INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
By and Between
ALLEGHENY VALLEY PACKAGING, INC.
and
CRESTLINE PACKAGING SOLUTIONS LLC
Dated as of July 31, 2025
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INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
This intellectual Property Assignment Agreement (this "Agreement") is made and entered into as of the Closing Date (as defined herein, estimated to be July 31, 2025) (the "Effective Date"), by and between:
ALLEGHENY VALLEY PACKAGING, INC., a Pennsylvania corporation (the "Assignor" or "Seller"), with its principal office located at 250 Industrial Boulevard, Butler, PA 16001; and
CRESTLINE PACKAGING SOLUTIONS LLC, an Ohio limited liability company (the "Assignee" or "Buyer"), with its principal office located at 4100 Commerce Parkway, Suite 800, Akron, OH 44308.
Assignor and Assignee are referred to herein individually as a "Party" and collectively as the "Parties."
RECITALS
WHEREAS, Assignor and Assignee are parties to that certain Asset Purchase Agreement dated as of June 15, 2025 (the "APA"), pursuant to which Assignor has agreed to sell, assign, transfer, convey, and deliver to Assignee, and Assignee has agreed to purchase and acquire from Assignor, the Acquired Assets (as defined in the APA), subject to the terms and conditions set forth therein;
WHEREAS, capitalized terms used but not otherwise defined in this Agreement shall have the meanings ascribed to such terms in the APA;
WHEREAS, the APA provides for the transfer, assignment, and conveyance of the Acquired Assets from Assignor to Assignee, and the Acquired Assets include, among other things, all intellectual Property owned by or licensed to Assignor that is used in or related to Assignor's business, subject to certain exclusions as set forth in the APA and as further described herein;
WHEREAS, Assignor is a manufacturer of corrugated packaging, folding cartons, and specialty coatings for food-grade and chemical-grade packaging applications, operating manufacturing and distribution facilities located at 250 Industrial Boulevard, Butler, Pennsylvania 16001 and 1480 Conneaut Lake Road, Meadville, Pennsylvania 16335;
WHEREAS, the aggregate purchase price payable by Assignee to Assignor under the APA for the Acquired Assets is One Hundred Eighty Million Dollars ($180,000,000), subject to certain adjustments as set forth in the APA;
WHEREAS, this Agreement is being executed and delivered pursuant to and in accordance with the APA at the Closing (as defined in the APA) in order to evidence and effectuate the assignment and transfer of the Assigned intellectual Property (as defined herein) from Assignor to Assignee as contemplated by the APA; and
WHEREAS, the Parties desire to set forth the terms and conditions governing the assignment of such intellectual Property, including certain transitional license arrangements with respect to Assignor's corporate name.
NOW, THEREFORE, in consideration of the mutual covenants and agreements set forth herein, the premises and recitals set forth above (which are hereby incorporated into and made a part of this Agreement), and the consideration provided under the APA, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
ARTICLE I — DEFINITIONS
Section 1.1 — Defined Terms
As used in this Agreement, the following terms shall have the meanings set forth below:
"APA" means the Asset Purchase Agreement dated as of June 15, 2025, by and between Assignor and Assignee, as the same may be amended, supplemented, or otherwise modified from time to time in accordance with its terms.
"Assigned intellectual Property" means all intellectual Property included in the Acquired Assets as defined in the APA, including the categories of intellectual Property enumerated in Article II of this Agreement, but expressly excluding the Excluded IP. For the avoidance of doubt, the Assigned intellectual Property encompasses all intellectual Property rights that are owned by Assignor and used in, held for use in, or related to Assignor's corrugated packaging, folding carton, and specialty coatings business.
"Closing Date" has the meaning ascribed to such term in the APA (estimated to be July 31, 2025).
"Excluded IP" means (a) the corporate name "Allegheny Valley Packaging, Inc.," which is subject to the Transitional License as defined herein and as more fully described in Article IV of this Agreement, and which shall remain the sole property of Assignor, and (b) Assignor's minute books, corporate records, stock transfer books, and corporate seal, consistent with the definition of "Excluded Assets" set forth in the APA.
"intellectual Property" means all intellectual property and proprietary rights of any kind or nature, whether arising under the laws of the United States, any state thereof, or any foreign jurisdiction, including, without limitation: (a) all patents, patent applications (including provisional applications), utility models, and industrial designs, and all reissues, continuations, continuations-in-part, divisionals, renewals, extensions, and re-examinations thereof; (b) all trademarks, service marks, trade names, brand names, logos, trade dress, corporate names, domain names, and other indicia of origin, whether registered or unregistered, and all registrations and applications for registration thereof, together with all goodwill associated therewith and symbolized thereby; (c) all copyrights and copyrightable works, whether registered or unregistered, and all registrations and applications for registration thereof; (d) all trade secrets, know-how, confidential information, proprietary formulations, processes, techniques, methods, inventions (whether or not patentable and whether or not reduced to practice), algorithms, customer lists, supplier lists, technical data, specifications, research and development data, and databases; and (e) all other intellectual property and proprietary rights, including rights to sue for and remedies against past, present, and future infringement, misappropriation, or other violation thereof, and rights of priority and protection of interests therein under the laws of any jurisdiction.
