Exhibit 10.12
COLLATERAL ASSIGNMENT OF PATENTS, TRADEMARKS AND COPYRIGHTS
(SECURITY AGREEMENT)
between
BOUNDLESS MANUFACTURING SERVICES, INC.
and
BOUNDLESS TECHNOLOGIES, INC.
as Assignors
and
THE CIT GROUP/BUSINESS CREDIT, INC.
as Assignee
Dated as of June 27, 2002
COLLATERAL ASSIGNMENT OF PATENTS, TRADEMARKS AND COPYRIGHTS
(SECURITY AGREEMENT)
COLLATERAL ASSIGNMENT OF PATENTS, TRADEMARKS AND COPYRIGHTS (SECURITY
AGREEMENT) made as of this 27th day of June, 2002 by and among Boundless
Manufacturing Services, Inc., a Delaware corporation, Boundless Technologies,
Inc., a Delaware corporation (each, a "Company" and collectively, the
"Companies") and The CIT Group/Business Credit, Inc. (the "Assignee").
(Boundless Manufacturing Services, Inc. and Boundless Technologies, Inc.
referred to herein collectively, as "Assignors"). Capitalized terms used but not
defined herein shall have the respective meanings given thereto in the Financing
Agreement (as defined below).
W I T N E S S E T H:
WHEREAS, Assignors and Assignee are parties to a Financing Agreement of
even date herewith (as the same may hereafter be amended, supplemented or
otherwise modified from time to time, the "Financing Agreement") providing for
extensions of credit and other financial accommodations to be made to Assignors
by Assignee;
WHEREAS, the terms of the Financing Agreement grant to the Assignee a
security interest in certain of the Assignors' assets, including, without
limitation, their patents, patent rights and applications therefor, trademarks
and applications therefor, copyrights and all applications and registrations
therefor, license rights and goodwill;
NOW, THEREFORE, in consideration of the premises set forth herein and for
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the Assignors agree as follows:
Grant of Security Interest. As security for the complete and timely
payment and satisfaction of the Obligations the Assignors hereby grant to the
Assignee, a continuing security interest in and continuing lien on each
Assignor's entire right, title and interest in and to all of the now owned or
existing and hereafter acquired or arising:
(a) United States and foreign patents and patent applications,
including, without limitation, the inventions and improvements described
and claimed therein, all patentable inventions and those patents and
patent applications listed on Schedule A attached hereto and made a part
hereof, and the reissues, divisions, continuations, renewals, extensions
and continuations in-part of any of the foregoing, and all income,
royalties, damages and payments now and hereafter due and/or payable under
any of the foregoing with respect to any of the foregoing, including,
without limitation, damages and payments for past, present and future
infringements of any of the foregoing and the right to xxx for past,
present and future infringements of any of the foregoing (all of the
foregoing United States and foreign patents and patent applications are
sometimes hereinafter individually and/or collectively referred to as the
"Patents");
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(b) United States and foreign copyrights, rights and interests in
copyrights, works protectable by copyrights, copyright registrations, and
copyright applications, including, without limitation, the copyright
registrations and applications listed on Schedule B attached hereto and
made a part hereof, and all renewals of any of the foregoing, all income,
royalties, damages and payments now and hereafter due and/or payable under
any of the foregoing, including, without limitation, damages and payments
for past, present and future infringements of any of the foregoing and the
right to xxx for past, present and future infringements of any of the
foregoing (all of the foregoing United States and foreign copyrights are
sometimes hereinafter individually and/or collectively referred to as the
"Copyrights");
(c) United States and foreign trademarks, trade names, corporate
names, company names, business names, fictitious business names, trade
styles, service marks, logos, other business identifiers, prints and
labels on which any of the foregoing have appeared or appear, all
registrations and recordings thereof, and all applications in connection
therewith, including, without limitation, the trademarks and applications
listed on Schedule C attached hereto and made a part hereof or of any of
the foregoing (all of the foregoing trademarks, tradenames, service marks,
trademark registrations, service xxxx registrations, trademark
applications and service xxxx applications are sometimes hereinafter
individually and/or collectively referred to as the "Trademarks");
(d) any license agreement in which each Assignor is or becomes
licensed to use a Patent, Copyright, Trademark or the know-how of any
other Person including, without limitation, the license agreements listed
on Schedules A, B and C attached hereto and made a part hereof (all the
foregoing are referred to as the "Licenses"); and
(e) the goodwill of each Assignor's business connected with the use
of and symbolized by the Trademarks.
