HEMIWEDGE INTELLECTUAL PROPERTY AGREEMENT
Execution
Version
HEMIWEDGE
INTELLECTUAL PROPERTY AGREEMENT
This
HEMIWEDGE INTELLECTUAL PROPERTY AGREEMENT (this “Agreement”) effective as of
October 14, 2008 (the “Effective Date”), is entered into by and between
Tejas
Research & Engineering, L.P., a
Texas
limited partnership (“TRANSFEREE”), and Hemiwedge Valve Corporation, a Texas
corporation (“TRANSFEROR”).
RECITALS
| A. |
TRANSFEROR
has developed and is continuing to develop certain technology and
intellectual property relating to hemispherical wedge valves and
specialty
valves;
|
| B. |
TRANSFEREE
desires to acquire a license in and to such technology and intellectual
property related to hemispherical wedge valves for designated fields
of
use and an assignment of two pending U.S. patent applications related
to
specialty valves in exchange for, among other things, a one-time
cash
payment.
|
In
consideration of the mutual promises and conditions set forth below and for
other good and valuable consideration, the receipt and sufficiency of which
are
hereby acknowledged, the parties agree as follows:
ARTICLE
1
DEFINITIONS
Section
1.1 Definitions.
The
following definitions shall be applicable to the terms set forth below as used
in this Agreement, in addition to those terms defined in the preamble
hereto:
“5,000
PSI and Surface Safety Valves Field of Use”
means
any and all (i) applications for hydrocarbon or oilfield production, injection,
vent, high pressure drop controllers, blow down, and dump - whether any of
the
foregoing is on land, offshore, or subsurface - that are intended for situations
where the product or service is to be rated for 5,000 psi or greater and (ii)
surface safety valve applications for a hydrocarbon, oilfield, or geothermal
well regardless of pressure rating, specifically including all applications
(whether or not monogrammed) under API Specification 6A, 6B, 6AV1, 11iW and
11V1. Notwithstanding the foregoing, this field of use does not include valve
applications for (w) nuclear plants, (x) valves in or under American National
Standards Institute rating 2500 class, (y) API Specification 6D, and (z)
standard onshore pipeline valves.
“Acceptable
Level of Quality”
shall
have the meaning ascribed to the term in Section 2.5(a).
“Agreement”
shall
have the meaning ascribed to the term in the preamble.
“API
Specification” means
those specifications published by the American Petroleum Institute from time
to
time.
“Assigned
Deliverables”
shall
mean all tangible embodiments, in whatever form or medium, related to the
Hemiwedge Products associated with the Assigned Hemiwedge Intellectual Property,
including all prototypes, works in progress, data, components, engineering
plans, algorithms, drawings, calculations, formulas, and programming for
machining, and specifically including all tools and related components that
have
been made or designed for a down hole isolation valve.
“Assigned
Hemiwedge Intellectual Property”
means
the Hemiwedge Intellectual Property identified on Schedule
B,
including reissues, divisions, continuation, continuations-in-part, extensions
and reexaminations thereof, and including any other patents and patent
applications, foreign or domestic, claiming priority to any of the foregoing,
and all rights therein provided by international treaties and
conventions.
“Combined
Fields of Use” means
the
5,000 PSI and Surface Safety Valves Field of Use, the Down Hole Field of Use,
the Drilling and Workover Field of Use, and the Offshore and Subsea Field of
Use.
“Confidential
Information”
shall
have the meaning given to the term in Section 8.1 of this
Agreement.
“Down
Hole Field of Use” means
any
and all down hole (i.e.,
below
the
surface) applications for hydrocarbon, oilfield, or geothermal applications,
including (i) completion of a hydrocarbon, oilfield, steam, water or other
▇▇▇▇▇, (ii) drilling applications, (iii) production and monitoring applications,
and (iv) all applications (whether or not monogrammed) under API Specification
11D1, 11iW, 11V1, 14A, and 14L.
“Drilling
and Workover Field of Use” means
any
and all applications for the drilling or workover of hydrocarbon, oilfield,
steam, water or other ▇▇▇▇▇, including oil and gas drilling, whether the
drilling or workover is (a) at the surface, down hole, or subsea, or (b) on
a
drilling, workover or other rig. This field of use specifically includes, but
is
not limited to use in or with (i) down hole isolation valves, (ii) marine riser
isolation valves, (iii) blow out preventors, (iv) choke manifolds, (v) other
pressure control devices, and (vi) all applications (whether or not monogrammed)
under API Specification 7K, 8A, 8C, 16A, 16C, 16D and 16RCD.
“Effective
Date”
shall
have the meaning ascribed to the term in the preamble.
“Encumbrance”
means
any lien, mortgage, pledge, assignment, security interest, charge or encumbrance
of any kind (including any agreement to give any of the foregoing, any
conditional sale or other title retention agreement, and any lease in the nature
thereof) and any option, trust or other preferential arrangement having the
practical effect of any of the foregoing.
“Forfeited
Rights” shall
have the meaning ascribed to the term in Section 7.1(c).
2
“Governmental
Authority”
means
any federal, state, municipal, national or other government, governmental
department, commission, board, bureau, court, agency or instrumentality or
political subdivision thereof or any entity or officer exercising executive,
legislative, judicial, regulatory or administrative functions of or pertaining
to any government or any court, in each case whether associated with a state
of
the United States, the United States, or a foreign entity or
government.
“Hemiwedge
Cartridge Valves”
means
valves incorporating a hemispherical wedge, core, driver, cartridge, seat,
and
stem.
“Hemiwedge
Intellectual Property” means
any
and all Intellectual Property relating to the Hemiwedge Products, including
the
Licensed Hemiwedge Intellectual Property and the Assigned Hemiwedge Intellectual
Property.
“Hemiwedge
Products” means
(a)
valves
incorporating a hemispherical wedge and specialty valves, including but not
limited to those described in the Patents listed in Schedule
A
and
Schedule
B,
and all
equipment and processes associated therewith, including down hole isolation
valves (including hydraulic
and mechanical down
hole
isolation valves
that
have been or will be designed by or for TRANSFEROR,
and all
related components, actuation devices, and running tools that have been or
will
be designed relating to down hole isolation valves)
and
subsea valves (and any chemical injection valves, tools, and actuation devices
associated therewith that have been or will be designed by or for TRANSFEROR)
and any and all Improvements to any of the foregoing and (b) all Technology
relating to the foregoing.
“Hemiwedge
Trademark”
means
the word ▇▇▇▇ “HEMIWEDGE”, including the goodwill of a business symbolized
thereby or associated therewith, common law rights thereto, and registrations
and applications for registrations thereof throughout the world, including
United States Trademark Registration Number 1983828, filed April 27, 1995,
for
the word ▇▇▇▇ “HEMIWEDGE”.
“Improvements”
means
any
and
all improvements, developments, additions, changes,
and modifications as may be from time to time made or acquired during the term
of this Agreement by or for TRANSFEROR or its affiliates, consultants,
sublicensees or assignees, whether or not the foregoing is or would be (a)
patentable, (b) covered by the Hemiwedge Intellectual Property existing as
of
the Effective Date, or (c) in competition with any other Hemiwedge Product,
provided,
however,
this
does not include improvements of TRANSFEREE.
