ASSIGNMENT OF PATENT RIGHTS

ASSIGNMENT OF PATENT RIGHTS

For good and valuable consideration, the receipt of which is hereby acknowledged, Crossroads Systems, Inc., a Delaware corporation, with a business address located at 11000 North Mo-Pac Expressway, Austin, TX 78759 (“Assignor”), effective as of July 22, 2013 (the “Effective Date”), Assignor, does hereby sell, assign, transfer, and convey unto KIP CR P1 LP (“Assignee”), all of Assignor’s right, title, and interest that exist today and may exist in the future in and to any and all of the following (collectively, the “Patent Rights”):

(a)          all of the patent applications and patents of Assignor, including, without limitation, the patent applications and patents listed in the table below, but excluding the ’972 Patents (as defined in that certain Credit Agreement between Assignor and Assignee dated as of the date hereof) (the “Patents”);

(b)          all patents and patent applications (i) to which any of the Patents directly or indirectly claims priority; or (ii) for which any of the Patents directly or indirectly forms a basis for priority;

(c)          all reissues, reexaminations, extensions, continuations, continuations in part, continuing prosecution applications, requests for continuing examinations, divisions, registrations of any item in any of the foregoing categories (a) and (b);

(d)          all foreign patents, patent applications, and counterparts relating to any item in any of the foregoing categories (a) through (c), including, without limitation, certificates of invention, utility models, industrial design protection, design patent protection, and other governmental grants or issuances;

(e)          all items in any of the foregoing in categories (b) through (d), whether or not expressly listed as Patents above and whether or not claims in any of the foregoing have been rejected, withdrawn, cancelled, or the like;

(f)           inventions, invention disclosures, and discoveries described in any of the Patents or any item in the foregoing categories (b) through (e) that (i) are included in any claim in the Patents or any item in the foregoing categories (b) through (e); (ii) are subject matter capable of being reduced to a patent claim in a reissue or reexamination proceeding brought on any of the Patents or any item in the foregoing categories (b) through (e); or (iii) could have been included as a claim in any of the Patents or any item in the foregoing categories (b) through (e), except to the extent any such inventions, invention disclosures, discoveries or items in the foregoing categories (b)-(e) described in this category (f) are, or are described or claimed in, any patent or patent application of Assignor that is not being assigned through this Agreement;

(g)          all rights to apply in any or all countries of the world for patents, certificates of invention, utility models, industrial design protections, design patent protections, or other governmental grants or issuances of any type related to any item in any of the foregoing categories (a) through (f), including, without limitation, under the Paris Convention for the Protection of Industrial Property, the International Patent Cooperation Treaty, or any other convention, treaty, agreement, or understanding;

(h)          all causes of action (whether known or unknown or whether currently pending, filed, or otherwise) and other enforcement rights under, or on account of, any of the Patents or any item in any of the foregoing categories (b) through (g), including, without limitation, all causes of action and other enforcement rights for (1) damages; (2) injunctive relief, and (3) any other remedies of any kind for past, current, and future infringement; and

(i)          all rights to collect royalties and other payments under or on account of any of the Patents or any item in any of the foregoing categories (b) through (h), excluding any and all license agreements of Assignor existing prior to the Effective Date.

Assignor hereby authorizes the respective patent office or governmental agency in each jurisdiction to issue any and all patents, certificates of invention, utility models or other governmental grants or issuances that may be granted upon any of the Patent Rights in the name of Assignee, as the assignee to the entire interest therein, subject to licenses to certain third parties.

Assignor represents and warrants to Assignee, except as set forth on the Schedule of Exceptions attached as Exhibit A, which exceptions shall be deemed to be part of the representations and warranties made hereunder, as follows:

(1)         Assignor is a company duly formed, validly existing, and in good standing under the laws of its formation jurisdiction. Assignor has the full power and authority to sell, assign, transfer and convey the Patent Rights to Assignee.

