Exhibit
10.1


 


FIRST
AMENDMENT


 


This First Amendment (the “Amendment”) is dated
as of July 31, 2006 (the “Effective Date”), is between IGT (“IGT”) and Shuffle
Master Inc.(“SMI”), and is an amendment to: i) that certain agreement between
IGT and SMI, dated as of April 28, 2006 (the “April Agreement”); and ii) that
certain agreement between IGT and SMI, dated as of June 13, 2005 (the “Patent
Purchase Agreement”).


 


For good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, the parties hereby
agree to amend each of the April Agreement and the Patent Purchase Agreement as
follows.


 


1.                                       Paragraph 1 (except
for the second to last sentence thereof) of the April Agreement is hereby
deleted in its entirety and, as of the Effective Date, shall be of no further
force and effect.  All monies owed, if
any, to IGT by SMI from prior to the Effective Date shall be paid to IGT within
10 days of the receipt thereof.


 


2.                                       It is agreed
that the $3,000,000 paid by IGT pursuant to paragraph 2 of the April Agreement,
along with the payment of the sum of $4,500,000 (the “New Money”), shall each
be non-refundable, and apply to, cover and constitute the full purchase price
for, as of the Effective Date, SMI selling to IGT and IGT purchasing 100% of SMI’s
current 50% ownership in the Enpat Patents. 
The term “Enpat Patents” shall be as defined as in the Patent Purchase
Agreement.  IGT agrees, within ten (10)
days of the Effective Date, to pay SMI the New Money.  The New Money shall be non-refundable.  Upon SMI’s receipt of the New Money, all of
IGT’s obligations with respect to the Future Payment (as that term is defined
in the Patent Purchase Agreement) shall be deemed fully satisfied.  In addition, as of the Effective Date, SMI hereby assigns to IGT and IGT shall receive
100% of any Royalties (as that term is defined in the Patent Purchase
Agreement), which are earned after the Effective Date, resulting from the Enpat
Patents, until IGT has earned, subsequent to the Effective Date, a total
of $17,400,000 in gross Royalties; thereafter,
IGT shall pay SMI 171⁄2 % of any gross Royalties in excess of $17,400,000 which
IGT earns subsequent to the Effective Date from the Enpat Patents.


 


3.                                       Accordingly, as
of the Effective Date and as a result of this Amendment, IGT shall own 100% of
the Enpat Patents including all right, title and interest in the Enpat Patents
and including the right to sue for past infringement.  SMI hereby represents and warrants that,
immediately prior to the Effective Date, it owns 50% of the Enpat Patents.  IGT hereby represents and warrants that it
has not transferred or assigned any interest in the Enpat Patents which it
acquired from SMI under the Patent Purchase Agreement.   Furthermore, as of the Effective Date and as
a result of this Amendment, the Patent Purchase Agreement is hereby also deemed
amended and modified to be consistent with, as of the Effective Date, IGT’s
ownership of 100% of the Enpat Patents and Shuffle Master’s ownership of 0% of
the Enpat Patents, including, without limitation, the following:


 


a)  SMI no longer shall have any joint ownership
interest in the Enpat Patents and accordingly the applicable provisions of paragraph
3.1 of the Patent Purchase Agreement are hereby modified to be consistent herewith;


 


 


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b)  SMI no longer shall have any rights under or
license to the Enpat Patents and accordingly the applicable provisions of paragraph
3.2 of the Patent Purchase Agreement are hereby modified to be consistent herewith;


 


c)  SMI no longer shall have any approval rights
with respect to the licensing of the Enpat Patents and accordingly the
applicable provisions of paragraph 3.3 of the Patent Purchase Agreement are hereby
modified to be consistent herewith;


 


d)  SMI no longer shall have any approval rights
with respect to any assignment or other transfer of the Enpat Patents, and
accordingly the applicable provisions of paragraph 3.4 of the Patent Purchase
Agreement are hereby modified to be consistent herewith;


 


e)  Paragraph 2 of this Amendment is hereby deemed
to modify and amend the provisions of paragraph 6.1 of the Patent Purchase
Agreement with respect to how SMI shall share in any Royalties with respect to
the Enpat Patents;


