PATENT COLLATERAL ASSIGNMENT AND SECURITY AGREEMENT
AGREEMENT made this 30th day of April, 1998 by and between TII INDUSTRIES,
INC., a Delaware corporation ("DEBTOR"), with its chief executive office at 0000
Xxxxx Xxxxxx, Xxxxxxxx, Xxx Xxxx 00000 and BNY FINANCIAL CORPORATION, a New York
corporation ("SECURED PARTY"), having an office at 0000 Xxxxxx xx xxx Xxxxxxxx,
Xxx Xxxx, Xxx Xxxx 00000.
W I T N E S S E T H:
WHEREAS, Debtor has adopted, used and is using, and is the owner of the
entire right, title, and interest in and to the patents and applications
therefor described in Exhibit A annexed hereto and made a part hereof; and
WHEREAS, Secured Party and Debtor are contemporaneously herewith entering
into financing arrangements pursuant to which Secured Party may make loans and
advances and provide other financial accommodations to Debtor as set forth in
the Revolving Credit, Term Loan and Security Agreement, dated of even date
herewith, by and among Secured Party and Debtor and TII Corporation (the "CREDIT
AGREEMENT"), together with various other agreements, documents and instruments
referred to therein or at any time executed and/or delivered in connection
therewith or related thereto, including, but not limited to, this Agreement (all
of the foregoing, as the same now exist or may hereafter be amended, modified,
supplemented, extended, renewed, restated or replaced, being collectively
referred to herein as the "FINANCING AGREEMENTS"); and
WHEREAS, in order to induce Secured Party to enter into the Financing
Agreements and make loans and advances and provide other financial
accommodations pursuant thereto, Debtor has agreed to grant to Secured Party
certain collateral security as set forth herein;
NOW, THEREFORE, in consideration of the premises and for other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, Debtor hereby agrees as follows:
1. GRANT OF SECURITY INTEREST
As collateral security for the prompt performance, observance and
indefeasible payment in full of all of the Obligations (as hereinafter defined),
Debtor hereby grants to Secured Party a continuing security interest in and a
general lien upon, and hereby
assigns and transfers to Secured Party: (a) all of Debtor's now existing or
hereafter acquired right, title and interest in and to: all of Debtor's interest
in any patents; all applications, registrations and recordings relating to such
patents in the United States Patent and Trademark Office or in any similar
office or agency of the United States, any State thereof, any political
subdivision thereof or in any other countries, and all reissues, extensions and
renewals thereof including, without limitation, those patents, applications,
registrations and recordings described in Schedule A hereto (the "PATENTS"), and
(b) any and all proceeds of any of the foregoing, including, without limitation,
any claims by Debtor against third parties for infringement of the Patents or
any licenses with respect thereto (all of the foregoing are collectively
referred to herein as the "COLLATERAL").
2. OBLIGATIONS SECURED
The security interest, lien and other interests granted to Secured Party
pursuant to this Agreement shall secure the prompt performance, observance and
indefeasible payment in full of any and all loans, indebtedness, liabilities and
obligations of any kind owing by Debtor to Secured Party, however evidenced,
whether as principal, guarantor or otherwise, whether arising under the
Agreement, the other Financing Agreements or otherwise whether direct or
indirect, absolute or contingent, joint or several, secured or unsecured, due or
not due, primary or secondary, liquidated or unliquidated, original, renewed or
extended, whether arising directly or acquired from others (including without
limitation, Secured Party's participations or interests in Debtor's obligations
to others) and including, without limitation, Secured Party's charges,
commissions, interest, expenses, costs and attorneys' fees chargeable to Debtor
under this Agreement, the Financing Agreements or in connection with any of the
foregoing (all hereinafter referred to as "OBLIGATIONS").
3. REPRESENTATIONS, WARRANTIES AND COVENANTS
Debtor hereby represents, warrants and covenants with and to Secured Party
that the following (which shall survive the execution and delivery of this
Agreement), the truth and accuracy of which, or compliance with, being a
continuing condition of the making of loans by Secured Party to Debtor under the
Financing Agreements:
(a) Debtor will pay and perform all of the Obligations according
to their terms.
