INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
June 30, 2024
This INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT (this "Agreement") is made and entered into as of June 30, 2024 (the "Effective Date"), by and between:
CARDINAL PEAK INDUSTRIES, INC., a Delaware corporation (the "Assignor" or "Seller"), with its principal place of business at 8400 Crescent Ridge Parkway, Suite 200, Nashville, Tennessee 37215;
and
ARDENT HEALTHCARE ACQUISITION CORP., a Delaware corporation (the "Assignee" or "Purchaser"), with its registered office at c/o National Registered Services, Inc., 1209 Orange Street, Wilmington, Delaware 19801, and its principal place of business at 590 Madison Avenue, 34th Floor, New York, New York 10022.
Assignor and Assignee are each 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 April 2, 2024 (as may be amended, supplemented, or otherwise modified from time to time in accordance with its terms, the "Asset Purchase Agreement" or "APA"), pursuant to which Assignee is acquiring substantially all of the assets of Assignor, including, without limitation, Assignor's intellectual property assets (as defined therein);
WHEREAS, the APA contemplates the irrevocable assignment, transfer, conveyance, and delivery of all intellectual Property Assets (as defined in the APA) from Assignor to Assignee at the Closing (as defined in the APA);
WHEREAS, the Closing under the APA is occurring on the date hereof, June 30, 2024;
WHEREAS, this Agreement is being executed and delivered by Assignor to Assignee pursuant to Section 2.5(a)(viii) of the APA as a condition to the Closing and a required closing deliverable of Assignor;
WHEREAS, capitalized terms used but not otherwise defined herein shall have the meanings ascribed to such terms in the APA; and
WHEREAS, the APA is governed by and construed in accordance with the laws of the State of Delaware, without regard to conflicts of law principles, and the Parties intend that this Agreement be interpreted consistently therewith.
NOW, THEREFORE, in consideration of the mutual covenants and agreements herein contained, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, and intending to be legally bound hereby, the Parties agree as follows:
ARTICLE I — DEFINITIONS
For purposes of this Agreement, the following terms shall have the meanings set forth below. Capitalized terms used but not defined in this Agreement shall have the meanings ascribed to such terms in the APA.
"Assigned intellectual Property" means all of Assignor's right, title, and interest in and to any and all intellectual property, intellectual property rights, and related assets of every kind and description, wherever located and however arising, that constitute intellectual Property Assets under the APA and are being transferred, assigned, conveyed, and delivered to Assignee pursuant to this Agreement, including, without limitation, all of the following:
(a) all patents and patent applications, including any continuations, continuations-in-part, divisionals, reissues, re-examinations, and extensions thereof, and all rights therein (if any);
(b) all trademarks, service marks, trade names, trade dress, logos, brand names, slogans, and other source identifiers, whether registered or unregistered, and all applications for registration, registrations, and renewals thereof, together with all goodwill associated therewith, including, without limitation, United States Trademark Registration No. 5,412,887 for the mark "PEAKCONNECT," and all common law trademark rights associated with the Assigned intellectual Property;
(c) all copyrights, whether registered or unregistered, and all applications for registration and registrations thereof, including all moral rights, rights of attribution, and rights of integrity;
(d) all trade secrets, know-how, proprietary processes, methodologies, algorithms, formulae, techniques, confidential business information, research and development data, clinical protocols, treatment pathway documentation, and other proprietary information;
(e) all software, including, without limitation, all source code, object code, executable code, firmware, software libraries, application programming interfaces (APIs), documentation, databases, data compilations, user interfaces, graphical user interfaces, user manuals, technical documentation, training materials, and all related materials comprising or associated with the PeakConnect patient-engagement software platform, as well as any other proprietary software developed by or for Assignor used in the conduct of the Business (as defined in the APA);
(f) all internet domain names, uniform resource locators (URLs), social media accounts and handles, and website content associated with the Assigned intellectual Property or the Business;
(g) all goodwill associated with or symbolized by any of the foregoing;
(h) all rights to sue for, and all rights to recover and retain damages and profits and obtain injunctive and other equitable relief for, past, present, and future infringements, misappropriations, dilutions, or other violations of any of the foregoing, including, without limitation, all rights to collect royalties, license fees, and other payments with respect thereto;
(i) all income, royalties, damages, settlements, and payments now or hereafter due or payable with respect to any of the foregoing, including, without limitation, damages and payments for past, present, or future infringements, misappropriations, or other violations thereof; and
(j) all other intellectual property and proprietary rights of any kind or nature, whether arising under the laws of the United States or any other jurisdiction, that are related to or used in connection with the Business.
The Assigned intellectual Property is more particularly described on Schedule A attached hereto, which Schedule A is incorporated herein by reference. The listing of any item on Schedule A is not intended to limit the generality of the foregoing definition, and the omission of any particular item from Schedule A shall not be deemed to exclude such item from the scope of the Assigned intellectual Property to the extent it is otherwise encompassed by this definition or the definition of intellectual Property Assets under the APA.
"Excluded Assets" has the meaning ascribed to such term in the APA and includes, without limitation, (a) the Excluded intellectual Property (as defined below) and (b) all equity interests in Cardinal Peak Labs, Inc., a dormant Delaware corporation and wholly owned subsidiary of Assignor, which equity interests are expressly excluded from the transactions contemplated by the APA.
