GRANT OF SECURITY INTEREST
(TRADEMARKS, COPYRIGHTS, PATENTS AND LICENSES)
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GRANT OF SECURITY INTEREST ("Agreement"), dated December [26], 2000, by
CYTOMEDIX, INC., a Delaware corporation (the "Grantor"), in favor of TSENVI,
LLC, a Delaware limited liability company, as collateral agent under the terms
hereof and in accordance with the Security Agreement referenced below
("Grantee").
WHEREAS, Grantor and Grantee are parties to a Security Agreement, dated
as of the date hereof ("Security Agreement"), pursuant to which Grantee is
acting as the collateral agent for the benefit of TSENVI, LLC, a Delaware
limited liability company, Bel-Cap Delaware Investments, LLC, a Delaware limited
liability company, Bristol Investment Fund, Ltd., Curative Health Services, Inc.
(collectively, the "Lenders"); and
WHEREAS, terms which are capitalized but undefined herein shall have
the meanings herein ascribed thereto in the Security Agreement; and
WHEREAS, the Grantor owns the trademarks (including service marks),
trademark applications, trademark registrations and trade names listed on
SCHEDULE 1 hereto, along with any and all (i) renewals thereof, (ii) income,
royalties, damages and payments now and hereafter due and/or payable with
respect thereto, including, without limitation, damages and payments for past or
future infringements thereof, (iii) rights to xxx for past, present and future
infringements thereof, and (iv) rights corresponding to all of the foregoing
throughout the world (all of the foregoing trademarks (including service marks),
trademark applications, trademark registrations, trade names, fictitious names,
service marks, together with the items described in the foregoing clauses (i)
through (iv), are sometimes hereinafter individually and/or collectively
referred to as the "Trademarks"); and
WHEREAS, the Grantor owns the copyrights, copyright applications and
copyright registrations listed on SCHEDULE 2 hereto, along with any and all (i)
renewals thereof, (ii) income, royalties, damages and payments now and hereafter
due and/or payable with respect thereto, including, without limitation, damages
and payments for past or future infringements thereof, (iii) rights to xxx for
past, present and future infringements thereof, and (iv) rights corresponding to
all of the foregoing throughout the world (all of the foregoing copyrights and
applications, together with the items described in the foregoing clauses (i)
through (iv), are sometimes hereinafter individually and/or collectively
referred to as the "Copyrights"); and
WHEREAS, the Grantor owns the patents, patent registrations and patent
applications listed on SCHEDULE 3 hereto, along with any and all (i) renewals
thereof, (ii) income, royalties, damages and payments now and hereafter due
and/or payable with respect thereto, including, without limitation, damages and
payments for past or future infringements thereof, (iii) rights to xxx for past,
present and future infringements thereof, and (iv) rights corresponding to all
of the foregoing throughout the world (all of the foregoing patents and
applications, together with the items described in the foregoing clauses (i)
through (iv), are sometimes hereinafter individually and/or collectively
referred to as the "Patents"); and
WHEREAS, the Grantor is a party to certain license agreements with
third parties whether the Grantor is a licensor or licensee under any such
license agreement, including, without limitation, the license agreements listed
on SCHEDULE 4 hereto, along with any and all (i) renewals, extensions,
supplements and continuations thereof, (ii) income, royalties, damages and
payments now and hereafter due and/or payable with respect thereto, including,
without limitation, damages and payments for past or future breaches or
infringements thereof, (iii) rights to xxx for past, present and future breaches
or infringements thereof, (iv) rights to sell, prepare for sale or rental, sell,
rent, and advertise for sale or rental, all inventory now or hereafter owned by
the Grantor and now or hereafter covered by such licenses, and (v) rights
corresponding to all of the foregoing (all of the foregoing licenses together
with the items described in the foregoing
clauses (i) through (v) are sometimes hereinafter individually and/or
collectively referred to as the "Licenses"); and
WHEREAS, the Grantor has agreed to grant to the Grantee (ratably for
the benefit of the Lenders), a first priority security interest (subject only to
Permitted Liens) in substantially all of its assets to secure the payment of
obligations owing by Grantor to Lenders, in a form which may be recorded with
the United States Patent and Trademark Office against all existing and future
applications to register and registrations of the Trademarks; and
WHEREAS, the Grantor has mortgaged, pledged and granted to the Grantee
(ratably for the benefit of the Lenders) a lien on and security interest in all
right, title and interest of the Grantor in, to and under all of the Trademarks,
Copyrights, Patents and Licenses, together with any reissues, divisions,
continuations, renewals, extensions and continuations-in-part thereof, and all
products and proceeds thereof, and the goodwill of the business in connection
therewith including, without limitation, any and all causes of action which may
exist by reason of infringement thereof for the full term of the Trademarks,
Copyrights, Patents and Licenses.
