Exhibit 10.16
CERTAIN CONFIDENTIAL PORTIONS OF
THIS EXHIBIT WERE OMITTED AND REPLACED WITH “***”. A
COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE
SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN
APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF
THE EXCHANGE ACT OF 1934.
Patent Purchase and Assignment
Agreement
By and between
1. TecLic Technical Licenses GmbH
(formerly BetaResearch Gesellschaft für Entwicklung und
Vermarktung digitaler Infrastrukturen mbH)
Koenigstrasse 1
D-01097 Dresden
Germany
– “TecLic” or
“ASSIGNOR” –
and
2. ActivIdentity Corporation
(formerly ActivCard Corp.)
6623 Dumbarton Circle
Fremont, California 94555
USA
– “ActivIdentity”
or “ASSIGNEE” –
– Together the
“Parties” (individually the “Party”)
–
WHEREAS, TecLic is the owner of the
entire right, title and interest in and to US Patent No. * * *;
corresponding EU Patent * * * nationalized in Germany * * *, France
* * *, Great Britain * * * and Austria * * *; Russian Patent No. *
* *; South African Patent No. * * *; and pending Malaysia Patent
Application No. * * * (respectively, the “US Patent,”
the “EU Patent,” the “Germany Patent,” the
“Great Britain Patent,” the “France
Patent,” the “Austria Patent,” the Russia
Patent,” the “South Africa Patent” and the
“Malaysia Patent Application,” respectively, and
together, the “Patents”).
WHEREAS, presently, the title of all
of the Patents is in the former corporate name of TecLic, i.e., all
of the Patents currently are titled under TecLic’s former
corporate name, i.e., “BetaResearch Gesellschaft für
Entwicklung und Vermarktung digitaler Infrastrukturen mbH”
(“BetaResearch”), and TecLic has provided to
ActivIdentity formal proof of the legal identity of BetaResearch by
certified excerpts of the register of commerce of Munich and
Dresden, Germany, copies of which are attached hereto and made a
part hereof, designated Exhibits A and B.
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***
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Portions of
this page have been omitted pursuant to a request for Confidential
Treatment and filed separately with the Commission.
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1
NOW, THEREFORE, in consideration of
the foregoing premises and the covenants as hereinafter set forth,
and other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the Parties hereto
agree as follows:
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a.
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TecLic, by
these presents, does hereby sell, assign and transfer unto
ActivIdentity, and ActivIdentity does hereby purchase and accept
from TecLic, the entire right, title and interest in and to the
Patents (as defined above), any patent issuing on the Malaysian
Patent Application, and any divisionals, continuations,
continuations in part, extensions and reissues thereof, under such
terms and conditions as hereinafter set forth.
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b.
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The individual
purchase prices of the Patents conveyed herein (each, an
“Individual Purchase Price”) shall consist of the
following amounts:
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i.
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* * * for the
US Patent;
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ii.
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* * * for the
EU Patent, including the Germany Patent, Great Britain Patent,
France Patent and Austria Patent;
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iii.
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* * * for the
Russia Patent;
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iv.
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* * * for the
South Africa Patent; and
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v.
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* * * for the
Malaysia Patent Application and each Patent issuing
thereon.
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c.
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The total
purchase price thus amounts to Euro * * * (in words: Euro * * *)
(the “Total Purchase Price”).
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d.
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The Total
Purchase Price is due and payable within two (2) weeks after
execution of this agreement (the “Agreement”) by both
Parties and payable net and without any bank fees to the following
bank account of TecLic:
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Commerzbank München
Account No.: 296 00 86
Bankleitzahl: 700 400 41
Swift Code: COBADEFF700
The payment obligation shall be
deemed satisfied only if payment of the Total Purchase Price is
made to the bank account provided in this Section 1.d (the
“Account”). No later than one (1) German business
day after TecLic’s receipt of confirmation from Commerzbank
München that the Total Purchase Price has been posted to the
Account, TecLic shall acknowledge safe receipt of the Total
Purchase Price by facsimile notice to ActivIdentity, to the
attention of Mr. Thomas Jahn.
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e.
