Independent Consultant Services Agreement - Immersion Corp. and Louis Rosenberg
INDEPENDENT CONSULTANT SERVICES AGREEMENT
This Agreement is made and entered into as of February 11, 2002
("Effective Date"), by and between Immersion Corporation, a corporation having a
principal place of business at 801 Fox Lane, San Jose, CA ("Company"), and Louis
Rosenberg, an individual residing at 5002 Felter Road, San Jose, California
94132 (the "Consultant").
1. Engagement of Services. Company hereby retains Consultant to provide
an average of twenty (20) hours per week in a calendar quarter (reasonable
absences during holiday and vacations excepted) of the following services (the
"Services"): (i) expert support and analysis with respect to the Company's
patent portfolio, including assistance on the effort to catalog and categorize
the patent portfolio in a more manageable format, assistance on prior art
reviews, claim construction reviews, product coverage reviews and other similar
analysis wherein the Company's patents are studied in detail with respect to
technical content; (ii) serving as expert technical consultant for any
litigation relating to the Company's patent portfolio; (iii) serving on the
Company's Patent Review Committee; and (iv) such other patent related projects
as agreed upon by Victor Viegas or Patrick Reutens of the Company and
Consultant. Any additional hours of service to be provided by Consultant
pursuant to this Agreement over the limit expressed above must be approved in
writing by Victor Viegas.
2. Compensation; Timing. Company will pay Consultant an hourly fee of
$110 for Consultant's work hereunder. Upon termination of this Agreement for any
reason, Consultant will be paid fees for any work completed by that date that
has not yet been compensated, but shall be entitled to no other compensation
from Company. Consultant will be reimbursed only for expenses which are incurred
prior to termination of this Agreement and which have been expressly and in
writing authorized by Victor Viegas or another officer of the Company.
Consultant will be reimbursed for such fees and expenses no later than thirty
(30) days after Company's receipt of Consultant's invoice, provided that
reimbursement for expenses may be delayed until such time as Consultant has
furnished such documentation for authorized expenses as Company may reasonably
request.
3. Independent Consultant Relationship. Consultant's relationship with
Company is that of an independent Consultant, and nothing in this Agreement is
intended to, or should be construed to, create a partnership, agency, joint
venture or employment relationship. Consultant will not be entitled to any of
the benefits which Company may make available to its employees, including, but
not limited to, group health or life insurance, profit-sharing or retirement
benefits or participation in patent program. Consultant is not authorized to
make any representation, contract or commitment on behalf of Company unless
specifically requested or authorized in writing to do so by a Company manager.
Consultant is solely responsible for, and will file, on a timely basis, all tax
returns and payments required to be filed with, or made to, any federal, state
or local tax authority with respect to the performance of services and receipt
of fees under this Agreement. Consultant is solely responsible for, and must
maintain adequate records of, expenses incurred in the course of performing
services under this Agreement. No part of Consultant's compensation will be
subject to withholding by Company for the payment of any social security,
federal, state or any other employee payroll taxes. Company will regularly
report amounts paid to Consultant by filing Form 1099-MISC with the Internal
Revenue Service as required by law.
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4. Intellectual Property Rights.
4.1 Disclosure and Assignment of Innovations.
(a) Innovations; Company Innovations. "Innovations" includes
processes, machines, compositions of matter, improvements, inventions (whether
or not protectable under patent laws), works of authorship, information fixed in
any tangible medium of expression (whether or not protectable under copyright
laws), moral rights, mask works, trademarks, trade names, trade dress, trade
secrets, know-how, ideas (whether or not protectable under trade secret laws),
and all other subject matter protectable under patent, copyright, moral right,
mask work, trademark, trade secret or other laws, and includes without
limitation all new or useful art, combinations, discoveries, formulae,
manufacturing techniques, technical developments, discoveries, artwork,
software, and designs. "Company Innovations" are Innovations that Consultant,
solely or jointly with others, conceives, reduces to practice, creates, derives,
develops or makes within the scope of Consultant's work for Company under this
Agreement.
(b) Disclosure and Ownership of Company Innovations. Consultant
agrees to make and maintain adequate and current records of all Company
Innovations, which records shall be and remain the property of Company.