NOW, THEREFORE, for good and valuable consideration, receipt of which
is hereby acknowledged, to secure all of Grantor's obligations to the Grantee
and the Lenders, the Grantor does hereby mortgage, pledge and grant to the
Grantee (ratably for the benefit of the Lenders) a lien on and security interest
in all of the Grantor's right, title and interest in, to and under the
following, whether presently existing or hereafter arising or acquired:
i. each Trademark, each registration of the Trademarks and each
application for registration of Trademarks owned by the Grantor, including,
without limitation, each Trademark referred to in SCHEDULE 1 hereto;
ii. each Copyright and application for registration of Copyrights owned
by the Grantor, including, without limitation, each Copyright and Copyright
application referred to in SCHEDULE 2 hereto;
iii. each Patent and application for registration of Patents owned by
the Grantor, including, without limitation, each Patent and Patent application
referred to in SCHEDULE 3 hereto;
iv. each interest in a License, including, without limitation, each
License listed in SCHEDULE 4 hereto;
v. all products and proceeds of the foregoing, including, without
limitation, any claim by the Grantor against third parties for past, present
or future infringement or breach of any Trademark, Copyright, Patent or
License;
vi. all unregistered Trademarks and Copyrights owned by the Grantor,
each such Trademark set forth in SCHEDULE 1 hereto, and all future applications
to register and registrations of the Trademarks;
vii. the entire goodwill of the Grantor's business connected with the
use of and symbolized by the Trademarks, Copyrights, Patents and Licenses; and
viii. all trade styles, trade dress, copyrights and other intellectual
property owned by Grantee and used in connection with the Trademarks.
* * *
THIS AGREEMENT SHALL BE INTERPRETED, AND THE RIGHTS AND LIABILITIES OF
THE PARTIES HERETO DETERMINED, IN ACCORDANCE WITH THE INTERNAL LAWS (AS OPPOSED
TO CONFLICTS OF LAW PROVISIONS) OF THE STATE
OF ILLINOIS. AS PART OF THE CONSIDERATION FOR NEW VALUE THIS DAY RECEIVED, THE
GRANTOR HEREBY CONSENTS TO THE JURISDICTION OF ANY STATE OR FEDERAL COURT
LOCATED WITHIN CHICAGO, STATE OF ILLINOIS. EACH OF THE GRANTOR AND THE GRANTEE
HEREBY IRREVOCABLY AND UNCONDITIONALLY WAIVES TRIAL BY JURY IN ANY SUIT OR
PROCEEDING ARISING OUT OF OR RELATED TO THIS AGREEMENT. THE GRANTOR WAIVES ANY
OBJECTION WHICH THE GRANTOR MAY HAVE BASED ON LACK OF JURISDICTION OR IMPROPER
VENUE OR FORUM NON CONVENIENS TO ANY SUIT OR PROCEEDING INSTITUTED BY THE
GRANTEE UNDER THIS AGREEMENT IN ANY STATE OR FEDERAL COURT LOCATED WITHIN
CHICAGO, STATE OF ILLINOIS AND CONSENTS TO THE GRANTING OF SUCH LEGAL OR
EQUITABLE RELIEF AS IS DEEMED APPROPRIATE BY THE COURT. NOTHING IN THIS SECTION
SHALL AFFECT THE RIGHT OF THE GRANTEE TO BRING ANY ACTION OR PROCEEDING AGAINST
THE GRANTOR OR ITS PROPERTY IN THE COURTS OF ANY OTHER JURISDICTION WHICH HAS
JURISDICTION OVER THE GRANTOR OR ITS PROPERTY. THIS PROVISION IS A MATERIAL
INDUCEMENT FOR THE LENDERS TO ADVANCE CREDIT TO THE GRANTOR.
