EXHIBIT 10.38
INTELLECTUAL PROPERTY
MORTGAGE AND SECURITY AGREEMENT
This Intellectual Property Mortgage and Security Agreement (this
"Agreement") is made as of September 28, 2001 by and between Applied Imaging
Corp., a Delaware corporation ("Debtor"), and Silicon Valley Bank, a California
banking corporation ("Secured Party").
RECITALS
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A. Secured Party has agreed to lend to Debtor certain funds (the
"Loans"), pursuant to a Loan and Security Agreement dated as of even date
herewith (as amended, restated, supplemented, or otherwise modified from time to
time, the "Loan Agreement") and Debtor desires to borrow such funds from Secured
Party.
B. In order to induce Secured Party to make the Loans, Debtor has
agreed to grant a security interest in certain intangible property to Secured
Party for purposes of securing the obligations of Debtor to Secured Party.
NOW, THEREFORE, THE PARTIES HERETO AGREE AS FOLLOWS:
1. Mortgage and Grant of Security Interest. As collateral security for
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the prompt and complete payment and performance of all of Debtor's present or
future indebtedness, obligations and liabilities to Secured Party, Debtor hereby
grants, transfers, and conveys a security interest and mortgage to Secured
Party, as security, but not as an ownership interest, in and to Debtor's entire
right, title and interest in, to and under the following (all of which shall
collectively be called the "Collateral"):
(a) All of present and future United States registered copyrights
and copyright registrations, including, without limitation, the registered
copyrights, maskworks, software, computer programs and other works of authorship
subject to United States copyright protection listed in Exhibit A-1 to this
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Agreement (and including all of the exclusive rights afforded a copyright
registrant in the United States under 17 U.S.C. (S)106 and any exclusive rights
which may in the future arise by act of Congress or otherwise) and all present
and future applications for copyright registrations (including applications for
copyright registrations of derivative works and compilations) (collectively, the
"Registered Copyrights"), and any and all royalties, payments, and other amounts
payable to Debtor in connection with the Registered Copyrights, together with
all renewals and extensions of the Registered Copyrights, the right to recover
for all past, present, and future infringements of the Registered Copyrights,
and all computer programs, computer databases, computer program flow diagrams,
source codes, object codes and all tangible property embodying or incorporating
the Registered Copyrights, and all other rights of every kind whatsoever
accruing thereunder or pertaining thereto.
(b) All present and future copyrights, maskworks, software,
computer programs and other works of authorship subject to (or capable of
becoming subject to) United States copyright protection which are not registered
in the United States Copyright Office (the "Unregistered Copyrights"), whether
now owned or hereafter acquired, including without limitation the Unregistered
Copyrights listed in Exhibit A-2 to this Agreement, and any and all royalties,
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payments, and other amounts payable to Debtor in connection with the
Unregistered Copyrights, together with all renewals and extensions of the
Unregistered Copyrights, the right to recover for all past, present, and future
infringements of the Unregistered Copyrights, and all computer programs,
computer databases, computer program flow diagrams, source codes, object codes
and all tangible property embodying or incorporating the Unregistered
Copyrights, and all other rights of every kind whatsoever accruing thereunder or
pertaining thereto. The Registered Copyrights and the Unregistered Copyrights
collectively are referred to herein as the "Copyrights."
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(c) All right, title and interest in and to any and all present and
future license agreements with respect to the Copyrights, including without
limitation the license agreements listed in Exhibit A-3 to this Agreement (the
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"Licenses").
(d) All present and future accounts, accounts receivable and other
rights to payment arising from, in connection with or relating to the
Copyrights.
