, terminate this Agreement immediately
by written notice (with the effect set forth in Section 14.3) and all licenses
granted hereunder to Seller shall be deemed immediately terminated upon receipt
of such notice, or (y) if any event in clauses (a) through (e) of this paragraph
occurs on or after the Closing, give written notice of its election to terminate
all licenses granted hereunder to Seller and such licenses shall be deemed
immediately terminated upon receipt of such notice.
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28
14.3 EFFECT OF TERMINATION OF THE AGREEMENT. In the event of a valid
termination of this Agreement before the Closing, this Agreement shall forthwith
become void and there shall be no liability or obligation on the part of Buyer
or Seller, or their respective officers, directors or stockholders or Affiliates
or Associates; provided, however, that each Party shall remain liable for any
breaches of this Agreement prior to its termination; and provided further that,
the provisions of Sections 13.1, 14.3 and 15 of this Agreement shall remain in
full force and effect and survive any termination of this Agreement, in addition
to any other provisions that by their terms survive termination and any other
provisions of this Agreement to the extent necessary to give meaning and effect
to the foregoing Sections.
SECTION 15. GENERAL PROVISIONS.
15.1 AMENDMENT AND WAIVER. This Agreement may not be modified, amended
or supplemented other than by an agreement in writing executed by all Parties
hereto. No waiver shall be binding unless executed in writing by the Party
making the waiver. No waiver of any provisions, breach or default of this
Agreement shall be deemed or shall constitute a waiver of any other provision,
whether or not similar, nor shall any waiver constitute a continuing waiver.
15.2 DELAYS OR OMISSIONS. It is agreed that no delay or omission to
exercise any right, power or remedy accruing to any Party, upon any breach,
default or noncompliance by another Party under this Agreement, shall impair any
such right, power or remedy, nor shall it be construed to be a waiver of any
such breach, default or noncompliance, or any acquiescence therein, or of or in
any similar breach, default or noncompliance thereafter occurring. It is further
agreed that any waiver, permit, consent or approval of any kind or character of
any breach, default or noncompliance under this Agreement or any waiver of any
provisions or conditions of the Agreement must be in writing and shall be
effective only to the extent specifically set forth in such writing. All
remedies, either under this Agreement or otherwise afforded to any Party, shall
be cumulative and not alternative.
15.3 ASSIGNMENT: BINDING UPON SUCCESSORS AND ASSIGNS. Except as
expressly permitted otherwise in Sections 5.4(a) and 13.8 hereof, Seller may not
assign any of its rights or obligations hereunder (i) without the prior written
consent of Buyer, which consent shall not be unreasonably withheld unless Seller
proposes such an assignment to an IBIP Vendor, in which case Buyer may withhold
its consent in its sole and absolute discretion, and (ii) unless, prior to
Seller assigning its rights or obligations under this Agreement, any such
assignee agrees in writing to assume all of Seller's obligations hereunder. This
Agreement will be binding upon and inure to the benefit of the Parties hereto
and their respective permitted successors and assigns.
15.4 LIMITATION OF LIABILITIES. In no event shall any Party to this
agreement be liable for any indirect, incidental, consequential, special, or
punitive damages of any nature or lost profits, whether such liability is
asserted on the basis of contract (including, without limitation, the breach or
any termination of this Agreement or any Ancillary Agreement), tort (including
negligence or strict liability), or otherwise, in connection with the
transactions contemplated by this Agreement or any Ancillary Agreement, even if
advised in advance of the possibility of any such Loss. In addition, the
liability of a Party arising out of or in connection with this Agreement,
including without limitation the liability for all Losses
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for all Indemnified Parties under Section 12 hereof and any Ancillary Agreement
shall in no event exceed [***]*.
15.5 NOTICES. All notices, requests, demands and other communications
required or permitted under this Agreement and the transactions contemplated
herein shall be in writing and shall be deemed to have been duly given, made and
received (i) on the date when delivered by hand delivery with receipt
acknowledged, or (ii) upon the next business day following receipt of telex or
telecopy transmission with confirmation of receipt returned to the sender, or
(iii) upon the third day after deposit in the United States mail, registered or
certified with postage prepaid, return receipt requested, in each case addressed
as set forth below:
(a) If to Buyer:
▇▇▇▇▇▇.▇▇▇ Inc.
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Legal
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
With a copy to:
Irell & ▇▇▇▇▇▇▇ LLP
▇▇▇▇ ▇▇▇▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
(b) If to Seller:
eStamp Corporation
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
-23-
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With a copy to:
Fenwick & West LLP
▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
Any Party may alter the addresses to which communications or copies are to be
sent by giving notice of such change of address in conformity with the
provisions of this Section 15.5 for the giving of notice.
15.6 INCORPORATION OF SCHEDULES AND EXHIBITS. All schedules, exhibits
and other documents and written information required to be delivered pursuant to
this Agreement are incorporated into this Agreement by this reference.
15.7 AFFILIATES. Seller agrees that it will ensure that all of its
Affiliates are subject to the restrictions to which Seller is subject under this
Agreement with respect to the treatment and use of Buyer's Confidential
Information, regardless of how such Affiliate acquires such Confidential
Information.
