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Exhibit 2.3

CONFIDENTIAL TREATMENT REQUESTED UNDER 17 C.F.R. §§ 200.80(b)(4) AND 240.24b-2.  THE CONFIDENTIAL PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED AND ARE MARKED ACCORDINGLY AS [**].  THE CONFIDENTIAL PORTIONS HAVE BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST.

 

TECHNOLOGY ASSIGNMENT AND LICENSE AGREEMENT

This Technology Assignment and License Agreement (the “ Agreement ”) dated as of August 2, 2011 (“ Effective Date ”), is entered into by and between Apollo Group, Inc., an Arizona corporation with principal offices located at 4025 South Riverpoint Parkway, Phoenix, Arizona 85040 (“ Apollo ”), Carnegie Mellon University, a Pennsylvania not-for-profit corporation, with principal offices located at 5000 Forbes Avenue, Pittsburgh, Pennsylvania 15213 (“ CMU ”), and Carnegie Learning, Inc., a Pennsylvania corporation, with principal offices located at 1200 Penn Avenue, Suite 150, Pittsburgh, Pennsylvania 15222 (“ CL ”) (each of Apollo, CMU and CL, a “ Party ” and, collectively, the “ Parties ”).

RECITALS

WHEREAS, CMU owns certain technology related to the Adaptive Learning Field (as defined below) and wishes to sell such technology to Apollo, and Apollo wishes to purchase such technology from CMU; and    

WHEREAS, CMU and CL are parties to the CMU-CL Agreements (as defined below), pursuant to which the Transferred Assets (as defined below) were licensed by CMU to CL, and CMU and CL desire to terminate the CMU-CL Agreements (as defined below).

NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, and intending to be legally bound, the Parties agree as follows:

1.

DEFINITIONS

 

1.1    “ Adaptive Learning Field ” means the field of adaptive and cognitive learning.

 

1.2    “ Adverse Proceeding ” has the meaning set forth in Section 2.5.

 

1.3    “ Affiliate ” means (i) with respect to Apollo, any Person in which Apollo has an equity interest; and (ii) with respect to CMU, any Person which is controlled by, controls, or is under common control with, CMU. For purposes of this definition, "control" when used with respect to any Person, means the possession, directly or indirectly, of the power to direct or cause the direction of the management and policies of such Person, whether through the ownership of at least fifty percent (50%) of voting securities, by contract or otherwise; the term "controlled" has a meaning correlative to the foregoing. A Person will cease to be an Affiliate of CMU if such control relationship no longer exists.

 

 


 

 

1.4    “ Agreement ” has the meaning set forth in the preamble.

 

1.5    “ Apollo ” has the meaning set forth in the preamble.

 

1.6    “ Apollo Group ” has the meaning set forth in Section 11.2.

 

1.7    “ CL ” has the meaning set forth in the preamble.

 

1.8    “ Claims ” has the meaning set forth in Section 4.5.

 

1.9    “ Claim Notice ” means written notification pursuant to Section 11.4 of a Third Party Claim as to which indemnify is sought by an Indemnified Party, enclosing a copy of all papers served, if any, and specifying the nature of and the basis for such Third Party Claim and for the Indemnified Party's claim against the Indemnifying Party, together with the amount or, if not then reasonably ascertainable, the estimated amount, determined in good faith, of such Third Party Claim.

 

1.10    “ CL Mark ” means U.S. Registration No. 2,491,747 for Cognitive Tutor.

 

1.11    “ Closing Event ” means the closing of the transaction contemplated by the Merger Agreement.

 

1.12     “ CL Technology ” means (i) all Technology developed by CL pursuant to the CMU-CL Agreements and (ii) the Transferred Assets.

 

1.13    “ CMU ” has the meaning set forth in the preamble.

 

1.14    “ CMU-CL Agreements ” means, collectively, the CMU-CL First Agreement, CMU-CL Second Agreement, and CMU-CL Third Agreement, and all amendments, side letters, and other agreements modifying or amending any of the foregoing, if any.

