Permar v. Spectra Watermakers, Inc.

Filing 71

STIPULATION AND ORDER re 70 STIPULATION WITH PROPOSED ORDER Dismissing Case (FRCP 41(a)(1)(ii) filed by Spectra Watermakers, Inc., Clark Permar. Signed by Judge ARMSTRONG on 5/17/12. (lrc, COURT STAFF) (Filed on 5/18/2012)

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1 2 3 4 5 6 JACK SIEDMAN (State Bar #45950) Attorney at Law P.O. Box 37 Bolinas, CA 94924 Telephone: (415) 868-0997 Facsimile: (415) 868-0997 Email: Attorney for Plaintiff and Cross-Defendant CLARK PERMAR 7 UNITED STATES DISTRICT COURT FOR 8 THE NORTHERN DISTRICT OF CALIFORNIA 9 10 11 CLARK PERMAR Civil Action No: CV-09-0972 SBA 12 STIPULATION FOR DISMISSAL AND ORDER OF ALL CAUSES OF ACTION ON THE COMPLAINT AND CROSSCOMPLAINT. Plaintiff, 13 vs. 14 SPECTRA WATERMAKERS. INC. 15 Defendant. 16 / 17 18 19 20 SPECTRA WATERMAKERS, INC. 21 22 23 24 Cross-Complainant Vs CLARK PERMAR Cross-Defendant. _____________________________________/ 25 26 27 28 Plaintiff Clark Permar, by and through his attorney of record, files this Stipulation for Dismissal pursuant to Federal Rules of Civil Procedure 41(a)(1)(ii). The plaintiff filed the complaint in this action on March 5, 2009. 1 ________________________________________________________ PERMAR v SPECTRA WATERMAKERS, INC.,CV-09-0972 SBA STIPULATION & ORDER FOR DISMISSAL 1 The defendant filed and answer and cross-claim against the plaintiff on May 7, 2009. 2 This Stipulation For Dismissal of the Complaint and Cross-Complaint is made and entered into 3 by and between Plaintiff and Cross-Defendant Clark Permar ("Permar") and Defendant and 4 Cross-Complainant Spectra Watermakers, Inc. ("Spectra"). 5 6 STIPULATION 7 RECITALS 8 WHEREAS, the above-entitled action is pending in the U.S. District Court for the 9 Northern District of California entitled Clark Permar v. Spectra Watermakers, Inc., case number 10 CVO-09-0972 SBA, with a related cross- action filed by Spectra against Permar. The Action is a 11 Complaint for Declaratory Relief to declare U.S. Patent 5,462,414 (hereinafter referred to as the 12 "'414 Patent") to be valid, and also for Patent Infringement, Injunctive Relief, and Breach of 13 Contract for non-payment of contractual royalties on the sale of a pump utilizing said patent 14 referred to as the Clark Pump™, the cross-action by Spectra is for Declaratory Relief; and 15 16 17 WHEREAS, various disputes and disagreements exist between the Parties regarding the '414 Patent and royalties for the manufacture and sale of the Clark Pump™ ; and WHEREAS, the Parties hereto wish to fully, finally and forever resolve all disputes 18 between them concerning the manufacture and sale of the Clark Pump™ on the terms and 19 conditions set forth herein; and 20 WHEREAS, there is an action pending in the Superior Court of the State of California, 21 County of Marin, entitled Spectra Watermakers, Inc. v. Clark Permar, case number CV 071033, 22 which raises the same issues as those in the above federal court action : 23 NOW, THEREFORE, in consideration of the above recitals, the covenants, conditions 24 and agreements herein contained, and other good and valuable consideration, the receipt and 25 adequacy of which are hereby acknowledged, the Parties hereto agree as follows: 26 27 28 2 ________________________________________________________ PERMAR v SPECTRA WATERMAKERS, INC.,CV-09-0972 SBA STIPULATION & ORDER FOR DISMISSAL 1 2 AGREEMENT 1. SALE OF THE ‘414 PATENT AND THE ‘198 PATENT. Subject to the terms 3 and conditions set forth below, Permar sells and transfers to Spectra, all of his rights of 4 ownership in the U.S. Patent 5,462,414 (hereinafter referred to as the ‘414 Patent) and U.S. 5 Patent 5,628, 198 (hereinafter referred to as the ‘198 Patent) to Spectra which relates to the Clark 6 Pump™. Those terms and conditions are: 7 8 9 a. Payment to Permar. Spectra shall pay to Permar, the amount of Two Hundred Seventy-five Thousand Dollars ($275,000), payable as follows: (1) Within ten (10) days of the execution of this Stipulation, there will be released 10 to Permar the balance of approximately $41,000 deposited in a blocked account with West 11 America Bank, account number 506-95702-6 and within that same ten (10) days of the execution 12 of this Stipulation, Spectra will pay Permar the amount of $34,000, for a total initial payment to 13 Permar of $75,000. 