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Lawyers, other representatives, expert(s), tribunal’s secretary

Final Award by Consent

Procedural History

1.
Claimants Zamtec Limited, Memjet North Ryde Pty Limited, Milron Limited, Verifor Limited, Levon Limited, Vandini Limited ("Vandini"), Delo Finance Limited, Kamath Limited, Hedblom Limited, Elberino Limited, Monaxis Limited, Corrizen Limited, Sodep Limited, and Hanric Limited ("Claimants" or the "Memjet Companies") and Respondents Kia Silverbrook ("Silverbrook"), Janette Faye Lee ("Lee"), Silverbrook Research Pty Limited ("Silverbrook Research"), and Serif Pty Limited ("Respondents" or the "Respondents," together with Claimants, the "Parties") are parties to the Memjet Restructure Agreement dated 3 May 2012 (the "Restructure Agreement").
2.
On 6 December 2012, Claimants commenced arbitration proceedings (the "Arbitration" or the "122270 Arbitration") before the London Court of International Arbitration ("LCIA") by submitting a Request for Arbitration alleging various breaches of the Restructure Agreement by Respondents and paying the LCIA registration fee. Per the Restructure Agreement, the seat of the Arbitration is in Maui, Hawaii, United States of America.
3.
On 28 December 2012, Respondents filed a response to the Claimants’ Request for Arbitration, wherein Respondents denied Claimants’ claims and alleged various counterclaims against Claimants for alleged breaches of the Restructure Agreement.
4.
On 21 January 2013, Claimants commenced a second arbitration proceeding before the London Court of International Arbitration (the "132301 Arbitration") by submitting a second Request for Arbitration alleging additional breaches of the Restructure Agreement by the Respondents.
5.
On 15 February 2013, the LCIA appointed Hon. Frank W. Bullock Jr., Mr. Malcolm Holmes QC and Prof. Jan Paulsson to be the Tribunal in the Arbitration, with Professor Paulsson presiding.
6.
On 19 February 2013, Respondents filed a Response to the Claimants’ second Request for Arbitration, wherein the Respondents denied the Claimants’ claims.
7.
On 21 March 2013, Claimants and Respondents informed the LCIA Registrar and the Tribunal of their agreement to discontinue and dismiss the 132301 Arbitration and to pursue the disputes raised in the 132301 Arbitration as part of a First Amended Request for Arbitration in the 122270 Arbitration.
8.
On 14 March 2013, Claimants filed a First Amended Request for Arbitration, alleging breaches of various provisions of the Restructure Agreement.
9.
On 15 April 2013, Respondents filed a Response to the First Amended Request for Arbitration denying all Claims in the First Amended Request for Arbitration and asserting Counterclaims against the Claimants for breach of various provisions of the Restructure Agreement.
10.
On 17 May 2013, Claimants filed a Statement of Case alleging the details of their Claims.
11.
On 21 June 2013, Respondents filed a Statement of Defence and Counterclaims, responding to and denying the Claimants’ Claims, and alleging the details of their Counterclaims.
12.
On 12 July 2013, Claimants filed a Statement of Reply and Defense to Counterclaims Pursuant to LCIA Rule 15.4 on 12 July 2013, supporting their Claims and responding to and denying Respondents’ Counterclaims.
13.
On 9 August 2013, Respondents filed a Statement of Reply to Defence to Counterclaims and Rejoinder to Claimants’ Statement of Reply, supporting their Counterclaims and raising a rejoinder to Claimants’ Statement of Reply.

Settlement and Release Agreement

14.
On 29 January 2014, the Parties informed the Tribunal that they had executed an agreement (the "Settlement and Release Agreement") to resolve all of the Parties’ disputes in the 122270 Arbitration, and provided the Arbitral Tribunal with a copy of the Settlement and Release Agreement on 6 February 2014. On 6 February 2014, the Parties also informed the Tribunal that the Closing of the transactions contemplated by the Settlement and Release Agreement had been completed on 5 February 2014, and that, at the Closing, among other things, the Parties exchanged mutual releases, including releases of all claims made in the 122270 Arbitration.
15.
The Tribunal finds that the terms of the Settlement and Release Agreement are fair and commercially reasonable on the basis of what is represented to have been arms lengths’ negotiations between two well-represented parties and their declaration in paragraph 20 of the Settlement and Release Agreement itself that the transactions by which the settlement is to be given effect represent "fair and adequate value."

