EXHIBIT 10.3
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SETTLEMENT AGREEMENT
Agreement made and entered into this 13th day of July 2001, by
and between Xxxxxxxxxxxx Druckmaschinen Aktiengesellschaft, a corporation
organized and existing under the laws of Germany, having an office and place of
business at Xxxxxxxxxxxxxxxxx 00-00, XX-00000 Xxxxxxxxxx, Xxxxxxx (hereinafter
referred to as "HEIDELBERG") and Presstek, Inc., a corporation organized and
existing under the laws of the State of Delaware, USA, having an office and
place of business at 00 Xxxxxxxxx Xxxxx, Xxxxxx, Xxx Xxxxxxxxx 00000-0000,
(hereinafter referred to as "PRESSTEK").
STATEMENT
PRESSTEK and HEIDELBERG are parties to an arbitration
proceeding being conducted pursuant to the auspices of the International Chamber
of Commerce, Court of Arbitration, [CONFIDENTIAL TREATMENT REQUESTED] /*/
(hereinafter "the Arbitration"). HEIDELBERG and PRESSTEK have now resolved by
agreement all claims and counterclaims presented in the Arbitration, except that
the parties' resolution of PRESSTEK's claims against HEIDELBERG based on U.S.
Patent No. B1 5,163,368 and U.S. Patent No. B1 5,174,205 and their counterparts
in other countries (the `368 and `205 Patents) are contingent on future events.
As to the `368 and `205 Patents, PRESSTEK is presently
involved in a patent infringement action in the U.S. District Court for the
District of Delaware, Civil Action Xx. 00 Xxx. 000 (XXX) (xxx "Delaware Action")
with Creo Products, Inc. of Canada, HEIDELBERG's vendor for the imaging system
for the Heidelberg Speedmaster 74-DI press currently on sale (the "SM74-DI"),
the press which is the
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/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE COMMISSION PURSUANT TO RULE 24B-2 PROMULGATED
UNDER THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
subject of PRESSTEK's `368 and `205 Patent claims in the Arbitration. The
Delaware Action was tried from June 25 to June 30, 2001.
The parties are entering into this Settlement Agreement to set
forth the terms of their resolution of all issues in the Arbitration and all
other claims between them arising out of events that have occurred prior to the
date of the Settlement Agreement.
Now, therefore, in consideration of the mutual promises herein
contained, the parties agree as follows:
1. All claims and counterclaims in the Arbitration shall be
dismissed, with prejudice, each party to bear its own costs. Except and only to
the extent as provided in paragraph 2 below, the parties hereby release and
discharge one another from all such claims and counterclaims and shall exchange
general releases of all claims, other than payments due and warranty claims
arising out of PRESSTEK's sale of products to HEIDELBERG in the normal course of
business. The parties will consult with the Chairman of the Arbitral Tribunal to
obtain guidance as to the appropriate procedure to terminate the Arbitration and
will take such reasonable steps as recommended by the Chairman of the Arbitral
Tribunal.
2. As to PRESSTEK's claims against HEIDELBERG with respect to
infringement of the `368 and `205 Patents, the parties agree that resolution of
such claims will await resolution of the issues of validity and infringement in
the Delaware Action, including any appeal from the decision of the District
Court in the Delaware Action. Upon final decision of the issues of validity and
infringement in the Delaware Action, if one or more claims of the `368 and/or
`205 Patents are held valid and infringed
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by the Heidelberg SM74-DI press, then HEIDELBERG shall [CONFIDENTIAL TREATMENT
REQUESTED] /*/ in full satisfaction of such claims. PRESSTEK's claims against
HEIDELBERG with respect to infringement of the `368 and `205 Patents shall be
released and discharged upon such payment or upon any dismissal of the claims
pursuant to a settlement or otherwise. [CONFIDENTIAL TREATMENT REQUESTED] /*/.
PRESSTEK agrees that, conditioned upon [CONFIDENTIAL TREATMENT REQUESTED] /*/
PRESSTEK will take no action to enjoin the manufacture, use, sale or offer for
sale of the SM74-DI press by HEIDELBERG, one of its distributors or its
customers.
3 The non-compete provisions of the Master Agreement between
the parties effective January 1, 1991 contained in Par. 9 of the Master
Agreement as amended in Par. 1(b) of Memorandum of Performance No. 3, dated
April 27, 1993, are hereby unconditionally terminated.
