[Portions
herein identified by [***] have been omitted pursuant to a request
for confidential treatment and have been filed separately with the
Commission pursuant to Rule 406 of the Securities Act of
1933.]
Amendment No. 1
to
the
Patent and Technology License and Technology Transfer
Agreement
This Amendment No. 1
(“Amendment”) is by and between IGT, a Nevada
corporation with principal offices at 9295 Prototype Drive, Reno,
Nevada, 89521 (“IGT”) and PureDepth Inc., a Delaware
corporation with principal offices at 230 Twin Dolphin Drive,
Suite D, Redwood City, California, 94065 (together with its
subsidiaries PureDepth Limited and PureDepth Incorporated Limited,
collectively “PureDepth”) and amends the Patent and
Technology License and Technology Transfer Agreement (the
“Agreement”) between IGT and PureDepth. The
effective date of this Amendment is the date on which the prepaid
royalty of $10,000,000 described in item 9 below (referencing
Section 4.01) is delivered by IGT to PureDepth.
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Section 1.06 (Field of Use) is hereby
amended by adding the following sentence after the last existing
sentence:
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“Notwithstanding the foregoing, the Field
of Use in Japan specifically excludes Pachinko and Pashislot and
related Administrative Machines for Pachinko and
Pashislot.”
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Section 1.16 (Territory) is hereby deleted
in full and replaced with the following:
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“’Territory’ means worldwide,
however with respect to Japan, the Field of Use is limited as
described in Section 1.06 (Field of Use).”
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Section 2.01 (Term) is hereby amended by
adding the following sentence after the existing
sentence:
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“Thereafter, this Agreement shall
automatically be extended for an additional ten (10) year period
(the “Second Term”).”
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Section 2.04 (Option for Renewal) is hereby
amended by replacing the “Initial Term” with
“Second Term” and concluding with the following new
sentences:
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“To be
clear, [***] prior to the end of the Second Term, the Parties agree
to discuss a further extension of the Agreement (Third Term) and
negotiate in good faith the conditions of such Third Term, if any,
taking into account market conditions. If the parties
are not able to agree upon the terms of a further extension prior
to the end of the Second Term, this Agreement will terminate upon
expiration of the Second Term in accordance with its
terms.
However if
[***] PureDepth will not [***] except as otherwise provided for in
this Section 2.04.
If at any time
within [***] PureDepth proposes to [***] then PureDepth shall
[***]
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Section 3.01 (Grant) is hereby amended by
adding the phrase “and IGT’s Affiliates” after
“IGT” in the first and second sentences, and by adding
the following new sentences below the existing two
sentences:
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“The
parties agree that upon [***] PureDepth and IGT will negotiate in
good faith to [***].
For avoidance
of doubt, PureDepth shall have no rights under the Licensed
Intellectual Property, within the Territory and within the Field of
Use, while the exclusive license to IGT under this section 3.01
remains in effect, to make, have made, use, market, distribute,
Sell, offer to Sell, license, import, or export Gaming Machines to
any person and in any manner.
Nothing in this
paragraph shall affect PureDepth’s rights to make, have made,
use, market, distribute , sell, offer to sell, license, import, or
export [***]
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Section 3.02
(Right to Sublicense) is hereby amended by adding the phrase
“and IGT’s Affiliates” after the first occurrence
of “IGT” in the first sentence of the first
paragraph.
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Section 3.02
(Right to Sublicense) is hereby amended by replacing all text after
“pay over to PureDepth” in the first sentence of the
third paragraph with the following new text:
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“a Fixed
Fee as set forth in Section 4.05.”
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Section 4.01 (Prepaid Royalty) is hereby
amended by inserting the number “$3,750,000” inside of
the parentheses and in front of the phrase “Prepaid
Royalty” at the end of the existing first
sentence.
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Section 4.01 (Prepaid Royalty) is hereby
amended by inserting the following two sentences after the end of
the existing first sentence:
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“On or
before September 16, 2008, IGT will deliver a nonrefundable
([***]) prepaid royalty of ten million dollars ($10,000,000) to
PureDepth (‘$10,000,000 Prepaid
Royalty’). The $3,750,000 Prepaid Royalty and the
$10,000,000 Prepaid Royalty will collectively be referred to as the
‘Prepaid Royalty.’”
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Section 4.02 (Royalty Schedule) is hereby
amended by inserting the phrase “During the Initial
Term,” at the front of the existing first
sentence.
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Section 4.02 (Royalty Schedule) is hereby
amended by inserting the words “, an Affiliate of IGT”
before the text “or any sublicensee” in the existing
first sentence.
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Section 4.02 (Royalty Schedule) is hereby
amended by adding the following new paragraph below the last
sentence of the existing text of the first paragraph in
Section 4.02 (Royalty Schedule):
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“During
the Second Term and only after the $3,750,000 Prepaid Royalty is
exhausted as applied to royalties due under Section 4.02, the
royalty structure described in this Section 4.02 (Royalty
Schedule) will still be applicable but the royalty rate will
increase from [***] as follows:
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Section 4.03 (Payments and Reporting)
subsection (a) is hereby amended by adding the phrase “and
the $10,000,000 Prepaid Royalty” after the phrase
“$3,750,000 Prepaid Royalty.”
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Section 4.03 (Payments and Reporting)
subsection (b) is amended by adding the phrase “and all fees
received by IGT from sublicenses as set forth in Section
4.05” after the phrase “Sales of Licensed
Product.”
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Section 4.03 (Payments and Reporting)
subsection (c) is amended by adding the phrase “and all fees
received by IGT from sublicenses as set forth in Section
4.05” after the phrase “Sales of Licensed Products (and
all Wagering Stations).”
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Section 4.03 (Payments and Reporting)
subsection (d) is amended by adding the phrase “and Fixed
Fees” after the word “royalties” in each of the
two places where such term is use
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