SETTLEMENT AGREEMENT
`
`THIS AGREEMENTisentered into by and between:
`
`(a) MacNeil Automotive Products Limited ("MACNEIL"),a corporation organized
`underthe laws of the State of Illinois and having a principal place of business
`located at 2435 Wisconsin Street, Downers Grove, Illinois 60515-4018.
`
`(b) Winfield ConsumerProducts, Inc. (“WINFIELD”), a corporation organized and
`existing underthe laws of the State of Kansas and having a principal place of
`business located at 22425 D St., Strother Field, Winfield, Kansas 67156.
`
`MACNEIL and WINFIELDare hereinafter referred to individually as a PARTY or,
`collectively, as the "PARTIES."
`
`WITNESSETH:
`
`WHEREAS MACNEILhasasserted, in Civil Action No. 10 CV 4088 pending in
`the United States District Court for the Northern District of Illinois, that WINFIELD has
`infringed certain patents owned by MACNEIL, that WINFIELDhasviolated
`MACNEIL’s rights under Federal Trademark Law, Federal Unfair Competition Law,
`Federal False Patent Marking Law,the Illinois Uniform Deceptive Trade Practices Act,
`Illinois Common Law relating to Unfair Competition, has been Unjust[ly] Enrich[ed],
`and that WINFIELD violated MACNEIL’s rights underthe Illinois Consumer Fraud and
`Deceptive Business Practices Act; and
`
`WHEREAS WINFIELDhasasserted, in Civil Action No. 10 CV 4088 pending in
`the United States District Court for the Northern District of Illinois, that MACNEIL has
`infringed certain of WINFIELD’s patent rights, and that MACNEIL’s patentsare not
`infringed, are invalid, and are unenforceable, and
`
`WHEREASTHEPARTIESwishtofinally settle their disputes concerning
`MACNEIL’s patents by MACNEIL granting and WINFIELD accepting a license and
`covenant not to sue underits patents as set forth herein; and WINFIELD’s patent by
`WINFIELD granting and MACNEILaccepting a license and covenant not to sue under
`its asserted patent as set forth herein.
`
`NOW, THEREFORE,in consideration of the mutual covenants herein contained, the
`PARTIEShereto agree as follows:
`
`ARTICLEI - DEFINITIONS
`
`EFFECTIVE DATEmeansthe date that this AGREEMENTis executed by the
`1.1
`last one of the PARTIES.
`
`MacNeil Exhibit 2050
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
`
`

`

`TERM meansthe term of this AGREEMENT,which begins on the EFFECTIVE
`1.2.
`DATEand, unless terminated sooner pursuant to Article VI, runs until the date of
`expiration of the last to expire of the patents licensed by this AGREEMENT,
`
`ASSERTED MACNEIL PATENTSmeans U.S. Patent No. 7,444,748 (‘the ‘748
`1.3
`patent”), U.S. Patent No. 7,607,713 (“the ‘713 patent”), U.S. Patent No. 7,686,371 (“the
`‘371 patent”) and U.S. Patent No. 7,784,848 (“the ‘848 patent”).
`
` MACNEIL’s FLOOR LINER PRODUCT meansthe floor liner that MacNeil
`14
`currently makes and markets as its WeatherTech FloorLiner.
`
` WINFIELD’s PREMODIFICATION WEATHERBEATER FLOOR LINER
`1.5
`means the version of WINFIELD’s accusedfloorliner product that was the subject of
`MacNeil’s initial infringement contentions and of a design that was used priorto
`Septemberof 2010. Prior to September of 2010, WeatherBeaterfloorliners consisted of
`a design that included a 5/8 inch decorative bandingthat, by itself, fully surrounded a
`relatively-lower area located completely behind the heel pad(s) of the front floorliners.
`In other words,the portion of the decorative banding that was located completely behind
`the heel pad(s) created a continuous perimeter(also entirely behind the heel pad) of an
`area that wasrelatively-lower than the banding itself.
`
`ASSERTED WINFIELD PATENT means U.S, Patent No. 5,891,546 (“the ‘546
`1.6
`Patent’).
`
` WINFIELD’s FLOOR LINER PRODUCTSmeansthe floorliner products
`1.7
`marketed as HuskyLinersfloorliners, which include, but are not limited to Classic,
`WeatherBeater and X-act Contour products.
`
`LICENSED MACNEIL PATENTS means ASSERTED MACNEIL PATENTS
`18
`and any patents and future patents that issue from orclaim the benefit of priority, in
`whole or in part, to the ASSERTED MACNEIL PATENTSand/or U.S. Application No,
`10/976,441 (“the ‘441 Application”).
`
`19
`
`LICENSED WINFIELD PATENT means the ASSERTED WINFIELD PATENT.
`
`1.10 AFFILIATES means, with respect to any PARTY,any Person directly or
`indirectly controlled by such PARTY.Forthe purposesof this definition, "control" when
`used with respect to any Person, meansthe possession, directly or indirectly, of the power
`to direct or cause the direction of the management and policies of such Person, whether
`through the ownership of voting securities, by contract or otherwise; the terms
`"controlling" and "controlled" have meaningscorrelative to the foregoing. "PERSON"
`means an individual, a corporation, a partnership,a limited liability company,a joint
`venture, an association, a trust or other entity or organization.
`
`THE LITIGATIONrefers to Civil Action No. 10 CV 4088 pending in the United
`1.11
`States District Court for the Northern District of Illinois.
`
`
`
`
`
`
`
`MacNeil Exhibit 2050
`Yita v. MacNeil IP, IPR2020-01139
`Page 2
`
`

