Nevada
|
01-0949984
|
|
(State or other jurisdiction of Incorporation or organization)
|
(I.R.S. Employer Identification No.)
|
2331 Mill Road, Suite 100, Alexandria, VA
|
22314
|
|
(Address of principal executive offices)
|
(Zip Code)
|
Page
|
||
PART I
|
||
Item 1.
|
1 | |
Item 1A.
|
5 | |
Item 2.
|
16 | |
Item 3.
|
16 | |
Item 4.
|
16 | |
PART II
|
||
Item 5.
|
17 | |
Item 6.
|
20 | |
Item 7.
|
21 | |
Item 8.
|
F-1 | |
Item 9.
|
29 | |
Item 9A.
|
29 | |
Item 9B.
|
30 | |
PART III
|
||
Item 10.
|
30 | |
Item 11.
|
34 | |
Item 12.
|
38 | |
Item 13.
|
40 | |
Item 14.
|
42 | |
PART IV
|
||
Item 15.
|
43 |
·
|
Patents describing collaborative systems that entail centralized communication methods for storing information and pushing notifications to group participants;
|
·
|
Patents that provide the right to practice specific transactional data processing, telecommunications, network and database inventions, including financial transactions;
|
·
|
Patents that enable multicasting on Internet protocol networks;
|
·
|
Patents relating to performance enhancement features and enabling technology within switching communication terminal equipment, and in Private Branch Exchanges (PBXs) in a communication network;
|
·
|
Patents relating to a wide range of technologies including processor architecture in the mobile device marketplace;
|
·
|
Patents relating to process automation in the production and resource planning space (ERP) although the patents and their associated claims show a clear relationship with other fields of use;
|
·
|
Patents that cover key enabling wireless technologies including the transfer of active session among devices and web content transformation into formats compatible with destination devices;
|
·
|
Patents related to the automotive and related industries in the areas of occupant restraint and safety systems as well as automotive centric communications methodologies including sensing and detection technologies; and
|
·
|
Patents related to frame relay technologies.
|
● |
There is a significant time lag between acquiring a patent portfolio and recognizing revenue from those patent assets. During that time lag, substantial amounts of costs are likely to be incurred that could have a negative effect on our results of operations, cash flows and financial position; and
|
● |
The monetization of a patent portfolio will be a time consuming and expensive process that may disrupt our operations. If our monetization efforts are not successful, our results of operations could be harmed. In addition, we may not achieve anticipated synergies or other benefits from such acquisition.
We may encounter unforeseen difficulties with our business or operations in the future that may deplete our capital resources more rapidly than anticipated. As a result, we may be required to obtain additional working capital in the future through public or private debt or equity financings, borrowings or otherwise. If we are required to raise additional working capital in the future, such financing may be unavailable to us on favorable terms, if at all, or may be dilutive to our existing stockholders. If we fail to obtain additional working capital, as and when needed, such failure could have a material adverse impact on our business, results of operations and financial condition.
|
●
|
our inability to enter into a definitive agreement with respect to any potential acquisition, or if we are able to enter into such agreement, our inability to consummate the potential acquisition;
|
●
|
difficulty integrating the operations, technology and personnel of the acquired entity;
|
●
|
our inability to achieve the anticipated financial and other benefits of the specific acquisition;
|
●
|
difficulty in maintaining controls, procedures and policies during the transition and monetization process;
|
●
|
diversion of our management’s attention from other business concerns; and
|
●
|
failure of our due diligence process to identify significant issues, including issues with respect to patented technologies and patent portfolios, and other legal and financial contingencies.
|
● |
our patent applications, trademarks and copyrights may not be granted and, if granted, may be challenged or invalidated;
|
● |
issued trademarks, copyrights, or patents may not provide us with any competitive advantages when compared to potentially infringing other properties;
|
● |
our efforts to protect our intellectual property rights may not be effective in preventing misappropriation of our technology; or
|
● |
our efforts may not prevent the development and design by others of products or technologies similar to or competitive with, or superior to those we acquire and/or prosecute.
|
•
|
changes in our industry;
|
•
|
competitive pricing pressures;
|
•
|
our ability to obtain working capital financing;
|
•
|
additions or departures of key personnel;
|
•
|
sales of our common stock;
|
•
|
our ability to execute our business plan;
|
•
|
operating results that fall below expectations;
|
•
|
loss of any strategic relationship;
|
•
|
regulatory developments; and
|
•
|
economic and other external factors.
|
ITEM 5. MARKET FOR REGISTRANT’S COMMON EQUITY, RELATED STOCKHOLDER MATTERS AND ISSUER PURCHASES OF EQUITY SECURITIES.
|
High
|
Low
|
|||||||
Fiscal 2014 | ||||||||
First quarter through March 28, 2014 | $ | 7.39 | $ | 5.55 | ||||
Fiscal 2013 | ||||||||
First Quarter
|
$ | 11.05 | $ | 3.38 | ||||
Second Quarter
|
6.50 | 3.90 | ||||||
Third Quarter
|
7.94 | 4.16 | ||||||
Fourth Quarter
|
6.80 | 4.42 | ||||||
Fiscal 2012
|
||||||||
First Quarter
|
- | - | ||||||
Second Quarter
|
$ | 14.95 | $ | 6.50 | ||||
Third Quarter
|
13.13 | 3.77 | ||||||
Fourth Quarter
|
13.00 | 6.63 |
Equity Compensation Plan Information
|
Plan category
|
Number of securities to
be issued upon exercise
of outstanding options,
warrants and rights
|
Weighted-average
exercise price of
outstanding options,
warrants and rights
|
Number of securities
remaining available for
future issuance under
equity compensation
plans (excluding
securities reflected in
column (a)
|
|||||||
Equity compensation plans approved by security holders
|
676,538
|
$
|
5.79
|
92,693
|
||||||
Equity compensation plans not approved by security holders
|
803,846 |
$
|
5.88 | - | ||||||
Total
|
1,480,384
|
$
|
5.85
|
92,693
|
F-2
|
|
F-3
|
|
F-4
|
|
F-5
|
|
F-6
|
|
F-7
|
|
F-8 to F-33
|
|
December 31, 2013
|
December 31, 2012
|
|||||||
ASSETS
|
||||||||
Current assets:
|
||||||||
Cash
|
$ | 3,610,262 | $ | 2,354,169 | ||||
Accounts receivable - net
|
270,000 | - | ||||||
Marketable securities - available for sale securities
|
6,250 | 12,500 | ||||||
Prepaid expenses and other current assets
|
752,931 | 40,333 | ||||||
Assets of discontinued operations - current portion
|
- | 82,145 | ||||||
Total current assets
|
4,639,443 | 2,489,147 | ||||||
Other assets:
|
||||||||
Property and equipment, net
|
13,640 | - | ||||||
Intangible assets, net
|
6,157,659 | 492,152 | ||||||
Goodwill
|
2,144,488 | - | ||||||
Assets of discontinued operations - long term portion
|
- | 1,035,570 | ||||||
Total other assets
|
8,315,787 | 1,527,722 | ||||||
Total Assets
|
$ | 12,955,230 | $ | 4,016,869 | ||||
LIABILITIES AND STOCKHOLDERS' EQUITY
|
||||||||
Current liabilities:
|
||||||||
Accounts payable and accrued expenses
|
$ | 754,945 | $ | 57,158 | ||||
Liabilities of discontinued operations
|
30,664 | 30,664 | ||||||
Total liabilities
|
785,609 | 87,822 | ||||||
Stockholders' Equity:
|
||||||||
Preferred stock, $.0001 par value, 50,000,000 shares
authorized: none issued and outstanding
|
- | - | ||||||
Common stock, ($.0001 par value; 200,000,000 shares authorized;
5,489,593 and 3,503,565 issued and outstanding at December 31, 2013 and December 31, 2012
|
549 | 352 | ||||||
Additional paid-in capital
|
22,673,287 | 10,976,325 | ||||||
Accumulated other comprehensive loss - marketable securities available for sale
|
(6,250 | ) | - | |||||
Accumulated deficits
|
(10,487,469 | ) | (7,037,134 | ) | ||||
Total Marathon Patent Group, Inc. equity
|
12,180,117 | 3,939,543 | ||||||
Non-controlling interest in subsidiary
|
(10,496 | ) | (10,496 | ) | ||||
Total stockholders' equity
|
12,169,621 | 3,929,047 | ||||||
Total liabilities and stockholders' equity
|
$ | 12,955,230 | $ | 4,016,869 | ||||
For the year ended
|
For the year ended
|
|||||||
December 31, 2013
|
December 31, 2012
|
|||||||
Revenue
|
$ | 3,418,371 | $ | - | ||||
Operating expenses
|
||||||||
Direct costs of revenue
|
957,040 | - | ||||||
Amortization of patents
|
1,038,505 | 8,773 | ||||||
Compensation and related taxes
|
2,997,053 | 2,676,462 | ||||||
Consulting fees
|
901,686 | 2,042,144 | ||||||
Professional fees
|
655,202 | 510,112 | ||||||
General and administrative
|
544,338 | 303,471 | ||||||
Total operating expenses
|
7,093,824 | 5,540,962 | ||||||
Operating loss from continuing operations
|
(3,675,453 | ) | (5,540,962 | ) | ||||
Other income (expenses)
|
||||||||
Other income
|
- | 125,000 | ||||||
Realized loss other than temporary decline - available for sale | (38,819 | ) | (112,500 | ) | ||||
Interest income
|
1,552 | 978 | ||||||
Interest expense
|
(1,075 | ) | (153 | ) | ||||
Total other income (expenses)
|
(38,342 | ) | 13,325 | |||||
Loss from continuing operations before provision for income taxes | (3,713,795 | ) | (5,527,637 | ) | ||||
Provision for income taxes
|
- | - | ||||||
Loss from continuing operations
|
(3,713,795 | ) | (5,527,637 | ) | ||||
Discontinued operations:
|
||||||||
Income (loss) from discontinued operations, net of tax
|
263,460 | (1,410,671 | ) | |||||
Net loss
|
(3,450,335 | ) | (6,938,308 | ) | ||||
Less: Net loss attributable to non-controlling interest
|
- | 10,496 | ||||||
Net loss attributable to Marathon Patent Group, Inc.
|
$ | (3,450,335 | ) | $ | (6,927,812 | ) | ||
Loss per common share, basic and diluted:
|
||||||||
Loss from continuing operations
|
$ | (0.81 | ) | $ | (1.98 | ) | ||
Loss from discontinued operations
|
0.06 | (0.51 | ) | |||||
$ | (0.75 | ) | $ | (2.49 | ) | |||
WEIGHTED AVERAGE COMMON SHARES
OUTSTANDING - Basic and Diluted
|
4,604,193 | 2,787,593 |
For the year ended
|
For the year ended
|
|||||||
December 31, 2013
|
December 31, 2012
|
|||||||
Net loss attributable to Marathon Patent Group, Inc.
|
$ | (3,450,335 | ) | $ | (6,927,812 | ) | ||
Other comprehensive loss: | ||||||||
Unrealized loss on investment securities, available for sale
|
(6,250 | ) | - | |||||
Comprehensive loss attributable to Marathon Patent Group, Inc.
|
$ | (3,456,585 | ) | $ | (6,927,812 | ) |
Common Stock
$0.0001 Par Value
|
Additional
Paid-in
|
Accumulated
|
Accumulated
Other
|
Non-Controlling
|
Total
Stockholders'
|
|||||||||||||||||||||||
Shares
|
Amount
|
Capital
|
Deficit
|
Income
|
Interest
|
Equity (Deficit)
|
||||||||||||||||||||||
Balance at January 1, 2012
|
769,231 | $ | 77 | $ | 4,923 | $ | (109,322 | ) | $ | - | $ | - | $ | (104,322 | ) | |||||||||||||
Recapitalization of the Company
|
576,923 | 58 | 3,342 | - | - | - | 3,400 | |||||||||||||||||||||
Common stock issued for cash
|
1,034,613 | 103 | 6,511,862 | - | - | - | 6,511,965 | |||||||||||||||||||||
Common stock issued for advance payable
|
15,385 | 2 | 99,998 | - | - | - | 100,000 | |||||||||||||||||||||
Common stock issued for legal services
|
28,846 | 3 | 164,997 | - | - | - | 165,000 | |||||||||||||||||||||
- | ||||||||||||||||||||||||||||
Common stock issued pursuant to an option agreement
|
769,231 | 77 | 923 | - | - | - | 1,000 | |||||||||||||||||||||
Common stock issued for compensation
|
6,401 | 1 | 33,286 | - | - | - | 33,287 | |||||||||||||||||||||
Common stock issued for exercise of warrants on a cashless basis
|
345,756 | 35 | (35 | ) | - | - | - | - | ||||||||||||||||||||
- | ||||||||||||||||||||||||||||
Common stock issued for acquisition of patents
|
711,538 | 71 | 854 | - | - | - | 925 | |||||||||||||||||||||
Stock-based compensation in connection with warrants granted to employees and consultants
|
- | - | 4,238,100 | - | - | - | 4,238,100 | |||||||||||||||||||||
Cancellation of common stock in connection with rescission agreement
|
(754,359 | ) | (75 | ) | (131,925 | ) | - | - | - | (132,000 | ) | |||||||||||||||||
Proceeds from disgorgement of former officer short swing profits
|
- | - | 50,000 | - | - | - | 50,000 | |||||||||||||||||||||
Net loss
|
- | - | - | (6,927,812 | ) | - | (10,496 | ) | (6,938,308 | ) | ||||||||||||||||||
Balance at December 31, 2012
|
3,503,565 | 352 | 10,976,325 | (7,037,134 | ) | - | (10,496 | ) | 3,929,047 | |||||||||||||||||||
Common stock issued for cash
|
1,158,654 | 115 | 5,777,481 | - | - | - | 5,777,596 | |||||||||||||||||||||
Common stock issued in the acquisition of Cyberfone
|
461,538 | 46 | 2,279,954 | - | - | - | 2,280,000 | |||||||||||||||||||||
Common stock issued for the acquisition of patents
|
150,000 | 15 | 718,485 | - | - | - | 718,500 | |||||||||||||||||||||
Common stock issued for legal services
|
10,076 | 1 | 59,619 | - | - | - | 59,620 | |||||||||||||||||||||
Common stock issued for services
|
205,760 | 20 | 1,051,215 | - | - | 1,051,235 | ||||||||||||||||||||||
Stock based compensation in connection with warrants issued to employees and consultants
|
- | - | 117,796 | - | - | - | 117,796 | |||||||||||||||||||||
Stock based compensation in connection with a restricted stock unit issued to a consultant
|
- | - | 570,000 | - | - | - | 570,000 | |||||||||||||||||||||
Stock based compensation in connection with options issued to employees and consultants
|
- | - | 1,122,412 | - | - | - | 1,122,412 | |||||||||||||||||||||
Other comprehensive loss - marketable securities available for sale
|
- | - | - | - | (6,250 | ) | - | (6,250 | ) | |||||||||||||||||||
Net loss
|
- | - | - | (3,450,335 | ) | - | - | (3,450,335 | ) | |||||||||||||||||||
Balance at December 31, 2013
|
5,489,593 | $ | 549 | $ | 22,673,287 | $ | (10,487,469 | ) | $ | (6,250 | ) | $ | (10,496 | ) | $ | 12,169,621 |
Level 1:
|
Observable inputs such as quoted market prices in active markets for identical assets or liabilities
|
|||
Level 2:
|
Observable market-based inputs or unobservable inputs that are corroborated by market data
|
|||
Level 3:
|
Unobservable inputs for which there is little or no market data, which require the use of the reporting entity’s own assumptions.
