Exclusive Marketing and Licensing Agreement - H. Lee Browne, H. Lee Browne d/b/a Greenwich Information Technologies and Greenwich Information Technologies LLC
EXCLUSIVE MARKETING AND LICENSING AGREEMENT
dated as of
September 11, 1996,
between
H. LEE BROWNE, individually,
H. LEE BROWNE, dba
Greenwich Information Technologies
and
GREENWICH INFORMATION TECHNOLOGIES LLC
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TABLE OF CONTENTS
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SECTION PAGE
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Recitals . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
ARTICLE I
DEFINITIONS. . . . . . . . . . . . . . . 1
1.1 Definitions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
ARTICLE II
MARKETING, PROMOTION
AND RELATED TRANSACTIONS . . . . . . . . . . . 3
2.1 Grant of Rights. . . . . . . . . . . . . . . . . . . . . . . . . . . 3
2.2 Duties of LLC. . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
2.3 Future Licenses. . . . . . . . . . . . . . . . . . . . . . . . . . . 4
2.4 Other Obligations of DBA . . . . . . . . . . . . . . . . . . . . . . 4
2.5 Consideration. . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
ARTICLE III
REPRESENTATIONS AND WARRANTIES . . . . . . . . . . 4
3.1 Representations and Warranties of DBA. . . . . . . . . . . . . . . . 4
3.2 Representations and Warranties of LLC. . . . . . . . . . . . . . . . 5
ARTICLE IV
CONTINUING COVENANTS AND AGREEMENTS. . . . . . . . . 5
4.1 Covenants of DBA . . . . . . . . . . . . . . . . . . . . . . . . . . 5
4.2 Covenants of LLC . . . . . . . . . . . . . . . . . . . . . . . . . . 6
ARTICLE V
INDEMNIFICATION. . . . . . . . . . . . . . 6
5.1 Obligations of DBA . . . . . . . . . . . . . . . . . . . . . . . . . 6
5.2 Obligations of LLC . . . . . . . . . . . . . . . . . . . . . . . . . 6
ARTICLE VI
GENERAL . . . . . . . . . . . . . . . 6
6.1 Amendments; Waivers. . . . . . . . . . . . . . . . . . . . . . . . . 6
6.2 Schedules; Exhibits; Integration . . . . . . . . . . . . . . . . . . 6
6.3 Governing Law. . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
6.4 No Assignment. . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
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SECTION PAGE
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6.5 Headings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
6.6 Counterparts . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
6.7 Parties in Interest. . . . . . . . . . . . . . . . . . . . . . . . . 7
6.8 Notices. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
6.9 Remedies; Waiver . . . . . . . . . . . . . . . . . . . . . . . . . . 8
6.10 Attorney's Fees. . . . . . . . . . . . . . . . . . . . . . . . . . . 9
6.11 Representation By Counsel; Interpretation. . . . . . . . . . . . . . 9
6.12 Severability . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
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EXCLUSIVE MARKETING AND LICENSING AGREEMENT
This Exclusive Marketing and Licensing Agreement is entered into as of
September 11, 1996, between GREENWICH INFORMATION TECHNOLOGIES LLC, a Delaware
limited liability company ("LLC"), H. LEE BROWNE, individually ("HLB"), and H.
LEE BROWNE, dba Greenwich Information Technologies ("DBA").
R E C I T A L S
WHEREAS, DBA is the "Assignee" of certain patent rights pursuant to an
Assignment Agreement dated February 5, 1992 between H. Lee Browne and Paul Yurt
(collectively, the "Assignors") and H. Lee Browne, dba Greenwich Information
Technologies, which is attached hereto as Exhibit A (the "1992 Assignment
Agreement").
WHEREAS, DBA and LLC desire to use certain cash available to the LLC for
working capital purposes related to the exploitation and licensing of the Patent
Rights (as defined in the 1992 Assignment Agreement), and with the understanding
that HLB will have operational control of LLC, DBA, in connection therewith,
desires to appoint LLC as the exclusive marketing and licensing agent for the
Patent Rights with sole rights to determine the exploitation and licensing of
the Patent Rights.
WHEREAS, DBA desires to become a member of LLC and is entering into this
Agreement as partial consideration for a 66.67% membership interest in LLC.
