Exhibit 10.1


 


CONFIDENTIAL TREATMENT REQUESTED
BY ALIGN TECHNOLOGY, INC.


 


	
   

  



 


SETTLEMENT
AGREEMENT


 


dated as of August 16, 2009


 


between


 


ALIGN
TECHNOLOGY, INC.,


 


 


and


 


 


ORMCO CORPORATION


 


	
   

  



 






[*]
Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Securities and Exchange Commission.


 

















 


TABLE OF
CONTENTS


 


	
  ARTICLE I

  
	
   

  
	
  Settlement

  
	
   

  	
   

  	
   

  
	
  1.1

  	
  Settlement Payments and Consideration

  	
  3

  
	
  1.2

  	
  Undertakings Concerning the Litigation

  	
  3

  
	
  1.3

  	
  Acknowledgment

  	
  3

  
	
  1.4

  	
  Ormco Release and Covenant not to Assert

  	
  3

  
	
  1.5

  	
  Company Release and Covenant not to Assert

  	
  4

  
	
  1.6

  	
  Announcement of Settlement and Public Disclosures

  	
  5

  
	
  1.7

  	
  Cooperation; Filings; Other Actions

  	
  6

  
	
  1.8

  	
  Representations and Warranties of the Parties

  	
  6

  
	
  1.9

  	
  Expenses

  	
  7

  
	
   

  	
   

  	
   

  
	
  ARTICLE II

  
	
   

  
	
  Miscellaneous

  
	
   

  	
   

  	
   

  
	
  2.1

  	
  Amendment

  	
  7

  
	
  2.2

  	
  Waivers

  	
  7

  
	
  2.3

  	
  Counterparts and Facsimile

  	
  7

  
	
  2.4

  	
  Governing Law and Forum

  	
  7

  
	
  2.5

  	
  WAIVER OF JURY TRIAL

  	
  7

  
	
  2.6

  	
  Notices

  	
  8

  
	
  2.7

  	
  Entire Agreement

  	
  9

  
	
  2.8

  	
  Assignment

  	
  9

  
	
  2.9

  	
  Other Definitions

  	
  9

  
	
  2.10

  	
  Captions

  	
  9

  
	
  2.11

  	
  Severability

  	
  9

  
	
  2.12

  	
  No Third Party Beneficiaries

  	
  10

  
	
  2.13

  	
  Time of Essence

  	
  10

  
	
  2.14

  	
  Specific Performance

  	
  10

  
	
   

  	
   

  	
   

  
	
  LIST OF EXHIBITS

  
	
   

  	
   

  	
   

  
	
  Exhibit A:

  	
  Stock Purchase Agreement

  	
   

  
	
  Exhibit B:

  	
  Consent
  Judgment

  	
   

  
				



 






[*] Confidential treatment requested pursuant to a
request for confidential treatment filed with the Securities and Exchange
Commission. Omitted portions have been filed separately with the Securities and
Exchange Commission.


 

















 


SETTLEMENT
AGREEMENT, dated as of August 16, 2009 (this “Agreement”), between Align Technology, Inc.,
a Delaware corporation (the “Company”), and
Ormco Corporation, a Delaware Corporation (“Ormco”) (Ormco
and the Company are the “Parties” and
each individually a “Party”).


 


RECITALS:


 


A.           The Settlement.  The Company and Ormco intend to settle, upon
the terms and conditions set forth in this Agreement, the litigation involving
Ormco Corporation, as Plaintiff and Counterdefendant, and the Company as
Defendant and Counterclaimant, that is pending in the U.S. District Court for
the Central District of California, Western Division, Case No. SACV 03-16
CAS (ANx) (such litigation, the “Litigation”),
which Litigation involves, among other things, Ormco’s U.S. Patent Number
6,616,444 patent (such patent, the “Patent”).


 


B.          The Collaboration.  Simultaneous with this Settlement Agreement,
the Company and Ormco are entering into the Joint Development, Marketing and
Sales Agreement (the “Collaboration Agreement”),
under which Ormco and Company would jointly develop and market an orthodontic
product offering that will involve the combination of removable aligners and
orthodontic brackets with arch wires (the “Collaboration”).


