MUTUAL RELEASE AND AGREEMENT
Exhibit
10.2
This
Mutual Release and Agreement (this “Agreement”)
is
made as of this 14th day of August, 2008 by and between (i) Xx. Xxxxxxxx xxx
Xxxxxxxxxx (“van
Moorleghem”),
an
individual, (ii) AMT, N.V., a Belgian corporation f/k/a Memry Europe, N.V.,
and
(iii) Memry
Corporation, a Delaware corporation (“Memry”).
RECITALS
Whereas,
simultaneously herewith, van Moorleghem, Memry and certain other parties are
entering into a Settlement Agreement and Mutual Release dated the date hereof
(the “Settlement Agreement”), by which the parties thereto are settling an
action currently pending in the United States District Court for the Northern
District of California, styled as Memry
Corporation v. Kentucky Oil Technology, N.V., et al.,
Case
No. CV 04-03843 RMW (HRL) (the “Lawsuit”);
and
WHEREAS,
both Memry and AMT, along with USI (as defined in the Settlement Agreement),
are
party to the Collaboration Agreement, as such term is defined in the Settlement
Agreement (the “Collaboration Agreement”); and
WHEREAS,
Memry and AMT are party to a License and Supply Agreement dated as of February
8, 2001 (the “License and Supply Agreement”); and
Whereas,
Memry would not be entering into the Settlement Agreement, and paying the
$3,500,000 contemplated thereby, but for the execution and delivery by van
Moorleghem and AMT of their agreements and releases contained herein, and van
Moorleghem and AMT would not agree to and grant the same without the agreements
and releases by Memry granted herein;
NOW
THEREFORE, in consideration of the foregoing and the mutual covenants set forth
in this Agreement, the parties hereto agree as follows:
A.
Termination
of Agreements.
1. Termination
of Collaboration Agreement.
AMT
agrees and acknowledges that it consents and agrees to the termination of the
Collaboration Agreement as set forth in the Settlement Agreement, such that
the
same is hereby terminated, and all rights and obligations therein fully
released, notwithstanding the fact that AMT is not party to the Settlement
Agreement itself.
2. Termination
of License and Supply Agreement.
Memry
and AMT hereby agree that, except as is set forth in the remainder of this
Section A.2., the License and Supply Agreement is hereby terminated and all
rights and obligations thereunder are extinguished and released. Notwithstanding
the foregoing, however, Memry and AMT agree that the licenses granted by Memry
to AMT in Section C.1 of the License and Supply Agreement shall, to the extent
still in full force and effect, continue in full force and effect in accordance
with their respective terms (including, without limitation, AMT’s royalty
obligations pursuant to Section C.2 of the License and Supply Agreement), and
the relevant provisions of the License and Supply Agreement relating to such
licenses (including, without limitation, the provisions of Section C. of the
License and Supply Agreement and the provisions of Sections A., D. and E. to
the
extent (and only to the extent) they relate thereto) shall likewise remain
in
full force and effect notwithstanding the execution and delivery hereof,
including, without limitation, the provisions of Section E.12; provided,
however, that Memry and AMT specifically agree and acknowledge that Memry shall
have no further obligations under Section C.3.(e) of the License and Supply
Agreement.
B. Mutual
Releases.
1. Release
of Memry. van Moorleghem and AMT
hereby release
Memry, and its officers, directors, shareholders, divisions, business units,
members, managers, parents, subsidiaries, affiliates, predecessors, successors,
representatives, agents, servants, employees, attorneys, accountants, investors,
and insurers (collectively, the “Memry-Related
Parties”),
of
and from any and all known and unknown actions, causes of action, claims,
demands, damages, costs, losses, expenses, liabilities, attorneys’ fees, and
debts whatsoever, under statutory law or regulation, at common law or in equity
of any jurisdiction, including, without limitation, those relating to the
Lawsuit and the License and Supply Agreement, that van Moorleghem and/or AMT
has,
did
have, or may have against any of the Memry-Related Parties from the beginning
of
time to the date of this Release (the “van
Moorleghem/AMT Released Claims”).
