EXHIBIT 10.2
SETTLEMENT AND LICENSE AGREEMENT
This Settlement and License Agreement ("Agreement") is dated as of November 24,
2003 (the "Effective Date") by and between IP Learn, LLC, a California limited
liability company ("IpLearn" or "Licensor"), on the one hand, and DigitalThink,
Inc., a Delaware corporation ("DigitalThink" or "Licensee"), on the other hand.
IpLearn and Licensee are sometimes referred to in this Agreement as a "Party"
and collectively as the "Parties."
RECITALS
WHEREAS IpLearn and DigitalThink are parties to a civil action, IP Learn LLC v.
DigitalThink, Inc., KPMG Consulting, Inc., Electronic Data Systems Corporation
and Does 1 through 10, Civil Action No. C-02-04114 PJH, pending in the United
States District Court for the Northern District of California (the "Action");
and
WHEREAS the Parties wish to settle the Action on the terms and conditions set
forth herein; and
WHEREAS KPMG Consulting, Inc., now known as BearingPoint, Inc. ("BearingPoint"),
and Electronic Data Systems Corporation ("EDS") are not parties to this
Agreement, but, rather, are acknowledged, explicit third-party beneficiaries
hereof;
NOW, THEREFORE, in consideration of the terms and conditions set forth below,
the Parties do agree as follows:
1. License. Subject to the terms and conditions of this Agreement (including but
not limited to paragraph 7(b)), and payment of the consideration specified in
paragraph 3 below in accordance with the provisions of that paragraph, IpLearn
grants to Licensee a worldwide, non-exclusive, non-transferable (except as
provided in paragraph 8 below), license, without the right to sublicense (except
as provided in paragraph 4 below), to the patents listed in Exhibit A, together
with all continuations, continuations-in-part, divisionals, reissues,
reexaminations, or foreign counterparts of those patents ("Licensed Patents") to
make, have made, use, offer to sell, sell and otherwise distribute and import
products and services developed by Licensee or distributed under Licensee's
brand (the "Licensed Products").
The Parties agree that the first sale doctrine and patent exhaustion shall be
deemed to apply to the Licensed Patents with respect to the sale or distribution
of Licensed Products sold or distributed by Licensee. Accordingly, the parties
agree and acknowledge that the license granted in this Agreement will cover the
use by all of DigitalThink's direct or indirect customers, distributors,
resellers, service providers and other users and/or licensees of the Licensed
Products sold or otherwise distributed by DigitalThink pursuant to this
Agreement. For further clarification of the above sentence, and not by way of
limitation, the Parties agree and acknowledge that DigitalThink's direct and
indirect customers and sublicensees (including EDS and its direct and indirect
wholly-owned subsidiaries, and BearingPoint and its affiliates) have the right
to use, offer to sell, sell, customize, provide products and services utilizing,
and otherwise distribute and import the Licensed Products.
DigitalThink acknowledges and agrees that the licenses granted hereunder are
intended to cover only the products of DigitalThink, and are not intended to
cover manufacturing activities that DigitalThink may undertake on behalf of
third parties (patent laundering activities). By way of example only, a Licensed
Product will be disqualified as a Licensed Product if such product is
manufactured on behalf of a third party from designs received in a substantially
completed form from a third party for resale to or on behalf of that party.
2. Representations and Warranties.
(a) IpLearn represents and warrants that it owns the Licensed Patents and that
it has the full right and power to grant the license set forth in paragraph 1.
IpLearn further represents and warrants that it is a limited liability company
organized and in good standing under the laws of the state of California, and
has all necessary power and authority, and has taken or will take all actions
necessary, to execute, deliver and perform its obligations under this Agreement.
(b) IpLearn represents and warrants to Licensee that as of the Effective Date of
this Agreement, (i) there is no pending litigation brought by a third party that
contests the validity, ownership or right of IpLearn to use the Licensed Patents
that was not asserted in response to a suit by IpLearn against such third party;
and (ii) it has no Knowledge of any patent or patent application (1) owned by
Xx. Xxxx or Xx. Xx that has not been assigned to IpLearn that is currently being
(or that upon issuance would be) infringed by Licensee or (2) owned by or
licensed to IpLearn that is currently being (or that upon issuance would be)
infringed by Licensee. For purposes of this paragraph, "Knowledge" with respect
to IpLearn shall include but not be limited to the actual knowledge of Xx. Xxxxx
Xxxx and Xx. Xxx Xx.
