Uitspraken

“Supersonic drying technology (SSD) has been developed in the Netherlands by [gedaagde 2] (" [gedaagde 2] " or the "Company"). The technology has proven to be effective for a variety of commercial and industrial purposes. These potentially include, but shall not be limited to, drying of

harvested crops and crop biomass waste; processing livestock and poultry waste; pulverizing rocks for the extraction of ores and minerals; production of powdered coal, cement and construction materials; water treatment and desalination.

The Company is now engaged in the business of SSD equipment manufacture and sales and is actively filing for design, application and utility patent protection ("SSD IP") in the US, Canada, EU and other countries. The principal patent law firm providing legal services to the Company reports a high level of confidence that several patents will be granted.

Patent rights will be held by a separate Dutch company Een Mooie Dag B.V. (EMD BV). This entity will grant [gedaagde 2] the exclusive and worldwide rights to build, sell and sublicence the products based on the SSD IP. The rights shall be granted irrevocably for the life of the patent(s), and any extensions thereof.

(…)

The BIO 520 LLC Company requires one x 2-ton SSD unit to use as a demonstrator for the 2019-2020 season hemp harvest in Oregon, USA and for other demonstrations and trials. The principal objective is to test on hemp drying and to determine the ability of the SSD unit to concurrently extract CBD oils from hemp at harvest and post-harvest. BIO 520 LLC will also arrange tests in the U.S. on fruits, berries, nuts, ore extraction, pulverization of mineral-bearing rocks, desalinization, animal waste disposal and solid waste disposal. All results will be

shared with [gedaagde 2] Reciprocally, [gedaagde 2] will share the results of any/all of its own tests with BIO 520 LLC.

BIO 520 LLC has approved the funding to purchase one x 2-ton per hour SSD unit from [gedaagde 2] to serve as a Demo unit in the Territory. The SSD unit will be designed to be transportable on a standard truck or trailer. The Purchase Price, including generator, essential spare parts and feeder/hopper is agreed at $425,000 USD. Delivery will be FOB the Dutch production facility.

(…)

"Newco Leasing" as set forth below. The license Fee will consist of a percentage of the annual sales of "Newco" and/or "Newco Leasing" to be agreed between the parties.

(…)

“ WORLDWIDE ASSIGNMENT

WHEREAS, WE:

[gedaagde 1]

[adres 1] , [postcode 1]

[woonplaats 1] , The Netherlands

and

[persoon A]

[adres 2] , [postcode 2]

[woonplaats 2] , The Netherlands

(Collectively the "Inventors")

have invented a SUPERSONIC DEHYDRATION AND DISINFECTION SYSTEM AND METHOD (the "Invention") described and claimed in US Provisional Patent Application No. [nummer 1] (the "Provisional Application") filed on August 29, 2019, and certain additional modifications and improvements thereto (collectively the "Improvements") described and claimed in International Patent Application No. [nummer 2] (the "PCT Application") filed August 28, 2020;

AND WHEREAS, Een Mooie Dag B.V., ("EMD") a company organized under the laws of The Netherlands, having a place of business at [adres 1] , [postcode 1] , Rotterdam, The Netherlands, is the owner of the entire right, title and interest in and to the Invention and the Provisional Application by virtue of an assignment of the same from the Inventors dated August 9, 2019;

AND WHEREAS, SoniQ Force, LLC, a company organized under the laws of the State of California, having a place of business at 755 Jarvis drive, Morgan Hill, California, 95037, USA, is desirous of acquiring the full and exclusive right, title and interest in and to the said Invention, the Improvements, the Provisional Application and the PCT Application (individually and collectively the "Rights"), inclusive of all ancillary rights relating thereto, any and all priority rights derived therefrom, and all patents, design registrations, utility model registrations and other forms of intellectual property protection, rights and titles relating to said Rights, in any country or countries and in respect of the whole or any part or parts of or improvements to the

Rights;

NOW THEREFORE, for valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the Inventors and EMD (the "ASSIGNORS") do hereby confirm that the ASSIGNORS have transferred, conveyed and assigned, and by way of further assurance do hereby transfer, convey and assign, any and all of the ASSIGNORS' respective rights, title and interest in and to the Rights, any further applications for patent, design registration, utility model Page 1 of 3 registration or other forms of intellectual property protection, rights or titles for the whole or any part or parts of or improvements to the Rights in any country or countries ("Further Applications") together with the right to file divisional applications, substitute applications and continuation applications of any one or more of the Rights and any Further Applications, the right to obtain patents, design registrations, utility model registrations and all other forms of intellectual property protection, rights and titles relating to the Rights; and the right to obtain any extensions, supplementary protection certificates ("Extensions"), together with the right to bring proceedings to recover damages and/or to obtain other remedies for acts committed in respect of the Rights and any Further Applications, Divisionals and Extensions, whether such acts are committed before or after the date of this Worldwide Assignment; with the intent that the Rights, any Further Applications, Divisionals and Extensions are owned and enjoyed by ASSIGNEE

absolutely to the full end of the term or terms for the same.