(b) All of the existing Collateral is valid and subsisting in full
force and effect, and Debtor owns the sole, full, and clear title thereto, and
the right and power to grant the security interests granted hereunder. Debtor
will, at Debtor's expense, perform
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all acts and execute all documents necessary to maintain the existence of the
Collateral as valid, subsisting and registered patents including, without
limitation, the filing of any renewal affidavits and applications. The
Collateral is not subject to any liens, claims, mortgages, assignments,
licenses, security interests, or encumbrances of any nature whatsoever, except
the security interests granted hereunder and the licenses permitted under
Section 3(e) below.
(c) Debtor will not assign, sell, mortgage, lease, transfer,
pledge, hypothecate, grant a security interest in or lien upon, encumber, grant
an exclusive or non-exclusive license relating to the Collateral, except as
permitted herein or in the Financing Agreements, or otherwise dispose of any of
the Collateral without the prior written consent of Secured Party. Nothing in
this Agreement shall be deemed a consent by Secured Party to any such action,
except as such action is expressly permitted hereunder.
(d) Debtor will, at Debtor's expense, perform all acts and execute
all documents requested at any time by Secured Party to evidence, perfect,
maintain, record, or enforce the security interest in the Collateral granted
hereunder or to otherwise further the provisions of this Agreement. Debtor
hereby authorizes Secured Party to execute and file one or more financing
statements (or similar documents) with respect to the Collateral signed only by
Secured Party or as otherwise determined by Secured Party. Debtor further
authorizes Secured Party to have this or any other similar security agreement
filed with the Commissioner of Patents and Trademarks or other appropriate
federal, state or government office.
(e) As of the date hereof, Debtor does not have any Patents
registered, or subject to pending applications, in the United States Patent and
Trademark Office or any similar office or agency in the United States other than
those described in Schedule A annexed hereto and has not granted any licenses
with respect thereto other than as set forth in Schedule B hereto.
(f) Debtor will, concurrently with the execution and delivery of
this Agreement, execute and deliver to Secured Party five (5) originals of a
Special Power of Attorney in the form of Exhibit 1 annexed hereto for the
implementation of the assignment, sale or other disposition of the Collateral
pursuant to Secured Party's exercise of the rights and remedies granted to
Secured Party hereunder.
(g) Secured Party may, in its discretion, pay any amount or do any
act which Debtor fails to pay or do as required hereunder or as requested by
Secured Party to preserve, defend, protect, maintain, record, amend or enforce
the Obligations, the Collateral, or the security interest granted hereunder
including but not limited to all filing
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or recording fees, court costs, collection charges and reasonable attorneys'
fees. Debtor will be liable to Secured Party for any such payment, which payment
shall be deemed an advance by Secured Party to Debtor, shall be payable on
demand together with interest at the then applicable rate set forth in the
Financing Agreements and shall be part of the Obligations secured hereby.
(h) Debtor shall not file any application for the registration of
a Patent with the United States Patent and Trademark Office or any similar
office or agency in the United States, any state therein, or any other country,
unless Debtor has by thirty (30) days prior written notice informed Secured
Party of such action. Upon request of Secured Party, Debtor shall execute and
deliver to Secured Party any and all assignments, agreements, instruments,
documents, and such other papers as may be requested by Secured Party to
evidence the security interests of Secured Party in such Patent.
(i) Debtor has not abandoned any of the Patents and Debtor will
not do any act, nor omit to do any act, whereby the Patents may become
abandoned, invalidated, unenforceable, avoided, or avoidable. Debtor shall
notify Secured Party immediately if it knows or has reason to know of any reason
why any application, registration, or recording may become abandoned, canceled,
invalidated, avoided, or avoidable.
(j) Debtor will render any assistance necessary to Secured Party
in any proceeding before the United States Patent and Trademark Office, any
federal or state court, or any similar office or agency in the United States or
any state therein or any other country to maintain such application and
registration of the Patents as Debtor's exclusive property and to protect
Secured Party's interest therein, including, without limitation, filing of
renewals, affidavits of use, affidavits of incontestability and opposition,
interference, and cancellation proceedings.
(k) Debtor will promptly notify Secured Party if Debtor (or any
affiliate or subsidiary thereof) learns of any use by any person of any other
process or product which infringes upon any Patent. If requested by Secured
Party, Debtor, at Debtor's expense, shall join with Secured Party in such action
as Secured Party, in Secured Party's discretion, may deem advisable for the
protection of Secured Party's interest in and to the Patents.
