`
`CONFIDENTIAL SETTLEMENT AGREEMENT
`
`THIS CONFIDENTIAL SETTLEMENT AGREEMENT (“AGREEMENT”)
`entered into on March 4, 2015 (“EFFECTIVE DATE”), by and between:
`
`
`is
`
`MacNeil Automotive Products Limited d/b/a Weathertech (“MACNEIL
`a)
`AUTOMOTIVE”), an Illinois corporation with its principal place of business located
`at 1 MacNeil Court, Bolingbrook, Illinois 60440;
`
`MacNeil IP, LLC (“MACNEIL IP”), an Illinois corporation with its principal
`b)
`place of business located at 1 MacNeil Court, Bolingbrook, IL 60440;
`
`Kramer America, Inc. (“KRAMER”), a Florida corporation with its principal
`c)
`place of business located at 3763 Mercy Star Court, Orlando, FL 32808; and
`
`foreign corporation
`(“VANDAPAC”), a
`Vandapac Company Limited
`d)
`organized and existing under the laws of Thailand with its principal place of business
`located at 93 Moo 15 Kingkaew Rd, Samut Prakarn, 10540, Thailand.
`
`MACNEIL AUTOMOTIVE and MACNEIL IP are collectively referred to herein as
`“MACNEIL.” MACNEIL, KRAMER, and VANDAPAC are hereinafter referred to
`individually as a “PARTY” or, collectively, as the “PARTIES.”
`
`
`WITNESSETH:
`
`
`
`WHEREAS, MACNEIL AUTOMOTIVE filed Civil Action No. 11 CV 6337 in the
`United States District Court for the Northern District of Illinois (“THE LITIGATION”),
`asserting claims against KRAMER and VANDAPAC for patent infringement, unjust
`enrichment, Illinois common
`law unfair competition,
`trademark
`infringement, false
`advertising, federal unfair competition, the Illinois Deceptive Trade Practices Act, and the
`Illinois Consumer Fraud and Deceptive Business Practices Act; and
`
`
`WHEREAS, KRAMER asserted claims against MACNEIL in THE LITIGATION for
`Declaratory Judgments of patent noninfringement, patent invalidity, noninfringement of trade
`dress, invalidity of trade dress, and no unfair competition; and
`
`
`WHEREAS, THE PARTIES now desire, in the spirit of cooperation, to amicably
`resolve and settle all claims and causes of action between the Parties, including, but not
`limited to the Action, with no admissions of wrong doing by any Party hereto, on the terms
`and conditions set forth below.
`
`
`NOW, THEREFORE, in consideration of the mutual promises and obligations recited
`herein and other good and valuable consideration, the receipt and sufficiency of which are
`hereby acknowledged, the PARTIES agree as follows:
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
`
`

`

`ARTICLE I - DEFINITIONS
`
`
`AFFILIATES means, with respect to any PARTY, any Person directly or indirectly
`1.
`controlled by such PARTY. For the purposes of this definition, “control” when used with
`respect to any Person, means the 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 meanings correlative 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.
`
`ASSERTED MACNEIL PATENTS means United States Patent No. 6,735,819, United
`2.
`States Patent No. 7,686,370, United States Patent No. 8,267,459, United States Patent No.
`8,336,944, United States Patent No. 8,336,945, and United States Patent No. 8,382,186.
`
`KRAMER’S FLOOR TRAY PRODUCT means a product line of vehicle floor trays
`3.
`offered and sold by KRAMER, including the vehicle floor trays marketed under the marks
`MAXLINER and/or MAXFLOORMAT.
`
`the versions of
`KRAMER PREMODIFICATION FLOOR TRAYS means
`4.
`KRAMER’S FLOOR TRAY PRODUCT that were the subject of MacNeil’s final
`infringement contentions and did not include both (i) sidewall baffles and (ii) split floor
`baffles. A representative example of a KRAMER PREMODIFICATION FLOOR TRAY is
`shown in Exhibit A.
`
`KRAMER POSTMODIFICATION FLOOR TRAYS means any of KRAMER’S
`5.
`FLOOR TRAY PRODUCT that includes (i) sidewall baffles; (ii) split floor baffles; and (iii)
`the absence of a raised heelpad area and other raised step around the perimeter of the tray. A
`representative example of KRAMER’S FLOOR TRAY PRODUCT that includes (i) and (iii)
`is shown in Exhibit B. A representative example of a KRAMER POSTMODIFICATION
`FLOOR TRAY is shown in Exhibit C. For the avoidance of confusion, the raised heelpad and
`perimeter step referred to above are features that do not correspond to features of the vehicle
`model for which the floor tray is intended, and would not include floor tray features
`corresponding to features of the vehicle floor.
`
`MACNEIL FLOOR TRAY PATENTS means all present and future patents issuing on
`6.
`applications claiming the benefit of priority, in whole or in part, of the filing date of United
`States Patent Application No. 10/976,411, including without limitation all ASSERTED
`MACNEIL PATENTS.
`
`MACNEIL TRADE DRESS means any trade dress used in connection with
`7.
`MACNEIL’S WeatherTech FloorLiner products, including any trade dress asserted by
`MACNEIL against KRAMER and VANDAPAC in the LITIGATION.
`
`
`
`
`-2-
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 2
`
`

