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 Last
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