Exhibit 10.27
SETTLEMENT AND LICENSE
AGREEMENT
This Settlement and License
Agreement (“AGREEMENT”), effective as described herein,
is made by and between Keurig, Incorporated, a Delaware corporation
having a principal place of business at 55 Walkers Brook Drive,
Reading, Massachusetts; and Kraft Foods Global, Inc.
(“KFG”), a Delaware corporation having a place of
business at 1250 West North Street, Dover, Delaware; Tassimo
Corporation (“TASSIMO CORP.”), a Delaware corporation
having a mailing address of P.O. Box 6361, Dover, Delaware; and
Kraft Foods Inc. (“KRAFT FOODS”), a Virginia
corporation having a place of business at Three Lakes Drive,
Northfield, Illinois.
RECITALS
WHEREAS , KEURIG is the owner of all right, title and
interest in and to the following patents directed to beverage
technologies:
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(a)
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United States
Patent No. 6,607,762, entitled Disposable Single Serve
Beverage Filter Cartridge (the “‘762
PATENT”);
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(b)
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United States
Patent No. 7,377,162, entitled Method and Apparatus for
Liquid Level Sensing (the “‘162 PATENT”);
and
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(c)
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Foreign
counterparts of the ‘762 PATENT and the ‘162
PATENT.
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WHEREAS , KRAFT makes, uses, keeps, offers to sell,
sells, imports, and otherwise commercializes single-serve beverage
cartridges and single-serve beverage machines under the T-DISC and
TASSIMO marks;
WHEREAS , on January 10, 2007, KEURIG filed a
complaint captioned Keurig, Incorporated v. Kraft Foods Global,
Inc. et al. , No. 07-cv-17 GMS in the United States
District Court for the District of Delaware (the
“LAWSUIT”) in which KEURIG has asserted certain claims
against KRAFT and KRAFT has asserted certain counterclaims against
KEURIG and has sought leave to assert other
counterclaims;
WHEREAS , the PARTIES desire to resolve all aspects of
the LAWSUIT without the expenditure of further time and expense and
to avoid any future disputes with regard to the LICENSED
PATENTS;
WHEREAS , KRAFT desires the freedom to further develop
and commercialize its beverage cartridge technology;
WHEREAS , while KEURIG is willing to license KRAFT under
the LICENSED PATENTS, KEURIG desires to protect from copying by
KRAFT any future KEURIG design or innovation for a beverage
cartridge that is covered by the ‘762 PATENT;
WHEREAS , KEURIG and KRAFT have reached an agreement to
settle the LAWSUIT.
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NOW THEREFORE
, in consideration of the promises
and the mutual covenants hereinafter recited, KEURIG and KRAFT
agree as follows:
1.
Definitions
(a) “EFFECTIVE DATE” as
used herein shall mean the last date of signature appearing on this
AGREEMENT.
(b) “PARTY” as used
herein shall mean each of KEURIG and KRAFT.
(c) “AFFILIATES” as used
herein shall mean any present or future domestic or foreign
corporation, company or other entity that (i) is owned or
controlled, directly or indirectly, by a PARTY; or (ii) owns
or controls a PARTY (either directly or indirectly); or
(iii) is under common ownership or control with a PARTY. For
the purposes of the definition of AFFILIATES, the phrases
“owned,” “owns,” “ownership,”
“controlled,” “controls” and
“control” mean (a) in the case of a corporation or
company: owning or controlling, directly or indirectly, at least
twenty percent (20%) (by nominal value or number of units) of
the outstanding shares or securities conferring the right to vote
at general meetings; and (b) in the case of a partnership,
joint venture, unincorporated corporation or other entity that does
not have outstanding shares or securities: having more than a
twenty percent (20%) ownership interest representing the right
to make the decisions for such partnership, joint venture,
unincorporated corporation or other entity or having a fifty
percent (50%) or more ownership although not necessarily
having control over the decisions of such partnership, joint
venture, unincorporated corporation or other entity.
(d) “KRAFT” as used
herein shall mean KFG, TASSIMO CORP., KRAFT FOODS and their
parents, subsidiaries and AFFILIATES worldwide.
(e) “KEURIG” as used
herein shall mean Keurig, Incorporated and its parent, subsidiaries
and AFFILIATES worldwide.
(f) “LICENSED PATENTS”
as used herein shall mean the ‘762 PATENT, the ‘162
PATENT and foreign counterparts of the ‘762 PATENT and the
‘162 PATENT and any parent, divisional, continuation,
continuation-in-part, reissue, reexamined patent, registration,
renewal, extension of the ‘762 PATENT, ‘162 PATENT or
foreign counterparts thereof.
