COMMERCIALIZATION AGREEMENT by and among P-NEWCO and TECHNOLOGY PROPERTIES LIMITED and PATRIOT SCIENTIFIC CORPORATION
EXHIBIT
10.41
by
and among
P-NEWCO
and
TECHNOLOGY
PROPERTIES LIMITED
and
PATRIOT
SCIENTIFIC CORPORATION
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***
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Indicates
material omitted pursuant to an application for confidential treatment
and
that material has been filed separately with the
Commission.
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TABLE
OF CONTENTS
Page
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ARTICLE
1 GRANT
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1
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ARTICLE
2 COMMERCIALIZATION
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2
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ARTICLE
3 COVENANTS
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3
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ARTICLE
4 PAYMENT ***
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4
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ARTICLE
5 TERM
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5
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ARTICLE
6 TERMINATION
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5
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ARTICLE
7 REPRESENTATIONS AND WARRANTIES
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6
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ARTICLE
8 GENERAL
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7
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EXHIBIT
A
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GRANT
& SCHEDULE OF PATENTS
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SCHEDULE
1
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SCHEDULE
OF PATENTS
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SCHEDULE
2
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PROJECT
DESCRIPTION ***
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SCHEDULE
3
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SCHEDULE
OF OUTSTANDING
ACTIVITIES/RIGHTS/CLAIMS
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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 ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, and Technology Properties Limited Inc., a California
Corporation (“TPL”),
having its principal place of business at ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇.
▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇. 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 ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇ (“▇▇▇▇▇”)
collectively hold all rights with respect to certain microprocessor
implementation and architecture patents set forth on Schedule
1
(the
“MSD
Patents”);
WHEREAS,
▇▇▇▇▇ has transferred complete authority for the management of ▇▇▇▇▇’▇ rights to
the MSD Patents to TPL;
WHEREAS,
Patriot, TPL and ▇▇▇▇▇ 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:
ARTICLE
I
GRANT
1.1 Pursuant
to the Master Agreement, P-Newco and TPL shall enter into the grant attached
hereto as Exhibit A (the “Grant”).
ARTICLE
II
COMMERCIALIZATION
2.1 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.
2.2 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
▇▇▇ in
the name of TPL, ▇▇▇▇▇, 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:
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(i)
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Provided
legal services or advice to;
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(ii)
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Undertaken
the representation of; or
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(iii)
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Entered
into a lawyer-client relationship
with,
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P-Newco,
Patriot or any of P-Newco’s or Patriot’s respective affiliates or
Representatives.
ARTICLE
III
COVENANTS
3.1 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.
3.2 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.
3.3 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.
3.4 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).
3.5 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.
ARTICLE
IV
PAYMENT
4.1 TPL
shall
cause all Gross Cash Proceeds generated from the Commercialization efforts
to be
paid directly to P-Newco.
4.2 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.
4.3 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.
ARTICLE
V
TERM
5.1 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.
5.2 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.
5.3 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.
ARTICLE
VI
TERMINATION
6.1 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.
6.2 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
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(i)
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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
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(ii)
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there
has been no event or occurrence which negatively and materially impacts
the viability or value of the MSD Patents;
and
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(iii)
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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
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(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 ▇▇▇▇▇ be deemed to constitute a Termination
Event.
6.3 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.
ARTICLE
VII
REPRESENTATIONS
AND WARRANTIES
7.1 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;
(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.
7.2 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.
7.3 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.
ARTICLE
VIII
GENERAL
8.1 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.
8.2 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.
8.3 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.
8.4 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.
8.5 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
▇▇▇▇▇
▇▇▇
▇▇▇▇▇▇▇▇
▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn:
President
Fax:
(▇▇▇) ▇▇▇-▇▇▇▇
with
a copy to:
▇▇▇▇,
Forward, ▇▇▇▇▇▇▇▇ & Scripps LLP
▇▇▇
▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn:
▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Esq.
Fax:
(▇▇▇) ▇▇▇-▇▇▇▇
If
to TPL:
Technology
Properties Limited
▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇., ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Attn:
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Chairman
Fax:
(▇▇▇) ▇▇▇-▇▇▇▇
with
a copy to:
▇▇▇▇▇▇,
▇▇▇▇ & ▇▇▇▇▇▇▇▇ LLP
▇▇▇
▇.
▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn:
▇▇▇▇▇▇ ▇. ▇▇▇▇▇, Esq.
Fax:
(▇▇▇) ▇▇▇-▇▇▇▇
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.
8.7 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.
8.8 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.
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
Delaware corporation
__________________________________________
By:
Its:
TECHNOLOGY
PROPERTIES LIMITED, a California corporation
__________________________________________
By: ▇▇▇▇▇▇
▇.
▇▇▇▇▇▇▇▇
Its: Chairman
P-NEWCO,
a Delaware limited liability company
__________________________________________
By:
Its: Patriot
Member
__________________________________________
By:
Its: TPL
Member
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 cove-nants 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:
1. Subject
Matter.
1.1 The
patents described in the Schedule of Patents at Attachment I hereof, sometimes
collectively referred to as the “Project Patents.”
2. Grant.
2.1 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:
2.1.1 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;
2.1.2 To
▇▇▇ in
the name of Technology Properties Limited or jointly with Patriot Scientific
Corporation, ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇ 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,
2.1.3 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.
2.2 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.
3. General.
3.1 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.
3.2 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.
3.3 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.
3.4 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.
3.5 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
TPL:
▇▇▇▇▇▇
▇
▇▇▇▇▇▇▇▇, Chm
▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Telephone:
▇▇▇-▇▇▇-▇▇▇▇
Facsimile:
▇▇▇-▇▇▇-▇▇▇▇
If
to
Newco:
▇▇▇▇▇▇
▇
▇▇▇▇▇▇▇▇, Chm
▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Telephone:
▇▇▇-▇▇▇-▇▇▇▇
Facsimile:
▇▇▇-▇▇▇-▇▇▇▇
AND
Patriot
Scientific Corporation
▇▇▇▇▇
▇▇▇
▇▇▇▇▇▇▇▇
▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn:
President
Fax:
(▇▇▇) ▇▇▇-▇▇▇▇
AND
▇▇▇▇▇▇
▇.
▇▇▇▇▇▇▇
Relational
Advisors LLC
▇▇▇▇▇
▇▇
▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Fax:
(▇▇▇) ▇▇▇-▇▇▇▇
3.6 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.
3.7 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.
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
By:__________________________________________
▇▇▇▇▇▇
▇. ▇▇▇▇▇▇▇
Date:__________________________________________
|
TECHNOLOGY
PROPERTIES LTD.
By:__________________________________________
▇▇▇▇▇▇
▇. ▇▇▇▇▇▇▇▇, Chairman
Date:__________________________________________
|
Attachment
I - Schedule of Patents
(See
next
page)
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
|
|||||||||
| 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 ▇▇
|
-
-
- -
|
||||
|
▇▇
|
▇▇▇▇▇▇▇
|
▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇▇▇ 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 ▇▇
|
-
-
- -
|
||||
|
▇▇
|
▇▇▇▇▇▇▇▇▇
|
_
_
_ _ _ _
|
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
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
Having
Variable Speed Sys Clock
|
29
JUL 98
|
22
JUL 03
|
3
AUG 09
|
||||||
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 ▇▇
|
-
-
- -
|
||
|
▇▇
|
▇▇▇▇▇▇▇▇▇
|
_
_
_ _ _ _
|
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
2
PROJECT
DESCRIPTION
I. 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.)
|
***
|
II. COMMERCIALIZATION
GUIDELINES
|
A.)
|
***
|
III. ADDITIONAL
ACTIONS
|
A.)
|
***
|
|
B.)
|
***
|
|
C.)
|
***
|
IV. ***
***
V. 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.
|
ATTACHMENT
1 TO SCHEDULE 2
BUSINESS
PLAN
I. ***
SCHEDULE
3
SCHEDULE
OF OUTSTANDING ACTIVITIES/RIGHTS/CLAIMS
|
AGREEMENT
|
DATE
|
|
TPL
|
|
|
1.
▇▇▇▇▇ - TPL Commercialization Agreement
|
22
OCT 02
|
|
2.
P-Newco - TPL - PTSC Commercialization Agreement
|
25
MAY 05
|
|
3.
TPL - Intel License Agree ment
|
28
JUN 04
|
|
PTSC
|
|
|
1.
PTSC - AMD License Agreement
|
_________
|
|
2.
P-Newco - TPL - PTSC Commercialization Agreement
|
25
MAY 05
|
|
3.
________________________
|