Order No. 19 - ITC Law Blog

Transcription

PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.‘C.
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In the Matter of
CERTAIN FORMATTED MAGNETIC
DATA STORAGE TAPES_ANDY
CARTRIDGES CONTAINING THE SAlV[E
[nv_ No_337-1"A_931
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Order N0. 19: Initial Determination
On June 19, 2015, pursuant to Commission Rules 210.21(b), complainant Advanced
Research Corporation (“ARC” or “oomplainant”) and respondents FUJIFILM Holdings
Corporation; FUJIFILM Corporation; FUJIFILM Recording Media U.S.A., Inc.; Intemational
Business Machines Corporation; Oracle Corporation; and Oracle America, Inc. (collectively,
“respondents”) (all collectively, “private parties”) ﬁled a joint motion for termination of the
investigation based on a fmalized Settlement Agreement (Exhibit 1 to the motion). Motion
Docket No. 931-38. On June 26, 2015, the Commission Investigative Staff (“Staff”) ﬁled a
response supporting the motion.
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Commission Rule 210.21(a)(2) provides that “[a]ny party may move at any time to I
terminate an investigation in whole or in part as to any or all respondents on the basis of a
settlement, a licensing or other agreement . . . .” 19 C.F.R. § 210.2l(a)(2). Commission Rule
2 l 0.2 1(b)(1) provides in relevant part that “[a]n investigation before the Commission may be
terminated as to one or more respondents pursuant to section 337(0) of the Tariff Act of 1930 on
the basis of a licensing or other settlement agreement.” 19 C.F.R. § 2l0.21(b)(1).
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The pending motion complies with the Commission Rules, and is in the interest of public
policy. Pursuant to Commission Rule 21O.21(b), the movants state that “there are no other
agreements, written or oral, express or implied between the parties concerning the subject matter
of the investigation.” Mot. at 2. The movants further state that “[t]ermination of this
Investigation will conserve the Commission’s and private parties’ resources and therefore is in
the public interest.” Id. lt is argued: “The Private‘Parties further submit that tennination ofthis
investigation will not negatively impact the public health and Welfare, competitive conditions in
the United States economy, the production of like or directly competitive articles in the United
States, or United States consumers.” The Staff agrees. See Staff Resp. at 4.
i Accordingly, it is the initial detemiination of the undersigned that Motion No. 931-38 is
granted. This investigation is terminated in its entirety.
Pursuant to 19 C.F.R. § 2l0.42(h), this initial determination shall become the
determination of the Commission unless a party files a petition for review of the initial
determination pursuant to l9 C.F.R. § 2lO.43(a), or the Commission, pursuant to 19 C.F.R.
§ 210.44, orders on its own motion a review of the initial determination or certain issues
contained herein.
David P. Shaw
Administrative Law Judge
Issued: June 29, 2015
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PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMJVIISSION
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WASHINGTON, D.C.

Before The Honorable David P. Shaw
In the Matter of
DATA STORAGE TAPES AND
CARTRIDGES CONTAINING THE SAME
Investigation N0. 337-TA-931
JOINT MOTION TO TERMINATE THE INVESTIGATION
Complainant Advanced Research Corporation - (“Complainant”) and Respondents
FUHFILM Holdings Corporation, FUJIFILM'Corporation, FUJIFLLMRecording Media U.S.A.,
lnc., International Business Machines Corporation, Oracle Corporation, and Oracle America, Inc.
(collectively “Respondents”) (all collectively “Private Parties”) hereby jointly move to terminate
the above-captioned investigation pursuant to the provisions of l9 C.F.R. § 2l0.2l(b) and based
on the attached finalized Settlement Agreement (Exhibit l to this motion).
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Complainant and Respondents have satisfied the requirements of 19 C.F.R. § 2lO.21(b).
Regarding motions to terminate by entry of a settlement, Commission Rule 2l’0.2l(b)(l) states:
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An investigation before the Commission may be terminated as to
one or_more respondents pursuant to section 337(c) of the Tariff
Act of 1930 on the basis of a licensing or other settlement
agreement. A motion for termination by settlement shall contain
copies of the licensing or other settlement agreement, any
supplemental agreements, and a statement that there are no other
agreements, written or oral, express or implied between the parties
conceming the subject matter of the investigation. If the licensing
~ or other settlement agreement contains confidential business
infonnation Within the meaning of § 20l.6(a) of this chapter, a
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PUBLIC VERSION
copy of the agreement with such information deleted shall
accompany the motion. ,
The parties executed an amendment to the
Settlement Agreement on June l7, 2015 I
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butthe amendmentdid not changethe dateon whichthe partiesagreedto file
papers for the termination of the litigations between them. As such, the Settlement Agreement is
now final. Pursuant to Commission Rule 2lr0.2l(b)(l), the Private Parties state that there are no
other agreements, written or oral, express or‘implied between the parties concerning the subject
matter of the investigation. The Private Parties further certify that the Settlement Agreement
contains confidential business information within the meaning of § 20l.6(a); accordingly, a copy
of the agreement with such information deleted has been attached to this motion as Exhibit 2.
Termination of this Investigation will conserve the Commission’s and private parties’
resources and therefore is in the public interest. Certain DVD/CD Players and Recorders, Color
Television Receivers and Monitors, and Components Thereofi Inv. No. 337-TA-_542,Order No.
16, Initial Determination Granting Joint Motion to Terminate the Investigation Based on
Settlement Agreements, at 3 (December 21, 2005) (“[T]he public interest favors settlement to
avoid needless litigation and to conserve public and private resources”); see also, e.g., Certain
Equipment for Telecommunications or Data Communications Networks, Including Routers,
Switches, and Hubs, and Components Thereofi Inv. No. 337-TA‘-574, Order No. 27 at 4 (May 24,
2007) (“terrnination of litigation under these circumstances is generally in the public interest as
settlement avoids needless litigation and conserves public resources”); Certain Ink Cartridges
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PUBLIC VERSION
and Components Thereofl Inv. No. 337-TA-565, Order No. 59 at 2 (Nov. 9, 2Oll) (“Private
resolution of disputes is in the public interest because it conserves time and resources”).
The Private Parties further submit that termination of this investigation will not
negatively impact the public health and welfare, competitive conditions in the United States
economy, the production of like or directly competitive articles in the United States, or United
States consumers. See Certain Personal Computer/Consumer Electronic Convergent Devices,
Components Thereof and Products Containing Same, Inv. No. 337-TA-558, Order No. 10,
Initial Determination Granting Joint Motion of Complainant lntervideo'Digital Technology
Corp. and Respondent Winbook Computer Corp. to Terminate, at 4 (April 20, 2006) (citing 19
C.F.R. § 2lO.50(b)(2)).

The Private Parties respectfully request that the enclosed confidential Exhibit l and the
information bracketed in red in the instant motion be treated as confidential pursuant to the
Protective Order, and only be disclosed to the Commission, the"Administrative Law Judge, and
the Staff. Pursuant to Commission Rule 21O.21(b)(l), the Private Parties have provided a public
version with financial terms and other terms not relevant to the public redacted. The confidential
treatment requested by the parties is appropriate and consistent with Commission precedent and
the public interest, which favors settlement. See Certain Semiconductor Chips and Products
Containing the Same, Inv. No 337-TA-753, Order No. 26 at 1 (June 20, 2011); Certain
Automotive‘Multimedia Display and Navigation Systems, Inv. No. 337-TA-657, Order No. 27
(June 23, 2009); Certain Dynamic Random Access Memory Semiconductors and Products
Containing Same, Including Memory Modules, Inv. No. 337-TA-707, Order No. 10 (June 29,
2010); see also Certain Ink Cartridges, Inv. No. 337-TA-565, Order No. 59 at 2.