 


C.             The Investment.  In consideration for settling the Litigation,
the Company is also issuing to an affiliate of Ormco, Danaher Corporation (the “Investor”), 7,586,489 shares of Common Stock, par value
$0.0001 per share, of the Company (“Common Stock”)
(such amount, the “Securities”) on
the terms and conditions set forth in the Stock Purchase Agreement attached
hereto as Exhibit A (the “Stock Purchase Agreement”);
provided, however, that the Company shall (upon the Investor’s election) pay
the Investor the Make Whole HSR Cash Payment  (as defined in
the Stock Purchase Agreement) in lieu of issuing 2,025,000 Securities (the “Second Closing Securities”) in the event that the Second
Closing Securities are not issued to the Investor due to the waiting period
under the Hart-Scott-Rodino Antitrust Improvements Act, as amended (the “HSR Act”), failing to terminate or expire by September 30,
2009 (the “HSR Clearance Condition” and such date
as it may be extended by the Purchaser through February 28, 2010 until the
Second Closing Securities are issued , the “HSR Outside Date”).


 


D.            The Cash Payment.  In consideration for settling the Litigation,
the Company is also paying Ormco $13,148,866 in cash (the “Base Company
Cash Payment”).


 


E.              Transaction Documents.  The term “Transaction
Documents” refers collectively to this Agreement and the Stock
Purchase Agreement and any exhibits hereto and thereto.


 


NOW, THEREFORE, in consideration of the
premises, and of the mutual promises, representations, warranties, covenants
and agreements set forth herein, the adequacy and sufficiency of all of which
are hereby acknowledged, the Parties agree as follows:


 






[*] Confidential treatment requested pursuant to a
request for confidential treatment filed with the Securities and Exchange
Commission. Omitted portions have been filed separately with the Securities and
Exchange Commission.


 


2

















 


ARTICLE I


 


Settlement


 


1.1           Settlement Payments and
Consideration.  In settlement of the Litigation:


 


(a)  the
Company is issuing to the Investor 7,586,489 Securities, as
follows: 5,561,489 Securities on the business day following the execution of this Agreement (and the
Company has issued instructions to its transfer agent to do so); and the Second
Closing Securities at the Second Closing, in each case in
accordance with the Stock Purchase Agreement; provided, however, that if the
Second Closing Securities are not issued to the Investor by the HSR Outside
Date because the HSR Clearance Condition is not fulfilled by that date, then
(upon the Investor’s election), in lieu of issuing to the Investor the Second
Closing Securities, the Company shall pay to the Investor the Make Whole HSR
Cash Payment on the second business day immediately following Purchaser’s
election after the HSR Outside Date by wire transfer of immediately available
United States funds to a bank account designated by the Investor (such Make
Whole HSR Cash Payment to be paid to the Purchaser at Purchaser’s election on March 1,
2010 if the Second Closing Securities have not been issued to the Investor by February 28,
2010, for any reason);  and


 


(b)  the
Company will pay to Ormco on the first business day immediately
following the execution of this Agreement the Base Company Cash Payment by wire
transfer of immediately available United States funds to a bank account
previously designated by Ormco.


 


1.2           Undertakings Concerning the
Litigation.  Upon execution of this Agreement and the
Stock Purchase Agreement, the Company and Ormco shall promptly sign the Consent
Judgment attached hereto as Exhibit B and submit it to the Court.


 


1.3           Acknowledgment. 
The Parties have agreed, without admitting any liability of any kind
beyond the Company and its affiliates acknowledging and accepting in every
respect the findings, verdicts, judgments, rulings and orders in the
Litigation, including but not limited to the judgment entered by the Court in
the Consent Judgment (all of which the Company and its affiliates hereby so
acknowledge and accept), to enter into this Agreement pursuant to which each
and every claim and/or cause of action, known or unknown, that was or could
have been asserted by the Parties in the Litigation with respect to the Patent
will be forever and finally released.


