Exhibit 10.29
COLLATERAL ASSIGNMENT OF
PATENTS, TRADEMARKS & COPYRIGHTS
THIS COLLATERAL ASSIGNMENT OF PATENTS, TRADEMARKS & COPYRIGHTS is entered
into on this 24/th/ day of January, 2003, by and between AIRNET COMMUNICATIONS
CORPORATION, a Delaware Corporation having a mailing address at 0000 Xxx Xxxx,
Xxxxxxxxx, Xxxxxxx 00000 ("Debtor"), and SCP PRIVATE EQUITY PARTNERS II, L.P., a
Delaware limited partnership having a mailing address at 300 Building, 000 Xxxxx
Xxxx Xxxxx, Xxxxx, XX 00000 ("SCP II") and TECORE, INC., a Texas corporation
having a mailing address at 0000 Xxxxxxxx Xxxxxxx Xxxxx, Xxxxxxxx, Xxxxxxxx
00000 ("TECORE"). SCP II and TECORE are referred to collectively herein as
"Secured Party."
NOW, THEREFORE, in consideration of the premises, Debtor hereby agrees with
Secured Party as follows:
1. Grant of Security Interest.
1.1 Grant. Debtor hereby grants to Secured Party a first priority security
interest in, and conditionally assigns, but does not transfer title to Secured
Party, all of Debtor's right, title, and interest in and to the following
collateral (collectively, the "Collateral") to secure the repayment of any loans
(the "Loans") under, the satisfaction of any obligations (the "Obligations")
under, and the full, complete and absolute performance by Debtor of each of the
terms and conditions of, the Bridge Loan Agreement, Bridge Loan Promissory
Notes, Security Agreement and other loan documents dated of even date herewith
between Debtor and one or both of the Secured Parties, as amended from time to
time (collectively, the "Loan Agreement"). All capitalized terms used in this
Agreement and not defined herein shall have the meaning ascribed thereto in the
Loan Agreement unless the context clearly provides otherwise.
1.2 Definition of Collateral. The Collateral shall consist of the
following:
(a) Each of the Patent Rights 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, throughout the world, including all
proceeds thereof (including license royalties and proceeds of infringement
suits), foreign filing rights, and rights to extend such Patent Rights;
(b) All of Debtor's right, title, and interest in and to the patents
and patent applications listed on Schedule A, attached hereto, as the same may
be updated hereafter from time to time;
(c) 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 Secured Party 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;
(d) Each of the Trademark Rights 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, throughout the world, including all
proceeds thereof (including license royalties and proceeds of infringement
suits), and rights to renew and extend such Trademark Rights;
(e) All of Debtor's right, title, and interest in and to the trademarks
and trademark registrations listed on Schedule B, attached hereto, as the same
may be updated hereafter from time to time;
(f) All of Debtor's right, title and interest to register trademark
claims under any state or federal law or regulation of any foreign country and
to apply for, renew, and extend the Trademark Rights, the right (without
obligation) to xxx or bring opposition or cancellation proceedings in the name
of Debtor or in the name of Secured Party for past, present, and future
infringements of Trademark Rights, and all rights (but not obligations)
corresponding thereto in the United States and any foreign country, and the
associated goodwill;
(g) Each of the Copyrights 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, throughout the world, including all
proceeds thereof (including license royalties and proceeds of infringement
suits), and rights to renew and extend such Copyrights;
(h) All of Debtor's right, title, and interest in and to the copyrights
and copyright registrations listed on Schedule C, attached hereto, as the same
may be updated hereafter from time to time;
(i) All of Debtor's right, title and interest to register copyright
claims under any state or federal law or regulation of any foreign country and
to apply for, renew, and extend the Copyrights, the right (without obligation)
to xxx or bring opposition or cancellation proceedings in the name of Debtor or
in the name of Secured Party for past, present, and future infringements of the
Copyrights, and all rights (but not obligations) corresponding thereto in the
United States and any foreign country,;
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(j) All general intangibles relating to the Collateral, including all
Software, Know-How, Trade Secrets and other Intellectual Property and
Improvements; and
(k) 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.
