SETTLEMENT AGREEMENT
`
`THIS SETTLEMENT AGREEMENT ("Agreement") is entered this 22nd day of June
`20 I 6 (the "Effective Date"), by and between WTS Paradigm, LLC ("WTS") and EdgeAQ, LLC
`("EdgeAQ").
`
`WHEREAS, on November 17,2014, EdgeAQ filed suit against WTS in EdgeAQ, LLC v.
`WTS Paradigm, LLC, Case No.3: 14-cv-02264, in the United States District Court for the Middle
`District of Tennessee (the "Tennessee litigation"); and
`
`WHEREAS, the United States Court for the Middle District of Tennessee dismissed the
`Tennessee litigation on May 29, 20 15; and
`
`WHEREAS, after the dismissal of the Tennessee litigation, WTS filed suit against
`EdgeAQ in the United States District Court for the Western District of Wisconsin, Case No. 15-
`cv-330 on May 29,2015 (the "Wisconsin litigation");
`
`WHEREAS, in the course of the Wisconsin litigation, EdgeAQ and WTS have asserted
`various amended claims, counterclaims, and counter-counterclaims related to certain patents,
`alleged trade secrets, and other torts; and
`
`WHEREAS, WTS filed proceedings claiming invalidity before the Patent Trial and
`Appeal Board involving various patents owned by EdgeAQ including the following proceedings:
`CBM2015-00054 (Pat. 7,461,049), CBM2015-00055 (Pat. 6,180,401), IPR2016-00199 (Pat.
`7,805,461 ), and IPR20 16-00701 (Pat. 8,582,802); and
`
`WHEREAS, EdgeAQ asserts that it is the sole owner of U.S. Patent Nos. 7,461,049 (the
`'"049 patent"); 6,180,401 (the '" 401 patent"); 7,860,690 (the '" 690 patent"); 7,805,461 (the
`'"461 patent"); 8,582,802 (the '"802 patent"); 7,219,100 (the "'100 patent"); 7,869,981 (the
`'"981 patent"); and 8,280,700 (the "'700 patent"); and
`
`WHEREAS, WTS has consistently maintained that it has not misappropriated or used
`any trade secret information belonging to EdgeAQ or its predecessor, Edgenet, Inc. ("Edgenet");
`that WTS has not infringed any valid patent claim owned by EdgeAQ or Edgenet; and that WTS
`has not committed any other asserted torts against EdgeAQ or Edgenet; and
`
`WHEREAS, the parties desire to fully resolve all current disputes between the parties
`and establish a means to attempt to resolve potential future conflicts prior to initiating litigation;
`and
`
`WHEREAS, the parties acknowledge and understand that this Agreement contains a
`compromise and settlement of all claims and disputes between the parties related to the Lawsuit
`and is not an admission of fault or liability by either party.
`
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`NOW THEREFORE, m consideration of the mutual promises set forth below, the
`parties agree as follows :
`
`1.
`ATTORNEY FEES, EXPENSES, AND COSTS. Each of the parties shall bear the
`costs of their own attorneys' fees and expenses related to the Tennessee litigation, Wisconsin
`litigation, CBM2015-00054, CBM2015-00055 , IPR2016-00199, and IPR2016-00701.
`
`2.
`
`DISMISSAL OF LAWSUIT.
`
`(a) Within two calendar days of the Effective Date of this Agreement the parties shall
`notify the Court in the Wisconsin litigation that they have reached a resolution of the lawsuit.
`
`(b) Within two calendar days of the Effective Date of this Agreement the parties shall
`notify PTAB in CBM2015-00054, CBM2015-00055, IPR2016-00199, and IPR2016-00701 that
`they have reached a resolution of the lawsuit and will be requesting dismissal without decisions.
`
`(c) Within five calendar days of the Effective Date of this Agreement, the parties
`shall (i) file a joint stipulation of dismissal with prejudice of all claims, counterclaims, counter(cid:173)
`counterclaims, and third-party claims in the Wisconsin litigation and (ii) file requests to dismiss
`without decisions in CBM2015-00054 (Pat. 7,461 ,049), CBM2015-00055 (Pat. 6,180,401),
`IPR20 16-00199 (Pat. 7,805,461 ), and IPR20 16-00701 (Pat. 8,582,802).