|
Fair Value Measurements Using:
|
||||||||||||
Quoted Prices
in Active
Markets
(Level 1)
|
Significant
Other
Observable
Inputs
(Level 2)
|
Significant
Unobservable
Inputs
(Level 3)
|
||||||||||
Marketable securities – available for sale, net of discount for effect of the lack of registration of the securities
|
$ | - | $ | - | $ | 12,500 |
For the year ended
December 31, 2013
|
For the year ended
December 31, 2012
|
|||||||
Numerator:
|
||||||||
Loss from continuing operations
|
$ | (3,713,795 | ) | $ | (5,527,637 | ) | ||
Income (loss) from discontinued operations
|
$ | 263,460 | $ | (1,410,671 | ) | |||
Denominator:
|
||||||||
Denominator for basic and diluted loss per share (weighted-average shares)
|
4,604,193 | 2,787,593 | ||||||
Income (loss) per common share, basic and diluted:
|
||||||||
Loss from continuing operations
|
$ | (0.81 | ) | $ | (1.98 | ) | ||
Income (loss) from discontinued operations
|
$ | 0.06 | $ | (0.51 | ) |
1.
|
Significant underperformance relative to expected historical or projected future operating results;
|
|
2.
|
Significant changes in the manner of use of the acquired assets or the strategy for the overall business; and
|
|
3.
|
Significant negative industry or economic trends.
|
Intangible assets
|
$
|
1,135,512
|
||
Goodwill
|
2,144,488
|
|||
Net purchase price
|
$
|
3,280,000
|
For the year ended December 31, 2013
|
For the year ended December 31, 2012
|
|||||||
Pro forma revenues
|
$
|
9,318,371
|
$
|
8,184,950
|
||||
Pro forma income (loss) from operations
|
(809,760
|
) |
(2,376,224
|
)
|
||||
Pro forma net income (loss)
|
(848,102
|
) |
(2,362,899
|
)
|
||||
Pro forma income (loss) per share
|
$
|
(0.18
|
) |
$
|
(0.73
|
)
|
||
Pro forma diluted income (loss) per share
|
$
|
(0.18
|
) |
$
|
(0.73
|
)
|
December 31,
2013
|
December 31,
2012
|
|||||||
Assets:
|
||||||||
Deposits in real estate under contract
|
$ | - | $ | 82,145 | ||||
- | - | |||||||
Real estate held for sale
|
- | 1,035,570 | ||||||
Assets of discontinued operations
|
$ | - | $ | 1,117,715 | ||||
Liabilities:
|
||||||||
Accounts payables and accrued expenses
|
30,664 | 30,664 | ||||||
Liabilities of discontinued operations
|
$ | 30,664 | $ | 30,664 |
For the year ended December
31, 2013
|
For the year ended December
31, 2012
|
|||||||
Revenues – real estate
|
$
|
1,270,916
|
$
|
724,090
|
||||
Cost of sales – real estate
|
(1,064,320
|
)
|
(
576,126
|
) | ||||
Gross profit
|
206,596
|
147,964
|
||||||
Operating and other non-operating expenses
|
(111,352
|
)
|
(1,558,635
|
) | ||||
Gain on sale of assets of discontinued operations
|
168,216
|
-
|
||||||
Income (loss) from discontinued operations
|
$
|
263,460
|
$
|
(1,410,671
|
)
|
December 31, 2013
|
December 31, 2012
|
Weighted average
amortization period
(years)
|
|||||||
Patents
|
$
|
7,204,937
|
$
|
500,925
|
3.78
|
||||
Less: accumulated amortization
|
(1,047,278
|
) |
(8,773
|
) | |||||
$
|
6,157,659
|
$
|
492,152
|
2014
|
$
|
1,719,105
|
||
2015
|
1,484,209
|
|||
2016
|
944,035
|
|||
2017
|
639,626
|
|||
2018
|
379,691
|
|||
2019 and thereafter
|
990,993
|
|||
Total
|
$
|
6,157,659
|
|
Number of Warrants
|
Weighted Average Exercise Price
|
Weighted Average Remaining Contractual Life (Years)
|
|||||||||
Balance at December 31, 2012
|
199,162
|
$
|
7.02
|
6.52
|
||||||||
Granted
|
582,175
|
6.50
|
2.46
|
|||||||||
Cancelled
|
-
|
-
|
-
|
|||||||||
Forfeited
|
(73,077
|
)
|
6.50
|
8.08
|
||||||||
Exercised
|
-
|
-
|
-
|
|||||||||
Balance at December 31, 2013
|
708,260
|
$
|
6.66
|
2.74
|
||||||||
Warrants exercisable at December 31, 2013
|
680,055
|
$
|
6.66
|
|||||||||
Weighted average fair value of warrants granted during the period ended December 31, 2013
|
$
|
6.50
|
Number of Options
|
Weighted Average Exercise Price
|
Weighted Average Remaining Contractual Life (Years)
|
||||||||||
Balance at December 31, 2012
|
153,846
|
6.50
|
9.87
|
|||||||||
Granted
|
1,309,230
|
5.74
|
4.98
|
|||||||||
Exercised
|
-
|
-
|
-
|
|||||||||
Forfeited
|
(9,615)
|
11.05
|
-
|
|||||||||
Cancelled
|
(115,384)
|
11.05
|
- | |||||||||
Balance outstanding at December 31, 2013
|
1,338,076
|
$
|
5.83
|
5.21
|
||||||||
Options exercisable at December 31, 2013
|
145,192,
|
$
|
5.97
|
7.15
|
||||||||
Options expected to vest
|
1,192,885
|
|||||||||||
Weighted average fair value of options granted during the period
|
$
|
3.88
|
2014
|
$ | 36,981 |
2015
|
66,300 |
2016
|
69,216 |
2017
|
72,324 |
2018
|
75,648 |
Total
|
$ | 320,469 |
December 31,
2013
|
December 31,
2012
|
|||||||
Tax benefit computed at "expected" statutory rate
|
$
|
(1,173,114
|
) |
$
|
(2,359,025
|
)
|
||
State income taxes, net of benefit
|
(79,110
|
) |
(60,884
|
)
|
||||
Permanent differences :
|
||||||||
Impairment expense
|
-
|
437,324
|
||||||
Stock based compensation and consulting
|
381,620
|
1,508,371
|
||||||
Other permanent differences
|
(50,892
|
) |
(681
|
)
|
||||
Timing differences | ||||||||
Amortization of patents and other
|
304,435
|
-
|
||||||
Increase in valuation allowance
|
617,061
|
474,895
|
||||||
Net income tax benefit
|
$
|
-
|
$
|
-
|
December 31, 2013
|
December 31, 2012
|
|||||||
Computed "expected" tax expense (benefit)
|
(34.0 | )% | (34.0 | )% | ||||
State income taxes
|
(5.0 | )% | (5.0 | )% | ||||
Permanent differences
|
14.0 | % | 31.0 | % | ||||
Timing differences
|
13.0 | % |
-
|
|||||
Change in valuation allowance
|
12.0 | % | 8.0 | % | ||||
Effective tax rate
|
0.0 | % | 0.0 | % |
Deferred tax assets:
|
December 31, 2013
|
December 31, 2012
|
||||||
Total deferred tax assets
|
$
|
1,095,797
|
$
|
478,736
|
||||
Less: valuation allowance
|
(1,095,797
|
)
|
(478,736
|
)
|
||||
Net deferred tax asset
|
$
|
-
|
$
|
-
|
Name and Address
|
Age
|
Date First Elected or Appointed
|
Position(s)
|
|||
Doug Croxall
|
45 |
November 14, 2012
|
Chief Executive Officer and Chairman
|
|||
Richard Raisig
|
66 |
December 3, 2013
|
Chief Financial Officer
|
|||
John Stetson
|
28 |
June 26, 2012
|
Executive Vice President, Secretary and Director
|
|||
James Crawford
|
39 |
March 1, 2013
|
Chief Operating Officer
|
|||
Stuart Smith
|
54 |
January 26, 2012
|
Director
|
|||
Craig Nard
|
48 |
March 8, 2013
|
Director
|
|||
William Rosellini
|
34 |
March 8, 2013
|
Director
|
·
|
Erich Spangenberg is late in filing a Form 4 to report 1 transaction,
|
·
|
James Crawford is late in filing a Form 3 and a Form 4 to report 1 transaction,
|
·
|
Craig Nard is late in filing a Form 4 to report 1 transaction, and
|
·
|
Stuart Smith is late in filing a Form 3.
