SETTLEMENT AGREEMENT AND MUTUAL RELEASE
Exhibit
10.3
SETTLEMENT
AGREEMENT AND MUTUAL RELEASE
This
Settlement Agreement and Mutual Release (“Settlement
Agreement”)
is
made as of this 14th day of August, 2008 (the “Settlement
Date”)
by and
between Memry Corporation (“Memry”),
a
Delaware corporation, on the one hand, and Schlumberger Technology Corporation
(“STC”,
with
Memry and STC collectively being the “Parties” and each singularly a “Party”), a
Texas corporation on the other hand.
Whereas,
Memry and STC entered in a Development Agreement dated January 1, 2001 (the
“Development
Agreement”);
Whereas,
Memory Metal Holland (“MMH”),
a
Netherlands corporation, and Memry entered a Secrecy Agreement, dated October
28, 1998;
Whereas,
Memry and Memry Europe N.V., a former indirect subsidiary of Memry, entered
into
a Collaboration Agreement with United Stenting, Inc. (“USI”),
a
Nevis corporation, dated June 9, 1999;
Whereas,
Memry and STC are or have been parties to 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”);
Whereas,
Kentucky Oil Technology, N.V. (“Kentucky
Oil”),
MMH,
and an individual named Xxxxx Besselink (“Besselink”),
allege in the Lawsuit, inter alia, that Memry breached the Collaboration
Agreement by disclosing confidential information to STC, and that Besselink
should be named as an inventor on certain patents;
Whereas,
Memry is entering into a separate settlement agreement and mutual release with
Kentucky Oil, MMH, Besselink, an individual named Xx. Xxxxxxxx xxx Xxxxxxxxxx
(“van
Moorleghem”),
and
United Stenting, Inc. (“USI”),
a
Nevis corporation, sometimes referred to collectively as the “Kentucky
Oil Parties”
(the
settlement agreement shall be referred to herein as the “Memry/KOT
Settlement Agreement”);
Whereas,
Memry is conveying certain rights under the Memry License (as hereinafter
defined) to Kentucky Oil under the Memry/KOT Settlement Agreement;
Whereas,
a copy of the Memry/KOT Settlement Agreement has been provided to counsel for
STC under the terms of the protective order in the Lawsuit;
Whereas,
STC and the Kentucky Oil Parties have settled their disputes by way of a
separate settlement agreement and mutual release, an executed copy of which
has
been provided to counsel for Memry under the terms of the protective order
in
the Lawsuit (herein referred to as the “STC/KOT
Settlement Agreement”);
and
Whereas,
the Kentucky Oil Parties understand that this Settlement Agreement between
Memry
and STC (herein referred to as “this
Settlement Agreement”
or
the
“Memry/STC
Settlement Agreement”)
is
being entered as part of the complete resolution of the Lawsuit.
a.
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The
Parties agree and acknowledge that, pursuant to the Memry/KOT Settlement
Agreement, Memry is assigning to Kentucky Oil those rights defined
as the
“Memry License” in Section 7 of the STC/KOT Settlement Agreement, as
modified thereby (the “Assigned
Rights”).
Based on the foregoing, and consistent with this Settlement Agreement
and
the STC/KOT Settlement Agreement (a copy of which Memry agrees and
acknowledges it has received), STC hereby consents to the transfer
by
Memry to Kentucky Oil of the Assigned
Rights.
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b.
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STC
and Memry agree that, except with respect to the Assigned Rights,
the
Development Agreement is hereby terminated in full. STC and Memry
further
agree that STC shall have no obligations to any party under the
Development Agreement (whether it be Memry and/or any successor and/or
assignee to any of Memry’s rights under the Development Agreement)
notwithstanding the provisions of Paragraph 2.3 of the Development
Agreement, except with respect to the Assigned Rights. Specifically,
but
without limitation, STC shall have no obligations to the Kentucky
Oil
Parties under the Development Agreement notwithstanding any provisions
which survive the termination of the Development Agreement, except
with
respect to the Assigned Rights. STC’s only obligations to the Kentucky Oil
Parties are the obligations set out in the STC/KOT Settlement
Agreement.
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c.