The
parties agree and acknowledge that this release extinguishes all claims of
van
Moorleghem and AMT against the Memry-Related Parties, whether such claims are
asserted by van Moorleghem and/or AMT and/or by their respective predecessors,
successors, officers, directors, shareholders, divisions, business units,
members, managers, parents, subsidiaries, affiliates, representatives, agents,
servants, employees, attorneys, accountants, investors, and
insurers.
2. Release
of van Moorleghem and AMT.
Memry
releases van Moorleghem and AMT and their respective officers, directors,
shareholders, divisions, business units, members, managers, parents,
subsidiaries, affiliates, predecessors, successors, representatives, agents,
servants, employees, attorneys, accountants, investors, and insurers (such
persons and entities, the “van
Moorleghem/AMT-Related Parties”)
of and
from any and all known and unknown actions, causes of action, claims, demands,
damages, costs, losses, expenses, liabilities, attorneys’ fees, and debts
whatsoever, under statutory law or regulation, at common law or in equity of
any
jurisdiction, including, without limitation, those relating to the Lawsuit
and
the License and Supply Agreement, that Memry has, did have, or may have against
any of the van Moorleghem/AMT-Related Parties from the beginning of time to
the
date of this Settlement Agreement (the “Memry
Released Claims”
and,
with the van Moorleghem/AMT Released Claims, the “Released
Claims”).
The
parties agree and acknowledge that this release extinguishes all claims of
Memry
against the van Moorleghem/AMT-Related Parties, whether such claims are asserted
by Memry or by its officers, directors, shareholders, divisions, business units,
members, managers, parents, subsidiaries, affiliates, predecessors, successors,
representatives, agents, servants, employees, attorneys, accountants, investors,
and insurers.
3. Unknown
Claims.
As
further consideration and inducement for the compromise settlement detailed
in
the Settlement Agreement, the parties understand and agree that the releases
contained in this Section B apply to all unknown and unanticipated claims or
demands of any type whatsoever, and the parties expressly waive the benefits
of
California Civil Code § 1542, which states:
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A
GENERAL RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR DOES NOT KNOW
OR
SUSPECT TO EXIST IN HIS OR HER FAVOR AT THE TIME OF EXECUTING THE RELEASE,
WHICH
IF KNOWN BY HIM OR HER MUST HAVE MATERIALLY AFFECTED HIS OR HER SETTLEMENT
WITH
THE DEBTOR.
The
parties abandon, release, waive, and relinquish all rights and benefits that
they have or may have against any of the released parties under California
Civil
Code § 1542 with respect to the Released Claims. The parties acknowledge that
they may discover facts in addition to, or different from, those that they
now
believe to be true, including but not limited to the nature or extent of their
damages, but that it is nonetheless their intention to fully, finally,
completely, and forever settle and release each, every, and all claims released
in this Section B. Therefore, the releases given in this Section B shall remain
in effect according to their express terms notwithstanding the discovery or
existence of any such additional or different facts.
4. Warranty
of No Transfer.
Each
party represents and warrants that it is the sole owner of the claims it is
releasing in this Section B, that no other person has any interest in any of
those claims, and that it has not sold, assigned, or otherwise transferred
any
interest in those claims to any third party.
C. Supply
Agreement.
1. New
Supply Agreement.
Memry
and AMT hereby agree to enter into a new supply agreement, with Memry as
“Supplier” and AMT as “Customer” for purposes of this Section C., on the terms
and conditions set forth in the remainder of this Section C. (and, to the extent
applicable, the miscellaneous provisions of Section D. below).
2. Basic
Agreement.