“Intellectual
Property” means
all
rights throughout the world in any and all of the following: (i) Patents, (ii)
the Hemiwedge Trademark, (iii) copyrights, (iv) trade secrets, (v) software,
(vi) rights of privacy, and (vii) any and all other intangible or intellectual
property rights; all rights to ▇▇▇ and recover damages for past, present and
future infringement, misappropriation, dilution, or other violation of any
of
the foregoing; and all licenses to any such intangible or intellectual property
rights. This definition is intended to include, but not be limited by, the
definition of intellectual property contained in 11 U.S.C. §101(35A) of the
United States Bankruptcy Code.
“Law”
means
all constitutions, treaties, statutes, laws, ordinances, regulations, rules
or
Orders associated with any Governmental Authority.
3
“Licensed
Deliverables”
shall
mean an original or at least one complete copy of all tangible embodiments,
in
whatever form or medium, related to the Hemiwedge Products associated with
the
Licensed Hemiwedge Intellectual Property as same is applicable to one or more
of
the Combined Fields of Use, including prototypes, works in progress, data,
components, engineering plans, algorithms, drawings, calculations, formulas,
and
programming for machining, and further including and all chemical injection
valves, tools, and actuation devices related to subsea valves.
“Licensed
Hemiwedge Intellectual Property”
means
all Hemiwedge Intellectual Property, including that identified in Schedule
A,
including reissues, divisions, continuation, continuations-in-part, extensions
and reexaminations thereof, and including any other patents and patent
applications and trademark applications or registrations, foreign or domestic,
claiming priority to any of the foregoing, and all rights therein provided
by
international treaties and conventions; not
including, however,
the
Assigned Hemiwedge Intellectual Property.
“Offshore
and Subsea Field of Use” means
any
and all applications for drilling, completion, production, monitoring, or
controlling offshore (including inland waters) or subsea (regardless of water
depth) ▇▇▇▇▇, including any application (i) offshore, (ii) subsea, or (iii)
on
any offshore platform or floating production vessel. This field of use includes
(a) any and all uses of any subsea valve, (b) any and all applications (whether
or not monogrammed) under API Specification 17D, 17E and 17F, and (c) all
applications on platforms, floating production units, and other offshore
production units under API Specification 6A.
“Order”
means
any order, writ, rule, judgment, injunction, decree, stipulation, determination
or award entered by or with any Governmental Authority.
“Patents”
means
United States and foreign patents, patent applications and statutory invention
registrations, including reissues, divisions, continuation,
continuations-in-part, extensions and reexaminations thereof, and all rights
therein provided by international treaties and conventions.
“Permitted
Encumbrance”
means
the Encumbrance on the Licensed Hemiwedge Intellectual Property and the Licensed
Deliverables resulting from that certain Amended and Restated Security Agreement
dated September 30, 2008, among TRANSFEROR, ▇▇▇▇▇▇▇ Industries, Inc, a Delaware
corporation, ▇▇▇▇▇▇▇ Machine Works, Inc., a Texas corporation, and Stillwater
National Bank and Trust Company, a national banking association. For clarity,
the Permitted Encumbrance does not include any Encumbrance on the Assigned
Hemiwedge Intellectual Property or the Assigned Deliverables.
“Technology”
means
know-how and other confidential or proprietary technical, business and other
information, whether tangible or intangible, including manufacturing and
production processes and techniques, research and development information,
drawings (electronic and other), specifications, designs, plans, proposals,
prototypes, works in progress, technical data, financial, marketing and business
data, pricing and cost information, business and marketing plans, software,
customer and supplier lists and information, and databases and any and all
Improvements thereto.
4
“Transfer
Agreement”
shall
have the meaning ascribed to the term in Section 2.6.
“TRANSFEREE”
shall
have the meaning ascribed to the term in the preamble.
“TRANSFEROR”
shall
have the meaning ascribed to the term in the preamble.
Section
1.2 Interpretation.
(a) Any
reference herein to a party shall include such party’s successors and permitted
assigns.
(b) The
headings and captions contained in this Agreement are for reference purposes
only and shall not affect in any way the meaning or interpretation of this
Agreement.
(c) Wherever
the context requires, the gender of all words used in this Agreement includes
the masculine, feminine and neuter. Terms defined in the singular have the
corresponding meanings in the plural, and vice versa. All references to Articles
and Sections refer to articles and sections of this Agreement and all references
to Schedules refer to Schedules to this Agreement, which Schedules are attached
hereto and made a part hereof for all purposes. The word “includes” or
“including” means “including, but not limited to.” The word “or” will have the
inclusive meaning represented by the phrase “and/or.” The words “hereof,”
“hereby,” “herein,” “hereunder” and similar terms in this Agreement shall refer
to this Agreement as a whole and not any particular section or article in which
such words appear. “Shall” and “will” have equal force and effect. Any reference
to a statute, regulation or Law shall include any amendment thereof or any
successor thereto and any rules and regulations promulgated thereunder. Currency
amounts referenced herein, unless otherwise specified, are in United States
Dollars. Whenever this Agreement refers to a number of days, such number shall
refer to calendar days unless business days are specified.
ARTICLE
2
INTELLECTUAL
PROPERTY GRANTS; DISCLOSURE AND DELIVERABLES; QUALITY CONTROL
Section
2.1 License
of the Licensed Hemiwedge Intellectual Property.
In
exchange for the Consideration (provided in Section 2.6), TRANSFEROR hereby
grants to TRANSFEREE under the Licensed Hemiwedge Intellectual Property an
exclusive (except as provided in Section 2.4), worldwide, perpetual, fully
paid
up, irrevocable, and sublicensable license and right to make, use, sell, offer
for sale, rent, offer for rent, modify, reproduce, repair, service or otherwise
commercialize or develop Hemiwedge Products for any and all of the Combined
Fields of Use.
For
clarification, TRANSFEROR reserves the right to use or license others to use
the
Hemiwedge Trademark in connection with any and all activities not within the
Combined Fields of Use.
5
Section
2.2 Assignment
of the Assigned Hemiwedge Intellectual Property. TRANSFEROR
hereby irrevocably grants, assigns, and transfers to TRANSFEREE all of
TRANSFEROR’s right, title, and interest in and to the Assigned Hemiwedge
Intellectual Property and Technology related thereto, including all income,
royalties, damages, and payments now or hereafter due or payable with respect
thereto, and to all causes of action and the right to ▇▇▇, counterclaim, and
recover for past, present, and future infringement of the rights assigned under
this Assignment. TRANSFEROR shall take all reasonable actions and sign
documents, and cause its employees and consultants to take all reasonable
actions and sign documents, to evidence and/or further this assignment,
including the short form assignment, a form of which is included as Schedule
C.
Section
2.3 Deliverables
and Disclosure.
(a) Deliverables.