15.8 INDEPENDENT CONTRACTORS. The relationship of the Parties
established by this Agreement is that of independent contractors, and nothing
contained in this Agreement shall be construed to (i) give either Party the
power to direct and control the day-to-day activities of the other, (ii)
constitute the Parties as partners, joint venturers, co-owners or otherwise as
participants in a joint or common undertaking, or (iii) allow either Party to
create or assume any obligation on behalf of the other Party for any purpose
whatsoever.
15.9 CAPTIONS. The captions contained in this Agreement are for
convenience and reference purposes only and shall not affect in any way the
meaning and interpretation of this Agreement.
15.10 SEVERABILITY. If any provision of this Agreement, or the
application thereof, will for any reason and to any extent be invalid or
unenforceable, the remainder of this Agreement and application of such provision
to other persons or circumstances will be interpreted so as reasonably to effect
the intent of the Parties hereto. The Parties further agree to replace such void
or unenforceable provision of this Agreement with a valid and enforceable
provision that will achieve, to the greatest extent possible, the economic,
business and other purposes of the void or unenforceable provision.
15.11 GOVERNING LAW; EXCLUSIVE JURISDICTION AND VENUE. This Agreement
shall be governed by and construed under the laws of the State of California,
without reference to conflict of laws principles. Any proceeding arising out of
or relating to this Agreement shall be brought and heard only in an appropriate
state or federal court located in the County of Los Angeles, California. The
Parties hereto waive any and all objections that they may have as to personal
jurisdiction or venue in any of the above courts.
15.12 COUNTERPARTS. This Agreement may be executed in any number of
counterparts, each of which shall be deemed to be an original and all of which
shall together
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constitute one and the same instrument. This Agreement shall become binding when
one or more counterparts hereof shall bear the signatures of all of the Parties
indicated as the signatories hereto.
15.13 ATTORNEYS' FEES. In the event that any action or proceeding
(including proceedings in bankruptcy) is brought by either Party to enforce or
interpret any provision, covenant or condition contained in this Agreement, the
prevailing Party in such action or proceeding (whether after trial or appeal)
shall be entitled to recover from the Party not prevailing its expenses therein,
including reasonable attorneys' fees and allowable costs.
15.14 JOINT WORK PRODUCT. This Agreement is the joint work product of
the Parties hereto; accordingly, in its interpretation, no inferences will be
drawn against either Party based upon its drafting of the provision(s) at issue.
15.15 NO THIRD PARTY BENEFICIARIES. Unless otherwise expressly provided,
no provisions of this Agreement are intended or shall be construed to confer
upon or give to any person or entity other than Seller and Buyer any rights,
remedies or other benefits under or by reason of this Agreement.
15.16 FURTHER ASSURANCES. Each of the Parties hereto covenants, without
the need for additional consideration, that it and its Affiliates will take such
further actions and execute upon request any further documents as may be
reasonably required to fully effectuate the terms, conditions and intent of this
Agreement and to more fully vest in the other Party and its Affiliates the
rights, licenses and other benefits provided to such other Party and its
Affiliates hereunder.
15.17 ENTIRE AGREEMENT. This Agreement, including the schedules and
exhibits hereto, and all Ancillary Agreements contain the entire understanding
among the Parties hereto and with respect to the subject matter hereof and
supersedes all prior and contemporaneous agreements, understandings,
representations, inducements or conditions, express or implied, oral or written,
except as set forth herein and therein. The express terms hereof and thereof
control and supersede any course of performance and/or usage of the trade
inconsistent with any of the terms hereof.
15.18 DELIVERY BY FACSIMILE. This Agreement, the agreements referred to
herein, and each other agreement or instrument entered into in connection
herewith or therewith or contemplated hereby or thereby, and any amendments
hereto or thereto, to the extent signed and delivered by means of a facsimile
machine, shall be treated in all manner and respects as an original agreement or
instrument and shall be considered to have the same binding legal effect as if
it were the original signed version thereof delivered in person. At the request
of any party hereto or to any such agreement or instrument, each other party
hereto or thereto shall re-execute original forms thereof and deliver them to
all other parties. No party hereto or to any such agreement or instrument shall
raise the use of a facsimile machine to deliver a signature or the fact that any
signature or agreement or instrument was transmitted or communicated through the
use of a facsimile machine as a defense to the enforceability of a contract and
each such party forever waives any such defense.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the Parties hereto have executed this Asset Purchase
Agreement as of the date first above written.
BUYER: ▇▇▇▇▇▇.▇▇▇ INC.