`

`ARTICLE II - GRANT OF TRADE DRESS
`LICENSE AND PATENT COVENANT NOT TO SUE
`
`Trade Dress License to KRAMER and its AFFILIATES. Subject to the terms herein,
`8.
`for PAYMENT under this AGREEMENT, MACNEIL hereby grants, and agrees to grant, for
`itself and its AFFILIATES, successors, assignees, heirs, devisees, divisions, subsidiaries,
`officers and directors, to KRAMER, and its AFFILIATES, a non-transferable, non-exclusive
`license, without right to sublicense, under the MACNEIL TRADE DRESS, to make, use, sell,
`offer to sell, import, market, advertise and distribute KRAMER POSTMODIFICATION
`FLOOR TRAYS and any KRAMER’S FLOOR TRAY PRODUCT that is substantially
`similar thereto with respect to the licensed MACNEIL TRADE DRESS. For clarification, no
`license is granted to non-KRAMER FLOOR TRAY PRODUCTS.
`
`Quality control. Any vehicle floor tray manufactured, sold, offered for sale,
`a)
`advertised or distributed under this trade dress license shall have a quality that meets
`or exceeds minimum acceptable industry standards. MACNEIL has inspected a
`sample of a KRAMER POSTMODIFICATION FLOOR TRAY and acknowledges
`that KRAMER POSTMODIFICATION FLOOR TRAYS meet such standards and are
`acceptable to be advertised, marketed and sold under this license.
`
`of
`quality
`the
`regarding
`dispute
`Quality Control Disputes. Any
`b)
`KRAMER’S FLOOR TRAY PRODUCT that is not substantially similar thereto shall
`be resolved by through binding arbitration by a neutral arbitrator mutually agreeable to
`MACNEIL and KRAMER. Any such arbitration shall be conducted pursuant to the
`AAA Commercial Arbitration Rules and shall take place in Chicago, Illinois and is
`subject to the rest of the provisions of this AGREEMENT.
`
`
`Covenant Not to Sue and Non-Assertion of MACNEIL FLOOR TRAY PATENTS and
`9.
`MACNEIL TRADE DRESS against KRAMER and its AFFILIATES, Customers, and
`Manufacturers. Except as permitted by the operation of this AGREEMENT, MACNEIL will
`not seek to enforce any MACNEIL FLOOR TRAY PATENT or the MACNEIL TRADE
`DRESS (including through actions based on trade dress and unfair competition under the
`Lanham Act or state law) against (i) KRAMER or any of its AFFILIATES for the
`manufacture, use, offer for sale, sale, importation, marketing or distribution of any KRAMER
`POST MODIFICATION FLOOR TRAY; (ii) any customer of KRAMER based on any of
`KRAMER’S FLOOR TRAY PRODUCT acquired from KRAMER or any of its AFFILIATES
`before the EFFECTIVE DATE; (iii) any customer of KRAMER who acquired any KRAMER
`POSTMODIFICATION FLOOR TRAY from KRAMER or any of its AFFILIATES on or
`after
`the EFFECTIVE DATE; or
`(iv)
`any manufacturer of
`a KRAMER
`POSTMODIFICATION FLOOR TRAY manufactured for KRAMER. For clarification, no
`covenant is granted to non-KRAMER FLOOR TRAY PRODUCTS.
`
`No Validity Challenge of MACNEIL FLOOR TRAY PATENTS. KRAMER,
`10.
`VANDAPAC and their respective AFFILIATES will not contest the validity of any
`
`
`
`-3-
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 3
`
`

