SETTLEMENT AND RELEASE AGREEMENT
Exhibit 10.6
SETTLEMENT AND RELEASE
AGREEMENT
This
Settlement and Release
Agreement (“Agreement”) is made as of May 29,
2009 (“Effective Date”) by and between the following: (a) Priviam,
Inc., a New Jersey corporation(“Priviam”); and (b) EncryptaKey, Inc., a Nevada
corporation, Xxxx Consulting, LLC, a California Limited Liability Corporation,
and Xxxxx Xxxx, an individual residing in California (collectively
“EncryptaKey”). Priviam and EncryptaKey are each referred to herein
as a “Party” and collectively as the “Parties.”
RECITALS
WHEREAS,
the Parties have been involved in litigation concerning, among other things, an
asset purchase agreement between the parties regarding certain patents pending
owned by EncryptaKey in Priviam, Inc. x. Xxxxx Xxxx, Xxxx Consulting, LLC and
EncryptaKey Inc., Case No. 2008-00109638, in the Orange County Superior Court of
the State of California (“Pending
Litigation”); and WHEREAS, EncryptaKey and Priviam wishing to avoid the expense
of further litigation, have agreed to settle such Pending Litigation pursuant to
the terms set forth below without any Party making any admission of any
liability, and as part of the settlement, the parties have agreed that: (i)
Priviam is to dismiss the pending litigation with prejudice; (ii) EncryptaKey
has returned 5,500,000 million shares of Priviam stock to Priviam, which, after
a 3.25 to 1 reverse split, includes 1,692,308 shares in Priviam; (iii)
EncryptaKey has returned 636,120 shares of Priviam stock to Priviam which, after
a 3.25 to 1 reverse split, includes 195,370 shares in Priviam; and (iv)
EncryptaKey is to grant to Priviam immunity from suit with respect to the
subject patents (see Exhibit B appended hereto), with the intent that
Priviam will not have any risk of a claim or a liability for infringements of
such patents as a result of any activities described in this
Agreement.
THEREFORE,
in consideration of the mutual covenants, representations, warranties
and other terms and conditions contained herein, the sufficiency
of which is hereby acknowledged, the Parties hereto agree as follows:
AGREEMENT
1.
DEFINITIONS.
In
addition to other terms defined elsewhere herein, the following terms, as
used in this Agreement, shall have the meanings indicated:
1.1
“Affiliate” shall mean, as to any person, any corporation,
firm, partnership,
entity or other person that, directly or indirectly, controls,
is controlled by (each such controlled person, a “Subsidiary”),
or is
under common control with such person, where “control” means
the capacity
to designate, appoint or otherwise determine the board of directors
or other governing authority of such person, whether by law or in fact,
and whether by (i) ownership of more than fifty percent (50%)
of the
equity or rights or shares in profits and losses (or such
lesser percentage
which is the maximum allowed to be owned by a oreign corporation
in a particular jurisdiction) of such person, (ii) voting rights or
management contract or agreement, (iii) any other contract or agreement
that grants to any other person effective control over the affairs
and activities of such person, or (iv) some combination of
the foregoing,
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1.2
“Associated Parties” means a Party’s Affiliates,
agents, representatives, officers, directors,
majority shareholders, members, employees, successors and assigns.
1.3
“Claim” means any legal action, arbitration, administrative proceeding, demand
for royalties, or other action, demand or claim of infringement.
1.4
“Control” means, with respect to any entity, beneficial ownership, directly or
indirectly, of securities representing fifty percent (50%) or more of the total
voting power entitled to vote in elections of such entity’s board of directors
or other governing authority.
1.5
“Commercial Partners” means direct and indirect third-party manufacturers,
suppliers, distributors, resellers, sales agents, customers, and users (such
directly and indirectly related persons).
1.6
“Controls” with respect to a Party’s rights in or to a patent
or patent
application, means that the Party or any of its Subsidiaries
owns the
patent or patent application, or has the right to grant licenses
or immunities
from suit, or bring or release claims or actions for infringement
of such patent or patent application.
1.7
“EncryptaKey–Filed Patents” means United States Application Numbers
11739028, 11738976, 11738956, 11738964, and 11738954, and their foreign
counterparts.