`
`DELETION OF DOCUMENTS AND FILES. In addition to any other obligations in
`3.
`this Agreement, WTS agrees as follows:
`
`(a) WTS shall permanently delete and destroy any and all copies of any confidential or
`non-publicly available Edgenet or EdgeAQ documents or files in its possession, custody, or
`control, including, without limitation, any communication, documents and files received from
`Stephen Cork, any filtering logic, master question and answer lists, and any files that WTS has
`reason to believe are related to any catalog for use with the m2o system (including, without
`limitation, .rul files, .rlz files, .pin files, pk.bin files, .pvc files, .xvc files , .xpv files, .qlffiles, .cip
`files, .hlp files, .png files, .jpg files, .gif files, .mdb files, .cat files, .def files, .pro files, .html
`files, .xml files, and/or .log files originating with Edgenet or EdgeAQ) on any paper, computer,
`mobile device (including without limitation mobile phone, tablet, iPad), network, and/or system
`in its possession, custody, or control; except that outside counsel for WTS may retain a copy of
`any and all such documents to the extent any exist in outside counsel's litigation files related to
`the Tennessee litigation and the Wisconsin litigation; and
`
`(b) WTS shall instruct, in writing, all of its employees and officers to permanently delete
`and destroy any and all copies of any confidential or non-publicly available Edgenet or EdgeAQ
`documents or files in their possession, custody, or control, including, without limitation, any
`communication, documents and files received from Stephen Cork, any filtering logic, master
`question and answer lists, and any files that WTS has reason to believe are related to any catalog
`for use with the m2o system (including, without limitation, .rut files , .rlz files, .pin files, pk.bin
`
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`files, .pvc files, .xvc files, .xpv files, .qlf files, .cip files, .hlp files, .png files, .jpg files, .gif files,
`.mdb files, .cat files, .def files, .pro files, .html files, .xml files, and/or .log files originating with
`Edgenet or EdgeAQ) on any paper, computer, mobile device (including without limitation
`mobile phone, tablet, iPad) network, and/or system in their possession, custody, or control.
`
`4.
`
`RESERVED
`
`COVENANT NOT TO SUE. EdgeAQ hereby (a) reaffirms and incorporates by
`5.
`reference the Covenant Not to Sue involving the '401 patent, '049 patent, and '690 patent, a
`copy of which is attached hereto as Exhibit 1, and (b) grants a Covenant Not Sue on the same
`terms as in Exhibit 1 for the '461 patent, '802 patent, '100 patent, '981 patent, and '700 patent
`which is attached as Exhibit 2.
`
`AGREEMENT NOT TO CONTEST. WTS agrees not to contest and/or assist any
`6.
`third party(s) to contest the validity, enforceability, and/or term of the '401 patent, '049 patent,
`'690 patent, '461 patent, '802 patent, '100 patent, '981 patent, and/or '700 patent through
`litigation, inter partes review, covered business patent review, ex parte reexamination, or
`otherwise.
`
`FULL RELEASE OF PARTIES. WTS on its behalf and on behalf of its predecessors,
`7.
