SETTLEMENT AND LICENSE AGREEMENT
`
`This Settlement and License Agreement (“Agreement”) is entered into, effective as of
`November 1, 2004 ("Effective Date"), by and between UNIVERSAL ELECTRONICS INC, a
`corporation organized and existing under the laws of the State of Delaware and UNIVERSAL
`REMOTE CONTROL, INC, a corporation organized and existing under the laws of the State of
`New York.
`
`WHEREAS, there is now a civil action pending between the parties in the United States
`District Court for the Central District of Califomia entitled Universal Electronics Inc. v.
`Universal Remote Control,
`Inc, Civil Action No. SACV—OU-IIZS AHS (MLGX)
`(the
`“Lawsuit”);
`
`WHEREAS, the Lawsuit relates to certain intellectual property owned by UB1 (as defined
`in Paragraph-1.1 below), namely US. Patent Nos. 4,959,810; 5,959,751; 5.014.092; and
`6,195,033; and
`
`WHEREAS, the parties are desirous of avoiding further litigation risks and expenScs and
`seek. an amicable and final business resolution and settlement of all claims relating to the UB1
`Patents-in~Suit (as defined in Paragraph 1.6 below) and the counterclaims brought by URC (as
`defined in Paragraph 1.2 below), on the terms and conditions set forth below.
`
`AGREEMENT
`
`NOW, THEREFORE, in accordance with the foregoing recitals, and in consideration of
`the mutual covenants and conditions hereinafter set forth, U51 and URC agree as follows:
`
`Article 1.0
`
`Definitions
`
`“UEI” means UNIVERSAL ELECTRONICS INC. and its Subsidiaries (as
`1.1
`defined in Paragraph 1.8 below).
`
`“URC” means UNIVERSAL REMOTE CONTROL, INC. and its Subsidiaries
`1.2
`(as defined in Paragraph 1.9 below).
`-
`
`“GMT” means COMPO MICRO TECHNOLOGIES, INC. and its Subsidiaries
`1.3
`(as defined in Paragraph 1.9 below).
`
`“OHSUNG” means OHSUNG ELECTRONICS ('30., LTD. and its Subsidiaries
`1.4
`(as defined in Paragraph 1.9 below).
`
`1.5
`
`1.6
`
`“URC Parties" means URC, CMT andfior OHSUNG
`
`“Effective Date" shall mean November 1, 2004 as set forth above.
`
`“UEI Patents-in-Suit” shall mean U.S. Patent Nos. 4,959,810; 5,959,751;
`1.7
`6,014,092; and 6,195,033 and any corresponding foreign patents, and all reissues thereof.
`
`{006312991}
`
`Universal Electronics Exhibit 2050, Page 1
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`
`Universal Electronics Exhibit 2050, Page 1
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`
`