 


1.4           Ormco Release and Covenant not to
Assert. 
Upon execution of this Agreement and the Stock Purchase Agreement by the
Parties, Investor, Ormco and their affiliates hereby
fully, finally and forever settle and release the Company and its affiliates
from any and all past and future claims for infringement, including any and all
alleged past damages, based on the Company’s or its affiliates’ activities from
September 9, 2003 through expiration of the ‘444 patent.  This shall finally settle and resolve all
claims asserted against the Company and its affiliates from any and all claims,
demands, damages or liability of any nature whatsoever, known or unknown, which
Investor, Ormco or their affiliates have or may have which arise out


 






[*] Confidential treatment requested pursuant to a
request for confidential treatment filed with the Securities and Exchange
Commission. Omitted portions have been filed separately with the Securities and
Exchange Commission.


 


3

















 


of,
concern or relate in any way to the ‘444 patent.  Investor, Ormco and their affiliates further
hereby expressly waive any and all rights under Section 1542 of the
California Civil Code, which states:


 


A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR DOES NOT
KNOW OR SUSPECT TO EXIST IN HIS OR HER FAVOR AT THE TIME OF EXECUTING THE
RELEASE, WHICH IF KNOWN BY HIM OR HER MUST HAVE MATERIALLY AFFECTED HIS OR HER
SETTLEMENT WITH THE DEBTOR.


 


Ormco
expressly agrees and understands that this Agreement shall apply to all
unknown, unsuspected and unanticipated claims, injuries and damages as well as
those that are now disclosed, in each case, solely with respect to the Patent.


 


Ormco and its current affiliates hereby covenant that, with
respect to the Company’s current products and processes (including any enhancements),
they will not, anywhere in the world, initiate or cause to be initiated against
the Company or any current affiliates
of the Company any claim of infringement of any claim in any patent owned
or controlled by Ormco or any of its current affiliates and existing as of
the effective date of this Agreement, or that issues from any patent
application having a filing date, or claiming priority to any patent
application having a filing date with the 
applicable government authority, no later than the effective
date of this Agreement, solely with respect to any activities relating to removable dental aligners and/or
processes for making removable dental
aligners, including attachments, buttons and similar auxiliaries for use
in connection with the removable dental aligners (and for the avoidance of doubt not to include any activities relating
to non-removable appliances).


 


1.5           Company Release and Covenant not
to Assert.  Upon execution of this Agreement and the
Stock Purchase Agreement, the
Company and its affiliates hereby fully, finally and
forever settle and release Ormco and it affiliates from any and all past and
future claims that Claims 37,
38, 39, 40, and 69 of the Patent are not infringed by the Company, that Claims
37, 38, 39, 40, 45 and 69 of the Patent are invalid, and that the Patent is
unenforceable and waive any right to appeal from or contest in any way, in or
before any court, arbitrator or other tribunal in any jurisdiction, any of the
findings, judgments, rulings or orders made by the Court in the Litigation,
including but not limited to the judgment entered by the Court in the Consent
Judgment.  The
Company further agrees to not assist others in challenging the enforceability
of the Patent, defending against a claim of infringement with respect to one or
more claims of the Patent, challenging the validity of Claims 37, 38, 39, 40,
45 or 69 of the ‘444 patent and subjecting the Patent to any re-examination
proceeding in the United States Patent and Trademark Office and to cease and
withdraw any such challenges previously made or other assistance previously
provided.


 


The Company and its affiliates further hereby
expressly waive any and all rights under Section 1542 of the California
Civil Code, which states:


 


A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR DOES NOT
KNOW OR SUSPECT TO EXIST IN HIS OR HER FAVOR AT THE TIME OF EXECUTING THE
RELEASE, WHICH IF KNOWN


 






[*]
Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Securities and Exchange Commission.


 


4

















 


BY HIM OR HER MUST HAVE MATERIALLY AFFECTED HIS OR HER SETTLEMENT WITH
THE DEBTOR.


 


The Company expressly agrees and understands that
this Agreement shall apply to all unknown, unsuspected and unanticipated
claims, injuries and damages as well as those that are now disclosed, in each
case, solely with respect to the Patent.


 


The Company and its current
affiliates hereby covenant that they will not, anywhere in the world, initiate
or cause to be initiated against Ormco or any current affiliates of Ormco any
claim of infringement of any patent owned or controlled by the Company or any
of its current affiliates and existing as of the effective date of this
Agreement, or that issues from any patent application having a filing date, or
claiming priority to any patent application having a filing date, with the
applicable government authority no later than the effective date of this
Agreement, for any activities relating to those products currently being
manufactured and/or sold by Ormco or any of its current affiliates including
any enhancements to those products; provided, however, that any
removable aligner products are created without using a computer or other
digital means to create the physical model of the teeth on which the
aligners are formed.


