COLLATERAL ASSIGNMENT, PATENT MORTGAGE AND SECURITY AGREEMENT
This Collateral Assignment, Patent Mortgage and Security Agreement is
made as of October 16, 1996, by and between Rogue Wave Software, Inc., an
Oregon corporation ("Assignor"), and SILICON VALLEY BANK, a California
banking corporation ("Assignee").
RECITALS
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A. Assignee has agreed to lend to assignor certain funds (the "Loan"),
and assignor desires to borrow such funds from Assignee pursuant to the terms
of a Loan and Security Agreement of even date herewith (the "Loan Agreement").
B. In order to induce Assignee to make the loan, Assignor has agreed to
assign certain intangible property to Assignee for purposes of securing the
obligations of Assignor to Assignee.
NOW, THEREFORE, THE PARTIES HERETO AGREE AS FOLLOWS:
1. ASSIGNMENT, PATENT MORTGAGE AND GRANT OF SECURITY INTEREST. As
collateral security for the prompt and complete payment and performance of
all of Assignor's present or future indebtedness, obligations and liabilities
to Assignee, Assignor hereby assigns, transfers, conveys and grants a
security interest and mortgage to Assignee, as security, in and to Assignor's
entire right, title and interest in, to and under the following (all of which
shall collectively be called the "Collateral"):
a. Any and all copyright rights, copyright applications, copyright
registrations and like protections in each work or authorship and derivative
work thereof, whether published or unpublished and whether or not the same also
constitutes a trade secret, now or hereafter existing, created, acquired or
held, including without limitation those set forth in EXHIBIT A attached
hereto (collectively, the "Copyrights");
b. Any and all trade secrets, and any and all intellectual property
rights in computer software and computer software products now or hereafter
existing, created, acquired or held;
c. Any and all design rights which may be available to Assignor now
or hereafter existing, created, acquired or held;
d. All patents, patent applications and like protections including
without limitation improvements, divisions, continuations, renewals, reissues,
extensions and continuations-in-part of the same, including without
limitation the patents and patent applications set forth on EXHIBIT B
attached hereof (collectively, the "Patents");
e. Any trademark and servicemark rights, whether registered or not,
applications to register and registrations of the same and like protections,
and the entire goodwill of the business of Assignor connected with and
symbolized by such trademarks, including without limitation those set forth
on EXHIBIT C attached hereto (collectively, the "Trademarks");
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f. Any and all claims for damages by way of past, present and
future infringement of any of the rights included above, with the right, but
not the obligation, to xxx for and collect such damages for said use or
infringement of the intellectual property rights identified above;
g. All licenses or other rights to use any of the Copyrights,
Patents or Trademarks, and all license fees and royalties arising from such
use to the extent permitted by such license or rights; and
h. All amendments, renewals and extensions of any of the
Copyrights, Trademarks or Patents; and
i. All proceeds and products of the foregoing, including without
limitation all payments under insurance or any indemnity or warranty payable
in respect of any of the foregoing.
THE INTEREST IN THE COLLATERAL BEING ASSIGNED HEREUNDER SHALL NOT BE
CONSTRUED AS A CURRENT ASSIGNMENT, BUT AS A CONTINGENT ASSIGNMENT TO SECURE
ASSIGNOR'S OBLIGATIONS TO ASSIGNEE UNDER THE LOAN AGREEMENT.
2. AUTHORIZATION OF REQUEST. Assignor authorizes and requests that the
Register of Copyrights and the Commission of Patents and Trademarks record
this conditional assignment.
