EXHIBIT 10.11
SURGILIGHT, INC.
TRADEMARK, PATENT AND COPYRIGHT SECURITY AGREEMENT
THIS TRADEMARK, PATENT AND COPYRIGHT SECURITY AGREEMENT dated
April 20, 2007 by and between SURGILIGHT, INC., a corporation incorporated
under the laws of the State of Florida (the "Grantor"), with offices at 0000
Xxxxxxx Xxxxx, Xxxxx 000, Xxxxxxx, XX 00000, and GEM SurgiLight Investors,
LLC, a limited liability company organized under the laws of New York, with
offices at 0 Xxxx 00xx Xxxxxx, Xxx Xxxx, XX 00000, (the "Lender") under the
Loan Agreement (as such term is hereinafter defined).
WITNESSETH THAT
WHEREAS:
A. By a secured line of credit loan agreement dated the date
hereof (herein, as at any time amended and/or supplemented, called the "Loan
Agreement") between the Grantor and the Lender, the Lender has agreed to make
available to the Grantor a line of credit facility (the "Facility") in the
maximum principal amount of US$2,500,000 at any one time outstanding; and
B. It is a condition precedent to the establishment of the
Facility under the Loan Agreement that, as security for (i) the due and
punctual payment in full by the Grantor when due, whether at stated maturity,
on demand, by acceleration or otherwise, of its obligations under the Loan
Agreement, the Note, the Security Documents (as such terms are defined in the
Loan Agreement) or any of them, in connection therewith and (ii) the
performance by the Grantor of its obligations and liabilities under the Loan
Agreement, the Note, the Security Documents entered into between the Grantor
and the Lender, in connection therewith (all of the foregoing being
hereinafter collectively referred to as the "Obligations"), the Grantor
execute and deliver this Agreement pursuant to which the Grantor shall grant
to the Lender a security interest in all of its right, title and interest in
and to all "Patents", "Trademarks" and "Copyrights" in the name of the
Grantor, as those terms are defined in Paragraph 2 hereof, and to grant to the
Lender a power of attorney to foreclose upon and sell the Grantor's interests
in the Patents, Trademarks and Copyrights (hereinafter collectively referred
to as the "Collateral") under the circumstances set forth in this Agreement.
NOW, THEREFORE, in consideration of the premises and in order to
induce the Lender to make the Facility available pursuant to the Loan
Agreement, the Grantor hereby agrees with the Lender as follows:
1. The Loan Agreement and the terms and provisions thereof are
incorporated herein in their entirety.
2. (a) To secure the payment and performance of all of the
Obligations, the Grantor hereby grants to the Lender a first and valid lien
and security interest in all of the Grantor's right, title and interest, in
the United States and throughout the world, in and to all of its now owned and
hereafter acquired United States and foreign patents and all patent and design
patent applications, and all reissues, continuations or divisions thereof, and
all proceeds thereof (hereinafter collectively referred to as "Patents"). All
unexpired patents and all currently pending patent applications in which the
Grantor has an interest are listed on Schedule A attached hereto are made part
hereof. Subject to the provisions of Paragraph 15, the Grantor hereby further
grants to the Lender a first and valid security interest in all of the
Grantor's right, title and interest in and to all income, royalties, damages
and payments now and hereafter due and/or payable under all Patents and,
subject to the provisions of Paragraph 15, in and to all rights during the
term of this Agreement to xxx, collect and retain for its own benefit damages
and payments for past or future infringements of the Patents. Lender
acknowledges that Borrower has granted a security interest in the Patents
provided for under the Agreement among the Borrower, Xxxxxxx Xxxxxx, and
Xxxxxx Xxxxxxxxx, dated April , 2007 (Exhibit 6 to the Loan Agreement),
provided that the interest of Cozean and Xxxxxxxxx shall be no greater than
pari passu with the interest of the Lender in the Patents, and said interest
of Cozean and Xxxxxxxxx, their heirs and assigns, shall be extinguished upon
completion of the payments by the Borrower to Cozean and Xxxxxxxxx provided
for in Exhibit 6 to the Loan Agreement.