 

1.15    “ CMU-CL First Agreement ” means that certain License Agreement between CMU and CL, dated June 30, 1999 (as amended on October 1, 1999, October 24, 2000, November 6, 2001, and March 31, 2005).

 

1.16    “ CMU-CL Second Agreement ” means that certain License Agreement between CMU and CL, dated November 6, 2001 (as amended on March 31, 2005).

 

1.17    “ CMU-CL Third Agreement ” means that certain License Agreement between CMU and CL, dated June 4, 2003 (as amended on March 31, 2005).

 

1.18    “ CMU Trademark ” means the CMU trademark set forth on Exhibit B .

 

1.19    “ CMU Trademark License ” has the meaning set forth in Section 3.4(a).

 

 


 

 

1.20    “ Confidential Information ” has the meaning set forth in Section 8.1.

 

1.21    “ Conveyed Intellectual Property Rights ” means the following intellectual property rights throughout the world in and to the Transferred Assets, all: (i) rights associated with patentable inventions, patents, patent applications, provisional applications and other patent rights; (ii) rights associated with works of authorship, including, without limitation, source code, object code, executable code, registered and common law copyrights, copyright applications and copyright registrations; (iii) rights relating to the protection of trade secrets; (iv) divisions, substitutions, continuations, continuations-in-part, reexaminations, renewals, reissues, extensions and foreign counterparts of the foregoing (i), (ii) and (iii) as and to the extent applicable; and (v) all claims known and unknown, past and future, against any third party relating thereto.

 

1.22    “[**]” means the CMU software known as the “[**]”, internally identified at CMU as “[**]” as the same may be modified or supplemented from time to time. By way of clarification, “[**]” does not include the [**].

 

1.23    “ [**] Discussion Period ” has the meaning set forth in Section 7.2.

 

1.24    “ Derivatives ” means Technology developed by or for Apollo or CMU, which includes, or is based in whole or in part on, the Transferred Assets, including, but not limited to, translations of the Transferred Assets to other foreign or computer languages, adaptation of the Transferred Assets to other hardware platforms, abridgments, condensations, revisions, and software incorporating all or any part of the Transferred Assets which may also include Apollo-created and/or CMU-created modifications, enhancements or other software.

 

1.25    “ Disclosing Party ” has the meaning set forth in Section 8.1.

 

1.26    “ Dispute Notice ” means a written notice provided by any Party against which indemnification is sought under this Agreement to the effect that such Party disputes its indemnification obligation under this Agreement.

 

1.27    “ Dispute Period ” means the period ending thirty (30) calendar days following receipt by an Indemnifying Party of either a Claim Notice or an Indemnity Notice.

 

1.28    “ Documentation ” means programmer's notes, materials and documentation for the Source Code of all software included in the Transferred Assets.

 

1.29    “ Effective Date ” has the meaning set forth in the preamble.

 

 

 


 

 

1.30    “ Encumbrance ” means any charge, claim, limitation, condition, equitable interest, mortgage, lien, option, pledge, security interest, easement, encroachment, right of first refusal, adverse claim or restriction of any kind, including any restriction on or transfer or other assignment, as security or otherwise, of or relating to use, quiet enjoyment, voting, transfer, receipt of income or exercise of any other attribute of ownership. “ Encumbrances ” do not include licenses or third party rights of use.

 

1.31    “ Escrow Agent ” has the meaning set forth in Section 4.5(a).

 

1.32    “ Escrowed Amounts ” has the meaning set forth in Section 4.5(a).

 

1.33    “ Event of Default ” has the meaning set forth in Section 4.4(a).

 

1.34    “ Exclusive Field ” means the field of cognitive tutors employing systems for tutoring students in solving a problem in the form of a dialog with a student, computer-readable media containing instructions for tutoring students in solving a problem in the form of a dialog with a student, and computer assisted methods for tutoring students in solving a problem in the form of a dialog with a student, using, in each case, the explicitly represented tutorial dialog planning strategies and an adaptive agenda for capturing changes in tutorial strategies both implemented in a production rule system falling within the scope of the claims of the Funded Patent for converting story problems into mathematical symbols in the areas of math, test preparation, and math-based disciplines, such as statistics and economics but excluding biology, chemistry and genetics.