 


The Company shall withdraw
from prosecution the claims contained in the Preliminary Amendment filed by the
Company on [*] with the United States Patent and Trademark Office (“USPTO”) for
U.S. Patent Application No. [*] and shall not, at anytime in the future,
re-submit for prosecution any claims that are not patentably distinct from
those claims.  Further the Company
supports and will not contest Ormco’s claim of priority in inventing the
subject matter being claimed by Ormco in those claims in U.S. Patent
Application No. [*] that are recited in a filing submitted by Ormco to the
USPTO on [*] (the “[*] claims”) and will cooperate with Ormco in any proceeding
in which a third party alleges that Ormco was not [*] claims based upon the
Company’s withdrawn [*].


 


The Company shall withdraw
from prosecution the claims contained in the Preliminary Amendment filed by the
Company on [*] with the United States Patent and Trademark Office (“USPTO”) for
U.S. Patent Application No. [*] and shall not, at anytime in the future,
re-submit for prosecution any claims that are not patentably distinct from
those claims.  Further the Company
supports and will not contest Ormco’s claim of priority in inventing the
subject matter being claimed by Ormco in those claims in U.S. Patent
Application No. [*] that are recited in a filing submitted by Ormco to the
USPTO on [*] (the “[*] claims”) and will cooperate with Ormco in any proceeding
in which a third party alleges that Ormco was not [*] claims based upon the
Company’s withdrawn [*].


 


1.6           Announcement of Settlement and
Public Disclosures.  Immediately following the execution and
delivery of this Agreement, Ormco and the Company shall issue separate press
releases announcing the execution of this Agreement, which press releases shall
be subject to the prior review and approval of the each Party.  Subject to each Party’s
disclosure obligations imposed by law or regulation or stock exchange rule or
trading market listing requirement, Ormco and the Company will cooperate with
each other in the development and distribution of all news releases and other
public information disclosures with respect to this Agreement and any of the
transactions contemplated by this Agreement or the other Transaction Documents
and the Collaboration Agreement, and no Party will make any such news release
or


 






[*]
Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Securities and Exchange Commission.


 


5

















 


public disclosure without first consulting with the other Parties and
receiving their consent (which shall not be unreasonably withheld, conditioned
or delayed), and each of Ormco and the Company shall coordinate with the other
Parties with respect to any such news release or public disclosure and use
reasonable best efforts to obtain confidential treatment with respect to any
commercially-sensitive information required by law or regulation or stock
exchange rule or trading market listing requirement to be disclosed. 
The Investor and the Company agree to keep strictly confidential and not
to disclose to any person other than their representatives the terms of this
Agreement, and all such other commercially-sensitive information designated by
a Party as such and to cooperate in seeking confidential treatment for any such
information or other documentation required by law or regulation to be filed
with the Securities and Exchange Commission or other governmental entity.


 


1.7           Cooperation; Filings; Other
Actions.  Each
of Investor and the Company shall cooperate and consult with the other and use
reasonable best efforts to implement the Settlement and the transactions
contemplated by this Agreement and the other Transaction Documents
and the Collaboration Agreement, to prepare
and file all necessary documentation, to effect all necessary applications,
notices, petitions, filings and other documents, and to obtain all necessary
permits, consents, orders, approvals and authorizations of, or any exemption
by, all third parties and governmental entities, and expiration or termination
of any applicable waiting periods, necessary or advisable to implement the
Settlement and consummate the transactions contemplated by this Agreement and
the other Transaction Documents and the Collaboration
Agreement, and to
perform their covenants contemplated by this Agreement and the other
Transaction Documents and the Collaboration Agreement. 
Each of the Investor and the Company agrees to keep the other Parties
apprised of the status of matters relating to completion of the transactions
contemplated hereby.