(c) Licensee represents that it is a corporation organized and in good standing
under the laws of the state of Delaware, and has all necessary power and
authority, and has taken or will take all actions necessary, to execute, deliver
and perform its obligations under this Agreement.
3. Consideration.
(a) In consideration of the releases described below and as full consideration
for the license grant, Licensee shall pay IpLearn a non-refundable license fee
of Seven Hundred Fifteen Thousand U.S. Dollars ($715,000.00) (the "Cash
Consideration"), payable in installments as provided below, plus 287,784 shares
of DigitalThink common stock (the "Stock Consideration"), which Licensee will
issue to IpLearn or its designees pursuant to a Share Allotment Agreement to be
executed by the Parties concurrently herewith (the "Share Allotment Agreement").
The Stock Consideration will be issued by Licensee to IpLearn or its designees
as soon as possible after execution of the Share Allotment Agreement and in any
event within thirty (30) days after the effective date thereof and the Cash
Consideration shall be payable as follows:
(i) One Hundred Fifty Thousand U.S. Dollars ($150,000.00) within 2 days of the
Effective Date of this Agreement;
(ii) One Hundred Fifty Thousand U.S. Dollars ($150,000.00) on January 2, 2004;
(iii)One Hundred Thousand U.S. Dollars ($100,000.00) on each of May 14, 2004,
November 15, 2004, and May 16, 2005; and
(iv) One Hundred Fifteen Thousand U.S. Dollars ($115,000.00) on November 15,
2005.
Payments shall be made by wire transfer to the trust account of Mount &
Stoelker, as follows:
Beneficiary Name: Xxxxxx X. Mount, Mount & Stoelker Attorney Trust Fund
Beneficiary Account Number: 0101008589
Name of receiving bank: Bridge Bank, 0000 Xx Xxxxxx Xxxx,
Xxxxx Xxxxx, XX 00000
Routing number of bank: Bridge Bank Routing #000000000
Upon payment in full of the Cash Consideration and issuance in full of the Stock
Consideration, the license under paragraph 1 will be deemed fully paid-up and
irrevocable (except as set forth in paragraph 7(b)). Notwithstanding the
foregoing and any other provision contained in this Agreement that permits
IpLearn to terminate any or all of the rights granted to Licensee hereunder
(including, but not limited to paragraph 7(b)), after (i) the first payment of
the Cash Consideration and (ii) the issuance in full of the Stock Consideration,
the rights conferred hereunder to EDS and its direct and indirect wholly-owned
subsidiaries, and BearingPoint and its affiliates, shall be irrevocable.
4. Sublicensing. Licensee, and its assignees, if any, under paragraph 8 below,
will be entitled to sublicense the rights granted under the license to any of
Licensee's majority-owned subsidiaries but will not otherwise have the right to
sublicense. A subsidiary is entitled to exercise such sublicense rights only so
long as it remains a majority-owned subsidiary of Licensee. Licensee guarantees
the performance of any sublicensed subsidiary.
5. Releases and Dismissal.
(a) IpLearn Releases to Licensee. Except with respect to the obligations created
by or arising out of this Agreement, and subject to Licensee's payment in full
of the consideration specified in paragraph 3 above (including without
limitation the issuance of the Stock Consideration), IpLearn does hereby for
itself and its respective legal successors, heirs and assigns, release and
absolutely discharge Licensee, and each of its current and former employees,
representatives, shareholders, agents, officers, directors, parents and
subsidiaries of and from any and all claims, demands, damages, debts,
liabilities, accounts, reckonings, obligations, costs, expenses, liens,
attorneys' fees, actions and causes of action of every kind and nature
whatsoever, known or unknown, arising at any time prior to the Effective Date.