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If the Total
Purchase Price has not been paid in total within three
(3) weeks after execution of this Agreement by both Parties
(the “Three-Week Deadline”), TecLic shall be entitled
to terminate this Agreement by facsimile notice to ActivIdentity to
the attention of Mr. Thomas Jahn. TecLic shall deliver such
notice no later than one (1) week following the Three-Week
Deadline. At its sole discretion, TecLic may, by written notice to
ActivIdentity, elect to extend the Three-Week Deadline, in which
case, TecLic shall have an additional one (1) week beyond any
such extension to terminate this Agreement if the Total Purchase
Price has not been paid within the extended Three-Week Deadline. If
TecLic terminates this Agreement in accordance with this
Section 1.e, TecLic shall immediately refund to ActivIdentity
any and all payments made by ActivIdentity, regardless of whether
such payments were made before or after the Three-Week
Deadline.
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***
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Portions of
this page have been omitted pursuant to a request for Confidential
Treatment and filed separately with the Commission.
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2
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2.
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Covenants,
Warranties and Limitation of Liability
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a.
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TecLic
covenants, warrants and agrees that: (i) TecLic has the
exclusive right to sell, assign and transfer the entire right,
title and interest in and to the Patents to be conveyed herein;
(ii) TecLic is the sole legal owner of the Patents and the
Patents have neither been assigned nor pledged to a third party and
are free of any and all encumbrances; (iii) TecLic is entitled
and has the authority to assign the Patents to ActivIdentity;
(iv) all of the Patents are in full force and effect and all
payments and requested actions to patent offices to which the
Patents pertain have been made and satisfied to maintain in force
the Patents at the time of execution of this Agreement; and
(v) TecLic shall not assign or pledge the Patents to a third
party following the execution of this Agreement. Nothing contained
herein shall constitute a representation or warranty by TecLic that
the Malaysia Patent Application has issued or will issue. TecLic
hereby indemnifies and agrees to hold ActivIdentity harmless from,
against, and in respect of, and shall, on demand and upon
presentation to TecLic of proof thereof, reimburse ActivIdentity
for any and all losses, liabilities or damages suffered or incurred
by ActivIdentity (a) by reason of any untrue representation,
breach of warranty or non-fulfillment of any covenant by TecLic
contained herein or in any certificate, document or instrument
delivered to ActivIdentity pursuant hereto or in connection
herewith or (b) which would not have been suffered or incurred
if such representation were true and not breached or if such
covenant were fully performed. Each representation, warranty,
indemnity, covenant and agreement made by TecLic or ActivIdentity
in this Agreement shall survive the closing of this
Agreement.
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b.
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The Parties
hereby agree that all costs associated with assigning and
transferring the Patents to ActivIdentity shall be borne solely by
ActivIdentity.
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c.
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UPON EXECUTION
OF THE SALE, ASSIGNMENT AND TRANSFER OF THE PATENTS AS PROVIDED
HEREIN, THE PATENTS SHALL BE PROVIDED “AS IS” TO
ASSIGNEE. ASSIGNEE HAS THOROUGHLY EXAMINED THE PATENTS AND SHALL
ACCEPT THEM “AS IS”. EXCEPT AS EXPRESSLY PROVIDED FOR
IN THIS AGREEMENT, ASSIGNOR DISCLAIMS ALL WARRANTIES, EXPRESS OR
IMPLIED, WITH REGARD TO THE PATENTS AND THIS AGREEMENT, INCLUDING
THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE AND ANY WARRANTIES OF NON-INFRINGEMENT OR ANY
WARRANTIES ARISING FROM COURSE OF DEALING OR USAGE IN
TRADE.
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d.
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UNDER NO
CIRCUMSTANCES SHALL ANY LIABILITY OR INDEMNITY OBLIGATION OF TECLIC
OR ACTIVIDENTITY EXCEED THE INDIVIDUAL PURCHASE PRICE OF ONE OR
MORE OF THE PATENTS THAT IS OR ARE THE SUBJECT OF THE DISPUTE
INVOLVING SUCH LIABILITY OR INDEMNITY OBLIGATION.
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e.
