# Lambert v. Weyerhaeuser Co. (In Re Paragon Trade Brands, Inc.)

> United States Bankruptcy Court, N.D. Georgia · April 13, 2005 · 324 B.R. 829

URL: https://www.frixlaw.com/law-library/cases/1804890

## Case

- **Full name:** In Re PARAGON TRADE BRANDS, INC., Debtor. Randall Lambert, the Litigation Claims Representative for the Chapter 11 Bankruptcy Estate of Paragon Trade Brands, Inc., Plaintiff, v. Weyerhaeuser Company, Defendant
- **Court:** United States Bankruptcy Court, N.D. Georgia
- **Decided:** April 13, 2005
- **Citations:** 324 B.R. 829; 2005 Bankr. LEXIS 712; 2005 WL 927347
- **Precedential status:** Published
- **Opinion:** Opinion by Murphy
- **Judges:** Margaret H. Murphy
- **Cited by:** 1 later opinions in the Frix Law Library

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## Opinion text

AMENDED FINDINGS OF FACT AND CONCLUSIONS OF LAW
MARGARET H. MURPHY, Bankruptcy Judge.
TABLE OF CONTENTS
Page
I. INTRODUCTION ..841
II. FINDINGS OF FACT.842
A. Background of the Private-Label Baby Diaper Business Weyerhaeuser Transferred to Paragon in the IPO .842
B. The IPO.850
C. Paragon After The IPO .852
D. Paragon Is Driven To Bankruptcy By Intellectual Property Inadequacies.854
E. Paragon’s Losses For Which Plaintiff Seeks Damages.855
1. Bankruptcy-Related Costs.855
2. Product Re-Design Costs.855
3. Lost Profits.855
4. Obligations Incurred To PG And KC .856
a. PG obligations.856
b. KC obligations.858
c. Wellspring’s purchase of Paragon.861
d. Cash payments to PG and KC and remaining liability to them.863
e. SAP compliance costs.863
5. Mabesa.863
F. Plan Confirmation and Proceedings in This Adversary Proceeding.864
III. CONCLUSIONS OF LAW. 00 ■ 00
E. Common Law Measures Of Damages. 05 t— CO
F. Cost To Cure Measure Of Damages. Cm GO CO
1. PG-Related Losses Arising From Inadequate Intellectual Property To Utilize ILG Feature. 00 00 CO
a. Cost to cure damages attributable to the PG Royalty. 00 00 CO
(1) “Conversion period” royalties paid. 00 00 CO
(2) Other royalties paid. 00 00 00
(3) Loss attributable to post-Plan-confirmation royalty obligation . CO CO 00
(4) Should the PG royalty-related cost to cure damages be reduced for royalties attributable to products not utilizing the ILG feature on the IPO date?. CO 00 ^
(a) Economy diaper and training pant. 00 00 cn
(b) Supreme diaper. CO 00 05
(c) Canadian sales . 00 00 05
(5) Should the PG royalty-related cost to cure damages be reduced based on damages attributable to non-ILG patents?. 00 00
(6) Should the royalty-based damages be reduced to an after-tax measure?. 00 CO 05
b. Cost to cure damages attributable to PG’s agreed $158.5 million unsecured claim and $5 million administrative claim. t— 00 00
(1) Cash payment. t> 00 CO
(2) Promissory note obligations. C> CO 00
(3) Unpaid portion of PG’s unsecured claim. GO 00 CO
(4) Deductions to PG’s unsecured claim-related cost to cure damages because a portion of damages are attributable to Paragon’s non-Ultra diaper products?. 00 00 00
(5) Deductions to PG’s unsecured claim-related cost to cure damages because a portion of the damages are attributable to Paragon settling other disputes with PG? . CO 00 00
(a) Canadian sales . 00 00
(b) Pre-petition and Post-petition sales allegedly infringing PG’s Aziz, Buell, Robertson and Anderson patents 05 CO 00
(c) PG released its Motion for Contempt. 05 00 00
2. KC-Related Losses Arising From Inadequate Intellectual Property O 05 00
a. The Delaware Judgment was a proximate cause of Paragon incurring KC-related losses . 05 00
b. The
Tyco
decision does not limit Paragon’s KC-related losses ... 05 00
c. KC royalty-related cost to cure losses. 05 00
(1) Royalties paid. 05 00
(2) Loss attributable to KC royalty obligation. lO 05 00
(3) Should the KC royalty-related cost to cure damages be reduced for royalties attributable to products not utilizing the ILG feature on the IPO date?. 00 C7T
d. Cost to cure damages attributable to KC’s $110 million unsecured claim and $5 million administrative claim .... LQ 05 00
(1) Cash payment. LO 05 00
(2) Promissory note obligations. LQ 05 00
(3) Unpaid portion of KC’s unsecured claim. CD 05 00
(4) Deductions to KC unsecured claim-related cost to cure damages attributable to non-Ultra diaper products.. CD 05 00
*841
e. Deductions to KC royalty-related and unsecured claim-related cost to cure damages attributable to settlement of KC’s SAP patent infringement claims?. 05 00
f. Deductions to KC royalty-related and unsecured claim-related cost to cure damages because the Enloe II and III patents issued post-IPO. 05 00
g. SAP compliance costs. 05 00
3. The Cost To Cure Damages Were Foreseeable 05 00
4. Total Cost To Cure Damages. 05 00
Difference In Value Measure. 05 00
Destruction of Business Loss Measure . O 05
Consequential Damages. O 05
1. Product re-design costs. O 05
2. Lost profits. O 05
3. Bankruptcy-related costs. t — ( 05
4. Prejudgment Interest. r-( 05
Mitigation.-. r — 1 05
Attorneys’ Fees. r — i 05
Posb-Judgment Interest. t-H 05
IV. CONCLUSION.917
I. INTRODUCTION
1. This adversary proceeding is a breach of contractual warranty case. Plaintiff, Randall Lambert, is the appointed litigation trustee for the bankruptcy estate (“Estate”) of Paragon Trade Brands, Inc. (“Paragon”). Plaintiff filed this action on behalf of Paragon’s Estate to recover damages for the alleged breach by Weyerhaeuser Company (“Weyerhaeuser”) of four warranties in two contracts: an Asset Transfer Agreement (“ATA”) and an Intellectual Property Agreement (“IPA”), by which Weyerhaeuser transferred- its private-label baby diaper business to its newly-created, wholly-owned subsidiary, Paragon. The transfer was part of Wey-erhaeuser’s concurrent sale of 100% of Paragon’s stock to the public in an initial public offering (“IPO”). The IPO closed February 2, 1993. After the IPO, Paragon was a company independent from Weyer-haeuser. Weyerhaeuser received $214.1 million net cash from the IPO.
2. On December 30, 1997, the United States District Court for the district of Delaware (“Delaware Court”) issued its judgment, entered January 6, 1998, against Paragon,
1
permanently enjoining it from selling its primary product, a private-label baby diaper, because it utilized a key “inner leg gather” (“ILG”) feature that the Delaware Court held infringed Procter & Gamble’s (“PG”) patents (the “Delaware Judgment”). The Delaware Judgment prompted Paragon to file a Chapter 11 proceeding January 6, 1998. To further its bankruptcy reorganization, in 1999, Paragon entered into settlement and license agreements with both PG and Kimberly-Clark Corporation (“KC”) to obtain licenses to utilize the ILG feature, which Weyerhaeuser had begun using in March 1991, and which Paragon continued to use after the IPO. This court approved those agreements August 6, 1999, after contested, intensive and lengthy hearings. Para
*842
gon’s Chapter 11 plan was confirmed January 13, 2000 (the “Plan”) and implemented on the effective date of the Plan January 28, 2000. In accordance with the Plan, Plaintiff was appointed as litigation trustee to pursue certain claims of the Estate, including the claims that form the basis of this adversary proceeding.
3. After completing discovery in this adversary proceeding, Plaintiff and Weyer-haeuser submitted cross motions for summary judgment. Plaintiff sought partial summary judgment that Weyerhaeuser was liable for damages as a result of its breach of the warranties in the ATA and IPA. Weyerhaeuser sought complete summary judgment in its favor. On October 30, 2002, an order was entered granting Plaintiffs motion and denying Weyerhaeu-ser’s motion (“Summary Judgment Order” or “SJO”): Weyerhaeuser had breached the four warranties at issue, and Plaintiff was entitled to damages. Weyerhaeuser filed a motion for reconsideration, which was denied after briefing and oral argument by order entered June 24, 2003.
4. Trial was held on the remaining issue: the amount of damages Plaintiff is entitled to recover from Defendant. Additionally, during the trial, Weyerhaeuser presented testimony and argument in support of a counterclaim for indemnity it contends survived the SJO. The evidence presented at trial was considered and accorded its proper weight in accordance with the Federal Rules of Evidence.
II. FINDINGS OF FACT
A. Background of the Private-Label Baby Diaper Business Weyerhaeu-ser Transferred to Paragon in the IPO
5. Weyerhaeuser commenced a baby diaper business in 1972. This business consisted largely of selling a private-label diaper to large retail establishments that placed their store names on the package and sold the diaper on their shelves at lower prices than the branded diapers sold by PG, which sold the “Pampers” and “Luvs” brands, and KC, which sold the “Huggies” brand. The diaper was the primary product in Weyerhaeuser’s Personal Care Products (“PCP”) Division.
6. In the late 1980s, Weyerhaeuser embarked on a plan to refocus on its core businesses. Because the baby diaper business was not considered one of its core businesses, the diaper business was targeted for divestment. Weyerhaeuser informed the investment community about its refocusing and proceeded to move as quickly as possible to dispose of its baby diaper business (the “Business”).
7. The Business had performed well in the early 1980s, earning pre-tax profits for Weyerhaeuser in 1983 and 1984 of $31 to $39 million. A key to Weyerhaeuser’s success during these years was a “brand matching” practice, which included utilizing an elastic leg gather feature
2
patented under PG’s Buell ’003 patent. This strategy gave Weyerhaeuser’s private-label diaper an advantage over its competitors’ private-label diapers.
8. In 1981, PG sued Weyerhaeuser for infringing the Buell patent, seeking an injunction against use of the patented feature, damages for a reasonable royalty, and enhanced damages for willful infringement. Weyerhaeuser asserted various invalidity defenses to PG’s Buell patent, and elected to take the case to trial instead of removing the feature or re-designing its diaper to avoid the infringement claim. The jury found that Weyerhaeuser willful
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ly infringed PG’s Buell patent, and that a reasonable royalty would have been 1% of sales. The trial court rejected Weyer-haeuser’s invalidity defenses. On July 2, 1985, the trial court entered judgment against Weyerhaeuser, permanently enjoining it from making its private-label diaper as it was then designed, and awarding PG reasonable royalty damages of $2.3 million, plus prejudgment interest and attorneys’ fees.
3
9. In the year after it was enjoined from selling its main product (1986), the Business’s sales volume decreased significantly from 12 million cases to approximately 8.4 million cases, causing it to lose substantial market share. Its profits fell from over $31 million in 1984 to $3 million in 1986. The Buell injunction was a significant factor in this downturn in the Business.
10. In 1987 and 1988, Weyerhaeuser was able to recapture some of its lost market share, but by 1989, Weyerhaeuser was again losing market share to its competitors, its market share going to 11% in 1987, 12% in 1988, then down to 11% in 1989. During 1987 and 1988, the Business either lost money or earned very low profits, recording a $2.2 million loss in 1987, a $9.4 million profit in 1988, and a $2.0 million profit in 1989.
11. As of mid-1990, the Business was expected to lose $5 to 7 million, its sales were declining, and the quality of Weyer-haeuser’s private-label diaper product lagged behind the brands’ and even private-label competitors’ products. In mid-1990, the Business had just abandoned “Project Epcot,” a three-year effort to develop a branded diaper, and Weyer-haeuser suffered a $100 million write-off on the project. At that point in 1990, the Business was considered a financially sick business and it was described as being in a “fight for survival.” Confronting the “sick” Business were: a macro United States market for baby diapers that was expected to be flat-to-declining in future years because of lower birth rates and an improved product yielding fewer daily diaper changes; new private-label competitors emerging to challenge Wey-erhaeuser for its private-label market share; serious excess diaper manufacturing capacity, which was leading to lower prices and, hence, lower revenues; and the brand manufacturers, PG and KC, engaging in what was described as “fierce battles” for market share, with tactics of (i) accelerating the pace of diaper innovations, (ii) lowering prices, and (iii) aggressively pursuing each other and private-label competitors on claims of infringing their patented innovations. In summary, the competitive environment facing the Business, which was already considered “sick,” was intense, and was expected to intensify. For the Business to survive in this intensely competitive market, Weyerhaeuser
had
to improve the quality of its private-label diaper product.
12.The primary means for improvement was the addition of a newer feature known as the inner leg gather, or “ILG.” An ILG, in layman’s terms, is a second elasticized inner barrier cuff in the diaper that contains or channels effluent, and thus reduces leakage.
4
Because leakage pre
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vention is the primary purpose of a diaper, the ILG was the most important new feature for diapers ever incorporated in disposable diapers. Weyerhaeuser internally concluded that failure to add the ILG would negatively impact its sales volume by one million cases (1% of market share, or 1/12 its sales) in the first year and another 500,000 cases in the second through fourth years. Weyerhaeuser personnel believed that having the ILG on its Ultra diaper was essential for it to compete in the private-label diaper market. KC’s ILG was marketed nationally in early 1990, and PG was expected to do so in September, 1990.