(l) Debtor assumes all responsibility and liability arising from
the use of the Patents and Debtor hereby indemnifies and holds Secured Party
harmless from and against any claim, suit, loss, damage, or expense (including
attorneys' fees) arising out of any alleged defect in any product manufactured,
promoted, or sold by Debtor (or any affiliate or subsidiary thereof) in
connection with any Patent or out of the manufacture,
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promotion, labelling, sale or advertisement of any such product by Debtor (or
any affiliate or subsidiary thereof).
(m) Debtor will promptly pay Secured Party for any and all costs
and reasonable expenditures incurred by Secured Party pursuant to the provisions
of this Agreement or for the defense, protection, or enforcement of the
Obligations, the Collateral, or the security interests granted hereunder,
including, but not limited to, all filing or recording fees, court costs,
collection charges, travel expenses, and attorneys' fees and reasonable legal
expenses. Such costs and reasonable expenditures shall be payable on demand,
together with interest at the then applicable rate set forth in the Financing
Agreements and shall be part of the Obligations secured hereby.
4. EVENTS OF DEFAULT
All Obligations shall become immediately due and payable, without notice
or demand, at the option of Secured Party, upon the occurrence of any one or
more defaults or events of default under the Financing Agreements (each an
"EVENT OF DEFAULT" hereunder).
5. RIGHTS AND REMEDIES
Upon the occurrence of any such Event of Default and during the
continuance thereof, in addition to all other rights and remedies of Secured
Party, whether provided under law, the Financing Agreements or otherwise,
Secured Party shall have the following rights and remedies which may be
exercised without notice to, or consent by, Debtor except as such notice or
consent is expressly provided for hereunder:
(a) Secured Party may require that neither Debtor nor any
affiliate or subsidiary of Debtor make any use of the Patents for any purpose
whatsoever. Secured Party may make use of any Patents for the sale of goods,
completion of work-in-process or rendering of services or otherwise in
connection with enforcing any other security interest granted to Secured Party
by Debtor or any subsidiary or affiliate of Debtor.
(b) Secured Party may grant such license or licenses relating to
the Collateral for such term or terms, on such conditions, and in such manner,
as Secured Party shall in its discretion deem appropriate. Such license or
licenses may be general, special, or otherwise, and may be granted on an
exclusive or non-exclusive basis throughout all or any part of the United States
of America, its territories and possessions, and all foreign countries.
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(c) Secured Party may assign, sell, or otherwise dispose of the
Collateral or any part thereof, either with or without special conditions or
stipulations except that if notice to Debtor of intended disposition of
Collateral is required by law, the giving of five (5) business days prior notice
in the manner set forth in subparagraph 6(b) hereof shall be deemed reasonable
notice thereof and Debtor waives any other notice with respect thereto. Secured
Party shall have the power to buy the Collateral or any part thereof, and
Secured Party shall also have the power to execute assurances and perform all
other acts which Secured Party may, in its discretion, deem appropriate or
proper to complete such assignment, sale, or disposition.
(d) In addition to the foregoing, in order to implement the
assignment, sale, or other disposition of any of the Collateral pursuant to
Subparagraph 5(c) hereof, Secured Party may at any time execute and deliver on
behalf of Debtor, pursuant to the authority granted in the Powers of Attorney
described in Subparagraph 3(f) hereof, one or more instruments of assignment of
the Patents (or any application, registration, or recording relating thereto),
in form suitable for filing, recording, or registration. Debtor agrees to pay
Secured Party on demand all costs incurred in any such transfer of the
Collateral, including, but not limited to, any taxes, fees, and reasonable
attorneys' fees and legal expenses.
(e) Secured Party may first apply the proceeds actually received
from any such license, assignment, sale, or other disposition of Collateral to
the costs and expenses thereof, including, without limitation, attorneys' fees
and all legal, travel, and other expenses which may be incurred by Secured
Party. Thereafter, Secured Party may apply any remaining proceeds to such of the
Obligations as Secured Party may in its discretion determine. Debtor shall
remain liable to Secured Party for any expenses or obligations remaining unpaid
after the application of such proceeds, and Debtor will pay Secured Party on
demand any such unpaid amount, together with interest at a rate equal to the
highest rate then payable on the Obligations.
(f) Debtor shall supply to Secured Party or to Secured Party's
designee, Debtor's knowledge and expertise relating to the manufacture and sale
of the products and services to which the Patents relate and Debtor's customer
lists and other records relating to the Patents and the distribution thereof.