All of the foregoing items set forth in clauses (a) through (e) are hereinafter
referred to collectively as the "Collateral" and shall be included as part of
the definition of Collateral in the Financing Agreement. Each Assignor hereby
covenants with Assignee as follows:
1. Assignors' Obligations. Each Assignor agrees that it will perform and
discharge and remain liable for all its covenants, duties, and obligations
arising in connection with the Collateral and any licenses and agreements
related thereto. Assignee shall have no obligation or liability in connection
with the Collateral or any licenses or agreements relating thereto by reason of
this Assignment or any payment received by Assignee relating to the Collateral
and Assignee shall not be required to perform any covenant, duty or obligation
of each Assignor arising in connection with the Collateral or any license or
agreement related thereto or to take any other action regarding the Collateral
or any such licenses or agreements, except and only to the extent that Assignee
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has acquired absolute ownership of the Collateral upon an exercise of its
remedies under Section 4 hereof.
2. Representations and Warranties. Each Assignor represents and warrants
to Assignee that as of the date hereof: (a) each Assignor is the beneficial and
record owner of the Collateral, and no adverse claims have been made with
respect to its title to or the validity of the Collateral; (b) the trademarks
and service marks covered by the Licenses and the Trademarks as listed on
Schedule C are the only trademarks, service marks, trademark and service xxxx
registrations and applications therefor and the only trade names and trade
styles in which each Assignor has any or all right, title and interest; (c) the
patents and patent applications listed on Schedule A are the only patents and
patent applications in which each Assignor has any or all right, title and
interest; (d) the copyright registrations and applications listed on Schedule B
are the only copyright registrations and applications in which each Assignor has
any or all right, title and interest; (e) none of the Collateral is subject to
any existing mortgage, pledge, lien, security interest, lease, charge,
encumbrance, settlement or consent, covenant not to xxx, non-assertion
assurance, release or license (by each Assignor as licensor); (f) each Assignor
has performed all acts and has paid all renewal, maintenance and other fees and
taxes required to maintain each and every registration and application of the
Collateral in full force and effect; (g) no claims have been made against either
Assignor that the use of any of the Collateral violates the asserted rights of
any third party; (h) to the best of each Assignor's knowledge, no third party is
infringing upon any of the Collateral; and (i) when this Agreement is filed in
and recorded by the United States Patent and Trademark Office (the "Trademark
Office"), the United States Copyright Office (the "Copyright Office") and
appropriate filings have been made under Article 9 of the Uniform Commercial
Code, and the Assignee has taken the other actions contemplated by the Financing
Agreement and in this Agreement, this Agreement will create a legal and valid
perfected and continuing lien on and security interest in the Collateral in
favor of Assignee, enforceable against each Assignor and all third parties,
subject to no other mortgage, lien, charge, encumbrance, or security or other
interest, except as expressly permitted the Financing Agreement.
3. Covenants. Each Assignor will maintain and renew all items of
Collateral necessary for the conduct of its business and all registrations of
the Collateral necessary for the conduct of its business and will defend the
Collateral against the claims of all persons. The Assignors will maintain the
same standards of quality for the goods and services in connection with which
the Trademarks and the trademarks covered by the Licenses are used as each
Assignor or such other persons maintained for such goods and services prior to
entering into this Agreement. Assignee shall have the right to enter upon each
Assignor's premises at all reasonable times to monitor such quality standards.