`

`“UEI Related Patents” shall refer to any patent or patents that are based on a
`1.3
`continuation or divisional application of the UEI Patents-in-suit, or have a parent application in
`common with any of the UEI Patents-in-suit, including but not limited to U.S, Patent Nos.
`6,587,067 and 6,496,135.
`
`“Subsidiary” shall mean any company, corporation or other buainess entity
`1.9
`controlled, either directly or indirectly, by a party to this Agreement, or such party‘s parent
`company if the party is itself a subsidiary, through ownership or control of fifty percent or more
`of the voting stock or other voting interest.
`
`“Licensed Product” is defined as meaning any product which is or may be
`1.10
`covered by one or more claims of the UEI Patents-in—Suit.
`
`1.11
`
`“Covered Territory” shall mean the World.
`
`Article 2.0
`
`flmties and Representations
`
`UEI warrants and represents that it is the exclusive Owner of the UEI Patents-in-
`2.1
`Suit and that it has not assigned, transferred, or exclusively licensed any right, title or interest in
`any of the UEI Patents-in-Suit or any claim UEI may have against URC under such UEI Patents—
`in-Suit to or in favor of any third party. UEI will not assign, transfer or exclusively license any
`right, title or interest in the UEI Patents-in-Suit to or in favor of any third party in the absence of
`the assumption by that third party of UEI’S obligations under this Agreement.
`
`URC represents and warrants that, as of the Effective Date, neither it nor CMT
`2.2
`has any parents andfor subsidiaries and OHSU'NG has the following parents midfor subsidiaries:
`
`arent
`
`Subsidiaries
`
`Ohsang Co., Ltd.
`
`Ohsung Electronics U.S ,A., Inc.
`
`OHSU'NG MEXICO SA. DE C.V.
`
`PT. OHSUNG ELECTRONICS INDONESIA
`
`Ohsung Electronics (Suzhou) Co., Ltd.
`
`UEI represents and warrants that, as of the Effective Date, it has the following
`2.3
`parent and subsidiaries:
`
`Parent
`
`None
`
`Subsidiaries
`
`Universal Electronics BV
`
`SimpleDeviees, Inc.
`
`2 {00631299.1;
`
`Universal Electronics Exhibit 2050, Page 2
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`Universal Electronics Exhibit 2050, Page 2
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`

`

`One For All UK
`
`One For All Argentina SRL
`
`One For All GmbH
`
`Ultra Control Consumer Electronics Gran
`
`One For All Iberia SL
`
`One For All France SAS
`
`URC represents and warrants that in connection with the Lawsuit it has provided
`2.3
`U'EI with accurate information concerning the technical operation and sales of the Licensed
`Products to the extent that said information was available as of the Effective Date.
`
`URC represents and warrants that OHSUNG is the sole manufacturer of remote
`2.4
`control products sold by URC and CMT. URC and OHSUNG further represent that OHSUNG
`has not made or sold remote control product for sale on a stand alone basis by any entity in the
`United States other than URC and CMT. U'RC also represents and warrants that CMT is a
`commonly ownml sister company to URC in 'the United States whose primary purpose is to sell
`remote control products, including Licensed Products, in certain segments of the market and
`CMT does not manufacture any remote control products, or sell any remote control products
`manufactured by any entity other than OHSUNG.
`
`Article 3.0 My;
`
`Except as otherwise provided in this Agreement, UEI releases and forever
`3.1
`the URC Parties,
`their parent, Subsidiaries, employees, officers, directors,
`discharges
`predecessors, successors, assigns, agents and representatives from any and all claims, demands,
`debts, liabilities, obligations, accounts or causes of action of any nature whatsoever that relate to
`the U51 Patents-in-Suit, at law or in equity, whether or not known, which are based on the URC
`Parties’ making, selling, using, offering for sale or importing remote control products on or
`before the Effective Date of this Agreement. This Agreement and Release will not operate in
`any way as a release or waiver as to any other claims UEI may have against the URC Parties:
`(21)
`under any other patents, whether or not related to the UB1 Patents~in-Suit3 (b) under any
`intellectual property rights owned by U'EI other than those expressly identified herein; or (c)
`which relate to products which have not been used, sold, offered for sale or imported by the
`U'RC Parties.
`
`UEI acloiowledges that it is aware of, has read, and has had explained to it by its
`3.2
`attorneys, understands and expressly waives any and all rights it has or may have under Section
`1542 cf the California Civil Code, which provides as follows:
`
`A general release does not extend to claims which the creditor (loss not
`know or suspect to exist in his favor at the time of executing the release,
`which if known by him must have materially affected his settlement with
`the debtor.
`
`3(0063129941
`
`Universal Electronics Exhibit 2050, Page 3
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`
`Universal Electronics Exhibit 2050, Page 3
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`
`