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PUBLIC VERSION
Counsel for the Private Parties, pursuant to Ground Rule 5(d), certify that they notified
counsel for the Commission Investigative Staff on May 21, 2015 of the Private Parties’ intent to
file the present Motion. Staff has stated that it will take a position on the papers.
For the reasons stated herein, the Private Parties respectfully request that the
Administrative Law Judge issue an Initial Determination terminating the Investigation, due to
settlement.
Dated: June 19, 2015
Respectfully submitted,
/s/ Devan V.Padmanabhan
Devan V. Padmanabhan
Sri K. Sankaran
Christopher A. Young
WINTHROP & WEINSTINE, P.A.
225 South Sixth Street
Suite 3500
Minneapolis, Minnesota 55402
Telephone: (612) 604-6400
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James B. Altman
David F. Nickel
FOSTER, MURPHY, ALTMAN &
NICKEL, PC
1899 L Street, N.W., Suite 1150 V
Washington, D.C. 20036
Telephone: (202) 822-4100
Counselfor Complainant Advanced
Research Corporation
/s/ D. Sean Trainor
Gregory S. Arovas, P.C.
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, New York 10022
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PUBLIC VERSION
..
Telephone: (212) 446-4800
Facsimile: (212) 446-4900
Edward C. Donovan
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D. Sean Trainor
655 Fifieenth Street, N.W.
Telephone: (202) 879-5000
Facsimile: (202) 879-5200
Counselfor International Business
Machines Corporation
/s/ Steven J. Routh
Steven J. Routh
Sten A. Jensen
Jordan L. Coyle
Diana M. Szego
ORRICK, -HERRINGTON & SUTCLIFFE,
LLP
Columbia Center
1152 Fifteenth Street, NW
Telephone: (202) 339-8400
- Facsimile: (202) 339-8500
William H. Wright
Andrew Y. Yen
ORRICK, HERRINGTON & SUTCLIFFE,
LLP
777 South Figueroa Street, Suite 3200
Los Angeles, CA 90017-5855
Telephone: (213) 629-2020
Facsimile: (213) 629-2499
David E. Case
LLP
Izumi Garden Tower, 28th Floor
6-1 Roppongi 1-Chome
Minato-ku, Tokyo 106-6028
Japan
Telephone: +81 3 3224 2900
Facsimile: +81 3 3224 2901
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PUBLIC VERSION
Counselfor F UJIFILMHoldings
Corporation, F UJIFILM Corporation, and
F UJIFILM Recording Media U.S.A.,Inc.
/s/ Steven J. Routh
Steven J. Routh
Sten A. Jensen
Jordan L. Coyle
Diana M. Szego
LLP
Columbia Center 1
Telephone: (202) 339-8400
Facsimile: (202) 339-8500
Chris Ottenweller
Vickie L. Feeman
Anthony Tartaglio
LLP
1000 Marsh Road
Menlo Park, CA 94025
Telephone: 650-614-7400
Facsimile: 650-614-7401
Email: [email protected]
William 1-1.Wright
Andrew Y. Yen
LLP
Telephone: (213) 629-2020
Facsimile: (213) 629-2499
David E. Case
LLP
lzumi Garden Tower, 28th Floor
Japan
Telephone:
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_+81 -_3_
3224 2900- _-
PUBLIC VERSION
Facsimile: +81 3 3224 2901
Counselfor Respondents Oracle
Corporation and Oracle America, Inc
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PUBLIC VERSION
WASHINGTON, D.C. 20436
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Before the Honorable David P. Shaw
In the Matter of
Investigation No. 337-TA-931
GROUND RULE 5.L. DECLARATION OF D. SEAN TRAINOR
Pursuant to Ground Rule 5(1), I, D. Sean Trainor, counsel for Respondent International
Business Machines Corporation,‘ hereby declare that the information bracketed in red in the
forgoing motion contains information asserted to be confidential by Complainant, Respondents,
and/or third parties in this Investigation. I further declare that Exhibit 1 to this motion also
contains information asserted to be confidential by Complainant, Respondents, and/or third
parties in this Investigation. A public version ofExhibit 1 with confidential information deleted
has been provided as Exhibit 2. Disclosure ofthe confidential information contained in the
motion and Exhibit I may have the effect of either impairing the Commission’s ability to obtain
such information as is necessary to perform its statutory functions, or causing substantial harm to
the competitive position of Respondents and Complainant.
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I declare under penalty of perjury that the foregoing is true and correct.
Executed on this 19th day of June, 2015.
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/s/ D. Sean Trainer
D. Sean Trainor
I I have also been authorized to submit this declaration on behalf of Complainant Advanced
Research Corporation, as well as Respondents FUIIFILM Holdings Corporation, FUJIFILM
Corporation, FUJIFILM Recording Media U.S.A_,,Inc., Oracle Corporation, and Oracle
America,
Inc.
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Exhibit 1 to Joint Motion to
Terminate Investigation A
Removed - Contains CBI
Exhibit 2 to Joint Motion to
Terminate Investigation
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PUBLIC VERSION
SETTLEMENT AGREEMENT
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This Settlement Agreement (“Agreement”) is entered into as of May 2l, 2015
(“Execution Date”), by and between Advanced Research Corporation (referred to herein as
“ARC”), a Mirmesota corporation with a principal place ofbusiness at 4459 Wh.iteBear .
Parkway, White Bear Lake, Minnesota 551 I0; Intemational Business Machines Corporation
(referred to herein as “lBM”), a New York corporation with a principal place of business at 1
New Orchard Road, Armonk, New York 10504-i722; FUJIFILM Holding Corporation and
FUJIFILM Corporation, Japanese corporations with a principal place of business at 7-3, Akasaka
9-chome, Minato-ku, Tokyo l07—0052,Japan; FUJIFILM Recording Media U.S.A., lnc., a'
Delaware corporation with a principal -place of business at 200 Summit Lake Drive, Valhalla,
New York 10595 (collectively referred to herein as “FUJlFlLM”); Oracle Corporation and
Oracle America, Inc., Delaware corporations with a principal place of business at 500 Oracle
Parkway, Redwood Shores, California 94065 (collectively referred to herein as “Oracle”) (each
of ARC, IBM, FUJIFILM, and Oracle is referred to herein as a “Party” and are collectively
referred to herein as the “Paities”).

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RECITALS
Whereas, ARC, IBM, FUJIFILM, and Oracle are parties to the ITC Action and the
District Court Action (both deﬁned below);
Whereas, to avoid the time and expense of litigation, and without any admission of
liability or fault, the Parties wish to resolve and settle the ITC Action and the District Court
Action, without admitting liability or conceding the claims or defenses raised against them, on
the terms and conditions set forth below; and
Whereas, each of the Parties acknowledges that the execution of this Agreement will be
of substantial benefit to it; and
NOW, THEREFORE, in consideration of the above recitals and the mutual covenants
hereinafter contained and other good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, the Parties agree as follows:
l.
DEFINITIONS
As used herein, capitalized terms not otherwise defined herein shall have the following
meanings:

1.l
“ITC Action" means the action in the United States Intemational Trade
Commission captioned Inlhe Matter ofC'ermin Formatted Magnetic Data Storage Tapes and
Cartridges Containing the Same, investigation No. 337-TA-931.
PUBLIC VERSION
l.2
“Distn'ct Court Action” means the action in the United States District Court for
the District of Minnesota captioned Advanced Researclz Corporation v. Jnrernarional Business
Machines Corporation, FUJIFILM Holding Corporation, FUJIFILM Corporation, and Oracle
Corporation, Civil Action No. t4~CV-03241.
1.5
“Patents—In~Suit”shall mean U.S. Patent Nos. 7,525,761, 7,948,705, 8,254,052,
8,437,103, and 8,542,457.
