[Certain portions of this exhibit have been omitted pursuant to Rule
24b-2 and are subject to a confidential treatment request. Copies of
this exhibit containing the omitted information have been filed
separately with the Securities and Exchange Commission. The omitted
portions of this document are marked with a ***.]
PATENT PURCHASE AGREEMENT
This PATENT PURCHASE AGREEMENT ("Agreement") is entered into on April
16, 2004 ("Effective Date") by and between *** with an office at ***
("Purchaser"), and Arkona, Inc. with an office at ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇ ("Seller"). The parties hereby agree as
follows.
1. BACKGROUND
1.1 Seller owns certain United States Letters Patents and/or applications
for United States Letters Patents and/or related foreign patents and
applications.
1.2 Seller wishes to sell its right, title and interest in such patents and
applications to Purchaser.
1.3 Purchaser wishes to purchase such patents and applications.
2. DEFINITIONS
2.1 "Assignment Agreements" means the agreements assigning ownership of the
Patents from the inventors and/or prior owners to Seller.
2.2 "List of Prosecution Counsel" means the names and addresses of
prosecution counsel who prosecuted the Patents and who are currently
handling the Patents.
2.3 "Patents" means those patents and applications listed in Exhibit A
hereto, and all reissues, reexaminations, extensions, continuations,
continuations in part, continuing prosecution applications, and
divisions of such patents and applications; provisional patent
applications that are or will be continuations or continuations in part
of such patents and applications; and foreign counterparts to any of
the foregoing including without limitation utility models.
3. DELIVERY AND PAYMENT
3.1 Delivery. Within ten (10) days following the Effective Date, Seller
shall deliver to Purchaser an executed copy of the Assignment of Patent
Rights in Exhibit B hereto, the Assignment Agreements, the List of
Prosecution Counsel, and all files and original documents owned or
controlled by Seller (including without limitation Letters Patents)
relating to the Patents including, without limitation, all prosecution
files for pending patent applications included in the Patents, and its
own files relating to the issued Patents.
3.2 Payment. Within ten (10) days following Seller's delivery to Purchaser
of the items listed in Section 3.1, Purchaser shall pay to Seller the
amount of One Hundred Thousand dollars ($100,000.00).
4. TRANSFER OF PATENTS
4.1 Patent Assignment. Seller hereby sells, assigns, transfers and conveys
to Purchaser all right, title and interest it has in and to the Patents
and all inventions and discoveries described therein, including without
limitation, all rights of Seller under the Assignment Agreements, and
all rights of Seller to collect royalties under such Patents.
4.2 Assignment of Causes of Action. Seller hereby sells, assigns, transfers
and conveys to Purchaser all right, title and interest it has in and to
all causes of action and enforcement rights, whether currently pending,
filed, or otherwise, for the Patents and all inventions and discoveries
described therein, including without limitation all rights to pursue
damages, injunctive relief and other remedies for past, current and
future infringement of the Patents.
5. ADDITIONAL OBLIGATIONS
5.1 Further Cooperation. At the reasonable request of Purchaser, Seller
shall execute and deliver such other instruments and do and perform
such other acts and things as may be necessary or desirable for
effecting completely the consummation of the transactions contemplated
hereby, including without limitation execution, acknowledgment and
recordation of other such papers, and using best efforts to obtain the
same from the respective inventors, as necessary or desirable for fully
perfecting and conveying unto Purchaser the benefit of the transactions
contemplated hereby.
5.2 Payment of Fees. Seller shall pay any maintenance fees, annuities, and
the like due on the Patents for a period of thirty (30) days following
the Effective Date.
6. REPRESENTATIONS AND WARRANTIES
Except as specifically described on Exhibit C to this Agreement, Seller
hereby represents and warrants to Purchaser as follows:
6.1 Authority. Seller has the right and authority to enter into this
Agreement and to carry out its obligations hereunder.
6.2 Title and Contest. Seller has good and marketable title to the Patents,
including without limitation all rights, title, and interest in the
Patents to ▇▇▇ for infringement thereof. The Patents are free and clear
of all liens, mortgages, security interests or other encumbrances, and
restrictions on transfer. There are no actions, suits, investigations,
claims or proceedings threatened, pending or in progress relating in
any way to the Patents. There are no existing contracts, agreements,
options, commitments, proposals, bids, offers, or rights with, to, or
in any person to acquire any of the Patents.
6.3 Existing Licenses. No rights or licenses have been granted under the
Patents.
