EXHIBIT 10 (f)
ASSIGNMENT AGREEMENT
This Assignment Agreement is effective as of this 10th day of
January, 1996 by and between Energy Absorption Systems, Inc., a Delaware
corporation ("Energy"), and Barrier Systems, Inc., a California corporation
("BSI").
W I T N E S S E T H:
WHEREAS, Energy owns the entire right, title and interest in and to
certain Patents (as defined herein) related to Barriers (as defined herein)
and to methods or devices for moving such Barriers, and certain Licenses
(as defined herein) granted in connection with such Patents; and
WHEREAS, Energy desires to sell and assign all of its right, title and
interest in the Patents subject only to the Licenses to BSI, and BSI
desires to buy and accept such assignment of the Patents subject to the
Licenses, all in exchange for the consideration described herein;
NOW, THEREFORE, IT IS AGREED:
1 Definitions.
1.1 Patents. "Patents" means the patents and patent applications
listed in Schedule 1.1 and all related patents or patent applications if
any, whether previously or subsequently filed, which correspond to or claim
the priority of any of the patents and patent applications listed in
Schedule 1.1 and attached hereto, including all divisions, continuations,
continuations-in-part and reissues thereof.
1.2 Licenses. "Licenses" shall mean the licenses of the Patents
listed in Schedule 1.2 and attached hereto.
1.3 Barriers. "Barriers" means (a) any transferable roadway barrier
having an upper end defining continuous lifting ledges for receiving
rollers that lift and suspend the barrier, and (b) any barrier transport
device with a rigid conveyor having a fixed S-shaped configuration that
lifts and suspends a barrier as it moves across one or more traffic lanes.
1.4 CMR License. "CMR License" means the Agreement of November 2,
1983 between the Commissioner of Main Roads ("CMR") and Quick-Steel
Engineering Party Limited ("Quick-Steel Engineering") whereunder CMR, as
Licensor, grants to Quick-Steel Engineering, as Licensee, a non-exclusive
license to manufacture, use and sell moveable lane dividing strip
structures for roadways pursuant to an Australian Patent No. 482604.
2 Assignment.
2.1 Assignment of Patents. Energy hereby assigns to BSI its entire
right, title and interest in and to the Patents, subject only to the
Licenses, and its rights, if any, to past damages arising from the Patents.
2.2 Assignment of Licenses. Energy hereby assigns to BSI its entire
right, title and interest in and to the Licenses.
2.3 Assignment of Litigation. Energy will assign to BSI, at BSI's
request, all of Energy's right, title and interest in and to the
Litigation,
as such term is defined in Section 5.4 below.
3 Consideration.
3.1 Payments. In exchange for the assignments described in
Section 2, BSI hereby agrees to pay Energy One Million Nine Hundred Sixty
Thousand and Sixty-Eight Dollars and Ninety Cents ($1,960,068.90) on the
date hereof.
3.2 Assumption of Licenses. As further consideration for the
assignments described in Section 2, BSI hereby assumes all of the
obligations of Energy under the Licenses, and will indemnify Energy against
any and all liabilities (including but not limited to reasonable attorneys
fees) arising after the date hereof from the Licenses and from the
assignment of the Licenses to BSI.
3.3 Forgiveness of Royalties. Energy hereby forgives, releases and
cancels in full BSI's obligation to pay to Energy royalties that are not
yet payable on the date hereof, pursuant to the terms of that certain
amended and restated License Agreement between Quick-Steel Engineering
Party Limited and Barrier Systems, Inc. dated May 1, 1989, amending and
restating the Agreement between Quick-Steel Engineering and Carson
Manufacturing Company dated May 10, 1983 (the "BSI License").
4 CMR License.
4.1 Acknowledgments by BSI. BSI acknowledges that it is aware of the
terms of the CMR License. BSI acknowledges that Section 10(b) of the CMR
License prohibits the licensee from assigning its rights thereunder without
the prior consent in writing of CMR, and that such consent shall not be
unreasonably withheld. BSI further acknowledges that Energy has not
obtained the consent of CMR to its assignment to BSI of the CMR License.
