Exhibit 10.25
PATENT PURCHASE AGREEMENT
This PATENT PURCHASE AGREEMENT (this "Agreement") is entered into on
March 22, 2006 (the "Effective Date") by and between Sunshine Data Ventures LLC,
a Nevada limited liability company, ("Purchaser"), and Notify Technology
Corporation a California corporation, with an office at 0000 X. XxXxxx Xxxx.
Xxxxx 000 Xxx Xxxx, XX 00000 ("Seller"). The parties hereby agree as follows:
1. BACKGROUND
1.1 Seller owns certain United States Letters Patents and/or applications
for United States Letters Patents and/or related foreign patents and
applications.
1.2 Seller wishes to sell to Purchaser all right, title and interest in such
patents and applications and the causes of action to xxx for
infringement thereof and other enforcement rights.
1.3 Purchaser wishes to purchase from Seller all right, title and interest
in the Assigned Patent Rights (defined below), free and clear of any
restrictions, liens, claims, and encumbrances.
2. DEFINITIONS
"Assigned Patent Rights" means Patents and the additional rights set fourth in
paragraph 4.2.
"Assignment Agreements" means the agreements assigning ownership of the Patents
from the inventors and/or prior owners to Seller.
"Docket" means Seller's, or its agents', list or other means of tracking
information relating to the prosecution or maintenance of the Patents throughout
the world, including information relating to deadlines, payments, and filings,
which is current as of the Effective Date.
"Executed Assignment" means an executed original of the Assignment of Patent
Rights in Exhibit B.
"List of Prosecution Counsel" means the names and addresses of prosecution
counsel who prosecuted the Patents and who are currently handling the Patents.
"Patents" means (i) each of the provisional patent applications, patent
applications and patents listed on Exhibits A and B (as such lists may be
updated based on Purchaser's review of the Deliverables) hereto, (ii) all
patents or patent applications to which any of the foregoing claim priority, and
(iii) all reissues, reexaminations, extensions, continuations, continuations in
part, continuing prosecution applications, and divisions of such patents and
applications; and (iv) foreign counterparts to any of the foregoing, including
certificates of invention, utility models, industrial design protection, design
patent protection, and other governmental grants, and (v) any of the foregoing
in (ii)-(iv) whether or not expressly listed in Exhibit A and whether or not
abandoned, rejected, or the like.
"Unlimited Warranties" means, collectively, the representations and warranties
of Seller set forth in paragraphs 6.1, 6.2, 6.3, and 6.4 hereof.
3. TRANSMITTAL, REVIEW, CLOSING CONDITIONS AND PAYMENT.
3.1 Transmittal. Within twenty (20) calendar days following the Effective
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Date, Seller shall send to Purchaser the Assignment Agreements, the list
of Prosecution Counsel, fee Docket, and all files and original documents
(including, Letters Patents, assignments, and other documents necessary
to establish that the Seller's representations and warranties of Section
6 are true and correct) relating to the Patents, including all
prosecution files for pending patent applications included in the
Patents, and all files relating to the issued Patents ("Initial
Deliverables"). Seller acknowledges that Purchaser may request
additional documents based on Purchaser's review of the Initial
Deliverables (such additional documents and the Initial Deliverables,
collectively, the "Deliverables"), and that as a result of Purchaser's
review, the amount of payment and the assets listed in Exhibits A and B
may be revised.
3.2 Closing. The closing of the sale of the Assigned Patent Rights hereunder
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will occur when all conditions set forth in paragraph 3.3 have been
satisfied or waived (the "Closing"), Purchaser and Seller shall use
reasonable efforts to carry out the Closing within thirty (30) calendar
days following receipt of the last received Deliverables.
3.3 Closing Conditions. The following are conditions precedent to
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Purchaser's obligation to make we payment in paragraph 3.4.
(a) Transmittal of Documents. Seller shall have delivered to
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Purchaser all the Deliverables and the Executed Assignment.
(b) Compliance With Agreement. Seller shall have performed and
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complied in all respects with all of the obligations under this
Agreement that are to be performed or complied with by it on or
prior to the Closing.
(c) Representations and Warranties True. Purchaser shall be
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reasonably satisfied that, as of the Closing, the
representations and warranties of Seller contained in Section 6
hereof are true and correct.
