EX-10.15 20 dex1015.txt SETTLEMENT AGREEMENT AND RELEASE EXHIBIT 10.15 SETTLEMENT AGREEMENT & RELEASE This Settlement Agreement & Release is effective April 26, 2002 (the "Effective Date") between Dell Products, L.P. ("Dell") with its principal place -------------- ---- of business at One Dell Way, Round Rock, Texas 78682 and InterVideo, Inc., ("InterVideo") a Delaware corporation having its principal place of business at ---------- 47350 Fremont Blvd., Fremont, California 94538. Hereinafter, Dell and InterVideo shall be referred to collectively as the "Parties." ------- RECITALS WHEREAS, on August 4, 1999, Dell and InterVideo entered into a Software Licensing Agreement, as modified by the Supplement entered into on August 4, 1999, by Supplement Two, entered into on July 31, 2000, and by Amendment One, entered into May 5, 2001 (the foregoing, collectively, the "Original License ---------------- Agreement"); and --------- WHEREAS, pursuant to the Original License Agreement, InterVideo made certain representations and warranties to Dell regarding the Products, and agreed to indemnify Dell against certain losses; WHEREAS, Dell has entered into certain agreements with the Claiming Parties (as defined below) to settle and release certain claims of infringement the Claiming Parties (as defined below) may have against Dell; WHEREAS, concurrently with the execution of this Settlement Agreement & Release, the Parties are entering into a Series D Preferred Stock Subscription Agreement, in the form attached hereto; and WHEREAS, the Parties desire to settle all claims Dell may have against InterVideo relating to Infringement (as defined below), pursuant to the terms and conditions set forth in this Agreement. AGREEMENT NOW THEREFORE, in consideration of the promises and mutual promises referred to in the Recitals and contained herein, and of other consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows: 1. Definitions. ----------- 1.1 "Claiming Parties" means (i) Nissim Corporation, a Florida ---------------- corporation, (ii) Mr. Max Abecassis, an individual associated with Nissim Corporation, (iii) MPEG LA, L.L.C., a limited liability company organized and existing under the laws of Delaware, (iv) any past, present or future signatories to an agreement with MPEG LA, L.L.C. regarding intellectual property rights, to the extent that signatory licenses those rights to MPEG LA, L.L.C., or authorizes MPEG LA, L.L.C. to act on its behalf with respect to those rights, (v) any entities on behalf of which MPEG LA, L.L.C. threatens, alleges, or brings an Action (defined below) for any infringement of intellectual property rights, or has the right to do so, to the extent of the alleged infringement, and (vi) any affiliates, successors or assigns or any of the foregoing. 1.2 "Infringement" means any actual or alleged infringement, direct ------------ or indirect, by any Party or any third party, including without limitation (i) any infringement, direct or indirect, by Products (as defined below), alone or in combination with any Dell product or any other product, and (ii) any infringement, direct or indirect, by InterVideo or the other Released Parties (as defined below), Dell or the other Releasing Parties (as defined below), or any of Dell's customers or distributors. 1.4 "MPEG - 2 Patent Portfolio" means (a) the "MPEG-2 Essential Patent(s)" in the "MPEG-2 Patent Portfolio" as those terms are defined in that certain MPEG-2 Patent Portfolio License between Dell and MPEG LA, L.L.C. entered into December 31, 2001, which include those patents set forth at www.mpegla.com -------------- as of April 1, 2002 and attached to this Agreement as Schedule A, (b) any other patents of MPEG-LA that, as of the Effective Date, have been asserted against Dell or under which Dell is licensed. 