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EXHIBIT 10.22
JEFF J. MARWIL
KATTEN MUCHIN & ZAVIS
525 West Monroe Street, Suite 1600
Chicago, Illinois 60661-3693
Telephone: (312) 902-5200
L. DONALD RAUB, JR. (Cal. Bar No. 111973)
THOMAS M. GAA (Cal. Bar No. 130720)
BROOKS & RAUB
505 Hamilton Avenue, Suite 300
Palo Alto, California 94301-2009
Attorneys for TEAC CORPORATION
UNITED STATES BANKRUPTCY COURT
NORTHERN DISTRICT OF CALIFORNIA
(San Jose Division)
In re ) Chapter 11
) Case No. 93-54027-MM
KALOK CORPORATION, a California )
corporation ) AGREED ORDER COMPROMISING
) CONTROVERSIES
Debtor. )
) Date: February 4, 1994
Employer's Tax ID 77-0146015 ) Time: 11:00 a.m.
) Place: 280 South First Street,
) Rm. 3070
) San Jose, California
)
) The Honorable Marilyn Morgan
)
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THIS CAUSE, coming to be heard on the Motion of Kalok Corporation,
Debtor and Debtor-in-Possession, seeking entry of an Order compromising certain
controversies in this case ("Motion") and the Court having conducted a hearing
on the Motion, Kalok being represented by Gray Cary Ware & Freidenrich, by
Lillian G. Stenfeldt and Nels R. Nelsen, TEAC Corporation ("TEAC") being
represented by Katten, Muchin & Zavis, by Jeff J. Marwil and Mark D. Gerstein,
DZU-AD ("DZU") and DZU Corporation ("DZU Corp.") being represented by Fulbright
& Jaworski, L.L.P., by William J. Rochelle III, Courtney S. Katzenstein and
Mark N. Mutterperl, Dan Dooley ("Dooley"), individually, Steven Kaczeus
("Kaczeus"), individually, JT Storage, Inc. ("Newco") and The Official
AGREED ORDER TO COMPROMISE CONTROVERSY
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Unsecured Creditors Committee (the "Committee") being represented by Murray &
Murray, by Janice Murray.
THE COURT HEREBY MAKES THE FOLLOWING FINDINGS OF FACT:
1. Each of TEAC, DZU, DZU Corp., Kalok, the Committee, Kaczeus,
Dooley, and Newco have negotiated in good faith to resolve all pending
controversies in this case pursuant to the terms of this Order.
2. Kalok filed a voluntary petition for relief on June 21, 1993
("Petition Date"). Since that time, the Debtor has operated its business
pursuant to Sections 1107 and 1108 of the Bankruptcy Code.
3. On June 30, 1993, the Committee was appointed in the Debtor's
bankruptcy case.
4. Kalok is engaged in the business of designing, manufacturing
and selling hard disk drives for computers.
5. TEAC holds all of the issued and outstanding shares of Kalok
Series E Preferred Stock ("Series E") which shares were purchased by TEAC
pursuant to a Stock Purchase Agreement with Kalok dated as of December 18,
1992. Simultaneous with the purchase of the Series E by TEAC, TEAC and Kalok
entered into a Licensing Agreement dated as of December 18, 1992 ("TEAC
Licensing Agreement"), whereby Kalok agreed to license certain of its disk
drive technology to TEAC, and a Manufacturing and Sales Agreement dated as of
December 18, 1992 ("Manufacturing Agreement"), whereby TEAC agreed to
manufacture disk drives for Kalok on certain terms and conditions.
6. Prior to the filing date, TEAC provided Kalok with a credit
line of up to $5,000,000 ("TEAC Credit Line") for purchases made by Kalok
pursuant to the Manufacturing Agreement. Pursuant to the terms of the
Manufacturing Agreement, Kalok was in default under the TEAC Credit Line in the
amount of $1,159,828.23 ("Credit Line Default Indebtedness") on the Petition
Date.
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AGREED ORDER TO COMPROMISE CONTROVERSY
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7. DZU holds all or substantially all of the issued and
outstanding shares of the Debtor's Series D Preferred Stock ("Series D") which
shares were purchased by DZU pursuant to a Stock Purchase Agreement with Kalok
dated as of May 15, 1992 for a cash purchase price of approximately $5,000,000.
On May 15, 1992, DZU and Kalok entered into a Subcontract Manufacturing
Agreement (the "DZU Manufacturing Agreement") of even date, whereby DZU agreed
to manufacture disk drives for Kalok and Kalok agreed to purchase such disk
drives from DZU. On account of pre-petition inventory purchases DZU alleges
that Kalok owes DZU no less than approximately $1,383,390.28 (the "Pre-Petition
Debt") and that the Pre-Petition Debt is an administrative claim arising under
the DZU Manufacturing Agreement. The Debtor and the Committee dispute the
validity, amount and priority to be accorded to the debt.
8. On June 10, 1993 Kalok obtained a loan from Steven Kaczeus in
the principal amount of $200,000 (the "Kaczeus Loan"). Kaczeus is an officer,
director and shareholder of Kalok. On June 11, 1993 Kalok obtained a loan from
TEAC in the principal amount of $150,000 ("TEAC Loan"). On June 14, 1993 Kalok
obtained from Dr. Richard I. Emori a loan in the principal amount of $100,000
("Emori Loan"). The TEAC Loan, the Kaczeus Loan and the Emori Loan are secured
by, among other things, the following wheresoever located and whether then
existing or thereafter arising or acquired by Kalok (collectively referred to
as the "Pre-Petition Collateral"):
All personal property of Kalok, including without limitation,
all goods and equipment, inventory, contract rights, general
intangibles, accounts receivable, patents, trademarks,
tradenames, licenses, documents, securities, cash, Kalok's
books and records and all proceeds of any of the foregoing,
all as more fully described in the "Pre-Petition Documents"
(as defined below).
The security interests and liens granted TEAC, Kaczeus and Emori were evidenced
by various agreements, instruments and documents all as may have been amended
from time to time (collectively referred to as the "Pre-Petition Documents").