`

`UEI acknowledges that, subject to the truth and accuracy of URC’s representations and
`warranties set forth herein, it may later discover facts different from or in addition to those which
`it knows or believes to be true with respect to these released claims rclsting to the UEI Patents-
`in-Suit, and it agrees that, in such event, this Agreement shall nevertheless remain effective in all
`respects, notwithstanding such different or additional facts or the discovery of those facts.
`
`Except as otherwise provided in Paragraph 3.5, or otherwise in this Agreement,
`3.3
`the URC Parties release and forever discharge UEI,
`its Subsidiaries, employees, officers,
`directors, predecessors, successors, assigns, agents and representatives from any and all claims,
`demands, debts, liabilities, obligations, accounts or causes of action of any nature whatsoever, at
`law or in equity, whether or not known, arising on or before the Effective Date of this Agreement
`that relate to the UEI Patents-in—Suit, the counterclaims brought by URC in the Lawsuit or the
`Lawsuit in general.
`
`Except as provided in Paragraph 3.5 or as required by law, such as court order, the
`3.4
`URC Parties agree to not challenge or assist others in contesting or challenging the validity,
`enforceability or scope of any of the UEI Patents-in—Suit.
`
`In the event that UEI brings or threatens to bring an infringement action based on
`3.5
`a UEI Related Patent against the URC Parties, or threatens the URC Parties' customers with a
`UEI Related Patent based on products made, used or sold by the URC Parties, so as to create a
`justifiable case or controversy, the URC Parties expressly reserve the right to assert any cause of
`action, affinnative defense arid/or counterclaim, even if such cause of action, affinnative defense
`and!or coanterclaim would have the indirect effect of rendering one or more of the UEI Patents-
`iIl-Suit invalid, unenforceable or limited in scope, provided, however, that nothing herein shall
`permit the URC Parties to directly challenge the validity, enforceability or scope of any of the
`UEI Patents-in—Suit.
`
`URC aclmowledges that it is aware of, has read, and has had explained to it by its
`3.6
`attorneys, understands and expressly waives any and all rights it has or may have under Section
`1542 of the California Civil Code, which provides as follows:
`
`A general release does not extend to claims which the creditor does not know or
`suspect to exist in his favor at the time of executing the release, which if known
`by him must have materially affected his settlement with the debtor.
`
`URC aCknowledgcs that, subject to the truth and accurate); of UEI's representations and
`warranties set forth herein, it may later discover facts different from or in addition to those which
`it knows or believes to be true with respect to these released claims, and it agrees that, in such
`event, this Agreement shall nevertheless remain effective in all respects, notwithstanding such
`different or additional facts or the discovery of those facts.
`
`Article 4.0
`
`License
`
`As of the Effective Date, UEI hereby grants a paid up, non~exclusive, worldwide
`4.1
`licenSe to the URC Parties under the UEI Patents-in-Suit to make, have made, distribute, use, sell
`andfor offer for sale the Licensed Products in the Covered Territory for the entire respective
`patent terms of the UEI Patents—in-Suit; provided, however, that if OHSUNG knowingly sells to
`
`4(00631299J}
`
`Universal Electronics Exhibit 2050, Page 4
`Universal Remote Control v. Universal Electronics, Trial No. |PR2014-01104
`
`Universal Electronics Exhibit 2050, Page 4
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`