Consultant agrees to promptly disclose to Company every Company Innovation.
Consultant hereby does and will assign to Company or Company's designee
Consultant's entire worldwide right, title and interest in and to all Company
Innovations and all associated records and intellectual property rights.
Notwithstanding the forgoing, the assignment of Company Innovations set forth in
this Agreement does not apply to an Innovation which qualifies as a
nonassignable invention under the provisions of Section 2870 of the California
Labor Code
(c) Assistance. Consultant agrees to execute upon Company's
request a signed transfer of Company Innovations to Company as reasonably
requested by Company, including but not limited to computer programs, notes,
sketches, drawings and reports. Consultant agrees to assist Company in any
reasonable manner to obtain, perfect and enforce, for Company's benefit,
Company's rights, title and interest in any and all countries, in and to all
patents, copyrights, moral rights, mask works, trade secrets, and other property
rights in each of the Company Innovations. Consultant agrees to execute, when
requested, for each of the Company Innovations (including derivative works,
improvements, renewals, extensions, continuations, divisionals, continuations in
part, or continuing patent applications thereof), (i) patent, copyright, mask
work or similar applications related to such Company Innovation, (ii)
documentation (including without limitation assignments) to permit Company to
obtain, perfect and enforce Company's right, title and interest in and to such
Company Innovation, and (iii) any other lawful documents deemed necessary by
Company to carry out the purpose of this Agreement. If called upon to render
assistance under this paragraph, Consultant will be entitled to a fair and
reasonable fee in addition to reimbursement of authorized expenses incurred at
the prior written request of Company. In the event that Company is unable for
any reason to secure Consultant's signature to any document Consultant is
required to execute under this Paragraph 4.1(c) ("Assistance"), Consultant
hereby irrevocably designates and appoints Company and Company's duly authorized
officers and agents as Consultant's agents and attorneys-in-fact to act for and
in Consultant's behalf and instead of Consultant, to execute such document with
the same legal force and effect as if executed by Consultant.
(d) Out-of-Scope Innovations. If Consultant incorporates into
any Company Innovations any Innovations relating to Company's business or
demonstrably anticipated research or development or business which were
conceived, reduced to practice or created by Consultant either outside of the
scope of Consultant's work for Company under this Agreement or prior to the
Effective Date (collectively, the "Out-of-Scope Innovations"), Consultant hereby
grants to Company or Company's designees a royalty-free, irrevocable, worldwide,
fully paid-up license (with rights to sublicense through multiple tiers of
sublicensees) to practice all applicable patent, copyright, moral right, mask
work, trade
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secret and other intellectual property rights relating to any Out-of-Scope
Innovations which Consultant incorporates, or permits to be incorporated, in any
Company Innovations. Consultant agrees that Consultant will not incorporate, or
permit to be incorporated, any Innovations conceived, reduced to practice,
created, derived, developed or made by others into any of the Company
Innovations without Company's prior written consent.
4.2 Confidential Information.
(a) Definition of Confidential Information. "Confidential
Information" as used in this Agreement shall mean any and all technical and
non-technical information including patent, copyright, trade secret, and
proprietary information, techniques, sketches, drawings, models, inventions,
know-how, processes, apparatus, equipment, algorithms, software programs,
software source documents, and formulae related to the current, future and
proposed products and services of Company, Company's suppliers and customers,
and includes, without limitation, Company Innovations, Company Property, and
Company's information concerning research, experimental work, development,
design details and specifications, engineering, financial information,
procurement requirements, purchasing manufacturing, customer lists, business
forecasts, sales and merchandising and marketing plans and information.
(b) Nondisclosure and Nonuse Obligations. Except as permitted in
this paragraph, Consultant shall neither use nor disclose the Confidential
Information. Consultant may use the Confidential Information solely to perform
services hereunder for the benefit of Company. Consultant agrees that Consultant
shall treat all Confidential Information of Company with the same degree of care
as Consultant accords to Consultant's own Confidential Information, but in no
case less than reasonable care. Consultant agrees not to communicate any
information to Company in violation of the proprietary rights of any third
party. Consultant will immediately give notice to Company of any unauthorized
use or disclosure of the Confidential Information. Consultant agrees to assist
Company in remedying any such unauthorized use or disclosure of the Confidential
Information.