2. After-Acquired Patent, Trademark & Copyright Rights. If Debtor shall obtain
rights to any new Patent Rights, patentable inventions, Trademark Rights,
Copyrights or general intangibles relating thereto, the provisions of this
Agreement shall automatically apply thereto. Debtor shall give prompt notice in
writing to Secured Party with respect to any such new rights or any renewal or
extension thereof. Debtor shall bear any expenses incurred in connection with
future applications for patent, trademark or copyright registration.
3. 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 actions for
infringement or other damages as are in its reasonable business judgment
necessary to protect the Collateral. Debtor shall provide to Secured Party any
information with respect thereto requested by Secured Party. Secured Party shall
provide at Debtor's expense all necessary cooperation in connection with any
such suit, proceeding, or action, including, without limitation, joining as a
necessary party. Following Debtor's becoming aware thereof, Debtor shall notify
Secured Party of the institution of, or any adverse determination in, any
proceeding in the United States Patent and Trademark Office or Copyright Office,
or any United States, state, or foreign court regarding Debtor's claim of
ownership in any of the Patent Rights, Trademark Rights, Copyrights or general
intangibles relating thereto, its right to apply for the same, or its right to
keep and maintain such Patent Rights, Trademark Rights, Copyrights or general
intangibles rights.
4. Power of Attorney. Debtor grants Secured Party power of attorney, having the
full authority, and in the place of Debtor, from time to time in Secured Party's
discretion to take any action and to execute any instrument which Secured Party
may deem necessary or advisable to accomplish the purposes of this Agreement,
including, without limitations,: (a) to endorse Debtor's name on all
applications, documents, papers, and instruments necessary for Secured Party to
use or maintain the Collateral; and (b) 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. Notwithstanding the
forgoing, Secured Party may not file any claims or take any action or institute
any proceedings
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for the collection of any of the Collateral or assign, pledge, convey, or
otherwise transfer title in or dispose of the Collateral to any person except
upon the occurrence of an Event of Default.
5. Right to Inspect. Debtor grants to Secured Party and its employees and agents
the right to visit Debtor's plants and facilities at which Debtor may design,
develop, manufacture, inspect, assemble, ship or store products or services sold
or licensed under any of the Trademark Rights, Patent Rights or Copyrights, and
to inspect the products, services and quality control records relating thereto
at reasonable times during regular business hours.
6. Events of Default. Any Event of Default under the Loan Agreement shall
constitute an Event of Default.
7. Specific Remedies. Upon the occurrence of any Event of Default: (a) Secured
Party may take any action or pursue any remedies provided by law or in the Loan
Agreement; and (b) Secured Party may notify licensees to make royalty and other
payments on license agreements directly to Secured Party.
8. Further Assurances. Debtor hereby agrees to execute and deliver such further
documents and instruments as Secured Party may reasonably request in order to
more properly evidence, document or perfect the security interest intended to be
created hereby.
9. Governing Law. All acts and transactions hereunder and the rights and
obligations of the parties hereto shall be governed, construed, and interpreted
in accordance with the laws of the State of Delaware, without regard to its
conflict of law provisions.
IN WITNESS WHEREOF, Debtor and Secured Party have executed this Agreement by
their duly authorized officers as of the date first above written, with the
specific intention that this Agreement constitutes a document under seal.
AirNet Communications Corporation TECORE, Inc.
By: /s/ Xxxxx X. Xxxxx By: /s/ Xxx Xxxxxxx
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Name: Xxxxx X. Xxxxx Name: Xxx Xxxxxxx
--------------------------------- -------------------------------
Title: President and Chief Executive Title: President and Chief Executive
-------------------------------- ------------------------------
Officer Officer
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Date: January 24, 2003 Date: January 24, 2003
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SCP Private Equity Partners, II, LP
By: SCP Private Equity II General Partner,
L.P., its general partner
By: SCP Private Equity II, LLC
By: /s/ Xxxxx X. Xxxxx
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Xxxxx X. Xxxxx
a manager
Date: January 24, 2003
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