AWARE, INC.
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Massachusetts | 04-2911026 | |||||
(State or Other Jurisdiction of Incorporation or Organization) |
(I.R.S. Employer Identification No.) |
40 Middlesex Turnpike, Bedford, Massachusetts, 01730
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(781) 276-4000
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Class | Number of Shares Outstanding | |||||
Common Stock, par value $0.01 per share | 22,328,737 shares |
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Exhibit 2.1*
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Wireless Portfolio Patent Purchase Agreement, dated as of April 26, 2012, by and between Aware, Inc. and Intel Corporation.
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Exhibit 31.1
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Certification of co-Chief Executive Officer pursuant to Section 302 of the Sarbanes-Oxley Act of 2002.
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Exhibit 31.2
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Certification of co-Chief Executive Officer and Chief Financial Officer pursuant to Section 302 of the Sarbanes-Oxley Act of 2002.
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Exhibit 32.1†
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Certification of Chief Executive Officer and Chief Financial Officer pursuant to Section 906 of the Sarbanes-Oxley Act of 2002.
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Exhibit 101**†
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The following financial statements from Aware, Inc.’s Quarterly Report on Form 10-Q for the quarter ended June 30, 2012, formatted in XBRL (eXtensible Business Reporting Language), as follows: (i) Consolidated Balance Sheets as of June 30, 2012 and December 31, 2011, (ii) Consolidated Statements of Comprehensive Income for the Three and Six Months Ended June 30, 2012 and June 30, 2011, (iii) Consolidated Statements of Cash Flows for the Six Months Ended June 30, 2012 and June 30, 2011, and (iv) Notes to Consolidated Financial Statements.
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AWARE, INC. | |||
Date: August 2, 2012
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By:
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/s/ Kevin T. Russell | |
Kevin T. Russell | |||
co-Chief Executive Officer & co-President | |||
General Counsel |
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(a)
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all inventions, invention disclosures, designs, and discoveries described in any of the Assigned Patents that (i) are included in any claim in the Assigned Patents, (ii) are subject matter capable of being reduced to a patent claim in an extension, continuation, continuation-in-part, continuing prosecution application, request for continuing examination, division, or registration claiming priority to, or in a reissue or reexamination proceeding brought on any of the Assigned Patents, or (iii) could have been included as a claim in any of the Assigned Patents;
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(b)
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all rights to apply in any or all countries of the world for patents, certificates of invention, utility models, industrial design protections, design patent protections, or other governmental grants or issuances of any type related to any of the Assigned Patents;
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(c)
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all causes of action (whether known or unknown, whether currently pending or filed, or otherwise) and other enforcement rights under, or on account of, any of the Assigned Patents and under all of the rights granted under paragraphs (a) and (b) of this definition, including, without limitation, all causes of action and other enforcement rights for (i) damages, (ii) injunctive relief, and (iii) any other remedies of any kind for past, current, and future infringement; and
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(d)
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royalties, income, and other payments due as of the Closing and thereafter under or arising from any of the Assigned Patents or other rights set forth under paragraph (a), (b), or (c) of this definition, other than royalties, income, and other payments due or becoming due under the Disclosed Agreements.
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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(a)
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the provisional patent applications, patent applications, and patents listed in Schedule A (the “Patents”);
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(b)
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all patents or patent applications (i) to which any of the assets on the list of Patents in paragraph (a) of this definition directly or indirectly claim priority from, or (ii) for which any of the assets on the list of Patents in paragraph (a) of this definition directly or indirectly form a basis for priority;
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(c)
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all reissues, reexaminations, extensions, continuations, continuations-in-part, continuing prosecution applications, requests for continuing examinations, divisions, and registrations of any item on the list of Patents in paragraph (a) of this definition and of any item in paragraph (b) of this definition;
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(d)
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all foreign patents, patent applications, and counterparts relating to any item on the list of Patents in paragraph (a) of this definition and of any item in paragraphs (b) and (c) of this definition, including, without limitation, certificates of invention, utility models, industrial design protection, design patent protection, and other governmental grants or issuances; and
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(e)
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all patents that issue from any of the items listed in paragraph (a), (b), (c), or (d) of this definition.
