EXHIBIT 10.17
SETTLEMENT AGREEMENT
--------------------
THIS AGREEMENT, effective the sixteenth day of June, 2000, is by and
between EZENIA! INC., f/k/a VIDEOSERVER, INC., a Delaware corporation having its
principal place of business at 00 Xxxxx Xxxxxx, Xxxxxxxxxx, Xxxxxxxxxxxxx 00000
(hereinafter "Ezenia"), on the one hand, and ACCORD NETWORKS, INC., f/k/a ACCORD
TELECOMMUNICATIONS, INC., f/k/a ACCORD VIDEO TELECOMMUNICATIONS, Inc., a Georgia
corporation having its principal place of business at 0000 Xxxxxxx Xxxx, Xxxxx
000, Xxxxxxx, Xxxxxxx 00000, and ACCORD NETWORKS LTD., f/k/a ACCORD
TELECOMMUNICATIONS LTD., an Israeli corporation having its principal place of
business at 94 Derech Em Hamoshavot, X.X.X. 0000, Xxxxxx-Xxxxx, Xxxxxx 00000
(collectively herein "Accord").
(a) Ezenia is the owner of United States Letters Patent Nos. 5,600,646
issued on February 4, 1997 (the "646 Patent"), 5,838,664 issued on November 17,
1998 (the "664 Patent"), 5,886,734 issued on March 23, 1999 (the "734 Patent"),
and 5,990,933 issued on November 23, 1999 (the "933 Patent");
(b) Ezenia and Accord are currently engaged in a dispute and are parties
litigant in a certain civil action pending in the United States District Court
for the District of Massachusetts entitled Ezenia! Inc. v. Accord Networks,
Inc., et al., Civil Action No. 98-12381-JLT (hereinafter "the pending lawsuit");
(c) In the pending lawsuit, Ezenia has charged that Accord is and has been
infringing the '646, '664, '734 and '933 Patents;
(d) In the pending lawsuit, Accord has denied infringement and has asserted
affirmative defenses and a counterclaim against Ezenia;
(e) The parties to this Settlement Agreement recognize the uncertainty of
outcome of seriously disputed, complex litigation such as the pending lawsuit,
and have independently concluded that their own self-interests would best be
served by compromising and thereby terminating and concluding the pending
lawsuit and all disputes between them;
NOW, THEREFORE, the undersigned parties to this Settlement Agreement
herewith mutually agree and contract with each other, for good and reciprocal
consideration given and received, as follows:
1. Definitions.
-----------
1.1 "Contested Patents" shall mean the '646, '664, '734 and '933 Patents
as well as all continuations, divisionals, reissues, and reexaminations thereof
as well as all counterparts thereof in foreign countries.
1.2 "Covenant Period" shall mean the period from June 16, 2000 to June 16,
2003.
1.3 "Ezenia's Remaining Patents" shall mean all United States and foreign
issued patents and all United States and foreign patents resulting from patent
applications now owned or later filed or acquired by Ezenia during the Covenant
Period other than the Contested Patents.
1.4 "Accord's Patents" shall mean all United States and foreign issued
patents and all United States and foreign patents resulting from patent
applications now owned or later filed or acquired by Accord during the Covenant
Period.
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1.5 "Remaining Patents" shall mean Ezenia's Remaining Patents and Accord's
Patents.
2. Payments.
--------
Accord agrees to pay Ezenia $6,500,000 on the following terms:
(a) Accord shall pay Ezenia $500,000.00 upon execution of this Settlement
Agreement; and
(b) Accord shall pay Ezenia the balance of $6,000,000.00 pursuant to the
following provisions:
(1) If at any time or prior to January 31, 2002, Accord receives from
any Initial Public Offering or other financing net proceeds of more than
$10,000,000.00 to the extent any balance of the $6,000,00.00 remains owing
to Ezenia, Accord shall pay twelve percent (12%) of such proceeds to
Ezenia. Accord shall pay Ezenia within seven days of Accord's receipt of
such net proceeds. The term "net proceeds" as used herein means the amount
received by Accord from such Initial Public Offering or other financing.
(2) If by September 30, 2000, Accord has not paid the balance of the
$6,000,000.00 owed to Ezenia under this Agreement, then Accord shall
commence the following quarterly payment plan: Commencing on October 30,
2000, and thereafter on the 30th day following such successive calendar
quarter, Accord shall make $1,000,000.00 quarterly payments to Ezenia until
the unpaid balance of $6,000,000.00 has been paid.
(c) It is specifically understood that Accord's payments under Paragraph
2(b)(1), whenever made, may result in a final quarterly payment under Paragraph
2(b)(2) of less than $1,000,000.00 and may result in less than six quarterly
payments. It is also specifically understood that Accord's total payments under
Paragraphs 2(b)(1) and 2(b)(2) shall not exceed $6,000,000.00.
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3. Agreement for Judgment.
----------------------
Upon the execution of this Settlement Agreement, Ezenia and Accord will
execute and file with the United States District Court for the District of
Massachusetts an Agreement for Judgment in the form attached hereto as Exhibit
A, to be entered by the Court as a final judgment in the litigation, and joint
motion for entry thereof.
4. Exchange of Mutual Releases.
---------------------------
(a) Upon execution of this Settlement Agreement, Ezenia will execute and
deliver to Accord a release in the form annexed as Exhibit B; and
(b) Upon execution of this Settlement Agreement, Accord will execute and
deliver to Ezenia a release in the form annexed as Exhibit C.