Subject
to the terms, provisions and conditions hereinafter set forth, for a period
commencing on the date hereof and continuing through August 1, 2018 (the
“Term”), Supplier agrees to sell Products to Customer as ordered by Customer;
provided, however, that: (i) Customer agrees to sell nitinol tubing products
purchased from Supplier only to Permitted Customers; and (ii) Supplier shall
only be obligated to sell Products to Customer: (x) for Products generally
sold
by Memry to third parties (“Generally Available Products”), if and to the extent
Supplier is selling said products to third parties in similar quantities; (y)
for Products that are not Generally Available Products but that Supplier
purchases directly from a supplier, and then resells to Customer without
improving the same (“Unimproved Resold Products”), if and to the extent Supplier
is purchasing such products or similar products for its own account and can
acquire the same from Supplier’s supplier without unreasonable effort and
expense; and (z) for Products that are not Generally Available Products but
that
Supplier purchases from a third party supplier and then improves in a manner
or
process similar to improvements that Supplier makes to such products for its
own
internal purposes (“Improved Resold Products”), if and to the extent that
Supplier continues to be able to acquire the underlying products from the third
party supplier without unreasonable effort and expense and continues to make
such improvements to the same for its own account. For purposes of this Section
C., (i) “Products” means nitinol tubing products, low carbon stock wires,
hollows and cores, and (ii) “Permitted Customers” means customers of Customer
that both (a) have their corporate headquarters situated in Europe or Asia
(and
have the headquarters of any direct or indirect parent entity situated in Europe
and Asia) and (b) either utilize the Products for “Manufacturing Within Europe
and Asia” as such term is defined in the License and Supply Agreement, or, if
they do not, agree that the Products will be used only within Europe and Asia.
For purposes of clause (a) of the definition of Permitted Customers, but not
for
purposes of clause (b), if a Permitted Customer is a customer of Customer and,
after being a customer of Customer, is purchased by an entity whose headquarters
is situated outside Europe and Asia, said customer shall not cease to be a
Permitted Customer by virtue of the parenthetical requirement in said clause
(a).
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3. Specifications.
The
Products shall meet Supplier’s published specifications (or, where applicable,
agreed upon specifications) for the Products as modified by Supplier from time
to time
4. Pricing.
The
initial purchase price for each Product in any particular quantity shall be
provided by Supplier to Customer upon Customer’s request, and shall be the price
for such Product until such time as Supplier notifies Customer of any changes
thereto. The parties agree that Supplier may amend the purchase price for each
Product at any time during the term hereof by ninety (90) days prior written
notice to Customer as follows: (A) in the case of Generally Available Products,
to reflect the prices at which such Products are generally available to third
parties, and (B) in the case of both Unimproved Resold Products and Improved
Resold Products to reflect a cost equal to one hundred and fifteen percent
(115%) of Supplier’s direct costs for acquiring (and, in the case of Unimproved
Resold Products improving) the same; provided, however, that, notwithstanding
anything to the contrary in the preceding portion of this Section C.4., Supplier
agrees that the price charged by it to Customer for any nitinol tubing product
shall be the lowest price being charged at such time by Supplier (or that was
charged during the preceding sixty (60) days) for that Product to its other
customers purchasing nitinol tubing products in similar quantities.
5. Other
Terms and Conditions.
a. Purchase
Orders.
Customer shall purchase Products by submitting to Supplier purchase orders
for
specific Products. Purchase orders shall specify the type and quantity of
Products to be purchased, the price, the delivery date (which shall not be
less
than one week for Products in stock and ten weeks for Products not in stock,
in
each case at the time of the purchase order), the purchase order number, and,
in
the case of nitinol tubing products only, any requisite test report and
certification requirements. Purchase orders shall be deemed accepted by Supplier
fourteen (14) days after receipt, unless Supplier notifies Customer within
said
period that it is rejecting such purchase order. Supplier will only be allowed
to reject purchase orders for Products (i) if such purchase orders are not
within the scope of Section C.2 above, or (ii) if Supplier, using its reasonable
commercial efforts, believes it is unable to supply such Products within the
time ordered by Customer (given Supplier’s other commitments).
b. Payment
Terms; Invoice.
Payment
terms are net thirty (30) days after customer’s receipt of Supplier’s invoice or
shipment (whichever is later). The Customer description and part number must
be
referenced on all invoices and packing lists. All outstanding sums owed to
Supplier by Customer shall accrue interest at a rate of 1.0% per month (or
any
part thereof) if unpaid within ten (10) days after the due date therefore.
