Exhibit 10.1
FOURTH AMENDMENT TO THE INTELLECTUAL PROPERTY AGREEMENT
THIS FOURTH AMENDMENT TO THE INTELLECTUAL PROPERTY AGREEMENT (this “Fourth Amendment”), dated February 4, 2021 (the “Fourth Amendment Effective Date”) is an amendment to a certain Intellectual Property Agreement (the “Agreement”) effective January 31, 2016 (the “Effective Date”) and amended on April 12, 2016, May 1, 2017, and March 10, 2019, by and between (a) Hewlett-Packard Development Company, L.P., a Texas limited partnership having its principal place of business at 10300 Energy Drive, Spring, Texas 77389 U.S.A. (“HPDC”), and HP, Inc., a Delaware corporation having its principal place of business at 1501 Page Mill Road, Palo Alto, California 94304, U.S.A. (“HPI”) (HPDC and HPI are collectively referred to herein as “HP”), on the one hand; and (b) Crown Electrokinetics Corp. (f.k.a. 3D Nanocolor Corp.), a Delaware corporation having its principal place of business at 1110 NE Circle Blvd, Corvallis, OR 97330 U.S.A. (“Company”) (each individually referred to as a “Party” and both collectively referred to as the “Parties”).
RECITALS
WHEREAS Company desires to exercise the Assignment Option (as defined in Section 1.3);
WHEREAS HP acknowledges notice of Company’s intent to exercise the Assignment as required under Section 2.3.1;
NOW, THEREFORE, the Parties agree to amend the Agreement as follows:
A. | The Assignable Patents as set forth in Exhibit 1.2 of the Agreement are hereby replaced with the patents and patent applications set forth in Addendum I, Table 1 of this Fourth Amendment, which includes those patents and patent applications set forth in Addendum II, Table 2 of this Fourth Amendment (“Supplementary Patents”). For avoidance of doubt, the patents and applications set forth in Addendum III, Table 3 of this Fourth Amendment (“Excluded Patents”) are not included in the Assignable Patents. |
B. | Section 1.3 is hereby replaced in its entirety as follows: |
1.3 | “Assignment Option” means the option by Company to purchase the Assignable Patents, which Company will have exercised if it pays the amount and within the timeframe contemplated in Section 4.2.1. |
C. | Section 1.5 is hereby replaced in its entirety as follows: |
1.5 | “Closing Date” means the date HP executes the assignment for the Assignable Patents in accordance with Section 4.2.1. |
D. | Section 1.13 is hereby replaced in its entirety as follows: |
1.13 | “Knowledge of HP” means the specific knowledge of HP’s patent counsel and business persons providing support for this Agreement: (i) with respect to the Supplementary Patents, as of the Closing Date; or (ii) on the Effective Date, otherwise, in either (i) or (ii) following a diligent search of HP’s database routinely used for tracking its patent agreements. |
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E. | Section 2.3 is hereby deleted in its entirety. |
F. | Section 2.4 is hereby replaced in its entirety as follows: |
2.4 | Covenant Not to Revive. If Company exercises the Assignment Option, HP agrees not: (i) to pay maintenance fees for the Excluded Patents, (ii) to attempt in any way to revive the Excluded Patents; nor (iii) to have or otherwise a permit an Affiliate or Third Party to do any of the foregoing. |
G. | Exhibit 3.1.2 is hereby replaced with Addendum I of this Fourth Amendment. |
H. | The provisions of Section 4.2 are hereby replaced in their entirety as follows: |
4.2 | Assignment. |
4.2.1 | Company will pay HP the sum of One Million, Five Hundred Fifty Thousand Dollars and Zero Cents (U.S.$1,550,000.00) by February 15, 2021 (“Purchase Price”). |
4.2.2 | If Company exercises the Assignment Option, Company will additionally pay HP a running royalty of as a percent of the gross revenues received by Company and its Affiliates for the sale, rental, license or other disposition of Licensed Products based on the following table: |
Lifetime Cumulative Gross | Royalty | |||
Time Window | Revenue | Rate | ||
Less than $70,000,000 | 0.00% | |||
Prior to December 31, 2029 | $70,000,000 - $500,000,000 | 1.25% | ||
$500,000,000 and beyond | 1.00% | |||
January 1, 2030 onward | 0.00% |
I. | If Company exercises the Assignment Option, HP hereby waives any interest that would have otherwise accrued under Section 4.4 with regards to the payment of Seventy Thousand Dollars and Zero Cents (U.S.$75,000.00) that was specified in the Third Amendment under Section 4.1.1 and was not previously made by Company, and is now included the Purchase Price payable under Section 4.2.1 under this Fourth Amendment. |
J. | Section 5.1 is hereby replaced in its entirety with the following: |
5.1 | Retained License. HP reserves and retains, for the benefit of the HP Group, and/or Company hereby grants back to HP Group, as the case may be, a worldwide, fully paid-up, royalty-free, irrevocable, non-exclusive license under the Assignable Patents to make, have made, use, sell, offer for sale, import, export, and otherwise dispose of or exploit any product or service of HP Group within the Field of Use, and to practice any method, and to authorize third parties to do any of the foregoing on behalf of HP Group. This license shall remain in force for the full term of any Assignable Patents. |
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K. | Exhibit 7.3 is hereby replaced in its entirety with Addendum IV to this Fourth Amendment. |
L. | Section 8.3 is hereby replaced in its entirety as follows: |
8.3 | Termination for Non-Payment. HP may terminate this Agreement upon notice in the event Company fails to make payment in full of any sums payable under this Agreement within the timeframes contemplated hereunder. |
M. | All other terms and conditions of the Agreement remain in effect. |
IN WITNESS WHEREOF, the Parties hereto have duly executed this Fourth Amendment, as of the date set forth in the first paragraph hereof.