"Excluded intellectual Property" means the corporate name "Cardinal Peak Industries" and all variations, abbreviations, and derivations thereof (including, without limitation, "Cardinal Peak" and "CPI" when used as an identifier for Assignor's corporate entity), which corporate name is an Excluded Asset under the APA and is retained by Assignor, subject to the License-Back set forth in Article IV of this Agreement. For the avoidance of doubt, while the corporate name itself is retained by Assignor, all goodwill, trade name rights, and associated intellectual property rights in the name "Cardinal Peak Industries" to the extent used in or associated with the healthcare services business conducted by Assignor (the "Business") are included in the Assigned intellectual Property and are transferred to Assignee hereunder.
"Licensed Name" means the corporate name "Cardinal Peak Industries" and all associated marks, variations, abbreviations, and derivations thereof, as licensed back to Assignor by Assignee pursuant to Article IV of this Agreement for the limited transitional purposes set forth therein.
"PeakConnect Platform" means the proprietary patient-engagement software platform developed by or on behalf of Assignor, including, without limitation, all associated source code, object code, executable code, software libraries, application programming interfaces (APIs), databases, data compilations, algorithms, user interfaces, graphical user interfaces, documentation (including technical documentation, system architecture documents, and design specifications), user manuals, training materials, and all versions, updates, patches, enhancements, modifications, and derivative works thereof, together with all intellectual property rights therein.
ARTICLE II — ASSIGNMENT OF INTELLECTUAL PROPERTY
Section 2.1 — Assignment.
Assignor hereby irrevocably and unconditionally assigns, transfers, conveys, sets over, and delivers to Assignee, and Assignee hereby accepts from Assignor, all of Assignor's right, title, and interest in, to, and under the Assigned intellectual Property, together with all goodwill associated therewith and appurtenant thereto, free and clear of all liens, mortgages, pledges, security interests, charges, claims, restrictions, encumbrances, and adverse interests of any kind or nature whatsoever (collectively, "Liens"). In connection with the foregoing, Assignor confirms and acknowledges that all Liens previously held by Velthorn Merchant Bank, N.A. on the Assigned intellectual Property pursuant to that certain Credit Agreement, dated as of March 15, 2018, by and among Assignor, the guarantors party thereto, and Velthorn Merchant Bank, N.A. as administrative agent (as amended, restated, supplemented, or otherwise modified from time to time, the "Credit Agreement"), under which Assignor had outstanding principal indebtedness in the aggregate amount of Eighty-Seven Million Four Hundred Thousand Dollars ($87,400,000.00), have been fully and unconditionally released. In furtherance thereof, Uniform Commercial Code termination statements have been duly filed with (a) the Secretary of State of the State of Delaware on June 28, 2024 and (b) the Secretary of State of the State of Tennessee on June 28, 2024, in each case releasing all security interests of Velthorn Merchant Bank, N.A. in the Assigned intellectual Property and all other collateral securing the Credit Agreement, which indebtedness has been paid in full at or prior to the Closing.
The assignment effected by this Section 2.1 includes, without limitation, all intellectual property and intellectual property rights set forth on Schedule A hereto, which is incorporated herein by reference. To the extent any Assigned intellectual Property is not specifically identified on Schedule A but would otherwise be included within the scope of the definition of Assigned intellectual Property set forth in Article I or the definition of intellectual Property Assets under the APA, such Assigned intellectual Property is hereby assigned, transferred, conveyed, and delivered to Assignee with the same force and effect as if specifically enumerated on Schedule A.
Section 2.2 — PeakConnect Platform.
Without limiting the generality of Section 2.1, Assignor hereby specifically and irrevocably assigns, transfers, conveys, and delivers to Assignee all of Assignor's right, title, and interest in, to, and under the PeakConnect Platform, including, without limitation:
(a) all source code, object code, executable code, software libraries, modules, components, subroutines, and related technical materials in all formats and media;
(b) all versions, releases, updates, upgrades, patches, bug fixes, enhancements, modifications, customizations, and derivative works of the PeakConnect Platform, whether currently in existence or in development as of the Closing Date;
(c) the registered trademark "PEAKCONNECT," United States Patent and Trademark Office Registration No. 5,412,887, together with all common law rights and goodwill associated therewith;
(d) all internet domain names, uniform resource locators, and website content associated with the PeakConnect Platform, including, without limitation, those domain names listed on Part 4 of Schedule A hereto;
(e) all trade secrets, proprietary algorithms, machine learning models, data analytics methodologies, and other confidential and proprietary information embodied in, used in connection with, or relating to the PeakConnect Platform;
(f) all application programming interfaces, data feeds, data schemas, database structures, and system integration components associated with the PeakConnect Platform;
(g) all user manuals, technical documentation, design specifications, system architecture documents, training materials, and other written materials relating to the PeakConnect Platform; and
(h) all third-party software licenses, open-source software licenses, and other technology licenses embedded in, bundled with, or otherwise necessary for the operation and maintenance of the PeakConnect Platform, to the extent such licenses are assignable or transferable. To the extent any such third-party license requires the consent of the licensor for assignment or transfer, such license shall be governed by Section 2.6(b) of the APA and the applicable provisions of the APA regarding non-assignable contracts.
Section 2.3 — Effective Date.
The assignment, transfer, conveyance, and delivery of the Assigned intellectual Property effected by this Article II shall be effective as of the Closing Date, June 30, 2024, simultaneously with the consummation of the Closing under the APA.
Section 2.4 — Consideration.
