HomeMy WebLinkAboutContracts & Agreements_44-2014_CCv0001.pdf SETTLEMENT AGREEMENT AND LIMITED PATENT LICENSE
This SETTLEMENT AGREEMENT AND LIMITED PATENT LICENSE
("Settlement Agreement") is made among the parties to Civil Action No. 5:13-CV-01307-RGK-
SP in the Central District of California, Eastern Division, styled Geomembrane Technologies
Inc. v. R.P.S. Engineering Corp. et al. ("the Lawsuit"),namely, Geomembrane Technologies Inc.
("GTI"); R.P.S. Engineering Corp. ("RPS"); URS Corporation ("URS"); The City of Redlands
("Redlands");and Doty Bros. Equipment Co. ("Doty°'), each acting on its own behalf.
RECITALS
WHEREAS,Redlands and URS are parties to an Agreement for Professional Services for
Design Engineering Services for the Treatment Plant Optimization of the Horace P. Hinckley
Water Treatment Plant Project,effective August 4, 2009;
WHEREAS, in or about February of 2012, Redlands and Doty entered into a contract
relating to various upgrades to the Horace P. Hinckley Water Treatment Plant("Hinckley Plant")
in Redlands, including installation of new covers over existing sedimentation basins (together
with all modifications and amendments thereto,the "Redlands-Doty Contract");
WHEREAS, in or about March of 2012, Doty and RPS entered into a contract for Doty to
purchase sedimentation basin covers from RPS for installation at the Hinckley Plant CDoty-RPS
Contract");
WHEREAS,GTI maintains that it is the assignee and owner of U.S. Patent No. 6,612,079
(the `079 patent"),entitled "Clarifier Cover;"
WHEREAS, by a First Amended Complaint and Demand for Jury Trial filed on
September 25, 2013 in the Lawsuit("FAC"), GTI claimed that RPS, Doty, and Redlands directly
infringed the '079 patent by making, using, selling, and/or offering to sell one or more products
within the scope of the '079 patent claims in connection with the Hinckley Plant;
WHEREAS, by the FAC, GTI claimed that URS induced infringement of the '079 patent
in connection with the Hinckley Plant;
WHEREAS, by the FAC, GTI claimed that RPS contributed to infringement of the '079
patent in connection with the Hinckley Plant;
WHEREAS,each of RPS, URS, Doty, and Redlands deny DTI's infringement claims and
believe that they have meritorious noninfringement, invalidity, and equitable defenses with
respect to the'079 patent;
WHEREAS, Redlands has asserted cross-claims against: Doty and RPS for breach of
warranty under California Commercial Code § 2312; Doty and URS for breach of contract; Doty
and RPS for breach of implied warranty of fitness and merchantability; and Doty and RPS for
negligence(collectively, "Redlands' Cross-Claims");
WHEREAS, Doty, in its responsive pleading filed on October 15, 2013, asserted cross-
claims against RPS for breach of contract (express warranty), breach of contract (indemnity
against patent infringement)and breach of contract(attorneys fees and costs);
WHEREAS, Doty, by a proposed First Amended Answer submitted to the Court on
January 15,2014,has asserted cross-claims against Redlands for declaratory judgment of amount
owed under contract("Doty's Payment Claim") and for declaratory judgment of an obligation to
hold harmless under California Commercial Code § 23112(3)("Doty's Hold Harmless Claim");
WHEREAS, GTI, RPS, URS, Redlands, and Doty desire to settle and resolve their
differences relative to the Lawsuit, including all claims and cross-claims,and the'079 patent;
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NOW THEREFORE, in consideration of the mutual agreements, and covenants set forth
in this Settlement Agreement, GTI, RPS, URS, Redlands, and Doty agree to settle their
differences as follows:
1. Participation in Settlement by All Parties Required
No portion of this Settlement Agreement shall become effective unless and until each and
every party to the Lawsuit executes this Settlement Agreement and delivers an executed copy of
it to each and every other party to the Lawsuit.
2. Effective Date
This Settlement Agreement shall become effective as of the date the last party to the
Lawsuit executes this Settlement Agreement and delivers an executed copy of it to each and
every other party to the Lawsuit(the"Effective Date").
3. Payments to GTI
In consideration of the license, release, and covenant granted by GTI, the dismissal by
GTI of the Lawsuit hereunder, and in consideration of and subject to the other terms and
conditions set forth in this Settlement Agreement, the following payments shall be made within
seven(7)days of the Effective Date:
a. Payment by RPS.
RPS shall pay to GTI sixty-five thousand U.S. dollars ($65,000) by wire transfer,
according to wire instructions that have been provided by counsel for GTI. The forgoing
payment shall be effected by a payment of sixty-five thousand U.S. dollars ($65,000)to GTI by
Doty on RPS's behalf.
b. Payments by Doty.
