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DMN

08/24/17 10:09 AM

#126004 RE: rige #126003

Agree. I have no idea what the agreement was but was thinking he meant the patent portfolio at that time.

PatentGuy1

08/24/17 12:18 PM

#126030 RE: rige #126003

CIP and Apple (BMG Micro Alloying) are continuously researching BMG Coatings and adding to CIP,
So does the spun off company [Liquidmetal Coatings] have access to those new patents? I seriously Doubt that, and as such they do NOT have rights on ALL CIP patents regarding 'coatings'.



You are correct that Liquidmetal Coatings does NOT have rights to ALL CIP patents regarding 'coatings'. However, they do perpetual rights to Liquidmetal Technologies IP, as it existed prior to the MTA, in the field of coatings WITH THE EXCEPTION OF CONSUMER ELECTRONICS. Go back and look at the MTA. (http://contracts.onecle.com/liquidmetal/apple-transaction-2010-08-05.shtml) Prior to the MTA, Liquidmetal Coatings (LMC) had rights to Liquidmetal Technologies (LMT) IP in the field of coatings. In the MTA, LMC reassigned their rights to the LMT IP back to LMT. (See, Annex 3.) As we all know, LMT assigned LMT IP to Crucible. Next, Crucible licensed in perpetuity "LMC Intellectual Property Assets" to LMC (see Annex 8 2.1), where "LMC Intellectual Property Assets" means the Intellectual Property Rights transferred and assigned by LMC to LMT under the LMC Assignment" (see, Annex 8 2.1). The grant from Crucible (Licensor) to LMC (Licensee) is as follows:

Exclusive License Grant. Licensor grants to Licensee a fully paid-up, royalty-free, irrevocable, perpetual, worldwide exclusive license, with the right to grant sublicenses, under the LMC Intellectual Property Assets in any and all fields of use other than Consumer Electronic Products (the "LMC Fields"), to use, reproduce, publish, display, distribute, perform, exploit and disclose the LMC Intellectual Property Assets and to make and have made, assemble and have assembled, use, sell, offer to sell, import and offer to import, license and offer to license, distribute and offer to distribute, repair, reconstruct, practice, and maintain Licensed Products, and perform any act or step that incorporates, utilizes, embodies or reflects, any inventions claimed in the LMC Intellectual Property Assets, including without limitation any such activities that would, absent a license, subject a person or other legal entity to a claim of direct infringement, contributory infringement, inducing infringement, or any other type of infringement.