3. COVENANTS AND WARRANTIES. Assignor represents, warrants, covenants
and agrees as follows:
a. Assignor is now the sole owner of the Collateral, except for
nonexclusive licenses granted by Assignor to its customers in the ordinary
course of business;
b. Performance of this assignment does not conflict with or result
in a breach of any agreement to which Assignor is party or by which Assignor
is bound, except to the extent that certain intellectual property agreements
prohibit the assignment of the rights thereunder to a third party without the
licensor's or other party's consent and this Assignment constitutes an
assignment;
c. During the term of this Assignment, Assignor will not transfer
or otherwise encumber any interest in the Collateral, except for
non-exclusive licenses granted by Assignor in the ordinary course of business
or as set forth in this Assignment;
d. To its knowledge, each of the Patents is valid and enforceable,
and no part of the Collateral has been judged invalid or unenforceable, in
whole or in part, and no claim has been made that any part of the Collateral
violates the rights of any third party;
e. Assignor shall promptly advise Assignee of any material change
in the composition of the Collateral, including but not limited to any
subsequent ownership right of the Assignor in or to any Trademark, Patent or
Copyright no specified in this Assignment;
f. Assignor shall (i) protect, defend and maintain the validity and
enforceability of the Trademarks, Patents and Copyrights, (ii) use its best
efforts to detect
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infringements of the Trademarks, Patents and Copyrights and promptly advise
Assignee in writing of material infringements detected and (iii) not allow
any Trademarks, Patents or Copyrights to be abandoned, forfeited or
dedicated to the public without the written consent of Assignee, which shall
not be unreasonably withheld, unless Assignor determines that reasonable
business practices suggest that abandonment is appropriate;
g. Assignor shall promptly register the most recent version of any
of Assignor's Copyrights, if not so already registered, and shall, from time
to time, execute and file such other instruments, and take such further
actions as Assignee may reasonably request from time to time to perfect or
continue the perfection of Assignee's interest in the Collateral;
h. This Assignment creates, and in the case of after acquired
Collateral, this Assignment will create at the time Assignor first has rights
in such after acquired Collateral, in favor of Assignee a valid and perfected
first priority security interest in the Collateral in the United States
securing the payment and performance of the obligations evidenced by the Loan
Agreement upon making the filings referred to in clause (i) below;
i. To its knowledge, except for, and upon, the filing with the
United States Patent and Trademark office with respect to the Patents and
Trademarks and the Register of Copyrights with respect to the Copyrights
necessary to perfect the security interests and assignment created hereunder,
and except as has been already made or obtained, no authorization, approval
or other action by, and no notice to or filing with, any U.S. governmental
authority or U.S. regulatory body is required either (i) for the grant by
Assignor of the security interest granted hereby or for the execution,
delivery or performance of this Assignment by Assignor in the U.S. or (ii)
for the perfection in the United States or the exercise by Assignee of its
rights and remedies hereunder;
j. All information heretofore, herein or hereafter supplied to
Assignee by or on behalf of Assignor with respect to the Collateral is
accurate and complete in all material respects.
k. Assignor shall not enter into any agreement that would
materially impair or conflict with Assignor's obligations hereunder without
Assignee's prior written consent, which consent shall not be unreasonably
withheld. Assignor shall not permit the inclusion in any material contract to
which it becomes a party of any provisions that could or might in any way
prevent the creation of a security interest in Assignor's rights and
interests in any property included within the definition of the Collateral
acquired under such contracts, except that certain contracts may contain
anti-assignment provisions that could in effect prohibit the creation of a
security interest in such contracts.
l. Upon any executive officer of Assignor obtaining actual
knowledge thereof, Assignor will promptly notify Assignee in writing of any
event that materially adversely affects the value of any Collateral, the
ability of Assignor to dispose of any Collateral or the rights and remedies
of Assignee in relation thereto, including the levy of any legal process
against any of the Collateral.
4. ASSIGNEE'S RIGHTS. Assignee shall have the right, but not the
obligation, to take, at Assignor's sole expense, any actions that assignor is
required under this Assignment to take but which Assignor fails to take,
after fifteen (15) days' notice to Assignor. Assignor shall reimburse
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and indemnify Assignee for all reasonable costs and reasonable expenses
incurred in the reasonable exercise of its rights under this Section 4.