A G R E E M E N T
In consideration of the mutual promises contained herein and intending to
be legally bound, the parties agree as follows:
ARTICLE I
DEFINITIONS
1.1 DEFINITIONS. For all purposes of this Agreement, except as otherwise
expressly provided or unless the context otherwise requires,
(a) the terms defined in this Article I have the meanings assigned to them
in this Article I and include the plural as well as the singular,
(b) all references in this Agreement to designated "Articles," "Sections"
and other subdivisions are to the designated Articles, Sections and other
subdivisions of the body of this Agreement,
(c) pronouns of either gender or neuter shall include, as appropriate, the
other pronoun forms, and
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(d) the words "herein," "hereof" and "hereunder" and other words of
similar import refer to this Agreement as a whole and not to any particular
Article, Section or other subdivision.
As used in this Agreement and the Exhibits delivered pursuant to this
Agreement, the following definitions shall apply.
"ACTION" means any action, complaint, investigation, petition, suit or
other proceeding, whether civil or criminal, in law or in equity, or before any
arbitrator or Governmental Entity.
"AFFILIATE" means a Person that directly or indirectly, through one or more
intermediaries, controls, or is controlled by, or is under common control with,
a specified Person.
"AGREEMENT" means this Exclusive Marketing and Licensing Agreement by and
between DBA and LLC, as amended or supplemented together with all Exhibits
attached hereto or incorporated herein by reference.
"APPROVAL" means any approval, authorization, consent, qualification or
registration, or any waiver of any of the foregoing, required to be obtained
from, or any notice, statement or other communication required to be filed with
or delivered to, any Governmental Entity or any other Person.
"ASSIGNORS" is defined in the Recitals hereof.
"CONTRACT" means any agreement, arrangement, bond, commitment, franchise,
indemnity, indenture, instrument, lease, license or understanding, whether or
not in writing.
"ENCUMBRANCE" means any claim, charge, lease, covenant, easement,
encumbrance, security interest, lien, option, pledge, rights of others, or
restriction (whether on voting, sale, transfer, disposition or otherwise),
whether imposed by agreement, understanding, law, equity or otherwise.
"GOVERNMENTAL ENTITY" means any government or any agency, bureau, board,
commission, court, department, official, political subdivision, tribunal or
other instrumentality of any government, whether federal, state or local,
domestic or foreign.
"LAW" means any constitutional provision, statute or other law, rule,
regulation, or interpretation of any Governmental Entity and any Order.
"LOSS" means any action, cost, damage, disbursement, expense, liability,
loss, deficiency, diminution in value, obligation, penalty or settlement of any
kind or nature, whether foreseeable or unforeseeable, including but not limited
to, interest or other carrying costs, penalties, legal, accounting and other
professional fees and expenses
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incurred in the investigation, collection, prosecution and defense of claims
and amounts paid in settlement, that may be imposed on or otherwise incurred
or suffered by the specified person.
"1992 ASSIGNMENT AGREEMENT" is defined in the Recitals hereof.
"ORDER" means any decree, injunction, judgment, order, ruling, assessment
or writ.
"PATENT RIGHTS" means the patents subject to the 1992 Assignment Agreement.
"PERMIT" means any permit, license, authorization, plan, directive, consent
order or consent decree of or from any Governmental Entity or Person.
"PERSON" means an association, a corporation, an individual, a partnership,
a trust or any other entity or organization, including a Governmental Entity.
ARTICLE II
MARKETING, PROMOTION
AND RELATED TRANSACTIONS
2.1 GRANT OF RIGHTS.
DBA hereby grants to LLC exclusive, perpetual, irrevocable, worldwide
rights to market, promote and license the Patent Rights and to arrange for the
commercial exploitation of the Patent Rights and any related technology owned or
controlled by DBA. LLC shall have all rights to promote, market and license to
others the Patent Rights on such terms and conditions as it may determine in its
sole and absolute discretion. DBA shall have the right to prosecute infringers
of the Patent Rights in accordance with the 1992 Assignment Agreement; provided,
however, that LLC shall have all economic interests and rights in the proceeds
of such prosecution subject to DBA's obligations, if any, under the 1992
Assignment Agreement to pay a portion of such proceeds to the Assignors. LLC
shall pay all costs and expenses related to the prosecution of infringers of the
Patent Rights and any Persons who breach or violate the terms of any license or
sublicense of the Patent Rights.
