Exhibit 10.16
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. 6,575,360;
corresponding EU Patent EP0981803 B1 nationalized in Germany
( DE59802639) , France ( EP0981803) , Great Britain ( EP0981803) and Austria ( EP0981803); Russian Patent No. RU2212707 C2; South
African Patent No. ZA98/04060; and pending Malaysia Patent
Application No. PI98002174 (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.
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:
1.
Sale
of the Patents
a.
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.
b.
The individual purchase
prices of the Patents conveyed herein (each, an “Individual
Purchase Price”) shall consist of the following
amounts:
i. EUR
1,525,000.00 for the US Patent;
ii. EUR 1,525,000.00
for the EU Patent, including the Germany Patent, Great Britain
Patent, France Patent and Austria Patent;
iii. EUR 50,000.00 for the
Russia Patent;
iv. EUR 30,000.00 for the
South Africa Patent; and
v. EUR 20,000.00 for
the Malaysia Patent Application and each Patent issuing
thereon.
c.
The total purchase price
thus amounts to Euro 3,150,000.00 (in words: Euro three million one
hundred and fifty thousand) (the “Total Purchase
Price”).
d.
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:
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.
e.
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
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payments made by ActivIdentity, regardless of
whether such payments were made before or after the Three-Week
Deadline.
2.
Covenants, Warranties and
Limitation of Liability
a.
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. T ecLic 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.
b.
The Parties hereby agree
that all costs associated with assigning and transferring the
Patents to ActivIdentity shall be borne solely by
ActivIdentity.
c.
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.
d.
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.
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.
3.
Assignment of the
Patents
a.
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 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.
b.
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:
Cabinet JP COLAS
37,
avenue Franklin D. Roosevelt
75008 Paris
France
Attention: Jean-Pierre Colas
Fax: + 33 (0)1 45 61 91 98
c.
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.
d.
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
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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.
e.
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.
4.
Notices
a.
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.
b.
Every Notice shall be sent
by courier, or by prepaid airmail or by facsimile
transmission. Every Notice shall be addressed as
follows:
As
to TecLic:
White & Case LLP
Königstraße 1
01097 Dresden
Germany
Attention: Dr. Axel Bauer,
Esq.
Fax: +49 351 8888-191
As
to ActivIdentity:
ActivIdentity Corporation
6623 Dumbarton Circle
Fremont, California 94555
USA
Attention: Mr. Thomas Jahn
Fax: +1 510 574 0101
c.
A Notice shall be deemed
effective as of the date of dispatch, provided it is dispatched on
a normal business day in its country of origin (a “Business
Day”); otherwise, a Notice shall be deemed effective as of
the next Business Day.
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d.
In proving service of
Notice, it shall be sufficient to prove that delivery was made or
that the envelope containing the Notice was properly addressed and
posted either by prepaid first clas
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