The assignment, transfer, conveyance, and delivery of the Assigned intellectual Property effected by this Agreement is made for and in consideration of the purchase price paid and payable by Assignee to Assignor under the APA (the "Purchase Price"), consisting of (a) a base purchase price of Six Hundred Twenty Million Dollars ($620,000,000.00) (the "Base Purchase Price"), of which (i) Five Hundred Fifty-Eight Million Dollars ($558,000,000.00) is payable in cash at the Closing by wire transfer of immediately available funds, and (ii) Sixty-Two Million Dollars ($62,000,000.00) has been deposited in escrow with Commonwealth Trust & Escrow Company as escrow agent pursuant to the Escrow Agreement, dated as of the date hereof, by and among Assignor, Assignee, and Commonwealth Trust & Escrow Company (the "Escrow Agreement"), and (b) contingent earnout consideration of up to Forty-Five Million Dollars ($45,000,000.00) in the aggregate, payable in accordance with the terms and conditions set forth in Section 2.7 of the APA (the "Earnout Consideration"), and other good and valuable consideration, the receipt, adequacy, and sufficiency of which are hereby irrevocably acknowledged by Assignor. Assignor agrees that the consideration set forth in this Section 2.4 constitutes full, adequate, and complete consideration for the assignment, transfer, conveyance, and delivery of the Assigned intellectual Property.
ARTICLE III — RECORDATION AND FURTHER ASSURANCES
Section 3.1 — Recordation of Assignment.
Assignor hereby authorizes and agrees to cooperate with Assignee, at Assignee's cost and expense (except as otherwise provided in the APA), in recording this Agreement or any short-form or confirmatory assignment derived herefrom with the United States Patent and Trademark Office ("USPTO"), the United States Copyright Office, and any other applicable governmental authority, intellectual property registry, domain name registrar, or similar office or agency in the United States or any foreign jurisdiction. Assignee shall have the right, but not the obligation, to record this Agreement or any short-form assignment substantially in the form attached hereto as Exhibit A (or in such other form as may be required by the applicable governmental authority) with the USPTO and any applicable state or foreign intellectual property registry. Without limiting the generality of the foregoing, Assignor specifically authorizes and agrees to cooperate with Assignee in recording the assignment of United States Trademark Registration No. 5,412,887 for the mark "PEAKCONNECT" with the Assignment Division of the USPTO, including by executing such short-form trademark assignment documents as may be required by the USPTO for recordation purposes.
Section 3.2 — Further Assurances.
Assignor hereby covenants and agrees that, from and after the Closing Date, Assignor shall, at Assignee's reasonable request and at Assignee's sole cost and expense (except as otherwise provided in the APA), promptly execute and deliver to Assignee any and all further instruments, documents, assignments, declarations, affidavits, agreements, and other writings, and shall take any and all further actions, as Assignee may reasonably request or as may be otherwise necessary or desirable to effectuate the purposes and intent of this Agreement and to vest in Assignee good, valid, and marketable title to the Assigned intellectual Property, free and clear of all Liens. Without limiting the generality of the foregoing, such further instruments, documents, and actions shall include:
(a) the execution and delivery of separate trademark assignment forms, in such form as may be required by the USPTO or any state or foreign trademark registry, for the assignment and recordation of any and all trademarks, service marks, and trademark and service mark applications included in the Assigned intellectual Property;
(b) the execution and delivery of separate copyright assignment forms, in such form as may be required by the United States Copyright Office or any state or foreign copyright registry, for the assignment and recordation of any and all copyrights and copyright registrations included in the Assigned intellectual Property;
(c) the execution and delivery of any documents, instruments, or forms required by any foreign intellectual property office, registry, or governmental authority for the perfection, registration, or recordation of the assignment of any Assigned intellectual Property in any foreign jurisdiction;
(d) the execution and delivery of any domain name transfer authorization letters, registrar transfer forms, or similar documents necessary to effectuate the transfer of all domain names included in the Assigned intellectual Property to Assignee or its designee; and
(e) the taking of such other actions as may be reasonably necessary to confirm, perfect, protect, and enforce Assignee's right, title, and interest in and to the Assigned intellectual Property.
In furtherance of the foregoing, Assignor agrees to make available its officers and employees, including specifically Dr. Randall J. Whitfield, Chairman and Chief Executive Officer of Assignor, and Elaine Whitfield-Torres, Chief Technology Officer of Assignor, in their respective capacities and subject to the terms and conditions of their respective post-closing employment agreements with Assignee (or its applicable affiliate), to assist Assignee in confirming and perfecting the assignment of the Assigned intellectual Property, including by providing testimony, executing declarations or affidavits, and otherwise cooperating with Assignee in connection with any proceeding before the USPTO, any court, or any other governmental authority relating to the Assigned intellectual Property.
Section 3.3 — 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 and agent, with full power of substitution and resubstitution, coupled with an interest, to execute, deliver, acknowledge, certify, file, and record, in the name of and on behalf of Assignor, any and all instruments, documents, assignments, declarations, affidavits, and other writings that may be necessary, appropriate, or desirable to perfect, confirm, register, or record the assignment of the Assigned intellectual Property to Assignee under this Agreement, in the event that Assignor fails or refuses to execute and deliver any such instrument, document, or writing within fifteen (15) business days after Assignee's written request therefor (or such shorter period as may be required by any applicable filing deadline or other exigency). This power of attorney is coupled with an interest and is irrevocable. Assignor hereby ratifies and confirms all actions that Assignee may lawfully take or cause to be taken by virtue of this power of attorney.
ARTICLE IV — LICENSE-BACK OF CORPORATE NAME
Section 4.1 — Grant of License.