13. In June 1990, Weyerhaeuser invested $7 million to install equipment to add the ILG feature to the Ultra diaper. In November 1990, at the annual Private Label Manufacturers’ Association meeting, the Business’s retail customers were demanding that Weyerhaeuser deliver them a diaper with the ILG as soon as possible. In March 1991, Weyerhaeuser launched its new Ultra private-label diaper with the ILG feature. This new diaper was a huge success for the Business. As anticipated, it reduced leakage in Weyerhaeuser’s private-label diaper by up to 40%. Weyer-haeuser’s net diaper sales increased strongly from $275 million in 1990 to approximately $396 million in 1991, and then to $484 million in 1992, while operating profits increased from $2 million in 1990 to $33.4 and $34.8 million in 1991 and 1992, respectively. The ILG, while not the sole contributor, was extremely important to the Business’s turnaround because it substantially improved leakage containment, the key quality feature of the diaper. The Business’s customers were very satisfied with the new ILG Ultra diaper.
14. PG and KC, however, each had patent claims encompassing the ILG feature, under PG’s “Lawson” patent and KC’s “Enloe” patent. PG’s Lawson patent described an ILG that was fluid impermeable or hydrophobic, and KC’s Enloe patent described an ILG that was fluid pervious. For each day after March 1991 that Wey-erhaeuser earned sales and profits using the ILG technology, its potential liability for patent infringement grew.
15. Weyerhaeuser’s increased sales after the ILG diaper launch were largely achieved by taking market share from PG’s “Luvs” brand. PG was known as a tenacious competitor that aggressively enforced its patents, as Weyerhaeuser well knew from its prior experience in the Buell lawsuit. Weyerhaeuser knew its ILG, made of a substantially hydrophobic, or impermeable material, fell within the claims made by PG’s Lawson ILG patent. Weyerhaeuser also knew its ILG Ultra diaper infringed PG’s Dragoo patent, which issued in 1991, after Weyerhaeuser launched its ILG diaper. Weyerhaeuser’s only defense to an action by PG for an injunction and damages for infringement was to argue that the Lawson and Dragoo patents were invalid, as it had argued unsuccessfully in the Buell lawsuit.
16. In pursuit of that invalidity defense, Weyerhaeuser obtained patent opinions from outside counsel that the Lawson, Dragoo and Enloe patents were invalid based on certain cited prior art. Weyer-haeuser had received a similar invalidity opinion regarding Buell that was proven wrong at trial. These opinions did not guarantee success in litigation, but would help protect Weyerhaeuser against a willful infringement finding, which carried the threat of enhanced or treble damages. Weyerhaeuser knew that issued patents, such as Lawson, Dragoo and Enloe, are presumed valid, and that a party attacking
*845
validity has the burden of overcoming this presumption by clear and convincing evidence. The patent opinions Weyerhaeuser obtained did not assess the probability or likelihood that a court would find invalid the presumptively valid ILG patents of PG and KC, and Pat Coogan, Weyerhaeuser’s in-house patent counsel with oversight responsibilities for the PCP Division, testified he did not request such an assessment from outside counsel. In what appears to have been a lengthy meeting held September 5, 1991, Mr. Coogan advised Weyer-haeuser’s General Counsel, Bob Lane, that Weyerhaeuser’s chance to succeed on an invalidity defense to PG’s Lawson or KC’s Enloe patent infringement claims was no better than “50/50.”
17. In the year before launching its ILG diaper in March, 1991, Weyerhaeuser negotiated with PG to obtain a license to use its ILG feature, offering on many occasions to pay royalties or to trade licenses to various Weyerhaeuser patents for the right to use the ILG feature. These negotiations failed in May 1991 because PG demanded a 3% royalty to license the ILG feature, an amount Weyerhaeuser stated it could not afford to pay and remain competitive in the diaper market.
18. Also in 1991, PG and KC were litigating with each other in federal district court in Seattle, Washington (the “Seattle litigation” or “Seattle trial”) over whose ILG invention was reduced to practice first and which had priority of invention. As issued on September 22, 1987, PG’s Lawson patent made claims to both the generic ILG invention and ILGs made of impermeable materials. KC’s Enloe patent, issued November 3, 1987, made claims to ILGs made of “fluid pervious” materials (referred to later as “Enloe I”). KC sought to establish Enloe’s priority of invention to invalidate Lawson’s claims and to establish a right to have Lawson’s ILG claims transferred to an amended Enloe application filed with the Patent And Trademark Office (“PTO”).
19. Weyerhaeuser expected that the Seattle litigation was of sufficient scope for the winner between PG and KC to be found to have a “likelihood of success” in a later action to enjoin Weyerhaeuser from making and selling its private-label ILG Ultra diaper, and from using the ILG on any other product. In June 1991, trial of the Seattle litigation was conducted. Wey-erhaeuser’s in-house patent counsel Pat Coogan attended most of the trial.
20. In March 1991, a few months before the Seattle trial started, Weyerhaeu-ser’s Investment Evaluation Department (“IED”) commenced efforts to value the Business and determine how to sell it to obtain the best value. Weyerhaeuser also hired the investment banking firm of Morgan Stanley to advise on the Business’s likely market value and likely buyers. In a report issued August 28, 1991, Weyer-haeuser’s IED concluded that the Business’s value was $90 million. Morgan Stanley’s base case valuation of the Business was between $75 and $95 million. Neither the valuation of Morgan Stanley nor Weyerhaeuser’s IED, however, assumed any royalty payable to KC or PG for the ILG technology, or payment of damages for past infringement. Morgan Stanley also reported to Weyerhaeuser an “unusually limited universe of buyers” for the Business and a significant risk that no transaction would result from a sale process.
21. In its valuation study, the IED reported that (i) each percentage point change in the Business’s market share would change the Business’s value by
*846
about $30 million; and (ii) a $1 change in the gross profit margin per standard case sold would change the Business value by $80 million. Assuming, however, a combined 5.5% royalty payable by the Business (which equaled PG’s and EC’s last demands before Weyerhaeuser closed the IPO, as discussed beginning at page 13, ¶ 29), Weyerhaeuser’s gross profit margin per case would drop by $1.49, from $5.62 to $4.13. According to Weyerhaeuser’s valuation analysis before the 1992-93 IPO, if paying these royalties, the Business would have zero or negative value. Notes prepared by a Weyerhaeuser IED officer of a meeting with Mr. Coogan, Mr. Robert Dowdy,
5
and others August 20, 1991, reflect discussions over possibly putting the diaper division in a separate subsidiary to protect Weyerhaeuser from what was then stated to be a substantial and growing infringement liability. In November 1991, Chemical Bank, a bank with whom Weyer-haeuser had a relationship through its investment banking arm, advised Weyer-haeuser that the Business might not be saleable at anything better than a “fire sale” price. In early 1992, Weyerhaeuser also investigated disposing of the Business through a leveraged management buyout.
22. On September 10, 1991,
6
while Weyerhaeuser was reviewing disposition of the Business, the decision in the Seattle litigation awarded priority of invention to EC’s Enloe patent.
7
As a result, Lawson’s claims to generic ILGs were held invalid as obvious or anticipated in light of Enloe. The district court, however, held that Lawson’s claims to impermeable, or hydrophobic, ILGs remained valid despite Enloe, given that Enloe’s “fluid pervious” ILG patent taught away from Lawson’s impermeable ILG design. The consequence of this decision was that Weyerhaeuser’s largely impermeable ILG diaper stood squarely within Lawson patent claims of PG that did survive the Seattle trial, and Weyerhaeuser knew it. Weyerhaeuser had no solid non-infringement position against the surviving Lawson impermeable ILG patent claims. Mr. Coogan also realized that the Seattle court’s decision meant Lawson’s generic claims to all ILGs (regardless of permeability) would, in due course, be transferred to Enloe and issue in an amended Enloe patent that would encompass all ILGs, including ILGs used on Weyerhaeuser’s Ultra diaper. Mr. Coogan reported this expectation to nine different Weyerhaeuser officers and lawyers, including its CFO and CEO, in his September 13, 1991 memorandum sent three days after the Seattle decision issued.
23. The Seattle trial result put Weyer-haeuser in the predicament of having to license the technology to make and sell its impermeable ILG diaper from not just one, but two competitors: PG, holding Lawson’s surviving impermeable ILG patent claims; and EC, which would be granted an amended Enloe patent
8
claiming all
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ILGs, regardless of hydrophobicity. Wey-erhaeuser expected the prevailing party in the Seattle litigation, which was on appeal, would demand royalties from Weyerhaeu-ser for use of the ILG feature, and if a license and royalty agreement could not be resolved, that one or the other- — -PG or KC — would sue to enjoin Weyerhaeuser from using the ILG and for damages, including lost profits and/or reasonable royalties. Weyerhaeuser representatives were aware during this period that its potential liability for infringing PG’s ILG patents included damages for lost profits on sales Weyerhaeuser was taking from PG, and that such damages could be “enormous” because PG’s profit margin on the Weyerhaeuser ILG diaper sales approached 30%.
24. In December 1991, PG formally notified Weyerhaeuser that its Ultra diaper infringed PG’s Lawson and Dragoo patents. In a December 1991 meeting, Wey-erhaeuser’s General Counsel, Bob Lane advised Weyerhaeuser’s auditor, Arthur Andersen, that the damages arising from such a PG claim could be “enormous” for Weyerhaeuser. On February 10, 1992, Mr. Lane reported to Weyerhaeuser’s auditor, Arthur Andersen, that the PG claim could result in a 3% royalty payable and an injunction.
25. By early 1992, Weyerhaeuser had been unable to sell the Business through traditional means. In March 1992, Weyer-haeuser launched a plan to dispose of the Business through an initial public offering of 100% of stock of a newly-formed Weyer-haeuser subsidiary into which it would transfer the Business. Weyerhaeuser retained Merrill Lynch to be the lead underwriter for this offering. Merrill Lynch retained the.Skadden Arps law firm as its counsel. Weyerhaeuser retained the Paul Weiss law firm to be its counsel. The newly-formed company, which became Paragon, had no separate counsel. Wey-erhaeuser employees responsible for the Business were expected to become the managers of the newly-formed public company after the IPO. The Business had a successful year (on paper) in 1991, earning over $33 million in operating profit on net sales over $396 million. Its performance was up significantly from its $2 million operating profit in 1990 on net sales of about $286 million, and significantly better than the Business’s performance the prior four years, 1986-89. The Business’s successful results in 1991 and 1992 positioned Weyerhaeuser to pursue the IPO.
26. Weyerhaeuser incorporated Paragon Trade Brands, Inc. in June 1992 as its wholly-owned subsidiary, to own the business Weyerhaeuser planned to take public. Initially, the IPO was planned to close in late August or September 1992, but it was tabled in early September due to concerns over the effect a PG diaper price reduction would have on the Business’s narrow profit margin.
27. In August 1992, two separate events occurred that confirmed the problematic ILG patent predicament facing the Business. First, on August 14, 1992, the PTO decided in Enloe’s (KC’s) favor the
*848
pending interference action fought between PG and KC over ILG patent priority. Weyerhaeuser’s in-house patent counsel, Mr. Coogan, knew that as a result, EC’s Enloe patent would be amended to include the generic ILG claims originally granted to Lawson. This new patent, which would not be limited to “impermeable” or “fluid pervious” iterations, would squarely encompass Weyerhaeuser’s Ultra ILG diaper.
28. The second event with impact on the ILG patent predicament facing Weyer-haeuser occurred August 26, 1992, when the Federal Circuit Court of Appeals affirmed the Seattle trial court’s decision as to priority of invention in the Seattle litigation, again leaving PG’s Lawson patent with valid claims to ILGs made of impermeable materials.
9
Based on this ruling, Weyerhaeuser’s ILG diaper remained squarely within the claims of what was now a litigation-tested Lawson patent of impermeable diaper ILGs. It was foreseeable by Weyerhaeuser and known within the patent law practice at the time of the IPO that a license can be required from two different parties in order to sell a particular product.
29. Weyerhaeuser expected that both PG and KC would seek royalties from Weyerhaeuser for use of the ILG or, failing an agreed payment, would sue for an injunction against use of the feature and damages. In fact, Weyerhaeuser conducted dual license negotiations with PG and KC in the months before closing the IPO transaction to obtain freedom to use the ILG feature. No license agreement with PG or KC was concluded before closing. PG’s last demand before the IPO closed was for a 3% royalty on net sales of all ILG products in return for a license under Lawson and the companion ILG patent, Dragoo. No evidence shows that PG offered, before the IPO closed, to forgive past infringement as part of a license agreement. EC’s last demand before the IPO closed was a 2.5% royalty on net sales of ILG products for seven and a half years in return for a license under Enloe I and the to-be-issued generic ILG patent (which later issued as Enloe III), which would be deemed fully paid after the 7.5 years. The proposed KC license did not contemplate a separate payment for past infringement. Both PG and KC rejected Weyerhaeuser’s various counteroffers, which consisted of cross-licenses of various Weyerhaeuser diaper patents, or a royalty as low as 0.2%.
30.Weyerhaeuser could not have proceeded with the IPO had the Business been paying royalties in the range demanded by PG and KC. In the IPO Prospectus, which Weyerhaeuser and its attorneys drafted, Weyerhaeuser disclosed the existence of PG’s and EC’s ILG patent claims, but Weyerhaeuser did not disclose the level of royalties demanded or the severe impact the royalties would have on the Business if forced to pay them. Wey-erhaeuser did not disclose that past attempts to license the feature from PG had failed; it downplayed the negotiations as “discussions”; and, the IPO Prospectus represented to the new public shareholders in at least three places that “the Company believes that any outcome with respect to these [ILG patent] matters will have no material adverse effect on its financial position or its results of opera
*849
tions.” A 5.5% royalty (the aggregate amount PG and KC were demanding) would have eliminated virtually all of the Business’s 6% profit margin. A 4% royalty (approximately the amount the Business eventually agreed to pay in 1999 in the settlement agreements with PG and KC) would have eliminated approximately two-thirds of the Business’s profit margin.