"License Term" has the meaning set forth in Section 4.1 of this Agreement.
"Transitional License" means the royalty-free, non-exclusive, non-transferable, non-sublicensable license granted by Assignor to Assignee for the use of the corporate name "Allegheny Valley Packaging, Inc." for a period of six (6) months following the Closing Date, solely for the purpose of transitioning business operations, as more fully described in Section 4.1 of this Agreement and in the APA.
All other capitalized terms used but not defined in this Agreement, including, without limitation, the terms "Acquired Assets," "Excluded Assets," "Encumbrances," "Permitted Encumbrances," "Transaction Documents," "Excluded Liabilities," and "Closing," shall have the meanings ascribed to such terms in the APA.
Section 1.2 — Rules of Construction
The following rules of construction shall apply to this Agreement:
(a) Unless the context otherwise requires, references to "Sections" and "Articles" are to sections and articles of this Agreement, and references to "Schedules" are to the schedules attached hereto, which are incorporated into and made a part of this Agreement.
(b) The terms "hereof," "herein," "hereunder," "hereby," and "herewith" and words of similar import shall, unless otherwise stated, be construed to refer to this Agreement as a whole and not to any particular provision of this Agreement.
(c) Whenever the words "include," "includes," or "including" are used in this Agreement, they shall be deemed to be followed by the words "without limitation," whether or not they are in fact followed by those words or words of like import.
(d) The definitions contained in this Agreement are applicable to the singular as well as the plural forms of such terms and to the masculine as well as to the feminine and neuter genders of such terms.
(e) Any agreement, instrument, statute, regulation, rule, or order defined or referred to herein means such agreement, instrument, statute, regulation, rule, or order as from time to time amended, modified, supplemented, or restated, including (in the case of agreements or instruments) by waiver or consent and (in the case of statutes, regulations, rules, or orders) by succession of comparable successor statutes, regulations, rules, or orders and references to all attachments thereto and instruments incorporated therein.
(f) References to a "person" or "Person" include any individual, corporation, partnership, limited liability company, joint venture, association, trust, unincorporated organization, governmental authority, or any other entity.
(g) The table of contents and headings contained in this Agreement are for reference purposes only and shall not affect in any way the meaning or interpretation of this Agreement.
(h) This Agreement shall be construed without regard to any presumption or rule requiring construction or interpretation against the party drafting or causing any instrument to be drafted.
ARTICLE II — ASSIGNMENT OF INTELLECTUAL PROPERTY
Section 2.1 — General Assignment
Assignor hereby irrevocably and unconditionally assigns, transfers, conveys, and delivers to Assignee, effective as of the Closing Date, all of Assignor's right, title, and interest in, to, and under the Assigned intellectual Property, to have and to hold the same unto Assignee, its successors and assigns, forever. This assignment is made free and clear of all liens, claims, charges, security interests, encumbrances, licenses, options, and restrictions of any kind (collectively, "Encumbrances"), other than Permitted Encumbrances as defined in the APA.
This assignment is made pursuant to, in furtherance of, and in consideration of the APA and for the aggregate purchase price of One Hundred Eighty Million Dollars ($180,000,000) and other good and valuable consideration set forth therein. No additional consideration is payable by Assignee to Assignor for the assignment of the Assigned intellectual Property pursuant to this Agreement. The assignment contemplated by this Section 2.1 is intended to encompass and effectuate the transfer of intellectual Property as part of the broader transfer of the Acquired Assets under the APA, and shall not be construed as creating any separate or additional obligations of the Parties beyond those set forth in the APA and this Agreement.
Section 2.2 — Trademarks and Service Marks
Assignor hereby assigns, transfers, and conveys to Assignee all of Assignor's right, title, and interest in and to all trademarks, service marks, trade names, brand names, logos, slogans, and trade dress owned by Assignor and used in connection with Assignor's corrugated packaging, folding carton, and specialty coatings business, including, without limitation:
(a) all registrations and applications for registration of such trademarks and service marks in the United States Patent and Trademark Office, any state trademark office, and any foreign intellectual property office or registry;
(b) all common law trademark and service mark rights arising from Assignor's use of such marks in commerce;
(c) all goodwill of the business associated with and symbolized by each such trademark, service mark, trade name, brand name, logo, slogan, and trade dress; and
(d) all rights to sue for and remedies against past, present, and future infringement, dilution, or other violation of any such trademark, service mark, or other right, and the right to collect and retain damages, profits, and other relief in connection therewith.
A complete list of all trademarks, service marks, trade names, logos, and trade dress being assigned under this Section 2.2, together with their respective registration numbers (or application serial numbers), filing dates, registration dates, jurisdictions, classes of goods and services, and current prosecution or registration status, is set forth on Schedule A attached hereto and incorporated herein by reference.