14 (2) Subject to the terms set forth below, the balance of $200,000 due Permar shall 15 be payable to Permar by Spectra in the monthly amount of $3,333.33, or more, until the total 16 amount of $200,000 is paid in full, but not to exceed five years from the date this Stipulation is 17 executed. William Edinger, President and owner of Spectra, expressly agrees to personally 18 guarantee Spectra's obligation herein. The payments are due on the first day of each month 19 commencing August 1, 2010, and shall be deemed past due if not received by the tenth (10th) day 20 of the month when due. For any payment that is past due, Permar shall make written demand on 21 Spectra to cure the past due payment within twenty days. If a past due payment is not received 22 by Permar within twenty (20) days of Spectra's receipt of said demand, Spectra shall be 23 immediately in default of this Agreement, and Permar shall be entitled to any or all of the 24 following remedies: 25 (a) Have the United States District Court for the Northern District of 26 California pursuant to its reservation of jurisdiction to enforce the terms of 27 this Stipulation enter Judgment in this action in favor of Permar and against 28 Spectra terminating Spectra's ownership and use of the '414 Patent and the 3 ________________________________________________________ PERMAR v SPECTRA WATERMAKERS, INC.,CV-09-0972 SBA STIPULATION & ORDER FOR DISMISSAL 1 ‘198 Patent, and ordering all title, ownership and rights of use to said patents 2 to be transferred to Permar. 3 (b) Have the United States District Court for the Northern District of 4 California pursuant to its jurisdiction to enforce the terms of this Stipulation 5 enter Judgment in this action in favor of Permar and against Spectra and 6 William Edinger individually in an amount equal to the remaining unpaid 7 balance due on the $200,000. In order to enforce this provision, William 8 Edinger expressly agrees that this Court has personal jurisdiction over him 9 individually without the need to file any additional action in order to obtain 10 11 this Judgment. (3) At any time that Spectra sells the '414 Patent and/or the “198 Patent, or 12 Spectra itself is sold, or a majority of the shares in Spectra is sold, or at any time that Spectra's 13 assets are liquidated, any remaining unpaid balance of the $200,000 shall be immediately due 14 and payable in full. 15 (4) Time is of the essence with regard to the provisions of this Paragraph 1.a. 16 (5) The security interest held by Permar in the subject patents, as reflected in the 17 terms and conditions of this Paragraph 1, shall have first priority, and Spectra expressly warrants 18 and represents that there are no other liens against said patents. 19 b. Reservation of Rights to Permar. Permar shall retain non-exclusive, royalty- 20 free rights to the use of the '414 Patent and the ‘198 Patent, including but not limited to the right 21 to make, have made, use, sell, and market products covered by one or more of the claims of the 22 '414 Patent or the ‘198 Patent, including but not limited to the Clark Pump™. These rights are 23 personal to Permar and may not be assigned, transferred or licensed to any third party, except as 24 necessary to fulfill the already existing "have made" clause. Permar shall account to Spectra on a 25 quarterly basis for the number of pumps sold by him. Permar may not form or enter into a 26 partnership or any other legal entity that includes anyone other than Permar in order to 27 manufacture or sell any device or product cover by the terms of this agreement. 28 4 ________________________________________________________ PERMAR v SPECTRA WATERMAKERS, INC.,CV-09-0972 SBA STIPULATION & ORDER FOR DISMISSAL 1 c. Ownership of the '414 Patent. Upon execution of this Stipulation, and his receipt 2 of the $75,000 payment referred to in Paragraph 1.a. above, Permar shall execute whatever 3 documents are necessary to transfer title and ownership of the '414 Patent and the ‘198 Patent to 4 Spectra. 5 (1) Patent Maintenance: Spectra shall be responsible for all patent maintenance 6 fees to the PTO or any other governmental licensing agency to maintain in force the '414 and 7 ‘198 Patents for the balance of the term of the patent. 