Translation
`
`Settlement Transcript
`
`
`
`Appellant, i.e. appellee Kinik Company
`
`Address: 64 Zhongzheng Road, Yingge District, New Taipei City
`
`Legal Representative
`
`Bob LIN
`
`Agent ad-litem
`
`Anna HWANG, Attorney-at-Law
`
`Address: Same as above
`
`Agent
`
`Da-Fa FENG, Attorney-at-Law
`
`Robert LEE, Attorney-at-Law
`
`William LI, General Manager
`
`Address: 64 Zhongzheng Road, Yingge District, New Taipei City
`
`Thomas HSIEH, CEO
`
`Address: Same as above
`
`Chester LIN, Special Assistant
`
`Address: Same as above
`
`Chien-Min SUNG
`
`Address: 4 Lane 32, Zhongzheng Road, Danshui District, New Taipei
`
`Appellee, i.e.
`
`Appellant
`
`Agent ad-litem
`
`Jeh-Ping CHANG, Attorney-at-Law
`
`City
`
`
`
`2019
`in
`patents
`of
`ownership
`of
`confirmation
`for
`appeal
`of
`the matter
`In
`Min-Zhuan-Shang-Geng-(I)-Zi No.8 (against the judgment 2013 Min-Zhuan-Su-Zi No.104 dated 29
`
`July 2016 by this Court), the parties have reached a settlement in the Third Courtroom of this Court at
`
`2:30 p.m. on 13 August 2021. Below is the summary of the settlement:
`
`
`
`Officials present at the hearing:
`
`Commissioned judge
`
`Ru-Chi TSAI
`
`Court Clerk
`
`Interpreter
`
`
`
`
`
`
`
`
`
`Yu-Ting CHIU
`
`Hong-Hsuan HSIA
`
`
`
`Related parties present at the settlement hearing:
`
`Anna HWANG, Attorney-at-law, agent for Kinik Company
`
`Robert LEE, Attorney-at-law, agent for Kinik Company
`
`Da-Fa FENG, Attorney-at-law, agent for Kinik Company
`
`Jeh-Ping CHANG, Attorney-at-law, agent for Chien-Min SUNG
`
`
`
`Terms of Settlement:
`
`Article 1. With regard to the patent rights listed in Schedule 1, the parties hereby agree:
`
`Page 1 of 10
`
`KINIK EXHIBIT 1030
`
`

`

`Translation
`
`1. Chien-Min Sung ("Sung") shall assign free of royalties and register those patent rights to
`
`Kinik Company ("Kinik"), and deliver the consent on patent assignment and other
`
`necessary documents to Kinik during the court hearing.
`
`2.
`
`For purpose of completing the assignment and registration in the preceding paragraph,
`
`Sung shall, upon Kinik's request, furnish necessary assistances and sign necessary
`
`documents.
`
`3. Kinik and its licensees shall not, based on the patent rights listed in Schedule 1, claim
`
`against Sung and his licensees (as named in Schedule 4) of the patents listed in Schedule 1.
`
`For those patents with Kinik as the sole or a joint inventor or applicant that are in any of
`
`the following circumstances, even if they are not listed in Schedule 1, Knik and its
`
`licensees shall not claim against Sung and his licensees (as named in Schedule 4) of the
`
`patents listed in Schedule 1: (1) patents which claim priority based on, or cite as prior arts,
`
`or are counterparts of, any patent rights listed in Schedules 1 to 3; or (2) continuation
`
`applications, continuation-in-part applications, divisional applications, provisional
`
`applications, reissues, extensions, substitutions, renewals, oppositions, reexaminations,
`
`supplemental examinations, requests for continued examination and other examination
`
`procedures on the basis of any patent right listed in Schedules 1 to 3.
`
`Article 2. With regard to the patent rights listed in Schedule 2, the parties hereby agree:
`
`1. Kinik will not assert ownership to those patents and, in respect of five of those patents,
`
`agrees to sign a document entitled "U.S. PATENT ASSIGNMENT" (the photocopy thereof
`
`in Schedule 9) without prejudice to Kinik's rights under this settlement transcript.
`
`2.
`
`For patents listed in Schedule 2, Sung agrees to grant a royalty-free, perpetual (but not
`
`beyond the life of the respective patents), irrevocable and nonexclusive license to Kinik for
`
`practice. The scope of the license includes the entire and maximum territory where the
`
`respective patents may be asserted and all their claims, and all acts of practice as defined in
`
`the patent laws of the countries wherein the respective patents are issued. Sung further
`
`agrees Kinik may unilaterally use this settlement transcript to apply for registration of the
`
`said license to the competent authorities of the countries wherein the respective patents are
`
`issued.
`
`3.
`
`For patents which are registered to Applied Diamond Inc., Sung shall be responsible to
`
`obtain the consent letter issued by the said company agreeing to the following, and deliver
`
`the said letters to Kinik during the court hearing, and shall: (1) agree to license Kinik the
`
`right to practice these patents on the conditions stated in Paragraph 2 of this Article, and
`
`not to claim against Kinik based on these patents, or assert to any person that Kinik's
`
`diamond disc products have infringed the patent rights in Schedule 2; and (2) agree that
`
`Kinik may unilaterally use this settlement transcript and the said consent letters to apply for
`
`registration of the said license of these patents to the competent authorities of the countries
`
`wherein these patents are issued.
`
`4.
`
`For purpose of completing the registration of license in the preceding paragraph, Sung shall,
`
`upon Kinik's request, furnish necessary assistances and sign necessary documents.
`
`Page 2 of 10
`
`KINIK EXHIBIT 1030
`
`

