Exhibit 10.5
PATENT SECURITY AGREEMENT
THIS PATENT SECURITY AGREEMENT, dated as of August 29, 2003
(this "AGREEMENT"), between DIOMED, INC., a Delaware corporation (the
"GRANTOR"), and GIBRALT US, INC., a Colorado corporation, as agent (in such
capacity, the "DESIGNATED NOTE INVESTOR") for the Secured Parties (such
capitalized term and all other capitalized terms not otherwise defined herein to
have the meanings provided for in the Security Agreement referred to below).
W I T N E S S E T H:
WHEREAS, pursuant to a Security Agreement dated as of the date
hereof (as such agreement may be amended, amended and restated, supplemented or
otherwise modified from time to time, the "SECURITY AGREEMENT"), between the
Grantor and the Designated Note Investor and in order to obtain the benefits
referred to therein, the Grantor has granted to the Designated Note Investor a
security interest in substantially all of the Grantor's property, including,
without limitation, the Collateral referred to in SECTION 1 below; and
WHEREAS, pursuant to the Security Agreement, the Grantor has
agreed to execute this Agreement in respect of its Collateral for recording with
the U.S. Patent and Trademark Office and any other office in which a security
interest in the Collateral may be recorded under the laws of any other
applicable jurisdiction;
NOW, THEREFORE, in consideration of the premises and the
mutual covenants and agreements hereinafter set forth, the Grantor and the
Designated Note Investor agree as follows:
1.1 GRANT OF SECURITY. The Grantor hereby grants to the Designated Note
Investor for the benefit of the Secured Parties a security interest in and to
all of such Grantor's right, title and interest in and to the following (the
"COLLATERAL"):
(a) the United States, international, and foreign patents,
patent applications and patent licenses set forth in SCHEDULE A hereto opposite
the name of such Grantor, as SCHEDULE A may be supplemented from time to time by
supplements to the Security Agreement and this Agreement which may be executed
and delivered by such Grantor to the Administrative Agent from time to time,
together with all reissues, divisions, continuations, continuations-in-part,
extensions and reexaminations thereof, and all rights therein provided by
international treaties or conventions (the "PATENTS");
(b) any and all claims for damages for past, present and
future infringement, misappropriation or breach with respect to the Patents,
with the right, but not the obligation, to xxx for and collect, or otherwise
recover, such damages; and
(c) any and all Proceeds of the foregoing.
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1.2 SECURITY FOR OBLIGATIONS. The pledge and collateral assignment of,
and the grant of a security interest in, the Collateral by the Grantor under
this Agreement secures the payment of all Secured Obligations of the Grantor now
or hereafter existing, whether direct or indirect, absolute or contingent, and
whether for principal, reimbursement obligations, interest, premiums, penalties,
fees, indemnifications, contract causes of action, costs, expenses or otherwise.
1.3 RECORDATION. The Grantor authorizes and requests that the
Commissioner of Patents and Trademarks and any other applicable government
officer record this Agreement.
1.4 EXECUTION IN COUNTERPARTS. This Agreement may be executed in any
number of counterparts, each of which when so executed shall be deemed to be an
original and all of which taken together shall constitute one and the same
agreement.
1.5 GRANTS, RIGHTS AND REMEDIES. This Agreement has been entered into
in conjunction with the provisions of the Security Agreement. The Grantor does
hereby acknowledge and confirm that the grant of the security interest hereunder
to, and the rights and remedies of, the Designated Note Investor with respect to
the Collateral are more fully set forth in the Security Agreement, the terms and
provisions of which are incorporated herein by reference as if fully set forth
herein.
1.6 GOVERNING LAW. This Agreement shall be governed by, and construed
in accordance with, the laws of the State of New York.
[Signatures follow.]
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement by
their duly authorized officers as of the day and year first above written.
DIOMED, INC.
("GRANTOR")
By: /s/ XXXXX X. XXXXX, XX.
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Name: Xxxxx X. Xxxxx, Xx.
Title: Chief Executive Officer
GIBRALT US, INC.,
as Designated Note Investor
("DESIGNATED NOTE INVESTOR")
By: /s/ XXXXXX XXXXXX
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Name: Xxxxxx Xxxxxx
Title: Authorized Officer
SCHEDULE A
Endovascular Laser Device and Treatment of Varicose Veins (EVLT)
"A method for treating blood vessels using endovascular techniques to
deliver laser energy."
Assigned to Diomed, Inc. by Xxxxxx X. Min, M.D., one of five named inventors,
pursuant to Purchase Agreement dated July 23, 2003.
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Country Number
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USA 6,398,777
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WO 200044296
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AU 200029753
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EP 1156751
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PCT US0002187 (applied 8/13/99)
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EP 00908406 (applied 11/8/00)
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XX 0000000 (applied 8/27/01)
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