[SIGNATURES ON NEXT PAGE]
IN WITNESS WHEREOF, the Grantor has caused this Grant of
Security Interest to be executed and sealed in its corporate name by its duly
authorized corporate officer as of the date first above written.
CYTOMEDIX, INC, a Delaware corporation
By: /s/ Xxxxxxxxxxx X. Xxxxxxx
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Name: Xxxxxxxxxxx X. Xxxxxxx
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Title: Vice President
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ILLINOIS
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LAKE ) SS:
---------------- )
The foregoing instrument was acknowledged before me this _____ day of
__________________, 2000 by Xxxxxxxxxxx Xxxxxxx, as OFFICER of CYTOMEDIX, a
DEL corporation, on behalf of the corporation. He/she is personally known to me
or has produced a driver's license as identification and did (did not) take an
oath.
/s/ Xxxxxxxx X. Xxxxx
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Print or Stamp Name: Xxxxxxxx X. Xxxxx
Notary Public, at Large
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My Commission Expires: 3/3/01
OFFICIAL SEAL
XXXXXXXX X. XXXXX
NOTARY PUBLIC, STATE OF ILLINOIS
MY COMMISSION EXPIRES: 03/03/01
SCHEDULE 1
U.S. TRADEMARK REGISTRATIONS
AND PENDING APPLICATIONS
REGISTERED U.S. TRADEMARKS
XXXX REG. NO. DATE OF ISSUE
---- -------- -------------
Autologous US 75/507,641 6/23/98 Issued 4/11/00
Autologous Platelet Gel US 75/507,346 6/23/98
Autologous Platelet Jel US 75/507,345 6/23/98
Autolo-Gel US 75/759,746 7/26/99
Autolo US 75/759,747 7/26/99
Cytomedix
PENDING U.S. TRADEMARK APPLICATIONS
XXXX SERIAL NO. FILING DATE
---- ---------- -----------
FOREIGN TRADEMARK REGISTRATIONS
AND PENDING APPLICATIONS
REGISTERED FOREIGN TRADEMARKS
XXXX REG. NO. DATE OF ISSUE
---- -------- -------------
Canada 512700 7/07/99
Japan 0000000 4/30/92
Sweden 220805 2/01/99
US 1,596,010 5/15/90
PENDING FOREIGN. TRADEMARK APPLICATIONS
XXXX SERIAL NO. FILING DATE
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Philippines App. No. 01601 2/16/99
SCHEDULE 2
U.S. COPYRIGHTS, COPYRIGHT REGISTRATIONS
AND PENDING APPLICATIONS
NON-REGISTERED COPYRIGHTS CLAIMED
REGISTERED U.S. COPYRIGHTS
COPYRIGHT REG. NO. DATE OF ISSUE
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PENDING U.S. COPYRIGHT APPLICATIONS
COPYRIGHT SERIAL NO. FILING DATE
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SCHEDULE 3
U.S. PATENTS, PATENT REGISTRATIONS
AND PENDING APPLICATIONS
REGISTERED U.S. PATENTS
PATENT REG. NO. DATE OF ISSUE
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Improved Enriched Platelet Wound Healant PCT/US99/02981 2/13/99
Improved Enriched Platelet Wound Healant US Patent (to be assigned)7/19/00
US 5470,831 11/28/95
US 5,776,892 7/07/98
Wound Healing Agents US
Wound Healing Agents US
Wound Healing Agents US
Wound Healing Agents (Hair Growth) US 4,957,742 9/18/90
Isolating Wound Capillary Endothelial Cells US
Wound Healing Agents US
Wound Healing Agents US
Wound Healing Agents US
Platelet Releasale for Efficacious Treatment of Tissue US
