EXECUTION COPY
COMMERCIALIZATION AGREEMENT
by and among
P-NEWCO
and
TECHNOLOGY PROPERTIES LIMITED
and
PATRIOT SCIENTIFIC CORPORATION
*** Indicates material omitted pursuant to an application for confidential
treatment and that material has been filed separately with the
Commission.
TABLE OF CONTENTS
Page
ARTICLE 1 GRANT....................................................1
ARTICLE 2 COMMERCIALIZATION........................................2
ARTICLE 3 COVENANTS................................................3
ARTICLE 4 PAYMENT ***..............................................4
ARTICLE 5 TERM.....................................................5
ARTICLE 6 TERMINATION..............................................5
ARTICLE 7 REPRESENTATIONS AND WARRANTIES...........................6
ARTICLE 8 GENERAL..................................................7
EXHIBIT A GRANT & SCHEDULE OF PATENTS
SCHEDULE 1 SCHEDULE OF PATENTS
SCHEDULE 2 PROJECT DESCRIPTION ***
SCHEDULE 3 SCHEDULE OF OUTSTANDING ACTIVITIES/RIGHTS/CLAIMS
(i)
COMMERCIALIZATION AGREEMENT
This Commercialization Agreement ("Commercialization Agreement") is
entered into by and among [P-Newco], a Delaware limited liability corporation
("P-Newco"), Patriot Scientific Corporation, a Delaware corporation ("Patriot"),
having its principal place of business at 00000 Xxx Xxxxxxxx, Xxx Xxxxx,
Xxxxxxxxxx 00000, and Technology Properties Limited Inc., a California
Corporation ("TPL"), having its principal place of business at 00000 Xxxxxxx
Xxxxx Xxxxxxxxx, Xxx. 000, Xxxxxxxxx, Xxxxxxxxxx 00000. Capitalized terms used
but not defined herein shall have the meanings given to such terms in that
certain agreement dated as of June 7, 2005 (the "Master Agreement").
WHEREAS, Patriot, TPL and Xxxxxxx X. Xxxxx ("Xxxxx") collectively hold
all rights with respect to certain microprocessor implementation and
architecture patents set forth on Schedule 1 (the "MSD Patents");
WHEREAS, Xxxxx has transferred complete authority for the management of
Xxxxx'x rights to the MSD Patents to TPL;
WHEREAS, Patriot, TPL and Xxxxx have entered into the Master Agreement,
pursuant to which Patriot and TPL are entering into licenses with P-Newco and
T-Newco, respectively, with respect to certain of their rights in the MSD
Patents (collectively, the "Newco Licenses");
WHEREAS, Patriot, TPL, P-Newco and T-Newco have entered into a Merger
Agreement, pursuant to which T-Newco merged with and into P-Newco, with P-Newco
continuing as the surviving entity and holding all of the rights with respect to
the MSD Patents formerly held by P-Newco and T-Newco;
WHEREAS, pursuant to the Master Agreement, P-Newco, Patriot and TPL are
entering into this Commercialization Agreement providing for the
commercialization of P-Newco's interests in the MSD Patents by TPL in return for
the commitment of TPL to diligently pursue the commercialization; and
WHEREAS, concurrently herewith Patriot and TPL are entering into that
certain Limited Liability Company Operating Agreement of P-Newco (the "Operating
Agreement"), governing the rights and obligations of Patriot and TPL with
respect to their membership interests in P-Newco and the distribution of the
proceeds received from the commercialization program contemplated by this
Commercialization Agreement.
NOW THEREFORE, for and in consideration of the mutual covenants herein
contained as well as other good and valuable consideration the receipt and
sufficiency of which is hereby acknowledged, the parties hereto covenant and
agree that:
GRANT
..1 Pursuant to the Master Agreement, P-Newco and TPL shall enter into the grant
attached hereto as Exhibit A (the "Grant").
1
COMMERCIALIZATION
.1 TPL shall exert reasonable best efforts to implement the activities
(the "Commercialization") described at Schedule 2 and to conduct the project
described therein ("Project") in accordance with the project description (the
"Project Description") including the Business Plan then in effect.
(a) The first Business Plan is made a part of the Project Description as
Attachment I to Schedule 2, and shall remain in full force and effect until
replaced by agreement of P-Newco and TPL.
(b) TPL shall have no obligation to pursue or fund any effort to
prosecute, maintain, enforce or defend any element of the MSD Patents other than
as specifically provided for in Schedule 2.