(2)         Assignor owns all right, title, and interest to the Patent Rights and the Patents are all of the currently existing patents and patent applications of Assignor, with the exception of US Patent Nos. 7,603,449, 7,904,539, and 8,341,211 and U.S. Patent Application Serial Nos. 13/042,209 and 13/685,539 (including any patents or applications claiming priority to the foregoing), each of which is jointly assigned to Assignor and Hewlett-Packard Company. Assignor has obtained and properly recorded previously executed assignments for the Patent Rights as necessary to fully perfect its rights and title therein in accordance with governing law and regulations in each respective jurisdiction. Except for the security interest granted by Assignor to Fortress Credit Co LLC, the Patent Rights are free and clear of all security interests or other encumbrances of any kind. There are no actions, suits, investigations, claims, or proceedings threatened, pending, or in progress relating in any way to the Patent Rights. To the Assignor's knowledge, based on reasonable due diligence and investigation conducted at the time of filing, all inventors named on the Patents are true and correct.

(3)         There is no obligation imposed by a standards-setting organization to license any of the Patents on particular terms or conditions. No licenses under the Patents have been granted to any other third party and Assignee will not be subject to any covenant not to sue or other restrictions on its enforcement or enjoyment of the Patent Rights.

(4)         Except as set forth in the Schedule of Exceptions, none of the Patents has ever been found invalid, unpatentable, or unenforceable for any reason in any proceeding and Assignor does not know of and has not received any notice or information of any kind suggesting that the Patents may be invalid, unpatentable, or unenforceable, other than official notices from patent offices in the course of patent prosecution. To the extent “small entity” fees were paid to the United States Patent and Trademark Office for any Patent, such reduced fees were then appropriate because the payor qualified to pay “small entity” fees at the time of such payment and specifically had not licensed rights in any of the Patents to an entity that was not a “small entity.” If any of the Patents are terminally disclaimed to another patent or patent application, all patents and patent applications subject to such terminal disclaimer are included in the Patents.

(5)         To Assignor’s knowledge none of Assignor, any prior owner, or their respective agents or representatives have engaged in any conduct, or omitted to perform any necessary act, the result of which would invalidate any of the Patents or hinder their enforcement. 

(6)         Assignor has not (a) put a third party on notice of actual or potential infringement of any of the Patents; (b) invited any third party to enter into a license under any of the Patents; or (c) initiated any enforcement action with respect to any of the Patents.

(7)         Except as may have been disclosed by Assignor to Assignee, none of the Patents has been or is currently involved in any reexamination, supplemental examination, reissue, interference proceeding, or any similar proceeding, and no such proceedings are pending or threatened.

(8)         All maintenance fees, annuities, and other amounts due or payable on the Patents have been timely paid.

Assignor will, at the reasonable request of Assignee, and provided Assignee bears the cost of doing so, do all things reasonably within its power and that are necessary, proper, or advisable, including without limitation, the execution, acknowledgment, and recordation of specific assignments, oaths, declarations, and other documents on a country-by-country basis, to assist Assignee in obtaining, perfecting, sustaining, or enforcing the Patent Rights.

The terms and conditions of this Assignment of Patent Rights will inure to the benefit of Assignee, its successors, assigns, and other legal representatives and will be binding upon Assignor, its successors, assigns, and other legal representatives.

This Assignment will be governed by and construed in accordance with the laws of the State of New York without regard to its rules of conflict of law, except Section 5-1401 of the New York General Obligations Law; provided, however, that the prosecution, perfection, issuance, maintenance, validity and enforceability of any Patent Rights arising under the laws of any other jurisdiction, and the interpretation and enforceability of any rights granted under such Patent Rights, will be governed by the laws of that jurisdiction without reference to choice of law principles to the contrary. Assignor hereby irrevocably submits to the nonexclusive jurisdiction of any New York State or Federal court sitting in the County of New York over any suit, action or proceeding arising out of or relating to this Assignment, and Assignor hereby agrees and consents that, in addition to any methods of service of process provided for under applicable law, all service of process in any such suit, action or proceeding in any New York State or Federal court sitting in the County of New York may be made by certified or registered mail, return receipt requested, or overnight mail with a reputable national carrier, directed to the Assignor at the address indicated above, and service so made shall be complete five (5) days after the same shall have been so mailed (one day in the case of an overnight mail service).