Notwithstanding the foregoing, the corporate name "Allegheny Valley Packaging, Inc." is expressly excluded from this assignment and shall not constitute part of the Assigned intellectual Property. Assignee's right to use such corporate name is limited exclusively to the Transitional License described in Article IV of this Agreement.
Section 2.3 — Patents and Patent Applications
Assignor hereby assigns, transfers, and conveys to Assignee all of Assignor's right, title, and interest in and to all patents and patent applications owned by Assignor, including, without limitation:
(a) all issued United States and foreign patents;
(b) all pending United States and foreign patent applications, including provisional applications;
(c) all continuations, continuations-in-part, divisionals, reissues, renewals, extensions, re-examinations, and supplementary protection certificates thereof;
(d) all patent rights arising from any of the foregoing, including the right to claim priority under the Paris Convention for the Protection of Industrial Property or any international treaty or convention; and
(e) all rights to sue for and remedies against past, present, and future infringement of any such patent or patent application, and the right to collect and retain damages, profits, and other relief in connection therewith.
The Assigned intellectual Property under this Section 2.3 includes, without limitation, patents and patent applications relating to Assignor's proprietary specialty chemical-resistant coating formulations, food-grade packaging technologies, corrugated container structural designs, and other packaging innovations developed by or on behalf of Assignor. A complete list of all patents and patent applications being assigned under this Section 2.3, together with their respective patent numbers (or application serial numbers), filing dates, issuance dates, titles, named inventors of record, jurisdictions, and current prosecution or registration status, is set forth on Schedule B attached hereto and incorporated herein by reference.
Section 2.4 — Trade Secrets and Proprietary Formulations
Assignor hereby assigns, transfers, and conveys to Assignee all of Assignor's right, title, and interest in and to all trade secrets, proprietary formulations, know-how, processes, techniques, methods, and confidential business information owned by Assignor or in the possession or control of Assignor and used in or related to Assignor's business, including, without limitation:
(a) proprietary formulations for specialty chemical-resistant coatings, including aqueous barrier coatings, solvent-based protective coatings, and multi-layer lamination adhesives designed for chemical-grade packaging applications;
(b) proprietary formulations for food-grade packaging materials and coatings, including grease-resistant coatings, moisture barrier formulations, and FDA-compliant direct food-contact coatings and materials;
(c) manufacturing processes and techniques for the production of corrugated containers and folding cartons, including die-cutting specifications, printing parameters, fluting processes, and board construction methodologies;
(d) quality control methodologies, specifications, testing protocols, and analytical procedures used in connection with Assignor's manufacturing operations at the Butler, Pennsylvania and Meadville, Pennsylvania facilities;
(e) research and development data, records, results, reports, and analyses, including data relating to ongoing or planned product development projects, formulation optimization studies, and materials science research; and
(f) all other confidential or proprietary technical, scientific, engineering, or business information of Assignor.
The assignment under this Section 2.4 includes all tangible and intangible embodiments of such trade secrets and proprietary information, including, without limitation, laboratory notebooks, technical files, formulation databases, process flow diagrams, standard operating procedures, manufacturing batch records, process documentation, specifications sheets, engineering drawings, and all electronic files, hard copies, and other media in which such information is stored, recorded, or embodied. Assignor shall deliver to Assignee at the Closing, or as promptly as practicable thereafter, all such tangible embodiments in Assignor's possession or control, and Assignor shall not retain any copies thereof except as may be required by applicable law or regulation or as may be reasonably necessary for Assignor's post-Closing tax reporting and compliance obligations.
Section 2.5 — Customer and Supplier Lists
Assignor hereby assigns, transfers, and conveys to Assignee all of Assignor's right, title, and interest in and to all customer lists, supplier lists, vendor data, customer and vendor relationship information, pricing histories, purchase records, sales data, order histories, credit information, and all related data, analyses, and compilations used in or related to Assignor's business. The Parties acknowledge that Assignor's top ten (10) customers, measured by trailing twelve-month revenue, collectively account for approximately sixty-two percent (62%) of Assignor's trailing twelve-month revenue of approximately Ninety-Five Million Dollars ($95,000,000) and that the preservation of such customer relationships is a material element of the value of the Acquired Assets.
The assignment under this Section 2.5 includes, without limitation, all information relating to Assignor's supply relationships, including, without limitation, the containerboard supply arrangement between Assignor and Consolidated Linerboard Corp. and all related pricing, volume, quality, and delivery data. All such customer and supplier information shall be treated by Assignee in accordance with applicable data privacy and confidentiality obligations.