1.5 "Nissim Patent Portfolio" means (a) United States Patents Number 5,434,678; 5,589,945; 5,634,849; 5,913,013; 6,151,444; and 6,208,805, (b) any other patents of Nissim or Mr. Max Abecassis that, as of the Effective Date, have been asserted against Dell or under which Dell is licensed. 1.6 "Products" means any software products licensed under the -------- Original License Agreement, or any of InterVideo's products distributed by Dell. 2. Attorneys' Fees. Each of the Parties hereby agrees to bear its own --------------- attorneys' fees and expenses incurred in connection with the dispute concerning the Infringement. 3. Release of All Claims. --------------------- 3.1 By this Agreement, Dell, on behalf of itself, and its present and former directors, officers, employees, attorneys, agents, customers, subsidiaries, licensees, representatives, and insurers, and its respective successors affiliates and assigns ("Releasing Parties"), hereby fully and ----------------- unconditionally releases and forever discharges InterVideo, and its present and former directors, officers, employees, attorneys, agents, representatives, and insurers, and its respective successors affiliates and assigns ("Released -------- Parties") from and against any and all indemnity obligations, claims, ------- contentions, debts, liabilities, demands, promises, agreements, costs, expenses (including but not limited to attorneys' fees), damages, suits, legal proceedings, mediations, arbitrations, losses, judgments, settlements, actions or causes of action, or the like (collectively "Actions") of whatever kind or ------- nature, whether now known or unknown, and whether based on contract, breach of warranty, indemnity, tort, statutory or other legal, equitable theory of recovery, which Releasing Parties have, had, or may ever claim to have against the Released Parties, which relate to, arise from, or are connected with Infringement of the Nissim Patent Portfolio and the MPEG -2 Patent Portfolio, including, without limitation, the following (all of the foregoing and the following collectively the -2- "Released Matters"): (a) warranty claims under Section 6.0 of the Original ---------------- License Agreement that are related to Infringement of the MPEG-2 Patent Portfolio or Nissim Patent Portfolio, or (b) any rights or indemnity obligations, and related claims, under Section 7 of the Original License Agreement that are related to Infringement of the MPEG-2 Patent Portfolio or Nissim Patent Portfolio. 3.2 Dell represents and warrants that, as of the Effective Date, it has no knowledge or any actual or threatened claims of Infringement by any of the Claiming Parties other than those claims released hereunder. 3.3 In connection with the above, Dell acknowledges that it is aware that, after executing this Settlement Agreement & Release, it or its attorneys or agents may discover claims or facts in addition to or different from those which they now know or believe to exist with respect to the subject matter of this Settlement Agreement & Release or the Released Matters, but that it is Dell's intention to fully, finally and forever settle and release all of the Released Matters, and to finally and forever settle and release any other Actions, known or unknown, suspected or unsuspected, which now exist, may exist, or heretofore may have existed against the Released Parties relating to the Released Matters. In furtherance of this intention, the release herein given shall be and remain in effect as a full and complete release, notwithstanding the discovery or existence of any such additional or different claim(s) or fact(s) that may be asserted with respect to the Released Matters. 4. Warranty Against Assignment. The Parties, on behalf of their --------------------------- successors and assigns, hereby warrant and covenant that they have not transferred or assigned and prior to the Effective Date of this Settlement Agreement & Release, and will not transfer or assign to any third party (except under Section 9), any Actions or rights to bring Actions that they have or may have against any of the Released Parties or Releasing Parties, arising out of, or in connection with anything whatsoever relating to the Infringement or the Released Matters. 