3.4 Payment. At Closing, Purchaser shall pay to Seller the amount of Two
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Hundred and Fifty Thousand dollars ($250,000.00). Purchaser may record
the Executed Assignment with the United States Patent and Trademark
Office only upon Closing.
3.5 Termination and Survival. In the event all conditions to Closing set
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forth in Section 3.3 are not met within ninety (90) days following the
Effective Date, Purchaser shall have the right to terminate this
agreement by written notice to Seller. Upon termination, Purchaser will
return all documents delivered to Purchaser under this Section 3 to
Seller. The provisions of paragraphs 8.4, 8.6, and 8.8 will survive any
termination.
4. TRANSFER OF PATENTS AND ADDITIONAL RIGHTS
4.1 Assignment of Patents. Upon the Closing, Seller hereby sells, assigns,
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transfers and conveys to Purchaser all right, title and interest in and
to the Patents and the Patent Rights (as defined in Exhibit B). Seller
understands and acknowledges that if any of the Patents are assigned to
Seller's affiliates or subsidiaries, prior to Closing, Seller may be
required to perform certain actions to establish that Seller is the
assignee and to record such assignments.
4.2 Assignment of Additional Rights. Upon the Closing, Seller hereby also
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sells, assigns, transfers and conveys to Purchaser all right, title and
interest in and to
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(a) inventions and discoveries described in any of the Patents;
(b) rights to apply in any or all countries of the world for
patents, certificates of invention, utility models, industrial
design protections, design patent protections, or other
governmental grants of any type related to any of the Patents
and the inventions and discoveries therein;
(c) causes of action (whether currently pending, filed, or
otherwise) and other enforcement rights, including, without
limitation, all rights under the Patents and/or under or on
account of any of the Patents and the foregoing category (b) to
(i) damages, (ii) injunctive relief, and (iii) any other
remedies of any kind for past, current and future infringement;
and
(d) rights to collect royalties or other payments under or on
account of any of the Patents or any of the foregoing.
5. ADDITIONAL OBLIGATIONS
5.1 Further Cooperation.
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(a) At the reasonable request of Purchaser, Seller shall execute and
deliver such other instruments and do and perform such other
acts and things as may be necessary or desirable for effecting
completely the consummation of the transactions contemplated
hereby, including execution, acknowledgment and recordation of
other such papers, and using commercially reasonable efforts to
obtain the same from the respective inventors, as necessary or
desirable for fully perfecting and conveying unto Purchaser the
benefit of the transactions contemplated hereby. In addition,
Seller will continue to prosecute the Patents at its expense
until the Closing.
(b) Seller shall also, at the reasonable request of Purchaser,
assist Purchaser in asserting claims under the Patents, and/or
enforcing the causes of action assigned under paragraph 4.2.
Such assistance shall include providing, and obtaining, from the
respective inventors, prompt production of pertinent facts and
documents, giving of testimony, execution of petitions, oaths,
powers of attorney, specifications, declarations or other papers
and other assistance reasonably necessary for filing patent
applications, infringement, enforcement or other actions and
proceedings respect to the claims under the Patents.
Notwithstanding the no-demand-for-consideration clause in the
Executed Assignment, Purchaser shall compensate Seller for any
reasonable, documented disbursements and time incurred in,
connection with providing assistance under this subparagraph
5.1(b) in connection with any enforcement or other infringement
action regarding the Patents, under a standard billable hourly
rate of Seller; provided that Seller shall provide Purchaser
with an advance, written estimate of the fees and costs for such
assistance and Purchaser shall have agreed in writing to pay
such fees and costs. This subparagraph 5.1 (b) shall control to
the extent of any conflicting language regarding compensation in
the second to last paragraph of the Executed Assignment.
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5.2 Payment of Fees. Seller shall pay any maintenance fees, annuities, and
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the like due or payable on the Patents until the Closing. For the
avoidance of doubt, Seller shall pay any maintenance fees for which the
fee payment window opens on or prior to the Closing even if the
surcharge date would be after the Closing.
6. REPRESENTATIONS AND WARRANTIES OF SELLER
Seller hereby represents and warrants to Purchaser as follows that, as of the
Effective Date and as of the Closing:
6.1 Authority. Seller has the full power and authority, and has obtained all
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third party consents, approvals and/or other authorizations required, to
enter into this Agreement and to carry out its obligations hereunder,
including, without limitation, the assignment of the Assigned Patent
Rights to Purchaser.