Final Award by Consent

16.
Having reviewed the Settlement and Release Agreement, the Arbitral Tribunal now, pursuant to Rule 26.8 of the LCIA Arbitration Rules, orders as follows:

Settlement Financial Consideration

17.
The Memjet Companies have caused a payment to be made to the Champion Legal Pty Ltd Trust Account, in the amount of AUS $827,874.34, and have authorized the release of such payment to the OSR. It is declared pursuant to this Final Award by Consent that such payment was made for and on behalf of Silverbrook Research, both in full satisfaction of all amounts owing by Silverbrook Research to the OSR on any account whatsoever as at 4 February 2014 and in consideration of the final dismissal of the winding up application that was filed, on November 1, 2013, by the Chief Commissioner of the Office of State Revenue of New South Wales (the "OSR") against Silverbrook Research in the Supreme Court of New South Wales (No. 2013/330233, the "Winding Up Application"). In the event that additional amounts accrue after 4 February 2014 and are owing to the OSR by way of additional interest or otherwise, the Silverbrook Parties shall pay the OSR such additional amounts.
18.
The Memjet Companies have caused (i) a payment to be made to Silverbrook, on behalf of Silverbrook and Lee, acting jointly, in the amount of AUS $6,392,867.70, and (ii) payments in full of all amounts owed by the Silverbrook Parties and/or Priority Matters Pty Limited to outside counsel as set forth on Exhibit T to the Settlement and Release Agreement. It is declared pursuant to this Final Award by Consent that the payment referenced in subsection (i) of this Order was made in full satisfaction of any and all obligations and amounts owing to any of the Silverbrook Parties under the Vandini Loan Agreement (as defined in the Settlement and Release Agreement).

Sale and Purchase of Shares

19.
Silverbrook Research, Silverbrook and Lee have transferred the legal interest in the Ordinary Shares they beneficially own in each of Corrizen, Delo, Elberino, Hanric, Hedblom, Kamath, Monaxis, Sodep, Vandini and Zamtec ("the Memjet Operating Companies") from MFSD Nominees Limited ("MFSD") to themselves.
20.
Silverbrook Research, Silverbrook and Lee have transferred such Ordinary Shares from themselves to the applicable Memjet Operating Company.
21.
The Memjet Operating Companies shall be registered as the holders of such Ordinary Shares. It is declared pursuant to this Final Award by Consent that such Ordinary Shares are, as of the date hereof, owned by each respective Memjet Operating Company.
22.
Donatable Pty Ltd ("Donatable") has sold to Kaiser-Francis Charitable Income Trust C (the "Purchaser"), and the Purchaser has purchased, the number of A ordinary shares of €0.01 each in the capital of each of the Memjet Operating Companies set forth opposite Donatable’s name in the table set out in Schedule 2 to the Settlement and Release Agreement (the "A Ordinary Shares").
23.
Purchaser has made payment to Donatable of the purchase price as set forth in the table in Schedule 2 to the Settlement and Release Agreement. It is declared pursuant to this Final Award by Consent that such A Ordinary Shares are, as of the date hereof, owned by Purchaser.
24.
Silverbrook Research, Silverbrook and Lee have executed and provided to the Memjet Companies a deed of waiver, in the form attached to the Settlement and Release Agreement as Exhibit D, addressed to Memjet (Holdings) Limited and MFSD confirming that they do not currently have, nor have they ever had, any legal or beneficial right, title and/or interest in or to the one issued ordinary share in the capital of Memjet (Holdings) Limited. It is declared pursuant to this Final Award by Consent that none of Silverbrook Research, Silverbrook and Lee has any legal or beneficial right, title and/or interest in or to the one issued ordinary share in the capital of Memjet (Holdings) Limited.
25.
The Memjet Companies shall register the transfers and sales of shares as provided for in the Settlement and Release Agreement.
26.
The Memjet Companies have provided the Silverbrook Parties with copies of the minutes of the relevant Memjet Companies approving the transfers or sales referenced in Order 22. The Memjet Companies will provide the Silverbrook Parties with written evidence of the registrations referenced in Order 25.

