XEROX LITIGATION AGREEMENT
Exhibit 2.33
XEROX LITIGATION AGREEMENT
This Xerox Litigation Agreement (the “Agreement”) is executed on June 3, 2003 and made effective as of the Effective Date (as defined below), by and between Palm, Inc., a Delaware corporation (“Palm”), having an office at 000 X. XxXxxxxx Xxxx., Xxxxxxxx, Xxxxxxxxxx 00000 and PalmSource, Inc., a Delaware corporation (“PalmSource”), having an office at 0000 Xxxxxxxx Xxxxxx, Xxxxxxxxx, XX 00000.
ARTICLE 1
For the purpose of this Agreement the following capitalized terms are defined in this Article 1 and shall have the meaning specified herein:
1.2 COVERED OS VERSIONS. “Covered OS Version” means version 5.0 through 5.1 and 4.1.1 and earlier versions of the Palm OS®.
1.3 EFFECTIVE DATE. “Effective Date” means .
1.6 LITIGATION DISCLOSURE LETTER. “Litigation Disclosure Letter” means that certain Litigation Disclosure Letter delivered by Palm to PalmSource pursuant to the terms set forth in Article II, Section 2.1 of the General Assignment and Assumption Agreement.
1.10 SEPARATION DATE. “Separation Date” means 12:01 a.m., Pacific Time, December 3, 2001.
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and PalmSource on May 9, 2002 and made effective as of the Separation Date, as amended and restated as of the Effective Date.
1.14 XEROX LITIGATION. “Xerox Litigation” means:
(a) the patent infringement litigation filed by Xerox on April 28, 1997, Case No. 97-CV-6128T with respect to the Covered OS Versions,
(b) the foregoing case to the extent that PalmSource may be named as an additional defendant with respect to the Covered OS Versions,
(c) any future legal action by Xerox against Palm alleging infringement by Palm of the Xerox Patent with respect to the Covered OS Versions,
(d) any future legal action by Xerox against PalmSource alleging infringement by PalmSource of the Xerox Patent with respect to the Covered OS Versions, but only if such action is properly tendered to Palm in accordance with the terms of Article 4 below, and
(e) any future legal action by Xerox against any Third Party Licensee alleging infringement by such licensee of the Xerox Patent with respect to the Covered OS Versions distributed pursuant to a Third Party Software License Agreement, but only if such action is properly tendered to Palm in accordance with the terms of Article 4 below and only if PalmSource has met its obligations under Section 5.3.
1.15 XEROX PATENT. “Xerox Patent” means U.S. Patent No. 5,596,656.
ARTICLE 2
(a) Palm shall have the sole responsibility for and control of the management of the Xerox Litigation, including, without limitation, the defense, determining strategy, making all
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decisions, hiring counsel, and settlement. PalmSource acknowledges and agrees that Palm has, at the request of PalmSource, so managed the Xerox Litigation prior to the Effective Date and waives any right to object thereto that may arise under the Master Separation Agreement or Ancillary Agreements, and otherwise waives any and all rights, claims and remedies relating to such management by Palm prior to the Effective Date. Palm’s duty to defend the Xerox Litigation is limited to using the same counsel for other defendants (if any) as Palm uses for its own defense; provided, however, that if such counsel cannot represent one or more of the other defendants (if any) due to a legal conflict of interest, then the Parties will use their best efforts to obtain a conflict waiver and if this cannot be done, then Palm shall be obligated to hire separate counsel.
(b) Palm shall periodically inform PalmSource of significant matters relating to the Xerox Litigation. Without limiting the terms of Section 2.1(a) above, Palm agrees to consult with PalmSource at its request, and to consider PalmSource’s input.
(c) Palm may consent to entry of any judgment or enter into any settlement or compromise any claim related to the Xerox Litigation without PalmSource’s consent; provided that Palm shall obtain PalmSource’s prior consent if the effect of such judgment or settlement is to (i) permit any injunction, declaratory judgment, other order or other non-monetary relief to be entered, directly or indirectly, against PalmSource, (ii) require the payment by PalmSource of future royalties, (iii) require PalmSource to make any payment not fully indemnified under this Agreement (other than payments made or costs incurred by PalmSource pursuant to Article 5), (iv) require PalmSource to grant any rights to any Person, including but not limited to a license to any of its intellectual property, or to take any action with respect to Covered OS Versions (other than such actions as are required pursuant to Article 5), or (v) otherwise affect the business, financial condition (including, but not by way of limitation, to require PalmSource to provide Xerox with debt, convertible debt or equity in PalmSource) or operations of PalmSource or the rights of Third Party Licensees, in each case under this clause (v) in a material way.
