Exhibit 10.1(b)
AMENDED AND RESTATED LICENSE
AGREEMENT
This Amended and
Restated License Agreement (the “Progressive License”
or the “Agreement”) is made and entered into this 26th
day of September, 2007 (“Effective Date”), by and
between Progressive Gaming International Corporation, a Nevada
corporation, and its Affiliates and each of its Subsidiaries,
(jointly and severally “PGIC”) with a primary business
address of 920 Pilot Road, Las Vegas, Nevada 89119, on the one
hand, and Shuffle Master, Inc., and its Affiliates and each of its
Subsidiaries, (jointly and severally “SHFL”) located at
1106 Palms Airport Drive, Las Vegas, Nevada 89119-3730, on the
other hand.
RECITALS
Whereas PGIC is
engaged in the business of manufacturing, distributing, selling
and/or commercializing gaming equipment and systems and owns or
controls the rights in the Licensed Patents (defined
below);
Whereas SHFL is
engaged in the business of manufacturing, distributing, selling
and/or commercializing gaming equipment and systems;
Whereas SHFL and
PGIC previously entered into the License Agreement dated September
29, 2006 (the “Previous License Agreement”) pursuant to
which SHFL obtained a worldwide Last License to the Licensed
Patents within the Table Games Field of Use;
Whereas,
concurrently herewith, SHFL and PGIC are entering into a Purchase
Agreement (“Purchase Agreement”) pursuant to which PGIC
is selling its Table Game Business and the Purchased Assets to
SHFL; and
Whereas as a
condition to SHFL’s agreeing to purchase the Table Game
Business and the Purchased Assets, pay the Purchase Price therefor,
and execute the Purchase Agreement, SHFL and PGIC hereby amend and
restate the Previous License Agreement, as set forth herein in its
entirety.
Now, therefore,
based on the above foregoing Recitals and in consideration of the
mutual conditions, agreements and covenants hereinafter set forth
and other good and valuable consideration, and intending to be
legally bound hereby, the Parties agree as follows:
I.
DEFINITIONS
As used herein,
the following terms shall have the following meanings:
A. “Affiliate” of
any particular Party means any current or future Person
controlling, controlled by or under common control with such
Party. For purposes of this definition, “
control ” (including the terms “
controlling ,” “ controlled by ”
and “ under common control with ”) means the
possession, direct or indirect, of the power to direct or cause the
direction of the management and policies of a Person, whether
through the ownership of voting securities, by contract or
otherwise, and such “control” will be presumed if any
Person owns 50% or more of the voting capital stock, assets, or
other ownership interests, directly or indirectly, of any other
Person.
B. “Change in
Control” shall mean the occurrence of any of the following:
(i) a Party sells, assigns or transfer 50% or more of its
assets to any other Person that is not, as of the Effective Date,
an Affiliate of such Party; (ii) the acquisition of 50% or
more of the voting stock of a Party by any Person; or
(iii) the merger of a Party with or into any Person that is
not, as of the Effective Date, an Affiliate of such Party; or
(iv) the dissolution of a Party and the assumption of its
business by any Person that is not, as of the Effective Date, an
Affiliate of such Party.
C. “Last License”
shall mean (i) an exclusive and sole license in the Table Games
Field of Use of all of PGIC’s remaining rights in and to the
Licensed Patents, subject to any previously granted licenses; (ii)
the right to receive all of payments, royalties and other
beneficial interests under any such previously granted licenses
with respect to such licenses in the Table Games Field of Use; and
(iii) the right to direct PGIC, for the sole benefit of SHFL, to
exercise any rights or remedies it may have under any such
previously granted licenses in the Table Games Field of Use
(including to seek redress for breach of such licenses and to
declare such licenses terminated and reverted to SHFL in the event
of material breach thereof).
D. “Licensed
Patents” shall mean each Patent owned by, licensed to (with
the right to grant sublicenses), or controlled by PGIC, which
Patent is in existence as of the Effective Date, including any
Patent hereafter filed that claims an invention that was conceived
and being reduced to practice on or prior to the Effective Date,
except for any Patent that is included in the Purchased Table Games
Intellectual Property, as defined in the Purchase Agreement.
Without limiting the foregoing, the term Licensed Patents
specifically includes the Patents listed on Exhibits A, B, C, D,
and E attached hereto. Licensed Patents shall not include i)
any rights to any valid RFID patents or technology owned by PGIC,
unless otherwise expressly granted in any separate, written
agreement between the Parties (e.g., the so-called, 3-Party
Agreement for Smart Table Products); or ii) any rights to U.S.
Patent numbers 6,811,488 and 6,508,710; except as any of same may
cover or have any claims in the Table Games Field of
Use.
E. “Licensed
Product” shall mean any past, current or future games sold,
leased, used, made, exploited, distributed or offered by SHFL,
whether now or in the future.
F. “PGIC”
shall mean Progressive Gaming International Corporation and its
present and future Affiliates and Subsidiaries, including without
limitation, any acquirer of PGIC or PGIC’s
business.
G. “Parties”
shall mean PGIC and SHFL.
H. “Patent” shall
mean, individually and collectively, all patents issued or assigned
to, and all patent applications (whether issued or applied for in
the United States or any other country or any political subdivision
thereof), together with any and all (i) rights and privileges
arising under applicable law with respect to use of any patents,
(ii) inventions and improvements described and claimed therein,
(iii) reissues, reexaminations, divisionals, continuations,
renewals, extensions and continuations-in-part thereof and
amendments thereto, (iv) income, fees, royalties, damages, claims
and payments now or hereafter due and/or payable thereunder and
with respect thereto including damages and payments for past,
present or future
infringements thereof,
(v) rights corresponding thereto throughout the world, and (vi)
rights to sue for past, present or future infringements
thereof.