 


1.8           Representations and Warranties of
the Parties.  Each of the Parties acknowledges, agrees,
represents and warrants to the other Parties that:


 


(a)  It
has not heretofore assigned or transferred, or purported to assign or transfer,
to any person or entity any claim or cause of action with respect to the
Litigation or the ‘444 patent and each Party further covenants not to make any
such assignment or transfer;


 


(b)  There
are no liens or claims of lien, or assignments in law or equity or otherwise,
of or against any claim or cause of action with respect to the Litigation;


 


(c)  It
has been represented by legal counsel in the negotiation and joint preparation
of this Agreement, has received advice from legal counsel in connection with
this Agreement and is fully aware of this Agreement’s provisions and legal
effect; and


 


(d)  It
enters into this Agreement freely, without coercion, and based on its own
judgment and not in reliance upon any representations or promises made by any
other Party, apart from those set forth in this Agreement.


 


(e)  It
has the corporate power and authority to enter into or issue this Agreement and
the other Transaction Documents and the Collaboration Agreement and to carry
out its obligations hereunder and thereunder.


 






[*]
Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Securities and Exchange Commission.


 


6

















 


(f)  The
execution, delivery and performance of this Agreement and the other Transaction
Documents and the Collaboration Agreement by such Party, the implementation of
the Settlement and the consummation of the transactions contemplated hereby and
thereby have been duly authorized by such Party.


 


(g)  This
Agreement and the other Transaction Documents and the Collaboration Agreement
have been duly and validly executed and delivered by such Party, and, assuming
due authorization, execution and delivery of the same by the other Parties,
constitute valid and binding obligations of such Party enforceable against it
by the other Parties in accordance with their respective terms.


 


1.9           Expenses.  Each Party shall bear its own fees and costs
incurred in connection with the Litigation or this Agreement.


 


ARTICLE II


 


Miscellaneous


 


2.1           Amendment.  No amendment or waiver of this Agreement will
be effective with respect to any Party unless made in writing and signed by an
officer of a duly authorized representative of such Party.


 


2.2           Waivers.  No failure or delay by any Party in
exercising any right, power or privilege hereunder shall operate as a waiver
thereof nor shall any single or partial exercise thereof preclude any other or
further exercise thereof or the exercise of any other right, power or
privilege.  The conditions to each Party’s
obligation to consummate the transactions contemplated hereby are for the sole
benefit of such Party and may be waived by such Party in whole or in part to
the extent permitted by applicable law. 
No waiver of any Party to this Agreement will be effective unless it is
in a writing signed by a duly authorized officer of the waiving Party that
makes express reference to the provision or provisions subject to such waiver.


 


2.3           Counterparts and Facsimile.  For the convenience of the Parties hereto,
this Agreement may be executed in any number of separate counterparts, each
such counterpart being deemed to be an original instrument, and all such
counterparts will together constitute the same agreement.  Executed signature pages to this
Agreement may be delivered by facsimile and such facsimiles will be deemed as
sufficient as if actual signature pages had been delivered.


 


2.4           Governing Law and Forum.  This Agreement will be governed by and
construed in accordance with the laws of the State of Delaware applicable to
contracts made and to be performed entirely within such State.  The Parties hereby irrevocably and
unconditionally consent to submit to the exclusive jurisdiction of the U.S.
District Court for the Central District of California, Western Division for any
actions, suits or proceedings arising out of or relating to this Agreement and
the transactions contemplated hereby.


 


2.5           WAIVER
OF JURY TRIAL.  EACH OF THE
PARTIES HERETO HEREBY IRREVOCABLY WAIVES ANY AND ALL RIGHT TO TRIAL BY JURY IN
ANY LEGAL PROCEEDING ARISING OUT OF OR RELATED TO THIS AGREEMENT OR THE
TRANSACTIONS CONTEMPLATED HEREBY, EXCEPT


 






[*]
Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Securities and Exchange Commission.


 


7

















 


WITH RESPECT TO ENFORCING ANY PATENTS TO THE EXTENT
THIS AGREEMENT IS BREACHED OR NO LONGER IN EFFECT.


 


2.6           Notices.  Any notice, request, instruction or other
document to be given hereunder by any Party to the other will be in writing and
will be deemed to have been duly given (a) on the date of delivery if
delivered personally or by telecopy or facsimile, upon confirmation of receipt,
(b) on the first business day following the date of dispatch if delivered
by a recognized next-day courier service, or (c) on the third business day
following the date of mailing if delivered by registered or certified mail,
return receipt requested, postage prepaid. 
All notices hereunder shall be delivered as set forth below, or pursuant
to such other instructions as may be designated in writing by the Party to
receive such notice.