|
Name and Principal
Position
|
Year
|
Salary
|
Bonus
Awards
|
Stock
Awards
|
Other Incentive
Compensation
|
Non-Equity
Plan
Compensation
|
Nonqualified
Deferred
Earnings
|
All
Other
Compensation
|
Total
|
||||||||||||||||||||||
($)
|
($)
|
($)
|
($)
|
($)
|
($)
|
($)
|
($)
|
||||||||||||||||||||||||
Doug Croxall
CEO and Chairman
|
2013 2012 | 363,333 40,385 |
350,000
-
|
-
-
|
902,692 968,600 |
-
-
|
-
-
|
-
-
|
1,616,025
1,008,985
|
||||||||||||||||||||||
Richard Raisig
CFO
|
2013 2012 |
19,791
-
|
-
-
|
|
-
-
|
511,036
-
|
-
-
|
-
-
|
-
-
|
530,827
-
|
|||||||||||||||||||||
James Crawford
COO
|
2013 2012 |
221,408
-
|
-
-
|
-
-
|
366,677
-
|
-
-
|
-
-
|
-
-
|
588,085
-
|
||||||||||||||||||||||
John Stetson
(1)
Executive Vice President, Secretary and Former CFO
|
2013 2012 | 79,583 8,654 |
-
-
|
405,000 33,287 |
284,750
- |
(3)
|
-
-
|
-
-
|
-
-
|
769,333 41,941 | |||||||||||||||||||||
Nathaniel Bradley
(5)
Former CTO
|
2013 2012 |
148,125
-
|
-
-
|
-
-
|
517,200
-
|
-
-
|
-
-
|
-
-
|
665,325
-
|
||||||||||||||||||||||
Mark Groussman
(2)
Former CEO
|
2013 2012 |
-
44,384
|
-
-
|
-
-
|
-
-
|
(4) |
-
-
|
-
- |
-
-
|
-
44,384
|
Name
|
Fees earned or paid in cash
($)
|
Stock awards
($)
|
Warrant awards
($)
|
Non-equity incentive plan
compensation
($)
|
Nonqualified deferred
compensation earnings
($)
|
All other compensation
($)
|
Total
($)
|
|||||||||||||||||||||
Stuart Smith
2013
2012
|
-
-
|
101,250
-
|
-
124,725
|
-
-
|
-
-
|
-
-
|
101,250
124,725
|
|||||||||||||||||||||
Craig Nard
2013
2012
|
-
-
|
-
-
|
-
-
|
-
-
|
-
-
|
62,863
-
|
62,863
-
|
|||||||||||||||||||||
William Rosellini
2013
2012
|
-
-
|
-
-
|
-
-
|
-
-
|
-
-
|
62,863
- |
62,863
- |
|||||||||||||||||||||
David Rector
(1)
2013
2012
|
-
-
|
-
-
|
-
124,725
|
-
-
|
-
-
|
-
-
|
-
124,725
|
|||||||||||||||||||||
Joshua Bleak
(2)
2013
2012
|
-
-
|
-
-
|
-
349,230
|
-
-
|
-
-
|
-
-
|
-
349,230
|
Option awards
|
Stock awards
|
|||||||||||||||||||
Name
|
Number of securities underlying unexercised options
(#) exercisable
|
Number of securities
underlying
unexercised
options
(#) unexercisable
|
Equity
incentive
plan awards: Number of
securities
underlying
unexercised
unearned
options
(#)
|
Option
exercise price
($)
|
Option expiration date
|
Number of shares or units of stock that have not vested
(#)
|
Market value of shares of units of stock that have not vested
($)
|
Equity
incentive
plan awards: Number of
unearned
shares, units or other rights that have not vested
(#)
|
Equity
incentive
plan awards: Market or payout value of
unearned
shares, units or other rights that have not vested
($)
|
|||||||||||
Doug Croxall
|
83,333
|
70,513
|
-
|
6.50
|
11/14/22
|
- | - | - | - | |||||||||||
Doug Croxall
|
38,462
|
115,385
|
-
|
5.27
|
06/11/18
|
- | - | - | - | |||||||||||
Doug Croxall
|
4,167
|
95,833
|
-
|
5.93
|
11/18/23
|
- | - | - | - | |||||||||||
Richard Raisig
|
-
|
115,000
|
-
|
5.70
|
12/03/23
|
- | - | - | - | |||||||||||
John Stetson
|
-
|
38,462
|
-
|
6.50
|
01/28/23
|
- | - | - | - | |||||||||||
James Crawford
|
9,615
|
28,846
|
-
|
4.94
|
06/19/18
|
- | - | - | - |
ITEM 12. SECURITY OWNERSHIP OF CERTAIN BENEFICIAL OWNERS AND MANAGEMENT AND
RELATED
STOCKHOLDER MATTERS
|
Amount and Nature of Beneficial Ownership
(1)
|
||||||||||||||||||||
Name and Address of
Beneficial Owner
|
Common
Stock
|
Options
|
Warrants
|
Total
|
Percentage of
Common
Stock (%)
|
|||||||||||||||
Officers and Directors
|
||||||||||||||||||||
Doug Croxall (Chairman and CEO)
|
307,692
|
|
210,886
|
|
0
|
518,578
|
9.10
|
%
|
||||||||||||
John Stetson
(EVP, Secretary and Director)
|
180,824
|
(4)
|
12,820
|
(5)
|
3,201
|
(6)
|
196,845
|
3.58
|
%
|
|||||||||||
Richard Raisig
|
0
|
28,746
|
(14)
|
0
|
28,746
|
*
|
||||||||||||||
Chief Financial Officer (CFO)
|
||||||||||||||||||||
James Crawford (COO)
|
0
|
17,622
|
(7)
|
0
|
17,622
|
*
|
||||||||||||||
Stuart Smith (Director)
|
105,770
|
0
|
24,039
|
(8)
|
129,809
|
2.35
|
%
|
|||||||||||||
Craig Nard
(Director)
|
0
|
7,844
|
(9)
|
0
|
7,844
|
*
|
||||||||||||||
William Rosellini (Director)
|
0
|
7,844
|
(10)
|
0
|
7,844
|
*
|
||||||||||||||
All Directors and Executive Officers (six persons)
|
594,286
|
285,762
|
27,240
|
907,288
|
15.64
|
%
|
||||||||||||||
Persons owning more than 5% of voting securities
|
||||||||||||||||||||
TechDev Holdings LLC (12)
|
461,539
|
0
|
0
|
461,539
|
8.41
|
%
|
||||||||||||||
The Feinberg Family Trust (13)
|
523,980
|
0
|
216,346
|
(11)
|
740,326
|
12.97
|
%
|
|||||||||||||
Barry Honig
|
365,619
|
(15)
|
0
|
35,541
|
(16)
|
401,160
|
7.26
|
%
|
ITEM 13. CERTAIN RELATIONSHIPS AND RELATED TRANSACTIONS, AND DIRECTOR
INDEPENDENCE
|
Fiscal Year Ended
|
||||||||
December 31, 2013
|
December 31, 2012
|
|||||||
Audit fees
|
$
|
75,000
|
$
|
27,500
|
||||
Audit – related fees
|
-
|
-
|
||||||
Tax fees
|
-
|
-
|
||||||
All other fees
|
-
|
-
|
Exhibit No.
|
Description
|
|
3.1
|
Amended and Restated Articles of Incorporation of the Company (Incorporated by reference to Exhibit 3.1 to the Current Report on Form 8-K filed with the SEC on December 9, 2011)
|
|
3.2
|
Amended and Restated Bylaws of the Company (Incorporated by reference to Exhibit 3.1 to the Current Report on Form 8-K filed with the SEC on December 9, 2011)
|
|
3.3
|
Certificate of Amendment to Articles of Incorporation (Incorporated by reference to Exhibit 3.1 to the Current Report on Form 8-K filed with the SEC on February 20, 2013)
|
|
3.4
|
Certificate of Amendment to Amended and Restated Articles of Incorporation (Incorporated by reference to Exhibit 3.1 to the Current Report on Form 8-K filed with the SEC on February 20, 2013)
|
|
10.1
|
Form of Option Agreement (Incorporated by reference to Exhibit 10.1 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.2
|
Form of Promissory Note (Incorporated by reference to Exhibit 10.2 to the Current Report on Form 8-K filed with the SEC on January 30, 2012)
|
|
10.3
|
Share Exchange Agreement (Incorporated by reference to Exhibit 10.3 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.4
|
Form of Warrant (Incorporated by reference to Exhibit 10.4 to the Current Report on Form 8-K filed with the SEC on January 30, 2012)
|
|
10.5
|
Agreement of Conveyance, Transfer and Assignment of Assets and Assumptions of Obligations (Incorporated by reference to Exhibit 10.5 to the Current Report on Form 8-K filed with the SEC on January 30, 2012)
|
|
10.6
|
Stock Purchase Agreement for Split-Off (Incorporated by reference to Exhibit 10.6 to the Current Report on Form 8-K filed with the SEC on January 30, 2012)
|
|
10.7
|
Form of Subscription Agreement (Incorporated by reference to Exhibit 10.7 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.8
|
Employment Agreement between the Company and George Glasier (Incorporated by reference to Exhibit 10.7 to the Current Report on Form 8-K filed with the SEC on January 30, 2012)
|
|
10.9
|
Form of Consulting Agreement (Incorporated by reference to Exhibit 10.4 to the Current Report on Form 8-K filed with the SEC on January 30, 2012)
|
|
10.10
|
Form of Director Warrant (with vesting) (Incorporated by reference to Exhibit 10.10 to the Current Report on Form 8-K filed with the SEC on January 30, 2012)
|
|
10.11
|
Form of Directors and Officers Indemnification Agreement (Incorporated by reference to Exhibit 10.11 to the Current Report on Form 8-K filed with the SEC on January 30, 2012)
|
|
10.12
|
Mining Lease Agreement by and between Kyle Kimmerle and the Company, dated November 2, 2011 (Incorporated by reference to Exhibit 10.12 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.13
|
Mining Lease Agreement by and between Charles Kimmerle and the Company, dated November 2, 2011(Incorporated by reference to Exhibit 10.13 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.14
|
Mining Lease Agreement by and between Kimmerle Mining LLC and the Company, dated November 2, 2011(Incorporated by reference to Exhibit 10.14 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.15
|
Mining Lease Agreement by and among Kyle Kimmerle, David Kimmerle and Charles Kimmerle and the Company, dated November 2, 2011(Incorporated by reference to Exhibit 10.15 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.16
|
Mining Lease Agreement by and among Kyle Kimmerle, Kimmerle Mining LLC and the Company, dated November 2, 2011(Incorporated by reference to Exhibit 10.3 to the Current Report on Form 8-K filed with the SEC on March 16, 2011)
|
|
10.17
|
Mining Lease Agreement by and between David Kimmerle and the Company, dated November 2, 2011(Incorporated by reference to Exhibit 10.17 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.18
|
Mining Lease Agreement by and between B-Mining Company and the Company, dated November 2, 2011(Incorporated by reference to Exhibit 10.18 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.19
|
Mining Lease Agreement by and between Carla Rosas Zepeda and the Company, dated November 2, 2011(Incorporated by reference to Exhibit 10.19 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.20
|
Mining Lease Agreement by and between Andrews Mining LLC and the Company, dated November 2, 2011(Incorporated by reference to Exhibit 10.20 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.21
|
Lease Assignment/Acceptance Agreement by and between Nuclear Energy Corporation LLC and the Company, dated December 28, 2011(Incorporated by reference to Exhibit 10.21 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.22
|
Rental Agreement by and between the Company and Silver Hawk Ltd., dated January 1, 2012 (Incorporated by reference to Exhibit 10.22 to the Current Report on Form 8-K filed with the SEC on March 14, 2011)
|
|
10.23
|
Mining Claim & Lease Sale/Purchase Agreement (Incorporated by reference to Exhibit 10.1 to the Current Report on Form 8-K filed with the SEC on March 14, 2012)
|
|
10.24
|
Option Agreement for Purchase of Mining Claims (Incorporated by reference to Exhibit 10.1 to the Current Report on Form 8-K filed with the SEC on March 15, 2012)
|
|
10.25
|
Forms of Quitclaim Deed (Incorporated by reference to Exhibit 10.2 to the Current Report on Form 8-K filed with the SEC on March 15, 2012)
|
|
10.26
|
Agreement with California Gold Corp., dated March 19, 2012 (Incorporated by reference to Exhibit 10.1 to the Current Report on Form 8-K filed with the SEC on March 23, 2012)
|
|
10.27
|
Consulting Agreement, dated January 26, 2012 (Incorporated by reference to Exhibit 10.23 to the Current Report on Form 8-K filed with the SEC on April 10, 2012)
|
|
10.28
|
Rescission Agreement dated as of June 11, 2012 (Incorporated by reference to Exhibit 10.1 to the Current Report on Form 8-K filed with the SEC on June 15, 2012)
|
|
10.29
|
Assignment Agreement dated as of June 11, 2012 (Incorporated by reference to Exhibit 10.2 to the Current Report on Form 8-K filed with the SEC on June 15, 2012)
|
|
10.30
|
Employment Agreement between the Company and John Stetson dated August 3, 2012 (Incorporated by reference to Exhibit 10.1 to the Current Report on Form 8-K filed with the SEC on August 7, 2012)
|
|
10.31
|
Employment Agreement between the Company and Mark Groussman dated August 3, 2012 (Incorporated by reference to Exhibit 10.2 to the Current Report on Form 8-K filed with the SEC on August 7, 2012)
|
|
10.32
|
Share Exchange Agreement (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on November 20, 2012)
|
|
10.33
|
Employment Agreement between the Company and Doug Croxall (Incorporated by reference to Exhibit 10.2 to the Company’s Current Report on Form 8-K, filed with the SEC on November 20, 2012)
|
|
10.34
|
Consulting Agreement with C&H Capital, Inc. (Incorporated by reference to Exhibit 10.3 to the Company’s Current Report on Form 8-K, filed with the SEC on November 20, 2012)
|
|
10.35
|
Form of Indemnification Agreement between the Company and Doug Croxall (Incorporated by reference to Exhibit 10.4 to the Company’s Current Report on Form 8-K, filed with the SEC on November 20, 2012)
|
|
10.36
|
Form of Subscription Agreement (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on December 28, 2012)
|
|
10.37
|
Form of Warrant (Incorporated by reference to Exhibit 10.2 to the Company’s Current Report on Form 8-K, filed with the SEC on December 28, 2012)
|
|
10.38
|
Form of Registration Rights Agreement (Incorporated by reference to Exhibit 10.3 to the Company’s Current Report on Form 8-K, filed with the SEC on December 28, 2012)
|
|
10.39
|
Employment Agreement between the Company and John Stetson dated January 28, 2013 (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on January 29, 2013)
|
|
10.40
|
Employment Agreement between the Company and Nathaniel Bradley dated March 1, 2013 (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on March 6, 2013)
|
|
10.41
|
Employment Agreement between the Company and James Crawford dated March 1, 2013 (Incorporated by reference to Exhibit 10.2 to the Company’s Current Report on Form 8-K, filed with the SEC on March 6, 2013)
|
|
10.42
|
Independent Director Agreement between the Company and Craig Nard dated March 8, 2013 (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on March 11, 2013)
|
|
10.43
|
Independent Director Agreement between the Company and William Rosellini dated March 8, 2013 (Incorporated by reference to Exhibit 10.2 to the Company’s Current Report on Form 8-K, filed with the SEC on March 11, 2013)
|
|
10.44
|
Merger Agreement dated as of April 22, 2013 (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on April 26, 2013)
|
|
10.45
|
Form of Promissory Note (Incorporated by reference to Exhibit 10.2 to the Company’s Current Report on Form 8-K, filed with the SEC on April 26, 2013)
|
|
10.46
|
Form of Registration Rights Agreement (Incorporated by reference to Exhibit 10.3 to the Company’s Current Report on Form 8-K, filed with the SEC on April 26, 2013)
|
|
10.47
|
License Agreement (Incorporated by reference to Exhibit 10.4 to the Company’s Current Report on Form 8-K, filed with the SEC on April 26, 2013)
|
|
10.48
|
Merger Agreement dated as of May 1, 2013 (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on May 3, 2013)
|
|
10.50
|
Form of Securities Purchase Agreement (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on June 3, 2013)
|
|
10.51
|
Form of Warrant (Incorporated by reference to Exhibit 10.2 to the Company’s Current Report on Form 8-K, filed with the SEC on June 3, 2013)
|
|
10.52
|
Form of Registration Rights Agreement (Incorporated by reference to Exhibit 10.3 to the Company’s Current Report on Form 8-K, filed with the SEC on June 3, 2013)
|
|
10.53
|
Separation and Release Agreement between the Company and Nathaniel Bradley dated June 19, 2013 (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on June 24, 2013)
|
|
10.54
|
Lease Agreement by and between Westwood Gateway II LLC and the Company dated October 14, 2013*
|
|
10.55
|
Patent Purchase Agreement by and between Delphi Technologies, Inc. and Loopback Technologies, Inc. dated October 31, 2013*+
|
|
10.56
|
Amendment No. 1 to the Executive Employment Agreement between the Company and Doug Croxall dated November 18, 2013 (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on November 22, 2013)
|
|
10.57
|
Executive Employment Agreement between the Company and Richard Raisig dated November 18, 2013 (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on November 22, 2013)
|
|
10.58
|
Consulting Agreement between the Company and Jeff Feinberg dated November 18, 2013 (Incorporated by reference to Exhibit 10.1 to the Company’s Current Report on Form 8-K, filed with the SEC on November 22, 2013)
|
|
10.59
|
Amendment to the Patent Purchase Agreement by and between Delphi Technologies, Inc. and Loopback Technologies, Inc. dated December 16, 2013.*+
|
|
14.1
|
Code of Business Conduct and Ethics*
|
|
21.1
|
List of Subsidiaries*
|
|
31.1
|
Certification of Chief Executive Officer pursuant to Section 302 of the Sarbanes-Oxley Act of 2002 *
|
|
31.2
|
Certification of Chief Financial Officer pursuant to Section 302 of the Sarbanes-Oxley Act of 2002 *
|
|
32.1
|
Section 1350 Certification of the Chief Executive Officer *
|
|
32.2
|
Section 1350 Certification of the Chief Financial Officer *
|
|
101.INS*
|
XBRL Instance Document
|
|
101.SCH*
|
XBRL Taxonomy Extention Schema
|
|
101.CAL*
|
XBRL Taxonomy Extention Calculation Linkbase
|
|
101.DEF*
|
XBRL Taxonomy Extention Definition Linkbase
|
|
101.LAB*
|
XBRL Taxonomy Extention Label Linkbase
|
|
101.PRE*
|
XBRL Taxonomy Extention Presentation Linkbase
|
*
|
Filed herein
.
