INTELLECTUAL PROPERTY SECURITY AGREEMENT
Exhibit 10.8
INTELLECTUAL PROPERTY SECURITY AGREEMENT
This Intellectual Property Security Agreement (“Agreement”) is entered into as of June 13, 2016 by and among (a) INSPIRE M.D LTD, a a company organized under the laws of the State of Israel whose address is 4 Xxxxxxx Xxxxxx Xx., Xxx Xxxx, Xxxxxx 00000 (“Grantor”), (b) the several banks and other financial institutions or entities from time to time parties to the Loan Agreement (defined below; collectively, the “Lender”), and (c) HERCULES CAPITAL, INC., a Maryland corporation in its capacity as administrative agent for itself and the Lender (in such capacity, the “Agent”).
RECITALS
A. Lender has agreed to make certain advances of money and to extend certain financial accommodations to Grantor (the “Loans”) in the amounts and manner set forth in that certain Loan and Security Agreement by and among Agent, Lender, INSPIREMD, INC., a Delaware corporation, and Grantor dated as of even date hereof (as the same may be amended, modified or supplemented from time to time, the “Loan Agreement”; capitalized terms used herein are used as defined in the Loan Agreement). Lender is willing to make the Loans to Grantor, but only upon the condition, among others, that Grantor shall grant to Agent a security interest in its Copyrights, Trademarks, Patents, and Mask Works (as each term is described below) to secure the obligations of Grantor to Agent and Lender.
B. Pursuant to the terms of the Loan Agreement, Grantor has granted to Agent a security interest in all of Grantor's right, title and interest, whether presently existing or hereafter acquired, in, to and under all of the Collateral.
NOW, THEREFORE, for good and valuable consideration, receipt of which is hereby acknowledged, and intending to be legally bound, as collateral security for the prompt and complete payment when due of its obligations to Agent and Lender, Grantor hereby represents, warrants, covenants and agrees as follows:
AGREEMENT
1. Grant of Security Interest. To secure its obligations to Agent and Lender, Grantor grants and pledges to Agent a security interest in all of Grantor’s right, title and interest in, to and under its intellectual property (all of which shall collectively be called the “Intellectual Property Collateral”), including, without limitation, the following:
(a) Any and all copyright rights, copyright applications, copyright registrations and like protections in each work of authorship and derivative work thereof, whether published or unpublished and whether or not the same also constitutes a trade secret, now or hereafter existing, created, acquired or held, including without limitation those set forth on Exhibit A attached hereto (collectively, the “Copyrights”);
(b) Any and all trade secrets, and any and all intellectual property rights in computer software and computer software products now or hereafter existing, created, acquired or held;
(c) Any and all design rights that may be available to Grantor now or hereafter existing, created, acquired or held;
(d) All patents, patent applications and like protections including, without limitation, improvements, divisions, continuations, renewals, reissues, extensions and continuations-in-part of the same, including without limitation the patents and patent applications set forth on Exhibit B attached hereto (collectively, the “Patents”);
(e) Any trademark and servicemark rights, whether registered or not, applications to register and registrations of the same and like protections, and the entire goodwill of the business of Grantor connected with and symbolized by such trademarks, including without limitation those set forth on Exhibit C attached hereto (collectively, the “Trademarks”);
(f) All mask works or similar rights available for the protection of semiconductor chips, now owned or hereafter acquired, including, without limitation those set forth on Exhibit D attached hereto (collectively, the “Mask Works”);
(g) Any and all claims for damages by way of past, present and future infringements of any of the rights included above, with the right, but not the obligation, to xxx for and collect such damages for said use or infringement of the intellectual property rights identified above;
(h) All licenses or other rights to use any of the Copyrights, Patents, Trademarks, or Mask Works and all license fees and royalties arising from such use to the extent permitted by such license or rights;
(i) All amendments, extensions, renewals and extensions of any of the Copyrights, Trademarks, Patents, or Mask Works; and
(j) All proceeds and products of the foregoing, including without limitation all payments under insurance or any indemnity or warranty payable in respect of any of the foregoing.
2. Recordation. Grantor authorizes the Commissioner for Patents, the Commissioner for Trademarks and the Register of Copyrights and any other government officials to record and register this Agreement upon request by Agent.
3. Loan Documents. This Agreement has been entered into pursuant to and in conjunction with the Loan Agreement, which is hereby incorporated by reference. The provisions of the Loan Agreement shall supersede and control over any conflicting or inconsistent provision herein. The rights and remedies of Agent with respect to the Intellectual Property Collateral are as provided by the Loan Agreement and related documents, and nothing in this Agreement shall be deemed to limit such rights and remedies.
