SETTLEMENT
AGREEMENT, RELEASE, AND PATENT
CROSS-LICENSE BETWEEN INTERGRAPH AND HEWLETT-PACKARD
This Settlement Agreement, Release, and Patent Cross-License
("AGREEMENT"), effective as of January 21, 2005 (the "EFFECTIVE
DATE"), is entered into by and among Hewlett-Packard Company
("HP"), a Delaware corporation, on the one hand, and Intergraph
Corporation, a Delaware corporation, and Intergraph Hardware
Technologies Company ("IHTC"), a Nevada corporation, on the other
hand. Intergraph Corporation and IHTC shall be referred to
collectively hereinafter as "INTERGRAPH." HP and INTERGRAPH
may each be referred to individually as a "PARTY" and collectively
as the "PARTIES."
BACKGROUND TO
THIS AGREEMENT
HP and INTERGRAPH are engaged in lawsuits and actions against
each other in the Eastern District of Texas, the Northern District
of California, the District of Delaware and Germany, as identified
more fully below;
HP and INTERGRAPH each own and/or control patents and patent
applications;
HP and INTERGRAPH have agreed it would be mutually beneficial to
resolve all of their litigation against each other and to grant
rights to the other PARTY under certain patents and patent
applications;
Now,therefore, the PARTIES agree as follows:
AGREEMENT
1.
DEFINITIONS
a.
" ACTIONS " means the litigation and other proceedings
identified in Appendix A to this AGREEMENT.
b.
" AFFILIATE " means any entity which, at any time
during the term of this AGREEMENT, is the PARENT of a PARTY, a
SUBSIDIARY of a PARTY, or a SUBSIDIARY of a PARENT.
c.
" HP CUSTOMERS " means customers that purchased or
distributed an HP PRODUCT including without limitation system
integrators, distributors, retailers, resellers and end users.
d.
" HP PATENTS " means all patents and patent
applications anywhere in the world (a) which HP or any of its
SUBSIDIARIES own and/or have the power to license, and/or which HP
or any of its SUBSIDIARIES may cause to be licensed without payment
of additional royalties, at any time during the term of this
AGREEMENT; and (b) which claim the benefit of the filing date of a
patent application filed anywhere in the world on or before January
21, 2007; and all continuation, continuation-in-part, divisional,
reissue, reexamination, and counterpart patents and patent
applications thereof, including without limitation all priority
patents and patent applications, patents of addition and utility
models.
e.
" HP PRODUCT " means a product designed, made or sold
by HP, its SUBSIDIARIES, or its AFFILIATES.
f.
" INTERGRAPH CUSTOMERS " means customers that
purchased or distributed an INTERGRAPH PRODUCT including without
limitation system integrators, distributors, retailers, resellers
and end users.
g.
" INTERGRAPH FIELDS OF USE " means the following
fields:
(i) The
Mapping and Geospatial Solutions field. This field is defined
by photogrammetric, mapping, and geospatial information management
based solutions that have substantial value added by INTERGRAPH and
which incorporate INTERGRAPH branded products.
(ii) The
Process, Power and Marine field. This field is defined by
information management systems that have substantial value added by
INTERGRAPH and which incorporate INTERGRAPH's branded software
products for the chemical, pharmaceutical, oil and gas, power
generation, and shipbuilding industries. These software solutions
support the project management, simulation, design, analysis,
construction, material management, procurement, documentation,
automation, and operation of process and power plants, offshore
rigs, and ships.
(iii) The
Public Safety field. This field is defined by information
management systems that have substantial value added by INTERGRAPH
and which incorporate INTERGRAPH's branded software products for
the public safety industry. For example: video capture, enhancement
and analysis systems; emergency event prediction, prevention,
detection and management systems; emergency communication systems;
traffic monitoring or planning systems; emergency event response
planning systems; emergency resource deployment systems; event
records management systems; equipment maintenance systems; mug shot
systems; fingerprint systems; court management systems; prison
management systems; police or fire agency management systems;
emergency medical management systems; roadside assistance systems;
airport, military base, campus or building security systems; fire
alarms systems; utility infrastructure management systems; and
workforce management systems.
