EXHIBIT 10.2
INTELLECTUAL PROPERTY SECURITY AGREEMENT
THIS INTELLECTUAL PROPERTY SECURITY AGREEMENT (this "SECURITY AGREEMENT")
dated as of June 29, 2004, is made by VISKASE COMPANIES, INC., a Delaware
corporation ("GRANTOR"), in favor of XXXXX FARGO FOOTHILL, INC., a California
corporation (together with its successors and assigns, "GRANTEE").
W I T N E S S E T H:
WHEREAS, Grantor and Grantee are parties to that certain Loan and Security
Agreement of even date herewith (as the same may be amended, supplemented or
modified from time to time, the "LOAN AGREEMENT"), which provides (i) for
Grantee to make certain loans and other financial accommodations to Grantor, and
(ii) for the grant by Grantor to Grantee of a security interest in Grantor's
assets, including, without limitation, its patents, patent applications,
trademarks, trademark applications, trade names, copyrights, service marks,
service xxxx applications, goodwill and licenses, and all proceeds thereof.
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, Grantor (intending to be legally bound hereby) agrees as
follows:
1. Incorporation of Loan Agreement. The Loan Agreement and the terms
and provisions thereof are hereby incorporated herein in their entirety by this
reference thereto. All terms capitalized but not otherwise defined herein shall
have the same meanings herein as in the Loan Agreement.
2. Security Interest in Intellectual Property. To secure prompt
payment of any and all of the Obligations in accordance with the terms and
conditions of the Loan Documents and in order to secure prompt performance by
Grantor of each of its covenants and duties under the Loan Documents, Grantor
hereby grants to Grantee, for the benefit of the Grantee and the Bank Product
Providers, a continuing security interest in, all of Grantor's right, title and
interest in and to all of the following now owned and existing and hereafter
arising, created or acquired property (collectively, the "INTELLECTUAL
PROPERTY"):
(i) patents and patent applications, including, without limitation, rights
in the inventions and improvements described and claimed therein, and those
patents listed on Exhibit A attached hereto and hereby made a part hereof, and
(a) all reissues, divisions, continuations, renewals, extensions and
continuations-in-part thereof, (b) all income, royalties, damages, proceeds and
payments now and hereafter due or payable under or with respect thereto,
including, without limitation, damages and payments for past or future
infringements thereof, (c) the right to xxx for past, present and future
infringements thereof, and (d) all rights corresponding thereto throughout the
world (all of the foregoing patents and applications, together with the items
described in clauses (a)-(d) of this subsection 2(i), are sometimes hereinafter
referred to individually as a "PATENT" and, collectively, as the "PATENTS"); and
(ii) trademarks, trademark registrations, trademark applications, trade
names and tradestyles, brand names, service marks, service xxxx registrations
and service xxxx applications, including, without limitation, the trademarks,
trade names, brand names, service
marks and applications and registrations thereof listed on Exhibit B attached
hereto and hereby made a part hereof, and (a) all renewals or extensions
thereof, (b) all income, royalties, proceeds, damages and payments now and
hereafter due or payable with respect thereto, including, without limitation,
damages and payments for past or future infringements thereof, (c) the right to
xxx for past, present and future infringements thereof, and (d) all rights
corresponding thereto throughout the world (all of the foregoing trademarks,
trade names and tradestyles, brand names, service marks and applications and
registrations thereof, together with the items described in clauses (a)-(d) of
this subsection 2(ii), are sometimes hereinafter referred to individually as a
"TRADEMARK" and, collectively, as the "TRADEMARKS"); and
(iii) rights under or interests in any patent, trademark, or copyright
license agreements with any other Person (to the extent a security interest may
be granted in such rights without violating the terms of any such license
agreement; with respect to any of the Intellectual Property or any other patent,
trademark, service xxxx or any application or registration thereof or any other
trade name or tradestyle between Grantor and any other Person, whether Grantor
is a licensor or licensee under any such license agreement, including, without
limitation, the licenses listed on Exhibit C attached hereto and hereby made a
part hereof (all of the foregoing license agreements and Grantor's rights
thereunder are referred to collectively as the "LICENSES"); and
(iv) the goodwill of Grantor's business connected with and symbolized by
the Trademarks; and
(v) copyrights, copyright registrations and copyright applications, used
in the United States and elsewhere, including, without limitation, the copyright
registrations and copyright applications listed on Exhibit D attached hereto and
made a part hereof, and (a) renewals or extensions thereof, (b) all income,
royalties, proceeds, damages and payments now and hereafter due and/or payable
with respect thereto, including, without limitation, damages and payments for
past or future infringements thereof, (c) the right to xxx for past, present and
future infringements thereof, and (d) all rights corresponding thereto
throughout the world (all of the foregoing copyrights, copyright registrations
and copyright applications, together with the items described in clauses
(a)-(d), are sometimes hereinafter individually and/or collectively referred to
as the "COPYRIGHTS"); and
(vi) all trade secrets, formulas, processes, devices, know-how, or
compilations of information (including technical information and non-technical
information such as customer lists and marketing plans), collectively referred
to as trade secrets, which are not available to others and which are maintained
as confidential by Grantor, and the right to prevent misappropriation and
unauthorized disclosures thereof and all rights corresponding thereto throughout
the world (all of the foregoing trade secrets and associated rights are
sometimes hereinafter individually and/or collectively referred to as the "TRADE
SECRETS").