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THIS AGREEMENT
IS NOT AND SHALL NOT BE CONSTRUED TO CONSTITUTE A LICENSE, EXPRESS
OR IMPLIED, TO ANY OTHER TECLIC OR BETARESEARCH INTELLECTUAL
PROPERTY. NOTWITHSTANDING THE FOREGOING, TECLIC AGREES THAT IT WILL
NOT ASSERT ANY OF ITS EXISTING PATENTS NOT ASSIGNED HEREIN AGAINST
ACTIVIDENTITY FOR PRACTICING AN INVENTION COVERED BY THE CLAIMS OF
THE PATENTS ASSIGNED HEREIN.
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3.
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Assignment
of the Patents
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a.
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Simultaneously with the execution
of this Agreement, TecLic shall execute and deliver to
ActivIdentity such documents and instruments as ActivIdentity shall
request (the “National Assignment Documents”), the
forms of which are set out in Annex 1 a)—c) attached
hereto, to request the commissioners of the United States Patent
and Trademark Office, the European Patent Office and the other
national patent offices wherein the Patents were issued or are
pending (a “National Patent Authority”), whose duty is
to issue patents or other evidence or forms of industrial property
protection
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3
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on applications as aforesaid, to
issue the same to ASSIGNEE, its successors, legal representatives
and assigns, in accordance with the terms of the applicable
National Assignment Document. ASSIGNEE shall bear all costs related
to the execution and registration of the National Assignment
Documents. TecLic agrees that it will execute and deliver to
ActivIdentity any and all additional documents and/or instruments
that may be reasonably requested by ActivIdentity and necessary to
vest full and complete legal and equitable title to the Patents in
ActivIdentity, without further consideration than now paid, but at
the expense of ActivIdentity, its successors or assigns.
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b.
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Upon execution
of the National Assignment Documents by TecLic, such documents
shall be placed in escrow with Tobias von Tucher of the law firm
White & Case LLP, to be released to ActivIdentity or
Cabinet JP COLAS, as directed by those parties, upon confirmation
of payment by ActivIdentity of the Total Purchase Price, in
accordance with Section 1.d of this Agreement. If the National
Assignment Documents are released to Cabinet JP COLAS, such release
shall be addressed as follows:
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Cabinet JP COLAS
37, avenue Franklin D.
Roosevelt
75008 Paris
France
Attention: Jean-Pierre
Colas
Fax: + 33 (0)1 45 61 91
98
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c.
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Under the
condition precedent of having received the Total Purchase Price in
full within the time period set forth in Section 1.d of this
Agreement, TecLic hereby assigns the Patents to ActivIdentity,
which accepts such assignment.
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d.
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The Parties
agree that the full title to the Patents shall be transferred to
the ASSIGNEE upon: (i) execution of this Agreement by both
Parties; (ii) execution by TecLic of the National Assignment
Documents; and (iii) payment by ActivIdentity of the Total
Purchase Price to TecLic. TecLic shall instruct the patent
attorneys listed in Annex 2 attached hereto to receive their
instructions with respect to the Patents from Cabinet JP Colas from
the date of assignment of the Patents.
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e.
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From the date
of assignment of the Patents, ActivIdentity shall be entitled to
enforce the Patents and recover damages for past, present and
future infringements thereof. At the request of ActivIdentity,
TecLic shall provide reasonable support to ActivIdentity in any
action concerning the Patents that is initiated by ActivIdentity,
including using its best efforts to obtain the reasonable support
of Mr. Thomas Hagn (“Hagn”). In such event,
ActivIdentity shall, and upon presentation to ActivIdentity of
proof thereof, pay all costs, fees and any expenses of any kind
incurred by TecLic or Hagn in full and in advance to TecLic and
Hagn respectively. In addition, ActivIdentity shall defend,
indemnify and hold harmless TecLic and Hagn from any claims,
counterclaims and costs incurred in any way related to the
enforcement of the Patents.
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a.
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Every notice
given or required to be given under this Agreement (a
“Notice”) shall be in writing and in the English
language. A Notice shall, in the case of a recipient being a
company, be sent to the office where the company is registered from
time to time.
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b.
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Every Notice
shall be sent by courier, or by prepaid airmail or by facsimile
transmission. Every Notice shall be addressed as
follows:
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As to TecLic:
White & Case LLP
Königstraße 1
01097 Dresden
Germany
4
Att
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