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EXHIBIT 10.1(b)
INTELLECTUAL PROPERTY SECURITY AGREEMENT
This INTELLECTUAL PROPERTY SECURITY AGREEMENT ("Agreement"), dated as
of May 5, 1998, is entered into between INTERNATIONAL REMOTE IMAGING SYSTEMS,
INC., a Delaware corporation ("Debtor") and FOOTHILL CAPITAL CORPORATION, a
California corporation ("Foothill"), in light of the following:
A. Debtor, PSI, StatSpin and Foothill are, contemporaneously
herewith, entering into that certain Loan and Security Agreement ("Loan
Agreement") and other instruments, documents and agreements contemplated
thereby or related thereto (collectively, together with the Loan Agreement, the
"Loan Documents"); and
B. Debtor is the owner of certain intellectual property,
identified below, in which Debtor is granting a security interest to Foothill.
NOW THEREFORE, in consideration of the mutual promises, covenants,
conditions, representations, and warranties hereinafter set forth and for other
good an valuable consideration, the parties hereto mutually agree as follows:
1. DEFINITIONS AND CONSTRUCTION.
1.1 DEFINITIONS. The following terms, as used in this
Agreement, have the following meanings:
"Code" means the California Uniform Commercial Code,
as amended and supplemented from time to time, and any successor statute.
"Collateral" means:
(i) Each of the trademarks and rights and
interest which are capable of being protected as trademarks (including
trademarks, service marks, designs, logos, indicia, tradenames,
corporate names, company names, business names, fictitious business
names, trade styles, and other source or business identifiers, and
applications pertaining thereto), which are presently, or in the
future may be, owned, created, acquired, or used (whether pursuant to
a license or otherwise) by Debtor, in whole or in part, and all
trademark rights with respect thereto throughout the world, including
all proceeds thereof (including license royalties and proceeds of
infringement suits), and rights to renew and extend such trademarks
and trademark rights;
(ii) Each of the patents and patent applications
which are presently, or in the future may be, owned, issued, acquired,
or used (whether pursuant to a license or otherwise) by Debtor, in
whole or in part, and all patent rights with respect thereto
throughout the world, including all proceeds thereof (including
license
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royalties and proceeds of infringement suits), foreign filing rights,
and rights to extend such patents and patent rights;
(iii) All of Debtor's right to the trademarks and
trademark registrations listed on Schedule A, attached hereto, as the
same may be updated hereafter from time to time;
(iv) All of Debtor's right, title, and interest,
in and to the patents listed on Schedule B, attached hereto, as the
same may be updated hereafter from time to time;
(v) All of Debtor's right, title and interest to
register trademark claims under any state or federal trademark law or
regulation of any foreign country and to apply for, renew, and extend
the trademark registrations and trademark rights, the right (without
obligation) to xxx or bring opposition or cancellation proceedings in
the name of Debtor or in the name of Foothill for past, present, and
future infringements of the trademarks, registrations, or trademark
rights and all rights (but not obligations) corresponding thereto in
the United States and any foreign country, and the associated
goodwill;
(vi) All of Debtor's right, title, and interest in
all patentable inventions, and to file applications for patent under
federal patent law or regulation of any foreign country, and to
request reexamination and/or reissue of the patents, the right
(without obligation) to xxx or bring interference proceedings in the
name of Debtor or in the name of Foothill for past, present, and
future infringements of the patents, and all rights (but not
obligations) corresponding thereto in the United States and any
foreign country;
(vii) All general intangibles relating to the
foregoing; and
(viii) All proceeds of any and all of the foregoing
(including, without limitation, license royalties and proceeds of
infringement suits) and, to the extent not otherwise included, all
payments under insurance, or any indemnity, warranty, or guaranty
payable by reason of loss or damage to or otherwise with respect to
the Collateral.
"Obligations" means all obligations, liabilities, and
indebtedness of Debtor to Foothill, whether direct, indirect, liquidated, or
contingent, and whether arising under this Agreement, the Loan Agreement, any
other of the Loan Documents, or otherwise, including all costs and expenses
described in Section 11.8 hereof.