TRANSFEROR hereby sells, transfers, assigns, conveys and delivers to TRANSFEREE
all of TRANSFEROR’S right, title and interest in and to the Assigned
Deliverables and the Licensed Deliverables. Concurrently with the execution
of
this Agreement, or at a time(s) or place(s) determined by TRANSFEREE, TRANSFEROR
will deliver to TRANSFEREE, in a manner and form as requested by TRANSFEREE,
(1)
all Licensed Deliverables necessary for TRANSFEREE to exercise fully its license
under Section 2.1 of this Agreement, and (2) all Assigned Deliverables.
Thereafter, and as soon as reasonably practicable, TRANSFEROR will deliver
to
TRANSFEREE all Licensed Deliverables and Assigned Deliverables regarding
Improvements for TRANSFEREE to exercise fully its license under Section 2.1
of
this Agreement and its assignment under Section 2.2 of this
Agreement.
(b) Disclosure.
Concurrently with the execution of this Agreement, or at a time(s) or place(s)
determined by TRANSFEREE, TRANSFEROR shall disclose to TRANSFEREE all the
Technology related to the Hemiwedge Products to the extent necessary for
TRANSFEREE to exercise fully its license under Section 2.1 of this Agreement
and
its assignment under Section 2.2 of this Agreement. Thereafter, and as soon
as
reasonably practicable, TRANSFEROR shall disclose to TRANSFEREE all Technology
regarding Improvements to the extent necessary for TRANSFEREE to exercise fully
its license under Section 2.1 and its assignment under Section 2.2 of this
Agreement.
Section
2.4 TRANSFEREE’S
Grantback Licenses.
(a) License
for Hemiwedge Cartridge Valves.
TRANSFEREE grants to TRANSFEROR under the Licensed Hemiwedge Intellectual
Property the non-exclusive, royalty-free, and sublicenseable right to make,
use,
sell, offer for sale, rent, offer for rent, modify, reproduce, or otherwise
commercialize or develop Hemiwedge Cartridge Valves (i) for a production
manifold above water on a production platform or vessel in Canadian waters
only,
and (ii) in connection with offshore platforms and other floating production
vessels with TRANSFEROR’s ANSI class and API Specification 6D product
line.
(b) License
for Sale of Mud Diverter Valves.
TRANSFEREE grants to TRANSFEROR under the Licensed Hemiwedge Intellectual
Property the non-exclusive, royalty-free, and sublicenseable right to make,
use,
sell, offer for sale, rent, or offer for rent Hemiwedge Products consisting
of
above-ground mud diverter valves within ANSI class product specifications for
a
period of eighteen (18) months from the Effective Date; provided,
however,
that
the parties shall share equally the profits (defined as net revenue minus cost
of goods sold and sales commissions) from all TRANSFEROR’s sales or rentals of
such mud diverter valves to any third party other than Black Gold Rental Tools,
Inc., of Corpus Christi, Texas (“Black Gold”). For clarity, TRANSFEROR shall
have the rights to all profits from sales or rentals of such mud diverter valves
to Black Gold.
6
(c) License
of Specialty Valves Outside the Combined Fields of Use.
TRANSFEREE grants to TRANSFEROR under the Assigned Hemiwedge Intellectual
Property the non-exclusive, royalty-free, and sublicenseable right to make,
use,
sell, offer for sale, rent, offer for rent, modify, reproduce, or otherwise
commercialize or develop Hemiwedge Products for any and all uses outside of
any
and all of the Combined Fields of Use.
Section
2.5 Quality
Control Regarding the Hemiwedge Trademark.
(a) TRANSFEROR
recognizes and acknowledges that TRANSFEREE offers quality goods and services,
and TRANSFEREE agrees that it will maintain or exceed such quality in the future
in connection with its use of the Hemiwedge Trademark pursuant to this
Agreement. Consistent therewith, TRANSFEROR acknowledges that if TRANSFEREE
makes products that meet or exceed the level of quality of its other goods
when
it makes the Hemiwedge Products to be offered in connection with the Hemiwedge
Trademark, TRANSFEROR will deem such products to be of an acceptable level
of
quality (hereinafter “Acceptable Level of Quality”). TRANSFEREE may make changes
to the Hemiwedge Products to be offered in connection with the Hemiwedge
Trademark in accordance with this provision so long as any changes meet or
exceed the Acceptable Level of Quality. Any and all rights in the Hemiwedge
Trademark arising from TRANSFEREE’s exercise of its rights hereunder shall inure
to TRANSFEROR’s benefit.
(b) Upon
receiving a request from TRANSFEROR, such requests not to exceed once per year,
with reasonable notice, but not less than sixty (60) days, TRANSFEREE shall
provide a sample of the Hemiwedge Products to be offered in connection with
the
Hemiwedge Trademark or permit TRANSFEROR to inspect and review at the business
location of the TRANSFEREE during normal business hours a reasonable sample
of
proposed uses of the Hemiwedge Trademark for the purposes of assuring the
Acceptable Level of Quality and proper use of the Hemiwedge Trademark.
TRANSFEREE and TRANSFEROR agree to work in good faith with each other to correct
or remedy uses of the Hemiwedge Trademark that may, for some reason, not meet
the Acceptable Level of Quality set by the TRANSFEROR as defined in this
provision; and, if the parties cannot reach an agreement, the parties agree
to
work in good faith with each other to discontinue TRANSFEREE’s use of the
Hemiwedge Trademark until an agreement can be reached.
Section
2.6 Consideration.
The
parties acknowledge that each party is providing good and valuable
consideration, including the consideration set forth in the that certain
Agreement dated as of October 14, 2008, among ▇▇▇▇▇▇▇ Industries, Inc., a
Delaware corporation, TRANSFEROR, and TRANSFEREE (“the Transfer Agreement”), and
other consideration specified herein.
7
ARTICLE
3
ASSIGNABILITY
Section
3.1 Transferee.
TRANSFEREE may, freely and without approval from TRANSFEROR, assign, transfer,
or otherwise convey its rights or delegate its obligations hereunder, all
without accounting to TRANSFEROR.
Section
3.2 Transferor.
TRANSFEROR may, freely and without approval from TRANSFEREE, assign, transfer,
or otherwise convey its rights or delegate its obligations hereunder,
provided,
however, that
TRANSFEROR shall immediately give notice of such conveyance to
TRANSFEREE.
Section
3.3 No
Release.
No
assignment by TRANSFEREE or TRANSFEROR of its rights or obligations that is
permitted under this Article 3 shall operate to release, discharge or otherwise
affect the rights and obligations of any other party who is not so assigning
its
rights or obligations or the rights or obligations of the assigning party which
are not so assigned.
ARTICLE
4
TERM
AND TERMINATION;
SURVIVAL
Section
4.1 Term.
This
Agreement is effective as of the Effective Date and shall extend until the
last
of the Licensed or Assigned Hemiwedge Intellectual Property expires or is
terminated, unless otherwise terminated pursuant to Section 4.2.
Section
4.2 Termination.
This
Agreement may be terminated upon the occurrence of any of the following
events:
(a) the
TRANSFEREE unilaterally giving TRANSFEROR thirty (30) days written notice,
provided,
however,
that
TRANSFEROR’s grantback rights provided by Section 2.4(c) shall survive such
termination; or
(b)
both
parties giving mutual written agreement;
Section
4.3 Survivability.
The
parties’ rights and obligations under Articles 5, 6, 7, 8, 9, 10, and 11 shall
survive termination or expiration of this Agreement.
