FOUNDER INTELLECTUAL PROPERTY ASSIGNMENT CONFIRMATION
BRIGHTFIELD CLOUD SERVICES INC. a Delaware corporation
Principal Office: 4710 East Riverside Drive, Suite 210, Austin, TX 78741
April 8, 2022
This Founder intellectual Property Assignment Confirmation (this "Confirmation") is delivered by the undersigned individual (the "Founder") in favor of Brightfield Cloud Services Inc., a Delaware corporation (the "Company"), in connection with the Company's issuance of Simple Agreements for Future Equity (each, a "SAFE") to certain angel investors (collectively, the "Purchasers") in an aggregate amount of One Million Eight Hundred Fifty Thousand Dollars ($1,850,000) (the "SAFE Round").
RECITALS
A. Company Formation. The Company was incorporated in the State of Delaware on September 14, 2021, with the Delaware Secretary of State under File Number 6198274, and is qualified to transact business in the State of Texas under Texas Secretary of State Filing Number 804217635. The Company was organized for the purpose of developing, marketing, and commercializing cloud-based infrastructure monitoring technology and related Internet of Things sensor hardware solutions.
B. Restricted Stock Purchase Agreements and Confidential Information and Invention Assignment Agreements. In connection with the Company's formation, each of the Company's three co-founders — Devin Mallory, Priya Raghavan, and Tomás Guerrero-Vidal (each, a "Co-Founder" and collectively, the "Co-Founders") — entered into a Restricted Stock Purchase Agreement with the Company dated September 14, 2021 (each, an "RSPA"), pursuant to which each Co-Founder acquired shares of the Company's Common Stock, par value $0.0001 per share, subject to certain vesting and repurchase provisions set forth therein. Concurrently with each RSPA, each Co-Founder executed a Confidential Information and Invention Assignment Agreement with the Company dated September 14, 2021 (each, a "CIIAA"), pursuant to which the Founder assigned to the Company all right, title, and interest in and to all inventions, works of authorship, developments, improvements, trade secrets, and other intellectual property conceived, created, developed, or reduced to practice by the Founder in connection with, or related to, the Company's business. Each CIIAA was executed as a material inducement to the Company's issuance of the shares of Common Stock under the applicable RSPA.
C. Purpose of Confirmation. The Purchasers have requested, as a condition to closing of the SAFE Round, that each Founder confirm the continuing validity and enforceability of the Founder's CIIAA and the assignment of all Company-related intellectual property thereunder. The delivery of this Confirmation by each of the Co-Founders is a condition precedent to the obligations of the Purchasers to consummate the transactions contemplated by the SAFEs. This Confirmation is intended to provide the Purchasers with additional assurance regarding the Company's ownership of all intellectual property material to its business.
D. Company's intellectual Property. The Company's principal intellectual property includes, without limitation: (i) the cloud-based infrastructure monitoring platform known as "BrightWatch," including all software, source code, object code, algorithms, databases, data models, application programming interfaces (APIs), user interfaces, documentation, specifications, and related materials developed in connection therewith; and (ii) proprietary Internet of Things (IoT) sensor hardware designs, schematics, firmware, and related embedded systems technology developed for use with the BrightWatch platform, including all printed circuit board layouts, sensor calibration protocols, device communication protocols, and associated embedded software (collectively, the "Company IP"). The Company IP constitutes the core technology upon which the Company's business is founded and represents substantially all of the Company's intellectual property assets as of the date hereof.
