AGREEMENT
Exhibit 10.3
This Agreement is effective as of this 7th day of April, 2010, between M2 Global, Ltd. (“M2”), an Antigua corporation, and Xxxxxxx.xxx, Inc. (“Xxxxxxx.xxx”), a Delaware Corporation, (collectively the “Parties”).
RECITALS
WHEREAS, this Agreement relates to the ownership of U.S. Patent No. 5,930,474 entitled “Internet Organizer for Accessing Geographically and Topically Based Information (the “474 Patent”); and
WHEREAS, M2 is the record owner of the ‘474 Patent through assignment, such ownership being reflected in the records of the United States Patent and Trademark Office; and
WHEREAS, Xxxxxxx.xxx is a recently reconstituted corporation of a prior dissolved corporation; the newly-constituted version of Xxxxxxx.xxx claims it has interests in the ‘474 patent; and
WHEREAS, Xxxxxxx.xxx has filed suit against various parties in the United States District Court, Eastern District of Texas, Marshall Division, Cause No. 2-09-cv-l43, including as part of this lawsuit, a claim that it is the owner of the ‘474 Patent (the “Texas Litigation”); and
WHEREAS, M2 has filed a declaratory judgment action against Xxxxxxx.xxx in the United States District Court, Middle District of Florida, Orlando Division, Cause No. 6:09-cv-1209, claiming that it and not Xxxxxxx.xxx is the true owner of the ‘474 Patent and seeking a declaratory judgment to that effect (the “Florida Litigation”); and
WHEREAS, the Parties have agreed to resolve all disputes between them, and that Xxxxxxx.xxx is, by this Agreement, assigning whatever right, title, and interest it may have in the ‘474 Patent to M2, including the right to seek damages, both past and future, for patent infringement; and
WHEREAS, Xxxxxxx.xxx has also reached a separate agreement with Xxxx Xxxxxxxx and Xxxx Xxxxxx resolving any disputes between them such that the dismissal of the Texas Litigation contemplated herein will be with prejudice as to all parties and all claims.
THEREFORE, PREMISES CONSIDERED, in exchange for the mutual consideration contained, herein, the sufficiency of which is hereby acknowledged, the Parties agree as follows:
1. Xxxxxxx.xxx hereby transfers, assigns, and conveys to M2 any and all right, title, and interest that Xxxxxxx.xxx may have in the ‘474 Patent, including the right to recover both past and future damages for any alleged infringement by others of the ‘474 Patent.
2. In connection with this agreement, Xxxxxxx.xxx’s Board of Directors has passed a resolution approving the agreement, has provided shareholder notice to all known shareholders advising them of this corporate action, and has received the appropriate approval from both the shareholders and the Board of Directors to enter into this Agreement. Xxxxxxx.xxx has furnished M2 with proof of such Board resolutions and shareholder notice and approval as a condition precedent to M2’s agreeing to enter into this agreement.
3. M2 will pursue all reasonable avenues to monetize the ‘474 Patent, including actions for patent infringement, and will seek to recover any and all damages for infringement by others of the ‘474 Patent. Such monetizing efforts also will include but are not limited to seeking licenses, and if it makes business sense, a total or partial sale of the ‘474 Patent. Collectively, all such monetizing efforts shall be referred to herein as the prosecution of the “Claim.” M2 agrees to pay Xxxxxxx.xxx one-sixth (1/6) of the Net Proceeds collected from the prosecution of the Claim. Net Proceeds shall mean the gross amounts received from the prosecution of the Claim, less the payment of attorneys’ fees, reasonable and necessary Claim-related expenses, including expert witness fees for any experts selected by M2, and court costs incurred in the prosecution of the Claim. M2 represents that neither Xxxx Xxxxxxxx nor Xxxx Xxxxxx shall serve as a
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compensated expert witness in any such prosecution. All funds collected from the prosecution of the Claim will be paid into the Trust Account of Xxxxxxxx, Xxxxx & Xxxxx, Xxxxxxx Xxxxxx Xxxxxxxxx Xx. 0, 000 X. 0xx Xxxxxx, Xxxxx 000, Xxxx Xxxxx, XX 00000. Within 20 days of receipt of any such funds, Xxxxxxxx, Xxxxx & Xxxxx shall perform the appropriate calculations as stated herein and wire one-sixth of the Net Proceeds to Cityhub and send a copy of its calculation by email to Xxxxxxx.xxx. Xxxxxxx.xxx will have a period of (20) days from receipt of the calculation to audit such calculations and will promptly advise both the attorneys and M2 of any discrepancies it believes exist in the calculations. Failure to raise any discrepancies within such twenty (20) day period shall be deemed an acceptance of such calculations.