(g) “LICENSED PRODUCTS”
as used herein means beverage filter cartridges and all beverage
brewing machines made, used, offered for sale, sold, otherwise
distributed, kept, imported or exported anywhere in the world that
KEURIG contends would directly or indirectly infringe at least one
claim of at least one LICENSED PATENT in the absence of a license
under this AGREEMENT, provided that said beverage filter cartridges
are physically compatible for use with the piercing unit in the
brew head in beverage brewing machines sold under the Tassimo mark
on or before the EFFECTIVE DATE (“EXISTING BREWER”) or
physically compatible for use with the piercing unit retrofitted in
the brew head in an EXISTING BREWER after the EFFECTIVE DATE,
provided, further, however, and notwithstanding any provision in
this AGREEMENT to the contrary, LICENSED PRODUCTS shall not include
beverage filter cartridges that KRAFT or a third party on behalf of
KRAFT designed to work or intended for use with the
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piercing unit of a beverage brewing machine
first offered for sale by, for or under license (other than the
license granted hereunder) from or to KEURIG after the EFFECTIVE
DATE (each a “NEXT GEN KEURIG BREWER”), the piercing
unit of such NEXT GEN KEURIG BREWER, itself not having been copied
or derived from a beverage brewing machine designed by KRAFT, or a
party on behalf of KRAFT, and offered for sale prior to the date on
which such NEXT GEN KEURIG BREWER is first offered for sale. A
beverage filter cartridge that would be compatible for use with the
original or retrofitted piercing unit in the brew head of an
EXISTING BREWER but for the dimensions of the cartridge shall be a
LICENSED PRODUCT. For purposes of clarity, and not to limit the
foregoing, the fact that a replacement part, insert or adaptor is
used in the brew head to accommodate the beverage filter cartridge
shall not render the beverage filter cartridge incompatible for use
with the piercing unit in the brew head. Furthermore, the fact that
a beverage filter cartridge is incompatible for use in an EXISTING
BREWER for a reason other than its incompatibility for use with the
original or retrofitted piercing unit in the brew head of an
EXISTING BREWER shall not exclude it from being a LICENSED PRODUCT.
In this clause the term “a party on behalf of KRAFT”
shall include any party that has licensed, assigned or otherwise
transferred the relevant design to KRAFT.
2. Payment .
Within ten (10) business days
of the EFFECTIVE DATE, KRAFT shall pay Seventeen Million U.S.
Dollars ($17,000,000.00) to KEURIG. Payment shall be wired to Bank
of America, 100 Federal Street, Boston, MA 02110 (ABA Number
026009593, SWIFT # BOFAUS3N), Account Number 003880245710 (Keurig,
Inc.).
3. Non-Exclusive License
. KEURIG grants to KRAFT
an irrevocable, non-exclusive, fully paid-up, worldwide license
(“LICENSE”) under the LICENSED PATENTS to make, have
made, use, keep, offer for sale, sell, otherwise directly or
indirectly distribute, import or export anywhere in the world
LICENSED PRODUCTS. The LICENSE grant herein includes the right to
sub-license rights conveyed under this AGREEMENT to permit other
parties to make, use, keep, offer to sell, sell, otherwise
distribute, import or export LICENSED PRODUCTS made, sold,
distributed, imported or exported anywhere in the world by or for
KRAFT. Furthermore, the LICENSE grant herein includes the right for
KRAFT to sub-license manufacturers of brewers for the limited
purpose of making, using, keeping, offering to sell, selling,
distributing, importing and exporting anywhere in the world brewers
for use with KRAFT’s LICENSED PRODUCTS. KRAFT otherwise may
not sub-license its rights under this AGREEMENT without
KEURIG’s written consent. This LICENSE shall end on the date
upon which the last of the patents licensed hereunder expires.
Those terms and conditions of the LICENSE intended to be observed
and performed by one or more PARTIES after termination or
expiration of the LICENSE, for any reason, shall so survive and
continue.
4. Patent Validity and
Enforceability . Nothing herein is an admission nor shall be
deemed an admission by KRAFT that any KRAFT product infringes the
LICENSED PATENTS or that the LICENSED PATENTS are valid or
enforceable.
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5. Patent Marking .
Within one hundred and eighty
(180) days of the EFFECTIVE DATE, Kraft shall begin marking
LICENSED PRODUCTS in accordance with 35 U.S.C. § 287 as
follows:
(a) The packaging of single-serve
beverage filter cartridges shall be marked as covered by the
‘762 PATENT.
(b) The packaging of brewing
machines sold by KRAFT having float-disk sensors shall be marked as
covered by the ‘162 PATENT. To the extent that LICENSED
brewing machines are manufactured by entities other than KRAFT,
KRAFT shall make its best efforts to have such entities comply with
the foregoing patent marking requirements.
6. No Warranty or
Obligation . Nothing
contained in this AGREEMENT shall be construed as:
(a) a warranty or representation
that commercialization of LICENSED PRODUCTS will be free of
infringement of third party patents;
(b) an obligation or agreement on
the part of KEURIG to sue third parties for infringement of KEURIG
patents; or
(c) an obligation on