Intellectual Property and Software. (a) Section 5.14(a) of the Disclosure Schedule identifies all Seller Intellectual Property that is registered or filed in the name of a Seller and all Seller Software. Except as otherwise set forth in Section 5.14(a) of the Disclosure Schedule, a Seller has all right, title and interest in and to the Seller Intellectual Property, free and clear of any Lien, license, or other restriction or limitation regarding use, other than Permitted Liens, and has the sole and exclusive right to use (and none of Sellers’ employees have or claim to have any individual ownership interest or individual right to use) all of the Seller Software and all other Seller Intellectual Property, in each case that is material to the Business or the Railway. To Sellers’ Knowledge, neither Seller has received any written claim challenging the validity or effectiveness of the Seller Intellectual Property. The Seller Intellectual Property and the Third Party IP are all the Intellectual Property necessary to conduct the Business and operate the Railway as currently conducted. (b) To Sellers’ Knowledge, the operation of the Business has not interfered with, infringed upon, misappropriated, or violated any Intellectual Property of third parties in any respect, and, to Sellers’ Knowledge, except as set forth in Section 5.14(b) of the Disclosure Schedule during the past five (5) years, neither Seller nor any of their directors or officers has received any charge, complaint, claim, demand, or notice alleging any such interference, infringement, misappropriation, or violation (including any claim that Sellers must license or refrain from using any Intellectual Property of any third party) with respect to the Business. To Sellers’ Knowledge, no third party has interfered with, challenged, infringed upon, misappropriated, or violated any Intellectual Property of either Seller with respect to the Business. Except as set forth in Section 5.14(b) of the Disclosure Schedule, neither Seller has received written notice of any claims and there are no pending claims of any persons relating to the scope, ownership or use of the Seller Intellectual Property or Seller Software. (c) Sellers have delivered to Buyer correct and complete copies of all patents, trademark registrations, service ▇▇▇▇ registrations, Internet domain name registrations, and copyright registrations and patent applications, trademark applications, service ▇▇▇▇ applications, Internet domain name applications and copyright applications (as amended to date) with respect to the Seller Intellectual Property identified in Section 5.14(a) of the Disclosure Schedule. Sellers have performed all acts and paid all renewal, maintenance and other fees required to maintain each and every registration and application of all such Seller Intellectual Property that is material to the Business or the Railway in full force and effect. Except as set forth in Section 5.14(c) of the Disclosure Schedule, and except for licenses of Seller Software entered into in the Ordinary Course of Business, no settlements, consents, covenants not to ▇▇▇ or nonassertion assurances or releases have been entered into by Sellers or to which either Seller is bound that adversely affect Sellers’ right to own or use any Seller Intellectual Property identified in Section 5.14(a) of the Disclosure Schedule. (d) Section 5.14(d) of the Disclosure Schedule identifies each item of Intellectual Property that any third party owns that is licensed to a Seller for use in the conduct of the Business as currently conducted or with respect to the Railway, other than “off the shelf” Software (“Third Party IP”) and each such license, sublicense or agreement covering Sellers’ use of such item (“Third Party IP License”). To Sellers’ Knowledge, the Third Party IP is not subject to any outstanding order restricting the use or licensing thereof by Sellers, and except as otherwise set forth in Section 5.14(d) of the Disclosure Schedule, neither Seller has received any written claim challenging the validity or effectiveness of the Third Party IP or Third Party IP Licenses. (e) Except as set forth in Section 5.14(e) of the Disclosure Schedule, all Seller Intellectual Property that is registered or filed in the name of a Seller and Seller Software used in the Business as currently conducted or with respect to the Railway was developed by (i) employees of a Seller within the scope of their employment; or (ii) independent contractors who have assigned their rights to a Seller pursuant to written agreements. To Sellers’ Knowledge, there are no other independent contractors who have performed work with respect to Seller Software who have not executed an assignment of their rights in such work to a Seller. To Sellers’ Knowledge, no employee of a Seller has entered into any agreement, contract, obligation, promise or undertaking (whether written or oral and whether express or implied) that restricts or limits in any way the scope of the Seller Intellectual Property or Seller Software used in the Business or in connection with the Railway or requires the employee to transfer, assign or disclose information concerning his work to anyone other than Sellers. (f) Set forth in Section 5.14(f) of the Disclosure Schedule is a list of all of Sellers’ current employees that have signed an assignment of inventions agreement or an employment agreement