Subject to the terms and conditions of this Article IV, Assignee hereby grants to Assignor a non-exclusive, royalty-free, non-transferable, non-sublicensable, limited license to use the corporate name "Cardinal Peak Industries" and variations thereof (the "Licensed Name") solely for the limited purposes set forth in Section 4.2 below (the "License-Back"). The term of the License-Back shall commence on the Closing Date, June 30, 2024, and shall expire on June 30, 2025, unless earlier terminated in accordance with the terms of this Agreement (the "License Term").
For the avoidance of doubt, the Parties acknowledge and agree that the corporate name "Cardinal Peak Industries" is an Excluded Asset under the APA and is retained by Assignor. Assignor retains the corporate name itself, including the right to maintain its corporate existence under such name during the License Term. However, all goodwill, trade name rights, and associated intellectual property rights in the name "Cardinal Peak Industries" to the extent used in or associated with the healthcare services business conducted by Assignor (the "Business") have been transferred to Assignee as part of the Assigned intellectual Property pursuant to Article II of this Agreement. Accordingly, the License-Back granted in this Section 4.1 constitutes a license from Assignee to Assignor to continue using the Licensed Name during the wind-down period solely for the transitional and limited purposes specified in Section 4.2, and not for any purpose associated with the conduct of the Business or any new business activities.
Section 4.2 — Scope of Licensed Use.
During the License Term, Assignor may use the Licensed Name solely for the following limited purposes:
(a) winding down Assignor's corporate affairs, business operations, and legal existence following the Closing, including maintaining corporate records, bank accounts, and other administrative matters in Assignor's name as reasonably necessary during the wind-down period;
(b) complying with any legal, regulatory, tax, or contractual obligations requiring the use of the corporate name "Cardinal Peak Industries," including, without limitation, obligations arising in connection with the pending litigation captioned Dawson v. Cardinal Peak Industries, Inc., Case No. 3:23-cv-01847 (M.D. Tenn.) (the "Dawson Litigation"), which is an Excluded Liability retained by Assignor pursuant to the APA;
(c) preparing, filing, and processing federal, state, and local tax returns, reports, and other regulatory filings for pre-Closing periods, and responding to any audits, inquiries, or examinations by taxing authorities or other governmental agencies relating to pre-Closing periods;
(d) communicating with creditors, former employees, governmental agencies, and other third parties regarding pre-Closing matters, including the resolution of retained liabilities and the administration of pre-Closing employee benefit plans; and
(e) such other limited uses as may be reasonably necessary to effectuate the orderly wind-down of Assignor's affairs, as mutually agreed upon in writing by the Parties.
Notwithstanding the foregoing, Assignor shall not use the Licensed Name in connection with any new business activities, the provision of healthcare services, the development or marketing of any products or services, the solicitation of customers, patients, or referral sources, or any other commercial purpose unrelated to the wind-down of Assignor's affairs following the Closing.
Section 4.3 — Quality Control.
During the License Term, Assignor shall not use the Licensed Name in any manner that is misleading, deceptive, disparaging, or defamatory, or that could reasonably be expected to tarnish, dilute, or otherwise diminish the goodwill associated with the Licensed Name or any of the Assigned intellectual Property. Assignor shall promptly notify Assignee of any circumstance or event that could reasonably be expected to have an adverse effect on the goodwill associated with the Licensed Name. Assignee shall have the right, upon reasonable notice, to review Assignor's use of the Licensed Name to ensure compliance with this Section 4.3, and Assignor shall cooperate with any such review.
Section 4.4 — Expiration and Cessation.
Upon the expiration of the License Term on June 30, 2025, or upon any earlier termination of the License-Back, Assignor shall immediately cease all use of the Licensed Name in any form or medium whatsoever. Without limiting the generality of the foregoing, within thirty (30) days following the expiration or termination of the License Term, Assignor shall:
(a) file all necessary amendments with the Secretary of State of the State of Delaware to change Assignor's corporate name to a name that does not include "Cardinal Peak," "Cardinal Peak Industries," or any confusingly similar variation thereof;
(b) file all necessary amendments, withdrawals, or other documents with the Secretaries of State or equivalent governmental authorities of each state in which Assignor is qualified to do business as a foreign corporation, including the States of Tennessee, Georgia, North Carolina, South Carolina, Alabama, Virginia, and Kentucky, to reflect Assignor's corporate name change or to withdraw Assignor's qualification to do business in such states;
(c) remove or cause to be removed the Licensed Name from all signage, letterhead, business cards, websites, email addresses, social media accounts, marketing materials, and other materials within Assignor's possession or control; and
(d) take all other steps reasonably necessary to ensure the complete cessation of Assignor's use of the Licensed Name.
Assignor shall provide Assignee with written evidence of the completion of the foregoing actions promptly following such completion, and in any event no later than sixty (60) days following the expiration or termination of the License Term.
ARTICLE V — REPRESENTATIONS AND WARRANTIES OF ASSIGNOR
Assignor hereby represents and warrants to Assignee as follows, as of the date hereof:
Section 5.1 — Organization and Authority.
Assignor is a corporation duly organized, validly existing, and in good standing under the laws of the State of Delaware (Delaware File No. 5487231). Assignor is duly qualified or licensed to do business and is in good standing as a foreign corporation in each of the States of Tennessee, Georgia, North Carolina, South Carolina, Alabama, Virginia, and Kentucky. Assignor has full corporate power and authority to execute, deliver, and perform its obligations under this Agreement and to consummate the transactions contemplated hereby, including the assignment, transfer, conveyance, and delivery of the Assigned intellectual Property to Assignee. The execution, delivery, and performance of this Agreement by Assignor, and the consummation by Assignor of the transactions contemplated hereby, have been duly and validly authorized by all necessary corporate action on the part of Assignor, including the approval of Assignor's board of directors and, to the extent required, Assignor's stockholders, as evidenced by the Secretary's Certificate of Seller delivered at the Closing pursuant to the APA. No other corporate proceedings or approvals on the part of Assignor are necessary to authorize the execution, delivery, and performance of this Agreement or the consummation of the transactions contemplated hereby.
