Amended and Restated Bill of Sale and Assignment between X10 Ltd. and X10 Wireless Technology, Inc.
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This agreement, effective October 1, 1999, is between X10 Ltd. and X10 Wireless Technology, Inc. It clarifies and restates a previous agreement in which X10 Ltd. transfers all rights, title, and interest in certain technology, intellectual property, and related products to X10 Wireless Technology, Inc. In exchange, X10 Ltd. receives shares of the company and cancellation of a promissory note. X10 Ltd. agrees to assist with further documentation and to indemnify the company against certain claims. The agreement ensures X10 Wireless Technology, Inc. has full ownership and use of the transferred property.
EX-10.9 14 0014.txt AMENDED AND RESTATED BILL OF SALE AND ASSIGNMENT EXHIBIT 10.9 AMENDED AND RESTATED BILL OF SALE AND ASSIGNMENT This Amended and Restated Bill of Sale and Assignment (the "Agreement") is made effective as of October 1, 1999, by and between X10 Ltd., a Bermuda corporation (the "Assignor") and X10 Wireless Technology, Inc., a Delaware corporation (the "Company"). RECITALS A. Assignor and the Company have previously entered into that certain Bill of Sale and Assignment (the "Bill of Sale") dated as of October 1, 1999, pursuant to which Assignor assigned to the Company certain technology, intellectual property rights and products related to broadband wireless- and powerline-based home and small office networking; B. The Bill of Sale did not fully set forth the entire understanding between the parties with respect to the technology, intellectual property rights and products transferred under the Bill of Sale; and C. The parties now wish to amend and restate the Bill of Sale in order to clarify and memorialize the correct understanding of the parties with respect to the technology, intellectual property rights and products transferred under the Bill of Sale and to further describe the obligations and practices of the parties in connection therewith. AGREEMENT In consideration of the foregoing, the mutual covenants and conditions contained in this Agreement and other good and valuable consideration, the receipt of which is hereby acknowledged, the parties agree as follows: 1. Assignor hereby irrevocably assigns, sells, transfers and conveys to the Company all right, title and interest in and to the property described in Exhibit A attached hereto and all applicable intellectual property rights related thereto, on a worldwide basis, related thereto, including, without limitation, copyrights, trademarks, trade secrets, patents, patent applications, moral rights, contract and licensing rights (the "Property"). In consideration of such transfer of the Property, the cancellation of a promissory note in the principal amount of One Million Twenty-Four Thousand Three Hundred Dollars ($1,024,300) held by Assignor and for the execution and delivery by Assignor of other agreements between Assignor and the Company that are effective on even date herewith, the Company has issued to Assignor Ten Million (10,000,000) shares of the Company's Common Stock (the "Payment"). Assignor hereby acknowledges that it retains no right to use the Property and agrees not to challenge the validity of the Company's ownership of the Property. 2. Upon each request by the Company, and at the Company's expense, Assignor agrees to promptly execute documents, testify and take other acts as the Company may deem necessary or desirable to procure, maintain, perfect, and enforce the full benefits, enjoyment, rights, title and interest, on a worldwide basis, of the Property assigned hereunder, and render all reasonable assistance in making application for and obtaining original, divisional, renewal, or reissued utility and design patents, copyrights, mask works, trademarks, trade secrets, and all other technology and intellectual property rights throughout the world related to any of the Property, in the Company's name and for its benefit. Assignor hereby assigns to the Company any and all claims, of any nature whatsoever, which Assignor now has or hereafter may have for infringement of any Property assigned hereunder. In the event the Company is unable for any reason, after reasonable efforts, to secure Assignor's signature on any 1. document needed in connection with the actions specified herein, Assignor hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as its agents and attorneys in fact, which appointment is coupled with an interest, to act for and in its behalf to execute, verify and file any such documents and to do all other lawfully permitted acts to further the purposes of this paragraph with the same legal force and effect as if executed by Assignor. Assignor hereby assigns to the Company any and all claims, of any nature whatsoever, which Assignor now has or hereafter may have for infringement of any Property assigned hereunder. 