Each Assignor shall promptly notify Assignee if it knows or has reason to know
that any of the Collateral may become subject to any adverse determination or
development (including the institution of proceedings) in any action or
proceeding in the Trademark Office, the Copyright Office, or any court. In the
event that any of the Collateral is infringed or diluted by a third party,
promptly after either Assignor becomes aware of such infringement or dilution,
such Assignor shall take all reasonable actions to stop such infringement or
dilution and protect its exclusive rights in such Collateral including, but not
limited to, the initiation of a suit for injunctive relief and to recover
damages. Without
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limiting the generality of the foregoing, neither Assignor shall permit the
expiration, termination or abandonment of any Trademark, Patent, Copyright or
License used in or necessary for the conduct of its business without the prior
written consent of Assignee. If, before the Obligations have been satisfied in
full, either Assignor shall obtain rights to or be licensed to use any new
Trademark, Copyright or Patent not identified on Schedules A, B or C hereto, the
provisions of Section 1 hereof shall automatically apply thereto and each
Assignor shall give Assignee prompt notice thereof in writing.
4. Remedies Upon Default. Whenever any Event of Default shall occur and be
continuing, Assignee shall have all the rights and remedies granted to it in
such event by the Financing Agreement, which rights and remedies are
specifically incorporated herein by reference and made a part hereof. Assignee
in such event may collect directly any payments due to each Assignor in respect
of the Collateral and, subject to any limitations imposed under any license
agreements constituting part of the Collateral, may sell, license, lease,
assign, or otherwise dispose of the Collateral in the manner set forth in the
Financing Agreement. Each Assignor agrees that, in the event of any disposition
of the Collateral upon any such Event of Default which is continuing, it will
duly execute, acknowledge, and deliver all documents necessary or advisable to
record title to the Collateral in any transferee or transferees thereof,
including, without limitation, valid, recordable assignments of the Collateral.
In the event an Event of Default occurs and is continuing, each Assignor hereby
irrevocably appoints Assignee as its attorney-in-fact, with power of
substitution, to execute, deliver, and record any such documents on each
Assignor's behalf. Notwithstanding any provision hereof to the contrary, during
the continuance of an Event of Default, each Assignor may sell merchandise or
services bearing the Trademarks, Copyrights and trademarks or copyrights covered
by the Licenses and utilize the Patents and patents covered by the Licenses in
the ordinary course of its business and in a manner consistent with its past
practices, until it receives written notice from Assignee of an intended sale or
disposition of the Collateral. The preceding sentence shall not limit any right
or remedy granted to each Assignee with respect to each Assignor's inventory and
other property under the Financing Agreement or any other agreement now or
hereinafter in effect.
5. Power of Attorney. Concurrently with the execution and delivery hereof,
each Assignor shall execute and deliver to the Assignee, in the form of Exhibit
1 hereto, a Special Power of Attorney for the implementation of the assignment,
sale, license, lease or other disposition of the Trademarks, Copyrights, Patents
and Licenses pursuant to Section 4. Each Assignor hereby releases Assignee from
any claims, causes of action and demands at any time arising out of or with
respect to any actions taken or omitted to be taken by Assignee in accordance
with Section 4 under the powers of attorney granted therein, other than actions
taken or omitted to be taken through the bad faith, willful misconduct or gross
negligence of Assignee, as determined by a final, non-appealable order of a
court of competent jurisdiction.
6. Cumulative Remedies. The rights and remedies provided herein are
cumulative and not exclusive of any other rights or remedies provided by law.
The security interest granted hereby is granted in conjunction with the security
interest granted to Assignee under the Financing Agreement and the other
Financing Documents. The rights
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and remedies of Assignee with respect to the security interest granted hereby
are in addition to those set forth in the Financing Agreement and the other
Financing Documents and those which are now or hereafter available to Assignee
as a matter of law or equity. The exercise by Assignee of any one or more of the
rights, powers or remedies provided for in this Agreement, the Financing
Agreement and the other Financing Documents or now or hereafter existing at law
or in equity shall not preclude the simultaneous or later exercise by any
person, including Assignee, of any or all other rights, powers or remedies. The
rights and remedies provided herein are intended to be in addition to and not in
substitution of the rights and remedies provided by the Financing Agreement and
the other Financing Documents.
7. Amendments and Waivers. This Agreement may not be modified,
supplemented, or amended, or any of its provisions waived at the request of
either Assignor, without the prior written consent of Assignee. Each Assignor
hereby authorizes Assignee to modify this Agreement by amending the Schedules
hereto to include any future Trademark, Patent, Copyright, License or other
additional Collateral in the future arising.