1.6 l “S"ubsicIiagy”of a Party hereto or of a third party shall mean a corporation,
company or other entity:
1.6.1 more than fifty percent (50%) of whose outstanding shares or securities
(representing the right to vote for the election of directors or other managing authority) arc, now
or hereafter, owned or controlled, directly or indirectly, by a Party hereto or such third party, but
such corporation, company or other entity shall he deemed to be a Subsidiary only so long as
such ownership or control exists; or
1.6.2 which does not have outstanding shares or securities, as may be the case in
a partnership, joint venture o:runincorporated association, but more than fifty percent (50%) of
whose ownetship interest representing the right to make the decisions for such corporation,
company or other entity is, now or hereafter, owned or controlled, directly or indirectly, by a
Party hereto or such third party, but such coiporation, company or other entity shall be deemed to
be a Subsidiary only so long as such ownership or controtcxists.
2.
1.7
“IEiT'ective Date” "means
1.8
“Execution Date” has the meaning set forth above.
STAY OF ITC ACTION: DISMISSAL
2.1
In consideration of the mutual promises set forth herein, within one (1) business
day of the Execution Date of this Agreement, the Parties shall with respect to the lTC Action,
execute and/or cause their respective counsel to execute papers in the forms set forth in Exhibit
A.l, or in such other form as required for the Commission’s approval, for the purpose of staying
the ITC Action until the occurrence of the Effective Date or the termination of this Agreement
pursuant to Section 5.2. In the event that the Effective Date has not occuned as of June l0,
201
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PUBLIC VERSION
settlement efforts have failed, and jointly seek the earliest possible date for any hearing or other
proceeding in connection with the ITC Action.
2.2
In consideration of the mutual promises set forth herein, within one (1) business
day of the Effective Date of this Agreement, the Parties shall:
‘
(a)
with respect to the ITC Action, execute and/or cause their respective counsel _to
execute papers in the forms set forth in Exhibit A.2, or in such other form as required for the
Commission’s approval, for the purpose of terminating the ITC Action with prejudice as to IBM,
FUJIFILM, and Oracle; and
(b)
with respect to the District Court Action, execute and/or cause their respective
counsel to execute papers in the fonns set forth in Exhibit B, or in such other form as required
for the Court‘s approval, to dismiss with prejudice the District Court Action as to all of their
respective claims by and between ARC and IBM, FUJIFILM, and Oracle.
2.3
The Parties agree that each Party shall bear its own costs, fees, and expenses
relating to the ITC Action and the District"C0urt Action, including attorneys’ fees, expert Fees,
and court costs, and costs in the negotiation, preparation, and execution of this Agreement, the
License Agreements and the Patent Assignment Agreement (attached hereto as Exhibits C, D, E
and F).
3.3
As of the Effective Date, except for the rights and obligations expressly created or
reserved by this Agreement, ARC does hereby irrevocably release and forever discharge IBM,
FUJIFILM and Oracle, and each of their officers, directors, employees, agents, predecessors,
successors, Subsidiaries, affiliates, assigns, and attorneys from any and all actions, claims,
demands, losses, liabilities or causes of action of any nature whatsoever, at law or in equity,
whether asserted or unasserted, whether known or unknown, including without limitation (i) any
that relate in any way to the Patents~In-Suit or for past actions relating to infringement of the
Patents-In-Suit and (ii) any and all such actions, claims, demands, or causes of action of any
nature whatsoever that were or could have been brought in the ITC Action or the District Court
Action or in any lawsuit or other proceeding. All third parties included within the scope of this
Section 3.3 are expressly agreed to be third-party beneficiaries of this Agreement.
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PUBLIC VERSION
3.4
As of the Effective Date, except for the rights and obligations expressiy created or
rcserved by this Agreement, each of IBM, Fujililm and Oracle does hereby irrevocably release
and forever discharge ARC, and its officers, directors, employees, agents, predecessors,
successors, Subsidiaries, affiliates, assigns, and attomcys from any and all actions, claims,
demands, losses, liabilities or causes of action of any nature whatsoever, at law or in equity,
whether asserted or unasserted, whether known or unknown, relating to or arising from the ITC
Action or the District Court Action, including but not limited to any and all such actions, claims,‘
demands, or-causes of action of any nature whatsoever that were or could have been brought in
the ITC Action or the District Court Action. All third parties included within the scope of this
Section 3.4 are expressly agreed to be third-party beneficiaries of this Agreement.
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PUBLIC VERSION
4.4
The Parties agree that this Agreement is intended solely as a compromise of
disputed claims. Each Party expressly denies any liability or wrongdoing. A Party’s participation
in this Agreement, its agreement to any IBKTTI
ofthis Agreement, and any action taken by a Party
pursuant to this Agreement:
(a)
do not constitute and shall not beconstrued as an admission of liability or as a
concession by any Party that any claim or defense asserted by the other Party is valid; and
(b)
shall not be offered or admitted in evidence in any legal proceeding other than one
to enforce rights and obligations arising out of this Agreement.
A
5.
TERMINATION
5.1
This Agreement may not be tenninatecl by any Party.
Agreement
5.2
In the event the Effective Date has not occurred bi June 10‘ 2015,shall
ll'lEiThl‘llS
terminate (unless the Parties otherwise agree in writing to extend the term of this Agreement),
provided that this Section 5.2 and the last sentence of Section 2. l. of this Agreement shall survive
any such termination.
6.
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ASSIGNMENT
6.1
Assignment. The terms of this Agreement are personal to and shall be binding
upon and inure to the benefit of the Parties hereto and their respective parents, subsidiaries,
officers, directors, partners, employees, heirs, conservators, successors, devisees, and assigns.
This Agreement cannot be assigned to any third party in whole or part.
7.
RE PRESENTATIONS; WARRANTIES
7.!
ARC represents and warrants that (i) it has the full right and power to enter into
this Agreement; (ii) no other person’s consent or approval is required for the granting of such
rights; and (iii) this Agreement and the grant of rights herein does not conflict with, violate or
otherwise constitute a breach of_anyagreement between it and any person.
7.2
IBM represents and warrants that IBM has the full right and power to enter into
this Agreement and that this Agrcemcnt does not conflict with, violate, or otherwise constitute a
breach of any agreement between IBM and any person.
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—FUJlFILM
re resents
andwarrants
thatFUJIFILM
hasthe
p
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full right and power to enter into this Agreement and that this Agreement does not conflict with,
violate, or otherwise constitute a breach of any agreement between FUJIFILM and any person.
~ 7.4
Oracle represents and warrants that Oracle has the full fight and power to enter
into this Agreement and that this Agreement does not conflict with, violate, or otherwise
constitute a breach of any agreement between Oracle and any person.
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PUBLIC VERSION
8.
CONFIDENTIALITY; NO PRESS RELEASE
8.1
Each Party shall hold the terms of this Agreement in confidence and shall not
publicize or disclose it in any manner whatsoever. The Parties shall not issue any press release or
make any statement to the press conceming the ITC Action, the District Court Action, or this
Agreement.
8.2
Notwithstanding the "foregoing,the parties may disclose any information that is
already publicly available, as well as the mere fact of settlement and that IBM, FUJIFIILMand
Oracle are licensed “underthe Licensed Patents. Furthermore, each l‘arty may disclose the terms
of the Agreement (a) to the extent disclosure is required by court or government order or
otherwise required by law, provided such Party first gives to the others prior written notice at
least 10 days prior to production (or reasonable notice if a court or government order requires
production in less than l0 days) to enable the other Parties to seek a protective order; (b) to the
extent required to enforce rights under this Agreement; (c) to the extent reasonablyneccssaty, on
a confidential basis, to such Paity‘s accountants, attorneys, actual or potential investors,
providers of venture capital, or potential investors in or acquirers of a product or service line
and/or financial advisers; (cl)to the extent reasonably necessary, on a.confidential basis, to
potential parties to a merger or acquisition involving the business or assets that are the subject
matter of this Agreement, as well as to such parties‘ attorneys, accountants, and/or financial
advisers; (e) to the extent reasonably necessary, on a confidential basis, to any person who,
directly or indirectly, is or may be required to be bound by the lenns and conditions of this
Agreement; and (O to the extent reasonably necessary, onla confidential basis, to such Pa11"y’s
customers, potential customers, and third patties with which such Party has a current or potential
commercial relationship.
