Fourth Amendment to Intellectual Property Agreement, dated February 4, 2021, by and among Hewlett-Packard Development Company, L.P., HP, Inc. and Crown Electrokinetics Corp

Exhibit 10.1

FOURTH AMENDMENT TO THE INTELLECTUAL PROPERTY AGREEMENT

THIS FOURTH AMENDMENT TO THE INTELLECTUAL PROPERTY AGREEMENT (this “Fourth Amendment”), dated February 4, 2021 (the “Fourth Amendment Effective Date”) is an amendment to a certain Intellectual Property Agreement (the “Agreement”) effective January 31, 2016 (the “Effective Date”) and amended on April 12, 2016, May 1, 2017, and March 10, 2019, by and between (a) Hewlett-Packard Development Company, L.P., a Texas limited partnership having its principal place of business at 10300 Energy Drive, Spring, Texas 77389 U.S.A. (“HPDC”), and HP, Inc., a Delaware corporation having its principal place of business at 1501 Page Mill Road, Palo Alto, California 94304, U.S.A. (“HPI”) (HPDC and HPI are collectively referred to herein as “HP”), on the one hand; and (b) Crown Electrokinetics Corp. (f.k.a. 3D Nanocolor Corp.), a Delaware corporation having its principal place of business at 1110 NE Circle Blvd, Corvallis, OR 97330 U.S.A. (“Company”) (each individually referred to as a “Party” and both collectively referred to as the “Parties”).

RECITALS

WHEREAS Company desires to exercise the Assignment Option (as defined in Section 1.3);

WHEREAS HP acknowledges notice of Company’s intent to exercise the Assignment as required under Section 2.3.1;

NOW, THEREFORE, the Parties agree to amend the Agreement as follows:

IN WITNESS WHEREOF, the Parties hereto have duly executed this Fourth Amendment, as of the date set forth in the first paragraph hereof.

ADDENDUM I – RECORDABLE ASSIGNMENT

Assignment of Patent Rights

For good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Hewlett-Packard Development Company, L.P., a limited partnership duly organized and existing under the laws of the State of Texas and having its principal place of business at 10300 Energy Drive, Spring, Texas 77389 U.S.A. (“HPDC”), and HP Inc., a corporation duly organized and existing under the laws of the State of Delaware and having its principal place of business at 1501 Page Mill Road, Palo Alto, California 94304, U.S.A. (“HPI”) (HPDC and HPI are collectively referred to herein as Assignor”), hereby grant and assign to Crown Electrokinetics Corp. (“Assignee”) all of Assignor’s right, title and interest in and to the United States Letters Patents identified in Exhibit A (collectively, “Assigned Patents”), to have and to hold the same, for Assignee’s own use and enjoyment and for the use and enjoyment of its successors and assigns, and the right to sue for damages for infringement of such Assigned Patents accruing at any time prior to, on, and/or after the date hereof, for the full term or terms of all such Assigned Patents, subject to all rights granted under the Assigned Patents to third parties prior to _____________, 2021.

IN WITNESS WHEREOF, the Assignor executed this Assignment of Patent Rights by their duly authorized representatives as of the Effective Date as set forth below:

HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

By:  HPQ Holdings, LLC, its General Partner

Dan Croft, Head, IP Sales & Licensing

HPQ Holdings, LLC

HP INC.

Annette Friskopp, Global Head and General Manager

Specialty Printing Systems

Table 1 - ASSIGNED PATENTS

ADDENDUM II

Table 2 – Supplementary Patents

ADDENDUM III

Table III – Excluded Patents

ADDENDUM IV

Exhibit 7.3 – Unlicensed Companies

With respect to the Assignable Patents other than the Supplementary Patents:

With respect to the Supplementary Patents:

This will be delivered via a single letter from HP’s Head of IP Sales & Licensing, prior to May 5, 2021. Any communication with respect to this subject matter prior to such one-time delivery will be considered preliminary and not binding upon HP.

Crown Electrokinetics – HP: IP Agreement Fourth
Amendment