3. Assignor further agrees to deliver to the Company upon execution of this Agreement any and all tangible manifestations of the Property, including, without limitation, all notes, records, files and tangible items of any sort in its possession or under its control relating to the Property. Such delivery shall include all present and predecessor versions. In addition, from and after the execution of this Agreement, Assignor agrees to provide to the Company, at the expense of the Company, competent and knowledgeable assistance to facilitate the transfer of all information, know-how, techniques, processes and the like related to such tangible manifestations and otherwise comprising the intangible aspects of the Property. 4. Assignor represents and warrants to the Company that (a) Assignor is the sole owner of the Property and has full and exclusive right to assign the rights assigned herein, (b) Assignor has full right and power to enter into and perform this Agreement without the consent of any third party, (c) all of the Property is free and clear of all claims, liens, encumbrances and the like of any nature whatsoever, (d) the Property is an original work of Assignor, (e) none of the Property infringes, conflicts with or violates any copyright, trademark, trade secret or other intellectual property right of any kind (including, without limitation, any trade secret) or similar rights of any third party or, to Assignor's knowledge, any patent, (f) Assignor was not acting within the scope of employment or any other service arrangements with any third party when conceiving, creating or otherwise performing any activity with respect to the Property, (g) the execution, delivery and performance of this Agreement does not conflict with, constitute a breach of, or in any way violate any arrangement, understanding or agreement to which Assignor is a party or by which Assignor is bound, and (h) Assignor has maintained the Property in confidence and has not granted, directly or indirectly, any rights or interest whatsoever in the Property to any third party. 5. Assignor further represents and warrants to the Company that no claim, whether or not embodied in an action past or present, of any infringement, of any conflict with, or of any violation of any patent, copyright, trade secret or other intellectual property right or similar right, has been made or is pending or threatened against Assignor relative to the Property. Assignor agrees to promptly inform the Company of any such claim arising or threatened in the future with respect to the Property or any part thereof. 6. Assignor will indemnify and hold the Company harmless from any and all claims, losses, liabilities, damages, expenses and costs (including attorneys' fees and court costs) which result from a breach or alleged breach of any representation or warranty of Assignor (a "Claim") set forth in this Agreement; provided, that the Company gives Assignor written notice of any such Claim and Assignor has the right to participate in the defense of any such Claim at its expense. Each party shall also indemnify the other for any claims relating to taxes that may be levied on such party that arise primarily as a result of the other party's conduct of its business and activities. 7. For purposes of not preventing the Company from using the Property, Assignor hereby grants to the Company a license to any and all ideas, concepts, inventions, designs, hardware and software, or other property and proprietary information of Assignor (the "Assignor Property") that is reasonably necessary for the Company (a) to use the Property for its various intended uses, and (b) to design, develop and manufacture improvements and modifications to the Property and new products based upon the Property. 2. Such license shall be non-exclusive, perpetual, royalty-free, fully- sublicensable and worldwide, with rights to make, use, copy, reproduce, modify, distribute, market, import, sell, and offer to sell works deriving from, incorporating or integrating the Assignor Property, in connection with the Company's business, and not for use or sale by the Company or any third party as a standalone product. 8. This Agreement and the Exhibit attached hereto constitute the entire, complete, final and exclusive understanding and agreement of the parties hereto with respect to the subject matter hereof, and supersedes any other prior or contemporaneous oral or written understanding or agreement. This Agreement may be modified or amended only by mutual written consent of the parties; provided, however, that after the effective date of the Company's first firm commitment underwritten public offering of its securities registered under the Securities Act of 1933, as amended, any such modification or amendment shall be effective only if it is approved by a majority of the directors serving on the Audit Committee of the Board of Directors of the Company. 