Exhibit 99.4
***CERTAIN CONFIDENTIAL INFORMATION
CONTAINED IN THIS DOCUMENT (INDICATED BY ASTERISKS) HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER
17 C.F.R. SECTIONS 200.80(b)(4) AND 240.24b-2.
NON-EXCLUSIVE PATENT LICENSE
Effective on the date of last signature hereto,
MIKOHN GAMING CORPORATION, a Nevada corporation doing business as
Progressive Gaming International Corporation, its Affiliates and
each of its wholly owned subsidiaries, (“PGIC”) with a
primary business address of 920 Pilot Road, Las Vegas, Nevada
89119, SHUFFLE MASTER, INC., a Minnesota corporation, its
affiliates and each of its wholly owned subsidiaries
(“SMI”) located at 1106 Palms Airport Drive, Las Vegas,
Nevada 89119-3730 and IGT, its affiliates and each of its wholly
owned subsidiaries, (“IGT”) located at 9295 Prototype
Drive, Reno, Nevada 89510 (“IGT”), agree as
follows:
ARTICLE I
BACKGROUND
1.01 IGT and SMI (jointly,
“LICENSORS”) are co-owners of United States patent
number 5,735,742 and United States patent number
5,651,548.
1.02 SMI, as successor in interest to Enpat,
Inc. (“ENPAT”), has granted an exclusive field of use
license under the patents to Bourgogne et Grasset
(“Bourgogne”) for CHIPS and READERS, specifically
excluding any rights to GAMING TABLES, pursuant to that certain
Patent License Agreement, as amended, dated October 25, 2001,
between ENPAT and Bourgogne (the “GPI LICENSE
AGREEMENT”).
1.03 SMI, as successor in interest to Enpat,
Inc. (“ENPAT”), has granted a non-exclusive field of
use license under the patents to PGIC for GAMING TABLES, pursuant
to that certain Non-Exclusive Gaming Table License, effective March
11, 2002, between ENPAT and PGIC (the “GAMING TABLE LICENSE
AGREEMENT”).
1.04 IGT, SMI and PGIC are parties to that
certain Sales, Marketing, Distribution And Product Integration
Agreement, effective June 6, 2005, which contemplates using
complementary capabilities, technologies, and resources of the
three parties (the “THREE-PARTY AGREEMENT”).
1.05 PGIC wishes to acquire certain additional,
non-exclusive rights under United States patent number 5,735,742
and United States patent number 5,651,548.
1.06 IGT and SMI are willing to grant said
rights to PGIC and its Affiliates subject to the following terms
and conditions.
ARTICLE II
DEFINITIONS
2.00 Terms in this Agreement have the meanings
established for such terms in the succeeding Sections of this
Article. Terms defined in the singular include the plural
usage.
2.01 “Affiliate” as used herein in
connection with PGIC, means any entity in which PGIC now or
hereafter, and for so long as, has a direct or indirect ownership
interest exceeding fifty percent (50%), or which PGIC controls,
including entities which now or hereafter have such ownership or
control of PGIC. Included are entities which control, are
controlled by, or are under common control with PGIC. The term
“control” means possession of the powers to direct or
cause the direction of the management or policies of an entity,
whether through ownership of equity participation, voting
securities or beneficial interests, by contract, by agreement, or
otherwise.
2.02 CHIPS shall have the meaning established in
the GPI LICENSE AGREEMENT.
2.03 READER shall have the meaning established
in the GPI LICENSE AGREEMENT.
2.04 GAMING TABLE shall have the meaning
established in the GAMING TABLE LICENSE AGREEMENT.
2.05 PGIC SCOPE OF PRODUCT shall have the
meaning established in the THREE-PARTY AGREEMENT.
2.06 EXCLUDED PRODUCTS means CHIPS and
READERS.
2.07 PREVIOUSLY LICENSED PRODUCTS means GAMING
TABLES.
2.08 RECURRING FEES means regular fees charged
by PGIC to purchasers of GAMING TABLES including, without
limitation, fees charged for ongoing technical support, or license
fees.
2.09 LICENSED PATENTS means all rights owned or
held by LICENSORS under United States patent number 5,735,742 for
Gaming Table Tracking System and Method , issued 4/7/96, and
United States patent number 5,651,548 for Gaming Chips with
Electronic Circuits Scanned by Antennas in Gaming Chips Placement
Areas for Tracking the Movement of Gaming Chips within a Casino
Apparatus and Method , issued 7/29/97, (“ Reference
Patents” ) together with, (a) any and all reissues,
reexaminations, continuations, continuations-in-part, divisionals,
and foreign counterparts thereof (“ Derived
Patents ”); (b) any patents which issue from or claim
a priority date to the Reference Patents or the Derived Patents
(“ Daughter Patents ”); (c) any and all
patents, patent applications or provisional applications from which
the Reference Patents, the Derived Patents or the Daughter Patents
claim priority directly or through another patent or patent
applications (“ Grandparent/Parent Patents or
Applications ”); (d) any and all reissues,
reexaminations, continuations, continuations-in-part, divisionals,
and foreign counterparts of the Grandparent/Parent Patents or
Applications; (e) any patents which issue from or claim a priority
date to the Grandparent/Parent Patents or Applications (“
Sister Patents or Applications ”); (f) any and
all reissues, reexaminations, continuations, continuations-in-part,
divisionals, and foreign counterparts of the Sister Patents or
Applications; and (g) any patents which issue from or claim a
priority to the Sister Patents or Applications.
2.10 LICENSED PRODUCTS means products, processes
and methods in the PGIC SCOPE OF PRODUCT but specifically excludes
the EXCLUDED PRODUCTS and the PREVIOUSLY LICENSED
PRODUCTS.
2.11 NET SALES PRICE means PGIC’s invoice
price, F.O.B. factory, after deduction of regular trade and
quantity discounts, but before deduction of any other item
including, but not limited to, freight allowances, cash discounts,
and agents’ commissions.
2.12 THREE PARTY AGREEMENT means that certain
Product Development and Integration Agreement, effective as of
June13, 2005, by and among PGIC, SMI and IGT.
ARTICLE III
NON-EXCLUSIVE LICENSE GRANT
3.00 LICENSORS, warranting that they have the
right to do so, and subject to the applicable terms of the THREE
PARTY AGREEMENT and the GPI LICENSE AGREEMENT, grant PGIC under the
LICENSED PATENTS, for the Term (as defined below), a non-exclusive
license to make, have made, use, import, export, offer to sell,
sell and have sold LICENSED PRODUCTS throughout the world, together
with the right to extend to purchasers the non-exclusive right to
use LICENSED PRODUCTS. Any termination of this license does not
affect any products already under lease or sale to a customer,
which products shall remain licensed until removed.
ARTICLE IV
REPORTS AND PAYMENTS
In consideration of the rights and immunities
granted hereunder, PGIC agrees to pay to LICENSORS as
follows:
4.01 PGIC will pay LICENSORS [...***...]
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