substantially in the form(s) attached to Section 5.14(f) of the Disclosure Schedule and all independent contractors who have performed work related to Seller Software that have signed an assignment of intellectual property produced in connection therewith (or are otherwise bound by an agreement providing for such assignment), copies of which are attached to Section 5.14(f) of the Disclosure Schedule. (g) Except as otherwise set forth in Section 5.14(g) of the Disclosure Schedule, no third party has any marketing rights with respect to or ownership interest in the Seller Software or has or has had access to the source code of the Seller Software, Sellers exclusively own and possess the source code and exclusively own the documentation with respect to the Seller Software, and Sellers have taken commercially reasonable measures to protect the secrecy and confidentiality of the Seller Software. (h) To Sellers’ Knowledge, the Seller Software has not manifested any material operating problem which appears to be incapable of remediation in the Ordinary Course of Business as currently conducted. All Seller Software documentation is current and up-to-date (and, solely with respect to any Third Party Software integrated into the Seller Software owned by a third party, to the extent such third party owner supplies updated documentation to licensees), accurate and sufficient in detail and content to identify and explain the nature thereof, and to allow its full and proper use without reliance on the special knowledge or memory of individuals, in all material respects. (i) Section 5.14(i) of the Disclosure Schedule contains a list of (i) all Seller IP Licenses, specifying the name of the customer, the Seller Intellectual Property subject to such Seller IP License and the date of the agreement and (ii) any other commitments of Sellers to provide any custom programming, enhancements, change in functionality or other software development. Except as disclosed on Section 5.14(i) of the Disclosure Schedule, all Seller IP Licenses were entered into in the Ordinary Course of Business for usual quantities and at normal prices and involve commitments at not less than the published list price on its standard contract not modified in any material manner.
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Sources: Asset Purchase Agreement (FreightCar America, Inc.)
Intellectual Property and Software. (a) Section 5.14(a) Seller owns or has valid rights to use pursuant to license, agreement or permission each item of Intellectual Property necessary or desirable for the conduct of the Disclosure Business as presently conducted, as listed in Schedule identifies 2.1(vi) without conflict with the right of others. Each item of Intellectual Property set forth in Schedule 2.1(vi) will be owned or available for use by Buyer on identical terms immediately subsequent to the Closing Date. Seller has taken all Seller necessary and desirable action to maintain and protect each item of Intellectual Property that is registered it owns or filed in the name of a Seller and all Seller Software. Except as otherwise set forth in Section 5.14(a) of the Disclosure Schedule, a Seller has all right, title and interest in and to the Seller Intellectual Property, free and clear of any Lien, license, or other restriction or limitation regarding use, other than Permitted Liens, and has the sole and exclusive right to use (and none of Sellers’ employees have or claim to have any individual ownership interest or individual right to use) all of the Seller Software and all other Seller Intellectual Property, in each case that is material to the Business or the Railway. To Sellers’ Knowledge, neither Seller has received any written claim challenging the validity or effectiveness of the Seller Intellectual Property. The Seller Intellectual Property and the Third Party IP are all the Intellectual Property necessary to conduct the Business and operate the Railway as currently conducteduses.
(b) To Sellers’ Knowledge, the operation of the Business Seller has not interfered with, infringed upon, misappropriated, or violated otherwise come into conflict with any Intellectual Property rights of third parties in any respect, and, with respect to Sellers’ Knowledge, except as set forth in Section 5.14(bthe Business and none of the directors and officers (and employees with responsibility for Intellectual Property matters) of the Disclosure Schedule during the past five (5) years, neither Seller nor any of their directors or officers has ever received any charge, complaint, claim, demand, or notice alleging any such interference, infringement, misappropriation, or violation (including any claim that Sellers Seller must license or refrain from using any Intellectual Property rights of any third party) with respect to the Businessthat remains unresolved. To Sellers’ Knowledge, no No third party has interfered with, challenged, infringed upon, misappropriated, or violated otherwise come into conflict with any Intellectual Property of either Seller with respect to the Business. Except as set forth in Section 5.14(b) rights of the Disclosure Schedule, neither Seller has received written notice of Business in any claims and there are no pending claims of any persons relating to the scope, ownership or use of the Seller Intellectual Property or Seller Softwaremanner that remains unresolved.
