Pg 1 of 13 UNITED STATES BANKRUPTCY COURT SOUTHERN DISTRICT OF NEW YORK In re: EASTMAN KODAK COMPANY, et al., 1 Debtors. Chapter 11 Case No. 12-10202 (ALG (Jointly Administered SUPPLEMENTAL DECLARATION OF DAVID DESCOTEAUX IN SUPPORT OF THE DEBTORS MOTIONS FOR AN ORDER AUTHORIZING (A THE SALE OF PATENT ASSETS FREE AND CLEAR OF CLAIMS AND INTERESTS, (B THE LICENSE OF PATENTS, (C THE ASSUMPTION OF PATENT CROSS LICENSE AGREEMENTS WITH FUJIFILM AND (D THE SETTLEMENT OF CLAIMS RELATED TO CERTAIN PATENTS I, David Descoteaux, declare, pursuant to 28 U.S.C. 1746, under penalty of perjury: 1. I am over the age of 18 and am competent to testify. I am a Managing Director at Lazard Frères & Co. LLC ( Lazard. I submit this declaration in support of the motions (the Motions 2 of Eastman Kodak Company ( Kodak, on behalf of itself and its affiliated debtors and debtors in possession in these chapter 11 cases (collectively, the Debtors, for an order authorizing, among other things: (a the granting of a license to the Licensed Patents (as defined in each of the Consortium Member License Agreements (as defined below, collectively, the Licensed Patents to each of the Licensees named therein (collectively, the Licensees ; (b the sale (the Sale of the Assigned Assets (as defined in the 1 2 The Debtors in these chapter 11 cases, along with the last four digits of each Debtor s federal tax identification number, are: Eastman Kodak Company (7150; Creo Manufacturing America LLC (4412; Eastman Kodak International Capital Company, Inc. (2341; Far East Development Ltd. (2300; FPC Inc. (9183; Kodak (Near East, Inc. (7936; Kodak Americas, Ltd. (6256; Kodak Aviation Leasing LLC (5224; Kodak Imaging Network, Inc. (4107; Kodak Philippines, Ltd. (7862; Kodak Portuguesa Limited (9171; Kodak Realty, Inc. (2045; Laser-Pacific Media Corporation (4617; NPEC Inc. (5677; Pakon, Inc. (3462; and Qualex Inc. (6019. The location of the Debtors corporate headquarters is: 343 State Street, Rochester, NY 14650. Capitalized terms not otherwise defined herein are to be given the meanings ascribed to them in the Motions and, if not defined in the Motions, are to be given the meanings ascribed to them in the Sale Agreement.
Pg 2 of 13 Sale Agreement free and clear of Claims and Interests (except for and subject to Permitted Encumbrances (as defined in the Sale Agreement and conditional on entry into and subject to the Grant-Back License Agreements and the Bidco DC/KISS Patent License Agreements (each as defined below; (c Kodak s entry into and consummation of the Grant-Back License Agreements; (d the Debtors entry into and consummation of the FlashPoint Agreements (as defined below; (e the Debtors entry into and consummation of the Fuji Letter Agreement (as defined below; (f the assumption by Kodak of the Cross License Agreements (as defined in the Fuji Letter Agreement pursuant to the Fuji Letter Agreement; and (g the dismissal and release of certain patent claims pursuant to the Retained Patents License Agreements (as defined below (the transactions contemplated by the Sale Agreement, the Consortium Member License Agreements, the Grant-Back License Agreements, the FlashPoint Agreements, the Fuji Letter Agreement and all Ancillary Agreements thereto, collectively, the Transaction. 2. Except as otherwise indicated, the facts and statements set forth in this declaration are based upon my personal knowledge, my review of relevant documents, information provided to me or verified by executives or employees of the Debtors or the Debtors other professional advisors and my opinion based upon my experience and my knowledge of the Digital Imaging Patent Assets and the sale process for such assets. 3. I am authorized to make this declaration on behalf of Lazard and, if called upon to testify, I would testify competently to the facts set forth herein. I am not being compensated specifically for this testimony other than through payments received by Lazard as a professional retained by the Debtors in these chapter 11 cases. Qualifications; Expertise of the Financial Advisor 4. Lazard is the primary U.S. operating subsidiary of an international financial advisory and asset management firm. Lazard, together with its predecessors and -2-