The ASSIGNORS, and each of them, do hereby agree, upon request by the ASSIGNEE or its agents or attorneys, to provide assistance and to execute any and all further documents which may be necessary or desirable to enable the ASSIGNEE, and/or its successors and assigns (as applicable), to file, prosecute, bring proceedings and take other actions with respect to any and all of the Rights, Further Applications, Divisionals and Extensions, and any and all patents and registrations granted thereon and other forms of intellectual property protection, rights and titles relating thereto, and the ASSIGNORS further agree to execute, upon request by the

ASSIGNEE or its agents or attorneys, any and all further documents which may be necessary or desirable to vest or perfect the title of the ASSIGNEE therein.

The ASSIGNORS, and each of them, do hereby authorize the ASSIGNEE or its patent agents or attorneys to insert, above or as a Schedule hereto, the jurisdictions, application numbers, filing dates and any other indicia identifying the Rights or any Further Applications when such information is available and/or required for the purpose of recording this assignment.

THIS WORLDWIDE ASSIGNMENT shall be effective from and upon the date executed by the ASSIGNORS, or the last of them, and shall inure to the benefit of the ASSIGNEE and its successors and assigns, and shall be binding upon the ASSIGNORS, and each of them, and their successors and permitted assigns.

DELIVERY of this Worldwide Assignment by copy, however transmitted, constitutes valid and effective delivery. This Worldwide Assignment may be executed in one or more counterparts, each of which when so executed and delivered shall be an original, and such counterparts shall together constitute one and the same instrument.

IN WITNESS WHEREOF, this Worldwide Assignment has been executed below by the

undersigned:

[…]

Op de laatste bladzijde staan de namen van [gedaagde 1] en [persoon A] en van EMD en Soniq Force en daaronder (steeds) handtekeningen.

• US 2022/0282915 A1 (Productie EP17);

• CA 3 149 021 A1 (Productie EP18);

• MX/A/2022/002495 (Productie EP19); en

• EP 4 022 236 (Productie EP20).

“ (…)

SECTION 1. Documents Reviewed. For purposes of this opinion letter:

We have examined originals or copies, certified or otherwise identified to our

satisfaction, of such documents, corporate records, certificates of public officials and other instruments and have conducted such other investigations of fact and law as we have deemed necessary or advisable for purposes of this opinion, including, without limitation:

i. the Limited Liability Company Articles of Organization of SoniQ Force,

LLC (…) attached as Exhibit A to this letter (the "Articles of Organization"); and

ii. the Limited Liability Company Amendment to Articles of Organization filed with the Wyoming Secretary of State on March 4, 2020 attached as Exhibit B to this letter (the "Articles Amendment").

As to the various matters of fact material to this opinion, we have been furnished with, and have relied upon the Certificate of [persoon D] (" [persoon D] ") dated August 9, 2023 (the "Member's Certificate"). To the extent that any statement of fact made by [persoon D] in the Member's Certificate is qualified by [persoon D] 's "knowledge," we have assumed for the purposes of rendering the opinions in this letter that the underlying statement of fact made by [persoon D] is true as though it was not qualified by knowledge, information or belief.

(…)

The Articles of Organization, as amended by the Articles Amendment, are collectively referred to herein as the "Articles." (…)

We are admitted to practice in the State of Wyoming. The opinions rendered herein are

limited to the laws of the State of Wyoming, including the Wyoming Limited Liability Company

Act, Wyoming Statutes §§ 17-29-101 et. seq. as revised or amended (the "Company Act"). We

express no opinion concerning the laws of any other jurisdiction.