Virus Free Platelet Derivative & Method of Making Same US
Coating a Prosthetic Surface w/ Mammalian Cells US
Method for Promoting Hair Growth US 5,178,883 1/12/93
Coating a Prosthetic Surface w/ Mammalian Cells US
Coating a Prosthetic Surface w/ Mammalian Cells US
Wound Healing Agents US
Method for Isolating Wound Capillary Endotheral Cells US
Platelet Releasale for Efficacious Treatment of Tissue US
Wound Healing Agents US
Wound Healing Agents US
Virus Free Platelet Derivative & Method of Making Same US
Method & Assay Improved Specific Binding Reactivity of a Polypeptide US
Method & Assay Improved Specific Binding Reactivity of a Polypeptide US
PENDING U.S. PATENT APPLICATIONS
PATENT SERIAL NO. FILING DATE
------ ---------- -----------
Platelet Releasale for Efficacious Treatment of Tissue US 5,599,558 2/04/97
FOREIGN PATENTS, PATENT REGISTRATIONS
AND PENDING APPLICATIONS
REGISTERED FOREIGN PATENTS
PATENT REG. NO. DATE OF ISSUE
------ -------- -------------
Improved Enriched Platelet Wound Healant Australia 53122/99 2/29/00
Improved Enriched Platelet Wound Healant Brazil (TBA) 1/31/00
Improved Enriched Platelet Wound Healant Canada 2,301,794 2/18/00
Improved Enriched Platelet Wound Healant Japan 2000-555609 1/31/00
Improved Enriched Platelet Wound Healant Mexico 000009 1/03/00
Improved Enriched Platelet Wound Healant Great Britain 00024257 2/02/00
Austria E 164 167 3/18/98
Belgium 0 563 329B 3/18/98
Canada 2,098,921 Filing Date 12/20/91
Switzerland 0 563 329B 3/18/98
Germany 69129121 3/18/98
Denmark 0 563 329B 3/18/98
European 0 563 329B 3/18/98
Spain 2117045 3/18/98
France 0 563 329B 3/18/98
Great Britain 0 563 329B 3/18/98
Italy 0 563 329B 3/18/98
Korea 204,400 3/29/99
Netherlands 0 563 329B 3/18/98
Sweden 0 563 329B 3/18/98
WO PCT (US91/09813) 12/20/91
Europe (Published) 94921322.7 (6/17/94)
WO PCT (US94/06888) (6/17/94)
Wound Healing Agents AR 235,349 8/31/87
Wound Healing Agents CA 1,261,259 9/26/89
Wound Healing Agents IE 57,894 5/05/98
Wound Healing Agents IL 77,096 11/19/85
Wound Healing Agents WO
Wound Healing Agents AU 596,954
Wound Healing Agents BR
Wound Healing Agents DK 165,169 3/01/93
Wound Healing Agents FI 85,219 3/25/92
Wound Healing Agents HU
Wound Healing Agents JP 1,986,949 11/08/95
Wound Healing Agents NO 170,194 9/23/92
Wound Healing Agents RU
Wound Healing Agents AT 202,298 7/15/92
Wound Healing Agents BE 202,298 7/15/92
Wound Healing Agents CH 202,298 7/15/92
Wound Healing Agents DE 202,298 7/15/92
Wound Healing Agents EP 202,298 7/15/92
Wound Healing Agents EP
Wound Healing Agents FR 202,298 7/15/92
Wound Healing Agents GB 202,298 7/15/92
Wound Healing Agents IT 202,298 7/15/92
Wound Healing Agents LU 202,298 7/15/92
Wound Healing Agents NL 202,298 7/15/92
Wound Healing Agents SE 202,298 7/15/92
Wound Healing Agents AT
Wound Healing Agents DE
Wound Healing Agents GB 2,248,777
Wound Healing Agents 8,603,122
Wound Healing Agents NL
Wound Healing Agents SE
Wound Healing Agents CH 310,686 4/12/89
Wound Healing Agents (Hair Growth) AU
Wound Healing Agents (Hair Growth) CA
Wound Healing Agents (Hair Growth) EP