(b) IpLearn Limited Release to Third Parties. Subject to (i) in the case of EDS
and its direct and indirect wholly-owned subsidiaries, and BearingPoint and its
affiliates, Licensee's first payment of the Cash Consideration pursuant to
paragraph 3(a)(i) and the issuance in full of the Stock Consideration pursuant
to paragraph 3(a), and (ii) in the case of all other third parties, Licensee's
payment in full of the consideration specified in paragraph 3 above (including
without limitation the issuance of the Stock Consideration), IpLearn does hereby
for itself and its respective legal successors, heirs and assigns, release and
absolutely discharge Licensee's direct and indirect customers, distributors,
resellers, service providers, and other users and/or licensees to whom any of
the Licensed Products were sold or otherwise distributed by Licensee (or a third
party authorized by Licensee to do the same) prior to the Effective Date from
any and all claims, demands, damages, debts, liabilities, accounts, reckonings,
obligations, costs, expenses, liens, attorneys' fees, actions and causes of
action of every kind and nature whatsoever, arising out of or in connection with
their use of the Licensed Products (including, but not limited to, all claims
arising as a result of or in connection with the Action), at any time prior to
the Effective Date. IpLearn acknowledges and agrees that BearingPoint and its
affiliates, and EDS and its direct and indirect wholly-owned subsidiaries, are
specifically included in the release set forth in this paragraph 5(b).
For the sake of clarity, this release is not intended to preclude IpLearn from
bringing any action or pursuing any remedy against any third party based on
activities that are not licensed under this Agreement.
(c) Licensee Releases to IpLearn. Except with respect to the obligations created
by or arising out of this Agreement, Licensee does hereby for itself and its
respective legal successors, heirs and assigns, release and absolutely discharge
IpLearn, and each of its current and former employees, representatives,
shareholders, agents, officers, directors, parents, subsidiaries, past and
present, of and from any and all claims, demands, damages, debts, liabilities,
accounts, reckonings, obligations, costs, expenses, liens, attorneys' fees,
actions and causes of action of every kind and nature whatsoever, known or
unknown, arising at any time prior the Effective Date.
(d) Unknown Claims. IpLearn and Licensee expressly acknowledge and agree that
this Agreement fully and finally releases and forever resolves all claims
referenced in subparagraphs (a), (b) and (c) above, including those that are
unknown, unanticipated or unsuspected or that may hereafter arise as a result of
the discovery of new and/or additional facts, and each of the Parties expressly
waive all rights under Section 1542 of the Civil Code of California, which the
Parties each acknowledge they have read and understood and which provides as
follows:
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.
(e) Dismissals. IpLearn will dismiss the Action pursuant to a stipulated
dismissal in the form set forth in Exhibit D within 24 hours after receipt by
IpLearn of (i) the first payment of the Cash Consideration and (ii) the issuance
in full of the Stock Consideration. Each Party will bear its own attorneys' fees
and costs. Notwithstanding the foregoing, in the event of an uncured breach of
Licensee's payment obligations set forth in paragraph 3, (1) the dismissal with
prejudice shall be null and void as to all entities except with respect to EDS
and its direct and indirect wholly-owned subsidiaries, and BearingPoint and its
affiliates, (2) IpLearn shall be entitled to reassert the claims in the Action
against Licensee, and (3) Licensee will not assert that the claims are barred.
Licensee acknowledges and agrees that in no event shall the dismissal of the
Action with prejudice prevent IpLearn from suing Licensee for infringement with
respect to Licensed Products in existence as of the Effective Date for
infringements occurring after the date of the settlement if the licenses in this
Agreement are no longer in effect, whether based on a theory of res judicata or
otherwise.
6. Publicity; Confidentiality.
(a) Press Release. Within seven (7) days after the Effective Date, IpLearn may
issue a press release, substantially in the form attached hereto as Exhibit B.
