FIRST AMENDMENT TO LICENSE AGREEMENT
THIS FIRST AMENDMENT TO LICENSE AGREEMENT (the "First Amendment") is
made and entered into as of March 1, 2001 by and between Oryx Technology Corp.,
a Delaware corporation ("Oryx") and Oryx Advanced Materials, Inc., a California
corporation ("Licensee").
WHEREAS, Oryx and Licensee have entered into that certain License
Agreement dated as of June 1, 1999 (the "Agreement").
WHEREAS, Oryx and Licensee desire to amend the Agreement as set forth
in this First Amendment.
NOW, THEREFORE, the parties, intending to be legally bound, agree as
follows:
1. Amendment to Section 3(e). Section 3(e) is hereby amended in its
entirety to read as follows:
"(e) Upon payment by Licensee to Oryx of (i) a one-time termination
payment of One Hundred Thousand Dollars ($100,000) and (ii) accrued royalties
through November 30, 2000 of One Hundred Twenty Thousand Dollars ($120,000) to
be evidenced by a secured subordinated promissory note in substantially the form
attached hereto as Exhibit A (the "Note"), Licensee's payment obligations shall
be amended such that Licensee's sole royalty obligation to Oryx under this
Agreement shall be a two and one half percent royalty (2.5%) in perpetuity on
gross sales revenue of the Intragene business of Licensee, commencing as of
December 1, 2000. Such royalty shall be payable quarterly in arrears on each
July 15, October 15, January 15, and April 15. The audit rights set forth in
Section 3(d) of the Agreement shall apply to such royalty payments.
Notwithstanding the foregoing, upon any Event of Default (as defined in the
Note), the preceding amendment to subsection (e) shall be null and void and the
royalty obligations of Licensee, as set forth in the Agreement shall be
reinstated in their entirety."
2. Counterparts. This First Amendment may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
3. Complete Agreement. The Agreement and this First Amendment
constitute the entire agreement of the parties with respect to the subject
matter thereof and hereof and supercede all prior agreements of the parties and
all representations, warranties, undertakings and understandings, whether
written or verbal, made with respect to the same subject matter. The Agreement
and this First Amendment may not be changed or modified in any manner, orally or
otherwise, except in writing, in the form of an amendment, duly executed by each
of the parties hereto.
4. Governing Law; Authority. This First Amendment shall be governed by
and construed under the laws of the State of California applied to agreements
among California residents entered into and to be performed entirely within
California.
1
IN WITNESS WHEREOF, the parties hereto have caused this First Amendment
to be executed by their duly authorized representatives as of the day and year
first written above.
ORYX TECHNOLOGY CORP.
By: /s/ Xxxxx Xxxxxxxxx
-----------------------------
Name: Xxxxx Xxxxxxxxx
---------------------------
Title: CFO
--------------------------
ORYX ADVANCED MATERIALS, INC.
By: /s/ Xxxxxx Xxx
-----------------------------
Name: Xxxxxx Xxx
---------------------------
Title: President
--------------------------
2
EXHIBIT A
Secured Subordinated Promissory Note
SECURED SUBORDINATED PROMISSORY NOTE
Fremont, California
$120,000.00 March 1, 2001
This Secured Subordinated Promissory Note (this "Note") is made and
delivered pursuant to that certain First Amendment to License Agreement dated as
of March 1, 2001 (the "First Amendment") between Oryx Advanced Materials, Inc.,
a California corporation ("Debtor") and Oryx Technology Corp., a Delaware
corporation ("Oryx").
1. Obligation. The undersigned Debtor hereby promises to pay to the
order of Oryx Technology Corp. (or any successor-in-interest or assignee
thereof) at Oryx's principal place of business at 0000 Xxxxxx Xxxxxx, Xxxxxxx,
Xxxxxxxxxx 00000, or at such other place as Oryx may direct, the principal sum
of One Hundred Twenty Thousand Dollars ($120,000) and all accrued interest
thereon. Debtor shall pay to Oryx principal in monthly installments of Ten
Thousand Dollars ($10,000) together with all interest accrued thereon at a rate
of eight percent (8%) per annum commencing on April 1, 2001, 2001 and on the
first business day of each month thereafter until all principal and accrued
interest under this Note has been paid in full.
2. Prepayment. Prepayment of unpaid principal and/or interest due under
this Note may be made at any time without penalty. Unless otherwise agreed in
writing by Oryx, all payments will be made in lawful tender of the United States
and will be applied (a) first, to the payment of accrued interest, and (b)
second, (to the extent that the amount of such prepayment exceeds the amount of
all such accrued interest), to the payment of principal.