Notwithstanding anything to the contrary set forth in this Section C., in no
event shall Supplier be required to accept a purchase order from Customer,
or
provide customer with thirty (30) day terms, if the extension of such credit
would cause Customer to owe Supplier (after giving effect to the amount of
such
purchase order, and all other outstanding purchase orders and accounts in the
aggregate) U.S. $100,000 or more, except to the extent that Customer supplies
Supplier with a satisfactory irrevocable letter of credit (or other security
satisfactory to Supplier) for amounts owed Supplier in excess of U.S.
$100,000.
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c. Terms
and Conditions.
Except
as otherwise provided herein, each sale hereunder shall be governed by
Supplier’s standard terms and conditions as defined from time to time (the “Sale
Terms”). Such terms and conditions hereby are incorporated herein by this
reference. Any preprinted terms submitted by Customer are superseded by the
terms of this Agreement. In the event of any inconsistency between this
Agreement and the Sale Terms, this Agreement shall be controlling.
d. Delivery.
Standard delivery for Products is ten (10) weeks after receipt of Customer’s
order for Products not in stock and one week for Products in stock. The parties
may agree on shorter lead times to meet Customer’s needs. If Supplier does not
meet the committed ship date Customer may, without waiving any claims hereunder,
(i) extend the time for delivery, or (ii) cancel all or any part of the purchase
order. The delivery dates for all Products sold pursuant to this Agreement
shall
be deemed to be the date on which they are placed by Supplier into the
possession of Customer’s designated carrier, packed and ready for shipment to
Customer’s designated location, and delivery shall be made FOB Supplier’s
facility, with customer paying freight and insurance. Invoices shall not precede
the delivery date. Supplier shall ship Products from Supplier’s facilities in
either greater San Francisco, California or Connecticut, U.S.A.; provided,
however that, at Supplier’s option, all products shall be shipped by Customer’s
designated standard carrier unless otherwise specified by Customer. Delivery
shall be made to Customer’s plant at Herk de Stad, Belgium, unless otherwise
specified by customer in writing.
e. Warranty.
Supplier warrants the Products as set forth in the Sale Terms. These warranties
shall inure to the benefit of Customer, its successors and assigns and to
subsequent purchasers of the Products, and shall survive acceptance and use
of,
and payment for, the Products.
f. Returns.
(i) Supplier
agrees to accept return of any Product that fails to function as warranted
herein and in accordance with the specifications specified in the applicable
purchase order. In the event of a return of a Product pursuant to this Section
C.5(f), Supplier shall perform testing and analysis of the returned Product
and
issue a written report to Customer explaining the cause of the failure. Supplier
agrees to replace returned Products with new Products or to credit Customer
for
the full amount of the purchase price. IN NO EVENT SHALL SUPPLIER BE LIABLE
FOR
ANY INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES RESULTING FROM THE USE OF
ANY
OF THE PRODUCTS BY ANY PERSON.
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(ii) Any
claim
for breach of warranty hereunder must be presented to the Supplier, in writing,
within sixty (60) days after receipt of the Product by Customer and must state
that a claim hereunder is probable. Failure to notify Supplier as aforesaid
within such specified period shall constitute a waiver of the claim. Claims
must
be accompanied by supporting proof to the extent reasonably
available.
g. Insurance.
(i) On
written request from Customer, Supplier shall deliver to Customer a certificate
of insurance evidencing that Supplier maintains product liability insurance
for
the Products in an amount that is usual and customary for Supplier’s
business.
(ii) Customer
shall maintain product liability insurance for any products incorporating the
Products in an amount that is usual and customary for Customer’s business and,
upon written request from Supplier, will deliver to Supplier a certificate
of
insurance evidencing the same.
h. Termination.
