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

EX-10.1 2 ea134870ex10-1_crownelectro.htm FOURTH AMENDMENTTO 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:

 

A.The Assignable Patents as set forth in Exhibit 1.2 of the Agreement are hereby replaced with the patents and patent applications set forth in Addendum I, Table 1 of this Fourth Amendment, which includes those patents and patent applications set forth in Addendum II, Table 2 of this Fourth Amendment (“Supplementary Patents”). For avoidance of doubt, the patents and applications set forth in Addendum III, Table 3 of this Fourth Amendment (“Excluded Patents”) are not included in the Assignable Patents.

 

B.Section 1.3 is hereby replaced in its entirety as follows:

 

1.3“Assignment Option” means the option by Company to purchase the Assignable Patents, which Company will have exercised if it pays the amount and within the timeframe contemplated in Section 4.2.1.

 

 C.Section 1.5 is hereby replaced in its entirety as follows:

 

1.5“Closing Date” means the date HP executes the assignment for the Assignable Patents in accordance with Section 4.2.1.

 

D.Section 1.13 is hereby replaced in its entirety as follows:

 

1.13“Knowledge of HP” means the specific knowledge of HP’s patent counsel and business persons providing support for this Agreement: (i) with respect to the Supplementary Patents, as of the Closing Date; or (ii) on the Effective Date, otherwise, in either (i) or (ii) following a diligent search of HP’s database routinely used for tracking its patent agreements.

 

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E.Section 2.3 is hereby deleted in its entirety.

 

F.Section 2.4 is hereby replaced in its entirety as follows:

 

2.4Covenant Not to Revive. If Company exercises the Assignment Option, HP agrees not: (i) to pay maintenance fees for the Excluded Patents, (ii) to attempt in any way to revive the Excluded Patents; nor (iii) to have or otherwise a permit an Affiliate or Third Party to do any of the foregoing.

 

G.Exhibit 3.1.2 is hereby replaced with Addendum I of this Fourth Amendment.

 

H.The provisions of Section 4.2 are hereby replaced in their entirety as follows:

 

4.2Assignment.

 

4.2.1Company will pay HP the sum of One Million, Five Hundred Fifty Thousand Dollars and Zero Cents (U.S.$1,550,000.00) by February 15, 2021 (“Purchase Price”).

 

4.2.2If Company exercises the Assignment Option, Company will additionally pay HP a running royalty of as a percent of the gross revenues received by Company and its Affiliates for the sale, rental, license or other disposition of Licensed Products based on the following table:

  

   Lifetime Cumulative Gross  Royalty
Time Window  Revenue  Rate
  Less than $70,000,000  0.00%
Prior to December 31, 2029  $70,000,000 - $500,000,000  1.25%
  $500,000,000 and beyond  1.00%
           January 1, 2030 onward   0.00%

 

I.If Company exercises the Assignment Option, HP hereby waives any interest that would have otherwise accrued under Section 4.4 with regards to the payment of Seventy Thousand Dollars and Zero Cents (U.S.$75,000.00) that was specified in the Third Amendment under Section 4.1.1 and was not previously made by Company, and is now included the Purchase Price payable under Section 4.2.1 under this Fourth Amendment.

 

J.Section 5.1 is hereby replaced in its entirety with the following:

 

5.1Retained License. HP reserves and retains, for the benefit of the HP Group, and/or Company hereby grants back to HP Group, as the case may be, a worldwide, fully paid-up, royalty-free, irrevocable, non-exclusive license under the Assignable Patents to make, have made, use, sell, offer for sale, import, export, and otherwise dispose of or exploit any product or service of HP Group within the Field of Use, and to practice any method, and to authorize third parties to do any of the foregoing on behalf of HP Group. This license shall remain in force for the full term of any Assignable Patents.

  

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K.Exhibit 7.3 is hereby replaced in its entirety with Addendum IV to this Fourth Amendment.

 

L.Section 8.3 is hereby replaced in its entirety as follows:

 

8.3Termination for Non-Payment. HP may terminate this Agreement upon notice in the event Company fails to make payment in full of any sums payable under this Agreement within the timeframes contemplated hereunder.

 

 M.All other terms and conditions of the Agreement remain in effect.

 

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

 

“HPI”     “Company”
       
HP INC.     Crown Electrokinetics Corp.
         
Signature: /s/ Annette Friskopp   Signature: /s/ Douglas Croxall
Name: Annette Friskopp   Name: Douglas Croxall 
Title:

Global Head and General Manager

Specialty Printing Solutions

  Title: CEO 

  

“HPDC”  
     
Hewlett-Packard Development Company, L.P.  
   
By:    HPQ Holdings, LLC, its General Partner
Signature:  /s/ Dan Croft  
Name: Dan Croft  
Title: Manager  

  

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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

 

By:   Date:

  

Dan Croft, Head, IP Sales & Licensing

HPQ Holdings, LLC

 

HP INC.

 

By:   Date:

 

Annette Friskopp, Global Head and General Manager

Specialty Printing Systems

  

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Table 1 - ASSIGNED PATENTS

 

HP

Internal ID

  Country  App. No.  Pat. No.  Application Title
82250201  U.S.  12/411828  8018642  ELECTRO-OPTICAL DISPLAY
82262213  U.S.  12/830581  8183757  DISPLAY ELEMENT
82262189  U.S.  12/815993  8184357  DISPLAY ELEMENT
82276163  U.S.  12/917672  8331014  PIGMENT-BASED INKS
82262192  U.S.  12/815811  8384659  DISPLAY ELEMENT INCLUDING
            ELECTRODES AND A FLUID WITH
            COLORANT PARTICLES
82259243  U.S.  12/626489  8432598  TRANSPARENT CONDUCTOR STRUCTURE
82743867  U.S.  13/115754  8896906  INKS INCLUDING BLOCK COPOLYMER
            GRAFTED PIGMENTS VIA AZIDE
            CHEMISTRY
82239593  U.S.  12/865255  8054535  ELECTROPHORETIC DISPLAY DEVICE
82264649  U.S.  12/951348  8179590  ELECTRO-OPTICAL DISPLAY
84495766  U.S.  15/204505  10377909  INKS INCLUDING SEGMENT
        COPOLYMER GRAFTED PIGMENTS
            VIA AZIDE CHEMISTRY

 

 

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ADDENDUM II

Table 2 – Supplementary Patents

 

HP

Internal ID

  Country  Status  Patent No.  App Title
82264649  U.S.  Granted  8179590  ELECTRO-OPTICAL DISPLAY
84495766  U.S.  Granted  10377909  INKS INCLUDING SEGMENT COPOLYMER GRAFTED PIGMENTS VIA AZIDE CHEMISTRY

  

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ADDENDUM III

Table III – Excluded Patents

 

HP

Internal ID

  Country  Status  Patent No.  App Title
82260983  U.S.  Lapsed  8089687  ELECTRO-OPTICAL DISPLAY SYSTEMS
82833776  U.S.  Lapsed  9217906  IN-PLANE ELECTRO-OPTICAL DISPLAY
83954287  U.S.  Lapsed  9244326  INKS INCLUDING GRAFT COPOLYMER
            SURFACE-MODIFIED PIGMENTS VIA
            AZIDE CHEMISTRY
83972160  U.S.  Lapsed  9441122  INKS INCLUDING SEGMENT
            COPOLYMER GRAFTED PIGMENTS VIA
            AZIDE CHEMISTRY

 

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ADDENDUM IV

Exhibit 7.3 – Unlicensed Companies

 

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

 

1.3M
2.E Ink Holdings
3.Merck KGaA
4.Philips
5.Amazon

 

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.

 

 

 

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