5. Confidentiality.
---------------
The parties shall continue to be bound by and to comply with the terms of
the "Stipulation and Protective Order" previously executed in the pending
lawsuit, a copy of which is annexed hereto as Exhibit D.
6. Press Release.
-------------
Upon execution of this Settlement Agreement, Ezenia and Accord will issue a
joint press release in the form attached hereto as Exhibit E. Except as
required by law, regulation of any governmental body, or any stock exchange,
neither party shall thereafter publicly issue any written materials or press
releases concerning the subject matter of this Settlement Agreement or the
pending lawsuit.
7. Covenants Not to Xxx.
--------------------
(a) The Contested Patents. Ezenia hereby covenants not to xxx Accord for
---------------------
infringement of any of the Contested Patents. Ezenia further covenants not to
xxx any customer of
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Accord or end user of Accord products for infringement of any of the Contested
Patents to the extent that such infringement constitutes using, reselling,
offering for resale, or importing a product that was originally sold by Accord.
Ezenia further covenants not to xxx any agents, suppliers, contractors or
subcontractors of Accord for infringement of the Contested Patents to the extent
that such infringement constitutes making products for sale to Accord, selling
products to Accord, or importing products for sale to Accord. Ezenia further
promises to impose the covenants of this paragraph on any third party to whom
Ezenia may assign any of the Contested Patents.
(b) Transferability of the Covenants Granted in Paragraph 7(a). The
----------------------------------------------------------
covenants not to xxx granted in paragraph 7(a) shall remain non-transferable and
personal to Accord until Accord pays to Ezenia the entire balance of the
$6,500,000.00 as specified by Paragraph 2 herein. After the entire balance of
the $6,500,000.00 has been paid to Ezenia, the covenants not to xxx granted in
Paragraph 7(a) may be transferred from Accord to its parent, subsidiary or
affiliate (as long as affiliate is an entity which controls, is controlled by,
or is under common control of Accord) or any purchaser of all or substantially
all of the assets of Accord; however, the transferred covenant not to xxx shall
apply to the products of Accord sold or under development by Accord at the time
of the transfer.
(c) The Remaining Patents.
---------------------
(i) Covenant Not to Xxx. Neither Ezenia nor Accord will commence or
-------------------
cause to be commenced against the other during the Covenant Period any suit or
litigation based upon claims asserting infringement, invalidity, or
unenforceability of any of the Remaining Patents. Neither Ezenia nor Accord will
commence or cause to be commenced against the customers or end users of the
other party during the Covenant Period any suit or litigation based upon claims
asserting infringement of the Remaining Patents to the extent that such
infringement constitutes using,
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reselling, offering for resale, or importing a product that was originally sold
by the other party. Neither Ezenia nor Accord will commence or cause to be
commenced against the Agents, suppliers, contracts or subcontractors of the
other party during the Covenant Period any suit or litigation based upon claims
asserting infringement of the Remaining Patents to the extent that such
infringement constitutes making products for sale to the other party, selling
products to the other party, or importing products for sale to the other party.
The provisions of this Paragraph 7(c) shall constitute a waiver, release and
discharge from any alleged infringement of the Remaining Patents occurring or
any damages for alleged infringement of the Remaining Patents accruing prior to
June 16, 2003, and shall preclude either Ezenia or Accord from commencing an
action after June 16, 2003, to recover damages accruing for any infringement of
the Remaining patents occurring prior to June 16, 2003. However, in any future
action for infringement of the Remaining Patents, Ezenia and Accord agree that
the Covenant Period shall not be asserted against the party asserting
infringement as a basis for any estoppel, waiver, laches, or implied license
defense, and shall not be construed as prejudicial to subsequent efforts by
either party to pursue preliminary relief.
(ii) Third Party Transfers. In the event that either Ezenia or Accord
---------------------
transfers rights to any of the Remaining Patents to a third party: (A) the
provisions of Paragraph 7(c) shall bind the third party, as well as any
subsequent purchasers or transferees of rights in such Remaining Patents; (B)
the provisions of this paragraph shall not apply to any other United States or
foreign patents of such third party not obtained from Ezenia or Accord; and (C)
if any third party that has acquired any of the Remaining Patents from either
Ezenia or Accord brings an infringement action against the other party, then the
other party shall be released from the promises not to xxx provided in Paragraph
7(c). The provisions of Paragraph 7(c) shall not limit either Ezenia's or
Accord's right to take action against any third party for acts of the third
party occurring prior to either
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any asset sale by, any merger between, or any change of control transaction
involving, either Ezenia or Accord and such third party. In the event that
Ezenia or Accord is acquired by, acquires or merges with a third party that has
a pending suit against Ezenia or Accord at the time of the acquisition or
merger, nothing herein shall prevent the acquiring or merging party from
maintaining and prosecuting such pending suit against Ezenia or Accord.
(iii) Settlement Agreement. Nothing in Paragraphs 7(a), (b) or (c)
--------------------
shall be construed, as limiting in any way either Ezenia's or Accord's right to
commence an action to enforce or defend its rights under this Settlement
Agreement.