Doty shall pay to GTI five thousand U.S. dollars ($5,000) by wire transfer, according to
wire instructions that have been provided by counsel for GTI.
e. Payment by URS.
URS shall pay to GTI twenty-five thousand dollars ($25,000) by wire transfer, according
to wire instructions that have been provided by counsel for GTI.
GTI understands and agrees that the foregoing payments shall be the sole remuneration
from RPS, Doty, and URS to GTI under this Settlement Agreement and shall constitute full
satisfaction of GTI's claims against RPS, Doty, Redlands, and URS, and that none of RPS, Doty,
and URS, nor any person or entity on behalf of RPS, Doty, Redlands, or URS, shall be required
to make any other payments to or on behalf of GTI under or in conjunction with this Settlement
Agreement.
RPS, Doty, and URS understand and agree that if any party fails to make full and timely
payment to GTI,then the releases by GTI of claims against that party shall be null and void.
Doty further understands and agrees that if it fails to make full and timely payment on
RPS's behalf,then the releases by GTI of claims against Doty and against RPS shall be null and
void.
4. Payments to RPS.
In consideration of and subject to the other term-, and conditions set forth in this
Settlement Agreement, and in connection with the Doty-RPS Contract, Doty shall pay to RPS
(a) sixty-five thousand dollars ($65,000.00) within seven (7) days of the Effective Date and
(b)one hundred and thirty thousand dollars ($130,000.00) within seven (7) days of Redlands'
acceptance of the replacement fabric membrane as described in Paragraph I I of this Settlement
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Agreement. RPS understands and agrees that the foregoing payments, in combination with the
payment made on RPSs behalf as described in Paragraph Ia, shall together constitute full
satisfaction of Doty's obligations to RPS, and RPSs claims against Doty, under the Doty-RPS
Contract.
5. Taxes/Costs.
GTI is responsible for any duties, taxes,and levies to which it is subject as a result of any
payment or other consideration to GTI under this Settlement Agreement.
G. Withholding
RPS,URS,and Doty acknowledge that GTI provided its U.S. federal taxpayer ID number
to counsel for RPS,URS,and Doty.
7. Dismissal of the Lawsuit
Within two (2) business days of the final payment to GTI according to Paragraph 3
above, the parties shall file a joint Stipulation of Dismissal in the form of Exhibit A hereto. The
parties shall promptly proceed with any and all additional procedures needed to dismiss the
Lawsuit. The dismissals shall be with prejudice, except as provided in the Stipulation of
Dismissal. It is understood and agreed that the dismissal with prejudice of any party's
counterclaim for declaratory judgment of invalidity of the '079 patent shall be limited to the
Lawsuit, and that any party may challenge the validity of the 'o7q patent or any of the
Licensed Patents, by defense, counterclaim or otherwise, in a future proceeding or
dispute involving conduct, products, or methods other than those accused in the
Lawsuit.
8. Limited License
GTI hereby grants RPS, URS, Redlands, and Doty a fully paid-up, non-exclusive,
irrevocable license to make, have made, use, import, export, distribute, sell, offer for sale,
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develop, and advertise under all U.S. Patents owned by GTI ("Licensed Patents"),including U.S.
Patent No. 6,389,757;U.S. Patent No. 6,612,079; U.S. Patent No. 6,865,754;and U.S. Patent No.
8,555,556, solely with respect to goods, equipment, products, fixtures, and combinations
installed at,and methods performed at or in connection with the operation of,the Hinckley Plant,
including but not limited to sedimentation basin covers, and only for the time that any of the
foregoing remain at the Hinckley Plant. This license does not apply to any equipment or
products installed anywhere other than the Hinckley Plant, even if such equipment or products
were previously installed at the Hinckley Plant. The license granted under this Paragraph 8
extends to and includes any patent owned by GTI claiming priority to any of the applications for
the Licensed Patents, including any continuations, continuations in part, divisionals,
reexamination certificates, or reissue applications relating of any of the Licensed Patents. GTI
represents and warrants that it is the sole owner of the Licensed Patents, that it has full authority
to grant the forgoing licenses, and that no other person or entity has right, authority, or standing
to claim past or current infringement of any of the Licensed Patents by Doty, Redlands, RPS, or
URS.
9. Costs and Attorneys' Fees
Each party shall be solely responsible for its own legal expenses, costs, and fees in
connection with,arising from, or relating to the Lawsuit.
10. Releases
a. DTI's release of RPS, URS, and Redlands of all claims asserted in the
Lawsuit and all claims relating to the Hinckley Plant.