31. Weyerhaeuser had withheld needed capital from the Business in the years before the IPO. The plan was for Paragon, after the IPO, to use its profits to finance its four-year capital improvement program, which was designed to (i) make its operations more cost-efficient so it could survive anticipated pricing actions of the brands and its private-label competitors, (ii) add and improve product features to keep pace with expected continuing diaper improvements in the industry, and (iii) expand production capacity. Being forced to pay royalties in the range of 5% would have severely undermined, if not destroyed, the Business’s ability to make the capital investments necessary to survive the pending and anticipated future diaper price wars. In fact, PG and KC did continue their price wars after the IPO, and diaper prices sharply declined by 15 to 22% within three years. Had the Business been forced to pay substantially all its profits to PG and KC in royalties to use the ILG feature, the Business would not have been a viable, on-going business after the IPO, and the IPO likely would not have occurred.
32. The evidence showed that the Business could not, and its managers did not expect it could, independently raise its diaper prices to recoup the extra costs of ILG royalties. As a private-label manufacturer, the Business was a known price follower of the branded manufacturers’ (PG and KC) prices. No evidence was presented to show that any of its managers expected they -could rely on PG and KC to
raise
their prices if the Business paid them royalties, thus allowing price increases to recoup the royalty costs. PG and KC, with aggregate market share of ±70%, had been chronically engaged in “fierce battles”
inter se
over market share, and were lowering prices. In addition to the pressures from PG and KC, Paragon faced, as Weyerhaeuser had, vigorous competition from its private-label competitors that further constrained its ability to raise prices.
33.At the time of the IPO,
10
the Business had no alternative, market-tested design that could be used to replace the ILG feature for the Ultra diaper. Dropping the ILG feature from the Ultra diaper would have been disastrous to the Business, returning it to the “sick” condition from which the ILG feature had rescued it. The Ultra diaper, which was the Business’s premium quality private-label diaper, represented approximately 84% of its net sales. The Business also produced and sold a line of economy diapers (the “Economy diaper”) that had fewer features than the Ultra diaper. The Economy diaper, which represented about 14% of net sales in 1993 (15% in 1992), did not utilize an ILG feature when the IPO closed. At the time of the IPO, the Business had just introduced a training pant, which is a form of diaper used by older toddlers. The training pant did not then utilize an ILG and represented about 1% of the net sales of the Business at that time. Accordingly,
*850
as sold to the public through the IPO, the Business had essentially béen built as, and was, a company with a single product — the Ultra ILG diaper — but with good potential for growth and expansion.
34. The consequences of not having the right to use the key ILG feature had been discussed within Weyerhaeuser as similar to the consequences it suffered from the 1985 Buell injunction. These consequences included an injunction requiring the Business to pull the Ultra diaper from retailer shelves, costs to develop a new diaper design, lost sales and profits from being forced to sell an inferior, non-ILG product, payment of the' substantial royalties PG and KC were demanding for a license to continue using the ILG feature, and liability to PG and KC for their lost profits, which Weyerhaeuser knew could be substantial.
B. The IPO
35. Under these ominous circumstances, Weyerhaeuser closed the IPO February 2, 1993, selling 11.5 million shares
11
of Paragon common stock to public investors who paid $19.00 per share. Weyerhaeuser received $179,100,000 of the $218,500,000 IPO proceeds,
12
and $35,000,000 from Paragon, which Paragon had borrowed under its new revolving bank credit facility. In light of the previous estimations of the value of the Business, and in light of the patent infringement threats from PG and KC, the receipt of $214.1 million for selling its Business represented a successful transaction for Weyerhaeuser. By the end of the first trading day, Paragon’s stock traded up to close at $24.75 per share, giving Paragon a market value of $284,625,000 on February 2,1993.
36.At closing, Weyerhaeuser transferred the Business to Paragon by executing an Asset Transfer Agreement (ATA) and Intellectual Property Agreement (IPA) (together, the ATA and IPA are the “Transfer Agreements”). The ATA and IPA, as finally executed at the IPO closing, contained assumption of liabilities clauses, whereby Paragon assumed virtually all liabilities of Weyerhaeuser relating to operation of the Business, past and prospective (defined as the “Assumed Liabilities”), including patent liabilities.
13
The Transfer Agreements, at ATA Section 11.02(a) and IPA Section 4.01, also contained certain provisions providing that Paragon would
*851
indemnify and defend Weyerhaeuser from the Assumed Liabilities, including any third party claims against Weyerhaeuser for patent infringement relating to operation of the Business. As discussed at length in the Summary Judgment Order entered October 30, 2002, assumption of liability and indemnity clauses existed in early drafts of these contracts, prepared months earlier than the February 2, 1993 actual closing. Later, however, numerous warranties were added to the contracts. Plaintiff sued on four of the warranties. Two are found in the ATA, and were made with no limitation as to Weyerhaeuser’s knowledge. In the final, signed ATA, these two warranties provide, in relevant part:
3.01(c): [Weyerhaeuser] has, and will transfer to [Paragon] at the Closing, good title to all of the other Assets [all assets other than Real Property] ... free and clear of any and all mortgages, security interests, liens, claims, charges, options and encumbrances of any nature whatsoever, except for minor defects and irregularities in title or encumbrances that do not materially impair the use of any such Assets for the purposes for which they are held.
3.01(d): The Transferred Assets and the services and materials to be provided pursuant to the Related Agreements are sufficient to conduct the Business
14
as now being conducted.
The other two warranties, in the IPA, provide that, “to the best of [Weyerhaeu-ser’s] knowledge”:
3.11(ii): “Schedules 3.01(a) and 3.01(b) are accurate and complete lists of all Patent Rights and Trademarks, as used in connection with the Business or the Products.”
3.11(vii): “[T]he Primary Intellectual Property
15
plus Trademarks and Secondary Intellectual Property
16
are adequate for the continuation of the Business as currently conducted.”
At closing of the IPO, Weyerhaeuser certified the warranties were true and correct. In Section 3.01(a) of the ATA, Weyerhaeu-ser represented and warranted to Paragon that the ATA warranties were enforceable on their terms. The IPA and ATA were each fully integrated contracts, which, pursuant to merger clauses in each, superced-ed all prior discussions between the parties over the subject matter of the agreements. The IPA and ATA were required to be, and were, filed with the SEC as “material contracts” and made a part of the Registration Statement for Paragon’s newly issued common stock. Weyerhaeuser, in Section 11.02(b) of the ATA, agreed to indemnify Paragon for all losses, costs,
*852
expenses and damages arising from a breach of any of the four warranties at issue.
C. Paragon After The IPO
37. After the IPO, the Business now known as Paragon continued to make and sell the Ultra diaper with the same ILG feature Weyerhaeuser had used before the IPO. For infringement purposes, Paragon’s ILG feature did not change from the feature on which Weyerhaeuser had built the Business. Paragon also continued to sell the Economy diaper and training pant. After the IPO, in the mid to late 1990s, Paragon added the ILG feature to the Economy diaper and to the training pant. Also after the IPO, Paragon began to sell a “Supreme” diaper. No credible evidence was introduced to show that this product ever had an ILG.
38. After the IPO, Paragon continued to employ the same outside patent counsel that Weyerhaeuser had used on diaper patent issues before the IPO.
17
After the IPO and through at least 1996, Paragon’s attorneys continued to consult Weyerhaeu-ser’s in-house patent attorney, Pat Coogan, regarding the ILG patent matters. For the first two years after the IPO, PG and KC lowered their diaper prices by more than 20%, and Paragon was forced to respond by lowering its diaper prices accordingly.
39. After the IPO, the representations in the IPO Prospectus that “the Company believes any outcome of [the ILG patent] matters will have no material adverse effect” on the Business restrained Paragon from agreeing to licenses with PG and KC at royalty rates that would have so eroded Paragon’s profits as to be a material adverse effect on Paragon’s financial position.
18
On January 20, 1994, PG sued Paragon in federal district court in Delaware for infringing PG’s Lawson and Dragoo patents (the “Delaware Litigation”). In return for dismissal of the lawsuit, PG demanded that Paragon pay a 2.5% royalty. Paragon sought an alternative resolution by tendering several alternative diaper designs to PG, and asked PG to agree that the designs would not infringe its patents. On February 28, 1994, PG responded to Paragon’s request, agreeing that two of the samples would not infringe Lawson or Dragoo. PG asserted, however, that even if Paragon elected to switch to one of these designs. Paragon would still be required to pay a 2.5% royalty on all past infringement of Lawson and Dra-goo, back to 1991 (approximately $30 million), plus a 1% royalty on future net sales of the sample diaper for licenses under PG’s Aziz and Buell patents, because PG claimed the sample diaper infringed Aziz and Buell.
19
40.Paragon rejected PG’s offer. Paragon had not commercially tested the samples it had delivered to PG, and believed them to be inferior designs, which were not a commercially viable option. Paragon countered PG’s offer by offering to pay a 0.1% royalty for licenses of Lawson and Dragoo for three years, after which no
*853
further royalties would be due. Paragon’s offer and position was consistent with the IPO Prospectus immateriality disclosure, and with the pre-IPO advice of Mr. Coo-gan as to what would be a “reasonable royalty” for PG’s ILG patents. PG rejected Paragon’s counteroffer, telling Paragon it believed the parties were at an impasse. Consequently, pretrial discovery proceeded.
41.During 1995, KC filed a lawsuit against Paragon in Dallas, Texas for infringing its Enloe and Enloe II ILG patents. By July 1996, after settlement discussions with PG had resumed, PG had lowered its royalty demand for Lawson and Dragoo licenses to 2%, but still demanded Paragon pay $30 million for past infringement back to 1991, when Weyer-haeuser had begun selling the ILG diaper. Even though this was PG’s lowest settlement offer, Paragon believed it could not afford to pay PG a 2% royalty, given its competitive situation and the likelihood that this rate would become precedent for a royalty payable to KC for licensing KC’s Enloe patents, which Paragon considered stronger, more defensible patents than Lawson. The pendency of the KC claims under Enloe, which would (soon) include a generic claim for all ILGs, materially limited Paragon’s options in reaching a settlement with PG. From the time of the IPO through the February 1997 PG trial in Delaware, Paragon continued to study alternative designs to avoid paying any royalty, but found no viable alternative to the ILG design on its diaper. Removing the ILG altogether was not a viable option for Paragon.
42. Before the trial in Delaware and thereafter, Stephen Judlowe, Paragon’s trial counsel who had originally been selected by Mr. Coogan, Weyerhaeuser’s in-house patent counsel, was advising Paragon that the likelihood of Paragon’s success at trial against PG’s claims was very high, and as high as 80%, and that even if Paragon lost on PG’s claims it would win on its counterclaim for PG’s alleged infringement of Paragon’s Pieniak patent and would, “at the end of the day walk away making money” on the litigation. Paragon relied on Mr. Judlowe’s advice and rejected PG’s settlement offer. PG and Paragon proceeded to trial.
43. A bench trial before Judge Joseph Longobardi commenced in Delaware February 3, 1997. The day after the PG trial started, the PTO issued to KC the Enloe III patent containing the generic ILG claims originally granted to Lawson in 1987.
20
After presentation of evidence had concluded, but before the Delaware court ruled, PG and Paragon conducted further settlement discussions. At an April 1997 meeting, PG representatives met and explained the implications of the Enloe III patent, and how Paragon had no way to avoid single or even double jeopardy for infringement except by retreating to what essentially was its pre-1991 diaper, which would have been “commercial suicide” for Paragon. In May 1997, after the trial had
*854
been completed, PG renewed its pretrial offer of a 2% royalty, attributing 1.25% to Lawson and .75% to Dragoo, but increased its demand for past infringement damages to $40 million. Paragon calculated that accepting this offer would have cost it about $150 million. Paragon still believed it could not afford to accept PG’s demand, in part due to the overhanging claims of KC, which by then had filed a second lawsuit against Paragon in federal district court in Dallas, Texas, to include its enforcement of the Enloe III generic claims to all ILG diapers (the “Texas lawsuits”). Also, Paragon’s trial counsel continued to give bullish advice after the Delaware trial, advising that Paragon was a likely winner. For this and the reasons described earlier, Paragon rejected PG’s post-trial pre-ruling settlement offers. In turn, PG rejected Paragon’s counteroffer of a 0.2% royalty capped at $3 million.
21
The parties thus waited for Judge Longobardi’s decision.
44. When the patent infringement lawsuits were filed against Paragon, Paragon did not send Weyerhaeuser a formal written notice demanding that Weyerhaeuser defend it or indemnify it for liability. Weyerhaeuser had actual notice, however, that Paragon had been sued by PG for infringing Lawson and Dragoo: Mr. Coo-gan was consulted after the IPO by Paragon in-house counsel, and was deposed in the PG case. Mr. Abraham testified he instructed each of Paragon’s general counsels to consult with Mr. Coogan on ILG claims and strategy. Susan Barley, Paragon’s General Counsel from at least January 1994 through the summer of 1995, provided credible testimony that she kept Mr. Coogan up to date on the progress of the negotiations with PG while she was at Paragon, and that Mr. Coogan attended meetings with her and lawyers from Mr. Milnamow’s firm to strategize about PG and KC ILG patent issues. Cathy Has-brouck, who was hired as its General Counsel when Paragon moved from Seattle to Georgia in 1996 and remained in that position through conclusion of Paragon’s bankruptcy case, provided credible testimony that she also discussed these patent issues with Mr. Coogan during the period leading to trial, and received advice from him on the defense of the ease that was consistent with the bullish advice received from Paragon’s outside counsel. Mr. Coo-gan, while admitting receiving a call from a “woman in Georgia,” claimed not to remember such a discussion. His denial was not credible.