ARTICLE
5
REPRESENTATIONS
AND WARRANTIES
Section
5.1 Representations
and Warranties of Transferor.
(a) TRANSFEROR
has the full right, power, and authority to enter into this Agreement and
perform this Agreement in accordance with its terms.
8
(b) This
Agreement has been duly authorized, executed and delivered by TRANSFEROR and
constitutes the legal, valid and binding obligation of TRANSFEROR, enforceable
against TRANSFEROR in accordance with its terms.
(c) TRANSFEROR’S
entry into this Agreement and performance of its obligations hereunder does
not
(i) violate or contravene any Law, Order, license, consent or other
authorization from any Governmental Authority applicable to TRANSFEROR or to
the
Hemiwedge Products or Hemiwedge Intellectual Property, (ii) conflict with
TRANSFEROR’S organizational documents, (iii) conflict with, constitute a breach
or default under any other agreement or instrument to which TRANSFEROR is a
party or by which it is bound, or (iv) result in the creation or imposition
of
any Encumbrance on the Hemiwedge Products or Hemiwedge Intellectual Property
as
a result of any other agreement or instrument to which TRANSFEROR is a party
or
by which it is bound.
(d) TRANSFEROR
represents that the Hemiwedge Intellectual Property is free and clear of any
Encumbrances, except for the Permitted Encumbrance, and that TRANSFEROR (i)
has
all right, title and interest, except for the Permitted Encumbrance, in and
to
the Hemiwedge Intellectual Property, and the Technology and Deliverables
associated therewith, (ii) has the right to license to TRANSFEREE the Licensed
Hemiwedge Intellectual Property in the Combined Fields of Use, and (iii) has
the
right to assign the Assigned Hemiwedge Intellectual Property.
(e) The
Hemiwedge Intellectual Property is subsisting and, to TRANSFEROR’s knowledge, is
valid and enforceable, and, to TRANSFEROR’s knowledge, use of the Hemiwedge
Products does not infringe, misappropriate, or otherwise violate any third
party
Intellectual Property rights.
(f) No
third
party has filed or threatened to file any claim, lawsuit, charge, complaint,
or
other action alleging that the Hemiwedge Intellectual Property is invalid or
unenforceable or that any of the Hemiwedge Products infringes any third party
Intellectual Property rights.
(g) TRANSFEROR
is not aware of any third party infringing, misappropriating, or otherwise
violating the Hemiwedge Intellectual Property, and TRANSFEROR has not filed
or
threatened to file any claim, lawsuit, charge, complaint, or other action
against any third party alleging that such third party is infringing,
misappropriating, or otherwise violating the Hemiwedge Intellectual
Property.
(h) The
Hemiwedge Intellectual Property is all the Intellectual Property and Hemiwedge
Products applicable to operating in the Combined Fields of Use.
(i) None
of
the Hemiwedge Intellectual Property is subject to any maintenance fees, taxes,
or administrative actions falling due within ninety (90) days after the Closing
Date.
(j) The
rights granted to TRANSFEREE pursuant to this Agreement and the exercise by
TRANSFEREE or its successors or assigns of any or all of same do not impose
on
TRANSFEREE any past due, current, or future obligations, including licenses,
sublicenses, or payment of royalties, fees, or other payments to any third
party, including ▇▇▇▇▇▇▇▇▇ Research and Development, Inc., Inprop, Inc.,
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, At Balance Americas LLC, or ▇▇▇▇ Valve Company, Inc.,
or
any of their successors or assigns.
9
(k) TRANSFEROR
has been engaged in ongoing discussions with various prospective financiers,
corporate and strategic partners, purchasers, and licensors with respect to
the
Hemiwedge Intellectual Property and Deliverables transferred herein, pursuant
to
which TRANSFEROR has sought to achieve the highest value and best price for
the
sale, assignment and/or license of same. Such Hemiwedge Intellectual Property
and Deliverables were marketed for approximately six months. The offer made
by
TRANSFEREE represented the highest value and best price for such Hemiwedge
Intellectual Property and Deliverables. The negotiation of the rights
transferred herein to Tejas was conducted in good faith and on an arms’ length
basis.
Section
5.2 Representations
and Warranties of Transferee.
(a) TRANSFEREE
has the full right, power, and authority to enter into this Agreement and
perform this Agreement in accordance with its terms.
(b) This
Agreement has been duly authorized, executed and delivered by TRANSFEREE and
constitutes the legal, valid and binding obligation of TRANSFEREE, enforceable
against TRANSFEREE in accordance with its terms.
(c) TRANSFEREE’s
entry into this Agreement and performance of its obligations hereunder does
not
(i) violate or contravene any Law, Order, license, consent or other
authorization from any Governmental Authority applicable to TRANSFEREE or (ii)
conflict with TRANSFEREE’s organizational documents.
ARTICLE
6
INDEMNIFICATION;
DUTY TO DEFEND
Section
6.1 By
TRANSFEROR.
TRANSFEROR agrees to defend, indemnify and hold harmless TRANSFEREE, its
sublicensees and its affiliates, successors and assigns, and the officers,
directors, employees and agents of each of them, from and against any and all
claims, threatened claims, damages, losses, expenses, obligations, liabilities,
actions, suits, including without limitation, interest and penalties, reasonable
attorneys’ fees and costs and all amounts paid in settlement of any claim,
action or suit, asserted by third parties against TRANSFEREE that arise out
of,
result from or are related to: (i) the violation of any statute, regulation
or
rule of Law by TRANSFEROR in the performance of its obligations under this
Agreement; (ii) a breach or alleged breach of any representation, covenant,
or
warranty made by TRANSFEROR in this Agreement; (iii) activities taking place
at
TRANSFEROR’s facilities and that do not involve TRANSFEREE; (iv) a breach or
alleged breach by TRANSFEROR of any of the other terms or conditions of this
Agreement, (v) TRANSFEREE’s exercise of the rights granted in Sections 2.1 and
2.2 of this Agreement (provided
that
under
this subsection 6.1(v), the parties shall share equally the first two hundred
fifty thousand dollars ($250,000) of liability, after which TRANSFEROR shall
pay
for all liability hereunder up to one-million five-hundred thousand dollars
($1,500,000), and in no event shall TRANSFEROR incur liability for any amounts
exceeding one million five hundred thousand dollars ($1,500,000) under this
subsection 6.1(v)), or (vi) the negligence or other wrongdoing of TRANSFEROR
or
its affiliates or any employee or agent of TRANSFEROR or its affiliates.
10
Section
6.2 By
TRANSFEREE.