Subject solely to the reservations of rights set out above and below, and other conditions
that may be set forth in this Settlement Agreement, GTI, on behalf of itself and its heirs,
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predecessors, successors, assignees, parents, executors, administrators, partners, subsidiaries,
affiliates, partnerships, general partners, limited partners, and joint venturers, and any of their
past, present, and future principals, directors, officers, employees, shareholders, trustees,
representatives, consultants, attorneys, and agents, hereby conclusively and fully, finally, and
forever releases,relinquishes, remises and discharges each of RPS, URS,and Redlands,and each
of their respective heirs, predecessors, successors, assignees, parents, executors, administrators,
partners, subsidiaries, affiliates, partnerships, general partners, limited partners, and joint
venturers, and any of their respective past, present, and future principals, agents, officers,
directors, employees, shareholders, trustees, direct and indirect customers, distributors, resellers,
attorneys, consultants, and representatives, and each of them, but solely in their capacities as
such, from any liability on or for any and all past, present, or future claims, counterclaims,
actions, causes of any action, suits, covenants, contracts, representations,warranties,agreements,
promises, guarantees, indemnities, accounts, reckonings, bonds, controversies, liabilities,
obligations, damages, expenses, debts, losses, costs (including attorneys' fees and court costs),
sums of money, bills, executions, judgments and demands whatsoever, whether liquidated or
unliquidated, contingent or fixed, known or unknown, direct or indirect, foreseen or unforeseen,
in law, equity or otherwise, based upon any act or omission that occurred prior to the Effective
Date and which arose from and/or is related to the claims asserted by GTI in, or that otherwise
relate to, the Lawsuit and all claims relating to the Hinckley Plant. Notwithstanding anything to
the contrary herein, however, the releases set forth herein do not release, impair, or affect any
rights or obligations of any of the parties which (i)may arise under or in connection with a claim
of breach of this Settlement Agreement, or (ii) are unrelated to goods, equipment, products,
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fixtures, and combinations (including but not limited to sedimentation basin covers) installed at,
and methods performed at or in connection with the operation of,the Hinckley Plant.
b. GTI's release of Doty of all claims asserted in the Lawsuit and all claims
relating to the Hinckley Plant.
Subject solely to the reservations of rights set out above and below, and other conditions
that may be set forth in this Settlement Agreement, GTI hereby conclusively and fully, finally,
and forever releases, relinquishes, remises and discharges Doty from any liability on or for any
and all past, present, or future claims, counterclaims, actions, causes of any action, suits,
covenants, contracts, representations, warranties, agreements, promises, guarantees, indemnities,
accounts, reckonings, bonds, controversies, liabilities, obligations, damages, expenses, debts,
losses, costs (including attorneys' fees and court costs), sums of money, bills, executions,
judgments and demands whatsoever, whether liquidated or unliquidated, contingent or fixed,
known or unknown, direct or indirect, foreseen or unforeseen, in law, equity or otherwise, based
upon any act or omission that occurred prior to the Effective Date and which arose from and/or is
related to the claims asserted by GTI in, or that otherwise relate to, the Lawsuit and all claims
relating to the Hinckley Plant. Notwithstanding anything to the contrary herein, however, the
releases set forth herein do not release, impair, or affect any rights or obligations of any of the
parties which (i) may arise under or in connection with a claim of breach of this Settlement
Agreement, or (ii) are unrelated to goods, equipment, products, fixtures, and combinations
(including but not limited to sedimentation basin covers) installed at, and methods performed at
or in connection with the operation of,the Hinckley Plant.
c. RPS,URS,and Redlands's release of all claims against GTI.
Subject solely to the reservations of rights set out above and below, and other conditions
that may be set forth in this Settlement Agreement, each of RPS, URS, and Redlands,and each
of them on behalf of itself and its heirs, predecessors, successors, assignees, parents, executors,
administrators, partners, subsidiaries, affiliates, partnerships, general partners, limited partners,
and joint venturers, and any of their past, present, and future principals, directors, officers,
employees, shareholders, trustees, representatives, consultants, attorneys, and agents, hereby
conclusively and fully, finally, and forever releases, relinqtdshes, remises and discharges GTI
and its heirs, predecessors, successors, assignees, parents, executors, administrators, partners,
subsidiaries, affiliates, partnerships, general partners, limited partners, and joint venturers, and
any of its respective past, present, and future principals, agents, officers, directors, employees,
shareholders,trustees,direct and indirect customers,distributors,resellers,attorneys,consultants,
and representatives, and each of them, but solely in their capacities as such, from any liability on
or for any and all past, present, or future claims, counterclaims, actions, causes of any action,
suits, covenants, contracts, representations, warranties, agreements, promises, guarantees,
indemnities, accounts, reckonings, bonds, controversies, liabilities, obligations, damages,
expenses, debts, losses, costs (including attorneys' fees and court costs), sums of money, bills,
executions,judgments and demands whatsoever, whether liquidated or unliquidated, contingent
or fixed, known or unknown, direct or indirect, foreseen or unforeseen, in law, equity or
otherwise, based upon any act or omission which occurred prior to the Effective Date and which
arose from and/or is related to the claims asserted in the Lawsuit. Notwithstanding anything to
the contrary herein, however, the releases set forth herein do not release, impair, or affect any
rights or obligations of any of the parties which may arise under or in connection with a claim of
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breach of this Settlement Agreement or are unrelated to goods, equipment, products, fixtures,
and combinations installed at, and methods performed at or in connection with the operation of,
the Hinckley Plant,including but not limited to sedimentation basin covers.
d. Doty's release of all claims against GTI.