|
|
+
|
The Company has requested confidential treatment for certain portions of this exhibit. This exhibit omits the information subject to this confidentiality request. Omitted portions have been filed separately with the SEC.
|
MARATHON PATENT GROUP, INC.
|
|
By:
|
/s/ Doug Croxall
|
Name: Doug Croxall
|
|
Title: Chief Executive Officer
|
|
(Principal Executive Officer)
|
|
By:
|
/s/ Richard Raisig
|
Name: Richard Raisig
|
|
Title: Chief Financial Officer
|
|
(Principal Financial Officer)
|
Signature
|
Title
|
Date
|
||
/s/ Doug Croxall
|
Chief Executive Officer and Chairman (Principal Executive Officer)
|
March 31, 2014
|
||
Doug Croxall
|
||||
/s/ Richard Raisig
|
Chief Financial Officer (Principal Financial Officer)
|
March 31, 2014
|
||
Richard Raisig
|
||||
/s/ John Stetson
|
Executive Vice President, Secretary and Director
|
March 31, 2014
|
||
John Stetson
|
||||
/s/ Stuart Smith
|
Director
|
March 31, 2014
|
||
Stuart Smith
|
||||
/s/ Craig Nard
|
Director
|
March 31, 2014
|
||
Craig Nard
|
||||
/s/ William Rosellini
|
Director
|
March 31, 2014
|
||
William Rosellini
|
1.
|
Tenant’s Trade Name
: N/A
|
2.
Premises:
|
Suite No. 380
|
Address of Building:
|
11100 Santa Monica Blvd., Los Angeles, CA 90025
|
Project Description:
|
Westwood Gateway II
|
3.
|
Use of Premises
: General office and for no other use.
|
4.
|
Commencement Date
: May 1, 2014
|
5.
|
Lease Term
: The Term of this Lease will expire at midnight on April 30, 2021.
|
6.
|
Basic Rent
:
|
Months of Term
or Period
|
Monthly Rate Per
Rentable Square Foot
|
Monthly Basic Rent
(rounded to the nearest dollar)
|
5/1/14 to 4/30/15
|
$3.05
|
$5,283.00
|
5/1/15 to 4/30/16
|
$3.19
|
$5,525.00
|
5/1/16 to 4/30/17
|
$3.33
|
$5,768.00
|
5/1/17 to 4/30/18
|
$3.48
|
$6,027.00
|
5/1/18 to 4/30/19
|
$3.64
|
$6,304.00
|
5/1/19 to 4/30/20
|
$3.80
|
$6,582.00
|
5/1/20 to 4/30/21
|
$3.97
|
$6,876.00
|
|
Notwithstanding the above schedule of Basic Rent to the contrary, as long as Tenant is not in Default (as defined in Section 14.1) under this Lease, Tenant shall be entitled to an abatement of 5 full calendar months of Basic Rent in the aggregate amount of $26,415.00 (i.e. $5,283.00 per month) (the “
Abated Basic Rent
”) for the first 5 full calendar months of the Term (the “
Abatement Period
”). In the event Tenant Defaults at any time during the Term, all Abated Basic Rent shall immediately become due and payable. The payment by Tenant of the Abated Basic Rent in the event of a Default shall not limit or affect any of Landlord's other rights, pursuant to this Lease or at law or in equity. Only Basic Rent shall be abated during the Abatement Period and all other additional rent and other costs and charges specified in this Lease shall remain as due and payable pursuant to the provisions of this Lease.
|
7.
|
Property Tax Base
: The Property Taxes per rentable square foot incurred by Landlord and attributable to the
|
|
twelve month period ending June 30, 2014 (the "
Base Year
").
|
8.
|
Floor Area of Premises
: approximately 1,732 rentable square feet (Landlord and Tenant stipulate and agree that the Floor Area of Premises is correct).
|
9.
|
Security Deposit
: $7,564.00
|
10.
|
Broker(s)
: Irvine Realty Company ("
Landlord's Broker
") and Guardian Commercial Realty ("
Tenant's Broker
")
|
11.
|
Parking
: 6 parking passes in accordance with the provisions set forth in
Exhibit F
to this Lease.
|
12.
|
Address for Payments and Notices
:
|
LANDLORD
|
TENANT
|
Payment Address:
WESTWOOD GATEWAY II LLC
PO Box #842470
Los Angeles, CA 90084-2470
Notice Address:
THE IRVINE COMPANY LLC
11100 Santa Monica Boulevard, Suite 100
Los Angeles, CA, 90025
Attn: Property Manager
with a copy of notices to:
THE IRVINE COMPANY LLC
550 Newport Center Drive
Newport Beach, CA 92660
Attn: Senior Vice President, Property Operations
Irvine Office Properties
|
Marathon Patent Group, Inc.
11100 Santa Monica Blvd., Suite 380
Los Angeles, CA 90025
|
13.
|
List of Lease Exhibits
(all exhibits, riders and addenda attached to this Lease are hereby incorporated into and made a part of this Lease):
|
LANDLORD:
WESTWOOD GATEWAY II LLC,
a Delaware limited liability company
By
/s/ Steven M. Case
Steven M. Case
Executive Vice President
Office Properties
By
/s/ Betty R. Casties
Betty R. Casties
Vice President, Operations
Office Properties
|
TENANT:
MARATHON PATENT GROUP, INC.,
a Nevada corporation
By
/s/ Douglas B. Croxall
Printed Name
Douglas B. Croxall
Title
CEO
By
Printed Name
Title
|
|
A.
|
Tenant and Landlord shall approve both (i) a detailed space plan for the Premises, prepared by the architect engaged by Landlord for the work described herein (“
Landlord’s Architect
”), which includes interior partitions, ceilings, interior finishes, interior office doors, suite entrance, floor coverings, window coverings, lighting, electrical and telephone outlets, plumbing connections, heavy floor loads and other special requirements (“
Preliminary Plan
”), and (ii) an estimate, prepared by the contractor engaged by Landlord for the work herein (“
Landlord’s Contractor
”), of the cost for which Landlord will complete or cause to be completed the Tenant Improvements (“
Preliminary Cost Estimate
”). Tenant shall approve or disapprove each of the Preliminary Plan and the Preliminary Cost Estimate by signing copies of the appropriate instrument and delivering same to Landlord within 5 business days of its receipt by Tenant. If Tenant disapproves any matter, Tenant shall specify in detail the reasons for disapproval and Landlord shall attempt to modify the Preliminary Plan and the Preliminary Cost Estimate to incorporate Tenant’s suggested revisions in a mutually satisfactory manner; provided that in no event shall Tenant have the right to request changes or additions to the Preliminary Plan for the purpose of utilizing any unused portion of the Landlord Contribution (as defined below).
|
|
B.
|
On or before its approval of the Preliminary Plan, Tenant shall provide in writing to Landlord or Landlord’s Architect all specifications and information reasonably requested by Landlord for the preparation of final construction documents and costing, including without limitation Tenant’s final selection of wall and floor finishes, complete specifications and locations (including load and HVAC requirements) of Tenant’s equipment, and details of all other non-building standard improvements to be installed in the Premises (collectively, “
Programming Information
”). Tenant understands that final construction documents for the Tenant Improvements shall be predicated on the Programming Information, and accordingly that such information must be accurate and complete.
|
|
C.
|
Upon Tenant’s approval of the Preliminary Plan and Preliminary Cost Estimate and delivery of the complete Programming Information, Landlord’s Architect and engineers shall prepare and deliver to the parties working drawings and specifications (“
Working Drawings and Specifications
”), and Landlord’s Contractor shall prepare a final construction cost estimate (“
Final Cost Estimate
”) for the Tenant Improvements in conformity with the Working Drawings and Specifications. Tenant shall have 5 business days from the receipt thereof to approve or disapprove the Working Drawings and Specifications and the Final Cost Estimate, and any disapproval or requested modification shall be limited to items not contained in the approved Preliminary Plan or Preliminary Cost Estimate; provided that in no event shall Tenant have the right to request changes or additions to the Working Drawings and Specifications for the purpose of utilizing any unused portion of the Landlord Contribution. In no event shall Tenant disapprove the Final Cost Estimate if it does not exceed the approved Preliminary Cost Estimate. Should Tenant disapprove the Working Drawings and Specifications and the Final Cost Estimate, such disapproval shall be accompanied by a detailed list of revisions. Any revision requested by Tenant and accepted by Landlord shall be incorporated by Landlord’s Architect into a revised set of Working Drawings and Specifications and Final Cost Estimate, and Tenant shall approve same in writing within 5 business days of receipt without further revision.
|
|
D.
|
In the event that Tenant requests in writing a revision in the approved Working Drawings and Specifications (“
Change
”), then provided such Change is acceptable to Landlord, Landlord shall advise Tenant by written change order as soon as is practical of any increase in the Completion Cost such Change would cause. Tenant shall approve or disapprove such change order in writing within 2 business days following its receipt from Landlord. Tenant’s approval of a Change shall be accompanied by Tenant’s payment of any resulting increase in the Completion Cost, regardless of any unutilized portion of the “Landlord Contribution” as defined below. It is understood that Landlord shall have no obligation to interrupt or modify the Tenant Improvement work pending Tenant’s approval of a change order.
|
|
E.
|
It is understood that the Preliminary Plan and the Working Drawings and Specifications, together with any Changes thereto, shall be subject to the prior approval of Landlord. Landlord shall identify any disapproved items within 3 business days (or 2 business days in the case of Changes) after receipt of the applicable document. Should Landlord approve work requested in writing by the Tenant that would necessitate any ancillary Building modification or other expenditure by Landlord, then except to the extent of any remaining balance of the Landlord Contribution, Tenant shall, in addition to its other obligations herein, promptly fund the cost thereof approved by the Tenant to Landlord.
|
|
F.
|
It is understood that all of the Tenant Improvements shall be done during Tenant’s occupancy of the Premises. In this regard, Tenant agrees to assume any risk of injury, loss or damage which may result. Tenant further agrees that it shall be solely responsible for relocating its office equipment and furniture in the Premises in order for Landlord to complete the work in the Premises and that no rental abatement shall result while the Tenant Improvements are completed in the Premises.
|
|
G.
|
Tenant hereby designates Doug Croxall, Telephone No. (____) __________, as its representative, agent and attorney-in-fact for the purpose of receiving notices, approving submittals and issuing requests for Changes, and Landlord shall be entitled to rely upon authorizations and directives of such person(s) as if given directly by Tenant. Tenant may amend the designation of its construction representative(s) at any time upon delivery of written notice to Landlord.
|
|
A.