`parents, subsidiaries, affiliates, owners, shareholders, members, officers, directors, employees,
`representatives, agents, attorneys, successors and assigns hereby releases EdgeAQ, its past,
`current and future predecessors, parents, subsidiaries, owners, shareholders, members, officers,
`directors, employees, representatives, agents, customers, end users, licensees, contractors,
`suppliers, attorneys, insurers, successors and assigns from any and all claims, causes of action,
`actions, debts, liabilities, obligations, promises, covenants, contracts, controversies, damages,
`expenses, rights, and demands of any nature whatsoever, in law or in equity, known or unknown,
`fixed or contingent, that were raised or could have been raised in the Tennessee Litigation and/or
`the Wisconsin Litigation. EdgeAQ on its behalf and on behalf of its predecessors, parents,
`subsidiaries, affiliates, owners,
`shareholders, members, officers, directors, employees,
`representatives, agents, attorneys, successors and assigns hereby releases WTS, its past, current
`and future predecessors, parents, subsidiaries, owners, shareholders, members, officers, directors,
`employees, representatives, agents, customers, end users, licensees, contractors, suppliers,
`attorneys, insurers, successors and assigns from any and all claims, causes of action, actions,
`debts, liabilities, obligations, promises, covenants, contracts, controversies, damages, expenses,
`rights, and demands of any nature whatsoever, in law or in equity, known or unknown, fixed or
`contingent, that were raised or could have been raised in the Tennessee Litigation and/or the
`Wisconsin Litigation. The only exception to the foregoing release by EdgeAQ is that EdgeAQ
`does not release any breach of contract claims against EdgeAQ's customers that are not based on
`the customer's use of any WTS software or that does not arise out of WTS's provision of
`services to the customer. For sake of clarity, EdgeAQ is, however, specifically waiving any and
`all claims against WTS's customers and EdgeAQ's customers (to the extent that such EdgeAQ
`customers are also WTS's customers) that relate to the use of WTS's software or WTS's
`provision of services to such customers and EdgeAQ is waiving any and all claims against WTS
`Page 3 of7
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`that relate in any way to a breach of contract claim by EdgeAQ against any customers, whether
`EdgeAQ's customers or WTS's customers. For additional clarity, EdgeAQ maintains any right to
`sue EdgeAQ's customers or former customers for breach of contract to seek monetary damages
`for any improper disclosure of confidential or trade secret information (including any qualifying
`catalog materials) that breaches its agreements, but will not seek any injunctive or equitable
`relief that would impact WTS's software in any way. The parties' past, current and future
`predecessors, parents,
`subsidiaries, owners, shareholders, members, officers, directors,
`employees, representatives, agents, customers, prospective customers, end users, licensees,
`contractors, suppliers, attorneys, insurers, successors and assigns are third-party beneficiaries of
`this Paragraph 7. The Parties hereby represent and warrant that up to and including the Effective
`Date, they have not assigned, transferred, gifted, compromised, released or otherwise alienated in
`any way, in whole or in part, any claims that they have against any of the released individuals
`and entities in this Paragraph 7.
`
`NO ADMISSION OF LIABILITY. The terms and provisions set forth in this
`8.
`Agreement are not and shall not be construed as an admission by either party of any wrongdoing,
`violation of any law, and/or any liability whatsoever.
`
`RIGHTS GRANTED. Except as otherwise set forth in this Agreement, neither party
`9.
`grants any other rights to the other party.
`
`FUTURE DISAGREEMENTS/NOTICE OF DISPUTE Should there be a dispute in
`I 0.
`the future arising out of this Agreement or otherwise (including, without limitation, claims not
`involved in the Tennessee litigation or Wisconsin litigation), then the aggrieved party must first
`contact the other party directly in writing in an effort to resolve the dispute short of litigation (the
`"Notice of Dispute"). The responding party shall have fifteen ( 15) days after such Notice of
`Dispute to cure any breach of this Agreement or otherwise reach a resolution of the dispute in
`writing signed by the respective parties to the dispute.
`If any breach is not cured or other
`resolution reached in writing signed by the respective parties within fifteen (15) days of
`providing notice, the parties agree that either party may proceed with litigation. The point of
`contact for each party is as follows:
`
`(a) WTS Paradigm, LLC
`Attn: Nathan Herbst, CEO
`1850 Deming Way, Suite 120
`Middleton, WI 53562
`
`With a copy to:
`Quarles & Brady, LLP
`Attn: Attorney Anthony A. Tomaselli
`33 East Main Street, Suite 900
`Madison, Wisconsin 53703
`
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`(b) EdgeAQ, LLC
`Attn: Steve Proctor, CEO
`2948 Sidco Dr.
`Nashville, TN 37204
`
`With a copy to:
`Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C.