`

`Translation
`
`5.
`
`Sung's licensees shall not, based on the patent rights listed in Schedule 2, claim against
`
`Kinik, or assert to any person that Kinik's diamond disc products have infringed the patent
`
`rights in Schedule 2. For those patents with Sung as the sole or a joint inventor or applicant
`
`that are in any of the following circumstances, even if they are not listed in Schedule 2, the
`
`same shall apply: (1) patents which claim priority based on, or cite as prior arts, or are
`
`counterparts of, any patent rights listed in Schedules 1 to 3; or (2) continuation applications,
`
`continuation-in-part applications, divisional applications, provisional applications, reissues,
`
`extensions,
`
`substitutions,
`
`renewals,
`
`oppositions,
`
`reexaminations,
`
`supplemental
`
`examinations, requests for continued examination and other examination procedures on the
`
`basis of any patent right listed in Schedules 1 to 3.
`
`Article 3. With regard to the patents and patent applications listed in Schedule 3, the parties hereby
`
`agree:
`
`1.
`
`Sung shall refrain from performing any act that would change the current status or
`
`patentees or applicants of those patents.
`
`2. Article 2 shall apply to any of those patents which has already been or later becomes issued
`
`or reinstated.
`
`Article 4. Sung agrees not to claim against Kinik or its licensees for infringement of any patent in
`
`any country, whether or not the patent is listed in a Schedule to this settlement transcript,
`
`and regardless of by or to whom the patent is applied for and issued. Notwithstanding, if a
`
`situation under Article 6 of the MOU on Patent License dated 13 August 2021 arises, Sung
`
`may request Kinik to pay royalties based on the said MOU.
`
`Article 5. Kinik and Sung agree to instruct their respective US counsels to execute the documents as
`
`shown in Schedule 5-1 to conclusively dismiss the patent-related cases in the US, as listed
`
`in Schedule 5, and to submit the same respectively to the authority where each of the said
`
`cases is pending. Kinik and Sung agree to withdraw their respective complaints to dismiss
`
`and the cases pending at Taiwan's Supreme Court, as listed in Schedule 6, and shall each
`
`deliver the withdrawal papers and other necessary documents to the other party during the
`
`court hearing. Kinik and Sung agree to close the cases pending at this Court, as listed in
`
`Schedule 7, by way of a settlement in court in identical terms to this settlement transcript.
`
`For Kinik's lodged security bonds, as listed in Schedule 8, Sung hereby represents to waive
`
`his rights thereto, and hereby states that he agrees the court lodgement offices may return
`
`these lodged security bonds to Kinik. For purpose of completing such withdrawal and
`
`return of lodged security bonds, Sung shall, upon Kinik's request, furnish necessary
`
`assistances and sign necessary documents.
`
`Article 6. Kinik agrees to, on the same date the parties sign this settlement transcript, deliver to Sung
`
`a demand check in an amount of NTD 117,604,183 (having deducted 10% withholding
`
`income tax) in consideration of and in exchange for Sung's performance of his obligations
`
`under Articles 1 to 5.
`
`With Sung's agreement at the hearing, by signing here, Sung's agent ad-litem, Jeh-Ping
`
`Chang, Attorney-at-law, acknowledges the receipt thereof on Sung's behalf: [Signature of
`
`Jeh-Ping CHANG, Attorney-at-law, and SUNG]
`
`Page 3 of 10
`
`KINIK EXHIBIT 1030
`
`