Subject solely to the reservations of rights set out above and below, and other conditions
that may be set forth in this Settlement Agreement, Doty hereby conclusively and fully, finally,
and forever releases, relinquishes, remises and discharges GTI from any liability on or for any
and all past, present, or future claims, counterclaims, actions, causes of any action, suits,
covenants, contracts, representations, warranties, agreements, promises, guarantees, indemnities,
accounts, reckonings, bonds, controversies, liabilities, obligations, damages, expenses, debts,
losses, costs (including attorneys' fees and court costs), sums of money, bills, executions,
judgments and demands whatsoever, whether liquidated or unliquidated, contingent or fixed,
known or unknown, direct or indirect, foreseen or unforeseen, in law, equity or otherwise, based
upon any act or omission which occurred prior to the Effective Date and which arose from and/or
is related to the claims asserted in the Lawsuit. Notwithstanding anything to the contrary herein,
however, the releases set forth herein do not release, impair, or affect any rights or obligations of
any of the parties which may arise under or in connection with a claim of breach of this
Settlement Agreement or are unrelated to goods, equipment,products, fixtures,and combinations
installed at,and methods performed at or in connection with the operation of,the Hinckley Plant,
including but not limited to sedimentation basin covers.
e. Redlands releases RPS of all claims.
Subject solely to the reservations of rights set out above and below, and other conditions
that may be set forth in this Settlement Agreement, Redlands, on behalf of itself and its heirs,
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predecessors, successors, assignees, parents, executors, administrators, partners, subsidiaries,
affiliates, partnerships, general partners, limited partners, and joint venturers, and any of their
past, present, and future principals, directors, officers, employees, shareholders, trustees,
representatives, consultants, attorneys, and agents, hereby conclusively and fully, finally, and
forever releases, relinquishes, remises and discharges RPS and its heirs, predecessors,
successors, assignees, parents, executors, administrators, partners, subsidiaries, affiliates,
partnerships,general partners, limited partners, and joint venturers,and any of their past, present,
and future principals, agents, officers, directors, employees, shareholders, trustees, direct and
indirect customers, distributors, resellers, attorneys, consultants, and representatives,and each of
them, but solely in their capacities as such, from any liability on or for any and all past, present,
or future claims, counterclaims, actions, causes of any action, suits, covenants, contracts,
representations, warranties, agreements, promises, guarantees, indemnities, accounts,reckonings,
bonds, controversies, liabilities, obligations, damages, expenses, debts, losses, costs (including
attorneys' fees and court costs), sums of money, bills, executions, judgments and demands
whatsoever, whether liquidated or unliquidated, contingent or fixed, known or unknown, direct
or indirect, foreseen or unforeseen, in law, equity or otherwise, based upon any act or omission
which occurred prior to the Effective Date. Notwithstanding anything to the contrary herein,
however, the releases set forth herein do not release, impair, or affect any rights or obligations of
any of the parties which may arise under or in connection with a claim of breach of this
Settlement Agreement.
L Redlands releases URS of all claims asserted in the Lawsuit.
Subject solely to the reservations of rights set out above and below, and other conditions
that may be set forth in this Settlement Agreement, Redlands, on behalf of itself and its heirs,
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predecessors, successors, assignees, parents, executors, administrators, partners, subsidiaries,
affiliates, partnerships, general partners, limited partners, and joint venturers, and any of their
past, present, and future principals, directors, officers, employees, shareholders, trustees,
representatives, consultants, attorneys, and agents, hereby conclusively and fully, finally, and
forever releases, relinquishes, remises and discharges URS and its heirs, predecessors,
successors, assignees, parents, executors, administrators, partners, subsidiaries, affiliates,
partnerships,general partners, limited partners, and joint venturers, and any of their past,present,
and future principals, agents, officers, directors, employees, shareholders, trustees, direct and
indirect customers, distributors, resellers, attorneys, consultants, and representatives,and each of
them, but solely in their capacities as such, from any liability on or for any and all past, present,
or future claims, counterclaims, actions, causes of any action, suits, covenants, contracts,
representations, warranties, agreements,promises, guarantees, indemnities, accounts,reckonings,
bonds, controversies, liabilities, obligations, damages, expenses, debts, losses, costs (including
attorneys' fees and court costs), sums of money, bills, executions, judgments and demands
whatsoever, whether liquidated or unliquidated, contingent or fixed, known or unknown, direct
or indirect, foreseen or unforeseen, in law, equity or otherwise, based upon any act or omission
which occurred prior to the Effective Date and which arose from and/or is related to the claims
asserted by Redlands against URS, in the Lawsuit. Notwithstanding anything to the contrary
herein, however, the releases set forth herein do not release, impair, or affect any rights or
obligations of any of the parties which (i) may arise under or in connection with a claim of
breach of this Settlement Agreement, or(ii) were not the subject of claims asserted by Redlands
against URS, in the Lawsuit.
