Patent Assignment dated January 24, 2024

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EX-10.3 5 ea192454ex10-3_aditxtinc.htm PATENT ASSIGNMENT DATED JANUARY 24, 2024

Exhibit 10.3

 

PATENT ASSIGNMENT

 

This Patent Assignment (“Assignment”), effective as of January 24, 2024 (“Effective Date”), is by and between Philip J. Von Kahle, as assignee for the benefit of creditors of (a) Brain Scientific Inc., a Nevada corporation (“Brain”); (b) Brainscientific Inc., a Nevada corporation (f/k/a Memory MD Inc.) (“Brainscientific”); (c) Piezo Motion Corp., a Delaware corporation (“Piezo”); and (d) Discovery Technology International, Inc. (“Discovery” or “Assignor”), and Aditxt, Inc., a Delaware corporation, located at 737 N. Fifth Street, Suite 200, Richmond, VA 23219 (“Assignee”).

 

WHEREAS, Assignor is the assignee under Assignments for the Benefit of Creditors pursuant to Chapter 727, Florida Statutes, between Brain, Brainscientific, Piezo and Assignor, each dated June 6, 2023.

 

WHEREAS, on June 15, 2023 Assignor filed Petitions for Assignment for the Benefit of Creditors for (a) Brain, (b) Brainscientific, (c) Piezo, and (d) Discovery, in the Circuit Court for the Twelfth Judicial Circuit, in and for Sarasota County, Florida, and such cases are being jointly administered under Lead Case No. 2023-CA-005049NC (the “Lead Case”).

 

WHEREAS, on October 31, 2023 Assignor and Bigger Capital Fund, L.P. in its individual capacity and as agent (“Buyer”) entered into that certain Asset Purchase and Settlement Agreement (defined below) which includes the sale of Assignee’s interests, whatever such interest may be, in the patents and patent applications specified in Schedule 1 attached hereto (collectively the “Patents”).

 

WHEREAS, on October 31, 2023 Assignor filed a Motion to Approve Sale of Substantially All Assets in the Lead Case, seeking approval of the Asset Purchase and Settlement Agreement.

 

WHEREAS, pursuant to the Order Granting Assignee’s Motion to Approve Sale of Assets entered on December 12, 2023 (the “Order”) entered in Case No. 2023-CA-005049NC in the Circuit Court of the Twelfth Judicial Circuit in and for Sarasota County, Florida (the “Court”), the Court approved the Assignment in accordance with the terms and conditions of the Asset Purchase and Settlement Agreement;

 

WHEREAS, Assignor in its capacity as Seller and Assignee in its capacity as Buyer are parties to that certain Asset Purchase and Settlement Agreement dated October 31, 2023 (Assignee having assumed the rights and obligations of the Buyer thereunder pursuant to that certain Assignment and Assumption Agreement dated January 24, 2024 by and between Bigger Capital Fund, LP and Assignee) (the “Asset Purchase and Settlement Agreement”), pursuant to which, the Assignor has agreed to assign to Assignee, all of Assignor’s rights in and to such Patents, to the extent such rights exist, subject to the terms and conditions set forth therein (the “Assignment”);

 

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NOW, THEREFORE, in consideration of the premises and mutual covenants and agreements set forth hereinafter and in the Asset Purchase and Settlement Agreement, the sufficiency of which is acknowledged, the Assignee and the Assignors, intending to be legally bound, hereby agree as follows:

 

1. Assignment. Assignor hereby irrevocably grant, sell, convey, transfer, assign, deliver and relinquish exclusively to the Assignee, in perpetuity, all of Assignor’s respective worldwide right, title, and interest in and to all of (a) the Patents and all patents which may be granted thereon, the inventions described therein, and any and all U.S. and foreign patent applications and patents that describe said inventions, and all divisions, renewals, extensions, reexamiations, reissues, continuations and continuations-in-part thereof; and (b) all applications for industrial property protection, including, without limitation, all applications for patents, utility models, and designs which may have been filed or may hereafter be filed for the invention in any country or countries foreign to the United States, together with (i) the right to sue for and obtain remedies against past infringement and rights of priority and protection of interest in patents and patent applications set forth in subitems (a) and (b), (ii) the right to file and obtain any continuations, continuations-in-part, reissues, patent term extensions (and foreign equivalents thereof, including, without limitation, supplementary protection certificates), divisionals, reexaminations and reissues of the patents and patent applications set forth in subitems (a) and (b), as applicable, (iii) the right to apply, prosecute and obtain patent or similar protection for any invention embodied by any of the applications comprised in the patents and patent applications set forth in subitems (a) and (b), including the right to claim priority from such applications and (iv) all forms of industrial property protection, including, without limitation, patents, utility models, inventors’ certificates and designs which may be granted for said invention in any country or countries foreign to the United States and all extensions, renewals, reissues, reexaminations, divisionals, continuations and continuations-in-part thereof.