 

1.35    “ [**] ” has the meaning set forth in Section 7.1(a).

 

1.36    “ [**] ” has the meaning set forth in Section 7.1(a).

 

1.37    “ [**] ” has the meaning set forth in Section 7.1(a).

 

1.38    “ [**] ” has the meaning set forth in Section 7.1(a).

 

1.39    “ [**] ” has the meaning set forth in Section 7.1(a).

 

1.40    “ Exploit ” and “ Exploitation ” mean to use, manufacture, develop, sell or offer for sale, make, have made, distribute, reproduce, import, promote, commercialize, create derivative works based on, create improvements on, or otherwise exploit.

 

1.41    “ Fees ” has the meaning set forth in Section 4.1.

 

1.42    “ Final Determination That CMU is Responsible ” has the meaning set forth in Section 4.5(a).

 

1.43    “ Final Resolution ” has the meaning set forth in Section 4.5(a).

 

 


 

 

1.44    “ [**] ” means [**], [**] and [**].

 

1.45    “ [**] ” has the meaning set forth in Section 7.1(c).

 

1.46    “ [**] ” has the meaning set forth in Section 7.3.

 

1.47    “ [**] ” has the meaning set forth in Section 7.1(c).

 

1.48    “ [**] ” has the meaning set forth in Section 7.1(c).

 

1.49    “ [**] ” has the meaning set forth in Section 7.1(c).

 

1.50    “ [**] Technology ” means any invention in the areas of math-based products, test preparation products and adaptive learning math products (excluding [**]): (i) of which one [**] is, or more than one [**] collectively are, the [**]; and (ii) for which CMU has the right to license to Apollo, including without limitation, taking into account CMU's Intellectual Property Policy (as the same is applied by CMU substantially in conformance with CMU's past practices).

 

1.51    “ [**] ” has the meaning set forth in Section 7.1(c).

 

1.52    “ Funded Patent ” means the patent set forth on Exhibit C , and all divisions, substitutions, continuations, continuations-in-part, reexaminations, renewals, reissues, extensions thereof throughout the world.

 

1.53    “[**]” means the [**] owned or controlled by CMU as of the Effective Date, as the same may be modified, including [**].

 

1.54    “ Government Entity ” means The National Science Foundation and The National Institutes of Health.

 

1.55    “ Initial Founder ” means each of the following: Vincent Aleven, Albert T. Corbett, Kenneth R. Koedinger, John R. Anderson, Jaclyn Snyder, Alecsandr I. Lisovich, William S. Hadley and Mary A. Mark.

 

1.56    “ Indemnified Party ” means any Person claiming indemnification under any provision of Section 11.

 

1.57    “ Indemnifying Party ” means any Person obligated to indemnify an Indemnified Party under any provision of Section 11.

 

 

 


 

 

1.58    “ Indemnity Notice ” means written notification of a claim for indemnity under Section 11 by an Indemnified Party, specifying the nature of and basis for such claim, together with the amount or, if not then reasonably ascertainable, the estimated amount, determined in good faith, of such claim.

 

1.59    “ Intellectual Property Rights ” means all intellectual property rights throughout the world, including without limitation, all (i) rights associated with inventions (whether patentable or not), including, without limitation, patents, patent applications, provisional applications and other patent rights; (ii) rights associated with works of authorship, including, without limitation, source code, object code, executable code, registered and common law copyrights, copyright applications and copyright registrations; (iii) rights associated with trademarks, including, without limitation, intent to use registrations, trademark applications, trademark registrations, common law trademarks, trademark rights and all associated good will; (iv) rights relating to the protection of trade secrets, know-how and similar confidential and proprietary information; (v) derivative works, divisions, substitutions, continuations, continuations-in-part, reexaminations, renewals, reissues, extensions and foreign counterparts of all of the foregoing (i), (ii), (iii) and (iv), as and to the extent applicable; (vi) internet domain name registrations and associated rights; (vii) all claims known and unknown, past and future, against any third party relating thereto; and (viii) any right similar to those set forth above and any other proprietary rights relating to intangible property.