TRANSFEREE agrees to defend, indemnify and hold harmless TRANSFEROR and its
affiliates, successors and assigns, and the officers, directors, employees
and
agents of each of them, from and against any and all claims, threatened claims,
damages, losses, expenses, obligations, liabilities, actions, suits, including
without limitation, interest and penalties, reasonable attorneys’ fees and costs
and all amounts paid in settlement of any claim, action or suit, asserted by
third parties against TRANSFEROR that arise out of, result from or are related
to: (i) the violation of any statute, regulation or rule of Law by TRANSFEREE
in
the performance of its obligations under this Agreement; (ii) a breach or
alleged breach of any representation, covenant, or warranty made by TRANSFEREE
in this Agreement; (iii) activities taking place at TRANSFEREE’s facilities and
that do not involve TRANSFEROR; (iv) a breach or alleged breach by TRANSFEREE
of
any of the other terms or conditions of this Agreement, or (v) the negligence
or
other wrongdoing of TRANSFEREE or its affiliates or any employee or agent of
TRANSFEREE or its affiliates.
Section
6.3 Process.
In each
case for which a party seeks indemnification under the provisions of Sections
6.1 or 6.2, the party claiming indemnification (“Indemnitee”) must promptly
notify the party providing indemnification (“Indemnitor”) in writing of any such
claim. The Indemnitor shall be permitted to fully control the defense and any
settlement of the claim. However, Indemnitor shall not, without Indemnitee’s
written consent, settle any such claim if the settlement arises from or is
part
of any criminal action, suit or proceeding or contains a stipulation to or
admission or acknowledgment of any liability or wrongdoing (whether in contract,
tort or otherwise) on the part of the Indemnitee’s or any of Indemnitee’s
affiliates. Indemnitee shall cooperate fully in the defense of such claim and
may appear at its own expense through counsel in matters for which Indemnitor
has assumed the defense.
Section
6.4 NOTWITHSTANDING
ANYTHING ELSE IN THIS AGREEMENT, NEITHER PARTY SHALL BE LIABLE TO THE OTHER
FOR ANY PUNITIVE OR EXEMPLARY OR ADDITIONAL DAMAGES OR ANY INCIDENTAL OR
CONSEQUENTIAL DAMAGES INCLUDING, WITHOUT LIMITATION, ANY LOST OPPORTUNITY,
LOSS
OF USE, LOSS OF RIGHTS FROM UNTIMELY COMPLETION, BUSINESS INTERRUPTION, LOST
PRODUCTS OR LOST PROFITS, WHICH RESULT FROM ACTIVITIES ARISING UNDER
THIS AGREEMENT.
ARTICLE
7
INTELLECTUAL
PROPERTY PROSECUTION, MAINTENANCE, AND LITIGATION; OWNERSHIP OF IMPROVEMENTS
Section
7.1 Intellectual
Property Prosecution and Maintenance.
(a) TRANSFEREE
shall have the right, in its own name and at its own expense, to prepare, file,
prosecute, and maintain the Assigned Hemiwedge Intellectual
Property.
(b) TRANSFEROR
shall have the first right, in its own name and at its own expense, to prepare,
file, prosecute, and maintain the Licensed Hemiwedge Intellectual Property.
11
(c) TRANSFEROR
shall provide written notice as soon as possible to TRANSFEREE if TRANSFEROR
decides not to prosecute, to abandon, not to pursue foreign rights claiming
priority to earlier rights, or to otherwise cause or allow any of its rights
in
the Licensed Hemiwedge Intellectual Property to be forfeited (collectively
“Forfeited Rights”), and in any event not less than thirty (30) days before any
governmental, procedural, or administrative deadline bringing about or
triggering such Forfeited Rights. If TRANSFEREE receives notice from TRANSFEROR
of a decision to allow Forfeited Rights, or if TRANSFEREE is aware of a deadline
less than thirty (30) days away that would result in Forfeited Rights,
TRANSFEREE shall have the right, in its own name and at its own expense, to
prepare, file, prosecute, and maintain any of the Licensed Hemiwedge
Intellectual Property applicable to or usable in any of the Combined Fields
of
Use in which TRANSFEROR intends to allow Forfeited Rights or has failed to
take
action within thirty (30) days of a deadline that would result in Forfeited
Rights. If TRANSFEREE prosecutes and maintains any of the licensed Hemiwedge
Intellectual Property, TRANSFEREE shall grant to TRANSFEROR a royalty free
license to use any patents rights not within the Combined Fields of
Use.
(d) If
TRANSFEREE exercises its rights under Section 7.1(c), TRANSFEROR shall: (i)
take
all necessary actions, sign documents, and generally assist TRANSFEREE in
maintaining and/or obtaining the Licensed Hemiwedge Intellectual Property,
and
(ii) immediately assign and cause its employees and consultants to assign such
Intellectual Property to TRANSFEREE, subject to any licenses relating to same.
(e) TRANSFEROR
hereby irrevocably constitutes and appoints TRANSFEREE as its true and lawful
attorney-in-fact with full power of substitution, in the name of TRANSFEROR
or
otherwise, and on behalf of and for the benefit of TRANSFEREE, to execute and
deliver such further agreements, documents, certificates and other instruments
of conveyance, assignment and transfer reasonably necessary to vest in
TRANSFEREE all of TRANSFEROR’s right, title and interest in and to the Licensed
Hemiwedge Intellectual Property described in the previous subsections; to
institute and prosecute, in the name of TRANSFEROR or otherwise, all proceedings
that TRANSFEREE may deem proper in order to assert or enforce any claim, right
or title of any kind in and to such Licensed Hemiwedge Intellectual Property
and
the Hemiwedge Products; to defend and compromise any and all actions, suits
or
proceedings in respect of any part thereof; and to do all such acts and things
in relation thereto as TRANSFEREE shall deem advisable. TRANSFEROR agrees that
the foregoing powers are coupled with an interest and shall be irrevocable
by
TRANSFEROR or by its dissolution or in any manner or for any
reason.
Section
7.2 Intellectual
Property Litigation. TRANSFEREE
shall have the right and sole discretion, in TRANSFEROR’s name (if required by
Law, but otherwise in TRANSFEREE’s name) to ▇▇▇ third parties for past, present,
and future infringement, misappropriation, or other violations of the Licensed
Hemiwedge Intellectual Property in the Combined Fields of Use and TRANSFEROR
shall fully and timely cooperate and assist TRANSFEREE in connection with any
such suit or action. All damages, awards, and settlement recoveries shall belong
to TRANSFEREE. In the event that TRANSFEREE cannot pursue, without TRANSFEROR,
any desired action for violation of the Licensed Hemiwedge Intellectual
Property, then TRANSFEROR agrees to be joined as a party to such action. In
such
an event, TRANSFEROR will pay for its costs, including its attorneys’ fees, and
any recovery will be first used to pay TRANSFEROR’S and TRANSFEREE’S litigation
costs and, to the extent funds remain, the parties will discuss and agree upon
an allocation of the remaining funds between the parties based upon at least
the
following factors: each party’s level of involvement in the action, the field(s)
of use of the third party violator, and the impact of any such action across
the
various fields of use. TRANSFEROR further shall fully and timely cooperate
with
TRANSFEREE in connection with any suit or action involving the Assigned
Hemiwedge Intellectual Property.
12
Section
7.3 Notice
of Infringement.
TRANSFEROR shall give TRANSFEREE prompt written notice of any suspected
infringement of the Hemiwedge Intellectual Property in any of the Combined
Fields of Use that may come to TRANSFEROR’s attention.
Section
7.4 Ownership
of Intellectual Property for Improvements.