(iv) The
Mapping Services field. This field is defined by geospatial
production services provided by INTERGRAPH that result in a
hardcopy or softcopy map or chart or set of data used to create a
map or chart. This production services business includes, for
example: aerial data acquisition; photogrammetric and cartographic
scanning; softcopy aerial triangulation; cartography; data
conversion; digital nautical charts; turn-key GIS implementation;
hardcopy maps; electronic charting services; full service film
reprographics laboratory; digital orthographic processing;
photogrammetry; image processing; and photogrammetric/GIS project
management and consulting.
(v) The
Personalized Solutions field. This field is defined as the
integration of software, hardware, open technology, and data to
produce client driven information technology solutions that have
substantial value added by INTERGRAPH. These solutions include, for
example: homeland security; force protection; business systems
integration; integrated data environments; logistics and supply
chain management; computer systems support and network support;
information assurance; facility and asset management; integrated
public safety/security; IT managed services; ruggedized hardware;
video analysis hardware systems; multi-vendor maintenance; and
financial management.
(vi) Notwithstanding
anything in this AGREEMENT to the contrary, INTERGRAPH FIELDS OF
USE shall not include (and no license for such products shall be
granted under HP PATENTS for) ink, ink cartridges, print heads,
toner cartridges or other printer consumables.
h.
" INTERGRAPH PATENTS " means all patents and patent
applications anywhere in the world (a) which INTERGRAPH or any of
its SUBSIDIARIES own and/or have the power to license, and/or which
INTERGRAPH or any of its SUBSIDIARIES may cause to be licensed
without payment of additional royalties, at any time during the
term of this AGREEMENT; and (b) which claim the benefit of the
filing date of a patent application filed anywhere in the world on
or before January 21, 2007; and all continuation,
continuation-in-part, divisional, reissue, reexamination, and
counterpart patents and patent applications thereof, including
without limitation all priority patents and patent applications,
patents of addition and utility models.
i.
" INTERGRAPH PRODUCT " means a product designed, made
or sold by INTERGRAPH, its SUBSIDIARIES, or its AFFILIATES.
j.
" PARENT " means a corporation, company, partnership,
or other entity that owns or controls more than fifty percent (50%)
of the outstanding shares or securities representing the right to
vote for the election of directors or other managing authority of a
PARTY, but such corporation, company, partnership, or other entity
shall be deemed to be a PARENT only so long as such ownership or
control exists.
k.
" SUBSIDIARY "means a corporation, company,
partnership, or other entity in which, at any time during the term
of this AGREEMENT, a PARTY (i) owns or has control over more than
fifty percent (50%) of the outstanding shares or securities
representing the right to vote for the election of directors or
other managing authority if such entity has voting shares or other
voting securities, or (ii) owns or has control over more than fifty
percent (50%) of the ownership interest that represents the right
to make decisions for such entity, if such entity does not have
voting shares or other voting securities; provided, however, that
such corporation, company, partnership, or other entity shall be
deemed to be a SUBSIDIARY only so long as such ownership or control
exists. Ownership of the requisite shares or ownership
interest in the SUBSIDIARY may either be direct or through one or
more intervening SUBSIDIARIES.
2. TERMINATION OF ALL
PENDING LITIGATION AND ADMINISTRATIVE ACTIONS
Based on all of the mutual consideration exchanged under this
AGREEMENT, the PARTIES agree to terminate all of the ACTIONS by
dismissing with prejudice the U.S. suits and withdrawing the German
administrative actions after the EFFECTIVE DATE. The PARTIES
shall direct their respective counsel to cooperate in good faith to
bring about this termination and/or withdrawal of all of the
ACTIONS as promptly as is reasonably possible after the EFFECTIVE
DATE. The PARTIES shall be responsible for payment of their
own costs and fees, including attorney fees, incurred in the
ACTIONS.
