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Attachment D

By Harold Cole,2014-06-28 15:19
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Attachment D ...

    DRAFT

    PATENT SALE AGREEMENT

    This Patent Sale Agreement (“Agreement”) is entered into on ______________(Effective

    Date) by and between ___________________, a ___________ Corporation, having its

    principle place of business at ________________________ (Purchaser), and Delphi

    Technologies Inc., a Delaware corporation, having its principal place of business at 5725

    Delphi Drive, Troy, Michigan 48098 (Seller).

    RECITALS

    HEREAS, Purchaser desires to purchase Seller’s Patent Rights (as defined below), and W

    Seller is willing to sell such Patent Rights to Purchaser under the terms and conditions set

    forth herein;

    NOW, THEREFORE, in consideration of the following mutual promises and other good

    and valuable consideration, the receipt and sufficiency of which is acknowledged, the

    parties, intending to be legally bound, agree as follows:

1. DEFINITIONS

     For the purposes of this Agreement, the terms hereunder shall have the meanings

    as defined below:

     1.1 “Assignment Agreements” means all agreements assigning ownership of the Patent Rights from the inventors and/or prior owners to Seller.

    1.2 Patent Rights” shall mean those specific patent applications and patents listed in Exhibit A (the “Patents”) as well as the right to claim priority based on the applications, the same to be held by and enjoyed by Purchaser to the full end of the term

    for which said Letters Patents are granted, as fully and entirely as the same could have

    been held and enjoyed by Seller if this sale had not been made, together with all rights of

    actions for past infringement thereof including the right to recover damages for said

    infringement.

    Page 1 of 12

    1.3 “U.S. Prosecution History Files” means all non-privileged documents in Seller’s custody that are readily accessible by Seller from its files that directly relate to

    the prosecution of patent applications and that were filed with or received from the

    United States Patent and Trademark Office.

    1.4 Foreign Prosecution History Files” means all non-privileged documents in the custody of Seller’s counsel that are located in the files of Seller’s counsel in a

    jurisdiction outside the U.S. that directly relate to the prosecution of patent applications

    and that were filed with or received from a foreign patent office.

    1.5 “U.S. Deliverables” means the following documentation directly related to

    each Patent Right filed in the United States to the extent that such documentation exists

    and is readily accessible by Seller from its U. S. files: (a) the original copy of the patent

    issued by the USPTO; (b) the original Assignment Agreement(s); (c) the record of

    invention; and (d) U.S. Prosecution History Files. Purchaser acknowledges that some of

    the Patent Rights predate the existence of Seller and that some of the documents

    identified as U.S. Deliverables may not be made available to Purchaser.

    1.6 “Foreign Deliverables” means the following documents directly related to

    each Patent Right filed outside the United States to the extent that such document exists

    and is readily accessible by Seller’s counsel from its files located in a non-U.S.

    jurisdiction: (a) the original copy of the patent issued by the foreign patent office; (b) a

    copy of each pending patent application; and; (c) Foreign Prosecution History Files.

    Purchaser acknowledges that some of the Patent Rights predate the existence of seller and

    that some of the documents identified as Foreign Deliverables may not be made available

    to purchaser.

    2. TRANSFER OF PATENTS AND ADDITIONAL RIGHTS

     2.1 Seller hereby sells, assigns, transfers and conveys to Purchaser all of Seller’s

    right, title and interest in and to the Patent Rights. This sale includes all right, title and

    interest of Seller in all causes of action and enforcement rights for the Patents, including

    all of its rights to pursue damages, injunctive relief and other remedies for past, current

    and future infringement of the Patent Rights. This sale is subject to the pre-existing

    rights of others and existing licenses listed in Exhibit B. Upon receipt of the

    Page 2 of 12

Consideration, Seller shall execute and deliver to Purchaser the assignment agreements

    attached hereto as Exhibit C within 10 days and shall provide the U.S. Deliverables and Foreign Deliverables within 45 days.

     2.2 Effective upon the Closing, and subject to the provisions in paragraph 2.3,

    Purchaser hereby grants to Seller and all Affiliates, a royalty-free, non-exclusive, non-

    sublicensable, perpetual right and license to the Patent Rights (collectively the “Seller

    License”) to practice the methods and to make, have made, use, distribute, lease, sell,

    offer for sale, import, export, develop and otherwise dispose of and exploit any of

    Seller’s or any Affiliates’ processes and products (collectively the “Covered Products”).

    The Seller License shall apply to the reproduction, and subsequent distribution of

    Covered Products as they are distributed by Seller, Affiliates, authorized agents of the

    Seller, and Affiliates, and third parties in the supply chain for the Seller and any

    Affiliates, such as a distributor, replicator, VAR, or OEM. The Seller License is non-

    transferable (by operation of law or otherwise), except as set forth in paragraph 2.3.

