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| UPIP > SEC Filings for UPIP > Form 8-K on 10-Jan-2013 | All Recent SEC Filings |
10-Jan-2013
Entry into a Material Definitive Agreement, Unregistered Sale of Equity Secu
On January 10, 2013, Unwired Planet, Inc. and certain of its subsidiaries (collectively referred to as the "Company" or "UP"), including its indirect subsidiary, Unwired Planet, LLC ("UP LLC"), entered into a Master Sale Agreement (the "MSA") with Telefonaktiebolaget L M Ericsson (publ) and an indirect subsidiary (collectively referred to herein as "Ericsson") pursuant to which such subsidiary of Ericsson will transfer and sell 2,185 patents and patent applications (the "Ericsson Transferred Patent Portfolio") to UP LLC in exchange for certain ongoing rights to revenues generated from the Ericsson Transferred Patent Portfolio and the Company's patent portfolio, as summarized below (the "Patent Purchase"). At or prior to the closing, UP will transfer all of its patents not previously transferred to UP LLC. The Ericsson Transferred Patent Portfolio consists of 825 patent families and includes 1,922 issued patents and 263 patent applications covering technology utilized in telecommunications infrastructure including signal processing, network protocols, radio resource management, voice/text applications, mobility management, software, hardware and antennas. Of the 1,922 issued patents, 753 are United States patents. Pursuant to the MSA, during the period commencing on January 1, 2014 and ending five years thereafter, Ericsson also will assign to UP LLC, for no additional consideration, 100 patents each year (a portion of which will be United States patents) selected by Ericsson (the "Additional Patents"), provided that Ericsson may choose to accelerate such contribution to be made at one time or over a shorter period of time. Capitalized terms used but not defined in this Current Report on Form 8-K (this "Report") are defined in the MSA.
In consideration for the Ericsson Transferred Patent Portfolio and the
Additional Patents, UP will pay Ericsson the following portion of UP LLC's
cumulative gross revenue on a quarterly basis in accordance with the provisions
of the MSA (the "Gross Revenue Payments"): (i) 20% of the amount of Cumulative
Gross Revenue, until the Cumulative Gross Revenue equals $100 million; plus
(ii) 50% of the amount of Cumulative Gross Revenue in excess of $100 million,
until the Cumulative Gross Revenue equals $500 million; plus (iii) 70% of the
amount of Cumulative Gross Revenue in excess of $500 million. Revenue sharing
may be adjusted in Ericsson's favor in certain circumstances as described below.
The MSA also provides that in connection with a UP Change of Control, Ericsson will have the right either to (i) terminate the MSA and receive a cash payment (the "Sale Payment") or (ii) elect to continue the MSA in full force and effect and not receive the Sale Payment. In the event Ericsson elects to receive the Sale Payment, such Sale Payment will be equal to Ericsson's share of the fair market value of all patents and other assets owned or held by UP LLC (the "Patent FMV"). The Patent FMV will be determined in accordance with the mechanism set forth in the MSA. After such Patent FMV has been determined it will be deemed incremental "Cumulative Gross Revenue" and distributed in accordance with the formula for Gross Revenue Payments set forth above. Notwithstanding the foregoing, if a UP Change of Control occurs within three years of the consummation of the transactions contemplated by the MSA and Ericsson elects to receive the Sale Payment, the Sale Payment will be at least $1.05 billion less Gross Revenue Payments actually received by Ericsson prior to the consummation of the UP Change of Control.
Pursuant to the MSA and certain Ancillary Agreements, UP LLC granted or will
grant Ericsson licenses and other rights under the Ericsson Transferred Patent
Portfolio and all other Patents owned or controlled by UP LLC. The Ericsson
Transferred Patent Portfolio is also subject to certain encumbrances relating to
existing Ericsson licensees. UP LLC remains unrestricted in the licensing of its
existing patent portfolio without any additional encumbrances as a result of the
transaction. Additionally, pursuant to the MSA, UP has agreed not to engage in,
or provide services to any Person who conducts or otherwise engages in, the
business of generating revenue or otherwise monetizing Patents through licensing
or selling of Patents or initiation or participation in litigation or other
legal proceedings to protect and enforce any Patent or any other intellectual
property right or any other business that is competitive with the business of UP
LLC. During a specified period following the closing of the Patent Purchase,
with respect to certain patents, the MSA establishes revenue sharing adjustments
in favor of Ericsson if UP LLC grants licenses (or similar rights) below certain
agreed-upon royalty rates. Additionally, pursuant to the MSA with respect to the
Ericsson Transferred Patent Portfolio and to the extent applicable, UP LLC has
accepted an obligation to behave in a manner that is fair, reasonable and
non-discriminatory ("FRAND"). The aggregate result of these commitments together
with other obligations contained in these documents is such that UP LLC will
pursue recurring revenue license arrangements that reflect the fair value of its
entire patent portfolio, while at the same time respecting Ericsson's existing
commitments, customers and, to the extent applicable, any FRAND obligations. UP
LLC believes that such an approach will maximize value for its shareholders over
the long term, but such arrangements may take a longer period of time to achieve
. . .