8.3
For the avoidance of doubt, the Parties acknowledge and agree that Section 8.1
permits ‘IBM,FUJIFJLM, and Oracle to disclose so much of the tenns of this Agreement as is
necessary to demonstrate to a customer that IBM, FUJIFILM, or Oracle and the customer are
covered or protected by the terms of this Agreement.
9.
__1\_’1I§CELLANEOUS
agreement
to the subject matter hereof and supersedes all prior proposals, agreements, representations, and
other communications, if any, between the Parties with respect to the subject matter hereof.
9.2
If any section of this Agreement is found by competent authority to be invalid,
illegal or unenforceable in any respect for any reason, the validity, legality and enforceability of
such section in every other respect and the remainder of this Agreement shall Continuein effect.
9.3
Modification: Waiver. This Agreement shall not be binding upon the Parties until
it has been Signed herein below by or on behalf of each Party. No modification.
supplementation, or amendment to this Agreement will be effective unless it is in writing and
executed by authorized representatives of the Parties, except that any Party may amend its
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PUBLIC -VERSION
address in Section 9.5 by written notice to the other Parties. Nor will any waiver of any rights be
effective unless assented to in writing by the Party to be charged. The failure or delay of any
Party in exercising any of its rights hereunder, including any rights with respect to a breach or
default by another Party, will in no way operate as a waiver of such rights or prevent the
assertion of such rights with respect to any later breach or default by another Party.
9.4 4 Headings. The headings used in this Agreement are for reference and convenience
only and will not be used in interpreting the provisions of this Agreement.
.
9.5
Notices. Notices and other communications shall be sent by facsimile, reputable
overnight courier, email, or by registered or certified mail to the following addresses and shall be
effective upon sending:

To ARC and its Subsidiaries and affiliates:
Advanced Research Corporation
4459 White Bear Parkway
White Bear Lake, Minnesota 551 l0
To IBM and its Subsidiaries and affiliates:
I
_ IBM Corporation
North Castle Drive, MD-NCl 19
Armonk, NY 10504-1785
Fascimile: (914) 765-4380
E-Mail: [email protected]
To FUJIFILM and its Subsidiaries and affiliates:
FUJIFILM Corporation
9-7-3, Akasaka 9-chome, Minato-ku
Tokyo, 107-0052, Japan
Attention to General Manager of Intellectual Property Headquarters
To Oracle and its Subsidiaries and afﬁliates:
General Counsel
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' Oracle Corporation
500 Oracle Parkway
Redwood City, CA 94065
cc: [email protected]
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9.6
Goveming Law. The Parties agree that this Agreement willbe governed by and
construed in accordance with the laws of the State of New York and of the United States of
America without regard to_ch0iceof law provisions or rules. The Parties further agree that this
Agreement was mutually drafted by all Parties and that any interpretation of this Agreement or
any terms thereof will not be interpreted against one Pany as the draﬁing Party.
9.7
Countegarts. This Agreement may be executed in counterparts by the Parties
hereto on any number of counterparts, each of which will be deemed an original, but all such
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PUBLIC VERSION
respective counterparts will together constitute one and the same agreement. The Parties agree
that electronically transmitted signature pages will be treated as if they were originals.
9.8
Additional Provisions. Each Party hereby declares and represents that it is
executing this Agreement after consultation with its own independent legal counsel.
9.8.1 Any mle of construction to the effect that ambiguities are to be resolved
against the drafting Party will not be applied in the construction or interpretation of this
Agreement. As used in this Agreement, the words “include” and “including,” “for example,”
“such as,” and variations thereof will not be deemed to be terms of limitation, but rather will be
deemed to be followed by the Words“without limitation.”
9.8.2 Each Party acknowledges to the other Panies that it has been represented
by independent legal counsel of its own choice throughout all of the negotiations which preceded
the execution of this Agreement. Each Party further acknowledges that it and its counsel have
had adequate opportunity to make whatever investigation or inquiry they may deem necessary or
desirable in connection with the subject matter of this Agreement prior to the execution hereof
and that in entering into this Agreement it is not relying on any representations of the other
Parties in connection therewith, except for the representations expressly set forth in this
Agreement.
'
[Balance ofpage intentionally left blank.]
8
i
1'
PUBLIC VERSION
ln Witness Whereof, the parties hereto have caused this Agreement to be executed by
their duly authorized representatives as undersigned:
‘
Advanced Research Corporation,
on its own behalf and on behalf of each ofits
Subsidiaries and affiliates
Intemational Business Machines
Corporation, on its own behalf and on behalf
of each of its Subsidiaiies and affiliates
By:
By:
~
Printed Name:
Title:
Date:
Printed Name: Jeffrey Zachmann
Title: Counsel, Corporate Litigation
Date:

FUJIFILM Holding Corporation, FUJIFILM
Corporation, and FUJIFILM Recording
Media U.S.A., Inc., on their own behalf and
on behalf of each of their Subsidiaries and
affiliates
By:
Printed Name: Kazuhiko Furuya
Title: Director, Corporate Vice President,
General Manager Intellectual Property
Headquarters FUJIFILM Corporation
Date:
Oracle Corporation and Oracle America, Ine.,
on their own behalf and on behalf of each of
their Subsidiaries and affiliates
By:
Printed Name: Deborah K. Miller
Title: Vice President, Associate General
Counsel, Litigation
t
Date:
9
PUBLIC VERSION
in Witness Whereof, the parties hereto have caused this Agrccirienl to be executed by
their duly authorized representatives as undc-rsigncd:
on its own bcilalfarid on hchnlfofeach ofits
Subsidiaries and affiliares
international Business Mauhinrss
Corporation, on its own bchnlfund on hchaif
ofeach ofits Subsidiaries and affiliatcs
/i
BM M4“
Prime
i'\i\,[/\i/
I
“W
______'__"_~;>é'\:. _________M___..._.-..._fl
1
-‘i/5
Tiiiiw
ii \»";_-‘_>M__
Tit ic: ___§_.ib_9____________________
_v
By: i-i--,.i.A__,....,___.
Printed Narnc: Jeifrc-y Zaohinann
Date:__w__»________W_______________,_________
___
Dfitvr _.__iit;'-.41.‘/-.?_1L.iv-P_jL.@_.l;§.._,____.____
I
i"UJI}-‘iLi\/iHolding Corporation. I-‘UJii‘lL.M
(",orporation,
and F[_lJIi-'ii.,M R<:<:t_ii"r_iiii1;
Media U.S.A., inu., on their own boimliand
on bcliaii'c>i’¢aci1ofthcir Subsidiaries and
niii Iintcs
By:
_
_
i'l'ii’iik;§Ci
Name: Kazuhiko Furuya
__
Titio: Di|'octor, Corporate Vioc l'-‘resident,
Date:
Oracle Corporation
and ()rz\t:ic AlTlL)t'iC-81,
inc
on their own bchziti’and on bchaifoiicucli of
their Subsidiaric:» and ztiiilizites
By1"_MW_W___W_”_W
.......W_________________
_
Printed Name: Deborah K- i\/iiliur
Counsci. Litigation
Date; A____A______M_______%AW__
1
9
,
_____
PUBLIC VERSION
ln Witness Whereof, the parties hereto have caused this Agreement to he executed by
on its own behalf and on behalfof each ofits
international Business Machines
of each of its Subsidiaries and affiliates
By:
Printed Name:
Title:
Printed %@c: Jeffrey Zachmann
Title: Couns I, Cor aorate Litigation
Date:
,
\
;
Date:6 l
l5
FUJIFILM Holding, Corporation, FUJIFILM
Media U.S.A., lnc., on their own behalf and
on belialfolcach oftheir Subsidiariesand
affiliates
By:
Printed Name: Kazuhiko Furuya
'
l-Icadquaners FUJIFILM Corporation
Date:
Oracle Corporation and Oracle America, Inc.
on their own behalf and on behalfof each of
their Subsidiaries and affiliates
By:
Title: Vice President. Associate General
Counsel, Litigation
I
Date:
/
9
.