4.2 Conflict with CMR License. Energy represents and warrants that,
to the best of its knowledge without any investigation and based solely on
the representations of Quick-Steel Engineering (i) the devices described in
the Patents are not "Improvements" as that term is defined in the CMR
License, and (ii) the present commercial versions of the products covered
by the Patents do not embody the "Technology" and are not licensed
"Products" as those terms defined in the CMR License. Energy represents and
warrants that Energy has not paid and is not liable for the payment of any
royalties to CMR pursuant to the CMR License.
4.3 Consent of CMR. Notwithstanding the assignment by Energy of
whatever rights and interests it may have in the CMR License, BSI
acknowledges that Energy does not intend to seek the consent of CMR in
connection with this transaction. BSI will consummate the transactions
contemplated herein without requiring Energy to obtain CMR's consent to the
assignment of its interests in the CMR License.
5 Further Assistance.
5.1 Communication with Patent Advisors; Files and Records.
Energy will promptly instruct its patent advisors for each of the Patents
to disclose and release all files related to the Patents to BSI. Energy
will cooperate with BSI, at BSI's expense, in all reasonable ways in
further prosecution and other activities related to the Patents.
5.2 Documentation of Assignments. Energy will promptly execute any
additional documents required by BSI to carry out the assignments of this
Agreement, including recordable assignments for the Patents.
5.3 Notices to Licenseholders. Energy will cooperate with BSI to
send appropriate written notices pertaining to the assignment of the
Licenses, as required by the Licenses or as otherwise reasonably requested
by BSI.
5.4 Canadian Litigation. BSI recognizes and acknowledges that upon
consummation of the assignment to BSI of the Patents and Licenses, Energy
will take action to remove itself from all litigation pending in Canada
relating to the Patents ("Litigation"). Energy will cooperate with BSI
concerning the Litigation; provided, however, if BSI elects to pursue the
Litigation after the assignment of the Patents and Licenses, BSI agrees to
indemnify and hold Energy harmless from any damages Energy suffers arising
after the date hereof from BSI's continued participation in the Litigation.
6 Covenants of Energy.
6.1 Non-Disclosure. Energy agrees that (except as otherwise required
in the performance of its obligations hereunder) it will not directly or
indirectly use for the benefit of anyone other than BSI, or disclose to
others, any confidential information or data relating to Barriers,
including, without limitation, confidential information and data relating
to Barriers, the Patents, and Licenses; provided however, BSI acknowledges
and agrees that Energy's parent company may disclose information regarding
this Agreement and the transactions contemplated herein in order to comply
with its public company reporting obligations under the securities laws.
6.2 Records. Energy shall deliver to BSI within five (5) days of the
date hereof the originals and all copies of all records and confidential
information and data related to Barriers, the Patents, and Licenses
including without limitation, notes, lists, models, drawings and sketches,
blueprints and technical documentation, prepared by Energy or its assignor
(or their agents) or otherwise in Energy's possession, on or prior to the
date of this Agreement.
6.3 Non-competition. For a period from the date hereof until three
(3) years after the last to expire of the Patents, Energy shall not sell
directly or indirectly any product that would infringe the Patents or that
could be substituted for existing applications of the Product in the
Territory as of the date hereof without prior approval of BSI; provided,
however, that the foregoing restriction shall not apply to any Energy
product or product line, including future modifications of such products,
which are identified in Schedule 6.3 attached hereto and incorporated
herein. For purposes of this Section 6.3, (i) Product shall mean a
moveable barrier system as described in United States patent numbers
4,498,803, 4,500,225 or 4,624,601 consisting of a series of moveable
barriers, transfer vehicle(s) and ancillary equipment necessary to allow
the barrier system to function properly, and (ii) Territory shall mean
those countries of the world where any of the Patents have been issued.
7 Representations and Warranties of Energy.
7.1 Accuracy and Completeness of Disclosure. Energy represents and
warrants: (a) Schedule 1.1 lists all of the patents and patent applications
which both (i) are in any way related to Barriers or to methods or devices
for moving Barriers and (ii) are owned in whole or in part by Energy; and
(b)(i) Schedule 1.2 lists all of the licenses which have been granted in
connection with such Patents, and (ii) that except as listed on Schedule
1.2, there are no other agreements, arrangements, contracts or
understandings which govern or relate to the Patents and the Licenses.
7.2 Ownership. Energy represents and warrants that as of the date of
this Agreement, Energy holds all right, title and interest in and to the
patents and patent applications of Schedule 1.1 (except for the rights
granted to third parties by the Licenses of Schedule 1.2).