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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(a)
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Seller shall have delivered to Purchaser:
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(i)
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the Deliverables;
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(ii)
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an executed original of this Agreement;
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(iii)
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an executed original Assignment of Patent Rights and such other executed assignments or other documents as Purchaser may request to perfect Purchaser’s rights in any foreign patents or patent applications included in the Assigned Patent Rights; and
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(iv)
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a certificate, dated as of the Closing Date, of the Secretary of Seller, (A) attesting to the incumbency of each authorized person executing this Agreement and the Assignment of Patent Rights on its behalf and (B) certifying a complete and accurate copy of the resolutions of the board of directors of Seller authorizing the execution, delivery and performance of this Agreement and the articles of organization and bylaws of Seller.
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(b)
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Seller shall have provided all information requested by Purchaser required for Purchaser to effect payment under paragraph 3.3;
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(c)
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Purchaser shall be satisfied that all representations and warranties made by Seller in this Agreement, including, without limitation, those made in paragraphs 5.4 and 6, were true and are true as of the Effective Date and Closing Date, respectively;
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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(d)
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Seller shall have performed in all respects all agreements and covenants required to be performed by Seller under this Agreement before the Closing Date;
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(e)
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Purchaser shall he satisfied that none of the Assigned Patent Rights has expired or been deemed withdrawn or abandoned as of the Effective Date and Closing Date;
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(f)
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Any required waiting period (and any extension thereof) under the Hart-Scott-Rodino Antitrust Improvements Act of 1976, as amended (“HSR Act”), shall have expired or shall have been terminated, and any required waiting period under any other antitrust laws applicable to the transactions under this Agreement shall have expired or shall have been terminated, and all other authorizations, consents, permissions, and approvals of all third parties (including any governmental or regulatory agency) shall have been obtained and shall be in effect (“Required Approvals”); and
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(g)
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No law or regulation promulgated by any governmental entity of competent jurisdiction shall have been enacted or shall exist that would prohibit the transactions under this Agreement. No temporary restraining order, preliminary or permanent injunction or other order issued by any court of competent jurisdiction or other restraint or prohibition of any governmental entity of competent jurisdiction (i) preventing the consummation of the transactions under this Agreement or (ii) limiting or restricting Purchaser’s ownership of all right, title, and interest in the Assigned Patent Rights shall be in effect. There shall be no action or claim pending nor, to the knowledge of Seller, threatened that could reasonably result in any of the outcomes of clauses (i) or (ii) of this paragraph (g).
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(a)
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Purchaser shall have delivered to Seller an executed original of this Agreement;
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(b)
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Purchaser shall have delivered the purchase price specified in paragraph 3.3 by wire transfer of immediately available funds pursuant to paragraph 3.3;
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(c)
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Seller shall be satisfied that all representations and warranties made by Purchaser in paragraph 7 were and are true as of the Effective Date and Closing Date, respectively;
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(d)
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Purchaser shall have performed in all respects all agreements and covenants required to be performed by Purchaser under this Agreement before the Closing Date;
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(e)
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Any required waiting period (and any extension thereof) under the HSR Act shall have expired or shall have been terminated and any required waiting period under any other antitrust laws applicable to the transactions under this Agreement shall have expired or shall have been terminated, and all Required Approvals shall have been obtained and shall be in effect; and
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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(f)
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No law or regulation promulgated by any governmental entity of competent jurisdiction shall have been enacted or shall exist that would prohibit the transactions under this Agreement. No temporary restraining order, preliminary or permanent injunction or other order issued by any court of competent jurisdiction or other restraint or prohibition of any governmental entity of competent jurisdiction preventing the consummation of the transactions under this Agreement shall be in effect. There shall be no action or claim pending seeking any of the foregoing in the preceding sentence.