(d) Notice. Neither Ezenia nor Accord will commence or cause to be
------
commenced any suit or litigation against the other based upon claims asserting
infringement, invalidity, or unenforceability of any United States or foreign
patent without providing the other party sixty (60) days' prior written notice
of its intention to commence suit or litigation. During the 60-day notice
period, and any mutually agreeable extensions thereof, Ezenia and Accord agree
to exercise their best efforts to negotiate an amicable resolution of any such
claims. Ezenia and Accord agree that during the 60-day notice period, and any
mutually agreeable extensions thereof, the party accused of infringement shall
not commence a declaratory judgment action with respect to the patent that is
subject of the notice, until after the earlier of (i) an action
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alleging infringement of the patent is commenced or (ii) ninety days from the
date of the notice. Further, Ezenia and Accord agree that the 60-day period,
and any mutually agreeable extensions, shall not be asserted against the party
asserting infringement as a basis for any estoppel, waiver or laches defense,
and shall not be construed as prejudicial to subsequent efforts by either party
to pursue preliminary relief in the event negotiations do not result in an
amicable resolution. The rights granted in this paragraph 7(d) are non-
transferable and personal to Accord and Ezenia.
8. Breach.
------
In the event that Accord shall have defaulted in any of its payment
obligations hereunder, Ezenia may give Accord written notice of such default,
and Accord shall cure such default within thirty (30) days from the date of
receipt of such notice. In the event Accord fails to cure such default within
thirty (30) days from receipt of notice provided hereunder, all payments
provided by Paragraph 2 not yet paid shall immediately become due and payable.
Miscellaneous
-------------
9. This Settlement Agreement shall be governed by and construed in
accordance with the laws of the Commonwealth of Massachusetts.
10. The invalidity or unenforceability of any provision of this Settlement
Agreement shall not affect the validity or enforceability of any other
provision.
11. Ezenia and Accord have had all desired counsel, legal and otherwise,
in entering into this Settlement Agreement, and do so in accordance with their
own free acts and deeds.
12. Any and all notices, consents or demands permitted or required to be
made or given under this Settlement Agreement shall be in writing, signed by the
individual giving such
-8-
notice, consent, or demand and shall be delivered personally or sent by
registered or certified mail, return receipt requested, to the other party at
its address set forth below:
If to Ezenia:
Xxxx and Xxxx LLP
00 Xxxxx Xxxxxx
Xxxxxx, XX 00000
Att'n: Xxxxxxxx X. Xxxxxxxxx, Esq.
and
Ezenia! Inc.
00 Xxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
Att'n: Xx. Xxxxxxx X. Xxxxxxx
If to Accord:
Xxxxxxxx Xxxxxxx LLP
Suite 5200
Bank of America Plaza
000 Xxxxxxxxx Xxxxxx, X.X.
Xxxxxxx, XX 00000
Att'n: Xxxxxxx X. Xxxxxxx, Esq.
and
Accord Networks, Inc.
0000 Xxxxxxx Xxxx
Xxxxx 000
Xxxxxxx, XX 00000
Att'n: Xx. Xxxx Xxxxxx
13. Unless otherwise set forth herein, the provisions of this Settlement
Agreement including all Exhibits hereto shall be binding on, and inure to the
benefit of, the respective permitted successors and assigns or partial assigns
hereto and, in any event, shall continue to be binding upon the parties.
14. Each party warrants and represents that it has not heretofore
assigned, transferred, hypothecated, or purported to assign, transfer, or
hypothecate to any person or entity not a party
-9-
hereto, the whole or any part or portion of its claims or rights which
constitute matters released or discharged pursuant to this Settlement Agreement.
15. The parties to this Settlement Agreement intend that it take effect as
a sealed instrument under the laws of the Commonwealth of Massachusetts.
16. This Settlement Agreement may be executed in separate counterparts,
each of which shall be considered an original but all of which shall constitute
one agreement, and signatures may be exchanged via facsimile.
17. Neither party shall be responsible to the other for any failure or
delay in performing this Settlement Agreement if such failure is due to war,
riot, strike, fire, sabotage, flood, or other natural disaster, accident, or
other similar cause, or acts of any government outside the control of the
affected party, provided that such party provides the other with prompt written
notice of such condition and resumes its performance as soon as possible, but in
no event in more than ninety (90) days.
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IN WITNESS WHEREOF, each of the parties has caused two original copies of
this Agreement to be executed on its behalf by its duly authorized officer as of
the day and year aforesaid.
EZENIA! INC. ACCORD NETWORKS, INC.
By: /s/ Xxxxxxx X. Xxxxxxx By: /s/ Xxxxx XxXxxxx
---------------------- -----------------
Duly Authorized Duly Authorized
ACCORD NETWORKS LTD.
By: /s/ Xxxxx XxXxxxx
-----------------
Duly Authorized
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EXHIBIT A
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
------------------------------
EZENIA! INC.,
Plaintiff,
v. Civil Action No. 98-12381-JLT
ACCORD NETWORKS, INC. and
ACCORD NETWORKS LTD.,
Defendants.
------------------------------
AGREEMENT FOR JUDGMENT
----------------------
This cause coming before the Court on the Joint Motion for Entry of
Agreement for Judgment of the plaintiff, Ezenia! Inc., ("Ezenia"), and the
defendants, Accord Networks, Inc. and Accord Networks Ltd. ("Accord"), final
judgment is entered as follows:
IT IS HEREBY ADJUDGED AND DECREED:
1. This Court has jurisdiction over the parties and the subject matter
pursuant to 35 U.S.C. (S) 1338.