Section 2.6 — Copyrights
Assignor hereby assigns, transfers, and conveys to Assignee all of Assignor's right, title, and interest in and to all copyrights and copyrightable works, whether registered or unregistered, including, without limitation:
(a) all marketing materials, brochures, advertisements, catalogs, and promotional content;
(b) all packaging designs, graphics, artwork, illustrations, and related visual content;
(c) all technical manuals, user guides, training materials, and instructional documentation;
(d) all software (including source code and object code), firmware, and associated documentation developed by or for Assignor in connection with the business;
(e) all product labels, inserts, and printed packaging materials; and
(f) all other original works of authorship created by or for Assignor in connection with the business.
The assignment under this Section 2.6 includes all registrations and applications for registration of such copyrights with the United States Copyright Office or any foreign copyright office, together with all rights of renewal and extension, and all rights to sue for and remedies against past, present, and future infringement or other violation thereof. A list of all registered and material unregistered copyrights being assigned under this Section 2.6 is set forth on Schedule D attached hereto and incorporated herein by reference.
Section 2.7 — Domain Names and Internet Properties
Assignor hereby assigns, transfers, and conveys to Assignee all of Assignor's right, title, and interest in and to all domain names, uniform resource locators (URLs), social media accounts, and internet properties owned by or registered to Assignor in connection with the business, including all registrations therefor and all associated accounts with domain name registrars, hosting providers, and social media platforms. A complete list of all domain names and internet properties being assigned under this Section 2.7, together with their respective registrars and expiration dates, is set forth on Schedule C attached hereto and incorporated herein by reference.
Assignor shall cooperate with Assignee to effect the transfer of all domain name registrations, social media accounts, and hosting accounts to Assignee or Assignee's designee as promptly as practicable following the Closing Date, including by providing all access credentials, authorization codes, and other information necessary to complete such transfers.
Section 2.8 — Other intellectual Property
Assignor hereby assigns, transfers, and conveys to Assignee all of Assignor's right, title, and interest in and to all other intellectual property and proprietary rights of any kind or nature used in, held for use in, or related to Assignor's business, to the extent not specifically enumerated in Sections 2.2 through 2.7 above, including, without limitation:
(a) all industrial designs and design registrations;
(b) all mask works and registrations thereof;
(c) all database rights and protections;
(d) all rights in data and data compilations;
(e) all rights to sue for and remedies against past, present, and future infringement, misappropriation, dilution, unfair competition, or other violation of any of the Assigned intellectual Property, and the right to collect and retain damages, profits, and other relief in connection therewith, to the extent such rights arise from or relate to acts occurring prior to, on, or after the Closing Date; and
(f) all licenses, sublicenses, consents, covenants not to sue, and agreements related to any of the Assigned intellectual Property, to the extent such licenses, sublicenses, consents, covenants, and agreements are assignable without the consent of any third party or for which such third-party consent has been obtained, subject in all cases to the terms and conditions of the Assignment and Assumption Agreement executed by the Parties at the Closing.
For the avoidance of doubt, to the extent that any license, sublicense, consent, or agreement described in clause (f) above requires the consent of any third party for assignment and such consent has not been obtained as of the Closing Date, such license, sublicense, consent, or agreement shall be subject to the arrangements and provisions for non-assignable contracts set forth in the APA.
ARTICLE III — EXCLUDED INTELLECTUAL PROPERTY
Section 3.1 — Excluded IP
Notwithstanding anything to the contrary contained in this Agreement, the following items of intellectual Property are expressly excluded from the assignment contemplated by this Agreement and shall not constitute part of the Assigned intellectual Property (collectively, the "Excluded IP"):
(a) Corporate Name. The corporate name "Allegheny Valley Packaging, Inc." shall remain the sole and exclusive property of Assignor. No ownership interest in such corporate name is transferred, assigned, or conveyed to Assignee pursuant to this Agreement. Assignee's right to use such corporate name is limited exclusively to the Transitional License granted pursuant to Article IV of this Agreement, subject to the terms, conditions, restrictions, and limitations set forth therein. Upon expiration or earlier termination of the Transitional License, Assignee shall have no further right to use the corporate name "Allegheny Valley Packaging, Inc." in any manner whatsoever.
(b) Corporate Records. Assignor's minute books, corporate records, stock transfer books, tax records required to be retained by Assignor under applicable law, and corporate seal, all of which are consistent with and included in the definition of "Excluded Assets" set forth in the APA.
The exclusion of the items described in this Section 3.1 is consistent with the treatment of such items as Excluded Assets under the APA, and nothing in this Agreement is intended to alter, expand, or restrict the scope of the Excluded Assets as defined in the APA.
ARTICLE IV — TRANSITIONAL LICENSE OF CORPORATE NAME
Section 4.1 — Grant of Transitional License
Subject to the terms and conditions set forth in this Article IV, Assignor hereby grants to Assignee a non-exclusive, royalty-free, non-transferable, non-sublicensable license to use the corporate name "Allegheny Valley Packaging, Inc." solely in connection with the operation of the acquired business for a period of six (6) months commencing on the Closing Date (the "License Term"). The Transitional License shall become effective automatically upon the occurrence of the Closing.