.2 By these presents, P-Newco appoints, authorizes, and directs TPL to
take any and all action for the term of this Commercialization Agreement, with
respect to all matters that are related to P-Newco's rights to the MSD Patents,
including without limitation:
(a) entering into settlement and/or license agreements related to the MSD
Patents which meet the Commercialization guidelines set forth in Section II of
Schedule 2;
(b) with the prior written consent of the P-Newco Management Committee,
entering into any settlement and license agreements related to the MSD Patents
which do not meet the guidelines set forth in Section II of Schedule 2;
(c) to xxx in the name of TPL, Xxxxx, Patriot and/or P-Newco and to pursue
for the use and benefit of the parties hereto as their respective interests
appear: (i) all remedies of whatsoever kind or nature with respect to the
protection, use, and enforcement of the MSD Patents; (ii) the collection of all
claims for damages, profits, and awards relating to the past, present, or future
use or ownership of the MSD Patents; and (iii) all equitable relief available in
connection therewith; and
(d) to otherwise manage and control by license, sublicense, or other
agreement the practice and/or use of the MSD Patents by third parties.
2.3.TPL may utilize the services of its various licensing personnel who
may be lawyers to implement the Commercialization of the MSD Patents. Such
services shall for no purpose be deemed to be legal services or to give rise to
a lawyer-client relationship between TPL and/or TPL affiliates or
Representatives on the one hand, and P-Newco and/or Patriot or any of their
respective affiliates or Representatives on the other hand. Without limiting the
foregoing, neither TPL nor any TPL Representative shall for any purpose be
deemed to have:
(i) Provided legal services or advice to;
(ii) Undertaken the representation of; or
2
(iii) Entered into a lawyer-client relationship with,
P-Newco, Patriot or any of P-Newco's or Patriot's respective affiliates or
Representatives.
COVENANTS
.1 Within sixty (60) days after the close of each calendar quarter TPL
shall deliver to P-Newco: (i) an operating statement reflecting the Project's
financial activity over the past quarter; (ii) a calculation of the Gross Cash
Proceeds (as defined in the Operating Agreement) resulting from the Project; and
(iii) an itemization of all TPL Direct Reimbursable Expenses (as defined below).
(a) Within thirty (30) days after P-Newco's receipt thereof, Patriot shall
deliver to TPL written notice detailing all objections to such materials and
calculations on an individual item-by-item basis. Any objection not so noticed
shall be deemed to be waived.
(b) Costs related to verifying reported time and expense charges and/or
auditing reports or activities shall be paid in advance by the entity (either
Patriot or TPL) supporting such request for verification or audit.
.2 As requested by TPL, Patriot and P-Newco shall have a continuing
obligation to exert their respective reasonable best efforts to support the
Project, cooperate with TPL in the execution of its obligations, and to provide
such support in the manner described herein and in the Master Agreement.
.3 Upon reasonable request, P-Newco and Patriot shall promptly execute and
deliver all documents, instruments, and things necessary or useful in the
conduct of TPL's activities hereunder, and Patriot and P-Newco agree to
cooperate in any litigation with respect to the MSD Patents, including providing
any reasonable assistance in connection with such litigation or joining as a
party thereto, as requested by TPL, provided that neither Patriot nor P-Newco
shall be required to provide financial support except as otherwise provided in
the Commercialization Agreement.
.4 Patriot and P-Newco shall each avoid and refrain from any and all
activity of any kind or nature which may impede, impair, frustrate or otherwise
interfere with the activities of TPL in the execution the Project, and shall:
(a) Exert their respective reasonable best efforts to impose the covenants
of this Commercialization Agreement, the Master Agreement and the transactions
contemplated hereby and thereby on their respective directors, officers,
employees, consultants, attorneys, agents and other affiliates or
Representatives; and
(b) Be responsible hereunder for each and every failure in the good and
faithful performance of this Commercialization Agreement and transaction by
themselves and/or their respective directors, officers, employees, consultants,
attorneys, agents and other affiliates or Representatives (other than TPL).
.5 With the exception of the agreements and transactions entered into
pursuant to the Project, P-Newco, Patriot and TPL shall not transfer, assign,
license, or otherwise convey any interest in, or grant any security interest
with respect to, any portion of their interest in the MSD Patents during the
term of this Commercialization Agreement without the written consent of all
parties hereto, other than to entities which are owned and controlled by the
transferring Person and who assume and agree to pay and perform all of the
transferor's obligations hereunder.