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(a)
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Each of the parties to this Agreement agrees to use reasonable efforts, and to cooperate with each other party hereto, to take, or cause to be taken, all appropriate action to do, or cause to be done, all things necessary, proper or advisable under applicable law or otherwise to consummate and make effective the transactions under this Agreement as promptly as practicable, including, subject to any applicable limitations set forth in this paragraph 3.7 and other provisions of this Agreement, causing the satisfaction of the respective conditions set forth in paragraphs 3.4 and 3.5 and executing and delivering such other instruments and doing and performing such other acts and things as may be necessary or reasonably desirable for effecting the consummation of such transactions. Without prejudice to the foregoing, as promptly as practicable after the Effective Date, if required by any applicable law, each of the parties hereto (i) shall file any required notifications with the Federal Trade Commission (the “FTC”) and the Antitrust Division of the U.S. Department of Justice (the “Antitrust Division”) in accordance with the HSR Act, and (ii) shall file any recommended or required antitrust notifications in any other jurisdiction in accordance with any other applicable antitrust law, as determined by Purchaser in its reasonable judgment, Each of the parties hereto shall furnish promptly to the FTC, the Antitrust Division and any other requesting governmental entity any additional information reasonably requested by any of them pursuant to the HSR Act or any other antitrust laws in connection with such filings. Each party will notify the other promptly upon the receipt of any comments from any officials of any governmental entity in connection with any filings made pursuant to this paragraph 3.7(a). To the extent permitted by applicable law, and subject to all applicable privileges (including the attorney-client privilege), the parties hereto shall consult and cooperate with each other, and consider in good faith the views of one another, in connection with any analyses, appearances, presentations, memoranda, briefs, arguments, opinions and proposals made or submitted by or on behalf of any party hereto in connection with proceedings under or relating to the HSR Act or any other antitrust law. Each of the parties hereto shall cooperate reasonably with each other in connection with the making of all such filings or responses, and in making all reasonable efforts to conclude the HSR process.
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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(b)
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Notwithstanding anything in this Agreement to the contrary (including the other provisions of this paragraph 3.7), if any administrative or judicial action or proceeding is instituted (or threatened to be instituted) challenging any transaction contemplated by this Agreement as violative of any antitrust law, it is expressly understood and agreed that: (i) Purchaser shall not have any obligation to litigate or contest any administrative or judicial action or any decree, judgment, injunction or other order, whether temporary, preliminary or permanent brought by or before an administrative tribunal, court or other similar tribunal or body; (ii) Purchaser shall be under no obligation to make proposals, execute or carry out agreements or submit to orders providing for a Divestiture; and (iii) Seller may not conduct or agree to conduct a Divestiture without the prior written consent of Purchaser. “Divestiture” shall mean (A) the sale, license or other disposition or holding separate (through the establishment of a trust or otherwise) of any assets or categories of assets of Purchaser or any of its affiliates or of the Assigned Patent Rights, (B) the imposition of any limitation or restriction on the ability of Purchaser or any of its affiliates to freely conduct their businesses or own the Assigned Patent Rights, or (C) any other action that would reasonably be expected to have a material adverse effect on Purchaser or its affiliates, the Assigned Patent Rights or the transactions under this Agreement.
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(c)
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Each of Purchaser and Seller shall pay one half (1/2) of any applicable filing fee under the HSR Act and any other filing made pursuant to any other applicable antitrust law.
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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(a)
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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 reasonably necessary or desirable for effecting completely the consummation of the transactions contemplated hereby, including, without limitation, execution, acknowledgment, and recordation of other such papers, and using commercially reasonable efforts to obtain the same from the respective inventors, as necessary or desirable for fully perfecting and conveying to Purchaser the benefit of the transactions contemplated by this Agreement. At Purchaser’s request, Seller will take actions and execute and deliver to the representatives of Purchaser, documents that Purchaser may reasonably request to effect the terms of the assignment of the Assigned Patent Rights and to perfect Purchaser’s title in and to the Assigned Patent Rights.
