Free Stipulation - District Court of Federal Claims - federal

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IN THE UNITED STATES COURT OF FEDERAL CLAIMS JENNINGS TRANSMISSION SERVICE OF GOLDSBORO, INC., Plaintiff,
V.

THE UNITED STATES, Defendant, No. 05-1209 C and Judge Lawrence M. Baskir JASPER ENGINES & TRANSMISSIONS, Third-Party Defendant, and READY BUILT DISTRIBUTORS, INC., Third-Party Defendant. STIPULATION FOR ENTRY OF JUDGMENT Plaintiff Jennings Transmission Service of Goldsboro, Inc. (Jennings Transmission), defendant The United States (the government), and third-party defendants Jasper Engines & Transmissions (Jasper Engines) and Ready Built Distributors, Inc. (Ready Built) desire to settle all issues in the above-identified action (the Action). Also, the government, Jasper Engines and Ready Built desire to settle all issues concerning any liability of Jasper Engines and Ready Built to the United States Postal Service

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(USPS) relating to Jennings Transmission's claim of patent infringement in the Action. Jennings Transmission has submitted a written offer to the government to settle the Action upon the terms set forth below, and the government has duly accepted Jennings Transmission's offer. Jasper Engines and Ready Built also have agreed to the terms of the settlement. In accordance with the terms of the offer and acceptance and to secure the performance thereof, the defendant, by its authorized representative of the Attorney General, and the plaintiff and the third-parties, by their respective attorneys, hereby enter into this stipulation to be filed in the Action for the purpose of causing a final judgment to be entered against defendant in accordance with the terms set forth below. For the purpose of settling and compromising the Action, therefore, Jennings .Transmission, the government, Jasper Engines and Ready Built stipulate to the following: 1. Plaintiff Jennings Transmission owns all rights in and title to United States Patent No. 6,085,609, (the '609 patent) entitled Replacing Transmission of Right Drive Vehicle, and Associated Change-Over Linkage, and is authorized to grant releases and licenses. Plaintiff brought this Action under 28 U.S.C. § 1498(a) to recover reasonable and entire -2-

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compensation for the alleged unauthorized use or manufacture by or for the USPS of inventions covered by the '609 patent. 2. Jasper Engines and Ready Built have supplied to the USPS certain devices accused of infringing the '609 patent. The USPS's National Ordering Agreements with Jasper Engines and Ready Built contain patent indemnity provisions. Jasper Engines and Ready Built have joined the litigation to assert their interests. 3. Jennings Transmission has proposed and agreed to accept from the government, Jasper Engines and Ready Built payment of a total lump sum of Four Hundred Twenty-Five Thousand Dollars ($425,000) according to the following terms: a. Jasper Engines and Ready Built have each paid the total lump sum of Fifty Thousand Dollars ($50,000) to Jennings Transmission; b. Jennings Transmission, the government, Jasper Engines and Ready Built have agreed to allow final judgment to be entered in favor of Jennings Transmission and against the government in the total lump sum of Three Hundred Twenty-Five Thousand Dollars ($325,000) (a Proposed Order is attached hereto for that purpose);

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c. Within ten (10) business days of the entry of judgment against the government in accordance with this Stipulation for Entry of Judgment, the government will provide Jasper Engines and Ready Built with a release for any liability to the USPS relating to Jennings Transmission's claim of infringement in the Action, such as any claim arising out of JasperEngines' or Ready Built's obligation to indemnify the USPS against any claim of patent infringement in connection with the Action; 4. In consideration for these payments as set forth above, Jennings Transmission hereby does: a. release the government, Jasper Engines and Ready Built from any claims that were brought or could have been brought in the Action, and release them from any and all claims for infringement, or unauthorized manufacture or use by or for the government, of any subject matter described or claimed in United States Patent No. 6,085,609, including any patent issuing from any continuation, continuation in part or divisional application claiming priority from the application that issued as United States Patent No. 6,085,609, and any foreign counterpart;