Section
C. of this Agreement may be terminated at any time during its term as
follows:
(i) by
mutual
written consent of the parties at any time;
(ii) by
either
party following thirty (30) days notice to the other party that such second
party is in breach of any of its material obligations under Section C. of this
Agreement and a failure of the breaching party to cure the breach within the
thirty (30) day period (unless the breach is not curable in which case the
Term
shall terminate immediately following such notice). If either party fails to
keep or perform any of its material obligations under this Section C. and such
default continues for a period of thirty (30) days after the defaulting party
has been notified of the default by the other party, then the non-defaulting
party may suspend this Section C. forthwith upon written notice to the other
party until such time as the default has been cured. However, a non-defaulting
party who has suspended performance pursuant to this Section C.5(h) shall not
be
precluded form terminating the Term pursuant to any other provision, or from
pursuing its other lawful rights in the event that the defaulting party does
not
cure the default prior to such termination. Nothing in this Section C.5(h)
in
any way shall extend the Term. Termination of this Section C. shall in no way
effect, limit or impair the effectiveness of the other sections of this
Agreement.
i. Force
Majeure.
Neither
Supplier nor Customer shall be liable for its failure to perform its obligations
under this Section C. due to events beyond its reasonable control including,
but
not limited to, strikes, riots, wars, fire, acts of God, labor unrest and acts
in compliance with applicable law, regulation or order (whether valid or
invalid) of any governmental body.
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D. Other
Provisions.
1. No
Continuing Relationship.
The
parties acknowledge that they do not have any present relationship whatsoever
with the other except as set forth herein. Neither party will make any
representation to any third party that is inconsistent with this acknowledgment.
If a party makes any representation to third parties that is contrary to this
paragraph, the other party shall be entitled to injunctive relief and specific
performance of this paragraph.
2. Indemnification.
Each
of
AMT and van Moorleghem will defend, indemnify, and hold harmless Memry and
all
of the Memry-Related Parties and all successors, assigns, end-users, and
customers of each, for the breach of any covenant, warranty or representation
made by such party herein. Memry will defend, indemnify and hold harmless van
Moorleghem and all of the van Moorleghem/AMT-Related Parties and all successors,
assigns, end-users and customers of each, for the breach of any covenant,
warranty or representation made by Memry herein. Pursuant to this
indemnification, the indemnitees are entitled to use counsel of their
choice.
3. Notices.
All
notices, requests, and demands made under this Agreement: (a) shall be in
writing and made to the parties and their counsel at the address indicated
below, or to such other address as a party may designate by prior written notice
to all of the others in accordance with this provision; and (b) shall be deemed
to have been given or made (i) if delivered in person, immediately upon
delivery, (ii) if by email or facsimile transmission, immediately upon sending
and upon confirmation of receipt, provided that on that day or the following
day
a copy is also sent by first class mail, (iii) if by nationally recognized
overnight courier service with instructions to deliver the next business day,
one business day after; and (iv) if by certified mail, return receipt requested,
five (5) days after mailing.
If
to van
Moorleghem:
Xxxxxxxx
xxx Xxxxxxxxxx
Xx.
Xxxxxxxx xxx Xxxxxxxxxx
Industrieweg
1113
X0000
Xxxx
Xxxxxxx
Facsimile
No: 011
32
13553514
Email: xxxxxxxx_xxxxxxxxxxxxx@xxxxx.xxx
If
to
AMT:
AMT,
N.V.
Xx.
Xxxxxxx Xxxxxxxxx
Daelemveld
1113
X0000
Xxxx
Xxxxxxx
Facsimile
No.: 011
32
13553514
Email:
xxxxxxx.xxxxxxxxx@xxxxx.xxx
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If
to
Memry:
Memry
Corporation
Attn: Xxxxxx
Xxxxxxx
0
Xxxxxxxxx Xxxxxxxxx
Xxxxxx,
Xxxxxxxxxxx 00000
with
a
copy to:
Xxxxx
X.
Xxxxx, Esq.