8. Waiver of Rights. No course of dealing between the parties to this
Agreement or any failure or delay on the part of any such party in exercising
any rights or remedies hereunder shall operate as a waiver of any rights and
remedies of such party or any other party, and no single or partial exercise of
any rights or remedies by one party hereunder shall operate as a waiver or
preclude the exercise of any other rights and remedies of such party or any
other party. No waiver by Assignee of any breach or default by each Assignor
shall be deemed a waiver of any other previous breach or default or of any
breach or default occurring thereafter.
9. Assignment. The provisions of this Agreement shall be binding upon and
inure to the benefit of the respective successors and assigns of the parties
hereto; provided however, that no interest herein or in or to the Collateral may
be assigned by each Assignor without the prior written consent of Assignee; and,
provided further, that the Assignee may assign the rights and benefits hereof to
any party acquiring any interest in the Obligations or any part thereof.
10. Further Acts. The Assignors shall have the duty to prosecute
diligently any application for the Patents, Trademarks and Copyrights necessary
for the conduct of its business pending as of the date of this Agreement or
thereafter, until the Obligations shall have been paid in full, and to make
applications on material unregistered but registrable trademarks and copyrights
and unpatented or unregistered but patentable or registrable inventions
necessary for the conduct of its business in any location where each Assignor
does business and to preserve and maintain all rights in the Collateral
necessary for the conduct of its business. Any expenses incurred in connection
with such applications shall be borne by such Assignor. Neither Assignor shall
abandon any right to file a trademark, service xxxx application or registration
for any trademark, service xxxx, copyright, copyright application or patent
application or registration used in or necessary for the conduct of its
business, or abandon any such pending applications or registrations necessary
for the conduct of its business, without the consent of Assignee.
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11. Enforcement. Upon the Assignors' failure to do so after Assignee's
demand, or upon an Event of Default, Assignee shall have the right but shall in
no way be obligated to bring suit in its own name to enforce the Trademarks,
Patents, Copyrights, or the trademarks, patents or copyrights covered by the
Licenses, in which event each Assignor shall at the request of Assignee do any
and all lawful acts and execute any and all proper documents that may be
reasonably requested by Assignee in aid of such enforcement including, but not
limited to, joining as a plaintiff in any such enforcement action, and Assignor
shall promptly, upon demand, reimburse and indemnify Assignee or its agents for
all costs and expenses incurred by Assignee in the exercise of its rights under
this Section 11.
12. Release and Re-Assignment. At such time as all of the Obligations have
been satisfied, and the Financing Agreement Documents has been terminated, other
than upon enforcement of Assignee's remedies after an Event of Default, Assignee
will, subject to and in accordance with the applicable terms of the Financing
Agreement, execute and deliver to each Assignor all deeds, assignments and other
instruments as may be necessary or proper to release Assignee's lien in the
Collateral and reassign to each Assignor any and all rights of Assignee therein
which were granted to Assignee hereunder, subject to any dispositions thereof
which may have been made by Assignee pursuant hereto.
13. Severability. If any clause or provision of this Agreement shall be
held invalid or unenforceable, in whole or in part, in any jurisdiction, such
invalidity or unenforceability shall attach only to such clause or provision, or
part thereof, in such jurisdiction, and shall not in any manner affect any other
clause or provision in any other jurisdiction.
14. Notices. All notices, requests and demands to or upon each Assignor or
Assignee under this Agreement shall be given in the manner prescribed by the
Financing Agreement.
15. Governing Law. This Agreement shall be governed by and construed,
applied, and enforced in accordance with the federal laws of the United States
of America applicable to trademarks, patents and copyrights and the laws of the
State of New York, except that no doctrine of choice of law shall be used to
apply the laws of any other state or jurisdiction.
16. Counterparts. This Agreement may be signed in one or more
counterparts, and by each party in separate counterparts, which, when taken
together, shall constitute one and the same document.
[THIS SPACE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the parties have entered into this Agreement as of the
date first above written.
BOUNDLESS MANUFACTURING SERVICES, INC.
By: /s/ Xxxxxx Xxxxxxx
-------------------------------
Name: Xxxxxx Xxxxxxx
Title: CFO
BOUNDLESS TECHNOLOGIES, INC.