Funds held by Minter Ellison

27.
The Silverbrook Parties have waived any right, title or interest whatsoever, to the extent they had any such right, title or interest, in the present balance of those funds delivered to Minter Ellison by certain Memjet Companies in May 2012 pursuant to the Restructure Agreement which, for the avoidance of doubt, is the fund which was, at September 27, 2013, held by Minter Ellison in Controlled Monies Account, N:20-6951162 with the St. George Bank and was at that date $3,839,903.82, on which interest may have since accrued and bank fees may have since been incurred ("Remaining Funds held by Minter Ellison"). It is declared pursuant to this Final Award by Consent that the Remaining Funds held by Minter Ellison are the property of the Memjet Companies.
28.
The Silverbrook Parties have executed and provided to the Memjet Companies, for delivery to Minter Ellison, a direction to Minter Ellison, in the form attached to the Settlement and Release Agreement as Exhibit I.
29.
The Silverbrook Parties have executed and provided to the Memjet Companies, a deed poll for the benefit of Minter Ellison (the "Deed Poll"), in the form attached to the Settlement and Release Agreement as Exhibit J.
30.
The Silverbrook Parties shall take all such further steps and execute all such further documents as may reasonably be requested by Memjet from time to time to (i) cause and permit the Remaining Funds held by Minter Ellison to be dealt with by Minter Ellison solely in accordance with the Memjet Companies’ direction to Minter Ellison; and (ii) give full effect to the release and discharge of Minter Ellison set out in the Deed Poll.

Intellectual Property

31.
It is declared pursuant to this Final Award by Consent that the patents and patent applications listed in Exhibit N-l to the Settlement and Release Agreement are Memjet IP Rights, as that term is defined in the Restructure Agreement. The Silverbrook Parties have executed and delivered to the Memjet Companies an executed confirmation of assignment of patent rights in the form attached to the Settlement and Release Agreement as Exhibit N-l.
32.
It is declared pursuant to this Final Award by Consent that, as set forth in section 9.4.6 the Restructure Agreement, the Silverbrook Parties have a fully-paid, irrevocable, worldwide, transferable, non-exclusive, royalty-free license, with the right to sublicense, to use the Memjet IP Rights, including the patents and patent applications listed in Exhibit N-l to the Settlement and Release Agreement, to develop, market and commercialize the Other Technologies (as that term is defined in the Restructure Agreement). The Memjet Companies have executed and delivered to the Silverbrook Parties an executed license of patent rights in the form attached to the Settlement and Release Agreement as Exhibit N-2.
33.
The Silverbrook Parties have caused Precision Mechatronics Pty Limited ("Precision Mechatronics") to assign to and provide to the Memjet Companies an electronic export, to include revision histories (SVN or otherwise), directory structures, software library linkages etc., for any and all plans, drawings and programming code relating to any and all work performed by Precision Mechatronics for the Memjet Companies, or performed for Silverbrook Research for the benefit of the Memjet Companies or the Memjet Technology (as defined in the Founders Agreement) pursuant to the terms of Section 10.4 of the Settlement and Release Agreement. It is declared pursuant to this Final Award by Consent that such plans, drawings and programming code are the property of the Memjet Companies. Memjet North Ryde has executed and delivered, and the Silverbrook Parties have caused Precision Mechatronics to execute and deliver, a termination agreement, in the form attached to the Settlement and Release Agreement as Exhibit O, with respect to the termination of all purchase orders entered into between Memjet North Ryde and Precision Mechatronics prior to the Closing (as that term is defined in the Settlement and Release Agreement). It is declared pursuant to this Final Award by Consent that all such purchase orders are terminated and no longer of force or effect.
34.
The applicable Silverbrook Parties have executed and delivered to the Memjet Companies such confirmation(s) of assignment of trademark rights as were reasonably requested by the Memjet Companies to give effect to and register or record the assignment of any trademark rights included within the scope of Memjet IP Rights in the countries and jurisdictions listed on Exhibit W to the Settlement and Release Agreement.