2. Ezenia is the owner of United States Patent Nos. 5,600,646 (the "646
patent"), 5,838,664 (the "664 patent"), 5,886,734 (the "734 patent"), and
5,990,933 (the "933 patent").
3. The '646, '664, '734 and '933 patents are valid and enforceable.
4. The claims and defenses in the Fourth Amendment Complaint, Answer and
Counterclaim are dismissed with prejudice; the parties shall bear their own
costs of this action, and all rights of appeal are waived.
/s/
----------------------------
United States District Judge
Dated:____________, 2000
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The parties hereby agree to entry of the foregoing Judgment as a final
judgment in this action.
EZENIA! INC. ACCORD NETWOKS, INC. and
ACCORD NETWORKS LTD.
By its attorneys, By their attorneys,
/s/ Xxxxxxxx X. Xxxxxxxxx /s/ Xxxxxxx X. Xxxxxxx
------------------------- ------------------------------
Xxxxxxx X. Xxx (BBO #291960) Xxxxxxx X. Xxxxxxx
Xxxxxxxx X. Xxxxxxxxx (BBO #388280) Xxxxxxxx Xxxxxxx LLP
Xxxx and Xxxx LLP Xxxxx 0000, Xxxx xx Xxxxxxx Xxxxx
00 Xxxxx Xxxxxx 000 Xxxxxxxxx Xxxxxx, X.X.
Xxxxxx, XX 00000 Xxxxxxx, XX 00000
(000) 000-0000 (000) 000-0000
OF COUNSEL:
Xxxxxx X. Xxxxxxxxxx (BBO #478680)
Xxxxx X. Xxxxx (BBO #544143)
Hill & Xxxxxx
Xxx Xxxxxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
(000) 000-0000
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EXHIBIT B
RELEASE
-------
KNOW ALL MEN BY THESE PRESENTS that Ezenia! Inc. ("Ezenia!"), a Delaware
corporation with its principal place of business at 00 Xxxxx Xxxxxx, Xxxxxxxxxx,
Xxxxxxxxxxxxx 00000, for good and valuable consideration paid by Accord
Networks, Inc., a Georgia corporation having its principal place of business at
0000 Xxxxxxx Xxxx, Xxxxx 000, Xxxxxxx, Xxxxxxx 00000 and Accord Networks Ltd.,
an Israeli corporation having its principal place of business at 00 Xxxxxx Xx
Xxxxxxxxxx, Xxxxxx-Xxxxx 00000, Israel (collectively, "Accord"), the receipt and
sufficiency of which is hereby acknowledged, hash remised, released, and forever
discharged and does hereby and forever discharge Accord and its respective
agents, employees, officers, directors, successors, assigns, heirs, executors
and administrators, in their capacities as such, of and from all claims, debts,
demands, actions, causes of action, suits, dues, sum and sums of money,
accounts, reckonings, bonds, specialties, covenants, contracts, controversies,
agreements, premises, doings, omissions, variances, damages, extents,
executions, and liabilities whatsoever, whether known or unknown, suspected or
unsuspected, claimed or unclaimed, asserted or unasserted, direct or indirect,
derivative or otherwise, including but not limited to those which arise out of
the subject matter alleged in a certain civil action commenced in the United
States District Court for the District of Massachusetts entitled Ezenia! Inc. v.
---------------
Accord Networks, Inc. and Accord Networks Ltd., Civil Action No. 98-12381-JLT,
----------------------------------------------
which Ezenia! now has or ever had against Accord, from the beginning of the
world to this date, provided that nothing herein shall constitute a release of
the Settlement Agreement entered on this date.
IN WITNESS WHEREOF, Ezenia! has hereunto set its hand and seal effective
this sixteenth day of June, 2000.
Signed And Sealed EZENIA! INC.
in the presence of:
/s/ Xxxxxxxx X. Xxxxxxxxx By: /s/ Xxxxxxx X. Xxxxxxx
------------------------- ----------------------
Duly Authorized
EXHIBIT C
RELEASE
-------
KNOW ALL MEN BY THESE PRESENTS that Accord Networks, Inc., a Georgia
corporation having its principal place of business at 0000 Xxxxxxx Xxxx, Xxxxx
000, Xxxxxxx, Xxxxxxx 00000 and Accord Networks Ltd., an Israeli corporation
having its principal place of business at 00 Xxxxxx Xx Xxxxxxxxxx, Xxxxxx-Xxxxx
00000, Israel (collectively, "Accord"), for good and valuable consideration paid
by Ezenia! Inc. ("Ezenia!"), a Delaware corporation with its principal place of
business at 00 Xxxxx Xxxxxx, Xxxxxxxxxx, Xxxxxxxxxxxxx 00000, the receipt and
sufficiency of which is hereby acknowledged, has remised, released and forever
discharged and does hereby and forever discharge Ezenia! and its respective
agents, employees, officers, directors, successors, assigns, heirs, executors
and administrators, in their capacities as such, of and from all claims, debts,
demands, actions, causes of actions, suits, dues, sum and sums of money,
accounts, reckonings, bonds, specialties, covenants, contracts, controversies,
agreements, premises, doings, omissions, variances, damages, extents,
executions, and liabilities whatsoever, whether known or unknown, suspected or
unsuspected, claimed or unclaimed, asserted or unasserted, direct or indirect,
derivative or otherwise, including but not limited to those which arise out of
the subject matter alleged in a certain civil action commenced in the United
States District Court for the District of Massachusetts entitled Ezenia! Inc. v.