Section 5.2 — Title and Ownership.
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 Liens (other than (a) the License-Back granted to Assignor pursuant to Article IV of this Agreement and (b) Permitted Encumbrances, as such term is defined in the APA). No third party has any ownership interest, license, covenant not to sue, right of first refusal, option, or other right or interest in or to any of the Assigned intellectual Property that would conflict with, impair, or otherwise adversely affect the assignment, transfer, conveyance, and delivery of the Assigned intellectual Property to Assignee pursuant to this Agreement, except for third-party software licenses that have been disclosed on the Disclosure Schedules to the APA and that are being assigned or otherwise made available to Assignee in accordance with the terms of the APA. All persons who have contributed to the creation or development of the Assigned intellectual Property, including employees, independent contractors, and consultants, have executed valid and enforceable written agreements assigning all of their right, title, and interest in and to such Assigned intellectual Property to Assignor, and no such person has any residual ownership interest, moral right, or other right or claim in or to any Assigned intellectual Property.
Section 5.3 — Validity of intellectual Property.
To Assignor's knowledge (as such term is defined in the APA), the Assigned intellectual Property is valid, subsisting, and enforceable. Without limiting the generality of the foregoing:
(a) United States Trademark Registration No. 5,412,887 for the mark "PEAKCONNECT" is subsisting and in full force and effect. All required maintenance filings, affidavits of use, renewal applications, and other filings necessary to maintain the registration in full force and effect have been timely made and are current as of the date hereof. No opposition, cancellation, interference, or other proceeding is pending or, to Assignor's knowledge, threatened with respect to such registration.
(b) To Assignor's knowledge, all copyrights included in the Assigned intellectual Property are valid and subsisting, and all copyright registrations (if any) are in full force and effect.
(c) Assignor has taken commercially reasonable measures to protect the secrecy and confidentiality of all trade secrets included in the Assigned intellectual Property, including requiring employees, contractors, and other persons with access to such trade secrets to execute confidentiality and non-disclosure agreements.
Section 5.4 — No Infringement.
(a) To Assignor's knowledge, the Assigned intellectual Property, and the use thereof in the conduct of the Business as currently conducted and as conducted during the three (3) years preceding the date hereof, does not infringe, misappropriate, dilute, or otherwise violate the intellectual property rights or other proprietary rights of any third party.
(b) To Assignor's knowledge, no third party is currently infringing, misappropriating, diluting, or otherwise violating any of the Assigned intellectual Property. Assignor has not asserted or threatened any claim against any third party alleging infringement, misappropriation, or other violation of any Assigned intellectual Property.
(c) Assignor has not received any written notice or other communication from any third party alleging that the Assigned intellectual Property, or the use thereof, infringes, misappropriates, or otherwise violates the intellectual property rights of any third party, and no claim, action, suit, investigation, or proceeding asserting any such allegation is pending or, to Assignor's knowledge, threatened.
Section 5.5 — No Encumbrances.
All liens, security interests, pledges, mortgages, and other encumbrances previously held by Velthorn Merchant Bank, N.A. on the Assigned intellectual Property, or on any assets of Assignor that include or relate to the Assigned intellectual Property, pursuant to the Credit Agreement, have been irrevocably and unconditionally released and terminated. In furtherance thereof, Uniform Commercial Code termination statements (UCC-3 forms) have been duly filed with (a) the Secretary of State of the State of Delaware on June 28, 2024 and (b) the Secretary of State of the State of Tennessee on June 28, 2024, in each case terminating all financing statements and security interests of Velthorn Merchant Bank, N.A. relating to the Assigned intellectual Property and all other collateral securing the Credit Agreement. No other Lien exists on any Assigned intellectual Property as of the date hereof, other than Permitted Encumbrances (as defined in the APA).
Section 5.6 — Cross-Reference to APA Representations.
The representations and warranties set forth in this Article V are supplemental to, and not in limitation or substitution of, the representations and warranties of Assignor set forth in the APA, including, without limitation, the representations and warranties set forth in Article IV thereof relating to intellectual property. The representations and warranties set forth in the APA shall survive the Closing in accordance with the survival provisions set forth therein, specifically: (a) general representations and warranties shall survive for a period of eighteen (18) months following the Closing Date, through and including December 30, 2025; and (b) fundamental representations and warranties (including representations as to title, ownership, authority, and organization) shall survive for a period of thirty-six (36) months following the Closing Date, through and including June 30, 2027. The representations and warranties set forth in this Article V shall survive in accordance with the same survival periods as the corresponding representations and warranties in the APA.
ARTICLE VI — REPRESENTATIONS AND WARRANTIES OF ASSIGNEE
Assignee hereby represents and warrants to Assignor as follows, as of the date hereof:
Section 6.1 — Organization and Authority.
Assignee is a corporation duly organized, validly existing, and in good standing under the laws of the State of Delaware (Delaware File No. 7129384; Employer Identification Number 93-2184720). Assignee is a wholly owned subsidiary of Ardent Capital Partners III LP, a Delaware limited partnership. Assignee has full corporate power and authority to execute, deliver, and perform its obligations under this Agreement and to consummate the transactions contemplated hereby, including the acceptance of the assignment of the Assigned intellectual Property from Assignor and the grant of the License-Back to Assignor pursuant to Article IV.