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g. Redlands releases Doty of all claims asserted`in the Lawsuit.
Subject solely to the reservations of rights set out above and below, and other conditions
that may be set forth in this Settlement Agreement, Redlands hereby conclusively and fully,
finally, and forever releases, relinquishes, remises and discharges Doty and its heirs,
predecessors, successors, assignees, parents, executors, administrators, partners, subsidiaries,
affiliates, partnerships, general partners, limited partners, and joint venturers, and any of their
past, present, and future principals, agents, officers, directors, employees, shareholders, trustees,
direct and indirect customers, distributors, resellers, attorneys, consultants, and representatives,
and each of them, but solely in their capacities as such, from,any liability on or for any and all
past, present, or future claims, counterclaims, actions, causes of any action, suits, covenants,
contracts, representations, warranties, agreements, promises, guarantees, indemnities, accounts,
reckonings, bonds, controversies, liabilities, obligations, damages, expenses, debts, losses, costs
(including attorneys' fees and court costs), sums of money, bills, executions, judgments and
demands whatsoever, whether liquidated or unliquidated, contingent or fixed, known or
unknown, direct or indirect, foreseen or unforeseen, in law, equity or otherwise, based upon any
act or omission which occurred prior to the Effective Date and arose from and/or is related to
Redlands! Cross-Claims. Notwithstanding anything to the contrary herein, however,the releases
set forth herein do not release, impair, or affect any rights or obligations of any of the parties
which (i) may arise under or in connection with a claim of breach of this Agreement or any of
the documents executed in accordance with this Agreement,or(ii)do not arise from and/or relate
to Redlands'Cross-Claims.
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h. Doty releases Redlands of Doty's Hold Harmless Claim.
Subject solely to the reservations of rights set out above and below, and other conditions
that may be set forth in this Settlement Agreement, Doty hereby conclusively and fully, finally,
and forever releases, relinquishes, remises and discharges Redlands and its heirs, predecessors,
successors, assignees, parents, executors, administrators, partners, subsidiaries, affiliates,
partnerships, general partners, limited partners, and joint venturers, and any of their past,present,
and future principals, agents, officers, directors, employees, shareholders, trustees, direct and
indirect customers,distributors, resellers, attorneys, consultants, and representatives, and each of
them, but solely in their capacities as such, from any liability on or for any and all past, present,
or future claims, counterclaims, actions, causes of any action, suits, covenants, contracts,
representations,warranties,agreements,promises, guarantees, indemnities,accounts,reckonings,
bonds, controversies, liabilities, obligations, damages, expenses, debts, losses, costs (including
attorneys' fees and court costs), sums of money, bills, executions, judgments and demands
whatsoever, whether liquidated or unliquidated, contingent or fixed, known or unknown, direct
or indirect, foreseen or unforeseen, in law, equity or otherwise, based upon any act or omission
which occurred prior to the Effective Date and which arose from and/or is related to Doty's Hold
Harmless Claim. Notwithstanding anything to the contrary herein, however, the releases set
forth herein do not release, impair, or affect any rights or obligations of any of the parties which
(i) may arise under or in connection with a claim of breach of this Agreement or any of the
documents executed in accordance with this Agreement, or (ii) do not arise from and/or relate to
Doty's Hold Harmless Claim. The forgoing release is not intended, and shall not be deemed, to
extend to Doty's Payment Claim.
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L Doty releases RPS of all claims asserted in the Lawsuit.
Subject solely to the reservations of rights set out above and below, and other conditions
that may be set forth in this Settlement Agreement, Doty hereby conclusively and fully, finally,
and forever releases, relinquishes, remises and discharges RPS and its heirs, predecessors,
successors, assignees, parents, executors, administrators, partners, subsidiaries, affiliates,
partnerships,general partners, limited partners,and joint venturers, and any of their past,present,
and future principals, agents, officers, directors, employees, shareholders, trustees, direct and
indirect customers, distributors, resellers, attorneys, consultants, and representatives, and each of
them, but solely in their capacities as such, from any liability on or for any and all past, present,
or future claims, counterclaims, actions, causes of any action, suits, covenants, contracts,
representations,warranties, agreements,promises, guarantees, indemnities, accounts,reckonings,
bonds, controversies, liabilities, obligations, damages, expenses, debts, losses, costs (including
attorneys' fees and court costs), sums of money, bills, executions, judgments and demands
whatsoever, whether liquidated or unliquidated, contingent or fixed, known or unknown, direct
or indirect, foreseen or unforeseen, in law, equity or otherwise, based upon any act or omission
which occurred prior to the Effective Date and which constitute Doty's cross-claims against RPS
in the Lawsuit. Notwithstanding anything to the contrary herein, however, the releases set forth
herein do not release, impair, or affect any rights or obligations of any of the parties which (i)
may arise under or in connection with a claim of breach of this Settlement Agreement, or(ii) do
not constitute Doty's cross-claims against RPS in the Lawsuit.