3. MUTUAL
RELEASES
a.
INTERGRAPH, on behalf of itself and its SUBSIDIARIES and
AFFILIATES, hereby releases, acquits and forever discharges HP and
its SUBSIDIARIES and AFFILIATES, from and against:
(i) any
and all claims or liabilities asserted in the ACTIONS; and,
(ii) any
and all claims or liabilities that could have been asserted in the
ACTIONS; and,
(iii) any
and all claims, known or unknown, that could have been asserted as
of the EFFECTIVE DATE by INTERGRAPH or any of its SUBSIDIARIES and
AFFILIATES against HP or any of its SUBSIDIARIES and AFFILIATES;
and,
(iv) any
and all claims, known or unknown, that could have been asserted as
of the EFFECTIVE DATE by INTERGRAPH or any of its SUBSIDIARIES and
AFFILIATES against HP CUSTOMERS based on an HP PRODUCT; and,
(v) any
damages or other remedies flowing from (i)-(iv) above.
Further,
INTERGRAPH, on behalf of itself and its SUBSIDIARIES and
AFFILIATES, hereby releases and forever discharges HP CUSTOMERS who
have acquired the right from HP to make an HP proprietary
design from any and all claims for past infringement of the
INTERGRAPH PATENTS based solely on the HP proprietary design
licensed by HP, but only if HP owes a duty to indemnify said HP
CUSTOMER against said claims.
b.
HP, on behalf of itself and its SUBSIDIARIES and AFFILIATES,
hereby releases, acquits and forever discharges INTERGRAPH and its
SUBSIDIARIES and AFFILIATES, from and against:
(i) any
and all claims or liabilities asserted in the ACTIONS; and,
(ii) any
and all claims or liabilities that could have been asserted in the
ACTIONS; and,
(iii) any
and all claims, known or unknown, that could have been asserted as
of the EFFECTIVE DATE by HP or any of its SUBSIDIARIES and
AFFILIATES against INTERGRAPH and its SUBSIDIARIES and AFFILIATES;
and,
(iv) any
and all claims, known or unknown, that could have been asserted as
of the EFFECTIVE DATE by HP or any of its SUBSIDIARIES and
AFFILIATES against INTERGRAPH CUSTOMERS based on an INTERGRAPH
PRODUCT; and,
(v) any
damages or other remedies flowing from (i)-(iv) above.
Further,
HP, on behalf of itself and its SUBSIDIARIES and AFFILIATES, hereby
releases and forever discharges INTERGRAPH CUSTOMERS who have
acquired the right from INTERGRAPH to make an INTERGRAPH
proprietary design from any and all claims for past infringement of
the HP PATENTS based solely on the INTERGRAPH proprietary design
licensed by INTERGRAPH, but only if INTERGRAPH owes a duty to
indemnify said INTERGRAPH CUSTOMER against said claims.
c.
The PARTIES agree and acknowledge that these releases shall
not extend to any obligation arising from the AGREEMENT, nor shall
they release any payment obligation of a PARTY, or their respective
SUBSIDIARIES and AFFILIATES, arising from the purchase of goods or
services from the other PARTY, or its respective SUBSIDIARIES and
AFFILIATES. The PARTIES further agree and acknowledge that
HP's release is not intended to, and shall not, release any claim
HP has against Intel Corporation.
d.
Each PARTY, for itself, and its SUBSIDIARIES and AFFILIATES,
hereby expressly waives any right that it may have under the laws
or statutes of any jurisdiction which limits the extension of a
general release to certain types of claims, such as California
Civil Code § 1542 which 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."
e.
None of the releases in this Section 3 shall apply to claims
based on events occurring after the EFFECTIVE DATE.
4.
CROSS-LICENSE
a.
INTERGRAPH's License to HP
(i) INTERGRAPH
hereby grants to HP, and its