5. Compromise of Disputed Claims. This Settlement Agreement & Release is ----------------------------- a compromise of disputed claims and does not in any way constitute an admission by any Party of any liability or responsibility, past, present or future, for the Released Matters. 6. Entire Agreement; Modification. This Settlement Agreement & Release ------------------------------ and Series D Preferred Stock Subscription Agreement contains the entire agreement between the Parties relating to the subject matter contained herein. All prior or contemporaneous agreements, written or oral, between the Parties regarding the subject matter hereof are superseded by this Settlement Agreement & Release. It is understood that this Settlement Agreement & Release amends the Original License Agreement to exclude the Released Matters as a basis for any liability or responsibility under the Original License Agreement (including with respect to any activities and/or any actual or threatened claims arising either before or after the Effective Date hereof). This Settlement Agreement & Release may not be modified except by written document signed by an authorized representative of each Party. -3- 7. Force Majeure. No Party shall be liable for delays or defaults due to ------------- fire, windstorm, riot, act of God, act of the public enemy or other similar unforeseeable causes beyond the reasonable control and without the fault or negligence of the Party incurring such delay. 8. Waiver. No term of this Settlement Agreement & Release shall be ------ considered waived and no breach excused by any Party unless made in writing. No consent, waiver, or excuse by any Party, express or implied, shall constitute a subsequent consent, waiver or excuse. 9. Assignment. This Settlement Agreement & Release shall inure to the ---------- benefit of and shall be binding upon the respective successors and assigns, if any, of the Parties in its entirety, and may be assigned in connection with a merger, reorganization, change of control, or sale of all or substantially all of the assets to which this Settlement Agreement & Release relates; except that nothing in this section shall be construed to permit any assignment which would be unauthorized or void pursuant to any other part of this Settlement Agreement & Release. 10. Controlling Law. This Settlement Agreement & Release and all --------------- transactions under it shall be governed by the laws of the State of Texas. 11. Severability. If any provision of this Settlement Agreement & Release ------------ is held invalid, illegal or unenforceable, the validity, legality and enforceability of the remaining provisions shall not in any way be affected or impaired. 12. Headings. The headings of the sections of this Settlement Agreement & -------- Release are for reference only and do not control the interpretation of any term or condition of this Settlement Agreement & Release. 13. Representation by Counsel. Each of the Parties hereto acknowledges that ------------------------- they have been represented by independent counsel of their choice throughout all negotiations that preceded the Settlement Agreement & Release, and this Settlement Agreement & Release has been executed with the consent and on the advice of such independent legal counsel. 14. Implementation of Settlement. The Parties hereby agree to use their ---------------------------- best efforts and good faith in carrying out all of the terms of this Settlement Agreement & Release. Each of the Parties hereby agrees and authorizes its respective counsel to execute any additional documents and take any similar procedural actions which reasonably may be required in order to consummate this Settlement Agreement & Release or otherwise to fulfill the intent of the Parties hereunder. 