Section 6.2 — Authorization.
The execution, delivery, and performance of this Agreement by Assignee, and the consummation by Assignee of the transactions contemplated hereby, have been duly and validly authorized by all necessary corporate action on the part of Assignee, including the approval of Assignee's board of directors (or equivalent governing body), as evidenced by the Secretary's Certificate of Buyer delivered at the Closing pursuant to the APA. No other corporate proceedings or approvals on the part of Assignee or any of its affiliates (including Ardent Capital Partners III LP) are necessary to authorize the execution, delivery, and performance of this Agreement or the consummation of the transactions contemplated hereby. This Agreement has been duly executed and delivered by Assignee and constitutes the valid and legally binding obligation of Assignee, enforceable against Assignee in accordance with its terms, subject to applicable bankruptcy, insolvency, reorganization, moratorium, fraudulent conveyance, and other similar laws affecting creditors' rights generally and to general principles of equity (regardless of whether such enforceability is considered in a proceeding in equity or at law).
ARTICLE VII — INDEMNIFICATION
Section 7.1 — Cross-Reference to APA.
All indemnification obligations, rights, and remedies of the Parties with respect to (a) any breach or inaccuracy of any representation or warranty contained in this Agreement, (b) any breach of any covenant or agreement contained in this Agreement, and (c) any matters relating to, arising out of, or in connection with the Assigned intellectual Property, including any pre-Closing infringement, misappropriation, or violation thereof, are governed exclusively by Article IX of the APA, which sets forth the sole and exclusive indemnification procedures and limitations applicable to such matters. Without limiting the foregoing, the following indemnification parameters set forth in the APA shall apply to claims arising under or in connection with this Agreement:
(a) Indemnification Cap. The aggregate liability of Assignor for indemnification obligations under the APA (other than with respect to fraud, willful breach, or breaches of fundamental representations) shall not exceed One Hundred Twenty-Four Million Dollars ($124,000,000.00), which represents twenty percent (20%) of the Base Purchase Price of Six Hundred Twenty Million Dollars ($620,000,000.00).
(b) Indemnification Basket. Assignor shall not be required to indemnify Assignee for Losses (as defined in the APA) unless and until the aggregate amount of all Losses for which indemnification is sought exceeds Three Million One Hundred Thousand Dollars ($3,100,000.00), which represents one-half of one percent (0.5%) of the Base Purchase Price (the "Basket Amount"). The Basket Amount is a tipping basket, meaning that once the aggregate Losses exceed the Basket Amount, Assignee shall be entitled to indemnification from the first dollar of Losses (i.e., full recovery from dollar one, not merely recovery of the excess above the Basket Amount).
(c) De Minimis Threshold. No individual claim for indemnification shall be counted toward the Basket Amount or otherwise be indemnifiable unless the Losses attributable to such individual claim exceed One Hundred Thousand Dollars ($100,000.00) (the "De Minimis Threshold").
(d) Survival Periods. General representations and warranties shall survive for a period of eighteen (18) months following the Closing Date, through and including December 30, 2025. Fundamental representations and warranties (including representations as to title, ownership, authority, organization, and brokers) shall survive for a period of thirty-six (36) months following the Closing Date, through and including June 30, 2027.
(e) Exclusive Remedy. Except in the case of fraud, willful breach, or claims for specific performance, injunctive relief, or other equitable remedies, the indemnification provisions set forth in Article IX of the APA shall constitute the sole and exclusive remedy of the Parties for any breach or inaccuracy of any representation, warranty, covenant, or agreement contained in this Agreement or the APA, or for any other claim or cause of action arising out of or relating to the transactions contemplated hereby or thereby.
Section 7.2 — R&W Insurance.
The Parties acknowledge and agree that representations and warranties insurance has been obtained by Assignee from Sentinel Specialty Insurance Company under Policy No. SSI-RWI-2024-05178 (the "R&W Policy"), with aggregate coverage of Sixty-Two Million Dollars ($62,000,000.00) and a retention of Six Million Two Hundred Thousand Dollars ($6,200,000.00). The R&W Policy may provide additional coverage for Losses arising from breaches of representations and warranties relating to intellectual property, to the extent such Losses are not excluded under the terms and conditions of the R&W Policy. Nothing in this Agreement shall be deemed to modify, limit, or otherwise affect the terms of the R&W Policy or Assignee's rights thereunder. The existence of the R&W Policy shall not reduce, limit, or otherwise affect Assignor's indemnification obligations under the APA or this Agreement.
ARTICLE VIII — TRANSITION SERVICES
Section 8.1 — Cross-Reference to TSA.
To the extent that transitional support, services, or assistance is required with respect to the PeakConnect Platform, any other Assigned intellectual Property, or any information technology systems, infrastructure, or services associated therewith following the Closing, such transitional support, services, and assistance shall be provided by Assignor to Assignee (or Assignee's designee) pursuant to, and in accordance with the terms and conditions of, that certain Transition Services Agreement, dated as of June 30, 2024, by and between Assignor and Assignee (the "TSA"). The TSA provides for transitional services for a period of up to nine (9) months following the Closing Date, subject to the terms and conditions set forth therein. Nothing in this Agreement shall be deemed to modify, amend, supersede, or otherwise affect the terms and conditions of the TSA, and in the event of any conflict between the terms of this Agreement and the TSA with respect to the provision of transitional services, the TSA shall control.
