UNITED STATES

SECURITIES AND EXCHANGE COMMISSION

Washington, D.C. 20549

 

FORM 8-K

 

CURRENT REPORT

 

Pursuant to Section 13 or Section 15(d) of the Securities Exchange Act of 1934

 

Date of Report (Date of Earliest Event Reported): February 4, 2021

 

Crown Electrokinetics Corp.

(Exact name of registrant as specified in its charter)

 

Delaware   333-249833   47-5423944

(State or other jurisdiction

of incorporation)

 

(Commission

File Number)

 

(IRS Employer

Identification No.)

 

1110 NE Circle Blvd.

Corvallis, Oregon 97330

(Address of Principal Executive Offices)

 

(800) 674-3612

(Registrant’s telephone number)

 

Check the appropriate box below if the Form 8-K filing is intended to simultaneously satisfy the filing obligation to the registrant under any of the following provisions:

 

Written communications pursuant to Rule 425 under the Securities Act (17 CFR 230.425)

 

Soliciting material pursuant to Rule 14a-12 under the Exchange Act (17 CFR 240.14a-12)

 

Pre-commencement communications pursuant to Rule 14d-2(b) under the Exchange Act (17 CFR 240.14d-2(b))

 

Pre-commencement communications pursuant to Rule 13e-4(c) under the Exchange Act (17 CFR 240.13e-4(c))

 

Indicate by check mark whether the registrant is an emerging growth company as defined in Rule 405 of the Securities Act of 1933 (§230.405 of this chapter) or Rule 12b-2 of the Securities Exchange Act of 1934 (§240.12b-2 of this chapter).

 

Emerging growth company ☒

 

If an emerging growth company, indicate by check mark if the registrant has elected not to use the extended transition period for complying with any new or revised financial accounting standards provided pursuant to Section 13(a) of the Exchange Act. ☐

 

Securities registered pursuant to Section 12(b) of the Act:

 

Title of each class   Trading Symbol(s)   Name of each exchange on which
registered
Common Stock, $0.0001 par value   CRKN   NASDAQ Capital Market

  

 

 

 

 

Item 1.01 Entry into a Material Definitive Agreement

 

On February 4, 2021, Crown Electrokinetics Corp., a Delaware corporation (the “Company”) entered into a Fourth Amendment to the Intellectual Property Agreement (the “HP Amendment”) with Hewlett-Packard Development Company, L.P., a Texas limited partnership (“HPDC”) and HP, Inc., a Delaware corporation (“HPI” and, together with HPDC, “HP”). Pursuant to the HP Amendment, among other items, the parties agreed to amend the list of patent and patent applications, which includes two additional patents (the “HP Patents”) that are assignable to the Company by HP upon the exercise of the Company’s option to acquire the HP Patents (the “Option”). In connection with the Company’s exercise of the Option, the Company paid HP an aggregate amount equal to One Million Five Hundred Fifty Thousand Dollars ($1,550,000) on February 9, 2021. From the date of the exercise of the Option until January 1, 2030, the Company agreed to pay to HP a royalty fee based on the cumulative gross revenue received by the Company from the HP Patents as follows:

 

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

  

The foregoing summary of the HP Amendment is qualified in its entirety by reference to the full text of the HP Amendment, a copy of which is attached as Exhibit 10.1 to this Current Report on Form 8-K and is incorporated herein by reference.

  

Item 9.01. Financial Statements and Exhibits

 

Exhibit No.   Description
     
10.1   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.

 

1

 

 

SIGNATURES

 

Pursuant to the requirements of the Securities Exchange Act of 1934, the Registrant has duly caused this report to be signed on its behalf by the undersigned hereunto duly authorized.

 

Dated: February 10, 2021

 

  Crown Electrokinetics Corp.
     
  By: /s/ Doug Croxall
  Name:  Doug Croxall
  Title: Chief Executive Officer

 

 

2

 

 

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:

 

2.4 Covenant 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:

 

4.2 Assignment.

 

4.2.1 Company 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”).

 

4.2.2 If 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:

 

5.1 Retained 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:

 

8.3 Termination 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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