(g) Nothing contained herein shall be construed as requiring
Secured Party to take any such action at any time. All of Secured Party's rights
and remedies, whether provided under law, this Agreement, the other Financing
Agreements or otherwise, shall be cumulative and none is exclusive. Such rights
and remedies may be enforced alternatively, successively, or concurrently.
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6. MISCELLANEOUS
(a) Any failure or delay by Secured Party to require strict
performance by Debtor of any of the provisions, warranties, terms, and
conditions contained herein or in any other agreement, document, or instrument,
shall not affect Secured Party or Secured Party's right to demand strict
compliance and performance therewith, and any waiver of any default shall not
waive or affect any other default, whether prior or subsequent thereto, and
whether of the same or of a different type. None of the warranties, conditions,
provisions, and terms contained herein or in any other agreement, document, or
instrument shall be deemed to have been waived by any act or knowledge of
Secured Party, its agents, officers, or employees, but only by an instrument in
writing, signed by an officer of Secured Party and directed to Debtor,
specifying such waiver.
(b) All notices, requests and demands to or upon the respective
parties hereto shall be deemed to have been given or made: if by hand, telex,
telegram or facsimile immediately upon sending; if by Federal Express, Express
Mail or any other overnight delivery service, one (1) day after dispatch; and if
mailed by certified mail, return receipt requested, five (5) business days after
mailing. All notices, requests and demands are to be given to the respective
parties at the following addresses (or to such other addresses as either party
may designate by notice in accordance with the provisions of this paragraph) set
forth herein:
If to Debtor: TII INDUSTRIES, INC.
0000 Xxxxx Xxxxxx
Xxxxxxxx, Xxx Xxxx 00000
Attention: President
If to Secured Party: BNY FINANCIAL CORPORATION
0000 Xxxxxx xx xxx Xxxxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xx. Xxxxx Xxxxxxxx
(c) In the event that any provision hereof shall be deemed to be
invalid by any court, such invalidity shall not affect the remainder of this
Agreement.
(d) All references to Debtor and Secured Party herein shall
include their respective successors and assigns. All references to the term
"person" herein shall mean an individual, sole proprietorship, limited
partnership, general partnership, a corporation (including a business trust), a
joint stock company, a trust, an unincorporated association, a joint venture
association, organization or other entity or a government department or any
agency, instrumentality or political subdivision thereof.
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(e) This Agreement shall be binding upon and for the benefit of
the parties hereto and their respective successors and assigns. No provision
hereof shall be modified, altered or limited except by a written instrument
expressly referring to this Agreement signed by the party to be charged thereby.
(f) THIS AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED IN
ACCORDANCE WITH THE LAWS OF THE STATE OF NEW YORK (WITHOUT GIVING EFFECT TO ITS
CONFLICT OF LAWS RULES). ANY JUDICIAL PROCEEDING BROUGHT BY OR AGAINST THE
DEBTOR WITH RESPECT TO ANY OF THE OBLIGATIONS, THIS AGREEMENT OR ANY RELATED
AGREEMENT MAY BE BROUGHT IN ANY COURT OF COMPETENT JURISDICTION IN THE STATE OF
NEW YORK, UNITED STATES OF AMERICA, AND, BY EXECUTION AND DELIVERY OF THIS
AGREEMENT, THE DEBTOR ACCEPTS FOR ITSELF AND IN CONNECTION WITH ITS PROPERTIES,
GENERALLY AND UNCONDITIONALLY THE NON-EXCLUSIVE JURISDICTION OF THE AFORESAID
COURTS, AND IRREVOCABLY AGREES TO BE BOUND BY ANY JUDGMENT RENDERED THEREBY IN
CONNECTION WITH THIS AGREEMENT. NOTHING HEREIN SHALL AFFECT THE RIGHT TO SERVE
PROCESS IN ANY MANNER PERMITTED BY LAW OR SHALL LIMIT THE RIGHT OF THE SECURED
PARTY TO BRING PROCEEDINGS AGAINST THE DEBTOR IN THE COURTS OF ANY OTHER
JURISDICTION. THE DEBTOR WAIVES ANY OBJECTION TO JURISDICTION AND VENUE OF ANY
ACTION INSTITUTED HEREUNDER AND SHALL NOT ASSERT ANY DEFENSE BASED ON LACK OF
JURISDICTION OR VENUE OR BASED UPON FORUM NON CONVENIENS. ANY JUDICIAL
PROCEEDINGS BY THE DEBTOR AGAINST THE SECURED PARTY INVOLVING, DIRECTLY OR
INDIRECTLY, ANY MATTER OR CLAIM IN ANY WAY ARISING OUT OF, RELATED TO OR
CONNECTED WITH THIS AGREEMENT OR ANY RELATED AGREEMENT, SHALL BE BROUGHT ONLY IN
A FEDERAL OR STATE COURT LOCATED IN THE CITY OF NEW YORK, STATE OF NEW YORK.