(b) To secure the payment and performance of all of the
Obligations, the Grantor hereby grants to the Lender a valid lien and security
interest in all of the Grantor's right, title and interest, in the United
States and throughout the world, in and to all of its now owned and hereafter
acquired trademarks, service marks and trade names(whether or not such name is
the subject of a registration or an application therefor), and all
registrations and applications to register same, and all renewals thereof, and
the goodwill of the business relating thereto, and all proceeds thereof
(hereinafter collectively referred to as "Trademarks"). All trademark
registrations and all currently pending trademark applications in which the
Grantor has an interest are listed on Schedule B attached hereto and made a
part hereof. Subject to the provisions of Paragraph 15, the Grantor hereby
further grants to the Lender a first and valid lien and security interest in
all of the Grantor's right, title and interest in and to all income,
royalties, damages and payments now and hereafter due and/or payable under all
Trademarks and, subject to the provisions of Paragraph 15, in and to all
rights during the term of this Agreement to xxx, collect and retain for its
own benefit damages and easements for past or future infringements of the
Trademarks.
(c) To secure the payment and performance of all of the
Obligations, the Grantor hereby grants to the Lender a first and valid lien
and security interest in all of the Grantor's right, title and interest, in
the United States and throughout the world, in and to all of its now owned and
hereafter acquired copyrights, and all registrations and applications to
register same, and all renewals thereof, and all proceeds thereof (hereinafter
collectively referred to as "Copyrights"). All copyright registrations and
all currently pending copyright applications in which the Grantor has an
interest are listed on Schedule C attached hereto and made a part hereof.
Subject to the provisions of Paragraph 15, the Grantor hereby further grants
to the Lender a first and valid lien and security interest in all of the
Grantor's right, title and interest in and to all income, royalties, damages
and payments now and hereafter due and/or payable under all Copyrights and,
subject to the provisions of Paragraph 15, in and to all rights during the
term of this Agreement to xxx, collect and retain for its own benefit damages
and payments for past or future infringements of the Copyrights.
3. None of the Collateral is or shall become subject to any
lien, security interest or other encumbrance other than that of the Lender
granted hereby or as permitted pursuant to the Loan Agreement, and the Grantor
agrees that it shall not license, transfer, convey or encumber any interest in
or to the Collateral without the prior express written consent of the Lender.
4. All Collateral consisting of applications for Patents and
for registrations of Trademarks and Copyrights has been duly and properly
filed and all Collateral consisting of Patents and of registrations of
Trademarks and Copyrights (including, without limitation, any and all
renewals, reissues, continuations or divisions thereof, as the case may be)
has been duly and properly filed and issued and is valid and enforceable.
5. Promptly upon the filing of any patent application or
application for registration of a trademark or copyright and upon the issuance
of any patent or trademark or copyright registration, the Grantor agrees to
execute an addendum to this Agreement which addendum shall identify such
patent, trademark or copyright application or such patent or trademark or
copyright registration as necessary to perfect a lien and security interest in
such patent, trademark or copyright application or such patent or trademark or
copyright registration, and, with respect to United States patent applications
or patent registrations and United States trademark applications or trademark
registrations, the Grantor shall cause such addendum to be recorded in the
U.S. Patent and Trademark Office, and with respect to United States copyright
applications or copyright registrations, the Grantor shall cause such addendum
to be recorded in the U.S. Copyright Office.
6. The Grantor shall not take any action, nor permit any action
to be taken by others subject to the Grantor's control, including licensees,
or fail to take any action, or permit others subject to the Grantor's control,
including licensees, to fail to take any action, subject to the provisions of
Paragraph 10, which would, in the case of any such actions or failures to act
taken singly or together, affect the validity, grant and enforceability of the
Collateral.
7. The Grantor shall promptly notify the Lender, in writing, of
any suit, action, proceeding or counterclaim brought against the Grantor
relating to, concerned with, or affecting the Collateral, and shall, on
request, deliver to the Lender a copy of all pleadings, papers, orders or
decrees theretofore and thereafter filed in any such suit, action or
proceeding, and shall keep the Lender fully advised in writing of the progress
of any such suit.