3
.6 Upon the termination of this Commercialization Agreement, Patriot shall
be entitled to receive a copy of third party "DeCaps" (as such term is commonly
understood to mean in the industry) related to the Commercialization and third
party expert analyses thereof; and TPL does hereby consent to the deliveries
thereof by such third party experts. In the event any of the foregoing are not
provided by such third parties, TPL will provide Patriot with copies of such
documents in its possession. In addition, a Patriot Representative shall be
entitled to view such "DeCaps" on a quarterly basis, but shall not be entitled
to make copies thereof. With the exception of TPL's obligations pursuant to
Section 3.1 and this Section 3.6, TPL shall not be obligated to share any other
materials related to the Commercialization, including without limitation any
attorney work product generated during the term of this Commercialization
Agreement or thereafter, which for all intents and purposes shall be deemed to
be privileged, proprietary and exclusive to TPL.
3.7.P-Newco and Patriot shall on a continuing basis provide TPL all leads,
information, and materials which Patriot encounters or discovers which may
relate to the rights to the MSD Patents transferred by Patriot and TPL to
P-Newco pursuant to the Newco Licenses, shall exert their respective reasonable
best efforts to support the Commercialization activities of TPL hereunder, and
shall refrain from all contact with third parties regarding the MSD Patents
except as is specifically approved and/or requested in writing by TPL. The
foregoing shall not affect the exercise of the retained rights of Patriot or TPL
under the Newco Licenses.
PAYMENT
.1 TPL shall cause all Gross Cash Proceeds generated from the
Commercialization efforts to be paid directly to P-Newco.
.2 Upon the submission of customary and appropriate invoices and other
supporting documentation, P-Newco shall reimburse TPL for the payment of all
legal and third-party expert fees and other related third-party costs and
expenses, including without limitation those incurred in connection with patent
maintenance and prosecution and third party "DeCaps" and third party expert
analysis relating thereto (the "TPL Direct Reimbursable Expenses") incurred by
TPL in connection with the Project and in conformity with the applicable
Business Plan, as well as all TPL Direct Reimbursable Expenses not in conformity
with the applicable Business Plan, to the extent approved by the P-Newco
Management Committee. All such reimbursement shall be made prior to the due date
indicated on the invoice.
.3 P-Newco shall make payment to TPL of $500,000 no later than three (3)
days prior to the start of each fiscal quarter from the Working Capital Fund to
cover indirect and other expenses related to the Project which do not constitute
TPL Direct Reimbursable Expenses ("TPL Other Project Expenses"). Advances to TPL
made pursuant to this Section 4.3 shall be nonaccountable and nonrecoupable, but
shall offset the amounts owed TPL pursuant to Section 6.1(a)(iv)(b) of the
Operating Agreement in the manner contemplated by such Section 6.1(a)(iv)(b). At
such time as the Working Capital Fund exceeds $*** after the first $*** has been
generated pursuant to the Commercialization, such quarterly payment shall be
increased (but not decreased) to one-eighth of the amount of the Working Capital
Fund.
4
.4 To the extent that P-Newco does not have sufficient funds from the
Working Capital Fund at the time any payment is due pursuant to this Article IV,
TPL shall refrain from enforcing any collection rights against P-Newco for such
payments until the earlier of (a) such time as funds become available in the
Working Capital Fund, or (b) termination of this Commercialization Agreement.
TERM
.1 This Commercialization Agreement shall continue for the useful life of
the MSD Patents, which shall be deemed to be the greater of the period of time
during which any of the MSD Patents is either (i) susceptible to legal
protection, or (ii) reasonably perceived to have commercial value.
.2 In the event that facts or events are discovered or occur which
materially reduce TPL's evaluation of the useful life or commercial value of the
MSD Patents, or the viability of the Project, TPL may reduce the term of this
Commercialization Agreement accordingly by providing P-Newco with ninety (90)
days written notice, provided that TPL shall not reduce the term of this
Commercialization Agreement to less than six (6) months.
.3 After the expiration of the term provided for above, neither party
shall have any further obligation hereunder other than the administration of all
outstanding transactions as under Article VI below, and the obligations of
confidentiality undertaken by the parties.
TERMINATION
.1 TPL may terminate this Commercialization Agreement upon the failure of
Patriot or P-Newco to substantially perform any of their material obligations to
be performed hereunder, including without limitation the payment obligations
pursuant to Article IV of this Commercialization Agreement.