PUBLIC VERSION
In Witness Whereof, the parties hereto have caused this Agreement to be executed by
on its own behalf and on behalf of each ofits
Intemational Business Machines
of each of its Subsidiaries and affiliates
By:
By:
Printed Name:
Title:
Date:
Printed Name: Jeffrey Zachmann
Date:
FUJIFILM Holding Corporation, FUJIFILM
Media U.S.A., lne., on their own behalf and
affiliates
By:
V5‘-#196‘
Printed i>h{n16§KazblQl§0’i7uruyn
Date: /"IQ X ll
1 2°/§_
Oracle Corporation and Oracle America, Inci,
their Subsidiaries and affiliates
By:
Counsel, Litigation
Date:
9
PUBLIC VERSION
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IIIIIIIIIII ON
Exhibit A.1
PUBLIC VERSION
.
CONTAINS CONFIDEN TIAL BUSINESS INFORM/1 TION SUBJECT TO THE
PROTECTIVE ORDER
In the Matter of
.
DATA STORAGETAPES AND
JOINT UNOPPOSED MOTION OF THE PRIVATE PARTIES TO STAY TI-[E
PROCEDURAL SCHEDULE
Complainant Advanced Research Corporation and Respondents I-‘UJIFILM Holdings
Corporation, FUJIFILM Corporation, FUJIFILM Recording Media U.S.A., Inc. (“PUJIFILM”),
International Business Machines Corporation (“IBM”), Oracle Corporation, and Oracle America,
Inc. (“Oracle”) (collectively, “Respondents”) (all collectively “the Private Parties”), hereby
jointly move for an Order staying all remaining dates in the Procedural Schedule in this
Investigation, including the Hearing set to begin June 9, due to a settlement agreement reached
between the Private Parties.
The Private Parties respectfully submit that good cause exists to grant the present Motion
because the Private Parties have reached a settlement agreement that would terminate all pending
litigation between the Private Parties, including this Investigation.
Specifically, the Private
Parties engaged in mediation on May 20, 2015 before the Honorable Gary A. Feess (Rot),
during which the Private Parties reached agreement to settle all pending litigation between ARC
and Respondents.
Agreement.
Pursuant to this agreement, the Private Parties have signed a Settlement
Under the terms of the parties’ settlement agreement, the agreement does not
become
final
until
t
which
point
thePrivate
I
*h¢
PUBLIC VERSION
. .
CONTAINS CONFIDENTIAL BUSINESS INFORM./1TION SUBJECT T0 THE
- PROTECTIVE ORDER
. Parties have agreed to move to terminate this Investigation.
private parties will either file a motion to terminate on or before June I0, 2015, or will provide
the ALJ with a status update on June 10, 2015.
In light of the significant litigation events scheduled to occur between now and June I5,
including pre-hearing briefs, motions in limine, and the June 9 through June 15 Hearing, the
private parties submit that good cause exists to stay the procedural schedule to allowtime for
Staying the procedural schedule
under these circumstances will preserve resources for both the parties and the Commission,
particularly in light of the June 9 through June 15 Hearing.
The ALJ has previously been amenable to staying a procedural schedule to allow parties
to finalize settlement papers, including shortly before a scheduled Hearing. See, e.g., Certain /nk
Cartridges and Components 771ere0‘/Ilnv. No. 337-TA—565, Order No. 59 (Nov. 9, 20ll)
(granting stay of hearing scheduled to begin on November 14, 2011 in light of signed settlement
term sheet that provided until mid-December 2011 for parties to enter into formal long-tcmi
settlement); see also, e.g., Certain Compact Fluorescent Reflector Lamps. Produezs Conlainirlg
Same and Components Thereofi lnv. No. 337-TA-872, Order No. 19 (May 30, 2013).
Counsel for the Private Parties, pursuant to Ground Rule 5(d), certify that it notified
file the present Motion, who does not oppose the motion and has agreed to waive the two-day
requirement set forth in Ground Rule S(d).
For the reasons stated herein, the Private Parties respectfully request that this motion be
granted.
J
_
2
PUBLIC VERSION
CONTAINS CONFIDENTIAL BUSINESS INFORMA TION SUBJECT TO THE
PR OTECTI VE ORDER
Dated: May 21, 2015
Sti K. Sankaran
Suite 3 500
Telephone: (612) 604-6400
James B. Altman
David F. Nickel
NICKEL, PC
1899 L Street, N.W., Suite 1150
Telephone: (202) 822-4100'
Dated: May 21,2015
Telephone: (212) 446-4800
Facsimile: (212) 446-4900
Edward C. Donovan
D. Sean Trainor
655 Fifteenth Street, N.W.
Telephone: (202) 879-5000
Facsimile: (202) 879-5200
3
PUBLIC VERSION
CONTAINS CONFIDENTIAL BUSINESS INF ORMATION SUBJECT TO THE
PROTECTIVE ORDER
Dated: May 21, 2015
Steven J. Routh
Sten A. Jensen
Jordan L. Coyle
Diana M. Szego
'
LLP
Columbia Center
Telephone: (202) 339-8400
Facsimile: (202) 339-8500
William H. Wright
Andrew Y. Yen
LLP
Telephone: (213) 629-2020
Facsimile: (213) 629-2499
'
David E. Case
LLP
Japan
Telephone: +81 3 3224 2900
Facsimile; +81 3 3224 2901
Counselfor F UJIFILMHoldings
Corporation, F UJIFILM Corporation, and
F UJIFILM Recording Media U.S.A.,Inc.
Dated: May 21, 2015
Steven I. Routh
Sten A. Jensen
Jordan L. Coyle
Diana M. Szego
4
PUBLIC VERSION
CONTAINS CONFIDE NTIAL BUSINESS INF ORMATION SUBJECT TO THE
PRO TECTI VE ORDER _
LLP
A
Columbia Center
'
Washington, D.C4 20005
Telephone: (202) 339-8400
Facsimile: (202) 339-8500
Chris Ottenweller I
Vickie‘L. Feeman
Anthony Tartaglio
LLP
1000 Marsh Road
Telephone: 650-614-7400
Facsimile: 650-614-7401
William H. Wright
.
Andrew Y. Yen
t
‘LLP
Telephone: (213) 629-2020
Facsimile: (213) 629-2499
V
Counselfor Oracle Corporation and Oracle
America, Inc.
r
1
5
9
PUBLIC VERSION
CONTAINS CONFIDENTIAL BUSINESS INEORMATION SUBJECT TO THE
PROTECTIVE ORDER
In the Matter of
Business Machines Corporationf hereby declare that the information bracketed in red in the
and/or third panics in this Investigation. Disclosure of the confidential information contained
herein"may have the effect of either impairing the Commission’s ability to obtain such
information as is necessary to p6I‘f()I‘l'1'1
its statutory functions, or causing substantial harm to the
competitive position of Respondents and Complainant.
I declare under penalty of perjury that the foregoing is true and correct.
Executed on this 21st day of May, 2015.
-
/s/D. Sean Trainor
D. Sean Trainor
I I have also been authorized to submit this declaration on behalf of Complainant Advanced
Research Corporation, as well as Respondents FUJIFILM Holdings Corporation, FUJIFILM
Corporation, FUJIFILM Recording Media U.S.A., Inc., Oracle Corporation, and Oracle .
America, Inc.