(e) 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;
(f) Any and all design rights which may be available to Debtor now or
hereafter existing, created, acquired or held;
(g) 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 hereto
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(collectively, the "Patents");
(h) 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 Debtor connected with and symbolized by
such trademarks, including without limitation those set forth on Exhibit C
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attached hereto (collectively, the "Trademarks"); provided, however, that
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Secured Party shall not acquire any interest in any intent to use a federal
trademark application for a trademark, servicemark, or other xxxx filed on
Debtor's behalf prior to the filing under applicable law of a verified statement
of use (or equivalent) for such xxxx that is the subject of such application;
(i) Any and all claims for damages by way of past, present and future
infringements 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;
(j) 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;
(k) All amendments, extensions, renewals and extensions of any of the
Copyrights, Trademarks or Patents; and
(l) 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.
2. Authorization and Request. Debtor authorizes and requests that the
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Register of Copyrights and the Commissioner of Patents and Trademarks record
this Agreement.
3. Covenants and Warranties. Debtor represents, warrants, covenants and
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agrees as follows:
(a) Debtor is now the sole owner of the Collateral, except for (i)
non-exclusive licenses granted by Debtor to its customers in the ordinary course
of business, and (ii) "Permitted Exclusive Assay Provider Licenses" (as such
term is defined in the Loan Agreement).
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(b) Listed on Exhibits A-1 and A-2 are all copyrights owned by Debtor,
in which Debtor has an interest, or which are used in Debtor's business.
(c) Each employee, agent and/or independent contractor who has
participated in the creation of the property constituting the Collateral has
either executed an assignment of his or her rights of authorship to Debtor or is
an employee of Debtor acting within the scope of his or her employment and was
such an employee at the time of said creation.
(d) [intentionally omitted]
(e) Debtor shall undertake all reasonable measures to cause its
employees, agents and independent contractors to assign to Debtor all rights of
authorship to any copyrighted material in which Debtor has or may subsequently
acquire any right or interest.
(f) Performance of this Agreement does not conflict with or result in
a breach of any agreement to which Debtor 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 Agreement constitutes an assignment.
(g) During the term of this Agreement, Debtor will not transfer or
otherwise encumber any interest in the Collateral, except for Permitted Liens
(as such term is defined in the Loan Agreement) and non-exclusive licenses
granted by Debtor in the ordinary course of business or as set forth in this
Agreement;
(h) Each of the Patents, Trademarks, and Copyrights 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;
(i) Debtor shall promptly advise Secured Party of any material adverse
change in the composition of the Collateral, including but not limited to any
subsequent ownership right of the Debtor in or to any Trademark, Patent or
Copyright not specified in this Agreement;
(j) Debtor shall (i) protect, defend and maintain the validity and
enforceability of the Trademarks, Patents and Copyrights, (ii) use its best
efforts to detect infringements of the Trademarks, Patents and Copyrights and
promptly advise Secured Party 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 Secured
Party, which shall not be unreasonably withheld unless Debtor determines that
reasonable business practices suggest that abandonment is appropriate;
(k) Section 9(3) of the Schedule to the Loan Agreement hereby is
incorporated herein, mutatis mutandis;
(l) This Agreement creates, and in the case of after acquired
Collateral, this Agreement will create at the time Debtor first has rights in
such after acquired Collateral, in favor of Secured Party a valid and perfected
first priority security interest (subject only to Permitted Liens (if any) that
are specifically entitled pursuant to applicable law, or specifically
acknowledged in writing by Secured Party, to have priority over Secured Party's
security interests) 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 (m) below;
(m) To its knowledge, except for, and upon, the filing with the United
States
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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 mortgage 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 Debtor of the security interest granted
hereby or for the execution, delivery or performance of this Agreement by Debtor
in the U.S. or (ii) for the perfection in the United States or the exercise by
Secured Party of its rights and remedies thereunder;
(n) All information heretofore, herein or hereafter supplied to
Secured Party by or on behalf of Debtor with respect to the Collateral is
accurate and complete in all material respects.
(o) Debtor shall not enter into any agreement that would materially
impair or conflict with Debtor's obligations hereunder without Secured Party's
prior written consent, which consent shall not be unreasonably withheld. Debtor
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 Debtor's rights and interest 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.
