EXHIBIT 10.47
PATENT COLLATERAL ASSIGNMENT
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This Agreement is made on the 12th day of February, 1999, between XXXXX.XXX,
Inc. a Delaware corporation, having a mailing address at 0000 Xxxxxxx Xxxxxx
Xx., Xxx Xxxxx, XX 00000-0000 ("Assignor"), and Venture Lending & Leasing II,
Inc. ("Assignee"). Assignee's address is 0000 Xxxxx Xxxxx Xxxxxx, Xxxxx 000, Xxx
Xxxx, Xxxxxxxxxx 00000.
RECITALS
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A. Assignor owns the Patents and Patent applications listed on Schedule 1
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hereto, and is a party to the Patent Licenses listed on Schedule 1 hereto;
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B. Assignor and Assignee are parties to a Loan and Security Agreement of even
date herewith (as the same may be amended from time to time, the "Loan
Agreement");
C. Pursuant to the terms of the Loan Agreement of even date herewith Assignor
has granted to Assignee a security interest in certain personal property assets
of Assignor, including all right, title and interest of Assignor in, to and
under all of Assignor's Patents (as defined in the Loan Agreement), all of
Assignor's Patent applications and all of Assignor's Patent Licenses (as defined
in the Loan Agreement), whether presently existing or hereafter arising or
acquired, and all products and proceeds thereof, including, without limitation,
any and all causes of action which may exist by reason of infringement thereof
for the full term of the Patents, to secure the payment of the Obligations (as
defined in the Loan Agreement);
C. Capitalized terms used herein and not otherwise defined shall have the
meanings set forth in the Loan and Security Agreement.
NOW, THEREFORE, in consideration of the premises, Assignor hereby agrees with
Assignee as follows:
1. To secure the complete and timely satisfaction of all Obligations,
Assignor hereby grants, assigns and conveys to Assignee a continuing security
interest in and lien on all of Assignor's entire right, title and interest in
and to the Patents, Patent applications and Patent Licenses listed on Schedule 1
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hereto (as the same may be amended pursuant hereto from time to time),
including, without limitation, all proceeds thereof (such as, by way of example,
license royalties and proceeds of infringements, all rights corresponding
thereto throughout the world and all reissues, divisions, continuations,
renewals, extensions and continuations-in-part thereof (collectively called the
"Patents").
2. Assignor covenants and warrants that:
a) The Patents are subsisting and have not been adjudged
invalid or unenforceable, in whole or in part;
b) To the best of Assignor's knowledge, each of the Patents is
valid and enforceable and Assignor has notified Assignee in writing of all prior
art (including public uses and sales) of which it is aware;
c) Assignor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the Patents, free and
clear of any liens, charges and encumbrances, including, without limitation,
pledges, assignments, licenses, shop rights and covenants by Assignor not to xxx
third persons, except (i) Permitted Liens; and (ii) any license disclosed in
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Schedule 1; and
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d) Assignor has the unqualified right to enter into this
Agreement and perform its terms.
3. Assignor agrees that, until all of the Obligations shall have been
satisfied in full, it will not enter into any agreement (for example, a license
agreement) which is inconsistent with Assignor's obligations under this
Agreement, without Assignee's prior written consent; provided, that so long as
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no Default or Event of Default (as defined in the Loan Agreement) shall have
occurred and be continuing, Assignor may grant licenses to third parties to use
the Patents in the ordinary course of business of both Assignor and such third
party on arm's length and customary business terms.
4. If, before the Obligations shall have been satisfied in full,
Assignor shall obtain rights to any new patentable inventions, or become
entitled to the benefit of any Patent application or Patent for any reissue,
division, continuation, renewal, extension, or continuation-in-part of any
Patent or any improvement on any Patent, the provisions of paragraph 1 shall
automatically apply thereto and Assignor shall give to Assignee prompt notice
thereof in writing.
5. Assignor authorizes Assignee unilaterally to modify this Agreement
by amending Schedule 1 to include any future Patents and Patent applications
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which are Patents under paragraph 1 or paragraph 4 hereof.
6. If any Event of Default (as defined in the Loan Agreement) shall
have occurred and be continuing, Assignee shall have, in addition to all other
rights and remedies given it by this Agreement or any other Loan Document (as
defined in the Loan Agreement), those allowed by law and the rights and remedies
of a secured party under the Uniform Commercial Code as enacted in any
jurisdiction in which the Patents may be located and, without limiting the
generality of the foregoing, Assignee may immediately, without demand of
performance and without other notice (except as set forth below) or demand
whatsoever to Assignor, all of which are hereby expressly waived, and without
advertisement, sell at public or private sale or otherwise realize upon, the
whole or from time to time any part of the Patents, or any interest which the
Assignor may have therein, and after deducting from the proceeds of sale or
other disposition of the Patents all expenses (including reasonable expenses for
brokers' fees and legal services), shall apply the residue of such proceeds
toward the payment of the Obligations. Any remainder of the proceeds after
payment in full of the Obligations shall be paid over to Assignor. Notice of
any sale or other disposition of the Patents shall be given to Assignor at least
ten (10) days before the time of any intended public or private sale or other
disposition of the Patents is to be made, which Assignor hereby agrees shall be
reasonable notice of such sale or other disposition. At any such sale or other
disposition Assignee may, to the extent permissible under applicable law,
purchase the whole or any part of the Patents sold, free from any right of
redemption on the part of Assignor, which right is hereby waived and released.