"PSI" means Perceptive Scientific Instruments, Inc.,
a Delaware corporation.
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"StatSpin" means StatSpin, Inc., a Massachusetts
corporation.
1.2 CONSTRUCTION. Unless the context of this Agreement
clearly requires otherwise, references to the plural include the singular,
references to the singular include the plural, and the term "including" is not
limiting. The words "hereof," "herein," "hereby," "hereunder," and other
similar terms refer to this Agreement as a whole and not to any particular
provision of this Agreement. Any initially capitalized terms used but not
defined herein shall have the meaning set forth in the Loan Agreement. Any
reference herein to any of the Loan Documents includes any and all alterations,
amendments, extensions, modifications, renewals, or supplements thereto or
thereof, as applicable. Neither this Agreement nor any uncertainty or
ambiguity herein shall be construed or resolved against Foothill or Debtor,
whether under any rule of construction or otherwise. On the contrary, this
Agreement has been reviewed by Debtor, Foothill, and their respective counsel,
and shall be construed and interpreted according to the ordinary meaning of the
words used so as to fairly accomplish the purposes and intentions of Foothill
and Debtor.
2. GRANT OF SECURITY INTEREST.
Debtor hereby grants to Foothill a first-priority security
interest in all of Debtor's right, title, and interest in and to the Collateral
to secure the Obligations.
3. REPRESENTATIONS, WARRANTIES AND COVENANTS.
Debtor hereby represents, warrants, and covenants that:
3.1 TRADEMARKS; SERVICE MARKS; PATENTS.
(i) A true and complete schedule setting forth
all federal and state trademark and service xxxx registrations owned
or controlled by Debtor or licensed to Debtor, together with a summary
description and full information in respect of the filing or issuance
thereof and expiration dates is set forth on Schedule A;
(ii) A true and complete schedule setting forth
all patents owned or controlled by Debtor or licensed to Debtor,
together with a summary description and full information in respect of
the filing or issuance thereof and expiration dates is set forth on
Schedule B;
3.2 VALIDITY; ENFORCEABILITY. Each of the patents,
service marks and trademarks is valid and enforceable, and Debtor is not
presently aware of any past, present, or prospective claim by any third party
that any of the patents, service marks or trademarks are invalid or
unenforceable, or that the use of any patents, service marks or trademarks
violates the rights of any third person, or of any basis for any such claims;
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3.3 TITLE. Debtor is the sole and exclusive owner of the
entire and unencumbered right, title, and interest in and to each of the
patents, service marks, service xxxx registrations, trademarks, and trademark
registrations, free and clear of any liens, charges, and encumbrances,
including pledges, assignments, licenses, shop rights, and covenants by Debtor
not to xxx third persons;
3.4 NOTICE. Debtor has used and will continue to use
proper statutory notice in connection with its use of each of the patents,
service marks and trademarks;
3.5 QUALITY. Debtor has used and will continue to use
consistent standards of high quality (which may be consistent with Debtor's
past practices) in the manufacture, sale, and delivery of products and services
sold or delivered under or in connection with the service marks and trademarks,
including, to the extent applicable, in the operation and maintenance of its
merchandising operations, and will continue to maintain the validity of the
service marks and trademarks;
3.6 PERFECTION OF SECURITY INTEREST. Except for the
filing of a financing statement with the Secretary of State of California and
filings with the United States Patent and Trademark Office necessary to perfect
the security interests created hereunder, no authorization, approval, or other
action by, and no notice to or filing with, any governmental authority or
regulatory body is required either for the grant by Debtor of the security
interest hereunder or for the execution, delivery, or performance of this
Agreement by Debtor or for the perfection of or the exercise by Foothill of its
rights hereunder to the Collateral in the United States.
4. AFTER-ACQUIRED PATENT, SERVICE XXXX OR TRADEMARK RIGHTS.
If Debtor shall obtain rights to any new service marks,
trademarks, any new patentable inventions or become entitled to the benefit of
any patent application or patent for any reissue, division, or continuation, of
any patent, the provisions of this Agreement shall automatically apply thereto.