|
Landlord shall complete, or cause to be completed, the Tenant Improvements, at the construction cost shown in the approved Final Cost Estimate (subject to the provisions of this Work Letter), in accordance with final Working Drawings and Specifications approved by both Landlord and Tenant. Landlord shall pay towards the final construction costs (“
Completion Cost
”) as incurred a maximum of $51,380.00 (“
Landlord Contribution
”), based on $35.00 per usable square foot of the Premises, and Tenant shall be fully responsible for the remainder (“
Tenant Contribution
”). Tenant understands and agrees that any portion of the Landlord Contribution not requested by Tenant in accordance with this
Exhibit X
by December 31, 2014, shall inure to the benefit of Landlord and Tenant shall not be entitled to any credit or payment; provided, however, that Tenant may, upon written request delivered to Landlord not later than December 31, 2014, apply a portion of the unused Landlord Contribution not to exceed $25,690.00 to the next then due Basic Rent. Landlord shall promptly memorialize any such reduction in the Basic Rent on a form provided by Landlord. In addition, Tenant may utilize a portion of the unused Landlord Contribution not to exceed $14,680.00 toward the out-of-pocket expenses incurred by Tenant for (1) relocating to the Premises, including moving costs (not to exceed $7,340.00 in the aggregate) (“
Moving Costs
”) and (2) for the purchase, refurbishment or relocation of furniture, fixtures and equipment for the Premises (not to exceed $7,340.00 in the aggregate) (“
FF&E Costs
”). Tenant shall be reimbursed for Moving Costs and/or FF&E Costs by submitting copies of all supporting third-party invoices to Landlord by August 1, 2014. Landlord shall reimburse Tenant in one installment for Moving Costs and one installment for FF&E Costs within 30 days following receipt of all such respective invoices.
|
|
B.
|
The Completion Cost shall include all direct costs of Landlord in completing the Tenant Improvements, including but not limited to the following: (i) payments made to architects, engineers, contractors, subcontractors and other third party consultants in the performance of the work, (ii) permit fees and other sums paid to governmental agencies, (iii) costs of all materials incorporated into the work or used in connection with the work (excluding any furniture, fixtures and equipment relating to the Premises), and (iv) keying and signage costs. The Completion Cost shall also include an administrative/supervision fee to be paid to Landlord in the amount of 3% of all such direct costs, cosmetic alterations not requiring a permit excluded.
|
|
C.
|
Prior to start of construction of the Tenant Improvements, Tenant shall pay to Landlord the amount of the Tenant Contribution set forth in the approved Final Cost Estimate. In addition, if the actual Completion Cost of the Tenant Improvements is greater than the Final Cost Estimate because of modifications or extras requested by Tenant and not reflected on the approved working drawings, or because of delays caused by Tenant, then notwithstanding any unused portion of the Landlord Contribution, Tenant shall pay to Landlord, within 10 days following submission of an invoice therefor, all such additional costs, including any additional architectural fee. If Tenant defaults in the payment of any sums due under this Work Letter, Landlord shall (in addition to all other remedies) have the same rights as in the case of Tenant’s failure to pay rent under the Lease.
|
1.
|
Background
|
1.1
|
Seller owns certain United States patents and patent applications and related foreign patents and applications.
|
1.2
|
Seller wishes to sell to Purchaser all of Seller’s right, title and interest in the Acquisition Patents (as defined below) and any and all rights associated therewith, including, without limitation, the rights to further develop the technology, to commercialize and to enforce the constitutional right to exclude others from practicing the technology.
|
1.3
|
Purchaser wishes to purchase from Seller all right, title and interest in the Assigned Patent Rights (as defined below).
|
2.
|
Definitions
|
2.1
|
“Acquisition Patents
” means the Patent Families listed on Exhibit A-1 hereto, as the same shall be finalized at Closing in accordance with Section 3.3 below.
|
2.2
|
“
Affiliate
”
means, with respect to any Person, any Entity in any country that controls, is controlled by or is under common control with such Person. The term “control” means possession directly or indirectly of the power to direct or cause the direction of the management and policies of an Entity, whether through the ownership of voting securities, by trust, management agreement, contract or otherwise; provided, however, that beneficial ownership of at least fifty percent (50%) of the voting equity interests of an entity shall be deemed to be control
|
2.3
|
“
Assigned Patent Rights
”
means the Acquisition Patents and (a) all causes of action (whether currently pending, filed, or otherwise) and other enforcement rights under the Acquisition Patents including, without limitation, all rights to sue, to countersue and to pursue damages, injunctive relief, and any other remedies of any kind for past, current and future infringement; and (b) all rights to recover and collect settlement arrangements, license payments (including lump sum payments), royalties and other payments due now or hereafter due or payable with respect thereto, under or on account of any of the Acquisition Patents or any of the foregoing and (c) any and all privileges, including the benefit of all attorney client privilege and attorney work product privilege.
|
2.4
|
“
Entity
”
means any corporation, partnership, limited liability company, association, joint stock company, trust, joint venture, unincorporated organization, governmental entity (or any department, agency, or political subdivision thereof) or any other legal entity.
|
2.5
|
“
Executed Assignment
”
means an executed original of the Patent Assignment Agreement in
Exhibit B
.
|
2.6
|
“
Patents
”
means any patents and patent applications, including but not limited to all reissues, reexaminations, extensions, continuations, continuations in part, continuing prosecution applications, provisionals and divisions of such patents, and any patents and patent applications which claim priority to any of the foregoing, and all foreign counterparts of the foregoing.
|
2.7
|
"
Patent Families
" means a group of one or more Patents which are all related to each other by way of claiming a common priority date from one of the Patents in that group, including, for the avoidance of doubt, any Additional Inventions and Patents (as defined below) of such Patents.
|
2.8
|
“
Person
”
means any individual or Entity.
|
3.
|
Selection of Patents; Document Delivery; Broker
|
3.1
|
As of the Effective Date,
Exhibit A-1
identifies the fifteen (15) Patent Families that Purchaser is contemplating acquiring at Closing (as defined below). At any point prior to the Closing, Purchaser shall be permitted to amend Exhibit A-1 in accordance with the provisions set forth in Section 3.3 below.
|
3.2
|
Document Delivery
. As soon as reasonably practicable after the Effective Date, Seller shall send to Purchaser, via Federal Express or other reliable overnight delivery service or by hand delivery, all prosecution files and all other documents, communications and files (electronic or otherwise) regarding the ownership, prosecution, maintenance and enforcement of the fifteen (15) Patent Families identified in Exhibit A-1 on the Effective Date to the extent the same are in the possession or control of the patent department of Seller, any affiliate of Seller or their respective counsel, agents or related parties, including, but not limited to those documents listed on the Document Request Form attached hereto as
Exhibit C
(collectively, the “Documents”), and in addition will sign the affidavit attached to the Document Request Form as Attachment 1 or alternatively, the affidavit attached to the Document Request Form as Attachment 2.
|
3.3
|
Substitute Patent Families
. At any time between the Effective Date and the Closing Date, Purchaser will have the right to inform the Seller of the potential substitution of a different available Patent Family listed in Exhibit A-2 in place of any of the Patent Families listed in Exhibit A-1 (each a “Substitute Patent Family”) or the removal of a Patent Family listed on Exhibit A-1. After such substitution, Seller will provide Documents for such Substitute Patent Family as forth in Section 3.2 and Purchaser will promptly review such Documents after receipt thereof to accept or reject the Substitute Patent Family, in its sole discretion and such process shall continue until Closing. Once a Patent Family has been accepted by Purchaser for purchase, it shall remain on Exhibit A-1 and Exhibit A-1 shall be further updated by Purchaser to reflect any substitutions and/or removals and shall become final at Closing, unless certified as final by Purchaser on an earlier date if the reviews of the Acquisition Patents and Substitute Patent Families have been earlier concluded. In the event that after Purchaser’s review of available Substitute Patent Families, Purchaser has exhausted the list of available Patent Families on Exhibit A-2 without confirming fifteen (15) Patent Families as Acquisition Patents, (i) Seller will update Exhibit A-2 to provide additional Patent Families for Purchaser’s consideration until such time as Purchaser has designated fifteen (15) Patent Families as Acquisition Patents or (ii) if Seller if unable or otherwise fails to provide additional Patent Families acceptable to Purchaser as set forth in Section 3.3(i) by the Closing Date, the Purchase Price will be reduced by an amount equal to the product of * multiplied by a fraction (a) the numerator of which shall be the number of Patent Families listed on the final Exhibit A-1 constituting the Acquisition Patents and (b) the denominator of which shall be fifteen (15).
|
3.4
|
Notwithstanding Seller’s delivery obligations under Section 3.2 and Section 3.3 above, in the event that a Document related to ownership, prosecution, maintenance, notice of claims of prior art, validity or Seller’s enforcement is discovered at any time following the Closing that was not provided to Purchaser in accordance with Section 3.2 or Section 3.3 above as well as other Documents that are knowingly withheld (any such Document, an “Undisclosed Document”), Seller will promptly provide to Purchaser the Undisclosed Document. To the extent that any Undisclosed Document is material to any of the Acquisition Patents (including but not limited to, the validity or enforceability thereof or chain of title thereto), in addition to of any other rights or remedies Purchaser may have under law or this Agreement, Purchaser shall be entitled to demand and Seller will promptly pay, a refund of a portion of the Purchase Price, equal to the product of the Purchase Price multiplied by a fraction (a) the numerator of which shall be the number of Patent Families constituting the Acquisition Patents impacted by the Undisclosed Document and (b) the denominator shall be the total number of Patent Families constituting the Acquisition Patents. In the event of any refund pursuant to this paragraph, Purchaser will assign ownership to Seller of the Acquisition Patents within the pertinent Patent Family. In the event that Purchaser has received any revenues from third parties attributable to such pertinent Patent Family, * of such revenues will be netted out against that portion of the Purchase Price to be refunded.
|
3.5
|
Broker Activity
. Promptly after Closing, Purchaser shall engage a third party patent broker (“Broker”) to make the Acquisition Patents available for purchase by third parties for a minimum period of thirty (30) days on terms and conditions acceptable to Purchaser. Notwithstanding anything to the contrary contained herein, Purchaser shall be permitted to provide to such interested third parties, subject to obligations of confidentiality at least as stringent as those contained herein, a copy of this Agreement and access to any Documents.
|
4.
|
Cash Consideration
|
4.1
|
Subject to any adjustment under Section 3.3 above, in addition to all other consideration to which Seller is entitled hereunder, Purchaser shall pay to Seller *
($
*
)
(the “Purchase Price”) as consideration for the sale, assignment, transfer and conveyance of the Assigned Patent Rights to Purchaser under this Agreement. Subject to the Closing, the Purchase Price shall be paid on the Closing Date (as defined below).
|
4.2
|
All payments shall be made by wire transfer of funds to Seller:
|
5.
|
License Back Under Patents.
|
5.1
|
License Back
. As additional valuable consideration hereunder, subject to the Closing, Purchaser grants to Seller and its Affiliates, under the Acquisition Patents, a royalty-free, irrevocable, perpetual, non-exclusive, non-divisible, nontransferable (except as provided in Section 10.4 below) worldwide right and license, without the right to sublicense, to make, have made, use, sell, offer for sale, import and otherwise distribute Licensed Products (as defined below) (the “License”). Seller (and its Affiliates) will not act with intent to provide any third party the benefits of this License, by entering into transactions outside the ordinary course of Seller’s (and its Affiliates’) business. Except as set forth in Section 10.4, the License, as to any Affiliate of Seller, will terminate as to such member if and when such member ceases to meet the requirements of being an Affiliate of Seller. Notwithstanding the foregoing, with respect to Seller, the term “Affiliates” excludes any Person that is a party to a pending patent infringement claim or lawsuit filed with respect to the Acquisition Patents at such time, following the Effective Date, as the Person becomes an Affiliate.
|
5.2
|
Pass-Through Rights
. For the avoidance of doubt and notwithstanding anything to the contrary contained herein, the License may be passed through to Seller’s and Seller’s Affiliates’ purchasers, sellers, importers, distributors or users of the Licensed Products, as applicable, and extends to an integrated system (a “Combined Licensed Product”) only as required to the extent that the manufacture, sale, offering to sell, import, use or other disposal of the Combined Licensed Product would not infringe (including without limitation any forms of indirect infringement) one or more claims or any of the Acquisition Patents but for the inclusion of a Licensed Product within the Combined Licensed Product;
|
5.3
|
No Third Party Rights
. Neither Seller nor any of Seller’s Affiliates will act with the primary intent to provide any third party the benefit of the rights under the License.
|
5.4
|
No License Transfer
. Except as explicitly permitted in Section 10.4 hereunder, Seller shall not assign nor transfer this License or any right, benefit or obligation hereunder, including by a change of control (which shall be deemed an assignment and similarly limited), operation of law or otherwise without the prior written consent of Licensor.
|
5.5
|
Limited Release
. Upon the Closing, Purchaser hereby irrevocably releases Seller and its Affiliates and their product and service distributors, resellers, retailers, customers and other recipients duly in possession of Licensed Products from any and all liability for any infringement of the Acquisition Patents prior to the Closing solely with respect to such Licensed Products.
|
6.
|
Transfer of Patents and Additional Rights
|
6.1
|
Assignment of Patents
. Seller hereby sells, assigns, transfers and conveys to Purchaser all right, title and interest in and to the Assigned Patent Rights and will provide Purchaser with the Executed Assignment for the Assigned Patent Rights upon receipt of the Purchase Price. Purchaser shall be responsible for recording the Executed Assignment with the United States Patent and Trademark Office (or its foreign counterparts as applicable) and shall provide Seller with written evidence thereof promptly after doing so.
|
6.2
|
Additional Patents.