5. INSPECTION RIGHTS. Assignor hereby grants to Assignee and its
employees, representatives and agents the right to visit, during reasonable
hours upon prior reasonable written notice to Assignor, any of Assignor's
plants and facilities that manufacture, install or store products (or that
have done so during the prior six-month period) that are sold utilizing any
of the Collateral, and to inspect the products and quality control records
relating thereto upon reasonable written notice to Assignor and as often as
may be reasonable requested.
6. FURTHER ASSURANCES; ATTORNEY-IN-FACT.
a. On a continuing basis, Assignor will make, execute,
acknowledge and deliver, and file and record in the proper filing and
recording places in the United States, all such instruments, including
appropriate financing and continuation statements and collateral agreements
and filings with the United States Patent and Trademark office and the
Register of Copyrights, and take all such action as may reasonably be deemed
necessary or advisable, or as requested by Assignee, to perfect Assignee's
security interest in all Copyrights, Patents and Trademarks and otherwise to
carry out the intent and purposes of this Collateral Assignment, or for
assuring and confirming to Assignee the grant or perfection of a security
interest in all Collateral.
b. Assignor hereby irrevocably appoints Assignee as Assignor's
attorney-in-fact, with full authority in the place and stead of Assignor and
in the name of Assignor, from time to time in Assignee's discretion, to take
any action and to execute any instrument which Assignee may deem necessary
or advisable to accomplish the purposes of this Collateral Assignment,
including (i) to modify, in its sole discretion, this Collateral Assignment
without first obtaining Assignor's approval of or signature to such
modification solely by amending Exhibit A, Exhibit B and Exhibit C, thereof,
as appropriate, to include reference to any right, title or interest in any
Copyrights, Patents or Trademarks acquired by Assignor after the execution
hereof or to delete any reference to any right, title or interest in any
Copyrights, Patents or Trademarks in which Assignor no longer has or claims
any right, title or interest, (ii) to file, in its sole discretion, one or
more financing or continuation statements and amendments thereto, relative to
any of the Collateral without the signature of Assignor where permitted by
law and (iii) after the occurrence of an Event of Default, to transfer the
Collateral into the name of Bank or a third party to the extent permitted
under the Oregon Uniform Commercial Code.
7. EVENTS OF DEFAULT. The occurrence of any of the following shall
constitute an Event of Default under the Assignment:
a. An Event of Default occurs under the Loan Agreement; or
b. Assignor breaches any warranty or agreement made by Assignor in
this Assignment and, as to any breach that is capable of cure, Assignor fails
to cure such breach within five (5) days of the occurrence of such breach.
8. REMEDIES. Upon the occurrence and continuance of an Event of
Default, Assignee shall have the right to exercise all the remedies of a
secured party under the Loan Agreement and the Oregon Uniform Commercial
Code, including without limitation the right to require Assignor to assemble
the Collateral and any tangible property in which Assignee has a
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security interest and to make it available to Assignee at a place designated
by Assignee. Assignee shall have a nonexclusive, royalty free license to use
the Copyrights, Patents and Trademarks to the extent reasonably necessary to
permit assignee to exercise its rights and remedies upon the occurrence of an
Event of Default. Assignor will pay any expenses (including reasonable
attorneys' fees) incurred by Assignee in connection with the exercise of any
of Assignee's rights hereunder, including without limitation any expense
incurred in disposing of the Collateral. All of Assignee's rights and
remedies with respect to the Collateral and shall be cumulative.
9. INDEMNIFY. Assignor agrees to indemnify, defend, protect and hold
harmless Assignee and its officers, employees, and agents against: (a) all
obligations, demands, claims and liabilities claimed or asserted by any other
party in connection with the transactions contemplated by this Agreement, and
(b) all losses or expenses in any way suffered, incurred, or paid by
Assignee as a result of or in any way arising out of, following or
consequential to transactions between Assignee and Assignor, whether under
this Assignment or otherwise (including without limitation reasonable
attorneys' fees and reasonable expenses), except for losses arising from or
out of Assignee's gross negligence or willful misconduct.