(a) By
Transferee.
TRANSFEREE shall own any improvements, developments, additions, changes, and
modifications, including Intellectual Property relating thereto, as may be
from
time to time made during the term of this Agreement by or for TRANSFEREE or
its
affiliates (excluding TRANSFEROR to the extent TRANSFEROR becomes an affiliate
of TRANSFEREE), consultants, sublicensees or assignees.
(b) By
Transferee - Applicable Exclusively to One or More of the Combined Fields of
Use.
TRANSFEREE shall own any and all rights, including Intellectual Property,
relating to Improvements to the Hemiwedge Technology or to the Hemiwedge
Products to the extent such Improvements can be segregated exclusively to any
one or more of the Combined Fields of Use. In this regard, TRANSFEROR, as soon
as reasonably practicable, shall assign, and cause its employees and consultants
to assign to TRANSFEREE such Intellectual Property and the related
Improvements.
(c) By
Transferor - Exclusively Outside the Combined Fields of Use.
TRANSFEROR shall own any and all right, including Intellectual Property,
relating to Improvements to the Hemiwedge Technology or the Hemiwedge Products
to the extent such Improvements can be segregated to uses outside the Combined
Fields of Use.
(d) By
Transferor - Applicable Both Inside and Outside the Combined Fields of
Use.
TRANSFEROR shall own any and all rights, including Intellectual Property,
relating to Improvements to the Hemiwedge Technology or to the Hemiwedge
Products to the extent such Improvements cannot be segregated exclusively to
any
one or more of the Combined Fields of Use or exclusively outside the Combined
Fields of Use. TRANSFEROR, however, hereby grants to TRANSFEREE under such
Intellectual Property an exclusive (in a manner consistent with Sections 2.1
and
2.4), worldwide, perpetual, fully paid up, irrevocable, and sublicensable
license and right to make, use, sell, offer for sale, rent, offer for rent,
modify, reproduce, repair, service or otherwise commercialize or develop such
Improvements to the Hemiwedge Technology or to the Hemiwedge Products for any
and all of the Combined Fields of Use.
(e) Assigned
Intellectual Property.
Notwithstanding any of the foregoing, TRANSFEREE shall own any and all rights,
including Intellectual Property, relating to Improvements to the Hemiwedge
Technology or to the Hemiwedge Products that relate to the Assigned Hemiwedge
Intellectual Property.
13
ARTICLE
8
CONFIDENTIALITY
Section
8.1 Confidential
Information.
Each
party acknowledges that in performing this Agreement the party may be provided
with and have access to another party’s confidential information, including,
without limitation, technical information (such as software, algorithms,
Technology, and trade secrets relating to Hemiwedge Products), processes,
product plans and sales information, that the other party treats as proprietary,
confidential or of substantial value and which value would be impaired if
improperly used or disclosed to third parties (“Confidential
Information”).
The
parties acknowledge that Confidential Information may include any of the
foregoing which has been provided to or by another party prior to the Effective
Date.
Section
8.2 Treatment
of Confidential Information.
For a
period of twenty (20) years from the Effective Date, each party shall maintain
the other party’s Confidential Information in confidence and not disclose the
other party’s Confidential Information to any person other than to its officers,
fiduciaries, employees, agents or consultants who have a business need to know
such Confidential Information, who have been informed of the confidential nature
of such Confidential Information and who are, either by nature of their
positions or duties or pursuant to written agreement, subject to substantially
equivalent restrictions with respect to the use and disclosure of the
Confidential Information as are set forth in this Agreement.
Section
8.3 Permitted
Disclosures.
The
obligation of each party to maintain another party’s Confidential Information in
confidence shall not apply to any Confidential Information (i) that becomes
publicly available (other than by reason of a disclosure by a party in violation
of this Agreement), (ii) was in the possession of the receiving party prior
to
the time it was disclosed hereunder, (iii) is independently made available
as a
matter of right to the receiving party by a third party, (iv) is independently
developed by or for the receiving party, which independent development is
supported by sufficient evidence, (v) the disclosure of which has been consented
to by the other party in writing, or (vi) the disclosure of which is required
by
a court of competent jurisdiction or other governmental authority or otherwise
as required by Law or regulation of a national securities exchange on which
the
securities of such party may then be listed.
Section
8.4 Notice
of and Limits on Disclosure.
Before
any party discloses any of another party’s Confidential Information pursuant to
Section 8.3(vi), such party shall as soon as practicable, and in any event
prior
to making any such disclosure, notify the other party of the specific
Confidential Information proposed to be disclosed and of the court order,
subpoena, interrogatories, government order or other reason that requires
disclosure of the Confidential Information so that the other party may seek
a
protective order or other remedy to protect the confidentiality of the
Confidential Information or waive compliance with the applicable provisions
of
this Article 8. Such party shall also consult with the other party on the
advisability of taking steps to eliminate or narrow the requirement to disclose
the Confidential Information and shall otherwise cooperate with the efforts
of
the other party to obtain a protective order or other remedy to protect the
Confidential Information. If a protective order or other remedy cannot be
obtained, such party may disclose only that Confidential Information that its
counsel advises in writing (which writing shall also be addressed and delivered
to the other party) is legally required to be disclosed.
14
Section
8.5 Notice
of Other Uses of Confidential Information.
Each
party shall promptly inform the other party if it becomes aware of any reason,
whether under Law, policy or otherwise, that it will, or might become compelled
to, use the other party’s Confidential Information or disclose Confidential
Information in violation of the confidentiality restrictions in this Article
8
other than as contemplated by Section 8.2.
ARTICLE
9
GOVERNING
LAW, JURISDICTION, AND DISPUTE RESOLUTION
Section
9.1 Governing
Law and Jurisdiction.
This
Agreement is governed by and construed under the Laws of the State of Texas
as
applied to agreements among the residents of such state made and to be performed
entirely within such state. To the fullest extent permitted by applicable Law
and subject to the dispute resolution provisions of Section 9.2, the parties
hereby agree that any claim, action or proceeding by any party hereto based
on,
arising out of or in connection with this Agreement must be brought only in
the
Federal or State Courts of the State of Texas located in Houston, Texas, unless
said courts do not have subject matter jurisdiction, then in such other
appropriate federal or state court located in the State of Texas, and not in
any
other state or federal court in the United States of America or any court in
any
other country. EACH PARTY HEREBY IRREVOCABLY WAIVES ANY AND ALL RIGHT TO A
TRIAL
BY JURY IN ANY LEGAL PROCEEDING ARISING OUT OF OR RELATED TO THIS AGREEMENT
OR
THE TRANSACTIONS CONTEMPLATED HEREBY. The parties acknowledge that in the event
of any breach of this provision by any party, the other party will have no
adequate remedy at Law and is entitled to injunctive relief to enforce the
terms
of this Section 9.1.
Section
9.2 Dispute
Resolution.
(a) The
parties have entered into this Agreement in good faith and in the belief that
it
is mutually advantageous to them. It is with that same spirit of cooperation
that they agree to attempt to resolve any dispute amicably without the necessity
of litigation or arbitration. Accordingly, if a dispute arises between or among
the parties relating to this Agreement (a “Dispute”), they will first refer the
Dispute to the authorized officers of the parties to this Agreement prior to
the
commencement of arbitration proceedings or legal action.
