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EXHIBIT 10.11
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SETTLEMENT AND LICENSE AGREEMENT
This Settlement and License Agreement (this "Agreement") is made and
entered into effective as of the 4th day of March, 2004 (the "Effective Date"),
by and between Intellisync Corp., a Delaware corporation ("Intellisync"), and
Extended Systems Incorporated, a Delaware corporation ("ESI") (each a "party"
and collectively the "parties").
RECITALS
WHEREAS Intellisync has filed a lawsuit against ESI in the United
States District Court for the Northern District of California, Oakland Division,
Case No C02-1916 DLJ ("the Litigation") concerning Intellisync's allegations,
among other things, that ESI's synchronization software products infringe U.S.
Patent Nos. 5,392,390; 5,666,553; 5,684,990; 5,701,423; 5,943,676; 5,141,664;
6,212,529; and 6,405,218; all of which are owned by Intellisync;
WHEREAS ESI has threatened, but has not filed, a counterclaim relating
to, among other things, antitrust and unfair competition;
WHEREAS Intellisync and ESI desire to settle each of the claims
asserted in the Complaint on the terms and conditions respectively set forth in
this Agreement; and
WHEREAS ESI desires to take certain non-exclusive patent licenses from
Intellisync;
NOW, THEREFORE, FOR AND IN CONSIDERATION OF THE COVENANTS, CONDITIONS
AND UNDERTAKINGS HEREINAFTER SET FORTH, IT IS HEREBY AGREED BY AND BETWEEN THE
PARTIES AS FOLLOWS:
A G R E E M E N T
1. Definitions.
"Affiliate" shall mean any legal entity (such as a corporation,
partnership, or limited liability company) which directly or indirectly
controls, is controlled by, or is under common control with a party or its
successors or assigns, or any successor or assign of such an entity. For the
purposes of this definition, the term "control" means (i) beneficial ownership
of at least fifty percent (50%) of the voting securities of a corporation or
other business organization with voting securities or (ii) a fifty percent (50%)
or greater interest in the net assets or profits of a partnership or other
business organization without voting securities.
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"Licensed Patents" shall mean United States Patents Nos. [***], as
well as all foreign counterpart patents and patent applications thereto; all
reissues, reexaminations, renewals, extensions, divisionals, continuations, and
continuations-in-part of the foregoing patents and patent applications; and any
patents which issue on the foregoing.
"Licensed Product" shall mean any product, process or service
thereof that, absent the license granted hereunder, would infringe one or more
claims of the Licensed Patents.
2. License Grants.
2.1 License Grant. Intellisync hereby grants to ESI a nonexclusive,
worldwide, irrevocable, fully paid-up right and license under the Licensed
Patents (including the right to grant sublicenses only to (1) ESI's Affiliates,
(2) end user customers buying Licensed Products from ESI or its Affiliates, (3)
Original Equipment Manufacturer customers buying Licensed Products from ESI or
its Affiliates, (4) ESI distributors buying for resale Licensed Products from
ESI or its Afffiliates, (5) ESI resellers buying for resale Licensed Products
from ESI or its Affiliates) and (6) Independent Software Vendor (ISV) customers
buying Licensed Products from ESI or its Affiliates), for the respective lives
of each of the Licensed Patents:
(a) to make, use, lease, sell, offer to sell, import, export, and
otherwise transfer Licensed Products, and to practice any method or process and
use any product involved in the manufacture or use thereof; and
(b) to have made Licensed Products by another manufacturer for
the use, lease, sale, offer for sale, import, or export by ESI.
2.2 Covenant Not to Sue. Commencing on the Effective Date and ending
on the fifth anniversary of this Agreement, Intellisync and ESI each hereby
covenant not to sue on the basis of any patent, US or foreign, for the term of
this Agreement, and/or any extensions or renewals thereof, or on any claims
based on breach of the End User License Agreement for Satellite Forms version
4.1 or earlier, against the other party, or its Affiliates, its distributors,
its resellers, its end user customers buying Licensed Products from ESI or its
Affiliates, its Original Equipment Manufacturer customers buying Licensed
Products from ESI or its Affiliates, or its Independent Software Vendor (ISV)
customers buying Licensed Products from ESI or its Affiliates, hereunder for any
claim of patent infringement. No patent infringement damages shall accrue during
this five-year period. All applicable statutes of limitation shall be tolled
during this five-year period. Neither party may at any time assert any cause of
action or defense (such as, by way of example and not by way of limitation,
laches, waiver, or delay) based in any way on the other party's failure to
assert a claim or commence an action during this five-year period.