15. Authority to Execute Agreement. The Parties hereto warrant and ------------------------------ guarantee that each person whose signature appears hereon has been duly authorized and has full authority to execute this Settlement Agreement & Release on behalf of the person, persons or entity for whom such signature is indicated. 16. Signatories' Understanding. By executing this Settlement Agreement & -------------------------- Release, the Parties affirm that they are competent, that they have been represented by counsel, or had the -4- opportunity to be represented by counsel, and that they understand and accept the nature, terms and scope of this Settlement Agreement & Release. 17. Counterpart Signature; Facsimile Deliver. This Settlement Agreement & ---------------------------------------- Release may be executed in two or more counterparts and delivered by facsimile, all of which shall be considered one and the same agreement and shall become effective when two or more counterparts have been signed by each of the parties and delivered to the other parties, it being understood that all parties need not sign the same counterpart. IN WITNESS WHEREOF, the Parties hereto have duly executed this Settlement Agreement & Release by their respective duly authorized officers. DELL PRODUCTS, L.P. INTERVIDEO, INC. By: /s/ Scott Crawley By: /s/ Steve Ro ---------------------------------- ---------------------------------- Title: Director, Software Procurement Title: CEO ------------------------------- ------------------------------- Date: April 25, 2002 Date: April 26, 2002 -------------------------------- -------------------------------- -5- Schedule A: This is the list of patents covered by the MPEG-2 Patent Portfolio License as of April 1, 2002 CANON INC. US 4,982,270 JP 2,674,059 COLUMBIA UNIVERSITY US Re 35,093 CA 2,096,431-C DE 69129595 DE 69130329 FR 0564597 FR 0630157 GB 0564597 GB 0630157 JP 2,746,749 FRANCE TELECOM (CNET) US 4,796,087 DE 3767919 FI 86241 FR 2599577 GB 0248711 IT 0248711 SE 0248711 FUJITSU US 5,235,618 CA 2,029,320 DE 69030056.5 FR 0431319 GB 0431319 JP 2,787,599 GE TECHNOLOGY DEVELOPMENT, INC. US 4,706,260 US 4,813,056 DE 3855203 T2 FR 0395709 GB 0395709 HK 1,004,307 JP 2,790,509 SG 63561 US 5,426,464 US 5,486,864 CN 94105749 DE 69421444 ES 2,140,477 FR 0624983 GB 0624983 IT 0624983 KR 291492 MX 188411 RU 2,115,261 TR 28291 TW NI-092150 US 5,491,516 AT 167015 BR PI 9405710-9 DE 69410781.6 ES 2,117,252 FR 0679316 GB 0679316 IN 183230 IT 50123 BE 98 KR 282981 MX 187475 MY 109889-A PT 0679316 RU 2,115,258 SE 0679316 TR 27398 TW NI-66422 VN 526 US 5,600,376 IN 181018 US 5,796,743 KR 283710 MX 201309 MY 112121 TW NI-070615 GENERAL INSTRUMENT CORPORATION US 4,394,774+ US 4,698,672 US 5,068,724 AU 627421-B2 NO 179890-C TW NI-52990 US 5,091,782 AT 139402-T1 AU 627684-B2 CA 2,038,043-C DE 69120139-T2 DK 0451545 T3 ES 2088440-T3 FR 0451545 GB 0451545 GR 3020736 IT 0451545 NO 178419-C NO 178420-C TW NI-50643 US 5,093,720 + Expired December 15, 1998 HITACHI, LTD. JP 2,666,793 JP 2,907,072 JP 3,085,289 JP 3,173,508 KDDI CORPORATION JP 1,835,550 MATSUSHITA US Re 35,910 AU 612543-B2 CA 2,016,523-C CH 0397402 DE 69027710 ES 2091790 FR 0397402 GB 0397402 IT 0397402 JP 1,949,701 JP 2,695,244 KR 63,477 NL 0397402 SE 0397402 US Re 36,015 US Re 36,507 US 5,223,949 US 5,412,430 FR 0526163 GB 0526163 JP 2,699,703 NL 0526163 US 5,784,107 JP 2,684,941 JP 2,524,044 JP 2,794,899 JP 2,828,095 JP 2,899,478 MITSUBISHI US4,954,892 CA 2,000,156-C DE 68913508-T2 FR 0382892 GB 0382892 HK 1008133 IT 0382892 JP 2,100,607 KR 58,957 SE 0382892 US 5,072,295 AU 625476-B2 CA 2,023,543-C DE 69027820-T2 FI 98421-B FR 0414193 GB 0414193 HK 1008129 IT 0414193 JP 2,128,624 KR 77,808 NL 0414193 NO 306749 SE 0414193 SG 45452 US 5,949,489 CA 2,234,391 JP 2,924,431 JP 3,127,956 US 5,963,258 CA 2,234,387 SG 65597 US 5,970,175 NO 310,849 US 5,990,960 US 