4. Within thirty (30) days of the execution of this Agreement, M2 will pay to Xxxxxxx.xxx the sum of One Million, Five-Hundred Thousand Dollars ($1,500,000.00). This amount will, be paid via wire transfer to the Staes & Xxxxxxx, P.C. Client Funds Account.
5. The payment set forth in paragraph 4 above is a non-refundable advance against Xxxxxxx.xxx’s one-sixth share in the Net Proceeds such that M2 will receive a dollar-for-dollar credit from any monies that Xxxxxxx.xxx would otherwise receive through the prosecution of the Claim until such time as M2 fully recoups this payment. Each dollar received through future prosecution of the Claim that would otherwise be payable to Xxxxxxx.xxx hereunder shall be retained by M2, but fully disclosed and accounted for to Xxxxxxx.xxx until the time when such amounts represent a full recoupment of the $1,500,000.00 paid by M2. Should future recoveries of any type from the prosecution of the Claim (including sale of the ‘474 patent) not produce adequate funds from which full recoupment can be achieved by M2, Xxxxxxx.xxx shall, owe no payments to M2.
6. Upon execution of this Agreement, Xxxxxxx.xxx will cause the claims in the Texas Litigation against all parties to be dismissed with prejudice to the refiling of same, with
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each party to bear such party’s own costs. A copy of the Stipulation of Dismissal is attached hereto as Exhibit “A,”
7. Upon execution of this Agreement, M2 will cause the Florida Litigation to be dismissed against all parties with prejudice to refiling of same, with each party to bear such party’s own costs. A copy of the Stipulation of Dismissal is attached hereto as Exhibit “B,”
8. The Parties agree to execute any and all further documents reasonably necessary to comply with and carry out the terms of this Agreement,
9. The parties on behalf of themselves and their respective affiliates (which for M2 includes Geotag Management Group, LLC and Gerova, Inc. f/k/a Geomas, Inc.), hereby release each other from any and all claims, demands, and causes of action, whether known or unknown, relating in any way to (1) the claims that were or would have been asserted in the Texas Litigation or the Florida Litigation and (2) the ‘474 Patent,
10. Xxxxxxx.xxx. agrees to cooperate with M2 with regard to any reasonable requests in connection with M2’s prosecution of the Claim. M2 will keep Xxxxxxx.xxx informed of significant developments in the prosecution of the Claim. All reasonable and necessary costs incurred by Xxxxxxx.xxx in connection with such cooperation shall be considered a “claim- related expense” as described in paragraph 3 above and reimbursed as part of any recoveries from the prosecution of the Claim in the same manner as other claim-related expenses. The Board of Xxxxxxx.xxx may from time to time appoint up to two persons to represent it in its dealings with M2 or its attorneys. These persons may (1) discuss and receive comments from M2 or its attorneys regarding the status of the Claim and (2) request and receive in a timely manner copies of any pleadings or other information that is part of the public record. All such activities will be at the sole expense of Xxxxxxx.xxx and not considered a Claim-related expense. At present, and until further notice, Xxxxxxx.xxx appoints Xxxxxx X. Xxxxxx, Xx. and Xxxx Xxxxxxxxx to be the two persons.