.2 P-Newco may terminate this Commercialization Agreement if:
(a) TPL has failed to close transactions in accordance with the
Performance Milestones set forth in Section IV of Schedule 2, and
(i) there has been no material breach by Patriot or P-Newco of
this Commercialization Agreement, the Master Agreement, the
Newco Licenses or the Operating Agreement; and
(ii) there has been no event or occurrence which negatively and
materially impacts the viability or value of the MSD Patents;
and
5
(iii) the failure of TPL is not reasonably attributable to the
conduct of P-Newco, Patriot and/or their respective affiliates
or Representatives (other than TPL); or
(b) TPL enters into a liquidation under Chapter 7 of the United States
Bankruptcy Code; or
(c) TPL enters into a reorganization under Chapter 11 of the United
States Bankruptcy Code, and TPL ceases to be a debtor in possession
during the pendency of such bankruptcy proceeding.
Each of the events referred to in Sections 6.1 and 6.2 shall be
referred to as a "Termination Event." In no event shall the conduct of Xxxxx be
deemed to constitute a Termination Event.
.3 Upon termination pursuant to this Article VI:
(a) All rights to the MSD Patents arising under the Grant or this
Commercialization Agreement shall be transferred to P-Newco subject to all
outstanding rights under licenses, agreements, or awards theretofore made and
entered into by or with TPL prior to such expiration or termination which, for
all purposes, shall continue and be administered by TPL under TPL's then current
reasonable hourly fee schedule as if this Commercialization Agreement were still
in full force and effect.
(b) All amounts due to TPL with respect to TPL Direct Project Expenses and
TPL Other Project Expenses shall be paid from Gross Cash Proceeds as such funds
are received.
(c) At the option of Patriot, TPL, or P-Newco, all of the rights and
privileges of whatsoever kind or nature granted by it shall immediately and
without further action whatsoever revert in their entirety to each of Patriot,
TPL, or P-Newco, as the case may be, and all licenses granting such rights and
privileges shall be deemed to be for all purposes cancelled.
(d) In the event of a termination by P-Newco or Patriot, all claims for
loss and/or damages shall be deemed to be liquidated and discharged with respect
to each party upon its completion of the dissolution, distributions and the
documentation and transfers contemplated by Article 8 of the Operating
Agreement, provided, however, that claims based on conduct which is intentional,
willful, or grossly negligent shall survive.
REPRESENTATIONS AND WARRANTIES
.1 P-Newco and Patriot acknowledge, represent, and warrant to TPL that:
(a) TPL and its Representatives have prepared this Commercialization
Agreement at the request of P-Newco and Patriot and such preparation by TPL
shall not be used as basis for construing the terms hereof against TPL or
otherwise;
6
(b) Neither TPL nor its Representatives have for any purpose undertaken
the representation of or entered into a lawyer/client relationship with Patriot
or P-Newco or any of their Representatives;
(c) P-Newco and Patriot release, acquit, and agree to hold TPL and its
Representatives harmless with respect to all claims of whatsoever kind or nature
by or on behalf of P-Newco and Patriot and related to the preparation,
execution, and delivery of this Commercialization Agreement; and,
(d) P-Newco and Patriot have sought and received the advice of independent
counsel and are in no way relying on any advice or representations of TPL or its
Representatives.
.2 Patriot and TPL each represent and warrant to one another that:
(a) It is the sole owner of all right, title and interest in and to its
portion of the MSD Patents, excepting only the rights reflected at the Schedule
of Outstanding Activities/Rights/Claims attached as Schedule 3; and
(b) There are no outstanding agreements, rights or interests which are
inconsistent with the provisions of this Commercialization Agreement or which
could give rise to such rights or interests.
.3 P-Newco represents and warrants to TPL that:
(a) It is the sole owner, and for the term of this Commercialization
Agreement will remain the sole owner, of all right, title, and interest in and
to those certain rights to the MSD Patents transferred by Patriot and TPL to
P-Newco pursuant to the P-Newco License and T-Newco License; and
(b) There are no outstanding agreements, rights or interests which are
inconsistent with the provisions of this Commercialization Agreement or which
could give rise to such rights or interests.
GENERAL
.1 In no event shall any right, duty or privilege arising hereunder be
assigned by either party to an entity which it does not own and control without
the prior written consent of the other parties. Any attempted or purported
assignment without such consent shall be voidable at the option of the
non-consenting party.