By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇
--------------------------------------
▇▇▇▇▇ ▇▇▇▇▇▇▇
Chief Executive Officer
SELLER: E-STAMP CORPORATION
By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇
--------------------------------------
▇▇▇▇▇▇ ▇▇▇▇▇▇
Vice President, General Counsel and
acting Chief Financial Officer
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SCHEDULE A
DOMAIN NAMES
1. ▇▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
2. ▇▇▇▇▇▇.▇▇▇
3. ▇-▇▇▇▇▇.▇▇▇
4. ▇--▇▇▇▇▇.▇▇▇
5. ▇▇▇▇▇▇.▇▇▇
6. ▇-▇▇▇▇▇.▇▇▇
7. ▇▇▇▇▇▇.▇▇▇
8. ▇-▇▇▇▇▇.▇▇▇
9. ▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
10. ▇▇▇▇▇▇▇▇▇.▇▇▇
11. ▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
12. ▇▇▇▇▇▇▇.▇▇▇
13. ▇-▇▇▇▇▇▇.▇▇▇
14. ▇▇▇▇▇▇▇.▇▇▇
15. ▇-▇▇▇▇▇▇.▇▇▇
16. ▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
17. ▇-▇▇▇▇▇▇▇▇▇▇.▇▇▇
18. ▇▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
19. ▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
20. ▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
21. ▇▇▇▇▇▇▇▇▇▇.▇▇▇
22. ▇-▇▇▇▇▇▇▇▇▇.▇▇▇
23. ▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
-27-
34
SCHEDULE A
24. ▇▇▇▇▇▇▇▇▇.▇▇▇
25. ▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
26. ▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
27. ▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
28. ▇▇▇▇▇▇▇▇▇.▇▇▇
-28-
35
SCHEDULE B
IBIP VENDERS
Pitney ▇▇▇▇▇, Inc.
Ascom Mailing Systems
Envelope Manager Software
Francotyp-Postalia AG
KARA Technology
Neopost Online, Inc.
PSI Systems, Inc.
-29-
36
SCHEDULE C
PATENT PORTFOLIO
UNITED STATES ISSUED PATENTS
Title Patent No.
----------------------------------------------- -------------------
System and Method for Automatically Printing 5,510,992
Postage on Mail
System and Method for Storing Postage in a 5,682,318
Computer System
System and Method for Automatically Printing 5,774,886
Postage on Mail
System and Method for Storing, Retrieving and 5,606,507
Automatically Printing Postage on Mail
System and Method for Storing, Retrieving and 5,666,284
Automatically Printing Postage on Mail
System and Method for Registration Using 5,825,893
Indicia
System and Method for Controlling the 5,778,076
Dispensing of an Authenticating Indicia
System and Method for Controlling the 5,796,834
Dispensing of an Authenticating Indicia
System and Method for Controlling the Storage 5,801,364
of Data Within a Portable Memory
System and Method for Retrieving Postage 5,812,991
Credit Controlled with a Portable memory on a
Computer Network
System and Method for Generating Personalized 5,819,240
Postage Indicia
System and Method for Printing Personalized 5,717,597
Postage Indicia on Greeting Cards
System and Method for Printing Postage Indicia 5,801,944
Directly on Documents
Method and System for Electronic Document 5,982,506
Certification
Method and System for Electronic Document 6,158,003
Certification
-30-
37
SCHEDULE C
Memorabilia Display Case 5,603,410
System and Method Remote Postage Metering 5,822,739
System and Method for Automatic Determination 5,983,209
of Postal Item Weight by Context
System and Method for Providing Fault Tolerant 6,199,055
Transactions Over an Unsecured Communication
Channel
System and Method for Printing Multiple 6,208,980
Postage Indicia
Stampless Envelope--Design D384,098
Stampless Envelope with Enlarged Window--Design D380,007
Display Box--Design D376,710
Stampless Envelope--Design D395,333
Stampless Envelope--Design D414,511
Front Surface of a Stampless Envelope--Design D421,048
Front Surface of a Stampless Envelope--Design D434,438
Stampless Envelope--Design D386,783
Stampless Envelope--Design D386,204
Window Portion of a Stampless Envelope--Design D405,111
Window Portion of a Stampless Envelope--Design ▇▇▇▇,▇▇▇
-▇▇-
▇▇
▇▇▇▇▇▇▇▇ ▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ PENDING PATENT APPLICATIONS
------------------
[***]*
------------------
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
-32-
39
SCHEDULE C
FOREIGN ISSUED PATENTS
Country No. Title
------------------ ---------------- ---------------------------------------------------------
Australia 707840 System and Method for Retrieving, Selecting and
Printing Postage Indicia on Documents
Canada 77242 Stampless Envelope----Design-Canada
Canada ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇----▇▇▇▇▇▇-▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇ Stampless Envelope----Design-Canada
Germany M9408938.8 Stampless Envelope----Design-Germany
Great Britain 2300151 Storing, Retrieving and Automatically Printing Postage
on Mail
Great Britain 2316362 Storing, Retrieving and Automatically Printing Postage
on Mail
Great Britain 2043298 Stampless Envelope----Design-Great Britain
Great Britain 2049990 Stampless Envelope----Design-Great Britain
Great Britain 2049989 Stampless Envelope----Design-Great Britain
-33-
40
SCHEDULE C
FOREIGN PENDING PATENT APPLICATIONS
------------------
[***]*
------------------
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
-34-
41
SCHEDULE D
TRADEMARKS
UNITED STATES
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E & Design 75/257,017 2,279,750
E & Design 75/602,096
E-STAMP 74/475,757 2,152,671
E-STAMP 75/602,095