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11. Each Party and each person signing this Agreement on behalf of a Party represents and warrants to the other that:
(a) Such Party has not entered this Agreement in reliance upon any promise, inducement, agreement, statement, or representation other than those contained in this Agreement.
(b) Such Party has the full right and power to enter into this Agreement, and the person executing this Agreement has the full right and authority to enter into this Agreement on behalf of such Party and the full right and authority to bind such Party to the terms and obligations of this Agreement.
(c) Such Party has been represented by competent and independent counsel of its own choice throughout all negotiations preceding the execution of the Agreement, and has executed this Agreement upon the advice of said competent and independent counsel regarding the meaning and legal effect of this Agreement, and regarding the advisability of making the agreements provided for herein, and fully understands the same.
12. All notices and requests that are required or permitted to be given in connection with this Agreement, other than communications by email, shall be deemed, given as of the day they are received either by messenger, delivery service, or in the United States of America mails, postage prepaid, certified or registered, return receipt requested, and addressed as follows, or to such other address as the Party to receive the notice or request so designates by written notice to the other:
To M2 Global, Ltd.:
Xxxxxx Xxxxxxx
President
M2 Global, Ltd.
Global Commerce Centre
Old Xxxxxx Road
St. John’s, Antigua
Bahamas
With a copy to :
Xxxxxxxx X. Xxxxx
Xxxxxxxx, Xxxxx & Xxxxx
000 X. 0xx Xxxxxx, Xxxxx 000
Xxxx Xxxxx, XX 00000
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To Xxxxxxx.xxx;
Attn: Xxxx Xxxxxxxxx
3135 X. Xxxxxxx, coach house
Xxxxxxx, XX 00000
With a copy to
Staes & Xxxxxxx, P.C.
000 X. Xxxxxxxxxx
Xxxxx 0000
Xxxxxxx, XX 00000
13. This Agreement shall be construed and controlled in accordance with the laws of the State of Texas and each Party consents to exclusive jurisdiction and venue in the federal courts sitting in the state of Texas, unless no federal subject matter jurisdiction exists, in. which case each Party consents to exclusive jurisdiction and venue in the state courts located in the state of Texas. Each Party waives all defenses of lack of personal jurisdiction and forum non conveniens. Process may be served on either Party in the manner authorized by applicable law or court rule.
14. Each Party shall bear its own costs, expenses and attorneys’ fees incurred in connection with the Texas Litigation and the Florida Litigation, the making of this Agreement, and its performance under this Agreement, other than as set forth herein.
15. The terms, covenants, conditions, provisions and benefits of this Agreement shall be binding upon and inure to the benefit of the Parties and their respective successors and assigns,
16. This Agreement results from negotiations between the Parties and their respective legal counsel, and each Party acknowledges that it has had the opportunity to negotiate modifications to the language of this Agreement. Accordingly, each Party agrees that in any dispute regarding the interpretation or construction of this Agreement, no statutory, common law or other presumption shall operate in favor of or against any Party hereto by virtue of its role in drafting or not drafting the terms and conditions set forth herein.
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17. If any provision of this Agreement shall be held by a court of competent jurisdiction to be illegal, invalid or unenforceable or otherwise in conflict with law, the remaining provisions shall remain in full force and effect to the extent legally possible. If any provisions of this Agreement are deemed not enforceable, they shall be deemed modified to the extent necessary to make them enforceable.
18. This Agreement may be executed in any number of counterparts and by the different Parties on separate counterparts and each such counterpart shall be deemed to be an original, but all such counterparts shall together constitute but one and the same Agreement. Execution of this Agreement may be accomplished by signing this Agreement and transmitting the signature page to opposing counsel by facsimile or email. The Parties so executing and delivering shall promptly thereafter deliver signed originals of at least the signature page(s), but failure to do so shall not affect the validity or enforceability of this Agreement.