Debtor shall give prompt notice in writing to Foothill with respect to any such
new service marks, trademarks or patents, or renewal or extension of any
service xxxx or trademark registration. Debtor shall bear any expenses
incurred in connection with future patent applications or service xxxx or
trademark registrations.
5. LITIGATION AND PROCEEDINGS.
Debtor shall commence and diligently prosecute in its own
name, as the real party in interest, for its own benefit, and its own expense,
such suits, administrative proceedings, or other action for infringement or
other damages as are in its reasonable business judgment necessary to protect
the Collateral. Debtor shall provide to Foothill any information with respect
thereto requested by Foothill. Foothill shall provide at Debtor's expense all
necessary cooperation in connection with any such suits, proceedings, or
action,
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including, without limitation, joining as a necessary party. Following
Debtor's becoming aware thereof, Debtor shall notify Foothill of the
institution of, or any adverse determination in, any proceeding in the United
States Patent and Trademark Office, or any United States, state, or foreign
court regarding Debtor's claim of ownership in any of the patents, service
marks or trademarks, its right to apply for the same, or its right to keep and
maintain such patent, service xxxx or trademark rights.
6. POWER OF ATTORNEY.
Debtor grants Foothill power of attorney, having the full
authority, and in the place of Debtor and in the name of Debtor, from time to
time following an Event of Default in Foothill's discretion, to take any action
and to execute any instrument which Foothill may deem necessary or advisable to
accomplish the purposes of this Agreement, including, without limitation, as
may be subject to the provisions of this Agreement: to endorse Debtor's name
on all applications, documents, papers, and instruments necessary for Foothill
to use or maintain the Collateral; to ask, demand, collect, xxx for, recover,
impound, receive, and give acquittance and receipts for money due or to become
due under or in respect of any of the Collateral; to file any claims or take
any action or institute any proceedings that Foothill may deem necessary or
desirable for the collection of any of the Collateral or otherwise to enforce
Foothill's rights with respect to any of the Collateral and to assign, pledge,
convey, or otherwise transfer title in or dispose of the Collateral to any
person.
7. RIGHT TO INSPECT.
Debtor grants to Foothill and its employees and agents the
right to visit Debtor's plants and facilities which manufacture, inspect, or
store products sold under any of the patents or trademarks, and to inspect the
products and quality control records relating thereto at reasonable times
during regular business hours.
8. EVENTS OF DEFAULT.
Any of the following events shall be an Event of Default:
8.1 LOAN AGREEMENT. An Event of Default shall occur as
defined in the Loan Agreement;
8.2 MISREPRESENTATION. Any representation or warranty
made herein by Debtor or in any document furnished to Foothill by Debtor under
this Agreement is incorrect in any material respect when made or when
reaffirmed; and
8.3 BREACH. Debtor fails to observe or perform any
covenant, condition, or agreement to be observed or performed pursuant to the
terms hereof which materially and adversely affects Foothill.
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9. SPECIFIC REMEDIES.
Upon the occurrence of any Event of Default, Foothill shall
have, in addition to, other rights given by law or in this Agreement, the Loan
Agreement, or in any other Loan Document, all of the rights and remedies with
respect to the Collateral of a secured party under the Code, including the
following:
9.1 NOTIFICATION. Foothill may notify licensees to make
royalty payments on license agreements directly to Foothill;
9.2 SALE. Foothill may sell or assign the Collateral and
associated goodwill at public or private sale for such amounts, and at such
time or times as Foothill deems advisable. Any requirement of reasonable
notice of any disposition of the Collateral shall be satisfied if such notice
is sent to Debtor five days prior to such disposition. Debtor shall be
credited with the net proceeds of such sale only when they are actually
received by Foothill, and Debtor shall continue to be liable for any deficiency
remaining after the Collateral is sold or collected. If the sale is to be a
public sale, Foothill shall also give notice of the time and place by
publishing a notice one time at least five days before the date of the sale in
a newspaper of general circulation in the county in which the sale is to be
held. To the maximum extent permitted by applicable law, Foothill may be the
purchaser of any or all of the Collateral and associated goodwill at any public
sale and shall be entitled, for the purpose of bidding and making settlement or
payment of the purchase price for all or any portion of the Collateral sold at
any public sale, to use and apply all or any part of the Obligations as a
credit on account of the purchase price of any collateral payable by Foothill
at such sale.