6.2 Title and Contest. Seller owns all right, title, and interest to the
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Assigned Patent Rights, including all right, title, and interest to xxx
for infringement of the Patents. Seller has obtained and properly
recorded previously executed assignments for the Assigned Patent Rights
as necessary to fully perfect its rights and title therein in accordance
with governing law and regulations in each respective jurisdiction. The
Assigned Patent Rights are free and clear of all liens, claims,
mortgages, security interests or other encumbrances, and restrictions.
There are no actions, suits, investigations, claims or proceedings
threatened, pending or in progress relating in any way to the Assigned
Patent Rights. There are no existing contracts, agreements, options,
commitments, proposals, bids, offers, or rights with, to, or in any
person to acquire any of the Assigned Patent Rights, except for the
licenses listed in Exhibit C, each of which is nontransferable and
nonsublicensable, except as noted on such Exhibit, and nonexclusive.
6.3 Existing Licenses. No licenses under the Patents, or interest or rights
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in any of the Assigned Patent Rights, have been granted or retained,
except for the licenses listed in Exhibit C, each of which is
nontransferable (except that the patent rights granted under the Uniden
License Agreement described on Exhibit C may be transferred to the
successor to the entire business of Uniden America Corporation),
nonsublicensable, and nonexclusive.
6.4 Restrictions on Rights. Purchaser shall not be subject to any covenant
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not to xxx or similar restrictions on its enforcement or enjoyment of
the Assigned Patent Rights as a result of any prior transaction related
to the Assigned Patent Rights.
6.5 Conduct. Seller or its agents or representatives are not aware of any
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conduct, or aware to having omitted to perform any necessary act, the
result of which would invalidate any of the Patents or hinder their
enforcement, including, without limitation, misrepresenting Seller's
patent rights to a standard-setting organization.
6.6 Enforcement. Seller has not put a third party on notice of actual or
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potential infringernent of any of the Patents. Seller has not invited
any third party to enter into a license under any of the Patents. Seller
has not initiated any enforcement action with respect to any of the
Patents.
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6.7 Patent Office Proceedings. None of the Patents has been or is currently
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involved in any reexamination, reissue, interference proceeding, or any
similar proceeding, and no such proceedings are pending or threatened.
6.8 Fees. All maintenance fees, annuities, and the like due or payable on
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the Patents have been timely paid. For the avoidance of doubt, such
timely payment includes payment of maintenance fees for which the fee
payment window has opened even if the surcharge date is in the future.
6.9 Validity and Enforceability. The Patents have never been found invalid
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or unenforceable for any reason in any administrative, arbitration,
judicial or other proceeding, and Seller does not know of and has not
received any notice or information of any kind from any source
suggesting that the Patents may be invalid or unenforceable.
7. REPRESENTATIONS AND WARRANTIES OF PURCHASER
Purchaser hereby represents and warrants to Seller as follows that, as of the
Effective Date and as of the Closing;
7.1 Purchaser is a limited liability company duly formed, validly existing
and in good standing under the laws of the jurisdiction of its
formation.
7.2 Purchaser has all requisite power and authority to (i) enter into,
execute and deliver this Agreement and (ii) perform fully its
obligations hereunder.
8. MISCELLANEOUS
8.1 Limitation of Liability. EXCEPT IN THE EVENT OF FRAUD OR BREACH OF ANY
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UNLIMITED WARRANTY BY SELLER, SELLER'S TOTAL LIABILITY UNDER THIS
AGREEMENT SHALL NOT EXCEED THE PURCHASE PRICE SET FORTH IN PARAGRAPH 3.4
OF THIS AGREEMENT. PURCHASER'S TOTAL LIABILITY UNDER THIS AGREEMENT
SHALL NOT EXCEED THE PURCHASE PRICE SET FORTH IN PARAGRAPH 3.4 OF THIS
AGREEMENT, THE PARTIES ACKNOWLEDGE THAT THESE LIMITATIONS ON POTENTIAL
LIABILITIES WERE AN ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER
THIS AGREEMENT.