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b. grant to the government a non-exclusive, irrevocable and fully paid-up license to manufacture, make, use,offer to sell, sell, import and/or export, by or for the government, any subject matter described or claimed in United States Patent No. 6,085,609, including any patent issuing from any continuation, continuation in part or divisional application claiming priority from the application that issued as United States Patent No. 6,085,609, and including any foreign counterpart; c. grant to each of Jasper Engines and Ready Built a non-exclusive, irrevocable and fully paid-up license to manufacture, make, have made, use, offer to sell, sell, import and/or export any subject matter described or claimed in United States Patent No. 6,085,609, including any patent issuing from any continuation, continuation in part or divisional application claiming priority from the application that issued as United States Patent No. 6,085,609, and including any foreign counterpart; and d. represent and warrant that it shall not attempt to enforce United States Patent No. 6,085,609 against the government or any of its suppliers acting with the government's authorization or consent.

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5. Jennings Transmission will present the judgment entered pursuant to this Stipulation for Entry of Judgment to the USPS for payment by it, and the USPS shall pay such judgment by no later than November 15, 2008, without interest or penalty. 6. 7. Each party shall bear its own costs and attorneys' fees. In the event that the Court declines to enter judgment in

accordance with this stipulation, in whole or in part, the stipulation shall be void. Respectfully submitted,

2008 )ats N.C. State Bar No. 5,547 Anthony J. Biller N.C. State Bar No. 24,117 Coats & Bennett, P.L.L.C. 1400 Crescent Green, Suite 300 Cary, North Carolina 27518 Telephone No.: (919) 854-1844 Facsimile No.: (919) 854-2084 Attorneys for Plaintiff Jennings Transmission Service

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GREGORY G. KATSAS Assistant Attorney General

JOJHN FARGO Director (Authorized Representative of the Attorney General)

OF COUNSEL: GARY L. HAUSKEN Assistant Director Department of Justice

KEN B. BARRETT Attorney Commercial Litigation Branch Civil Division Department Of Justice Washington, D.C. 20530 Telephone: (202) 307-0343 Facsimile: (202) 307-0345 E-mail: [email protected] Attorneys for the United States

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,2008 Hinshaw R~fael A. Sanchez Bingham McHate LLP 2700 Market Tower 10 W. Market Street Indianapolis, IN 46204-4900 Telephone: (317) 635-8900 Facsimile: (317) 236-9907

Attorneys ~rJasper Engines & Transmissions

,2008 James S. Ward Ward &.Wilson, LLC 2100 Southbridge Parkway Suite 580 Birmingham, Alabama 35209 Telephone: (205) 871-5404 Facsimile: (205) 871-5758

Attorney for Ready-Built Distributors, Inc.

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,2008 James M. Hinshaw Rafael A. Sanchez Bingham McHale LLP 2700 Market Tower 10 W. Market Street Indianapolis, IN 46204-4900 Telephone: (317) 635-8900 Facsimile: (317) 236-9907 Attorneys for Jasper Engines & Transmissions

,2008 James SouWt~ri~,giLp~aa Za Ward & ' 2100 S r~ Suite 580 Birmingham, Alabama 35209 Telephone: (205) 871-5404 Facsimile: (205) 871-5758 Attorney for Ready-Built Distributors, Inc.

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ATTACHMENT

PROPOSED ORDER

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IN THE UNITED STATES COURT OF FEDERAL CLAIMS JENNINGS TRANSMISSION SERVICE OF GOLDSBORO, INC., Plaintiff,

THE UNITED STATES, Defendant, and JASPER ENGINES & TRANSMISSIONS, Third-Party Defendant, and READY BUILT DISTRIBUTORS, INC., Third-Party Defendant.

No. 05-1209 C Judge Lawrence M. Baskir

PROPOSED ORDER In accordance with the Stipulation for Entry of Judgment filed by the parties in this action, the Clerk is directed to enter final judgment in favor of plaintiff and against defendant in the total lump sum of Three Hundred Twenty-Five Thousand Dollars ($325,000). Each party shall bear its own costs and attorneys' fees. IT IS SO ORDERED.

LAWRENCE M. BASKIR Judge