8. In the event of any infringement of the Collateral by other
parties or in the event of any other conduct detrimental to the Collateral by
other parties known or brought to the attention of the Grantor, the Grantor
shall promptly notify the Lender in writing at the address set forth below of
such infringement or other conduct and the full nature, extent, evidence and
facts of such infringement or other conduct known to the Grantor. The Grantor
shall, if it deems prudent and in its best interest, proceed to take action
against such infringement or detrimental conduct and to seek appropriate
relief in a reasonable manner, in order to terminate such infringement or
conduct by the parties involved. Subject to other provisions of this
Agreement, the Grantor shall assume and continue, at its own cost and expense,
through counsel of its own choice who is acceptable to the Lender, full and
complete responsibility for the prosecution of any infringement of or other
conduct adversely affecting the Collateral and otherwise defend and assure the
grant, validity and enforceability of the Collateral, whether by judicial or
nonjudicial means, all in order that the Grantor comply fully with the
provisions of this Paragraph 8.
9. If requested by the Lender, the Grantor shall yearly provide
the Lender a complete status report of all Collateral. Upon request by the
Lender, the Grantor shall deliver to counsel for the Lender copies of any such
Collateral and other documents concerned with or related to the prosecution,
protection, maintenance, enforcement and issuance of the Collateral.
10. The Grantor shall notify the Lender in writing at the
address set forth below at least two months prior to any voluntary abandonment
of any Collateral and obtain the written permission of the Lender to such
abandonment, which permission shall not be unreasonably withheld. In the
event that such permission to abandon is denied by the Lender, then the
Grantor shall take all reasonably necessary action, at its own expense, to
continue and maintain such Collateral in force.
11. Subject to any other express provision of this Agreement, if
an Event of Default (as such term is defined in the Loan Agreement) shall have
occurred and be continuing or upon the failure, neglect or refusal by the
Grantor to file, prosecute, defend, issue, maintain, enforce or otherwise take
action in respect to the Collateral as required hereby, or to carry out any
other obligation or duty of the Grantor under this Agreement, then the Grantor
hereby appoints and designates the Lender its sole attorney-in-fact, to act in
its name, place and stead, to take any such action as the Lender reasonably
deems necessary or advisable under the circumstances, including, without
limitation, the employment of counsel, and the Grantor shall pay all
reasonable fees and expenses, including attorneys' fees and expenses, incurred
by the Lender in connection with such action.
12. Any and all monies received by the Lender under this
Agreement shall be applied as provided in Clause 7.2 of the Loan Agreement.
13. Upon full and complete payment and performance of the
Obligations, this Agreement and the power of attorney granted herein at
Paragraph 11 shall terminate and the Lender shall release the Collateral from
this Agreement and the Loan Agreement, and shall execute and deliver (at the
Grantor's sole cost and expense, either directly or in reimbursement of costs
and expenses reasonably incurred by the Lender) all documents as may be
reasonably necessary to render the Collateral free and clear of any security
interest created pursuant to this Agreement, the Loan Agreement or the Note.
14. During the term of this Agreement, the Grantor agrees:
(a) whenever any of the Trademarks are used by or on behalf of
the Grantor, to affix or cause to be affixed a notice that the xxxx is a
trademark, a service xxxx or is registered, which notice shall be in a form
accepted or required by the trademark marking laws of each country in which
the xxxx is so used; and
(b) whenever any of the underlying works covered by the
Copyrights are used by or on behalf of the Grantor, to affix or cause to be
affixed a notice that said underlying works are so covered, which notice shall
be in a form accepted or required by the copyright laws of each country in
which said underlying works are so used.
15. During the term of this Agreement, all income, royalties,
payments and damages due and payable to the Grantor under the Collateral shall
be paid to the Grantor; provided, however, if an Event of Default shall have
occurred and be continuing, all income, royalty payments and damages received
thereafter shall be paid directly to the Lender and shall be applied by the
Lender as provided in paragraph 12 of this Agreement. The Lender shall have
the right to notify payors to make their payments directly to the Lender upon
the occurrence of an Event of Default.
16. Should any part or provision of this Agreement be held
unenforceable or conflicting with the law of any jurisdiction, the validity of
the remaining parts or provisions hereof shall not be affected thereby. Should
any part or provision of this Agreement be deemed by a court or other
governmental authority of competent jurisdiction to be an assignment of any
Trademark so as to result in the Grantor's abandonment thereof, such part or
provision (but no other) shall be construed as providing for a security
interest and not an assignment, all in order to preclude such abandonment and,
if such construction shall not be accepted by such court or other governmental
authority, such part or provision (but no other) shall be deemed null and void
as to such Trademark in the jurisdiction where abandonment might otherwise
result.