19. No waiver of any provision of this Agreement shall be deemed or shall constitute a waiver of any other provision, whether or not similar, nor shall any waiver constitute a continuing waiver unless expressly stated in writing by the Party making the waiver. No waiver of any provision shall be binding in any event unless executed in writing by the Party making the waiver.
20. This Agreement constitutes the entire agreement between the Parties with respect to the subject matter hereof, and supersedes all prior and contemporaneous written or oral agreements or communications as to such subject matter, all of which are merged and fully integrated into this Agreement. This Agreement shall not be modified except by a written agreement dated subsequent to the date of this Agreement and signed by the Parties.
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EXECUTED AS OF THE DATE SET FORTH ABOVE:
| M2 GLOBAL, LTD. | XXXXXXX.XXX, INC. | |||||||
| /s/ Xxxxxx Xxxxxxx |
/s/ Xxxx Xxxxxxxxx | |||||||
| By: | XXXXXX XXXXXXX |
By: | Xxxxx Xxxxxxxxx | |||||
| Its: | PRESIDENT |
Its: | President | |||||
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EXHIBIT “A”
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
| XXXXXXX.XXX, INC., a Delaware | ) | |||
| Corporation, | ) | |||
| Plaintiff |
) | |||
| ) | ||||
| V. | ) | NO. 2-09 CV-143 | ||
| ) | ||||
| XXXX XXXXXXXX, XXXX XXXXXX, | ) | |||
| GEOMAS (International), LTD., | ) | |||
| GEOMAS TAG MANAGEMENT GROUP, | ) | |||
| a Delaware Limited Liability Company, | ) | |||
| GEOMAS, INC., a Texas Corporation, | ) | |||
| VERIZON COMMUNICATIONS, INC., | ) | |||
| a Delaware Corporation, | ) | |||
| IDEARK INFORMATION SERVICES, INC., | ) | |||
| a Delaware Corporation, and | ) | |||
| IDEARK MEDIA SERVICES WEST, INC. | ) | |||
| (agent of IDEARK INFORMATION SERVICES) | ) | |||
| ) | ||||
| Defendants |
) |
STIPULATION OF DISMISSAL WITH PREJUDICE
It is hereby stipulated by and between all parties to the above-captioned case pursuant to Fed. R. Civ. P. 41(a)(2) and (c) that all claims asserted by Plaintiff against Defendants and all counterclaims asserted by Defendants should be dismissed with prejudice with each party to bear its own costs, expenses and attorneys fees.
| Respectfully submitted, | ||
| /s/ Xxxxx Xxxxxx Xxxxxxxx |
/s/ Xxxxxxxx Xxxxx | |
| Xxxxx & Xxxxxxxx XX Xxxxxx X Xxxxxxxx, XX 00000 903/000-0000 000/938-8331-fax
Xxxxxx Xxxxx Xxxxxxx Xxxxxxx Xxxxx & Xxxxxxx PC 000 X Xxxxxxxxxx, Xxxxx 0000 Xxxxxxx, XX 00000 312/000-0000 000/201-9233-fax
Xxxxx Xxxxxx Attorney at Law 000 X Xxxxxxxx, Xxxxx 0000 Xxxxxxx, XX 00000 312/000-0000 000/443-1665-fax
Xxxxxx X Xxxxxxxx Xxxx Xxxxxxxx & Xxxxxx 0000 Xxxxxxx Xxxx Xxxxxxxxxx, XX 00000 262/783-1300 - 262/000-0000 - fax
ATTORNEYS FOR PLAINTIFF XXXXXXX.XXX |