Pg 3 of 13 affiliates, has been advising clients around the world for more than 150 years. The current managing directors, directors, vice presidents and associates at Lazard have extensive experience working with financially-troubled companies in complex financial restructurings both out-ofcourt and in chapter 11 proceedings. 5. Lazard and its principals have been involved as advisors to debtors, creditors, equity constituencies and government agencies in many reorganization cases. Since 1990, Lazard s professionals have been involved in over 250 restructurings, representing more than $1 trillion in debtor assets, including sales of assets under section 363 of the Bankruptcy Code. Notably, Lazard has been retained as a financial advisor and investment banker in numerous large and complex chapter 11 cases, including, among others, recent chapter 11 cases in the Southern District of New York such as In re TBS Shipping Services Inc., Case No. 12-22224 (Bankr. S.D.N.Y. filed Feb. 6, 2012; In re Dynegy Holdings, LLC, Case No. 11-38111 (Bankr. S.D.N.Y. filed Nov. 7, 2011; In re The Great Atlantic & Pacific Tea Co., Case No. 10-24549 (Bankr. S.D.N.Y. filed Dec. 12, 2010; In re Citadel Broadcasting Corp., Case No. 09-17442 (Bankr. S.D.N.Y. filed Dec. 20, 2009; In re Charter Communications, Inc., Case No. 09-11435 (Bankr. S.D.N.Y. filed Mar. 27, 2009; In re Lehman Brothers Holdings Inc., Case No. 08-13555 (Bankr. S.D.N.Y. filed Sept. 15, 2008; In re Northwest Airlines, Inc., Case No. 05-17930 (Bankr. S.D.N.Y. filed Sept. 14, 2005; and In re Calpine Corp., Case No. 05-60200 (Bankr. S.D.N.Y. filed Dec. 20, 2005. Recent Lazard experience with respect to sales under section 363 of the Bankruptcy Code includes In re Graceway Pharmaceuticals, LLC, Case No. 11-13036 (Bankr. D. Del. filed Sept. 29, 2011; In re Station Casinos, Inc., Case No. 09-52477 (Bankr. D. Nev. filed Apr. 12, 2011; In re TerreStar Networks Inc., Case No. 10-15446 (Bankr. S.D.N.Y. filed Oct. 19, 2010; In re Innkeepers USA Trust, Case No. 10-13800 (Bankr. S.D.N.Y. -3-
Pg 4 of 13 filed July 19, 2010; In re Nortel Networks, Inc., Case No. 09-10138 (Bankr. D. Del. filed Jan. 14, 2009; In re Pilgrim's Pride Corp., Case No. 08-45664 (Bankr. N. Tex. filed Dec. 1, 2008; In re Genuity, Inc., Case No. 02-43558 (Bankr. S.D.N.Y. filed Nov. 27, 2002; and In re Adelphia Communications Corp., Case No. 02-41729 (Bankr. S.D.N.Y. filed June 25, 2002. 6. I am a Managing Director at Lazard, in its Restructuring Group. I have been employed by Lazard since 1999, and have extensive experience as an advisor in corporate restructurings, mergers and acquisitions, and IP-related transactions. I have advised companies, creditors and investors in connection with numerous in-court and out-of court restructurings and recapitalizations, including most recently Nortel Networks, Inc. ( Nortel, Lehman Brothers Holdings Inc. ( Lehman, Satélites Mexicanos S.A. de C.V., AbitibiBowater Inc., and Cemex S.A.B. de C.V. Prior to Lazard, I was a generalist in the Mergers and Acquisitions Group at Deutsche Bank Securities and before that was employed at Andec Investments, a private investment management firm. I have previously participated in distressed asset sales in chapter 11 bankruptcies, including, most recently the sales of certain Lehman and Nortel assets, including the $4.5 billion sale of Nortel s residual patent portfolio to a consortium of investors, including Apple Inc., Microsoft Corporation, Research in Motion Limited and Ericsson Inc. I have a B.A. from Colby College and an M.B.A. from the University of Chicago. The Marketing and Sale Process 7. As described in the Declaration of David Descoteaux In Support of the Debtors Motion For Orders (I(AConditionally Authorizing the Sale of Patent Assets Free and Clear of Claims and Interests, (B Establishing a Competitive Bidding Process and (C Approving the Notice Procedures and (II Authorizing the Sale of Patent Assets Free and Clear of Claims and Interests, dated June 22, 2012 [Docket No. 1463] (the Conditional Sale Declaration, the Debtors and their advisors have engaged in a lengthy and wide-ranging -4-