`

`MACNEIL FLOOR TRAY PATENT before the United States Patent and Trademark Office
`or any other tribunal or court, and will not assist others in doing so, except as a defense to a
`patent claim asserted against them. Nothing in this provision shall prevent KRAMER,
`VANDAPAC and their respective AFFILIATES from (i) taking positions that may reflect on
`the validity of MACNEIL’S patents in a defense of their own patent rights, or (ii) taking
`positions that may reflect on the validity of MACNEIL’S patents in responding to office
`actions in the prosecution of their own patents, or in defending their own patent positions in
`any proceeding in the U.S. Patent Office or courts, or in the patent office or courts of any
`foreign jurisdiction.
`
`Agreement regarding future commercial activity. The PARTIES agree not to use each
`11.
`other’s respective trademarks set forth in Exhibit D as a trademark in advertising, including by
`purchase of such marks as search terms (e.g., Google AdWords). MACNEIL agrees to
`withdraw any pending complaints submitted to KRAMER’s distributors and retailers,
`including eBay, pursuant to the terms of this AGREEMENT within ten (10) business days of
`the EFFECTIVE DATE, and the PARTIES agree not to serve notices of intellectual property
`violations relating to each other’s respective products on the PARTIES’ respective distributors
`and retailers, except in accordance with the notice provisions set forth in Paragraph 12.
`
`Notice Provision Relating To Future Disputes. The PARTIES agree that any future
`12.
`civil action concerning the manufacture, advertising, importation or sale of any KRAMER
`FLOOR TRAY PRODUCT initiated by a PARTY or their AFFILIATES against another Party
`or their Affiliates may only be initiated after the Plaintiff in the future litigation has provided
`actual written notice to the Defendant in the future litigation at least 45 days prior to filing of
`the Complaint in which the Plaintiff in the future litigation outlines the factual and legal basis
`for the perceived wrongdoing. The PARTIES further agree not to serve notices of intellectual
`property violations relating to each other’s respective products on the PARTIES’ distributors
`and online retailers until after the expiration of the forty-five (45) day period. If after forty-
`five (45) days, the Defendant in the future case has not ceased the alleged conduct, the
`Plaintiff in the future case may pursue any available legal remedies, including the
`commencement of litigation and the service of notice on distributors and online retailers,
`subject to the following terms and conditions:
`
`
`If any notice letter is used as the basis for jurisdiction in a Declaratory
`a)
`Judgment (“DJ”) action, the DJ plaintiff must also comply with the notice and grace
`period provision of this paragraph.
`
`Compliance with this Paragraph 12 shall not be used as proof of laches or
`b)
`undue delay.
`
`
`
`
`
`Failure to use reasonable efforts to comply with this Paragraph 12 shall
`c)
`constitute a breach of the terms of this AGREEMENT and subject the PARTY in
`breach to the payment of $500,000 in liquidated damages to the other PARTY, such
`payment to be made within thirty days of the commencement of the lawsuit and such
`
`-4-
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 4
`
`

`

`
`
`payment is agreed to be a condition precedent for maintaining the lawsuit.
`
`This Notice Provision and the consequences of noncompliance with this
`d)
`Paragraph 12 shall expire ten years (10) after signing of the AGREEMENT.
`
`This Notice Provision and Paragraph shall not apply if a PARTY must seek
`e)
`immediate injunctive relief to prevent an irreparable harm that will be prejudiced by
`the delay envisioned in this Paragraph. However, if a PARTY institutes any action and
`does not, within two (2) business days file for a Temporary Restraining Order or any
`other type of immediate injunctive relief, said PARTY shall be in breach of this Notice
`Provision and Paragraph. A finding by a court that a motion for immediate injunctive
`relief is filed in bad faith shall be considered a breach of the notice provision and
`subject the party moving for immediate injunctive relief to the provisions of Paragraph
`12(c).
`
`KRAMER shall have the right, but not the obligation, to provide modified
`f)
`versions of the KRAMER FLOOR TRAY PRODUCT to MacNeil’s designated
`counsel for confidential review. Within 30 days of receiving a request for review,
`MACNEIL’S counsel shall provide a notice letter pursuant to the provisions of this
`Paragraph 12 to KRAMER and identify any intellectual property rights of MACNEIL
`believed to be infringed. MACNEIL’s counsel may confer with one MACNEIL
`corporate representative regarding the product and opinion, which information the
`corporate representative will maintain in confidence until the information is made
`public by KRAMER. KRAMER shall pay $5,000 to a representative that MACNEIL
`designates within 15 days of the request for review for each review requested.
`
`
`SELLOFF OF KRAMER PREMODIFICATION FLOOR TRAYS. KRAMER has
`13.
`informed MACNEIL that it has an existing stock of KRAMER PREMODIFICATION
`FLOOR TRAYS. KRAMER has set forth a comprehensive listing of this stock, by part
`number and number of trays, on Exhibit E. The PARTIES agree that KRAMER shall be
`allowed to sell these existing KRAMER PREMODIFICATION FLOOR TRAYS for a period
`of 18 months directly and immediately following the EFFECTIVE DATE of this
`AGREEMENT, without further compensation to MACNEIL, and that if so sold within this
`period, MACNEIL will not enforce any MACNEIL FLOOR TRAY PATENT or the
`MACNEIL TRADE DRESS against any proximate or remote purchaser of such existing
`KRAMER PREMODIFICATION FLOOR TRAYS. After that time period, KRAMER and/or
`VANDAPAC shall destroy any unsold KRAMER PREMODIFICATION FLOOR TRAYS
`and provide MACNEIL with an accounting of which KRAMER PREMODIFICATION
`FLOOR TRAYS have been sold and which have been destroyed. MACNEIL may ask for
`further information regarding this accounting and KRAMER and VANDAPAC shall provide
`MACNEIL with reasonable information and documents related to this Paragraph. Upon the
`signing of this AGREEMENT, VANDAPAC and KRAMER, and any of their AFFILIATES
`or those acting in concert with them, shall immediately cease and desist from the manufacture
`(or ordering or directing the manufacture) of any KRAMER PREMODIFICATION FLOOR
`
`
`
`-5-
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 5
`
`