---------------
Accord Networks, Inc. and Accord Networks Ltd., Civil Action No. 98-12381-JLT,
----------------------------------------------
which Accord now has or ever had against Ezenia!, from the beginning of the
world to this date, provided that nothing herein shall constitute a release of
the Settlement Agreement entered on this date.
IN WITNESS WHEREOF, Accord has hereunto set its hand and seal effective
this sixteenth day of June, 2000.
Signed And Sealed ACCORD NETWORKS, INC.
in the presence of:
By: /s/ Xxxxx XxXxxxx
------------------- -----------------
Duly authorized
Signed And Sealed ACCORD NETWORKS LTD
in the presence of:
By: /s/ Xxxxx XxXxxxx
------------------- -----------------
Duly authorized
EXHIBIT D
STIPULATION AND PROTECTIVE ORDER
--------------------------------
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
--------------------------------------
)
VIDEOSERVER, INC., )
)
Plaintiff, )
)
v. ) Civil Action No.
) 98-12381-JLT
ACCORD TELECOMMUNICATIONS, )
INC., f/k/a ACCORD VIDEO )
TELECOMMUNICATIONS, INC. )
)
Defendant. )
)
--------------------------------------
STIPULATION AND PROTECTIVE ORDER
--------------------------------
Plaintiff VideoServer, Inc. ("VideoServer") and defendant Accord
Telecommunications, Inc., f/k/a Accord Video Telecommunications, Inc. ("Accord")
stipulate, pursuant to Rule 26(c) of the Federal Rules of Civil Procedure, that
the following Protective Order may be entered by the Court:
1. Introduction and Scope.
This Stipulation and Protective Order ("Protective Order") shall govern any
designated record of information produced in this action, including all
designated deposition testimony, all designated testimony taken at a hearing or
other proceeding, interrogatory answers, documents and other discovery
materials, whether produced informally or in response to interrogatories,
requests for admissions, requests for production of documents or other formal
method of discovery. This Protective Order shall also govern any designated
record of information produced in this action pursuant to required disclosures
under any federal procedural rule or Local Rule, and any supplementary
disclosures thereto. This Protective Order shall apply to the
categories of information listed in this paragraph in any related actions
between the parties filed in this Court subsequent to the present action.
2. Designation.
Each party shall have the right to designate as confidential and subject to
this Protective Order any information, document or portion of any document
produced by it in this litigation which contains trade secrets or other
sensitive, confidential, or proprietary technical, business or financial
information. This designation shall be made by stamping each page of the
document containing confidential information (or, if the document is an
electronic document, by stamping each printed page of such document and/or the
media upon which the electronic document is recorded) with the legend
CONFIDENTIAL prior to its production. If the document is inadvertently produced
without such legend, the designation shall be made by promptly furnishing
written notice to the receiving party that the information or document shall be
CONFIDENTIAL under this Protective Order. With respect to all materials
provided for inspection by a party's counsel, designation by stamping or
labeling as CONFIDENTIAL need not be made until copies of the materials are
requested after inspection and selection by counsel. Making documents and
things available for inspection shall not constitute a waiver of any claim of
confidentiality, and all materials provided for inspection by a party's counsel
shall be treated as though designated as CONFIDENTIAL at the time of the
inspection.
3. Limit On Use And Disclosure Of Designated Information.
Each party and all persons bound by the terms of this Protective Order
shall use any information or document governed by this Protective Order only for
the purpose of prosecution or defense of this action. No party or other person
shall disclose or release to any person not qualified under this Protective
Order any information or document governed by this Protective
Order for any purpose, or to any person qualified under this Protective Order
for any purpose other than the prosecution or defense of this action. It is,
however, understood that counsel for a party may give advice and opinions to his
or her client based on his or her evaluation of information designated as
CONFIDENTIAL produced by the opposing party provided that such rendering of
advice and opinions shall not reveal the content of such information except by
prior written agreement with opposing counsel. The attorneys of record for the
parties and other persons receiving information governed by this Protective
Order shall exercise reasonable care to insure that the information and
documents governed by this Protective Order are (i) used only for the purposes
specified herein, and (ii) disclosed only to authorized persons.
4. Confidential Material.
CONFIDENTIAL documents and information shall be disclosed by the recipient
thereof only to (a) the attorneys and counsel of record for the parties to this
action who are not employees of the parties, foreign counsel associated with
such attorneys and who are providing assistance in this matter, and their
authorized secretarial and legal assistance staff, (b) the Court, Court
reporters, and Court personnel as provided in Paragraph 12, (c) non-technical
consultant experts retained by the parties or their attorneys for purposes of
this litigation pursuant to paragraph 6 below, who are not employees of the
parties and who first agree to be bound by this Protective Order; (d) technical
consultant experts retained by the parties or their attorneys for purposes of
this litigation pursuant to paragraph 6 below, who are not employees of the
parties and who first agree to be bound by this Protective Order, (e) no more
than one designated in-house attorney of each of the parties including his or
her authorized secretarial and legal assistance staff; (f) computer forensics
experts retained by the parties who first agree to be bound by this Protective
Order, (g) jury consultants retained by the parties who first agree to be bound
by this Protective Order, and (h) graphics and design-services consultants
retained by the parties who first agree to be bound by this Protective Order.
No documents or information designated as CONFIDENTIAL shall be disclosed to any
person other than the foregoing except by written stipulation of the parties or
by further Order of the Court.