Pg 5 of 13 marketing process for the Digital Imaging Patent Assets, including their Digital Capture Portfolio (the DC Portfolio and their Kodak Imaging Systems and Services Portfolio (the KISS Portfolio for over a year. 8. On July 5, 2012, the Court entered an order (the Conditional Sale Order approving the Bidding Procedures for a competitive process for the Sale of the Digital Imaging Patent Assets and authorizing the Debtors to sell all or a portion of the Digital Imaging Patent Assets to one or more Successful Bidders, subject to the Conditional Sale Order, the Bidding Procedures and the Bankruptcy Court s entry of the Final Sale Order. 9. Pursuant to the Conditional Sale Order and the Bidding Procedures, and with the support (or lack of objection of the Reviewing Creditors, the Debtors proceeded with their planned sale process, entered into confidentiality agreements with interested bidders, and designated several of these parties as Potential Bidders under the Bidding Procedures. The Debtors and Lazard continued to vigorously market the Digital Imaging Patent Assets in advance of the deadline for submission of Preliminary Bid Documents and the Bid Deadline. I believe that the sale process conducted by Kodak and Lazard was in accordance with the Bidding Procedures and provided all creditors and other parties in interest a full, fair and reasonable opportunity to qualify as bidders, and provided potential purchasers sufficient information to enable them to make an informed judgment on whether to bid. By late July 2012, Kodak had signed over 30 confidentiality agreements with interested potential bidders. 10. With the Debtors permission and encouragement (after consultation with the Reviewing Creditors, Intellectual Ventures Fund 83 LLC ( IV formed a consortium with Apple Inc. ( Apple, Microsoft Corporation, Adobe Systems Incorporated and Facebook, Inc. (the Initial IV Consortium, for the purpose of bidding for the Assigned Assets, and -5-
Pg 6 of 13 submitted its bid on behalf of the Initial IV Consortium on August 3, 2012. The Debtors analyzed IV s bid in consultation with their advisors and, after receiving input from the Reviewing Creditors, determined that IV s bid was a Qualified Bid and that IV was a Qualified Bidder under the Bidding Procedures. In accordance with the Bidding Procedures, Kodak invited IV and the other Qualified Bidders to participate in the Auction for the Digital Imaging Patent Assets. 11. Prior to the Auction, the Debtors received three other bids, each of which the Debtors and their advisors, after consulting with the Reviewing Creditors, determined to be a Qualified Bid and each respective bidder, a Qualified Bidder. One such bid was submitted by RPX Corporation ( RPX, together with another consortium of technology companies (the RPX Consortium. As a result of their review of the bid packages (and associated discussions with the bidders, the Debtors concluded that each Qualified Bidder s bid contained deficiencies, particularly with respect to the proposed purchase price. Thus, the Debtors and their advisors proceeded with the aim of obtaining a better bid through the auction process. 12. The Debtors commenced the Auction on August 8, 2012. Initially, both the Initial IV Consortium and the RPX Consortium failed to submit bids at a valuation acceptable to the Debtors. 3 The Debtors and their advisors (after consulting with the Reviewing Creditors continued to engage with the IV Consortium and the RPX Consortium separately, but were unable to obtain an acceptable price from either in isolation. Consequently, the Debtors and their advisors determined that by combining the various members of the IV Consortium and RPX Consortium into one bidding consortium and (with the knowledge of the Reviewing 3 At or prior to the Auction, the two other Qualified Bidders advised the Debtors and their advisors that they did not expect to materially increase the purchase prices that had been proposed in their respective bids. -6-