E-STAMP INTERNET POSTAGE 75/603,999
E-STAMP INTERNET POSTAGE 75/408,910
▇-▇▇▇▇▇.▇▇▇ 75/563,137
▇-▇▇▇▇▇.▇▇▇ 75/602,097
THE INTERNET POSTAGE COMPANY 75/602,094
THE INTERNET POSTAGE COMPANY 75/602,092
CALIFORNIA
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
▇-▇▇▇▇▇.▇▇▇ N/A 51010
▇-▇▇▇▇▇.▇▇▇ N/A ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP 2023438 1707082
AUSTRALIA
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E & Design 735561 735561
E & Design 796828 796828
E-STAMP 796827
E-STAMP 703164 703164
E-STAMP INTERNET POSTAGE 764571 764571
ESTAMP 759833 759833
ESTAMP ELECTRONIC POSTAGE & 711341 711341
Design
BRAZIL
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E & Design 819977357
E-STAMP 819314854 819314854
CANADA
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E & Design 1018445
E & Design 844618
E-STAMP 1018444
-------------------------------- ------------------------------ -------------------------------
-35-
42
(SCHEDULE D, CONTINUED)
E-STAMP 805206
▇-▇▇▇▇▇.▇▇▇ 1010964
ESTAMP 875,256
CHILE
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP 337669 478442
CHINA
-------------------------------------------------------------------------------------------------
E & Design 970050612 1209087
E-STAMP 960036782 1348722
ESTAMP ELECTRONIC 960087879 1108507
POSTAGE & Design
CZECH REPUBLIC
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP O-108909-96 202.989
EUROPEAN COMMUNITY
-------------------------------------------------------------------------------------------------
E & Design 517987 517987
E-STAMP 33530 33530
E-STAMP INTERNET POSTAGE 848457 848457
▇-▇▇▇▇▇.▇▇▇ 1127687
HONG KONG
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
▇-▇▇▇▇▇ ▇▇▇▇/▇▇ ▇▇▇▇/▇▇
▇▇▇▇▇▇▇
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP M 96 00749 146309
INDONESIA
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP D96/5566 ▇▇▇▇▇▇
▇▇▇▇▇▇
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP 103711 103711
INDIA
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP ▇▇▇▇▇▇
▇▇▇▇▇
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E & Design 115,998/97 4,332,078
E-STAMP INTERNET POSTAGE 49,167/98 4,366,488
MEXICO
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E & Design 294945 557169
-------------------------------- ------------------------------ -------------------------------
-36-
43
(SCHEDULE D, CONTINUED)
E-STAMP 256013 657290
ESTAMP ELECTRONIC 266596 534428
POSTAGE & Design
MALAYSIA
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP 96/02841 96002841
NORWAY
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP 961361 182157
NEW ZEALAND
-------------------------------------------------------------------------------------------------
E & Design 310890 310890
E & Design 310889 310889
E-STAMP 310888 310888
E-STAMP 259265 259265
▇-▇▇▇▇▇.▇▇▇ 307426 307426
▇-▇▇▇▇▇.▇▇▇ 307425 307425
ESTAMP ELECTRONIC 263866 B263866
POSTAGE & Design
PHILIPPINES
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP 107543
POLAND
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP Z-156938 ▇▇▇▇▇▇
▇▇▇▇▇▇▇
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP 38721 27559
RUSSIAN FEDERATION
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E & Design 97707375 167515
E-STAMP 96702706 154827
ESTAMP ELECTRONIC 96708428 159387
POSTAGE & Design
SAUDI ARABIA
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP 34155 409/87
SINGAPORE
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E & Design 5522/97 T97/05522E
E-STAMP 1837/96 T96/01837G
SOUTH AFRICA
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP 96/02518 96/02518
SOUTH KOREA
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
-37-
44
(SCHEDULE D, CONTINUED)
E & Design 97-21481 414681
E-STAMP 96-9249 378864
SWITZERLAND
-------------------------------------------------------------------------------------------------
E & Design 3690/1997 446318
E-STAMP 1542/1996 ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP 304710 ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP 96/4310 182044
TAIWAN
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E & Design 86023515 00855286
E-STAMP 85-9204 00755569
YUGOSLAVIA
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E-STAMP Z-340/96 41602
-------------------------------- ------------------------------ -------------------------------
-38-
45
EXHIBIT A-1
TRADEMARK ASSIGNMENT
This TRADEMARK ASSIGNMENT (this "Assignment") is entered into by ESTAMP
CORPORATION, a Delaware corporation, having a place of business located at ▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Assignor"), as assignor, in
favor of ▇▇▇▇▇▇.▇▇▇ INC., a Delaware corporation having a place of business
located at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
("Assignee"), as assignee, with reference to the following facts and
circumstances:
Assignor and Assignee have entered into that certain Asset Purchase
Agreement dated _________________ (the "Asset Purchase Agreement"), which, along
with the promises contained herein, constitute mutual consideration for the
promises herein;
Assignor is the owner of the trademark registrations and applications
for registration in the United States (the "Trademarks") as shown on the
attached Exhibit A.