D. Paragon Is Driven To Bankruptcy By Intellectual Property Inadequacies
45. The Delaware Court’s December 30, 1997 judgment, entered January 6, 1998,1 against Paragon, held that its ILG feature infringed PG’s Lawson and Dragoo patents and permanentlyenjoined Paragon from selling its primary product, the private-label “Ultra” diaper. The judgment also required Paragon to pay PG lost profits damages, royalty damages equal to 2% of past infringing sales, and enhanced damages for what had been Weyerhaeu-ser’s willful infringement of Dragoo equal to 100% of the damages award attributable to the March through December 1991 period. By order dated May 28, 1998, the damages portion of the judgment against
*855
Paragon was found to be $178,429,536.00.
22
46. The Delaware Court’s judgment precipitated the filing of Paragon’s Chapter 11 bankruptcy petition January 6,1998. Ten days later the United States Trustee appointed an Official Committee of Unsecured Creditors (“Creditors’ Committee”). Weyerhaeuser was appointed as one of nine creditors to serve on the Creditors’ Committee. Weyerhaeuser served as a Creditors’ Committee member throughout the duration of Paragon’s case in this court. On November 2, 1998, the United States Trustee also appointed an Official Committee of Equity Security Holders (the “Equity Committee”).
E. Paragon’s Losses For Which Plaintiff Seeks Damages
1.Bankruptcy-Related Costs
47. During its Chapter 11, Paragon paid retention bonuses to key staff and managers. Paragon paid these bonuses to ensure that key personnel stayed with Paragon through the bankruptcy crisis. Paragon paid $4 million for retention bonuses in 1998, which were approved by order entered May 19, 1998, as reasonable and necessary.
23
Paragon incurred the retention bonus cost as a direct result of the Delaware Judgment and the ensuing bankruptcy. Paragon also paid legal and professional fees for bankruptcy-related matters totaling approximately $6.3 million in 1998, $9.6 million in 1999, and $7.0 million in 2000. Paragon incurred these costs as a direct result of the Delaware Judgment and the ensuing Chapter 11 bankruptcy proceeding.
2. Product Re-Design Costs
48. To comply with the Delaware court’s permanent injunction against using the ILG feature, Paragon engineers designed a new private-label diaper it called its “unitary leg gather” design (“ULG”). Paragon rolled out the new ULG diaper in phases to its retail customers during the six months following the Delaware Judgment.
24
The ULG design was the best design Paragon could devise. It was, however, more expensive to manufacture than the ILG diaper because it required more material, and redesigning and retooling for the new diaper was expensive. Actual incremental costs Paragon incurred as a result of having to redesign its product totaled at least $8,514,000.
3. Lost Profits
49. In addition to costing more, the ULG Ultra diaper did not perform nearly as well as the ILG diaper, and leakage increased significantly. As a result, Paragon experienced lower sales and much lower profits, as obtaining the sales Paragon did achieve necessitated more promotional costs. Paragon reported $512.8 million net sales of infant care products in 1998 and $486.1 million in 1999. These sales figures were less than the net sales of $542.9
*856
million for 1998 and $554.6 million in 1999 that Paragon had projected in its pre-bankruptcy August 1997 Mid-Term Plan.
25
Applying Paragon’s calculation of its 1997 gross profit margin at 22.3%, the lower-than-projected sales cost Paragon profits of $6.7 million in 1998 and $15.3 million in 1999. Paragon’s August 1997 Mid-Term Plan projections for its 1998 and 1999 net infant care product sales were reasonable estimates at the time of what Paragon’s infant care product sales would have been in those years if no injunction had issued against its Ultra diaper and if none of the resulting bankruptcy disruptions had occurred.
26
Paragon had an established business and profit history and had reasonable prospects for growth into the future, if its intellectual property had been sufficient and adequate, as warranted. Paragon’s 1997 gross profit margin is a reasonable basis on which to calculate lost profits.
4. Obligations Incurred To PG And KC
a. PG obligations
50. After some months of selling the ULG Ultra diaper, Paragon management decided Paragon needed to return to the ILG design to have a commercially viable business in order to reorganize and emerge from bankruptcy. The only options for accomplishing that goal were (a) prevailing on appeal and overturning the Delaware injunction, or (b) settling, first, with PG for a license enabling Paragon to sell its ILG-designed diaper. Paragon’s management, advised by Paragon’s new patent counsel, Cravath Swain & Moore (“Cravath”), believed its chances of overturning the Delaware Judgment on appeal were no better than 30%. Losing the appeal likely would have forced Paragon to continue selling its inferior ULG product, which its managers did not believe provided a viable future. The bleak appeal prospects were compounded by PG’s September 22, 1998 motion to the Delaware Court to hold Paragon in contempt for selling the ULG product. In that motion, PG argued that Paragon’s ULG diaper still infringed its patents, in violation of the permanent injunction, and requested the Delaware Court to hold Paragon in contempt and to enjoin it from selling even that relatively unsuccessful diaper. Had PG’s motion been successful, Paragon’s business would have been shut down completely.
51. These factors led Paragon management to conclude that a settlement with PG allowing it to use the ILG feature was necessary for Paragon to survive as a going concern and emerge from bankruptcy. Paragon management was not alone in reaching this conclusion. The Creditors’ Committee, on which Weyerhaeuser served, strongly supported Paragon settling with PG, based upon advice of its own
*857
patent counsel, Fish
&
Neave, who had been employed to advise the Creditors’ Committee concerning Paragon’s ILG patent litigation prospects against PG and KC.
52.With strong Creditors’ Committee encouragement and support, Paragon and PG, in October 1998, reached broad agreement on economic issues for a settlement. Their settlement agreement (“PG Settlement Agreement”) was presented for approval by the bankruptcy court February 2, 1999. Key terms of the agreement included the following:
i. A PG license to Paragon for PG’s Lawson and Dragoo patents permitting Paragon to use the ILG feature that the Delaware Judgment had enjoined it from using, in return for Paragon paying PG a 2% royalty on net sales of all Paragon ILG diapers (“PG License”);
ii. The PG License would take effect February 2, 1999, with royalties payable at 2% from that date forward;
iii. As an express condition of the license, Paragon’s consent to PG’s $158.5 million unsecured claim for infringement dating back to 1991, plus interest on that sum at 6% per annum accruing from April 15, 1999 through the effective date of Paragon’s reorganization plan (which was January 28, 2000); and
iv. Paragon’s consent to a $5 million administrative expense claim for PG.
The PG Settlement Agreement was an arms-length, extensively negotiated agreement. The Creditors’ Committee supported the PG Settlement Agreement and urged its approval.
53. In March 1999, the Equity Committee filed a motion to obtain discovery from Weyerhaeuser, pursuant to Bankruptcy Rule 2004. That discovery motion raised the breach of warranty claims forming the basis of this adversary proceeding. Weyerhaeuser opposed the motion. Accordingly, Weyerhaeuser,
before
approval of the Settlement Agreement with PG, was on notice of the claims that form the basis of this litigation.
54. The Equity Committee vigorously opposed approval of the PG Settlement Agreement. On March 22 and 23, April 13, 14, and 15 and June 8, 1999, evidentia-ry hearings were held, during which Paragon, the Creditors’ Committee, its members (including Weyerhaeuser), PG and the Equity Committee had a full and fair opportunity to offer evidence and to argue in support of or in opposition to the PG Settlement Agreement (the “PG Settlement Agreement Hearing”). After hearing extensive evidence and argument, by order entered August 6, 1999 the PG Settlement Agreement was approved (the “PG Settlement Approval Order”). In that Order and in the Plan Confirmation Order, the PG Settlement Agreement was found to be both “reasonable” on its terms and “necessary” for Paragon to continue operating.
55. Weyerhaeuser, as a member of the Creditors’ Committee, had notice of the terms of the PG Settlement Agreement and of the deadlines for objections to the Settlement Agreement. Weyerhaeuser had a full and fair opportunity to object to the PG Settlement Agreement, regardless of the position taken by the Creditors’ Committee, as a whole, on the settlement.
27
With notice of the breach of warranty claims against it, Weyerhaeuser did
*858
not oppose approval of Paragon’s PG Settlement Agreement. The findings in the PG Settlement Approval Order and the Plan Confirmation Order are consistent with evidence presented during the Damages Trial of this action. Paragon’s decision to enter into the PG Settlement Agreement to return to selling the ILG diaper, on which Weyerhaeuser had built Paragon’s business, was both reasonable and necessary to ensure Paragon’s survival as a going concern.
b. KC obligations
56.During its Chapter 11 case, Paragon also entered into a settlement agreement with KC providing for a license under the three Enloe patents and dismissal of the Texas lawsuits. As problematic as PG’s ILG patents were, Paragon management believed, based on advice of counsel, that EC’s Enloe infringement' claims would be even more difficult to defeat than the PG claims that led to the devastating loss in Delaware. Paragon, as Weyerhaeuser had anticipated, had no known non-infringement defense to Enloe III. Its principal defense was to argue that the Enloe patents were invalid based on a “Japanese Utility Model” cloth diaper cover. Optimism over this defense, however, was greatly tempered by the fact the PTO had considered this prior art during prosecution of the Enloe II and Enloe III patents, and still issued the patents. Also, Paragon had urged the “Japanese Utility Model” in the Delaware litigation in an attempt to show that Lawson was invalid, but the Delaware Court had rejected the argument.
57. Paragon also faced potential liability to KC for sales dating back to 1991 under the Enloe I patent, which issued in November 1987, more than five years before the IPO closing. While Enloe I’s claims were limited to “fluid pervious” ILGs, the patent did not define the degree of perviousness required, and the Weyer-haeuser/Paragon hydrophobic ILGs were undisputedly pervious to some degree.
28
Paragon management assessed, based on advice of counsel, that the Enloe I claim allowed KC a broader range of equivalent products it could argue infringed its patent under the doctrine of equivalents than Lawson. As Enloe was prior art to, and hence a stronger patent than Lawson, the potential liability appeared likely.
58. Given these and other factors, Paragon management, again advised by its new patent counsel, Cravath, believed it had no better than a 40% chance of prevailing against EC’s Enloe infringement claims. Facing a 60% likelihood KC would obtain an injunction preventing sales of its ILG product and substantial damage claims as well, Paragon management concluded that settling with KC was also necessary to provide it a clear path to market for its ILG diaper product.
*859
59.In October 1998, shortly after Paragon agreed to settlement terms with PG, Paragon and KC reached general agreement on economic terms of a settlement. Paragon’s settlement with KC was presented for approval in Paragon’s motion filed April 12, 1999, for an order authorizing and approving settlement (“KC Settlement Agreement”). Important terms of the KC Settlement Agreement included the following:
i. A KC license to Paragon for KC’s Enloe patents permitting Paragon to use the ILG feature in return for Paragon paying KC a 2.5% royalty on net sales of Paragon ILG diapers up to $200 million, and a 1.5% running royalty on net sales exceeding $200 million, with minimum royalties of $5 million to be paid annually until the last of the three Enloe patents expired (“KC License”);
ii. As an express condition to the Enloe license, Paragon’s consent to KC’s $110 million unsecured claim for past infringement dating back to 1991, plus interest on that sum at 6% per annum accruing from April 15, 1999 through the effective date of Paragon’s reorganization plan (which was January 28, 2000);
iii. Paragon’s consent to a $5 million administrative expense claim for KC; and
iv. Paragon’s consent to modify the super absorbent polymer (“SAP”) used in Paragon’s diaper to a “safe harbor” to avoid infringement of KC’s Kellenberger, Melius and Good patents.
The KC Settlement Agreement was an arms-length, extensively negotiated agreement. The Creditors’ Committee strongly supported the KC Settlement Agreement and urged its approval. As in the case of the PG Settlement Agreement, the Equity Committee contested approval of the KC Settlement Agreement.
60. On June 9, 10, 11, 24, 25, and 29, and July 1 and 13, 1999, evidentiary hearings were held, during which Paragon, the Creditors’ Committee, its members (including Weyerhaeuser), KC and the Equity Committee had a full and fair opportunity to offer evidence and to argue in support of or opposition to the KC Settlement Agreement (“KC Settlement Agreement Hearing”). The order approving the KC Settlement Agreement (the “KC Settlement Approval Order”) was entered August 6, 1999. That Order and the Plan Confirmation Order approved the terms of the KC Settlement Agreement as reasonable and necessary for Paragon to sell the ILG diaper, to avoid an injunction'shutting down the sale of the ILG product, and to avoid the huge potential liability.to KC. Weyerhaeuser, as a creditor and member of the Creditors’ Committee, had notice of the KC Settlement Agreement and of the deadline to object to it. Weyerhaeuser, however, did not contest the KC Settlement Agreement. The findings in the KC Settlement Approval Order and the Plan Confirmation Order are consistent with evidence presented during and for the Damages Trial in this action, as to the need for Paragon to enter the KC Settlement Agreement to obtain a license under En-loe, in order to have a “clear path to market.”
61. On November 1, 1999, after approval of the KC settlement and licenses, and while the PG and KC Settlement agreements were on appeal, a decision issued from the federal district court in Wisconsin in another lawsuit over Enloe I,
*860
II, and III brought by KC against Tyco, another manufacturer of diapers.