.2 Any covenant requiring a party to perform or provide an act or service
shall be construed to impose upon such party the burden of the cost thereof
unless otherwise provided for herein.
.3 Section titles are intended only to aid and assist the reader and are
not intended to be descriptive of the contents of the section or to be used for
construction or interpretation.
7
.4 The failure of any provision of this Commercialization Agreement by
virtue of its being construed as invalid or otherwise unenforceable shall render
the entire Commercialization Agreement cancelable at the option of the party
asserting the enforceability of the said provision.
.5 All notices shall be in writing and effective upon delivery or upon
posting by certified mail, return receipt requested, addressed as follows (or
such other address as may be hereafter designated):
If to Patriot:
Patriot Scientific Corporation
00000 Xxx Xxxxxxxx
Xxx Xxxxx, XX 00000
Attn: President
Fax: (000) 000-0000
with a copy to:
Xxxx, Forward, Xxxxxxxx & Scripps LLP
000 Xxxx Xxxxxxxx, Xxxxx 0000
Xxx Xxxxx, XX 00000
Attn: Xxxx X. Xxxxxxxx, Esq.
Fax: (000) 000-0000
If to TPL:
Technology Properties Limited
00000 Xxxxxxx Xxxxx Xxxx., Xxxxx 000X
Xxxxxxxxx, XX 00000
Attn: Xxxxxx X. Xxxxxxxx, Chairman
Fax: (000) 000-0000
with a copy to:
Xxxxxx, Xxxx & Xxxxxxxx LLP
000 X. Xxxxx Xxxxxx
Xxx Xxxxxxx, Xxxxxxxxxx 00000
Attn: Xxxxxx X. Xxxxx, Esq.
Fax: (000) 000-0000
If to P-Newco:
8
.6 This Commercialization Agreement together with its exhibits and
attachments, the Stipulated Final Judgment, the Master Agreement, the Newco
Licenses, the Operating Agreement and the Escrow Agreement contains the entire
agreement between the parties and supersedes any and all other agreements
between them relating to the subject matter hereof.
.7 With the exception of the Grant attached hereto as Exhibit A and the
obligation to share certain materials pursuant to Section 3.6, this
Commercialization Agreement shall create no rights or licenses to any
intellectual property between or among the parties, nor shall it create any
obligation to share technology, trade secrets, know-how, show-how and other
proprietary developments and discoveries conceived or reduced to practice during
the course of the Project.
.8 Any provision of this Commercialization Agreement may be amended or
waived if, and only if, such amendment or waiver is in writing and signed, in
the case of an amendment, by all parties hereto, or in the case of a waiver, by
the party against whom the waiver is to be effective.
9
IN WITNESS WHEREOF, the parties have hereunto set their hands and seal
as of the date of the execution hereof by the last signatory hereto.
PATRIOT SCIENTIFIC CORPORATION, a Delaware corporation
______________________________________________________
By:
Its:
TECHNOLOGY PROPERTIES LIMITED, a California corporation
______________________________________________________
By: Xxxxxx X. Xxxxxxxx
Its: Chairman
P-NEWCO, a Delaware limited liability company
______________________________________________________
By:
Its: Patriot Member
______________________________________________________
By:
Its: TPL Member
10
EXHIBIT A
GRANT
(NEWCO TO TPL)
This Grant ("Grant") is entered into by and between Newco (sometimes
"Newco") on the one hand, and Technology Properties Limited ("TPL"), on the
other hand, and is made and entered into for the purpose of implementing that
certain Commercialization Agreement ("ComAg") entered into between the parties
contemporaneously herewith.
NOW THEREFORE, for and in consideration of the mutual covenants herein
contained as well as of other good and valuable consideration the receipt and
sufficiency of which is hereby acknowledged, it is covenanted and agreed by and
between the parties hereto that:
Subject Matter.
.1 The patents described in the Schedule of Patents at Attachment I
hereof, sometimes collectively referred to as the "Project Patents."
Grant.