“HPI” | “Company” | |||
HP INC. | Crown Electrokinetics Corp. | |||
Signature: | /s/ Annette Friskopp | Signature: | /s/ Douglas Croxall | |
Name: | Annette Friskopp | Name: | Douglas Croxall | |
Title: | Global Head and General Manager Specialty Printing Solutions |
Title: | CEO |
“HPDC” | ||
Hewlett-Packard Development Company, L.P. | ||
By: | HPQ Holdings, LLC, its General Partner | |
Signature: | /s/ Dan Croft | |
Name: | Dan Croft | |
Title: | Manager |
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ADDENDUM I – RECORDABLE ASSIGNMENT
Assignment of Patent Rights
For good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Hewlett-Packard Development Company, L.P., a limited partnership duly organized and existing under the laws of the State of Texas and having its principal place of business at 10300 Energy Drive, Spring, Texas 77389 U.S.A. (“HPDC”), and HP Inc., a corporation duly organized and existing under the laws of the State of Delaware and having its principal place of business at 1501 Page Mill Road, Palo Alto, California 94304, U.S.A. (“HPI”) (HPDC and HPI are collectively referred to herein as Assignor”), hereby grant and assign to Crown Electrokinetics Corp. (“Assignee”) all of Assignor’s right, title and interest in and to the United States Letters Patents identified in Exhibit A (collectively, “Assigned Patents”), to have and to hold the same, for Assignee’s own use and enjoyment and for the use and enjoyment of its successors and assigns, and the right to sue for damages for infringement of such Assigned Patents accruing at any time prior to, on, and/or after the date hereof, for the full term or terms of all such Assigned Patents, subject to all rights granted under the Assigned Patents to third parties prior to _____________, 2021.
IN WITNESS WHEREOF, the Assignor executed this Assignment of Patent Rights by their duly authorized representatives as of the Effective Date as set forth below:
HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.
By: HPQ Holdings, LLC, its General Partner
By: | Date: |
Dan Croft, Head, IP Sales & Licensing
HPQ Holdings, LLC
HP INC.
By: | Date: |
Annette Friskopp, Global Head and General Manager
Specialty Printing Systems
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Table 1 - ASSIGNED PATENTS
HP Internal ID | Country | App. No. | Pat. No. | Application Title | ||||
82250201 | U.S. | 12/411828 | 8018642 | ELECTRO-OPTICAL DISPLAY | ||||
82262213 | U.S. | 12/830581 | 8183757 | DISPLAY ELEMENT | ||||
82262189 | U.S. | 12/815993 | 8184357 | DISPLAY ELEMENT | ||||
82276163 | U.S. | 12/917672 | 8331014 | PIGMENT-BASED INKS | ||||
82262192 | U.S. | 12/815811 | 8384659 | DISPLAY ELEMENT INCLUDING | ||||
ELECTRODES AND A FLUID WITH | ||||||||
COLORANT PARTICLES | ||||||||
82259243 | U.S. | 12/626489 | 8432598 | TRANSPARENT CONDUCTOR STRUCTURE | ||||
82743867 | U.S. | 13/115754 | 8896906 | INKS INCLUDING BLOCK COPOLYMER | ||||
GRAFTED PIGMENTS VIA AZIDE | ||||||||
CHEMISTRY | ||||||||
82239593 | U.S. | 12/865255 | 8054535 | ELECTROPHORETIC DISPLAY DEVICE | ||||
82264649 | U.S. | 12/951348 | 8179590 | ELECTRO-OPTICAL DISPLAY | ||||
84495766 | U.S. | 15/204505 | 10377909 | INKS INCLUDING SEGMENT | ||||
COPOLYMER GRAFTED PIGMENTS | ||||||||
VIA AZIDE CHEMISTRY |
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ADDENDUM II
Table 2 – Supplementary Patents
HP Internal ID | Country | Status | Patent No. | App Title | ||||
82264649 | U.S. | Granted | 8179590 | ELECTRO-OPTICAL DISPLAY | ||||
84495766 | U.S. | Granted | 10377909 | INKS INCLUDING SEGMENT COPOLYMER GRAFTED PIGMENTS VIA AZIDE CHEMISTRY |
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ADDENDUM III
Table III – Excluded Patents
HP Internal ID | Country | Status | Patent No. | App Title | ||||
82260983 | U.S. | Lapsed | 8089687 | ELECTRO-OPTICAL DISPLAY SYSTEMS | ||||
82833776 | U.S. | Lapsed | 9217906 | IN-PLANE ELECTRO-OPTICAL DISPLAY | ||||
83954287 | U.S. | Lapsed | 9244326 | INKS INCLUDING GRAFT COPOLYMER | ||||
SURFACE-MODIFIED PIGMENTS VIA | ||||||||
AZIDE CHEMISTRY | ||||||||
83972160 | U.S. | Lapsed | 9441122 | INKS INCLUDING SEGMENT | ||||
COPOLYMER GRAFTED PIGMENTS VIA | ||||||||
AZIDE CHEMISTRY |
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ADDENDUM IV
Exhibit 7.3 – Unlicensed Companies
With respect to the Assignable Patents other than the Supplementary Patents:
1. | 3M |
2. | E Ink Holdings |
3. | Merck KGaA |
4. | Philips |
5. | Amazon |
With respect to the Supplementary Patents:
This will be delivered via a single letter from HP’s Head of IP Sales & Licensing, prior to May 5, 2021. Any communication with respect to this subject matter prior to such one-time delivery will be considered preliminary and not binding upon HP.
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Amendment