4. Execution in Counterparts. This Agreement may be executed in counterparts (and by different parties hereto in different counterparts), each of which shall constitute an original, but all of which when taken together shall constitute a single contract. Delivery of an executed counterpart of a signature page to this Agreement by facsimile or in electronic (i.e., "pdf" or "tif" format) shall be effective as delivery of a manually executed counterpart of this Agreement.
5. Successors and Assigns. This Agreement will be binding on and shall inure to the benefit of the parties hereto and their respective successors and assigns.
6. Governing Law. This Agreement and any claim, controversy, dispute or cause of action (whether in contract or tort or otherwise) based upon, arising out of or relating to this Agreement and the transactions contemplated hereby and thereby shall be governed by, and construed in accordance with, the laws of the United States and the State of California, without giving effect to any choice or conflict of law provision or rule (whether of the State of California or any other jurisdiction).
[Signature page follows.]
IN WITNESS WHEREOF, the parties have caused this Intellectual Property Security Agreement to be duly executed by its officers thereunto duly authorized as of the first date written above.
| GRANTOR: | ||
| INSPIRE M.D LTD | ||
| By: | /s/ Xxxxx Xxxxx | |
| Name: | Xxxxx Xxxxx | |
| Title: | CFO | |
| AGENT: | ||
| HERCULES CAPITAL, INC. | ||
| By: | /s/ Ben Bang | |
| Name: | Ben Bang | |
| Title: | Associate General Counsel | |
| LENDER: | ||
| HERCULES CAPITAL, INC. | ||
| By: | /s/ Ben Bang | |
| Name: | Ben Bang | |
| Title: | Associate General Counsel | |
EXHIBIT A
Copyrights
| Description | Registration/ Application Number |
Registration/ Application Date | ||
| None | N/A | N/A |
EXHIBIT B
Patents
| Description | Registration/ Application Number (Country) |
Registration/ Application Date | ||
| Optimized Stent Jacket | 198,665 (IL) | Nov. 21, 2007; issued May 28, 2014 | ||
| Optimized Stent Jacket | ZL200780043259.2 (CN) | Nov. 21, 2007; issued Jan. 2, 2013 | ||
| Optimized Drug-Eluting Stent Assembly | 9,132,003 (US); 14/314,777 | June 24, 2014; issued Jan. 2, 2013 | ||
| Optimized Stent Jacket | ZL201210454357.8 (CN) | Nov. 13, 2013; issued Dec. 9, 2015 | ||
| Bifurcated Stent Assemblies | 198,188 (IL) | Oct. 18, 2007; issued May 1, 2014 | ||
| In Vivo Filter Assembly | 8,043,323 (US); 11/582,354 | Oct. 18, 2006; issued Oct. 25, 2011 | ||
| Bifurcated Stent Assemblies | 8,961,586 (US); 11/797,168 | May 1, 2007; issued Feb. 24, 2015 | ||
| In Vivo Filter Assembly | 9,132,261 (US); 13/237,977 | Sept. 21, 2011; issued Sept. 15, 2015 | ||
| Bifurcated Stent Assemblies | ZL200780046676.2 (CN) | Issued Sept. 26, 2012 | ||
| Stent Apparatuses For Treatment Via Body Lumens And Methods Of Use | 2,609,687 (CA) | May 24, 2006; issued April 22, 2014 | ||
| Stent Apparatuses For Treatment Via Body Lumens And Methods Of Use | 2,843,097 (CA) | Feb. 20, 2014; issued Oct. 27, 2015 |
| Stent Apparatuses For Treatment Via Body Lumens And Methods Of Use | 2007/10751 (ZA) | Issued Oct. 27, 2010 | ||
| Filter Assemblies | 198189 (IL) | Oct. 18, 2007; issued Mar. 27, 2014 | ||
| Filter Assemblies | 2,666,712 (CA) | Oct. 18, 2007; issued Mar. 31, 2015 | ||
| Filter Assemblies | ZL200780046659.9 (CN) | Oct. 18, 2007; issued Mar. 31, 2015 | ||
| Filter Assemblies | 201210119132.7 (CN) | Oct. 18, 2007 | ||
| Knitted Stent Jackets | 198190 (IL) | Oct. 18, 2007; issued Feb. 1, 2014 | ||