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted
portions have been filed separately with the Commission.
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3. Consideration.
3.1 In consideration of the licenses granted and covenants made
herein, ESI shall pay to Intellisync a one-time fee of Two Million dollars
($2,000,000) within two (2) business days from execution of this Agreement; the
parties agree that this payment reflects a royalty of [***] assessed on the
parties' estimate of past and future ESI revenue in respect of Licensed
Products.
3.2 In partial consideration for Intellisync's grant of licenses
hereunder and the dismissal of the Action, ESI agrees that, for a period of five
years from the Effective Date, it shall not cause or assist, directly or
indirectly, any actions in the United States courts, the U.S. Patent and
Trademark Office, any administrative law body, any foreign patent office, or any
foreign court, which might affect the validity or issuance of any Intellisync
patents or patent applications.
3.3 In further partial consideration for Intellisync's grant of
licenses hereunder and the dismissal of the Action, ESI agrees that it shall not
voluntarily support, assist, or aid any third party in patent litigation
involving Intellisync.
3.4 In further partial consideration for Intellisync's grant of
licenses hereunder and the dismissal of the Action, ESI acknowledges the
validity of each of the Licensed Patents, and agrees that it, its Affiliates,
and any of its successors in interest under this Agreement shall not assert the
invalidity of any of the Licensed Patents as a defense to a patent infringement
action.
3.5 In further partial consideration for Intellisync's grant of
licenses hereunder and the dismissal of the Action, ESI shall mark, or shall
cause to be marked, on the documentation (paper or electronic) accompanying the
next release and all future releases of all Licensed Products with a notice
containing the words "Manufactured and sold under one or more of the following
patents" and the following patent numbers: [***]. Upon the issuance of an
additional patent included in the Licensed Patents, such as a continuation or
continuation-in-part, Intellisync shall notify ESI, and within a practical
period of time, ESI shall mark, or shall cause to be marked, all new production
of Licensed Products with such patent number in a like matter. If either party
experiences a change of control permitted under this Agreement or changes their
name, the terms Intellisync or ESI in this paragraph shall be changed to their
new names in subsequent uses within a commercially reasonable period of time.
Marking products shall not be used as an admission of infringement as to ESI or
any successor in interest.
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted
portions have been filed separately with the Commission.
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4. Settlement of Pending Litigation.
Within two (2) business days of Intellisync's receipt of the payment
called for in Section 3.1, Intellisync and ESI shall cause to be filed in the
action pending in the United States District Court for the Northern District of
California, Oakland Division (Case No. C02-1916 DLJ) a fully executed stipulated
order in the form attached hereto as Exhibit 1. Each party will bear its own
costs, attorneys' fees, and expenses relating to the Litigation.
5. Term and Termination.
5.1 Term. The term of this Agreement shall be from the Effective
Date and remain in effect for a period of five (5) years, unless earlier
terminated in accordance with the provisions of this Agreement.
5.2 Termination. A party hereto may, but is under no obligation to,
terminate this Agreement upon sixty (60) days written notice of termination to
the other party given at any time upon or after:
(a) the filing by the other party of a petition in bankruptcy or
insolvency;
(b) any adjudication that the other party is bankrupt or
insolvent;
(c) the making by the other party of any assignment for the
benefit of creditors; or
(d) the institution of any proceedings for the liquidation or
winding up of the other party's business or for the termination of its corporate
charter.
6. Representations and Warranties.
6.1 Intellisync Representations and Warranties. Intellisync hereby
represents and warrants to ESI that (i) it has the legal power, authority and
right to enter into this Agreement and to perform all of its obligations
hereunder, and (ii) it has not previously granted, and will not grant, any
rights in the Licensed Patents, the exclusivity provisions of which would be
inconsistent with the rights granted to ESI herein.