`

`ARTICLE II - GRANT OF LICENSES AND COVENANTS NOT TO SUE
`
`Patent License to WINFIELDand its AFFILIATES. Subject to the terms herein,
`2.1
`for PAYMENTand the TERM of this AGREEMENT, MACNEILhereby grants, and
`agrees to grant, for itself and its AFFILIATES,successors,assignees, heirs, devisees,
`divisions, subsidiaries, officers, and directors, to WINFIELD and its AFFILIATES:
`
`(a)
`
`(b)
`
`(c)
`
`A worldwide non-exclusive, non-assignable, indivisible, license without
`the right to sublicense under the LICENSED MACNEIL PATENTSto
`make,use, sell, offer to sell and import products or apparatus, and
`components thereof, and to practice methods covered by any claim or
`claims of any LICENSED MACNEIL PATENTS.
`Said patent license to WINFIELD and its AFFILIATESshall not include
`the right to make,use, sell, offer to sell or import exact replicas of
`MACNEIL’s FLOOR LINER PRODUCT,
`
`Said patent license to WINFIELD and its AFFILIATESshall not include
`the right to make,use, sell, offer to sell or import WINFIELD’s
`PREMODIFICATION WEATHERBEATER FLOOR LINER.
`
`Non-Assertion of LICENSED MACNEIL PATENTS Against WINFIELDandits
`2.2
`AFFILIATES and Customers. For the TERM of the AGREEMENT, MACNEIL will not
`seek to enforce any LICENSED MACNEIL PATENTSagainst WINFIELDoranyofits
`AFFILIATESor any customerbased on any product licensed under this AGREEMENT
`that was acquired from WINFIELDorany of its AFFILIATES. For the TERM ofthe
`AGREEMENT, MACNEIL will not seek any additional license fee or royalty payment
`under any LICENSED MACNEIL PATENTSfrom WINFIELDorany ofits
`AFFILIATESand customers based on any product for which the royalty specified herein
`was paid by WINFIELD.
`
`Patent License to MACNEIL and its AFFILIATES. Subject to the terms herein,
`2.3
`for the TERM of this AGREEMENT, WINFIELD hereby grants, and agrees to grant, for
`itself and its AFFILIATES, successors, assignees, heirs, devisees, divisions, subsidiaries,
`officers, and directors, to MACNEIL and its AFFILIATES:
`
`(a)
`
`(b)
`
`A non-exclusive, non-assignable, indivisible, license without the right to
`sublicense under the LICENSED WINFIELD PATENTto make,use, sell,
`offer to sell and import products or apparatus, and components thereof,
`and to practice methods covered by any claim or claims of any
`LICENSED WINFIELD PATENT.
`Said patent license to MACNEIL and its AFFILIATESshall not include
`the right to make,use,sell, offer to sell or import exactreplicas of
`WINFIELD’s FLOOR LINER PRODUCTS,
`
`MacNeil Exhibit 2050
`Yita v. MacNeil IP, IPR2020-01139
`Page 3
`
`