SECTION 2. Assumptions.

a) the members of the Company have not entered into an operating agreement for the Company;

b) at all times during the existence of the Company, [persoon D] has been and continues to be a member of the Company;

c) all right, title and interest in and to the IP (as defined below) was properly assigned to the Company on September 12, 2020 by [gedaagde 1] and [persoon A] by virtue of that certain Worldwide Assignment executed on September 12, 2020, a copy of which is attached to this letter as Exhibit C; and

d) the purported assignment of the IP from the Company to [gedaagde 1] pursuant to that certain Worldwide Assignment dated March 24, 2021, a copy of which is attached to this letter as Exhibit D (the "Purported Assignment"), was not approved, authorized, or consented to by any of the members of the Company other than [gedaagde 1] , and such Purported Assignment was outside the ordinary course of the activities of the Company.

For purposes of this opinion letter, the term "IP" means the Supersonic Dehydration and Disinfection System and Method (the "Invention") described and claimed in U.S. Provisional Patent Application No. [nummer 1] (the "Provisional Application") filed on August 29, 2019, and certain additional modifications and improvements thereto (collectively the "Improvements") described and claimed in International Patent Application No. [nummer 2] (the "PCT Application") filed August 28, 2020.

SECTION 3. Opinions . Based upon the foregoing and in reliance thereon and on the assumptions and subject to the qualifications and limitations set forth in this opinion letter, we are of the opinion that:

(…)

a) the Company is a member-managed limited liability company pursuant to Wyoming Statute § 17-29-407;

b) The management and conduct of the Company are vested in the members;

c) Each member of the Company has equal rights in the management and conduct of the Company's activities;

d) Matters in the ordinary course of the activities of the Company may be decided by a majority of the members; and

e) The sale, lease, exchange or other disposal of all, or substantially all, of the Company's property outside of the ordinary course of business of the Company, or any other act outside the ordinary course of the activities of the Company, may be undertaken only with the consent of all members.

Pursuant to Wyoming Statute § 17-29-901, a member of the Company may maintain a direct

action against another member of the Company, or the Company, to enforce the member's rights and otherwise protect the member's interests.

Pursuant to Wyoming Statute § 17-29-902, a member of the Company may maintain a derivative

action to enforce a right of the Company if:

(i) The member first makes a demand on the other members of the Company, requesting that they cause the Company to bring an action to enforce the right, and the members do not bring the action within a reasonable time; or

(ii) A demand under subparagraph (i) above would be futile.

A member of the Company owes to the Company and the other members the fiduciary duties of loyalty and care as set forth in Wyoming Statute § 17-29-409(b) and (c). The duty of loyalty includes the duty to:

(i) account to the Company and to hold as trustee for it any property, profit or benefit derived by the member in the conduct of the Company's activities, or the use by a member of the Company's property, or from the appropriation of a Company opportunity;

(ii) refrain from dealing with the Company in the conduct of the Company's activities as a person having an interest adverse to the Company; and

(iii) to refrain from competing with the Company in the conduct of the Company's activities.

The duty of care includes the duty to:

to act with the care that a person in a like position would reasonably exercise under similar

circumstances and in a manner the member reasonably believes to be in the best interests

or at least not opposed to the best interests of the company.

Based upon the foregoing, it is our opinion that the Purported Assignment of the IP from the

Company to [gedaagde 1] , which was executed by [gedaagde 1] in favor of himself and was not approved by the other members of the Company, was a violation of [gedaagde 1] ' fiduciary duties of loyalty and care owed to the Company and the other members under Wyoming Statute § 17-29-409.

SECTION 4. Qualifications and Limitations. Our opinions are based on the assumptions (upon

which we have relied with your consent) and subject to the qualifications and limitations, set forth in this letter (to the extent that such assumptions are relevant to any of the opinions expressed herein), including the following:

We express no opinion with respect to (i) the truth of the factual representations and warranties

contained in the Opinion Documents or (ii) any document or agreement other than the Opinion Documents, regardless of whether such document or agreement is referred to in the Opinion Documents.

We express no opinion as to any laws other than the laws of the State of Wyoming.

(…)”

“Dear Mr. [gedaagde 1] ,

(…)

As you are aware, [gedaagde 2] (" [gedaagde 2] ") has signed a Letter of Commitment for [gedaagde 2] and Grant of Rights for North America dated 9 August 2019 (the "LoC") with BIO 520 LLC. You signed the Loc on behalf of [gedaagde 2] being an independently authorized representative.