In connection with the Patent Purchase, the Company engaged Evercore Group L.L.C. ("Evercore") to provide financial advisory services pursuant to a letter agreement entered into on January 10, 2013 (the "Letter Agreement"). Among other things, the Letter Agreement provides that in consideration for the advisory services provided by Evercore, the Company will pay Evercore fees in connection with the Patent Purchase in the form of shares (the "Shares") of the Company's common stock, par value $0.001 per share (the "Common Stock"). Pursuant to the Letter Agreement, one million Shares shall be issued following the consummation of the Patent Purchase and up to 1.2 million additional Shares shall be issued, if at all, depending upon the volume weighted average trading price of the Company's Common Stock during the two-year period following the consummation of the Patent Purchase (the "Completion") as follows (the "Post-Completion Success Fees"):
• If during the one-year period following Completion, the volume weighted average trading price of the Common Stock over any 20 consecutive trading days equals or exceeds $3.00, the Company shall issue Evercore an additional 500,000 Shares; and
• If during the two-year period following Completion, the volume weighted average trading price of the Common Stock over any 20 consecutive trading days equals or exceeds $5.00, the Company shall issue Evercore an additional 700,000 Shares.
The Letter Agreement also provides that the Company will pay Evercore a cash fee in lieu of the Post-Completion Success Fees if a change of control of the Company occurs within two years from the date of Completion.
The Shares shall be issued to Evercore in reliance upon exemptions from registration pursuant to Section 4(2) under the Securities Act of 1933, as amended (the "Securities Act"), and the rules and regulations promulgated thereunder. The Letter Agreement contains representations to support the Company's reasonable belief that Evercore had access to information concerning the Company's operations and financial condition, that Evercore is acquiring the Shares for its own account and not with a view to the distribution thereof, and that Evercore is an "accredited investor" as defined by Rule 501 promulgated under the Securities Act.
The Company will host a conference call on January 10, 2013 at 5:00 p.m. Eastern
Time to discuss certain information regarding the entry into the MSA and Patent
Purchase with Ericsson. A copy of the investor presentation prepared by the
Company for use during the call is attached hereto as Exhibit 99.1. Interested
parties may access the conference call over the Internet through the Company's
website at www.unwiredplanet.com or by telephone at (877) 941-2068 or
(480)-629-9712 (international). A replay of the conference call will be
available for three weeks (until January 31), beginning at 6:00 p.m. Eastern
Time on January 10, 2013 by calling (800) 406-7325. The replay can be accessed
internationally by calling (303) 590-3030, access code: 4590216.
In connection with the entry into the MSA and Patent Purchase, the Company issued a press release, a copy of which is filed as Exhibit 99.2 to this Report and is incorporated by reference herein.
SAFE HARBOR FOR FORWARD-LOOKING STATEMENTS
This Report contains forward-looking statements made pursuant to the safe harbor provisions of the Private Securities Litigation Reform Act of 1995. All statements other than statements of historical fact contained in this Report are forward-looking statements. In some cases, you can identify forward-looking statements by terminology such as "may," "will," "should," "expects," "plans," "anticipates," "believes," "estimates," "predicts," "potential" or "continue" or the negative of these terms or other comparable terminology. These statements are only current predictions and are subject to known and unknown risks, uncertainties and other factors that may cause the Company's actual results, levels of activity, performance or achievements to be materially different from those anticipated by the forward-looking statements. These forward-looking statements are subject to a number of risks, including, but not limited to the ability of the parties to the MSA to consummate the proposed transaction in light of the various closing conditions set forth in the MSA and other transaction documents (including those conditions related to HSR approval), the expiration of encumbrances on the Ericsson Patent Portfolio, the potential value and synergies created by the Patent Purchase, including the future market for smartphones and 3G/4G mobile phone shipments and the ability of the Company to realize and monetize the value of the Company's intellectual property as well as those risk factors discussed in filings with the SEC, including but not limited to the Company's Annual Report on Form 10-K filed on September 7, 2012, and any subsequently filed reports on Forms 10-Q and 8-K or amendments thereto. The Company undertakes no duty to update or revise any of the forward-looking statements, whether as a result of new information, future events or otherwise, after the date of this Report.
(d) Exhibits.
10.1 Form of Amended and Restated Operating Agreement of Unwired Planet, LLC
99.1 Investor Presentation of Unwired Planet, Inc.
99.2 Press release, dated January 10, 2013, announcing Unwired Planet Inc.'s
entry into the Master Sale Agreement with Telefonaktiebolaget L M Ericsson
(publ)
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