Wound Healing Agents (Hair Growth) JP
Wound Healing Agents (Hair Growth) WO
Isolating Wound Capillary Endothelial Cells WO
Platelet Releasale for Efficacious Treatment of Tissue AU 659,405 9/05/95
Platelet Releasale for Efficacious Treatment of Tissue CA
Platelet Releasale for Efficacious Treatment of Tissue DE 417,818 11/29/95
Platelet Releasale for Efficacious Treatment of Tissue EP 417,818 11/29/95
Platelet Releasale for Efficacious Treatment of Tissue FR 9,011,398 6/16/95
Platelet Releasale for Efficacious Treatment of Tissue FR 417,818 11/29/95
Platelet Releasale for Efficacious Treatment of Tissue GB 417,818 11/29/95
Platelet Releasale for Efficacious Treatment of Tissue IL
Platelet Releasale for Efficacious Treatment of Tissue IT 417, 818 11/29/95
Platelet Releasale for Efficacious Treatment of Tissue JP
Platelet Releasale for Efficacious Treatment of Tissue KR
Platelet Releasale for Efficacious Treatment of Tissue NL 417,818 11/29/95
Platelet Releasale for Efficacious Treatment of Tissue NO
Platelet Releasale for Efficacious Treatment of Tissue NZ 235,326 9/20/93
Platelet Releasale for Efficacious Treatment of Tissue WO
Platelet Releasale for Efficacious Treatment of Tissue ZA 907, 276 5/27/92
Virus Free Platelet Derivative IL
Virus Free Platelet Derivative NZ
Virus Free Platelet Derivative WO
Virus Free Platelet Derivative ZA 911,652 3/25/92
Coating a Prosthetic Surface w/ Mammalian Cells AU
Coating a Prosthetic Surface w/ Mammalian Cells CA
Coating a Prosthetic Surface w/ Mammalian Cells EP
Coating a Prosthetic Surface w/ Mammalian Cells FI
Coating a Prosthetic Surface w/ Mammalian Cells IL 97,896 8/27/95
Coating a Prosthetic Surface w/ Mammalian Cells NO
Coating a Prosthetic Surface w/ Mammalian Cells NZ
Coating a Prosthetic Surface w/ Mammalian Cells WO
Coating a Prosthetic Surface w/ Mammalian Cells ZA 912,882 1/29/92
Method & Assay Improved Specific Binding Reactivity AU
Method & Assay Improved Specific Binding Reactivity CA
Method & Assay Improved Specific Binding Reactivity EP
Method & Assay Improved Specific Binding Reactivity JP
Method & Assay Improved Specific Binding Reactivity NZ
Method & Assay Improved Specific Binding Reactivity WO
PENDING FOREIGN PATENT APPLICATIONS
PATENT SERIAL NO. FILING DATE
------ ---------- -----------
Canada (Pending) Appl. No. 2,165,418 6/17/94
Japan (Pending) Appl. No. 4-505279 12/20/91
Japan (Pending) Appl. No. 07-502990 6/17/94
SCHEDULE 4
TRADEMARK, COPYRIGHT AND PATENT LICENSES
Trademark, Copyright and Patent Licenses with respect to which Grantor is a
licensor:
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Trademark, Copyright or
Patent Registration OR
Grantor Licensee Date of License Serial Number
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Trademarks, Copyrights and Patents with respect to which Grantor is a licensee:
---------------------------- ----------------------- -------------------------- -----------------------------
Trademark, Copyright or
Patent Registration OR
Grantor Licensee Date of License Serial Number
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