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AGREED ORDER TO COMPROMISE CONTROVERSY
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9. With respect to the TEAC Loan, the Kaczeus Loan and the Emori
Loan (collectively referred to as the "Pre-Petition Loans"), TEAC, Emori and
Kaczeus hold, on a pro rata and equal priority basis, first priority, valid and
duly perfected liens upon and security interests in the Pre-Petition
Collateral.
10. Pursuant to that certain Order entered by this Court on or
about June 23, 1993, Kalok borrowed a total of $500,000, $250,000 from TEAC and
$250,000 from DZU ("First Financing Order") secured by an equal first priority
lien upon and security interest in Kalok's accounts and accounts receivable,
and proceeds thereof ("Accounts Receivable"). Pursuant to this Court's Order
entered on July 24, 1993 Kalok borrowed an additional $450,000, $225,000 from
TEAC and $225,000 from DZU, ("Second Financing Order") secured by equal first
priority security interests in and liens upon Kalok's inventory and proceeds
thereof together with Kalok's Accounts Receivable, subject only to the first
priority liens upon and security interests in the Pre-Petition Collateral held
on an equal priority basis by TEAC, Kaczeus and Emori to the extent of $450,000
plus interest. In addition, the Second Financing Order granted TEAC and DZU an
equal first priority security interest in and lien upon Kalok's inventory to
further secure Kalok's obligations to TEAC and DZU under the First Financing
Order. Pursuant to this Court's Order entered on August 13, 1993 ("Third
Financing Order"), and in accordance with Section 365 of the Bankruptcy Code,
Kalok modified and assumed (i) its Manufacturing Agreement with TEAC ("TEAC
Assumed Manufacturing Agreement"), and (ii) the TEAC License Agreement ("TEAC
Assumed License Agreement"), and further borrowed up to $900,000 from TEAC,
secured by a valid, duly perfected security interest in and lien upon all of
Kalok's assets, including the Pre-Petition Collateral, with priority (a) senior
to all other such liens and security interests except those held by TEAC,
Kaczeus and Emori to secure the Pre-Petition Loans and OPC, to the extent of
approximately $2,000, (to the extent such liens and security interest were
valid, perfected and enforceable) and (b) equal in priority to all liens and
security
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AGREED ORDER TO COMPROMISE CONTROVERSY
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interests in any portion of Kalok's assets granted to DZU pursuant to the
First, Second or Third Financing Orders. Upon entry of the Third Interim
Financing Order, Kalok and TEAC executed the TEAC Assumed Manufacturing
Agreement and the TEAC Assumed License Agreement, and accordingly each such
agreement is, in accordance with their respective terms, fully binding upon and
enforceable against each of Kalok and TEAC. Pursuant to the terms of the Third
Financing Order, TEAC advanced $400,000 on a revolving basis to Kalok to fund
costs and expenses associated with operation of Kalok's business, and further
extended to Kalok a credit line of $500,000 to fund purchase of product by
Kalok from TEAC.
11. On September 10, 1993 this Court entered that certain
Stipulated Final Financing Order pursuant to 11 U.S.C. Section 364(d) ("TEAC
Final Order") pursuant to which TEAC loaned to Kalok the amount of $175,000 (to
satisfy operating expenses), and extended to Kalok a credit line in the amount
of approximately $300,000 to purchase disk drive inventory. In addition, the
TEAC Final Order granted TEAC a lien upon and security interest in all of
Kalok's assets, including the Pre-Petition Collateral, on the same basis and
priority as the liens granted TEAC under the Third Financing Order, to secure
all post Petition Date loans and extensions of credit made by TEAC to Debtor.
12. On or about September 23, 1993 the Court entered that certain
Stipulated Final Financing Order Pursuant to 11 U.S.C. Section 364(c) and Order
Authorizing Debtor to Enter into a License and Manufacturing Agreement with DZU
AD ("DZU Final Order"). Pursuant to the terms of the DZU Final Order, DZU
loaned Kalok $1,525,000 ("DZU Final Loan"), which funds Kalok used to satisfy
ongoing operating expenses. The DZU Final Order further granted DZU a lien upon
and security interest in all of the Kalok's assets, including the pre-petition
collateral, on the same basis and priority as the security interests and liens
granted TEAC under the TEAC Final Order to secure all Post Petition Date
indebtedness owing by Kalok to DZU. In addition, Kalok and DZU
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entered into that certain Subcontract Manufacturing Agreement dated September
22, 1993 ("DZU License").
13. Pursuant to the terms of the TEAC Assumed Manufacturing
Agreement, Kalok was required to pay TEAC for all advances under the TEAC
Credit Line within 60 days of the date inventory was delivered to Kalok by
TEAC. In September 1993 Kalok obtained an advance of credit under the TEAC
Credit Line in an amount in excess of $1,000,000. Thereafter, Kalok, with the
consent of TEAC, returned substantial amounts of inventory as a credit against
amounts owing TEAC by Kalok under the TEAC Credit Line. Nonetheless, as of 60
days after the advance of such credit, Kalok was still indebted to TEAC in the
approximate amount of $338,813.13. Accordingly, on November 5, 1993, and
again on December 23, 1993, TEAC declared a default under the terms of the TEAC
Manufacturing Agreement, and pursuant to the terms of that agreement, the Final
Financing Order, and subsequent agreements between Kalok and TEAC, all
obligations due and owing by Kalok to TEAC became due and owing TEAC on January
21, 1994. All such amounts, which aggregate approximately [$1,500,000], not
including the Credit Line Default Indebtedness, are currently due and owing by
Kalok to TEAC. TEAC has asserted an administrative claim against Kalok in an
amount equal to the Credit Line Default Indebtedness based on Section
365(b)(1)(A) of the Bankruptcy Code. Accordingly, TEAC holds valid, duly
perfected, enforceable priority security interests in and liens upon all of
Kalok's assets to the extent of approximately $1,500,000 plus interest, costs
and expenses ("TEAC Secured Claim").