| Knitted Stent Jackets | ZL200780046697.4 (CN) | Issued Oct. 10, 2012; expires Oct. 17, 2027 | ||
| Knitted Stent Jackets | 2,666,728 (CA) | Oct. 18, 2007; issued June 23, 2015 | ||
| Knitted Stent Jackets | ZL201210320950.3 (CN) | Oct. 18, 2007; issued Dec. 2, 2015 | ||
| Stent with Sheath and Metal Wire | 14/315,001 (US); 2014/0309723 | June 25, 2014 | ||
| Stent with Sheath and Metal Wire and Methods | 14/705,871 (US); 2015/0230953 | May 6, 2015 | ||
| Optimized Stent Jacket | 12/791,008 (US); 2010/0241214 | June 1, 2010 | ||
| Intravascular Aneurysm Treatment Device And Methods | 14/935,339 (US); 2016/0058589 | Nov. 6, 2015 | ||
| Optimized Stent Jacket | 07827415.6 (EP); EP2088962 A4 | Nov. 21, 2007 | ||
| Optimized Stent Jacket | 230922 (IL) | Feb. 11, 2014 | ||
| Optimized Stent Jacket | 2,670,724 (CA) | Nov. 21, 2007 |
| 2 |
| Optimized Stent Jacket | 4008/DELNP/2009 (IN) | Nov. 21, 2007 | ||
| Optimized Drug-Eluting Stent Assembly | 14/851,882 (US); 2015/0374519 | Sept. 11, 2015 | ||
| Bifurcated Stent Assemblies | 3113/DELNP/2009 (IN) | Oct. 18, 2007 | ||
| Stent Apparatuses For Treatment Via Body Lumens And Methods Of Use | EP 06745069.2 (EP); EP1885281 A2 | May 24, 2006 | ||
| Stent Apparatuses For Treatment Via Body Lumens And Methods Of Use | 11/920,972 (US); 2009/0138070 | Nov. 23, 2007 | ||
| Stent Apparatuses For Treatment Via Body Lumens And Methods Of Use | 187516 (IL) | Nov. 20, 2007 | ||
| Carotid Stent Assembly and Methods for Treatment Via Body Lumens | 14/500,759 (US); 2015/0032197 | Sept. 29, 2014 | ||
| Filter Assemblies | EP 2007 827228.3 (EP) | Oct. 18, 2007 | ||
| Filter Assemblies | 12/445,972 (US); 2010/0204772 | Apr. 17, 2009 | ||
| Filter Assemblies | 2,881,557 (CA) | Feb. 6, 2015 | ||
| Filter Assemblies | 3114/DELNP/2009 (IN) | Oct. 18, 2007 | ||
| Knitted Stent Jackets | EP 07827229.1 (EP); EP 2076212 A2 | Oct. 18, 2005 | ||
| Knitted Stent Jackets | 12/445,980 (US); 2010/0324651 | Apr. 17, 2009 | ||
| Knitted Stent Jackets | 3171/DELNP/2009 (IN) | Oct. 18, 2007 | ||
| Knitted Stent Jackets | 2,887,189 (CA) | Apr. 2, 2015 | ||
| Stent Thermoforming Apparatus and Methods | 14/505,310 (US); 2016/0096308 | Oct. 2, 2014 | ||
| Stent Thermoforming Apparatus and Methods | PCT/IB2015/057367 | Sept. 24, 2015 | ||
| Stent-Mesh Assembly And Methods | 14/592,714 (US); 2015/0119971 | Jan. 8, 2015 | ||
| Stent with Sheath and Metal Wire Retainer | 13/994,739 (US); 2013/0274858 | Dec. 18, 2011 | ||
| Deformable Tip For Stent Delivery And Methods Of Use | 62/290,031 (US) | Feb. 2, 2016 |
| 3 |
EXHIBIT C
Trademarks
| Description | Registration/ Application Number (Country) |
Registration/ Application Date | ||
| CARENET | 013399977 (EU) | Mar. 17, 2015 | ||
| CGUARD | 013370978 (EU) | Mar. 26, 2015 | ||
| INSPIREMD | 008642118 (EU) | Apr. 26, 2010 | ||
| MGUARD | 008642175 (EU) | Apr. 26, 2010 | ||
| MGUARD PRIME | 013366141 (EU) | Mar. 12, 2015 | ||
| MICRONET (Class 10) (Supplemental Registration) | 4,721,716 (US); 85/659,900 | Apr. 14, 2015 | ||
| MNP MicroNet Protection Logo | 011737699 (EU) | Sept. 9, 2013 | ||
| CARENET | 86/261,697 (US) | Xxx. 00, 0000 | ||
| XXxxxx | 86/364,984 (US) | Aug. 13, 2014 | ||
| MGUARD PRIME | 86/417,711 (US) | Oct. 8, 2014 | ||
| InspireMD | 86/702,932 (US) | July 23, 2015 | ||
| SmartFit | 86/702,941 (US) | July 23, 2015 | ||
| PVGuard | 86/702,984 (US) | July 23, 2015 | ||
| NGuard | 86/702,957 (US) | July 23, 2015 | ||
| AGuard | 86/702,971 (US) | July 23, 2015 |
| 4 |
EXHIBIT D
Mask Works
| Description | Registration/ Application Number |
Registration/ Application Date | ||
| None | N/A | N/A |