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STC
and Memry hereby mutually release one another from any and all remaining
obligations under the Development Agreement and/or the Memry License,
including, without limitation, any remaining obligation related to
confidential information and/or know-how as well as any obligation
to
disclose, protect, register, prosecute or maintain any intellectual
property assets identified in the Lawsuit and/or Development Agreement
and/or the Memry License as well as any assets that could have been
identified in the Lawsuit or pursuant to the Development Agreement
and/or
Memry License.
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d.
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The
Parties hereto agree and acknowledge that, pursuant to the mutual
releases
set forth in Section
B
below, each of Memry and STC is releasing the other from, inter alia,
any and all liabilities incurred from the beginning of time through
the
Settlement Date, and no party (including without limitation the Kentucky
Oil Parties) succeeding to the Assigned Rights shall have any rights
or
claims against the other for breaches, responsibilities, liabilities
and/or obligations arising on or prior to the Settlement Date
hereof.
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e.
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STC
hereby agrees and acknowledges that a copy of the Memry/KOT Settlement
Agreement has been provided to counsel for STC under the terms of
the
protective order in the Lawsuit. The Memry/KOT Settlement Agreement
sets
forth the nature of the rights conveyed under the Development Agreement
and the Memry License by Memry to Kentucky Oil.
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f.
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Memry
and STC hereby expressly agree that the terms of this Settlement
Agreement
are contingent upon Memry and the Kentucky Oil Parties having executed
the
Memry/KOT Settlement Agreement regarding the
Lawsuit.
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B.
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Mutual
Releases
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a.
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Release
of Memry.
STC and each of the STC-Related Parties, as defined below, releases
Memry,
and its officers, directors, divisions, subsidiaries, business
units, members, managers, parents, affiliates, predecessors, successors,
representatives, agents, servants, employees, attorneys, accountants,
inventors, customers, end-users, suppliers 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, any claims of contribution and/or indemnity
relating to the Lawsuit, and/or claims regarding confidential information
and/or know-how, that STC or
any of the STC-Related Parties
has, did have, or may have against any of the Memry-Related Parties
from
the beginning of time to the Settlement Date of this Settlement Agreement
(the “Memry
Released Claims”).
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b.
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Release
of STC.
Memry and each of the Memry-Related Parties, as defined above, releases
STC, and each of its officers, directors, divisions, subsidiaries,
business
units, members, managers, parents, affiliates, successors,
representatives, agents, servants, employees, attorneys, accountants,
inventors, customers, end-users, suppliers and insurers of each
(collectively, the “STC-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 (including, without limitation, all claims
regarding confidential information and/or know-how as well as claims
for
legal malpractice and/or claimed ethics violations of any kind whatsoever
before the Patent and Trademark Office (“PTO”),
any other domestic or foreign patent office, and/or regarding any
malpractice claim of any kind whatsoever), that Memry or any of the
Memry-Related Parties has, did have, or may have against any of the
STC-Related Entities from
the beginning
of time to the
Settlement Date of this Settlement Agreement (the “STC
Released Claims”).
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c.
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Unknown
Claims.
As further consideration and inducement for this compromise settlement,
the Parties each 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,
having read the same (and hereby representing and warranting to the
other
that they have read the same), 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
STC-Related
Parties abandon,
release, waive, and relinquish all rights and benefits that any of them has
or
may have against any of the Memry-Related Parties under California Civil Code
§
1542 with respect to the STC Released Claims. The Memry-Related Parties abandon,
release, waive, and relinquish all rights and benefits that any of them has
or
may have against any of the STC-Related Parties under California Civil Code
§
1542 with respect to the Memry Released Claims. The Parties each 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.
d.
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Warranty
of No Transfer.
Each of the Parties 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.
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a.
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Confidentiality.