29
The construction of the Enloe claims reached in
KC v. Tyco,
30
which was later affirmed on appeal,
31
does not affect the reasonableness and necessity of Paragon’s settlement with KC. The parties stipulated that the Tyco diaper had an ILG feature that was similar in relevant respects to the ILG of the Weyerhaeuser/Paragon diaper. The federal appeals court affirmed that Tyco’s diaper did not infringe KC’s Enloe patents but on an unexpected rationale. As Plaintiffs patent law expert, Tom Arnold, explained most cogently, that decision affirmed the November 1999 Wisconsin district court’s construction of the claims of the Enloe patents, and
read into
the claims of all the Enloe patents a broad fluid pervious
limitation,
not — as expected — an expansion, based on the original Enloe application. When the KC Settlement Agreement was executed, however, given the prior history of this and other patents in the Paragon arena, no one predicted, or even surmised the possibility, that the Wisconsin trial court in
KC v. Tyco
would (or the Texas trial court in
KC v. Paragon
might) reach such a conclusion.
32
Also, until its opinion issued, no one could assure that the Federal Circuit would affirm the Wisconsin trial court’s decision. Indeed, the Creditors’ Committee, including Weyerhaeuser, knew of the Wisconsin trial court decision at or near the time it issued but did not request reconsideration of the KC Settlement Agreement Approval Order in light of that decision.
62. The ground on which the Wisconsin trial court held in Tyco’s favor in narrowing the scope of KC’s Enloe patent claims — by reading limitations from the patent specification into the claims — was a newly developing principle of patent law that Paragon’s highly skilled patent counsel, Cravath, did not anticipate would be successful. During the damages trial in this adversary proceeding, Plaintiffs expert patent attorney, Tom Arnold,
33
testified that, at the time of Paragon’s settlement decision, most reasonably skilled patent attorneys would not have anticipated with confidence that the Enloe claims would be limited in the fashion the Wisconsin court limited them, or that the
Tyco
decision’s limitation, if adopted at trial, would be sustained on appeal. Wey-erhaeuser itself, when dealing with the Enloe predicament before the IPO, and having had years to study Enloe and its prosecution history with the assistance of qualified patent counsel, did not anticipate
*861
that the claims of Enloe III, once issued, would be limited in the fashion the
Tyco
decision ultimately limited them. . Prior theories did not focus, or even mention in passing,
limitations
on the Enloe patents.
63. Paragon’s Court-approved settlement with KC, like any reasonable settlement, was a compromise over an uncertain outcome; it was not a surrender based on a certainty of losing. The consideration paid in settlement was discounted to reflect this uncertainty. Paragon did not have the luxury of testing the KC claims through trial and appeal, as Tyco did. Paragon faced substantially more risk than Tyco faced if Paragon were to litigate the Enloe infringement claims to verdict and through appeal. The ILG diaper was Paragon’s principal product. If Paragon lost and an injunction issued, Paragon would be out of business. By contrast, the Tyco/ConFab diaper represented only one of perhaps hundreds of businesses in the Tyco conglomerate. This disparity in risk tolerance explains why Paragon could not afford to lose in litigating KC’s infringement claims to judgment. Tyco won, but could afford the potential loss. Also, Tyco/ConFab’s volume of potentially infringing sales, and hence its potential past royalty and lost profits liability, was much smaller than Paragon’s. Tyco did not face, either in absolute dollars or relative impact, the huge
34
potential liability Paragon faced from alleged infringement back to 1991 if KC were to prevail. Accordingly, Paragon’s decision to enter into the KC Settlement Agreement, thereby incurring present and future costs attendant to the agreement, was reasonable and necessary for Paragon to obtain a “clear path to market” and maintain viable Business operations, notwithstanding the outcome of
KC v. Tyco.
Weyerhaeuser’s arguments to the contrary, made with the benefit of perfect hindsight, are not persuasive. It is impossible to turn back the clock to change the fact that for Paragon to have litigated with KC instead of settling would have been a “bet-the-eompany” gamble.
c. Wellspring’s purchase of Paragon
64. In addition to the PG and KC Settlement Agreements, a third cornerstone of Paragon’s Chapter 11 reorganization was sale of Paragon’s diaper business. Wellspring Capital Management LLC (“Wellspring”) emerged as the high bidder, and Paragon’s Plan was centered on a transaction in which Wellspring paid the Paragon Estate $115 million for 98.5% of the newly-issued common stock of the Chapter 11 reorganized entity known as “Reorganized Paragon.”
35
The purchase price was based on a valuation conducted
*862
by Paragon’s Chapter 11 financial advisor, The Blackstone Group (“Blackstone”), which valued the Paragon enterprise at approximately $290 million, applying a 15% discount rate. The Blackstone valuation was premised on projections of future cash flow and performance of the Business that were set forth in the Disclosure Statement, a necessary prerequisite to allowing voting on the Chapter 11 Plan of reorganization. The Disclosure Statement was approved by order entered November 18, 1999, following notice to all creditors and interested parties, including Weyerhaeu-ser. The projections and valuation included in the Disclosure Statement became the basis on which Paragon’s Plan was ultimately confirmed.
65. The financial advisors for the creditor and shareholder constituents in the Chapter 11 case carefully reviewed the management projections underlying the bankruptcy reorganization.
36
They had a strong economic and fiduciary incentive to ensure the $290 million enterprise valuation was fair, because creditors, under the proposed reorganization plan, were to receive substantially less than 100% of their claims, based on the valuation and resulting sale price. The $115 million sale price was derived by subtracting from the $290 million valuation the $170 million amount of debt Reorganized Paragon faced post-reorganization. The $5 million difference reflected a Plan compromise that allowed Paragon’s old shareholders to receive a small portion of equity in the new entity, Reorganized Paragon.
66. Reorganized Paragon’s $170 million debt load was composed of $155 million in five-year promissory notes, bearing interest at 11.25% per annum, payable to Paragon’s unsecured creditors in partial satisfaction of their claims against Paragon, and $15 million drawn on a new revolving credit facility at confirmation (i.e., when the Plan was confirmed by order following notice and hearing), proceeds of which primarily funded bankruptcy costs paid at confirmation. PG’s
pro rata
portion of Reorganized Paragon’s $155 million promissory notes was $61.9 million. This amount constituted a partial payment on PG’s agreed $158.5 million unsecured claim. KC’s
pro rata
portion of Reorganized Paragon’s $155 million promissory notes was $42.9 million, as partial payment on its $110 million unsecured claim.
67.Both the cash Wellspring agreed to pay for the Paragon business and the value of the business at reorganization were directly affected by the obligations the business assumed at confirmation: to pay the promissory notes issued to PG, KC and the other unsecured creditors. To calculate the loss the Paragon Estate suffered from having to pay these obligations post-confirmation, use of a 15% discount rate is appropriate. Blackstone used a 15% discount rate in its valuation work; the other financial advisors working in fiduciary capacities in Paragon’s bankruptcy case used a 15% discount rate; and Paragon used a 15% discount rate in its August 1997 valuation work. Using a 15% discount rate, as of the date of Plan confirmation, the present value of the debt that Reorganized Paragon would owe PG following confirmation was $54.1 million, and the present value of the debt that Reorganized Paragon would owe KC was $37.5 million. Paragon’s expected post-confir
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mation royalty obligations to PG and KC also reduced what the Estate realized from the sale of Paragon to Wellspring because the projected cash flow on which the sale price was premised was appropriately reduced. Applying the 15% discount rate, as of Plan confirmation, the present value of the anticipated post-Plan confirmation PG and KC royalty burdens were $43.4 million for PG and $33.8 million for KC.
d. Cash payments to PG and KC and remaining liability to them
68.In addition to the adverse impact on the value of Paragon’s business when it was sold, the Settlement Agreements also required Paragon to pay substantial cash sums to PG and KC during the Chapter 11 and at Plan confirmation. First, as required by the Settlement Agreements, Paragon began paying PG and KC royalties immediately upon executing the license agreements. From February 2, 1999 through the January 28, 2000 effective date of the Plan, Paragon paid PG $10.4 million in royalties and KC $9.9 million. Second, at confirmation, Paragon paid PG $51.2 million and KC $37.5 million in cash from the proceeds of the sale of the Business to Wellspring, in partial satisfaction of their unsecured claims allowed pursuant to the settlements. Third, as provided in the two settlements, Paragon paid PG and KC $5 million each at plan confirmation, in satisfaction of their allowed administrative claims. At confirmation, the $290 million value of the Paragon business was well below the almost $400 million in allowed claims held by Paragon’s unsecured creditors. Between the cash payments and notes issued to creditors upon Plan confirmation, unsecured creditors received payments totaling approximately 68% of their allowed unsecured claims. Approximately $122 million remains due to creditors of the Paragon Estate today on account of allowed claims against, or liabilities of, Paragon. Included in this amount is $50.5 million due PG and $34.6 million due KC, inclusive of simple interest at 6% (per the settlements) through the effective date of the Plan, January 28, 2000. These sums represent the unpaid portion of their respective unsecured claims allowed under the settlements. The Plan provides that these unpaid claims will receive payment from a portion of any recovery in this and other litigation pursued by the Litigation Claims Representative.
37
e. SAP compliance costs
69. As a result of the KC Settlement Agreement and to avoid further patent conflicts with KC, Paragon incurred costs in modifying its super-absorbent polymer (“SAP”) diaper fill, which Paragon agreed to do as a condition to KC’s agreement to license the Enloe patents to Paragon. The evidence showed that the costs Paragon incurred to do that totaled at least $9.3 million.
5. Mabesa
70. Given the flat-to-declining expected U.S. diaper market, part of Weyerhaeu-ser’s business plan at the time of the IPO was to grow the Business by expanding into Latin American countries, including Mexico. Paragon entered the Mexican market in 1996, after the IPO, by acquiring a 15% equity interest ownership in a
*864
joint venture named Grupo P.I. Mabe, S.A. de S.V. (“Mabesa”), which made and sold diapers in Mexico. As an equity owner, Paragon earned a
pro rata
share of Mabe-sa’s profits. Paragon’s investment agreement gave it a contractual option to increase its investment and equity share in Mabesa. Mabesa was a profitable venture in 1996 and 1997. In 1997, Paragon management planned to exercise its option and increase its investment in Mabesa to 49% in 1998. The Delaware litigation, followed by the bankruptcy filing and liquidity crisis, however, prevented Paragon from exercising that option. Plaintiff seeks to recover damages for Paragon’s inability to exercise its option to increase its Mabesa investment. While global diaper expansion was then a logical and predictable direction for anyone competing in the intensely competitive mature-to-declining U.S. baby diaper market, pursuit of non-U.S. markets was not part of the Business or plans contemplated at the time of the IPO. Accordingly, the losses Plaintiff attributed to its inability to increase its Mabesa ownership are too speculative and too remote from the events involved in the breach of warranties by Weyerhaeuser to be allowed as an element of damages.
F. Plan Confirmation and Proceedings in This Adversary Proceeding
71. Over Weyerhaeuser’s opposition, the Equity Committee in Paragon’s bankruptcy, on behalf of the Paragon Estate, commenced this breach of warranty adversary proceeding against Weyerhaeuser October 4, 1999, contending Weyerhaeuser breached the four ATA and IPA warranties (quoted above at page 17, ¶ 36). Following hearings on confirmation thereof, Paragon’s Modified Second Amended Plan Of Reorganization (the “Plan”) was confirmed by order entered January 13, 2000 (the “Confirmation Order”), and the effective date of the Plan was January 28, 2000. The Plan and Confirmation Order reaffirmed the reasonableness of and necessity for Paragon to settle with PG and KC. Pursuant to the Plan and Confirmation Order, Mr. Randall Lambert was appointed the Paragon Estate’s Litigation Claims Representative to pursue this and other claims of the Estate. Accordingly, Mr. Lambert was substituted for the Equity Committee as Plaintiff in this action. Following the close of discovery, Plaintiff moved for partial summary judgment holding Weyerhaeuser liable for breaching the four warranties at issue. Weyerhaeuser cross-moved for complete summary judgment or dismissal. In support of the summary judgment motions, the parties jointly submitted an extensive record of more than nine volumes of joint exhibit appendices and twenty-five deposition transcripts. Oral argument on the motions was heard June 24, 2002.
72. The Summary Judgment Order entered October 30, 2002, found Weyerhaeu-ser breached all four warranties as a matter of law on the grounds that Paragon’s intellectual property was not adequate or sufficient at the IPO closing, so that Wey-erhaeuser’s warranties were not true. Because Paragon lacked the licenses then necessary to operate its business, the Delaware Judgment, the risks of continued litigation, the disruption to Paragon’s business from its inability to sell the ILG diaper, and the allowed claims of and license fees to PG and KC — which were necessary for Paragon to incur to obtain rights to use the ILG technology it did not have at closing of the IPO — constituted a stark gap in Paragon’s intellectual property, known to Weyerhaeuser and undisclosed in the IPO. As a result, Plaintiff is entitled to damages for the breaches. For
*865
the reasons set forth in the Summary Judgment Order, Weyerhaeuser’s arguments — that Paragon’s indemnity of Wey-erhaeuser against intellectual property claims in IPA Section 4.01, and other assumption of liability promises in the ATA and IPA precluded Plaintiffs breach of warranty claims and entitlement to damages — were rejected.
73. Weyerhaeuser filed a motion for reconsideration of the Summary Judgment Order November 12, 2002. In its Reply to Plaintiffs response to its motion for reconsideration, Weyerhaeuser raised for the first time a new document and argument it had failed to raise either in the original proceedings or in its motion to reconsider: a U.S. Assignment And Assumption Agreement signed by Paragon at the IPO closing. Weyerhaeuser also raised for the first time the
Tyco
decision’s issues discussed above, despite having notice of the trial and appellate court decisions at or near the time they issued, and despite entry of the Federal Circuit’s
Tyco
decision over a year before oral argument on the summary judgment motions. Following oral argument on the motion for reconsideration, Weyerhaeuser’s motion was denied. This matter was then set for trial only on damages.