14. Pursuant to the terms of the DZU Final Order, all amounts due
and owing by Kalok to DZU ($2,000,000 plus interest, costs and expenses) were
due and owing DZU on or before December 30, 1993. Kalok has not paid DZU, but
has alleged no such payments are due or owing. Although DZU purchased $160,000
in parts, Kalok provided DZU prior to December 30, 1993, with two purchase
orders and subsequent change orders pursuant to which Kalok purported to order
assembled disk drives from
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AGREED ORDER TO COMPROMISE CONTROVERSY
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DZU pursuant to the DZU License. Pursuant to the terms of the DZU License, DZU
was allegedly required, subject to specified conditions, to purchase from Kalok
the piece parts necessary to build assembled disk drives. Kalok alleged that
DZU's failure to sell disk drives and purchase parts from Kalok within a
specified time period constituted a default under the DZU License and the DZU
Final Order, resulting in DZU's loss of all license rights under the DZU
Agreement and all collateral rights and other rights under the DZU Final Order.
Kalok filed formal notices with this Court declaring these defaults and
remedies. DZU thereafter formally noticed Kalok of its default under the DZU
Final Order in a writing dated January, 1994, and filed a notice with the Court
formally setting forth Kalok's default and disputing Kalok's allegation of
default by DZU. Thereafter, DZU filed an adversary proceeding in this case
seeking a declaratory judgment that Kalok had defaulted under the DZU Final
Order and that DZU's liens, claims, security interests and licenses were valid,
perfected, and enforceable. Simultaneously, DZU filed a motion for authority to
move for summary judgment. DZU's motion for summary judgment was postponed as a
consequence of the agreement among the parties leading to the Motion. By virtue
of the settlement, Kalok will withdraw its claims and defenses against DZU, and
it is found, for the purposes of 11 U.S.C. Section 363(k) and otherwise,
(a) that DZU holds a valid, duly perfected and enforceable security interest
in and lien upon all of Kalok's assets to the extent of approximately
$2,000,000 plus interest ("DZU Secured Claim"), and (b) that the DZU License is
valid and enforceable. DZU has assigned the DZU Secured Claim to DZU Corp.
15. On or about December 10, 1993 Kalok filed that certain Adversary
Proceeding, No. 93-5624, against Dooley ("Dooley Adversary") (a) seeking among
other things to enjoin Dooley or his agents, employees, servants and all other
persons who act or participate with him from (i) gaining access to Kalok's
business premises; (ii) using, disclosing or otherwise disseminating Kalok's
confidential intellectual property; and (iii) retaining any confidential and
proprietary Kalok intellectual property to which he was not
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AGREED ORDER TO COMPROMISE CONTROVERSY
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entitled; and (b) monetary damages. On December 10, 1993 this Court entered a
temporary restraining order granting Kalok's requested relief, pending a final
hearing, which is scheduled for March 11, 1994.
16. In January, 1994, DZU moved to intervene in the Dooley Adversary,
and, simultaneously, Dooley and DZU moved in the District Court to withdraw the
reference of the Dooley Adversary. In addition, DZU and Dooley have asserted
that the Dooley Adversary fails to state a claim and that the temporary
restraining order should be vacated because, among other things, Dooley is a
United States citizen who, regardless of whomever his employer may be, is
entitled under export laws to be in possession of the subject technology and
because the statute under which Kalok initiated the case does not give rise to
a private right of action. The litigation in connection with the Dooley
Adversary is being terminated in accordance with this order. By virtue of this
order, DZU and Dooley, among other things, will waive any claims they may have
against Kalok on the grounds that the temporary restraining order against
Dooley was improperly issued.
17. On December 23, 1993, TEAC filed a Motion for Relief from
Automatic Stay and for Conversion of this Case to one under Chapter 7 ("TEAC
Stay Relief Motion"), based on Kalok's defaults under the TEAC Final Order and
the TEAC Assumed Manufacturing Agreement. Thereafter, DZU filed a Motion for
Relief From Automatic Stay ("DZU Stay Relief Motion") based on, among other
things, Kalok's defaults under the DZU Final Order. Kalok filed responses to
each of the TEAC and DZU Stay Relief Motions. The granting of the motions for
relief from the stay would have allowed the foreclosure of substantially all of
Kalok's assets, leaving for creditors only funds generated pursuant to carve
out provisions in prior Orders of this Court. Hearings on these motions have
been continued for status on February 4, 1994.
18. Kalok cannot generate sufficient sales of its current products to
satisfy the obligations due and owing TEAC, Kaczeus, Emori and DZU under the
various Financing
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Orders and loan agreements by and between those parties and Kalok, and has
further determined that the compromise of controversies is in the best interest
of the estate and its creditors. The Committee has represented that it has
reviewed Kalok's business operations and also has determined that the proposed
compromises are in the best interest of the estate and its creditors.
19. The best interest of creditors of this estate mandates a
settlement in which:
(a) TEAC and DZU bid in their liens under Section 363(k) to
take title to certain of Kalok's assets as more fully
set forth herein;
(b) TEAC extends to Newco a license, in substantially the
form attached hereto as Exhibit A, with respect to
certain intellectual property which TEAC acquires from
Kalok's bankruptcy estate, and TEAC contributes other
property acquired from the Kalok bankruptcy estate to
Newco in exchange for an equity interest in Newco;
(c) The parties dismiss the DZU Adversary and the Dooley
Adversary with prejudice;
(d) Kaczeus release all liens, claims and interests in to
or against Kalok and Kalok's assets;
(e) Kalok, TEAC, Kaczeus, DZU, DZU Corp. and Dooley each
release the other of all existing and potential claims,
rights and causes of action, as set forth in Paragraph
R of this Order;
(f) DZU pays to the Kalok estate the sum of $275,000;
(g) Newco executes a promissory note in favor of the
Kalok estate in the amount of $225,000;
(h) Newco issues to the Kalok estate for the benefit of
unsecured creditors, warrants entitling the unsecured
creditors of Kalok's estate to 2% ownership interest
in Newco;
(i) All of Kalok, TEAC, DZU, DZU Corp., Newco, Kaczeus and
Dooley execute and consummate all of the agreements
attached hereto as group Exhibit B, and all other
reasonable necessary documents to effect the intended
transactions (collectively referred to as "Agreements");
(j) The Kalok estate shall pay to David Pearce, current
President of Kalok, but as an independent contractor,
an amount equal to 3% of gross accounts receivable of
the Kalok estate to a maximum of $350,000, 10% of gross
accounts receivable in excess of $350,000, but not
greater than $400,000, and 25% of gross accounts
receivable in excess of $400,000, all of which are
actually collected by Pearce after the date hereof;
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(k) The Kalok estate will not incur payroll expenses after
February 4, 1994;
(l) Newco will reimburse the Kalok estate pro rata for rent
and other expenses paid by Kalok for the period from
and after February 4, 1994; and
(m) Kaczeus will receive an agreed upon percentage equity
interest in Newco.