`

`TRAY. Aside from the existing stock of KRAMER PREMODIFICATION FLOOR TRAYS
`as set forth in Exhibit E, VANDAPAC and KRAMER, and any of their AFFILIATES or those
`acting
`in concert with
`them, shall not market or sell any other KRAMER
`PREMODIFICATION FLOOR TRAYS for any reason whatsoever.
`
`
`ARTICLE III - PAYMENT
`
`
`KRAMER Payment. In consideration of the license and covenants not to sue granted
`14.
`herein and in settlement of MACNEIL’s claims for damages for infringement by KRAMER
`and VANDAPAC of the ASSERTED MACNEIL PATENTS and of the MACNEIL TRADE
`DRESS prior to the EFFECTIVE DATE, KRAMER agrees to pay to MACNEIL an initial
`payment of ONE HUNDRED AND FIFTY THOUSAND U.S. dollars (US$150,000) in three
`monthly installments to be completed by prior to April 30, 2015, and then another seven (7)
`annual payments of FIFTY THOUSAND U.S. dollars (US$50,000) each prior to December
`31, 2015, 2016, 2017, 2018, 2019, 2020, and 2021 respectively. The total of all payments after
`the last payment is made prior to November 20, 2021 will be FIVE HUNDRED THOUSAND
`U.S. dollars (US$500,000).
`
`
`ARTICLE IV - WARRANTIES AND INDEMNIFICATION
`
`
`15. MACNEIL Warranty re Ownership. MACNEIL warrants that it and its AFFILIATES
`are the sole owners of the MACNEIL FLOOR TRAY PATENTS and the MACNEIL TRADE
`DRESS and that it has the right and power to (i) enter into this AGREEMENT, (ii) grant the
`covenants, licenses, and releases contained herein, and (iii) bind its AFFILIATES to the terms
`of this AGREEMENT.
`
`16. MACNEIL Liability. MACNEIL shall have no liability for any loss, expense or
`damage, arising from any infringement action or other allegation by a third party relating to
`the use by KRAMER, VANDAPAC or any of their AFFILIATES with regard to any
`VANDAPAC or KRAMER product whatsoever.
`
`
`ARTICLE V - THE LITIGATION
`
`
`17. MACNEIL’S DISCHARGE AND RELEASE. Effective upon signing of this
`AGREEMENT by David MacNeil of MACNEIL, Salvador Lairet of KRAMER, and Vatana
`Tangitvet of VANDAPAC, MACNEIL will release, acquit, and forever discharge KRAMER,
`VANDAPAC and their AFFILIATES, officers, directors, partners, subsidiaries, employees,
`agents; and attorneys, and its successors or assigns, from any and all existing, known and
`unknown claims subject only to the conditions and exceptions set forth herein.
`
`KRAMER AND VANDAPAC’S DISCHARGE AND RELEASE. Effective upon
`18.
`signing of this AGREEMENT by David MacNeil of MACNEIL, Salvador Lairet of
`KRAMER, and Vatana Tangitvet of VANDAPAC, KRAMER and VANDAPAC will release,
`acquit, and forever discharge MACNEIL and its AFFILIATES, officers, directors, partners,
`
`
`
`-6-
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 6
`
`