1.8
“Priviam Affiliate” means any entity that, directly or indirectly, through one
or more intermediaries, is Controlled by Priviam.
1.9 “Priviam
Party” means (a) Priviam, (b) any Priviam Affiliate or Affiliates (as that term
is defined in Section 1.1 above), and (c) any service provider, any supplier,
any contractor, any manufacturer, or any other third party that provides (but
only in its capacity as a provider of) services or products to Priviam or any
Priviam Affiliates.
1.10 “Released
Claims” means any and all claims, counterclaims, demands, actions, causes of
action, damages, liabilities, losses, payments, obligations, costs and expenses
(including, without limitation, attorneys’ fees and costs) of any kind or
nature, past, present, fixed or contingent, direct or indirect, in law or
equity, several or otherwise, known or unknown, suspected or unsuspected, that
arises from or relate in any way to any act or omission prior to the Effective
Date
1.11 “Released
Parties” means each other Party and its Affiliates, agents, representatives,
officers, directors, shareholders, members, employees, attorneys, advisors,
insurers, direct and indirect third-party manufacturers, suppliers,
distributors, resellers, sales agents, customers, and users, successors,
assigns, and heirs
1.12
“Subject Patent” shall mean, as to a Party, all patents and applications
therefore as listed in Section 1.5, together with any patents that issue in
respect of such applications, in all countries of the world that, at any time
during the term of this Agreement, such Party Controls.
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2.
RELEASES AND SETTLEMENT
2.1
Mutual Release. Each party, on behalf itself and its Affiliates, agents,
representatives, officers, directors, majority shareholders in agreement with
this agreement, members, employees, successors and assigns (“Associated
Parties”), hereby irrevocably releases and forever discharges each other Party
and its Affiliates, agents, representatives, officers, directors, members,
employees, attorneys, advisors, insurers, direct and indirect third-party
manufacturers, suppliers, distributors, resellers, sales agents, customers, and
users (such directly and indirectly related persons, the “Commercial Partners”),
successors, assigns, and heirs (collectively, “Released Parties”) of and from
any and all claims, counterclaims, demands, actions, causes of action, damages,
liabilities, losses, payments, obligations, costs and expenses (including,
without limitation, attorneys’ fees and costs) of any kind or nature, past,
present, fixed or contingent, direct or indirect, in law or equity, several or
otherwise, known or unknown, suspected or unsuspected, that arises from or
relate in any way to any act or omission prior to the Effective Date (“Released
Claims”). The foregoing release is expressly intended to cover and include,
without limitation, all claims, past, present, known or unknown, suspected or
unsuspected, which can or may ever be asserted by successors, assigns, heirs, or
otherwise, as the result of the matters herein released, or the effects or
consequences thereof. With respect to EncryptaKey’s Commercial Partners, the
foregoing release by Priviam and its Associated Parties shall apply only to
Released Claims arising from or relating in any way to products or services
provided by, for, or to EncryptaKey. With respect to Priviam’s Commercial
Partners, the foregoing release by EncryptaKey and its Associated Parties shall
apply only to Released Claims arising from or relating in any way to products or
services provided by, for, or to Priviam. The foregoing release shall not apply
to each Party’s obligations required to be performed under this
Agreement.
2.2
Waiver. Each Party, on behalf of itself and its Affiliates, agents,
representatives, officers, directors, majority shareholders in agreement with
this agreement, employees, attorneys, advisors, insurers, successors and
assigns, hereby irrevocably and forever waives all rights it may have arising
under California Civil Code Section 1542 (or any analogous requirement of law)
with respect to the foregoing release. Each Party understands that Section 1542
provides that:
A general
release does not extend to claims which the creditor does not know or
suspect to exist in his favor at the time of executing the release,
which if known by him must have materially affected his settlement
with the debtor.
Each
Party acknowledges that it has been fully informed by its
counsel concerning
the effect and import of this Agreement under California Civil Code
Section 1542 and other requirements of law.
2.3
Dismissal of Pending Litigation. Within five (5) days after
the Effective
Date, the parties shall cause to be completed, executed and filed
with the applicable court a stipulated dismissal with prejudice of the
Pending Litigation consistent with this Agreement and in the
form attached
hereto as Exhibit A (the “Dismissal”).