20. Pursuant to the terms hereof, Kalok, TEAC, DZU, DZU Corp.,
Kaczeus, the Committee and Dooley have agreed to resolve all disputes affecting
such parties which currently exist in this case and other related proceedings,
and further agree to fully release each other on the terms specified in
Paragraph R of this Order.
NOW, THEREFORE, based on the foregoing, and the agreement of TEAC, DZU,
DZU Corp., Kalok, the Committee, Newco, Kaczeus and Dooley, the COURT HEREBY
ORDERS AS FOLLOWS:
A. All of the foregoing findings of fact in Paragraphs 1 though 20
are incorporated herein by this reference thereto.
B. Pursuant to Section 363(k) of the Bankruptcy Code, in
consideration of the release and offset by (i) TEAC, and (ii) DZU and DZU Corp.
of the TEAC Secured Claim and the DZU Secured Claim, respectively, Kalok shall
transfer, assign and convey to each of TEAC and DZU Corp., free and clear of
any liens, claims and encumbrances of whatsoever type or description, except as
otherwise expressly provided in this Order, separate but equal right, title and
interest in and to all of Kalok's right, title and interest in and to the
following property, exclusive of the Nordic II Series technology, as more fully
described in Exhibit C hereto, which is incorporated herein ("Nordic II"):
(1) all Kalok products, including the Point5 Series
(consisting of models P-3125, P-3250, P-3360 and
P-3540), the Kalok K-Stor Products (consisting of the
P5DM Series, support software, controllers, docking
modules, carrying cases, and cables), the Kalok K-Port
Products, and the Kalok K-RAID Products (collectively,
the "Products");
(2) all technical information, and intellectual property and
documents (except the trademarks as hereinafter provided
for) of Kalok relating to all aspects of Kalok's
business, products, developments,
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and projects, including without limitation, patents and patent
applications, including those provided for in those certain
assignments, copies of which are attached hereto as Exhibit E
and incorporated herein ("Patents"), copyrights, trade secrets,
inventions, source codes, object codes, flow charts, engineering
notebooks, processes, techniques, specifications, drawings,
parts layouts, parts lists, circuitries, tooling and testing
requirements, know-how, manuals and other technical data and
support documentation, and all technical information and other
intellectual property pertaining to the parts, components, and
manufacturing of all Kalok products, developments and projects
(collectively referred to as "Intellectual Property");
notwithstanding the foregoing, any ambiguity between the terms
hereof and the Agreement regarding the Patents (attached as
Exhibit E) shall be resolved in favor of the terms set forth in
that Agreement;
(3) Any improvements in, modifications on, derivative works of,
variations of, new designs of, discoveries related to, or
developments useful in any of the technology or other
intellectual property described in (2) above, whether separately
developed, licensed or otherwise obtained by or on behalf of
Kalok, all as of the date hereof, and not hereafter
(collectively referred to as "Developments");
(4) Pursuant to the Assignment of Trademarks attached hereto
as Exhibit D and incorporated herein, the trademarks, trade
names, trademark registrations, and applications for
registration of trademarks of Kalok, including all other
trademark rights, whether registered or unregistered, and good
will of Kalok, associated with such trademark, (collectively
referred to as "Trademarks"), together with labels, stickers
and other items using such Trademark (on a 50/50 basis) except
that TEAC shall, for the benefit of Newco retain an exclusive
right to the "K-Stor" tradename and trademark in the United
States; and
(5) The goodwill of Kalok, its business and its products
("Goodwill").
(Collectively referred to as "IP Assets.") With respect to the transfer, sale,
conveyance and assignment of the IP Assets:
(i) TEAC shall be entitled to the originals thereof, and
DZU Corp. shall be entitled to an exact duplicate of
all such original IP Assets;
(ii) Kalok shall simultaneously with the execution of this
order deliver or cause its counsel to deliver both to
TEAC and DZU (a) a complete list of all of the
Intellectual Property, applications, and registrations
showing the status of each and all deadlines, including
those pertaining to documents to be filed to obtain
protection or registration, and to renew any
registrations; (b) all files used in connection with the
prosecution of applications for any of the Intellectual
Property, except that Kalok shall deliver to TEAC the K-
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STOR trademark file, and Kalok shall deliver to
each of TEAC and DZU Corp. all other trademark
and tradename files with TEAC to retain the
originals in accordance with subparagraph (i)
above.
(iii) Kalok shall assign to both DZU Corp. and TEAC
any and all employee confidentiality agreements,
and consistent with the terms hereof, agreements
of employees to assign to Kalok discoveries and
inventions with TEAC to retain the originals in
accordance with subparagraph (i) above.
C. Pursuant to Section 363(k) of the Bankruptcy Code, in further
consideration of the release and offset by TEAC of the TEAC Secured Claim,
Kalok shall and does hereby assign, transfer and convey to TEAC free and clear
of any and all liens, claims and encumbrances of whatsoever type or
description, including those asserted by DZU (except as otherwise provided
herein or in agreements attached hereto):
(1) All of Kalok's right, title and interest in and to all
personal property of Kalok (except the IP Assets, the
Piece Part Inventory (as defined below) and rights under
any unexpired lease or executory contract) including,
without limitation, the TEAC Parts (as hereinafter
defined), Kalok's interest as licensee in the Software
Licenses identified on Exhibit F, and Kalok's books and
records (provided, however, Kalok shall retain an
absolute right to access such books and records).
(Collectively referred to as "Hard Assets."); and
(2) The trademark K-STOR and the goodwill related thereto,
including a customer list pertaining to K-STOR and any
labels, stickers, and other items using the K-STOR
trademark, provided, however, that TEAC and Newco shall
allow DZU to use the trademark K-STOR in connection with
the sale of those Kalok products which DZU holds in its
inventory as of the date of the entry of this order or
which it will manufacture utilizing the Piece Parts
Inventory (defined below) conveyed to DZU under this
Agreed Order.