 


f)  SMI shall instruct any licensees of the Enpat
Patents, as of the Effective Date, to submit all Royalties that may be due, as
well as any reports concerning such Royalties, directly to IGT and,
accordingly, the applicable provisions of paragraph 6.4 of the Patent Purchase
Agreement are hereby modified to be consistent herewith;


 


g)  SMI shall be relieved of its obligations
under paragraph 6.6 of the Patent Purchase Agreement, as any of same relate to
the Enpat Patents for all Royalties due after the Effective Date;


 


h)  SMI shall, within 30 days of the Effective
Date, turn over to IGT all patent prosecution files in its possession related
to the Enpat Patents and shall be relieved of any of its obligations under
paragraph 8.1 with respect to the Enpat Patents and, accordingly, the applicable
provisions of paragraph 8.1 of the Patent Purchase Agreement are hereby
modified to be consistent herewith;


 


i)  SMI no longer shall have any right to enforce
the Enpat Patents and, accordingly, the applicable provisions of paragraph 8.3
of the Patent Purchase Agreement are hereby modified to be consistent herewith;
and


 


j)  SMI no longer shall have any right to approve
any settlement offer with respect to the Enpat Patents and, accordingly, the
applicable provisions of paragraph 8.4 of the Patent Purchase Agreement are
hereby modified to be consistent herewith.


 


4.                                       SMI hereby
informs IGT that, prior to the Effective Date, Mr. John Kendall contacted SMI,
indicating a desire to obtain a sublicense from GPIC to the Enpat Patents.  SMI referred Mr. Kendall to GPIC.


 


5.                                       SMI hereby represent
and warrants that it is not aware, without any duty of inquiry or
investigation, of any facts or information that would materially adversely
affect the Enpat Patents, or their value including potential Royalties, other
than any facts or information, if any, that has already been disclosed to IGT.


 


6.                                       SMI and IGT
each hereby agree to do such additional acts and execute such additional assignments
and documents as are consistent with this Amendment, and in order to fully
implement the intent of this Amendment.


 


 


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7.                                       This Amendment,
along with the applicable provisions of the April Agreement and the Patent
Purchase Agreement, constitute the entire agreement and understanding of the
parties with respect to the Enpat Patents and supersede, except for the
applicable provisions of the April Agreement and the Patent Purchase Agreement,
all prior agreements, understandings, negotiations and discussions between the
parties with respect to the Enpat Patents.


 


8.                                       In the event of
any conflict or inconsistency between either the terms of this Amendment and
the terms of the April Agreement, or the terms of this Amendment and the terms
of the Patent Purchase Agreement, then, in each case, the terms of this
Amendment shall apply and control.


 


9.                                       Without
limiting the applicability of any other representations or warranties, if any, SMI
represents and warrants that Section 9.2 of the Patent Purchase Agreement, as
it related and applies to the Enpat Patents, is still true as of the Effective
Date of this Agreement and remains effective.


 


Except as expressly amended and modified
hereby, the April Agreement shall remain in full force and effect pursuant to
each of its terms and conditions, as modified by this Amendment, and the
parties hereby ratify and confirm same. Any reference, after the Effective Date,
to the April Agreement shall mean, collectively, both the initial April
Agreement and this Amendment.


 


Except as expressly modified or amended
hereby, the Patent Purchase Agreement shall remain in full force and effect,
pursuant to each of its terms and conditions, as modified by this Amendment,
and the parties hereby ratify and confirm same. 
Any reference, after the Effective Date, to the Patent Purchase
Agreement shall mean, collectively, both the initial Patent Purchase Agreement
and this Amendment.


 


Both SMI and IGT, by each’s duly authorized
signature below, agree to this Amendment and all the terms and conditions herein.


 


The parties agree that faxed documents or
emailed (PDFs) shall have the same force and effect as originals.  If faxed or emailed copies of signatures are
used, the parties agree to execute and exchange duplicate originals within five
(5) days.


 


 


	
  IGT

  	
  SHUFFLE MASTER, INC.

  
	
   

  	
   

  
	
  Signed:

  	
   /s/ Rich Pennington

  	
   

  	
  Signed:

  	
   /s/ Paul Meyer

  	
   

  
	
   

  	
   

  
	
  Printed Name: Rich
  Pennington

  	
  Printed Name: Paul Meyer

  
	
  Title: EVP Corporate
  Strategy

  	
  Title: President and COO

  
						



 


 


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