3. Representations and Warranties. Grantor hereby represents and
warrants to Grantee for the benefit of the Grantee and the Bank Product
Providers, which representations and warranties shall survive the execution and
delivery of this Security Agreement, that:
- 2 -
(i) None of the issued patents, patent applications, registered
trademarks, trademark applications, registered copyrights or copyright
applications (collectively, the "REGISTERED INTELLECTUAL PROPERTY") has been
adjudged invalid or unenforceable nor has any such Registered Intellectual
Property been cancelled, in whole or in part, and each such Intellectual
Property is presently subsisting;
(ii) To the knowledge of the Grantor, none of the Intellectual Property
infringes upon the rights or property of any other Person or is currently being
challenged in any way
(iii) There are no pending or, to the knowledge of the Grantor, threatened
claims, litigation, proceedings or other investigations regarding any of the
Intellectual Property;
(iv) Each of the Intellectual Property material to the Grantor's business
is valid and enforceable, and the Grantor has adopted adequate precautions to
protect its Trade Secrets from unauthorized or accidental disclosure;
(v) Grantor is the sole and exclusive owner of the entire and unencumbered
right, title and interest in and to the Registered Intellectual Property, free
and clear of any liens, security interests, mortgages, charges and encumbrances,
including, without limitation, licenses, consent-to-use agreements, shop rights
and covenants by Grantor not to xxx third Persons (except for Permitted Liens);
(vi) Grantor has adopted, used and is currently using all of the
Trademarks, and, to the knowledge of Grantor, Grantor's use thereof does not
infringe the intellectual property rights of any person or entity;
(vii) Grantor has no written notice or knowledge of any suits or actions
commenced or threatened with reference to or in connection with any of the
Intellectual Property;
(viii) Grantor has the unqualified right to execute and deliver this
Security Agreement and perform its terms, this Security Agreement has been
executed and delivered by a duly authorized officer of Grantor, and this
Security Agreement is a legally enforceable obligation of Grantor;
(ix) No trademark opposition or cancellation proceedings have been filed
in the prior three years with the United States Patent and Trademark Office
against any of the Trademarks; and
(x) The Licenses, complete copies of which have been provided to Grantor,
are valid and binding agreements, enforceable in accordance with their terms
(subject, as to the enforcement of remedies, to applicable bankruptcy,
reorganization, insolvency and similar laws from time to time in effect). Each
of the material Licenses is in full force and effect and has not been amended or
abrogated and, to the knowledge of the Grantor, there is no default under any of
the Licenses.
4. Restrictions on Future Agreements. Except as otherwise permitted
pursuant to the Loan Agreement, Grantor agrees that until all Obligations shall
have been satisfied and paid in full (other than contingent indemnification
obligations) and the Loan
- 3 -
Agreement shall have been terminated, Grantor shall not, without the prior
written consent of Grantee, sell, transfer, mortgage, convey, dispose, encumber
or assign any or all of, or grant any license or sublicense under (other than as
commercially reasonable in Grantor's good faith business judgment), the
Intellectual Property, or enter into any other agreement with respect to the
Intellectual Property, and Grantor further agrees that it shall not knowingly
take any action or knowingly permit any action to be taken by others subject to
its control, including, without limitation, licensees or sublicensees, or
knowingly fail to take any action, which would materially adversely affect the
validity or enforcement of the rights Grantee subject to this Security
Agreement, other than in the ordinary course of business.