3. Security. As security for the due performance and payment of the
obligations under this Note, Debtor hereby grants to Oryx a security interest in
any and all of Debtor's assets, properties, goods, inventory, equipment,
furniture, fixtures, leases, supplies, records, money, documents, instruments,
chattel paper, accounts and intellectual property rights (including but not
limited to, copyrights, moral rights, patents, patent applications, mask works,
trademarks, service marks, trade names, trade secrets and other general
intangibles, whether owned by Debtor on the date of this Note or hereafter
acquired, and all proceeds and thereof (collectively, the "Collateral"). So long
as Debtor is indebted to Oryx under the Note, Debtor will promptly execute and
deliver to Oryx such assignments, notices, financing statements, or other
documents and papers (including, but not limited to, such documents as may be
filed with the U.S. Register of Copyrights and the U.S. Patent and Trademark
Office in order to perfect Oryx's rights in the Collateral) as Oryx may require
in order to perfect and maintain the security interest in the Collateral and to
give any third party notice of Oryx's interest in such Collateral. Debtor will
pay to Oryx all reasonable expenses incurred by Oryx in filing such assignments,
notices, financing statements or other documents or papers (and any continuation
statements or amendments thereto). Upon the full and final discharge of all of
Debtor's obligations under this Note, Oryx will execute and deliver such
documents as may be reasonably necessary and requested by Debtor to release the
Collateral from the security interested granted to Oryx hereunder.
1
4. Default; Acceleration of Obligation. Debtor will be deemed to be in
default under this Note and the outstanding unpaid principal balance of this
Note, together with all interest accrued thereon, will immediately become due
and payable in full, without the need for any further action on the part of
Oryx, upon the occurrence of any of the following (each, an "Event of Default"):
(i) failure to pay any installment of principal or interest under this Note when
due and such default is not cured within thirty (30) days of the occurrence
thereof; (ii) upon the filing by or against Debtor of any voluntary or
involuntary petition in bankruptcy or any petition for relief under the federal
bankruptcy code or any other state or federal law for the relief of debtors;
provided, however, with respect to an involuntary petition in bankruptcy, such
petition has not been dismissed within thirty (30) days after the filing of such
petition; (iii) upon the execution by Debtor of an assignment for the benefit of
creditors or the appointment of a receiver, custodian, trustee or similar party
to take possession of Debtor's assets or property; or (iii) upon any breach,
default or violation by Debtor of any term, condition, obligation,
representation or covenant of the Agreement or the First Amendment that is not
cured within thirty (30) days of such breach, default or violation.
5. Remedies on Default; Acceleration. Upon any Event of Default, Oryx
may declare the entire unpaid principal and accrued interest amount under this
Note to be immediately due and payable in full and may pursue any legal or
equitable remedies that are available to Oryx including, but not limited to, (i)
the remedies of a secured creditor with respect to the Collateral under the
California Uniform Commercial Code and (ii) the right to institute a suit or
other action for recovery of the entire principal amount of and all accrued
interest on this Note then due and owing from Debtor to Oryx.
6. Representations and Warranties of Debtor. Debtor represents and
warrants to Oryx that:
(a) Authority. Debtor has all right, power and authority
necessary to make, enter into and perform its obligations under this Note. This
Note is a valid and binding obligation of Debtor, enforceable against Debtor in
accordance with its terms. Neither the execution and delivery of this Note nor
the consummation of any transaction contemplated hereby has constituted or
resulted in, or will constitute or result in, a breach of the provisions of any
instrument, contract or agreement to which Debtor is a party or by which Debtor
and/or the Collateral is bound, or the violation of any law, judgment, decree or
governmental or administrative order, rule or regulation applicable to Debtor,
or has resulted in or will result in the creation of any lien or claim upon any
of the Collateral. No consent of any other person (including without limitation
any shareholder or creditor of Debtor) is required in connection with the
execution, delivery, performance, validity or enforceability of this Note.
(b) Title; No Liens or Claims in Collateral. Debtor owns all
right, title and interest in and to the Collateral and no other person or entity
has any right, title or interest in or to the Collateral. The Collateral, except
for the lien granted to KBK Financial, is free and clear of all liens, security
interests, mortgages, claims, rights, encumbrances and restrictions of any kind,
except for the security interest granted to Oryx under this Note.
2
7. Covenants. Debtor covenants and agrees with Oryx that, from and
after the date of this Note until all the obligations under this Note are paid
in full and satisfied and the Note has terminated:
(a) No Liens on Collateral. Debtor will not create, incur or
permit to exist, will defend the Collateral against, and will take such other
action as is necessary to remove, any lien, security interest, encumbrance or
claim on or to any of the Collateral, other than the security interest
previously granted to KBK Financial and the security interest granted to Oryx
under this Note.
(b) Limitations on Dispositions of Collateral. Debtor will not
sell, transfer, lease or otherwise dispose of any of the Collateral, or attempt,
offer or contract to do so, except for the grant of non-exclusive licenses in
the ordinary course of business.
8. Subordination
(a) The indebtedness evidenced by this Note is hereby
expressly subordinated, to the extent and in the manner hereinafter set forth,
in right of payment to the prior payment in full of all Debtor's Senior
Indebtedness, if any, as hereinafter defined. As used herein, the term "Senior
Indebtedness" shall mean the principal of and unpaid accrued interest on
indebtedness of Debtor to KBK Financial.