(b) If
the
authorized officers of the parties are unable to reach agreement with respect
to
a Dispute within forty five (45) days after such Dispute is referred to them
pursuant to paragraph (a) above, such Dispute shall be resolved by binding
arbitration administered pursuant to American Arbitration Association rules
then
applicable for commercial disputes. Such arbitration shall be conducted by
a
single arbitrator, who shall be such individual as the parties may agree upon
within thirty (30) days after a party serves notice requiring an arbitration
of
a Dispute. If the parties cannot agree upon an arbitrator within such thirty
(30) day period, then a single arbitrator shall be selected by the American
Arbitration Association. In any controversy subject to arbitration, the
arbitrator may grant any relief, legal or equitable, interim or final, that
may
be granted by a court of competent jurisdiction. The decision of the arbitrator
shall be final and binding and no appeal shall be made therefrom. Any
arbitration shall take place in Houston, Texas, or as otherwise agreed by the
parties. This clause shall survive the termination of this Agreement and shall
be governed by the Federal Arbitration Act.
15
(c) Specific
Performance.
Notwithstanding the foregoing dispute resolution procedures, the parties
acknowledge and agree that any breach by any party of the provisions of Articles
2, 3, 6, 7, and 8 may cause irreparable injury for which monetary damages would
not be adequate. Accordingly, such provisions may be enforced by the parties
by
specific performance without first proceeding pursuant to paragraph (a) or
(b)
above.
ARTICLE
10
NOTICES
Any
notice or other communication that a party desires to give to another party
shall be in writing, and made be made by personal delivery, delivery by
electronic mail, by registered or certified mail (postage prepaid), by
facsimile, or by overnight commercial courier service, addressed to the party
at
its address, e-mail address, or facsimile number set forth below. Notice shall
be effective as follows: upon the date of delivery if by personal delivery
or
delivery by electronic mail; upon three (3) calendar days after deposit in
any
United States mail box if by registered or certified mail; upon confirmed
transmission if by facsimile; or upon one (1) business day following the date
so
mailed by courier if by overnight commercial courier service. Any party may
designate a different address to which notices or demands shall thereafter
be
directed by written notice given in the manner hereinabove required and directed
to the other parties at its respective address as set forth herein.
To
TRANSFEREE:
Tejas
Research & Engineering, LP
9185
▇▇▇
▇▇▇▇▇ ▇▇▇▇▇
▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
▇▇tention:
▇▇▇ ▇▇▇▇
Facsimile:
▇▇▇-▇▇▇-▇▇▇▇
Confirm:
281-466-8700
With
a
copy to:
Fulbright
& ▇▇▇▇▇▇▇▇ L.L.P.
1301
▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇
▇▇tention:
▇▇▇▇ ▇. ▇▇▇▇▇
Facsimile:
(▇▇▇) ▇▇▇-▇▇▇▇
Confirm:
(▇▇▇) ▇▇▇-▇▇▇▇
16
To
TRANSFEROR:
Hemiwedge
Valve Corporation
1011
▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇
▇▇tention:
President, ▇▇▇ ▇▇▇▇▇▇▇▇▇▇
Facsimile:
936-539-2990
Confirm:
▇▇▇▇@▇▇▇▇▇▇▇▇▇.▇▇▇
With
a
copy to:
▇▇▇▇▇▇▇▇
▇▇▇▇▇, L.L.P.
2040
▇▇▇▇▇ ▇▇▇▇ ▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇
▇▇tention:
▇▇. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇ ▇▇.
Facsimile:
▇▇▇-▇▇▇-▇▇▇▇
Confirm:
713-358-1700
ARTICLE
11
MISCELLANEOUS
Section
11.1 Executory
Contract.
The
parties agree that this contract is an executory contract as that term is used
in the bankruptcy provisions of the United States Code, including 11 U.S.C.
Section 365(n), due to the mutual on-going obligations of the
parties.
Section
11.2 Amendments.
This
Agreement may be modified or amended at any time by an approval in writing
signed by the parties.
Section
11.3 Entire
Agreement.
This
Agreement, along with the Transfer Agreement and the other agreements
contemplated thereby and delivered contemporaneously herewith, constitutes
the
entire agreement between the parties relating to the subject matter hereof
and
supersedes any prior agreement or understanding between them.
In the
event of any inconsistency or conflict between this Agreement and such other
agreements, the provisions of this Agreement shall control.
Section
11.4 Successors
and Assigns. This
Agreement shall be binding upon and inure to the benefit of the parties and
their respective successors and permitted assigns.
Section
11.5 Severability.
If
any
provision of this Agreement, or the application of such provision to any person
or circumstance, shall be held invalid, the remainder of this Agreement, or
the
application of such provision to persons or circumstances other than those
to
which it is held invalid, shall not be affected thereby.
17
Section
11.6 Counterpart
Execution; Facsimile Execution. Separate
copies of this Agreement may be executed by the parties hereto, with the same
effect as though all parties had signed the same copy of this Agreement.
Facsimile signatures shall have the same effect as manually executed
signatures.
Section
11.7 Further
Assurances. Each
party hereto agrees to execute, with acknowledgment or affidavit, if required,
any and all documents and writings which may be necessary or expedient in
connection with the execution of this Agreement and the achievement of its
purposes.
Each of
TRANSFEROR and TRANSFEREE shall execute and deliver from time to time such
further agreements, documents, certificates and other instruments of conveyance,
assignment and transfer and shall use reasonable efforts to take or cause to
be
taken such other actions as may be reasonably necessary to vest all of
TRANSFEROR’s right, title and interest in and to the Assigned Hemiwedge
Intellectual Property, Assigned Deliverables, and Licensed Deliverables in
TRANSFEREE, including using reasonable efforts to obtain the approval, waiver
or
consent of any person.
Section
11.8 Waiver.
The
rights and remedies of the parties to this Agreement are cumulative and not
alternative. Neither the failure nor any delay by any party in exercising any
right, power, or privilege under this Agreement will operate as a waiver of
such
right, power, or privilege, and no single or partial exercise of any such right,
power, or privilege will preclude any other or further exercise of such right,
power, or privilege or the exercise of any other right, power, or
privilege.
Section
11.9 Savings
Clause.
Should
TRANSFEROR, voluntarily or involuntarily, become subject to the protection
of
the United States bankruptcy Laws or similar Laws of another jurisdiction,
TRANSFEREE shall be entitled to all of the benefits of such bankruptcy Laws.
Pending the assumption or rejection of this Agreement, TRANSFEROR shall perform
all of its obligations under this Agreement and as required by such bankruptcy
Laws. If TRANSFEROR or any trustee rejects this Agreement pursuant to such
bankruptcy Laws, TRANSFEREE may elect to retain its license rights under this
Agreement for the duration of this Agreement and the license granted herein.
