BSST Assignment & Subscription Agreement

Exhibit 10.1


ASSIGNMENT AND SUBSCRIPTION AGREEMENT


This ASSIGNMENT AND SUBSCRIPTION AGREEMENT (this "Agreement") is entered into as of September 4, 2000 by and between DR. LON E. BELL (the "Assignor") and BSST, LLC, a Delaware limited liability company (the "Company").


RECITALS


WHEREAS, as part of the initial capitalization of the Company and subject to the terms hereof, the Assignor desires to convey and assign certain assets described herein as full consideration for the issuance by the Company to the Assignor of 100,000 Class A Common Units (the "Units"), which represent all of the outstanding membership interests of the Company as of the date hereof, and the Company desires to accept such conveyance and assignment and assume such assets and rights and to issue the Units to the Assignor; and


WHEREAS, in order to induce the Assignor to enter into this Agreement, the Company has agreed concurrently to enter into the Revenue Sharing Agreement dated as of the date hereof between the Company and the Assignor;


NOW, THEREFORE, in consideration of the premises set forth above, and for other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the parties hereto agree as follows:


ARTICLE I
CONTRIBUTION OF ASSETS


Section 1.1 Assignment of Technology.


Subject to Section 4.1, Assignor hereby grants, sells, conveys and assigns to the Company all of Assignor's right, title and interest in and to the following assets and rights (collectively, the "Technology") wherever the same may be located:


(a) all intellectual property of any kind or description existing, now or in the future, related to thermoelectrics, whether such intellectual property exists under the laws of the United States, or of any domestic or foreign jurisdiction, or the rules of any international organization, or under any treaty or convention, including, without limitation, any patents, copyrights, trade secrets, trademarks, trade dress, inventions, invention disclosures, patent applications, provisional applications, amendments, continuations, continuations-in-part, continuing patent applications, requests for further examination, divisions, reissues, reexamination certificates, and all renewals and extensions thereof, including all right, title and interest that are presently or in the future may be owned by Assignor, and including all rights corresponding thereto (including without limitation the right, but not the obligation, to sue for past, present and future infringements in the name of Assignor or in the name of Company) (all of the foregoing being collectively referred to as the "Intellectual Property"), it being understood that the rights and interest assigned hereby shall include, without limitation, all rights and interests pursuant to


licenses or other contracts in favor of Assignor pertaining to any Intellectual Property owned or used, presently or in the future, by third parties;


(b) without limitation of the foregoing, all patents, patent applications, invention disclosures, or intellectual property listed in Schedule I annexed
---------- hereto;


(c) all general intangibles relating to any of the Intellectual Property;


(d) all books, records, ledger cards, files, correspondence, computer programs, tapes, disks and related data processing software that at any time evidence or contain information relating to any of the Intellectual Property or are otherwise necessary or helpful in the collection thereof or realization thereupon; and


(e) all proceeds, products, rents and profits (including without limitation license royalties and proceeds of infringement suits) of or from any and all of the Intellectual Property and, to the extent not otherwise included, all payments under insurance (whether or not the Company is the loss payee thereof), or any indemnity, warranty or guaranty, payable by reason of loss or damage to or otherwise with respect to any of the Intellectual Property. For purposes of this Agreement, the term "proceeds" includes whatever is receivable or received when Intellectual Property or its proceeds are sold, exchanged, collected or otherwise disposed of, whether such disposition is voluntary or involuntary


(f) For purposes of this Agreement, intellectual property is "related to thermoelectrics" if it covers, discloses, is intended for, or is suitable for use in, any thermoelectric devices, products, or processes or in the creation or use of any thermoelectric devices, products, or processes or if such intellectual property would cover the making, use, sale, offer for sale, or importation of any thermoelectric device, product, or process. As used in this Agreement, "thermoelectric devices, products, or processes" include, without limitation, the following products and their manufacture and use: portable heaters and coolers; office water coolers and heaters; car heating, ventilation, and air conditioning; electric temperature controls; integrated circuit coolers; motor vehicle alternator replacement; waste power generators; vehicle power generation; personal heating and cooling; portable power generators; standby power generators; auxiliary power plant electricity production; home heating, ventilation, and air conditioning; wall-mounted air conditioning; refrigerators; and superconducting electronics coolers. The Company, however, is under no obligation to pursue commercialization of any thermoelectric devices, products, or processes described above.


; provided, however, the Assignor's obligation to assign future Technology to -------- ------- the Company shall terminate upon the termination of the Company's obligation to make contract payments to the Assignor (or the assignees of the Assignor) under that Revenue Sharing Agreement dated as of even date hereof between the Company and the Assignor.


Section 1.2 Further Assurances.


The Assignor covenants and agrees that he will fully cooperate with and assist the Company's efforts to obtain and enforce patents and other intellectual property protection on the Technology and that, on the Company's request, he will sign any truthful declarations, affidavits, or other documents related to such efforts.


2


Section 1.3 Other Assets.


The Assignor hereby agrees to transfer funds to the Company, from time to time upon request of the Company, for use as working capital and to pay operating expenses of the Company (including but not limited to the expenses of filing and prosecuting the patent applications pursuant to Section 4.1) in an amount not to exceed $50,000.


ARTICLE II
ISSUANCE AND SALE OF SECURITIES


Section 2.1 Issuance of Securities.


As consideration for the Assignor's assignment of the Technology and commitment to contribute cash in the amount of up to $50,000 to the Company pursuant to Article I, the Company will, contemporaneously with its execution hereof, issue to Assignor 100,000 Class A Common Units of its membership interests.


Section 2.2 Legend.


The following legend (or a substantially similar legend) will be placed on any certificate or certificates evidencing the Units:


THESE SECURITIES HAVE NOT BEEN REGISTERED UNDER THE SECURITIES ACT
OF 1933, AS AMENDED, OR REGISTERED OR QUALIFIED UNDER APPLICABLE
STATE SECURITIES LAW AND MAY NOT BE OFFERED FOR RESALE OR RESOLD
UNLESS REGISTERED PURSUANT TO THE PROVISION OF THE SECURITIES ACT
AND REGISTERED OR QUALIFIED PURSUANT TO THE PROVISION OF APPLICABLE
STATE SECURITIES LAW, UNLESS AN EXEMPTION FROM SAID REGISTRATION OR
QUALIFICATION IS AVAILABLE.


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