The LoC contains third party clauses whereby [gedaagde 2] , amongst others, grants a to-be­established US company, a "NewCo", certain exclusive rights regarding the supersonic drying ("SSD") technology developed by [gedaagde 2] in the US, US territories, Canada and Mexico. The SSD technology is currently the subject of national patent applications resulting from the PCT application with publication number WO 2021/038521 (the "PCT-application"), US 2022/0282915 Al, CA 3 149 021 Al, MX/A/2022/002495 and EP 4 022 236 Al (the "national applications") all of which claim priority from US Provisional Patent Application No. [nummer 1] (the

"Provisional Application") entitled "Supersonic Dehydration and Disinfection System and Method".

As you know, SoniQ Force LLC is the "NewCo" referred to in the Loc. SoniQ Force was established for the sole purpose of exploiting its rights to the SSD technology as granted in the Loc.

NB. For the avoidance of doubt and to the extent required and not already done so, SoniQ Force hereby confirms that it accepts the third party clauses in the Loc.

You will also be aware of the subsequent worldwide assignment of the Provisional Application and the PCT-application and any further applications arising therefrom to SoniQ Force, which took place on from the 10th to the 12th of September 2020 (the "Assignment"). This Assignment was signed by you in your personal capacity and you witnessed the signing on behalf of Een Mooie Dag B.V. ("EMD") by [persoon A] , its "Managing Director". This Assignment was a fulfilment of the obligation by EMD and [gedaagde 2] under the Loc to give exclusive rights to the technology in the PCT-application and the national applications to SoniQ Force. Subsequently, and in line with the Assignment, you provided the Assignment to your US lawyer/patent and trademark agent at Moffat & Co. and instructed them to file it at the WIPO in order to get the PCT-application on SoniQ Force's name.

It has come to SoniQ Force's attention that on the 16th of February 2022, WIPO was notified of an 'assignment' of the PCT-application from the applicant, SoniQ Force, to you personally. You signed this document both as purported managing partner of SoniQ Force, the "Assignor", and in your personal capacity, as the "Assignee." Notably, you were never authorised to execute this 'assignment' on behalf of SoniQ Force. Upon receipt of this unauthorized assignment, the PCT-application was put in your personal name. As a result, the national applications resulting from the PCT­application also list you in your personal capacity as the applicant.

Recently, it has further come to SoniQ Force's attention that you started a new role as chief technology officer at US company ADAR technologies. Based on ADAR technologies' website (adartech.com), ADAR technologies exploits, or intends to exploit, the SSD technology in (at least) the US. In addition, SoniQ Force has come into the possession of a document wherein you, claiming to be the legal owner of the national applications, grant a power to Mr [persoon E] , chief executive officer of ADAR technologies to exploit SSD equipment.

The above-described assignment of the national applications to your personal name is unlawful, and the assignment and grant of rights to ADAR technologies constitute material breaches of the Lo, SoniQ Force holds [gedaagde 2] and yourself liable for all losses incurred and to be incurred in connection with the foregoing. SoniQ Force therefore demands that unconditional confirmation be given in writing that:

- the national applications will forthwith be transferred back to SoniQ Force, being the party that rightly holds the national applications under the Assignment and the LoC;

- SoniQ Force holds the exclusive rights to the SSD technology;

- SoniQ Force holds exclusive possession, custody, and control of the SSD machine, Serial Number ending in -002 in accordance with the LoC; and

- you will cease violating SoniQ Force's exclusive rights, by, inter alia, terminating the grant of rights to Mr [persoon E] and ADAR technologies. (…) ”

“Bijgaande brief heb ik afgelopen donderdag 17 augustus na thuiskomst van mijn vakantie aangetroffen.

Ik heb echter geen idee waarover dit gaat; ik was op 9 augustus 2019 geen eigenaar, bestuurder of werknemer van [gedaagde 2] .”

“Ik heb Soniq Force op 6 februari 2022 geïnformeerd dat ik de samenwerking niet voortzet. Dat heb ik nogmaals per email bevestigd op 6 juni 2022 en op 18 augustus 2022. Ik heb hierna verschillende voorstellen gedaan om tot een vergelijk te komen, waar niet door Soniq Force op is gereageerd. Ook heeft mijn Amerikaanse advocaat verschillende pogingen gedaan om in contact met SoniQ Force te komen, wat geweigerd werd. Het z.g. ‘zeer spoedeisende belang’ van Soniq Force is daarmee niet aan de orde.