10. CHOICE OF LAW AND VENUE; JURY TRIAL WAIVER.
THE VALIDITY OF THIS AGREEMENT, ITS CONSTRUCTION,
INTERPRETATION, AND ENFORCEMENT, AND THE RIGHTS OF THE PARTIES HERETO WITH
RESPECT TO ALL MATTERS ARISING HEREUNDER OR RELATED HERETO SHALL BE DETERMINED
UNDER, GOVERNED BY, AND CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE OF
CALIFORNIA, WITHOUT GIVING EFFECT TO ITS CONFLICT OF LAWS PRINCIPLES. THE
PARTIES AGREE THAT ALL ACTIONS OR PROCEEDINGS ARISING IN CONNECTION WITH THIS
AGREEMENT SHALL BE TRIED AND LITIGATED ONLY IN THE STATE AND FEDERAL COURTS
LOCATED IN THE COUNTY OF LOS ANGELES, STATE OF CALIFORNIA OR, AT THE SOLE
OPTION OF FOOTHILL, IN ANY OTHER COURT IN WHICH FOOTHILL SHALL INITIATE LEGAL
OR EQUITABLE PROCEEDINGS AND WHICH HAS SUBJECT MATTER JURISDICTION OVER THE
MATTER IN CONTROVERSY. EACH OF DEBTOR AND FOOTHILL WAIVES, TO THE EXTENT
PERMITTED UNDER APPLICABLE LAW, ANY RIGHT EACH MAY HAVE TO ASSERT THE DOCTRINE
OF FORUM NON CONVENIENS OR TO OBJECT TO VENUE TO THE EXTENT ANY PROCEEDING IS
BROUGHT IN ACCORDANCE WITH THIS SECTION 10.
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DEBTOR AND FOOTHILL HEREBY WAIVE THEIR RESPECTIVE RIGHTS TO A JURY TRIAL OF ANY
CLAIM OR CAUSE OF ACTION BASED UPON OR ARISING OUT OF ANY OF THE LOAN DOCUMENTS
OR ANY OF THE TRANSACTIONS CONTEMPLATED THEREIN, INCLUDING CONTRACT CLAIMS,
TORT CLAIMS, BREACH OF DUTY CLAIMS, AND ALL OTHER COMMON LAW OR STATUTORY
CLAIMS. DEBTOR AND FOOTHILL REPRESENT THAT EACH HAS REVIEWED THIS WAIVER AND
EACH KNOWINGLY AND VOLUNTARILY WAIVES ITS JURY TRIAL RIGHTS FOLLOWING
CONSULTATION WITH LEGAL COUNSEL. IN THE EVENT OF LITIGATION, A COPY OF THIS
AGREEMENT MAY BE FILED AS A WRITTEN CONSENT TO A TRIAL BY THE COURT.
11. GENERAL PROVISIONS.
11.1 EFFECTIVENESS. This Agreement shall be binding and
deemed effective when executed by Debtor and Foothill.
11.2 SUCCESSORS AND ASSIGNS. This Agreement shall bind
and inure to the benefit of the respective successors and assigns of each of
the parties; provided, however, that Debtor may not assign this Agreement or
any rights or duties hereunder without Foothill's prior written consent and any
prohibited assignment shall be absolutely void. Foothill may assign this
Agreement and its rights and duties hereunder and no consent or approval by
Debtor is required in connection with any such assignment.
11.3 SECTION HEADINGS. Headings and numbers have been set
forth herein for convenience only. Unless the contrary is compelled by the
context, everything contained in each section applies equally to this entire
Agreement.
11.4 INTERPRETATION. Neither this Agreement nor any
uncertainty or ambiguity herein shall be construed or resolved against Foothill
or Debtor, whether under any rule of construction or otherwise. On the
contrary, this Agreement has been reviewed by all parties and shall be
construed and interpreted according to the ordinary meaning of the words used
so as to fairly accomplish the purposes and intentions of all parties hereto.