Seller hereby represents and warrants to Purchaser that all patents, reissues, reexaminations, extensions, continuations, continuations in part, continuing prosecution applications, provisionals and divisions of the Acquisition Patents and patents and patent applications that claim priority to any of the foregoing are (or will be at Closing) listed on
Exhibit A-1
. In the event that Purchaser discovers, at any time any patents, reissues, reexaminations, extensions, continuations, continuations in part, continuing prosecution applications, provisionals and divisions of the Acquisition Patents or patents or patent applications that claim priority to any of the foregoing that are owned by Seller other than those listed in
Exhibit A-1
(the “Additional Inventions and Patents”), then the Additional Inventions and Patents shall be sold, including by transferring, assigning and setting over, to Purchaser, all right, title and interest thereto, for no additional consideration, and the Additional Inventions and Patents shall be deemed “Acquisition Patents”, as applicable, under this Agreement, for all intents and purposes. In such event, the Parties shall sign an amended
Exhibit A-1
to add the Additional Inventions and Patents thereto and in the event that Purchaser’s notification to Seller is subsequent to the Closing, then the Parties shall conduct a subsequent closing and the provisions of Section 7.1 shall apply to the sale, assignment transfer and setting over to Purchaser of the Additional Inventions and Patents,
mutatis mutandis
.
|
6.3
|
No Assumption of Liabilities
. It is expressly understood and agreed that Purchaser shall not be liable for and hereby disclaims any assumption of any of the obligations, claims or liabilities of Seller and/or its Affiliates and/or of any third party of any kind or nature whatsoever arising from or in connection with any circumstances, causes of action, breach, violation, default or failure to perform with respect to the Assigned Patent Rights prior to the Closing and/or for any liability in connection with the Preexisting Licenses (as defined below). To the extent that any of the Assigned Patent Rights relate to inventions that by law or regulations governing employee inventions require compensation to be paid to the employee inventors (“Employee Inventors”), the Seller shall be responsible for paying each of the Employee Inventors named in the Assigned Patent Rights their respective portion of any required inventor compensation.
|
7.
|
Closing and Additional Obligations
|
7.1
|
The closing of the purchase and sale of the Assigned Patent Rights (the “Closing”) shall take place on or before December 15, 2013,unless otherwise agreed, above (the “Closing Date”).
|
(a)
|
At the Closing, Seller shall execute and deliver to Purchaser (i) the Executed Assignment, as well as (ii) a copy of all corporate approvals required by it in order to executive, deliver and perform this Agreement and the transactions contemplated hereunder.
|
(b)
|
At the Closing, to the extent that there is (i) any amendment or material change to the representations and/or warranties of Seller as provided herein (and any related Exhibits), including but not limited to, as the result of the designation of any Substitute Patent Families as Acquisition Patents pursuant to Section 3.3 above, Seller shall bring down its representations and warranties as of immediately prior to the Closing Date (the “
Bring Down Schedule
”) and deliver such Bring Down Schedule to Purchaser or (ii) no such amendment or material change to the representations and/or warranties of Seller as provided herein, Seller shall provide written confirmation that no such amendments or materials changes so exist (the “Bring Down Certification”) .
|
(c)
|
The obligation of Purchaser to consummate the Closing (all of which shall be deemed waived if the Closing occurs) is subject to the satisfaction or waiver by Purchaser of the following conditions:
|
(i)
|
Seller shall have performed all of its obligations hereunder required to be performed by it at or prior to the Closing;
|
(ii)
|
the representations and warranties of Seller contained in this Agreement shall be true at and as of the Closing, as if the Closing was substituted for the date in such representations and warranties; and no information contained in Seller’s Bring Down Schedule shall reflect a material adverse change in the representations and warranties of the Seller from the Effective Date until the Closing Date (unless otherwise waived in writing by Purchaser, in its sole discretion);
|
(iii)
|
no court, arbitrator or governmental authority shall have issued any order, and there shall not be any applicable law, restraining the effective operation or use by Purchaser of any of the Assigned Patent Rights on or after the Closing;
|
(iv)
|
all corporate and other proceedings in connection with the transactions contemplated by this Agreement shall have been performed by Seller, all documents and instruments incident to such transactions and reasonably requested by Purchaser shall be reasonably satisfactory in substance and form to Purchaser and its counsel, shall have been executed and Purchaser and its counsel shall have received counterpart originals or certified or other copies of such documents and instruments as Purchaser or its counsel may reasonably request; and
|
(v)
|
Purchaser being satisfied, in its sole discretion and in consultation with counsel, that the Acquisition Patents are valid and enforceable, taking into consideration any information contained in the Documents.
|
7.2
|
Further Assurance
. At the reasonable request of Purchaser, Seller will execute and deliver such other instruments and do and perform such other acts and things as may be necessary or desirable for effecting completely the consummation of the transactions contemplated hereby, including execution, acknowledgment and recordation of other such papers for fully perfecting and conveying unto Purchaser the benefit of the transactions contemplated hereby. Without limiting the foregoing, Seller will direct its counsel to work cooperatively with Purchaser’s counsel, in a timely manner and, in any event, as soon as practical, including but not limited to responding to any third-party requests for information as authorized by Purchaser and by granting access to inventors currently employed by Seller. To induce Seller to enter into this Agreement, Purchaser will conduct its business in accordance with good business practices.
|
7.3
|
Inventor Agreements
. Seller will make every reasonable effort to cooperate with Purchaser and Purchaser's counsel, in obtaining and delivering to Purchaser inventor agreements, in the form attached hereto as
Exhibit E
, signed by each of the inventors under the Acquisition Patents, and if asked by such inventors will encourage the inventors to so sign the inventor agreements.
|
7.4
|
Inventor Oath and Declaration
. Seller shall obtain and deliver to Purchaser fully executed declarations from each employee inventor under those of the Acquisition Patents which are, as of the Effective Date, pending before the United States Patent and Trademark Office (a “
Pending Patent
”), in the form attached hereto as
Exhibit F
or in another form compliant with 37 CFR 1.63 as in force on the filing date of the Pending Patent and on the Effective Date, in connection with any Pending Patent. The foregoing shall not apply to any Pending Patent(s) which are reissue applications. All Pending Patents that are reissue applications will be particularly designated as such by the Seller. Upon request by Purchaser, Seller will permit Purchaser’s counsel to conduct telephone interviews with each inventor currently employed by Seller at a mutually convenient time for Purchaser’s counsel and such inventor.
|
7.5
|
Payment of Fees
. Purchaser will be responsible for any maintenance fees, annuities, and the like due or payable on the Acquisition Patents following the Closing Date and will reimburse Seller for any such fees, annuities incurred after the Closing Date and the like that are paid by Seller.
|
8.
|
Representations And Warranties Of Seller
|
8.1
|
Authority
. Seller has the full power and authority, and has obtained all third party consents, approvals or other authorizations required, to enter into this Agreement and to carry out its obligations hereunder, including, without limitation, the assignment of the Assigned Patent Rights to Purchaser. The execution and delivery of this Agreement and the related transaction documents and the consummation of the transactions contemplated hereby and thereby have been duly authorized by all necessary corporate actions on the part of Seller. This Agreement and the other transaction documents have been duly executed and delivered by the Seller, and constitute legal, valid and binding obligations of Seller, enforceable in accordance with their terms.
|
8.2
|
Non-Contravention.
Seller’s execution, delivery, and performance of its obligations under this Agreement will not conflict with or violate the corporate documents of Seller or any laws to which Seller is subject, or any agreement or other obligation of Seller or binding upon Seller’s assets or result in the creation or imposition of any mortgage, lien, charge, pledge, security interest, other encumbrance or third party right upon any of the Assigned Patent Rights.
|
8.3
|
Title and Contest
. Seller owns all right, title, and interest to the Assigned Patent Rights, including all right, title, and interest to sue for infringement of the Acquisition Patents and all attorney-client privilege. The Assigned Patent Rights are free and clear of all liens, claims, mortgages and security interests. There are no actions, suits, investigations, claims or proceedings threatened, pending or in progress relating in any way to the Assigned Patent Rights. Seller is not obligated or under any liability whatsoever to make any payments by way of royalties, fees or otherwise to any owner or licensee of, or other claimant with respect to the use of any of the Assigned Patent Rights or subject matter disclosed and claimed in the Acquisition Patents or in connection with the licensing or sale of any of the Assigned Patent Rights to third parties, in each case, other than under the Preexisting Licenses.
|
8.4
|
Preexisting Licenses
.
No licenses under the Acquisition Patents, or interest or rights in any of the Assigned Patent Rights, have been granted or retained other than as set forth on
Exhibit G
and those to be granted at Closing as set forth in Article 5 (the “
Preexisting Licenses
”). To Seller’s best knowledge, the Preexisting Licenses are non-sublicensable (except as to have-made or similar rights and further, except as to affiliates and to suppliers of the licensees) and non-transferable (except in connection with a merger, acquisition, or similar transaction) and non-assignable. Seller represents and warrants that no exclusive licenses under the Patents have been granted. The Preexisting Licenses are not being assigned hereunder and Seller shall continue to remain liable as the “licensor” thereunder, however title is taken subject to Preexisting Licenses.
|
8.5
|
Conduct
. Seller or its agents or representatives have not knowingly engaged in any conduct, or omitted to perform any necessary act, the result of which would invalidate any of the Acquisition Patents or hinder their enforcement, including, without limitation, misrepresenting Seller’s patent rights to a standard-setting organization.
|
8.6
|
Enforcement
. Seller has not put a third party on notice of actual or potential infringement of any of the Acquisition Patents. Seller has not invited any third party to enter into a license under any of the Acquisition Patents. Seller has not initiated any enforcement action with respect to any of the Acquisition Patents.
|
8.7
|
Patent Office Proceedings
. To Seller’s best knowledge, none of the Acquisition Patents has been or is currently involved in any reexamination, reissue, interference proceeding, or any similar proceeding, or that any such proceedings are pending or threatened.
|
8.8
|
Fees
. All maintenance fees, annuities, and the like due on the Acquisition Patents until the lapse of ninety (90) days following the Closing Date have been timely paid.
|
8.9
|
Validity and Enforceability
. The Acquisition Patents have never been found invalid or unenforceable for any reason in any administrative, arbitration, judicial or other proceeding, and Seller does not know of and has not received any notice or information of any kind from any source suggesting that the Acquisition Patents may be invalid or unenforceable.
|
8.10
|
No Joint Development Activity
. To Seller’s best knowledge, no Acqusition Patent (i) is the product or subject of any joint development activity or agreement with any third party; (ii) is the subject of any consortia agreement; or (iii) has been financed in whole or in part by any third party.
|
8.11
|
Terminal Disclaimers
. There are no terminal disclaimers of any kind related to or affecting any of the Assigned Patent Rights.
|
8.12
|
Pending United States Applications
. There are no pending US patent applications of any kind constituting an Assigned Patent Right.
|
8.13
|
Patent Marking
. Seller has addressed patent marking for its products and services by maintaining a website at
www.delphi.com/pdf/dti/delphi-us-patents-august-2012.pdf. To Seller’s best knowledge, no licensee under the Assigned Patent Rights would be required to mark any product or services under the Acquisition Patents and/or their containers, labels, and/or other packaging with any applicable patent numbers.
|
9.
|
Representations And Warranties Of Purchaser.
|
9.1
|
Purchaser is a corporation organized under the laws of Delaware.
|
9.2
|
Purchaser has the full power and authority, and has obtained all third party consents, approvals or other authorizations required, to enter into this Agreement and to carry out its obligations hereunder.
|
10.
|
Miscellaneous
|
10.1
|
Limitation of Liability
. SELLER’S TOTAL LIABILITY UNDER THIS AGREEMENT WILL NOT EXCEED THE AGGREGATE OF THE AMOUNTS PAID TO SELLER.
PURCHASER ACKNOWLEDGES THAT THIS LIMITATION ON SELLER’S POTENTIAL LIABILITY WAS AN ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER THIS AGREEMENT.
|
10.2
|
Limitation on Consequential Damages
. NEITHER PARTY WILL HAVE ANY OBLIGATION OR LIABILITY (WHETHER IN CONTRACT, WARRANTY, TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, AND NOTWITHSTANDING ANY FAULT, NEGLIGENCE (WHETHER ACTIVE, PASSIVE OR IMPUTED), REPRESENTATION, STRICT LIABILITY OR PRODUCT LIABILITY), FOR ANY INCIDENTAL, INDIRECT OR CONSEQUENTIAL DAMAGES OR LOSS OF REVENUE, PROFIT, SAVINGS OR BUSINESS ARISING FROM OR OTHERWISE RELATED TO THIS AGREEMENT, EVEN IF A PARTY OR ITS EMPLOYEES HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
|
10.3
|
Compliance With Laws
. Notwithstanding anything contained in this Agreement to the contrary, the obligations of the parties will be subject to all laws, present and future, of any government having jurisdiction over the parties and this transaction, and to orders, regulations, directions or requests of any such government.
|
10.4
|
Assignment
. Except as permitted hereunder, Seller shall not assign nor transfer this Agreement, or any right, benefit or obligation hereunder, including for the avoidance of doubt, the License, including by a change of control (which shall be deemed an assignment and similarly limited), operation of law or otherwise other than as provided in Section 10.4(a) below.