8 2. ROYALTIES. The $275,000 being paid to Permar, all as set forth above, 9 includes any and all past-due royalties owed by Spectra to Permar, or which Permar claims is 10 owed by Spectra. Permar waives any further claim to past due royalties. Permar and his agents, 11 successors and assigns further waives any rights Permar has or hereinafter acquires to bring any 12 action against Spectra or its agents, successors or assigns for infringement, damages and/or 13 royalties for the manufacture and sale of the Clark Pump™. 14 3. ENFORCEMENT. The Parties hereby stipulate and agree that the U.S. District 15 Court for the Northern District of California shall retain jurisdiction over the Parties, and 16 William Edinger, individually, and the subject matter of this action for the purposes of enforcing 17 the terms of this Stipulation and Agreement for Dismissal, including the jurisdiction to order 18 Permar to transfer title to the “414 and ‘198 Patents to Spectra. 19 4. DISMISSAL OF LITIGATION AND COVENANT NOT TO SUE. Subject to 20 Paragraph 3, above, the Parties request the Court enter a dismissal pursuant to the Federal Rules 21 of Civil Procedure, Rule 41(a)(1)(ii) dismissing the litigation pending in both the United States 22 District Court for the Northern District of California and orders the parties to file a dismissal 23 with prejudice of the action in the Superior Court in and for the County of Marin within ten (10) 24 days of the Court entering the dismissal of this action pursuant to this Stipulation and 25 Agreement. The parties also agree and covenant that neither of them, nor William Edinger 26 individually, shall make any further claims against the other, or file any litigation whatsoever, 27 with regard to the '414 or '198 patent, and that their respective rights and obligations with respect 28 5 ________________________________________________________ PERMAR v SPECTRA WATERMAKERS, INC.,CV-09-0972 SBA STIPULATION & ORDER FOR DISMISSAL 1 to the '414 and '198 patents, and to the manufacture of the Clark Pump, are limited to 2 enforcement of the rights and obligations set forth in this Stipulation and Order. 3 4 5. GENERAL PROVISIONS. a. Waiver. No waiver or indulgence of any breach or series of breaches of this 5 Stipulation shall be deemed a waiver of any other breach of this Stipulation or any of its 6 provisions or affect the enforceability of the remainder of this Stipulation. 7 b. Amendments. Any amendment, modification, addendum or revision to this 8 Stipulation and Agreement shall be valid only if in writing, signed by the Parties to be bound, 9 and filed with the Court and an Order entered modifying this Stipulation and Agreement. 10 c. Successors and Assigns. This Stipulation and Agreement, and the rights, benefits, 11 and obligations hereunder shall be binding upon and inure, jointly and severally, to the benefit or 12 detriment, as applicable, to the Parties hereto and their respective successors, assigns, and heirs. 13 d. Legal Costs and Expenses. In the event it is necessary to bring a motion before 14 the Court after the execution of this Stipulation and Agreement to resolve any dispute arising out 15 of or relating to the interpretation, construction, application, performance, breach or enforcement 16 of this Stipulation and Agreement, the prevailing Party will be entitled to recover its costs, 17 including reasonable attorneys' fees. The Parties shall each bear their own costs, expenses and 18 attorneys' fees incurred in connection with the Federal and State Court Actions referenced above 19 or the negotiation or execution of this Stipulation. 20 e. Entire Agreement. This Stipulation embodies and set forth the entire agreement 21 and understanding between the Parties relating to the subject matter hereof, and supersedes all 22 prior agreements between them. 23 f. Notices. Any notice which a party may be required or may desire to give to 24 Defendant Spectra, or to William Edinger individually, including any written notice of Event of 25 Default, shall be in writing and transmitted by first class mail, e-mail and facsimile, and shall be 26 deemed to have been given or made when sent and addressed by each of those methods, to the 27 other party, and their counsel as set forth below. All monthly payments to Permar shall be at his 28 address as set forth herein: 6 ________________________________________________________ PERMAR v SPECTRA WATERMAKERS, INC.,CV-09-0972 SBA STIPULATION & ORDER FOR DISMISSAL 1 2 3 4 5 6 7 8 9 10 11 William Edinger, President SpectraWatermakers, Inc. 20 Mariposa Road San Rafael, California 94901 Telephone: 415.526.2780 Fax: 415.526.2787 Email: Michael E. Brown, Esq. 225 Bush Street, 16th Floor San Francisco, California 94104 Telephone: 415.439.8822 Cell: 415.531.5478 Email: Clark Permar P.O. Box 701 Bolinas, CA 94924 12 13 14 15 16 Jack Siedman, Esq. P.O. Box 37 Bolinas, CA 94924 Telephone: 415. 