17. The Grantor agrees, upon the reasonable request by the
Lender during the term of this Agreement:
(a) to execute, acknowledge and deliver all additional
instruments and documents necessary or advisable to effect the purpose of this
Agreement, in a form reasonably acceptable to counsel for the Lender; and
(b) to do all such other acts as may be necessary or
appropriate in order to carry out the intent and purpose of this Agreement,
and to protect the security interests of the Lender in the Collateral.
18. Every notice or demand under this Agreement shall be in
writing and may be delivered in person or if sent by certified mail, postage
prepaid, return receipt requested, by overnight express mail or telefax
(followed by delivery of a copy by certified or express mail.
(a) Every notice or demand shall be sent as follows:
If to the Grantor:
SurgiLight, Inc.
0000 Xxxxxxx Xxxxx, Xxxxx 000
Xxxxxxx, XX 00000
Telecopy No. 000-000-0000
Attention: Xxxxxxx Xxxx
If to the Lender:
GEM SurgiLight Investors, LLC
0 Xxxx 00xx Xxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxx Xxxxx
Telecopy No. 212-202-7565
With a copy to:
Xxxxxx Xxxxxxxx, Esq.
XxXxxxxxxx & Xxxxx LLP
000 Xxxxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telecopy No: 000 000 0000
(b) Every notice or demand shall, except so far as otherwise expressly
provided by this Agreement, be deemed to have been received (provided
that it is received prior to 2:00 p.m. New York time; otherwise it shall
be deemed to have been received on the next following Banking Day (as
such term is defined in the Loan Agreement)), in the case of a
telecopy, at the time of dispatch thereof (provided further that if the date
of dispatch is not a Banking Day in the locality of the party to whom such
notice or demand is sent it shall be deemed to have been received on the next
following Banking Day in such locality) and, in the case of a letter, at the
time of receipt thereof.
19. (a) IT IS MUTUALLY AGREED BY AND BETWEEN THE PARTIES HERETO
THAT EACH OF THEM HEREBY WAIVES TRIAL BY JURY IN ANY ACTION, PROCEEDING OR
COUNTERCLAIM BROUGHT BY EITHER PARTY HERETO AGAINST THE OTHER PARTY HERETO ON
ANY MATTER WHATSOEVER ARISING OUT OF OR IN ANY WAY CONNECTED WITH THIS
AGREEMENT.
(b) THIS AGREEMENT SHALL BE GOVERNED BY, AND CONSTRUED AND
INTERPRETED IN ACCORDANCE WITH, THE LAWS OF THE STATE OF NEW YORK AS APPLIED
TO AGREEMENTS EXECUTED IN THE STATE OF NEW YORK.
[Signature Page Follows]
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed on the day and year first above written.
SURGILIGHT, INC.