-2-
6.4 Restrictions on Rights. Purchaser will not be subject to any covenant
not to ▇▇▇ or similar restrictions on its enforcement or enjoyment of
the Patents as a result of the transaction contemplated in this
Agreement, or any prior transaction related to the Patents.
6.5 Conduct. None of Seller or its representatives has engaged in any
conduct, or omitted to perform any necessary act, the result of which
would invalidate any of the Patents or hinder their enforcement,
including but not limited to misrepresenting Seller's patent rights to
a standard-setting organization.
6.6 Enforcement. Seller has not put a third party on notice of actual or
potential infringement of any of the Patents or considered enforcement
action(s) with respect to any of the Patents.
6.7 Patent Office Proceedings. None of the Patents have been or are
currently involved in any reexamination, reissue, interference
proceeding, or any similar proceeding and that no such proceedings are
pending or threatened.
6.8 Fees. All maintenance fees, annuities, and the like due on the Patents
have been timely paid.
6.9 Consents. Seller has obtained all third party consents, approvals,
and/or other authorizations required to make the assignments of Section
4.
6.10 Validity and Enforceability. The Patents have never been found invalid
or unenforceable for any reason in any administrative, arbitration,
judicial or other proceeding, and Seller has not received any notice or
information of any kind from any source suggesting that the Patents may
be invalid or unenforceable.
7. MISCELLANEOUS
7.1 License Grant Back. Purchaser hereby grants to Seller a royalty-free,
fully paid-up, irrevocable, non-transferable, non-exclusive worldwide
license to make, have made, use, sell, offer to sell, import and export
any product or process (or use thereof) that is covered by or claimed
or embodied in any of the Patents.
7.2 Limitation on Consequential Damages. NEITHER PARTY SHALL BE LIABLE TO
THE OTHER FOR LOSS OF PROFITS, OR ANY SPECIAL, CONSEQUENTIAL OR
INCIDENTAL DAMAGES, HOWEVER CAUSED, EVEN IF ADVISED OF THE POSSIBILITY
OF SUCH DAMAGE. THE PARTIES ACKNOWLEDGE THAT THESE LIMITATIONS ON
POTENTIAL LIABILITIES WERE AN ESSENTIAL ELEMENT IN SETTING
CONSIDERATION UNDER THIS AGREEMENT.
7.3 Limitation of Liability. EXCEPT IN THE CASE OF FRAUD, EACH PARTY'S
TOTAL LIABILITY UNDER THIS AGREEMENT SHALL BE LIMITED TO THE SALES
PRICE OF ONE HUNDRED THOUSAND DOLLARS ($100,000.00). THE PARTIES
ACKNOWLEDGE THAT THESE LIMITATIONS ON POTENTIAL LIABILITIES WERE AN
ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER THIS AGREEMENT.
-3-
7.4 Compliance with Laws. Notwithstanding anything contained in this
Agreement to the contrary, the obligations of the parties shall be
subject to all laws, present and future, of any government having
jurisdiction over the parties and this transaction, and to orders,
regulations, directions or requests of any such government.
7.5 Confidentiality of Terms. The parties hereto shall keep the terms of
this Agreement confidential and shall not now or hereafter divulge any
of this information to any third party except: (a) with the prior
written consent of the other party; (b) as otherwise may be required by
law or legal process, including in confidence to legal and financial
advisors in their capacity of advising a party in such matters; (c)
during the course of litigation as long as the disclosure of such terms
and conditions are restricted in the same manner as the confidential
information of other litigating parties; or (d) in confidence to its
legal counsel, accountants, banks and financing sources and their
advisors solely in connection with complying with financial
transactions; provided that, in (b) through (d) above, the disclosing
party shall use all legitimate and legal means available to minimize
disclosure to third parties, including without limitation seeking a
confidential treatment request or protective order whenever appropriate
or available; and (ii) the disclosing party shall provide the other
party with at least ten (10) days prior written notice of the
disclosure.
7.6 Governing Law. Any claim arising under or relating to this Agreement
shall be governed by the internal substantive laws of the State of
Delaware without regard to principles of conflict of laws.
7.7 Jurisdiction. Each party hereby agrees to jurisdiction and venue in the
courts of the State of Utah or the Federal courts sitting therein for
all disputes and litigation arising under or relating to this
Agreement.