8.2 Limitation on Consequential Damages. NEITHER PARTY SHALL HAVE ANY
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OBLIGATION OR LIABILITY (WHETHER IN CONTRACT, WARRANTY, TORT (INCLUDING
NEGLIGENCE) OR OTHERWISE, AND NOTWITHSTANDING ANY FAULT, NEGLIGENCE
(WHETHER ACTIVE, PASSIVE OR IMPUTED), REPRESENTATION, STRICT LIABILITY
OR PRODUCT LIABILITY), FOR COVER OR FOR ANY INCIDENTAL, INDIRECT OR
CONSEQUENTIAL DAMAGES OR LOSS OF REVENUE, PROFIT, SAVINGS OR BUSINESS
ARISING FROM OR OTHERWISE RELATED TO THIS AGREEMENT, EVEN IF A PARTY
OR ITS EMPLOYEES HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
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8.3 Compliance With Laws. Notwithstanding anything contained in this
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Agreement to the contrary, the obligations of the parties shall be
subject to all laws, present and future, of any government having
jurisdiction over the parties and this transaction, and to orders,
regulations, directions or requests of any such government.
8.4 Confidentiality of Terms. The parties hereto shall keep the terms and
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existence of this Agreement and the identities of the parties hereto and
their affiliates confidential and shall not now or hereafter divulge any
of this information to any third party except (a) with the prior written
consent of the other party; (b) as otherwise may be required by law or
legal process, including in confidence to legal and financial advisors
in their capacity of advising a party in such matters; (c) during the
course of litigation, so long as the disclosure of such terms and
conditions is restricted in the same manner as is the confidential
information of other litigating parties; (d) in confidence to its legal
counsel, accountants, banks and financing sources and their advisors
solely in connection with complying with financial transactions; (e) by
Purchaser, in order to perfect Purchaser's interest in the Assigned
Patent Rights with any governmental patent office (including, without
limitation, recording the Executed Assignment in any governmental patent
office); or (f) to enforce Purchaser's right, title and interest in and
to the Assigned Patent Rights; provided that, in (b) through (d) above,
(i) the disclosing party shall use all legitimate and legal means
available to minimize the disclosure to third parties, including,
without limitation, seeking a confidential treatment request or
protective order whenever appropriate or available; and (ii) the
disclosing party shall provide the other party with at least ten (10)
days' prior written notice of such disclosure. Without limiting the
foregoing, Seller agrees that it will cause its agents involved in this
transaction to abide by the terms of this paragraph 8.4, including
ensuring that such agents do not disclose or otherwise publicize the
existence of this transaction with actual or potential clients in
marketing materials, or industry conferences.
8.5 Publicity and SEC Reporting. Seller may make one public announcement
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contemporaneously with the signing of this Agreement and one public
announcement contemporaneously with Closing. Both such announcements
will be substantially of the form set forth in Exhibit D. Seller shall
submit any such proposed announcement to Purchaser at least five
business days prior to its making such an announcement for Purchaser's
review and approval, which approval shall not be unreasonably withheld
by Purchaser so long as it substantially conforms to Exhibit D. Seller
will file with the SEC the portion of this Agreement that is necessary
to be filed with the SEC.
8.6 Governing Law; Venue/Jurisdiction. This Agreement shall be interpreted,
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construed and enforced in all respects in accordance with the laws of
the State of New York, without reference to its choice of law principles
to the contrary. Neither party shall commence or prosecute any action,
suit, proceeding or claim arising under or by reason of this Agreement
other than in the state or federal courts located in New York. Each
party hereby irrevocably consents to the jurisdiction and venue of the
courts identified in the preceding sentence in connection with any
action, suit, proceeding or claim arising under or by reason of this
Agreement.
8.7 Notices. All notices given hereunder shall be given in writing (in
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English or with an English translation), shall refer to Purchaser and to
this Agreement and shall be: (i) personally delivered, (ii) delivered
prepaid by an internationally recognized express courier service, or
(iii) sent postage prepaid registered or certified U.S. mail (return
receipt requested) to the address specified in writing by each Party to
the other.
Page 6
Notices are deemed given on (a) the date of receipt if delivered
personally or by express courier (or if delivery refused, the date of
refusal), or (b) the fifth (5th) calendar day after the date of posting
if sent by US mail. Notice given in any other manner shall be deemed to
have been given only if and when received at the address of the person
to be notified. Either party may from time to time supply its address
for notices under this Agreement by giving the other party written
notice of such change in accordance with this paragraph.
