This excerpt taken from the GMCR 10-K filed Dec 11, 2008.
NOW THEREFORE, in consideration of the promises and the mutual covenants hereinafter recited, KEURIG and KRAFT agree as follows:
(a) EFFECTIVE DATE as used herein shall mean the last date of signature appearing on this AGREEMENT.
(b) PARTY as used herein shall mean each of KEURIG and KRAFT.
(c) AFFILIATES as used herein shall mean any present or future domestic or foreign corporation, company or other entity that (i) is owned or controlled, directly or indirectly, by a PARTY; or (ii) owns or controls a PARTY (either directly or indirectly); or (iii) is under common ownership or control with a PARTY. For the purposes of the definition of AFFILIATES, the phrases owned, owns, ownership, controlled, controls and control mean (a) in the case of a corporation or company: owning or controlling, directly or indirectly, at least twenty percent (20%) (by nominal value or number of units) of the outstanding shares or securities conferring the right to vote at general meetings; and (b) in the case of a partnership, joint venture, unincorporated corporation or other entity that does not have outstanding shares or securities: having more than a twenty percent (20%) ownership interest representing the right to make the decisions for such partnership, joint venture, unincorporated corporation or other entity or having a fifty percent (50%) or more ownership although not necessarily having control over the decisions of such partnership, joint venture, unincorporated corporation or other entity.
(d) KRAFT as used herein shall mean KFG, TASSIMO CORP., KRAFT FOODS and their parents, subsidiaries and AFFILIATES worldwide.
(e) KEURIG as used herein shall mean Keurig, Incorporated and its parent, subsidiaries and AFFILIATES worldwide.
(f) LICENSED PATENTS as used herein shall mean the 762 PATENT, the 162 PATENT and foreign counterparts of the 762 PATENT and the 162 PATENT and any parent, divisional, continuation, continuation-in-part, reissue, reexamined patent, registration, renewal, extension of the 762 PATENT, 162 PATENT or foreign counterparts thereof.
(g) LICENSED PRODUCTS as used herein means beverage filter cartridges and all beverage brewing machines made, used, offered for sale, sold, otherwise distributed, kept, imported or exported anywhere in the world that KEURIG contends would directly or indirectly infringe at least one claim of at least one LICENSED PATENT in the absence of a license under this AGREEMENT, provided that said beverage filter cartridges are physically compatible for use with the piercing unit in the brew head in beverage brewing machines sold under the Tassimo mark on or before the EFFECTIVE DATE (EXISTING BREWER) or physically compatible for use with the piercing unit retrofitted in the brew head in an EXISTING BREWER after the EFFECTIVE DATE, provided, further, however, and notwithstanding any provision in this AGREEMENT to the contrary, LICENSED PRODUCTS shall not include beverage filter cartridges that KRAFT or a third party on behalf of KRAFT designed to work or intended for use with the
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piercing unit of a beverage brewing machine first offered for sale by, for or under license (other than the license granted hereunder) from or to KEURIG after the EFFECTIVE DATE (each a NEXT GEN KEURIG BREWER), the piercing unit of such NEXT GEN KEURIG BREWER, itself not having been copied or derived from a beverage brewing machine designed by KRAFT, or a party on behalf of KRAFT, and offered for sale prior to the date on which such NEXT GEN KEURIG BREWER is first offered for sale. A beverage filter cartridge that would be compatible for use with the original or retrofitted piercing unit in the brew head of an EXISTING BREWER but for the dimensions of the cartridge shall be a LICENSED PRODUCT. For purposes of clarity, and not to limit the foregoing, the fact that a replacement part, insert or adaptor is used in the brew head to accommodate the beverage filter cartridge shall not render the beverage filter cartridge incompatible for use with the piercing unit in the brew head. Furthermore, the fact that a beverage filter cartridge is incompatible for use in an EXISTING BREWER for a reason other than its incompatibility for use with the original or retrofitted piercing unit in the brew head of an EXISTING BREWER shall not exclude it from being a LICENSED PRODUCT. In this clause the term a party on behalf of KRAFT shall include any party that has licensed, assigned or otherwise transferred the relevant design to KRAFT.
2. Payment. Within ten (10) business days of the EFFECTIVE DATE, KRAFT shall pay Seventeen Million U.S. Dollars ($17,000,000.00) to KEURIG. Payment shall be wired to Bank of America, 100 Federal Street, Boston, MA 02110 (ABA Number 026009593, SWIFT # BOFAUS3N), Account Number 003880245710 (Keurig, Inc.).
3. Non-Exclusive License. KEURIG grants to KRAFT an irrevocable, non-exclusive, fully paid-up, worldwide license (LICENSE) under the LICENSED PATENTS to make, have made, use, keep, offer for sale, sell, otherwise directly or indirectly distribute, import or export anywhere in the world LICENSED PRODUCTS. The LICENSE grant herein includes the right to sub-license rights conveyed under this AGREEMENT to permit other parties to make, use, keep, offer to sell, sell, otherwise distribute, import or export LICENSED PRODUCTS made, sold, distributed, imported or exported anywhere in the world by or for KRAFT. Furthermore, the LICENSE grant herein includes the right for KRAFT to sub-license manufacturers of brewers for the limited purpose of making, using, keeping, offering to sell, selling, distributing, importing and exporting anywhere in the world brewers for use with KRAFTs LICENSED PRODUCTS. KRAFT otherwise may not sub-license its rights under this AGREEMENT without KEURIGs written consent. This LICENSE shall end on the date upon which the last of the patents licensed hereunder expires. Those terms and conditions of the LICENSE intended to be observed and performed by one or more PARTIES after termination or expiration of the LICENSE, for any reason, shall so survive and continue.
4. Patent Validity and Enforceability. Nothing herein is an admission nor shall be deemed an admission by KRAFT that any KRAFT product infringes the LICENSED PATENTS or that the LICENSED PATENTS are valid or enforceable.
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5. Patent Marking. Within one hundred and eighty (180) days of the EFFECTIVE DATE, Kraft shall begin marking LICENSED PRODUCTS in accordance with 35 U.S.C. § 287 as follows:
(a) The packaging of single-serve beverage filter cartridges shall be marked as covered by the 762 PATENT.
(b) The packaging of brewing machines sold by KRAFT having float-disk sensors shall be marked as covered by the 162 PATENT. To the extent that LICENSED brewing machines are manufactured by entities other than KRAFT, KRAFT shall make its best efforts to have such entities comply with the foregoing patent marking requirements.
6. No Warranty or Obligation. Nothing contained in this AGREEMENT shall be construed as:
(a) a warranty or representation that commercialization of LICENSED PRODUCTS will be free of infringement of third party patents;
(b) an obligation or agreement on the part of KEURIG to sue third parties for infringement of KEURIG patents; or
(c) an obligation on the part of KEURIG to pursue, maintain, prosecute or take any other action in connection with any patents or patent rights anywhere in the world.
7. Indemnification. KRAFT shall be responsible for all personal injury, property damage and warranty claims caused by any and all LICENSED PRODUCTS.
8. Dismissal of the Lawsuit. Within ten (10) business days of the EFFECTIVE DATE, the PARTIES will execute and file with the United States District Court for the District of Delaware a Stipulation of Dismissal With Prejudice in the form attached hereto as Exhibit A.
9. Binding of Successors and Assigns. This AGREEMENT, and the duties and obligations herein, shall be binding upon KRAFT and KEURIG and/or any and all of their respective AFFILIATES, successors and assigns.