9. This Agreement will be governed and construed in accordance with the laws of the State of Washington as applied to transactions taking place wholly within Washington between Washington residents. The parties hereby expressly consent to the exclusive personal jurisdiction of and venue in the state and federal courts located in King County, Washington for any lawsuit filed there arising from or related to this Agreement. Notwithstanding the foregoing, however, the Company may bring an action for injunctive or equitable relief in any jurisdiction it deems reasonably necessary to protect its proprietary rights. This Agreement shall not be subject to or governed by the United Nations Convention on Contracts for the International Sale of Goods, which is specifically disclaimed by the parties. 10. If any provision of this Agreement is found invalid or unenforceable, in whole or in part, the remaining provisions and partially enforceable provisions will, nevertheless, be binding and enforceable. 11. Failure by either party to exercise any of its rights hereunder shall not constitute or be deemed a waiver or forfeiture of such rights. 12. The provisions hereof shall inure to the benefit of, and be binding upon, the successors, assigns, heirs, executors and administrators of the parties hereto. 13. Each party to this Agreement acknowledges that Cooley Godward LLP ("Cooley Godward"), outside general counsel to the Company, represents only the Company with respect to the matters contained in this Agreement and does not represent Assignor in connection herewith. Assignor acknowledges that and agrees that it should not rely upon the advice of Cooley Godward with respect to the matters contained herein, and that it has had adequate opportunity to obtain the advice of independent legal counsel with respect to the matters contained in this Agreement. 3. In Witness Whereof, the undersigned have executed this Amended and Restated Bill of Sale and Assignment as of the date set forth below. X10 Ltd. By: /s/ George Stevenson --------------------------------------------- (signature) Name: ------------------------------------------- (please print name) Title: ------------------------------------------ X10 Wireless Technology, Inc. By: /s/ Wade Pfeiffer --------------------------------------------- (signature) Name: Wade Pfeiffer ------------------------------------------- (please print name) Title: CFO ------------------------------------------ 4. STATE OF WASHINGTON ) ) ss. COUNTY OF KING ) I certify that I know or have satisfactory evidence that ________________________ is the person who appeared before me, and said person acknowledged that he signed this instrument, on oath stated that he was authorized to execute the instrument and acknowledged it as the ______________________ of X10 Ltd. to be the free and voluntary act of such corporation for the uses and purposes mentioned in this instrument. DATED: ------------------------------ ------------------------------------ Print Name: ------------------------- NOTARY PUBLIC for the State of Washington, residing at ------------------------------------ My appointment expires: ------------------------------------ 5. EXHIBIT A DESCRIPTION OF PROPERTY I. Products. All of the products owned by X10 Ltd. that relate to multiple frequency wireless transmittors and cameras and all wireless remotes that are used in conjunction with the 2.4GHz video senders and all products developed specifically at the request of X10 Wireless Technology, Inc. (the "Products") including, without limitation, the products listed below, all right, title and interest in the designs and development processes of such Products, all documentation associated with such Products, marketing and promotional materials for such products and any ancillary technology owned by Assignor that is necessary for Company to own and fully use the Products.
Exhibit A-1.
Exhibit A-2.
II. Technology. Any and all ideas, concepts, know-how, inventions, designs, hardware and software, or other proprietary information of Assignor, related to multiple frequency wireless transmittors or otherwise, that is used or applied in the design, development or manufacture of wireless products, including, without limitation, the Products. III. Intellectual Property Rights. All patents, patent applications, copyrights, logos, trademarks and service marks related to the Products and the Technology and now or hereafter owned by Assignor including, without limitation, the following: Patents and Patent Applications Multi-Camera Surveillance and Monitoring System (No. 09/539,986) Exhibit A-3. Voice-Operated R/C PC Jukebox (No. 09/566,008) RF PC Interface (No. 09/390,540) Method For Determining Extent of Graphics Content to Deliver to Network User (No. pending) [Logos]
Exhibit A-4. Trademarks Registered Trademarks and Trademark Applications Firecracker (No. 75/831400 ) Common Law Trademarks Xcam Xcam II Gigacam ScanCam Xray Vision Ultimate Remote DVD Anywhere MP3 Anywhere DVD Anywhere 2000 MP3 Anywhere 2000 Big Picture Big Game Firecracker Hawkeye Eagleeye Stick-A-Switch StyleSwitch Slimline Slimline Gold MacroRecorder Fuse Boom Boom II MouseREMOTE SlimFire Digipad IR Commander X10 Wireless Technology Socket Rocket Ultimate Remote Video Sender Exhibit A-5.