8.8 Relationship of Parties. The parties are independent contractors and not
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partners, joint venturers, or agents of the other. Neither party assumes
any liability of or has any authority to bind, or control the activities
of, the other.
8.9 Equitable Relief. Seller agrees that damages alone would be insufficient
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to compensate Purchaser for a breach of this Agreement, acknowledges
that irreparable harm would result from a breach of this Agreement, and
Seller understands that Purchaser will seek entry of an order for
injunctive relief to prevent a breach or further breach, and that
Purchaser may also seek entry of an order for specific performance to
compel performance of any obligations under this Agreement.
8.10 Severability. If any provision of this Agreement is found to be invalid
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or unenforceable, then the remainder of this Agreement shall have full
force and effect, and the invalid provision shall be modified, or
partially enforced, to the maximum extent permitted to effectuate its
original objective.
8.11 Waiver. Failure by either party to enforce any term of this Agreement
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shall not be deemed a waiver of future enforcement of that or any other
term in this Agreement or any other agreement that may be in place
between the parties.
8.12 Miscellaneous. This Agreement, including its exhibits, constitutes the
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entire agreement between the parties with respect to the subject matter
hereof, and merges and supersedes all prior and contemporaneous
agreements, understandings, negotiations and discussions. Neither of the
parties shall be bound by any conditions, definitions, warranties,
understandings, or representations with respect to the subject matter
hereof other than as expressly provided herein. The section headings
contained in this Agreement are for reference purposes only and shall
not affect in any way the meaning or interpretation of this Agreement.
No oral explanation or oral information by either party hereto shall
alter the meaning or interpretation of this Agreement. No amendments or
modifications shall be effective unless in writing signed by authorized
representatives of both parties. These terms and conditions shall
prevail notwithstanding any different, conflicting or additional terms
and conditions that may appear on any purchase order, acknowledgment or
other writing not expressly incorporated into this Agreement. The
following exhibits are attached hereto and incorporated herein: Exhibit
A (entitled "Patents to be Assigned"); Exhibit B (entitled "Assignment
of Patent Rights"); Exhibit C (entitled "Existing Licenses") and Exhibit
D (entitled "Press Release")
Page 7
8.13 Counterparts; Electronic Signature. This Agreement may be executed in
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counterparts, each of which shall be deemed an original, and all of
which together constitute one and the same instrument. Each party shall
execute and deliver to the other parties a copy of this Agreement
bearing its original signature. Prior to such execution and delivery, in
order to expedite the process of entering into this Agreement, the
parties acknowledge that Transmitted Copies of this Agreement shall be
deemed original documents. "Transmitted Copies" means copies that are
reproduced or transmitted via email of a .pdf file, photocopy, facsimile
or other process of complete and accurate reproduction and
transmission.
THE REMAINDER OF THIS PAGE INTENTIONALLY LEFT BLANK
Page 8
In witness whereof, the parties have executed this Patent Purchase
Agreement as of the Effective Date.