Xxxx
Xxxxx & Xxxxxxx LLP
000
Xxxxx
Xxxxxx, 00xx
Xxxxx
Xxxxxxxx,
Xxxxxxxxxxx 00000-0000
4. Interpretation.
This
Agreement shall be construed without regard to the party or parties responsible
for the preparation of the same and shall be deemed to have been prepared
jointly by the parties hereto. If any ambiguity or uncertainty exists herein,
such ambiguity or uncertainty shall not be interpreted against any party hereto,
but rather, shall be interpreted according to the application of other rules
of
contract interpretation. The parties acknowledge that this Agreement is in
the
English language and that the English language will govern its
interpretation.
5. Governing
Law.
This
Agreement shall be construed in accordance with California law, without regard
to its internal choice-of-law rules.
6. Enforcement.
If any
action is brought for breach of or to enforce this Agreement, it shall be
brought in the United States District Court for the Northern District of
California,
unless
that court has no jurisdiction over the action, in which case it shall be
brought in the Superior Court of the State of California for the Counties of
San
Francisco or Santa Xxxxx.
7. Attorneys’
Fees.
In any
action for breach of or to enforce this Agreement, the prevailing party will
be
entitled to reasonable attorneys’ fees, expenses, and costs.
8. Integration.
This
Agreement is the entire agreement between the parties with respect to its
subject matter and supersedes all prior or contemporaneous oral or written
negotiations or agreements with regard to the matters set forth in it. Neither
party is entering into this Agreement on the basis of any promise, statement,
or
representation, express or implied, that is not expressly set forth in it.
9. Independent
Counsel.
Each
party acknowledges that it has been represented by independent counsel of its
own choice throughout all negotiations pertaining to its execution of this
Agreement. Each party further acknowledges that it has received and relied
upon
advice from its independent counsel with respect to: (a) the meaning and effect
of each of the terms and conditions of this Agreement including, but not limited
to, the Agreements and the waiver of rights under California Civil Code § 1542;
and (b) the advisability of entering into this Agreement.
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10. Independent
Investigation.
Each
party acknowledges that it has fully investigated the subject matter of this
Agreement and that it is entering into this Agreement voluntarily, knowingly,
and of its own free will.
11. Successors;
Assignment.
This
Agreement shall inure to the benefit of and shall be binding upon the heirs,
executors, administrators, assigns, and successors in interest of each of the
beneficiaries hereof. Any beneficiary’s rights hereunder may be assigned to any
party succeeding to all or any substantial part of its business.
Each
party agrees not to use an assignment to evade or avoid its responsibilities
hereunder. Notwithstanding the foregoing, (i) AMT may not assign its rights
or
interests under Section C. hereof without the prior written approval of the
Supplier, and (ii) the licenses referred to in Section A. may only be assigned
or sublicensed in accordance with the terms of the License and Supply Agreement.
For purposes of the foregoing sentence, an event after which causes control
of
the Customer to be acquired by anyone other than van Moorleghem and his
Affiliates, as such term was defined in the License and Supply Agreement, or
an
event by which van Moorleghem and Affiliates beneficially own less than a
majority of the Customer immediately after such event, shall be deemed to
constitute an assignment.
12. Severability.
If any
of the provisions of this Agreement become invalid, illegal or unenforceable
in
any respect, the validity, legality and enforceability of the remaining
provisions hereof shall not in any way be impacted.
13. Counterparts.
This
Agreement may be signed in counterparts, and a copy of the fully signed
Agreement may be used in evidence as if it were the original.
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IN
WITNESS WHEREOF, the undersigned has caused this Release to be executed and
delivered by his duly authorized representatives.
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XXXXXXXX
XXX XXXXXXXXXX
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/s/
Xx. Xxxxxxxx xxx Xxxxxxxxxx
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Xx.
Xxxxxxxx xxx Xxxxxxxxxx
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DATED:
August 14, 2008
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AMT,
N.V.
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By:
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/s/
Dr. ir. Xxxxxxx Xxxxxxxxx
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Name:
Dr. ir. Xxxxxxx Xxxxxxxxx
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Title:
Managing Director
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DATED:
August 14, 2008
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MEMRY
CORPORATION
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By:
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/s/
Xxxxxx Xxxxxxx
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Name:
Xxxxxx Xxxxxxx
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Title:
Chief Executive Officer
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