`

`a third party for distribution in the United States on a stand alone basis, OHSUNG shall not have
`a license for any sales made by said third party in the United States.
`
`The license and covenants granted herein shall be binding on any successor of
`4.2
`UEI in ownership or control of the UEI Patents-in- Suit.
`
`The rights and obligations granted the URC Parties herein shall include the URC
`4.3
`Parties’ present and future Subsidiaries. Each Subsidiary under this Agreement shall be bound
`by the terms and conditions of this Agreement as if it were named herein in the place of the URC
`Parties. URC represents to UEI that it has the power to bind CMT, OHSUNG and the
`Subsidiaries to the terms and conditions of this Agreement and agrees to take whatever action is
`necessary to legally bind CMT, OHSUNG and the Subsidiaries. URC shall immediately notify
`UEI in writing of any Subsidiaries using the license granted herein.
`
`Article 5.0
`
`Regalties/Paments
`
`In consideration of the releases, covenants, licenses and rights granted herein by
`5.1
`UEI concerning Licensed Products made, used, sold, leased, imported or otherwise disposed of
`by or for the URC Parties prior to the Effective Date of this Agreement, URC andfor OHSUNG
`agree to pay to UEI a lump—sum of $225,000 for alleged past infringements of the UEI Patents-
`in-Suit within five (5) days of the dismissal of the Lawsuit.
`
`In consideration of the releases, covenants, licenses, and rights granted by UEI
`5.2
`concerning Licensed Products made, used, sold or offered for sale by URC and GMT on or after
`the Effective Date of this Agreement, URC andfor OHSUNG agree to pay UEI a paid-up royalty
`of $475,000 payable as follows:
`
`Date of Pament
`
`Payment Amount
`
`October 1, 2005
`October 1, 2006
`October 1, 2007
`
`$225,000
`$125,000
`$125,000
`
`Such payments shall be made regardless of whether the URC Parties make, use or sell or
`offer for sale any Licensed Product during the Term (as defined in Paragraph 7.1 below) of this
`Agreement and shall not be reduced in any way should any of the UEI Patents-in-Suit be
`declared invalid or unenforceable by a Court of competent jurisdiction.
`
`Article 6.0 m
`
`6.1
`
`All taxes of each party shall be home by that party.
`
`Article 7.0
`
`Tog
`
`The term of this Agreement (“Term”) shall continue until the expiration of the last
`7.1
`of the UEI Patents-in—Suit to expire.
`
`5(00681299l}
`
`Universal Electronics Exhibit 2050, Page 5
`Universal Remote Control v. Universal Electronics, Trial No. |PR2014-01104
`
`Universal Electronics Exhibit 2050, Page 5
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`

`

`Article 8.0
`
`Assignments
`
`Except as provided in this Agreement, this Agreement and any rights, covenants
`8.1
`or licenses granted or extended hereunder may not be extended, sublicensed or otherwise
`transferred by either of the parties hereto without the written consent of the other party.
`Notwithstanding the foregoing, this Agreement and any rights, covenants or licenses granted
`hereunder may be assigned or otherwise transferred without the consent of the other party as a
`result of the change of control of a party.
`
`Article 9.0
`
`Confidentiality
`
`Other than revealing the existence of this Agreement and the subject matter of the
`9.1
`joint press release discussed below, neither party shall divulge the terms and conditions of this
`Agreement to any third party except as required by law, such as court order, or upon the written
`consant of the other party. This consent will not be unreasonably withheld or delayed.
`In
`addition, UEI and URC will release, a jointly prepared and mutually acceptable press release
`announcing the confidential settlement and dismissal of the Lawsuit in the form of Exhibit A,
`and either party is free to quote from the content of the press release without restriction. As to all
`other confidential information produced by either party during the Lawsuit, the terms of the
`Stipulated Protective Order entered therein shall control.
`
`Aflicle 10.0 Applicable Law
`
`This Agreement (and any dispute, controversy, proceedings, or claim of whatever
`101
`nature arising out of or in any way relating to this Agreemmit) shall be governed by and
`construed in accordance with the laws of the State of California.
`
`Article 11.0 Notice and Other Conununicaticnns
`
`11.1 All notices and other conrrrnmications required or permitted to be given hereunder
`shall be in writing and shall be valid and sufficient if dispatched by registered mail, priority mail,
`prepaid courier express or by facsimile (confirmed by registered or certified mail) and shall be
`effective on the date of receipt by the addressee. Such netice or communication shall be mailed
`to:
`
`If to UB1:
`
`' Universal Electronics Inc.
`
`6101 Gateway Drive
`Cypress, California 90630-4841
`
`Attention: Paul Arling, Chief Enecutive Officer
`Facsimile No: (714) 820-1010
`
`with facsimile copies to:
`
`Richard A. Firehamrner, In, Esq.
`Senior Vice President and General Counsel
`Universal Electronics Inc.
`
`6{00631299.1}
`
`Universal Electronics Exhibit 2050, Page 6
`Universal Remote Control v. Universal Electronics, Trial No. |PR2014-01104
`
`Universal Electronics Exhibit 2050, Page 6
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`