By: /s/ Xxxxxxx Xxxx
-----------------
Name: Xxxxxxx Xxxx
Title: President
GEM SURGILIGHT INVESTORS, LLC
by GEM SURGILIGHT MANAGEMENT, LLC, its
MANAGING MEMBER
By: /s/ Xxxxxx Xxxxx
----------------
Name: Xxxxxx Xxxxx
Title: Member
SCHEDULE A
Patents And Patent Applications
-------------------------------
A. Patents
Issued Patents* Filing Date Issue Date Title
--------------- ----------- ---------- -----
6,824,540 11/6/00 11/30/04 Apparatua and methods
for the treatment of
presbyopia using
fiber-coupled-lasers
6,491,688 6/21/00 12/10/02 Apparatus and methods
for reversal of
presbyopia using near
infrared selective
laser on zonnulas
6,745,775 2/28/01 6/8/04 Methods and apparatus
for presbyopia treatment
using a scanning laser
system
6,258,082 7/10/01
6,263,879 11/10/98 7/24/01 Treatment of presbyopia
and other eye disorders
using a dual-laser
scanning system
M251582 11/6/03 12/1/04 (China & Taiwan
patents-XX Xxx
inventor)
ZL 2003 21022196.9 11/28/03 12/1/04 (China & Taiwan
patents-XX Xxx
inventor)
ZL 2003 20126749.8 12/9/2003 12/1/04 (China & Taiwan
patents-XX Xxx
inventor)
ZL 2003 20126748.3 12/9/2003 12/9/04 (China & Taiwan
patents-XX Xxx
inventor)
08/391,612 2/21/1995 3/3/98 Laser Surgical
Method Using
Transparent Probe
(5722970 believe
to be transferred to
SurgiLight 2nd
Agreement)
5,741,245 4/21/98 Corneal Sculpting using
Laser Energy
5,738,677 4/14/98 Apparatus & Method for
Performing Eye Surgery
699994 4/1/99 Apparatus & Method for
Performing Eye Surgery
(Australia)
678967 10/9/97 Apparatus & Method for
Performing Eye Surgery
(Australia)
5,865,831 2/2/99 Laser Surgical Procedures
for Treatment of Glaucoma
6,241,721 6/5/01 Laser Surgical Procedures
for Treatment of Glaucoma
Pending Publication
Applications* Filing Date Date Title
--------------- ----------- ---------- -----
20050043722 8/22/03 2/24/05 Methods and apparatus for
treatment of eye disorders
using articulated-arm-
coupled ultraviolet lasers
20040078030 10/16/02 4/22/04 Methods and apparatus for
presbyopia treatment using
a dual-function laser
system
20040078009 10/17/02 4/22/04 Methos and apparatus for the
treatment of presbyopia and
other eye disorders
combining pharmocological
and surgical means
20030220630 11/12/02 11/27/03 Methods and systems for
treating presbyopia via
laser ablation
WO 03/039351 11/12/02 5/15/03 Methods and systems for
treating presbyopia via
laser ablation
20030139737 1/24/02 7/24/03 Method and apparatus for
treatment of presbyopia
by lens relaxation and
anterior shift
20030105456 12/4/01 6/5/03 Apparatus and methods for
prevention of age-related
macular degeneration and
other eye diseases
20030038920 8/21/01 2/27/03 Apparatus and method for
vision correction using
refractive index effects
20010029363 3/30/01 10/11/01 Methods and apparatus for
presbyopia correction using
ultraviolet and infrared
lasers
20010016736 2/28/01 8/23/01 Method and apparatus for
presbyopia treatment using
a scanning laser system
09/006,609 8/22/2001 Methods and appartus for
presbyopia treatment using
a scanning laser system
10/626,486 7/24/2003 Methods and appartus for
presbyopia treatment using
a scanning laser system
WO 02/069828 11/10/1998 Methods and appartus for
presbyopia treatment using
a scanning laser system
90/006,089 8/22/2001 Methods and apparatus for
presbyopia correction using
ultraviolet and infrared
lasers
10/621,105 7/10/2003 Methods and apparatus for
presbyopia correction
using ultraviolet and
infrared lasers
WO 02/094129 AU 3/30/2001 11/28/02 Methods and apparatus for
presbyopia correction
using ultraviolet and
infrared lasers
WO 02/094129 CA 3/30/2001 11/28/02 Methods and apparatus for
presbyopia correction
using ultraviolet and