The Transitional License is granted solely for the following purposes: (a) to permit Assignee to transition existing customer and vendor relationships from the "Allegheny Valley Packaging" name to Assignee's own name or such other trade name as Assignee may adopt; (b) to complete in-process orders, fulfill existing purchase orders and sales contracts, and honor other commitments of the business that reference the corporate name; (c) to utilize existing printed materials, stationery, invoices, packing slips, bills of lading, signage, packaging, labels, and other items bearing the corporate name until such items can be replaced or exhausted in the ordinary course; and (d) to otherwise facilitate the orderly transition of the business from Assignor to Assignee. The Transitional License does not authorize Assignee to create new materials, products, or marketing content bearing the corporate name "Allegheny Valley Packaging, Inc." except to the extent reasonably necessary to accomplish the transition described in this Section 4.1.
Section 4.2 — Restrictions on Transitional License
Assignee's use of the corporate name "Allegheny Valley Packaging, Inc." during the License Term shall be subject to the following restrictions:
(a) Assignee shall not use the corporate name in any manner that would disparage, tarnish, or diminish the goodwill associated with such name or the reputation of Assignor.
(b) Assignee shall not use the corporate name in any manner that would create confusion among customers, vendors, suppliers, or the general public as to the identity of the current owner or operator of the business, or as to the identity of the entity that owns such corporate name. Without limiting the generality of the foregoing, Assignee shall, in all material communications with customers, vendors, suppliers, and other third parties during the License Term, make commercially reasonable efforts to inform such parties of the change in ownership of the business.
(c) Assignee shall not use the corporate name in any manner that would be inconsistent with the quality standards maintained by Assignor in the operation of the business prior to the Closing Date.
(d) Assignee shall use commercially reasonable efforts to transition away from use of the corporate name as promptly as practicable during the License Term, including by developing and implementing replacement branding, signage, packaging, stationery, and marketing materials bearing Assignee's own name or trade names.
(e) Assignee shall not register or attempt to register any trademark, service mark, trade name, or domain name incorporating the name "Allegheny Valley Packaging" or any variation or derivative thereof.
Section 4.3 — Expiration of Transitional License
Upon the expiration of the License Term (i.e., six (6) months following the Closing Date), all rights of Assignee to use the corporate name "Allegheny Valley Packaging, Inc." shall automatically and immediately terminate without the requirement of any further notice or action by either Party.
Within thirty (30) days following the expiration of the License Term (the "Wind-Down Period"), Assignee shall cease all use of the corporate name "Allegheny Valley Packaging, Inc." and shall remove, cover, or destroy all signage, packaging, stationery, marketing materials, business cards, letterhead, invoices, and other items bearing the corporate name that are in Assignee's possession or control, or that are displayed at Assignee's facilities or at any other location under Assignee's control.
Notwithstanding the foregoing, Assignee shall be permitted, during the Wind-Down Period only, to (a) sell or distribute finished goods inventory bearing the corporate name that was manufactured or produced prior to the expiration of the License Term, (b) deliver goods that are in transit as of the expiration of the License Term and that bear the corporate name, and (c) use pre-printed packaging materials, labels, and inserts bearing the corporate name to fulfill orders that were accepted prior to the expiration of the License Term, provided that Assignee shall not accept any new orders that would require the use of such materials after the expiration of the Wind-Down Period. In no event shall Assignee's use of the corporate name extend beyond the expiration of the Wind-Down Period, regardless of any remaining inventory of materials bearing such name.
ARTICLE V — RECORDATION AND FURTHER ASSURANCES
Section 5.1 — Recordation
Assignor shall cooperate with Assignee, at Assignee's sole cost and expense, to execute and deliver all documents, instruments, and forms necessary or desirable to record the assignment of the Assigned intellectual Property with the United States Patent and Trademark Office (the "USPTO"), the United States Copyright Office, and any other relevant governmental authority, intellectual property registry, or domain name registrar, in each jurisdiction where recordation of the assignment is necessary or desirable to perfect or protect Assignee's rights in the Assigned intellectual Property.
Without limiting the generality of the foregoing, Assignor shall execute and deliver to Assignee, promptly upon Assignee's request and in a form acceptable for recording, the following:
(a) assignments of trademark registrations and applications in the form prescribed by the USPTO;
(b) assignments of patent and patent applications in the form prescribed by the USPTO;
(c) assignments of copyright registrations and applications in the form prescribed by the United States Copyright Office;
(d) transfer authorization codes and instructions for domain name registrations; and
(e) such other assignments, transfer forms, confirmatory instruments, or other documents as may be reasonably requested by Assignee or as may be required by any governmental authority or intellectual property registry to effect and record the assignment of the Assigned intellectual Property.