`

`8190 Can‘ington PIaCe
`Bainbridge Township, Ohio 44023
`Facsimile No: (440) 708-0721
`
`Mark R. Galis, Esq.
`Greenherg Tram-lg, LLP
`77 West Wacker Drive
`Suite 2500
`
`Chicago, Illinois 60601
`Facsimile No: (312) 456-8435
`
`Ifto URC:
`
`Universal Remote Control, Inc.
`500 Mamaroneck Avenue
`
`Harrison, New York 10528
`Attention: Chang Park, Chief Executive Officer
`Facsimile No: (914) 835-5012
`
`with facsimile copy to:
`
`Martin Pfeffer, Esq.
`Ostrolenk, Faber, Gerb & Sofien, LLP
`1180 Avenue of the Americas
`
`New York, New York 10036-8403
`Facsimile No: (212) 382-0388
`
`Article 12.0 Miscellaneous
`
`12.1 Nothing contained in this Agreement shall be construed as:
`
`a warranty or representation that any manufacture, sale, lease, import, use
`(a)
`or other disposition of Licensed Products hereunder will be free from inflingement of any
`intellectual property right of third parties; or
`
`conferring any right to use in advertising, publicity, or otherwise, any
`(b)
`trademark, trade name or corporate name, or any contraction, abbreviation or simulation thereof,
`of either party; or
`
`conferring upon any party any obligation to file any patent application,
`(c)
`lawsuit or other action to secure any patent, maintain any patent in force or prevent others from
`using any proprietary technology or invention of that party; or
`
`an admission or acknowledgement of patent
`(d)
`validity or wrongdoing or liability of or by the parties.
`
`infringement or patent
`
`Promptly after execution of this Agreement by all parties, the parties will file a
`12.2
`joint Stipulation of Dismissal
`in the form of Exhibit B. Each party agrees to pay its own
`attorneys’ fees and costs with respect to the Lawsuit.
`
`“Museum.”
`
`Universal Electronics Exhibit 2050, Page 7
`Universal Remote Control v. Universal Electronics, Trial No. |PR2014-01104
`
`Universal Electronics Exhibit 2050, Page 7
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`

`

`The parties have cooperated in the drafting and preparation of this Agreement.
`12.3
`Therefore, no party shall be deemed the drafter of this Agreement for the purpose of interpreting
`or construing any of the provisions hereof.
`
`12.4 Neither this Agreement nor anything herein contained, shall be deemed to create
`an agency, partnership or joint venture relationship between the parties hereto.
`
`This Agreement and each provision hereof shall be valid and enforced to the
`12.5
`fullest extent permitted by law. The invalidity or unenforceability of any provision of this
`Agreement shall not afieot the validity or enforceability of any other provision. Without limiting
`the generality of the foregoing, if the scope of any provision contained in this Agreement is too
`broad to permit enforcement to its fullest extent, such provision shall be enforced to the
`maximum extent permitted by law, and the parties hereby agree that such scope may be
`judicially modified accordingly.
`
`Article 13.0
`
`Entire Agreement/Separate Executions
`
`This Agreement, and any ancillary agreements specifically referenced herein,
`13.1
`constitute and embody the entire Agreement between the parties with respect to the settlement of
`the pending disputes
`in the Lawsuit,
`and supersede all other previous
`agreements,
`understandings, negotiations, discussions, offers and acceptances with respect to such subject
`matter.
`
`This Agreement may be executed by the parties in separate counterparts and
`13.2
`exchanged by facsimile, with the same effect as if all parties had signed the same instrument.
`
`In WITNESS WHEREOF, the parties hereto have caused this Agreement to be eXecuted
`by their respective duly authorized representatives on the date written below.
`
`UNIVERSAL ELECTRONICS INC.
`
`UNIVERSAL REMOTE CONTROL, INC.
`
`
`
`Date:
`
`id i “El
`
`By:
`
`Mr. Chang Park
`Chief Executive Officer
`
`Date: —____
`
`811006812994}
`
`Universal Electronics Exhibit 2050, Page 8
`Universal Remote Control v. Universal Electronics, Trial No. |PR2014-01104
`
`Universal Electronics Exhibit 2050, Page 8
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`
`