Uw brief van 10 augustus was verkeerd gericht en bevatte onjuistheden zodat wij daar inhoudelijk niet op konden ingaan. Ik heb u hierover bericht en u heeft daarop niet gereageerd. Bovendien stelde die brief geen enkele mogelijkheid tot inhoudelijk verweer en was niet duidelijk wat precies geclaimd werd. Dit werd pas afgelopen vrijdag in de namiddag duidelijk. Gezien de hoeveelheid producties die u heeft voorbereid is het alleszins redelijk en billijk dat wij tijd krijgen dit goed voor te bereiden. Tot slot wijs ik erop dat is geen enkel rechtsgeldig contract bestaat tussen mij en Soniq Force. Het is mij derhalve onduidelijk op welke grond u deze zaak denkt te voeren.”

(i) Gedaagden binnen twee werkdagen vanaf de datum van betekening van het te dezen te wijzen vonnis te verbieden om de exclusieve rechten van SoniQ Force op de PCT aanvrage en/of nationale aanvragen te schenden, door zelf de handelingen zoals beschreven in nr. 13 LoC uit te voeren dan wel derden daartoe rechten te verstrekken, op straffe van een onmiddellijk opeisbare dwangsom;

(ii) [gedaagde 1] binnen 5 werkdagen vanaf de datum van betekening van het te dezen te wijzen vonnis te bevelen de noodzakelijke handelingen te verrichten bij de nationale verleningsinstanties om ervoor te zorgen dat SoniQ Force weer als aanvrager van de PCT-aanvrage en nationale aanvragen zoals gedefinieerd in het lichaam van de dagvaarding wordt, door aangetekende brieven met de volgende inhoud (dan wel een door de voorzieningenrechter in goede justitie te bepalen inhoud) te versturen:

[datum]

To whom it may concern,

I am the current applicant of a patent application the patent number [US 2022/0282915 / CA 3 149 021 A1 / MX/A/2022/002495 / EP 4 022 236] (hereinafter: “the Patent application”).

I hereby request the name of the applicant of the Patent Application to be changed to:

SoniQ Force LLC

745 Jarvis Drive

95037 Morgan Hill, CA

United States of America

Yours sincerely,

[naam en handtekening gedaagde sub 1]

alsmede overige daartoe in dat verband gevraagde eisen van de verleningsinstanties, in goede justitie te bepalen, op straffe van een onmiddellijk opeisbare dwangsom;

(iii) [gedaagde 1] met onmiddellijke ingang vanaf de datum van betekening van het te dezen te wijzen vonnis te gebieden om iedere beslissing en handeling met betrekking tot de verleningsprocedure van de PCT-aanvrage en nationale aanvragen over te laten aan SoniQ Force, althans een door haar aan te stellen octrooigemachtigde, op straffe van een onmiddellijk opeisbare dwangsom;

(iv) [gedaagde 1] te gebieden om binnen een periode van zeven (7) dagen na betekening van het te dezen te wijzen vonnis ADAR Tech schriftelijk te informeren dat SoniQ Force de rechtmatige houder is van de PCT aanvrage en nationale aanvragen, door een aangetekende brief met onderstaande inhoud, dan wel een door de voorzieningenrechter in goede justitie te bepalen inhoud, te verzenden:

[datum]

Dear Mr [persoon E] ,

I write to you to inform you about the following. I currently hold the position of Chief Technology Officer within ADAR Technology LLC (“ADAR Tech”). I have joined ADAR Tech under the pretension that I was the legal owner of the PCT-application published as WO 2021/038521 A2, and the national patent applications that resulted from that PCT-application, being: US 2022/0282915 A1, CA 3 149 021 A1, MX/A/2022/002495, EP 4 022 236 A1 (jointly referred to as: “the Patent Applications”), and have, inter alia, granted a power of attorney to you personally to have full control of a Super Sonic Drying system equipment unit.

Through this letter I hereby inform you that SoniQ Force LLC ("SoniQ

Force") is the lawful owner of the Patent Applications and the

Preliminary Relief Judge of the District Court Rotterdam, the Netherlands assessed by decision of [datum] and has ordered me to cooperate with an amendment of the respective patent office registers in order to reflect SoniQ Force’s ownership and respect SoniQ Force’s rights.

Kind regards,

[naam en handtekening gedaagde sub 1]

(vi) Gedaagden ieder afzonderlijk en gezamenlijk te in de kosten van deze procedure te veroordelen, te voldoen binnen twee werkdagen na de datum van dit vonnis, bij gebreke waarvan voormeld bedrag wordt vermeerderd met de wettelijke rente als bedoeld in artikel 6:119 BW vanaf de derde werkdag na de datum van dit vonnis tot de dag van volledige betaling.