11. Replacement Materials for the Hinckley Plant
a. Within one hundred twenty (120) days of the Effective Date, Doty shall obtain
and install at the Hinckley Plant replacement fabric membranes in accordance with the
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specifications in the Redlands-Doty Contract. If it is required for compliance with such
specifications, Doty will also obtain and install replacement cables, retraction pipes, and end
fittings for the fabric covers within the one hundred twenty (120) day period for installation of
replacement fabric membranes.
b. So as to facilitate replacement of the membranes (and other components as may
be necessary), Redlands shall issue a Change Order, as provided in the Redlands-Doty Contract,
that extends the Contract Completion Date (as that term is used in the Redlands-Doty Contract)
to a date that is one hundred twenty(120)days after the Effective Date.
c. Redlands has the right to approve or reject the replacement work described above
according to the approval terms of the Redlands-Doty Contract.
d. Warranty terms on replacement membranes and any other replacement
components installed pursuant to this Settlement Agreement shall be governed by the Redlands-
Doty Contract.
e. Following replacement of the fabric membranes at the Hinckley Plant and
acceptance by Redlands of same, RPS may take possession of the membrane fabric that is
replaced, in which case RPS agrees that (i)it shall be solely responsible for removing the
replaced membrane fabric from the Hinckley Plant premises and bearing all costs of such
removal; (ii)Redlands and Doty are released by RPS of any obligation or claim relating to the
replaced membrane fabric; and (iii) RPS shall hold Redlands and Doty harmless of any claim or
demand by any third party relating to the replaced membrane fabric. If RPS does not remove the
replaced membrane fabric within 10 days of written notice that it is available to RPS for
removal,Doty shall dispose of the membrane fabric at no cost to RPS.
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12. Marking at the Hinckley Plant
Redlands shall, within 30 days of the Effective Date, permanently affix to each cover
installed at the Hinckley Plant an aluminum or stainless steel plate engraved with at least 12
point type the following language:
May be covered by one or more of the following:
U.S. Patent No. 6,389,757
U.S. Patent No. 6,612,079
U.S. Patent No. 6,865,754
U.S. Patent No. 8,555,556
13. No Admission of Infringement or Liability.
RPS, Redlands, URS,and Doty deny GTI's allegations of infringement and each believes
that it has meritorious noninfiingement, invalidity, equitable estoppel, and other defenses with
respect to GTI's claims. Neither this Settlement Agreement nor any action or statement by any
of RPS, Redlands, URS, or Doty, including but not limited to actions or statements during or in
connection with the Lawsuit, or efforts to settle the Lawsuit, is or was intended to be, nor shall
be deemed to be,an admission by or for any of RPS, Redlands, URS, or Doty of infringement of
any of the Licensed Patents.
RPS, Redlands, URS, and Doty each denies liability as to the cross-claim(s) asserted
against such party in the Lawsuit and each believes that it has meritorious defenses with respect
to such cross-claim(s). Neither this Settlement Agreement nor any action or statement by any or
RPS, Redlands, URS, or Doty, including but not limited to actions or statements during or in
connection with the Lawsuit, or efforts to settle the Lawsuit, is or was intended to be, nor shall
be deemed to be, an admission by or for any of RPS, Redlands, URS, or Doty of liability as to
any cross-claim(s).
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14. Mediator's Fees
Each party is responsible for an equal portion of the Mediator's fees, which have been or
will be billed to each party by the Mediator,Jeff Kichaven, Esq.
15. Representation by Counsel
The Parties acknowledge that each has had the benefit and advice of independent legal
counsel in connection with this Settlement Agreement, and that they each understand the
meaning of each term of this Settlement Agreement, and the consequences of signing this
Settlement Agreement.
16. Agreement Entered Into With Independent Judgment
The parties further declare and represent that they have reviewed this Settlement
Agreement in its entirety, and that in making this Settlement Agreement they have relied wholly
upon their own judgment, belief, knowledge, investigation, independent legal advice, and
research into the nature, extent, and duration of losses and damages caused by the other, if any,
and upon their independent assessment of future business considerations, legal fees, and
expenses they would incur should the aforementioned Lawsuit continue, and that they have not
been influenced to any extent whatsoever in making this Settlement Agreement by any
representations or statements by any other party, or by any person or persons representing or
acting for any other party.