`Attn: Attorney Christopher A. Sloan
`211 Commerce Street, Suite 800
`Nashville, Tennessee 37201
`
`CAP A CITY TO RELEASE. Both parties hereby declare that in making this
`11.
`Agreement none of the parties has been influenced to any extent by any representations or
`statements regarding any matter by any other party or any representative of any party. Each
`person signing this Agreement represents and warrants that he is fully authorized to execute this
`Agreement by the party on whose behalf he is signing this Agreement.
`
`TIME IS OF THE ESSENCE. The parties recognize that time is of the essence m
`12.
`carrying out the terms and conditions of this Agreement.
`
`13.
`NON-WAIVER. The failure of any party to this Agreement at any time to enforce any
`of the terms, provisions or conditions of this Agreement or to exercise any right hereunder shall
`not constitute a waiver of the same or affect that party's right thereafter to enforce the same.
`
`ENTIRE AGREEMENT. This Agreement (including its exhibits) constitutes the entire
`14.
`Agreement by the parties and may not be amended or modified, except in writing signed by all
`parties. All prior understandings and agreements between the parties are merged in this
`Agreement, which alone fully and completely expresses their understanding.
`
`SEVERABILITY. If any provision ofthis Agreement is held by a court to be invalid or
`15.
`unenforceable, then that provision will be deemed severed from this Agreement and the
`remaining provisions shall continue in full force and effect.
`
`COUNTERPARTS. This Agreement may be executed in two or more counterparts,
`16.
`each of which shall be deemed an original, but all of which together shall constitute one and the
`same instrument.
`
`17.
`CAPTIONS. The captions of this Agreement are for convenience and reference only
`and in no way define, describe, extend or limit the scope or the intent of this Agreement or the
`intent of any of its provisions.
`
`SUCCESSORS. The terms and conditions of this Agreement shall be binding on and
`I 8.
`mure to the benefit of the parties and their respective successors, assigns, and personal
`representatives.
`
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`ARBITRATION. Any controversy or claim arising out of or relating to this Agreement,
`19.
`or the breach thereof, shall be settled by arbitration administered by the American Arbitration
`Association under its Commercial Arbitration Rules, and judgment on the award rendered by the
`arbitrator(s) may be entered in any court having jurisdiction thereof. Notwithstanding the
`foregoing, the parties agree that should a party breach or threaten a breach, the other pmty may
`file a lawsuit in any state or federal court having jurisdiction thereof solely for the purpose of
`injunctive relief pending the completion of the arbitration and any proceedings arising
`therefrom. Such injunctive relief shall be in addition to and not in lieu of any other remedy to
`which the pmty is otherwise entitled.
`
`GOOD FAITH EFFORTS. The parties to this Agreement each covenant to use their
`20.
`best efforts and good faith to comply with the provisions of this Agreement.
`
`DRAFTING OF THE AGREEMENT. The parties agree that this Agreement shall be
`21.
`considered jointly drafted by the parties and will not be construed against any particular party.
`
`ACKNOWLEDGEMENT OF UNDERSTANDING. Each party to this Agreement
`22.
`acknowledges and agrees that prior to signing this Agreement, the party has read it and has had
`the opportunity to consult with the pmty's attomeys, accountants, or any other advisors that the
`pmiy deemed necessary or appropriate and that no party hereto has in any manner relied upon
`any other patty hereto for legal or other advice in connection herewith.
`
`IN WITNESS WHEREOF, the parties have caused this Agreement to be executed in
`form sufficient to fully bind them, effective as of the date first set forth above.
`
`BY SIGNING THIS AGREEMENT, YOU AGREE THAT YOU HAVE BEEN
`PROVIDED THE OPPORTUNITY TO READ THE FOREGOING AND DISCUSS IT
`WITH YOUR ATTORNEY(S) AND THAT YOU AGREE TO BE BOUND AND ABIDE
`BY THE TERMS CONTAINED HEREIN.