Section 5.2 — Further Assurances
From and after the Closing Date, each Party shall, and shall cause its respective affiliates, officers, directors, employees, and agents to, take all such further actions, execute and deliver all such further documents and instruments, and provide all such further cooperation and assistance as may be reasonably necessary or appropriate to effectuate and carry out the purposes and intent of this Agreement and the transactions contemplated hereby, including, without limitation:
(a) execution of additional assignments, confirmatory instruments, or supplemental agreements;
(b) cooperation in proceedings before the USPTO, the United States Copyright Office, or any other governmental authority or intellectual property registry;
(c) assistance in the prosecution, maintenance, defense, or enforcement of any Assigned intellectual Property;
(d) cooperation in the transition of domain name registrations, hosting accounts, and social media accounts; and
(e) provision of such other assistance as may be reasonably requested by the other Party.
If any Assigned intellectual Property is inadvertently omitted from the Schedules attached hereto but was intended to be included in the Acquired Assets under the APA, such intellectual Property shall be deemed to be Assigned intellectual Property for all purposes of this Agreement, and Assignor shall promptly execute and deliver such assignments, instruments, and documents as Assignee may reasonably request to evidence and effectuate the assignment of such property to Assignee. For the avoidance of doubt, the omission of any such intellectual Property from the Schedules shall not affect the validity or enforceability of the assignment thereof pursuant to Section 2.1 of this Agreement.
Section 5.3 — Power of Attorney
Assignor hereby irrevocably constitutes and appoints Assignee, and any officer or authorized representative of Assignee, as Assignor's true and lawful attorney-in-fact, with full power of substitution and resubstitution, for Assignor and in Assignor's name, place, and stead, to execute and deliver on behalf of Assignor any and all documents, instruments, assignments, transfer forms, and other papers, and to take any and all actions, that Assignor is obligated to execute, deliver, or take under this Article V, in the event that Assignor fails to execute, deliver, or take such actions within thirty (30) days after receipt of written request from Assignee to do so. This power of attorney is coupled with an interest and is irrevocable and shall survive the dissolution, bankruptcy, or insolvency of Assignor. Assignee shall provide Assignor with prompt written notice of any exercise of this power of attorney and shall deliver copies of any documents executed on behalf of Assignor pursuant to this Section 5.3.
ARTICLE VI — REPRESENTATIONS AND WARRANTIES OF ASSIGNOR
Assignor hereby represents and warrants to Assignee as follows:
Section 6.1 — Organization and Authority
Assignor is a corporation duly organized, validly existing, and in good standing under the laws of the Commonwealth of Pennsylvania (Pennsylvania Department of State Entity ID: 6519847). Assignor has full corporate power and authority to execute and deliver this Agreement, to perform its obligations hereunder, and to consummate the transactions contemplated hereby. The execution, delivery, and performance of this Agreement by Assignor have been duly authorized by all necessary corporate action on the part of Assignor, including any necessary approval of Assignor's board of directors and shareholders.
Section 6.2 — Title
Assignor is the sole and exclusive owner of all right, title, and interest in and to the Assigned intellectual Property, free and clear of all Encumbrances other than Permitted Encumbrances as defined in the APA. No other person or entity has any ownership interest in, or any license to use (other than licenses granted in the ordinary course of business and disclosed to Assignee), any of the Assigned intellectual Property, except as set forth in the Schedules attached hereto or as disclosed in the APA or the disclosure schedules delivered in connection therewith.
Section 6.3 — Validity and Enforceability
This Agreement constitutes a legal, valid, and binding obligation of Assignor, enforceable against Assignor in accordance with its terms, except as such enforceability may be limited by (a) applicable bankruptcy, insolvency, reorganization, moratorium, fraudulent conveyance, or other similar laws affecting the enforcement of creditors' rights generally, and (b) general principles of equity, whether considered in a proceeding in equity or at law (including the possible unavailability of specific performance or injunctive relief).
Section 6.4 — No Conflict
The execution, delivery, and performance of this Agreement by Assignor, and the consummation of the transactions contemplated hereby, do not and will not (a) conflict with, result in a breach or violation of, or constitute a default (or an event that, with notice or lapse of time or both, would constitute a default) under, any provision of Assignor's articles of incorporation or bylaws, (b) conflict with, result in a breach or violation of, constitute a default under, give rise to any right of termination, cancellation, or acceleration under, or result in the creation of any Encumbrance upon any of the Assigned intellectual Property under, any contract, agreement, license, instrument, obligation, or arrangement to which Assignor is a party or by which Assignor or any of the Assigned intellectual Property is bound or affected, or (c) violate or conflict with any law, statute, rule, regulation, judgment, order, decree, or governmental permit or authorization applicable to Assignor or any of the Assigned intellectual Property.
Section 6.5 — Incorporation of APA Representations
Without limiting the representations and warranties set forth in Sections 6.1 through 6.4 above, the representations and warranties of Assignor set forth in the APA with respect to intellectual Property, including, without limitation, any representations and warranties regarding ownership, validity, enforceability, non-infringement, sufficiency, and absence of liens with respect to the intellectual Property included in the Acquired Assets, are hereby incorporated into this Agreement by reference and shall be deemed to have been made by Assignor as of the date hereof and as of the Closing Date with the same force and effect as if fully set forth herein. Such representations and warranties shall be subject to the survival periods and limitations set forth in the APA, including, without limitation, (a) the eighteen (18)-month general survival period applicable to representations and warranties other than Fundamental Representations (as defined in the APA), and (b) the sixty (60)-month survival period applicable to Fundamental Representations, in each case as measured from the Closing Date.