.1 Pursuant to the provisions of section 2.1 of the Licenses made a part
hereof as Attachment I (PTSC to Newco) and Attachment II (TPL to Newco), Newco
hereby grants unto Technology Properties Limited the exclusive, personal and
non-transferable, worldwide right to:
.1.1 To grant licenses and sub-licenses to make, have made, use, sell, and
import products and/or services utilizing the Project Patents, for all fields of
use and for all applications;
.1.2 To xxx in the name of Technology Properties Limited or jointly with
Patriot Scientific Corporation, Xxxxxxx X. Xxxxx and/or Newco if required by
law, and to pursue for the use and benefit of Technology Properties Limited: (i)
all remedies of whatsoever kind or nature with respect to the protection, use,
and enforcement of the Project Patents; (ii) the collection of all claims for
damages, profits, and awards relating to the past, present, or future use or
ownership of the Project Patents; and (iii) all equitable relief available in
connection therewith; and,
.1.3 To otherwise manage and control by license, sublicense, or other
agreement the practice and/or use of the Project Patents by third parties.
Accordingly, Newco divests itself of all rights with respect to the
activities and/or rights described at 2.1.1., 2.1.2., and 2.1.3. above, and
Newco retains no such right.
.2 The grant at Section 2.1 above shall be subject to (a) the terms and
conditions of the Patent License Agreement between Patriot and Intel
Corporation, dated as of June 1, 2005, and (b) the rights retained by PTSC and
TPL under the provisions of section 2.2 of the said Attachments I and II,
respectively.
EXHIBIT A - GRANT
(Page 1 of 4)
General.
.1 In no event shall any right, duty, or privilege arising hereunder be
assigned by either party to an entity which it does not own and control, without
the prior written consent of the other party. Any attempted or purported
assignment without such consent shall be voidable at the option of the
non-consenting party.
.2 Any covenant requiring a party to perform or provide an act or service
shall be construed to impose upon such party the burden of the cost thereof
unless otherwise provided for herein or in the ComAg.
.3 Section titles are intended only to aid and assist the reader and are
not intended to be descriptive of the contents of the section or to be used for
construction or interpretation.
.4 The failure of any provision of this Agreement by virtue of its being
construed as invalid or otherwise unenforceable shall render the entire
Agreement cancelable at the option of the party asserting the enforceability of
the said provision.
.5 All notices shall be in writing and effective upon delivery or upon
posting by certified mail, return receipt requested, addressed as follows (or
such other address as may be hereafter designated):
EXHIBIT A - GRANT
(Page 2 of 4)
If to TPL:
Xxxxxx X Xxxxxxxx, Chm
00000 Xxxxxxx Xxxxx Xxxx
Xxxxxxxxx, XX 00000
Telephone: 000-000-0000
Facsimile: 000-000-0000
If to Newco:
Xxxxxx X Xxxxxxxx, Chm
00000 Xxxxxxx Xxxxx Xxxx
Xxxxxxxxx, XX 00000
Telephone: 000-000-0000
Facsimile: 000-000-0000
AND
Patriot Scientific Corporation
00000 Xxx Xxxxxxxx
Xxx Xxxxx, XX 00000
Attn: President
Fax: (000) 000-0000
AND
Xxxxxx X. Xxxxxxx
Relational Advisors LLC
00000 Xx Xxxxxx Xxxx, Xxxxx 000
Xxx Xxxxx, Xxxxxxxxxx 00000
Fax: (000) 000-0000
.6 This Agreement together with its exhibits and attachments contains the
entire agreement between the parties and supersedes any and all other agreements
between them relating to the subject matter hereof.
.7 This Agreement shall be construed in accordance with and governed by
the internal laws (without reference to choice or conflict of laws) of the State
of California.
EXHIBIT A - GRANT
(Page 3 of 4)
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals
as of the date of the execution hereof by the last signatory hereto.
NEWCO TECHNOLOGY PROPERTIES LTD.