`

`
`
`|
`
` Non-Assertion of LICENSED WINFIELD PATENT Against MACNEIL andits
`2.4
`AFFILIATES and Customers. For the TERM of the AGREEMENT, WINFIELDwill
`not seck to enforce any LICENSED WINFIELD PATENTagainst MACNEILoranyof
`its AFFILIATESor any customerbased on any productlicensed underthis
`AGREEMENTthat was acquired from MACNEILorany of its AFFILIATES. Forthe
`TERM of the AGREEMENT, WINFIELDwill not seek any license fee or royalty
`payment under any LICENSED WINFIELD PATENTfrom MACNEILoranyofits
`AFFILIATESand customers based on any product for which the license described herein
`was obtained by MACNEIL.
`
`Non-assertion of otherexisting causes of action. For the TERM ofthe
`2.5
`AGREEMENT,the PARTIESagreeto release all existing causes of action, both known
`or unknown, against one anotheror their AFFILIATESor customers based on the actions
`of the PARTIES,on anypatent(orpatent that issues that claims the benefit of priority to
`any existing patent applicationasit relates to current products), including causes of
`action stemmingfrom allegations of false patent marking, trademark,ortrade dress issues
`(or other action relying on an underlying patent, trademark, or trade dress action suchas,
`for example, those presently asserted by MACNEIL underthe Illinois Consumer Fraud
`and Deceptive Business Practices Act.
`
`Notice Provision Relating To Future Disputes. The PARTIESagree that any
`2.6
`future civil action initiated byeither PARTY mayonly beinitiated afier the Plaintiff in
`the future litigation has provided actual written notice to the Defendantin the future
`litigation at least 60 dayspriorto filing of the Complaint in which the Plaintiff in the
`future litigation outlines the factual and legal basis for the perceived wrongdoing subject
`to the following terms and conditions:
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`If such notice letter is used as the basis forjurisdiction in a Declaratory
`Judgmentaction, the DJ plaintiff must also comply withthe notice and
`grace period provision of this paragraph.
`
`Failure to comply with this Paragraph(2.6) shall constitute a breach ofthe
`terms ofthis settlement agreement and subject the PARTY in breachto the
`paymentof $1,000,000 in liquidated damagesto the other PARTY,such
`paymentto be made withinthirty days of the commencementof the
`lawsuit.
`
`Compliance with this Paragraph (2.6) shall not be used as proof of laches
`or undue delay.
`
`This Notice Provision (2.6) and the consequences of noncompliance with
`this Paragraph(2.6) shall expire ten years (10) after signing of the
`AGREEMENT.
`
`MacNeil Exhibit 2050
`Yita v. MacNeil IP, IPR2020-01139
`Page 4
`
`