By: /s/ Xxxxxx Xxxxxxx
-------------------------------
Name: Xxxxxx Xxxxxxx
Title: CFO
THE CIT GROUP/BUSINESS CREDIT, INC.
By: /s/ Xxxxx Xxxxxx
-------------------------------
Name: Xxxxx Xxxxxx
Title:
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Schedule A
Patents
U.S. Patent No. Date Issued Related Foreign Patents
--------------- ----------- -----------------------
4,611,202 09/09/86
4,639,891 01/27/87
4,654,650 03/31/87
D289,761 05/12/87
D314,563 02/12/91
D316,547 04/30/91
4,864,197 09/05/89
D311,378 10/30/90
4,962,378 10/09/90
5,012,232 04/30/91
D314,952 02/26/91
D320,010 09/17/91
1,059,279 11/21/89
5,062,059 10/29/91
5,021,712 06/04/91
5,037,050 08/06/91
5,145,434 09/08/92
D337,104 07/06/93
D330,017 10/06/92
5,165,020 11/17/92
5,455,492 10/03/95
Patent Applications
U.S. Patent Application No. Date Applied
--------------------------- ------------
Not applicable
Patent Licenses
Name of Agreement Parties Date of Agreement
----------------- ------- -----------------
Not applicable
Schedule B
Copyright Registrations
None
Schedule C
Trademark Registrations
Xxxx No. Date
---- --- ----
Consul 76148231 10/17/00
Littlefoot 75463345 03/31/98
Persistent Portal 75873357 12/15/99
Mentor Pro 76763805 07/29/99
Regent 76752181 07/15/99
Boundless Technologies 75172425 09/26/96
Boundless Technologies 75132245 09/26/96
Boundless 75137642 07/22/96
BESI 74437626 09/20/93
MENTOR 73286270 11/17/80
ADDS 73243335 12/17/79
Trademark Applications
Xxxx No. Date Applied
---- --- ------------
Not applicable
Trademark Licenses
Name of Agreement Parties Date of Agreement
----------------- ------- -----------------
Unregistered Trademarks
STATE OF NEW YORK )
) ss:
COUNTY OF NEW YORK )
On the 27th day of June, 2002 before me personally came
______________________, to me known, who being by me duly sworn, did depose and
say that he is the ____________________ of Boundless Manufacturing Services,
Inc., the corporation described in and which executed the foregoing instrument;
and that he signed his name thereto by order of the Board of Directors of said
corporation.
___________________________
Notary Public
STATE OF NEW YORK )
) ss:
COUNTY OF NEW YORK )
On the 27th day of June, 2002 before me personally came
_____________________, to me known, who being by me duly sworn, did depose and
say that he is the ____________________ of Boundless Technologies, Inc., the
corporation described in and which executed the foregoing instrument; and that
he signed his name thereto by order of the Board of Directors of said
corporation.
___________________________
Notary Public
STATE OF NEW YORK )
) ss:
COUNTY OF NEW YORK )
On the 27th day of June, 2002 before me personally came __________, to me
known, who being by me duly sworn, did depose and say that he is the
_____________ of , THE CIT GROUP/BUSINESS CREDIT, INC., the corporation
described in and which executed the foregoing instrument; and that he signed his
name thereto by order of the Board of Directors of said corporation.
___________________________
Notary Public
EXHIBIT 1
SPECIAL POWER OF ATTORNEY
STATE OF NEW YORK )
) ss:
COUNTY OF NEW YORK )
KNOW ALL MEN BY THESE PRESENTS, THAT Boundless Manufacturing Services,
Inc., a Delaware corporation (hereinafter called "Assignor"), hereby appoints
and constitutes THE CIT GROUP/BUSINESS CREDIT, INC. (hereinafter called
"Assignee") its true and lawful attorney, with full power of substitution, and
with full power and authority to perform the following acts on behalf of
Assignor:
1. For the purpose of assigning, selling, licensing or otherwise disposing
of all right, title and interest of Assignor in and to: (i) any trademarks,
trade names and service marks, and all registrations, renewals, recordings and
all pending applications therefor, and all licenses therefor; (ii) any patents
and patent applications and patentable inventions and the reissues, divisions,
continuations, renewals, extensions and continuations in part and all licenses
therefor; and (iii) any copyrights, copyright applications, rights and interests
in copyrights, works protectable by copyrights and all renewals therefor, and
for the purpose of the recording, registering and filing of, or accomplishing
any other formality with respect to, the foregoing, to execute and deliver any
and all agreements, documents, instruments of assignment or other papers
necessary or advisable to effect such purpose; and
2. To execute any and all documents, statements, certificates or other
papers necessary or advisable in order to obtain the purposes described above as
Assignee may in its sole discretion determine.