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/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE COMMISSION PURSUANT TO RULE 24B-2 PROMULGATED
UNDER THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
4. With respect to the dispute between the parties in the
Arbitration concerning ownership of certain patents filed by HEIDELBERG, the
parties agree as follows:
a. The term "Disputed Patents", as used in this
paragraph, shall refer to all patents and patent applications
identified in Exhibit A attached hereto, as well as any
patents or patent applications filed in other countries
corresponding (i.e., having the same priority) to those
patents and applications, including any divisions, re-issues,
or re-examinations thereof.
b. All patents and patent applications based on
HEIDELBERG Patent File No. [CONFIDENTIAL TREATMENT REQUESTED]
/*/ shall be assigned to PRESSTEK by HEIDELBERG by executing
an Assignment in the appropriate form.
c. With respect to Item 10 on Exhibit A, PRESSTEK
hereby grants to HEIDELBERG, and, with respect to Items 1
through 9 on Exhibit A, HEIDELBERG hereby grants to PRESSTEK,
a non-cancelable, non-exclusive, paid-up license, including
the right to grant sub-licenses to each party's vendors,
customers, and licensees for the life of all such Disputed
Patents.
5. a. PRESSTEK hereby grants to HEIDELBERG a paid-up,
non-exclusive license under PRESSTEK's trade secrets and
know-how, heretofore communicated to HEIDELBERG, to make, use,
sell, lease,
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/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT
HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE
COMMISSION PURSUANT TO RULE 24B-2 PROMULGATED UNDER THE
SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
or otherwise dispose of the HEIDELBERG [CONFIDENTIAL
TREATMENT REQUESTED] /*/.
b. PRESSTEK hereby [CONFIDENTIAL TREATMENT REQUESTED]
/*/ HEIDELBERG or its customers based on their use of
HEIDELBERG printing press products, under [CONFIDENTIAL
TREATMENT REQUESTED] /*/.
6. a. PRESSTEK and HEIDELBERG shall enter into a new
Confidentiality Agreement in the form attached hereto as
Exhibit B.
b. Except for HEIDELBERG's royalty obligations with
respect to the Quickmaster 46 DI product, the parties hereby
release and discharge one another from any and all claims
based on the use of confidential information, trade secrets,
and know-how exchanged between the parties under their
pre-existing Confidentiality and Non-Disclosure Agreements
prior to the date of this Settlement Agreement. All
confidential information exchanged subsequent to the date of
this Settlement Agreement shall hereafter be governed by the
terms and conditions of the attached Confidentiality
Agreement.
7. The provisions of Paragraph 5b., c. and d. of the
Master Agreement between the parties effective January 1, 1991
relating to ownership and enforcement of intellectual
property, and any other agreements existing between the
parties that provide for the assignment of intellectual
property from HEIDELBERG to
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/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE COMMISSION PURSUANT TO RULE 24B-2 PROMULGATED
UNDER THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
PRESSTEK, and any rights thereunder, are hereby terminated as
of the date of this Settlement Agreement. Upon execution of
this Settlement Agreement, HEIDELBERG no longer will have any
obligation to assign any intellectual property to PRESSTEK,
except as provided in paragraph 4 herein.
8. As to the dispute between the parties concerning the
DI trademark:
a. All trademark applications and trademark
registrations filed by or on behalf of HEIDELBERG or its
related companies for the DI trademark per se (i.e., DI
without other HEIDELBERG trademarks) shall be assigned to
PRESSTEK by filing appropriate documentation in each
respective country. HEIDELBERG shall not hereafter file any
trademark application for, or otherwise obtain trademark
registration for, the trademark DI per se (i.e., without other
Heidelberg trademarks), and if it does so, such applications
and/or registrations shall be assigned to PRESSTEK.
b. PRESSTEK shall grant a trademark license to
HEIDELBERG to use the DI trademark in connection with its
press and imaging products (excluding printing plates) by
executing, simultaneously with the execution of this
Settlement Agreement, a Trademark License Agreement in the
form attached hereto as Exhibit C. HEIDELBERG shall have the
right, as provided in such Trademark License Agreement, to use
the DI trademark in combination with other Heidelberg
trademarks (such as SPEEDMASTER-DI) and to own in its own name
trademark applications and registrations for such composite
trademarks.