Within seven (7) days after the Effective Date, DigitalThink may issue a press
release, substantially in the form attached hereto as Exhibit C. IpLearn will be
entitled to identify Licensee as a licensee under the Licensed Patents in
IpLearn's promotional material, including its website. Licensee will be entitled
to identify itself as a licensee under the Licensed Patents in Licensee's
promotional material, including its website.
(b) Confidentiality. Except as provided in paragraph 6(a), the terms of this
Agreement shall be held in confidence and not disclosed to any third party,
except (i) as may be required by law or a governmental agency with jurisdiction,
provided that the Party discloses only the minimum that in the opinion of its
legal counsel is required by law or such governmental agency, (ii) as may be
required by a court order, provided that the Party notifies the other Party in
advance and cooperates with the other Party in seeking a protective order to
protect the confidentiality of such information, (iii) to its legal and
financial advisors and accountants, and (iv) to potential investors, lenders,
purchasers of the Party's business, merger parties, and underwriters in
connection with their due diligence in future financings, loan transactions,
acquisitions, mergers or public offerings, provided that such persons or
entities agree in writing to keep the terms and conditions of this Agreement
confidential.
7. Term and Termination of License.
(a) Term. The license granted under this Agreement is effective as of the
Effective Date and continues until the last to expire of the Licensed Patents,
unless terminated sooner as provided in paragraph 7(b) below.
(b) Termination. Except with regard to the rights of EDS and its direct and
indirect wholly-owned subsidiaries, and BearingPoint and its affiliates, IpLearn
will have the right to terminate this Agreement, including, without limitation,
the license granted under paragraph 1, in the event (i) Licensee fails to make
any payment of the Cash Consideration or issue the Stock Consideration under
paragraph 3 when due, and has not cured such material breach within twenty (20)
days of receiving notice of that breach from IP Learn or (ii) Licensee
dissolves, liquidates, ceases actively to conduct business, files a voluntary
bankruptcy petition under Chapter 7 of the U.S. Bankruptcy Code or is
adjudicated bankrupt in an involuntary proceeding under Chapter 7 of the U.S.
Bankruptcy Code.
8. Assignment/Change of Control.
(a) Licensee shall have the right to assign (subject to the provisions below)
this Agreement and the licenses granted under it (in its entirety) only to (i) a
successor to substantially all of Licensee's business in connection with a
Change of Control (as defined below); and (ii) any one of Licensee's
majority-owned subsidiaries, which may thereafter re-assign the Agreement and
the licenses granted under it back to Licensee. Assignments contrary to these
terms will be null and void from the beginning.
(b) As used in this paragraph 8, "Change of Control" means a transaction or a
series of related transactions in which (1) one or more related parties who did
not previously own more than a fifty percent (50%) interest in Licensee obtain
more than a fifty percent (50%) interest in Licensee, or (2) Licensee merges
with or transfers substantially all of its assets to a third party in which the
shareholders of Licensee immediately before the transaction own less than a
fifty percent (50%) interest in the acquiring or surviving entity immediately
after the transaction, or (3) Licensee acquires, by merger, acquisition of
assets or otherwise, all or any portion of another legal entity such that the
shareholders of such acquired entity immediately before the transaction own more
than a fifty percent (50%) interest in Licensee after the transaction. If
Licensee assigns rights to a majority-owned subsidiary under section (ii) of
paragraph 8(a), the subsidiary shall be entitled to exercise those rights only
so long as it remains a majority-owned subsidiary of Licensee. If Licensee
assigns rights to a majority-owned subsidiary under paragraph 8(a)(ii) and the
subsidiary later ceases to be a majority-owned subsidiary of Licensee, the
assigned rights shall immediately and automatically revert back to Licensee.
(c) In the event of any permitted assignment under paragraph 8(a)(i), above then
all amounts not yet paid by Licensee pursuant to paragraph 3 shall become due
and payable within 10 days
of the assignment and any Stock Consideration not yet issued shall be issued as
soon as possible after the assignment.