(c) Exclusions from Nondisclosure and Nonuse Obligations.
Consultant's obligations under Paragraph 4.2(b) ("Nondisclosure and Nonuse
Obligations") with respect to any portion of the Confidential Information shall
not apply to any such portion which Consultant can demonstrate, (a) was, through
no fault of Consultant, in the public domain at the time such portion was
communicated to Consultant by Company; (b) was rightfully in Consultant's
possession free of any obligation of confidence at the time such portion was
communicated to Consultant by Company; or (c) was developed by Consultant
independently of and without reference to any information communicated to
Consultant by Company. A disclosure of Confidential Information by Consultant,
either (a) in response to a valid order by a court or other governmental body,
(b) otherwise required by law, or (c) necessary to establish the rights of
either party under this Agreement, shall not be considered to be a breach of
this Agreement or a waiver of confidentiality for other purposes; provided,
however, that Consultant shall provide prompt prior written notice thereof to
Company to enable Company to seek a protective order or otherwise prevent such
disclosure. Nothing in this Agreement shall be interpreted or construed as
granting a license to Consultant under Company's patents, copyrights or
trademarks, except as necessary to carry out Project Assignment(s) authorized
hereunder.
4.3 Ownership and Return of Company Property. All materials
(including, without limitation, documents, drawings, models, apparatus,
sketches, designs, lists, and all other tangible media of expression) furnished
to Consultant by Company, whether delivered to Consultant by Company or made by
Consultant in the performance of services under this Agreement (collectively,
the "Company Property") are the sole and exclusive property of Company or
Company's suppliers or customers, and Consultant hereby does and will assign to
Company all rights, title and interest Consultant may have or acquire in the
Company Property. Consultant agrees to keep all Company Property at Consultant's
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premises unless otherwise permitted in writing by Company. At Company's request
and no later than seven (7) days after such request, Consultant shall destroy or
deliver to Company, at Company's option, (a) all Company Property, (b) all
tangible media of expression in Consultant's possession or control which
incorporate or in which are fixed any Confidential Information, and (c) written
certification of Consultant's compliance with Consultant's obligations under
this sentence.
4.4 Observance of Company Rules. At all times while on Company's
premises, Consultant will observe Company's rules and regulations with respect
to conduct, health and safety and protection of persons and property.
5. No Conflict of Interest. During the term of this Agreement,
Consultant will not accept work, enter into a contract, or accept an obligation,
inconsistent or incompatible with Consultant's obligations, or the scope of
Services rendered for Company, under this Agreement. Consultant warrants that,
to the best of Consultant's knowledge, there is no other contract or duty on
Consultant's part which conflicts with or is inconsistent with this Agreement.
Consultant agrees to indemnify Company from any and all loss or liability
incurred by reason of the alleged breach by Consultant of any obligation owed by
Consultant to any third party. The Company hereby acknowledges and agrees that
Consultant is serving as a director of the Humane Society Silicon Valley and
MicroScribe LLC and that these affiliations do not constitute a conflict of
interest under this Agreement.
6. Term and Termination.
6.1 Term. This Agreement is effective as of the Effective Date set
forth above and will have an initial term of eighteen (18) months, subject to
renewal for additional ninety (90) day periods upon mutual agreement of the
Company and Consultant.
6.2 Termination by Company. The Company may terminate this Agreement
fifteen (15) days after the Company's delivery to Consultant of written notice
of Consultant's material breach of any other provision or obligation owed by
Consultant under this Agreement which is not cured within such fifteen (15) day
period.
6.3 Termination by Consultant. Consultant may terminate this
Agreement fifteen (15) days after Consultant's delivery to the Company of
written notice of the Company's material breach of any other provision or
obligation owed by the Company under this Agreement which is not cured within
such fifteen (15) day period.