Pg 7 of 13 Creditors consenting to the inclusion of new additional consortium members, the Debtors could obtain the highest and best offer for the Digital Imaging Patent Assets. 13. Having received the Debtors consent (with the knowledge of the Reviewing Creditors, IV subsequently expanded its consortium to include members of the RPX Consortium and also began seeking additional members with the goal of resubmitting its bid. IV s consortium ultimately grew to include Amazon Fulfillment Services, Inc., FUJIFILM Corporation ( FUJIFILM, Huawei Technologies Co., Ltd., Google Inc., H.T.C. (B.V.I. Corporation, Research In Motion Limited, Samsung Electronics Co., Ltd. and Shutterfly, Inc. (collectively, with the Initial IV Consortium, the IV Consortium. During the course of negotiations, IV also requested the right to designate Apple as the purchaser of certain patents. 14. The Debtors initial transaction structure contemplated the sale of the DC and KISS portfolios. The IV Consortium s offer, however, also was conditioned on protection from future patent infringement claims. Thus, to reach a deal with the IV Consortium, Kodak would be required to ensure patent peace by licensing all patents not sold as part of the transaction and agreeing to a mutual release of all patent claims with each of the Licensees. 15. After deliberation and discussion with the Reviewing Creditors, the Debtors and their advisors determined that proceeding with a transaction with the IV Consortium was the best path forward to monetize their intellectual property, complete their overall efforts to reorganize, and emerge from these chapter 11 cases. During the negotiating process with IV and the consortium members, the Debtors and their advisors continued to respond to unsolicited offers from other third parties, though none of those discussions materialized into a binding offer for the Digital Imaging Patent Assets. -7-
Pg 8 of 13 16. The Debtors (in consultation with the Reviewing Creditors, IV, the consortium members and their respective advisors worked to negotiate the sale of the Digital Imaging Patent Assets to IV and Apple and the licensing of Kodak s Digital Imaging Patent Assets and retained patent assets to the Licensees. The road to agreement on the terms of the proposed Transaction was not easy. Over a period of months, the parties and their advisors participated in numerous conference calls and engaged in several rounds of in-person meetings aimed at resolving the many open issues in the Sale Agreement, Consortium Member License Agreements, and Grant-Back License Agreements. Many of the differences between Kodak, IV, and the Licensees were significant and required intense negotiation before agreement could be reached. 17. Finally, on December 18, 2012, IV and Kodak executed a patent sale agreement (together with all schedules, exhibits and annexes thereto, the Sale Agreement, whereby IV agreed to purchase the Assigned Assets and to assume the Assumed Liabilities (as defined in the Sale Agreement. The Sale Agreement also contemplates that: (a simultaneously with the Closing (as defined in the Sale Agreement but immediately prior to the Sale, Kodak will grant licenses to the Assigned Patents (as defined in the Sale Agreement to each consortium member pursuant to the Bidco DC/KISS Patent License Agreements (collectively, the Bidco DC/KISS Patent License Agreements between Kodak and each Licensee, with such Sale being subject to such licenses as Permitted Encumbrances; (b under the Grant-Back License Agreements between Kodak and each of IV and Apple (together, the Grant-Back License Agreements, Kodak will retain a license to the Assigned Patents; and (c pursuant to the Retained Patents License Agreements between Kodak and each Licensee (collectively, the Retained Patents License Agreements, and together with the Bidco DC/KISS Patent License -8-
Pg 9 of 13 Agreements, the Consortium Member License Agreements and subject to the exceptions therein, Kodak s remaining patents (the non-assigned Patents will be licensed to the consortium members and Kodak and each Licensee will release their respective patent claims against each other (the dismissal and release of patent claims pursuant to the Retained Patents License Agreements, the Licensee Settlements. The Consortium Member License Agreements and Licensee Settlements were an important part of the negotiations relating to the Transaction, and I believe that IV and the Licensees would not have entered into a transaction to purchase the Assigned Assets that did not include these licensing transactions and settlements. 