(d) Palm shall bear all costs and expenses (including without limitation attorneys’ fees) related to the Xerox Litigation (“Costs”) that are incurred beginning on June 1, 2003 (and in no event shall Palm be obligated to reimburse PalmSource for or to pay any invoices for any Costs incurred by PalmSource prior to such date and all such Costs incurred before such date shall remain the obligation of PalmSource); provided, however, that PalmSource understands and agrees that the following shall not be included as Costs: (a) the value of the time of PalmSource employees, consultants, and independent contractors spent on the Xerox Litigation, and (b) any fees or costs associated with PalmSource’s or its licensees’ hiring or use of its own independent counsel or other advisors for the Xerox Litigation (i.e., counsel different than the lead counsel selected and managed by Palm), provided that this clause (b) does not limit Palm’s obligations under Sections 2.1 and 3.1 of this Agreement. In addition, Palm shall have no obligation to reimburse PalmSource for any costs or expenses incurred by PalmSource in connection with the Xerox Litigation unless approved in advance in writing by Palm.
(a) Each party shall cooperate fully with the other party in the defense of the Xerox Litigation in a manner that will preserve attorney-client privilege and attorney work product protection thereto, including the joint defense privilege.
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(b) In the event that either party receives any notice or other communication in connection with the Xerox Litigation that may affect the other party’s rights and obligations under this Agreement, such party promptly shall notify the other party and provide a copy of such notice or communication or, if oral, information about such notice or communication in reasonable detail.
(c) PalmSource agrees to afford to Palm reasonable access to witnesses and Information that is reasonably required to defend the Xerox Litigation (as “Information” is defined pursuant to Section 1.4 of the Master Separation Agreement). The foregoing includes, but is not limited to, an obligation to provide access to qualified assistance to provide information, witnesses as necessary for trial and other proceedings, and documents to support the defense and respond to discovery requests.
ARTICLE 3
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THAT THIS LIMITATION SHALL NOT LIMIT PALM’S OBLIGATIONS EXPRESSLY ASSUMED IN THIS AGREEMENT.
ARTICLE 4
In the event that any claim is brought against (i) PalmSource or (ii) a Third Party Licensee alleging infringement by such Third Party Licensee of the Xerox Patent with respect to the Covered OS Versions, Palm shall have the obligations set forth in this Agreement provided that Palm is notified of the claim within twenty (20) business days of written notice to PalmSource (but Palm shall only be relieved of its obligations to the extent that failure to notify prejudices Palm), given the exclusive authority to direct the defense or settlement negotiations, and rendered reasonable assistance. In the event that Palm pays to PalmSource any amounts in respect of a Third Party Licensee claim, then Palm’s obligations shall be extinguished with respect to those amounts and Palm will have no obligation to pay the same amounts directly to the Third Party Licensee notwithstanding any failure of PalmSource to pay the Third Party Licensee. Should PalmSource fail to pay money received from Palm for payment to a Third Party Licensee and Palm is obligated to, and does, make payment to such Third Party Licensee, Palm may recover from PalmSource any money paid to such Third Party Licensee up to the amount paid to PalmSource, with interest (provided that these payments are made with the express agreement of the Third Party Licensee that the payment extinguishes PalmSource’s liability with respect to that payment). Similarly, in the event that Palm pays to a Third Party Licensee any amounts in respect of a Third Party Licensee claim, then Palm’s obligations shall be extinguished with respect to those amounts and Palm will have no obligation to pay the same amounts directly to PalmSource.
ARTICLE 5
5.2 OTHER OBLIGATIONS TO THIRD PARTY LICENSEES. Palm assumes no responsibility for obligations to Third Party Licensees under any Third Party Software License Agreements other than those obligations specifically assumed by Palm in this Agreement, including, by way of example and without limitation, any obligations of PalmSource to, at PalmSource’s expense, indemnify such licensees for any third party infringement claims other than the Xerox Litigation and to provide infringement remedies, such as providing non-infringing substitute products, conducting product recalls, modifying current products to avoid further infringement or procuring applicable licenses, all as set forth in such Third Party Software License Agreements. .