10. REASSIGNMENT. At such time as Assignor shall completely satisfy
all of the obligations secured hereunder, Assignee shall execute and deliver
to Assignor all deeds, assignments and other instruments as may be necessary
or proper to revest in assignor full title to the property assigned
hereunder, subject to any disposition thereof which may have been made by
Assignee pursuant hereto.
11. COURSE OF DEALING. No course of dealing, nor any failure to
exercise, nor any delay in exercising any right, power or privilege hereunder
shall operate as a waiver thereof.
12. ATTORNEYS' FEES. If any action relating to this Assignment is
brought by either party hereto against the other party, the prevailing party
shall be entitled to recover reasonable attorneys' fees (including but not
limited to attorneys' fees on appeal or review), costs and disbursements.
13. AMENDMENTS. This Assignment may be amended only by a written
instrument signed by both parties hereto.
14. COUNTERPARTS. This Assignment may be executed in two or more
counterparts, each of which shall be deemed an original but all of which
together shall constitute the same instrument.
15. OREGON LAW AND JURISDICTION; JURY WAIVER. This Assignment shall be
governed by the laws of the State of Oregon, without regard for choice of law
provisions. Assignor and Assignee consent to the exclusive jurisdiction of
any state or federal court located in Multnomah County or Washington County,
Oregon. ASSIGNOR AND ASSIGNEE EACH WAIVE THEIR RESPECTIVE RIGHTS TO A JURY
TRIAL OF ANY CLAIM OR CAUSE OF ACTION BASED UPON OR ARISING OUT OF THE LOAN
AGREEMENT, THIS ASSIGNMENT, OR ANY OF THE TRANSACTIONS CONTEMPLATED HEREIN,
INCLUDING CONTRACT CLAIMS, TORT CLAIMS, BREACH OF DUTY CLAIMS, AND ALL OTHER
COMMON LAW OR STATUTORY CLAIMS.
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IN WITNESS WHEREOF, the parties hereto have executed this Assignment on
the day and year first above written.
Address of Assignor: ASSIGNOR:
000 XX 00xx Xxxxxx ROGUE WAVE SOFTWARE, INC.
Xxxxxxxxx, XX 00000
Attn: Xxxxxx Xxxxxxx By: /s/ illegible
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Title: CFO
---------------------------
STATE OF OREGON )
) ss.
County of Xxxxxx )
This instrument was acknowledged before me on this 22nd day of October,
1996, by Xxxxxx Xxxxxxx, as CFO of Rogue Wave Software, Inc., an Oregon
corporation.
[SEAL] /s/ Xxxxx X. Xxxxxxxx
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NOTARY PUBLIC FOR
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My Commission Expires: March 23, 1998
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Address of Assignee: ASSIGNEE:
00000 X.X. Xxxxxxx, Xxxxx 000 XXXXXXX XXXXXX BANK
Xxxxxxxxx, XX 00000-0000
Attn: Art Xxxxxxxx By:
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Title:
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STATE OF OREGON )
) ss.
County of ___________ )
This instrument was acknowledged before me on this ____ day of October,
1996, by _________________, as ________________ of Silicon Valley Bank, a
California banking corporation.
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NOTARY PUBLIC FOR
----------------------------------
My Commission Expires:
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EXHIBIT A
COPYRIGHTS
Description Registration/ Registration/
Application Application
Number Date
Page 7 - COLLATERAL ASSIGNMENT, PATENT MORTGAGE AND SECURITY AGREEMENT
EXHIBIT B
PATENTS
Description Registration/ Registration/
Application Application
Number Date
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EXHIBIT C
TRADEMARKS
Description Registration/ Registration/
Application Application
Number Date
Page 9 - COLLATERAL ASSIGNMENT, PATENT MORTGAGE AND SECURITY AGREEMENT