 


(a)   All correspondence to the Company shall be
addressed as follows:


 


Align Technology, Inc.


881 Martin Avenue


Santa Clara, CA 95050


Attention:       Roger
E. George


Vice President, General Affairs and General Counsel


Telecopy: 
408-470-1010


 


with copies to (which copies alone shall not
constitute notice):


 


Wilson Sonsini Goodrich & Rosati


650 Page Mill Road


Palo Alto, CA 
94304


Attention: 
Chris F. Fennell


Telecopy: 650-493-6811


 


(b)   All correspondence to Ormco shall be
addressed as follows:


 


In care of Danaher Corporation


2099 Pennsylvania Avenue, NW


Washington, DC 20006


Attention:       Jonathan
P. Graham


Senior Vice President and General Counsel


Telecopy: 
202-828-0860


 


with copies to (which copies alone shall not
constitute notice):


 


Wachtell, Lipton, Rosen &
Katz


51 West 52nd Street


New York, NY 10019


Attention: 
Trevor S. Norwitz


Telecopy: 212-403-2333


 






[*]
Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Securities and Exchange Commission.


 


8

















 


2.7           Entire Agreement.  This Agreement, together with the other
Transaction Documents and the Collaboration Agreement and the non-disclosure
letter entered into among Ormco, the Investor and the Company on August 9,
2009, represents the entire agreement between the Parties concerning the
subject matter hereof and supersedes all prior written or oral negotiations,
representations and agreements with respect thereto.  No Party is relying on any statement or
representation other than as explicitly stated in this Agreement or the other
Transaction Documents or the Collaboration Agreement.


 


2.8           Assignment.  This Agreement shall be binding upon and
inure to the benefit of the Parties and their respective successors and
permitted assigns.  This Agreement shall
not be assignable except by operation of law or by mutual written consent of
the Parties.  Any assignment in
derogation of this provision shall be null and void.  The Transaction Documents and the
Collaboration Agreement shall be assignable in accordance with the terms set
forth therein.


 


2.9           Other Definitions.  Wherever required by the context of this
Agreement, the singular shall include the plural and vice versa, and the
masculine gender shall include the feminine and neuter genders and vice versa,
and references to any agreement, document or instrument shall be deemed to
refer to such agreement, document or instrument as amended, supplemented or
modified from time to time.  All article,
section, paragraph or clause references not attributed to a particular document
shall be references to such parts of this Agreement, and all exhibit, annex and
schedule references not attributed to a particular document shall be references
to such exhibits, annexes and schedules to this Agreement.  When used herein:


 


(1)           the terms “herein,” “hereof”
and “hereunder” and other words
of similar import refer to this Agreement as a whole and not to any particular
section, paragraph or subdivision;


 


(2)           the word “or” is not exclusive; and


 


(3)           the words “including,” “includes,” “included”
and “include” are deemed to be
followed by the words “without limitation”.


 


2.10         Captions.  The article, section, paragraph and clause
captions herein are for convenience of reference only, do not constitute part
of this Agreement and will not be deemed to limit or otherwise affect any of
the provisions hereof.


 


2.11         Severability.  If any provision of this Agreement or the
application thereof to any person (including, the officers and directors of the
Investor and the Company) or circumstance is determined by a court of competent
jurisdiction to be invalid, void or unenforceable, the remaining provisions
hereof, or the application of such provision to persons or circumstances other
than those as to which it has been held invalid or unenforceable, will remain
in full force and effect and shall in no way be affected, impaired or invalidated
thereby, so long as the economic or legal substance of the transactions
contemplated hereby is not affected in any manner materially adverse to any
Party.  Upon such determination, the
Parties shall negotiate in good faith in an effort to agree upon a suitable and
equitable substitute provision to effect the original intent of the Parties.


 






[*]
Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Securities and Exchange Commission.


 


9

















 


2.12         No Third Party Beneficiaries.  Nothing contained in this Agreement,
expressed or implied, is intended to or shall confer upon any person other than
the Parties hereto, any benefit right or remedies.