(c) Sellers have Schedule 2.1(vi) identifies each trademark, copyright and patent registration which is held by Seller with respect to any of the Intellectual Property, identifies each pending patent application or application for registration which Seller has made with respect to any of the Intellectual Property, and identifies each license, agreement, or other permission which Seller has granted to any third party with respect to any of the Intellectual Property (together with any exceptions). Seller has delivered to the Buyer correct and complete copies of all patents, trademark such registrations, service ▇▇▇▇ registrationsapplications, Internet domain name registrationslicenses, agreements, and copyright registrations and patent applications, trademark applications, service ▇▇▇▇ applications, Internet domain name applications and copyright applications permissions (as amended to date) and has made available to the Buyer correct and complete copies of all other written documentation evidencing ownership and prosecution (if applicable) of each such item. Schedule 2.1(vi) also identifies each trade name or unregistered trademark or service ▇▇▇▇ used by Seller in the conduct of the Business, except those used in connection with the Publishing Grades. With respect to each item of Intellectual Property:
(i) Seller possesses all right, title, and interest in and to the item, free and clear of any Encumbrance, license, or other restriction, except as set forth in Schedule 4.15(c);
(ii) the item is not subject to any outstanding injunction, judgment, order, decree, ruling, or charge;
(iii) no action, suit, proceeding, hearing, investigation, charge, complaint, claim, or demand is pending or is threatened which challenges the legality, validity, enforceability, use, or ownership of the item; and
(iv) Seller has never agreed to indemnify any person for or against any interference, infringement, misappropriation, violation or other conflict with respect to the Seller Intellectual Property identified in Section 5.14(a) of the Disclosure Schedule. Sellers have performed all acts and paid all renewal, maintenance and other fees required to maintain each and every registration and application of all such Seller Intellectual Property that is material to the Business or the Railway in full force and effect. Except as set forth in Section 5.14(c) of the Disclosure Schedule, and except for licenses of Seller Software entered into in the Ordinary Course of Business, no settlements, consents, covenants not to ▇▇▇ or nonassertion assurances or releases have been entered into by Sellers or to which either Seller is bound that adversely affect Sellers’ right to own or use any Seller Intellectual Property identified in Section 5.14(a) of the Disclosure Scheduleitem.
(d) Section 5.14(dSchedule 2.1(vi) of the Disclosure Schedule identifies each item of Intellectual Property that any third party owns and that is licensed to a Seller for use uses in the conduct of the Business pursuant to license, sublicense, agreement, or permission. Seller has delivered to the Buyer correct and complete copies of all such licenses, sublicense, agreements and permissions (as currently conducted amended to date). With respect to each such item of Intellectual Property:
(i) the license, sublicense, agreement, or permission covering the item is legal, valid, binding, enforceable, and in full force and effect;
(ii) the license, sublicense, agreement, or permission will continue to be legal, valid, binding, enforceable, and in full force and effect on identical terms following the consummation of the transactions contemplated hereby;
(iii) no party to the license, sublicense, agreement, or permission is in breach or default, and no event has occurred which with notice or lapse of time or both, would constitute a breach or default or an event of default, or permit termination, modification, or acceleration thereunder;
(iv) no party to the license, sublicense, agreement, or permission has repudiated any provision thereof;
(v) with respect to each sublicense, the representations and warranties set forth in subsections (i) through (iv) above are true and correct with respect to the Railway, other than “off underlying license;
(vi) the shelf” Software (“Third Party IP”) and each such license, sublicense or agreement covering Sellers’ use underlying item of such item (“Third Party IP License”). To Sellers’ Knowledge, the Third Party IP Intellectual Property is not subject to any outstanding order restricting injunction, judgment, order, decree, ruling, or charge;
(vii) no action, suit, proceeding, hearing, investigation, charge, complaint, claim, or demand is pending or is threatened which challenges the use legality, validity, or licensing thereof by Sellersenforceability of the underlying item of Intellectual Property; and
(viii) Seller has not granted any sublicense or similar right with respect to the license, sublicense, agreement or permission.