7.3 Right to Assign. Energy represents and warrants that subject to
the provisions of Section 4 and the Licenses, Energy has the right to
assign the rights assigned by this Agreement, except as required by the CMR
License.
7.4 Payment of Maintenance Fees. Energy represents and warrants that
all maintenance fees on the Patents due on or before December 31, 1995 have
been paid by Energy.
7.5 No Conflicting Agreements. Energy represents and warrants that
it is not a party to any other agreement, the terms and conditions of
which, would prevent or interfere with its obligations under this
Agreement. Energy represents and warrants that to the best of Energy's
knowledge, except as set forth on Schedule 7.5, there are no disputes
between Energy and any third party to said Licenses, and there are no
disputes between Energy and any third party to any other agreements,
contracts, understandings or arrangements regarding the subject matter of
this Agreement.
7.6 Information Regarding Licenses, Contracts. Energy represents and
warrants that it has delivered to BSI true, accurate and complete copies of
all Licenses and all other contracts, agreements, understandings or
arrangements which govern or relate to Barriers, the Patents, and the
Licenses. Except with respect to the BSI License, Energy hereby represents
and warrants that it is not in default under or in breach or violation of
any term or provision of any of the Licenses, or any other contract,
agreement, understanding or arrangement which governs or relates to
Barriers, the Patents or the Licenses, and, to Energy's knowledge, no other
party to any License or any other such contract, agreement, understanding
or arrangement is in default thereunder, except as set forth on Schedules
7.5 and 7.8.
7.7 Status of Licenses, Contracts. Energy represents and warrants
that the parties to the Licenses described on Schedule 1.2 have made
reports and paid royalties through the dates set forth on Schedule 7.7.
7.8 No Infringement Actions. Energy represents and warrants (a) that
there are no infringement actions or any other legal proceedings, pending
or, to Energy's best knowledge, threatened, with respect to the Patents
except as set forth on Schedule 7.8, and (b) that, to the best of Energy's
knowledge, the systems claimed in the Patents do not infringe any other
patent or rights.
8 Representations and Warranties of BSI.
8.1 Right to Enter Agreement. BSI represents and warrants that it
has the power and authority to enter into this Agreement and to undertake
the obligations contemplated herein.
8.2 No Conflicting Agreements. BSI represents and warrants that it
is not a party to any other agreement, the terms and conditions of which,
would prevent or interfere with its obligations under this Agreement. BSI
represents and warrants that except as set forth on Schedule 8.2, there are
no disputes between BSI, Energy or, to BSI's best knowledge, any third
party to said Licenses, and there are no disputes between BSI and any third
party to any other agreements, contracts, understandings or arrangements
regarding the subject matter of this Agreement.
8.3 Copies of Licenses, Contracts. BSI represents and warrants that
it has received from Energy copies of all Licenses and all other contracts,
agreements, understandings or arrangements listed on Schedule 1.2 attached
hereto.
8.4 No Infringement Actions. BSI represents and warrants that to the
best of its knowledge there are no infringement actions or any other legal
proceedings, pending or threatened, with respect to the Patents except as
set forth on Schedule 7.8, and that the systems shown in the Patents do not
infringe any other patent or rights.
8.5 Disclosure. BSI represents and warrants that to the best of its
knowledge, Schedule 1.2 lists all of the Licenses that are in any way
related to the Patents.
9 Miscellaneous Provisions
9.1 Expenses. All expenses incurred by any party hereto shall be
borne by the party incurring the same.
9.2 Notices. Any notice expressly provided for under this Agreement
shall be in writing, and shall be deemed given and effective when delivered
in hand or received by courier or telecopy or, if mailed, on the third day
after the date of mailing if sent by certified or registered mail, return
receipt requested, postage prepaid, addressed to such party at the address
for such party set below. Any party and any representative designated
below may, by notice to the others, change its address for receiving such
notices.
Address for notices to Energy:
George D. Ebersole, President
Energy Absorption Systems, Inc.
One E. Wacker Drive, Suite 3000
Chicago, Illinois 60601
Fax No. (312) 467-9928
with a copy to:
Anne Hamblin Schiave
McBride Baker & Coles
500 West Madison Street, 40th Floor
Chicago, Illinois 60606
Fax No. (312) 993-9350
Address for notices to BSI:
John W. Duckett, President
Barrier Systems, Inc.