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9. HEIDELBERG shall pay PRESSTEK U.S. $750,000, payable
on December 1, 2001.
10. PRESSTEK agrees that if HEIDELBERG uses technology covered
by PRESSTEK patents (other than plate technology) for use in other HEIDELBERG
direct imaging projects, PRESSTEK will not take legal action for infringement of
such patents until 90 days after it has given HEIDELBERG written notice of the
alleged infringement of such patents. PRESSTEK agrees that during such 90-day
period it shall enter into formal mediation procedures with HEIDELBERG in an
attempt to reach agreement on a license to HEIDELBERG for such patents which
PRESSTEK alleges are infringed. Such mediation shall be conducted in accordance
with the Commercial Mediation Rules of the American Arbitration Association and
shall occur in New York, New York in English. If agreement cannot be reached
based on mediation during such 90-day period, PRESSTEK shall be free, after such
90-day period, to take such action as it deems appropriate and shall have all
rights and remedies provided by law.
11. The license from PRESSTEK to HEIDELBERG with respect to
the Heidelberg Quickmaster 46 DI press shall be non-exclusive and royalties
pursuant to such license shall be at the rates provided below for imaging kits
delivered during the periods indicated below:
a. until April 30, 2002, including all Quickmaster
46DI kits currently on order - U.S. [CONFIDENTIAL
TREATMENT REQUESTED] /*/ per kit;
b. from May 1, 2002 - U.S. [CONFIDENTIAL TREATMENT
REQUESTED] /*/ per kit.
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AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE COMMISSION PURSUANT TO RULE 24B-2 PROMULGATED
UNDER THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
12. The parties shall jointly issue a press release concerning
the settlement of the Arbitration in a form agreed to between the parties.
13. This Settlement Agreement shall be executed in duplicate
originals by the parties and shall be first delivered by facsimile. The
execution of this Settlement Agreement by the parties and delivery thereof by
facsimile shall be valid and binding as of the Effective Date which will be
inserted in the preamble. Within 30 days after facsimile execution, the parties
shall deliver and exchange fully executed originals of the Settlement Agreement.
IN WITNESS WHEREOF, the parties have caused this Settlement
Agreement to be executed by their duly authorized representatives.
Presstek, Inc.
By: /s/ Xxxxxx Xxxxxxx
Title: CEO
Date: 7/25/01
Xxxxxxxxxxxx Druckmaschinen Aktiengesellschaft
By: /s/ Wirnt Xxxxxxx
Title: General Counsel
Date: 7/26/01
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1. U.S. Patent No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Japanese Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
German Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Title: [CONFIDENTIAL TREATMENT REQUESTED] /*/
Inventor(s): [CONFIDENTIAL TREATMENT REQUESTED] /*/
2. U.S. Patent No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Japanese Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
German Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
European Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Title: [CONFIDENTIAL TREATMENT REQUESTED] /*/
Named Inventor(s): [CONFIDENTIAL TREATMENT REQUESTED] /*/
3. U.S. Patent No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Japanese Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
German Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
European Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Title: [CONFIDENTIAL TREATMENT REQUESTED] /*/
Named Inventor(s): [CONFIDENTIAL TREATMENT REQUESTED] /*/
4. U.S. Patent No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Japanese Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
German Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Great Britain Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Title: [CONFIDENTIAL TREATMENT REQUESTED] /*/
Named Inventor(s): [CONFIDENTIAL TREATMENT REQUESTED] /*/
EXHIBIT A
/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE COMMISSION PURSUANT TO RULE 24B-2 PROMULGATED
UNDER THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
5. U.S. Patent No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Japanese Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
German Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Title: [CONFIDENTIAL TREATMENT REQUESTED] /*/
Named Inventor(s): [CONFIDENTIAL TREATMENT REQUESTED] /*/
6. U.S. Patent No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
German Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Title: [CONFIDENTIAL TREATMENT REQUESTED] /*/
Named Inventor(s): [CONFIDENTIAL TREATMENT REQUESTED] /*/
7. U.K. Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Japanese Patent Doc. No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Title: [CONFIDENTIAL TREATMENT REQUESTED] /*/
Inventor(s): [CONFIDENTIAL TREATMENT REQUESTED] /*/
8. German Patent No. [CONFIDENTIAL TREATMENT REQUESTED] /*/