7.8 Entire Agreement. The terms and conditions of this Agreement, including
its exhibits, constitutes the entire agreement between the parties with
respect to the subject matter hereof, and merges and supersedes all
prior and contemporaneous agreements, understandings, negotiations and
discussions. Neither of the parties shall be bound by any conditions,
definitions, warranties, understandings, or representations with
respect to the subject matter hereof other than as expressly provided
herein. The section headings contained in this Agreement are for
reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement. No oral explanation or oral
information by either party hereto shall alter the meaning or
interpretation of this Agreement. No amendments or modifications shall
be effective unless in a writing signed by authorized representatives
of both parties. These terms and conditions will prevail
notwithstanding any different, conflicting or additional terms and
conditions which may appear on any purchase order, acknowledgment or
other writing not expressly incorporated into this Agreement. This
Agreement may be executed in two (2) or more counterparts, all of
which, taken together, shall be regarded as one and the same
instrument. The following exhibits are attached hereto and incorporated
herein: Exhibit A (entitled "Patent Rights to be Assigned"); Exhibit B
(entitled "Assignment of Patent Rights") and Exhibit C (entitled
"Exceptions to Seller's Representations".
-4-
7.9 Notices: All notices required or permitted to be given hereunder shall
be in writing, shall make reference to this Agreement, and shall be
delivered by hand, or dispatched by prepaid air courier or by
registered or certified airmail, postage prepaid, addressed as follows:
If to Seller If to Purchaser
Arkona, Inc. ***
▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇ ▇▇▇▇
Such notices shall be deemed served when received by addressee or, if
delivery is not accomplished by reason of some fault of the addressee,
when tendered for delivery. Either party may give written notice of a
change of address and, after notice of such change has been received,
any notice or request shall thereafter be given to such party at such
changed address.
7.10 Relationship of Parties. The parties hereto are independent
contractors. Neither party has any express or implied right or
authority to assume or create any obligations on behalf of the other or
to bind the other to any contract, agreement or undertaking with any
third party. Nothing in this Agreement shall be construed to create a
partnership, joint venture, employment or agency relationship between
Seller and Purchaser.
7.11 Equitable Relief. Seller agrees that damages alone would be
insufficient to compensate Purchaser for a breach of this Agreement,
acknowledges that irreparable harm would result from a breach of this
Agreement, and consents to the entering of an order for injunctive
relief to prevent a breach or further breach, and the entering of an
order for specific performance to compel performance of any obligations
under this Agreement.
7.12 Severability. The terms and conditions stated herein are declared to be
severable. If any paragraph, provision, or clause in this Agreement
shall be found or be held to be invalid or unenforceable in any
jurisdiction in which this Agreement is being performed, the remainder
of this Agreement shall be valid and enforceable and the parties shall
use good faith to negotiate a substitute, valid and enforceable
provision which most nearly effects the parties' intent in entering
into this Agreement.
7.13 Waiver. Failure by either party to enforce any term of this Agreement
shall not be deemed a waiver of future enforcement of that or any other
term in this Agreement or any other agreement that may be in place
between the parties.
7.14 Assignment. The terms and conditions of this Agreement shall inure to
the benefit of Purchaser, its successors, assigns and other legal
representatives, and shall be binding upon Seller, its successor,
assigns and other legal representatives.
-5-
In witness whereof, the parties have executed this Patent Purchase
Agreement as of the Effective Date:
*** Arkona, Inc.
Purchaser Seller
/s/ ▇▇▇▇ ▇▇▇▇
-------------------------------
Signature Signature
▇▇▇▇ ▇▇▇▇
-------------------------------
Printed Name Printed Name
Chief Executive Officer
-------------------------------
Title Title
June 2004
-------------------------------
Date Date
Exhibit A
Patent Rights To Be Assigned
------------------------- ------------- ---------------------- --------------------------------------------------------
Patent or Application
No. Country Filing Date Title and Inventor(s)
------------------------- ------------- ---------------------- --------------------------------------------------------
5,999,947 U.S. May 27, 1997 DISTRIBUTING DATABASE DIFFERENCES CORRESPONDING TO
DATABASE CHANGE EVENTS MADE TO A DATABASE TABLE
LOCATED ON A SERVER COMPUTER
Inventors: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, Salt Lake City, Utah;
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, San Francisco, Calif.
------------------------- ------------- ---------------------- --------------------------------------------------------
6,321,236 U.S. August 3, 1999 DISTRIBUTING DATABASE DIFFERENCES CORRESPONDING TO
DATABASE CHANGE EVENTS MADE TO A DATABASE TABLE
LOCATED ON A SERVER COMPUTER
Inventors: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, Salt Lake City, Utah;
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, San Francisco, Calif.