`

`ARTICLE HI - PAYMENT
`
`In consideration of the licenses and covenantsnot to sue
`WINFIELD Payment.
`3.1
`granted herein and in settlement of MACNEIL’s claims for damagesfor infringement by
`WINFIELD of MACNEIL’S ASSERTED PATENTSpriorto the EFFECTIVE DATE,
`WINFIELDagrees to pay to MACNEIL a one-time payment of SEX HUNDRED AND
`FIFTY THOUSANDU.S. dollars (3S$650,000) prior to November20, 2011, another
`one-time payment of THREE HUNDRED AND SEVENTY-FIVE THOUSANDUSS,
`dollars (US$375,000) prior to November20, 2012, and then anothernine annual
`payments of FIFTY THOUSANDUSS. dollars (US$50,000) each prior to November20,
`2013, 2014, 2015, 2016, 2017, 2018, 2019, 2020, and 2021 respectively. The total ofall
`payments after the last payment is made prior to November 20, 2021 will be ONE
`MILLION FOUR HUNDRED AND SEVENTY-FIVE THOUSANDUSS. dollars
`(US$1,475,000).
`
`ARTICLE ITV - WARRANTIES AND INDEMNIFICATION
`
`MACNEIL Warranty re Ownership. MACNEIL warrants that it and its
`4,1
`AFFILIATES are the sole owners of the LICENSED MACNEIL PATENTSandthat
`they have the exclusive right to grant licenses thereunder.
`
`4.2 WINFIELD Warranty re Ownership, WINFIELD warrants thatit and its
`AFFILIATESare the sole owners of the LICENSED WINFIELD PATENTandthat they
`have the exclusive right to grant licenses thereunder.
`
`LICENSED MACNEIL PATENTS. Nothing in this AGREEMENTshal! be
`43
`deemedto be a representation or warranty by MACNEIL orits AFFILIATESofthe
`validity or enforceability of any of the LICENSED MACNEIL PATENTSlicensed
`herein orthat practice of the LICENSED MACNEIL PATENTSwill be free from
`infringement ofany intellectual property rights of any third party.
`
`LICENSED WINFIELD PATENT. Nothing in this AGREEMENTshall be
`44
`deemed to be a representation or warranty by WINFIELD orits AFFILIATESofthe
`validity or enforceability of any of the LICENSED WINFIELD PATENTlicensed herein
`or that practice of the LICENSED WINFIELD PATENTwill be free from infringement
`of any intellectual property rights of any third party.
`
`MACNEILLiability. MACNEIL shall have no liability for any loss, expense or
`4.5
`damage, arising from any infringementaction or otherallegationrelating to the use by
`WINFIELDorits AFFILIATESof any apparatus or method covered undersection 2.1 of
`this AGREEMENT,
`
`4.6 WINFIELD Liability. WINFIELDshall have no liability for any loss, expense or
`damage,arising from any infringementaction orotherallegation relating to the use by
`MACNEILorits AFFILIATESof any apparatus or method covered undersection 2.3 of
`this AGREEMENT.
`
`MacNeil Exhibit 2050
`Yita v. MacNeil IP, IPR2020-01139
`Page 5
`
`

`

`
`
`
`
`ARTICLE V - THE LITIGATION
`
`MACNEIL’S DISCHARGE AND RELEASE. Effective uponsigning of this
`5.1
`AGREEMENTby David MacNeil of MACNEIL and Robert Tyler of WINFIELD,
`MACNEIL will release, acquit, and forever discharge WINFIELD and its AFFILIATES,
`officers, directors, partners, subsidiaries, employees, agents, and attorneys, andits
`successors or assigns, from any and all existing, known and unknown,claims based upon
`the LICENSED MACNEIL PATENTSsubject only to the conditions and exceptionsset
`forth herein.
`
`52 WINFIELD’S DISCHARGE AND RELEASE. Effective upon signing ofthis
`AGREEMENTby David MacNeil of MACNEIL and Robert Tyler of WINFIELD,
`WINFIELDwill release, acquit, and forever discharge MACNEIL and its AFFILIATES,
`officers, directors, partners, subsidiaries, employees, agents, and attorneys, and its
`successors or assigns, from any and all existing, known and unknown,claims based upon
`the LICENSED WINFIELD PATENTsubject only to the conditions and exceptionsset
`forth herein.
`
`THE PARTIES’ DISCHARGE AND RELEASE. Effective uponsigning of this
`5.3.
`AGREEMENTby David MacNeil of MACNEIL and Robert Tyler of WINFIELD,the
`PARTIESwill release, acquit, and forever discharge each other and their AFFILIATES,
`officers, directors, partners, subsidiaries, employees, agents, and attorneys, and their
`successorsor assigns, from any and all existing, known and unknown,claims based upon
`those causes of action described in Paragraphs 2.1 through 2.5 subject only to the
`conditions and exceptionsset forth herein.
`
`Resolution ofall patent and non-patent claims asserted in THE LITIGATION.
`54
`The PARTIESagree that within fourteen (14) days after signing of this AGREEMENT
`by MACNEIL and WINFIELD pursuant to Paragraphs 5.1 and 5.2, the PARTIESwill
`submit to the Court in THE LITIGATIONa dismissal of the PARTIES’ claims and
`counterclaims with prejudice subject onlyto the terms of this AGREEMENT.
`
`ARTICLE VI - TERM AND TERMINATION
`
`TERM. This AGREEMENTshail extend throughout the TERM set out by
`6.1
`section 1.2 and expire thereafter unless previously terminated as hereinafter provided.
`
`Termination for Breach. Any non-breaching PARTYshail have the right to
`6.2
`terminate this AGREEMENTfor material breach of any obligation owed to the non-
`breaching PARTY pursuant to this AGREEMENTupongiving sixty (60) days written
`notice setting forth such breach; provided, however, that if such breachis rectified within
`said sixty (60) day period, then in that event, this AGREEMENTshall continuein full
`force and effect as though such breach had not occurred,
`
`6.3
`
`Effect of Termination. Upon expiration or termination of this AGREEMENT:
`(a)
`Articles I (Definitions), TV (Warranties and Indemnification), V
`
`MacNeil Exhibit 2050
`Yita v. MacNeil IP, IPR2020-01139
`Page 6
`
`