(d) In the event of an assignment to an individual or entity as permitted under
paragraph 8(a)(i) above or in the event of an assignment to a majority owned
subsidiary created by the acquisition of a company with whom IPLearn is in
active litigation at the time of the assignment (each a "Successor Entity"), the
following conditions will apply:
(i) The definition of Licensed Products will be deemed limited and amended, as
of the effective date of the assignment, to include only those Licensed
Products that have been commercially released by Licensee (and not the
Successor Entity), released for beta testing by Licensee (and not the
Successor Entity) or coded by Licensee (and not the Successor Entity)
before such date and any future versions of such Licensed Products that are
a natural evolution of the prior versions;
(ii) No additional payments shall be due under the license for the first twelve
month period following the assignment (the "First Year") if the Gross
Revenues (as defined below) from the sale or disposition of the Licensed
Products (as defined under paragraph 8(d)(i) above) by the Successor Entity
for the First Year do not exceed 150% of the "Base Revenue." For purposes
of paragraphs 8(d)(ii) and (iii), the Base Revenue shall be equal to the
"Preceding Year Revenue" (Gross Revenues of Licensee for the "Preceding
Year" (the twelve month period immediately preceding the assignment)),
except that if the Preceding Year Revenue is less than 90% of Licensee's
Gross Revenues for the twelve month period prior to the Preceding Year,
then the Base Revenue shall be the average of the Preceding Year Revenue
and the Gross Revenues for the twelve month period prior to the Preceding
Year;
(iii)No payments shall be due under the license for a subsequent twelve month
period following the First Year if the Gross Revenues from the sale or
disposition of the Licensed Products (as defined under paragraph 8(d)(i)
above) by the Successor Entity for such subsequent twelve month period do
not exceed the amount obtained from the following formula: [100% + 50% X
(the number of twelve month periods following the assignment)] X (Base
Revenue); and
(iv) In the event that the Gross Revenues from the sale or disposition of the
Licensed Products (as defined under paragraph 8(d)(i) above) by the
Successor Entity in a twelve month period following the assignment exceed
the applicable thresholds set forth in paragraphs 8(d)(ii) and 8(d)(iii)
above (the "Excess Gross Revenues"), then the Successor Entity may, at its
option, acquire a license from Licensor upon reasonable and
nondiscriminatory ("RAND") terms in relation to such Excess Gross Revenues.
If the parties are unable to agree on RAND terms, the Successor Entity may
compel binding arbitration to determine RAND terms in accordance with the
arbitration provisions set forth in paragraph 17 below (except that neither
party shall be permitted to recover fees in conjunction with an arbitration
pursuant to this paragraph). Any determination of a RAND license fee or
royalty shall take into account all relevant information, including without
limitation the extent of the use and the likelihood that Licensor's
intellectual property rights at issue are enforceable against the Successor
Entity.
For purposes of this paragraph 8(d), "Gross Revenues" shall mean the sum of the
fees charged and received by the applicable entity (either the Licensee or the
Successor Entity as the case may be) for the sale or disposition of the Licensed
Products (as defined under paragraph 8(d)(i) above) to any third party. In the
event the Licensed Product is bundled with another product, the Gross Revenue of
the Licensed Product shall be determined pursuant to Generally Accepted
Accounting Principles.
(e) The Successor Entity shall not be entitled to the benefit of the releases
granted in paragraph 5(a) except in its capacity as successor in interest to
Licensee and only to the extent of Licensee's (as distinct from the Successor
Entity's) activities prior to the Effective Date.
(f) Licensee and each Successor Entity (as the case may be) shall maintain a
complete, clear and accurate record of its Gross Revenues, in sufficient detail
to enable IpLearn to verify the applicable revenue levels for purposes of
paragraph 8(d). To ensure compliance with paragraph 8(d), an independent
certified public accountant selected by IpLearn shall have the right to
reasonably inspect and audit such records to the extent necessary to verify the
applicable Gross Revenues and calculations relating thereto for purposes of
paragraph 8(d); provided that such audit shall be conducted upon reasonable
advance written notice, during regular business hours at Licensee's or the
Successor Entity's offices (as applicable), in such a manner as not to interfere
with Licensee's or the Successor Entity's (as applicable) normal activities, and
at IpLearn's expense (except as set forth below). In no event shall audits be
made hereunder more frequently than once every two calendar years, except in the
event any such audit reveals that Licensee or the Successor Entity (as
applicable) has underreported Excess Gross Revenues by more than five percent
(5%) for any quarter, in which case, (i) IpLearn shall have the right to conduct
an audit once every twelve (12) months; and (ii) Licensee or the Successor
Entity (as applicable) shall also pay IpLearn's reasonable costs and expenses
for the outside audit that revealed such underreporting.