2.4 No
Admission. This Agreement is entered into in order to
compromise and
settle disputed claims, without any acquiescence on the part of
any Party as
to the merit of any claim, defense, affirmative defense, counterclaim,
liabilities or damages related to any patent rights and/or the
Pending Litigation. Neither this Agreement nor any part thereof
shall be, or be
used as, an admission of infringement or liability by anyone,
at any time
for any purpose.
2.5
Validity and Enforceability. The Parties hereby agree that the EncryptaKey
Patents are valid and enforceable.
2.6
Attorneys’ Fees and Costs. Each Party shall he responsible for its own
attorneys’ fees and costs in connection with this Agreement and
the Pending
Litigation.
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3.
IMMUNITIES FROM SUIT
3.1
EncryptaKey will not bring (or cause to be brought) any Claim alleging
infringement of any Subject Patents against any Priviam Party that is based in
whole or in part on any commercial activity. The grant of immunity is
personal to the Priviam Parties and shall not extend to or otherwise benefit any
other party.
3.2 (a)
The immunities set forth in Section 3.1 are nonexclusive, nontransferable,
non-sublicensabele, worldwide and royalty-free.
(b) The
immunities set forth in Section 3.1 (i) constitute the currently effective
grants of immunity that are perpetual and irrevocable and are not terminable for
any reason (except that the immunities may be revoked or terminated as set forth
in Section 6.5 (Assignment), and (ii) shall apply to be binding on any direct or
indirect assignees, exclusive licensees or other transferees.
(c)
Without limitation of the generality of the foregoing, the immunities set forth
in Section 3.1 and the obligation to bind assignees, exclusive licensees, and
other transferees are specifically enforceable. To the extent that
any Claim for infringement of the Subject Patents is made notwithstanding
Section 3.1, the Priviam Parties shall have the unconditional right to dismissal
of the Claim (without the need for a showing of irreparable harm, inadequacy of
damages or other circumstances that may otherwise be a condition of specific
performance).
4.
REPRESENTATIONS AND WARRANTIES AND COVENANTS
4.1
Priviam Representations, Warranties and Covenants. Priviam represents,
warrants and covenants that Priviam has the full power to enter
into this Agreement and to perform its obligations hereunder
4.2
EncryptaKey Representations, Warranties and Covenants.
EncryptaKey represents, warrants and covenants that (a)
EncryptaKey has the full power to enter into this Agreement and to perform its
obligations hereunder; (b) EncryptaKey, Inc., a Nevada corporation is the sole
owner of its Subject Patents and has not assigned, exclusively licensed or
otherwise transferred any rights with respect to its Subject Patents to any
third party; c) EncryptaKey, Inc., a Nevada corporation has the sole right and
authority to enter into this Agreement and grant the immunities granted
hereunder, without the need for any licenses, releases, consents, approvals
or immunities not yet granted or obtained; and (d) Exhibit B includes all
patents and patent applications within the Subject Patents existing
as of the Effective Date and that EncryptaKey owns or Controls.
4.3
Disclaimer. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN SECTIONS 4.1 and 4.2 OF
THIS AGREEMENT, NO PARTY MAKES ANY OTHER REPRESENTATIONS OR WARRANTIES,
WHETHER EXPRESS OR IMPLIED.
5.
GENERAL
5.1
Notices. Any notice, request, demand or other communication required or
permitted hereunder shall be in writing, shall reference this Agreement and
shall be deemed to be properly given; (a) when delivered personally; (b) when
sent by facsimile, with written confirmation of receipt; (c) five (5) business
days after having been sent by registered or certified mail, return receipt
requested, postage prepaid; or (d) two (2) business days after deposit with a
private industry express courier, with written confirmation of receipt. All
notices shall be sent to the address set forth below (or to such other address
or person as may be designated by a Party by giving written notice to the other
Party pursuant to this Section).
To
Priviam:
The Law
Offices of Xxxx Xxxxxx, PC
0000 Xxxx
Xxxxxx, Xxxxx 000
Xxxxxx,
XX 00000
Fax:
000-000-0000
To
EncryptaKey, Xxxx and Xxxx Consulting:
EncryptaKey,
Inc.