By: By:
----------------------- ---------------------------
Xxxxxx X. Xxxxxxx Xxxxxx X. Xxxxxxxx, Chairman
Date: Date:
--------------------- ---------------------------
Attachment I - Schedule of Patents
(See next page)
EXHIBIT A - GRANT
(Page 4 of 4)
EXHIBIT A
SCHEDULE OF PATENTS
A. PROJECT PATENTS - US
NUMBER NAME FILED ISSUED EXPIRY
US 5,440,749 Hi Perf, Lo cost Micro Arch 3 AUG 89 8 AUG 95 8 AUG 12
US 5,530,890 Hi Perf, Lo cost Micro Arch 7 JUN 95 25 JUN 96 25 JUN 13
US 5,659,703 Micro Sys with Hierarchical stack 7 JUN 95 19 AUG 97 19 AUG 14
US 5,784,584 Multiple Instructions within Groups 7 JUN 95 21 JUL 98 21 JUL 15
US 5,809,336 Hi Perf Variable Speed Sys Clock 7 JUN 95 15 SEP 98 15 SEP 15
US 5,604,915 Load Dependent Bus Timing 7 JUN 95 18 FEB 97 18 FEB 14
US 6,598,148 Hi Perf Microprocessor 29 JUL 98 22 JUL 03 3 AUG 09
Having Variable Speed Sys Clock
B. PROJECT PATENT APPLICATIONS PENDING - US
SN 09/051,263 RISC Microprocessor Architecture 8 AUG 98 _ _ _ _ 3 AUG 09
C. PROJECT PATENTS - NON US (Preliminary)
DE 69033568.7 Hi Perf, Lo Cost Micro 2 AUG 90 14 JUN 00 2 AUG 10
DE 69033568T2 Preisguenstiger Hochleistungsmikro 2 AUG 90 1 MAR 01 - - - -
DE 69033568C0 Preisguenstiger Hochleistungsmikro 2 AUG 90 20 JUL 00 - - - -
EP 0786730 Hi Perf, Lo Cost Micro 2 AUG 90 14 JUN 00 2 AUG 10
EP 786730A1 Hi Perf, Lo Cost Micro 2 AUG 90 30 JUL 97 - - - -
EP 497772A4 Hi Perf, Lo Cost Micro 2 AUG 90 4 AUG 93 - - - -
EP 497772A1 Hi Perf, Lo Cost Micro 2 AUG 90 12 AUG 92 - - - -
EP 0870226 RISC Microprocessor Architecture _ _ _ _ _ _ _ _ - - - -
FR 0786730 Hi Perf, Lo Cost Micro 2 AUG 90 14 JUL 00 - - - -
XX 0000000 XXXX Xxxxxxxxxxxxxx Arch _ _ _ _ _ _ _ _ - - - -
WO 9102311A3 Hi Perf, Lo Cost Micro 2 AUG 90 21 MAR 91 - - - -
WO 9102311A1 Hi Perf, Lo Cost Micro 2 AUG 90 1 FEB 00 - - - -
XX 0000000X0 _ _ _ _ _ _ 2 AUG 90 15 APR 93 - - - -
JP 2966085B2 Hi Perf, Lo Cost Micro 2 AUG 90 13 AUG 99 2 AUG 10
AU 6067290A1 Hi Perf, Lo Cost Micro 2 AUG 90 11 MAR 91 - - - -
The schedule of Patents shall include the items listed above, as well as all
progenitors and progeny thereof, and all additions, changes, amendments,
modifications, actions, counterparts, continuations, continuations-in-part,
extensions, reissues, divisionals and/or renewals of such items, progenitors,
and/or progeny.
EXHIBIT A - SCHEDULE OF PATENTS
SCHEDULE 1
SCHEDULE OF PATENTS
A. MSD PATENTS - US
Number Name Filed Issued Expiry
US 5,440,749 Hi Perf, Lo cost Micro Arch 3 AUG 89 8 AUG 95 8 AUG 12
US 5,530,890 Hi Perf, Lo cost Micro Arch 7 JUN 95 25 JUN 96 25 JUN 13
US 5,659,703 Micro Sys with Hierarchical stack 7 JUN 95 19 AUG 97 19 AUG 14
US 5,784,584 Multiple Instructions within Groups 7 JUN 95 21 JUL 98 21 JUL 15
US 5,809,336 Hi Perf Variable Speed Sys Clock 7 JUN 95 15 SEP 98 15 SEP 15
US 5,604,915 Load Dependent Bus Timing 7 JUN 95 18 FEB 97 18 FEB 14
US 6,598,148 Hi Perf Microprocessor 29 JUL 98 22 JUL 03 3 AUG 09
Having Variable Speed Sys Clock
B. PROJECT PATENT APPLICATIONS PENDING - US
Number Name Filed Issued Expiry
SN 09/051,263 RISC Microprocessor Architecture 8 AUG 98 - - - - 3 AUG 09
C. MSD PATENTS - NON US (Preliminary)
Number Name Filed Issued Expiry
DE 69033568.7 Hi Perf, Lo Cost Micro 2 AUG 90 14 JUN 00 2 AUG 10
DE 69033568T2 Preisguenstiger Hochleistungsmikro 2 AUG 90 1 MAR 01 - - - -
DE 69033568C0 Preisguenstiger Hochleistungsmikro 2 AUG 90 20 JUL 00 - - - -