NOW, THEREFORE, in consideration of the foregoing recitals and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Founder hereby confirms and agrees as follows:
1. CONFIRMATION OF CIIAA
The Founder hereby confirms that the CIIAA executed by the Founder on September 14, 2021, in connection with the Founder's RSPA, is and remains in full force and effect as of the date hereof. The Founder has complied with all obligations imposed upon the Founder under the CIIAA from and after the date of execution thereof through and including the date of this Confirmation. The Founder has not terminated, rescinded, modified, or amended the CIIAA in any respect, whether by written instrument, oral agreement, course of conduct, or otherwise, and no event or circumstance has occurred that would give rise to a right of termination or render any provision of the CIIAA void, voidable, or unenforceable under applicable law. The Founder has delivered to the Company all schedules, exhibits, and disclosures required under the CIIAA, including any schedule of prior inventions or pre-existing intellectual property, and all information contained in such schedules remains true, correct, and complete as of the date hereof.
2. CONFIRMATION OF IP ASSIGNMENT
The Founder hereby confirms that all inventions, original works of authorship, developments, concepts, improvements, designs, discoveries, ideas, trademarks, service marks, trade names, trade dress, trade secrets, know-how, processes, techniques, methods, compositions of matter, formulae, algorithms, software programs, databases, and other intellectual property and proprietary rights, whether or not patentable or registrable under copyright, trademark, or similar laws, that the Founder has solely or jointly conceived, created, developed, or reduced to practice, or caused to be conceived, created, developed, or reduced to practice, at any time during the period from and after September 14, 2021, through and including the date of this Confirmation, and that relate to or are useful in connection with the Company's actual or anticipated business, research, or development, including without limitation the Company IP (i.e., the BrightWatch platform and all associated software, source code, algorithms, APIs, user interfaces, databases, and documentation, as well as all proprietary IoT sensor hardware designs, schematics, firmware, and related embedded systems technology), have been duly and irrevocably assigned to the Company pursuant to the CIIAA, and such assignment is valid, binding, and enforceable against the Founder in accordance with its terms.
The Founder does not claim any right, title, or interest in or to any Company IP, except solely in the Founder's capacity as a stockholder of the Company and subject to the terms and conditions of the Founder's RSPA. The Founder has not retained and does not retain any license, right, or interest (whether express or implied) in or to any Company IP, and the Founder acknowledges that the Company is the sole and exclusive owner of all right, title, and interest in and to the Company IP, free and clear of any claims, liens, security interests, or encumbrances of any kind.
3. NO CONFLICTS; NO THIRD-PARTY CLAIMS
The Founder represents, warrants, and confirms to the Company and the Purchasers that, as of the date hereof:
(a) No third party has any claim, lien, security interest, encumbrance, or other right of any kind in or to any of the Company IP, and to the Founder's knowledge, no third party has asserted or threatened to assert any such claim, lien, security interest, encumbrance, or other right;
(b) The Founder has not granted any license, sublicense, assignment, covenant not to sue, or other right or permission to any third party with respect to any of the Company IP, and the Founder has not entered into any agreement, arrangement, or understanding (whether written or oral) that would restrict, limit, or otherwise affect the Company's full and exclusive ownership, use, or exploitation of the Company IP;
(c) The Founder is not aware of any actual or alleged infringement, misappropriation, or other violation of any third party's intellectual property rights, proprietary rights, or other rights by the Company or by any of the Company IP, and the Founder has not received any notice, demand, or communication from any third party alleging any such infringement, misappropriation, or violation;
(d) The Founder's performance of services for the Company and the assignment of the Company IP to the Company do not and will not conflict with, breach, or result in a violation of any prior agreement, obligation, commitment, or duty owed by the Founder to any third party, including without limitation any prior employer, client, educational institution, or research organization, and the Founder is not subject to any non-competition, non-solicitation, invention assignment, or similar restrictive covenant with any third party that would in any way limit or restrict the Founder's ability to perform services for the Company or the Company's ownership of the Company IP; and
(e) All materials, documents, source code, hardware prototypes, design files, and other tangible embodiments of the Company IP that have been created or developed by the Founder are in the possession or control of the Company, and the Founder has not removed, transferred, or distributed any such materials to any location or person outside of the Company without the Company's prior written authorization.