I.
“Person” means any individual, sole proprietorship,
partnership, joint venture, trust, unincorporated association,
corporation, limited liability company, entity or governmental
entity (whether federal, state, county, city or otherwise and
including any instrumentality, division, agency or department
thereof).
J. “SHFL”
shall mean Shuffle Master Inc. and its present and future
Affiliates and Subsidiaries, including without limitation, any
acquirer of SHFL or SHFL’s business.
K. [Intentionally
Omitted]
L. “Table Games
Field of Use” shall mean any game (live or otherwise and in
any format) and/or electronic methods of playing or simulating any
game, as well as pay tables and methods of play (whether
proprietary or in the public domain) for any game, and shall
include without limitation:
1. Point-to-point
communications devices such as cellular phones and other
communications devices that use telephone, wide area network, or
cellular phone communications technology and includes
communications devices that may communicate using any version of
IEEE 802.11 based local area network protocols.
2. Mobile gaming as
identified in A.B. 471 (Nevada 2005) and similar legislation as may
be adopted from time to time in other jurisdictions, including,
without limitation, gambling and wagering on casino-style games
through mobile devices that are capable of being
portable.
3. Table games which
use Radio Frequency identification (“RFID”) in gaming
chips or tokens.
4. The right to place
or use a side bet ( either fixed or variable) in: a) a fixed
amount jackpot of any amount; b) a odds payout in any amount;
or c) all or a portion of a progressive pay-out amount,
including without limitation, on: w) a live table game, either with
or without electronic monitoring devices; x) video gaming platforms
using either single or continual play; y) wireless gaming devices;
or z) “practice-play” devices (i.e., a device that
offers play for fun gaming without actual wagering).
5. Table Games Field of
Use shall not include: any rights to any valid RFID patents or
technology owned by PGIC, unless otherwise expressly granted in any
separate, written agreement between the Parties (e.g. the
so-called, 3-Party Agreement for Smart-Table Products), and except
to the extent, if any, that any such RFID patents includes a Table
Games Field of Use application.
M. Any other capitalized terms not
expressly defined anywhere in this Agreement shall have the same
meaning as in the Purchase Agreement.
II.
LICENSE GRANT
A. Effective upon the
Effective Date, PGIC grants to SHFL, limited to the Table Games
Field of Use, a perpetual, non-cancelable, non-terminable,
non-rescindable, fully paid-up, royalty-free, fully transferable,
fully assignable and/or fully sub-licensable, worldwide, exclusive
and sole (including to the exclusion of PGIC except only that PGIC
may practice any Licensed Patent, only to the extent and subject to
the limitations set forth in the Purchase Agreement, as necessary
to sell a System) Last License, free and clear and not subject to
any Liens, to develop, make, have made, use, sell, distribute,
offer for sale, lease, import, export, or otherwise dispose of
Licensed Products that practice any Licensed Patent. This
license grant shall continue through and until the expiration of
all Patents in the Licensed Patents.
B. Limited to the use of the
Licensed Products within the Table Games Field of Use, PGIC for
itself and its successors and assigns hereby releases, acquits and
discharges SHFL, its officers, directors employees, agents and
representatives and all purchasers and users of Licensed Products
acquired from SHFL and their respective successors, assigns and
acquirers from any and all claims, demands, and rights of action
which PGIC may have for infringement of the Licensed
Patents.
C. Subject to SHFL’s
rights herein, nothing in this Agreement shall be interpreted as
constituting an assignment of the ownership of any of the Licensed
Patents from PGIC to SHFL.
D. PGIC shall not abandon any
Licensed Patents without first notifying SHFL in writing at least
thirty (30) days in advance that PGIC has a bona-fide intent to
abandon a Licensed Patent. Abandonment shall include failure
to maintain an issued Licensed Patent and failure to continue
prosecution of a pending Licensed Patent until issuance
thereof. In the event that PGIC elects to abandon any
Licensed Patent or notifies SHFL that is has an intent to abandon
any Licensed Patent, SHFL shall have the right to purchase such
Licensed Patent for $1, and PGIC hereby transfers all right, title
and interest in said proposed abandoned Licensed Patent to SHFL in
a timely manner so as to enable SHFL to avoid such
abandonment.
E. As of the Effective
Date, PGIC agrees and covenants that, until the expiration of all
Patents in the Licensed Patents, PGIC shall cease to exercise any
rights in the Table Games Field of Use under the Licensed Patents
or commercially exploit any of the Licensed Patents within the
Table Games Field of Use, except as may be directed, in writing, or
permitted, in writing, by SHFL. The restrictions and
limitations contained herein are separate from and shall in no way
reduce or modify or be reduced or modified by any non-competition
obligations of either PGIC or any Acquirer, as set forth in the
Purchase Agreement.
III.
SUBLICENSING
A. In addition to
SHFL’s other sublicensing rights as set forth in this
Agreement, and notwithstanding anything to the contrary
herein, and within the Table Games Field of Use, SHFL shall have
the right to (i) procure manufacturing from third party
contractors; (ii) distribute Licensed Products developed by or made
by SHFL through third parties that adapt the Licensed Products to
system requirements (e.g., Class II gaming); and (iii) distribute
Licensed Products developed by or made by SHFL under third party
brand names (e.g., private labeling). For the sake of clarity,
nothing in the foregoing or this Agreement shall be deemed an
exception to the exclusivity provisions of the Technology
Agreement.
IV.
ROYALTY PAYMENT
PGIC agrees and
acknowledges that SHFL has made all royalty and other payments of
any kind to PGIC in order for SHFL to be granted this
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