`

`(Governing Law) and XII (Resolution of Disputes) shall survive any
`expiration or termination of this AGREEMENT.
`
`ARTICLEV - INTEGRATION AND WAIVER
`
`Entire Agreement. This AGREEMENTshall constitute the entire agreement
`7.1
`between the PARTIES hereto with respect to the subject matter hereof, and shall
`supersedeall previous negotiations, commitments and writings.
`It shall not be modified
`or altered in any mannerexcept by an instrument in writing executed by the PARTIES
`hereto,
`
`Failure to Enforce Not a Waiver. Thefailure of any PARTYhereto to enforceat
`7.2
`any time the provisions of this AGREEMENTshall in no way be construed to be a
`waiverof such provisions, nor in any wayto affect the validity of this AGREEMENTor
`any part thereof, or the right of any PARTY to thereafter enforce each and every such
`provision.
`
`One Waiver is Not Future Waiver. No waiverof any breach of this
`7.3
`AGREEMENTshail be held to be a waiver of any other or subsequent breach. All
`remedies afforded in this AGREEMENTshall be taken and construed as cumulative, that
`is, in addition to every other remedy provided herein or by law.
`
`ARTICLE VIII - ASSIGNMENT
`
`No Assignment by THE PARTIES. THE PARTIES and their AFFILIATES may
`8.1
`not, without specific written consent of the other PARTY,assign or purport to assign the
`rights and licenses conveyed under this AGREEMENT,except to a purchaser of
`substantiallyall of the assets of a business of THE PARTIESortheir AFFILIATESto
`which this AGREEMENTrelates.
`
`ARTICLE IX - CONFIDENTIALITY
`
`Confidentiality Obligations. THE PARTIESagree that they will treat the terms,
`9.1
`conditions and any information about this AGREEMENTasconfidential information and
`will not disclose such information to any third party. Notwithstanding the foregoing,
`THE PARTIESneed nottreat as confidential the fact that they have reached a resolution
`of the LITIGATION.
`
`Subpoena. In the event that PARTIES and/oranyof their representatives who
`9,2
`have knowledgeofor access to the confidential terms and conditionsofthis
`AGREEMENT,becomeslegally compelled (as a result of legally required oral questions,
`interrogatories, requests for information or documents, subpoena,civil or criminal
`investigative demandor similar legally mandated process or requirement) to disclose any
`such information, each shall provide the other with prompt written notice at least 14 days
`before producing the informationso that either may seek a protective orderor other
`appropriate judicial remedy and/or waive compliance with the provisionsof this
`
`MacNeil Exhibit 2050
`Yita v. MacNeil IP, IPR2020-01139
`Page 7
`
`