2.2 DUTIES OF LLC.
LLC agrees to use commercially reasonable efforts to promote, market and
arrange for the commercial exploitation of the Patent Rights, through licensing
or otherwise. LLC shall pay all costs and expenses related to such promotion,
marketing and licensing activities. LLC shall be solely responsible to arrange
for licensing or assigning rights in the Patent Rights to third parties on
commercially reasonable terms. LLC shall pay all costs and expenses related to
(i) obtaining and maintaining the Patent Rights and all related patent rights on
behalf of DBA; and (ii) the prosecution of
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infringers of the Patent Rights and any Persons who breach or violate the
terms of any license or sublicense of the Patent Rights.
2.3 FUTURE LICENSES.
In the event LLC determines to license the Patent Rights to any third
party, DBA shall promptly grant to LLC a license, with right to sublicense,
in scope, duration and such other terms as are no less broad than the
proposed license to the third party; PROVIDED, HOWEVER, that the license from
DBA to LLC will be royalty free. Such license shall be granted
contemporaneously with the consummation of the license of the Patent Rights
by the LLC to such third party. Any and all payments or other proceeds
received by LLC in respect of such licenses granted to third parties shall be
the sole property of LLC and DBA and the Assignors shall have no rights or
interests therein, subject to (i) DBA's obligations, if any, under the 1992
Assignment Agreement to pay a portion of such proceeds to the Assignors, and
(ii) subject to HLB's rights, if any, to receive distributions as a member of
LLC under the Operating Agreement.
2.4 OTHER OBLIGATIONS OF DBA.
DBA agrees that he shall remain responsible for making all necessary
payments to the Assignors under the 1992 Assignment Agreement. If DBA fails
to make payments to Assignors when due, LLC shall have full right (but not
the obligation) to withhold distributions otherwise owing to HLB, as a member
of LLC, and make payments directly to Assignors. This is in addition to any
other remedy LLC may have hereunder. To the extent LLC proposes any
transaction which requires the consent of the Assignors, DBA will use his
best efforts to procure such consent.
2.5 CONSIDERATION.
HLB is receiving a membership interest in LLC and is entering into this
Agreement, as Assignor, as partial consideration for such membership interest.
ARTICLE III
REPRESENTATIONS AND WARRANTIES
3.1 REPRESENTATIONS AND WARRANTIES OF DBA. DBA has all necessary power
and authority to execute, deliver and perform this Agreement and any related
agreements referred to herein. The execution, delivery and performance of this
Agreement and any related agreements by DBA will not violate, or constitute a
breach or default (whether upon lapse of time and/or the occurrence of any act
or event or otherwise) under any Contract of DBA, result in the imposition of
any Encumbrance against the Patent Rights or DBA's rights under the 1992
Assignment Agreement (except in favor of LLC), violate any Law or require any
Approval or filing or registration with, or the issuance of any Permit by, any
other Person or Governmental Entity. This
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Agreement and any related agreements constitute the legally valid and binding
obligation of DBA, enforceable against DBA in accordance with its terms
except as such enforceability may be limited by bankruptcy, insolvency,
reorganization, moratorium and other similar laws and equitable principles
relating to or limiting creditors' rights generally. The 1992 Assignment
Agreement, in the form attached hereto as Exhibit A, is in full force and
effect and has not been modified, amended or otherwise altered. DBA has
performed all obligations required to be performed by him under the 1992
Assignment Agreement, and DBA is not in default under the 1992 Assignment
Agreement. DBA has not granted, assigned, licensed or transferred any rights
in the Patent Rights to any Person, except for such matters as are no longer
in effect and under which no Person has any continuing right to use or
exploit the Patent Rights. DBA has not received any notice to the effect (or
is otherwise aware) that any Person claims that the Patent Rights (or any
claims asserted in the Patent Rights) are invalid or that there was any prior
art relating to the Patent Rights which would cause the Patent Rights to be
invalid. Except as previously disclosed to LLC, there are no Actions
pending, or to DBA's knowledge, threatened, relating to the Patent Rights or
the 1992 Assignment Agreement.
3.2 REPRESENTATIONS AND WARRANTIES OF LLC. LLC is a limited liability
company duly organized, validly existing and in good standing under the laws of
the State of Delaware. LLC has all necessary corporate power and authority to
carry on its business as now being conducted. LLC has the necessary corporate
power and authority to execute, deliver and perform this Agreement and any
related agreements to which it is a party. This Agreement constitutes the
legal, valid and binding obligation of LLC, enforceable against it in accordance
with its terms except as such enforceability may be limited by bankruptcy,
insolvency, reorganization, moratorium and other similar laws and equitable
principles relating to or limiting creditors' rights generally. The execution,
delivery and performance of this Agreement and any related agreements by LLC
will not violate the provisions of, or constitute a breach or default whether
upon lapse of time and/or the occurrence of any act or event or otherwise under
(a) the operating agreement of LLC, (b) any Law to which LLC is subject or
(c) any Contract to which LLC is a party.