5. Redaction.
Counsel for a party producing documents may mask ("redact") material deemed
exempt from discovery because of the attorney-client privilege or work product
immunity afforded by Fed. R. Civ. P. 26(b), or irrelevant to the subject matter
of this action and not reasonably calculated to lead to the discovery of
admissible evidence, and may thus produce documents for inspection either in a
masked or unmasked form. However, any document from which material is masked
must identify in the masked area that masking or redaction has occurred. The
reason for any such masking must be stated either on the document itself or in a
privilege log which accompanies the produced documents. Counsel for the party
receiving production of any document from which material has been masked for
reasons other than privilege or immunity shall have the right on request to
inspect the redacted material in the original document in the most convenient
manner available to the parties. In the event of any dispute as to the
propriety of the redaction, the party objecting to the redaction may submit the
issue to the Court for review pursuant to the terms of Paragraph 15.
6. Identification Of Experts.
If any party desires to give, show, make available, or communicate
documents or information designated as CONFIDENTIAL to any expert consultant
pursuant to paragraph 4(c) or 4(d) above, it must first identify in writing the
expert consultants to whom it intends to give or disclose such documents or
information to the attorneys for the other parties, who shall
have ten (10) business days from receipt of such notice to object to disclosure
to any of the experts so identified. Such identification shall include, at
least, the full name and professional address and/or affiliation of the proposed
expert, a statement of the expert's qualifications, and an up-to-date curriculum
vitae of the expert identifying at least all other present and prior employments
or consultancies of the expert in the field. The parties shall attempt to
resolve any objections informally. If the objections cannot be resolved
informally, the party seeking to disclose the CONFIDENTIAL information to the
expert may move the court for an Order allowing the disclosure, in which case
the party objecting to the disclosure of CONFIDENTIAL information shall have the
burden of showing why that disclosure should not be permitted. In the event
objections are made and not resolved informally, disclosure of CONFIDENTIAL
documents and information to the expert shall not be made except by Order of the
Court. The party objecting to disclosure of CONFIDENTIAL information to an
expert or consultant to whom objection has been made may (but is not required
to) move the Court for relief.
7. Agreement Of Confidentiality.
In no event shall any material designated as CONFIDENTIAL be disclosed to
any person, other than the Court, Court reporters, and Court personnel, or
attorneys for the parties and their authorized secretarial and legal assistant
staffs, until such person has executed a written Confidentiality Undertaking
acknowledging and agreeing to be bound by the terms of this Protective Order in
the form set forth in Exhibit A hereto. Except for consultants pursuant to
paragraphs 4(f), 4(g) and 4(h), copies of such Confidentiality Undertakings
shall be promptly served on the producing party.
8. Related Documents.
Documents and information designated as CONFIDENTIAL shall include (a) all
copies, extracts and complete or partial summaries prepared from such documents
or information; (b) portions of deposition transcripts and exhibits thereto
which contain or reflect the content of any such documents, copies, extracts, or
summaries; (c) portions of briefs, memoranda or any other writing filed with the
Court and exhibits thereto which contain or reflect the content of any such
documents, copies, extracts, or summaries; (d) deposition testimony designated
in accordance with paragraph 9 below; and (e) testimony taken at a hearing or
other proceeding that is designated in accordance with paragraph 10 below.
9. Designation Of Deposition Transcripts.
Deposition transcripts, or portions thereof, may be designated as
CONFIDENTIAL either (1) at the time of such deposition, in which case the
transcript of the designated testimony shall be bound in a separate volume and
marked by the reporter as CONFIDENTIAL, or (2) within thirty (30) days following
receipt of the deposition transcript by providing written notice to the reporter
and all counsel of record, in which case all counsel receiving such notice shall
xxxx the copies or portions of the designated transcript in their possession or
under their control as CONFIDENTIAL. All deposition transcripts not previously
designated shall be deemed to be, and shall be treated as, CONFIDENTIAL for a
period of thirty (30) days after receipt of the transcript, and the transcript
shall not be disclosed by a non-designating party to persons other than those
persons named or approved according to paragraph 4 herein to review documents or
materials designated CONFIDENTIAL on behalf of that non-designating party. The
designating party shall have the right to exclude all persons from a deposition
before the taking of testimony which the designating party designates as subject
to this Protective Order other than
those persons: (1) previously qualified to receive CONFIDENTIAL information
pursuant to paragraph 4, above, and (2) who have executed a Confidentiality
Undertaking in the form of Exhibit A hereto as required by paragraph 7, above.
10. Designation Of Hearing Testimony Or Argument.
With respect to testimony elicited during hearings or other proceedings,
whenever counsel for any party deems that any question or line of questioning
calls for the disclosure of CONFIDENTIAL information, counsel may designate on
the record prior to such disclosure that the disclosure is CONFIDENTIAL.
Whenever matter designated as CONFIDENTIAL is to be discussed in a hearing or
other proceeding, any party claiming such confidentiality may have excluded from
the room any person who is not entitled under this Order to receive information
designated as CONFIDENTIAL.
11. Disclosure To Author Or Recipient.
Notwithstanding any other provisions of this Order, nothing herein shall
prohibit counsel for a party from disclosing a document designated as
CONFIDENTIAL to any person whom the document clearly identifies as an author,
addressee, or recipient of such document; and regardless of such designation
pursuant to this Protective Order, if a document or testimony makes reference to
the actual or alleged conduct or statements of a person who is a potential
witness, counsel may discuss such conduct or statements with such person without
revealing any portion of the document or testimony other than that which
specifically refers to such conduct or statement, and such discussion shall not
constitute disclosure in violation of this Protective Order.