17. Jointly Drafted
The parties and their attorneys have cooperated in the drafting and preparation of this
Settlement Agreement. This Settlement Agreement shall not be construed against any party as
the draftsman of this Settlement Agreement.
18. No Assignment of Interest
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The parties represent and wan-ant to each other that they have not encumbered, assigned
or transferred or purported to encumber, assign or transfer, in whole or in part, to any person,
firm or corporation whatsoever, any claim, debt, liability, demand, obligation, cost, expense,
damage,action,or cause of action herein released, settled or dismissed.
19. Final Agreement
This Settlement Agreement contains the entire agreement between the parties, and all
previous understandings, agreements, and communications prior to the date hereof, whether
express or implied, oral or written, relating to the subject matter of this Settlement Agreement,
are fully and completely extinguished and superseded by this Settlement Agreement.
20. No Oral Modification
This Settlement Agreement shall not be altered, amended, modified, or otherwise
changed,except by a writing duly signed by all parties.
21. Governing Law and Venue
This Settlement Agreement shall be construed and enforced according to the laws of the
State of California, without giving effect to any choice-of-law or conflict-of-law rules or
principles that would result in the application of any other law. The United States District Court
for the Central District of California shall retain jurisdiction of the Lawsuit and this matter in
order to enforce the terms and conditions of this Settlement Agreement.
22. Bankruptcy
The parties acknowledge and agree that the Licensed Patents are "intellectual property"
as defined in Section 101(35A) of the United States Bankruptcy Code (the"Code"), as the same
may be amended from time to time, that have been licensed hereunder in a contemporaneous
exchange for value. GTI acknowledges that if GTI, as a debtor in possession or a trustee in
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bankruptcy in a case under the Code, rejects this Settlement Agreement, RPS, Doty, URS, and
Redlands may elect to retain their respective rights under this Settlement Agreement as provided
in Section 365(n) of the Code. Upon written request from RPS, Doty, URS, and/or Redlands to
GTI or the bankruptcy trustee of GTI's election to proceed under Section 365(n), GTI or the
bankruptcy trustee shall comply in all respects with Section 365(n), including,without limitation,
by not interfering with the rights of RPS, Doty, URS, and Redlands as provided in this
Settlement Agreement.
23. Severability
If any of the provisions, terms, clauses, or waivers or releases of claims or rights
contained in this Settlement Agreement are declared unlawful, unenforceable, or ineffective in a
legal forum of competent jurisdiction,then such provisions,terms, clauses,or waivers or releases
of claims or rights shall be deemed severable, such that all other provisions, terms, clauses, and
waivers and releases of claims and rights contained in this Settlement Agreement shall remain
valid and binding upon the parties.
24. Section 1542 Waiver
The parties expressly acknowledge that they have read and understood and received the
advice of counsel concerning the effect of California Civil Code § 1542, which provides:
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.
As to the claims and matters released by this Settlement Agreement, each party expressly
waives and relinquishes any right or benefit it has or may have, or which may be conferred upon
it by, the provisions of California Civil Code § 1542, as well as under any other similar state or
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federal statute or common law principle, to the fullest extent that they may lawfully waive such
rights or benefits,except as set forth herein.
The parties hereto acknowledge that the foregoing waiver of California Civil Code
§ 1542 was separately bargained for and is a key element of the Settlement Agreement.
25. Confidentiality of Settlement Agreement and Terms
GTI, URS, RPS, and Doty understand and agree that this Settlement Agreement and its
terms shall be kept confidential by them,except:
a. Each of GTI,URS, RPS, and Doty may disclose the Settlement Agreement and its
terms to its respective Senior Management, attorneys, equity holders, employees, accountants,
auditors, and other professionals to the extent necessary for them to perform their duties to such
party, in each case who are subject to an obligation of confidentiality to such party;
b. The Settlement Agreement and its terms may be disclosed pursuant to legal
process, provided, however, that in the case of a party receiving such a request for disclosure,
that party shall use its reasonable best efforts to provide notice of said request to the other parties
sufficient to allow such other parties to make formal objection to such a disclosure;
c. The Settlement Agreement and its terms may be disclosed to the extent necessary
to comply with any other legal, accounting, or regulatory requirements; and
d. The existence of the Settlement Agreement, and one or more of its terms, may be
disclosed in a press release if each of GTI,URS,RPS, and Doty agrees. The parties will work in
good faith toward a mutually acceptable press release.
The obligation of confidentiality set forth in this paragraph 25 shall not apply to
Redlands.
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26. Execution
Each party hereto covenants and represents that it is fully authorized to enter into this
Settlement Agreement and to carry out the obligations provided for herein.
This Settlement Agreement may be executed in counterparts, which when taken together
shall constitute one Agreement.
A copy of this Settlement Agreement executed by a party shall have the same effect as an
original.