74. During a fourteen-day damages trial conducted October 30 to November 6, November 24 and 25, and December 3 to 10, 2003, Plaintiff presented evidence and argument on the issue of damages for Weyerhaeuser’s breach of warranties. Plaintiff argued three alternative common law measures of damages: a “cost to cure” measure, a “difference in value” measure, and a “destruction of business” measure, plus consequential damages under the first two measures. Alternatively, Plaintiff argued for damages pursuant to the indemnity provision in ATA Section 11.02(b), in which Weyerhaeuser promised to pay Paragon for all “Losses” arising from or relating to a breach of warranty. Plaintiff also seeks prejudgment interest and attorneys’ fees under each remedy as well.
75. Weyerhaeuser contends Plaintiff is limited to the ATA Section 11.02(b) indemnity remedy for its breach of warranties, to the exclusion of a common law remedy customarily available for breach of warranty. Weyerhaeuser contends Plaintiff is entitled to no damages under the purportedly exclusive ATA Section 11.02(b) remedy because (i) given that Paragon settled, Plaintiff did not establish Paragon was actually liable to PG or KC for patent infringement, and (ii) Paragon and Plaintiff did not provide Weyerhaeuser sufficient notice of the PG and KC actions to be entitled to indemnity, and Weyerhaeu-ser was actually prejudiced from the lack of notice. Weyerhaeuser also argues that Paragon’s agreements to indemnify and defend Weyerhaeuser from certain intellectual property liabilities under ATA Section 11.02(a) and IPA Section 4.01 require Paragon to repay to Weyerhaeuser any liability Weyerhaeuser owes Paragon for breach of Weyerhaeuser’s warranties.
76. Finally, Weyerhaeuser contends that under Washington law, the only proper common law measure of damages is difference in value at the time of sale. Weyerhaeuser argues that under that measure, Plaintiffs damages are limited to what the missing PG and KC licenses hypothetically would have cost Paragon, both reduced to after-tax dollars and discounted to present value as of February 2, 1993, and then further reduced by Weyerhaeu-ser’s assumption that Paragon would have raised prices and recouped much of the increased royalty costs to acquire the li
*866
censes. Plaintiff responds that it is not limited to a difference in value measure, and may recover all damages and losses necessary to put Paragon in the position it would have occupied if it had received Weyerhaeuser’s baby diaper business in its as-warranted condition' — 'that is, with sufficient intellectual property to conduct the ILG diaper business. Plaintiff submits the measure that best accomplishes that goal is an equivalent to a “cost to cure” measure.
77. Among other contentions, Weyer-haeuser contends that the consequential damages Plaintiff seeks are not recoverable under Washington law, that Plaintiffs damages should be limited for Paragon’s alleged failure to mitigate damages, and that no damages should be allowed for KC-related losses because of the
Tyco
decision. Weyerhaeuser also asserts Plaintiff is not entitled to pre-judgment interest on any damage element. The parties have stipulated, however, to Plaintiffs entitlement to recover a certain amount of Plaintiffs attorneys fees and costs upon being awarded damages.
III. CONCLUSIONS OF LAW
A. Washington Law Governs
78. The parties agree that, because the ATA and IPA so state, Washington law controls the damages Plaintiff is entitled to recover.
B. Prejudgment Interest
79. Plaintiffs right to recover prejudgment interest is governed by Washington law, the law chosen in the ATA and IPA.
See Venn v. St. Paul Fire & Marine Ins. Co.,
99 F.3d 1058, 1066 (11th Cir.1996);
In re Eagle Enters., Inc.,
223 B.R. 290, 292 (Bankr.E.D.Pa.1998)
38
. Moreover, both parties appear to agree Washington law governs this issue. Under Washington law, entitlement to prejudgment interest is governed by case law, not statute.
See Bailie Communications, Inc. v. Trend Bus. Sys., Inc.,
61 Wash.App. 151 , 810 P.2d 12, 19 (1991). Washington follows the liquidated-unliquidated test for prejudgment interest entitlement.
Hansen v. Rothaus,
107 Wash.2d 468 , 730 P.2d 662, 664 (1986)
(en
banc)(citing
Prier v. Refrigeration Eng’g Co.,
74 Wash.2d 25 , 442 P.2d 621 (1968),
Mall Tool Co. v. Far West Equip. Co.,
45 Wash.2d 158 , 273 P.2d 652 (1954), and
Parks v. Elmore,
59 Wash. 584 , 110 P. 381 (1910)). Prejudgment interest is applied to liquidated claims but not unliquidated ones. A liquidated claim is one “ ‘where the evidence furnishes data which, if believed, makes it possible to compute the amount with exactness, without reliance on opinion or discretion.’”
Hansen,
730 P.2d at 665 (quoting
Prier). A
claim is unliquidated “ ‘where the exact amount of the sum to be allowed cannot be definitely fixed from the facts proved, disputed or undisputed, but must in the last analysis depend upon the opinion or discretion of the judge or jury as to whether a larger or a smaller amount should be allowed.’”
Id.
“A defendant should not, however, be required to pay prejudgment interest in cases where he is unable to ascertain the amount he owes to the plaintiff.”
Id.
at 665.
80. A claim is not liquidated if, as in this proceeding, a court must choose between alternative measures of damages.
King Aircraft Sales, Inc. v. Lane,
68 Wash.App. 706 , 846 P.2d 550, 558-59 (1993). Plaintiff offered alternative mea
*867
sures of damages. Each alternative involved a range of damages alleged to compensate plaintiff for insufficient intellectual property. Each damage component Plaintiff seeks has been examined separately under these standards to determine whether any is a “liquidated claim” permitting award of prejudgment interest.
See King Aircraft,
846 P.2d at 558 .
81. Because the consequential damages to which Plaintiff is entitled are damages to which Plaintiff would be entitled under either the cost-to-cure or the difference-in-value measure of damages, prejudgment interest on these amounts will be allowed except as to an award of lost profits damages. No other prejudgment interest is appropriate.
C. Contractual Indemnity Is Not The Exclusive Remedy
82. Plaintiffs Amended Complaint asserts two claims for relief: breach of contract and contractual indemnity, arising from Weyerhaeuser’s breach of the warranties contained in the ATA and IPA. The ATA, at Section 11.02(b), also provides Plaintiff a remedy for Weyerhaeuser’s breach of warranties. Under ATA § 11.02(b),
39
Weyerhaeuser as the Transferor agreed to indemnify Paragon “from and against any and all Losses arising from or relating to the breach by [Weyerhaeuser] of any representation, warranty, covenant or agreement of [Weyerhaeuser] contained in [the ATA] or any Related Agreement.” Weyerhaeuser argues, incorrectly, that this contract remedy is Plaintiffs exclusive remedy. This view is inconsistent with Washington’s approach to damages and view of contract interpretation.
83. Under Washington law, a contractually defined remedy is exclusive of all other remedies only when the contract clearly and explicitly expresses the parties’ intention that the contract remedy be exclusive. The Supreme Court of Washington has long held that “[u]nless it is clear that it was the intention that the parties definitely decided to limit their rights, the courts will not interpret language to have that effect.”
McCutchen v. Brink,
129 Wash. 103, 105 , 224 P. 605, 606 (1924);
accord, Paradise Orchards General Partnership v. Fearing,
122 Wash.App. 507 , 94 P.3d 372, 378 (2004). Nothing in the ATA expressly states that Section 11.02(b) is Plaintiffs exclusive remedy for breach of warranty. Because the ATA does not state that indemnity shall be the
exclusive
remedy
for
breach of warranty, Plaintiff is entitled to the common law remedies otherwise available for breach of warranty under Washington law.
84. Weyerhaeuser argues, however, that exclusivity is
implied
by ATA Section 11.01(a), which provides that “[a]ll covenants and agreements of the parties contained in this [ATA] shall survive the Closing Date.” Weyerhaeuser contends that because this survival clause fails to expressly identify “warranties,” no breach of warranty can exist other than Weyerhaeuser’s obligations under ATA Article XI, which encompasses the Section 11.02(b) indemnity remedy. Weyerhaeuser is wrong.
*868
85. Merely stating that one contract promise survives closing does not imply that all others will terminate. A presumption that warranties were omitted from the Section 11.01(a) survival provision is incorrect. A warranty is an “absolute undertaking” by the warrantor, and is a contractual promise concerning the matter warranted. A promise is a covenant, and without question, the warranties were among the “covenants” of the parties in the ATA. The warranties
a fortiori
were forward-looking and the contracts were signed at closing. Accordingly, Section 11.01(a) should be understood to provide expressly for the survival of the ATA warranties beyond closing. Otherwise, the warranties are meaningless exercises.
86. Even if Section 11.01(a) could be construed to implicitly render Weyerhaeu-ser’s ATA warranties limited in duration to the pre-closing period, it could have no such effect on Weyerhaeuser’s IPA warranties. Section 11.01(a) is limited to the “covenants and agreements” contained “in
this
Agreement.” (Emphasis added) “This” refers to the ATA. When an ATA provision was meant to apply to the IPA, it consistently referred to “this Agreement and the Related Agreements.” The ATA defines “Related Agreements” to include the IPA.
87. If the IPA and ATA warranties did not survive closing, it would mean the warranties never had any effect, because the ATA and IPA were not signed
until
closing. Any interpretation to the contrary is unreasonable. No underwriter would have continued with the IPO, for warranties are worthless if they die as soon as the ink is dry. The ATA and IPA are unlike other sale contracts that are signed months before closing and include warranties that, if demonstrated to be untrue as a result of intervening due diligence, can provide a basis for the warran-tee to terminate the sale contract or seek damages. A single party — Weyerhaeu-ser — controlled the decision to proceed to closing. As a division controlled by Wey-erhaeuser until closing, when assets filled the new corporate shell, the Business being sold by Weyerhaeuser had no ability to stop the IPO by asserting breach of a warranty in a contract not yet signed and enforceable. Weyerhaeuser’s argument reads the warranties out of existence, and thus violates a basic principle of Washington contract law that an interpretation rendering the warranties meaningless is not a reasonable interpretation.
Stouffer & Knight v. Continental Cas. Co.,
96 Wash.App. 741 , 982 P.2d 105, 110 (1999). Section 11.01(a) is not applicable to bar Plaintiffs recovery in this action.
88. Even if Weyerhaeuser’s non-survival argument were not inherently flawed, the argument must also be rejected because, as a potential bar to liability, the argument is one that Weyerhaeuser should have raised before entry of the Summary Judgment Order finding Weyerhaeuser liable for breach of the warranties. If this and Weyerhaeuser’s related arguments were correct, they would provide Weyerhaeuser a complete defense to liability for breach of warranty. Weyerhaeuser did not raise these arguments in the motions for summary judgment on the issue of liability, however, nor did Weyerhaeuser raise them in its Motion for Reconsideration or in its Reply brief in support of that motion. These newly urged arguments fail for the same reasons explained in rejecting other new arguments based on old information that Weyerhaeuser raised for the first time in its Motion for Reconsideration.
*869
D. Contract Indemnification Remedy
89. The ATA provides Plaintiff a separate and alternative remedy to its common law remedy for breach of the warranties. In Section 11.02(b), Weyerhaeuser agreed to indemnify Paragon for “all Losses arising from or relating to” a breach of warranty by Weyerhaeuser. The ATA, Section 1.01, defines the types and categories of “Losses” recoverable expansively:
[A]ny
loss, liability, claim, damage, obligation, payment, cost or expense, (including without limitation, the costs and expenses of any Action, any demand, assessment, judgment, settlement or compromise related thereto and reasonable attorneys’ fees, disbursements and other charges in connection therewith) (emphasis added).
Action is further defined broadly in the ATA, § 1.01. Paragon’s eost-to-cure royalty-related damages, its product re-design costs, bankruptcy costs and lost profits are “Losses” ATA Section 11.02(b) covers.
90. Weyerhaeuser interposes three defenses, including a “circular indemnity” counterclaim against Plaintiffs right to recover damages under the contractual indemnity section. The first defense is that Plaintiff was required to prove Paragon was actually liable for the underlying settled claims. The second defense is based on Paragon’s alleged failure to follow the ATA’s contractual indemnity notice procedures, which Weyerhaeuser argues resulted in actual prejudice. The third defense arises from Paragon’s agreement in ATA Section 11.02(a) to indemnify and hold Weyerhaeuser harmless for the liabilities Paragon contractually assumed under the contracts. Weyerhaeuser contends this section, read together with IPA Section 4.01, requires Paragon to indemnify Wey-erhaeuser for all damages Weyerhaeuser owes Plaintiff for Weyerhaeuser’s breach of warranties. This latter defense essentially argues that Paragon agreed to indemnify Weyerhaeuser for its own breach of warranty to Paragon.
1. Actual Liability Defense
91. Weyerhaeuser argues Plaintiffs contractual indemnity claim fails because Plaintiff failed to prove Paragon was actually liable to PG and KC for infringing their ILG patents. Weyerhaeuser cites
Gilbert H. Moen Co. v. Island Steel Erectors, Inc.,
128 Wash.2d 745 , 912 P.2d 472, 482 (Wash.1996)(ew
banc),
as one of a series of Washington cases that it argues establish a rule that when one seeks indemnity for amounts paid to settle a claim, the indemnitee first must prove it was actually liable to the underlying claimant before a right to indemnity can exist.
92. The Washington cases upon which Weyerhaeuser relies for its actual liability defense are inapposite. None involved a situation with facts similar to those present here — where the predicate for indemnification under a contract has been judicially determined. Application of any actual liability rule depends on the particular facts and indemnity language at issue, and must be analyzed on a case by case basis. In
Moen,
for example, a subcontractor contractually indemnified a general contractor for personal injuries suffered by third parties on the job site in connection with the subcontractor’s services, unless the general contractor’s negligence was the sole cause of the injury.