 

2. Recordation and registration of assignment. In order to record this Assignment with the United States Patent and Trademark Office (the “PTO”) and to record or register it with all of the other registries at which the Patents are or are intended to be registered (the “Patent Offices”), the parties hereto shall execute this Assignment and any other document that may be required by the Patent Offices (together the “Recordation Forms”) in order to record or register the assignment effected hereby, provided however, that Assignee shall prepare such Recordation Forms, at Assignee’s expense. The executed Assignment and any Recordation Forms shall be filed by Assignee, at Assignee’s expense, with the Patent Offices, together with any schedules and exhibits thereto.

 

3. Successors and Assigns. This Assignment shall bind the Assignor and its successors and assigns and inure to the benefit of Assignee and its successors and assigns.

 

This Patent Assignment is executed and delivered effective as of the date set forth above.

 

PHILIP J. VON KAHLE, as Assignee for the Benefit of Creditors of(a) Brain Scientific Inc.; (b) Brainscientific Inc., (f/k/a Memory MD Inc.); (c) Piezo Motion Corp.; and (d) Discovery Technology International, Inc

 

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By: /s/ Philip J. von Kahle  
Name: Philip J. von Kahle  
Title: Assignee for benefit of Creditors  
   
ADITXT, INC.  
   
By: /s/ Amro Albanna  
Name: Amro Albanna  
Title: Chief Executive Officer  

 

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Schedule 1

Patents and Patent Applications

 

Patent Holder  Title  App. No.  App. Date  Patent No.   Issue Date  Status
Brain Scientific Inc.  Integrated Brain Machine
Interface Platform with Graphene Based Electrodes
  17/410,255  August 24, 2021   N/A   N/A  Published
BrainScientific Inc., f/k/a Memory MD, Inc.  Apparatus and Method for Conducting Electroencephalography  15/898,611  February 18, 2018   11,213,250   January 4, 2022  Issued
Piezo Motion Corp.  Tubular Linear Piezoelectric Motor  13/094,478  April 26, 2011   8183743   May 22, 2012  Issued
Piezo Motion Corp.  Piezoelectric Quasi- Resonance Linear Motors based on Acoustic Standing Waves With Combined Resonator  12/642,329  December 18, 2009   8299684   October 30, 2012  Issued
Piezo Motion Corp.  Piezoelectric Quasi- Resonance Linear Motors based on Acoustic Standing Waves with Combined Resonator  13/663,917  October 30, 2012   8710719   April 29, 2014  Issued
Piezo Motion Corp.  Piezoelectric Motor  12/639,172  December 16, 2009   8183744   May 22, 2012  Issued
Piezo Motion Corp.  Rotational and Translational Microposition Apparatus and Method  11/424,133  June 14, 2006   7395607   July 8, 2008  Issued
Piezo Motion Corp.  Piezoelectric Motor with Torque  12/639,232  December 16, 2009   8183740   May 22, 2012  Issued
Piezo Motion Corp.  Valves based on Piezoelectric Rotary Motor  12/701,704  February 8, 2010   8183741   May 22,  2012  Issued
Piezo Motion Corp.  Piezoelectric Generator of Mechanical Vibrations, and Piezoelectric Motors based on the Generator  12/463,524  May 11, 2009   7876022   January 25, 2011  Issued
Piezo Motion Corp.  Piezoelectric Rotary Motor with High Rotation Speed and Bi-Directional Operation  12/873,688  September 1, 2010   8183742   May 22, 2012  Issued
Piezo Motion Corp.  Non-Magnetic High-Speed Piezoelectric Rotary Motor  13/778,330  February 27, 2013   9136778   September 15, 2015  Issued
Piezo Motion Corp.  Piezoelectric Linear Motor  13/934,373  July 3, 2013   9705425   July 11, 2017  Issued
Piezo Motion Corp.  Piezoelectric Valve based on Linear Actuator  14/193,122  February 28, 2014   8979065   March 17, 2015  Issued
Piezo Motion Corp.  Piezoelectric Motor with Efficient Transfer of Energy  13/848,525  March 21, 2013   9197141   November 24, 2015  Issued
Piezo Motion Corp.  Precision Purge Valve System with Presure Assistance  14/194,104  February 28, 2014   9388774   July 12, 2016  Issued
Piezo Motion Corp.  Linear Piezoelectric Actuator on Rail System  15/190,764  March 2, 2018   10819251   October 27, 2020  Issued

 

 

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