`

`subsidiaries, employees, agents, and attorneys, and its successors or assigns, from any and all
`existing, known and unknown, claims subject only to the conditions and exceptions set forth
`herein.
`
`Resolution of all claims asserted in THE LITIGATION. The PARTIES agree that
`19.
`within ten (10) business days after signing of this AGREEMENT by the PARTIES, the
`PARTIES will submit to the Court in THE LITIGATION a dismissal of the PARTIES’ claims
`and counterclaims with prejudice subject only to the terms of this AGREEMENT. The
`PARTIES shall each bear their own attorney fees and costs related to THE LITIGATION and
`this AGREEMENT.
`
`
`ARTICLE VII - INTEGRATION AND WAIVER
`
`
`Entire Agreement. This AGREEMENT shall constitute the entire agreement between
`20.
`the PARTIES hereto with respect to the subject matter hereof, and shall supersede all previous
`negotiations, commitments and writings. It shall not be modified or altered in any manner
`except by an instrument in writing executed by the PARTIES hereto. For clarification, the
`subject matter of this AGREEMENT does not encompass, alter, modify or otherwise impact
`in any manner, negotiations, commitments and writings exclusively between KRAMER and
`VANDAPAC.
`
`Failure to Enforce Not a Waiver. The failure of any PARTY hereto to enforce at any
`21.
`time the provisions of this AGREEMENT shall in no way be construed to be a waiver of such
`provisions, nor in any way to affect the validity of this AGREEMENT or any part thereof, or
`the right of any PARTY to thereafter enforce each and every such provision.
`
`One Waiver is Not Future Waiver. No waiver of any breach of this AGREEMENT
`22.
`shall be held to be a waiver of any other or subsequent breach. All remedies afforded in this
`AGREEMENT shall 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 not,
`23.
`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 substantially all of
`the assets of the business of THE PARTIES or their AFFILIATES to which this
`AGREEMENT relates.
`
`
`ARTICLE IX - CONFIDENTIALITY
`
`
`Confidentiality Obligations. THE PARTIES agree that they will treat the terms,
`24.
`conditions and any information about this AGREEMENT as confidential information and will
`not disclose such information to any third party. Notwithstanding the foregoing, THE
`
`
`
`-7-
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 7
`
`

`

`PARTIES need not treat as confidential the fact that they have reached a resolution of the
`LITIGATION.
`
`Subpoena. In the event that PARTIES and/or any of their representatives who have
`25.
`knowledge of or access to the confidential terms and conditions of this AGREEMENT,
`becomes legally compelled (as a result of legally required oral questions, interrogatories,
`requests for information or documents, subpoena, civil or criminal investigative demand or
`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 information
`so that either may seek a protective order or other promptly sought relief. In any event, the
`subpoenaed PARTY and/or its representatives, including, without limitations, its attorneys,
`will: (i) furnish only that portion of the information which is legally required; (ii) provide the
`other PARTY and its counsel an opportunity to review the contents of any such disclosure;
`and (iii) exercise its best efforts to obtain reliable assurance that confidential treatment will be
`accorded to the confidential terms and conditions of this AGREEMENT. In the event that
`such protective order or other judicial remedy is not promptly sought by the PARTIES, the
`said party waives compliance with the provisions of this AGREEMENT.
`
`
`ARTICLE X - NOTICES
`
`
`Notices to Parties. All notices required or permitted to be given under this
`26.
`AGREEMENT shall be in writing and shall be deemed to be properly given if sent by
`registered air courier to the PARTY entitled to receive such notice at the address herein below
`set forth or in accordance with the last written instructions received from such PARTY
`concerning the mailing address to be used for such notices. The date of the notice shall be the
`date shown on the postmark if the same shall be sent by mail:
`
`As to MacNeil Automotive Products Limited and MacNeil IP, LLC:
`
`
`David MacNeil
`MacNeil Automotive Products Limited
`1 MacNeil Court
`Bolingbrook, Illinois 60440
`
`With a copy to:
`
`Timothy M. Schaum, Esq.
`Daspin &Aument, LLP
`227 West Monroe, Suite 3500
`Chicago, Illinois 60606
`
`-8-
`
`
`
`
`
`
`
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 8
`
`