Id.
at 474. The general contractor settled a personal injury lawsuit and sought indemnity from the subcontractor. The settlement did not resolve whose negligence caused the injury. Therefore,
*870
in the indemnity action, the general contractor was required to prove that the subcontractor’s negligence caused the injury.
Id.
at 482. In
Moen,
unlike the present action, the basis for triggering indemnity under the contract had not been determined in either the underlying personal injury action or the indemnity action.
93. Similarly, in
Dixon v. Fiat-Roosevelt Motors, Inc.,
8 Wash.App. 689 , 509 P.2d 86 (1973) and
United Boatbuilders, Inc. v. Tempo Products Co.,
1 Wash.App. 177 , 459 P.2d 958 (1969), sellers of products (in
Dixon
a car, in
United
a boat) settled consumer claims for product defects. The sellers then sought indemnity under product liability, implied warranty, and negligence theories against suppliers of allegedly defective parts of the products causing the injuries. In neither case had the defective parts at issue been established to be the proximate cause of the underlying injury. The sellers’ rights to indemnity from the suppliers did not exist absent such a showing.
Dixon,
509 P.2d at 91-92 ;
United,
459 P.2d at 961 .
40
Unlike in
Dixon
and
United,
the predicate facts triggering Plaintiffs right to indemnity have been determined. Additionally, unlike in
Dixon
and
United,
in which the rights to indemnity arose under tort theories and theories of breach of
implied
warranties, Weyerhaeuser’s liability arises from breach of
express
warranties in the same contract which expressly defined Plaintiffs indemnity rights.
94. An unpublished Washington Court of Appeals decision cited by Weyerhaeuser,
Frost v. Tree Top, Inc.,
No. 16221-4-III, 1997 WL 740766 (Wash.Ct.App. Dec.2, 1997), is also distinguishable. In that case, a buyer of a business sought indemnity for its post-sale settlement of a claim that arose pre-sale. The indemnity clause provided the buyer indemnity for “undisclosed payments, claims, liabilities, costs and damages (including, without limitation, amounts paid in settlement).”
Id.
at *2. The seller argued the settlement was a “gross overpayment.”
Id.
at *1. Because the purchaser failed to notify the seller of the lawsuit or its settlement, as the contract contemplated, the court held the buyer was entitled only to be paid “a reasonable amount of money for which it was legally liable.”
Id.
at *2. Based on these facts, and motivated by a desire to protect the indemnitor from a possible “sweetheart deal” where the indemnitee had made no showing “the amount paid was reasonable,” the court overruled a summary judgment for the indemnitor.
Id.
95.Unlike that case, however, Paragon’s settlement obligations for which Plaintiff seeks indemnity have been judicially determined, in both the 1999 PG and KC settlement hearings and in this case, to be both reasonable and necessary for Paragon. Weyerhaeuser, as a member of the Creditors’ Committee, had notice of the settlements and declined to participate in Court proceedings to determine their reasonableness. Weyerhaeuser is not faced with the danger that the settlements might be the kind of “sweetheart deal” about which the
Tree Top
court was concerned. The reasonableness of the settlements’ terms in light of Paragon’s substantial actual or potential liability has been established. Weyerhaeuser’s actual liability arguments do not limit Plaintiffs right to
*871
contractual indemnity for Weyerhaeuser’s breach of warranties.
96. The actual liability rule Weyer-haeuser urges is without merit.
41
The Summary Judgment Order set forth conclusions on the issue of liability. As a predicate for assessing damages, Weyer-haeuser’s actual liability for breach of warranty is established.
2. Failure To Provide Notice Defense
97. Weyerhaeuser’s second defense to Plaintiffs contract indemnity claim relies on the ATA’s notice provisions. Weyer-haeuser argues that Paragon failed to comply with the ATA’s notice provisions by failing to provide prompt written notice of and demand for indemnity for PG’s and EC’s claims; and that it was actually prejudiced by such failure. Weyerhaeuser contends the combination of lack of notice and prejudice means Plaintiff is precluded from recovering indemnity for PG’s and EC’s claims under Section 11.02(b).
a. ATA notice provision
98. Weyerhaeuser contends the operative notice provision is ATA Section 11.03(a). That section pertains to notice requirements when a party seeks indemnity for a Third Party Claim, defined as a claim by one not a party to the ATA. The PG and EC lawsuits were Third Party Claims. Section 11.03(a) provides as follows:
If any party shall receive notice of any claim or Action brought, asserted, commenced or pursued by any person or entity not a party to this Agreement with respect to which any other party is or may be obligated to indemnify such party (a “Third Party Claim”), the In-demnitee shall give the Indemnifying Party
prompt notice thereof
(including any pleadings relating thereto) after becoming aware of such Third Party Claim, specifying in reasonable detail the nature of such Third Party Claim and the amount or estimated amount thereof to the extent then feasible (which estimate shall not be conclusive of the final amount of such claim); provided, however, that the failure of an Indemnitee to give notice as provided in this Section 11.03 shall not relieve the Indemnifying Party of its indemnification obligations hereunder, except to the extent that the Indemnifying Party is actually prejudiced by such failure to give notice.
(Emphasis added).
b. Paragon substantially complied with Section 11.03(a)
99.Section 11.03(a) does not require the “notice of Third Party Claim” to be in writing, nor does it require that a demand for indemnity or defense be given. According to the plain language of the clause, all the Indemnitee must do is provide “prompt notice” of the Third Party Claim after the Indemnitee becomes aware of it.
100. Paragon’s satisfaction of Section 11.03(a)’s prompt notice requirement with respect to the PG and EC lawsuits is measured by a substantial compliance standard.
See Pilgrim v. State Farm Fire & Cas. Ins. Co.,
89 Wash.App. 712 , 950 P.2d 479, 483 (1997). Paragon substantially complied with Section 11.03(a)
*872
with respect to PG’s lawsuit. Ms. Barley credibly testified that she consulted with Mr. Coogan, Weyerhaeuser’s in-house patent attorney, during the entire time she was Paragon’s General Counsel (from January 1994 to summer 1995). Therefore, Mr. Coogan would have known about PG’s lawsuit. She kept Mr. Coogan informed of the settlement progress with PG, and Mr. Coogan attended and participated in strategy sessions with her and Paragon outside counsel about defending the lawsuit. Mr. Coogan had a Weyerhaeuser file opened in 1994 for “PG v. Paragon.” Mr. Coogan was deposed in the PG lawsuit. Through Mr. Coogan, Weyerhaeuser had prompt notice of PG’s lawsuit at a high, internal level. Indeed, it was Mr. Coogan who predicted the suit in September 1991 before the IPO closed.
101. The evidence was not as clear as for PG’s lawsuit that Weyerhaeuser had prompt notice of EC’s lawsuits soon after Paragon knew they were filed. Weyer-haeuser, however, never claimed it was unaware of those lawsuits. Also, the patent issues with KC had been under close Weyerhaeuser scrutiny since before the IPO. At the latest, Weyerhaeuser would have known of the KC lawsuit in January, 1998, shortly after Paragon filed its bankruptcy case, as a result of Weyerhaeuser’s appointment to and acceptance of service on the Creditors’ Committee. Early in Paragon’s Chapter 11 case, KC sought approval to lift the stay to proceed with its claims in Texas. The KC lawsuits never went to trial, and were not resolved by settlement until well into the bankruptcy. For purposes of indemnity, Weyerhaeuser had sufficiently prompt notice of the KC lawsuits as required under Section 11.03(a).
c. Weyerhaeuser did not suffer actual prejudice
102. Even if Paragon did breach its notice obligation, by the express terms of Section 11.03(a), a breach relieves Wey-erhaeuser of its indemnity obligation only
to the extent
Weyerhaeuser was
actually prejudiced
by a failure to receive notice. Weyerhaeuser argues that actual prejudice should be presumed from Paragon’s failure to send a written demand for indemnity for the PG lawsuit until after the Delaware Judgment, and from Paragon’s failure to serve such a demand with respect to the KC lawsuits until long after KC filed them.
103. Weyerhaeuser relies on several insurance cases for its argument that prejudice should be presumed. Under Washington insurance law, an insured’s breach of a notice provision will not deprive the insured of coverage unless the insurer shows it was actually prejudiced by the noncompliance.
Public Util. Dist. No. 1 Of Klickitat County v. International Ins. Co.,
124 Wash.2d 789 , 881 P.2d 1020, 1029 (1994)
(en banc).
The burden to show actual prejudice is on the insurer, and prejudice is a factual determination.
Id.
The insurer must demonstrate some concrete detriment resulting from the delay that interfered with the insurer’s preparation of defenses to coverage or the insured’s underlying liability.
Pederson’s Fryer Farms, Inc. v. Transamerica Ins. Co.,
83 Wash.App. 432 , 922 P.2d 126, 133 (1996);
Canron, Inc. v. Federal Ins. Co.,
82 Wash.App. 480 , 918 P.2d 937, 941 (1996). Weyerhaeuser has the burden of proof to establish actual prejudice.
104. To establish actual prejudice, Weyerhaeuser relies on two cases in which the courts upheld findings that late notice prejudiced the insurer by depriving it of the opportunity to evaluate the facts of the underlying claims.
Felice v. St. Paul Fire & Marine Ins. Co.,
42 Wash.App. 352 , 711 P.2d 1066, 1070 (1985);
Twin City Fire Ins. Co. v. King County, Washington,
749
*873
F.Supp. 230, 234 (W.D.Wash.1990). In these cases, the insurer had no notice of the underlying claim until after it had been litigated and after notices of appeal had been filed. The courts held the delayed notice prejudiced the insurer because “it was precluded from investigating and evaluating the case prior to, during and after trial.”
Felice,
711 P.2d at 1070 ;
Twin City,
749 F.Supp. at 234 (citing
Felice).
In
Felice ,
the court found prejudice sufficient to bar indemnification for $18,000 in attorneys’ fees in the underlying action because St. Paul had been denied an opportunity to evaluate the facts and determine whether a trial and incurrence of fees was justified.
Felice,
711 P.2d at 1071 . In another case Weyerhaeuser relies upon,
Unigard Ins. Co. v. Leven,
97 Wash.App. 417 , 983 P.2d 1155, 1161-63 (1999), the court found prejudice because the insurer identified a defense that the insured’s sworn statements in the underlying action precluded the insurer from raising after being notified of the claim.
105. The circumstances of the Paragon/Weyerhaeuser claims are distinguishable. First, unlike the insurers in
Felice, Twin City Fire Ins.,
and
Unigard,
Weyer-haeuser had actual notice of the PG lawsuit at or near the time it was filed. Wey-erhaeuser, as a creditor and member of the Creditors’ Committee, also knew of the KC lawsuits well before Paragon settled them. Second, unlike insurers in the cases cited by Weyerhaeuser, to defend PG’s and EC’s lawsuits, Paragon used the same legal defense team Weyerhaeuser itself had assembled to defend the lawsuits pre-IPO. Weyerhaeuser likely would have continued to use this legal defense team if it had assumed Paragon’s defense. Wey-erhaeuser’s Mr. Coogan participated in strategy sessions with Paragon’s in-house counsel and the Weyerhaeuser-assembled legal team after the IPO about how to handle PG’s and EC’s claims. Indeed, Weyerhaeuser, through Coogan, before and for years after the IPO, carefully guided the pre-IPO Business and Paragon post-IPO in its positions, postures, counsel and orientation to the threatening patent issues. Coogan set the course, trained Paragon management in how to follow it, and consulted with his various Paragon counterparts over the years. Weyerhaeu-ser presented no evidence that it would have retained different counsel, that different counsel might have advised Weyer-haeuser to a different settlement position before the Delaware Judgment, that different counsel might have achieved a better trial result, or that Weyerhaeuser would have stepped forward and financed the royalties demanded by PG and EC since before the IPO.
106. A third very compelling distinction between circumstances of this case and Weyerhaeuser’s insurance cases is that Weyerhaeuser did extensively investigate the PG and EC claims before launching Paragon’s IPO. Paragon’s decision to continue selling the ILG Ultra diaper without paying PG and EC their demanded royalties was consistent with Weyerhaeu-ser’s response when confronted with the same claims before the IPO. Additionally, the Weyerhaeuser-drafted disclosures to investors in the Prospectus included statements that “the Company believes any outcome” of the claims would be immaterial. Such statements were a disincentive, if not an intangible barrier, for Paragon to pay royalties in settlement and constrained Paragon’s ability to settle the claims at the high royalty rates and lump sum payments PG and EC were demanding.
107. The Washington insurance cases upon which Weyerhaeuser relies do
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not require that actual prejudice to Weyer-haeuser sufficient to bar Plaintiffs ATA Section 11.02(b) claim must be presumed.
See Public Util. Dist. No. 1 Of Klickitat County,
881 P.2d at 1029 (stating, in reference to an analogous cooperation clause, that “an insurer cannot deprive an insured of the benefit of purchased coverage absent a showing that the insurer was actually prejudiced by the insured’s noncompliance with conditions precedent”);
Tran v. State Farm Fire And Cas. Co.,
136 Wash.2d 214 , 961 P.2d 358, 365 (1998)
(en banc)
(“prejudice is an issue of fact and will seldom be established as a matter of law”);
Canron, Inc. v. Federal Ins. Co.,
82 Wash.App. 480 , 918 P.2d 937, 943 (1996) (“Federal essentially argues that deprivation of the opportunity to conduct a prompt investigation is automatically prejudicial. Such an approach, however, would obviate the need to show actual prejudice, and Washington authorities do not support Federal’s argument.”). The burden remains on Weyerhaeuser to demonstrate it was actually prejudiced by late notice. This it cannot do — and did not attempt — because its in-house patent counsel was intimately familiar with and closely followed Paragon’s patent troubles.