18. Also on the same date, to further the successful consummation of the Transaction, Kodak, FlashPoint Technology, Inc. ( FlashPoint, IV, and Apple entered into the a settlement agreement (the FlashPoint Settlement Agreement, whereby FlashPoint has agreed, upon consummation of the Sale, to dismiss any and all claims to the Disputed Patents and the other Assigned Patents being sold by Kodak as part of the Sale, in exchange for a payment of $5 million by IV on behalf of Kodak, and a license from Apple and IV to FlashPoint under the Disputed Patents. Kodak and FlashPoint have also entered into the FlashPoint Supplemental Settlement Agreements (together with the FlashPoint Settlement Agreement, the FlashPoint Agreements, whereby FlashPoint releases any and all claims against all other Kodak patents (with certain exceptions set forth therein, Kodak transfers its shares in FlashPoint, Modesmata Corporation ( Modesmata and Hanei Corporation ( Hanei under the Investment Agreement, dated June 7, 2010, between Kodak and FlashPoint (the Investment Agreement, in exchange for a payment of approximately $1.68 million and each of Kodak, FlashPoint, Modesmata and Hanei will release any and all claims relating to the Investment -9-
Pg 10 of 13 Agreement and the delivery, assignment and transfer of the FlashPoint, Modesmata and Hanei shares. 19. In order to resolve Apple s ownership claims in the Disputed Patents and as part of the consummation of the Sale: (a Kodak will license to each Licensee its rights in the Disputed Patents; (b Apple will license its rights under the Disputed Patents to each Licensee, to the extent of its ability to do so; (c Kodak will sell the Assigned Patents subject to the licenses described in (a; (d Apple and IV have entered into a separate agreement governing the ownership and allocation of the Assigned Patents between Apple and IV; and (e the Debtors and Apple will release all infringement claims under each other s intellectual property, and will dismiss their respective claims against each other in the adversary proceeding captioned Eastman Kodak Company v. Apple Inc. and FlashPoint Technology, Inc., (Adv. Proc. No. 12-01720, and other pending litigation pursuant to the Retained Patents License Agreement. I believe that the resolution of the patent disputes between the Debtors, Apple and FlashPoint pursuant to the Transaction, as described above, is a necessary condition to the Transaction. 20. In addition to the foregoing, Kodak and FUJIFILM entered into a separate agreement to resolve a number of litigation and commercial issues between the parties. Pursuant to the letter agreement (the Fuji Letter Agreement between Kodak and FUJIFILM, FUJIFILM will consent to Kodak s assumption of the Cross License Agreements, as modified to allow Kodak to assign and sublicense its rights under the Cross License Agreement, without the prior consent of FUJIFILM, on the same terms as the licenses granted in the Grant-Back License Agreements. As amended pursuant to the Fuji Letter Agreement, Kodak s rights under the assumed Cross License Agreements, which are a valuable asset to certain of the Debtors business lines, may be assigned or sublicensed by the Debtors in accordance with the terms of -10-
Pg 11 of 13 the Fuji Letter Agreement, thus allowing the Debtors critical flexibility to convey their rights under the Cross License Agreements as part of a sale of those businesses, including the previously announced sale of the Debtors Personalized Imaging business. I believe that the Fuji Letter Agreement enhances the value to the Debtors of these contemplated dispositions. Furthermore, and in addition to the standstill and the dismissal and release of claims between Kodak and FUJIFILM pursuant to the Retained Patents License Agreements, Kodak and FUJIFILM will enter into a three-year mutual standstill of patent claims relating to Excluded Products (as defined in the Retained Patents License Agreements, including printing devices and related components and materials the cornerstone of the Debtors post-emergence business. The Fuji Letter Agreement therefore provides important additional protection to the Debtors newly-reorganized businesses as they emerge from these chapter 11 cases. Finally, the Debtors, as part of a comprehensive agreement with FUJIFILM, will allow a certain patent claim of FUJIFILM as a general unsecured prepetition claim against Kodak s estate in the amount of $70 million. I believe this settlement between Kodak and FUJIFILM pursuant to the Fuji Letter Agreement and the Retained Patents License Agreement between Kodak and FUJIFILM is a reasonable settlement in the context of the Transaction, and is a necessary condition to the Transaction. 