PUBLIC VERSION
CONTAINS CONFIDENTIAL BUSINESS INFORM/1 TION SUBJECT TO THE
PROTECTIVE ORDER
WASHINGTON DC
\
In the Matter of
1
I
[PROPOSED] ORDER GRANTING JOINT UNOPPOSED MOTION OF THE PRIVATE
PARTIES TO STAY THE PROCEDURAL SCHEDULE

On May 21, 2015, Complainant Advanced Research Corporation and Respondents
FUJIFILM Holdings Corporation, FUJIFILM Corporation, FUJIFILM Recording Media U.S.A.,
Inc. (“FUJIFILM”), International Business Machines Corporation (“IBM”), Oracle Corporation,
and Oracle America, Inc. (“Oracle”) moved to stay all remaining dates in the procedural
schedule in this investigation, including the cvidentiary hearing currently scheduled to begin
June 9, 2015. The private parties request a stay due to a signed settlement agreement that has
been reached between the private parties but that will not be finalized until 0n or about June 4,
2015. The parties state that once the settlement agreement has been finalized, they will move to
terminate the Investigation.
Having considered the papers and arguments submitted by counsel, the applicable law,
and the relevant pleadings and papers on file in this Investigation, the motion is granted.
Allowing the private parties to finalize the settlement papers will preserve resources for the
parties and the Commission.
Further, private resolution of disputes is in the public interest
because it conserves time and resources. Therefore, good cause exists for the requested stay,
1
/
.
PUBLIC VERSION
CONTAINS CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO THE
PROTECTIVE ORDER
since it will provide the private parties with the opportunity to complete a private resolution of
their dispute.
IT IS HEREBY ORDERED that the Joint Unopposed Motion of the Private Parties to
Stay the Procedural Schedule is GRANTED and the private parties shall either file a motion to
tenninate on or before June 10, 2015, or provide the ALJ with a status update on June 10, 2015.
IT IS SO ORDERED.
Dated:
, 2014
Hon. David P. Shaw
»
United States lntemational Trade Commission
2
IIIIIIIIIII ON
x
Exhibit A.2
PUBLIC VERSION
WASHINGTON, D.C.
Administrative Law Judge t
In the Matter of
JOINT MOTION TO TERMINATE THE INVESTIGATION
i
Complainant Advanced Research Corporation (“Complainant”) and Respondents
FUJIFILM Holdings Corporation, FUJIFILM Corporation, FUJIFILM Recording Media U.S.A.,
Inc., lntemational Business Machines Corporation, Oracle Corporation, and Oracle America, Inc.
(collectively “Respondents”) (all collectively “Private Parties”) hereby jointly move to terminate
the above-captioned investigation pursuant to the provisions of 19 C.F.R. § 2lO.2l(b) and based
on the attached finalized Settlement Agreement (Exhibit 1 to this motion)_
Complainant and Respondents have satisfied the requirements of 19 C.F.R. § 2l0.2l(b).
Regarding motions to terminate by entry of a settlement, Commission Rule 2l0.2l(b)(1) states:
.
An investigation before the Commission may be terminated as to
one or more respondents pursuant to section 337(c) of the Tariff
Act of 1930 on the basis of a licensing or other settlement
agreement. A motion for termination by settlement shall contain
copies of the licensing or other settlement agreement, any
supplemental agreements, and a statement that there are no other
agreements, written or oral, express or implied between the parties
conceming the subject matter of the investigation. If the licensing
or other settlement agreement contains confidential business
information within the meaning of § 20l.6(a) of this chapter, a
PUBLIC VERSION
copy of the agreement with such information deleted shall
accompany the motion.
,
final. Pursuant to Commission Rule 210.21(b)( I), the Private Patties state that there are no other
agreements, written or oral, express or implied between the parties conceming the subject matter
of the investigation. The Private Parties further certify that the Settlement Agreement contains
confidential business information within the meaning of § 20l.6(a); accordingly, a copy of the
agreement with such information deleted has been attached to this ‘motion as Exhibit 2.
Termination of this Investigation will conserve the Commission’s and private parties’
resources and therefore is in the public interest. Certain DVD/CD Players and Recorders, Color
Television Receivers and Monitors, and Components Thereqfi lnv. No. 337-TA-542, Order No.
16, initial Determination Granting Joint Motion to Terminate the Investigation Based on
Settlement Agreements, at 3 (December 21, 2005) (“[T]he public interest favors settlement to
avoid needless litigation and to conserve public and private resourcesf’); see also, é.g., Certain
Equipment for Telecomrnunications or Data Communications Networks, Including Routers,
Switches, oncl Hubs, and Components Thereof; lnv. N0. 33 7-TA-574, Order No. 27 at 4 (May 24,
2007) (“termination of litigation under these circumstances is generally in the public interest as
settlement avoids needless litigation and conserves public resources”); Certain Ink Cartridges
and Components Thereof, lnv. No. 337-TA-565, Order No. 59 at 2 (Nov. '9, 2011) (“Private
resolution of disputes is in the public interest because it conserves time and resources.”).
The Private Parties further submit that termination of this investigation will not
negatively impact the public health and welfare, competitive conditions in the United States
economy, the production of like or directly competitive articles in the United States, or United
2
.
' PUBLIC VERSION
States consumers. See Certain Personal Computer/Consumer Electronic Convergent Devices,
Components Thereof and Products Containing Same, Inv. No. 337-T-A-558, Order No. 10,
Initial Detennination Granting Joint Motion of Complainant Intewideo Digital Technology
Corp. and Respondent Winbook Computer Corp. to Terminate, at 4 (April 20, 2006) (citing 19
C.F.R. § 210.5O(b)(2)).
The Private Parties respectfully request that the enclosed confidential exhibit and the
information bracketed in red in the instant motion be treated as confidential pursuant to the
Protective Order, and only be disclosed to the Commission, the Administrative Law Judge, and
the Staff. Pursuant to Commission Rule 210.21 (b)(1), the Private Parties have provided a public
version with financial terms and other terms not relevant to the public redacted. The confidential
treatment requested by the patties is appropriate and consistent with Commission precedent and
the public interest, which favors settlement. See Certain Semiconductor Chips and Products
Containing the Same, Inv. N0 337-TA-753, Order No. 26 at 1 (June 20, 2011); Certain
Automotive Multimedia Display and Navigation Systems, Inv. No. 337-TA-657, Order No. 27
(June 23, 2009); Certain Dynamic Random Access Memory Semiconductors and Products
Containing Same, Including Memory Modules, Inv. No. 337-TA-707, Order No. 10 (June 29,
2010); see also Certain Ink Cartridges, Inv. No. 337-TA-565, Ordcr No. 59 at 2.
Counsel for the Private Parties, pursuant to Ground Rule 5(d), certify that they notified
file the present Motion. Staff has stated that it will take a position on the papers.
For the reasons stated herein, the Private Patties respectfully request that the
Administrative Law Judge issue an Initial Determination terminating the Investigation, due to
settlement.
3
PUBLIC VERSION
Dated: June _, 2015
» Sri K. Sankaran
WINTHROP & WEINSTINE, PAAI
Suite 3500
Telephone: (612) 604-6400
James B. Altman
David F. Nickel
_ NICKEL, PC
1899 L‘Street, N.W., Suite 1150
Telephone: (202) 822-4100
’
Dated
2015
Telephone: (212) 446-4800
Facsimile: (212) 446-4900
Edward C. Donovan
D. Sean Trainor
655 Fifteenth Street, N.W. i
Telephone: (202) 879-5000
Facsimile: (202) 879-5200
4
PUBLIC VERSION
Dated:
, 2015
Steven J. Routh
Sten A. Jensen
Jordan L. Coyle
Diana M. Szego
LLP
Colmnbia Center
Telephone: (202) 339-8400
Facsimile: (202)339-8500
William H. Wright
Andrew Y. Yen
LLP
Telephone: (213) 629-2020
Faesirnile: (213) 629-2499
David E. Case
ORRIICK,HERRINGTON & SUTCLIF FE,
LLP
lzumi Garden Tower, 28th Floor
Japan
Telephone: +81 3 3224 2900
Facsimile: +81 3 3224 2901
Counselfor F U./IFILMHoldings
Corporation, F U./IFILMCorporation, and
FUJIFILM Recording Media U.S.A.,Inc.