Contracts

35.
The Assignment with Counterparty Consent (E. I. DuPont de Nemours and Company as Counterparty) attached to the Settlement and Release Agreement as Exhibit P satisfies the requirements of Section 8.6 of the Restructure Agreement. The Silverbrook Parties have executed and delivered the Assignment with Counterparty Consent to the Memjet Companies.
36.
The Silverbrook Parties have executed and delivered to the Memjet Companies and Taiwan Semiconductor Manufacturing Company Limited ("TSMC") an Acknowledgement of Transfer of Products and Masks with respect to the Products and Masks (each as defined therein), in the form attached to the Settlement and Release Agreement as Exhibit Q. It is declared pursuant to this Final Award by Consent that such Products and Masks are the property of the Memjet Companies.
37.
It is hereby declared that the funds wired to TSMC for prepayment of Purchase Order # 00688.4 are the property of the Memjet Companies ("Memjet TSMC Funds") and the Silverbrook Parties have no right, claim or lien on such funds or any remaining balances on deposit with TSMC in said account. The Silverbrook Parties have executed and delivered instructions to TSMC, in the form attached to the Settlement and Release Agreement as Exhibit R, to transfer the balance of the TSMC Account A499 via wire transfer to the Memjet Companies.
38.
With the exception of the transfer of the Memjet TSMC Funds, the Memjet Companies shall not make any deposits or withdrawals or effect any purchase orders using TSMC Account A499. The Memjet Companies shall confirm in writing to TSMC (and promptly provide a copy to the Silverbrook Parties) that the Memjet Companies are no longer authorized to make any transactions on TSMC Account A499.

Other Matters

39.
The final dismissal of the Winding Up Application has been ordered by the Supreme Court of New South Wales.
40.
The Tribunal shall be discharged and the Arbitration concluded upon the issuance of this Final Award by Consent.
41.
The Memjet Companies and the Silverbrook Parties shall each pay (via wire transfer) their full share of all Costs of Arbitration previously billed to each such applicable Party and one-half of any additional unbilled outstanding Costs of Arbitration as calculated by the LCIA at the conclusion of the Arbitration. For clarity, the "Costs of Arbitration" shall mean the LCIA’s administrative charges and the Arbitral Tribunal’s fees, as well as any other administrative fees assessed by the LCIA. These have been determined by the; LCIA Court, pursuant to Article 28.1 of the LCIA Rules, to be as follows:

Registration fee: £1,750.00

LCIA’s administrative charges: £12,163.64

Tribunal’s fees: £95,010.00

Total costs of the arbitration: £108,923.64

42.
The Memjet Companies and the Silverbrook Parties shall each bear their own respective legal fees, costs and expenses associated with and arising out of the Arbitration and the Settlement and Release Agreement.
43.
The applicable Silverbrook Parties have caused to be executed and delivered a Notice of Discontinuance of the Irish Proceeding, in the form attached to the Settlement and Release Agreement as Exhibit G.
44.
The Memjet Companies and the Silverbrook Parties shall each bear their own respective legal fees, costs and expenses associated with and arising out of the Irish Proceeding.
45.
The applicable Silverbrook Parties and Memjet Companies have caused to be executed and delivered a Notice of Discontinuance of the Australian Proceeding, in the form attached to the Settlement and Release Agreement as Exhibit H.
46.
The Memjet Companies and the Silverbrook Parties shall each bear their own respective legal fees, costs and expenses associated with and arising out of the Australian Proceeding.
47.
The applicable Silverbrook Parties and the Memjet Companies executed and delivered (and procured any other applicable party’s execution and delivery of) an amendment to the Restructure Agreement in the form attached to the Settlement and Release Agreement as Exhibit K.
48.
The applicable Silverbrook Parties have filed the Notices of Discontinuance set out in Orders 43 and 45 above in each of the respective jurisdictions. The Silverbrook Parties shall pay any costs or other fees or charges arising from such filings. The Silverbrook Parties have provided the Memjet Companies with written evidence of the filings required under this Order.
49.
The applicable Silverbrook Parties and Memjet Companies have executed and delivered (and procured any other applicable party’s execution and delivery of) the termination and/or waiver agreements in the forms attached to the Settlement and Release Agreement as Exhibit L-l through Exhibit L-7.
50.
The Silverbrook Parties shall not initiate any transactions under, do business as, or represent or hold himself, herself or itself, as applicable, out as a business under any name or service mark or trademark which contains the word "Memjet" or which uses, includes, or is confusingly similar to "Memjet." The Silverbrook Parties shall promptly file all papers necessary to withdraw or terminate all such business names, including but not limited to such official and fictional or assumed names ("doing business as" or "DBAs"), with the appropriate government bodies or agencies. The Silverbrook Parties shall change the name on or close all bank, financial, and other accounts held under, in the name of, or on behalf of such business names. The Silverbrook Parties shall provide the Memjet Companies with written evidence of the filings required under this Order.
51.
The Silverbrook Parties have caused Memjet Limited, a corporation incorporated under the laws of Ireland, to execute and deliver the documentation attached to the Settlement and Release Agreement as Exhibit M to amend the corporate name of Memjet Limited, and have taken such actions as necessary to remove Memjet Limited from the strike-off list of the Irish Registrar of Companies, or such actions as are necessary to restore Memjet Limited to the Irish Registrar of Companies, so that the amendment of the corporate name will be possible under applicable Irish law. Promptly following the removal of Memjet Limited from the strike-off list of the Irish Registrar of Companies or the restoration of Memjet Limited to the Irish Registrar of Companies, as applicable, the Memjet Companies shall file the documentation provided under this Order with the relevant Irish authorities to effect the change of the name of Memjet Limited and shall provide evidence of such filing to the Silverbrook Parties.
52.
Silverbrook, Lee and Silverbrook Research have executed irrevocable powers of attorney, in the forms attached to the Settlement and Release Agreement as Exhibit S, which shall serve to appoint representatives of the Memjet Companies as attorneys and proxies of each such Silverbrook Party, with the full power of substitution and resubstitution, to the full extent of such Silverbrook Party’s rights with respect to any matters related to the filing, prosecution (including any post-grant proceedings such as re-examination or opposition), maintenance, renewal or assignment of any of the Assigned Patents, any matters related to the enforcement of, or assertion of infringement claims against third parties with respect to, any of the Assigned Patents, and the Company Filings (each as defined in the Settlement and Release Agreement), which shall be effective for a term of five years following the Closing (as defined in the Settlement and Release Agreement).
53.
The Parties shall hold the terms of this Final Award by Consent and the terms and conditions of the Settlement and Release Agreement in confidence pursuant to LCIA Rule 30, and shall not disclose the terms of the Final Award by Consent or Settlement and Release Agreement except (i) as required to implement the terms and for legal, accounting, insurance, auditing and tax purposes and (ii) with respect to the Memjet Companies, in connection with and in furtherance of the interests of the Memjet Companies or in connection with a Memjet Sale (as defined in the Restructure Agreement) or the process related thereto. For avoidance of doubt, the Parties may take all actions necessary to confirm and/or enforce the award, including, but not limited to, filing this Final Award by Consent and/or the Restructure Agreement and/or the Settlement and Release Agreement in a court of law. Notwithstanding the foregoing, the; Parties may disclose that each of the Arbitration, the Irish Proceeding and the Australian Proceeding has been settled to their mutual satisfaction.
54.
This Final Award by Consent is a final determination of all claims and counterclaims asserted by the Memjet Companies and the Silverbrook Parties in the Arbitration. All such claims and counterclaims are forever released and discharged by the Parties pursuant to this Final Award by Consent and as set forth in the Release and Waiver of Claims referenced in each of Section 19.1 and Section 19.2 of the Settlement and Release Agreement.
55.
Per the Settlement and Release Agreement, the Arbitral Tribunal and the London Court of International Arbitration shall no longer have jurisdiction over the Parties for any purpose, including, but not limited to, enforcement of this Final Award by Consent or supervision of any performance called for by this Final Award by Consent.
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