This Assignment represents the entire agreement about the subject matter of this Assignment and supersedes prior negotiations or agreements. All prior agreements, understandings, representations, warranties, and negotiations between the parties about the subject matter of this Assignment merge into this Assignment.

[Signature page follows.]

IN WITNESS WHEREOF this Assignment of Patent Rights is executed on July 22, 2013.

ASSIGNOR:

CROSSROADS SYSTEMS, INC.

(Signature MUST be attested.)

ATTESTATION OF SIGNATURE UNDER 28 U.S.C. § 1746

The undersigned witnessed the signature of _Richard K. Coleman, Jr._ to the above Assignment of Patent Rights on behalf of Crossroads Systems, Inc. and makes the following statements:

I declare under penalty of perjury under the laws of the United States of America that the statements made in the three (3) numbered Sections immediately above are true and correct.

EXECUTED on __July 22, 2013______(date)

__Tracy R. Coleman__________________

Print Name: __ Tracy R. Coleman_______

[Signature and Attestation Page to Crossroads Patent Assignment]

Exhibit A

Schedule of Exceptions

(2); (3) Right, Title and Interest; Licenses/Covenants. Each of the parties identified below has license rights and/or a covenant not to be sued under one or more of the Patents under the terms of the agreements identified below:

(i) Crossroads Systems, Inc. - Non-Exclusive License Agreement between Crossroads IP I, L.P. and Crossroads Systems, Inc. providing Crossroads Systems, Inc. a license under the Patents;

(ii) HP/3Par - Confidential Settlement and License Agreement between Crossroads Systems, Inc. and Hewlett-Packard and 3Par, Inc. dated October 17, 2011;

(iii) Brocade - Patent License Agreement between Crossroads Systems, Inc. and Brocade Communications Switzerland SarL dated June 4, 2006 and Patent License Agreement Amendment 1 dated October 26, 2007;

(iv) EMC - Development Agreement between Crossroads Systems, Inc. and EMC Corporation dated March 18, 2003;

(v) Hitachi - License Agreement between Crossroads Systems, Inc. and Hitachi, Ltd. dated September 15, 2003;

(vi) IBM - License Agreement between Crossroads Systems, Inc. and International Business Machines Corporation dated June 24, 2011;

(vii) Microsoft - Microsoft-Crossroads Patent Cross License Agreement between Crossroads Systems, Inc. and Microsoft Corporation dated October 28, 2010;

(viii) Overland - Settlement Agreement between Crossroads Systems, Inc. and Overland Storage, Inc. dated May 18, 2010;

(ix) QLogic - Settlement Agreement between Crossroads Systems, Inc. and QLogic Corporation dated March 26, 2010;

(x) Stonefly - Patent License Agreement between Crossroads Systems, Inc. and Stonefly Networks, Inc. dated February 20, 2004;

(xi) Symantec - Patent License Agreement between Crossroads Systems, Inc. and Symantec Corporation dated June 17, 2009; and

(xii) XIOtech - Patent License Agreement between Crossroads Systems, Inc. and XIOtech Corp. dated July 2003.

(3) Standards Setting Organizations. Crossroads is or has been a member of the following standards bodies: Storage Networking Industry Association (SNIA), International Committee for Information Technology Standards (INCITS), Internet Engineering Task Force (IETF) and National Committee for Information Technology Standards (NCITS), collectively referred to as “Crossroads Standards Organizations.” Each of the Crossroads Standards Organizations has, or has had, one or more policies over the years regarding intellectual property of its members and potential obligations, or lack thereof, regarding licensing of same.

[Exhibit A to Crossroads Patent Assignment]

(6) Notice/Invitations. To the Assignor's knowledge, based on reasonable due diligence and investigation, Crossroads has provided notice to third parties regarding actual/potential infringement and/or provided an invitation to license certain of the Patents as outlined below:

(i) Crossroads, through its general counsel Patricia Prince, may invited third parties prior to 2002 to license one or more of the Patents that issued prior to 2003.

(ii) Crossroads sent the following companies letters inviting them to take a license to one or both of US Patent Nos. 6,041,381 and 6,138,161 (two of the Patents): 

Exhibit B

‘972 Patents