ARTICLE IV
CONTINUING COVENANTS AND AGREEMENTS
4.1 COVENANTS OF DBA.
Other than to LLC, DBA shall not sell, transfer, assign, license, Encumber
or otherwise convey or dispose of any right or interest in or to the Patent
Rights. DBA shall not amend, modify or alter the 1992 Assignment Agreement
without the prior written approval of LLC, unless such amendment or modification
(i) relates to DBA's payment obligations to the Assignors pursuant to the 1992
Assignment Agreement, and (ii) does not and will not result in an adverse effect
on LLC's interests hereunder, or under the Collateral Assignment of Assignment
Agreement dated the date hereof between HLB and LLC. DBA shall comply with all
obligations under the 1992 Assignment Agreement to make payments to the
Assignors and take all action necessary to maintain his rights to the Patent
Rights and other rights under the 1992
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Assignment Agreement. DBA shall notify LLC promptly in writing upon becoming
aware of any (i) claim by either Assignor of a breach or nonperformance of
the 1992 Assignment Agreement by DBA or (ii) Action or Order relating to the
Patent Rights or any claim by any Person alleging that the Patent Rights are
invalid.
4.2 COVENANTS OF LLC.
LLC shall not, directly or indirectly, enter into any transaction involving
the Patent Rights with any affiliate of LLC or DBA, on terms that are less
favorable to LLC than those that might be obtained at the time from unrelated
third parties. LLC, on behalf of DBA, shall perform the duties of DBA under the
1992 Assignment Agreement other than making payments to the Assignors.
ARTICLE V
INDEMNIFICATION
5.1 OBLIGATIONS OF DBA. DBA agrees to indemnify and hold harmless LLC,
and its members, directors, officers, employees, affiliates, agents and assigns
from and against any and all Losses of LLC, directly or indirectly, as a result
of, or based upon or arising from any inaccuracy in or breach or nonperformance
of any of the representations, warranties, covenants or agreements made by DBA
in or pursuant to this Agreement (whether or not of a material nature).
5.2 OBLIGATIONS OF LLC. LLC agrees to indemnify and hold harmless DBA
from and against any Losses of DBA, directly or indirectly, as a result of, or
based upon or arising from, any inaccuracy in or breach or nonperformance of any
of the representations, warranties, covenants or agreements made by LLC in or
pursuant to this Agreement.
ARTICLE VI
GENERAL
6.1 AMENDMENTS; WAIVERS. This Agreement and any Exhibit attached hereto
may be amended only by agreement in writing of all parties. Any amendment,
waiver or consent by LLC hereunder must be approved by the "senior members" or a
majority in interest of the members of LLC, in each case excluding HLB. No
waiver of any provision nor consent to any exception to the terms of this
Agreement or any agreement contemplated hereby shall be effective unless in
writing and signed by the party to be bound and then only to the specific
purpose, extent and instance so provided.
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6.2 SCHEDULES; EXHIBITS; INTEGRATION. Each Schedule and Exhibit delivered
pursuant to the terms of this Agreement shall be in writing and shall constitute
a part of this Agreement, although Schedules need not be attached to each copy
of this Agreement. This Agreement, together with such Schedules and Exhibits,
and the Pledge Agreement and the Collateral Assignment of Assignment Agreement
each dated the date hereof between HLB and LLC, constitute the entire agreement
among the parties pertaining to the subject matter hereof and supersede all
prior agreements and understandings of the parties in connection therewith.
6.3 GOVERNING LAW. This Agreement and the legal relations between the
parties shall be governed by and construed in accordance with the laws of the
State of Connecticut except to the extent that certain matters are preempted by
federal law or are governed by the law of the jurisdiction of organization of
LLC.
6.4 NO ASSIGNMENT. Except as otherwise provided herein, neither this
Agreement (nor related agreements pursuant to this Agreement) nor any rights or
obligations under any of them are assignable.
6.5 HEADINGS. The descriptive headings of the articles, sections and
subsections of this Agreement are for convenience only and do not constitute a
part of this Agreement.