5. New Intellectual Property. Grantor hereby represents and warrants
to Grantee for the benefit of the Grantee and the Bank Product Providers that
the Intellectual Property listed on Exhibits A, B and C, respectively,
constitute all of the Registered Intellectual Property now owned by Grantor.
Grantor hereby represents and warrants to Grantee for the benefit of Grantee and
the Bank Product Providers that the Intellectual Property listed on Exhibit C
constitute all of the material Licenses now owned by Grantor. If, before all
Obligations shall have been satisfied in full or before the Loan Agreement has
been terminated, Grantor shall (i) become aware of any existing Registered
Intellectual Property of which Grantor has not previously informed Grantee, (ii)
obtain rights to any Registered Intellectual Property, or (iii) become entitled
to the benefit of any material Intellectual Property which benefit is not in
existence on the date hereof, the provisions of this Security Agreement above
shall automatically apply thereto and Grantor shall give to Grantee prompt
written notice thereof. Grantor hereby authorizes Grantee to modify this
Security Agreement by amending Exhibits A, B, C, and D, as applicable, to
include any such Intellectual Property, and Grantee may file or refile this
Security Agreement with the U.S Patent and Trademark Office and U.S. Copyright
Office. Grantor agrees to execute and deliver any and all documents and
instruments necessary or advisable to record or preserve Grantee's interest in
all Intellectual Property added to Exhibits A, B, C, and D pursuant to this
Section.
6. Royalties; Terms; Rights Upon Default. The term of this Security
Agreement shall extend until the earlier of (i) the expiration of all of the
respective material Intellectual Property collaterally assigned hereunder, and
(ii) the payment in full of all Obligations (other than contingent
indemnification obligations) and the termination of the Loan Agreement. Grantor
agrees that upon the occurrence and during the continuance of an Event of
Default, the use by Grantee for the benefit of the Grantee and the Bank Product
Providers of all Intellectual Property shall be worldwide and as extensive as
the rights of Grantor to use such Intellectual Property, and without any
liability for royalties or other related charges from Grantee or the Bank
Product Providers to Grantor, solely for the purpose of completing production
of, advertising for sale and selling any Intellectual Property.
7. Grantee's Right to Inspect; Trademark Quality Control. To the
extent permitted by the Loan Agreement, Grantee shall have the right, from time
to time with prior notice (unless an Event of Default has occurred and is
continuing, in which case prior notice shall not be required) and, during normal
business hours and prior to payment in full of all Obligations (other than
contingent indemnification obligations) and termination of the Loan Agreement,
to inspect Grantor's premises and to examine Grantor's books, records and
operations, including, without limitation, Grantor's quality control processes.
Grantor agrees (i)
- 4 -
to maintain the quality of any and all products in connection with which the
material Trademarks are used, consistent with the quality of said products (as
determined by Grantor in its commercially reasonable business judgment) and (ii)
to provide Grantee, upon Grantee's reasonable request from time to time, with a
certificate of an officer of Grantor certifying Grantor's compliance with the
foregoing.
8. Release of Security Agreement. Upon the payment and performance
in full in cash of the Obligations (other than contingent indemnification
obligations), including the cash collateralization, expiration or cancellation
of all Obligations, if any, consisting of letters of credit, and the full and
final termination of any commitment to extend any financial accommodations under
the Loan Agreement, this Security Agreement shall terminate, and Grantee shall
execute and deliver such documents and instruments and take such further action
reasonably requested by Grantor, at Grantor's expense, as shall be necessary to
evidence termination of the security interest granted by Grantor to Grantee for
the benefit of the Grantee and the Bank Product Providers hereunder.
9. Expenses. All costs and expenses incurred in connection with the
performance of any of the agreements set forth herein shall be borne by Grantor.