WHEREAS, Assignee desires to acquire all right, title and interest in
and to the Trademarks and related rights.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, Assignor does hereby assign and
transfer unto Assignee all right, title and interest of Assignor in and to the
Trademarks, together with the goodwill of the business symbolized by the marks,
as well as its entire right, title and interest in and to all State
registrations of the marks heretofore granted or applied for, any and all common
law rights to the Trademarks in the United States and any state thereof, and any
and all claims and demands it may have either at law or in equity arising out of
any past infringements.
Assignor does hereby expressly agree that Assignee may singly, and
without assistance or consent from Assignor, undertake procedures to record the
transfer of the Trademarks to Assignee in the United States Patent and Trademark
Office.
In testimony whereof, Assignor has caused this Assignment to be executed
by its officer(s) thereunto duly authorized.
ASSIGNOR
ESTAMP CORPORATION
Dated: ________________ By: _________________________
[NAME]
[TITLE]
STATE OF )
COUNTY OF )
On _______________________, before me,__________, Notary Public, personally
appeared ________________, personally known to me (or proved to me on the basis
of satisfactory evidence) to be the person whose name is subscribed to the
within instrument and acknowledged to me that he executed the same in his
authorized capacity, and that by his signature on the instrument the person, or
the entity upon behalf of which the person acted, executed the instrument.
WITNESS my hand and official seal.
-----------------------------
Notary Public
A-1
46
EXHIBIT A TO TRADEMARK ASSIGNMENT
TRADEMARKS
UNITED STATES
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
E & Design 75/257,017 2,279,750
E & Design 75/602,096
E-STAMP 74/475,757 2,152,671
E-STAMP 75/602,095
E-STAMP INTERNET POSTAGE 75/603,999
E-STAMP INTERNET POSTAGE 75/408,910
▇-▇▇▇▇▇.▇▇▇ 75/563,137
▇-▇▇▇▇▇.▇▇▇ 75/602,097
THE INTERNET POSTAGE COMPANY 75/602,094
THE INTERNET POSTAGE COMPANY 75/602,092
CALIFORNIA
-------------------------------------------------------------------------------------------------
▇▇▇▇ Application No. Registration No.
-------------------------------- ------------------------------ -------------------------------
▇-▇▇▇▇▇.▇▇▇ N/A 51010
▇-▇▇▇▇▇.▇▇▇ N/A 104948
-------------------------------- ------------------------------ -------------------------------
-2-
47
EXHIBIT A-2
PATENT ASSIGNMENT
This PATENT ASSIGNMENT (this "Assignment") is entered into is entered
into by eStamp Corporation, a Delaware corporation, having a place of business
located at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Assignor"), as
assignor, in favor of ▇▇▇▇▇▇.▇▇▇ Inc., a Delaware corporation having a place of
business located at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Assignee"), as assignee, with reference to the following
facts and circumstances:
Assignor and Assignee have entered into that certain Asset Purchase
Agreement dated _________________ (the "Asset Purchase Agreement"), which, along
with the promises contained herein, constitute mutual consideration for the
promises herein;
Assignor is the sole and exclusive owner of the Letters Patents and
applications in the United States (hereinafter the "Patents") as shown on the
attached Exhibit A.
Assignee desires to acquire, and Assignor desires to assign, Assignor's
right, title and interest in, to and under the Patents.
NOW, THEREFORE, to all whom it may concern, be it known that for good
and valuable consideration the receipt and adequacy of which is hereby
acknowledged, Assignor has sold, assigned, transferred and set over, and does
hereby sell, assign, transfer and set over to Assignee the Patents listed in
Exhibit A attached hereto, together with any reissue or reissues of the Patents
to the end of the term or terms for which the Patents are granted or may be
reissued as fully and entirely as the same would have been held and enjoyed by
Assignor if this assignment and sale had not been made; together with all claims
for damages by reason of past infringement of the Patents, with the right to ▇▇▇
for, and collect the same for Assignee's own use and benefit and for the use and
benefit of Assignee's successors, assigns or other legal representatives.
Assignor further warrants that it has not executed, and will not
execute, any agreements in conflict with or inconsistent with this assignment.
In testimony whereof, Assignor has caused this Assignment to be executed
by its officer(s) thereunto duly authorized.
ASSIGNOR
ESTAMP CORPORATION
Dated: ________________ By: _________________________
[NAME]
[TITLE]
STATE OF )
COUNTY OF )
On _______________________, before me,__________, Notary Public, personally
appeared _______________, personally known to me (or proved to me on the basis
of satisfactory evidence) to be the person whose name is subscribed to the
within instrument and acknowledged to me that he executed the same in his
authorized capacity, and that by his signature on the instrument the person, or
the entity upon behalf of which the person acted, executed the instrument.
WITNESS my hand and official seal.
------------------------------
Notary Public
-3-
48
EXHIBIT A TO PATENT ASSIGNMENT
UNITED STATES ISSUED PATENTS
Title Patent No.