This power of attorney is made pursuant to a Collateral Assignment of
Patents, Trademarks and Copyrights (Security Agreement) dated the date hereof,
between Assignor and Assignee and takes effect solely for the purposes of
Section 4 thereof and is subject to the conditions thereof and may not be
revoked until the payment in full of all "Obligations" as defined in such
security agreement.
Dated: As of ______________, 2002
BOUNDLESS MANUFACTURING SERVICES, INC.
(as "Assignor")
Boundless Manufacturing Services, Inc.
--------------------------------------
Assignor
By: /s/ Xxxxxx Xxxxxxx
----------------------------------
Name: Xxxxxx Xxxxxxx
Title: CFO
EXHIBIT 1
SPECIAL POWER OF ATTORNEY
STATE OF NEW YORK )
) ss:
COUNTY OF NEW YORK )
KNOW ALL MEN BY THESE PRESENTS, THAT Boundless Technologies, Inc., a
Delaware corporation (hereinafter called "Assignor"), hereby appoints and
constitutes THE CIT GROUP/BUSINESS CREDIT, INC. (hereinafter called "Assignee")
its true and lawful attorney, with full power of substitution, and with full
power and authority to perform the following acts on behalf of Assignor:
1. For the purpose of assigning, selling, licensing or otherwise disposing
of all right, title and interest of Assignor in and to: (i) any trademarks,
trade names and service marks, and all registrations, renewals, recordings and
all pending applications therefor, and all licenses therefor; (ii) any patents
and patent applications and patentable inventions and the reissues, divisions,
continuations, renewals, extensions and continuations in part and all licenses
therefor; and (iii) any copyrights, copyright applications, rights and interests
in copyrights, works protectable by copyrights and all renewals therefor, and
for the purpose of the recording, registering and filing of, or accomplishing
any other formality with respect to, the foregoing, to execute and deliver any
and all agreements, documents, instruments of assignment or other papers
necessary or advisable to effect such purpose; and
2. To execute any and all documents, statements, certificates or other
papers necessary or advisable in order to obtain the purposes described above as
Assignee may in its sole discretion determine.
This power of attorney is made pursuant to a Collateral Assignment of
Patents, Trademarks and Copyrights (Security Agreement) dated the date hereof,
between Assignor and Assignee and takes effect solely for the purposes of
Section 4 thereof and is subject to the conditions thereof and may not be
revoked until the payment in full of all "Obligations" as defined in such
security agreement.
Dated: As of ______________, 2002
BOUNDLESS TECHNOLOGIES, INC
(as "Assignor")
/s/ Boundless Technologies, Inc.
--------------------------------
Assignor
By: /s/ Xxxxxx Xxxxxxx
-----------------------------
Name: Xxxxxx Xxxxxxx
Title: CFO
STATE OF NEW YORK )
) ss:
COUNTY OF NEW YORK )
On the 27th day of June, 2002 before me personally came
__________________, to me known, who being by me duly sworn, did depose and say
that he is the ___________________ of Boundless Manufacturing Services, Inc.,
the corporation described in and which executed the foregoing instrument; and
that he signed his name thereto by order of the Board of Directors of said
corporation.
___________________________
Notary Public
STATE OF NEW YORK )
) ss:
COUNTY OF NEW YORK )
On the 27th day of June, 2002 before me personally came _______________,
to me known, who being by me duly sworn, did depose and say that he is the
_________________ of Boundless Technologies, Inc., the corporation described in
and which executed the foregoing instrument; and that he signed his name thereto
by order of the Board of Directors of said corporation.
___________________________
Notary Public