EP 0786730 Hi Perf, Lo Cost Micro 2 AUG 90 14 JUN 00 2 AUG 10
EP 786730A1 Hi Perf, Lo Cost Micro 2 AUG 90 30 JUL 97 - - - -
EP 497772A4 Hi Perf, Lo Cost Micro 2 AUG 90 4 AUG 93 - - - -
EP 497772A1 Hi Perf, Lo Cost Micro 2 AUG 90 12 AUG 92 - - - -
EP 0870226 RISC Microprocessor Architecture - - - - - - - - - - - -
FR 0786730 Hi Perf, Lo Cost Micro 2 AUG 90 14 JUL 00 - - - -
WO 9715001 RISC Microprocessor Arch - - - - - - - - - - - -
WO 9102311A3 Hi Perf, Lo Cost Micro 2 AUG 90 21 MAR 91 - - - -
WO 9102311A1 Hi Perf, Lo Cost Micro 2 AUG 90 1 FEB 00 - - - -
XX 0000000X0 _ _ _ _ _ _ 2 AUG 90 15 APR 93 - - - -
JP 2966085B2 Hi Perf, Lo Cost Micro 2 AUG 90 13 AUG 99 2 AUG 10
AU 6067290A1 Hi Perf, Lo Cost Micro 2 AUG 90 11 MAR 91 - - - -
The schedule of Patents shall include the items listed above, as well
as all progenitors and progeny thereof, and all additions, changes, amendments,
modifications, actions, counterparts, continuations, continuations-in-part,
extensions, reissues, divisionals and/or renewals of such items, progenitors,
and/or progeny.
SCHEDULE 1
SCHEDULE 2
PROJECT DESCRIPTION
OBJECTIVES & ACTIVITIES
A.) Develop and execute a commercialization program for the rights to
the MSD Patents transferred by Patriot and TPL to P-Newco pursuant
to the Newco Licenses which:
i.) Establishes the MSD Patents as an income-producing,
commercially valuable asset; and
ii.) Builds long-term Project value; and
iii.) Minimizes risks to Project assets.
B.) Promote the commercialization program by encouraging the
implementation and use of the MSD Patents through licenses, and
various relationships.
C.) Transform selected unauthorized use of the MSD Patents into
strategically and commercially valuable authorized use.
D.) Pursue licensing discussions with multiple simultaneous identified
prospects.
E.) Pursue parallel litigation on a selective strategic basis.
F.) Negotiate and document agreements relating to the Project and the
MSD Patents.
G.) ***
H.) ***
I.) ***
COMMERCIALIZATION GUIDELINES
A.) TPL may enter into any settlement or license agreement or other
sub-license or other agreement related to the MSD Patents which: ***
SCHEDULE 2
(Page 1 of 2)
B.) ***
ADDITIONAL ACTIONS
A.) With the prior written consent of the P-Newco Management Committee,
TPL may enter into any settlement or license agreement or other
sub-license or other agreement related to the MSD Patents which do
not meet the Guidelines.
B.) ***
C.) ***
***
-------------- ------------ ----------
*** *** ***
-------------- ------------ ----------
*** $*** $***
-------------- ------------ ----------
*** $*** $***
-------------- ------------ ----------
*** $*** $***
-------------- ------------ ----------
*** $*** $***
-------------- ------------ ----------
BUSINESS PLAN
A.) A Business Plan detailing the implementation of the Project is
attached hereto as Attachment I and will remain in full force and
effect until duly amended or replaced.
SCHEDULE 2
(Page 2 of 2)
ATTACHMENT 1 TO SCHEDULE 2
BUSINESS PLAN
***
ATTACHMENT 1 TO SCHEDULE 2
(Page 4 of 4)
SCHEDULE 3
SCHEDULE OF OUTSTANDING ACTIVITIES/RIGHTS/CLAIMS
AGREEMENT DATE
TPL
1. Xxxxx - TPL Commercialization Agreement 22 OCT 02
2. P-Newco - TPL - PTSC Commercialization Agreement 25 MAY 05
3. TPL - Intel License Agreement 28 JUN 04
PTSC
1. PTSC - AMD License Agreement _________
2. P-Newco - TPL - PTSC Commercialization Agreement 25 MAY 05
3. ________________________
SCHEDULE 3