The Parties agree to keep this Settlement Agreement and its terms
strictly
confidential unless: (a) asserting a claim or defense arising out
of this
Settlement Agreement or related to the Lawsuit in any suit or proceeding;
(b) ordered to do so by a court of competent jurisdiction; (c) served
with
a subpoena or discovery
request or other
request for discovery, provided that the party served first gives
prompt
notice to the other Parties so the other Parties may have an opportunity
to contest the discovery request; or (d) any of the substance of
this
Settlement Agreement is necessary to be disclosed to an agency or
regulatory body, or to an insurer, financial advisor, investor, lawyer,
or
accountant for any party or affiliate. However, nothing in this Settlement
Agreement prohibits a party from stating that the claims in the Lawsuit
between the parties to this Settlement Agreement have been settled
and
that the terms of the settlement are confidential. Notwithstanding
the
foregoing, however, (i) Memry may disclose this Settlement Agreement
to
Getters and its counsel and Kentucky Oil and its counsel, (ii) Memry
may
announce this Settlement Agreement in a press release and a Form
8-K, and
may file a copy hereof as an exhibit to said Form 8-K; and (iii)
STC shall
be permitted to review and approve of any press release issued by
Memry
regarding this Settlement Agreement in advance of any such press
release
being published.
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b.
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No
Admission.
This Agreement is a compromise of disputed claims. It is not and
shall not
be interpreted as or deemed to be an admission of liability by any
party
to this Settlement Agreement.
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c.
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Authority.
The Parties warrant and represent to and in favor of each of the
other
Parties that the person executing this Settlement Agreement on its
behalf
has the full power and authority to bind it to each and every provision
of
the agreement.
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d.
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Notices.
All notices, requests, and demands made under this Settlement 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.
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If
to
Memry:
Memry
Corporation
Attn.
Xxxxxx Xxxxxxx
0
Xxxxxxxxx Xxxxxxxxx
Xxxxxx,
XX 00000
with
a
copy to:
Xxxxx
X.
Xxxxx, Esq.
Finn,
Dixon & Xxxxxxx, LLP
000
Xxxxx
Xxxxxx, 00xx
Xxxxx
Xxxxxxxx,
Xxxxxxxxxxx 00000-0000;
and
Xxxxxxx
X. Xxxx, Esq.
Xxxxxx
Xxxxxxx LLP
00
Xxxxxx
Xxxxxx
Xxxxxxxx,
XX 00000
If
to
STC:
Schlumberger
Technology Corporation
Attn.
Xxxxxxxxx Xxxxxxxxxx
Xx.
Counsel Licensing & Litigation
0000
Xxx
Xxxxxx, 00xx Xxxxx
Xxxxxxx,
Xxxxx 00000
Facsimile:
(000) 000-0000
E-Mail:
xxxxxxxxxxx@xxx.xxx
with
a
copy to:
Xxxxx
X.
Xxxxxx, Esq.
Xxxxxx
X.
Xxxxxx, Esq.
Xxxxx
& Lardner, LLP
Xxx
Xxxxxxxx Xxxxx, Xxxxx Xxxxx
Xxx
Xxxxxxxxx, XX 00000-0000
Facsimile
No.: (000) 000-0000
E-mail:
XXxxxxx@xxxxx.xxx / XXxxxxx@xxxxx.xxx
D.
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Interpretation.
This Settlement 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 Settlement Agreement is in the
English
language and that the English language will govern its
interpretation.
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E.
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Governing
Law.
This Settlement Agreement shall be construed in accordance with Texas
law,
without regard to its internal choice-of-law
rules.
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F.
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Enforcement.
If any action is brought for breach of or to enforce this Settlement
Agreement, it shall be brought in federal
court for the Southern
District of Texas.
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G.
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Attorneys’
Fees.
In any action for breach of or to enforce this Settlement Agreement,
the
prevailing party will be entitled to reasonable attorneys’ fees, expenses,
and costs.
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H.
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Counterparts.
This Settlement Agreement may be signed in counterparts, and a copy
of the
fully signed Settlement Agreement may be used in evidence as if it
were
the original. Signatures of the executing Parties sent via facsimile
shall
be deemed as if they were original.
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I.
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Integration.
This Settlement 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. The Parties are not entering into this Settlement Agreement
on the basis of any promise, statement, or representation, express
or
implied, that is not expressly set forth in it.
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J.
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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 Settlement 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 Settlement Agreement including, but not limited
to, the
releases and the waiver of rights under California Civil Code § 1542; and
(b) the advisability of entering into this Settlement
Agreement.