(3) All of Kalok's right, title and interest in or to the
Intellectual Property pertaining exclusively to Nordic
II, including, without limitation, all glass disk
technology, drawings pertaining to the design or
construction, shockproof technology, firmware, the ASIC,
the spindle motor and related technology, provided,
however, that any Intellectual Property that is in
common with the Nordic II and any other products,
developments or technology of Kalok shall not be deemed
part of Nordic II but shall be and be deemed part of the
IP Assets transferred to both TEAC and DZU pursuant to
paragraph B above.
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D. Pursuant to Section 363(k) of the Bankruptcy Code, in further
consideration of the release and offset by DZU Corp. of the DZU Secured Claim,
Kalok shall and does hereby transfer, assign and convey to DZU Corp. free and
clear of any and all liens, claims, and encumbrances (except as otherwise
provided herein or in agreements attached hereto), including those asserted by
TEAC, all of Kalok's right, title and interest in and to all piece parts
inventory and only such related products tooling owned by Kalok which may be
used in connection with Kalok's products other than Nordic II, (provided,
however, that any parts, tooling or other related property paid for by TEAC
("TEAC Parts") shall not be transferred to DZU pursuant hereto) including
without limitation the piece parts set forth on the Inventory Schedule and
Notes thereto, attached hereto as Exhibit G ("Piece Part Inventory"). The
foregoing sentence notwithstanding, the transfer of the Piece Parts Inventory
to DZU Corp. shall be subject to any liens, claims or encumbrances asserted by
Reliance Technical Services, Inc., to the extent that such liens, claims or
encumbrances are valid, perfected, and enforceable and were, prior to the entry
of this Order, prior in lien to the DZU Secured Claim. Any prior agreements or
understandings by Kalok to the contrary notwithstanding, DZU and DZU Corp. are
authorized to have access to and purchase goods and services from Kalok's
vendors and suppliers of the Point5 Series products for the purpose of
purchasing additional drive materials on such terms as may be agreed by such
vendors or suppliers and DZU or DZU Corp. DZU Corp. shall be provided
reasonable access to the Piece Part Inventory for purposed of packing and
shipping the Piece Part Inventory to a destination of DZU Corp.'s choice, all
at the costs and expense of DZU Corp.
E. Immediately subsequent to the entry of this Order, each of
TEAC, DZU, DZU Corp. and Newco (in accordance with its license from TEAC) shall
be and are hereby forever prohibited from using, manufacturing, selling and/or
sublicensing the Intellectual Property, the Developments, the Trademarks and
the Patents in conflict with the certain
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exclusive territories, set forth in the Agreement between TEAC, DZU, DZU Corp.
and Newco, a copy of which is attached hereto and incorporated herein as
Exhibit H.
F. Immediately subsequent to entry of this Order, notwithstanding
any provision herein, neither TEAC (or Newco) or DZU shall have the right to
sublicense or otherwise transfer their rights in or to any of the IP Assets to
Seagate Technology Conor, Western Digital Corporation, Quantum Corporation,
Maxtor Corporation, IBM Corporation and Hewlett-Packard Company, together with
all of their affiliates, subsidiaries successors, (collectively referred to as
the "HDD Companies"), except that TEAC (and Newco) and/or DZU shall be entitled
to (a) sell finished products to the HDD Companies; (b) allow the HDD Companies
to manufacture products to be sold by TEAC (or Newco) or DZU; and (c)
cross-license any of the IP Assets (only to the extent reasonably necessary) to
the HDD Companies solely for the purposes of resolving bona fide patent
infringement claims, ("Settlement Licenses") provided however, no such
Settlement License shall be granted without 30 days prior written notice to the
other parties (TEAC, DZU) and such parties' consent in writing thereto, which
consent will not be unreasonably withheld, but consent shall be deemed given if
no written response to such notice is received within such 30 day period.
G. TEAC shall (i) license to Newco the Intellectual Property, the
Developments and the Trademarks on the terms and conditions set forth in the
License Agreement attached hereto as Exhibit A; and (ii) contribute the Hard
Assets, to Newco in exchange for a 10% equity interest in Newco.
H. Each of DZU, TEAC, DZU Corp., Dooley and Newco shall, and are
hereby bound and required to maintain in confidence all trade secrets of or
pertaining to the Point5 Series Technology, the Intellectual Property, the
Trademarks and the Developments, and shall only disclose the portion of such
information, on a need to know basis, as is essential for the manufacture of
products using such trade secrets.
14
AGREED ORDER TO COMPROMISE CONTROVERSY
15
I. Kalok shall retain, free of any lien, claim or encumbrance of
TEAC, DZU, DZU Corp., Kaczeus, Dooley and Emori, the following property for the
benefit of the estate which shall have with the Committee, joint power of
direction with respect to such property:
(a) all of Kalok's accounts receivable, in the approximate
amount of $300,000;
(b) all current cash balances in Kalok's bank accounts in the
approximate amount of $50,000;
(c) all avoidance actions under the Bankruptcy Code except those
actions released pursuant to Paragraph R hereof; and
(d) any other causes of action against any party, except those
actions released pursuant to Paragraph R hereof.
J. Kaczeus shall and does hereby release and waive any lien, claim or
encumbrance he may have in, to or against Kalok or any property of Kalok,
including the Pre-Petition Collateral, on account of the Kaczeus Loan or any
other obligations due or owing by Kalok to Kaczeus.
K. TEAC shall and does hereby waive and release any and all liens,
claims or encumbrances it has in, to or against Kalok or any property of Kalok
under the First, Second or Third Financing Order the TEAC Final Order, the
Credit Line Default Indebtedness and any other claim TEAC may have against
Kalok or its estate.
L. DZU and DZU Corp. shall and does hereby waive and release any and
all liens, claims or encumbrances it has in, to or against Kalok or any
property of Kalok on account of the First, Second or Third Financing Order, the
DZU Final order, the Pre-Petition Debt and any other claim DZU and DZU Corp.
may have against Kalok or its estate.
M. DZU shall pay $275,000 to Kalok, and the assets and properties
shall be transferred, conveyed, and assigned to DZU Corp. as follows:
(1) Kalok or whoever is in control of the premises at which
Kalok conducted business ("Premises") shall forthwith cause
the IP Assets, or duplicates thereof (the "Deposit
Material"), to be removed to a room
15
AGREED ORDER TO COMPROMISE CONTROVERSY
16
(the "Secure Room") on the Premises. No one shall have
access to the Secure Room except DZU, DZU Corp. or their
agents, except Kalok or Newco shall be entitled to
supervise all activity in the Secure Room.