6,002,439 US 6,097,759 CA 2,327,489 NO 310,850 US 6,188,794 JP 1,869,940 JP 2,510,456 JP 2,577,745 JP 2,814,819 JP 2,924,430 CA 2,065,803 NO 307200 SG 64870 JP 3,019,827 NIPPON TELEGRAPH AND TELEPHONE CORPORATION (NTT) JP 1,939,084 JP 2,562,499 PHILIPS US 4,849,812 CN 1013425-B DE 3871998-T2 FR 0282135-B GB 0282135-B IT 0282135-B JP 2,534,534-B2 KR 9700364-B1 TW 29492-B US 4,901,075 AT 260748-B CN 1011459B DE 3750206-C0 FR 0260748-B GB 0260748-B IT 0260748-B JP 2,711,665 KR 118698 NL 0260748-B SE 0260748-B TW 35350-B US 5,021,879 DE 3855114-B FR 0290085-B GB 0290085-B JP 2,630,809-B US 5,027,206 AT E 131335 AU 634173-B BE 0359334-B CH 0359334-B CN 1018695-B DE 68925011-B ES 0359334-B FI 92127 FR 0359334 GB 0359334-B GR 0359334-B HK 96-1695-B IT 0359334-B JP 2,961,131 KR 153275 LU 0359334 NL 0359334 SE 0359334 SG 9692026 US 5,128,758 CA 2,018,031 JP 2,791,822 MX 172405-B US 5,179,442 CA 2,304,917 US 5,333,135 DE 69415698 FR 0609936 GB 0609936 KR 290326 MX 185421 US 5,606,539 AT E157830-B BE 0460751-B DE 69127504-B DK 0460751-B FR 0460751-B GB 0460751-B IT 0460751-B KR 239837 NL 0460751-B SE 0460751-B US 5,608,697 US 5,699,476 AU 641726 CA 2,036,585 DE 69109346.6 DK 0443676 FI 101442 FR 0443676 GB 0443676 HK 96-615 IT 0443676 NL 0443676 SE 0443676 SG 9690467.7 US 5,740,310 CA 2,043,670 US 5,844,867 ROBERT BOSCH GMBH DE 3769306 FR 0279053 GB 0279053 IT 0279053 NL 0279053 SAMSUNG ELECTRONICS CO., LTD. US 5,461,421 JP 3,159,853 KR 0166722 US 5,467,086 JP 2,665,127 KR 166716 US 5,654,706 DE 69321781 FR 0580454 GB 0580454 HK 1008711 KR 95,631 KR 132895 SANYO ELECTRIC CO., LTD. JP 2,812,446 SCIENTIFIC ATLANTA US 5,418,782 AU 683134 CA 2,180,363 JP 2,940,638 MX 190,776 US 5,420,866 AU 687844 CA 2,186,368 JP 2,940,639 US 5,457,701 AU 680680 CA 2,180,342 JP 2,937,301 SHARP KABUSHIKI KAISHA JP 2,951,861 SONY US Re 37,222 DE 69031107 DE 69033782 FR 0424026 FR 0713340 GB 0424026 GB 0713340 JP 3,159,310 US 4,864,393 DE 3854171-T2 GB 2205710-B2 US 5,191,436 DE 69127224 FR 0456433 GB 0456433 HK 1,014,415 JP 2,874,745 JP 2,877,225 JP 2,969,782 US 5,291,486 GB 2289194-B2 GB 2289195-B2 US 5,298,991 DE 69229153 FR 0527011 GB 0527011 US 5,343,248 JP 2,977,104 US 5,428,396 US 5,461,420 AU 672812 CN 45,549 US 5,481,553 AT 185663 AU 673244-B2 BE 0638218 BR 9404321-1 CH 0638218 DE 69421135 DK 0638218 EG 20330 ES 2,137,358 FR 0638218 GB 0638218 GR 3,032,133 HK 1,013,575 HU 217744 IE 0638218 IL 108787 IT 0638218 KR 287490 LU 0638218 MC 0638218 MX 197,778 MY 110794 NL 0638218 NZ 261907-B PL 173287 PT 0638218 RU 2,119,727 SE 0638218 TR 28436-B TW 66605-B US 5,510,840 AT 0573665 DE 69227185 FR 0573665 GB 0573665 IT 0573665 NL 0573665 US 5,539,466 AT 0598904 AU 662548-B2 DE 69229229 FR 0598904 GB 0598904 IT 0598904 US 5,543,847 US 5,559,557 AU 669209-B2 CN 58,202 HK 1,013,573 US 5,663,763 AU 667970 CN 56,083 US 5,666,461 AU 670288 CN 55,336 MY 109,945 TW 70,497 US 5,701,164 US 5,946,042 US 5,982,437 US 6,040,863 US 6,160,849 JP 2,712,645 TOSHIBA CORPORATION US 5,317,397 JP 2,883,585 US 5,424,779 JP 2,755,851 US 5,467,136 JP 2,758,378 US 5,742,344 JP 2,883,592 US 5,986,713 VICTOR COMPANY OF JAPAN, LIMITED (JVC) US Re 34,965 DE 69024235 DE 690308191 FR 0379217-B FR 0572046-B GB 0379217-B GB 0572046-B JP 2,072,546 JP 2,530,217 US Re 35,158 DE 69031045 FR 0584840-B GB 0584840-B JP 2,137,325 NL 0584840-B US Re 36,822 JP 2,962,012 US 5,175,618 DE 69123705 DE 69131257 FR 0484140-B FR 0683615 GB 0484140-B GB 0683615 JP 2,830,881 JP 2,921,755 KR 94554 GENERAL INSTRUMENT DE P3789373.8 removed as of October 1, 1999 FR 0266049 removed as of October 1, 1999 GB 0266049 removed as of October 1, 1999 IT 0266049 removed as of October 1, 1999 SONY GB 2289196 removed as of October 1, 1999 GB 2259229 removed as of October 1, 1999 VICTOR COMPANY OF JAPAN, LIMITED (JVC) DE 69012405 removed as of October 1, 1999 FR 0395440-B removed as of October 1, 1999 GB 0395440-B removed as of October 1, 1999 NL 0395440-B removed as of October 1, 1999