PARTIAL RELEASE OF INTELLECTUAL PROPERTY SECURITY AGREEMENT
Exhibit 10.7
PARTIAL RELEASE OF INTELLECTUAL PROPERTY SECURITY
AGREEMENT
THIS PARTIAL RELEASE OF INTELLECTUAL PROPERTY SECURITY AGREEMENT (this “Release”) is made as of June 25, 2013 (the “Effective Date”) by OBSIDIAN , LLC, a Delaware limited liability company, as the agent and collateral agent (in such capacity, the “Collateral Agent”), for the benefit of DIALOGIC CORPORATI ON, a British Columbia corporation (the “Company”), DIALOGIC INC., a Delaware corporation (the “Parent”), and each of the Subsidiaries of the Company and the Parent identified under the caption “Subsidiary Grantors” in the Security Agreement dated September 28, 2006, and as amended and restated on October 1, 2010 (individually, a “Subsidiary Grantor” and, collectively, the “Subsidiary Grantors” and, together with the Company and the Parent, the “Obligors”), with respect to certain intellectual property pledged under the Security Agreement (as defined below).
WHEREAS, pursuant to a Security Agreement dated as of September 28, 2006 (as amended, amended and restated, supplemented or otherwise modified from time to time, the “Security Agreement”; all capitalized terms used but not defined herein shall have the respective meanings ascribed thereto in the Security Agreement) in favor of the Collateral Agent, the Obligors pledged, assigned and granted to the Collateral Agent a continuing security interest in all of their right title and interest in and to the Pledged Collateral (as defined in the Security Agreement), including, without limitation, the issued patents and patent applications and applications set forth on Schedule I hereto (the “Patents”), together with the goodwill associated with such Patents, and all Proceeds of any and all of the foregoing (other than Excluded Property);
WHEREAS, the Intellectual Property Security Agreement dated as of October 5, 2007 was recorded with the Patents Division of the U.S. Patent & Trademark Office on December 23, 2008, at Reel 022024 and Frame 0274, and was supplemented by (i) that certain Supplemental Intellectual Property Security Agreement dated as of October 5, 2007, and recorded with the Patents Division of the U .S. Patent & Trademark Office on October 6, 2009, at Reel 023330 and Frame 0128, and (ii) that certain Supplemental Intellectual Property Security Agreement dated as of March 22, 2012, and recorded with the Patents Division of the U.S. Patent & Trademark Office on March 26, 2012, at Reel 027931 and Frame 0001 (collectively, the “Intellectual Property Security Agreements”);
WHEREAS, the Obligors desire to enter into a transaction or series of transactions to sell certain of their assets secured by the Security Agreement (each a “Sale”) and have requested that the Collateral Agent release its security interest in the Patents;
NOW, THEREFORE, in acknowledgement that the Patents will be sold to a third party by the Obligors pursuant to one or more Sales, the Collateral Agent hereby terminates the Security Agreement and the Intellectual Property Security Agreement insofar as it relates to the Patents, and hereby terminates, cancels, re-pledges, reassigns and releases any and all security interests it has against the Patents, together with the goodwill associated with such Patents, and all Proceeds of any and all of the foregoing, without warranty or recourse.
If and to the extent the Collateral Agent has acquired any right, title or interest to any of the Patents, it hereby assigns and transfers such rights, title or interest to the Obligors.
The Collateral Agent shall take, at the sole costs and expense of the Company, all further actions, and provide to the Obligors and each of its successors, assigns or other legal representatives, all such reasonable cooperation and reasonable assistance (including, without limitation, the execution and delivery of any and all documents or other instruments), requested by the Granter to more fully and effectively effectuate the purposes of this Release.
(Signature page follows)
IN WITNESS WHEREOF, the Collateral Agent has caused this Release to be executed and delivered as of the date first above written.