Xxxxx Xxx Xx. 00000000 Xxxx Xxxxxxxxxx Xxxxx Bar No. 24067518 Xxxxxxxx, Xxxxx & Xxxxx, P.C. Xxxxxxx Xxxxxx Xxxxxxxxx Xx. 0 000 Xxxx Xxxxxx Xxxxxx, Xxxxx 000 Xxxx Xxxxx, Xxxxx 00000 (817)334-0400 (000)000-0000 (fax)
Xxxx X. Xxxxxxx State Bar No. 11614550 Xxxxxx X. Xxxxxxxxxx State Bar No. 16245610 Xxxxx X. Xxxxxx State Bar No. 00797198 Xxxxxxx, Prehoditch & Panzer, P.C. 9020 Capital of Xxxxx Xxx. X. Xxxxxxxx X, Xxxxx 000 Xxxxxx, Xxxxx 00000 (512)338-8800 (000)000-0000 (fax)
Xxxx X. Xxxxxxxx State Bar No. 19351500 Xxxxxx/Xxxxxxx A Professional Corporation 0000 Xxx Xxxxxx, Xxxxx 0000 Xxxxxx, Xxxxx 00000 (214) 939-8700 (000) 000-0000 (fax)
ATTORNEYS FOR DEFENDANTS GEOMAS, INC. AND GEOTAG MANAGEMENT GROUP, LLC | |
| /s/ Xxxxxx X. Xxxxx |
/s/ Xxxx Xxxxx Xxxxxxx | |
| Xxxxxx Xxxx Xxxxx & Associates 0000 Xxxx Xxxxx Xxxx. 0000 XX Xxxx 000, Xxxxx 000 Xxxx Xxxxx, Xxxxx 00000 Business (000) 000-0000 Fax (000) 000-0000
ATTORNYES FOR XXXX XXXXXXXX XXXX XXXXXX |
Xxxxxxxx Xxxxxx Xxxx Xxxxxx and Xxxx 0000 Xxxxxxxxxx Xxxx Crown Executive Center Xxxxx 000 X X Xxx 0000 Xxxxxxxxx, Xx 00000 903/000-0000 000/000-0000 - fax
Xxxxx X Xxxx Xxxxxxx Xxxxxxx Xxxxxxx Verizon Communications -Basking Ridge One Verizon Way Mail Stop 54S205 Xxxxxxx Xxxxx, XX 00000 908-559-5668 000-000-0000 - fax
ATTORNEYS FOR VERIZON COMMUNICATIONS, INC. |
CERTIFICATE OF SERVICE
I hereby certify that on the day of April, 2010, I electronically filed the foregoing document with the clerk of the court for the U.S. District Court, Eastern District of Texas, Marshall Division, using the electronic case filing system of the court. The electronic case filing system sent a “Notice of Electronic Filing” to the attorneys of record who have consented in writing to accept this Notice as service of this document by electronic means.
| /s/ Xxxxxxxx Xxxxx |
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
| XXXXXXX.XXX, INC., a Delaware | ) | |||
| Corporation, | ) | |||
| Plaintiff |
) | |||
| ) | ||||
| V. | ) | NO. 2-09 CV-143 | ||
| ) | ||||
| XXXX XXXXXXXX, XXXX XXXXXX, | ) | |||
| GEOMAS (International), LTD., | ) | |||
| GEOMAS TAG MANAGEMENT GROUP, | ) | |||
| a Delaware Limited Liability Company, | ) | |||
| GEOMAS, INC., a Texas Corporation, | ) | |||
| VERIZON COMMUNICATIONS, INC., | ) | |||
| a Delaware Corporation, | ) | |||
| IDEARK INFORMATION SERVICES, INC., | ) | |||
| a Delaware Corporation, and | ) | |||
| IDEARK MEDIA SERVICES WEST, INC. | ) | |||
| (agent of IDEARK INFORMATION SERVICES), | ) | |||
| ) | ||||
| Defendants. |
) |
ORDER OF DISMISSAL WITH PREJUDICE
In consideration of the parties’ Stipulation of Dismissal with Prejudice, it is hereby ORDERED that the Stipulation is GRANTED, and it is ORDERED, ADJUDGED AND DECREED that all claims and counterclaims asserted in this suit among Plaintiff and Defendants are hereby dismissed with prejudice.