6.6 COUNTERPARTS. This Agreement and any amendment hereto or any other
agreement (or document) delivered pursuant hereto may be executed in one or more
counterparts and by different parties in separate counterparts. All of such
counterparts shall constitute one and the same agreement (or other document) and
shall become effective (unless otherwise therein provided) when one or more
counterparts have been signed by each party and delivered to the other party.
6.7 PARTIES IN INTEREST. This Agreement shall be binding upon and inure
to the benefit of each party, and nothing in this Agreement, express or implied,
is intended to confer upon any other person any rights or remedies of any nature
whatsoever under or by reason of this Agreement. Nothing in this Agreement is
intended to relieve or discharge the obligation of any third person to any party
to this Agreement.
6.8 NOTICES. Any notice or other communication hereunder must be given in
writing and either (a) delivered in person, (b) transmitted by telex, telefax or
telecommunications mechanism or (c) mailed by certified or registered mail,
postage prepaid, receipt requested as follows:
IF TO LLC ADDRESSED TO:
Greenwich Information Technologies LLC
Two Soundview Drive
Greenwich Connecticut 06830
Attention: Chief Executive Officer
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WITH COPIES TO:
Acacia Research Corporation
12 S. Raymond Avenue
Pasadena, California 91105
Attention: President
and
O'Melveny & Myers LLP
400 South Hope Street
Los Angeles, California 90071
Attention: D. Stephen Antion, Esq.
IF TO HLB, ADDRESSED TO:
H. Lee Browne
Two Soundview Drive
Greenwich, Connecticut 06830
IF TO DBA, ADDRESSED TO:
H. Lee Browne, dba
Greenwich Information Technologies
Two Soundview Drive
Greenwich, Connecticut 06830
WITH A COPY TO:
Finn, Dixon & Herling
One Landmark Square, Suite 1400
Stamford, Connecticut 06901
Attention: Brett Dixon, Esq.
or to such other address or to such other person as either party shall have
last designated by such notice to the other party. Each such notice or other
communication shall be effective (i) if given by telecommunication, when
transmitted to the applicable number so specified in (or pursuant to) this
Section 6.8 and an appropriate answer back is received, (ii) if given by
mail, three days after such communication is deposited in the mails with
first class postage prepaid, addressed as aforesaid or (iii) if given by any
other means, when actually delivered at such address.
6.9 REMEDIES; WAIVER. To the extent permitted by Law, all rights and
remedies existing under this Agreement and any related agreements or documents
are cumulative to, and not exclusive of, any rights or remedies otherwise
available under applicable Law. No failure on the part of any party to exercise
or delay in exercising any
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right hereunder shall be deemed a waiver thereof, nor shall any single or
partial exercise preclude any further or other exercise of such or any other
right.
6.10 ATTORNEY'S FEES. In the event of any Action for the breach of this
Agreement or misrepresentation by any party, the prevailing party shall be
entitled to reasonable attorney's fees, costs and expenses incurred in such
Action. Attorneys fees incurred in enforcing any judgment in respect of this
Agreement are recoverable as a separate item. The preceding sentence is
intended to be severable from the other provisions of this Agreement and to
survive any judgment and, to the maximum extent permitted by law, shall not be
deemed merged into any such judgment.
6.11 REPRESENTATION BY COUNSEL; INTERPRETATION. LLC and DBA acknowledge
that each party to this Agreement has been represented by counsel in
connection with this Agreement and the transactions contemplated by this
Agreement. Accordingly, any rule of Law or any legal decision that would
require interpretation of any claimed ambiguities in this Agreement against
the party that drafted it has no application and is expressly waived. The
provisions of this Agreement shall be interpreted in a reasonable manner to
effect the intent of DBA and LLC.
6.12 SEVERABILITY. If any provision of this Agreement is determined to
be invalid, illegal or unenforceable by any Governmental Entity, the
remaining provisions of this Agreement shall remain in full force and effect
provided that the essential terms and conditions of this Agreement for all
parties remain valid, binding and enforceable.
[Remainder of page intentionally left blank]
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IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to
be executed by its duly authorized officers as of the day and year first above
written.
GREENWICH INFORMATION TECHNOLOGIES LLC
By: /s/ H. Lee Browne
----------------------------
Its: Chief Executive Officer
H. LEE BROWNE, individually
H. LEE BROWNE, dba Greenwich Information
Technologies
/s/ H. Lee Browne
----------------------------
Accepted and Agreed:
ACACIA RESEARCH CORPORATION
By: /s/ Kathryn King-Van Wie
Its: Vice President, Operations
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