RULE 408 SETTLEMENT
COMMUNICATION
COMPROMISE SETTLEMENT AGREEMENT
AND RELEASE
This Compromise
Settlement Agreement and Release (“Agreement”) is
executed and entered into effective this 12th day of July, 2003
(the “Effective Date”), by and between:
(a) Mobility Electronics, Inc.
(“Mobility”);
(b) Targus Group International, Inc.
(“Targus”);
(d) Comarco Wireless Technologies, Inc. (Comarco, Inc. and
Comarco Wireless Technologies, Inc. are collectively referred to as
“Comarco”);
(e) Xtend Micro Products, Inc.
(“Xtend”);
(g) iGo Direct Corporation (iGo Corporation and iGo Direct
Corporation are collectively referred to as “iGo”);
and
(h) Hipro Electronics Company, Ltd.
(“Hipro”).
2.1
Mobility is in the business of designing, manufacturing, marketing
and selling products for the computer industry, and in particular
products that allow the operation of portable and handheld
computers and other mobile devices such as the recently launched
“Juice” product.
2.2
Comarco is in the business of designing, manufacturing, marketing
and selling products for the computer and wireless industry,
including power adapters and programming tips therefore, sold under
the ChargeSource ® brand name. Targus purchases from Comarco, and
thereafter sells and distributes, the ChargeSource
® products.
2.3
Mobility has filed a Complaint for patent infringement and for
declaratory judgment against Comarco and Targus in Cause
No. Civ-01-1489-PHX-MHM in the United States District Court
for the District of Arizona. Comarco and Targus have filed an
Answer to the Complaint denying any liability to
Mobility.
2.4
Comarco has filed a Complaint for patent infringement against Xtend
and iGo now pending in Cause No. Civ-02-2201 in the United
States District Court for the District of Arizona. Xtend and iGo
have filed an Answer to the Complaint denying any liability to
Comarco.
2.5
Comarco has filed a Complaint for Patent Infringement and false
marking against Mobility, Hipro and iGo in Cause
No. Civ-03-202-PHX-MHM in the United States District Court for
the District of Arizona. Mobility, Hipro and iGo have filed an
Answer to the Complaint denying any liability to
Comarco.
2.6 The
foregoing lawsuits shall be collectively referred to herein as the
“Litigation.”
2.7
Comarco is the owner of:
(a) U.S. Patent No. 6,172,884 entitled “Small
Form Factor Power Supply for Powering Electronics
Appliances,” issued January 9, 2001 (the “884
Patent”);
(b) U.S. Patent No. 6,091,611 entitled
“Connectors Adapted for Controlling a Small Form Factor
Supply,” issued July 18, 2001 (the “611
Patent”);
(c) U.S. Patent No. 5,838,554 entitled “Small
Form Factor Power Supply for Powering Electronics
Appliances,” issued November 17, 1998 (the “554
Patent”);
(d) U.S. Patent Application No. 10/277,116 filed
October 21, 2002, published as Patent Application Pub.
No. US 2003/0042881 A1 on March 6, 2003, and entitled
“Programmable Power Supply” (the “116
Application”);
(e) Any foreign national patents that issue from PCT
Application No. WO2001US10660 filed April 2, 2001, published
on October 11, 2001 as Publication No. WO20011760512,
(the “PCT Application”); and
(f) EPO Application No. 01926559.4, Publication
No. 1273093 (the “EPO Application”) (the 884
Patent, the 611 Patent, the 554 Patent, the 116 Application, the
PCT Application and the EPO Application are collectively referred
to as the “Comarco Patents”).
2.8
Mobility is the owner of:
(a) U.S. Patent No. 5,347,211 entitled
“Selectable Output Power Converter,” issued September
13, 1994 (the “211 Patent”);
(b) U.S. Patent No. 6,433,274 entitled “Power
Converter Device,” issued August 13, 2002 (the
“274 Patent”);
(c) U.S. Patent Application No. 10/159,910 filed
May 31, 2002, published as Patent Application Publication Pub.
No. US 2003/0081439 A1 on May 1, 2003, and entitled
“Dual Input AC/DC/Battery Operated Power Supply” (the
“910 Application”);
(d) U.S. Patent Application No. 10/005,961 filed
December 3, 2001, published as Patent Application Publication
Pub. No. US 2003/0103366 A1 on June 5, 2003, and entitled
“Dual Input AC/DC to Programmable DC Output Converter”
(the “961 Application”); and
(e) U.S. Patent Application No. 10/225,933 filed
August 22, 2002, published as Patent Application Publication
Pub. No. US 2003/0080263 A1 on May 1, 2003, and entitled
“Dual Input AC and DC Power Supply Having a Programmable DC
Output Utilizing Single-Loop Optical Feedback” (the
“933 Application”) (the 211 Patent, the 274 Patent, the
910 Application, the 961 Application, and the 933 Application are
collectively referred to as the “Mobility
Patents”).
2.9 While
denying liability and acting solely for the purposes of
compromising and settling the Litigation, and in order to avoid the
risk, cost, and burden of litigation and participation therein, the
Parties desire to compromise, settle and release claims against one
another to the extent provided for herein.