It is further ORDERED that all attorneys’ fees and costs are to be borne by the party that incurred them.
EXHIBIT “B”
IN THE UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
| M2 Global, LTD., | ) | Case No. 6:09-cv-1209-MSS-KRS | ||
| ) | Removed Case: Case No. 05-2009-CA030179 | |||
| Plaintiff. |
) | The Circuit Court Of The Eighteenth Judicial | ||
| ) | Circuit In And For Brevard County, A | |||
| v. | ) | |||
| ) | ||||
| Xxxxxxx.xxx, Inc., | ) | |||
| ) | ||||
| Defendant. |
) |
STIPULATION OF DISMISSAL WITH PREJUDICE
It is hereby stipulated by and between all parties to the above-captioned case pursuant to Fed. R. Civ. P. 41(a)(2) and (c) that all claims asserted by Plaintiff against Defendants and all counterclaims asserted by Defendants should be dismissed with prejudice with each party to bear its own costs, expenses and attorneys fees.
Respectfully submitted,
| /s/ Xxxx X. Xxxxxxxxxxxx |
/s/ Xxxxxx X. Xxxxxxx | |
| Florida Bar No.: 250759 Xxxxxxx X. Xxxxxx Florida Bar No.: 0031149 Xxxx X. Xxxx Florida Bar No.: 0055432 XXXX XXXXXXXX, P.A. 0000 X. Xxxx Xxxx. Xxxxxxxxx, XX 00000 X.X. Xxx 0000 Xxxxxxxxx, XX 00000-0000 Phone (000)000-0000 Fax (000)000-0000
ATTORNEYS FOR PLAINTIFF M2 GLOBAL, LTD. |
Xxxxxxx Xxxxxx, PA 000 X Xxxxxx Xxx - Xxx 000 XX Xxx 0000 Xxxxxxx, XX 00000-0000 407/000-0000 000-000-0000 - fax
Xxxxxxx X. Xxxxx Xxxx & Marks, LLC 000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx 000 Xxxxxxxxx, XX 00000 (321)255-0600 (000) 000-0000
Xxxxxxx Xxxxxxx Xxxxxx Xxxxx Xxxxx & Xxxxxxx PC 000 X Xxxxxxxxxx, Xxxxx 0000 Xxxxxxx, XX 00000 312/000-0000 000/201-9233-fax
ATTORNEYS FOR DEFENDANT XXXXXXX.XXX INC. |
CERTIFICATE OF SERVICE
I hereby certify that on the day of April, 2010, I electronically filed the foregoing document with the clerk of the court for the U.S. District Court, Middle District of Florida, using the electronic case filing system of the court. The electronic case filing system sent a “Notice of Electronic Filing” to the attorneys of record who have consented in writing to accept this Notice as service of this document by electronic means.
| /s/ Xxxx X. Xxxxxxxxxxxx |
IN THE UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
| M2 Global, LTD., | ) | Case No. 6:09-cv-1209-MSS-KRS | ||
| ) | Removed Case: Case No. 05-2009-CA030179 | |||
| Plaintiff. |
) | The Circuit Court Of The Eighteenth Judicial | ||
| ) | Circuit In And For Brevard County, A | |||
| v. | ) | |||
| ) | ||||
| Xxxxxxx.xxx, Inc., | ) | |||
| ) | ||||
| Defendant. |
) |
ORDER OF DISMISSAL WITH PREJUDICE
In consideration of the parties’ Stipulation of Dismissal with Prejudice, it is hereby ORDERED that the Stipulation is GRANTED, and it is ORDERED, ADJUDGED AND DECREED that all claims and counterclaims asserted in this suit among Plaintiff and Defendants are hereby dismissed with prejudice.
It is further ORDERED that all attorneys’ fees and costs are to be borne by the party that incurred them.
Dated: , 2010.
|
|
| UNITED STATES DISTRICT JUDGE |