(i) Schedule 2.1(xii) identifies all of the Facility Software and Schedule 2.1(xiii) identifies all of the Shared Software (other than off-the- shelf, non-customized programs and databases that are generally commercially available), and except as otherwise set forth in Section 5.14(d) Schedule 4.15(e), Seller owns outright or holds valid licenses to all copies of the Disclosure ScheduleFacility Software and the Shared Software. To the knowledge of Seller, neither Seller has received any written claim challenging the validity or effectiveness none of the Third Party IP Facility Software or Third Party IP Licenses.
(e) Except as set forth in Section 5.14(e) Shared Software, and no use by Seller thereof infringes upon or violates any patent, copyright, trade secret or other proprietary right of the Disclosure Scheduleany other person, all Seller Intellectual Property that is registered or filed in the name of a Seller and Seller Software used in the Business as currently conducted or no claim with respect to the Railway was developed by (i) employees of a Seller within the scope of their employment; any such infringement or (ii) independent contractors who have assigned their rights to a Seller pursuant to written agreementsviolation is threatened. To Sellers’ Knowledge, there are no other independent contractors who have performed work with respect to Seller Software who have not executed an assignment of their rights in such work to a Seller. To Sellers’ Knowledge, no employee of a Seller has entered into any agreementtaken all steps reasonably necessary to protect its right, contract, obligation, promise or undertaking (whether written or oral title and whether express or implied) that restricts or limits in any way the scope of the Seller Intellectual Property or Seller Software used in the Business or in connection with the Railway or requires the employee to transfer, assign or disclose information concerning his work to anyone other than Sellers.
(f) Set forth in Section 5.14(f) of the Disclosure Schedule is a list of all of Sellers’ current employees that have signed an assignment of inventions agreement or an employment agreement substantially in the form(s) attached to Section 5.14(f) of the Disclosure Schedule and all independent contractors who have performed work related to Seller Software that have signed an assignment of intellectual property produced in connection therewith (or are otherwise bound by an agreement providing for such assignment), copies of which are attached to Section 5.14(f) of the Disclosure Schedule.
(g) Except as otherwise set forth in Section 5.14(g) of the Disclosure Schedule, no third party has any marketing rights with respect to or ownership interest in and to the Seller Facility Software or has or has had and the Shared Software owned by it, including, without limitation, the use of written agreements containing appropriate confidentiality provisions with all third parties having access to the source code of the Seller Software, Sellers exclusively own and possess the source code and exclusively own the documentation with respect to the Seller Software, and Sellers have taken commercially reasonable measures to protect the secrecy and confidentiality of the Seller Softwarerelating thereto.
(h) To Sellers’ Knowledge, the Seller Software has not manifested any material operating problem which appears to be incapable of remediation in the Ordinary Course of Business as currently conducted. All Seller Software documentation is current and up-to-date (and, solely with respect to any Third Party Software integrated into the Seller Software owned by a third party, to the extent such third party owner supplies updated documentation to licensees), accurate and sufficient in detail and content to identify and explain the nature thereof, and to allow its full and proper use without reliance on the special knowledge or memory of individuals, in all material respects.
(i) Section 5.14(i) of the Disclosure Schedule contains a list of (i) all Seller IP Licenses, specifying the name of the customer, the Seller Intellectual Property subject to such Seller IP License and the date of the agreement and (ii) any other commitments of Sellers to provide any custom programming, enhancements, change in functionality or other software development. Except as disclosed on Section 5.14(i) of the Disclosure Schedule, all Seller IP Licenses were entered into in the Ordinary Course of Business for usual quantities and at normal prices and involve commitments at not less than the published list price on its standard contract not modified in any material manner.
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