 


2.13         Time of Essence.  Time is of the essence in the performance of
each and every term of this Agreement.


 


2.14         Specific Performance.  The Parties agree that irreparable damage
would occur in the event that any of the provisions of this Agreement were not
performed in accordance with their specific terms.  It is accordingly agreed that the Parties
shall be entitled to specific performance of the terms hereof (without
requirement to post a bond), this being in addition to any other remedies to
which they are entitled at law or equity.


 


*  *  *


 






[*]
Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Securities and Exchange Commission.


 


10

















 


IN WITNESS
WHEREOF, this Agreement has been duly executed and delivered by the duly
authorized officers of the Parties hereto as of the date first herein above
written.


 


	
   

  	
  ALIGN TECHNOLOGY, INC.

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
  /s/ Thomas M. Prescott

  
	
   

  	
   

  	
  Name:

  	
  Thomas M. Prescott

  
	
   

  	
   

  	
  Title:

  	
  President & CEO

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  ORMCO CORPORATION

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
  /s/ Donald L. Tuttle

  
	
   

  	
   

  	
  Name:

  	
  Donald L. Tuttle

  
	
   

  	
   

  	
  Title:

  	
  President

  



 


[Signature Page to Settlement Agreement]


 






[*] Confidential treatment
requested pursuant to a request for confidential treatment filed with the
Securities and Exchange Commission. Omitted portions have been filed separately
with the Securities and Exchange Commission.


 

















 


EXHIBIT A-STOCK PURCHASE AGREEMENT


 


Incorporated by reference to Exhibit 10.2 of
the registrant’s Quarterly Report on Form 10-Q filed on November 5, 2009.


 






[*] Confidential treatment
requested pursuant to a request for confidential treatment filed with the
Securities and Exchange Commission. Omitted portions have been filed separately
with the Securities and Exchange Commission.


 


12

















 


EXHIBIT B – CONSENT JUDGMENT


 




	
  THOMAS P. LAMBERT (SBN 050952)

  tpl@msk.com

  KARIN G. PAGNANELLI (SBN 174763)

  kgp@msk.com

  MITCHELL SILBERBERG &
  KNUPP LLP

  11377 West Olympic
  Boulevard

  Los Angeles, CA  90064-1683

  Telephone:    (310)
  312-2000

  Facsimile:     (310)
  312-3100

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  CHRISTOPHER B.
  MEAD pro hac vice

  LONDON &
  MEAD

  1225 19th Street
  NW, Suite 320

  Washington,
  DC  20036

  Telephone:    (202)
  331-3334

  Facsimile:     (202)
  785-4280

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  DAVID L. DEBRUIN pro hac vice

  RICHARD MARSCHALL pro hac vice

  CHARLES J. CRUEGER pro hac vice

  JOSEPH T. MIOTKE pro hac vice

  MICHAEL BEST &
  FRIEDRICH LLP

  100 East Wisconsin
  Avenue 

  Suite 3300

  Milwaukee, WI  53202-4108

  Telephone:    (414)
  271-6560

  Facsimile:     (414) 277-0656

  	
   

  	
  DANIEL J. FURNISS (SBN
  73531)

  djfurniss@townsend.com

  ANNE M. ROGASKI (SBN 184754)

  amrogaski@townsend.com

  TOWNSEND TOWNSEND AND
  CREW LLP

  379 Lytton Avenue

  Palo Alto, CA 94301

  Telephone:    (650)
  326-2400

  Facsimile:      (650)
  326-2422

  
	
   

  	
   

  	
   

  
	
  Attorneys for Plaintiff
  

  ORMCO CORPORATION

  	
   

  	
  Attorneys for Defendant

  ALIGN TECHNOLOGY, INC.

  






 


NITED STATES DISTRICT COURT


 


CENTRAL DISTRICT OF CALIFORNIA


 


	
  ORMCO
  CORPORATION,

  	
   

  	
  CASE NO. SACV
  03-16 CAS (ANx)

  
	
  Plaintiff,

  	
   

  	
  The
  Honorable Christina A. Snyder

  
	
  v.

  	
   

  	
  CONSENT
  JUDGMENT

  
	
  ALIGN
  TECHNOLOGY, INC.,

  	
   

  	
  CTRM.:
  5

  
	
  Defendant.