6.2 ESI Representations and Warranties. ESI hereby represents and
warrants to Intellisync that it has the legal power, authority and right to
enter into this Agreement and to perform all of its obligations hereunder.
7. Confidentiality
7.1 Either party may disclose the existence of this Agreement and
the terms of this Agreement, provided, however, the amount, rates, and/or
magnitude of any and all payments and royalties hereunder shall be confidential
and therefore redacted in public disclosures unless specifically required to be
disclosed to regulatory authorities. A copy of this Agreement, redacted in
accordance with the above provision, is attached as Exhibit 2.
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7.2 Notwithstanding the above, either party hereto may disclose this
Agreement to such party's agents, attorneys and other representatives or any
court of competent jurisdiction or any other party empowered hereunder as
reasonably required to resolve any dispute between the parties hereto or as
otherwise required by law.
7.3 The parties understand and acknowledge that each may be required
by law to file, or otherwise make public, material information about this
Agreement. In such event the disclosing party will submit the redacted Agreement
to the body requiring the disclosure. If the requiring body requires information
that has been redacted, the disclosing party will notify the other party to
allow them to consult with the disclosing party regarding the response to the
requiring body. Only if the response is denied or fails will the readacted
information be submitted to the requiring body. The disclosing party will
provide the other party sufficient time so as not to delay the disclosing party
in complying with the disclosure request or any deadlines set therein. In all
events, both parties will make commercially reasonable efforts to maintain the
redacted portions of the Agreement confidential.
7.4 Press Releases and Statements. The parties will agree on the
form of a press release as set forth in Exhibit 3 or other statement announcing
the existence (but not the financial terms) of this Agreement. The parties agree
that, approximately contemporaneously with the issuance of this press release,
ESI may file an 8K statement with the Securities and Exchange Commission
disclosing the total amount of payment required under Section 3.1.
8. Releases.
8.1 Releases. Each party, for itself, its legal representatives,
predecessors, successors, and assigns, and each of its past and present
officers, directors, shareholders, employees, Affiliates, divisions,
partnerships, joint ventures, attorneys, and agents, hereby unconditionally
releases and forever discharges the other party and each of its legal
representatives, predecessors, successors, and assigns, and each of its past and
present officers, directors, shareholders, employees, Affiliates, divisions,
partnerships, joint ventures, attorneys, agents, and users, from any and all
claims, causes of action, demands, costs, obligations, damages, and liabilities
of every kind, nature, and description whatsoever arising before the Effective
Date, whether in law or in equity, individual or derivative, state or federal,
U.S. or foreign, known or unknown, suspected or unsuspected, whether or not
concealed or hidden, that arose under or relate to, or were asserted or could
have been asserted in connection with, the Complaint.
8.2 Section 1542 Waiver. As further consideration for the Agreement
and for the purpose of implementing full and complete mutual releases,
Intellisync and ESI hereby expressly acknowledge and agree that the releases
described above extend to all claims of every nature and kind, known or unknown,
suspected or unsuspected, past, present or future, however arising, and that any
and all rights granted to such pursuant to Section 1542 of the California Civil
Code or any analogous applicable other state, federal or foreign law or
regulation are hereby expressly waived. Section 1542 of the Civil Code of the
State of California reads as follows:
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A general release does not extend to claims which the creditor does
not know or suspect to exist in his favor at the time of executing the release,
which if known by him must have materially affected his settlement with the
debtor.
9. Miscellaneous.
9.1 Assignment; Change of Control. The rights or privileges provided
for in this Agreement may be assigned or transferred by Intellisync to a third
party, provided that Intellisync provides written notice to ESI of such
assignment and such third party promptly accepts in writing such assignment or
transfer and accepts all obligations under this Agreement.