9. Disclaimers; Limitations. EXCEPT AS PROVIDED IN PARAGRAPH 2 ABOVE, THE
LICENSED PATENTS ARE LICENSED ON "AS IS" BASIS, WITHOUT WARRANTIES OF ANY KIND.
IpLearn will have no obligation to file, prosecute or maintain any patents or
patent applications, to enforce the Licensed Patents against third parties or to
provide know-how or support to Licensee.
10. Notices. Any notice or communication required or permitted to be given by
either Party hereunder shall be deemed sufficiently given, if in writing and (a)
hand delivered, (b) deposited with a nationally recognized overnight courier
(Federal Express, UPS or the like), (c) mailed postage prepaid by certified or
registered mail, return receipt requested, or (d) sent by facsimile transmission
with verification of receipt, and will be deemed effective the day of delivery
by hand, overnight courier or mail, or the day of transmission if sent by
facsimile, and addressed to the Party to whom notice is given as follows:
If to IpLearn to: Xxxxx Xxxx
Managing Partner
IPLearn
0000 Xxxxxxxx Xxxx
Xxxxxxxx Xxxx, XX 00000
If to DigitalThink to: Attn: Xxx Xxxxxx
Chief Financial Officer
DigitalThink, Inc.
000 Xxxxxxx Xxxxxx
Xxx Xxxxxxxxx, XX 00000
11. Other Obligations. Licensee will not cooperate with or assist any party with
respect to invalidating or contesting the Licensed Patents. Licensee will not
take any action with respect to invalidating or contesting the Licensed Patents,
except as required by law. Notwithstanding the foregoing, the obligations set
forth in this paragraph 11 shall not apply in the event that the license granted
herein is terminated.
12. Comprehension. Each Party acknowledges to the other Party that it has been
represented by independent legal counsel of its own choice throughout all of the
negotiations which preceded the execution of this Agreement. Each Party further
acknowledges that it and its counsel have had adequate opportunity to make
whatever investigation or inquiry they may deem necessary or desirable in
connection with the subject matter of this Agreement prior to the execution
hereof. Each Party has authorized and directed their respective attorneys to
execute and deliver such other and further documents as may be required to carry
out the terms and conditions of this Agreement.
13. Interpretation. The language of this Agreement has been approved by counsel
for the Parties. The language of this Agreement shall be construed as a whole
according to its fair meaning and none of the Parties (nor the Parties'
respective attorneys) shall be deemed to be the draftsman of this Agreement in
any action which may hereafter arise between the Parties.
14. No Admission of Liaibility. Nothing herein shall be construed as an
admission of liability of or on behalf of any Party hereto or to the Action.
15. Severability. If any of the provisions of this Agreement are held void or
unenforceable, the remaining provisions shall nevertheless be effective, the
intent being to effectuate this Agreement to the fullest extent possible.
16. Entire Agreement. This Agreement and the Share Allotment Agreement
constitute the entire agreement between the Parties with regard to resolution of
the Action and supersede all previous communications, representations,
agreements or understandings, either oral or written, between the Parties with
respect to the subject matter hereof. In the case of any conflict between the
terms of this Agreement and the terms of the Share Allotment Agreement, the
terms of this Agreement shall control. This Agreement may be amended,
supplemented or modified only by a written instrument duly executed by or on
behalf of each Party hereto which specifically refers to this Agreement. The
Protective Order entered by the Parties in the Action shall remain in full force
and effect.
