INTELLECTUAL PROPERTY SECURITY AGREEMENT SUPPLEMENT
Exhibit 10.6
This Intellectual Property Security Agreement Supplement is entered into as of the [__] day of July, 2023 by and between MIDCAP FINANCIAL TRUST, a Delaware
statutory trust (in such capacity, together with its successors and assigns, “Agent”) and STRATA SKIN SCIENCES, INC., a Delaware corporation (“Strata”, and together with any other Person that
joins this agreement as a Grantor, each a “Grantor” and collectively, the “Grantors”).
RECITALS
A. The Grantors are party to that certain Intellectual Property Security Agreement, by and between Agent and the Grantors, dated as of September 30, 2021, (as the same may have been
amended, modified or supplemented from time to time prior to the date hereof, the “Existing IP Security Agreement”; capitalized terms used herein are used as defined in the Existing IP Security Agreement);
B. The Grantors wish to amend the Existing IP Security Agreement by supplementing the Intellectual Property Collateral therein with the Intellectual Property listed on the exhibits hereto.
NOW, THEREFORE, for good and valuable consideration, receipt of which is hereby acknowledged, and intending to be legally bound, as collateral security for the prompt and complete payment when due
of its obligations under the Credit Agreement, each Grantor hereby represents, warrants, covenants and agrees as follows:
AGREEMENT
To secure its Obligations under the Credit Agreement, each Grantor grants and pledges to Agent, for the ratable benefit of the Lenders, a security interest in all of such Grantor’s right, title and
interest in, to and under its Intellectual Property, other than Excluded Property (each as defined in the Credit Agreement), whether now owned or hereafter created, acquired or held, including, without limitation, the following:
(a) Any and all Copyrights, including without limitation those set forth on Exhibit A attached hereto, as such exhibit may be further amended, modified or supplemented from time to
time;
(b) Any and all Patents, including without limitation those set forth on Exhibit B attached hereto, as such exhibit may be further amended, modified or supplemented from time to
time;
(c) Any and all Trademarks, including without limitation those set forth on Exhibit C attached hereto, as such exhibit may be further amended, modified or supplemented from time to
time;
(d) Any and all Mask Works, including without limitation those set forth on Exhibit D attached hereto, as such exhibit may be further amended, modified or supplemented from time to
time; and
(e) 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.
Notwithstanding the foregoing, the Intellectual Property Collateral does not include any “intent to use” trademark at all times prior to the first use thereof, whether by the actual use thereof in
commerce, the recording of a statement of use with the United States Patent and Trademark Office or otherwise, provided, that upon submission and acceptance by the United States Patent and Trademark Office of an amendment to allege use of an
intent-to-use trademark application pursuant to 15 U.S.C. Section 1060(a) (or any successor provision), such intent-to-use application shall constitute Intellectual Property Collateral.
The Grantors hereby agree that the Intellectual Property listed on the exhibits hereto shall become a part of the Intellectual Property Collateral in the Existing IP Security Agreement and shall
secure all Obligations in accordance with the terms of the Credit Agreement. The exhibits of the Existing IP Security Agreement shall be deemed amended to add the Intellectual Property listed on the exhibits to this IP Security Agreement
Supplement. The rights and remedies of Agent with respect to the security interests granted herein are without prejudice to, and are in addition to those set forth in the Credit Agreement and the Existing IP Security Agreement.
The provisions of the Existing IP Security Agreement regarding choice of law, jurisdiction, venue and jury trial waiver are incorporated herein and shall govern this Intellectual Property Security
Agreement Supplement.
[Signature Page Follows]
IN WITNESS WHEREOF, the Grantors have caused this Intellectual Property Security Agreement Supplement to be duly executed by its officers thereunto duly authorized as of the first date written
above.
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GRANTORS:
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| Name: | ||
| Title: |
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AGENT:
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MIDCAP FINANCIAL TRUST
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By: Apollo Capital Management, L.P.,
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its investment manager
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By: Apollo Capital Management GP, LLC,
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its general partner
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| By: | |||
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Name: Xxxxxxx Xxxxxxxx
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Title: Authorized Signatory
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EXHIBIT A
Copyrights
None.
EXHIBIT B
Patents
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Country
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Patent
Application No.
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Title
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Status
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Current
Legal
Entities
Owned
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U.S.
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63/488,272
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UV Delivery System and method for 308nm Phototherapy Lasers
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Pending
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U.S.
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17/634,079
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Tip Section for Use in Phototherapy
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Pending
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U.S.
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17/640,067
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Method for Targeted Treating Dermatoses
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Pending
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U.S.
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17/640,125
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Method for Targeted Treating Dermatoses
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Pending
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U.S.
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17/640,093
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Method for Targeted Treating Dermatoses
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Pending
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EXHIBIT C
Trademarks
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Description
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Registration/
Application
Number
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Registration/
Application
Date
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MELA
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1339968
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Renewal Due - January 8, 2030
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VTRAC
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7121033
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Renewal Due - July 27, 2030
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XTRAC
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7121034
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Renewal Due - July 6, 2030
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XTRAC S3
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48089244
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Renewal Due - April 13, 2031
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MELA
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8796088
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Renewal Due - January 7, 2030
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S3
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1514976
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Renewal Due - January 10, 2030
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VTRAC
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7482284
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Renewal Due - December 19, 2028
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XTRAC
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7480511
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Renewal Due - December 19, 2028
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VTRAC
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2578256
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Renewal Due - August 8, 2023
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XTRAC
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2578258
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Renewal Due - August 8, 2023
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VTRAC
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00-0000000
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Renewal Due - December 24, 2029
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XTRAC
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00-0000000
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Renewal Due - December 24, 2029
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VTRAC
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1383636
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Renewal Due - October 31, 2029
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XTRAC
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1385590
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Renewal Due - November 15, 2029
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MELA
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UK00908796088
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Renewal Due - January 7, 2030
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S3
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1514976
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Renewal Due - January 10, 2030
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S3
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UK00801514976
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Renewal Due - January 10, 2030
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VTRAC
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UK00907482284
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Renewal Due - December 19, 2028
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XTRAC
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UK00907480511
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Renewal Due - December 19, 2028
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MELA
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4,226,001
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MMD
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6598213
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Renewal Due – December 21, 2027
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S3
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1514976
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Renewal Due - January 10, 2030
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MOMENTUM
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6959003
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Renewal Due – January 17, 2029
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EXHIBIT D
Mask Works
None.