12. Designation Of Documents Under Seal.
Any information or documents designated as CONFIDENTIAL, if filed with the
Court, shall be filed with a Motion to Impound pursuant to Rule 7.2 of the Local
Rules of the District of Massachusetts. The clerk of this Court is to maintain
such information under seal and make it available only to the Court and to
persons authorized by the terms of this Protective Order unless the Court denies
the Motion to Impound, in which case the clerk will permit a party to retrieve
the information prior to it being placed in the public file. The party filing
any party which reflects, contains or includes any information or document
subject to this Protective Order shall file such paper in a sealed envelope, or
other appropriately sealed container, which indicates the title of the action,
the party filing the materials, the nature of the materials filed, and the
legend CONFIDENTIAL. At the conclusion of this case, any materials filed with
the Court under seal shall be kept under seal or be returned to the party filing
it for disposition as provided for in paragraph 20 below.
13. Confidentiality Of Party's Own Documents.
No person may use or disclose, in public or private, any information or
documents of another party designated as CONFIDENTIAL except as provided for in
this Protective Order, but nothing herein shall affect the right of the
designating party to disclose to its consultants or experts information or
documents designated by it as CONFIDENTIAL. Such disclosure shall not waive the
protections of this Protective Order and shall not entitle other parties or
their attorneys to disclose such information or documents in violation of it.
14. Preparation.
No party (or person designated by a party pursuant to paragraph 4 above)
shall use any material designated by the other party hereunder as CONFIDENTIAL,
or information derived
from such information, for purposes other than this litigation, including
without limitation for purposes of preparing, filing or prosecuting any patent
application, continuation or divisional patent application, reissue patent
application or reexamination patent application. Any party may xxxx any
material designated hereunder as CONFIDENTIAL as an exhibit to a deposition,
hearing, or other proceeding and examine any witness thereon qualified under the
terms of this Protective Order to have access to such designated material,
provided (i) the qualified witness previously has executed or stated under oath
to be bound by a Confidentiality Undertaking in the form annexed hereto, and
(ii) the exhibit and related transcript pages are treated as CONFIDENTIAL.
15. Other Protections; Challenge To Confidentiality Designation.
This Protective Order shall not preclude any party from seeking and
obtaining, on an appropriate showing, such additional protection with respect to
the confidentiality of documents or other discovery material as that party may
consider appropriate. Nor shall any party be precluded from (1) claiming that
any matter designated CONFIDENTIAL hereunder is not entitled to the protections
of this Protective Order, (2) applying to the Court for an Order permitting the
disclosure or use of information or documents otherwise prohibited by this
Protective Order, or (3) applying for a further Order modifying this Protective
Order in any respect. No party shall be obligated to challenge the propriety of
any confidentiality designation and failure to do so shall not preclude a
subsequent challenge to the propriety of such designation. On any motion
challenging the designation of any document or other record or information as
CONFIDENTIAL, the burden of justifying the designation shall lie with the
designating party. If a party (i) seeks declassification or removal of
particular items designated as CONFIDENTIAL from this Protective Order on the
ground that such confidentiality is not
necessary to protect the interests of the party furnishing the document,
information or other thing, or (ii) challenges the propriety of a redaction as
provided in paragraph 5 above, the following procedure shall be utilized:
a. The party seeking such relief shall give counsel of record for
the other party written notice thereof by facsimile, with confirmation by
mail, specifying the document, information or other thing as to which such
removal is sought and the reasons for the request;
b. If, after conferring, the parties cannot reach agreement
concerning the matter within five (5) business days after the delivery by
facsimile of the notice, then the party requesting the declassification or
removal of particular items designated as CONFIDENTIAL from this Protective
Order may file and serve a motion for a further Order of this Court
directing that the document, information or other thing shall be so
removed. Any such motion shall be set forth the earliest possible date on
the Court's calendar, and shall not be continued without the consent of all
parties.
16. Prior Or Public Knowledge.
This Protective Order shall not apply to information that was, is, or
becomes public knowledge not in violation of this Protective Order, or that is
legitimately and independently acquired from a source not subject to this
Protective Order.
17. Limitation of Protective Order.
This Protective Order is not intended to fully address discovery objections
to produce, answer, or respond on the grounds of attorney-client privilege or
work product immunity, nor to preclude either party from seeking further relief
or protective orders from the Court as may be appropriate under the Federal
Rules of Civil Procedure.
18. Inadvertent Disclosure Of Work Product Or Privileged Information:
Procedure And Waiver.
Inadvertent production of documents subject to work product immunity or the
attorney-client privilege shall not constitute a waiver of the immunity or
privilege, provided that the producing party shall promptly notify the receiving
party in writing of such inadvertent production after the producing party learns
of such inadvertent production. If prompt notification is made and the producing
party establishes the circumstances surrounding the document's inadvertent
production, such inadvertently produced document and all copies thereof shall be
returned to the producing party or destroyed, upon request. No use shall be made
of such documents during deposition or at trial, nor shall they be shown to
anyone who was not given access to them prior to the request to return or
destroy them. If, after conferring, the parties are unable to reach a
satisfactory agreement within five (5) business days of receipt of the request
to return or destroy them, the producing party may move the Court regarding the
matter within ten (10) business days after the non-producing party first
received notification of the belated claim of immunity or privilege. The non-
producing party shall not disclose the document for which the belated claim of
immunity or privilege is being made to any person, other than those persons who
have had it in their possession prior to receipt of notification from the
producing party, until the expiration of this ten (10) day period or, if a
motion to the Court is submitted, until disposition of that petition. Following
expiration of the ten (10) day period, nothing in this Protective Order shall
preclude either party from moving the Court for return or destruction of later
disclosed, inadvertently produced work product immunity or attorney-client
privileged documents.