4. FOUNDER'S EQUITY POSITION
The Founder acknowledges that the Founder acquired shares of Common Stock, par value $0.0001 per share, of the Company pursuant to and in accordance with the terms and conditions of the Founder's RSPA dated September 14, 2021. Such shares are subject to a four-year vesting schedule with a one-year cliff vesting period, with a vesting commencement date of September 14, 2021, and monthly vesting of the remaining shares in equal monthly installments over the thirty-six (36) months following the cliff date, in each case subject to the Founder's continued service to the Company as set forth in the RSPA.
As of the date of this Confirmation, the Company's authorized capital structure consists of 10,000,000 shares of Common Stock, par value $0.0001 per share, of which 7,500,000 shares are issued and outstanding, allocated among the Co-Founders as follows:
No shares of preferred stock have been authorized or issued by the Company as of the date hereof. The SAFEs being issued to the Purchasers in the SAFE Round are not equity securities of the Company and do not represent any shares of capital stock of the Company as of the date of this Confirmation, but may convert into shares of preferred stock or common stock of the Company upon the occurrence of certain events as set forth in the SAFEs.
5. CONTINUING OBLIGATIONS
The Founder acknowledges and agrees that the CIIAA imposes continuing obligations on the Founder, including without limitation obligations of confidentiality with respect to the Company's proprietary and confidential information, obligations of invention assignment with respect to inventions and works of authorship conceived, created, or developed by the Founder in connection with the Company's business, and obligations to cooperate with the Company in the procurement and enforcement of intellectual property protections, including patents, copyrights, and trademark registrations. The Founder acknowledges that such obligations survive the execution and delivery of this Confirmation, the closing of the SAFE Round, and, to the extent set forth in the CIIAA, the termination of the Founder's service relationship with the Company. Nothing in this Confirmation shall be construed to relieve the Founder of any obligation under the CIIAA or to limit the Company's rights or remedies thereunder.
6. RELIANCE
This Confirmation is being delivered for the benefit of the Company and the Purchasers in connection with the SAFE Round and may be relied upon by the Company, the Purchasers, and their respective successors, assigns, and legal counsel, including Calderwood & Harkness LLP (counsel to the Company) and Holloway, Fenn & Archer LLP (counsel to the Purchasers), in connection with the closing of the SAFE Round, any future financing transaction of the Company, and any due diligence review conducted in connection therewith. The Founder acknowledges that the Purchasers are entering into the SAFEs in reliance upon the representations, confirmations, and agreements set forth herein, and that the Purchasers would not consummate the SAFE Round absent the delivery of this Confirmation by each of the Co-Founders.
7. MISCELLANEOUS
7.1 Governing Law. This Confirmation shall be governed by and construed in accordance with the internal laws of the State of Delaware, without giving effect to any choice or conflict of law provision or rule (whether of the State of Delaware or any other jurisdiction) that would cause the application of the laws of any jurisdiction other than the State of Delaware. Any legal action, suit, or proceeding arising out of or relating to this Confirmation shall be brought exclusively in the courts of the State of Delaware or the United States District Court for the District of Delaware, and each party hereby irrevocably consents to the personal jurisdiction and venue of such courts.
7.2 Counterparts. This Confirmation may be executed in counterparts (including by means of facsimile or electronic signature transmitted in portable document format (PDF) or by any other electronic signature compliant with the federal ESIGN Act of 2000 and applicable state law), each of which shall be deemed an original and all of which together shall constitute one and the same instrument. Three counterparts of this Confirmation are being executed simultaneously, one by each of the Co-Founders, each in the form of a separate signature page attached hereto and incorporated herein by reference.
7.3 No Modification of CIIAA. Nothing in this Confirmation shall be deemed to amend, modify, restate, supplement, or supersede the terms of the CIIAA, which remains in full force and effect in accordance with its terms. In the event of any inconsistency or conflict between the provisions of this Confirmation and the provisions of the CIIAA, the provisions of the CIIAA shall control and govern. This Confirmation is intended solely as a confirmation of, and not a substitute for, the obligations and assignments set forth in the CIIAA.