     2.3 Without obtaining the consent of Purchaser, and without providing prior

    notice to Purchaser, Seller, or an Affiliate may assign or otherwise sublicense rights

    under the Seller License with respect to Covered Products in the context of an assignment

    to a third party purchaser (a “Permitted Transferee”) of an operating unit, product line,

    or product business of the Seller or an Affiliate that involves the one or more Covered

    Products. In the event of each such transfer (a “Transfer”), a Permitted Transferee’s use

    of the Seller License will be limited to the Covered Products that are of the type produced

    by the transferred operating unit, product line, or product business before the Transfer.

    Except for the Covered Products described in the preceding sentence, the Seller License

    will not extend to any other products, processes or services of a Permitted Transferee.

    Notwithstanding the foregoing, Seller shall retain Seller License rights in the event of a

    Transfer.

3. CONSIDERATION

    Page 3 of 12

     3.1 Purchaser shall pay to Seller the sum of _____________ ($__________ )

    as consideration for the sale of the Patent Rights to Purchaser under this Agreement. The

    $__________ shall be paid upon delivery of this Agreement.

     3.2 All payments shall be made by wire transfer of funds to Seller:

     The Chase Manhattan Bank N.A.

     One Chase Manhattan Plaza

     New York, New York 10081, USA

     ABA # 021000021

     Credit to: Delphi Technologies Inc.

     Account # 323022537

4. REPRESENTATIONS AND WARRANTIES

     4.1 Mutual Representations and Warranties

     Each party represents and warrants to the other as follows:

     (a) it is a corporation duly organized and validly existing under the laws of the state or country of its incorporation;

     (b) it has the complete and unrestricted power and right to enter into this Agreement and to perform its obligations hereunder;

     (c) the execution, delivery and performance of this Agreement by such party does not conflict with any agreement, instrument or understanding, oral or written,

    to which such party is a party or by which such party may be bound, nor violate any law

    or regulation of any court, governmental body or administrative or other agency having

    authority over such party;

     (d) all consents, approvals and authorizations from all governmental authorities, administrative or other agencies, trustees or any other persons having

    authority over such party required to be obtained by such party in connection with the

    execution and delivery of this Agreement have been obtained including any requirements

    Page 4 of 12

of the United States Bankruptcy Court for the Southern District of New York with respect

    to Chapter 11 bankruptcy proceedings of the Seller and Seller’s affiliates.

     (e) no person or entity has or will have, as a result of the transactions

    contemplated by this Agreement, any right, interest or valid claim against or upon such

    party for any commission, fee or other compensation as a finder or broker because of any

    act by such party or its agents; and

     (f) it has not entered into any agreement with any Third Party that is

    in conflict with the rights granted to the other party pursuant to this Agreement.

     4.2 Seller Representations and Warranties

     Seller represents and warrants that:

     (a) Seller is the true owner of all right, title and interest in and to the Patent Rights, and Seller knows of no asserted or unasserted claims of ownership of the

    Patent Rights by any party other than the Seller;

     (b) Seller knows of no inventors of the Patent Rights other than the

    named inventors of the Patent Rights, and knows of no asserted or unasserted claims of

    inventorship of the Patent Rights by any person other than the named inventors of the

    Patent Rights; and

     (c) Seller knows of no asserted claims of prior invention of the Patent

    Rights by any third party, including any interferences or requests for interferences

    involving the Patent Rights, except as appear in the USPTO record.

     4.3 Purchaser Representations and Warranties

     Purchaser represents and warrants that:

     (a) Payments to Seller will be made in accordance with the provisions

    contained in Article 3.

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     (b) Purchaser is aware that through the conduct of Seller’s business

    there are third parties that have license rights under the Patent Rights.

    5. DISCLAIMER OF OTHER WARRANTIES

     THE WARRANTIES SET FORTH IN ARTICLE 4 ABOVE ARE PROVIDED IN LIEU OF,

    AND EACH PARTY HEREBY DISCLAIMS, ALL OTHER WARRANTIES, EXPRESS AND IMPLIED,

    RELATING TO THE SUBJECT MATTER OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED

    TO THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR

    PURPOSE, TITLE AND NON-INFRINGEMENT OF THIRD PARTY RIGHTS.

6. GENERAL PROVISIONS

     6.1 Paragraph Headings

     The paragraph headings are inserted only for purposes of reference. Such

    captions shall not affect the scope, meaning or intent of the provisions of this Agreement

    nor shall such headings otherwise be given any legal effect.

