Another texas patent case...unrelated
Kangaroo Media settles patent complaint and acquires exclusive worldwide licensing rights from Immersion
Mon Feb 4, 8:04 AM
MIRABEL, QC, Feb. 4 /CNW Telbec/ - Kangaroo Media Inc. ("Kangaroo") and Immersion Entertainment LLC ("Immersion") announced today that they have signed definitive licensing and settlement agreements to end the complaint filed in the United States District Court for the Eastern District of Texas, Tyler Division on February 13, 2007 by Immersion against Kangaroo and other defendants, alleging infringement of Immersion's United States Patents 6,578,203 and 7,124,425. Under the Patent License Agreement, Immersion grants Kangaroo exclusive worldwide rights to its intellectual property portfolio until December 31, 2010. Thereafter, the exclusive worldwide rights may under certain terms and conditions be extended until the expiration of the last Immersion issued patent.
The Settlement Agreement covers Kangaroo and the other defendants. Additionally, under the Patent License Agreement, Immersion grants Kangaroo rights in all issued patents and pending applications relating to Immersion's intellectual property portfolio and technology.
The Patent License Agreement provided for a payment by Kangaroo to Immersion of US$2.0 million on February 1, 2008, in addition to payments of royalties on covered sales retroactive to January 1, 2008 based on a royalty schedule set forth in the Patent License Agreement. The Patent License Agreement is subject to minimum royalties of US$1.0 million for each of 2008 and 2009, which will be applied against the royalty schedule.
At the end of 2010, Kangaroo will have the option to retain the exclusive worldwide rights to Immersion's intellectual property portfolio, subject to minimum yearly royalty payments as set forth in the Patent License Agreement. In the event Kangaroo decides not to exercise such option, the license rights granted under the Patent License Agreement could become non-exclusive at the option of Immersion and become subject to royalties on covered sales.
Immersion's Licensed Patent portfolio includes three issued patents in the United States, one in Australia and one in China. Additional patent protection has been sought with ten pending applications filed in the United States, three in Europe, three in Canada and one in Japan.
"The settlement with Immersion is a significant milestone for Kangaroo. Going forward, Kangaroo will benefit from much broader intellectual property protection. With the Immersion settlement, Kangaroo obtains immediate worldwide exclusive protection for Immersion's sizeable intellectual property assets. Furthermore, the exclusive license enables Kangaroo and Immersion to benefit from injunctive remedies and damages in situations where a competitor would infringe the licensed patent portfolio," said Alain Charette, Executive VP of Corporate Development of Kangaroo.
"In addition, the parties are avoiding the significant legal fees and expenses which would be associated with defending the Immersion complaint. This settlement also frees up valuable management time which can be invested in continuing to execute our business plan to grow sales, diversify our revenue sources, better compete globally and further develop our technology and its applications," said Robert Mimeault, President and COO of Kangaroo.
"Both organizations will largely benefit from this settlement which will free-up financial and human resources. It will help further the development and improvements to our technology and provide broader protection and enforceability for our intellectual property," said Mr. Taz L. Anderson, Chairman and founder of Immersion.
The agreements are subject to normal and customary commercial terms and conditions including reasonable guarantees, performance, breach and termination provisions.