|
(a)
|
Notwithstanding the foregoing limitations on assignment, Seller may assign all or the pertinent part of its rights, benefits and obligations under this Agreement to an Affiliate or to any Person that acquires, by purchase of stock, purchase of assets, merger, or other form of transaction, all or substantially all of Seller’s equity or assets or all or substantially all of a portion of Seller’s business or assets primarily relating to any of the Acquisition Patents (an “
Acquirer
” and a “
Sale Transaction
,
”respectively); provided that (i) the Acquirer is not a party to a patent assertion claim or infringement action or suit involving one or more of the Acquisition Patents prior to the Sale Transaction; (ii) the Acquirer’s use of the License will be limited to the terms thereof, shall apply strictly to the Licensed Products in existence as of the date of such Sale Transaction (and updates and upgrades thereto and natural evolutions thereof) and in no event will extend to any other products, processes or services of the Acquirer or its Affiliates; and (iii) within thirty (30) days after the transaction with the Acquirer, Seller provides Purchaser with written notice of the transaction, which notice will contain: (x) the effective date of the transaction, (y) a description of the transaction, and (z) a representation and warranty that to Seller’s knowledge the condition set forth in (i) above is met.
|
(b)
|
This Agreement shall be binding upon and inure to the benefit of the parties hereto and their respective successors and assigns. Any attempted assignment in violation of Section 10.4(a) shall be void. For the avoidance of doubt, Purchaser is permitted to sell, assign, or otherwise transfer any of the Acquisition Patents (“
Transferred Patents
”) without Seller’s consent; provided that the License and covenants of Purchaser contained herein with respect to the License shall run with the rights being sold, assigned, or transferred and the Transferred Patents and shall be binding on any successors-in-interest, transferees, or assigns thereof.
|
10.5
|
Confidentiality of Terms
. The parties hereto will keep the terms and existence of this Agreement and the identities of the parties and their Affiliates hereto confidential and will not now or hereafter divulge any of this information to any third party except (a) with the prior written consent of the other party; (b) as otherwise may be required by law or legal process to any governmental body having jurisdiction and specifically requiring such disclosure; (c) subject to obligations of confidentiality and/or privilege at least as stringent as those contained herein, to legal and financial advisors in their capacity of advising a party in such matters; (d) during the course of litigation, so long as the disclosure of such terms and conditions is restricted in the same manner as is the confidential information of other litigating parties; (e) in confidence to its legal counsel, accountants, banks and financing sources and their advisors solely in connection with complying with financial obligations hereunder; (f) subject to obligations of confidentiality and/or privilege at least as stringent as those contained herein, to a counterparty engaged in due diligence in connection with a proposed merger, acquisition, reorganization, or financing of all or substantially of a Party’s assets or equity or in connection with a proposed sale or exclusive license of the Assigned Patent Rights, as applicable; (g) by Purchaser, in order to perfect Purchaser’s interest in the Assigned Patent Rights with any governmental patent office (including, without limitation, recording the Executed Assignment in any governmental patent office); (h) to enforce Purchaser’s right, title and interest in and to the Assigned Patent Rights; or (i) for the purposes of disclosure in connection with the Securities and Exchange Act of 1934, as amended, the Securities Act of 1933, as amended, and any other reports filed with the Securities and Exchange Commission, or any other filings, reports or disclosures that may be required under applicable laws or regulations provided that, in (b) and (d) above, (1) the disclosing party will use all legitimate and legal means available to minimize the disclosure to third parties, including, without limitation, seeking a confidential treatment request or protective order whenever appropriate or available; and (2) the disclosing party will provide the other party with at least ten (10) days’ prior written notice of such disclosure.
|
10.6
|
Governing Law
. This Agreement, and all claims or causes of action
(whether in contract, tort or otherwise) that may be based upon, arise out of or relate to this Agreement or the
negotiation, execution or performance of this Agreement (including any claim or cause of action based upon,
arising out of or related to any representation or warranty made in or in connection with this Agreement or as an
inducement to enter into this Agreement), shall be governed by and construed in accordance with the internal
laws of the State of Delaware, without giving effect to any choice or conflict of law provision or rule.
|
10.7
|
Dispute Resolution
. Except for the right of either party to apply to a court of competent jurisdiction for a temporary restraining order, a preliminary injunction, or other equitable relief to preserve the status quo or prevent irreparable harm, any and all claims, disputes or controversies arising under, out of, or in connection with the Agreement which the parties will be unable to resolve within sixty (60) days will be mediated in good faith. The party raising such dispute will promptly advise the other party of such claim, dispute or controversy in a writing which describes in reasonable detail the nature of such dispute. By not later than five (5) business days after the recipient has received such notice of dispute, each party will have selected for itself a representative who will have the authority to bind such party, and will additionally have advised the other party in writing of the name and title of such representative. By not later than ten (10) business days after the date of such notice of dispute, the party against whom the dispute will be raised will select a qualified mediation firm in the State of Michigan and such representatives will schedule a date with such firm for a mediation hearing. The parties will enter into good faith mediation and will share the costs equally. If the representatives of the parties have not been able to resolve the dispute within thirty (30) days after such mediation hearing, the parties will have the right to pursue any other remedies legally available to resolve such dispute in the Courts of the State of Michigan to whose jurisdiction for such purposes Seller and Purchaser each hereby irrevocably consents and submits. Notwithstanding the foregoing, nothing in this Article will be construed to waive any rights or timely performance of any obligations existing under this Agreement.
|
10.8
|
Notices
. All notices given hereunder will be given in writing, will refer to this Agreement and will be: (i) personally delivered, (ii) delivered prepaid by an internationally recognized express courier service, or (iii) sent postage prepaid registered or certified U.S. mail (return receipt requested) to the address set forth below:
|
If to Seller
|
If to Purchaser
|
Delphi Technologies, Inc.
M/C 483-400-404
5725 Delphi Drive
Troy, MI 48098-2815 USA
Tel: 248 813 1200
Fax: 248 813 1211
Attn: Vice President, Intellectual Property
|
Loopback Technologies, Inc.
2331 Mill Road Suite 100
Alexandria, VA 22314
Tel: 703 232 1701
Fax: 703 997 7320
Attn: Doug Croxall, CEO
|
10.9
|
Relationship of Parties
. The parties are independent contractors and not partners, joint ventures, or agents of the other. Neither party assumes any liability of or has any authority to bind, or control the activities of, the other.
|
10.10
|
Severability
. If any provision of this Agreement is found to be invalid or unenforceable, then the remainder of this Agreement will have full force and effect, and the invalid provision will be modified, or partially enforced, to the maximum extent permitted to effectuate its original objective.
|
10.11
|
Waiver
. Failure by either party to enforce any term of this Agreement will not be deemed a waiver of future enforcement of that or any other term in this Agreement or any other agreement that may be in place between the parties.
|
10.12
|
Miscellaneous
. Except for the Common Interest Agreement entered into by the Parties effective October 12, 2013, this Agreement, including its exhibits, constitutes the entire agreement between the parties with respect to the subject matter hereof, and merges and supersedes all prior and contemporaneous agreements, understandings, negotiations and discussions. Neither of the parties will be bound by any conditions, definitions, warranties, understandings, or representations with respect to the subject matter hereof other than as expressly provided herein. The section headings contained in this Agreement are for reference purposes only and will not affect in any way the meaning or interpretation of this Agreement. No oral explanation or oral information by either party hereto will alter the meaning or interpretation of this Agreement. No amendments or modifications will be effective (except for the updating of Exhibit A-1 by Purchaser as contemplated in Section 3 hereof) unless in writing and signed by authorized representatives of both parties. The following exhibits are attached hereto and incorporated herein: Exhibit A-1 (entitled “Acquisition Patents”); Exhibit A-2 (“Available Patents”); Exhibit B (entitled “Patent Assignment Agreement”, Seller to Purchaser); Exhibit C (entitled “Document Request Form”); Exhibit E (entitled “Inventor Agreement”); Exhibit F (entitled “Inventor Oath and Declaration”); Exhibit G (entitled “Preexisting Licenses). In the event of any inconsistencies between the terms of this Patent Purchase Agreement and any of the Exhibits, the terms of this Patent Purchase Agreement shall prevail.
|
10.13
|
Counterparts; Electronic Signature
. This Agreement may be executed in counterparts, each of which will be deemed an original, and all of which together constitute one and the same instrument. Each party will execute and deliver to the other parties a copy of this Agreement bearing its original signature. Prior to such execution and delivery, in order to expedite the process of entering into this Agreement, the parties acknowledge that Transmitted Copies of this Agreement will be deemed original documents.
“
Transmitted Copies
”
means copies that are reproduced or transmitted via email of a .pdf file, photocopy, facsimile or other process of complete and accurate reproduction and transmission.
|
DELPHI TECHNOLOGIES, INC.
|
LOOPBACK TECHNOLOGIES INC
.
|
By:
/s/ John Carney
|
By:
/s/ Doug Croxall
|
Name: John Carney
|
Name: Doug Croxall
|
Title: Vice President
|
Title: CEO
|
Docket No.
|
Appln. No.
|
Patent No.
|
Patent Title
|
DP-308892
|
10/340,053
|
6745582
|
HVAC control method for a remote start motor vehicle
|
DP-309659
|
10/700,208
|
7280662
|
Time-shifting data in digital radio system
|
G-11317
|
08/185,342
|
5394326
|
Air bag deployment control system and method
|
G-11571
|
08/157,512
|
5430649
|
SIR deployment method based on occupant displacement and crash severity
|
G-11647
|
08/133,351
|
5408448
|
Device and method for CD shuffle play
|
H-174316
|
08/205,468
|
5461567
|
Supplemental inflatable restraint system having a rear impact algorithm for seat belt pretensioner
|
H-184878
|
08/441,107
|
5712625
|
Vehicle operator verification system that prevents vehicle adapting systems from adapting
|
H-190375
|
08/558,124
|
5670962
|
Transmit power control for automotive radar system
|
H-195076
|
08/762,090
|
5714927
|
Method of improving zone of coverage response of automotive radar
|
H-195425
|
08/610,021
|
6175299
|
Analog signal processing system for determining airbag deployment
|
H-195546
|
08/566,029
|
5732375
|
Method of inhibiting or allowing airbag deployment
|
H-196686
|
08/695,814
|
5999871
|
Control method for variable level airbag inflation
|
H-198088
|
08/868,338
|
6012007
|
Occupant detection method and apparatus for air bag system
|
H-199337
|
08/927,588
|
5801619
|
Analog signal processing system and decision logic for controlling airbag deployment
|
H-203655
|
09/192,523
|
6219606
|
Restraint deployment control method having a delayed adaptable deployment threshold
|
H-204666
|
09/309,848
|
6151540
|
Dynamic occupant position detection system and method for a motor vehicle
|
o
|
the United States Patents set forth on
Exhibit A
hereto (the “U.S. Patents”);
|
o
|
the non-United States patents set forth on
Exhibit B
hereto (the “Foreign Patents”);
|
o
|
the United States patent applications set forth on
Exhibit C
hereto (the “U.S. Patent Applications”);
|
o
|
the United States provisional patent applications set forth on
Exhibit D
hereto (the “U.S. Provisional Patent Applications”); and/or
|
o
|
the foreign patent applications set forth on
Exhibit E
hereto (the “Foreign Patent Applications”);
|
Title
|
Patent Number
|
Issue Date
|
Title
|
Patent Number
|
Issue Date
|
Title
|
Application Number
|
Filing Date
|
Title
|
Application Number
|
Filing Date
|
Inventor(s)
|
Title
|
Application Number
|
Filing Date
|
1.
|
File histories including
|
a.
|
Prosecution file history for the Patent Families listed in Exhibit A-1 of the Agreement (“Patents”), including:
|
i.
|
File histories of any Patent
|
ii.
|
File histories of any parent, child or other related patents/applications (i.e. those that claim priority to any Patent or that any Patent either claims priority to and/or incorporates by reference) – regardless of whether they are listed in the Exhibits to the Agreement and regardless of whether the related patents are abandoned or alive
|
iii.
|
All communications retained in the files with, by and to prosecution counsel or agent with respect to the Patents
|
iv.
|
File-stamped copies of all assignment records for all Patents (including copies of all supporting documentation) to the extent retained in the files
|
b.
|
Any prior art references that have been retained in the files
|
c.
|
Pre-filing documents retained in the files such as:
|
i.
|
Invention disclosure records
|
ii.
|
Inventor notebooks
|
iii.
|
Memos, notes, letters, emails etc. requesting that a patent application be prepared
|
iv.
|
Memos, notes, letters, emails etc. discussing the decision of whether to file a patent application
|
v.
|
Memos, notes, letters, emails etc. discussing or describing any products that the proposed invention relates to
|
vi.
|
Documents, including without limitation any memos, notes, letters, emails, presentations, etc. related to or arising from any efforts to create products based on the proposed inventions, relating to the design, development, marketing, sale, offers for sale, public disclosure, or ownership of the products, the proposed inventions and/or patents, including any agreements with third parties (e.g. joint development (or similar) agreements or non-disclosure agreements).
|
vii.
|
All documents related to the conception, reduction to practice, or development of the invention.
|
d.
|
Post-issuance documents such as:
|
i.
|
Ribbon copies of the Patents
|
ii.
|
Certificates of correction and related documents (notes, memos etc related to requests for correction)
|
iii.
|
Re-examinations; reissues; post grant review/challenges
|
iv.
|
Memos regarding payment of maintenance fees and/or annuities (including recommendations of whether or not to pay maintenance fees)
|
2.
|
Any agreements granting any rights under the Patents (including without limitation any licenses, releases, covenants not to sue or any other grant or right) related to or arising from the Patents and applications (including the related patents and applications described in 1.a.i.). Without limiting the foregoing, Seller is requested to provide an example, sample or representative agreement reflecting the terms and conditions contained in the “Pre-existing Licenses” including but not limited to those Pre-existing Licenses identified on Exhibit G of the Agreement.
|
3.
|
Any documents discussing enforcement, threatened enforcement, investigation of infringement, licensing (including all offers to license), liens or charges, valuation, granting any rights under any of the claims of the acquired patents (including releases, covenants not to sue or any other grant or right) or other monetization related to or arising from the Patents (regardless of whether they are listed in Exhibit I as described in 1.a.ii. above) including:
|
a.
|
Documents that relate in any way to an evaluation of the Patents including without limitation documents that relate to strengths, weaknesses etc of the enforceability and/or validity of the patents, infringement and/or non-infringement of any specific entity or by industries in general
|
b.
|
Documents that relate to the enforceability of the Patents
|
c.
|
Documents that relate to the validity of the Patents
|
d.
|
Documents that either are, or discuss a damages analysis regarding any of the Patents
|
4.
|
Any documents related to marking of patented articles including articles made by Seller that were or should have been marked, and marking requirements (including steps taken to enforce marking requirements) in any agreements identified pursuant to request 2 above
|
5.
|
Assignments of the Patents (regardless of whether they are listed in Exhibit I as described in 1.a.ii. above)
|
6.
|
Any documents relating to governmental incentives or other programs relating to the technology underlying the Patents.
|
7.
|
Names of law firms and/or individual lawyers involved in any of the Patents so that the privileged nature of any produced documents can be determined
|
8.
|
Documents related to each named inventor of the Patents (redacted as necessary to preserve information of a personal nature not essential to the evaluation of the Patents) including:
|
a.
|
Employment agreements with each inventor
|
b.
|
Patent Assignments signed by each inventor
|
c.
|
Invention Assignments signed by each inventor
|
d.
|
Employment/HR records of each inventor –
|
e.
|
Separation agreements signed by any inventor
|
9.
|
A list of any proceedings or actions before any governmental entity (including the United States Patent and Trademark Office or equivalent authority anywhere in the world) in which claims are being or were raised relating to the validity, enforceability, scope, ownership or infringement of any of the Patents
|
10.
|
Confirmation in writing that with respect to each Patent, it is currently in compliance with the legal requirements (including payment of filing, examination and maintenance fees and filing of any necessary oaths, proofs of use or other documents) for maintaining, registering, filing, certifying or otherwise perfecting or recording the same with or by such governmental entity, and, if not, the steps required to bring such item into compliance with same.
|
Regards,
|
Delphi Technologies, Inc.
A Delaware company
By: _____________________
Name: John Carney
Title: Vice President
Date: ___________________
Address:
Delphi Technologies, Inc.
5725 Delphi Drive, Troy
MI 48098-2815 USA
|
Delphi Technologies, Inc.
A Delaware company
By: _____________________
Name: John Carney
Title: Vice President
Date: ___________________
Address:
Delphi Technologies, Inc.
5725 Delphi Drive, Troy
MI 48098-2815 USA
|
Name: ___________
Address: _____________
|
1.
|
Section 2.1 shall be stricken and replaced in its entirety with the following:
|
2.
|
A new Section 2.8 is added as follows:
|
3.
|
Section 3.1 shall be stricken and replaced in its entirety with the following:
|
4.
|
Section 3.2 shall be stricken and replaced in its entirety with the following:
|
5.
|
Section 3.3 of the PPA shall be stricken and replaced in its entirety with the following:
|
|
“3.3
|
At Closing, Purchaser shall confirm Exhibit A-1 as the final list of Acquisition Patents.”
|
6.
|
Section 3.4 shall be stricken and replaced in its entirety with the following:
|
7.
|
Section 4.1 shall be stricken and replaced in its entirety with the following:
|
8.
|
Section 7.1 shall be stricken and replaced in its entirety by the following:
|
9.
|
Section 7.2 shall be stricken and replaced in its entirety by the following:
|
10.
|
Section 10.12 shall be amended to delete the reference to Exhibit A-2 (“Available Patents”).
|
11.
|
Exhibit A-1 (“Acquisition Patents”) shall be removed in its entirety and shall be replaced by the new Exhibit A-1, attached hereto.
|
12.
|
Exhibit A-2 (“Available Patents”) shall be removed in its entirety.
|
13.
|
Exhibit C shall be removed in its entirety and shall be replaced by the new Exhibit C, attached hereto.
|
14.
|
Exhibit G shall be removed in its entirety and shall be replaced by the new Exhibit G, attached hereto.
|
15.
|
Except as expressly addressed by this Amendment, all terms and conditions of the PPA shall remain in full force and effect.
|
DELPHI TECHNOLOGIES, INC.
|
LOOPBACK TECHNOLOGIES INC
.
|
By:
/s/ John Carney
|
By:
/s/ Doug Croxall
|
Name: John Carney
|
Name: Doug Croxall
|
Title: Vice President
|
Title: CEO
|
TABLE 1
|
|||
Docket No.
|
App. No.
|
Patent No.
|
Patent Title
|
H-195076
|
08/762,090
|
5714927
|
Method of improving zone of coverage response of automotive radar
|
H-196686
|
08/695,814
|
5999871
|
Control method for variable level airbag inflation
|
H-198088
|
08/868,338
|
6012007
|
Occupant detection method and apparatus for air bag system
|
H-195546
|
08/566,029
|
5732375
|
Method of inhibiting or allowing airbag deployment
|
H-199337
|
08/927,588
|
5801619
|
Analog signal processing system and decision logic for controlling airbag deployment
|
H-195425
|
08/610,021
|
6175299
|
Analog signal processing system for determining airbag deployment
|
H-203655
|
09/192,523
|
6219606
|
Restraint deployment control method having a delayed adaptable deployment threshold
|
H-204666
|
09/309,848
|
6151540
|
Dynamic occupant position detection system and method for a motor vehicle
|
DP-307226
|
09/607,302
|
6369703
|
Tire pressure monitor and location identification system
|
H-301685
|
09/648,972
|
6434486
|
Technique for limiting the range of an object sensing system in a vehicle
|
H-197550
|
08/795,999
|
5954775
|
Dual rate communication protocol
|
DP-307541
|
10/229,832
|
7178139
|
Executable file system for an embedded computer
|
H-306355
|
10/214,048
|
6775601
|
Method and control system for controlling propulsion in a hybrid vehicle
|
TABLE 2 - Expiring Patents
|
|||
H-169208
|
08/208,322
|
5463374
|
Method and apparatus for tire pressure monitoring and for shared keyless entry control
|
H-174858
|
08/205,464
|
5418722
|
SIR deployment method with rough road immunity
|
H-189703
|
08/326,899
|
Method and apparatus for tire pressure monitoring with user activated identification code sign up
|
1.
|
File histories including
|
a.
|
Prosecution file history for the Patent Families listed in Exhibit A-1 of the Agreement (“Patents”), including:
|
i.
|
File histories of any Patent
|
ii.
|
File histories of any parent, child or other related patents/applications (i.e. those that claim priority to any Patent or that any Patent either claims priority to and/or incorporates by reference) – regardless of whether they are listed in the Exhibits to the Agreement and regardless of whether the related patents are abandoned or alive
|
iii.
|
All communications retained in the files with, by and to prosecution counsel or agent with respect to the Patents
|
iv.
|
File-stamped copies of all assignment records for all Patents (including copies of all supporting documentation) to the extent retained in the files
|
b.
|
Any prior art references that have been retained in the files
|
c.
|
Pre-filing documents retained in the files such as:
|
i.
|
Invention disclosure records
|
ii.
|
Inventor notebooks
|
iii.
|
Memos, notes, letters, emails etc. requesting that a patent application be prepared
|
iv.
|
Memos, notes, letters, emails etc. discussing the decision of whether to file a patent application
|
v.
|
Memos, notes, letters, emails etc. discussing or describing any products that the proposed invention relates to
|
vi.
|
Documents, including without limitation any memos, notes, letters, emails, presentations, etc. related to or arising from any efforts to create products based on the proposed inventions, relating to the design, development, marketing, sale, offers for sale, public disclosure, or ownership of the products, the proposed inventions and/or patents, including any agreements with third parties (e.g. joint development (or similar) agreements or non-disclosure agreements).
|
vii.
|
All documents related to the conception, reduction to practice, or development of the invention.
|
d.
|
Post-issuance documents such as:
|
i.
|
Ribbon copies of the Patents
|
ii.
|
Certificates of correction and related documents (notes, memos etc related to requests for correction)
|
iii.
|
Re-examinations; reissues; post grant review/challenges
|
iv.
|
Memos regarding payment of maintenance fees and/or annuities (including recommendations of whether or not to pay maintenance fees)
|
2.
|
Any agreements granting any rights under the Patents (including without limitation any licenses, releases, covenants not to sue or any other grant or right) related to or arising from the Patents and applications (including the related patents and applications described in 1.a.i.). Without limiting the foregoing, Seller is requested to provide an example, sample or representative agreement reflecting the terms and conditions contained in the “Pre-existing Licenses” including but not limited to those Pre-existing Licenses identified on Exhibit G of the Agreement.
|
3.
|
Any documents discussing enforcement, threatened enforcement, investigation of infringement, licensing (including all offers to license), liens or charges, valuation, granting any rights under any of the claims of the acquired patents (including releases, covenants not to sue or any other grant or right) or other monetization related to or arising from the Patents (regardless of whether they are listed in Exhibit I as described in 1.a.ii. above) including:
|
a.
|
Documents that relate in any way to an evaluation of the Patents including without limitation documents that relate to strengths, weaknesses etc of the enforceability and/or validity of the patents, infringement and/or non-infringement of any specific entity or by industries in general
|
b.
|
Documents that relate to the enforceability of the Patents
|
c.
|
Documents that relate to the validity of the Patents
|
d.
|
Documents that either are, or discuss a damages analysis regarding any of the Patents
|
4.
|
Any documents related to marking of patented articles including articles made by Seller that were or should have been marked, and marking requirements (including steps taken to enforce marking requirements) in any agreements identified pursuant to request 2 above
|
5.
|
Assignments of the Patents (regardless of whether they are listed in Exhibit I as described in 1.a.ii. above)
|
6.
|
Any documents relating to governmental incentives or other programs relating to the technology underlying the Patents.
|
7.
|
Names of law firms and/or individual lawyers involved in any of the Patents so that the privileged nature of any produced documents can be determined
|
8.
|
Documents related to each named inventor of the Patents (redacted as necessary to preserve information of a personal nature not essential to the evaluation of the Patents) including:
|
a.
|
Employment agreements with each inventor
|
b.
|
Patent Assignments signed by each inventor
|
c.
|
Invention Assignments signed by each inventor
|
d.
|
Employment/HR records of each inventor –
|
e.
|
Separation agreements signed by any inventor
|
9.
|
A list of any proceedings or actions before any governmental entity (including the United States Patent and Trademark Office or equivalent authority anywhere in the world) in which claims are being or were raised relating to the validity, enforceability, scope, ownership or infringement of any of the Patents
|
10.
|
Confirmation in writing that with respect to each Patent, it is currently in compliance with the legal requirements (including payment of filing, examination and maintenance fees and filing of any necessary oaths, proofs of use or other documents) for maintaining, registering, filing, certifying or otherwise perfecting or recording the same with or by such governmental entity, and, if not, the steps required to bring such item into compliance with same.
|
Regards,
|
Delphi Technologies, Inc.
A Delaware company
By: _____________________
Name: John Carney
Title: Vice President
Date: ___________________
Address:
Delphi Technologies, Inc.
5725 Delphi Drive, Troy
MI 48098-2815 USA
|
Delphi Technologies, Inc.
A Delaware company
By: _____________________
Name: John Carney
Title: Vice President
Date: ___________________
Address:
Delphi Technologies, Inc.
5725 Delphi Drive, Troy
MI 48098-2815 USA
|
·
|
Relationship of Company with third-parties. Directors, executive officers and employees may not engage in any conduct or activities that are inconsistent with the Company's best interests or that disrupt or impair the Company's relationship with any person or entity with which the Company has or proposes to enter into a business or contractual relationship.
|
·
|
Compensation from non-Company sources. Directors, executive officers and employees may not accept compensation, in any form, for services performed for the Company from any source other than the Company.
|
·
|
Gifts. Directors, executive officers and employees and members of their families may not offer, give or receive gifts from persons or entities who deal with the Company in those cases where any such gift is being made in order to influence the actions of a director as a member of the Board or the actions of an executive officer as an officer of the Company, or where acceptance of the gifts would create the appearance of a conflict of interest.
|
Subsidiary
|
|
Jurisdiction of Organization
|
|
|
|
Bismarck IP Inc.
|
Delaware
|
|
CRFD Research, Inc.
|
Delaware
|
|
Cyberfone Systems, LLC
|
Texas
|
|
E2E Processing, Inc.
|
Delaware
|
|
Hybrid Sequence IP, Inc.
|
Delaware
|
|
Loopback Technologies, Inc.
|
Delaware
|
|
Loopback Technologies II, Inc.
|
California
|
|
Relay IP, Inc.
|
Delaware
|
|
Sampo IP, LLC
|
|
Virginia
|
Signal IP, Inc.
|
California
|
|
Vantage Point Technology, Inc.
|
Delaware
|
/s/ Doug Croxall
|
|
Doug Croxall
|
|
Chief Executive Officer
|
|
(Principal Executive Officer)
|
/s/ Richard Raisig
|
|
Richard Raisig
|
|
Chief Financial Officer
|
|
(Principal Financial and Accounting Officer)
|
/s/ Doug Croxall
|
|
Doug Croxall Chief Executive Officer
(Principal Executive Officer)
|
/s/ Richard Raisig
|
|
Richard Raisig
Chief Financial Officer
(Principal Financial and Accounting Officer)
|