1100 East William Street, Suite 206
Carson City, NV 89701-3104
Fax No. (702) 885-2598
with a copy to:
John V. Erickson, Esq.
Collette & Erickson
555 California Street, Suite 4350
San Francisco, CA 94104
Fax No. (415) 788-6929
9.3 Severability. In case any provision in this Agreement shall be
held invalid, illegal or unenforceable, the validity, legality and
enforceability of the remaining provisions hereof will not in any way be
affected or impaired thereby.
9.4 Third Party Beneficiaries. Each party hereto intends that this
Agreement shall not benefit or create any right or cause of action in or on
behalf of any person other than the parties hereto.
9.5 Assignment and Benefits of Agreement. This Agreement shall be
binding upon and shall inure to the benefit of the parties or their
respective successors, but may not be assigned by any of the foregoing
without the written consent of the others. Except as aforesaid, nothing in
this Agreement, express or implied, is intended to confer upon any person
other than the parties hereto and their said successors and assigns, any
rights under or by reason of this Agreement.
9.6 Construction of Agreement. Section headings shall have no effect
on the interpretation of this Agreement. This Agreement has been
negotiated by the respective parties hereto and their attorneys and the
language hereof shall not be construed for or against any party. A
reference to a Section, an Exhibit or a Schedule shall mean a section in or
an exhibit or schedule to this Agreement unless otherwise explicitly set
forth.
9.7 Entire Agreement; Counterparts, Etc. This Agreement and
Schedules and Exhibits attached hereto constitute the entire agreement
among the parties as to the subject matter of this Agreement. This
Agreement may be executed in one or more counterparts, all of which shall
constitute one and the same instrument.
9.8 Governing Law. This Agreement shall be construed in accordance
with and governed by the laws of the State of Illinois.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be executed as of the date first written above.
ENERGY ABSORPTION SYSTEMS, INC.
By: /s/George D. Ebersole
---------------------------------
George D. Ebersole, President
BARRIER SYSTEMS, INC.
By: /s/John W. Duckett
---------------------------------
John W. Duckett, President
Schedule 1.1
Patents
Title of Inventor Country Patent Date
Patent Number Issued
- -------- -------- ------- ------ ------
Transferable John P. Australia 535,245 29/6/84
Roadway Lane Quittner
Divider
Transferable John P. Australia 576,754 3/1/89
Lane Divider Quittner
Transferable John P. Austria 0125817* 18/3/87
Lane Divider Quittner
Transferable John P. Belgium 125,817* 18/3/87
Lane Divider Quittner
Transferable John P. Canada 1,176,848 30/10/84
Roadway Lane Quittner
Divider
Transferable John P. Canada 1,208,469 29/7/86
Roadway Lane Quittner
Divider
Transferable John P. Canada 1,230,001 08/12/87
Lane Divider Quittner
Transferable John P. Canada 1,232,784 16/2/88
Lane Divider Quittner
Transferable John P. Federal 0125817* 18/3/87
Lane Divider Quittner Republic
of Germany
Transferable John P. France 125,817* 18/3/87
Lane Divider Quittner
Transferable John P. Italy 125,817* 18/3/87
Lane Divider Quittner
Transferable John P. Japan 1732493 17/2/93
Lane Divider Quittner
Transferable John P. Luxembourg 125,817* 18/3/87
Lane Divider Quittner
Transferable John P. Malaysia U1-9102410 27/12/91
Lane Divider Quittner (Pending) (Filing Date)
Transferable John P. Malaysia U1-9102411 27/12/91
Lane Divider (Pending) (Filing Date)
Transferable John P. The 125,817* 18/3/87
Lane Divider Quittner Netherlands
Transferable John P. Sweden 125,817* 18/3/87
Lane Divider Quittner
Transferable John P. Switzerland 125,817* 18/3/87
Lane Divider Quittner
Transferable John P. United 125,817* 18/3/87
Lane Divider Quittner Kingdom
Moveable Lane John P. United 4,498,803 12/02/85
Barrier Quittner States
Locking System
Transferable John P. United 4,500,225 19/02/85
Roadway Lane Quittner States
Divider
Transferable John P. United 4,624,601 25/11/86
Roadway Lane Quittner States
Divider
* Energy has discovered that the disclosure of Australian Patent No.