9.2 The license granted to ESI in Section 2.1 of this Agreement
shall not be assignable (other than to an entity which is an Affiliate of ESI)
without the prior written consent of Intellisync and any attempt to assign it
without that consent will be void. Notwithstanding the foregoing, ESI may
assign, upon written notice to Intellisync, the license grant in Section 2.1 of
this Agreement to the surviving corporation in any acquisition, merger or
consolidation to which it is a party or to any entity who acquires all or
substantially all of ESI's capital stock or assets ("Change of Control")
provided that such surviving corporation (a) pay to Intellisync an additional
one-time fee of [***] upon the closing of such Change of Control (in addition to
any sums owed or already paid under this Agreement) and (b) is not one of the
Restricted Entities set forth in Exhibit 4. Any purported transfer, assignment
or delegation in violation of the foregoing will be null and void and of no
force or effect. In no event may ESI transfer to another entity the covenant not
to sue contained in section 2.2 of this Agreement, and in no event shall the
limitation on the accrual of damages in section 2.2 apply to any products sold
by such third party prior to or following a Change of Control. However, no
damages shall accrue on ESI's own sales of Licensed Products between the
Effective Date of this Agreement and the earlier of (a) file years, or (b) the
date of any such Change of Control.
9.3 Entire Agreement. This Agreement, together with any Exhibits
attached hereto, constitutes the entire agreement between the parties with
respect to the subject matter hereof and supersedes any prior understandings,
agreement or representations by or between the parties, written or oral, that
may have related in any way to the subject matter hereof.
9.4 Independent Contractors. The relationship of Intellisync and ESI
established by this Agreement is that of independent contractors. Nothing in
this Agreement shall be construed to create any other relationship between
Intellisync and ESI. Neither party shall have any right, power or authority to
assume, create or incur any expense, liability or obligation, express or
implied, on behalf of the other.
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted
portions have been filed separately with the Commission.
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9.5 Force Majeure. Neither party hereto shall be in default by
reason of any failure in the performance of this Agreement in accordance with
its terms if such failure is due to acts of God, war, strikes, riots, storms,
fires or any other cause whatsoever beyond the reasonable control of the party.
The party so prevented or delayed in the performance of its obligations shall
promptly notify the other party and shall be excused from such performance to
the extent and during the period of such prevention or delay.
9.6 Compliance with Laws. In exercising its rights under this
Agreement, each party shall fully comply in all material respects with the
requirements of any and all applicable laws, regulations, rules and orders of
any governmental body having jurisdiction over the exercise of the rights
hereunder.
9.7 No Waiver. A waiver, express or implied, by either party of any
right under this Agreement or of any failure to perform or breach hereof by the
other party shall not constitute or be deemed to be a waiver of any other right
hereunder or of any other failure to perform or breach hereof by such party,
whether of a similar or dissimilar nature thereto.
9.8 Modifications. No amendment of any provisions of this Agreement
shall be valid unless the same shall be in writing and signed by both parties.
9.9 Notices. Any notice or report required or permitted to be given
or made under this Agreement by either party shall be in writing and delivered
to the other party at its address indicated below (or to such other address as a
party may specify by notice hereunder) by courier or by registered or certified
airmail, postage prepaid, or by facsimile; provided, however, that all facsimile
notices shall be promptly confirmed, in writing, by registered or certified
airmail, postage prepaid. All notices shall be effective as of the date received
by the addressee at the address provided for the addressee.
If to Intellisync:
INTELLISYNC CORP.
2550 N. First Street, Suite 500
San Jose, CA 95131
Attention: Woodson M. Hobbs and Chuck Runge
with a copy to:
Milbank Tweed Hadley & McCloy, LLP
3000 El Camino Real
Five Palo Alto Square, 7th Floor
Palo Alto, CA 94306
Attention: James Pooley and L. Scott Oliver
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If to ESI:
EXTENDED SYSTEMS, INC.
5777 N. Meeker Avenue
Boise, ID 83711
Attention: Charles W. Jepson and Valerie A. Heusinkveld
with a copy to:
TOWNSEND and TOWNSEND and CREW LLP
370 Lytton Avenue
Palo Alto, CA 94301
Attention: Theodore G. Brown
Any party may change the address of designated recipient to which notices,
requests, demands, claims and other communications hereunder are to be delivered
by giving the other party notice in the manner herein set forth.
9.10 Governing Law. This Agreement shall be construed, and the legal
relations between the parties hereto shall be determined, in accordance with the
laws of the State of California, without reference to conflicts of laws
principles. The parties agree that the U.S. District Court for the Northern
District of California, as applicable, shall retain jurisdiction over this
Agreement for the purpose of resolving any disputes relating to it and its
subject matter.