(2) Upon the determination made by DZU in its reasonable
judgment that all or substantially all of the Deposit
Material has been removed to the Secure Room, DZU shall
cause a cashiers check in the sum of $275,000 to be wire
transferred to an escrow account held by Murray & Murray
counsel for Kalok's Official Creditors' Committee, in
satisfaction of DZU's payment obligations under this
Order.
(3) Upon Murray & Murray receipt of the $275,000, DZU Corp.
shall be entitled to take immediate possession of the
Deposit Materials, remove the Deposit Materials from the
Secure Room, and have all of Kalok's right, title and
interest in the Deposit Materials free of liens, claims
and encumbrances as provided in this Order. Contemporan-
eous with the removal by DZU Corp. of the Deposit
Materials from the Premises, Murray & Murray shall pay
the $275,000 (plus accrued interest) to Kalok. Upon
Murray & Murray's receipt of the $275,000, Kalok shall
also cause all other assets and properties provided for
in this order to be transferred, conveyed, and assigned
to DZU Corp. free of liens, claims and encumbrances as
provided in this Order. DZU shall remove from Kalok's
premises all Piece Part Inventory within a reasonable
time with the transfer of the $75,000 to Murray &
Murray. DZU shall remove from the Premises all Piece
Part Inventory within a reasonable time after that
date of the transfer of the $275,000 to Murray & Murray.
(4) At reasonable times and in reasonable manners subsequent
to the payment of the $275,000 to Murray & Murray,
DZU shall have the right to conduct an audit (the
"Audit") to determine whether the properties received
constituted all of the assets and properties which DZU
Corp. was entitled to receive under the terms of this
Order. Upon notification by DZU of its determination,
made pursuant to an Audit or otherwise, that any assets
or properties were not turned over, Kalok, TEAC, and
Newco shall use their reasonable best efforts to cause
such assets or properties, or copies thereof, to be
turned over to DZU Corp. within five (5) business days
after such notification.
(5) Kalok, TEAC and Newco shall, if requested by DZU,
cooperate with and assist DZU in performing the Audit
and, in connection with DZU's performance of the Audit,
Kalok, TEAC and Newco shall provide DZU with reasonable
access to all books, records, documents, and technology
relating to the IP Assets as are in Kalok's, TEAC's
and/or Newco's possession. Kalok, TEAC and Newco shall
also provide DZU with reasonable access to any of
Kalok's TEAC's or Newco's employees that were formerly
employed by Kalok and that have knowledge, information
or experience with respect to the IP Assets. DZU and/
or DZU Corp.
16
AGREED ORDER TO COMPROMISE CONTROVERSY
17
shall also be entitled to and are hereby authorized
to contract and transact business with any prior vendor
or supplier of Kalok.
(6) If there is a dispute between the parties of this Order
with respect to this Paragraph M, this Court shall,
upon appropriate Motion, resolve such disputes.
N. Newco shall tender to Kalok's bankruptcy estate (a) a
promissory note in the amount of (U.S.) $225,000, payable in ten (10) equal
quarterly installments, without interest, a copy of which is attached hereto as
Exhibit I; and (b) warrants to acquire 2% of the common stock of Newco at a
price equal to 25 % of the initial offering price when Newco goes public, said
warrants to be exercisable up to one year after the date of Newco goes public,
to be set forth in a Warrant Agreement between Kalok and Newco.
O. Emori shall and does hereby immediately release and waive any
and all liens, claims or encumbrances he may have into or against Kalok or
Kalok's assets, including, without limitation, the Pre-Petition Collateral.
Upon receipt of $275,000 by Murray & Murray in accordance with Paragraph M
hereof, Kalok shall pay to Emori the sum of $100,000 plus interest accrued
under the Emori Loan to the extent Emori has not already been paid by Kalok.
P. The Bankruptcy Court shall enter in accordance herewith the
orders annexed hereto as Group Exhibit J dismissing with prejudice the Dooley
Adversary (including any related case pending in the Federal District Court)
and the DZU Adversary Proceeding, which shall become effective when Murray &
Murray receive $275,000 in accordance with Paragraph M.
Q. Contemporaneous with the transfers and conveyances required
under Paragraph B, C and D hereof, of all property, including without limitation
the IP Assets the Hard Assets Nordic II, and the Piece Part Inventory, each of
the DZU License, the TEAC Assumed License Agreement and the TEAC Assumed
Manufacturing Agreement shall be canceled and terminated.
R. Except with respect to those obligations specifically
created by, or arising out of this Agreed Order, each of (i) Kalok on its own
behalf, and on behalf of the
17
AGREED ORDER TO COMPROMISE CONTROVERSY
18
Kalok Bankruptcy estate, its creditors, and all parties in interest (including
any subsequently appointed Trustee) ("Kalok Estate"), (ii) TEAC, (iii) DZU and
DZU Corp. (iv), Kaczeus and (v) Dooley do hereby, for themselves and their
respective legal successors and assigns, fully and forever remise, release and
discharge each other and their respective parents, subsidiaries and affiliated
corporations, companies, divisions or other entities together with its or their
predecessors, successors and assigns, and each and all of its or their
shareholders, directors, officers, employees, attorneys, accountants,
consultants, and other agents of and from any and all claims, demands,
agreements, contracts, covenants, actions, suits, causes of action, obligations,
controversies, costs, expenses, accounts, damages, judgments, losses,
liabilities, and defenses, of whatsoever kind and nature, in law, equity or
otherwise, whether known or unknown, whether or not concealed or hidden which
each such party have had, may have had or now have, or which any of their
predecessors, successors or assigns hereafter can, shall or may have against any
other such party, based upon or arising out of any matter, cause, facts, thing,
act, omission whatsoever, occurring or existing at any time to and including the
date this Agreed Order is entered, including, but without in any respect
limiting the generality of the foregoing, any and all claims or causes of action
against any of (i) the Kalok Estate, (ii) DZU Corp. and DZU, (iii) TEAC, (iv)
Dooley, and (V) Kaczeus by the other, including, without limitation, any such
claims which were or might have been asserted in this Chapter 11 case, or in any
adversary proceeding that may be commenced or may have been commenced in
connection herewith.