7.4 Entire Understanding. This Confirmation, together with the CIIAA and the RSPA, constitutes the complete and entire understanding between the Founder and the Company with respect to the subject matter hereof and supersedes all prior and contemporaneous understandings, agreements, representations, and warranties, both written and oral, with respect to such subject matter. No amendment, modification, or waiver of any provision of this Confirmation shall be effective unless set forth in a written instrument signed by the Founder and the Company.
[Remainder of this page intentionally left blank. Counterpart signature pages follow.]
COUNTERPART SIGNATURE PAGE — DEVIN MALLORY
FOUNDER INTELLECTUAL PROPERTY ASSIGNMENT CONFIRMATION
BRIGHTFIELD CLOUD SERVICES INC.
IN WITNESS WHEREOF, the undersigned Founder has executed and delivered this Founder intellectual Property Assignment Confirmation as of the date set forth below.
Date: April 8, 2022
FOUNDER:
By: ________
Name: Devin Mallory
Title: CEO & Co-Founder
Address: 4710 East Riverside Drive, Suite 210
Austin, TX 78741
Shares of Common Stock Held: 3,750,000
COUNTERPART SIGNATURE PAGE — PRIYA RAGHAVAN
FOUNDER INTELLECTUAL PROPERTY ASSIGNMENT CONFIRMATION
BRIGHTFIELD CLOUD SERVICES INC.
IN WITNESS WHEREOF, the undersigned Founder has executed and delivered this Founder intellectual Property Assignment Confirmation as of the date set forth below.
Date: April 8, 2022
FOUNDER:
By: ________
Name: Priya Raghavan
Title: CTO & Co-Founder
Address: 4710 East Riverside Drive, Suite 210
Austin, TX 78741
Shares of Common Stock Held: 2,250,000
COUNTERPART SIGNATURE PAGE — TOMÁS GUERRERO-VIDAL
FOUNDER INTELLECTUAL PROPERTY ASSIGNMENT CONFIRMATION
BRIGHTFIELD CLOUD SERVICES INC.
IN WITNESS WHEREOF, the undersigned Founder has executed and delivered this Founder intellectual Property Assignment Confirmation as of the date set forth below.
Date: April 8, 2022
FOUNDER:
By: ________
Name: Tomás Guerrero-Vidal
Title: COO & Co-Founder
Address: 4710 East Riverside Drive, Suite 210
Austin, TX 78741
Shares of Common Stock Held: 1,500,000
COMPANY ACCEPTANCE AND ACKNOWLEDGMENT PAGE
FOUNDER INTELLECTUAL PROPERTY ASSIGNMENT CONFIRMATION
BRIGHTFIELD CLOUD SERVICES INC.
The Company hereby accepts and acknowledges receipt of the foregoing Founder intellectual Property Assignment Confirmation, including all three counterpart signature pages executed by each of the Co-Founders, and confirms that the representations, confirmations, and agreements set forth herein are consistent with the Company's records and the Company's understanding of the matters described herein.
Date: April 8, 2022
ACCEPTED AND ACKNOWLEDGED:
BRIGHTFIELD CLOUD SERVICES INC., a Delaware corporation
By: ________
Name: Devin Mallory
Title: Chief Executive Officer
Address: 4710 East Riverside Drive, Suite 210
Austin, TX 78741
Prepared by: Christy Bauer, Calderwood & Harkness LLP 600 Travis Street, Suite 4200, Houston, TX 77002 Matter Number: 1042-00002
| Founder | Shares of Common Stock | Percentage of Outstanding Shares |
| Devin Mallory | 3,750,000 | 50% |
| Priya Raghavan | 2,250,000 | 30% |
| Tomás Guerrero-Vidal | 1,500,000 | 20% |
| Total | 7,500,000 | 100% |