42
108.Weyerhaeuser argues it suffered actual prejudice from the allegedly late written notice and indemnity demands because it was prevented from invoking the ATA’s alternative dispute resolution procedure. Weyerhaeuser’s sole evidence on this point was the testimony of its current General Counsel, Robert Dowdy, who was also the IPO’s project manager. Mr. Dowdy testified that if Weyerhaeuser had received earlier notices and demands, it would have had the opportunity to invoke, and to contest its liability to Paragon through, the ATA’s dispute resolution procedures in Article XII, which calls for a meeting of the parties, mediation, and binding arbitration. Mr. Dowdy asserted that if the indemnity claims had been arbitrated instead of litigated, Weyerhaeuser would have won. If it had lost, Weyer-haeuser would have stepped in, defended, and protected Paragon against the Delaware Judgment. That intervention by Weyerhaeuser, Mr. Dowdy asserted, would have eliminated the need for Paragon to file bankruptcy and incur its bankruptcy-related losses.
109. Mr. Dowdy’s testimony of actual prejudice, however, is unconvincing. Mr. Dowdy did not so testify during his deposition. He testified instead that he did not know “what would have been different” had an earlier demand been sent. The earlier testimony is closer to the truth, as Weyerhaeuser charted Paragon’s patent course, and the course thus navigated was difficult to alter later, as events have shown.
110. Weyerhaeuser offered neither evidence nor argument that the PG lawsuit would have ended differently if the arbitration had been completed and Weyerhaeu-ser had stepped in to defend Paragon. Weyerhaeuser offered no evidence that it would have settled the PG lawsuit before judgment and would have agreed to reimburse Paragon for the substantial damages and ongoing royalties (over $10 million per year) that PG demanded in its pre- and post-trial settlement offers. Weyerhaeu-ser offered no evidence that it could have or would have bonded the $178 million
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judgment, cured Paragon’s default under its bank loans, and agreed to reimburse Paragon for losses suffered from being forced to sell a vastly inferior diaper. Weyerhaeuser failed to carry its burden of proving that Paragon’s bankruptcy would have been prevented if Weyerhaeuser had been afforded an opportunity to handle the Delaware litigation in advance of the judgment. Any of the foregoing possibilities appear to be unlikely departures from Weyerhaeuser’s desire and strategy to distance itself from the liabilities presented by the patent issues’ liability known before the IPO.
111. Accepting,
arguendo,
the hypothesis that Paragon’s bankruptcy could have been avoided had Paragon made an earlier, “timely” indemnity demand, Weyer-haeuser would be relieved from indemnifying Plaintiff under Section 11.02(b) only for Paragon’s bankruptcy-related costs and losses. Section 11.03(a) states that the Indemnifying Party (Weyerhaeuser) is entitled to relief for a late notice only to the extent the Indemnifying Party is actually prejudiced. Weyerhaeuser would not be relieved of its obligation under Section 11.02(b) to indemnify Paragon for any other loss.
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112. Weyerhaeuser has also not carried its burden of proving that it suffered prejudice from Paragon’s alleged delay in providing notice with respect to the KC lawsuits. The KC lawsuits remained pending, and the KC Settlement Agreement was not yet approved when Weyerhaeuser received the Equity Committee’s notice of the breach of warranty claims against it. Weyerhaeuser had the opportunity to step in, object to the settlement, and defend Paragon against the KC lawsuits, but it never offered to do so. Instead, as with the PG Settlement Agreement, Weyer-haeuser chose not to object while the Creditors’ Committee advocated approval of the KC Settlement Agreement as reasonable and necessary for Paragon. No evidence shows Weyerhaeuser was prejudiced by the allegedly late notice concerning the KC lawsuits and their settlement.
113. Finally, any alleged failure of Paragon to comply with Section 11.03 is not a bar to Plaintiffs common law remedies for breach of warranty. Section 11.03 places obligations on an “Indemnitee,” which Section 11.02(c) defines as a party entitled to indemnity
pursuant to
ATA Sections 4.02, 6.02, 8.03(b), 8.11,11.02(a) or 11.02(b). In addition, Section 11.03(a) provides that failure to give notice does “not relieve an Indemnifying Party of its indemnification obligations
hereunder.”
(emphasis added) “Hereunder” refers to the indemnity obligations under the ATA. The notice provisions govern procedures for contractual indemnity and have no application to Plaintiffs common law remedies for breach of warranty.
3. Weyerhaeuser Defenses And Counterclaim
114. Weyerhaeuser’s third defense to Plaintiffs contractual indemnity
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claim and its counterclaim rely on IPA Section 4.01
44
and ATA Section 11.02(a)
45
under which Paragon assumed the liabilities of the Business and promised to indemnify Weyerhaeuser for liabilities relating to the Business. In the summary judgment phase, Weyerhaeuser contended Paragon’s agreement in IPA Section 4.01 to indemnify Weyerhaeuser for patent claims precluded Paragon’s breach of warranty claims. Weyerhaeuser argued that allowing Plaintiff to pursue its breach of warranty claims would render this indemnity provision meaningless. The Summary Judgment Order determined, however, that the reverse is true: IPA Section 4.01 had meaning and, read in the context of the entire section, IPA Section 4.01 provided Weyerhaeuser indemnity for claims by,
third parties
against Weyerhaeuser for patent infringement relating to the Business. Because Plaintiff is not a third party to the contracts, its own breach of warranty claims were not subsumed within the IPA Section 4.01 indemnity. Weyerhaeu-ser’s reliance on IPA Section 4.01 as a basis for relieving it of liability for breach of warranty was found to be, and remains, without merit. For the same reasons that IPA Section 4.01 does not bar Plaintiffs warranty claims, it does not permit Weyer-haeuser, by way of a circular indemnity counterclaim, to be repaid any amounts it owes Paragon for breaching its own warranties. IPA Section 4.01 does not limit the damages Plaintiff is entitled to recover for Weyerhaeuser’s breach of warranties, and Weyerhaeuser is entitled to no recovery on its counterclaim based on IPA Section 4.01.
115. Weyerhaeuser contends that its contractual indemnity defense and counterclaim based on ATA Section 11.02(a) remain alive
46
and that ATA § 11.02(a) operates, just as Weyerhaeuser argued IPA Section 4.01 operated, to exclude all damages Plaintiff seeks. The evidence Weyerhaeuser offered on its counterclaim and defense, both based on ATA Section 11.02(a), neither supports a conclusion that 11.02(a) limits the damages Plaintiff may recover for Weyerhaeuser’s breach of warranty, nor requires Weyerhaeuser to be indemnified
by
Paragon for its breach of warranty liability
to
Paragon. Section 11.02(a) of the ATA provides as follows:
[Paragon] agrees to indemnify, defend and hold harmless [Weyerhaeuser] and its respective directors, officers, employ
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ees and agents from and against any and all Losses arising from or relating to (i) any of the Assumed Liabilities assumed by [Paragon] or (ii) the breach of any representation, warranty, covenant or agreement of [Paragon] contained in this Agreement or any Related Agreement.
ATA Section 11.02(a) does not, on its face, purport to qualify or limit either Paragon’s common law or Section 11.02(b) remedy for breach of warranty. None of the warranties on which Plaintiff sues are qualified in any respect by reference to ATA Section 11.02(a).
116. In the contracts, “Assumed Liabilities” are defined collectively as the “U.S. Assumed Liabilities” and “Canadian Assumed Liabilities,” which, in turn, are defined to be “all Liabilities of Weyerhaeuser identified in Annex II” and “all Liabilities of Weyerhaeuser Canada identified in Annex II,” respectively. Annex II provides that “U.S. Assumed Liabilities” and “Canadian Assumed Liabilities” are “all Liabilities and obligations of Weyerhaeuser [and of Weyerhaeuser Canada] relating to or arising from the
operation of the Business,
whether before or after the Closing Date.” (emphasis added). Weyerhaeuser’s warranty liability to Paragon, however, arises foremost from its
contractual promises
in the ATA and IPA concerning patent rights, good title, and sufficiency of the transferred assets to conduct the Business unimpeded. Thus, damages Plaintiff seeks for Weyerhaeuser’s breach of its contractual promises are not subsumed in Paragon’s Section 11.02(a) indemnity to Weyer-haeuser. Any doubt or ambiguity in the agreements would, in accordance with Washington law, be resolved against Wey-erhaeuser because it drafted the contracts.
See Felt v. McCarthy,
130 Wash.2d 203 , 922 P.2d 90, 93 (1996)
(en banc); Guy Stickney, Inc. v. Underwood,
67 Wash.2d 824 , 410 P.2d 7, 9 (1966);
Paullus v. Fowler,
59 Wash.2d 204 , 367 P.2d 130, 136 (1961);
Car Wash Enters., Inc. v. Kampanos,
74 Wash.App. 537 , 874 P.2d 868, 874 (1994).
117. The warranties were important parts of the IPA and ATA, both of which were fully integrated “material contracts” publicly filed as part of the IPO Registration Statement. Weyerhaeuser certified the warranties were true as a condition to closing the IPO. Accepting Section 11.02(a) as precluding recovery of damages from Weyerhaeuser for breach of the warranties it gave would render the warranties meaningless. Under Weyerhaeuser’s construction of Section 11.02(a), although Weyer-haeuser breached its warranties, Paragon could recover no damages for the breach, but if it did recover from Weyerhaeuser, would have to repay Weyerhaeuser the same damages. Weyerhaeuser’s interpretation renders its warranties illusory promises, and such an interpretation offends the basic Washington contract interpretation principle that every provision should be given effect and that no provision should be rendered meaningless.
Grant County Constructors v. E.V. Lane Corp.,
77 Wash.2d 110 , 459 P.2d 947, 953 (1969).
118. Additionally, Weyerhaeuser’s interpretation of ATA Section 11.02(a) requires the grafting of an unwritten limitation or disclaimer onto Paragon’s warranty rights. Disclaimers or limitations on warranties, to be given legal effect, must be explicitly negotiated and must set forth with particularity the qualities and characteristics being disclaimed.
Olmsted v. Mulder,
72 Wash.App. 169 , 863 P.2d 1355, 1359 (1993).
See also Limited
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Flying Club, Inc. v. Wood,
632 F.2d 51, 56-57 (8th Cir.1980);
Dobias v. Western Farmers Ass’n,
6 Wash.App. 194 , 491 P.2d 1346, 1350 (1971). No disclaimer or reservation appears either in ATA Section 11.02(a) or in the terms of the warranties at issue.
119. Contrary to Weyerhaeuser’s assertions, allowing Plaintiff to recover damages for breach of warranty does not render Section 11.02(a) meaningless. Other situations could have arisen after the IPO involving Weyerhaeuser liabilities stemming from the Business’s operation that would not result in Weyerhaeuser breaching its warranties, and would require Paragon to indemnify and defend Weyerhaeu-ser. If the Paragon defense team had been correct, and if Paragon had prevailed against PG, no breach of warranty claim against Weyerhaeuser would have arisen as to PG’s patents. Weyerhaeuser would have received the benefit of defense, the costs of which Paragon bore. As with IPA Section 4.01, Section 11.02(a) also provided Weyerhaeuser protection if aspects of the Business’s past operations
not being conducted at closing
infringed a third party’s patents or breached a contract with a third party. Paragon took on the defense obligation and cost and would have no claim for breach of warranty if a third party prevailed on such a claim.
120. During trial, Weyerhaeuser offered testimony from Bobby Abraham,
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Scott Ryles,
48
John Cook,
49
Cliff Bickell,
50
Alan Cyron
51
and Cathy Hasbrouck
52
about their subjective beliefs and understandings about the meaning and intended purpose of the contracts’ assumption of liabilities and indemnification provisions. None of these witnesses participated in negotiating or drafting the warranties.
53
None testified that any of them participated in negotiating or drafting the assumption of liabilities or indemnification provisions. They testified about their “understandings” of the undisputed point that Paragon assumed the patent (and most other) liabilities of the Business. For the reasons explained in the Summary Judgment Order, the testimony of those witnesses, who had no involvement in negotiating or drafting the actual contract terms at issue or any other material provision of the IPO agreements, is inadmissible, or at a minimum entitled to little weight, on the issue of interpretation of the warranties and the assumption of liability and indemnity provisions. Paragon’s assumption of patent liabilities does not negate or limit Plaintiffs breach of warranty claims.
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121. Section 11.02(a) of the ATA provides Weyerhaeuser no defense against Plaintiffs contractual indemnity claim. Weyerhaeuser’s counterclaim, to the extent it is based on Section 11.02(a), fails as well. Section 11.02(a) does not create a circular indemnity whereby Weyerhaeuser can recover any liability it owes Paragon.
54
E. Common Law Measures Of Damages
122. Plaintiff and Weyerhaeuser differ over the appropriate common law measure for compensatory damages. Plaintiff contends it is entitled to recover losses that Paragon actually incurred to remedy the asset deficiencies that gave rise to the warranty claims. Plaintiff refers to this as a “cost to cure” measure of damages. Weyerhaeuser contends that damages should be limited to the difference in the value of the Business transferred to Paragon as warranted and as actually delivered.
123. The basic goal of Washington damages law is to make the injured party whole.
See e.g. Pugel v. Monheimer,
83 Wash.App. 688 , 922 P.2d 1377 (1996). Damages awarded should not provide a plaintiff with a windfall, however.
See Eastlake Construction Co., Inc. v. Hess,
102 Wash.2d 30 , 686 P.2d 465 (Wash.
1984)(en banc).
The arguments put forth by the parties in this case place these two features of Washington damages law— making the injured party whole and avoiding a windfall — in t

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/1804890. Public record. Not legal advice.