19. Non-Party Material.
The terms of this Protective Order are applicable to CONFIDENTIAL
information submitted by a non-party, and such information produced by a non-
party in connection with this litigation shall be protected by the remedies and
relief provided by this Protective Order.
20. Return Of Designated Information.
Upon final termination of this action, unless otherwise agreed to in
writing by an attorney of record for the designating party, each party shall
assemble and return all material designated as CONFIDENTIAL, including all
copies, extracts and summaries thereof, to the party from whom the designated
material was obtained, except that any documents or copies which contain or
constitute, or which reflect, attorney's work product or attorney-client
privileged communications may be retained by counsel or destroyed rather than
returned. Additionally, outside counsel for the parties may retain for their
files correspondence, notes, pleadings, briefs and exhibits, deposition
transcripts and exhibits, and work product materials that contain material
designated as CONFIDENTIAL. Outside counsel shall continue to be subject to the
terms of this Protective Order with regard to any such retained CONFIDENTIAL
material.
21. Waiver Or Termination of Order.
No part of the restrictions imposed by this Protective Order may be waived
or terminated, except by the written stipulation executed by counsel of record
for each designating party, or by an Order of the Court for good cause shown.
The restrictions provided for herein shall not terminate upon the conclusion of
this lawsuit, but shall continue until further Order of this Court.
22. Modification Of Order.
This Stipulation and Protective Order may be modified, and any matter
related to it may be resolved, by written stipulation of the parties without
further Order of the Court.
23. Term.
This Protective Order shall remain in effect up to, but not including, the
time of trial. At that time, the parties contemplate the agreement to and entry
of a Protective Order to govern the use and disclosure of CONFIDENTIAL material
at trial.
24. Paragraph Captions.
The title captions for each paragraph of this Protective Order are for
convenience only and are not intended to affect or alter the text of the
paragraphs or the substance of the Order.
VIDEOSERVER, INC. ACCORD TELECOMMUNICATIONS, INC.
f/k/a ACCORD VIDEO
TELECOMMUNICATIONS, INC.
By its attorneys, By its attorneys,
Xxxxxxx X. Xxx (BBO #291960) Xxxxxxx X. Xxxxxxx
Xxxxx X. Xxxxxx (BBO #548015) Xxxx X. Xxxxx
Xxxxxxxx X. Xxxxxxxxx (BBO #388280) XXXXXXXX XXXXXXX LLP
XXXX AND XXXX LLP Xxxxx 0000 - XxxxxxxXxxx Xxxxx
00 Xxxxx Xxxxxx 000 Xxxxxxxxx Xxxxxx, X.X.
Xxxxxx, XX 00000 Xxxxxxx, XX 00000-0000
(000) 000-0000 (000) 000-0000
OF COUNSEL:
Xxxxxx X. Xxxxxxxxxx (BBO #478680)
Xxxxx X. Xxxxx (BBO # 544143)
HILL & XXXXXX
Xxx Xxxxxxxxxxxxx Xxxxx
Xxxxxx, XX 00000
(000) 000-0000
SO ORDERED, this ____ day of __________________, 1999.
Xxxxxx X. Xxxxx
Chief Judge, District of Massachusetts
EXHIBIT A
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
--------------------------------------------
)
VIDEOSERVER, INC., )
)
Plaintiff, )
)
v. ) Civil Action No.
) 98-12381-JLT
ACCORD TELECOMMUNICATIONS, )
INC., f/k/a ACCORD VIDEO )
TELECOMMUNICATIONS, INC. )
)
Defendant. )
)
-------------------------------------------
CONFIDENTIALITY UNDERTAKING
---------------------------
I certify that I have read the Stipulation and Protective Order in the
above-captioned case and that I understand the terms of the Order. I recognize
that I am bound by the terms of that Order, and I agree to comply with those
terms. I hereby consent to the personal jurisdiction of the United States
District Court, District of Massachusetts, for any proceedings involving the
enforcement of that Order.
EXECUTED this ___ day of _____________, 1999/200__, at ________________.
-------------------------
Name
-------------------------
Affiliation
-------------------------
Business Address
-------------------------
EXHIBIT E
PRESS RELEASE
-------------
Ezenia! Inc., Accord Networks, Inc. and Accord Networks Ltd. today
announced the settlement of a lawsuit pending in the United States District
Court for the District of Massachusetts. Under the terms of the written
Settlement Agreement, Ezenia! and Accord agreed to dismiss all claims and
counterclaims against each other and agreed to exchange mutual releases. As a
part of the settlement, Ezenia! has entered into a covenant not to xxx Accord
for patent infringement of the four patents owned by Ezenia! which were the
subject of the lawsuit. Ezenia! and Accord have also agreed that for a 3 year
period neither will commence any patent litigation against the other on any
other patents. Pursuant to the settlement agreement, Accord has agreed to pay
Ezenia! $6,500,000.