Title: [CONFIDENTIAL TREATMENT REQUESTED] /*/
Inventor(s): [CONFIDENTIAL TREATMENT REQUESTED] /*/
9. Patent Application identified as [CONFIDENTIAL TREATMENT REQUESTED] /*/
Title: [CONFIDENTIAL TREATMENT REQUESTED] /*/
Inventor(s): [CONFIDENTIAL TREATMENT REQUESTED] /*/
10. Patent Application identified as [CONFIDENTIAL TREATMENT REQUESTED] /*/
Title: [CONFIDENTIAL TREATMENT REQUESTED] /*/
Inventor(s): [CONFIDENTIAL TREATMENT REQUESTED] /*/
EXHIBIT A
(continued)
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AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE COMMISSION PURSUANT TO RULE 24B-2 PROMULGATED
UNDER THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
MUTUAL CONFIDENTIALITY AGREEMENT
This agreement is made and entered into effective as of July
13, 2001, by and between Presstek, Inc., having an office and place of business
at 00 Xxxxxxxxx Xxxxx, Xxxxxx, Xxx Xxxxxxxxx 00000-0000, XXX (hereinafter
referred to as "Presstek"); and Xxxxxxxxxxxx Druckmaschinen Aktiengesellschaft,
having an office and place of business at Xxxxxxxxxxxxxxxxx 00-00, XX-00000
Xxxxxxxxxx, Xxxxxxx (hereinafter "Heidelberg").
WHEREAS, Presstek and Heidelberg have disclosed to each other
and may need to disclose hereafter certain confidential and proprietary
information including trade secrets, know-how and other confidential technical
and business information;
NOW, THEREFORE, in consideration of the mutual promises herein
contained, the parties have agreed as follows:
1. Information communicated by one party (the "Disclosing
Party") to the other (the "Receiving Party") which the Disclosing Party
considers confidential shall, when communicated in documentary form or on
computer tape or disc, be marked as "Confidential." In the event information is
communicated orally or by transfer of non-documentary materials or by
observation during visits to the Disclosing Party's facilities, the confidential
nature of such information shall be confirmed to the Receiving Party in writing
within twenty days after such disclosure. "Confidential Information" shall mean
any and all information in any form with respect to the Disclosing Party's
technical or business matters which are designated by the Disclosing Party as
"confidential" in the manner set forth above.
2. The Receiving Party shall maintain all Confidential
Information of the Disclosing Party in strict confidence, shall not publish,
disseminate, disclose or otherwise make such Confidential Information available
to any third party without
EXHIBIT B
the prior written consent of the Disclosing party (and then only within the
limits of such prior written consent), and shall not use such Confidential
Information for any purpose other than in furtherance of business arrangement
between the parties. The Receiving Party agrees to limit the dissemination of,
and access to, the Confidential Information to employees of the Receiving Party
(together with its legal and technical advisors) who have a "need to know" such
information, provided that such employees or advisors shall have entered into
appropriate confidentiality relationships with the Receiving Party so as to
ensure that the Receiving Party has the legal right to implement the terms and
conditions of this Confidentiality Agreement.
3. Notwithstanding paragraph 2 of this Confidentiality
Agreement, the obligations of confidentiality and non-use on the part of the
Receiving Party shall not apply to information which:
(a) the Receiving Party can establish was publicly
known or was known to the Receiving Party at the time of
disclosure;
(b) becomes publicly known subsequent to the time of
disclosure, provided that such public knowledge is not the
fault of, or the result of an improper disclosure by, the
Receiving Party;
(c) is subsequently received by the Receiving Party
without a confidentiality obligation from a third party which
has the right to disclose such information without a
confidentiality obligation; or
(d) is required to be disclosed by applicable law,
regulation or legal process (whether by subpoena, civil
investigative demand, or other similar process), provided that
if the Receiving Party is so requested to disclose any of the
Confidential Information the Receiving Party will in the first
instance take all reasonable steps to prevent public
disclosure of such Confidential Information and will provide
the Disclosing Party with prompt notice of any such request of
which the Receiving Party has knowledge so that the Disclosing
Party may seek a protective order
or other appropriate remedy, or may waive the Receiving
Party's compliance with the provisions of this Confidentiality
Agreement, as appropriate. Regardless of whether the
Disclosing Party waives compliance with the terms hereof for
the purpose of such disclosure, or whether a protective order
or other appropriate remedy is obtained, the Receiving Party
will furnish only that portion of the Confidential Information
which is required to be disclosed by such applicable law,
regulation or legal process.