27. Successors and Assigns
This Settlement Agreement shall be binding upon and inure to the benefit of the
successors and assigns of the Parties hereto.
28. Headings
The captions used in this Settlement Agreement are inserted for convenience and shall
not be deemed a part of this Settlement Agreement for construction or interpretation.
29. Notices
All notices required or permitted to be given in this Settlement Agreement shall be in
writing and shall be delivered by both (a)email and (b)by either hand or registered or certified
mail, in each case addressed as follows:
To GTI:
Hazen Hawker
Chief Executive Officer
ADI Group, Inc.
370 Wilsey Rd
Fredericton,New Brunswick, Canada E3B 6E9
hazen.g.hawker(a'jadi.ca
With a courtesy copy(which shall not constitute notice)to
Neal L. Slifkin Harris Beach PLLC
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99 Garnsey Road
Pittsford,NY 14534
nslitldn@harTisbeach.com
To Redlands:
Dan McHugh
City Attorney
City of Redlands
P.O. Box 3005
Redlands, CA 92373
dmchugh@cityofredlands.org
With a courtesy copy(which shall not constitute notice)to:
Paul Stewart
Knobbe, Martens, Olson&Bear, LLP
2040 Main Street, 14th Floor
Irvine, CA 92614
pstewatt@kmob.com
To RPS:
R.P. (Rich) Stanis
RPS Engineering, Inc.
1300 Crispin Drive
Elgin, Illinois 60123
847 931 1951 Ext. 307
rpstanis@rpsengineering.com
With a courtesy copy(which shall not constitute notice)to:
James E. Doroshow, Esq.
Fox Rothschild LLP
1800 Century Park East, Suite 300
Los Angeles, CA 90067-1506
JDoroshow@foxrothschild.com
To URS:
Alexis B. Dugdale
URS Corporation
915 Wilshire Blvd. Suite 700
Los Angeles, California 90017
alexis.dugdale@urs.com
With a courtesy copy(which shall not constitute notice)to:
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Justin Barnes
Fish&Richardson P.C.
12390 El Camino Real
San Diego, CA 92130
bames@fr.com
To Doty:
Mario Tapanes, Esq.
General Counsel
Meruelo Group
9550 Firestone Blvd., Ste. 105
Downey, CA 90241
mtapanes@meruelogroup.com
With a courtesy copy(which shall not constitute notice)to:
Greer N. Shaw, Esq.
Snell & Wilmer L.L.P.
350 S. Grand Ave., Suite 2600
Los Angeles, CA 90071
gshaw@swlaw.com
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IN WITNESS HEREOF, G.EOMEM13RANE TECHNOLOGIES INC., R.P.S.
ENGINEERING CORP., LTRs CORPORATION, THE CITY OF REDLANDS, and DOTY
BROS. EQUIPMENT CO., intending to be bound as of the date set forth above,have executed
this Settlement Agreement.
4k
Dated: MMM6 2014 GEOMEMBRANE TECHNOLOGIES INC.
By:
(a-
Name: ::1i u MAIllew
Title: f tease e r
Dated: .2014 R.P.S.ENGINEERING CORP.
By:
Name:
Title:
Dated: ,2014 URS CORPORATION
By:
Name:
Title:
Dated: 2014 THE C Y OF RE? ANDS
By
:aE
Name: 215 A40(,AL
Title:
ATTEST:
w
Sam Irwin, City er
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IN WITNESS HEREOF, GEOIEMBRANE TECHNOLOGIES INC., R.P.S.
ENGINEERING CORP., URS CORPORATION, THE CITY OF REDLANDS, and DOTY
BROS, EQUIPMENT CO., intending to be bound as of the date set forth above, have executed
this Settlement Agreement.
Dated: ,2014 GEOMEMBRANE TECHNOLOGIES INC.
By:
Name:
Title:
Dated: 2014 R.P.S. ENGINES G CORP.
By.
Name: ®i,i��-�
Title: 4-0*�
Dated: _ , 2014 URS CORPORATION
By:
Name:
Title:
Dated: , 2014 THE CITY OF REDLANDS
By:
Name:
Tide-
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IN WITNESS HEREOF, GEOMEMBRANE TECHNOLOGIES INC., R.P.S.
ENGINEERING CORP., URS CORPORATION, THE CITY OF REDLANDS, and DUTY
BROS. EQUIPMENT CO., intending to be bound as of the date set forth above, have executed
this Settlement Agreement.
Dated: 2014 GEOMEMBRANE TECHNOLOGIES INC.
By:
Name:
Title:
Dated: 92014 R.P.S.ENGINEERING CORP.
By:
Name:
Title:
Dated: 2014 URSZ70N
B :
Name:
Title: zz
Dated: .2014 THE CITY OF REDLANDS
By:
Name:
Title:
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Dated: .2014 DOTY B 'NT-Ca.
By:
r
Title:
267772 2189343x6
17161666
013114
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