INTELLECTUAL PROPERTY SECURITY AGREEMENT
EXHIBIT
10.6
This
INTELLECTUAL PROPERTY SECURITY AGREEMENT (this “Agreement”), dated as
of May 14, 2008, is made by LIFELINE CELL TECHNOLOGY, LLC,
a California limited liability company (the “Grantor”), in favor
of GEMINI STRATEGIES,
LLC, as collateral agent (“Agent”) for the
holder of the OID Senior Secured Convertible Note issued or to be issued in the
original aggregate principal amount of up to $1,000,000 (the “Note”) by
International Stem Cell Corporation, a Delaware corporation (“Company”), pursuant
to the Purchase Agreement (as defined below) (collectively, together with their
endorsees, transferees and assigns, the “Lenders”).
W I T N E
S S E T H:
WHEREAS,
the Company and the Lenders are party to that certain Securities Purchase
Agreement, dated on or about on or about the date hereof (“Purchase Agreement”),
pursuant to which the Company issued or is issuing the Note, among other
things;
WHEREAS,
the Grantor is a wholly-owned subsidiary of the Company and will benefit from
the issuance of the Note pursuant to the Purchase Agreement;
WHEREAS,
pursuant to that certain Subsidiary Guarantee, dated as of the date hereof
(“Guarantee”),
the Grantor has agreed to guarantee and act
as surety for payment of the Note;
WHEREAS,
contemporaneously herewith the Grantor and the Company are entering into a
Security Agreement (“Security Agreement”),
pursuant to which the Grantor has granted a security interest in its assets and
properties to secure the satisfaction of the Company’s obligations under the
Note and the Grantor’s obligations under the Guarantee, among other things;
and
WHEREAS,
the Grantor is obligated under the Security Agreement to take such further
actions as the collateral Agent requests to further perfect the Lenders’
security interest granted under the Security Agreement, including without
limitation with respect to intellectual property;
NOW,
THEREFORE, in consideration of the premises and mutual covenants herein
contained and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, Grantor hereby agrees as
follows:
DEFINED
TERMS.
(a) Certain Defined
Terms. As used in this Agreement, the following terms shall
have the meanings set forth below:
“Patents”
means patents and patent applications, including without limitation the patents
and patent applications listed on Schedule I hereto and
all continuations, divisionals, provisionals, continuations in part, or reissues
of applications related to patents thereon, and (i) all renewals thereof, (ii)
all income, royalties, damages and payments now and hereafter due and/or payable
under and with respect thereto, subject to payment to any co-owner or inventor
of its, his or her share thereof, including without limitation payments under
all licenses entered into in connection therewith and damages and payments for
past or future infringements or dilutions thereof, (iii) the right to xxx for
past, present and future infringements thereof, and (iv) all of the Grantor’s
rights corresponding thereto throughout the world.
(b) Terms Defined in the
Purchase Agreement. Capitalized terms used in this Agreement
and not otherwise defined herein have the meanings ascribed to them in the
Purchase Agreement.
2. GRANT OF SECURITY INTEREST
IN INTELLECTUAL PROPERTY COLLATERAL. Grantor hereby grants to
the Agent, as collateral agent for the Lenders, a continuing and perfected first
priority security interest (as set forth in the Security Agreement) in all of
Grantor’s right, title and interest in, to and under all of Grantor’s Patents,
whether presently existing or hereafter created or acquired (collectively, the
“Intellectual Property
Collateral”), including without limitation those patents referred to on
Schedule I
hereto and including:
(a) all
registrations and applications in respect of the foregoing, including
continuations, divisionals, provisionals, continuations in part, or reissues of
applications and patents issuing thereon; and
(b) all products and proceeds of the
foregoing, including without limitation any claim by Grantor against third
parties for past, present or future infringement of any
Patent.
3. SECURITY
AGREEMENT. The security interests granted pursuant to this
Agreement are granted in conjunction with the security interests granted to
Lenders pursuant to the Security Agreement. Grantor hereby
acknowledges and affirms that the rights and remedies of Lenders with respect to
the security interest in the Intellectual Property Collateral made and granted
hereby are more fully set forth in the Security Agreement, the terms and
provisions of which are incorporated by reference herein as if fully set forth
herein.
4. AUTHORIZATION TO
SUPPLEMENT. If Grantor shall obtain rights to any new
Intellectual Property (as defined in the Security Agreement), the provisions of
this Agreement shall automatically apply thereto. Grantor shall give
Lenders prompt written notice with respect to any such new Intellectual
Property. Grantor represents that Schedule I is
substantially accurate and complete but reserves the right from time to time to
correct inaccuracies and/or omissions by giving Lenders written notice
thereof. Without limiting Grantor’s obligations under this Section 4, Grantor
hereby authorizes the Agent and Lenders unilaterally to modify this Agreement by
amending Schedule
I to include any such corrections and other modifications and any such
new Intellectual Property of Grantor. Notwithstanding the foregoing,
no failure to so modify this Agreement or amend Schedule I shall in
any way affect, invalidate or detract from Lenders’ continuing security interest
in all Intellectual Property Collateral, whether or not listed on Schedule
I.
5. COUNTERPARTS. This
Agreement may be executed in any number of counterparts, each of which shall be
deemed to be an original, but all such separate counterparts shall together
constitute but one and the same instrument. In proving this Agreement
in any judicial proceedings, it shall not be necessary to produce or account for
more than one such counterpart signed by the party against whom enforcement is
sought. Any signatures delivered by a party by facsimile transmission
or by e-mail transmission shall be deemed an original signature
hereto.
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6. GOVERNING LAW;
JURISDICTION. This Agreement shall be governed by and
construed under the laws of the State of California applicable to contracts made
and to be performed entirely within the State of California. Each
party hereby irrevocably submits to the exclusive jurisdiction of the state and
federal courts sitting in San Diego County, California for the adjudication of
any dispute hereunder or in connection herewith or with any transaction
contemplated hereby and hereby irrevocably waives, and agrees not to assert in
any suit, action or proceeding, any claim that it is not personally subject to
the jurisdiction of any such court, that such suit, action or proceeding is
brought in an inconvenient forum or that the venue of such suit, action or
proceeding is improper. Each party hereby irrevocably waives personal
service of process and consents to process being served in any such suit, action
or proceeding by mailing a copy thereof to such party at the address in effect
for notices to it under this Agreement and agrees that such service shall
constitute good and sufficient service of process and notice
thereof. Nothing contained herein shall be deemed to limit in any way
any right to serve process in any manner permitted by law.
7. SUCCESSORS AND
ASSIGNS. The terms and conditions of this Agreement shall
inure to the benefit of and be binding upon the respective successors and
permitted assigns of the parties. Nothing in this Agreement, express
or implied, is intended to confer upon any party other than the parties hereto
or their respective successors and permitted assigns any rights, remedies,
obligations or liabilities under or by reason of this Agreement, except as
expressly provided in this Agreement. A Lender may assign its rights
hereunder in connection with any private sale or transfer of its Note, in which
case the term “Lender” shall be deemed to refer to such transferee as though
such transferee were an original signatory hereto. Grantor may not
assign its rights or obligations under this Agreement.
[Signature Pages
Follow]
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IN
WITNESS WHEREOF, the Grantor has caused this Intellectual Property Security
Agreement to be executed and delivered by its duly authorized officer as of the
date first set forth above.
|
LIFELINE
CELL TECHNOLOGY, LLC
By: /s/ Xxxxxxx X.
Xxxxxxx
Name: Xxxxxxx
X. Xxxxxxx
Title: Managing
Member
|
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SCHEDULE
I
to
|
Alternative
ID
|
Short
Title
|
Country
|
Status
|
Application
No
|
Application
Date
|
Inventors
|
|
ISCC1110/US/3
|
Parthenogenic
Activation of Human Oocytes for the production of human embryonic stem
cells
|
United
States of America
|
Pending
|
11/505,260
|
Aug-15-2006
|
Revazova
Xxxxx, Pryzhkova Xxxxxx X., Xxxxxxxxx Xxxxxx N., Xxxxx
Xxxxxxx
|
|
ISCC1120/US/1
|
Cell
Culture Medium Container Assembly
|
United
States of America
|
Pending
|
11/634,448
|
Dec-05-2006
|
Xxxxx
Xxxxxxx
|
|
ISCC1120/WO/1
|
Cell
Culture Medium Container Assembly
|
PCT
|
Pending
|
PCT/US2006/046607
|
Dec-05-2006
|
Xxxxx
Xxxxxxx
|
|
ISCC1130/WO/1
|
Synthetic
Lens from Retinal Stem Cells
|
PCT
|
Pending
|
PCT/US2006/41134
|
Oct-19-2006
|
Xxxxxxxx-Xxxxxxxxx
Xxxx, Xxxxx Xxxxxxx, Xxxxxxx Xxxxxx
|
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