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K.
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Independent
Investigation by Parties.
Each party acknowledges that it has fully investigated the subject
matter
of this Settlement Agreement and that it is entering into this Settlement
Agreement voluntarily, knowingly, and of its own free
will.
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L.
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Successors.
This Settlement 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 Parties entering into it.
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M.
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Modification
of Agreement.
No supplement, modification, or amendment to this Settlement Agreement
shall be binding unless executed in writing by all of the Parties
to
it.
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N.
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Severability.
If any of the provisions of this Settlement 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.
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O.
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No
Continuing Relationship.
The Memry-Related Parties each acknowledge that none has any relationship
whatsoever with the STC-Related Parties other than as set forth in
this
Settlement Agreement. The Memry-Related Parties express acknowledge
that
they are not agents nor are in any partnership with the STC-Related
Entities. The Memry-Related Parties will not make any representations
to
any third party that is inconsistent with this acknowledgment nor
will the
Memry-Related Parties use this Settlement Agreement as the basis
of any
business dealings with third parties. If any of the Memry-Related
Parties
make any representation to third parties that is contrary to this
paragraph, the STC-Related Parties shall be entitled to injunctive
relief
and specific performance of this
paragraph.
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P.
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Execution
of Additional Documents.
The Parties to this Settlement Agreement will each promptly execute
all
documents reasonably necessary to fully consummate this Settlement
Agreement and the covenants it contains. Nothing in this paragraph
shall
require STC or the STC-Related Parties to make any written or oral
representations regarding the Lawsuit or the associated IP
Assets.
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Q.
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Headings.
The Section headings used herein are for reference and convenience
only,
and shall not enter into the interpretation of this Settlement
Agreement.
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R.
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No
Waiver.
No delay or omission by the Parties to exercise any right or power
occurring upon any default of this Settlement Agreement shall impair
any
right or power or be construed to be a waiver thereof. A waiver by
the
Parties hereto of any covenants, conditions, or agreements to be
performed
under this Settlement Agreement shall not be construed to be a waiver
of
any succeeding breach thereof or of any other covenant, condition,
or
agreement herein contained.
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S.
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No
Special Damages.
In no event shall the Parties be liable to one another for any special,
indirect or consequential damages arising out of or related to their
respective performance under this Settlement
Agreement.
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T.
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a.
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Memry
will defend, indemnify, and hold harmless STC and its affiliates,
together
with the officers, directors, owners, employees, agents, successors,
assigns, end-users, and customers of each, for: (1) the breach of any
provision of this Settlement Agreement; or (2) any claims by Memry
or a
Memry-Related Party against them arising out of the activities associated
with the allegations made in the Lawsuit. Pursuant to this
indemnification, the indemnitees are entitled to use counsel of their
own
choice.
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b.
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STC
will defend, indemnify, and hold harmless Memry and their affiliates,
together with the officers, directors, owners, employees, agents,
successors, assigns, end-users, and customers of each, for (1) the
breach
of any provision of this Settlement Agreement, or (2) any claims
by STC or
an STC-Related Party against them arising out of the activities associated
with the allegations made in the Lawsuit. Pursuant to this
indemnification, the indemnitees are entitled to use counsel of their
own
choice.
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DATED:
August 11, 2008
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Schlumberger
Technology Corporation
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By:
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/s/
Xxxx Xxxxxx
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Name:
Xxxx Xxxxxx
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Title:
President Completions
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DATED:
August 14, 2008
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MEMRY CORPORATION | |
By:
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/s/
Xxxxxx Xxxxxxx
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Name:
Xxxxxx X. Xxxxxxx
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Title:
Chief Executive Officer
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CONSENT
AND AGREEMENT
Having
fully read and understood the attached Settlement Agreement between Memry
Corporation, on the one hand, and Schlumberger Technology Corporation
(“STC”)
on the
other, and having assistance of independent counsel, the following parties
(referred to herein as the “Kentucky
Oil Parties”)
hereby
acknowledge and consent to all of the terms of the above Settlement Agreement,
including without limitation the provisions contained in Sections A.a, A.d,
F.
and H. The Kentucky Oil Parties also specifically acknowledge and agree that
they are bound by the confidentiality provisions contained in Paragraph C.a
of
that Settlement Agreement, except they are free to repeat information that
has
already been made public by one or more of the parties to it. The Kentucky
Oil
Parties warrant and represent that the persons executing this Consent and
Agreement on their behalf have the full power and authority to bind them to
this
Consent and Agreement.