----------------------------------------------- -------------------
System and Method for Automatically Printing 5,510,992
Postage on Mail
System and Method for Storing Postage in a 5,682,318
Computer System
System and Method for Automatically Printing 5,774,886
Postage on Mail
System and Method for Storing, Retrieving and 5,606,507
Automatically Printing Postage on Mail
System and Method for Storing, Retrieving and 5,666,284
Automatically Printing Postage on Mail
System and Method for Registration Using 5,825,893
Indicia
System and Method for Controlling the 5,778,076
Dispensing of an Authenticating Indicia
System and Method for Controlling the 5,796,834
Dispensing of an Authenticating Indicia
System and Method for Controlling the Storage 5,801,364
of Data Within a Portable Memory
System and Method for Retrieving Postage 5,812,991
Credit Controlled with a Portable memory on a
Computer Network
System and Method for Generating Personalized 5,819,240
Postage Indicia
System and Method for Printing Personalized 5,717,597
Postage Indicia on Greeting Cards
System and Method for Printing Postage Indicia 5,801,944
Directly on Documents
Method and System for Electronic Document 5,982,506
Certification
Method and System for Electronic Document 6,158,003
Certification
Memorabilia Display Case 5,603,410
System and Method Remote Postage Metering 5,822,739
System and Method for Automatic Determination 5,983,209
of Postal Item Weight by Context
-4-
49
Title Patent No.
----------------------------------------------- -------------------
System and Method for Providing Fault Tolerant 6,199,055
Transactions Over an Unsecured Communication
Channel
System and Method for Printing Multiple 6,208,980
Postage Indicia
Stampless Envelope--Design D384,098
Stampless Envelope with Enlarged Window--Design D380,007
Display Box--Design D376,710
Stampless Envelope--Design D395,333
Stampless Envelope--Design D414,511
Front Surface of a Stampless Envelope--Design D421,048
Front Surface of a Stampless Envelope--Design D434,438
Stampless Envelope--Design D386,783
Stampless Envelope--Design D386,204
Window Portion of a Stampless Envelope--Design D405,111
Window Portion of a Stampless Envelope--Design D405,112
-5-
50
UNITED STATES PENDING PATENT APPLICATIONS
------------------
[***]*
------------------
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
-6-
51
EXHIBIT A-3
DOMAIN NAME ASSIGNMENT
This DOMAIN NAME ASSIGNMENT (this "Assignment") is entered into by
ESTAMP CORPORATION, a Delaware corporation, having a place of business located
at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Assignor"), as
assignor, in favor of ▇▇▇▇▇▇.▇▇▇ INC., a Delaware corporation having a place of
business located at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Assignee"), as assignee, with reference to the following
facts and circumstances:
WHEREAS, Assignor and Assignee have entered into that certain Asset
Purchase Agreement dated _________________ (the "Asset Purchase Agreement"),
which, along with the promises contained herein, constitute mutual consideration
for the promises herein;
WHEREAS, Assignor is the registrant of the registered Domain Names (the
"Domain Names") as shown on the attached Exhibit A.
WHEREAS, Assignee desires to acquire any and all right and interest in
and to the Domain Names and related rights.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, Assignor does hereby assign and
transfer unto Assignee any and all right and interest of Assignor in and to the
Domain Names, together with the goodwill of the business symbolized by the
Domain Names, as well as Assignor's entire right, title and interest in and to
all federal and state trade and service ▇▇▇▇ registrations of the Domain Names
heretofore granted or applied for, and any and all common law rights to the
Domain Names throughout the world, and any and all claims and demands it may
have either at law or in equity arising out of any past infringements and uses
of the Domain Names.
Assignor does hereby expressly agree that procedures be taken with an
appropriate domain name registrar (such as Network Solutions, Inc.) by Assignee,
with assistance as necessary from Assignor, to execute the transfer of the
Domain Names to Assignee.
In testimony whereof, Assignor has caused this Assignment to be executed
by its officer(s) thereunto duly authorized.
ASSIGNOR
ESTAMP CORPORATION
Dated: ________________ By: _________________________
[NAME]
[TITLE]
STATE OF )
)
COUNTY OF )
On _______________________, before me,__________, Notary Public, personally
appeared ________________, personally known to me (or proved to me on the basis
of satisfactory evidence) to be the person whose name is subscribed to the
within instrument and acknowledged to me that he executed the same in his
authorized capacity, and that by his signature on the instrument the person, or
the entity upon behalf of which the person acted, executed the instrument.
WITNESS my hand and official seal.
-----------------------------
Notary Public
-7-
52
EXHIBIT A TO DOMAIN NAME ASSIGNMENT
DOMAIN NAMES
1. ▇▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
2. ▇▇▇▇▇▇.▇▇▇
3. ▇-▇▇▇▇▇.▇▇▇
4. ▇--▇▇▇▇▇.▇▇▇
5. ▇▇▇▇▇▇.▇▇▇
6. ▇-▇▇▇▇▇.▇▇▇
7. ▇▇▇▇▇▇.▇▇▇
8. ▇-▇▇▇▇▇.▇▇▇
9. ▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
10. ▇▇▇▇▇▇▇▇▇.▇▇▇
11. ▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
12. ▇▇▇▇▇▇▇.▇▇▇
13. ▇-▇▇▇▇▇▇.▇▇▇
14. ▇▇▇▇▇▇▇.▇▇▇
15. ▇-▇▇▇▇▇▇.▇▇▇
16. ▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
17. ▇-▇▇▇▇▇▇▇▇▇▇.▇▇▇
18. ▇▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
19. ▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
20. ▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
21. ▇▇▇▇▇▇▇▇▇▇.▇▇▇
22. ▇-▇▇▇▇▇▇▇▇▇.▇▇▇
23. ▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
24. ▇▇▇▇▇▇▇▇▇.▇▇▇
-8-
53
25. ▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
26. ▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
27. ▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
28. ▇▇▇▇▇▇▇▇▇.▇▇▇
-9-
54
EXHIBIT A-4
DEED OF ASSIGNMENT
THIS DEED OF ASSIGNMENT is made the __ day of _______, 2001
BETWEEN: ESTAMP CORPORATION, a Delaware corporation, having a place of
business located at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ of America, (hereinafter referred
to as "the Assignor") of the first part
AND: ▇▇▇▇▇▇.▇▇▇ INC., a Delaware corporation, having a place of
business located at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇, Santa
Monica, California 90405, United States of America, (hereinafter
referred to as "the Assignee") of the second part.