If
TRANSFEREE elects to retain its license rights hereunder, TRANSFEREE may freely
exercise its rights under this Agreement and any supplementary agreement and
TRANSFEROR shall comply fully with its delivery and disclosure obligations
pursuant to Section 2.3 inasmuch as the Assigned Deliverables, Licensed
Deliverables, and Technology are integral to TRANSFEREE’s license rights
pursuant to Section 2.1 and assignment rights under Section 2.2. TRANSFEROR
and/or the trustee shall not interfere with the rights of TRANSFEREE as provided
in this Agreement.
[SIGNATURES
BEGIN ON THE FOLLOWING PAGE]
18
IN
WITNESS WHEREOF,
the
undersigned have executed this Agreement.
TRANSFEROR:
Hemiwedge
Valve Corporation
By: ________________________________
Name:
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Title:
Chief Financial Officer
TRANSFEREE:
Tejas
Research & Engineering, L.P.
By: ________________________________
Name:
▇▇▇▇▇▇ ▇▇▇▇
Title:
Chief Executive Officer
SCHEDULE
A –
LICENSED HEMIWEDGE INTELLECTUAL PROPERTY
| a. |
U.S.
Patent Number 4,962,911, titled “Hemiwedge Valve”
(expired)
|
| b. |
U.S.
Patent Number 5,333,834, titled “Valve
Driver”
|
| c. |
U.S.
Patent Number 5,507,469, titled “Valve Actuator System for Initial Torque
Reduction”
|
| d. |
U.S.
Patent Number 7,357,145, titled “High-pressure, Hemi-wedge Cartridge
Valve”
|
| e. |
U.S.
Patent Application Publication Number 2008/0093575, titled “Rotatable
Wedge Valve Mechanism And Method For
Manufacture”
|
| f. |
U.S.
Patent Application Publication Number 2008/0099076, titled “Rotatable
Wedge Cartridge Valve Mechanism And Method For Assembly And
Disassembly”
|
| g. |
U.S.
Patent Application Publication Number 2008/0179558 (U.S. Patent
Application Serial Number 11/699518), titled “Self-adjusting Seat For
Rotary Valve” (abandoned)
|
| h. |
WO2008/051886,
titled “Rotatable Wedge Valve Mechanism And Method For
Manufacture”
|
| i. |
WO2008/055050,
titled “Rotatable Wedge Cartridge Valve Mechanism And Method For Assembly
And Disassembly”
|
| j. |
WO1996/035068
(PCT/US96/05980), titled “Valve Actuator System for Initial Torque
Reduction” (expired)
|
| k. |
WO1994/023228
(PCT/US94/03360), titled “Valve Driver”
(expired)
|
SCHEDULE
B –
ASSIGNED HEMIWEDGE INTELLECTUAL PROPERTY
| a. |
U.S.
Patent Application Serial Number 12/049765, titled “Hydraulic
Bi-Directional Rotary Isolation
Valve”
|
| b. |
U.S.
Patent Application Serial Number 12/112092, titled “Mechanical
B-Directional Isolation Valve”
|
Schedule
C –
SHORT FORM ASSIGNMENT
THIS
ASSIGNMENT,
is made
this
____
day
of October,
2008,
by
Hemiwedge
Valve Corporation, a Texas corporation (hereinafter referred to as
Assignor);
WHEREAS,
Assignor is the owner of certain new and useful inventions as described in
each
patent or patent application listed below (herein “Inventions”):
United
States of America application serial number 12/0497,65, titled “Hydraulic
Bi-Directional Rotary Isolation Valve”; and United States of America application
serial number 12/112,092, titled “Mechanical B-Directional Isolation Valve”;
and
WHEREAS,
Tejas
Research & Engineering, L.P., a Texas limited partnership (herein called
“Assignee”), is desirous of acquiring the entire right, title and interest in
and to said Inventions, including said pending patent applications anywhere
in
the world, and in and to any Letters Patent of the United States to be obtained
therefore and thereon.
NOW,
THEREFORE,
for
good and sufficient consideration, the receipt of which is hereby acknowledged,
Assignor has sold, assigned, transferred and set over, and by these presents
does sell, assign, transfer and set over, unto Assignee, its successors, legal
representatives and assigns, the entire right, title and interest in and to
the
above-mentioned Inventions, including said pending applications anywhere in
the
world, and in and to any Letters Patent to be obtained therefore and thereon,
and in and to any and all direct and indirect divisions, continuations and
continuations-in-part of said application(s), and any and all Letters Patent
in
the United States
and all
foreign countries which may be granted therefore and thereon, and reissues,
reexaminations and extensions of said Letters Patent, and all rights of action
on account of past, present and future infringement of said patents and like
protection, and all rights under the International Convention for the Protection
of Industrial Property, the same to be held and enjoyed by Assignee, for its
own
use and benefit and the use and benefit of its successors, legal representatives
and assigns, to the full end of the term or terms for which Letters Patent
may
be granted and/or extended, as fully and entirely as the same would have been
held and enjoyed by Assignor, had this sale and assignment not been
made.
AND
for the
same consideration, Assignor hereby represents and warrants to Assignee, its
successors, legal representatives and assigns, that, at the time of execution
and delivery of these presents, except for any rights, titles and/or interests
that have arisen to Assignee under law or that have already been transferred
to
Assignee, Assignor is the sole and lawful owners of the entire right, title
and
interest in and to the said Inventions, including said pending applications
anywhere in the world, and in and to any Letters Patent to be obtained therefore
and thereon, and that the same are unencumbered and that Assignor has good
and
full right and lawful authority to sell and convey the same as herein set
forth.
AND
for the
same consideration, Assignor hereby covenants and agrees to and with Assignee,
its successors, legal representatives and assigns, that Assignor will sign
all
papers and documents, take all lawful oaths and do all acts necessary or
required to be done for the procurement, maintenance, enforcement and defense
of
any Letters Patent and applications for Letters Patent for said Inventions,
whenever counsel of Assignee, or counsel of its successors, legal
representatives and assigns, shall advise: that any proceedings in connection
with said Inventions, patent applications, or Letters Patent, including but
not
limited to interference proceedings, is lawful and desirable; or, that any
division, continuation or continuation-in-part of any application for Letters
Patent, or any reissue, reexamination or extension of any Letters Patent, to
be
obtained thereon, is lawful and desirable.
AND
Assignor
hereby requests the Commissioner of Patent and Trademarks to issue said Letters
Patent of the United States to Assignee, as Assignee of said Inventions and
any
Letters Patent issued or to be issued thereon, for the sole use and benefit
of
Assignee, its successors, legal representatives and assigns.
AND
Assignor
hereby grants the following individuals the power to insert on this Assignment
any further identification which may be necessary or desirable to comply with
the rules of the United States Patent and Trademark Office for recordation
of
this document:
All
practitioners at Customer Number 26271.
|
Date:
|
|||
|
Printed
Name:
|
|||
| THE STATE OF TEXAS | ' |
| COUNTY OF ▇▇▇▇▇▇ | ' |
Before
me, the undersigned authority, on this ____ day of October, 2008, personally
appeared _______________________, who being by me first duly sworn declared
that
he is _______________________ and acknowledged to me that he executed the
foregoing Assignment for the purposes therein expressed.
(Notary
Seal)
|
Notary
Public, State of
Texas
|