`

`promptly sought by the PARTIES, the said PARTY waives compliance with the
`provisions of this AGREEMENT. In any event, the subpoenaed PARTY and/orits
`representatives, including, withoutlimitations, its attorneys, will: (i) furnish only that
`portion of the information whichis legally required; (ii) provide the other PARTYandits
`counsel an opportunity to reviewthe contents of any such disclosure; and (iii) exerciseits
`best efforts to obtain reliable assurance that confidential treatment will be accorded to the
`confidential terms and conditions of this AGREEMENT.
`
`ARTICLE X - NOTICES
`
`10.1 Notices to Parties. All notices required or permitted to be given underthis
`AGREEMENTshall be in writing and shall be deemed to be properly given if sent by
`registered air mail to the PARTYentitled to receive such notice at the address herein
`below set forth or in accordance with the last written instructions received from such
`PARTYconcerning the mailing address to be used for such notices. The date of the
`notice shall be the date shownon the postmark if the same shall be sent by mail:
`
`As to MacNeil Automotive Products Limited:
`
`David MacNeil
`MacNeil Automotive Products Limited
`2435 Wisconsin Street, Downers Grove,Illinois 60515-4018
`
`With a copy to:
`
`Robert Grabemann
`Daspin & Aument, LLP
`227 West Monroe, Suite 3500
`Chicago, Illinois 60606
`
`As to Winfield ConsumerProducts, Inc.
`
`Robert Tyler
`Winfield Consumer Products, Inc.
`P.O, Box 839
`22425 D St., StrotherField,
`Winfield, Kansas 67156
`
`With a copy to:
`
`Paul McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 West Madison, 34th Floor
`Chicago, Illinois 60661
`
`
`
`|
`|j
`
`|
`
`MacNeil Exhibit 2050
`Yita v. MacNeil IP, IPR2020-01139
`Page 8
`
`

`

`ARTICLE VI - GOVERNING LAW
`
`Governing Law. The interpretation, validity, and performanceofthis
`11.1
`AGREEMENTshall be governed and construed in accordance with the laws the state of
`Illinois, U.S., without regard to the conflicts of laws principles applicable therein.
`
`ARTICLE VII - RESOLUTION OF DISPUTES
`
`Dispute Resolution. All disputes arising out of or in connection withthis
`12.1
`AGREEMENT,whichcannotbe settled by mutual agreement of the PARTIES, shall be
`litigated in the United States District Court for the Northern District ofIllinois.
`
`Jurisdiction. The PARTIES agree to submit to the personal jurisdiction of the
`12.2
`United States District Court for the Northern District of Illinois in connection with the
`resolution of any dispute arising out of or in connection with this AGREEMENT.
`
`ARTICLE VIII - SEVERABILITY
`
`In case one or more of the provisions contained in this
`Invalid Provisions.
`13.1
`AGREEMENTshall, for any reason, be held to be invalid, illegal, or unenforceable in
`any respect, suchinvalidity, illegality, or unenforceability shall not affect any other
`provision of this AGREEMENTand this AGREEMENTshall be construed as if such
`invalid, illegal or unenforceable provision had never been contained herein.
`
`13.2 Headings. The headings of the sections of this AGREEMENTare for
`convenience only and shall not have anylegal effect.
`
`IN WITNESS WHEREOPF, eachof the PARTIES hereto has caused this AGREEMENT
`to be duly executed in duplicate.
`
`Agreed:
`
`WINFIELD ConsumerProducts, Inc.
`By:
`
`MacNeil Automotive Products Limited
`By:
`
`Name [print);
`
`Title;
`Dated:
`
`
`
`Tantatl:
`s
`Name[print]: Davep MacNein
`
`Title: Fouwper | C&o
`Dated:
`/o-27- 2oell
`
`
`
`|
`
`|
`
`MacNeil Exhibit 2050
`Yita v. MacNeil IP, IPR2020-01139
`Page 9
`
`