`

`As to Kramer America, Inc.
`
`Salvador Lairet
`Kramer America, Inc.
`3763 Mercy Star Court
`Orlando, FL 32808
`
`With a copy to:
`
`Jeffrey S. Boyles, Esq.
`Allen, Dyer, Doppelt,
` Milbrath & Gilchrist, P.A.
`255 S. Orange Avenue, Suite 1401
`Orlando, FL 32801
`
`
`As to Vandapac Company Limited
`
`
`Vandapac Company Limited
`93 Moo 15 Kingkaew Rd,
`Samut Prakarn, 10540, Thailand
`
`With a copy to:
`
`Jeffrey S. Boyles, Esq.
`Allen, Dyer, Doppelt,
` Milbrath & Gilchrist, P.A.
`255 S. Orange Avenue, Suite 1401
`Orlando, FL 32801
`
`
`
`
`
`ARTICLE XI- GOVERNING LAW
`
`
`Governing Law. The interpretation, validity, and performance of this AGREEMENT
`27.
`shall 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 XII- RESOLUTION OF DISPUTES
`
`
`Dispute Resolution. Unless otherwise provided in this Agreement, all disputes arising
`28.
`out of or in connection with this AGREEMENT, which cannot be settled by mutual agreement
`of the PARTIES and in accordance with paragraph 12, shall be litigated in the United States
`District Court for the Northern District of Illinois or in any appropriate Illinois state court.
`
`Jurisdiction. The PARTIES agree to submit to the personal jurisdiction of the United
`29.
`States District Court for the Northern District of Illinois in connection with the resolution of
`
`
`
`-9-
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 9
`
`

`

`any dispute arising out of this AGREEMENT. VANDAPAC and KRAMER do not consent to
`jurisdiction for any claims not arising out of this AGREEMENT.
`
`Attorney Fees and Costs. In the event of a dispute involving an alleged breach of this
`30.
`AGREEMENT, the prevailing party shall be entitled to its reasonable attorney fees and costs,
`including on appeal, from the party found in breach, in addition to any such other relief
`ordered as a result of the breach.
`
`
`ARTICLE XIII- SEVERABILITY
`
`
`Invalid Provisions. In case one or more of the provisions contained in this
`31.
`AGREEMENT shall, for any reason, be held to be invalid, illegal, or unenforceable in any
`respect, such invalidity, illegality, or unenforceability shall not affect any other provision of
`this AGREEMENT and this AGREEMENT shall be construed as if such invalid, illegal or
`unenforceable provision had never been contained herein.
`
`Headings. The headings of the sections of this AGREEMENT are for convenience
`32.
`only and shall not have any legal effect.
`
`Facsimile and Portable Document Format. Facsimile signatures and electronic or
`33.
`Portable Document Format (PDF) signatures shall be deemed to constitute original signatures.
`
`
`the PARTIES hereto has caused
`
`this
`
`IN WITNESS WHEREOF, each of
`AGREEMENT to be du1y executed in duplicate.
`
`Agreed:
`
`Kramer America, Inc.
`
` MacNeil Automotive Products Limited
`
`
` By:
` Print Name: David F. MacNeil
`
` Title:
`
` Date:
`
`Salvador Lairet
`
`
`By:
`Print Name:
`Title:
`
`Date:
`
`
`
`Vandapac Company Limited
`
`
`By:
`Print Name: Vatana Tangitvet
`Title:
`
`Date:
`
`
`
`
`-10-
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 10
`
`

`

`any dispute arising out of this AGREEMENT. VANDAPAC and KRAMERdonotconsentto
`jurisdiction for any claims notarising out of this AGREEMENT.
`
`In the event of a dispute involving an alleged breach of this
`Attorney Fees and Costs.
`30.
`AGREEMENT,the prevailing party shall be entitled to its reasonable attorney fees and costs,
`including on appeal, from the party found in breach,
`in addition to any such other relief
`ordered as a result of the breach.
`
`ARTICLE XUl- SEVERABILITY
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 11
`
`