infrared lasers
WO 02/094129 EU 3/30/2001 11/28/02 Methods and apparatus for
presbyopia correction using
ultraviolet and infrared
lasers
WO 02/094129 JP 3/30/2001 11/28/02 Methods and apparatus for
presbyopia correction using
ultraviolet and infrared
lasers
WO 02/094129 MX 3/30/2001 11/28/02 Methods and apparatus for
presbyopia correction using
ultraviolet and infrared
lasers
WO 02/36029 PCT 11/6/2000 5/10/02 Apparatus and methods for
the treatment of presbyopia
using fiber-coupled-lasers
WO 02/36029 AU 11/6/2000 5/10/02 Apparatus and methods for
the treatment of presbyopia
using fiber-coupled-lasers
10/871,903 6/21/2004
10/987,929 11/12/2004 Methods and systems for
treating presbyoipia via
laser ablation
Issued Patents* Filing Date Issue Date Title
--------------- ----------- ---------- -----
5,116,329 8/16/1990 5/26/1992 MEDICAL LASER
INTERCONNECT SYSTEM
2,000,916 10/18/1989 1/17/1995 MEDICAL LASER
INTERCONNECT SYSTEM
365228 10/13/1989 12/14/1994 MEDICAL LASER
INTERCONNECT SYSTEM
3,084,029 10/30/1989 6/30/2000 MEDICAL LASER
INTERCONNECT SYSTEM
5,207,673 12/6/1991 5/4/1993 FIBER OPTIC APPARATUS
FOR USE WITH MEDICAL LASERS
613,560 6/7/1990 12/11/1991 FIBER OPTIC APPARATUS
FOR USE WITH MEDICAL LASERS
2,018,450 6/7/1990 5/9/1995 FIBER OPTIC APPARATUS
FOR USE WITH MEDICAL LASERS
08/841,865 5/5/1997 LASER SURGICAL PROBE
5,688,261 4/7/1995 11/18/1997 TRANSPARENT LASER
SURGICAL PROBE
2,107,687 4/3/1992 TRANSPARENT LASER
SURGICAL PROBE
0578756 4/3/1992 8/30/000 TRANSPARENT LASER
SURGICAL PROBE
6110167** 5/31/1995 8/29/2000 CONTACT TIP FOR LASER
SURGERY
5707368** 6/1/1995 1/13/1998 CONTACT TIP FOR LASER
SURGERY
5,304,167 7/17/1992 4/19/1994 MULTIWAVELENGTH MEDICAL
LASER METHOD
5,139,494 9/4/1991 8/18/1992 MULTIWAVELENGTH MEDICAL
LASER SYSTEM
626,339 11/9/1989 2/1/1993 MULTIWAVELENGTH MEDICAL
LASER SYSTEM
2,002,453 11/8/1989 1/17/1995 MULTIWAVELENGTH MEDICAL
LASER SYSTEM
5,540,676 4/14/1995 7/30/1996 METHOD OF LASER SURGERY
USING MULTIPLE WAVELENGTHS
5,422,899 5/10/1994 6/6/1995 HIGH REPETITION RATE
MID-INFRARED LASER
688,593 5/9/1995 5/7/1998 HIGH REPETITION RATE
MID-INFRARED LASER
2,148,395 5/2/1995 HIGH REPETITION RATE
MID-INFRARED LASER
682389 4/28/1995 9/2/1998 HIGH REPETITION RATE
MID-INFRARED LASER
11,234/1995 5/9/1995 HIGH REPETITION RATE
MID-INFRARED LASER
113,501 4/26/1995 5/19/1997 HIGH PULSE REPETITION
AND ITS USE
110,517/1995 5/9/1995 PULSED, OPTICALLY PUMPED
LASER AND SURGICAL METHOD
USING THE SAME
6,122,300 9/17/1997 9/19/2000 PULSED, OPTICALLY PUMPED
LASER AND SURGICAL METHOD
USING THE SAME
09/360,588 7/26/1999 SINGLE DOMINANT SPIKE
OUTPUT ERBIUM LASER
PCTUS800/20241 7/26/2000 SINGLE DOMINANT SPIKE
OUTPUT ERBIUM LASER
09/303,697** 5/3/1999 OPTICAL SOURCE AND METHOD
46981/00** 5/3/2000 OPTICAL SOURCE AND METHOD
Canada** 5/3/2000 OPTICAL SOURCE AND METHOD
928801.0** 5/3/2000 OPTICAL SOURCE AND METHOD
Japan 5/3/2000 OPTICAL SOURCE AND METHOD
* Surgilight makes no representation about the current status of the
patents/patent applications; GEM has had the opportunity to review
these patents/patent applications
** Originally licensed to SurgiLight and then assigned to SurgiLight
SCHEDULE B
Trademarks And Trademark Applications
-------------------------------------
A. Trademarks
United States
Xxxx Registration No. Issued
------------- ---------------- ------
Trademark
OptiVision*
LAPR*
Laser Presbyopia
Reversal*
Trademarked through usage
SCHEDULE C
COPYRIGHTS AND COPYRIGHT APPLICATIONS
-------------------------------------
A. Copyrights
Software for laser systems - Erbium main, laser and
controller and Diode*
LAPR and laser tissue interaction course materials*
*Copyrighted through usage and marking only