DATED:
August 14, 2008
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KENTUCKY
OIL TECHNOLOGY, N.V.
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/s/
Xxxxx Besselink
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By:
Xxxxx Besselink
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Title:
Managing Director
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DATED:
August 14, 2008
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MEMORY
METAL HOLLAND, B.V.
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/s/
Xxxxx Besselink
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By:
Xxxxx Besselink
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Title:
Managing Director
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DATED:
August 14, 2008
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XXXXX
BESSELINK
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/s/
Xxxxx Besselink
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Xxxxx
Besselink
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DATED:
August 14, 2008
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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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UNITED
STENTING, INC.
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/s/
Xxxxx Xxxxxxxxxxxxx
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By:
Xxxxx Xxxxxxxxxxxxx
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Title:
Managing Director
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FURTHER
CONSENT AND AGREEMENT
The
undersigned, SAES Getters, an Italian corporation (“Getters”),
hereby agrees and acknowledges as follows:
1. Getters
is party to an Agreement and Plan of Merger (“Merger
Agreement”)
among
Getters, an indirect subsidiary of Getters (“Acquisition
Sub”)
and
Memry, pursuant to which Acquisition Sub is to be merged into Memry with Memry
becoming an indirect subsidiary of Getters. The Merger Agreement provides that
Memry can not enter into the Settlement Agreement to which this Further Consent
and Agreement is attached (the “Memry/STC
Settlement Agreement”),
or
the Memry/KOT Settlement Agreement dated as of substantially even date herewith,
without the consent of Getters.
2. As
of the
date hereof, the transactions contemplated by the Merger Agreement have not
been
consummated and Getters does not own Memry.
3. Getters
has granted Memry its consent, in writing, to enter into the Memry/STC
Settlement Agreement and the Memry/KOT Settlement Agreement.
4. Getters
agrees that, upon the consummation of its contemplated acquisition of Memry,
it
will be bound by the terms of the Memry/STC Settlement Agreement, as if it
were
a Memry-Related Party on the date hereof, including, without limitation, the
confidentiality provisions of Section C.a. Getters further agrees that it is
bound to the confidentiality provisions of Section C.a. of the Memry/STC
Settlement Agreement regardless of whether or not its contemplated acquisition
of Memry is consummated.
5. Getters
has fully read and understood the attached Settlement Agreement, and has had
assistance of independent counsel in its review of the same.
DATED:
August 14, 2008
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SAES
GETTERS
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By:
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/s/
Xxxxxx Xxxxxx
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Name:
Xxxxxx Xxxxxx
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Title:
Managing Director
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APPROVED
AS TO FORM:
XXXXX
& LARDNER LLP
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By:
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/s/
Xxxxxx X. Xxxxxx
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Xxxxxx
X. Xxxxxx
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Attorneys
for Counterdefendant Schlumberger
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Technology
Corporation
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DATED:
August 14, 2008
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XXXXXX
XXXXXXX LLP
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By:
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/s/
Xxxxxxx X. Xxxx
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Xxxxxxx
X. Xxxx
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Attorneys
for Memry Corporation
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DATED:
August 13, 2008
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XXXXX
PEABODY LLP
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By:
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/s/
Xxxxxxxx Xxxxxxxxxxx
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Name:
Xxxxxxxx Xxxxxxxxxxx
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Attorneys
for SAES Getters
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DATED:
August 13, 2008
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XXXX,
FORWARD, XXXXXXXX & SCRIPPS LLP
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By:
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/s/
Xxxxxxx X. Xxxxxxx
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Xxxxxxx
X. Xxxxxxx
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Attorneys
for Defendants Xxxxx Besselink and
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Memory
Metal Holland B.V. and Defendant
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and
Counterclaimant Kentucky Oil
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Technology,
N.V.
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