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AMENDED AND RESTATED LICENSE AGREEMENT

License Agreement

AMENDED AND RESTATED LICENSE AGREEMENT | Document Parties: SHUFFLE MASTER INC | Progressive Gaming International Corporation You are currently viewing:
This License Agreement involves

SHUFFLE MASTER INC | Progressive Gaming International Corporation

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Title: AMENDED AND RESTATED LICENSE AGREEMENT
Date: 9/28/2007
Industry: Casinos and Gaming     Sector: Services

AMENDED AND RESTATED LICENSE AGREEMENT, Parties: shuffle master inc , progressive gaming international corporation
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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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