------------------------- ------------- ---------------------- --------------------------------------------------------
Exhibit B
ASSIGNMENT OF PATENT RIGHTS
For good and valuable consideration, the receipt of which is hereby
acknowledged, Arkona, Inc. having offices at ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇
▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇ ("Assignor"), does hereby sell, assign, transfer
and convey unto *** ("Assignee") or its designees, all of Assignor's right,
title and interest in and to the patent applications and patents listed below,
any patents, registrations, or certificates of inventions issuing on any patent
applications listed below, the inventions disclosed in any of the foregoing, any
and all counterpart United States, international and foreign patents,
applications and certificates of inventions based upon or covering any portion
of the foregoing, and all reissues, re-examinations, divisionals, renewals,
extensions, provisionals, continuations and continuations in-part of any of the
foregoing (collectively "Patent Rights"):
------------------------- ------------- ---------------------- --------------------------------------------------------
Patent or Application
No. Country Filing Date Title and Inventor(s)
------------------------- ------------- ---------------------- --------------------------------------------------------
5,999,947 U.S. May 27, 1997 DISTRIBUTING DATABASE DIFFERENCES CORRESPONDING TO
DATABASE CHANGE EVENTS MADE TO A DATABASE TABLE
LOCATED ON A SERVER COMPUTER
Inventors: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, Salt Lake City, Utah;
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, San Francisco, Calif.
------------------------- ------------- ---------------------- --------------------------------------------------------
6,321,236 U.S. August 3, 1999 DISTRIBUTING DATABASE DIFFERENCES CORRESPONDING TO
DATABASE CHANGE EVENTS MADE TO A DATABASE TABLE
LOCATED ON A SERVER COMPUTER
Inventors: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, Salt Lake City, Utah;
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, San Francisco, Calif.
------------------------- ------------- ---------------------- --------------------------------------------------------
Assignor represents, warrants and covenants that, to its knowledge: (i) it is
the sole owner and assignee and holder of record title to the Patent Rights
identified above, (ii) it has obtained and properly recorded previously executed
assignments for all patent applications and patents identified above as
necessary to fully perfect its rights and title therein in accordance with
governing law and regulations in each respective jurisdiction, and (iii) it has
full power and authority to make the present assignment. Assignor shall
indemnify and hold harmless Assignee for any breach of the foregoing.
Assignor further agrees to and hereby does sell, assign, transfer and convey
unto Assignee all of its rights: (i) in and to causes of action and enforcement
rights for the Patent Rights including all rights to pursue damages, injunctive
relief and other remedies for past and future infringement of the Patent Rights,
and (ii) to apply in any or all countries of the world for patents, certificates
of invention or other governmental grants for the Patent Rights, including
without limitation under the Paris Convention for the Protection of Industrial
Property, the International Patent Cooperation Treaty, or any other convention,
treaty, agreement or understanding. Assignor also hereby authorizes the
respective patent office or governmental agency in each jurisdiction to issue
any and all patents or certificates of invention which may be granted upon any
of the Patent Rights in the name of Assignee, as the assignee to the entire
interest therein.
Assignor will, at the reasonable request of Assignee and without demanding any
further consideration therefor, do all things necessary, proper, or advisable,
including without limitation the execution, acknowledgment and recordation of
specific assignments, oaths, declarations and other documents on a
country-by-country basis, to assist Assignee in obtaining, perfecting,
sustaining, and/or enforcing the Patent Rights. Such assistance shall include
providing, and obtaining from the respective inventors, prompt production of
pertinent facts and documents, giving of testimony, execution of petitions,
oaths, powers of attorney, specifications, declarations or other papers and
other assistance reasonably necessary for filing patent applications, complying
with any duty of disclosure, and conducting prosecution, reexamination, reissue,
interference or other priority proceedings, opposition proceedings, cancellation
proceedings, public use proceedings, infringement or other court actions and the
like with respect to the Patent Rights.
The terms and conditions of this Assignment shall inure to the benefit of
Assignee, its successors, assigns and other legal representatives, and shall be
binding upon Assignor, its successor, assigns and other legal representatives.
IN WITNESS WHEREOF this Assignment of Patent Rights is executed at on June
[illegible], 2004.
ASSIGNOR
By: /s/ ▇▇▇▇ ▇▇▇▇
--------------------------------------------
Name: ▇▇▇▇ ▇▇▇▇
--------------------------------------------
Title: Chief Executive Officer
--------------------------------------------
(Signature MUST be notarized)
-2-
Exhibit C
Exceptions to Seller's Representations