COLLATERAL AGENT: | OBSIDIAN, LLC By; Xxxxxxxxxx Capital Partners, LLC, its Sole Member
/s/ Xxxxx Xxxxxxxxx Name: Xxxxx Xxxxxxxxx Title: Managing Partner |
[Signature Page to Partial Release of lntellectual Property Security Agreement]
Schedule I
the Patents
Issued US patents and patent application
PATENT NO. |
APP. NO. |
FILING DATE |
ISSUE DATE |
TITLE | ||||
7406696 | 10/785501 | 02/24/2004 | 07/29/2008 | SYSTEM AND METHOD | ||||
FOR PROVIDING USER | ||||||||
INPUT information | ||||||||
TO MULTIPLE | ||||||||
INDEPENDENT, | ||||||||
CONCURRENT | ||||||||
APPLICATIONS | ||||||||
5598536 | 08/287775 | 08/09/1994 | 01/28/1997 | APPARATUS AND METHOD FOR PROVINDING REMOTE USERS WITH THE SAME UNIQUE IP ADDRESSES UPON EACH NETWORK ACCESS | ||||
5812819 | 08/462819 | 06/05/1995 | 09/28/1998 | REMOTE ACCESS APPARATUS AND METI-IOD WHICH ALLOW DYNAMIC internet PROTOCOL (IP) ADDRESS MANAGEMENT | ||||
7885272 | 11/258575 | 10/25/2005 | 02/08/2011 | REMOTE CONTROL OF DEVICE BY TELEPHONE OR OTHER COMMUNICATION DEVICES |
1
PATENT NO. |
XXX.XX. |
FILING DATE |
ISSUE DATE |
TITLE | ||||
8286190 | 12/006342 | 01/02/2008 | 10/09/2012 | SYSTEM AND METHOD FOR PROVIDING USER INPUT INFORMATION TO MULTIPLE INDEPENDENT CONCURRENT APPLICATIONS | ||||
6047327 | 08/602985 | 02/16/1996 | 04/04/2000 | SYSTEM FOR DISTRIBUTING ELECTRONIC INFORMATION TO A TARGETED GROUP OF USERS | ||||
7958442 | 12/151709 | 05/08/2008 | 06/07/2011 | SYSTEM AND METHOD TO PERMIT LANGUAGE INDEPENDENCE FOR WEB INTERFACES | ||||
N/A | 13/097531 | 4/29/2011 | N/A | SYSTEM AND METHOD TO PERMIT LANGUAGE INDEPENDENCE FOR WEB INTERFACES | ||||
5815669 | 08/649208 | 05/17/1996 | 09/29/1998 | METHOD OF ROUTING A DATA TRANSMISSION | ||||
6023470 | 08/649572 | 05/17/1996 | 02/08/2000 | POINT OF PRESENCE (POP) FOR DIGITAL FACSIMILE NETWORK WITH VIRTUAL POPS USED TO COMMUNICATE WITH OTHER NETWORKS | ||||
6393515 | 09/478253 | 01/06/2000 | 05/21/2002 | MULTI-STREAM ASSOCIATIVE MEMORY ARCHITECTURE FOR COMPUTER TELEPHONY |
2
PATENT NO. |
APP. NO. |
FILING DATE |
ISSUE DATE |
TITLE | ||||
6034965 | 08/931710 | 09116/1997 | 03/07/2000 | MULTI-STREAM ASSOCIATIVE MEMORY ARCHITECTURE FOR COMPUTER TELEPHONY | ||||
6141329 | 08/984006 | 12/03/1997 | I0/31/2000 | DUAL-CHANNEL REAL- TIME COMMUNICATION | ||||
6631132 | 09/411287 | 10/04/1999 | 10/07/2003 | URGENT PACKET TRANSMISSION | ||||
6219395 | 08/931218 | 09/16/1997 | 04/17/2001 | PHASE ALIGNMENT OF FRAMES IN COMPUTER TELEPHONY BUSSES | ||||
6515985 | 09/777799 | 02/06/2001 | 02/04/2003 | CONVERGENCE OF TELEPHONE SIGNALING, VOICE ANO DATA OVER A PACKET-SWITCHED NETWORK | ||||
6278995 | 09/261067 | 03/02/1999 | 08/21/2001 | APPARATUS AND METIIODFOR PROVIDING A BINARY RANGE TREE SEARCH | ||||
6295532 | 09/261061 | 03/02/1999 | 09/25/2001 | APPARATUS AND METHOD FOR Classifying INFORMATION RECEIVED BY A COMMUNICATIONS SYSTEM | ||||
7310342 | 10/400412 | 03/28/2003 | 12/18/2007 | AUTOATM-VC DETECTION FOR ATM NETWORK ACCESS DEVICES |
3
PATENT NO. |
XXX.XX. |
FILING DATE |
ISSUE DATE |
TITLE | ||||
6378017 | 09/112253 | 07/08/1998 | 04/23/2002 | PROCESSOR INTERCONNECTION | ||||
6952407 | 09/906969 | 07/17/2001 | 10/04/2005 | MINIMIZING LATENCY WITH CONTENT-BASED ADAPTIVE BUFFERING | ||||
6226303 | 09/036342 | 03/06/1998 | 05/01/2001 | DTMFTONE DETECTION AND SUPPRESSION WITH APPLICATION TO COMPUTER TELEPHONY OVER PACKET SWITCHED NETWORKS | ||||
6396851 | 09/803675 | 03/09/2001 | 05/28/2002 | DTMFTONE DETECTION AND SUPPRESSION WITH APPLICATION TO COMPUTER TELEPHONY OVER PACKET SWITCHED NETWORKS | ||||
6343086 | 08/926811 | 09/09/1997 | 01/29/2002 | GLOBAL PACKET- SWITCHED COMPUTER NETWORK TELEPHONY SERVER | ||||