Dated:
, 2015
Steven J. Routh
Sten A. Jensen
Jordan L. Coyle
Diana M. Szego
5
PUBLIC VERSION
LLP
Columbia Center
1152 Fifieenth Street, NW
Telephone: (202) 339-8400
Facsimile: (202) 339-8500
Chris Ottenweller
Vickie L. Feeman
Anthony Tartaglio
LLP
_
1000 Marsh Road
Telephone: 650-614-7400
Facsimile: 650-614-7401
Email: 931 [email protected]
William H. Wright
Andrew Y. Yen
LLP
Telephone: (213) 629-2020
Facsimile: (213) 629-2499
David E. Case
LLP
Japan
A
Telephone: +81 3 3224 2900
Facsimile: +81 3 3224 2901
Counselfor Respondents Oracle
Corporation and Oracle America, Inc.
6
PUBLIC VERSION
~ WASHINGTON, D.C. 20436
In the Matter of
Business Machines Corporation’, hereby declare that the information bracketed in red in the
and/or third parties in this Investigation. Disclosure of the confidential information contained
herein may have the effect of either impairing the'Commission’s ability to obtain such
information as is necessary to perform its statutory functions, or causing substantial harm to the
competitive position of Respondents and Complainant.
l declare under penalty of perjury that the foregoing is true and correct.
Executed on this 21st day of May, 2015.
/s/ D. Sean Trainer
D. Sean Trainor
t
1 Ihave also been authorized to submit this declaration on behalf of Complainant Advanced
Research Corporation, as well as Respondents FUJIFILM Holdings Corporation, FUJIFILM
Corporation, FUJIFILM Recording Media U.S.A., Inc., Oracle Corporation, and Oracle
America, Inc.
’
--7
' ‘J1
tr.
'
-
- -
-
Y
PUBLIC VERSION
Exhibit B
\
PUBLIC VERSION
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MINNESOTA
Plaintiff"
.
Case No. 0:14-cv-03241-JNE-TNL
\
International Business Machines
Corporation, et al.,
Defendants.
JOINT MOTION FOR DISMISSAL OF ALL CLAIMS
Pursuant to Federal Rule of Civil Procedure 41, Plaintiff Advanced Research Corporation
and Defendant International Business Machines Corporation represent to the Court that all
matters in dispute in this action between all of the parties have been resolved and hereby move to
dismiss with prejudice as settled all claims brought by the parties in this action. The parties
further agree that the patties shall bear their own attorney’s fees, expenses, and costs.
Defendants Fujifilm Holdings Corporation, Fujifilm Corporation, and Oracle Corporation join
this motion.
For good cause and in the interests of justice, as outlined above, the parties respectfully
request that the Court grant this motion.
Respectfullysubmitted,
Dated: May 21, 2015
‘
s/ Sri K. Sankaran
Devan V. Padmanabhan (# 240126)
Sri K. Sankaran (#2043 04)
Christopher A. Young (#288998)
Suite 3500
Minneapolis, MN 55402
1
_
PUBLIC VERSION
Telephone: (612) 604-6400
Facsimile: (612)604-6800
dpaa'manabhan@win(hr0p. com
s.s'[email protected]
[email protected]
Attorneysfor Plaintifl‘Advanced
Dated: May 21, 2015
/s/ Archana Nath
David B. Potter (#121642)
Archana Nath (#387662)
Oppenheimer Wolff & Donnelly LLP
Campbell Mithun Tower - Suite 2000
222 South Ninth Street
Minneapolis, MN 55402-3338
Telephone: 612-607-7000
Facsimile: 612-607-7100
dpotter@0ppenheimer. com
anath@0ppenheimer. com
Attorneysfor Defendant International
Business Machines Corporation
Anne Sidrys, P.C.
Edward C. Donovan
D. Sean Trainor
Of Counsel,Defendant International
Business Machines Corporation
I/
/
PUBLIC VERSION
r
AMENDMENT OF SETTLEMENT AGREEMENT
This Amendment (“Amendment”) of the Settlement Agreement entered into May 21,
2015 by and between the same Parties identified below (“Settlement Agreement") is made and
entered into by and between Advanced Research Corporation (“ARC”), a Minnesota corporation
with a principal place of business at 4459 White Bear Parkway, White Bear Lake, Minnesota
551 10; International Business Machines Corporation (“IBM”), a New York corporation with at
principal place of business at 1 New Orchard Road, Armonk, New York 10504-1722; FU.lll—"lLM
Holding Corporation and FUJIFILM Corporation, Japanese corporations with a principal place
of business at 7-3, Akasaka 9-chome, Minato-kn, Tokyo 107¢0052,Japan; FUJIFILM Recording
Media U.S.A., .lne., a Delaware corporation with a principal place of business :1t20OSummit
Lake Drive, Valhalla, New York 10595 (collectively “FUJlFILM”); Oracle Corporation and
Oracle America, lnc., Delaware corporations with a principal place of business at 500 Oracle
Parkway, Redwood Shores, Califomia 94065 (collectively “Oracle”) (each of ARC, IBM,
FUJIFILM, and Oracle is referred to as a “Party” and collectively as the "‘Partics”).
RECITALS
Whereas, the Parties entered into the Settlement Agreement to resolve and settle the ITC
Action and District Court Action (both defined in the Settlement Agreement);
Whereas,
the Pa "*
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2.2, 4.2, and 4.3 thereof
NOW, THEREFORE, pursuant to Section 9.3 of the Settlement Agreement, and in
consideration ofthe above recitals and the mutual covenants contained hereinafter and in the
Settlement Agreement as well as other good and valuable consideration, the receipt and
sufficiency ofwhich are hereby acknowledged, the Parties agree as follows:
1.
DI*1FINI'l‘IONS
As used herein, capitalized terms not otherwise defined herein shall have the some
meanings as given to them in the Settlement Agreement.
2.
nmnnnmrzm" OFSECTION 2.2

Section 2.2 of the Settlement Agreement is hereby amended and replaced by the
following:
2.2
In consideration of the mutual promises set forth herein, on or before June
l9, 20 l.5, the Parties shall;
\
PUBLIC VERSION
(kt)with respect to the ITC Action, execute and/or cause their respective counsel
to execute papers in the forms set ‘forthin Exhibit A2 to the Settlement Agreement, or in
such other form as required for the Commission’s approval, for the purpose of
terminating the [TC Action with prejudice as to IBM, Fujifilm, and Oracle; and
(b) with respect to the District Court Action, execute and/or cause their respective
counsel to execute papersjn the forms set forth in Exhibit B to the Settlement Agreement,
or in such other form as required for the Court’s approval, to dismiss with prejudice the
District Court Action. as to all of their respective claims by tmd between ARC and IBM,
Fujitilm,“ and Oracle.
3.
AMENDMENT OF SECTIONS 4.2 AND 4.3
Sections 4.2 and 4.3 of the Settlement Agreement are hereby amended and replacediby the
iollo
‘
wing;
»
2
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PUBLIC VERSION
1
4.
CONTINUED EFFECT ANDENFORCEABILITY OF OTHER AGREEMENTS
in effect and are enforceable in accordance
with their terms.
5.
C()NFIDENTlAl.ITY: NO PRESS RELEASE
5.1
Each Party shall hold the terms of this Amendment in confidence and shall not
publicize or disclose it in any manner whatsoever. The Parties shall not issue any press release or
make any statement to the press concerning the JTC Action and District Court Action or this
Amendment.