ARTICLE IX — MISCELLANEOUS
Section 9.1 — Governing Law.
This Agreement shall be governed by, and construed and enforced in accordance with, the internal laws of the State of Delaware, without regard to any conflicts of law principles that would require or permit the application of the laws of any other jurisdiction, consistent with the governing law provision set forth in the APA. Each Party irrevocably and unconditionally submits to the exclusive jurisdiction of the Court of Chancery of the State of Delaware (or, if the Court of Chancery declines to accept jurisdiction, any state or federal court sitting in Wilmington, Delaware) for the purpose of any action, suit, or proceeding arising out of or relating to this Agreement, and each Party irrevocably and unconditionally waives any objection to the laying of venue of any such action, suit, or proceeding in any such court and any claim that any such action, suit, or proceeding has been brought in an inconvenient forum.
Section 9.2 — Relationship to APA.
This Agreement is being executed and delivered pursuant to, and is subject to the terms and conditions of, the APA. This Agreement is intended to effectuate the assignment and transfer of the Assigned intellectual Property as contemplated by the APA and is not intended to, and shall not be construed to, create any rights, obligations, or liabilities beyond those 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. Nothing in this Agreement shall be deemed to modify, amend, supplement, restate, or supersede any provision of the APA, and the APA shall remain in full force and effect in accordance with its terms.
Section 9.3 — Entire Agreement.
This Agreement, together with the APA and the other Transaction Documents (as defined in the APA) referenced therein, including the Escrow Agreement, the TSA, and the Schedules and Exhibits hereto and thereto, constitutes the entire agreement of the Parties with respect to the subject matter hereof and supersedes all prior and contemporaneous agreements, understandings, representations, warranties, negotiations, and discussions, whether oral or written, between the Parties with respect to such subject matter.
Section 9.4 — Amendment; Waiver.
This Agreement may not be amended, modified, or supplemented except by a written instrument duly executed by each of the Parties hereto. No waiver of any provision of this Agreement, or of any right or remedy hereunder, shall be effective unless set forth in a written instrument duly executed by the Party granting such waiver. No waiver of any breach or default shall be deemed a waiver of any subsequent breach or default, whether of the same or a different provision of this Agreement. No failure or delay by any Party in exercising any right, power, or privilege hereunder shall operate as a waiver thereof, nor shall any single or partial exercise thereof preclude any other or further exercise thereof or the exercise of any other right, power, or privilege.
Section 9.5 — Successors and Assigns.
This Agreement shall be binding upon, and shall inure to the benefit of, the Parties hereto and their respective heirs, executors, administrators, legal representatives, successors, and permitted assigns. Assignee may assign, delegate, or otherwise transfer any or all of its rights, interests, and obligations under this Agreement to any affiliate or any successor by merger, consolidation, reorganization, or acquisition of substantially all of the assets of Assignee, in each case without the prior written consent of Assignor. Assignor may not assign, delegate, or otherwise transfer any of its rights, interests, or obligations under this Agreement without the prior written consent of Assignee, which consent may be withheld, conditioned, or delayed in Assignee's sole and absolute discretion. Any purported assignment, delegation, or transfer in violation of this Section 9.5 shall be null and void and of no force or effect.
Section 9.6 — Notices.
All notices, requests, demands, consents, waivers, and other communications required or permitted to be given under this Agreement shall be in writing and shall be deemed to have been duly given when (a) delivered personally, (b) sent by nationally recognized overnight courier service (with tracking capability), (c) sent by certified or registered mail, return receipt requested, postage prepaid, or (d) transmitted by email (with confirmation of receipt), in each case addressed as follows (or to such other address as a Party may designate by written notice to the other Party in accordance with this Section 9.6):
If to Assignor:
Cardinal Peak Industries, Inc. 8400 Crescent Ridge Parkway, Suite 200 Nashville, Tennessee 37215
Attention: Dr. Randall J. Whitfield, Chairman and Chief Executive Officer
Email: rwhitfield@cardinalpeak.com
with a copy (which shall not constitute notice) to:
Barrow, Kensington & Pratt LLP 1201 Demonbreun Street, Suite 1800 Nashville, Tennessee 37203
Attention: Catherine Barrow
Email: cbarrow@bkplaw.com
If to Assignee:
Ardent Healthcare Acquisition Corp. c/o Ardent Capital Management LLC 590 Madison Avenue, 34th Floor New York, New York 10022
Attention: General Counsel
Email: legal@ardentcapital.com
with a copy (which shall not constitute notice) to:
Calderwood & Harkness LLP One World Financial Center 200 Liberty Street, 40th Floor New York, New York 10281
Attention: Beatrice Holloway
Email: bholloway@calderwoodharkness.com
Section 9.7 — Severability.
If any provision of this Agreement is held to be invalid, illegal, or unenforceable in any respect by a court of competent jurisdiction, such invalidity, illegality, or unenforceability shall not affect any other provision of this Agreement, and this Agreement shall be construed as if such invalid, illegal, or unenforceable provision had never been contained herein, provided that the remaining provisions, taken as a whole, continue to reflect the original intent and purpose of the Parties. The Parties shall negotiate in good faith to replace any invalid, illegal, or unenforceable provision with a valid, legal, and enforceable provision that, to the greatest extent practicable, achieves the intended economic, business, and legal purposes of the original provision.
Section 9.8 — Counterparts.