535,245 qualifies as prior art against these patents, which will narrow the
scope of the patents.
Schedule 1.2
Licenses
1. Amended and Restated License Agreement between Quick-Steel
Engineering Party Limited and Barrier Systems, Inc. dated May 1, 1989,
amending and restating the Agreement between Quick-Steel Engineering and
Carson Manufacturing Company dated May 10, 1983.
2. Agreement between Quick-Steel Engineering Party Limited and Carson
Manufacturing Company dated May 10, 1983, which may have been amended from
time to time.
3. Agreement between Quick-Steel Engineering Party Limited and
Techniques Speciale De Securite dated December 1, 1983 relating to a
transferable roadway lane divider, and amended on April 16, 1984.
4. Agreement between Quick-Steel Engineering Party Limited and
Techniques Speciale De Securite dated December 1, 1983 relating to a
moveable media strip.
5. Transfer of License Agreement between EMT-International BV. and
Techniques Speciale De Securite dated July 1, 1987. [deemed rescinded]
6. License Agreement between the Commissioner of Main Roads and Quick-
Steel Engineering Party Limited, dated November 2, 1983.
Schedule 6.3
Permanent Mounted Attenuators
G-R-E-A-T (Registered Trademark) System
Hi-Dro (Registered Trademark) Sandwich System
Hex-Foam (Registered Trademark) Sandwich System
The N-E-A-T'
LMA (Registered Trademark)
Hi-Dro' Cell Cluster
Brakemaster (Registered Trademark) System
Work Zone Attenuators
Energite (Registered Trademark) Inertial Barrier
Systems
The N-E-A-T'
G-R-E-A-T (Registered Trademark) CZ
TRITON (Registered Trademark) BARRIER
Truck Mounted Attenuators
Hex Foam (Registered Trademark) TMA
Alpha 1000 (Registered Trademark)
Alpha 2001 MD (Registered Trademark)
Alpha 60 MD (Registered Trademark)
LS-PRO TMA
Cushion Wall'
Barrier Gate (Registered Trademark)
Guardrail and GuardRail End Treatments
Sentre (Registered Trademark)
Trend (Registered Trademark)
W-Beam
Thrie Beam
RTA'
Longitudinal Barrier
TRITON (Registered Trademark) BARRIER
Miscellaneous Products
MP-3 (Registered Trademark) Anchors
QuadGuard Attenuator
Schedule 7.5
Conflicting Agreements, Disputes
1. Energy and TSS believe that Gaillednat of 17, Rue Pierre
Rigaud, 94200 Ivry Sur Seine, France is infringing the patents.
2. Energy believes that TSS may not be paying royalties on all
royalty-bearing transactions. See correspondence between Messrs. Dreznes
and Tabaillon dated June 19, 1995, attached hereto.
Schedule 7.7
Royalty Payment Schedule
Royalty Payments On Royalty Payments
Sales Made Since Made On Sales Made
License 7/1/94 for Period Ended
- -----------------------------------------------------------------------
BSI $ 546,157.74 September 30, 1995
TSS 93,373.41 September 30, 1995
Schedule 7.8
Infringement Actions and Other
Legal Proceedings
1. Canada Federal Court File No. T-2197-92.
Energy Absorption Systems, Inc., Plaintiff, and 2859-7888 Quebec
Inc., Richard Capuano, 2704927 Canada Inc., Les Services de Beton
Universels Ltee, Defendants.
2. Canada Federal Court File No. T-2394-94
Energy Absorption Systems, Inc., Plaintiff, and D.I.M.S. Construction
Inc., Defendant.
3. Canada Federal Court No. T-1154-95
Energy Absorption Systems, Inc., Plaintiff, and Gilles Richer,
Signalisation LASM Inc., 9015-2539 Quebec Inc., Richard Bourdon, LaCroix
Industries, 2842-6351 Quebec Inc., c.o.b. as Signalisation Laurentienne,
Mole Construction Inc., John Doe, Jane Doe, and Doe Corporation,
Defendants.
4. Quebec Superior Court Action No. 500-05-009072-925
2704927 Canada Inc., Plaintiff, and Les Services de Beton Universels
Ltee, Defendant, and Energy Absorption Systems, Inc., Intervenant.
Schedule 8.2
BSI Disputes
None.