21. The terms of the Sale Agreement, the Consortium Member License Agreements, the other Ancillary Agreements, the FlashPoint Agreements and the Fuji Letter Agreement were negotiated in good faith and from arm s length bargaining positions by Kodak, IV, the Licensees, and FlashPoint, each of whom has considerable expertise in the technology industry and with intellectual property transactions. The Debtors and their advisors engaged in continuing negotiations regarding a potential transaction and transaction documents with IV, -11-
Pg 12 of 13 FlashPoint and certain Licensees, and their respective advisors, over a five-month period. The negotiations included numerous face-to-face meetings and conference calls, and countless written communications between the legal and financial advisors of the parties. Significant back and forth took place between the parties before the outstanding issues in connection with the transaction agreements were resolved. I believe that the Sale price, licensing fees, and other benefits achieved for the Debtors through this negotiation process, as set forth in the Sale Agreement, Consortium Member Licensing Agreements and the other transaction documents, constitute the highest and best consideration from the results of the Auction for the purchase and licensing of the Assigned Assets and the licensing of patents retained by the Debtors. 22. No other entity or group of entities has proposed a viable transaction involving the Assigned Assets for greater value to the Debtors estate than the IV Consortium. I believe that there are no other entities interested in and capable of consummating a transaction involving the Assigned Assets other than the approximately 145 parties that were contacted by the Debtors and Lazard in the pre- and post-petition marketing processes. Based on this comprehensive canvassing of the market undertaken by the Debtors, Lazard and the Debtors other advisors, and the results of the sale process, which was conducted by the Debtors without collusion and in accordance with the Bidding Procedures, I believe that the process conducted by the Debtors and their advisors resulted in the best possible transaction for the Assigned Assets under the circumstances of these chapter 11 cases. 23. Throughout the sale process, the Debtors have consulted with the Reviewing Creditors, and have worked closely with the Reviewing Creditors legal and financial advisors to address issues and concerns regarding the Transaction. -12-
Pg 13 of 13 24. I believe the terms of the Sale Agreement and the Consortium Member Licensing Agreements have been subject to a robust market test as a result of the extensive preand post-petition marketing efforts undertaken by the Debtors and Lazard combined with the extensive arm s length and good faith negotiations between the parties. Based on my experience with intellectual property-related transactions and my involvement with the marketing and sale process for the Digital Imaging Patent Assets, I believe the Transaction, including the transactions contemplated by the Sale Agreement, the Consortium Member License Agreements, the FlashPoint Agreements and the Fuji Letter Agreement, represent the highest and best offer received by the Debtors for the Assigned Assets. 25. Accordingly, I believe that approval of the sale of the Assigned Assets to IV and Apple, the licensing of patents to the Licensees, and the consummation of the transactions contemplated by the Sale Agreement, the Consortium Member License Agreements, the FlashPoint Settlement Agreement, the Fuji Letter Agreement, and all Ancillary Agreements thereto are in the best interests of the Debtors and their estates, creditors and all parties in interest in these chapter 11 cases. Pursuant to 28 U.S.C. 1746, I declare under the penalty of perjury that the foregoing is true and correct. Dated: December 19, 2012 New York, New York Lazard Frères & Co. LLC /s/ David Descoteaux David Descoteaux Managing Director -13-