7. Survival. The definitions contained in this Agreement and the rights
and obligations contained in Sections 4.1, 4.2 and 4.3 (Intellectual Property
Rights)(""), 7 ("Survival") and 8 ("General Provisions") will survive any
termination or expiration of this Agreement.
8. General Provisions.
8.1 Successors and Assigns. Consultant may not subcontract or
otherwise delegate Consultant's obligations under this Agreement without
Company's prior written consent. Subject to the foregoing, this Agreement will
be for the benefit of Company's successors and assigns, and will be binding on
Consultant's assignees.
8.2 Notices. Any notice required or permitted by this Agreement
shall be in writing and shall be delivered as follows, with notice deemed given
as indicated: (a) by personal delivery, when delivered personally; (b) by
overnight courier, upon written verification of receipt; (c) by telecopy or
facsimile transmission, upon acknowledgment of receipt of electronic
transmission; or (d) by certified or
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registered mail, return receipt requested, upon verification of receipt. Notice
shall be sent to the addresses set forth above or to such other address as
either party may specify in writing.
8.3 Governing Law. This Agreement shall be governed in all respects
by the laws of the United States of America and by the laws of the State of
California, as such laws are applied to agreements entered into and to be
performed entirely within California between California residents. Each of the
parties irrevocably consents to the exclusive personal jurisdiction of the
federal and state courts located in the State of California, as applicable, for
any action brought to enforce the terms of this Agreement, except that in
actions seeking to enforce any order or any judgment of such federal or state
courts located in Maryland, such personal jurisdiction shall be nonexclusive.
8.4 Severability. If any provision of this Agreement is held by a
court of law to be illegal, invalid or unenforceable, (i) that provision shall
be deemed amended to achieve as nearly as possible the same economic effect as
the original provision, and (ii) the legality, validity and enforceability of
the remaining provisions of this Agreement shall not be affected or impaired
thereby.
8.5 Waiver; Amendment; Modification. No term or provision hereof
will be considered waived by Company, and no breach excused by Company, unless
such waiver or consent is in writing signed by Company. The waiver by Company
of, or consent by Company to, a breach of any provision of this Agreement by
Consultant, shall not operate or be construed as a waiver of, consent to, or
excuse of any other or subsequent breach by Consultant. This Agreement may be
amended or modified only by mutual agreement of authorized representatives of
the parties in writing.
8.6 Injunctive Relief for Breach. Consultant's obligations under
Section 4 of this Agreement are of a unique character that gives them particular
value. Consultant's breach of any of such obligations will result in irreparable
and continuing damage to Company for which there will be no adequate remedy at
law; and, in the event of such breach, Company will be entitled to seek
injunctive relief and/or a decree for specific performance, and such other and
further relief as may be proper (including monetary damages if appropriate).
8.7 Entire Agreement; Prior Employment Agreement. This Agreement
constitutes the entire agreement between the parties relating to this subject
matter and supersedes all prior or contemporaneous oral or written agreements
concerning such subject matter. The terms of this Agreement will govern all
services undertaken by the Consultant for the Company after the Effective Date.
The Company and Consultant agree that this Agreement supercedes and replaces the
Employment Agreement dated June 22, 2001 which is hereby terminated and
cancelled such that there is no break in service. This agreement expressly does
not supercede the Indemnity Agreement dated November 9, 1999.
8.8 Options. The Company hereby acknowledges and agrees that (i) all
of the option shares granted to Consultant pursuant to options nos. 000250,
000990, 001248 and 001249 under the Company's Amended 1997 Stock Option Plan
(the "1997 Plan") shall become fully vested on the Effective Date and (ii) all
options granted to Consultant under the 1997 Plan shall remain outstanding and
termination of Consultant's Service (as defined in the 1997 Plan) under those
options shall not be deemed to have occurred until termination of this
Agreement; provided, however, Consultant acknowledges and agrees that the
unvested portion of option nos. 000446, 000974 and 000975 granted under the 1997
Plan shall terminate and no longer be exercisable as of the Effective Date.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first written above.
IMMERSION CORPORATION. LOUIS ROSENBERG
By:______________________________________ By:___________________________
Name:____________________________________ Name: Louis Rosenberg
Title: __________________________________
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