Patent Assignment Agreement between Aerovox Incorporated and Parallax Power Components, LLC (July 26, 2002)

Summary

Aerovox Incorporated, as debtor-in-possession under Chapter 11 bankruptcy, assigns all rights, title, and interest in certain U.S. and foreign patents and patent applications to Parallax Power Components, LLC. The transfer is part of a court-approved asset sale and includes all related rights, claims, and future benefits. Aerovox agrees to assist Parallax with any necessary documentation or actions to perfect the assignment. The agreement ensures the patents are transferred free of liens, and both parties' successors and assigns are bound by its terms.

EX-2.12 14 dex212.txt PATENT ASSIGNMENT Exhibit 2.12 PATENT ASSIGNMENT This PATENT ASSIGNMENT ("Assignment") is made and entered into as of this 26th day of July, 2002 ("Effective Date"), by and between and Aerovox Incorporated, a Delaware corporation, with a principal office at 167 John Vertente Blvd, New Bedford, MA ###-###-####, as debtor-in-possession ("Assignor"), and Parallax Power Components, a Delaware limited liability company, with a principal office at 122 East 42/nd/ Street, Suite 1115, New York, NY 10168 ("Assignee"). WHEREAS, Assignor is operating as a debtor-in-possession under Chapter 11 of the United States Bankruptcy Code, as amended, in Case No. 01-14680-JNF pending in the United States Bankruptcy Court for the District of Massachusetts (the "Bankruptcy Court"); WHEREAS, pursuant to an Amended and Restated Asset Purchase Agreement dated as of April 18, 2002 ("Asset Purchase Agreement"), Assignor, as debtor-in-possession, is transferring certain of its assets (the "Acquired Assets," as defined in the Asset Purchase Agreement) to Assignee; WHEREAS, the Acquired Assets, including those United States and foreign patents and patent applications identified and set forth on Schedule A (the "Patents"), will be sold pursuant to the terms of various orders of the Bankruptcy Court approving and authorizing such sale under Section 363 of the Bankruptcy Code; and WHEREAS, Assignee wishes to acquire and Assignor wishes to assign all right, title and interest in and to the Patents; NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Assignor does hereby sell, assign, transfer and set over to Assignee, the entire right, title and interest in and to the Patents, for the United States and for all foreign countries, including any continuations, divisions, continuations-in-part, reissues, reexaminations, extensions or foreign equivalents thereof, and including the subject matter of all claims which may be obtained therefrom for its own use and enjoyment, and for the use and enjoyment of its successors, assigns or other legal representatives, as fully and entirely as the same would have been held and enjoyed by Assignor if this Assignment and sale had not been made; together with all income, royalties, damages or payments due or payable as of the Effective Date or thereafter (to the extent such matters are not Excluded Assets as defined in the Asset Purchase Agreement), including, without limitation, all claims for damages by reason of past, present or future infringement or other unauthorized use of the Patents, with the right to sue for, and collect the same -124- for its own use and enjoyment, and for the use and enjoyment of its successors, assigns, or other legal representatives. Assignor authorizes and requests the Commissioner of Patents and Trademarks to record Assignee as owner of the Patents, including any continuations, divisions, continuations-in-part, reissues, reexaminations or extensions thereof, and to issue any and all letters patent of the United States thereon to Assignee, as assignee of the entire right, title and interest in, to and under the same, for the sole use and enjoyment of Assignee, its successors, assigns or other legal representatives. Assignor is transferring its right, title and interest in and to the Patents set forth on Schedule A free and clear of any liens and encumbrances as set forth in the Sale Approval Order (as defined in the Asset Purchase Agreement), that pursuant to the Sale Approval Order it has full right to assign all of its interests therein, and that it has not executed and will not execute any agreement or other instrument in conflict herewith. Assignor shall provide Assignee, its successors, assigns or other legal representatives, cooperation and assistance at Assignee's request and expense (including the execution and delivery of any and all affidavits, declarations, oaths, exhibits, assignments, powers of attorney or other documentation as may be reasonably required): (1) in the preparation and prosecution of any of the patent applications assigned herein; and (2) in the implementation or perfection of this Assignment. Assignor hereby authorizes and empowers Assignee to invoke and claim for any applications or letters patent included within the Patents the benefit of any rights to which Assignor might be entitled under international law or under the laws of any particular country (such as, without limitation, the right of priority provided by the International Convention for the Protection of Industrial Property, as amended) and to invoke and claim said rights without further written or oral authorization from Assignor. Assignor hereby consents that a copy of this Assignment shall be deemed a full legal and formal equivalent of any assignment, consent to file, or like document that may be required in any particular country for any purpose and more particularly in proof of the right of Assignee to claim the aforesaid benefit of the right of priority provided by the International Convention for the Protection of Industrial Property, as amended. Assignor covenants and agrees that this Assignment and all of the terms hereof shall inure to the benefit of the successors, assigns, legal representatives, or nominees of Assignee, without further written or oral authorization -125- from Assignor, and that this Assignment and all of the terms hereof are binding on Assignor's successors, assigns, legal representatives or nominees. * * * * * * IN TESTIMONY WHEREOF, the Assignor and Assignee have caused this Assignment to be signed and executed by their undersigned duly authorized officers. [SIGNATURE ON FOLLOWING PAGE] -126- Aerovox Incorporated Parallax Power Components, LLC By: /s/ ROBERT D. ELLIOTT By: /s/ NATHAN J. MAZUREK --------------------- ----------------------- Name: Robert D. Elliott Name: Nathan J. Mazurek ------------------- ---------------------- Title: President & CEO Title: Authorized Person ------------------ --------------------- STATE OF ) COUNTY OF ) On this 26th day of July, 2002, there appeared before me___________________ , personally known to me, who acknowledged that he signed the foregoing Assignment as his voluntary act and deed on behalf and with full authority of Aerovox Incorporated. ________________________ Notary Public STATE OF ) COUNTY OF ) On this 26th day July, 2002 there appeared before me_______________________ , personally known to me, who acknowledged that he signed the foregoing Assignment as his voluntary act and deed on behalf and with full authority of Parallax Power Components, LLC. _________________________ Notary Public -127- SCHEDULE A U.S. Patent Applications: Serial No. Filing Date Title 09/562,422 5/1/00 Capacitor mounting 08/675,270 7/1/96 Capacitor for mounting to an electric motor U.S. Patents: Patent No. Issue Date Title 5,381,301 1/10/95 Leak-tight and rupture proof, ultrasonically-welded, polymer- encased electrical capacitor with pressure sensitive circuit interrupter 5,148,347 9/15/92 Polymer-encased electrical capacitor with pressure sensitive circuit interrupter 5,019,934 5/28/91 Capacitor circuit interruption 4,787,010 11/22/88 Impregnation and encapsulating material 4,656,558 4/7/87 Electrical capacitor 4,570,201 2/11/86 Capacitor 4,467,392 8/21/84 Capacitor resistor Foreign Patents and Patent Applications: Country No. Title China CN 1175319 Metallized film for electrical capacitors having a semiconductive layer Japan JP 11501455 Metallized film for electrical capacitors having a semiconductive layer Canada CA 1244898 Electrical capacitor -128- Canada CA 1202365 Voltage doubler circuit Canada CA 1198186 Capacitor resistor -129-