ARTICLE VII — REPRESENTATIONS AND WARRANTIES OF ASSIGNEE
Assignee hereby represents and warrants to Assignor as follows:
Section 7.1 — Organization and Authority
Assignee is a limited liability company duly organized, validly existing, and in good standing under the laws of the State of Ohio (Ohio Secretary of State Filing No. 4287653). Assignee has full limited liability company power and authority to execute and deliver this Agreement, to perform its obligations hereunder, and to consummate the transactions contemplated hereby. The execution, delivery, and performance of this Agreement by Assignee have been duly authorized by all necessary limited liability company action on the part of Assignee, including any necessary approval of Assignee's managers or members.
Section 7.2 — Validity and Enforceability
This Agreement constitutes a legal, valid, and binding obligation of Assignee, enforceable against Assignee in accordance with its terms, except as such enforceability may be limited by (a) applicable bankruptcy, insolvency, reorganization, moratorium, fraudulent conveyance, or other similar laws affecting the enforcement of creditors' rights generally, and (b) general principles of equity, whether considered in a proceeding in equity or at law (including the possible unavailability of specific performance or injunctive relief).
ARTICLE VIII — INDEMNIFICATION
Section 8.1 — Indemnification Governed by APA
The Parties acknowledge and agree that any and all claims, losses, damages, liabilities, costs, expenses, or other obligations arising out of, relating to, or in connection with this Agreement, including, without limitation, any breach or alleged breach of any representation, warranty, covenant, or obligation contained herein, or any claim relating to the ownership, validity, enforceability, infringement, or misappropriation of the Assigned intellectual Property, shall be subject to and governed exclusively by the indemnification provisions set forth in Article IX of the APA (or such other article of the APA as sets forth the indemnification obligations of the Parties).
Without limiting the generality of the foregoing, the Parties agree that the following limitations on indemnification set forth in the APA shall apply to any claims arising under or in connection with this Agreement:
(a) Indemnification Cap. The aggregate liability of either Party for indemnification claims (other than claims relating to Fundamental Representations or fraud) shall not exceed Forty-Five Million Dollars ($45,000,000), representing twenty-five percent (25%) of the aggregate purchase price under the APA.
(b) Basket. No indemnification claims (other than claims relating to Fundamental Representations or fraud) shall be payable unless and until the aggregate amount of indemnifiable losses exceeds One Million Three Hundred Fifty Thousand Dollars ($1,350,000), representing seventy-five hundredths of one percent (0.75%) of the aggregate purchase price under the APA, at which point the indemnifying Party shall be liable for all such losses from the first dollar (i.e., the basket shall be a "tipping" basket rather than a "deductible" basket).
(c) De Minimis Threshold. No individual claim shall be counted toward the basket described in clause (b) above unless the amount of indemnifiable losses attributable to such individual claim exceeds Fifty Thousand Dollars ($50,000).
(d) Survival Periods. The applicable survival periods for representations, warranties, covenants, and obligations shall be as set forth in the APA, including the eighteen (18)-month general survival period and the sixty (60)-month survival period for Fundamental Representations.
No separate or additional indemnification obligations are created by this Agreement. The indemnification provisions of the APA constitute the sole and exclusive remedy of the Parties and their respective affiliates for any claims arising out of or relating to this Agreement, except in cases of fraud or willful misconduct.
ARTICLE IX — MISCELLANEOUS
Section 9.1 — Governing Law
This Agreement shall be governed by and construed in accordance with the internal laws of the State of New York, without giving effect to any choice-of-law or conflict-of-laws rule or provision (whether of the State of New York or any other jurisdiction) that would cause the application of the laws of any jurisdiction other than the State of New York. The Parties agree that this governing law provision is consistent with the governing law provision set forth in the APA.
Section 9.2 — Relationship to APA
This Agreement is entered into pursuant to and is subject to the terms and conditions of the APA. This Agreement is a Transaction Document, as defined in the APA, and is delivered at the Closing in connection with and as a condition to the consummation of the transactions contemplated by the APA. In the event of any conflict, inconsistency, or ambiguity between the terms and provisions of this Agreement and the terms and provisions of the APA, the terms and provisions of the APA shall control and govern, and the terms and provisions of this Agreement shall be construed and interpreted in a manner consistent with the APA to the greatest extent possible.
This Agreement is not intended to, and shall not be deemed to, modify, amend, supplement, restate, or supersede the APA or any provision thereof in any respect. The rights and obligations of the Parties under the APA, including, without limitation, with respect to the Excluded Assets, the Excluded Liabilities, the representations and warranties of the Parties, the indemnification obligations and limitations, the conditions to Closing, and all other terms and conditions of the APA, are fully preserved and shall remain in full force and effect in accordance with their terms, notwithstanding anything to the contrary in this Agreement.