(p) Upon any executive officer of Debtor obtaining actual knowledge
thereof, Debtor will promptly notify Secured Party in writing of any event that
materially adversely affects the value of any material Collateral, the ability
of Debtor to dispose of any material Collateral or the rights and remedies of
Secured Party in relation thereto, including the levy of any legal process
against any of the Collateral.
4. Secured Party's Rights. Secured Party shall have the right, but not
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the obligation, to take, at Debtor's sole expense, any actions that Debtor is
required under this Agreement to take but which Debtor fails to take, after
fifteen (15) days' notice to Debtor. Debtor shall reimburse and indemnify
Secured Party for all reasonable costs and reasonable expenses incurred in the
reasonable exercise of its rights under this section 4.
5. Inspection Rights. Debtor hereby grants to Secured Party and its
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employees, representatives and agents the right to visit, during reasonable
hours upon prior reasonable written notice to Debtor, and any of Debtor'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 Debtor and as often as may be
reasonably requested, but not more than one (1) in every six (6) months;
provided, however, nothing herein shall entitle Secured Party access to Debtor's
trade secrets and other proprietary information.
6. Further Assurances; Attorney in Fact.
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(a) Debtor will, subject to any prior licenses, encumbrances and
restrictions and prospective licenses, 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 Trademarks Office and the Register of Copyrights, and take all such action
as may reasonably be deemed necessary or advisable, or as requested by Secured
Party, to perfect Secured Party's security interest in all Copyrights, Patents
and Trademarks and otherwise to carry out the intent and purposes of this
Agreement, or for assuring and confirming to Secured Party the grant or
perfection of a security interest in all Collateral.
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(b) Upon the occurrence and during the continuation of an Event of
Default, Debtor hereby irrevocably appoints Secured Party as Debtor's
attorney-in-fact, with full authority in the place and stead of Debtor and in
the name of Debtor, Secured Party or otherwise, from time to time in Secured
Party's good faith business judgment, upon Debtor's failure or inability to do
so, to take any action and to execute any instrument which Secured Party may
deem necessary or advisable in Secured Party's good faith business judgment to
accomplish the purposes of this Agreement, including:
(i) To modify, in Secured Party's good faith business judgment,
this Agreement without first obtaining Debtor's approval of or signature to such
modification by amending Exhibit X-0, Xxxxxxx X-0, Exhibit A-3, 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 Debtor after the
execution hereof or to delete any reference to any right, title or interest in
any Copyrights, Patents or Trademarks in which Debtor no longer has or claims
any right, title or interest; and
(ii) To file, in Secured Party's good faith business judgment, one
or more financing or continuation statements and amendments thereto, relative to
any of the Collateral without the signature of Debtor where permitted by law.
7. Events of Default. The occurrence and continuation of any of the
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following shall constitute an Event of Default under this Agreement:
(a) An Event of Default occurs and is continuing under the Loan
Agreement; or
(b) Debtor breaches any warranty or agreement made by Debtor in this
Agreement and such breach is not cured within 5 Business Days of such breach.
8. Remedies. Upon the occurrence and continuation of an Event of Default,
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Secured Party shall have the right to exercise all the remedies of a secured
party under the California Uniform Commercial Code, including without limitation
the right to require Debtor to assemble the Collateral and any tangible property
in which Secured Party has a security interest and to make it available to
Secured Party at a place designated by Secured Party. Secured Party shall have a
nonexclusive, royalty free license to use the Copyrights, Patents and Trademarks
to the extent reasonably necessary to permit Secured Party to exercise its
rights and remedies upon the occurrence and continuation of an Event of Default.
Debtor will pay any expenses (including reasonable attorney's fees) incurred by
Secured Party in connection with the exercise of any of Secured Party's rights
hereunder, including without limitation any expense incurred in disposing of the
Collateral. All of Secured Party's rights and remedies with respect to the
Collateral shall be cumulative.