WHEREAS:
A. The Assignor is the owner of Australian patents and applications listed
in the Schedule below (hereinafter referred to as "the Patents") and is
the owner of inventions which are the subject of the Patents
(hereinafter referred to as "the Inventions").
B. The Assignor is desirous of assigning to the Assignee and the Assignee
is desirous of acquiring from the Assignor all its right, title and
interest in the Patents in the Commonwealth of Australia.
NOW THIS DEED WITNESSETH as follows:
1. The Assignor hereby assigns to the Assignee absolutely all its right,
title and interest in the Patents in the Commonwealth of Australia,
including but not limited to the right, either then existing or at any
time in the future, to make application for and obtain patents in the
Commonwealth of Australia in respect of the Inventions, specifically
including the right to file applications for patents, and claim
priority, based on any of the Patents.
SCHEDULE:
1. Registration No. 707840 - System and Method for Retrieving, Selecting
and Printing Postage Indicia on Documents
-10-
55
2. [***]*
3. [***]*
IN WITNESS WHEREOF the parties have executed this Deed on the day and year first
hereinbefore written.
By: ____________________________
Name (printed):
Position held:
Attest: ______________________________
Name (printed):
Position held:
By: ____________________________
Name (printed):
Position held:
Attest: ______________________________
Name (printed):
Position held:
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
-11-
56
EXHIBIT A-5
CANADIAN DESIGN REGISTRATION ASSIGNMENT
The undersigned, ESTAMP CORPORATION, a company incorporated under the
laws of the state of Delaware in the United States of America, whose full post
office address is ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, for
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, does hereby sell, transfer and assign to ▇▇▇▇▇▇.▇▇▇ INC., a
company incorporated under the laws of the state of Delaware in the United
States of America, whose full post office address is ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, all its entire right, title and
interest in and to the following Canadian industrial design applications and
registrations:
Registration No. Title
---------------- -----
77242 Stampless Envelope----Design-Canada
77243 Stampless Envelope----Design-Canada
77244 Stampless Envelope----Design-Canada
the same to be held and enjoyed by the said ASSIGNEE to the full end of term
thereof for which the said industrial design applications or registrations are
granted, as fully and entirely as the same could have been held and enjoyed by
it if this assignment and sale had not been made.
SIGNED at __________________________ this _____ day of ________________, 2001.
ESTAMP CORPORATION
By:________________________________
(Signature of Officer)
Name: ______________________________
Title: _____________________________
DECLARATION OF WITNESS
I, __________________________, hereby declare that I was personally
present and did see ____________________________ duly sign and execute the
foregoing assignment.
-----------------------------------
(Signature of Witness)
Name: ______________________________
Address: ___________________________
___________________________
-12-
57
EXHIBIT A-6
UBERTRAGUNGSERKLARUNG - DECLARATION OF ASSIGNMENT
fur Patente, Gebrauchsmuster, ▇▇▇▇▇▇, ▇▇▇▇▇ Anmeldungen sowie IR-▇▇▇▇▇▇
for Patents, Utility Model Rights, Trademarks, their applications and
International Trademarks
Der Unterzeichner
I/We the undersigned
ESTAMP CORPORATION
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America
Inhaber der deutschen Patente und Patentanmeldungen mit der(n) Nummer(n).
owner of the following German patent(s) and patent application(s) no(s):
[***]*
ubertragt hiermit das vorgenannte Schutzrecht mit ▇▇▇▇▇ ▇▇▇▇▇▇▇ und Pflichten
auf herewith assigns the protective right with all rights and duties to
▇▇▇▇▇▇.▇▇▇ INC.
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇
Santa Monica, California 90405
United States of America
und erklart sich mit der Umschreibung auf die Erwerberin einverstanden.
and agrees that to the recordation of the assignment in the Patent Office.
Ort/Datum:
Place/Date:
Unterschrift der Abtretenden / Signature of the Assignor
--------------------------------------------------------
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
-13-
58
Bitte den Namen des Unterzeichners mit Schreibmaschine wiederholen. Bei
juristischen Personen ist die Stellung des Unterschriftsberechtigten innerhalb
der Gesellschaft anzugeben.