4. At the request of the Disclosing Party at a time when such
Confidential Information is no longer needed in connection with the parties'
mutual business relations, all Confidential Information in any tangible form
received by the Receiving Party and all documents, notes, sketches, proto-types,
discs, tapes, records or other written materials prepared by the Receiving Party
containing or reflecting such Confidential Information or abstracts or summaries
thereof shall be promptly destroyed or returned to the Disclosing Party,
together with all copies thereof, except that one copy of any such materials may
be retained by outside counsel for the Receiving Party for archival purposes.
5. Nothing contained in this Confidentiality Agreement shall
be construed as requiring either party to disclose any specific information to
the other, nor as a grant by implication, estoppel or otherwise of any license
to make, have made, use or sell any product or as a license under any patent,
patent application, utility model, copyright, trade secret or any other
proprietary right.
6. This Confidentiality Agreement shall be in force from the
time it is signed by both parties for so long as the parties have a continuing
business relationship and for a period of [CONFIDENTIAL TREATMENT REQUESTED] /*/
years thereafter, but in no event less than [CONFIDENTIAL TREATMENT REQUESTED]
/*/ years from the date of this Confidentiality Agreement.
7. The parties acknowledge and agree that a breach of this
Confidentiality Agreement by either of them may cause irreparable damage to the
non-breaching party, that such damage would be difficult to measure, and
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AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE COMMISSION PURSUANT TO RULE 24B-2 PROMULGATED
UNDER THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
that such damage may not be adequately compensated by monetary damages.
Consequently, the parties agree that each shall be entitled to equitable relief,
including injunction and specific performance, in the event of any breach of the
provisions of this Confidentiality Agreement, in addition to all remedies
available to the parties at law or in equity.
8. This Confidentiality Agreement contains the entire
agreement between the parties concerning disclosure and use of Confidential
Information and cannot be altered except by an agreement between the parties in
writing. This Confidential Agreement shall be interpreted in accordance with the
laws of the State of New York, and all parties to this Confidentiality Agreement
hereby subject themselves to the jurisdiction of the Courts of New York or the
Courts of the United States sitting in New York to enforce the provisions of
this Confidentiality Agreement.
IN WITNESS WHEREOF, the parties have caused this
Confidentiality Agreement to be executed by their duly authorized
representatives.
Presstek, Inc.
By: /s/ Xxxxxx Xxxxxxx
--------------------------------------------------------
Title: CEO
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Date: 7/25/01
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Xxxxxxxxxxxx Druckmaschinen Aktiengesellschaft
By: /s/ Wirnt Xxxxxxx
--------------------------------------------------------
Title: General Counsel
-----------------------------------------------------
Date: 7/26/01
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TRADEMARK LICENSE AGREEMENT
This Agreement, dated as of the 13th day of July 2001, by and between:
PRESSTEK, INC., a corporation organized and existing under the laws of the State
of Delaware, USA, located and doing business at 00 Xxxxxxxxx Xxxxx, Xxxxxx, Xxx
Xxxxxxxxx 00000-0000 (hereinafter, "PRESSTEK"); and Xxxxxxxxxxxx Druckmaschinen
Aktiengesellschaft, a corporation organized and existing under the laws of
Germany, located and doing business at Xxxxxxxxxxxxxxxxx 00-00, XX- 00000
Xxxxxxxxxx, Xxxxxxx (hereinafter, "HEIDELBERG").