7155385 | 10/146742 | 05/16/2002 | 12/26/2006 | AUTOMATIC GAIN CONTROL FOR ADJUSTING GAIN DURING NON-SPEECH PORTIONS | ||||
6757259 | 09/372884 | 08/12/1999 | 06/29/2004 | CONTROL OF INTERNET BASED VIDEO CONFERENCING |
4
PATENT NO. |
XXX.XX. |
FILING DATE |
ISSUE DATE |
TITLE | ||||
7417982 | 10/717438 | 11119/2003 | 08/26/2008 | HYBRIDSWITCHING ARCHITECTURE HAVING DYNAMICALLY ASSIGNED SWITCHING MODELS FOR CONVERGED SERVICES PLATFORM | ||||
7113580 | 10/780503 | 02/ 17/2004 | 09/26/2006 | METHOD AND APPARATUS FOR PERFORMING CONFERENC ING SERVICES AND ECHO SUPPRESSION | ||||
6920143 | 09/267178 | 03/12/1999 | 07/ 19/2005 | COMPUTER TELEPHONY SYSTEM USING MULTIPLE HARDWARE PLATFORMS TO PROVIDE TELEPHONY SERVICES | ||||
7149287 | 10/346549 | 01/17/2003 | 12/12/2006 | UNIVERSAL VOICE BROWSER FRAMEWORK | ||||
5459781 | 08/180883 | 01112/1994 | 10/17/1995 | SELECTIVELY ACTIVATED DUAL TONE MULTI- FREQUENCY DETECTOR | ||||
5825854 | 08/787319 | 01/24/1997 | 10/20/1998 | TELEPHONE ACCESS SYSTEM FOR ACCESSING A COMPUTER THROUGH A TELEPHONE HANDSET |
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PATENT NO. |
APP. NO. |
FILING DATE |
ISSUE DATE |
TITLE | ||||
6542584 | 09/144186 | 08/31/1998 | 04/01/2003 | DIGITAL TELEPHONE SYSTEM WITH AUTOMATIC VOICE MAIL REDIRECTION | ||||
6438224 | 091190978 | 11/12/1998 | 08/20/2002 | TONE DETECTION | ||||
7298830 | 09/798377 | 03/02/2001 | 11/20/2007 | TELEPHONE AND WIRELESS ACCESS TO COMPUTER NETWORK- BASED AUDIO | ||||
7174006 | 09/883757 | 06/18/2001 | 02/06/2007 | METHOD AND SYSTEM OF VOICEXML INTERPRETING | ||||
6829335 | 09/965903 | 09/28/2001 | 12/07/2004 | CALL HANDLING FOR MULTIPLE USERS OF AN AUTOMATED ATTENDANT | ||||
7095827 | 10/215922 | 08/09/2002 | 08/22/2006 | BROADCASTING AND CONFERENCING IN A DISTRIBUTED ENVIRONMENT |
Issued foreign patents and patent applications
PATENT NO. |
XXX.XX. |
FILING DATE |
PUBLICATION DATE |
TITLE | ||||
CA2197218 | CA2197218 | 07/14/1995 | 2/22/1996 | APPARATUS AND METHOD FOR PROVINDING REMOTE USERS WITH THE SAME UNIQUE IP ADDRESSES UPON EACH NETWORK ACCESS | ||||
FR077541 l | EP1995926294 | 07/14/1995 | 11/21/2001 | APPARATUS AND METHOD FOR PROVIDING REMOTE USERS WITH |
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THE SAME UNIQUE IP ADDRESSES UPON EACH NETWORK ACCESS | ||||||||
DE0775411 |
EP1995926294 | 07/14/1995 | 11121/2001 | APPARATUS AND METHOD FOR PROVINDING REMOTE USERS WITH THE SAME UNIQUE IP ADDRESSES UPON EACH NETWORK ACCESS | ||||
UK0775411 |
EP1995926294 | 07/14/1995 | 11/21/2001 | APPARATUS AND METHOD FOR PROVINDING REMOTE USERS WITH THE SAME UNIQUE IP ADDRESSES UPON EACH NETWORK ACCESS | ||||
CA2223434 |
CA2223434 | 04/04/1996 | 2/20/2001 | REMOTE ACCESS APPARATUS AND METHOD WHICH ALLOW DYNAMIC INTERNET PROTOCOL (IP) ADDRESS MANAGEMENT | ||||
N/A |
CA2627026 | 10/24/2006 | 05/03/2007 | REMOTE CONTROL OF DEVICE BY TELEPHONE OR OTHER COMMUNICATION DEVICES | ||||
NIA |
EP1989866 | 10/24/2006 | 11/12/2008 | REMOTE CONTROL OF DEVICE BY TELEPHONE OR OTHER COMMUNICATION DEVICES | ||||
NI-190314 |
90119270 | 08/07/2001 | 04/21/2003 | CONVERGENCE OF TELEPHONE SJGNALING, VOICE AND DATA OVER A |
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PACKET-SWITCHED NETWORK | ||||||||
N/A |
XX0000000 | 02/07/2001 | 08/ 16/2001 | CONVERGENCE OF TELEPHONE SIGNALING, VOICE AND DATA OVER A PACKET-SWITCHED NETWORK | ||||
CA2334472 |
CA2334472 | 02/07/2001 | 10/26/2010 | CONVERGENCE OF TELEPHONE SIGNALING, VOICE ANDDATAOVERA PACKET-SWITCHED NETWORK | ||||
SG90926 |
200204704-1 | 02/08/2001 | 09/30/2004 |
CONVERGENCE OF TELEPHONE SIGNALING, VOICE AND DATA OVER A PACKET-SWITCHED NETWORK |
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