`
`WTSP~=
`By: ~
`Printed Name: ~/ f'fr/)s
`t:ro
`(/&j~11J6
`
`As:
`ofWTS Paradigm, LLC
`
`Date:
`
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`
`EXHIBIT 1
`EXHIBIT 1
`
`

`
`COVENANT NOT TO SUE
`
`WHEREAS, WTS Paradigm, LLC ("WTS") has filed Case No. 3:15-cv-00330-wmc
`
`against EdgeAQ, LLC ("EdgeAQ") (collectively, "the Patties") in the United States District
`
`Court for the Western District of Wisconsin (the "Lawsuit");
`
`WHEREAS, EdgeAQ is the owner of United States Patent No. 6,810,401 ("the '401
`
`patent"); United States Patent No. 7,461,049 ("the '049 patent"); and United States Patent No.
`
`7,860,690 ("the '690 patent"), at issue in the Lawsuit;
`
`WHEREAS, the Lawsuit includes allegations that WTS infringes the '40 1, '049, and
`
`'690 patents;
`
`WHEREAS, EdgeAQ desires to end the Lawsuit with respect to the '401, '049, and '690
`
`patents by granting a covenant not to sue for infringement of those patents and by filing the
`
`attached stipulation of dismissal;
`
`NOW, THEREFORE, EdgeAQ, for itself and any successors to its right or interest in
`
`the '401, '049, and '690 patents, hereby agrees and covenants as follows:
`
`I. EdgeAQ grants an unconditional and irrevocable covenant not to sue under--or
`
`otherwise assert infringement of-the '401 patent to (i) WTS and its predecessors,
`
`successors, and assigns, (ii) the contractors, suppliers, distributors, patiners, owners,
`
`members, officers, directors, representatives, agents,
`
`licensees, end users, and
`
`customers of WTS or its successors or assigns, and (iii) any entity that controls, is
`
`controlled by, or is under common control with WTS or its successors or assigns.
`
`2. EdgeAQ grants an unconditional and irrevocable covenant not to sue under-or
`
`otherwise asseti infringement of-the '049 patent to (i) WTS and its predecessors,
`
`successors, and assigns, (ii) the contractors, suppliers, distributors, partners, owners,
`
`QB\36254438.1
`
`

`
`members, officers, directors, representatives, agents, licensees, end users, and
`
`customers of WTS or its successors or assigns, and (iii) any entity that controls, is
`
`controlled by, or is under common control with WTS or its successors or assigns.
`
`3. EdgeAQ grants an unconditional and itTevocable covenant not to sue under-or
`
`otherwise assert infringement of-the '690 patent to (i) WTS and its predecessors,
`
`successors, and assigns, (ii) the contractors, suppliers, distributors, partners, owners,
`
`members, officers, directors, representatives, agents,
`
`licensees, end users, and
`
`customers of WTS or its successors or assigns, and (iii) any entity that controls, is
`
`controlled by, or is under common control with WTS or its successors or assigns.
`
`4. The covenants not to sue in Sections 1, 2, and 3 apply only to the '401, '049, and '690
`
`patents and do not apply to any other claims currently pending in the Lawsuit or that
`
`may be added to the Lawsuit by the Parties.
`
`WTS PARADIGM, LLC
`
`By:~
`
`Its:
`
`J
`
`QB\3625443!!.1
`
`2
`
`

`
`EXHIBIT 2
`EXHIBIT 2
`
`

`
`COVENANT NOT TO SUE
`
`WHEREAS, WTS Paradigm, LLC ("WTS") has filed Case No. 3:15-cv-00330-wmc
`
`against EdgeAQ, LLC ("EdgeAQ") (collectively, "the Parties") in the United States District
`
`Court for the Western District of Wisconsin (the "Lawsuit");
`
`WHEREAS, WTS and EdgeAQ have agree to resolve the Lawsuit and this Covenant
`
`Not To Sue is part of the consideration for resolving the Lawsuit; and
`
`WHEREAS, EdgeAQ is the owner of United States Patent No. 7,805,461 ("the '461
`
`patent"); United States Patent No. 7,219,100 ("the ' 1 00 patent"); United States Patent No.