11.5 SEVERABILITY OF PROVISIONS. Each provision of this
Agreement shall be severable from every other provision of this Agreement for
the purpose of determining the legal enforceability of any specific provision.
11.6 AMENDMENTS IN WRITING. This Agreement can only be
amended by a writing signed by both Foothill and Debtor.
11.7 COUNTERPARTS; TELEFACSIMILE EXECUTION. This
Agreement may be executed in any number of counterparts and by different
parties on separate counterparts, each of which, when executed and delivered,
shall be deemed to be an original, and all of which, when taken together, shall
constitute but one and the same Agreement. Delivery of an
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executed counterpart of this Agreement by telefacsimile shall be equally as
effective as delivery of a manually executed counterpart of this Agreement.
Any party delivering an executed counterpart of this Agreement by telefacsimile
also shall deliver a manually executed counterpart of this Agreement but the
failure to deliver a manually executed counterpart shall not affect the
validity, enforceability, and binding effect of this Agreement.
11.8 FEES AND EXPENSES. Debtor shall pay to Foothill on
demand all costs and expenses that Foothill pays or incurs in connection with
the negotiation, preparation, consummation, administration, enforcement, and
termination of this Agreement, including: (a) reasonable attorneys' and
paralegals' fees and disbursements of counsel to Foothill; (b) costs and
expenses (including reasonable attorneys' and paralegals' fees and
disbursements) for any amendment, supplement, waiver, consent, or subsequent
closing in connection with this Agreement and the transactions contemplated
hereby; (c) costs and expenses of lien and title searches; (d) taxes, fees, and
other charges for filing this Agreement at the United States Patent and
Trademark Office, or for filing financing statements, and continuations, and
other actions to perfect, protect, and continue the security interest created
hereunder; (e) sums paid or incurred to pay any amount or take any action
required of Debtor under this Agreement that Debtor fails to pay or take; (f)
costs and expenses of preserving and protecting the Collateral; and (g) costs
and expenses (including reasonable attorneys' and paralegals' fees and
disbursements) paid or incurred to enforce the security interest created
hereunder, sell or otherwise realize upon the Collateral, and otherwise enforce
the provisions of this Agreement, or to defend any claims made or threatened
against Foothill arising out of the transactions contemplated hereby (including
preparations for the consultations concerning any such matters). The foregoing
shall not be construed to limit any other provisions of this Agreement or the
Loan Documents regarding costs and expenses to be paid by Debtor. The parties
agree that reasonable attorneys' and paralegals' fees and costs incurred in
enforcing any judgment are recoverable as a separate item in addition to fees
and costs incurred in obtaining the judgment and that the recovery of such
attorneys' and paralegals' fees and costs is intended to survive any judgment,
and is not to be deemed merged into any judgment.
11.9 NOTICES. Except as otherwise provided herein, all
notices, demands, and requests that either party is required or elects to give
to the other shall be in writing and shall be governed by the provisions of
Section 12 of the Loan Agreement.
11.10 TERMINATION BY FOOTHILL. After termination of the
Loan Agreement and when Foothill has received payment and performance, in full,
of all Obligations, Foothill shall execute and deliver to Debtor a termination
of all of the security interests granted by Debtor hereunder.
11.11 INTEGRATION. This Agreement, together with the other
Loan Documents, reflect the entire understanding of the parties with respect to
the transactions
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contemplated hereby and shall not be contradicted or qualified by any other
agreement, oral or written, before the date hereof.
IN WITNESS WHEREOF, the parties have executed this Agreement
on the date first written above.
FOOTHILL CAPITAL CORPORATION,
a California corporation
By: /s/ XXXXX XXXXX
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Title: AVP
INTERNATIONAL REMOTE IMAGING SYSTEMS, INC.
a Delaware corporation
By: /s/ XXXXXX X. XxXXXXXX
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Title: Vice President, Finance and
Administration and Chief
Financial Officer
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