868.0997 Facsimile: 415 868.0997 Email: The parties stipulate and agree that in the event any party changes their address, or, with 17 respect to Plaintiff, changes the address to which monthly payments should be sent before the 18 completion of payments described herein, such party will provide the other with written notice of 19 such change of address, in accordance with this paragraph. 20 g. Waiver of Civil Code Section 1542. Each of the Parties executing this Stipulation & 21 Agreement hereby acknowledge, and have been advised by their respective legal counsel, that 22 they understand California Civil Code Section 1542, which provides: 23 24 A general release does not extend to claims which the creditor does 25 not know or suspect to exist in his favor at the time of executing the 26 release, which if known by him must have materially affected his 27 settlement with (Plaintiff). 28 7 ________________________________________________________ PERMAR v SPECTRA WATERMAKERS, INC.,CV-09-0972 SBA STIPULATION & ORDER FOR DISMISSAL 1 Each Party hereto waives the provisions of Civil Code Section 1542, and the provisions 2 any and all similar provisions contained in the laws of any and all other jurisdictions, to the 3 fullest extent that they may lawfully waive all such rights. Each Party hereto acknowledges and 4 agrees that this waiver is an essential and material term of this Agreement, without which the 5 consideration relating hereto would not have been delivered. Each Party hereto acknowledges 6 that they may hereafter discover facts different from or in addition to those each now knows or 7 believes to be true with respect to the matters released herein or set forth herein, and each Party 8 hereto agrees that the releases and agreements contained herein shall be and will remain effective 9 in all respects notwithstanding the discovery of such different or additional facts. 10 11 h. Termination of Rights Under Prior Agreements. This Stipulation and Agreement 12 supersedes and replaces any prior agreements, written or oral, between Plaintiff and Defendant 13 regarding any matter. 14 15 16 Dated: 2/13/12 Dated: 4/20/12 CLARK PERMAR SPECTRA WATERMAKERS, INC. By: s/s CLARK PERMAR By: s/s WILLIAM EDINGER William Edinger, President 17 18 19 20 21 By: s/s WILLIAM EDINGER William Edinger, Individually 22 23 Approved as to form: 24 25 26 27 By: s/s JACK SIEDMAN Jack Siedman, Esq. Attorney for the Plaintiff Clark Permar By: s/s MICHAEL E. BROWN Michael E. Brown, Esq. Attorney for the Defendant Spectra Watermakers, Inc. 28 8 ________________________________________________________ PERMAR v SPECTRA WATERMAKERS, INC.,CV-09-0972 SBA STIPULATION & ORDER FOR DISMISSAL 1 ORDER 2 3 PURSUANT TO THE STIPULATION AND AGREEMENT SET FORTH ABOVE: 4 IT IS HEREBY ORDERED THAT: 5 1. Pursuant to the Stipulation and Agreement set forth above this Court following the 6 entry of the Order dismissing this action shall retain jurisdiction to enforce the 7 Stipulation and Agreement and the Stipulation and Agreement are incorporated by 8 reference in this Order and shall become the Order of this Court upon the entry of the 9 Order by the Clerk of the Court. 10 2. Pursuant to the Stipulation and Agreement by the parties and the consent of the Court 11 the Complaint and Cross-Complaint are hereby dismissed pursuant to FRCP, Rule 12 41(a)(1)(ii). 13 14 15 Dated: _5/17/12 16 17 ____________________________________ JUDGE OF THE U.S. DISTRICT COURT 18 19 20 21 22 23 24 25 26 27 28 9 ________________________________________________________ PERMAR v SPECTRA WATERMAKERS, INC.,CV-09-0972 SBA STIPULATION & ORDER FOR DISMISSAL

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