`

`Ldill/I‘UUE 10:16 rm 2.1.2 352 1255
`
`osmOLENK.FABER
`
`@009
`
`The parties have cooperated in the drafting and preparation of this Agreement.
`12.3
`Therefore, no party shall be deemed the drafler of this Agreement for the purpose of interpreting
`or construing any ofthe provisions hereof.
`
`12.4 Neither this Agreement nor anything herein contained, shall be deemed to create
`an agency, partnership or joint venture relationship between the parties hereto.
`
`This Agreement and each provision hereof shall be valid and enforced to the
`12.5
`fulleSt extent permitted by law. The invalidity or unenforcesbility of any prevision of this
`Agreement shall not affect the vaiidity or enforceability of any other provision. Without limiting
`the generality of the foregoing, ifthe scope of any provision contained in this Agreement is too
`broad to permit enforcement to its fullest extent, such provision shall be enforced to the
`maximum: extent permitted by law, and the parties hereby agree that such scope may be
`judicially modified accordingly.
`
`Article 13.0 Em Afiemeoflfim Executions
`
`This Agreement, and any ancillary agreements specifically referenced herein,
`13.1
`constitute and embody the entire Agreement between the parties with respect to the settlement of
`the pending disputes
`in the Lawsuit, and supersede all other previous agreements,
`understandings, negotiations, discussions, offers and acceptances with respect to such subject
`matter.
`
`This Agreement may be executed by the parties in separate counterparts and
`13.2
`exchanged by facsimile, with the same effect as ifall parties had signed the same instrument.
`
`In WITNESS WI-[EREOE the parties hereto have caused this Agreement to be executed
`by their respective duly authorized representatives on the deb: written below.
`
`UNIVERSAL ELECTRONICS INC.
`
`UNIVERSAL REMOTE CONTROL, lNC.
`
`By:
`
`Mr. Paul Arling
`Chief Executive Ofl'icer
`
`By:
`
`fl 3%; Q r . QA
`
`Mr. Chang Park
`Chief Executive Officer
`
`Date _____.____
`
`Date:mit-
`
`statesmen
`
`“3“"V'd
`
`""4744 “"3"”
`
`Tn'GREENEFfifiVWIGEQBhtrorliEE'EMit 2050 Page 9
`F”"“‘m 332 1255
`Universal Remote Control v. Universal Electronics, Trial No. |PR2014-01104
`
`Universal Electronics Exhibit 2050, Page 9
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`

`

`PRESS RELEASE
`
`Universal Electronics Inc. and Universal Remote Control, Inc. announced today theiI
`
`amicable resolution of patent litigation pending in the Federal District Court of the Central
`
`District of California. While the specific terms of the settlement are confidential and cannot be
`
`disoiosed, the settlement involves UEI’s grant of licenses under certain of its remote control
`
`patents.
`
`{006812991}
`
`Universal Electronics Exhibit 2050, Page 10
`Universal Remote Control v. Universal Electronics, Trial No. lPR2014-01104
`
`Universal Electronics Exhibit 2050, Page 10
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`