5.2
Each Patty may disclose the terms of the Amendment (rt) to the extent disclosure
is required by court or government order or otherwise required by law, provided such Party first
gives to the others prior written notice at least l0 days prior to production (or reasonable notice if
a court or government order requires production in less than l0 days) to enable the other Parties
to seek a protective order; (b) to the extent required to enforce rights under this Amcnclment; (c)
to the extent reasonably necessary, on a confidential “basis,to such Part)/’s accountants, attorneys,
actual or potential investors, providers of venture capital, or potential investors in or acquircrs of
a product or service line and/or financial advisors; (cl) to the extent reasonably necessary, on a
confidential basis, to potential panics to a merger or acquisition involving the business or assets
that are the subject matter of this Amendment, as well as to such parties’ attorneys, accountants,
and/or financial advisors; (e) to the extent reasonably necessary, on 21conliclcntial basis, to any
person who, directly or indirectly, is or may be required to be bound by the terms and conditions
of this Amentimcnt; and (1) to the extent reasonably necessary, on a coniidential basis, to such
l’atty’s customers, potential customers, and third parties with which such Party has a current or
potential commercial relationship.
i 3
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1.7."?
PUBLIC VERSION
6.
MISQQELLANEOUS
6.l
Entire A reement. This Amendment alon with the Settlement A reement
constitute tic
entire agreement between ARC and each of lBt\/i, Fujitilm, and Oracle relating to the subject.
matter hereof and supersedes all prior proposals, agreements, representations, and other
communications, if any, between the Parties with respect to the subject matter hereof.
6.2
Sevcrability. If any section of this Amendment is found by competent authority
to be invalid, illegal or unenforceable in any respect for any reason, the validity, legality and
enforceability or such section in every other respect and the remainder of this Amendment shall
continue in effect.
6.3
Modification: Waiver. This Amendment shall not be binding upon the Parties
until it has been signed herein below by or ion behalf of each Party. No modification.
supplementation, or amendment to this Amendment will be effective unless it is in writing and
executed by authorized representatives of the Parties. Nor will any waiver of any rights be
effective unless assented to in writing by the Party to be charged. The failure or delay of any
Party in exercising any of its rights hereunder, including any rights with respect to a breach or
default by another Party, will in no way operate as a waiver of such rights or prevent the
assertion of such rights with respect to any later breach or default by another Party.
6.4
Governing La_\y.The Parties agree that this Amendment will be governed by and
construed in accordance with the laws of the State of New York and of the United States ol
America without regard to choice of law provisions or mles.
6.5
Counterpa_rt§. This Amendment may be executed in counterparts by the Panties
hereto on any number of‘ counterparts, each of which will be deemed an original, ‘but all such
respective counterparts will together constitute one and the same agreement. The Patties agree
that electronically transmitted signature pages will be treated as if they were originals.
6.6
Additional Provisions. Each Party hereby declares and represents that it is
executing this Amendment after consultation with its own independent legal counsel.
6.6.1 Any rule of construction to the effect that ambiguitiesare to be resolved against
the drafting Party will not be applied in the construction or interpretation of this Amendment. As
used in this Amendment, the words “include” and “including,” “for example,” “such as,” and
variations thereof will not be deemed to be terms of limitation, but rather will be deemed to be
followed by the words “without limitation."
6.6.2 Each Party acknowledges to the other Parties that it has been represented by
independent legal counsel of its own choice throughout all of the negotiations which preceded
the execution of this Amendment. Each Pauty further acknowledges that it and its counsel have
had adequate opportunity to make whatever investigation or inquiry they may deem necessary or
desirable in connection with the subject matter of this Amendment prior to the execution hereof
and that in entering into this Amendment it is not relying on any representations of the other
Parties in connection therewith.
4
4
PUBLIC VERSION
6.7
Effective Date: The Effective Date of this Amendment shall be June l5, 2015,
subject to all Parties executing the Amendment.
In Witness Whereof, the Parties hereto have caused this Amendment to be executed by
International Business Machines
of each of its Subsidiaries and affiliates
on its own behalf and on behalf ofeach ofits
B y:
By:_
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Title:
Date:
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FUIIFILM Holding Corporation, FUJIFILM
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Media U.S.A., lnc., on their own behalf and
affiliates
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Authorized to sign on behalf OfFUJIFILM
Date:
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Date:
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Certain Formatted Magnetic Data Storage Tapes
and Cartridges Containing the Same
Investigation N0 337-TA-931
CERTIFICATE OF SERVICE
I, Christopher A. Moyer, hereby certify that on this 19th day of June, 2015 copies of the
foregoing document were served upon the following parties as indicated:
Lisa R. Barton
Secretary to the Commission‘
U.S. lntemational Trade Commission
500 E Street, S.W., Room 112
C]
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The Honorable David P. Shaw
U.S. International Trade Commission
500 E Street, S.W.
[:l Via First Class Mail
l:l Via Hand Delivery
(XiVia Ovemight Courier
X Via Electronic Mail
Monisha Deka
Investigative Attorney
Office of Unfair Import Investigations
500 E Street, S.W.
Email: monisha.deka@,usitc.gov
[:|Via First Class Mail
[:1 Via Hand Delivery
[:1 Via Overnight Courier
@ Via Electronic Mail
Via First Class Mail
Via Hand Delivery
Via Overnight Courier
Via Electronic Filing (EDIS)
On Behalf of Complainant Advanced Research Corporation
Sri K. Sankaran
El Via First Class Mail
|:| Via Hand Delivery
|:_| Via Ovemight Courier

225 South Sixth Street, Suite 3500
Telephone: (612) 604-6400
NICKEL, PC
James B. Altman
David F. Nickel
1899 L Street, N.W., Suite 1150
Telephone: (202) 822-4100
IXIVia Electronic Mail
.
[:1 Via First Class Mail
|:] Via Hand Delivery
|:| Via Ovemight Courier
Via Electronic Mail
'1?
Certain Formatted Magnetic Data Storage Tapes
and Cartridges Containing the Same
Investigation No. 337 TA 931
On Behalf of Respondents Oracle Corporation, Oracle America, Inc., Fujifilm
Corporation, Fujifilm Holdings Corporation, and Fujifilm Recording Media U.S.A.,Inc
ORRICK, HERRINGTON & SUTCLIFFE, LLP
Steven J. Routh
1152 15th Street, N.W.
Telephone: (202) 339-8400
Email: 931-Oraclegalorrickcom r
Email: 931-Fu'|ifilm§a;orrick.com
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Via First Class Mail
Via Hand Delivery
Via Overnight Courier
Via Electronic Mail
/s/Christopher A. Mover
Christopher A. Moyer
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CERTAIN FORMATTED MAGNETIC DATA STORAGE TAPES AND CARTRIDGES
CONTAINING THE SAME
INV. NO. 337-TA-931
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached Order N0. 19 (Initial Determination) has
been served by hand upon the Connnission Inveséifigive Attorney, Monisha Deka, Esq., and the
following parties as indicated, on
29
Lisa R. Barton, Secretary
500 E Street SW, Room 112A
Washington, DC 20436
FOR COMPLAINANT ADVANCED RESEARCH CORPORATION:
David F. Nickel, Esq.
( ) Via Hand Delivery
NICKEL, PC
(*4 Express Delivery
1899 L Street, NW, Suite 1150
( ) Via First Class Mail
( ) Other:
FOR RESPONDENT INTERNATIONAL BUSINESS MACHINES CORP.:
D. Sean Trainor, Esq.
( ) Via Hand Delivery
(K ExpressDelivery
*( ) Other:______
( . ) Via First Class Mail
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CORPORATION; AND ORACLE ANIERICA, INC.:
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Steven J. Routh, Esq.
( )
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_ORRICK,HERRINGTON & SUTCLIFFE, LLP
( \/E/xpress Delivery
1152 15th St., NW
( ) Via First Class Mail
( ) Other: