Exhibit “D” PATENT MORTGAGE AND SECURITY AGREEMENT
Exhibit
10.9
Exhibit
“D”
THIS
PATENT MORTGAGE AND SECURITY AGREEMENT ("Security Agreement") is made as of
April 3, 2008, by and between Calypso Wireless, Inc., a Delaware corporation
("Debtor"), and Drago Daic, an individual residing in Houston, Texas (“Daic”),
and Xxxxx Xxxxxxxxxx, P.C., a Texas professional corporation (“Xxxxxxxxxx PC”
and collectively with Daic, "Secured Party").
WHEREAS,
A. Debtor
and Daic are parties to that certain Settlement Agreement dated April 2,
2008;
B. Pursuant
to the Settlement Agreement, Debtor has executed that certain Promissory Note,
dated April 2, 2008, made payable to Secured Party in the original principal
amount of ONE MILLION AND NO/100 DOLLARS ($900,000.00) (the “Promissory Note
A-1”); and
C. Pursuant
to the Settlement Agreement, Debtor has executed that certain Promissory Note,
dated April 2, 2008, made payable to Secured Party in the original principal
amount of ONE MILLION AND NO/100 DOLLARS ($350,000.00) (the “Promissory Note
A-2”); and
D. Pursuant
to the Settlement Agreement, Debtor has executed that certain Promissory Note,
dated April 2, 2008, made payable to Secured Party in the original principal
amount of ONE MILLION AND NO/100 DOLLARS ($1,000,000.00) (the “Promissory Note
A-3” and together with Promissory Note A-1 and Promissory Note A-2,
the “Promissory Notes”); and
E. Pursuant
to the Settlement Agreement, Debtor and Daic have executed that certain
Assignment Agreement With Respect to Undivided Interest in Patent, dated April
2, 2008 (the “Assignment Agreement”), pursuant to which Debtor has assigned to
Secured Party an undivided interest in the ASNAP Patent and the Xxxxxx Patents
(as defined below); and
D. To
secure Debtor’s obligations under the Settlement Agreement, including without
limitation its obligations under the Promissory Notes and Assignment Agreement,
Debtor has agreed to grant a security interest in certain patent rights owned by
Debtor commonly known as “ASNAP” and “Xxxxxx”, including, but not limited to the
ASNAP Patent and
Xxxxxx Patents (collectively the “Patent”) which are more fully described herein
below in paragraphs (i) and (ii) and shall mean as follows:
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(i)
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“ASNAP
Patents” shall mean: (1) United States Patent No. US 6,680,923 B1, U.S.
Patent Application Serial No. 11/040,482, and PCT Application No.
PCT/US01/07528 (2) all patents and applications throughout the world that
claim priority to, directly or indirectly, or from which the foregoing
claim priority, directly or indirectly; (3) all substitutions for and
divisions, continuations, continuations-in-part, renewals, reissues,
patent cooperation treaty applications, foreign applications, national
phase entries, and extensions of the foregoing patents and applications
throughout the world, and including patent applications and applications
throughout the world for like protection that have now been or may in the
future be granted on the invention disclosed in any of the foregoing
patents or applications, including without limitation, those obtained or
permissible under past, present, and future laws and statutes; and (4) all
right, title, and interest in and to any and all rights and causes of
action based on, arising out of, related to, or on account of past,
present, and future unauthorized use and/or infringement of any and all of
the foregoing, including but not limited to all past, present, and future
awards, damages, and remedies related thereto or arising
therefrom.
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(ii)
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The
“Xxxxxx Patents” shall mean: (1) United States Patents No. 6,385,306, No.
6,765,996, No. 6,839,412 and No. 7,031,439; (2) all patents and
applications throughout the world that claim priority to (directly or
indirectly) the foregoing, or from which the foregoing claim priority
(directly or indirectly); (3) all substitutions for and divisions,
continuations, continuations-in-part, renewals, reissues, patent
cooperation treaty applications, foreign applications, national phase
entries, and extensions of the foregoing patents and applications
throughout the world, and including patent applications and applications
throughout the world for like protection that have now been or may in the
future be granted on the invention disclosed in any of the foregoing
patents or applications, including without limitation, those obtained or
permissible under past, present, and future laws and statutes; and (4) all
right, title, and interest in and to any and all rights and causes of
action based on, arising out of, related to, or on account of past,
present, and future unauthorized use and/or infringement of the any and
all of the foregoing, including but not limited to all past, present, and
future awards, damages, and remedies related thereto or arising
therefrom.
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NOW, THEREFORE, the parties
hereto agree as follows:
1. COLLATERAL ASSIGNMENT, PATENT
MORTGAGE AND GRANT OF SECURITY INTEREST. As collateral
security for the prompt and complete payment and performance of all of Debtor's
present or future indebtedness, obligations and liabilities to Secured Party,
including, without limitation, its obligations under the Settlement Agreement,
Promissory Notes and Assignment Agreement (collectively, the “Indebtedness”),
Debtor hereby grants a security interest, lien upon and mortgage to Secured
Party, as collateral security, in and to Debtor's entire right, title and
interest in, to and under the following (the “Collateral”):
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(a)
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the
ASNAP Patent and the Xxxxxx Patents;
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(b)
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Any
and all income, royalties, damages, claims, and payments now and hereafter
due and payable on account of the ASNAP Patent and the Xxxxxx Patents,
including, without limitation, all claims for damages and payments by way
of past, present and future infringement, misappropriation, or dilution of
any of the rights arising from the ASNAP Patent and the Xxxxxx Patents;
and
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(c)
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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.
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2. COVENANTS AND
WARRANTIES. Debtor represents, warrants to, and covenants and
agrees with Secured Party, as follows:
(a) Except
as set forth in the Assignment Agreement or in this Security Agreement, Debtor
is and will continue to be the sole and exclusive owner of the entire legal and
beneficial right, title and interest in and to the ASNAP Patent and the Xxxxxx
Patents, free and clear of any lien, charge, security interest or other
encumbrance, except for the security interest and assignment created by this
Security Agreement and the Assignment Agreement. Debtor will defend
its right, title and interests in and to the ASNAP Patent, the Xxxxxx Patents
and the Collateral against claims of any third parties;
(b) Performance
of this Security Agreement does not conflict with or result in a breach of any
agreement to which Debtor is a party or by which Debtor is bound;
(c) Debtor
shall take any and all such actions (including but not limited to institution
and maintenance of suits, proceedings or actions) as are necessary and
appropriate to properly maintain, protect, preserve, care for and enforce the
ASNAP Patent, the Xxxxxx Patents and the Collateral. However, Debtor
shall not be required to incur costs or take other actions when, in the exercise
of its reasonable business judgment, such costs or other actions would not be
advisable. Without limiting the generality of the foregoing, Debtor
shall pay when due such fees, taxes and other expenses which shall be incurred,
which shall accrue, and/or which shall come due with respect to any of
the Collateral, including but not limited to all prosecution,
maintenance, and annuity fees related to the ASNAP Patent or the Xxxxxx
Patents. Debtor shall not abandon or dedicate to the public any of
the ASNAP Patent or Xxxxxx Patents or related patent rights, nor do any act nor
omit to do any act if such act or omission is of a character that tends to cause
or contribute to the abandonment or dedication to the public of the ASNAP
Patent or Xxxxxx Patents or related patent right or loss of or
adverse effect on any rights in the ASNAP Patent or Xxxxxx Patents or related
patent right;
(d) Debtor
shall in the future use statutory and other appropriate symbols, notices or
legends of the ASNAP Patent or Xxxxxx Patents pending or issued consistent with
notice practice;
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(e) Debtor
shall do all things which are necessary and appropriate to insure that each
licensee of any portion of the ASNAP Patent or Xxxxxx Patents, in its use of any
or all of the Collateral in its business, shall: (a)
comply fully with all applicable license agreements; and (b) satisfy and perform
all the same obligations set forth herein (with respect to Debtor’s use of
the Collateral) as fully as though such obligations were set forth
with respect to such licensee’s use of the licensed Collateral;
(f) To
the knowledge of Debtor, there is at present no infringement or unauthorized or
improper use of the ASNAP Patent or Xxxxxx Patents or the patent rights related
thereto. In the event any such infringement or unauthorized or
improper use by any third party has been made and/or reasonably established by
Debtor, Debtor shall promptly notify Secured Party and Debtor shall take action
against such infringement or unauthorized or improper use. However,
Debtor shall not be required to incur costs or take other actions when, in the
exercise of its reasonable business judgment, such costs or other actions would
not be advisable;
(g) Debtor
hereby authorizes Secured Party to cause this Security Agreement to be recorded
with the United States Patent and Trademark Office and appropriate state
agencies;
(h) During
the term of this Security Agreement, Debtor will not sell, transfer, assign or
otherwise encumber any interest in the Collateral, except (i) licenses or other
assignments granted by Debtor in the ordinary and normal course of its business
or as set forth in this Security Agreement or that do not, in the aggregate,
impair the Collateral and, provided, further, that any such licenses or other
assignments are made in a manner permitted by the Assignment Agreement, and (ii)
subject to Debtor's execution of appropriate documents, in form acceptable to
Secured Party, to perfect or continue the perfection of Secured Party’s interest
in the Collateral as well as any other interest held by Secured Party, transfers
to Affiliates (as defined in the Assignment Agreement) of Debtor;
and
(i) 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.
For purposes of this subsection, Debtor's entering into license or assignment
agreements in the ordinary course of business shall not be deemed to materially
impair or conflict with Debtor's obligations hereunder, provided the foregoing
is entered into in a manner permitted by the Assignment Agreement.
3. SECURED PARTY'S
RIGHTS. Secured Party shall have the right, but not the
obligation, to take, at Debtor's sole expense, any actions that Debtor is
required under this Security 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 provision.
4. INSPECTION
RIGHTS. Debtor hereby grants to Secured Party and its
employees, representatives and agents the right to visit, during reasonable
hours upon prior reasonable and no less than three business days advance written
notice to Debtor, any of Debtor's plants and facilities that manufacture,
install or store products (or that have done so during the prior six-month
period) utilizing, in whole or in part, any of the ASNAP Collateral or Xxxxxx
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.
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5. FURTHER ASSURANCES; ATTORNEY IN
FACT.
(a) On
a continuing basis for the purpose of perfecting and maintaining the perfection
of Secured Party's security interest in the Collateral, Debtor 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 take all such action as
may reasonably be necessary or advisable, or as reasonably requested by Secured
Party, which Secured Party reasonably identifies as material to the operation of
Debtor's business on an on-going basis or the value of the Collateral, and
otherwise to carry out the intent and purposes of this Security Agreement, or
for assuring and confirming to Secured Party the grant or perfection of a
security interest in the Collateral.
(b) 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, from
time to time in Secured Party’s discretion, to take any action and to execute
any instrument which Secured Party may reasonably deem necessary or advisable to
accomplish the purposes of this Security Agreement, including (i) to file, in
its reasonable discretion, one or more financing or continuation statements and
amendments thereto, relative to the Collateral without the signature of Debtor
where permitted by law and (ii) to transfer the Collateral into the name of
Secured Party or a third party to the extent permitted under the UCC provided
that Secured Party agrees that it shall not exercise its powers as
attorney-in-fact under this Section except upon the occurrence and during the
continuation of an Event of Default (as hereinafter defined).
6. EVENTS OF
DEFAULT. The occurrence of any of the following shall
constitute an "Event of Default" under this Security Agreement:
(a) Debtor
breaches any warranty or agreement made by Debtor in this Security Agreement or
breaches any other provision of this Security Agreement and, as to any breach
that is capable of immediate cure, Debtor fails to cure such breach within
thirty (20) days after written notice of such breach is given to Debtor (it
being understood and agreed that no such notice and opportunity to cure shall be
provided with respect to any breach that is not capable of immediate
cure);
(b) Debtor
fails to pay the Promissory Note when same (or any portion thereof) becomes due
and owing; and
(c) Debtor
fails to make any payments due under the terms of the Assignment Agreement or
any other agreement (other than the Promissory Note) executed pursuant to the
terms of the Settlement Agreement and fails to cure such monetary default within
ten (10) days from the date of written notice of same, or if Debtor breaches any
non-monetary provision of the Assignment Agreement or any other agreement
executed pursuant to the terms of the Settlement Agreement and fails to (i) cure
such monetary default within twenty (20) days from the date of the written
notice of same or (ii) if such non-monetary default is not of the nature than
can reasonably be cured within twenty (20) days and promptly commences to cure
the default within twenty (20) days and promptly completes such cure
thereafter.
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7. REMEDIES. Upon the
occurrence and during the continuance of an Event of Default:
(a) Secured
Party shall have the right to exercise all the remedies of a secured party under
the UCC, 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 or
other right, solely pursuant to the provisions of this Section, to use, without
charge, the Collateral, to the extent reasonably necessary to permit Secured
Party to exercise its rights and remedies pursuant to this Section, including,
without limitation, the completion of production, advertising for sale and the
sale of the Collateral and, in connection with Secured Party's exercise of its
rights hereunder, Debtor's rights under all licenses and all franchise
agreements which constitute Collateral shall inure to the benefit of
Secured Party. Debtor will pay any expenses (including reasonable
attorneys' 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.
(b) Secured
Party may notify any obligors with respect to the Collateral of Secured Party’s
security interest and that such obligors are to make payments directly to
Secured Party. Secured Party may send this notice in Debtor’s name or
in Secured Party’s name, and, at Secured Party’s request, Debtor will join in
Secured Party’s notice, provide written confirmation of Secured Party’s security
interest and request that payment be sent to Secured Party. Secured
Party may enforce this obligation by specific performance. Secured
Party may collect all amounts due from such obligors. Upon and after
notification by Secured Party to Debtor, Debtor shall hold any proceeds and
collections of any of the Collateral in trust for Secured Party and shall not
commingle such proceeds or collections with any other of Debtor’s funds, and
Debtor shall deliver all such proceeds to Secured Party immediately upon
Debtor’s receipt thereof in the identical form received and duly endorsed or
assigned to Secured Party.
(c) Secured
Party will give to Debtor reasonable notice of the time and place of any public
sale of Collateral, or part thereof, or of the time after which any private sale
or other intended disposition thereof is to be made. Such requirement
of reasonable notice shall be met if such notice is delivered to the address of
Debtor set forth in this Security Agreement at least fifteen (15) calendar days
before the time of the proposed sale or disposition. Any such sale
may take place from Debtor’s location or such other location as Secured Party
may designate. Debtor shall remain liable for any deficiency in
payment of the Indebtedness after any such sale.
(d) Nothing
herein shall be construed as obligating Secured Party to take any of the
foregoing actions at any time.
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8. LICENSE AGREEMENT OBLIGATIONS;
LIABILITY FOR USES OF PATENT COLLATERAL. Nothing in this
Agreement shall relieve Debtor from any performance, in accordance with this
Agreement, of any covenant, agreement or obligation of Debtor under any license
agreement now or hereafter in effect licensing any part of the Collateral, or
from any liability to any licensee or licensor under any such license agreement
or to any other party, or shall impose any liability on Secured Party for any
act or omission of Debtor in connection with any such license
agreement. Debtor shall be liable for any and all uses or misuses of
and the practice, manufacture, sales (or other transfers or dispositions) of any
of the Collateral by Debtor and its Affiliates. Debtor shall also be
exclusively liable for any claim, suit, loss, damage, expense or liability
arising out of or in connection with the fault, negligence, acts or omissions of
Debtor (regardless of whether such fault, negligence, acts or omissions occurred
or occur prior to or after such license termination).
9. INDEMNIFICATION. Debtor
shall indemnify and hold harmless Secured Party from and against, and shall pay
to Secured Party on demand, any and all claims, actions, suits, judgments,
penalties, losses, damages, costs, disbursements, expenses, obligations or
liabilities of any kind or nature (except those resulting from Secured Party’s
action or inaction in the form of gross negligence or willful misconduct)
arising in any way out of or in connection with the custody, preservation, use,
practice, operation, sale, license (or other transfer or disposition) of the
Collateral, any alleged infringement of the intellectual property rights of any
third party, the production, marketing, provision, delivery and sale of the
goods and services provided under or in connection with or using or practicing
any of the ASNAP Patent, the Xxxxxx Patents or the Collateral, the sale of,
collection from or other realization upon any of the Collateral, the failure of
Debtor to perform or observe any of the provisions hereof, or matters relating
to any of the foregoing. Debtor shall make no claim against Secured
Party for or in connection with the exercise or enforcement by Secured Party of
any right or remedy granted to it hereunder, or any action taken or omitted to
be taken by Secured Party hereunder (except for the gross negligence or willful
misconduct of Secured Party).
10. NOTICES. Any
notices or other communications required or permitted under, or otherwise in
connection with this Security Agreement, shall be in writing and shall be deemed
to have been duly given (i) when delivered in person; (ii) upon confirmation of
receipt when transmitted by facsimile transmission (but only if followed by
transmittal by national overnight courier or hand delivery on the next Business
Day; (iii) three (three) days following deposit in a regularly maintained
receptacle for the United States mail, registered or certified, postage fully
prepaid; or (iv) on the next Business Day if transmitted by national overnight
courier, in each case to the address set forth below or at such other address as
such party may have previously specified by notice provided in accordance
herewith:
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If to Debtor,
to:
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Calypso
Wireless, Inc.
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0000
XX 00xx
Xxxxxx, Xxxxx 000
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Xxxxx,
Xxxxxxx 00000
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Attention:
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Facsimile
No.
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7
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with a copy to:
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Zimmerman,
Axelrad, Xxxxx, Xxxxx & Xxxx, P.C.
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0000
Xxxx Xxx Xxxxxxxxx, Xxxxx 0000
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Xxxxxxx,
Xxxxx 00000-0000
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Attn: Xxxxx
Xxxxxxxxx
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Facsimile
No. (000)000-0000
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If to Secured Party,
to:
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Drago
Daic
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xx
xxxx xxxxxxxx xxxxx
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xxxxxx
xxxxx xxxxxx
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xxxxxxxxx
xx xxxxxxxxxx
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and
to:
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Xxxxx
Xxxxxxxxxx, P.C.
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0000
Xxxxxx Xxxxxxxxx
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Xxxxxxx,
Xxxxx 00000
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Facsimile
No. (000)000-0000
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with a copy
to:
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Xxxxx
& Xxxxxx, P.C.
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0000
Xxx Xxxxxx, Xxxxx 0000
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Xxxxxxx,
Xxxxx 00000
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Attention: Xxxx
X. Xxxxxx
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Facsimile
No.: (000) 000-0000
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11. SUCCESSORS AND
ASSIGNS. This Security Agreement and all obligations of Debtor
hereunder shall be binding upon the successors and assigns of Debtor, and shall,
together with the rights and remedies of Secured Party hereunder, inure to the
benefit of Secured Party and their successors and assigns.
12. REASSIGNMENT. At
such time as Debtor shall completely satisfy all of the obligations secured
hereunder, Secured Party shall execute and deliver to Debtor all deeds,
assignments and other instruments as may be necessary or proper to revest in
Debtor full title to the property assigned hereunder, subject to any disposition
thereof which may have been made by Secured Party pursuant hereto.
13. NO WAIVER. No
failure or delay on the part of Secured Party, in the exercise of any power,
right or privilege hereunder shall operate as a waiver thereof, nor shall any
single or partial exercise thereof.
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14. ATTORNEYS' FEES. If
any action relating to this Security Agreement is brought by either party hereto
against the other party, the prevailing party shall be entitled to recover
reasonable attorneys' fees, costs and disbursements.
15. AMENDMENTS. Except
as otherwise provided herein, this Security Agreement may be amended only by a
written instrument signed by both parties hereto.
16. COUNTERPARTS. This
Security Agreement may be executed in any number of counterparts, each of which
when so delivered shall be deemed an original, but all such counterparts shall
constitute but one and the same instrument. Each such Security Agreement shall
become effective upon the execution of a counterpart hereof or thereof by each
of the parties hereto and telephonic notification that such executed
counterparts has been received by Debtor and Secured Party.
17. GOVERNING LAW; JURISDICTION; JURY
WAIVER. This Security Agreement shall be governed by, and
construed in accordance with, the internal laws of the State of Texas, without
regard to principles of conflicts of law. Debtor and Lender consent to the
exclusive jurisdiction of any state or federal court located in Xxxxxx County,
Texas.
18. SEVERABILITY. In
the event any term or provision of this Security Agreement shall for any reason
be held to be invalid, illegal or unenforceable to any extent or in any respect,
or otherwise determined to be of no effect, in any jurisdiction, such
invalidity, illegality, unenforceability or determination shall affect only such
term or provision, or part thereof, in only such jurisdiction. The
parties agree they will negotiate in good faith to replace any provision so held
invalid, illegal or unenforceable, or so determined, with a valid, enforceable
and effective provision which is as similar as possible in substance and effect
to the provision which is invalid, illegal, unenforceable or of no
effect.
[REMAINDER
PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the
parties hereto have executed this Security Agreement on the day and year first
above written.
DEBTOR:
CALYPSO
WIRELESS, INC.
By: /s/
Xxxxxx X.
Xxxxxx
Name: Xxxxxx
X.
Xxxxxx
Title: CFO
&
Director
Date: April
4,
2008
SECURED
PARTY:
/s/
Drago
Daic
DRAGO DAIC
DRAGO DAIC
Date: April
2,
2008
XXXXX
XXXXXXXXXX, P.C.
By: /s/
Xxxxx
Xxxxxxxxxx
Xxxxx Xxxxxxxxxx,
President
Date: April
8,
2008
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