`

`Translation
`
`Article 7. The parties will sign an MOU on Patent License concurrently when they sign this
`
`settlement transcript. In respect of such patents for which Kinik shall pay royalties based
`
`on the said MOU, the terms of license under the said MOU shall apply if and to the extent
`
`that they are different from those in this settlement transcript.
`
`Article 8. All other claims by the parties are abandoned.
`
`Article 9. Below are the Schedules to this settlement transcript:
`
`Schedule 1: List of assigned patents.
`
`Schedule 2: List of licensed patents.
`
`Schedule 3: List of other patents.
`
`Schedule 4: List of Sung's licensees.
`
`Schedule 5: List of patent-related cases in the US.
`
`Schedule 5-1: Dismissal papers of patent-related cases in the US.
`
`Schedule 6: List of cases pending at Taiwan's Supreme Court.
`
`Schedule 7: List of cases pending at this Court.
`
`Schedule 8: List of Kinik's lodged security bonds.
`
`Schedule 9: List and photocopies of documents to be delivered by either party during the
`
`court hearing.
`
`By signing here, the parties acknowledge receipt of the above Schedules at the hearing:
`
`[Signature of Anna HWANG, Attorney-at-law]
`
`After reviewing the above transcript, the parties signing below confirm the accuracy of the transcript:
`
`Agent ad-litem for Kinik Company: [Signature of Anna HWANG, Attorney-at-law]
`
`Agent ad-litem for Kinik Company: [Signature of Da-Fa FENG, Attorney-at-law]
`
`Agent ad-litem for Kinik Company: [Signature of Robert LEE, Attorney-at-law]
`
`Agent for Chien-Min SUNG: [Signature of Jeh-Ping CHANG, Attorney-at-law, and SUNG]
`
`First Intellectual Property Division, Intellectual Property and Commercial Court
`
`Page 4 of 10
`
`KINIK EXHIBIT 1030
`
`

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`Page 5 of 10
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`KINIK EXHIBIT 1030
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`Page 6 of 10
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`KINIK EXHIBIT 1030
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`Page 7 of 10
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`KINIK EXHIBIT 1030
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`Page 8 of 10
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`KINIK EXHIBIT 1030
`
`

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`Page 9 of 10
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`KINIK EXHIBIT 1030
`
`

`

`
`
`
`Date: August 23, 2021
`
`
`To whom it may concern:
`
`This is to certify that the attached translation from Chinese and into English is an accurate
`representation of the documents received by this office.
`
`The document is designated as:
`• Chinese Patent Number: TW 1417169 B
`
`
`Taylor Liff, Project Manager in this company, attests to the following:
`
` “I hereby certify under penalty of perjury under the laws of the United States of America that the
`aforementioned documents are a true, full and accurate translation of the specified documents. All
`statements made in this declaration of my own knowledge are true and all statements made on
`information and belief are believed to be true. I understand that willful false statements and the like are
`punishable by fine or imprisonment, or both (18 U.S.C. § 1001).”
`
`
`
`
`_________________________________
`Signature of Taylor Liff
`
`
`
`
`www.morningsideIP.com
`
`
` info@morningsideIP.com
`
`
`CERT-05, 2019-Mar-21, V2
`
`
`
` The Leader in Global IP Solutions
`
`Page 10 of 10
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`KINIK EXHIBIT 1030
`
`