9. Indemnity. Debtor agrees to defend, indemnify and hold harmless Secured
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Party 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 Secured Party as a
result of or in any way arising out of, following or consequential to
transactions between Secured Party and Debtor, whether under this Agreement or
otherwise (including without limitation, reasonable attorneys fees and
reasonable expenses), except for losses arising from or out of Secured Party's
gross negligence or willful misconduct.
10. Release. At such time as Debtor shall completely satisfy all of the
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obligations secured hereunder, Secured Party shall execute and deliver to Debtor
all lien releases and other instruments as may be reasonably necessary or proper
to terminate Secured Party's security
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interest in the Collateral, subject to any disposition of the Collateral which
may have been made by Secured Party pursuant to this Agreement. For the purpose
of this Agreement, the obligations secured hereunder shall be deemed to continue
if Debtor enters into any bankruptcy or similar proceeding at a time when any
amount paid to Secured Party could be ordered to be repaid as a preference or
pursuant to a similar theory, and shall continue until it is finally determined
that no such repayment can be ordered.
11. No Waiver. No course of dealing between Debtor and Secured Party, nor
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any failure to exercise nor any delay in exercising, on the part of Secured
Party, any right, power, or privilege under this Agreement or under the Loan
Agreement or any other agreement, shall operate as a waiver. No single or
partial exercise of any right, power, or privilege under this Agreement or under
the Loan Agreement or any other agreement by Secured Party shall preclude any
other or further exercise of such right, power, or privilege or the exercise of
any other right, power, or privilege by Secured Party.
12. Rights Are Cumulative. All of Secured Party's rights and remedies with
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respect to the Collateral whether established by this Agreement, the Loan
Agreement, or any other documents or agreements, or by law shall be cumulative
and may be exercised concurrently or in any order.
13. Course of Dealing. No course of dealing, nor any failure to exercise,
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nor any delay in exercising any right, power or privilege hereunder shall
operate as a waiver thereof.
14. Attorneys' Fees. If any action relating to this Agreement is brought by
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either party hereto against the other party, the prevailing party shall be
entitled to recover reasonable attorneys fees, costs and disbursements.
15. Amendments. This Agreement may be amended only by a written instrument
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signed by both parties hereto. To the extent that any provision of this
Agreement conflicts with any provision of the Loan Agreement, the provision
giving Secured Party greater rights or remedies shall govern, it being
understood that the purpose of this Agreement is to add to, and not detract
from, the rights granted to Secured Party under the Loan Agreement. This
Agreement, the Loan Agreement, and the documents relating thereto comprise the
entire agreement of the parties with respect to the matters addressed in this
Agreement.
16. Severability. The provisions of this Agreement are severable. If any
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provision of this Agreement is held invalid or unenforceable in whole or in part
in any jurisdiction, then such invalidity or unenforceability shall affect only
such provision, or part thereof, in such jurisdiction, and shall not in any
manner affect such provision or part thereof in any other jurisdiction, or any
other provision of this Agreement in any jurisdiction.
17. California Law and Jurisdiction. This Agreement shall be governed by
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the laws of the State of California, without regard for choice of law
provisions. Debtor and Secured Party consent to the nonexclusive jurisdiction of
any state or federal court located in Santa Xxxxx County, California.
18. Confidentiality. In handling any confidential information, Secured
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Party shall exercise the same degree of care that it exercises with respect to
its own proprietary information of the same types to maintain the
confidentiality of any non-public information thereby received or received
pursuant to this Agreement except that the disclosure of this information may be
made (i) to the affiliates of the Secured Party, (ii) to prospective transferee
or purchasers of an interest in the obligations secured hereby, provided that
they have entered into a comparable confidentiality agreement in favor of Debtor
and have delivered a copy to Debtor, (iii) as required by law, regulation, rule
or order, subpoena judicial order or similar order and (iv) as may be required
in connection with the examination, audit or similar investigation of Secured
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Party.