  	
   

  	
   

  
	
  AND
  RELATED COUNTERCLAIMS

  	
   

  	
   

  



 






[*] Confidential treatment requested pursuant to a request
for confidential treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the Securities and Exchange
Commission.


 


13

















 


This Consent Judgment is entered into between and
among Ormco Corporation, (“Ormco”), and Align Technology, Inc. (“Align”)
(collectively, the “Parties”), through their respective counsel of record.


 


This action comes before the Court on the pleadings
and proceedings of record and it has been represented to the Court that,
pursuant to a Settlement Agreement, Ormco and Align have agreed to a settlement
of all issues remaining for trial or otherwise the subject of pending motions
and Align has waived any right to appeal any of the findings, judgments,
rulings or orders entered by the Court in this action.


 


WHEREFORE, with the consent of Ormco and Align,
through their undersigned attorneys, it is hereby finally ORDERED, ADJUDGED and
DECREED as follows:


 


1.             This
Court has personal jurisdiction over the Parties and the subject matter of this
action, including the enforcement of the Settlement Agreement entered among the
Parties.


 


2.             Claims
37, 38, 39, 40 and 69 of Ormco’s U.S. Patent No. 6,616,444 are infringed
by Align.


 


3.             Claims
37, 38, 39, 40, 45 and 69 of Ormco’s U.S. Patent No. 6,616,444 are not
invalid.


 


4.             Ormco’s
U.S. Patent No. 6,616,444 are not unenforceable.


 






[*] Confidential treatment requested pursuant
to a request for confidential treatment filed with the Securities and Exchange
Commission. Omitted portions have been filed separately with the Securities and
Exchange Commission.


 


14

















 


5.             Pursuant
to the terms and conditions of the Settlement Agreement entered between Ormco
and Align, the issues of damages, willfulness and attorneys’ fees as they
relate to Ormco’s allegations of infringement of its patents have been fully
settled and all remaining allegations that were made or could have been made by
Ormco in Case No. SACV 03-16 CAS (ANx) are hereby dismissed with
prejudice.


 


6.             Ormco’s
pending Motion for a Permanent Injunction is hereby denied as moot.


 


7.             All
defenses and counterclaims that were made or could have been made by Align in
Case No. SACV 03-16 CAS (ANx) are hereby dismissed with prejudice.


 


8.             Except
as set forth in the Parties’ Settlement Agreement, each party shall bear its
own costs and attorneys’ fees.


 


SO Ordered:


 


 


	
  DATED:

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
  The
  Honorable Christina A. Snyder

  United States District Judge

  



 






[*] Confidential treatment requested pursuant to a request
for confidential treatment filed with the Securities and Exchange Commission.
Omitted portions have been filed separately with the Securities and Exchange
Commission.


 


15

















 


Stipulated to by:


 


 


	
  Dated:     August     ,
  2009

  	
  MICHAEL
  BEST & FRIEDRICH LLP

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
   

  
	
   

  	
   

  	
  David
  L. De Bruin

  
	
   

  	
   

  	
  Richard
  H. Marschall

  
	
   

  	
   

  	
  Charles
  J. Crueger

  
	
   

  	
   

  	
  Joseph
  T. Miotke

  
	
   

  	
   

  	
  -and-

  	
   

  
	
   

  	
   

  	
  Christopher
  B. Mead

  
	
   

  	
   

  	
  -and-

  	
   

  
	
   

  	
   

  	
  Thomas
  P. Lambert

  
	
   

  	
   

  	
  Karin
  G. Pagnanelli

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  Attorneys
  for Plaintiff

  
	
   

  	
   

  	
  ORMCO
  CORPORATION

  
	
   

  	
   

  	
   

  
	
  Dated:     August     ,
  2009

  	
   

  	
   

  
	
   

  	
  TOWNSEND
  AND TOWNSEND AND CREW LLP

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
   

  
	
   

  	
   

  	
  Anne
  M. Rogaski

  
	
   

  	
   

  	
  Daniel
  J. Furniss

  
	
   

  	
   

  	
  Jon V. Swenson

  
	
   

  	
   

  	
  Heidi J. Kim

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  Attorneys
  for Defendant

  
	
   

  	
   

  	
  ALIGN TECHNOLOGY

  



 






[*]
Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Securities and Exchange Commission


 


16