Please type name under signature. In case of legal persons the official capacity
of the signer within the company has to be indicated, e.g. "President",
"Director", "Company Secretary")
-14-
59
EXHIBIT A-7
ASSIGNMENT
THIS ASSIGNMENT made the __ day of April 2001 BETWEEN ESTAMP CORPORATION, of
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ of America,
(hereinafter called ESTAMP) and ▇▇▇▇▇▇.▇▇▇ INC., of ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇, Santa Monica, California 90405, United States of America,
(hereinafter called ▇▇▇▇▇▇.▇▇▇).
WHEREAS: 1. [***]*
2. ESTAMP is the registered proprietor of British Patents
Nos. 2300151; 2316362; 2043298; 2049990; and 2049989;
3. ▇▇▇▇▇▇.▇▇▇ is desirous of acquiring the said British
Patent Application and the said British Patents from
ESTAMP; and
4. ESTAMP is agreeable to assigning the said British Patent
Application and the said British Patents to ▇▇▇▇▇▇.▇▇▇.
NOW THEREFORE THIS ASSIGNMENT WITNESSETH THAT for good and valuable
consideration paid to ESTAMP by ▇▇▇▇▇▇.▇▇▇, the receipt and adequacy of which is
hereby acknowledged, ESTAMP does hereby assign and transfer unto ▇▇▇▇▇▇.▇▇▇ all
their entire right title and interest in and to [***]* aforesaid and any and all
patents granted thereon and in and to British Patents Nos. 2300151, 2316362,
2043298, 2049990, and 2049989 aforesaid and all rights of action powers and
benefits therein belonging or accrued, including the right to ▇▇▇ for past
infringement, TO BE HELD by ▇▇▇▇▇▇.▇▇▇ absolutely.
IN WITNESS WHEREOF the parties hereto have executed these presents the day and
date hereinabove written.
ESTAMP Corporation ▇▇▇▇▇▇.▇▇▇ Inc.
by: _________________________ by: _____________________________
President/Chief Executive President/Chief Executive
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
-15-
60
EXHIBIT A-8
JAPANESE PATENT ASSIGNMENT
Japanese Patent Application Nos.:
[***]*
[***]*
[***]*
To all whom it may concern: Be it known that we have assigned the right
to obtain patent in the above identified applications.
Dated this ___day of April, 2001
Assignor: ESTAMP CORPORATION
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America
__________________________________________ Sign
( )Type
Assignee: ▇▇▇▇▇▇.▇▇▇ INC.
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇
Santa Monica, California 90405
United States of America
__________________________________________ Sign
( )Type
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
-16-
61
EXHIBIT A-9
MEXICAN PATENT ASSIGNMENT
CESION DE DERECHOS ASSIGNMENT OF RIGHTS
Sepan todos por la presente que Be it known by all those present that:
ESTAMP CORPORATION
domiciliado(s) en: whose address is at:
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America
de nacionalidad a company incorporated under the laws of
the state of Delaware in the United
States of America
declara(n) que cede(n), vende(n), declare(s) that assign(s), sell(s) and
traspasa(n) en toda propiedad y dominio a: transfer(s) in whole ownership and
dominion to:
▇▇▇▇▇▇.▇▇▇ INC.
Domiciliada en : whose address is at:
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇
Santa Monica, California 90405
United States of America
por la cantidad de $ moneda mexicana, for the amount of $ __________ Mexican
la ____________ arriba currency, [***]* referred to, as well as
referida, asi como todos los derechos que a all the rights there of without any
▇▇▇▇ correspondan, sin excepcion alguna, exception at all, so that consequently,
pudiendo por consiguiente desde hoy as of today he (they) can be considered
considerarse como duena de ▇▇▇▇ explotarla as the sole owner(s) of the same to
y disponer de la misma como mejor exploit and dispose of it as deemed best
conviniere a sus intereses, sin que pudiera to his interests without being entitled
▇▇▇▇▇ reclamo ulterior de su parte, en to subsequently filing any claim on his
ninguna forma ni en ningun momento. (their) part in no way whatsoever nor at
any time.
Por su parte, la cesionaria acepta la On his part, the assignee accepts the
transferencia de derechos que se hacen a su Assignment of the rights which is made
favor y por la presente nombra, como sus in his favor and hereby appoints his
apoderados a los Sres____________________, Attorneys, __________________, so that
para que conjunta o separadamente, y en su they can jointly or separately and in
nombre y representacion, gestionen ante las his name and behalf, carry on all the
Autoridades Mexicanas correspondientes el necessary procedures before the acting
registro de la TRANSMISION DE DERECHOS Mexican Authorities for the
correspondiente, y la comunicacion corresponding recording of the
respectiva. ASSIGNMENT OF RIGHTS and in order to
obtain the corresponding resolution.
Firmado lo anterior en: Signed in (date and place):
CESIONARIA (Assignee) CEDENTE (Assignor(s))
--------------------- ---------------------
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
-17-
62
Testigos (Witnesses)
-------------------- --------------------------
The signatures of the assignor and the assignee must be notarized with
an apostille. Please include names and domiciles of witnesses under
their signatures.
-18-
63
EXHIBIT A-10
[***]*
--------
* Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
-19-