 

1.60    “ Know-How ” means all know-how, if any, that is (i) not expressed in the Transferred Assets; (ii) not covered by any Conveyed Intellectual Property Right; and (iii) in non-tangible form and retained in the unaided memories of CMU employees who have rightfully had access to the Transferred Assets. For purposes of this definition, a person's memory is unaided if the person has not intentionally memorized know how for the purpose of retaining and subsequently using or disclosing it.

 

1.61    “ Merger Agreement ” means the Agreement and Plan of Merger among CL, Apollo and certain other parties identified therein, dated as of the same date herewith.

 

1.62    “ Moral Rights ” has the meaning set forth in Section 2.2.

 

1.63    “ [**] ” has the meaning set forth in Section 7.1(b).

 

1.64    “ [**] ” has the meaning set forth in Section 7.1(b).

 

1.65    “ [**] ” has the meaning set forth in Section 7.1(b).

 

1.66    “ [**] ” has the meaning set forth in Section 7.1(b).

 

1.67    “ [**] ” has the meaning set forth in Section 7.1(b).

 

 


 

 

1.68    “ Object Code ” means the fully compiled executable form of software.

 

1.69    “ Parties ” has the meaning set forth in the preamble.

 

1.70    “ Party ” has the meaning set forth in the preamble.

 

1.71    “ Permitted Encumbrance ” means (i) any rights of, or requirements imposed by, the Government Entity under U.S.C. Title 35 Sections 201-212 and all enabling regulations (the “ Bayh-Dole Act ”); and (ii) all rights, conveyances and/or other Encumbrances created and/or permitted by or on behalf of CL in favor of any third party.

 

1.72    “ Person ” means any individual, corporation, limited liability company, partnership, limited partnership, association, trust or other entity or organization.

 

1.73    “ Principal Inventors ” means, with respect to any invention, the inventors claiming fifty percent (50%) or more of the inventorship credit in the invention disclosure to the Center for Technology Transfer and Enterprise Creation of CMU (or any successor thereto).

 

1.74    “ Receiving Party ” has the meaning set forth in Section 8.1.

 

1.75    “ ROFN Technology ” has the meaning set forth in Section 7.1.

 

1.76    “ Source Code ” means the human readable source code form of software.

 

1.77    “ TALA Closing ” has the meaning set forth in Section 12.4.

 

1.78    “ TALA Closing Date ” has the meaning set forth in Section 12.4.

 

1.79    “ [**] ” has the meaning set forth in the definition of Transferred Assets.

 

1.80    “ Technology ” means inventions, technology, discoveries, software, improvements, content, programs, processes, designs, ideas, know-how, notes, memoranda and documentation.

 

1.81    “ Term ” has the meaning set forth in Section 12.1.

 

1.82    “ Third Party Claim ” has the meaning set forth in Section 11.4(a).

 

1.83    “ Trademark Term ” has the meaning set forth in Section 3.4(a).

 

 

 


 

 

1.84    “ Transferred Assets ” means (i) the items set forth on Exhibits A-1, A-2 and A-3, and subject to Section 4.7 and Section 9.2, on an “as is” basis as of the date of the CMU-CL First Agreement, CMU-CL Second Agreement and the CMU-CL Third Agreement, respectively, and (ii) any Updates. “Transferred Assets” shall not include the Funded Patent unless and until the Funded Patent is transferred to Apollo in accordance with Section 3.1 below. To the extent Updates were developed by or on behalf of CL, for purposes of Sections 4.5(a), 4.7(d), 4.7(e) and 4.7(f), “Transferred Assets” shall not include Updates. For avoidance of doubt, “ Transferred Assets ” shall include the [**] delivered by CMU to CL prior to the Effective Date (the “ [**] ”).