(g) In the event of any conflict of any of the terms or provisions
of this Agreement with any of the terms or provisions of the Credit Agreement,
the terms or provisions of the Credit Agreement shall control.
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IN WITNESS WHEREOF, Debtor and Secured Party have executed this
Agreement as of the day and year first above written.
TII INDUSTRIES, INC.
By: /S/ XXXX XXXXXXX
--------------------------
Title:VICE PRESIDENT-FINANCE
--------------------------
BNY FINANCIAL CORPORATION
By: /S/ XXXX X. XXXXXXXX
--------------------------
Title:SENIOR VICE PRESIDENT
--------------------------
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XXXXX XX XXX XXXX )
) ss.:
COUNTY OF NEW YORK )
As of this ____ day of April, 1998, before me personally came
__________ __________, to me known, who being duly sworn, did depose and say,
that he is a ____________________ of TII INDUSTRIES, INC., the corporation
described in and which executed the foregoing instrument; and that he signed his
name thereto by order of the Board of Directors of said corporation.
-----------------------------
Notary Public
STATE OF NEW YORK )
) ss.:
COUNTY OF NEW YORK )
As of this ____ day of April, 1998, before me personally came
__________ __________, to me known, who, being duly sworn, did depose and say,
that he is a __________________ of BNY FINANCIAL CORPORATION, the corporation
described in and which executed the foregoing instrument; and that he signed his
name thereto by order of the Board of Directors of said corporation.
-----------------------------
Notary Public
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SCHEDULE A
LIST OF PATENTS AND APPLICATIONS
PATENT DESCRIPTION PATENT NUMBER DATE OF PATENT/APPLICATION
To Be Completed
SCHEDULE B - LICENSES
PATENT COLLATERAL ASSIGNMENT AND SECURITY AGREEMENT
None
EXHIBIT 1
SPECIAL POWER OF ATTORNEY
(PATENT)
STATE OF NEW YORK )
) ss.:
COUNTY OF NEW YORK )
KNOW ALL MEN BY THESE PRESENTS, that TII INDUSTRIES, INC.
("DEBTOR"), having an office at 0000 Xxxxx Xxxxxx, Xxxxxxxx, Xxx Xxxx 00000,
hereby appoints and constitutes, severally, BNY FINANCIAL CORPORATION ("SECURED
PARTY"), and each of its officers, its true and lawful attorney, with full power
of substitution and with full power and authority to perform the following acts
on behalf of Debtor at any time after the occurrence and during the continuance
of an Event of Default under the Security Agreement (as hereinafter defined):
1. Execution and delivery of any and all agreements, documents,
instrument of assignment, or other papers which Secured Party, in its
discretion, deems necessary or advisable for the purpose of assigning, selling,
or otherwise disposing of all right, title, and interest of Debtor in and to any
patents and all registrations, recordings, reissues, extensions, and renewals
thereof, or for the purpose of recording, registering and filing of, or
accomplishing any other formality with respect to the foregoing.
2. Execution and delivery of any and all documents, statements,
certificates or other papers which Secured Party, in its discretion, deems
necessary or advisable to further the purposes described in Subparagraph 1
hereof.
This Power of Attorney, being a power coupled with an interest, is
made pursuant to a Patent Collateral Assignment and Security Agreement between
Debtor and Secured Party, of even date herewith (the "SECURITY AGREEMENT") and
may not be revoked until payment in full of all Debtor's "Obligations", as such
term is defined in the Security Agreement and is subject to the terms and
provisions thereof.
April ___, 1998
TII INDUSTRIES, INC.
By: _________________________
Title:_________________________
STATE OF NEW YORK )
) ss.:
COUNTY OF NEW YORK )
As of this ____ day of April, 1998, before me personally came
__________ __________, to me known, who being duly sworn, did depose and say,
that he is a ____________________ of TII INDUSTRIES, INC., the corporation
described in and which executed the foregoing instrument; and that he signed his
name thereto by order of the Board of Directors of said corporation.
__________________________
Notary Public