In consideration
for the Parties’ agreement to release each other, as set
forth herein, and the other promises contained herein, the Parties
agree as follows:
3.1
Comarco hereby grants to Mobility a non-exclusive, perpetual,
royalty-free, worldwide license (without the right to sublicense)
to make, have made, to offer to sell and sell (and to have offered
for sale and have sold) to import (and have imported) to distribute
(and have distributed) and to use any product which would, without
this license, infringe or contribute to or induce the infringement
of any claim of the following patents, either literally or under
the doctrine of equivalents: (a) the Comarco Patents;
(b) all continuations, continuations-in-part, continued
prosecution, request for continued examination, divisional,
reexamination and reissue applications of and patents
issuing from
the Comarco Patents and from the applications that issued as the
Comarco Patents; (c) all patents and patent applications claiming
priority from, or from which priority is claimed by, the Comarco
Patents and/or that which is described in (b) above;
(d) any foreign counterparts or equivalents to any of the
foregoing; and (e) any other current and future patents having
claims reciting, but only as to the specific claims that recite,
either directly or by virtue of claim dependency, at least one of
the following (i) the combining of AC to DC and DC to DC power
conversion in a single power adapter, and/or (ii) programming
of a power adapter using circuitry (including without limitation
one or more resistors) in a connector of any type (including
without limitation a tip), detachable from a cable coupled to the
power adapter, and/or (iii) substantially simultaneous
charging of at least two devices with a single power adapter (all
the foregoing are collectively referred to as “Licensed
Comarco Patents”). Notwithstanding the foregoing, the term
“Licensed Comarco Patents” does not include, and
Comarco does not grant any license under this Section 3.1 as
to, any patent claims reciting a small form factor power supply or
adapter that utilizes planer magnetics integrated into a circuit
board. The licenses granted in this Section 3.1 shall run with
title to each of the Licensed Comarco Patents, and shall bind any
assignee or other person to whom any such Licensed Comarco Patents
or any interest therein may be conveyed.
3.2
Mobility hereby grants to Comarco a non-exclusive, perpetual,
royalty-free, worldwide license (without the right to sublicense)
to make, have made, to offer to sell and sell (and to have offered
for sale and have sold) to import (and have imported) to distribute
(and have distributed) and to use any product which would, without
this license, infringe or contribute to or induce the infringement
of any claim of the following patents, either literally or under
the doctrine of equivalents: (a) the Mobility Patents;
(b) all continuations, continuations-in-part, continued
prosecution, request for continued examination, divisional,
reexamination and reissue applications of and patents issuing from
the Mobility Patents and from the applications that issued as the
Mobility Patents; (c) all patents and patent applications
claiming priority from, or from which priority is claimed by, the
Mobility Patents and/or that which is described in (b) above;
(d) any foreign counterparts or equivalents to any of the
foregoing; and (e) any other current and future patents having
claims reciting, but only as to the specific claims that recite,
either directly or by virtue of claim dependency, at least one of
the following (i) the combining of AC to DC and DC to DC power
conversion in a single power adapter, and/or (ii) programming
of a power adapter using circuitry (including without limitation
one or more resistors) in a connector of any type (including
without limitation a tip), detachable from a cable coupled to the
power adapter, and/or (iii) substantially simultaneous
charging of at least two devices with a single power adapter (all
the foregoing are collectively referred to as “Licensed
Mobility Patents”). Notwithstanding the foregoing, the term
“Licensed Mobility Patents” does not include, and
Mobility does not grant any license under this Section 3.2 as
to, any patent claims contained in the 274 Patent other than patent
claims 6, 9 and 13. The licenses granted in this Section 3.2
shall run with title to each of the Licensed Mobility Patents, and
shall bind any assignee or other person to whom any such Licensed
Mobility Patents or any interest therein may be
conveyed.
3.3 The
Parties agree they will not challenge, or cause or encourage any
third party to challenge, or assist or aid or abet any third party
in challenging, the validity or enforceability of any of the
currently issued Comarco Patents or Mobility Patents, in any action
or proceeding, including without limitation proceedings in any
court or before any patent office.
3.4 The
Parties each agree that it will not seek its court costs,
attorneys’ fees or expenses incurred in or relating to the
Litigation from any other Party. All Parties agree that no Party
shall be liable to any other Party for the payment of any sum of
money relating to the Litigation for any reason.
3.5
Comarco and Mobility agree to each issue separately a mutually
agreed upon press release announcing the settlement of the
Litigation. Comarco and Mobility will use their respective
commercially reasonable best efforts to reach agreement on the
press release by close of business on Monday, July 14, 2003.
Other than the issued agreed press release, the Parties agree to
keep the terms of and all copies of this settlement confidential
and to not disclose same to any third person or party, except:
(a) with the prior written consent of all other Parties,
provided however in such a case Mobility shall be entitled
to provide consent for itself and Xtend and iGo; or (b) to any
governmental body or judi
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