SELLER: PURCHASER:
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NOTIFY TECHNOLOGY CORPORATION SUNSHINE DATA VENTURES LLC
By: Jakinda Management LLC
By: /s/ Xxxx X. XxXxxx By: /s/ Xxxxx X. Xxxxxxx
----------------------- -------------------------
Name: Xxxx X. XxXxxx Name: Xxxxx X. Xxxxxxx
Title: Chief Executive Officer Title: Authorized Representative
Date: March 15, 2006 Date: March 22, 2006
Page 9
Exhibit A
PATENTS TO BE ASSIGNED
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE AND INVENTOR(S)
------------------------- ------- ----------- -------------------------------
5825852 USA 07/24/1996 MULTISENSING
CIRCUITRY FOR CLASS
SIGNALS AND STUTTER
DIAL TONE IN VISUAL
MESSAGE WAITING
INDICATOR
Xxxx XxXxxx
0000000 XXX 12/14/1994 TELEPHONE PRIVACY
DEVICE WITH
CONFERENCE AND
INDICATOR FEATURES
Xxxx XxXxxx
0000000 XXX 10/06/1998 MULTISENSING
CIRCUITRY FOR CLASS
SIGNALS AND STUTTER
DIAL TONE IN VISUAL
MESSAGE WAITING
INDICATOR
Xxxx XxXxxx
0000000 XXX 11/09/1999 CALL WAITING-CALLER
IDENTIFICATION
NOTIFICATION DEVICE
Xxxx XxXxxx
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Exhibit B
ASSIGNMENT OF PATENT RIGHTS
For good and valuable consideration, the receipt of which is hereby
acknowledged, Notify Technology, Corporation a California corporation having
offices at 0000 X. XxXxxx Xxxx. Xxxxx 000 Xxx Xxxx, XX 00000 ("Assignor"}, does
hereby sell, assign, transfer and convey unto Sunshine Data Ventures LLC, a
Nevada limited liability company, ("Assignee"), or its designees, all right,
title and interest that exist today and may exist in the future in and to all of
the following (the "Patent Rights"): (a) the provisional patent applications,
patent applications and patents listed below, (b) all patents or patent
applications to which any of the foregoing claim priority, and (c) current or
future rights to (i) provisional patent applications, patent applications, and
patents of any kind relating to any inventions and discoveries described in any
provisional patent applications, patent applications and patents listed below;
(ii) reissues, reexaminations, extensions, continuations, continuations in part,
continuing prosecution applications, and divisions of such patents and
applications; and (iii) foreign counterparts to any of the foregoing, including,
without limitation, certificates of invention, utility models, industrial design
protection, design patent protection, and other governmental grants; (d) the
rights to all inventions and discoveries described in any provisional patent
application, patent application or patent listed below and all other rights
arising out of such inventions and discoveries; (e) rights to apply in any or
all countries of the world for patents, certificates of invention, utility
models, industrial design protections, design patent protections or other
governmental grants of any type related to the any of the foregoing categories
(a), (b), (c) and (d), including, without limitation, under the Paris Convention
for the Protection of Industrial Property, the International Patent Cooperation
Treaty, or any other convention, treaty, agreement or understanding; (f) causes
of action (whether currently pending, filed, or otherwise) and other enforcement
rights, including, without limitation, all rights under the provisional patent
applications, patent applications and patents listed below and/or under or on
account of any of the foregoing categories (b), (c) and/or (d) to
(i) damages,
(ii) injunctive relief and
(iii) other remedies of any kind
for past, current and future infringement; and
(g) all rights to collect royalties and other payments under or on account of
any of the foregoing.
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Exhibit B
PATENT OR APPLICATION NO. COUNTRY FILING DATE TITLE AND INVENTOR(S)
------------------------- ------- ----------- -------------------------------
5825852 USA 07/24/1996 MULTISENSING
CIRCUITRY FOR CLASS
SIGNALS AND STUTTER
DIAL TONE IN VISUAL
MESSAGE WAITING
INDICATOR
Xxxx XxXxxx
0000000 XXX 12/14/1994 TELEPHONE PRIVACY
DEVICE WITH
CONFERENCE AND
INDICATOR FEATURES
Xxxx XxXxxx
0000000 XXX 10/06/1998 MULTISENSING
CIRCUITRY FOR CLASS
SIGNALS AND STUTTER
DIAL TONE IN VISUAL
MESSAGE WAITING
INDICATOR
Xxxx XxXxxx
0000000 XXX 11/09/1999 CALL WAITING-CALLER
IDENTIFICATION
NOTIFICATION DEVICE
Xxxx XxXxxx
Assignor represents, warrants and covenants that:
(1) Assignor has the full power and authority, and has obtained all
third party consents, approvals and/or other authorizations required, to enter
into this Agreement, make the assignments, and to carry out its obligations
under this Assignment of Patent Rights;
(2) Assignor owns all right, title, and interest to the Patent
Rights, including, without limitation, all right, title, and interest to xxx for
infringement of the Patent Rights. Assignor has obtained and properly recorded
previously executed assignments for the Patent Rights as necessary to fully
perfect its rights and title therein in accordance with governing law and
regulations in each respective jurisdiction. The Patent Rights are free and
clear of all liens, claims, mortgages, security interests or other encumbrances,
and restrictions. There are no actions, suits, investigations, claims or
proceedings threatened, pending or in progress relating in any way to the Patent
Rights. There are no existing contracts, agreements, options, commitments,
proposals, bids, offers, or rights with, to, or in any person to acquire any of
the Patent Rights.