00000
Xxxxxx Xx., Xxxxx 000
Xxxxxxx,
XX 00000
Fax:
000-000-0000
Attn:
Chief Executive Officer
5.2
Governing Law. This Agreement shall be governed by, and construed and
interpreted in accordance with, the laws of the State of
Californian (without
giving effect to the laws, rules or principles thereof
regarding conflict
of laws); provided, however, that all questions with respect
to validity
of any patents or patent applications shall be determined in accordance
with the laws of the respective country in the territory in which
such patents or patent applications shall have been granted or filed, as
applicable.
5.3
Publicity. Neither party will not use any name, trademark or trade
name of the other party, or any contraction, abbreviation or simulation thereof,
in advertising, in publicity, or otherwise, or indicate or imply any association
with the other party, provided that the foregoing shall not affect the notice
rights of obligations expressly contemplated by this Agreement.
5.4 Relationship of Parties. Nothing contained in this Agreement shall be deemed
or construed as creating a joint venture, partnership, agency, employment
or fiduciary relationship between the parties. Neither EncryptaKey nor Priviam,
or any of their agents, have any authority of any kind to bind the other in any
respect whatsoever.
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5.5
Assignment. This Agreement may not be assigned by either Party without the prior
written consent of the other Party. Notwithstanding the foregoing,
such other Party’s consent shall not be required for any assignment
to an entity that succeeds to at least a majority interest of the assigning
Party’s business or assets relating to this Agreement, whether by sale, merger,
operation of law or otherwise. This greement shall be binding upon and
shall inure to the benefit of the parties and their respective permitted
successors and assigns.
5.6
Further Assurances. Each Party agrees to take or cause to be
taken such
further actions, and to execute, deliver and file or cause to
be executed,
delivered and filed such further documents and instruments,
and to
obtain such consents, as may be reasonably required or requested
in order
to effectuate fully the purposes, terms and conditions of this Agreement.
EncryptaKey shall not assign any of the Subject Patents
without making
such assignment subject to the terms of this Agreement,
including, without
limitation, by requiring the assignee and its Affiliates to be bound by
Section 3 of this Agreement as a Grantor.
5.7 No
Implied Warranties. Nothing contained in this Agreement shall be
construed as: (a) a warranty or representation by either of the parties as to
the validity or scope of any patents; (b) conferring upon either party any
license, immunity or other right under any patents or other intellectual
property rights, except the immunities an other rights expressly granted
hereunder; (c) a warranty or representation that any acts immunized hereunder
will be free from infringement of any patents or other intellectual property
rights, other than those patents under which immunities and other rights have
been expressly granted hereunder; (d) an agreement to bring or prosecute actions
or suits against third parties for infringement or agreement conferring any
right to bring or prosecute actions or suits against third parties for
infringement; (e) conferring any right to use, in advertising, publicity, or
otherwise, any trademark or trade name, or any contraction, abbreviation or
simulation thereof, of either party; or (f) an obligation to furnish any
technical information or know-how.
5.8 No
Disparagement. Priviam (and to cause its officers to refrain) agrees
to refrain from making any disparaging, negative or uncomplimentary statements,
whether public or private, regarding any officers of EncryptaKey or related
companies. EncryptaKey, for its part, agrees to refrain (and to cause its
officers to refrain) from making any disparaging, negative or uncomplimentary
statements, whether public or private, regarding any officers of EncryptaKey or
related companies.
5.9
Severability. If any provision of this Agreement is unenforceable or invalid
under any applicable law or is so held by applicable court decision,
such unenforceability or invalidity shall not render this Agreement
unenforceable or invalid as a whole, and, in such event,
such provision
shall be changed and interpreted so as to best accomplish the objectives
of the parties within the limits of applicable law or applicable
court decision.
5.10 No
Implied Licenses. Each party herby retains all rights not expressly
granted by this Agreement. To the fullest extent permitted by
applicable law, each party hereby disclaims any and all rights not expressly
granted by this Agreement. In addition, this Agreement provides no
licenses, immunities or other rights to either party under any trademarks or
trade names, copyrights, mask work rights or trade secrets.