7. Assignor hereby authorizes and empowers Assignee to make,
constitute and appoint any officer or agent of Assignee, as Assignee may select
in its exclusive discretion, as Assignor's true and lawful attorney-in-fact,
with the power, after and during the continuance of an Event of Default, to
endorse Assignor's name on all applications, documents, papers and instruments
necessary for Assignee to use the Patents, or to grant or issue any exclusive or
nonexclusive license under the Patents to any third person, or necessary for
Assignee to assign, pledge, convey or otherwise transfer title in or dispose of
the Patents to any third person as a part of Assignee's realization on such
collateral upon acceleration of the Obligations following an Event of Default.
Assignor hereby ratifies all that such attorney shall lawfully do or cause to be
done by virtue hereof. This power of attorney being coupled with an interest
shall be irrevocable for the life of this Agreement.
8. At such time as Assignor shall completely satisfy all of the
Obligations, this Agreement shall terminate and Assignee shall execute and
deliver to Assignor all assignments, reconveyances or other instruments as may
be reasonably requested by Assignor to re-vest in Assignor full title to the
Patents, subject to any disposition thereof which may have been made by Assignee
pursuant hereto.
9. Any and all fees, costs and expenses, of whatever kind or nature,
including the reasonable attorneys' fees and legal expenses incurred by Assignee
in connection with the preparation of this Agreement and all other documents
relating hereto and the consummation of this transaction, the filing or
recording of any documents (including all taxes in connection therewith) in
public offices, the payment or discharge of any taxes, counsel fees, maintenance
fees, encumbrances or otherwise protecting, maintaining or preserving the
Patents, or in defending or prosecuting any actions or proceedings arising out
of or related to the Patents, shall be borne and paid by Assignor on demand by
Assignee and until so paid shall be added to the principal amount of the
Obligations and shall bear interest at the highest applicable Default Rate (as
defined in the Loan Agreement).
10. Assignor shall have the duty, through counsel reasonably
acceptable to Assignee, to prosecute diligently any Patent applications pending
as of the date of this Agreement or thereafter until the Obligations shall have
been paid in full, to make application on unpatented but patentable inventions
and to preserve and maintain all rights in Patent applications and Patents,
including, without limitation, the payment of all maintenance fees. Any
expenses incurred in connection with such an application shall be borne by
Assignor. The Assignor shall not abandon any right to file a Patent
application, or any pending Patent application or Patent without the consent of
Assignee, which consent shall not be unreasonably withheld.
11. Assignor shall have the right, with the consent of Assignee,
which shall not be unreasonably withheld, to bring suit in its own name, and to
join Assignee, if necessary, as a party to such suit so long as Assignee is
satisfied that such joinder will not subject it to any risk of liability, to
enforce the Patents. Assignor shall promptly, upon demand, reimburse and
indemnify Assignee for all damages, costs and expenses, including reasonable
attorneys' fees incurred by Assignee, in accordance with the Loan Agreement.
12. No course of dealing between Assignor and Assignee, nor any
failure to exercise, nor any delay in exercising, on the part of Assignee, any
right, power or privilege hereunder or under the Loan Agreement shall operate as
a waiver thereof; nor shall any single or partial exercise of any right, power
or privilege hereunder or thereunder preclude any other or further exercise
thereof or the exercise of any other right, power or privilege.
13. All of Assignee's rights and remedies with respect to the
Patents, whether established hereby or by the Loan & SecurityAgreement,
Agreement or any other agreements or by law shall be cumulative and may be
exercised singularly or concurrently.
14. The provisions of this Agreement are severable, and if any clause
or provision shall be held invalid and unenforceable in whole or in part in any
jurisdiction, then such invalidity or unenforceability shall affect only such
clause or provision, or part thereof, in such jurisdiction, and shall not in any
manner affect such clause or provision in any other jurisdiction, or any clause
or provision of this Agreement in any jurisdiction.
15. This Agreement is subject to modification only by a writing
signed by both parties, except as provided in paragraph 5.
16. This Agreement shall be binding upon Assignor and Assignee and
their respective permitted successors and assigns, and shall inure to the
benefit of Assignor, Assignee and the respective permitted successors and
assigns of Assignor and Assignee.
17. The validity and interpretation of this Agreement and the rights
and obligations of the parties shall be governed by the laws of the State of
California.
WITNESS the execution hereof under seal as of the day and year first above
written.
XXXXX.XXX, INC.
By: /s/ C A CRANE
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Name: C A Crane
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Title: CEO
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VENTURE LENDING & LEASING II, INC
By: /s/ XXXXXXXX X. XXXXXXXXX
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Name: Xxxxxxxx X. Xxxxxxxxx
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Title: President
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SCHEDULE 1 TO
PATENT COLLATERAL ASSIGNMENT
A. PATENTS AND PATENT APPLICATIONS:
Application Issue or Expiration
or Patent No. Filing Date Date Title
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B. PATENT LICENSES:
Corresponding Date License Termination
Patent No. Granted Licensee Date
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