S. TEAC, Newco, DZU Corp. and DZU are each purchasers in good
faith for purposes of Section 363(m) of the Bankruptcy Code.
T. The purchase of certain of Kalok's assets by each of DZU and
TEAC was not controlled by any type of agreement that would be grounds to
avoid such sale under Section 363(n) of the Bankruptcy Code.
18
AGREED ORDER TO COMPROMISE CONTROVERSY
19
U. This Court retains jurisdiction over the parties hereto to enforce
the term and conditions hereof.
V. Kalok is authorized, pursuant to Section 365(a), to assume, and
assign to TEAC, each of the software licenses identified on Exhibit __ hereto.
W. Kalok, DZU, TEAC, DZU Corp., Dooley, Kaczeus and the Committee
shall issue, execute, and deliver such other and further documents and
instruments as may be reasonably necessary to carry out the transactions
approved or provided for in this Agreed Order.
X. Kalok's motions to enter into license agreements with JRA, Inc.,
Kaczeus, Richard Emori, and others shall be withdrawn and dismissed with
prejudice.
Y. The rights and obligations of DZU and DZU Corp., under and pursuant
to all transaction contemplated hereby shall not be limited or impaired by
Exhibit A and B hereto.
Z. Kalok and Newco shall provide DZU and DZU Corp. with reasonable
access to Kalok's books and records, specifically excluding all customer lists
and related
19
AGREED ORDER TO COMPROMISE CONTROVERSY
20
information and documents.
ENTER: Kalok Corporation, Debtor and
Debtor-in-Possession
BANKRUPTCY COURT
By: /s/ David B. Pearce
--------------------------------
Its Duly Authorized Signatory
- ----------------------------
Dated this 4th day TEAC Corporation
of February, 1994.
By: /s/ [sig]
--------------------------------
Its Duly Authorized Signatory
DZU AD, a Bulgarian corporation
By: /s/ Eftim Pandeff
--------------------------------
Its Duly Authorized Signatory
DZU Corporation
By: /s/ Eftim Pandeff
--------------------------------
Its Duly Authorized Signatory
Daniel Dooley, Individually
/s/ Daniel Dooley
------------------------------------
Steven Kaczeus, Individually
/s/ Steven L. Kazeus
------------------------------------
The Official Committee of Unsecured
Creditors Kalok Corporation
By: /s/ J.M. Murray
--------------------------------
Its Duly Authorized Signatory
ATTORNEYS FOR OFFICIAL
COMMITTEE OF UNSECURED CREDITORS
JT Storage, Inc.
By: /s/ J. Tanden
--------------------------------
Its Duly Authorized Signatory
20
AGREED ORDER TO COMPROMISE CONTROVERSY
21
Exhibit H
Agreement Between TEAC, DZU and JT Storage, Inc. With
Respect to Exclusive Sales and Manufacturing Territories
Notwithstanding any other term or condition in the Agreed Order to which this
is attached, any other agreement attached to the Agreed Order (not including
the License Agreement between Newco and TEAC attached to the Agreed Order as
Exhibit A), any other Order of the Bankruptcy Court presiding over the Kalok
case, or any other, document, license or other writing by or between TEAC
Corporation ("TEAC"), DZU-AD, a Bulgarian corporation ("DZU"), DZU Corporation
("DZU Corp"), JT Storage, Inc. ("Newco") and Kalok Corporation ("Kalok") each
of TEAC, DZU, Newco and Kalok, hereby agree as follows:
1. TEAC shall have exclusive sales rights with respect to the IP Assets in
Japan, and nonexclusive sales rights throughout the remainder of the
world except India and the "Eastern Block Countries" (Poland, Czech
Republic, Slovakia, Hungary, Romania, Bulgaria and former Yugoslavia).
2. TEAC shall have exclusive use and manufacturing rights with respect to
the IP Assets in Japan and (co-extensive with [Newco]) "Asia" (the
entire Asian Continent and other countries and territories illustrated
on the attached Map, excluding the countries which constituted the
former Soviet Union,), and nonexclusive manufacturing rights throughout
the remainder of the world except the Eastern Block Countries, the
former Soviet Union, India and Korea.
3. DZU and DZU Corp. shall exclusive sales rights with respect to the IP
Assets in the Eastern Block Countries, and nonexclusive sales rights
throughout the remainder of the world except Japan and India.
4. DZU and DZU Corp. shall have exclusive use and manufacturing rights with
respect to the IP Assets in the Eastern Block Countries and the
countries which constituted the former Soviet Union, and nonexclusive
manufacturing rights throughout the remainder of the world except Japan,
India and Korea.
5. [Newco] shall have exclusive sales rights with respect to the IP Assets
in India, and nonexclusive sales rights throughout the remainder of the
world except Japan and the Eastern Block Countries.
6. [Newco] shall have exclusive use and manufacturing rights with respect
to the IP Assets in India, Korea and (co-extensive with TEAC) Asia, and
nonexclusive manufacturing rights throughout the remainder of the world
except Japan, the Eastern Block Countries and the countries which
constituted the former Soviet Union.
7. For purposes of enforcing the terms hereof, TEAC, DZU, DZU Corp.,
[Newco] and Kalok each (a) consent to exclusive jurisdiction in the
District Court for the ________ District of California; (b) are entitled
to money damages and injunctive relief on account of, as a result of or
upon the occurrence of any breach of the terms hereof;
22
JEFF J. MARWIL
KATTEN MUCHIN & ZAVIS
525 West Monroe Street, Suite 1600
Chicago, Illinois 60661-3693
Telephone No. (312) 902-5200
Attorneys for TEAC CORPORATION
UNITED STATES BANKRUPTCY COURT
NORTHERN DISTRICT OF CALIFORNIA
(San Jose Division)
In re ) Chapter 11
)
KALOK CORPORATION, a California ) Case No. 93-54027-MM
corporation, )
) NOTICE OF ENTRY OF ORDER
Debtor. ) APPROVING AMENDMENT TO
) AGREED ORDER COMPROMISING
Taxpayer I.D. No. 77-0146015 ) CONTROVERSIES
)
- --------------------------------------------------------------------------------
Date: January 20, 1995
Time: 10:00 a.m.