 

1.85    “ Updates ” means all updates, upgrades, bug-fixes, patches, versions, releases, enhancements and improvements to the Transferred Assets owned by CMU pursuant to Section 9.5 of each of the CMU-CL Agreements, on, subject to Section 4.7 and Section 9.2, an “as is” basis on the Effective Date.

 

2.ASSIGNMENT OF TRANSFERRED TECHNOLOGY

 

2.1     Assignment of Transferred Assets . As of the TALA Closing Date, CMU hereby assigns, transfers and conveys to Apollo free and clear of any Encumbrances (other than (a) with respect to the Funded Patent, the Permitted Encumbrances in Section 1.71(i); and (b) with respect to all other Transferred Assets, the Permitted Encumbrances in Section 1.71(ii)), subject to the rights reserved in Section 3.1(b), and Apollo, in reliance on the representations, warranties and covenants of CMU contained herein, accepts, all of CMU's right, title and interest throughout the world to the Transferred Assets (excluding the Funded Patent and Know-How) (including, without limitation, all of CMU's Conveyed Intellectual Property Rights in and to such Transferred Assets), including, without limitation, all rights of action against third parties CMU had, has or may have in the future based thereon.

 

2.2     Moral Rights . Any assignment of copyright hereunder includes all rights of paternity, integrity, disclosure and withdrawal and any other rights that may be known as or referred to as “moral rights” (collectively “ Moral Rights ”). To the extent that such Moral Rights cannot be assigned under applicable law and to the extent the following is allowed by the laws in the various countries where Moral Rights exist, CMU hereby waives and agrees not to assert such Moral Rights and consents to any action of Apollo that would violate such Moral Rights in the absence of such consent. CMU hereby agrees to confirm any such waivers or consents from time to time as requested by Apollo.

 

 

 


 

 

2.3     Delivery . As soon as reasonably practicable, but in no event more than ten (10) days after to the Effective Date, CMU will deliver the Transferred Assets (other than the Funded Patent) (in Object Code form and Source Code form), including the Documentation, to Apollo and to the extent not delivered by CMU to Apollo, evidence satisfactory to Apollo that the remaining Transferred Assets are in the possession of CL. Such evidence shall include, but is not limited to, a detailed listing of such remaining Transferred Assets. Notwithstanding the foregoing, if Apollo discovers that not all of the Transferred Assets have been delivered to Apollo, CMU agrees to work with Apollo in good faith to identify such Transferred Assets and deliver such Transferred Assets to Apollo. CL consents to the deliveries provided for herein, and such information shall constitute Confidential Information of CMU prior to the assignment set forth in Section 2.1, and shall constitute Confidential Information of Apollo after such assignment.

 

2.4     Further Assurances . CMU agrees to perform, during and after the Term, all reasonable and lawful acts deemed necessary by Apollo to permit and assist Apollo in evidencing, perfecting, obtaining, maintaining, defending and enforcing Apollo's rights in the Transferred Assets (other than the Know-How). Such acts may include, but are not limited to, execution of documents and assistance or cooperation in legal proceedings. If Apollo is unable after reasonable attempts during normal business hours to secure CMU's signature to any such document in sufficient time to avoid loss of Apollo's rights in the Transferred Assets where CMU's signature is necessary to avoid such loss of rights, CMU hereby designates and appoints, for a period of ten (10) years from the Effective Date, Apollo and its duly authorized officers and agents, as CMU's agents and attorneys-in-fact to act for and on behalf and instead of CMU, to execute and file those documents necessary to record assignments of, and evidence, perfect, obtain and maintain title and interest in, the Transferred Assets, with the same legal force and effect as if executed by CMU (it being acknowledged that such appointment is a power coupled with an interest), provided , however , that prior to executing any such documents as CMU's agent or attorney-in-fact, and as a condition to the effectiveness thereto, Apollo shall provide CMU not less than twenty (20) days written notice with sufficient detail of the document to be executed and the reason theref


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