WHEREAS, PRESSTEK is the owner of the trademark "DI" and the good will
associated thereunder, including U.S. Trademark Registration No. 1,711,005 of
September 1, 1992 for the trademark DI as applied to printing inks, printing
presses and printing plates and applications and registrations in other
countries (hereinafter, the "DI Xxxx");
WHEREAS, PRESSTEK and HEIDELBERG are parties to an arbitration
proceeding being conducted under the auspices of the International Chamber of
Commerce, Court of Arbitration, [CONFIDENTIAL TREATMENT REQUESTED] /*/ which
involves HEIDELBERG's use of the DI Xxxx among other issues (the "Arbitration");
WHEREAS, the parties desire to settle the trademark-related controversy
between them, including the trademark claims involved in the Arbitration, and,
concurrent herewith, are executing a Settlement Agreement in the Arbitration;
EXHIBIT C
/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE COMMISSION PURSUANT TO RULE 24B-2 PROMULGATED
UNDER THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
NOW, THEREFORE, in consideration of the foregoing and of the mutual
promises hereinafter set forth and the exchange of other good and valuable
consideration in a Settlement Agreement between the parties concerning the
Arbitration, the receipt and sufficiency of which is hereby acknowledged, the
parties agree as follows:
1. GRANT OF LICENSE
PRESSTEK hereby grants to HEIDELBERG a [CONFIDENTIAL TREATMENT
REQUESTED] /*/ nonexclusive, nontransferable license to use the DI Xxxx in
connection with printing presses and imaging products (other than printing
plates) and in the advertising and promotion of such products and related
services.
2. HEIDELBERG COMPOSITE TRADEMARKS
HEIDELBERG shall have the right to use the DI Xxxx in
combination with HEIDELBERG trademarks (such as SpeedMaster DI and QuickMaster
DI) (the "Composite Trademarks") throughout [CONFIDENTIAL TREATMENT REQUESTED]
/*/ . HEIDELBERG shall have the right to own, in its own name, trademark
applications and registrations for the Composite Trademarks where permitted by
law. Except as expressly permitted in this Paragraph, HEIDELBERG will not apply
to register any xxxx containing the DI Xxxx and will not oppose any such
application[s] by PRESSTEK.
3. QUALITY
HEIDELBERG agrees that the nature and quality of the goods and
services which it provides or renders under the DI Xxxx and the Composite
Trademarks shall be of as high a quality as the goods and services which it has
sold prior to the date hereof. PRESSTEK acknowledges that it has evaluated the
nature and quality of
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AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE COMMISSION PURSUANT TO RULE 24B-2 PROMULGATED
UNDER THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
HEIDELBERG's products and services and related advertising and promotion, and
agrees that such quality is appropriate for goods and services sold under the DI
Xxxx and the Composite Trademarks. PRESSTEK agrees that HEIDELBERG's continued
use of the same or similar quality is in full compliance with the requirements
of this License Agreement. Further, HEIDELBERG shall comply with all applicable
laws and regulations and obtain all appropriate government approvals pertaining
to the offering, sale, distribution and advertising of goods and services under
the DI Xxxx and the Composite Trademarks.
4. TERM
Subject to Paragraph 5, this License shall continue in force
and effect [CONFIDENTIAL TREATMENT REQUESTED] /*/ .
5. TERMINATION FOR CAUSE
PRESSTEK shall have the right to terminate this Agreement in
the event of any affirmative act of insolvency by HEIDELBERG, or upon the
appointment of any receiver or trustee to take possession of the properties of
HEIDELBERG or upon the winding-up, sale, consolidation, merger or any
sequestration by governmental authority of HEIDELBERG, or in the event of a
material breach of HEIDELBERG's obligations under this Trademark License
Agreement.
6. FURTHER ASSURANCES
The parties agree to take any actions or execute any documents
reasonably requested by the other to fulfill the intentions of this Agreement.
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/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE COMMISSION PURSUANT TO RULE 24B-2 PROMULGATED
UNDER THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
INTERPRETATION OF AGREEMENT
It is agreed that this license shall be interpreted according
to the laws of the State of New York and that it may not be modified except by a
writing signed by both parties.
IN WITNESS WHEREOF, the parties hereto have caused this
license to be executed as of the day and year first written above.
Presstek, Inc.
By: /s/ Xxxxxx Xxxxxxx
-------------------------------------------------------
Title: CEO
----------------------------------------------------
Date: 7/25/01
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Xxxxxxxxxxxx Druckmaschinen Aktiengesellschaft
By: Wirnt Xxxxxxx
-------------------------------------------------------
Title: General Counsel
----------------------------------------------------
Date: 7/26/01
-----------------------------------------------------
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