Place: 280 S. First St.,
Rm. 3070
San Jose, California
The Honorable Marilyn Morgan
TO ALL PARTIES IN INTEREST:
PLEASE TAKE NOTICE that the United States Bankruptcy Court for the
Northern District of California (San Jose Division) entered the Order Approving
Amendment to Agreed Order Compromising Controversies (the "Order") on or about
///
///
///
///
///
///
1.
NOTICE OF ENTRY OF ORDER APPROVING AMENDMENT TO AGREED ORDER
TO COMPROMISE CONTROVERSIES
23
January 20, 1995. A true and correct copy of the Order is attached hereto as
Exhibit "A" and incorporated herein by this reference.
Dated: January 24, 1995
GRAY CARY WARE & FREIDENRICH
A Professional Corporation
By: /s/ Lillian Stenfeldt
----------------------------------
Lillian G. Stenfeldt
Attorneys for Debtor/Plaintiff
Kalok Corporation
2.
NOTICE OF ENTRY OF ORDER APPROVING AMENDMENT TO AGREED ORDER
TO COMPROMISE CONTROVERSIES
24
JEFF J. MARWIL
KATTEN MUCHIN & ZAVIS
525 West Monroe Street, Suite 1600
Chicago, Illinois 60661-3693
Telephone No. (312) 902-5200
Attorneys for TEAC CORPORATION
UNITED STATES BANKRUPTCY COURT
NORTHERN DISTRICT OF CALIFORNIA
(San Jose Division)
In re ) Chapter 11
)
KALOK CORPORATION, a California ) Case No. 93-54027-MM
corporation, )
) ORDER APPROVING AMENDMENT
Debtor. ) TO AGREED ORDER
) COMPROMISING CONTROVERSIES
Taxpayer I.D. No. 77-0146015 ) ___________________________
- ----------------------------------
Date: January 20, 1995
Time: 10:00 a.m.
Place: 280 S. First St., Rm. 3070
San Jose, California
The Honorable Marilyn Morgan
THIS MATTER coming to be heard on the Motion of TEAC Corporation,
seeking an Order approving an amendment to the Agreed Order Compromising
Controversies entered by this Court on February 4, 1994 (the "Order"), and the
Court having considered the Motion, and the Court having reviewed the
Stipulation To Amend The Agreed Order Compromising Controversies signed by
Kalok Corporation ("Kalok"), JT Storage, Inc. ("JTS"), TEAC Corp. ("TEAC"),
Pont Peripherals Corporation ("Pont"), fka DZU Corporation and The Official
Unsecured Creditors' Committee (the "Committee") on file herein (the
"Stipulation"), and the Court having conducted a hearing on the Motion,
appearances being noted on the records, and other parties being represented as
indicated on the record and good cause appearing therefor,
1
ORDER APPROVING AMENDMENT TO AGREED ORDER TO COMPROMISE CONTROVERSIES
25
IT IS HEREBY ORDERED, ADJUDGED AND DECREED as follows:
A. The Stipulation is approved; and
B. The Order is amended as follows:
1. Paragraph F, appearing on Page 14, is modified to remove
Western Digital Corporation ("WDC") from the list of collective HDD Companies
as defined in the Order; and
2. JTS, TEAC, and Pont are authorized to make future
modifications to the Order, with respect to other HDD Companies and other
intellectual property matters as agreed between JTS, TEAC and Pont, without
having to obtain additional Bankruptcy Court approval.
Dated: JAN 20 1995 /s/ Marilyn Morgan
------------- -----------------------------------
The Honorable Marilyn Morgan
United States Bankruptcy Judge
2
ORDER APPROVING AMENDMENT TO AGREED ORDER TO COMPROMISE CONTROVERSIES
26
I, Michelle Osiakowski, declare:
I am over the age of eighteen years and not a party to the within
action and am employed in Santa Clara County. I an employed with the law firm
of Gray Care Ware & Freidenrich, a Professional Corporation, 400 Hamilton
Avenue, Palo Alto, California 94301. I am readily familiar with the business
practice at my place of business for collection and processing of
correspondence for mailing with the United States Postal Service.
Correspondence so collected and processed is deposited in the ordinary course
of business.
On January 26, 1995, at my place of business, the:
ORDER APPROVING AMENDMENT TO AGREED ORDER
COMPROMISING CONTROVERSIES
was placed for deposit with the United States Postal Service in a sealed
envelope, with postage prepaid, addressed as follows:
Office of the U.S. Trustee
Katherine Rosenblatt, Esq.
Office of the United States Trustee
280 S. First Street, Room 268
San Jose, CA 95113
Attorneys for TEAC Corporation
Jeff J. Marwil, Esq.
Fulbright & Jaworski
525 West Monroe Street, Suite 1600
Chicago, IL 60661-3693
Attorneys for JT Storage, Inc.
Lawrence Weeks, Esq.
Riordan & McKenzie
5743 Corsa Avenue, Suite 116
Westlake Village, CA 91362
NOTICE OF ENTRY OF ORDER APPROVING AMENDMENT TO AGREED ORDER
TO COMPROMISE CONTROVERSIES
27
Attorneys for Creditors Committee
Craig Prim, Esq.
Murray & Murray
3030 Hanson Way, Suite 200
Palo Alto, CA 94306
DZU Corporation
Mr. Dan Dooley
c/o Pont Peripherals Corporation
912 West Maude Avenue
Sunnyvale, CA 94086
DZU A.D.
Mr. Eftim Pandeff
c/o Mr. Dan Dooley
Pont Peripherals Corporation
912 West Maude Avenue
Sunnyvale, CA 94086
and that envelope was placed for collection and mailing on that date following
ordinary business practices.
I declare under penalty of perjury under the laws of the State of
California and the United States of America that the above is true and correct.
Executed on January 26, 1995, at Palo Alto, California.
/s/ Michelle Osiakowski
-----------------------------------
Michelle Osiakowski
4
NOTICE OF ENTRY OF ORDER APPROVING AMENDMENT TO AGREED ORDER
TO COMPROMISE CONTROVERSIES