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This Agreement does not affect any obligations of PalmSource pursuant to the Indemnification and Insurance Matters Agreement to indemnify Palm for a failure to perform such obligations.
ARTICLE 6
The terms of the Master Confidential Disclosure Agreement between the parties shall apply to any Confidential Information (as defined therein) that is the subject matter of this Agreement.
ARTICLE 7
This Agreement shall remain in full force and effect unless and until terminated by the mutual written agreement of the parties. Each party acknowledges and agrees that its remedy for breach by the other party of this Agreement shall be, subject to the requirements of Article 8, to bring a claim to recover damages subject to the limitations of this Agreement and to seek any appropriate equitable relief, other than the termination of this Agreement.
ARTICLE 8
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Dispute, then the Dispute will be mediated by a mutually acceptable mediator appointed pursuant to the mediation rules of JAMS/Endispute within thirty (30) days after written notice by one party to the other demanding non-binding mediation. Neither party may unreasonably withhold consent to the selection of a mediator or the location of the mediation. Both parties will share the costs of the mediation equally, except that each party shall bear its own costs and expenses, including attorney’s fees, witness fees, travel expenses, and preparation costs. The parties may also agree to replace mediation with some other form of non-binding or binding Alternative Dispute Resolution (“ADR”).
8.2 ARBITRATION. Any Dispute which the parties cannot resolve through mediation within ninety (90) days of the Dispute Resolution Commencement Date, unless otherwise mutually agreed, shall be submitted to final and binding arbitration under the then current Commercial Arbitration Rules of the American Arbitration Association (“AAA”), by three (3) arbitrators in Santa Xxxxx County, California. Such arbitrators shall be selected by the mutual agreement of the parties or, failing such agreement, shall be selected according to the aforesaid AAA rules. The arbitrators will be instructed to prepare and deliver a written, reasoned opinion stating their decision within thirty (30) days of the completion of the arbitration. The prevailing party in such arbitration shall be entitled to expenses, including costs and reasonable attorneys’ and other professional fees, incurred in connection with the arbitration (but excluding any costs and fees associated with prior negotiation or mediation). The decision of the arbitrator shall be final and non-appealable and may be enforced in any court of competent jurisdiction. The use of any ADR procedures will not be construed under the doctrine of laches, waiver or estoppel to adversely affect the rights of either party.
ARTICLE 9
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Master Separation Agreement and the Ancillary Agreements (including the Software License Agreement) shall remain in full force and effect.
9.2 GOVERNING LAW. This Agreement shall be construed in accordance with and all Disputes hereunder shall be governed by the laws of the State of California, excluding its conflict of law rules and the United Nations Convention on Contracts for the International Sale of Goods. The Superior Court of Santa Xxxxx County and/or the United States District Court for the Northern District of California shall have jurisdiction and venue over all Disputes between the parties that are permitted to be brought in a court of law pursuant to Section 8 above.
If to Palm:
Palm, Inc.
000 X. XxXxxxxx Xxxx.
Xxxxxxxx, Xxxxxxxxxx 00000
Attention: General Counsel
If to PalmSource:
PalmSource, Inc.
0000 Xxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attention: Chief Executive Officer
or to such other address as the party to whom notice is given may have previously furnished to the other in writing as provided herein. Any notice involving non-performance, termination, or renewal shall be sent by hand delivery, recognized overnight courier or, within the United States, may also be sent via certified mail, return receipt requested. All other notices may also be sent by fax, confirmed by first class mail. All notices shall be deemed to have been given and received on the earlier of actual delivery or three (3) days from the date of postmark.
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9.7 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure or delay on the part of either party hereto in the exercise of any right hereunder shall impair such right or be construed to be a waiver of, or acquiescence in, any breach of any representation, warranty or agreement herein, nor shall any single or partial exercise of any such right preclude other or further exercise thereof or of any other right. All rights and remedies existing under this Agreement or the Exhibits attached hereto are cumulative to, and not exclusive of, any rights or remedies otherwise available.
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WHEREFORE, the parties have signed this Agreement effective as of the Effective Date.
PALM, INC. |
PALMSOURCE, INC. | |||||||
By: | /s/ R. XXXX XXXXXXX |
By: | /s/ XXXXX X. XXXXX | |||||
Name: |
R. Xxxx Xxxxxxx |
Name: |
Xxxxx X. Xxxxx | |||||
Title: |
President & CEO |
Title: |
CEO |
[Signature Page to Xerox Litigation Agreement]
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