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Exhibit B
Assignor hereby authorizes the respective patent office or governmental
agency in each jurisdiction to issue any and all patents, certificates of
invention, utility models or other governmental grants that may be granted upon
any of the Patents Rights in the name of Assignee, as the assignee to the entire
interest therein.
Assignor shall, at the reasonable request of Assignee and without
demanding any further consideration therefor, do all things necessary, proper,
or advisable, including without limitation the execution, acknowledgment and
recordation of specific assignments, oaths, declarations and other documents on
a country-by-country basis, to assist Assignee in obtaining, perfecting,
sustaining, and/or enforcing the Patent Rights. Such assistance shall include
providing, and obtaining from the respective inventors, prompt production of
pertinent facts and documents, giving of testimony, execution of petitions,
oaths, powers of attorney, specifications, declarations or other papers and
other assistance reasonably necessary for filing patent applications, complying
with any duty of disclosure, and conducting prosecution, reexamination, reissue,
interference or other priority proceedings, opposition proceedings, cancellation
proceedings, public use proceedings, infringement or other court actions and the
like with respect to the Patent Rights.
The terms and conditions of this Assignment of Patent Rights shall inure
to the benefit of Assignee, its successors, assigns and other legal
representatives, and shall be binding upon Assignor, its successor, assigns and
other legal representatives.
IN WITNESS WHEREOF this Assignment of Patent Rights is executed at
San Jose, CA on________________________.
ASSIGNOR
By:
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Name: Xxxx X.XxXxxx
Title: Chief Executive Officer
(Signature MUST be notarized)
STATE OF_________________ )
)ss.
COUNTY OF________________ )
On____________________, before me,____________________________________,
Notary Public in and for said State, 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/she executed the same in his/her authorized capacity,
and that by his/her 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.
Signature________________________________ (Seal)
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Exhibit C
EXISTING LICENSES
Notify entered into an Visual Message Waiting Indicator License Agreement dated
8/26/98 with Uniden America Corporation, a Delaware corporation ("Uniden"),
having a principal place of business at 0000 Xxxx Xxxxxx Xxxx., Xxxx Xxxxx,
Xxxxx 00000 to use its multi-sense technology in Notify products for a royalty
fee. The Agreement was amended on 4/13/04 granting Uniden and its affiliates an
unlimited non-exclusive license to use our multi-sense technology in their
products for a one time payment. The Visual Message Waiting Indicator License
Agreement as amended through April 13, 2004 is referred to in this Exhibit as
the "Uniden License Agreement".
Purchaser is not assuming any obligation of Notify under the Uniden License
Agreement.
The documentation of the patents involved is not precise but the intent of the
license agreement and the oral negotiation granted Uniden full coverage under
the U.S. Patent Numbers 5,825,852 and 6,208,731 (the "Notify multi-sensing
patents"). The Purchaser hereby acknowledges this disclosure and agrees: (a)
that - notwithstanding the express text of Section 3 of the Visual Message
Waiting Indicator License Agreement dated August 26, 1998 - the Notify
multi-sensing patents will be deemed by Purchaser to be included in the patents
under which rights were granted to Uniden under Section 3 of the Visual Message
Waiting Indicator License Agreement dated August 26, 1998; and (b) not to pursue
Uniden during the term of the Uniden License Agreement for infringement of
claims in the Notify multi-sensing patents to the extent of the license rights
granted to Uniden in the Uniden License Agreement.
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Exhibit D
PRESS RELEASE CONTENT
AFTER EXECUTION BY BOTH PARTIES:
San Jose, CA, March __, 2006 -- Notify Technology Corporation (OTC: NTFY)
announced today that it has signed an agreement to sell selected patents to
Sunshine Data Ventures LLC, for net proceeds of approximately $250,000 subject
to customary closing conditions.
The patents involved are associated with Notify's legacy wireline hardware
product line and are not related to their NotifyLink wireless solution software
product line.
AT CLOSING:
San Jose, CA, April __, 2006 -- Notify Technology Corporation (OTC: NTFY)
announced today that it has completed the sale of selected patents to Sunshine
Data Ventures LLC, for net proceeds of $250,000.
The patents involved are associated with Notify's legacy wireline hardware
product line and are not related to their NotifyLink wireless solution software
product line.
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