(b) If there should occur any receivership, insolvency,
assignment for the benefit of creditors, bankruptcy, reorganization or
arrangements with creditors (whether or not pursuant to bankruptcy or other
insolvency laws), sale of all or substantially all of the assets, dissolution,
liquidation or any other marshaling of the assets and liabilities of Debtor, or
if this Note shall be declared due and payable upon the occurrence of an event
of default with respect to any Senior Indebtedness, if any, then (i) no amount
shall be paid by Debtor in respect of the principal of or interest on this Note
at the time outstanding, unless and until the principal of and interest on the
Senior Indebtedness then outstanding shall be paid in full, and (ii) no claim or
proof of claim shall be filed with Debtor by or on behalf of Oryx or any
subsequent holder of this Note that shall assert any right to receive any
payments in respect of the principal of and interest on this Note, except
subject to the payment in full of the principal of and interest on all of the
Senior Indebtedness then outstanding. If there occurs an event of default that
has been declared in writing with respect to any Senior Indebtedness, or in the
instrument under which any Senior Indebtedness is outstanding, permitting the
holder of such Senior Indebtedness to accelerate the maturity thereof, then,
unless and until such event of default shall have been cured or waived or shall
have ceased to exist, or all Senior Indebtedness shall have been paid in full,
no payment shall be made in respect of the principal of or interest on this
Note, unless within ninety (90) days after the happening of such event of
default, the maturity of such Senior Indebtedness shall not have been
accelerated.
(c) Subject to the rights of the holders of Senior
Indebtedness under this Section 8 to receive cash, securities or other
properties otherwise payable or deliverable to Oryx or any subsequent holder of
this Note, nothing contained in this Section 8 shall impair, as between Debtor
and Oryx or any subsequent holder of this Note, the obligation of Debtor,
subject to the terms and conditions hereof, to pay to Oryx or any subsequent
holder of this Note
3
the principal hereof and interest hereon as and when the same become due and
payable, or shall prevent Oryx or any subsequent holder of this Note, upon
default hereunder, from exercising all rights, powers and remedies otherwise
provided herein or by applicable law.
(d) Subject to the payment in full of all Senior Indebtedness
and until this Note shall be paid in full, Oryx and any subsequent holder of
this Note shall be subrogated to the rights of the holders of Senior
Indebtedness (to the extent of payments or distributions previously made to such
holders of Senior Indebtedness pursuant to the provisions of Section 8 above) to
receive payments or distributions of assets of Debtor applicable to the Senior
Indebtedness.
9. Miscellaneous.
(a) Waiver and Amendment. Any provision of this Note may
be amended or modified only by a writing signed by both Debtor and Oryx. Except
as provided below with respect to waivers by Debtor, no waiver or consent with
respect to this Note will be binding or effective unless it is set forth in
writing and signed by the party against whom such waiver is asserted. No course
of dealing between Debtor and Oryx will operate as a waiver or modification of
any party's rights or obligations under this Note. No delay or failure on the
part of either party in exercising any right or remedy under this Note will
operate as a waiver of such right or any other right. A waiver given on one
occasion will not be construed as a bar to, or as a waiver of, any right or
remedy on any future occasion.
(b) Waivers of Debtor. Debtor hereby waives presentment,
notice of non-payment, notice of dishonor, protest, demand and diligence.
(c) Governing Law; Jurisdiction. This Note will be governed by
and construed in accordance with the internal laws of the State of California as
applied to agreements between residents thereof to be performed entirely within
such State, without reference to that body of law relating to conflict of laws
or choice of law. Debtor, by its execution of this Note, hereby irrevocably
submits to the in personam jurisdiction of the state courts of the State of
California and of the United States District Court for the Northern District of
California for the purpose of any suit, action or other proceeding arising out
of or based upon this Note.
(d) Severability; Headings. The invalidity or unenforceability
of any term or provision of this Note will not affect the validity or
enforceability of any other term or provision hereof. The headings in this Note
are for convenience of reference only and will not alter or otherwise affect the
meaning of this Note.
(e) Attorneys' Fees. If suit is brought for collection of this
Note, Debtor agrees to pay all reasonable expenses, including attorneys' fees,
incurred by Oryx in connection therewith whether or not such suit is prosecuted
to judgment.
(f) Assignment. This Note may not be assigned or delegated by
Debtor, whether by voluntary assignment or transfer, operation of law, merger or
otherwise.
4
IN WITNESS WHEREOF, Debtor and Oryx have executed this Note as of the
date and year first above written.
DEBTOR:
Oryx Advanced Materials, Inc.
a California corporation
By: /s/ Xxxxxx Xxx
---------------------------
Name: Xxxxxx Xxx
---------------------------
Title: President
---------------------------
ORYX:
Oryx Technology Corp.
a Delaware corporation
By: /s/ Xxxxx Xxxxxxxxx
---------------------------
Name: Xxxxx Xxxxxxxxx
---------------------------
Title: CFO
---------------------------
5