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(b)
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To the extent any attorney-client privilege or the attorney work-product doctrine applies to any portion of the Prosecution History Files that is retained after the Closing under Seller’s or Seller’s representatives’ normal document retention policy, Seller will ensure that, if any such portion of the Prosecution History Files remains under Seller’s or Seller’s representatives’ possession or control after the Closing, it is not disclosed to any third party unless (i) disclosure is ordered by a court of competent jurisdiction, after all appropriate appeals to prevent disclosure have been exhausted, and (ii) Seller gave Purchaser prompt notice upon learning that any third party sought or intended to seek a court order requiring the disclosure of any such portion of the Prosecution History Files. Seller shall follow Purchaser’s direction and otherwise cooperate with Purchaser with respect to the preservation and protection of all privileges and immunities with respect to Prosecution History Files and all communications and work product relating to the filing, prosecution and maintenance of the Assigned Patent Rights. Without limiting the foregoing, Seller shall not waive or withdraw any such privilege or immunity without the prior written consent of Purchaser.
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(c)
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Seller will also, at the reasonable request of Purchaser after the Closing, make all reasonable efforts to assist Purchaser in providing and obtaining from the respective inventors, prompt production of pertinent facts and documents, otherwise giving of testimony, execution of petitions, oaths, powers of attorney, specifications, declarations or other papers, and to provide other assistance reasonably necessary for filing and prosecuting patent applications, enforcement, maintenance, defense or other actions and proceedings with respect to the claims under the Assigned Patent Rights, including, without limitation, providing technical consultations. Purchaser shall compensate Seller for any reasonable, documented disbursements and time incurred after the Closing in connection with providing assistance under this paragraph 5.1(c) in connection with any enforcement or other infringement action regarding the Assigned Patent Rights, under a standard billable hour rate of Seller; provided that Seller shall have furnished Purchaser an advance, written estimate of the fees and costs for such assistance and Purchaser shall have agreed in writing to pay such fees and costs.
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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(a)
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Seller may make a public announcement in the form set forth in Schedule G-1 contemporaneously with its Form 8-K filing related to this transaction. Seller may make a public announcement contemporaneously with the Closing in the form set forth in Schedule G-2.
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(b)
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Seller, in order to comply with U.S. securities laws applicable to a public company, may file or publicly disclose this Agreement, in whole or part, or any transactions contemplated by this Agreement, the material terms of this transaction or the Closing as part of Seller’s Form 8-K filing with the Securities and Exchange Commission (“SEC”). Seller will consult with Purchaser regarding such disclosure and the content thereof before making any such filing or disclosure. Purchaser acknowledges and agrees that if the amounts paid by Purchaser to Seller represent ten percent or more of Seller’s consolidated revenues for any fiscal quarter, then Seller shall be entitled to disclose in its SEC filings the information required by Item 101(c)(vii) of Regulation S-K, but only to the extent Seller reasonably determines, with advice of counsel, that such disclosure is required under U.S. securities laws. Except as set forth in paragraph 8.4(a) or this paragraph 8.4(b), Seller shall not issue any press release, make any public statement or make any disclosure with respect to the transactions contemplated by this Agreement without the prior written consent of Purchaser.
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(c)
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All information concerning the Assigned Patent Rights, and the sales process Seller engaged in, including materials made available to Purchaser as part of the sales process or exchanged between Seller and Purchaser and the Deliverables, shall be treated as “Confidential Information.” Confidential Information also includes all conversations between the parties regarding any of the matters listed in the preceding sentence.