9.11 Construction. The headings of sections are inserted for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this Agreement.
9.12 Severability. If any term or provision of this Agreement, or
the application of such term or provision to either party or circumstance, is
held to be illegal, invalid or unenforceable, then, the remainder of this
Agreement, or the application of such term or provision to such party or
circumstances other than those to which it is held illegal, invalid or
unenforceable, shall not be affected thereby.
9.13 Trademarks. Nothing in this Agreement shall be construed as
conferring upon either party the right to include in advertising, packaging, or
other commercial activity any reference to the other party, its trademarks,
trade names, service marks, or other trade identity in a manner likely to cause
confusion.
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9.14 Relationship of Parties. Nothing in this AGREEMENT shall be
construed as creating a partnership, joint venture, or other formal business
organization of any kind.
9.15 No Other Warranties. EXCEPT AS SPECIFICALLY SET FORTH HEREIN,
NO OTHER WARRANTIES OR REPRESENTATIONS, EITHER EXPRESS OR IMPLIED, ARISING BY
LAW OR OTHERWISE, INCLUDING BUT NOT LIMITED TO IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, ARE GIVEN BY EITHER PARTY
UNDER THIS AGREEMENT, including but not limited to, any warranty or
representation: (a) as to the validity of any patent; (b) that any manufacture,
importation, sale, lease, use, or other disposition of products will be free
from infringement of a third party's intellectual property rights; (c) that
either party will enforce any intellectual property rights it may have in any
patent against third parties; (d) that either party will secure or maintain any
patent; or (e) as to the quality, merchantability, or fitness for a particular
purpose of any product. IN NO EVENT SHALL EITHER PARTY HAVE ANY OBLIGATION OR
LIABILITY ARISING FROM TORT, FOR LOSS OF REVENUE OR PROFIT, OR FOR SPECIAL,
INDIRECT, INCIDENTAL, OR CONSEQUENTIAL DAMAGES HOWEVER CAUSED, UNDER ANY THEORY
OF LIABILITY, ARISING IN ANY WAY OUT OF THIS AGREEMENT OR EITHER PARTY'S PATENT
RIGHTS.
9.16 No Other Promises. Nothing contained in this Agreement shall be
construed as:
9.16.1 restricting the right of either party or any of its
Affiliates to make, use, sell, lease, or otherwise dispose of any particular
product or products not herein licensed;
9.16.2 conferring any license or other right, by implication,
estoppel or otherwise, under any patent application, patent, or patent right,
except as herein expressly granted under the Licensed Patents;
9.16.3 conferring any license or right with respect to any
trademark, trade or brand name, a corporate name of either party, any of their
respective Affiliates, or any other name or mark or contraction, abbreviation,
or simulation thereof;
9.16.4 imposing on either party any obligation to institute any
suit or action for infringement of any patents, or to defend any suit or action
brought by a third party that challenges or concerns the validity of any patents
licensed under this Agreement;
9.16.5 a warranty or representation by either party that any
manufacture, use, sale, lease or other disposition of Licensed Products will be
free from infringement of any patent other than the patents licensed herein;
9.16.6 imposing on either party any obligation to file any patent
application, secure any patent, or maintain any patent in force; or
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9.16.7 an obligation on either party to furnish any manufacturing
or technical information under this Agreement except as the same is specifically
provided for herein.
9.17 Counterparts. This Agreement and any amendments, waivers,
consents or supplements hereto may be executed in any number of counterparts,
and by different parties in separate counterparts, each of which when so
executed and delivered shall be deemed an original, but all such counterparts
together shall constitute but one and the same agreement. Each such agreement
shall become effective upon the execution of a counterpart hereof or thereof by
each of the parties hereto.
IN WITNESS WHEREOF, each party has caused this Agreement to be
executed as of the date first written above by its duly authorized
representatives.
AGREED TO: AGREED TO:
Intellisync Corp. Extended Systems, Inc.
By: /s/ WOODSON HOBBS By: /s/ CHARLES W. JEPSON
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Name: WOODSON HOBBS Name: CHARLES W. JEPSON
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Title: PRESIDENT & CEO Title: PRESIDENT & CEO
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Date: MARCH 4, 2004 Date: MARCH 4, 2004
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