Section 9.3 — Entire Agreement
This Agreement, together with the APA and the other Transaction Documents (as defined in the APA), constitutes the entire agreement of the Parties with respect to the subject matter hereof and supersedes all prior and contemporaneous negotiations, discussions, correspondence, representations, warranties, commitments, offers, agreements, and understandings, whether written or oral, between the Parties with respect to the subject matter hereof. No representation, warranty, inducement, promise, understanding, or condition not set forth in this Agreement, the APA, or the other Transaction Documents has been made or relied upon by either Party.
Section 9.4 — Amendment and Waiver
This Agreement may not be amended, modified, or supplemented except by a written instrument duly executed by both Assignor and Assignee. No waiver by any Party of any provision of this Agreement or any breach or default hereunder shall be effective unless such waiver is in writing and signed by the Party against whom such waiver is sought to be enforced. No waiver of any breach or default shall constitute a waiver of any subsequent or other breach or default, whether of the same or any other provision. No delay or failure by any Party in exercising any right, power, or privilege under this Agreement shall operate as a waiver thereof, nor shall any single or partial exercise of any such right, power, or privilege preclude any other or further exercise thereof or the exercise of any other right, power, or privilege.
Section 9.5 — Severability
If any provision of this Agreement, or the application of any such provision to any person or circumstance, shall be held invalid, illegal, or unenforceable in any respect by a court of competent jurisdiction, such invalidity, illegality, or unenforceability shall not affect any other provision hereof and shall not invalidate any other provision of this Agreement. The remaining provisions of this Agreement shall continue in full force and effect, and the Parties shall negotiate in good faith to replace the invalid, illegal, or unenforceable provision with a valid and enforceable provision that, to the maximum extent practicable, achieves the original intent and economic effect of the invalid, illegal, or unenforceable provision.
Section 9.6 — Assignment
This Agreement shall be binding upon and shall inure to the benefit of the Parties and their respective successors and permitted assigns. Neither Party may assign its rights or delegate its obligations under this Agreement without the prior written consent of the other Party, except that Assignee may, without the consent of Assignor, assign any or all of its rights under this Agreement (a) to any affiliate of Assignee, (b) to any successor of Assignee in connection with a merger, consolidation, or reorganization involving Assignee, or (c) to any purchaser of all or substantially all of the assets of Assignee or of the business to which this Agreement relates. Any purported assignment in violation of this Section 9.6 shall be null and void and of no force or effect.
Section 9.7 — Counterparts
This Agreement may be executed in one or more counterparts, each of which shall be deemed an original, and all of which together shall constitute one and the same instrument. This Agreement may be executed and delivered by facsimile, portable document format (PDF), or other electronic transmission, and any such execution and delivery shall be of the same legal force and effect as an original ink signature. The Parties agree that electronic signatures (including signatures delivered via Brightwater Software, Ashford Health IT, or any other electronic signature platform) shall be valid and binding for all purposes.
Section 9.8 — Notices
All notices, requests, demands, claims, and other communications required or permitted to be given under this Agreement shall be in writing and shall be delivered in accordance with the notice provisions of the APA, including the methods of delivery and the time periods for deemed receipt specified therein. Unless changed in accordance with the notice provisions of the APA, notices to the Parties shall be addressed as follows:
If to Assignor:
Allegheny Valley Packaging, Inc. 250 Industrial Boulevard Butler, PA 16001
Attention: Gerald W. Horvath, President
with a copy (which shall not constitute notice) to:
Broadmoor Strauss & Kline LLP 600 Grant Street, Suite 4200 Pittsburgh, PA 15219
Attention: Nathan R. Feldstein
If to Assignee:
Crestline Packaging Solutions LLC 4100 Commerce Parkway, Suite 800 Akron, OH 44308
Attention: Sandra K. Liu, General Counsel
with a copy (which shall not constitute notice) to:
Calderwood & Harkness LLP 600 Lexington Avenue, 30th Floor New York, NY 10022
Attention: Harrison Wexford
Section 9.9 — No Third-Party Beneficiaries
Nothing in this Agreement, express or implied, is intended to or shall confer upon any person or entity other than the Parties hereto and their respective successors and permitted assigns any right, benefit, remedy, or claim of any kind or nature under or by reason of this Agreement. This Agreement is not intended to and shall not be construed as creating any third-party beneficiary rights in any person or entity.
IN WITNESS WHEREOF, the Parties have caused this intellectual Property Assignment Agreement to be executed and delivered by their duly authorized representatives as of the date first written above.
[Signature Page Follows]
SIGNATURE PAGE TO INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
ASSIGNOR:
ALLEGHENY VALLEY PACKAGING, INC., a Pennsylvania corporation
By: ________