`
`7,869,981 ("the ' 981 patent"); United States Patent No. 8,280,700 ("the ' 700 patent"); and
`
`United States Patent No. 8,582,802 ("the ' 802 patent").
`
`NOW, THEREFORE, EdgeAQ, for itself and any successors to its right or interest in
`
`the ' 461 patent, the ' 100 patent, the '981 patent, the '700 patent, and the ' 802 patent, hereby
`
`agrees and covenants as follows:
`
`1. EdgeAQ grants an unconditional and irrevocable covenant not to sue under-or
`
`otherwise assert infringement of-the '461 patent to (i) WTS and its predecessors,
`
`successors, and assigns, (ii) the contractors, suppliers, distributors, partners, owners,
`
`members, officers, directors, representatives, agents, licensees, end users, and
`
`customers of WTS or its successors or assigns, and (iii) any entity that controls, is
`
`controlled by, or is under common control with WTS or its successors or assigns.
`
`2. EdgeAQ grants an unconditional and irrevocable covenant not to sue under-or
`
`otherwise assert infringement of-the '1 00 patent to (i) WTS and its predecessors,
`
`successors, and assigns, (ii) the contractors, suppliers, distributors, partners, owners,
`
`members, officers, directors, representatives, agents,
`
`licensees, end users, and
`
`

`
`customers of WTS or its successors or assigns, and (iii) any entity that controls, IS
`
`controlled by, or is under common control with WTS or its successors or assigns.
`
`3. EdgeAQ grants an unconditional and irrevocable covenant not to sue under-or
`
`otherwise assert infringement of-the '981 patent to (i) WTS and its predecessors,
`
`successors, and assigns, (ii) the contractors, suppliers, distributors, partners, owners,
`
`members, officers, directors, representatives, agents,
`
`licensees, end users, and
`
`customers of WTS or its successors or assigns, and (iii) any entity that controls, is
`
`controlled by, or is under common control with WTS or its successors or assigns.
`
`4. EdgeAQ grants an unconditional and irrevocable covenant not to sue under-or
`
`otherwise assert infringement of-the '700 patent to (i) WTS and its predecessors,
`
`successors, and assigns, (ii) the contractors, suppliers, distributors, partners, owners,
`
`members, officers, directors, representatives, agents,
`
`licensees, end users, and
`
`customers of WTS or its successors or assigns, and (iii) any entity that controls, is
`
`controlled by, or is under common control with WTS or its successors or assigns.
`
`5. EdgeAQ grants an unconditional and irrevocable covenant not to sue under-or
`
`otherwise assert infringement of-the '802 patent to (i) WTS and its predecessors,
`
`successors, and assigns, (ii) the contractors, suppliers, distributors, partners, owners,
`
`members, officers, directors, representatives, agents,
`
`licensees, end users, and
`
`customers of WTS or its successors or assigns, and (iii) any entity that controls, is
`
`controlled by, or is under common control with WTS or its successors or assigns.
`
`NOW, THEREFORE, WTS, for itself and any successors, hereby agrees and covenants
`
`as follows:
`
`2
`
`

`
`I. WTS grants
`
`to EdgeAQ and
`
`its predecessors, successors, and assigns an
`
`unconditional and irrevocable covenant not to sue for invalidity of the '461 patent.
`
`2. WTS grants
`
`to EdgeAQ and
`
`its predecessors, successors, and assigns an
`
`unconditional and irrevocable covenant not to sue for invalidity of the' I 00 patent.
`
`3. WTS grants
`
`to EdgeAQ and
`
`its predecessors, successors, and assigns an
`
`unconditional and irrevocable covenant not to sue for invalidity of the '981 patent.
`
`4. WTS grants
`
`to EdgeAQ and
`
`its predecessors, successors, and assigns an
`
`unconditional and irrevocable covenant not to sue for invalidity of the '700 patent.
`
`5. WTS grants
`
`to EdgeAQ and
`
`its predecessors, successors, and assigns an
`
`unconditional and irrevocable covenant not to sue for invalidity of the '802 patent.
`
`Its:
`
`On:
`
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`
`6~/c?PJl
`
`3