`

`strationdAopineerinnsneeaceite “
`
`
`nentNAMESESSAetanestheonootennemssee,
`
`any dispute arising out of this AGREEMENT. VANDAPAC and KRAMERdo not consentto
`Jurisdiction for any claims not arising out of this AGREEMENT.
`
`
`In the event of a dispute involying an alleged breach ofthis
`AttorneyFeesandCosts.
`30,
`
`
`AGREEMENT, the prevailing party shall be entitled to its reasonable attorney fees andcosts,
`including on appeal, from ihe party found in breach,
`in addition to any such other relief
`
`
`
`Facsimile signatures and
`
` slectronmic oF
`
`a
`signal
`fe
`oF
`
`
`one or more of
`this
` provisions contamed in_
`
`
`. be held to |
`il, or unenforceable tn any
`
`fect anv other provision of
`
`
`
`invalid
`AGREEMENT are for convenience Onby a
`COT
`
`
`
`
`
`
`
`
`
`
`
`MacNeil Exhibit 2051
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 12
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 12
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`MacNeil Exhibit 2051
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 13
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 13
`
`

`

`
`
`MacNeil Exhibit 2051
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 14
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 14
`
`

`

`EXHIBIT B
`EXHIBIT B
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`MacNeil Exhibit 2051
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 15
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 15
`
`

`

`
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 16
`
`

`

`EXHIBIT C
`EXHIBIT C
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`MacNeil Exhibit 2051
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 17
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 17
`
`

`

`
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 18
`
`

`

`
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 19
`
`

`

`Page 20
`
`25>. MacNeil Exhibit 2051
`Yita v. MacNeil IP,.IPR2020-01139
`high ig ek
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 20
`
`

`

`2 Times af
`
`neee ;
`Se ol
`'
`: ee 3
`f
`:
`MacNeil Exhibit 2051 ~ -
`he
`=
`Yita v. MacNeil IP, |PR2020-01139 :
`LL poe
`tae ee
`aT
`be
`i
`let
`-
`aa
`av
`
`f a ati
`aan! Se F
`:
`anal
`
`gE
`
`:
`
`oa:
`
`T7
`
`ri
`
`i
`
`;
`
`i
`
`,
`
`1
`Backs St
`ot
`te!
`Pe a
`Po
`He ae
`-
`is
`hae
`tat | Ma i ea
`Pe
`AES
`ep
`dere
`er
`He
`edie ae ee ati
`EOE
`elo
`;
`
`i
`
`‘a
`
`Lvs
`
`Ay
`
`,
`
`A
`Bl
`
`|
`
`:
`
`’
`
`an
`‘
`:
`
`'
`
`-
`
`4
`
`;
`
`.
`
`
`
`.
`
`¥
`
`t
`
`i
`
`'
`
`1a
`
`j
`
`i
`
`1
`
`r
`
`.
`.
`
`I
`
`t
`
`eat
`‘
`i
`a i
`
`i
`
`i
`
`‘
`
`r
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 21
`
`

`

`yer MacNeil Exhibit 2051
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 22
`
`hi
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 22
`
`

`

`Sereaad
`
`* a Ep ans
`4
`ae ee onea anne aS ae a
`- ereoa Serkan Se Seid a
`aseMa foBet8 aye ed
`eeleah enTTemailer de Pd th teal
`ae aaa SE aaalhl Pe ily
`ee
`rise
`toes
`: Stes ie
`as aS eat
`sa aR SE
`one
`FE
`th
`i
`“EA
`:
`oe
`1
`Cat
`-
`1
`.
`ci ia Titer ce iad
`a:
`Prare
`‘
`5
`Ha
`ite? =
`Pieri
`aid
`ie PeeanhemE SeTcaia eeiee
`rb
`1
`papermericty Searade
`a
`ener)
`i
`F ere cer
`peter
`t
`hie
`Tun
`ey
`are
`.
`
`- Ha. J z
`
`i Seana!a
`
`a
`
`aei
`= aa
`
`c
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 23
`
`

`

`ha
`
`
`:
`
`:
`—
`
`= a"
`Pineal
`= et eT
`
`
`2 oerde
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 24
`
`

`

`EXHIBIT D
`EXHIBIT D
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`MacNeil Exhibit 2051
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 25
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 25
`
`