     6.2 Joint Drafting

     Seller and Purchaser acknowledge that each has participated in the drafting and

    negotiation of this Agreement. For purposes of interpreting this Agreement, each

    provision, paragraph, sentence and word herein shall be deemed to have been jointly

    drafted by Seller and Purchaser. They intend for this Agreement to be construed and

    interpreted neutrally in accordance with the plain meaning of the language contained

    herein, and not presumptively construed against any actual or purported drafter or any

    specific language contained herein.

     6.3 Forum

     Any claim arising under or relating to this Agreement shall be governed by the

    internal substantive laws of the State of Michigan without regard to principles of conflict

    of laws. Each party hereby agrees to the exclusive jurisdiction and venue of the state and

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federal courts having within their jurisdiction Michigan for all disputes arising out of or

    relating to this Agreement.

     6.4 Notices.

     Any notice, request, or communication under this Agreement shall be effective only if it is in writing and personally delivered; sent by certified mail, postage pre-paid;

    facsimile with receipt confirmed; or by nationally recognized overnight courier with

    signature required, addressed to the parties at the addresses stated below or such other

    persons and/or addresses as shall be furnished in writing by any party in accordance with

    this Section 6.3. Unless otherwise provided, all notices shall be sent:

     If to Delphi Technologies Inc., to:

     Delphi Technologies Inc.

     5725 Delphi Drive,

     Troy, Michigan 48098

     Fax: 248-813-5008

     Attn: Director, Commercialization and Licensing

     With a copy to:

     Legal Department (Intellectual Property)

     5825 Delphi Drive

     Troy, Michigan 48098

     Fax: 248-813-1211

     Attn: Assistant General Counsel

     If to___________________, to:

    Purchaser Contact Information

     If sent by facsimile transmission, the date of transmission shall be deemed to be

    the date on which such notice, request or communication was given. If sent by overnight

    courier, the next business day after the date of deposit with such courier shall be deemed

    to be the date on which such notice, request or communication was given. If sent by

    certified mail, the third business day after the date of mailing shall be deemed the date on

    which such notice, request or communication was given.

     6.5 Entire Agreement

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     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, including any letter of intent. No oral agreement or explanation by either party hereto shall alter the meaning or interpretation of this Agreement. No amendments or modifications shall be effective unless in writing signed by authorized representatives of both parties.

     6.6 Counterparts

     This Agreement may be executed in two counterparts, each of which shall

    constitute an original document, but both of which shall constitute one and the same instrument.

    IN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective

    Date.

    DELPHI TECHNOLOGIES, INC.

By: _____________________________________

Name: ___________________________________

Title: ____________________________________

    Purchaser By: _____________________________________

Name: ___________________________________

    Title: ____________________________________

    Page 8 of 12

    EXHIBIT A

    Patents to be Assigned

    Patent or Application Country Filing Title of Patent

    No. Date

    Page 9 of 12

    EXHIBIT B

    Existing Licenses

    1. License granted by General Motors Corporation (“GM”) prior to the spin-

    off (the “Spin-0ff”) of Seller’s corporate parent, Delphi Corporation

    (“Delphi”), from GM in 1999.

GM may have granted licenses pursuant to written agreements under one or more

    of the Patent Rights before the Spin-off, some or all of which may be transferable

    and sub-licensable. Seller does not have copies of such agreements.

    2. License granted to GM.

Seller has granted licenses to GM to make, have made, use, have use, offer to sell

    and import products, processes and services under some or all of the Patent Rights.

    These licenses include the right to sublicense the foregoing rights to GM’s

    affiliates. At least one of these licenses also include the right to sublicense

    suppliers of GM and GM’s affiliates to perform any of the foregoing activities,

    solely in connection with such GM supplier’s production of products for GM.

    GM affiliates are defined very broadly in these license agreements.

    3. Re-source license rights under certain contract between Seller and its

    customers.

Some contracts between Seller and/or any Affiliates and Seller’s customers

    include a “re-sourcing” provision that allows Seller’s customers to terminate the

    contract and “re-source” the business to another supplier for a variety of reasons. Customers of Seller who exercise their “re-source” rights are licensed to authorize

    other suppliers to perform the activities with respect to Covered Products that are

    currently performed by Seller or any Affiliates.

    4. Prior license granted to Delphi and its Affiliates

    a. In connection with Delphi’s divestiture of portions of its business Delphi

    has granted under all patents owned by Delphi to the purchaser of such

    businesses for the manufacture of the products of such divested business.

    b. Delphi has agreed not to assert any additional Delphi patents against

    products already under license from Delphi. This is a typical provision in

    license agreements and is found in numerous Delphi licenses to others.

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