EXHIBIT 10.1
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AMENDMENT TO PATENTS PURCHASE, ASSIGNMENT AND LICENSE AGREEMENT
This Amendment dated January 18, 2005 (the "Effective Date") amends the
Patents Purchase, Assignment and License Agreement entered into on or about
November 13, 2003, by and between MERLOT COMMUNICATIONS, INC., with a principal
place of business at 0 Xxxxxxxxx Xxxxxxxxx, Xxxxxx, Xxxxxxxxxxx ("Seller"), and
NETWORK-1 SECURITY SOLUTIONS, INC., with a principal place of business at 000
Xxxx Xxxxxx, Xxxxx 0000, Xxx Xxxx, Xxx Xxxx, its successors and assigns
("Buyer").
WHEREAS, Seller and Buyer entered into the Agreement; and
WHEREAS, Seller has advised Buyer that it is desirous of obtaining
working capital funding through a renegotiation of the Agreement; and
WHEREAS, Buyer has fully disclosed to Seller the status of Buyer's
efforts concerning, among other things, the licensing opportunities of the
technologies underlying the Patents; and
WHEREAS, Seller has determined that it is in Seller's best interest to
obtain funds immediately, even if it results in a potential reduction to
payments it may receive under the original form of the Agreement; and
WHEREAS, the parties desire to amend the Agreement on the terms and
conditions set forth below. NOW THEREFORE, for good and valuable consideration,
the receipt and adequacy of which are hereby acknowledged, the parties agree as
follows:
1. Paragraph 2 of the Agreement is deleted in its entirety and replaced
with the following:
2. Payments to Seller
a. Buyer has previously paid Seller the sum of One Hundred
Thousand Dollars ($100,000). Upon the execution hereof, Buyer shall pay
or cause to be paid to Seller the additional sum of Five Hundred
Thousand Dollars ($500,000).
b. In addition to the sum set forth in paragraph 2(a) above,
Buyer shall pay Seller contingent payments ("Contingent Payments") of
One Million Dollars ($1,000,000) upon achievement of the first and
second Twenty Five Million Dollars ($25,000,000) of Net Royalties (as
defined below) actually received by Buyer, and an additional Five
Hundred Thousand Dollars ($500,000) upon achievement of the next Twelve
Million Five Hundred Thousand Dollars ($12,500,000) of Net Royalties
actually received by Buyer, up to a total combined aggregate Contingent
Payments of Two and One Half Million Dollars ($2,500,000).
c. For purposes of this Agreement, "Net Royalties" shall be
defined as gross revenue received from the licensing or sale of any of
the Patents, less all third party fees, costs and expenses, in whatever
form paid by Buyer (including, without limitation, all attorneys and
other professional fees, both contingency and otherwise) incurred by
Buyer in licensing, selling, developing, enforcing, and protecting said
Patents.
d. In addition, Net Royalties shall include the aggregate
net consideration (the "Buyer Sale Consideration") received by the
Buyer and its equity holders in connection with (i) the sale of all or
substantially all of the assets or capital stock of the Buyer to a
third party, or (ii) the merger or consolidation of the Buyer with or
into another entity with the result that the then existing stockholders
of Buyer hold less than 50% of the combined voting power of the
outstanding securities of the surviving entity (a "Buyer Sale") wherein
the Patents constitute all or substantially all of the assets of Buyer.
In the event the Buyer Sale Consideration is comprised of all or part
non-cash consideration, at the option of the Buyer, any payments made
to Seller hereunder shall include the same percentage of non-cash
consideration received by the Buyer or its equity holders in such Buyer
Sale; provided, however, the Buyer may, at its option, pay Seller cash
as a substitute for such non-cash consideration in an amount equal to
the fair market value of the non-cash consideration for which such cash
is substituted.
e. In the event of a Buyer Sale wherein the Patents do not
constitute all or substantially all of the assets of the Buyer, the
amount of the Buyer Sale Consideration to be included in the
calculation of Net Royalties shall be equal to the Buyer Sale
Consideration multiplied by the ratio determined by dividing (i) the
value of the Patents by (ii) the value of all of the assets of the
Buyer as of the closing of the Buyer Sale. The calculations described
in the foregoing sentence and the determinations of the values used
therein shall be done by an independent appraiser chosen by and
mutually acceptable to the Buyer and the Seller. The expenses of such
an independent appraiser shall constitute a third party expense for
purposes of the calculation of Net Royalties. The Seller and the Buyer
hereby agree that as of the date of this Amendment, the Patents
comprise substantially all of the assets of the Buyer. The calculation
of Net Royalties shall not include overhead expenses incurred by
Network-1 in the operation of its business.
d. For the avoidance of doubt, there shall be no minimum
amounts due to Seller, nor is Buyer obligated to invest in, develop, or
make any use of the Patents.
e. Buyer shall make all Contingent Payments within forty
five (45) days after it has received the applicable full Net Royalty
amount which gives rise to the bonus.
f. Seller shall have the right to audit the books and
records of Buyer relating to Seller's Net Royalties upon reasonable
advance notice to Buyer at the place such books and records are
normally maintained during normal business hours not more than one time
per year. Seller shall keep all information to which it has access in
any such audit strictly confidential.
g. Seller may not sell, transfer or assign its right to
receive payments as set forth in this paragraph 2 except in connection
with a sale of the Seller or a sale of substantially all the assets of
the Seller.
2. Paragraph 5, Buyer's Right To Terminate Payments To Seller, is deleted
in its entirety.
3. Seller Access to Patent Information. Seller acknowledges that it has
had a full opportunity to discuss with Buyer all matters pertaining to the
Patents including, without limitation, the Buyer's licensing opportunities with
respect to its remote power patent (U.S. Patent No. 6,212,930) (the "Remote
Power Patent") and has had full access to all documents pertaining to the
Patents (including the Remote Power Patent). Seller acknowledges the possibility
that this Amendment may result in lower payments to Buyer than would have been
the case under the original Agreement.
4. Entire Agreement. All terms and conditions not expressly amended herein
shall remain in full force and effect.
5. Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be an original, but all of which together
shall constitute one instrument.
6. Use of Counsel. The parties hereto represent that they have each
consulted with counsel of their own choosing in connection with the negotiation
and execution of this Agreement or have knowingly chosen not to do so.
7. Approvals. This Agreement has been duly approved by each party's
respective Board of Directors. IN WITNESS WHEREOF, the parties hereto are duly
authorized to and do hereby execute this Agreement as of the Effective Date.
MERLOT COMMUNICATIONS, INC.
By: /s/ Xxxxxx Xxxxxx
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Name: Xxxxxx Xxxxxx
Title: President and CEO
Date: January 18, 2005
NETWORK-1 SECURITY SOLUTIONS, INC.
By: /s/ Xxxxx X. Xxxxxxxx
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Name: Xxxxx X. Xxxxxxxx
Title: Chairman and CEO
Date: January 18, 2005