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(d)
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Seller and Purchaser agree to not disclose any Confidential Information to any third party without the prior written consent of the other party, except:
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(i)
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To the extent permitted under paragraph 8.4(a) or (b);
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(ii)
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Each party may disclose Confidential Information contained in any press release made under paragraph 8.4(a) or in publicly available information filed or disclosed pursuant to paragraph 8.4(a) or (b);
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(iii)
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Each party may disclose Confidential Information to its parent companies, majority owned direct or indirect subsidiaries and their respective directors, officers, employees, and consultants, provided that each such person or entity has a need to know such information to carry out activities authorized by this Agreement and is bound by confidentiality obligations as restrictive as this paragraph 8.4(d);
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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(iv)
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Purchaser may disclose Confidential Information (A) to a third party in confidence in connection with any divestiture, sale, merger, license or other transaction involving or related to any Assigned Patent Rights and (B) in connection with the filing, prosecution, maintenance, enforcement or defense of any Assigned Patent Rights or protection of any of Purchaser’s rights in any Assigned Patent Rights;
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(v)
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Either party may disclose Confidential Information in the course of litigation or other proceedings to enforce, defend or determine a party’s rights or obligations under this Agreement; or
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(vi)
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Either party may disclose Confidential Information with the written consent of the other.
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(e)
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A party will not be obligated under paragraph 8.4(d) with respect to Confidential Information that that party can document:
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(i)
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Is or at any time becomes publicly available through no fault of that party, its employees, consultants, or agents;
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(ii)
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Is received without restriction from a third party lawfully in possession of such information and lawfully empowered to disclose such information;
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(iii)
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Is required to be disclosed pursuant to the order or requirement of a court, administrative agency, or other governmental body, including in confidence to legal and financial advisors in their capacity of advising a party in such matters; provided, however, that that party provides prompt notice of such court order or requirement to the other party to enable the other party, at its sole expense, to seek a protective order or otherwise prevent or restrict such disclosure (and the parties shall cooperate to obtain such protection) and that party only discloses such information as is necessary to comply with such order or requirement; provided, that Seller shall comply with paragraph 8.4(b) with respect to disclosures described in paragraph 8.4(b) and, as applicable, its obligations under paragraph 5.1(b);
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(iv)
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Is publicly disclosed by the United States Patent and Trademark Office as a result of the filing of documents related to assignment of the Assigned Patent Rights.
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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If to Purchaser
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If to Seller
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Intel Corporation
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Aware, Inc.
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2200 Mission College Boulevard
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40 Middlesex Turnpike
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Santa Clara, CA 95054
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Bedford, MA 01730
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Attn: General Counsel
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Attn: Kevin Russell, General Counsel
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With a copy to:
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Intel Corporation
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2200 Mission College Blvd
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Santa Clara, CA 95054
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Attn: Director of Licensing
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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SELLER:
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PURCHASER:
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By:
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/s/ Kevin T. Russell
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By:
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/s/ Paul S. Otellini
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Name:
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Kevin T. Russell
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Name:
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Paul S. Otellini
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Title:
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Co-Chief Executive Officer and Co-President
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Title:
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President and Chief Executive Officer
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Wireless Portfolio Patent Purchase Agreement
CONFIDENTIAL
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Schedule A
CONFIDENTIAL
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1.
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I have reviewed this Amendment No.1 to quarterly report on Form 10-Q/A of Aware, Inc.;
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2.
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Based on my knowledge, this quarterly report does not contain any untrue statement of a material fact or omit to state a material fact necessary to make the statements made, in light of the circumstances under which such statements were made, not misleading with respect to the period covered by this quarterly report;
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Date: August 2, 2012
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/s/ Kevin T. Russell | |
Kevin T. Russell | |||
co-Chief Executive Officer & co-President |
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1.
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I have reviewed this Amendment No. 1 to quarterly report on Form 10-Q of Aware, Inc.;
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2.
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Based on my knowledge, this quarterly report does not contain any untrue statement of a material fact or omit to state a material fact necessary to make the statements made, in light of the circumstances under which such statements were made, not misleading with respect to the period covered by this quarterly report;
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Date: August 2, 2012
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/s/ Richard P. Moberg | ||
Richard P. Moberg | |||
co-Chief Executive Officer & co-President
Chief Financial Officer
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