5.11
Bankruptcy. All immunities, releases, agreements not to bring
claims and similar rights granted under or pursuant to this Agreement
are, and shall otherwise be deemed to be, for purposes of Section 365(n) of the
Bankruptcy Code, licenses of rights of “intellectual property” as defined under
Section 101 of the Bankruptcy Code. The Parties agree that either Party, as
licensee of such rights under this Agreement, shall retain and may fully
exercise all of its rights and elections under the Bankruptcy Code in the event
of any bankruptcy or insolvency proceeding of any kind or nature.
5.12
Captions and Headings. The captions and headings used in this Agreement
are inserted for convenience only, do not form a part of this Agreement,
and shall not be used in any way to construe or interpret this Agreement.
5.13
Construction. This Agreement has been negotiated by the parties and shall
be interpreted fairly in accordance with its terms and without any construction
in favor of or against any Party.
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5.14
Counterparts. This Agreement may be executed (including,
without limitation,
by facsimile signature) in one or more counterparts with the same
effect as if the parties had signed the same document. Each counterpart
so executed shall be deemed to be an original, and all such counterparts
shall be construed together and shall constitute one Agreement.
5.15
No Duty to Enforce or Prosecute. Neither Party, nor any of its Subsidiaries,
shall have any obligation hereunder to institute any action, proceeding,
or suit against third parties for infringement of any of its patents
or to defend any action, proceeding, or suit brought by a
third party
which challenges or concerns the validity or infringement of any
of its
patents. Neither Party, nor any of its Subsidiaries, is quired
to file or
continue to prosecute any patent application, or to secure any patent or
patent rights, or to maintain any patent in force.
5.16
Entire Agreement; Amendment. This Agreement, including the Exhibit(s) attached
hereto which are incorporated herein by reference, constitutes the entire
understanding and only agreement between the parties with respect to the subject
matter hereof and supersedes any and all prior or contemporaneous negotiations,
representations, agreements and understandings,
written or oral, that the parties may have reached with respect
to the subject matter hereof. No agreements altering or supplementing
the terms hereof may be made except by means of a written document
signed by the duly authorized representatives of each of the parties
hereto.
IN
WITNESS WHEREOF, the parties, hereto have caused their duly authorized
representatives to execute this Agreement as of the Effective Date.
| Priviam, Inc. | |||
|
|
By:
|
/s/ Xxxxx X. Xxxxxxx | |
| By: Xxxxx X. Xxxxxxx | |||
| Title: Chief Executive Officer | |||
| EncryptaKey, Inc. | |||
|
|
By:
|
/s/ Xxxxx Xxxx | |
| By: Xxxxx Xxxx | |||
| Title: Chief Executive Officer | |||
| Xxxx Consulting, LLC | |||
|
|
By:
|
/s/ Xxxxx Xxxx | |
| By: Xxxxx Xxxx | |||
| Title: President | |||
| Xxxxx Xxxx | |||
| By: Xxxxx Xxxx | |||
| As an individual | |||
| By/s/ Xxxxx X. Xxxxxxx | |||
| Xxxxx X. Xxxxxxx | |||
| As an individual | |||
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EXHIBIT
A
DISMISSAL
Exhibit B
- EncryptaKey Patents and Applications
[APPLICATION] SYSTEMS AND METHODS FOR
PERFORMING SECURE NETWORK COMMUNICATION
US Xxx.
11739028 - Filed Apr 23, 2007 - ENCRYPTAKEY, INC.
[APPLICATION] SYSTEMS AND METHODS FOR
ESTABLISHING A SECURE COMPUTING ENVIRONMENT FOR ...
US Xxx.
11738976 - Filed Apr 23, 2007 - ENCRYPTAKEY, INC.
[APPLICATION] PORTABLE DEVICE AND METHODS
FOR PERFORMING SECURE TRANSACTIONS
US Xxx.
11738956 - Filed Apr 23, 2007 - ENCRYPTAKEY, INC.
[APPLICATION] SYSTEMS AND METHODS FOR
STORING DATA TO A HANDHELD DEVICE
US Xxx.
11738964 - Filed Apr 23, 2007 - EncryptaKey, Inc.
[APPLICATION] SYSTEMS AND METHODS FOR
PERFORMING SECURE IN-PERSON TRANSACTIONS
US Xxx.
11738954 - Filed Apr 23, 2007 - ENCRYPTAKEY, INC.
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EXHIBIT
C
JOINT
PRESS RELEASE
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