19. WAIVER OF RIGHT TO JURY TRIAL. SECURED PARTY AND DEBTOR EACH HEREBY
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WAIVE THE RIGHT TO TRIAL BY JURY IN ANY ACTION OR PROCEEDING BASED UPON, ARISING
OUT OF, OR IN ANY WAY RELATING TO: (I) THIS AGREEMENT; OR (II) ANY OTHER PRESENT
OR FUTURE INSTRUMENT OR AGREEMENT BETWEEN SECURED PARTY AND DEBTOR; OR (III) ANY
CONDUCT, ACTS OR OMISSIONS OF SECURED PARTY OR DEBTOR OR ANY OF THEIR DIRECTORS,
OFFICERS, EMPLOYEES, AGENTS, ATTORNEYS OR ANY OTHER PERSONS AFFILIATED WITH
SECURED PARTY OR DEBTOR; IN EACH OF THE FOREGOING CASES, WHETHER SOUNDING IN
CONTRACT OR TORT OR OTHERWISE.
[remainder of page intentionally left blank; signature page follows]
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20. Counterparts. This Agreement may be executed in two or more
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counterparts, each of which shall be deemed an original but all of which
together shall constitute the same instrument.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement on the day
and year first above written.
DEBTOR:
APPLIED IMAGING CORP.
By: /s/ Xxxxx Xxxxxxxxx
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Title: CFO
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Name (please print):
XXXXX XXXXXXXXX
--------------------------------
Address of Debtor:
0000 Xxxxx Xxxxxx
Xxxxx Xxxxx, XX 00000
SECURED PARTY:
SILICON VALLEY BANK
By: /s/ Xxxxxx Xxxxxxxxxxxxxxx
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Title: Account Manager
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Name (please print):
XXXXXX XXXXXXXXXXXXXXX
--------------------------------
Address of Secured Party:
0000 Xxxxxx Xxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
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STATE OF _________________ )
) ss.
COUNTY OF ________________ )
On _____________________, 200__, before me, __________________________
_________________________________________, Notary Public, personally appeared
_______________________________________________________________________,
personally known to me (or proved to me on the basis of satisfactory evidence)
to be the person(s) whose name(s) is/are subscribed to the within instrument and
acknowledged to me that he/she/they executed the same in his/her/their
authorized capacity(ies), and that by his/her/their signature(s) on the
instrument the person(s), or the entity upon behalf of which the person(s)
acted, executed the instrument.
Witness my hand and official seal.
___________________________
(Seal)
STATE OF __________________ )
) ss.
COUNTY OF ________________ )
On _____________________, 200__, before me, __________________________
_________________________________________, Notary Public, personally appeared
_______________________________________________________________________,
personally known to me (or proved to me on the basis of satisfactory evidence)
to be the person(s) whose name(s) is/are subscribed to the within instrument and
acknowledged to me that he/she/they executed the same in his/her/their
authorized capacity(ies), and that by his/her/their signature(s) on the
instrument the person(s), or the entity upon behalf of which the person(s)
acted, executed the instrument.
Witness my hand and official seal.
__________________________
(Seal)
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EXHIBIT "A-1"
REGISTERED COPYRIGHTS
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(including copyrights that are the subject of an application for registration)
[Table omitted]
EXHIBIT "A-2"
UNREGISTERED COPYRIGHTS
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[Table omitted]
EXHIBIT "A-3"
DESCRIPTION OF LICENSE AGREEMENTS
---------------------------------
[Table omitted]
EXHIBIT "B"
PATENTS
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(including patents that are the subject of an application for registration)
[Table omitted]
EXHIBIT "C"
TRADEMARKS
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(including trademarks that are the subject of an application for registration)
[Table omitted]