17. Arbitration. Any dispute or claim arising out of, in relation to, or in
connection with this Agreement, including without limitation the interpretation,
making, performance, breach or termination thereof, but not including any claims
of patent infringement or invalidity, shall be finally settled by binding
arbitration in San Francisco, California, under and in accordance with the rules
and procedures of the American Arbitration Association, by three (3) arbitrators
appointed in accordance with said rules. Judgment on the award rendered by the
arbitrators may be entered in court. Each of Licensor and Licensee hereby
irrevocably consents to the jurisdiction of state and federal courts located in
San Francisco, California. The award shall be final and binding upon the
Parties. The arbitrators shall apply California and Federal law to the merits of
any dispute or claim, without reference to its rules of choice of law. The
arbitrators shall render an opinion setting forth findings of fact and
conclusions of law with the reasons therefore stated. The Parties shall share
the costs of the arbitration, including administrative and arbitrators' fees,
equally. Each Party will bear the expense of preparing and presenting its own
case in connection with the arbitration (including, but not limited to, its own
attorneys' fees and costs of witnesses), except that the prevailing party shall
be entitled to recover its reasonable attorneys' fees from the other Party. All
aspects of the arbitration shall be treated as confidential, except as
reasonably necessary for performance and enforcement of any ruling or remedy.
Notwithstanding anything to the contrary herein, each Party shall have the right
to seek injunctive relief at any time and under any circumstances; provided
however that for any suits seeking injunctive relief commenced prior to the
termination or expiration of the Agreement, the prevailing Party shall be
entitled to recover its reasonable attorneys' fees from the other Party for such
injunctive relief.
18. Survival. Paragraphs 6(b) (Confidentiality), 9 (Disclaimers; Limitations),
10 (Notices), 12 (Comprehension), 14 (No Admission of Liability), 16 (Entire
Agreement) and 17 (Arbitration), and the rights granted hereunder to EDS and its
direct and indirect wholly-owned subsidiaries, and BearingPoint and its
affiliates shall survive termination of this Agreement.
IN WITNESS WHEREOF, intending to be legally bound, the Parties have entered into
this Agreement as of the Effective Date.
IP Learn, LLC DigitalThink, Inc.
By: /s/ XXXXX XXXX By: /s/ XXXXXXX XXXX
------------------------------- ---------------------------------
Name: Xxxxx Xxxx Name: Xxxxxxx Xxxx
------------------------------- ---------------------------------
Title: Managing Partner Title:Chief Executive Officer
------------------------------- ---------------------------------
Date: November 24, 2003 Date: November 24, 2003
------------------------------- ---------------------------------
Exhibit A
U.S. Patents Nos. 6,126,448
6,118,973
5,934,909
5,779,486
6,398,556
Exhibit B
OMITTED
Exhibit C
OMITTED
Exhibit D
See Form of Dismissal Attached.
Xxxxxx X. Mount (State Bar No. 077517)
Xxxx X. Xxxxxxx (State Bar No. 199761)
Mount & Stoelker
Riverpark Tower, Suite 1650
000 Xxxx Xxx Xxxxxx Xxxxxx
Xxx Xxxx, Xx 00000
Telephone: (000) 000-0000
Facsimile (000) 000-0000
Attorneys For Plaintiff IP Learn, LLC
Xxxxxxx X. Xxxxxx (State Bar No. 130009)
Xxxxxx X. Xxxxxxxx, Bar No. 165929
XXXXXXX COIE LLP
000 Xxxxxxxx Xxxxxx, 0xx Xxxxx
Xxx Xxxxxxxxx, Xxxxxxxxxx 00000-0000
Telephone: (000) 000-0000
Facsimle: (000) 000-0000
Attorneys for Defendant DigitalThink, Inc.
Xxxxx X. Xxxxxxxxx Xx. (State Bar No. 107988)
Xxxxxx X. XxXxxxxxx (State Bar No. 172650)
XXXXXXXX AND XXXXXXXX AND CREW LLP
Xxx Xxxxxxxxxxx Xxxxxx, 0xx Xxxxx
Xxx Xxxxxxxxx, Xxxxxxxxxx 00000
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
Attorneys for Defendatns Electronic Data Systems Corp. and
BearingPoint, Inc. (formerly KPMG Consulting, Inc.)