`

`MACNEIL TRADEMARKS
`
`ABSOLUTEINTERIOR PRO-
`TECTION™
`AVM®
`
`AIRCUSHION™
`
`BUMPERFRAME™
`
`
`Fi CLEARCOVER?
`CROSS-LINK ACTION™
`DIGITAL FIT®
`
`FLOWTHRU™
`GENTLE CAR™
`
`MACNEIL AUTOMOTIVE
`MACNEIL AUTOMOTIVE™
`PRODUCTSLIMITED &
`
`DESIGN®
`
`
`
`
`ROLL AND WRAP™
`TECHFRAME™
`
`(Registration Pending
`
`TECHRACK™
`
`(Registration Pending)
`TWOSHOT™
`
`
`MULTI-FLEX™
`PLATESPACER™
`(Registration Pending)
`QUICKTURN™
`
`MATGRIP®
`
`PERFECTDIGITAL FIT®
`QUADHANGER™
`
`RACKSACK®
`
`SPOTTECH™
`TECHGRIP™
`(Registration pending)
`TECHSHADE®
`
`UNDERLINER™
`(Registration pending)
`
`MATHANGER™
`
`PETSTEP®
`QUICKSNAP™
`
`MOUNTS-IN-MINUTES™
`
`PLATEFRAME®
`QUICKTECH™
`
`REAR OVER THE HUMP
`FLOORLINER & DESIGN?
`
`REAR OVER THE HUMP™
`
`TECHCARE®
`TECHLINER®
`
`TRACTIONSQUARES™
`
`WEATHERTECH TF®
`
`TECHFLOOR™
`TECHNO FLEX™
`
`
`
`WEATHERTECH®
`
`
`
`
`
`ALL VEHICLE MAT™
`
`BUMPSTEP™(Registration
`pending)
`CLEARFRAME™
`EASY-ON®
`LAMPGARD®
`MACNEIL®
`
`LET THE FRESHAIR IN®
`MAGICLIP™
`
`AREATILE™
`(Registration Pending)
`CARGOTECH™
`(Registration pending)
`
`CLICK AND STAY?
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`KRAMER/VANDAPAC TRADEMARKS
`
`MAXLINER
`
`MAXTRAY
`
`MAXFLOORMAT
`
`KRAMER
`
`MacNeil Exhibit 2051
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 26
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 26
`
`

`

`EXHIBIT E
`EXHIBIT E
`
`
`
`
`
`MacNeil Exhibit 2051
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 27
`
`MacNeil Exhibit 2051
`Yita v. MacNeil IP, IPR2020-01139
`Page 27
`
`

`

`IN STOCK
`PART NUMBER
`A0012 (MAXFLOORMAT Floor Mats for Toyota Corolla (2009-2013) First Row Set (Black))
`A0015 (MAXFLOORMAT Floor Mats for Silverado / Sierra / Tahoe / Suburban / Yukon (...
`A0017 (MAXFLOORMAT Floor Mats for Ford F-150 (All Models) (2009-2010) First Row S...
`A0019 (MAXFLOORMAT Floor Mats for Toyota RAV4 (2006-2012) First Row Set (Black))
`A0021 (MAXFLOORMAT Floor Mats for Honda CR-V (2007-2011) First Row Set (Black))
`A0022 (MAXFLOORMAT Floor Mats for Toyota Tundra (All Models) (2007-2011) First Ro...
`A0033 (MAXFLOORMAT Floor Mats for Toyota Tacoma (All Models) (2005-2011) First Ro...
`A0036 (MAXFLOORMAT Floor Mats for Honda Pilot (2009-2013) First Row Set (Black))
`A0037 (MAXFLOORMAT Floor Mats for Toyota Highlander Hybrid (2008-2013) First Row ...
`A0038 (MAXFLOORMAT Floor Mats for Toyota Highlander Non Hybrid (2008-2013) First ...
`A0040 (MAXFLOORMAT Floor Mats for Toyota 4runner (2010-2012) / Lexus GX (2010-201...
`A0042 (MAXFLOORMAT Floor Mats for Ford F-250 / F-350 (All Models Depressed Pedal)...
`A0043 (MAXFLOORMAT Floor Mats for Traverse / Enclave / Acadia / Outlook (2007-201...
`A0047 (MAXFLOORMAT Floor Mats for Dodge RAM All Models (2009-2012) First Row Set ...
`A0049 (MAXFLOORMAT Floor Mats for Lexus RX (2010-2012) First Row Set (Black))
`A0050 (MAXFLOORMAT Floor Mats for Nissan Rogue (2008-2013) First Row Set (Black))
`A0052 (MAXFLOORMAT Floor Mats for Toyota Venza (2009-2011) First Row Set (Black))
`A0055 (MAXFLOORMAT Floor Mats for Nissan Murano (2009-2014) First Row Set (Black))
`A0056 (MAXFLOORMAT Floor Mats for Kia Sportage (2011-2013) / Hyundai Tucson (2010...
`A0070 (MAXFLOORMAT Floor Mats for Chevrolet Equinox / GMC Terrain (2010-2014) Fir...
`A0071 (MAXFLOORMAT Floor