This Agreement may be executed in any number of counterparts, each of which shall be deemed an original and all of which together shall constitute one and the same instrument. Delivery of an executed counterpart of a signature page to this Agreement by facsimile, portable document format (.pdf), or other electronic transmission (including via DocuSign or similar electronic signature platform) shall be effective as delivery of a manually executed counterpart of this Agreement. Each Party agrees that its electronic signature shall have the same legal effect, validity, and enforceability as a handwritten signature.
Section 9.9 — Headings.
The article and section headings contained in this Agreement are inserted for convenience of reference only and shall not affect in any way the meaning, construction, or interpretation of this Agreement.
[SIGNATURE PAGE FOLLOWS]
IN WITNESS WHEREOF, the Parties hereto have caused this intellectual Property Assignment Agreement to be duly executed and delivered as of the date first written above.
CARDINAL PEAK INDUSTRIES, INC. (Assignor)
By: ________
Name: Dr. Randall J. Whitfield
Title: Chairman and Chief Executive Officer
Date: June 30, 2024
ARDENT HEALTHCARE ACQUISITION CORP. (Assignee)
By: ________
Name: Priya Mehta-Sullivan
Title: President and Authorized Officer
Date: June 30, 2024
SCHEDULE A
ASSIGNED INTELLECTUAL PROPERTY
The following is a description of the Assigned intellectual Property being assigned, transferred, conveyed, and delivered from Assignor to Assignee pursuant to the intellectual Property Assignment Agreement, dated as of June 30, 2024, to which this Schedule A is attached. The listing of any item below is not intended to limit the scope of the definition of "Assigned intellectual Property" set forth in Article I of the Agreement, and the omission of any particular item from this Schedule A shall not be deemed to exclude such item from the Assigned intellectual Property to the extent it is otherwise encompassed by such definition or the definition of intellectual Property Assets under the APA.
Part 1 — Trademarks and Service Marks
Note: The corporate name "Cardinal Peak Industries" and all variations thereof are Excluded intellectual Property and are not included in this Part 1. The corporate name is retained by Assignor and is subject to the License-Back provisions of Article IV of the Agreement.
Part 2 — Software
1. PeakConnect Patient-Engagement Software Platform — all versions (including Version 1.0 through Version 4.2.1, the current production release), comprising:
(a) all source code (maintained in Assignor's private Tidewater Solutions repositories and on-premises Subversion repositories);
(b) all object code and executable code, in all formats and compiled versions;
(c) all software libraries, modules, components, frameworks, and subroutines developed by or for Assignor;
(d) all application programming interfaces (APIs), including the PeakConnect REST API (v3.x), the PeakConnect FHIR Integration API, and the PeakConnect Provider Portal API;
(e) all databases, data schemas, data models, data dictionaries, and data compilations, including the PeakConnect Clinical Data Repository and the PeakConnect Analytics Data Warehouse;
(f) all user interfaces and graphical user interfaces, including the PeakConnect Provider Portal, the PeakConnect Patient Mobile Application (iOS and Android), and the PeakConnect Administrative Dashboard;
(g) all user manuals, technical documentation, system architecture documents, design specifications, developer guides, API reference documentation, and related technical materials;
(h) all training materials, including instructor-led training guides, e-learning modules, and certification program materials; and
(i) all derivative works, enhancements, modifications, customizations, and works in progress related to the PeakConnect Platform.
2. CPI Clinic Operations Management Software — proprietary clinic scheduling, patient intake, and workflow management software tools developed by or for Assignor and used in the operations of Assignor's healthcare clinics, including all source code, object code, documentation, and related materials.
3. CPI Data Analytics Suite — proprietary data analytics and reporting tools developed by or for Assignor for internal business intelligence and clinical outcomes analysis, including all source code, object code, documentation, and related materials.
Part 3 — Copyrights
1. All copyrights in and to the source code, object code, and documentation comprising the PeakConnect Platform (as described in Part 2 above), including all versions, updates, and derivative works thereof.
2. All copyrights in and to patient education materials created by or for Assignor, including printed brochures, digital content, video materials, and interactive educational modules.
3. All copyrights in and to marketing and advertising materials created by or for Assignor in connection with the Business, including website content, social media content, print advertisements, and promotional materials.
4. All copyrights in and to training manuals, employee handbooks (to the extent containing proprietary content related to the Business), clinical protocols documentation, and operational procedure guides created by or for Assignor.
5. All copyrights in and to all other copyrightable works of authorship created by or for Assignor in connection with the Business, whether published or unpublished, registered or unregistered.
Note: No formal copyright registrations with the United States Copyright Office have been identified as of the Closing Date. To the extent any such registrations exist or are hereafter obtained with respect to works included in the Assigned intellectual Property, such registrations are included in the Assigned intellectual Property.
Part 4 — Domain Names
Note: The domain name "cardinalpeak.com" (if owned by Assignor) may be associated with the Excluded intellectual Property (the corporate name "Cardinal Peak Industries") and is excluded to the extent related exclusively to the corporate identity of Assignor. To the extent "cardinalpeak.com" is used in connection with the Business, such domain name is included in the Assigned intellectual Property, subject to the License-Back provisions of Article IV.
Part 5 — Trade Secrets and Know-How
1. Proprietary patient-engagement algorithms and methodologies embodied in the PeakConnect Platform, including the PeakConnect Predictive Engagement Model, the PeakConnect Treatment Adherence Algorithm, and the PeakConnect Patient Risk Stratification Methodology.
2. Clinical protocols and treatment pathway documentation developed by or for Assignor, including evidence-based treatment protocols, clinical decision support algorithms, and care pathway templates.