XXXX XXXXXX XXXXXXXX (Pro Hac Vice)
0000 Xxxxxxxxxxxxx Xxxxx
XxXxxx, Xxxxxxxx 00000
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
Attorney for Defendant BearingPoint, Inc.
(formerly KPMG Consulting, Inc.)
IN THE UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
IP LEARN, LLC, a California Limited Liability Company, CASE NO. 02-04114 PJH
Plaintiff,
STIPULATED DISMISSAL
AND [PROPOSED] ORDER
v.
Xxx. Xxxxxxx X.Xxxxxxxx
DIGITALTHINK, INC., a Delaware Corporation, KPMG
CONSULTING, a Delaware Corporation, and ELECTRONIC DATA
SYSTEMS CORPORATION, a Delaware Corporation,
Defendants.
Pursuant to Fed. R. Civ. P. 41(a)(1), Plaintiff and Counterdefendant IpLearn,
LLC ("IpLearn") and Defendants and Counterclaimants DigitalThink, Inc.
("DigitalThink"), BearingPoint, Inc. (formerly KPMG Consulting, Inc.)
("BearingPoint") and Electronic Data Systems Corporation ("EDS") hereby
stipulate to dismissal of all claims as follows:
1. Dismissal Between IpLearn & DigitalThink Subject to the terms of the
Settlement and License Agreement entered into by IpLearn, and DigitalThink
dated November 24, 2003 ("Agreement"), IpLearn and DigitalThink hereby
stipulate to the dismissal WITH PREJUDICE of all claims, counterclaims and
defenses against each other in the above-referenced action, with each party
bearing its own costs, fees and expenses.
2. Dismissal Between IpLearn and BearingPoint and EDS IpLearn hereby dismisses
all claims and defenses against Defendants and Counterclaimants
BearingPoint and EDS. Such dismissal is WITH PREJUDICE with respect to all
claims and defenses pertaining to any and all products and services
developed by DigitalThink, Inc. or distributed under DigitalThink's brand.
Additionally, IpLearn covenants not to xxx EDS and BearingPoint (including
their subsidiaries, affiliates and direct and indirect customers) for
infringement of the patents-in-suit (United States patents: 5,779,486,
5,934,909 6,118,973, 6,126,448, or 6,398,556) where such alleged
infringement pertains to products and services developed by DigitalThink,
Inc. or distributed under DigitalThink's brand.
BearingPoint and EDS dismiss WITHOUT PREJUDICE all counterclaims and defenses
against IpLearn, but each of EDS and BearingPoint covenant not to xxx IpLearn on
the basis that the patents-in-suit (United States patents: 5,779,486, 5,934,909,
6,118,973, 6,126,448, or
6,398,556) are invalid or not infringed unless BearingPoint and/or EDS
(including their affiliates, subsidiaries, and direct and indirect customers)
are accused of infringing said patents-in-suit.
Date: November ___ , 2003 MOUNT & STOELKER
By:
-------------------------------
Xxxxxx X. Mount, Esq.
Xxxxxx X. Xxxxxxxx, Esq.
Xxxx X. Xxxxxxx, Esq.
Attorneys for Plaintiff
IPLEARN, LLC
Date: November ___ , 2003 XXXXXXX COIE LLP
By:
-------------------------------
Xxxxxxx X. Xxxxxx, Esq.
Xxxxxx X. Xxxxxxxx, Esq.
Attorneys for Defendant
DIGITALTHINK, INC.
Date: November ___ , 2003 XXXXXXXX AND XXXXXXXX AND CREW
By:
-------------------------------
Xxxxx X. Xxxxxxxx, Esq.
Xxxxxx X. XxXxxxxxx, Esq.
Attorneys for Defendants
IPLEARN, LLC
ELECTRONIC DATA SYSTEMS
CORPORATION AND KPMG
CONSULTING, INC.
IT IS SO ORDERED:
Dated: ____________________ , 2003
------------------------------
XXX. XXXXXXX X. XXXXXXXX
United States District
Court Judge