All fees, costs and expenses, of whatever kind or nature, including reasonable
attorneys' and paralegals' fees and legal expenses, incurred by Grantee (for the
benefit of the Grantee and the Bank Product Providers) in connection with 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 in protecting, maintaining or
preserving the Intellectual Property, or in defending or prosecuting any actions
or proceedings arising out of or related to the Intellectual Property, shall be
borne by and paid by Grantor on demand by Grantee on behalf of the Grantee and
the Bank Product Providers and until so paid shall bear interest at the "default
rate of interest" set forth in the Loan Agreement.
10. Duties of Grantor. Grantor shall have the duty to the extent
commercially reasonable and in Grantor's good faith business judgment,
desirable: (i) to file and prosecute diligently any patent, trademark or service
xxxx applications pending as of the date hereof or hereafter until all
Obligations (other than contingent indemnification obligations) shall have been
paid in full and the Loan Agreement has been terminated, (ii) except as
otherwise provided in the Loan Agreement, to preserve and maintain all rights in
the material Intellectual Property (including, but not limited to, with respect
to Trademarks, the filing of affidavits of use and, incontestability, where
applicable, under Sections 8 and 15 of the Xxxxxx Act (15 U.S.C. Section 1058,
1065) and renewals and, to the extent commercially reasonable, initiating
opposition or cancellation proceedings or litigation against users of the same
or confusingly similar marks who seriously threaten the validity or rights of
Grantor in its material Trademarks), and (iii) to ensure that the Registered
Intellectual Property is and remains enforceable. The Grantee shall be
reimbursed for all such costs and expenses which constitute Lender Expenses.
Grantor shall not knowingly or unreasonably abandon any right to file a material
patent, trademark or service xxxx application, or abandon any pending patent
application, or any other material Intellectual Property, unless Grantor, in the
exercise of its commercially reasonable business judgment determines that such
abandonment will not materially and adverse effect its business.
- 5 -
11. Grantee's Right to Xxx. Upon the occurrence and during the
continuance of an Event of Default, Grantee for the benefit of the Grantee and
the Bank Product Providers shall have the right, but shall in no way be
obligated, to bring suit in its own name to enforce the Intellectual Property,
only after Grantee has tendered notice to Grantor of Grantee's desire to
initiate such suit and Grantor has declined in writing to itself pursue such
suit, and, if Grantee shall commence any such suit, Grantor shall, at the
request of Grantee, do any and all lawful acts and execute any and all proper
documents and instruments reasonably required by Grantee for the benefit of the
Grantee and the Bank Product Providers in aid of such enforcement.
12. Waivers. No course of dealing between Grantor and Grantee, nor
any failure to exercise, nor any delay in exercising, on the part of Grantee,
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. Severability. The provisions of this Security 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 other clause or provision of this Security
Agreement in any jurisdiction.
14. Modification. This Security Agreement cannot be altered, amended
or modified in any way, except as specifically provided in Section 5 hereof or
by a writing signed by the Grantor and the Grantee.
15. Cumulative Remedies; Power of Attorney; Effect on Loan
Agreement. All of Grantee's rights and remedies with respect to the Intellectual
Property (for the benefit of the Grantee and the Bank Product Providers),
whether established hereby or by the Loan Agreement, or by any other agreements
or by law shall be cumulative and may be exercised singularly or concurrently.
Grantor hereby authorizes Grantee for the benefit of the Grantee and the Bank
Product Providers upon the occurrence and during the continuance of an Event of
Default, to make, constitute and appoint any officer or agent of Grantee as
Grantee may select, in its sole discretion, as Grantor's true and lawful
attorney-in-fact, with power to, for the benefit of the Grantee and the Bank
Product Providers, (i) endorse Grantor's name on all applications, documents,
papers and instruments necessary or desirable for Grantee in the use of the
Intellectual Property, or (ii) take any other actions with respect to the
Intellectual Property as Grantee deems in its commercially reasonable judgment
to be in the best interest of Grantee, or (iii) grant or issue any exclusive or
non-exclusive license under the Intellectual Property to any person or entity,
or (iv) assign, pledge, sell, convey or otherwise transfer title in or dispose
of any of the Intellectual Property to any person or entity. Grantor 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 until all Obligations shall have been paid in full (other than
contingent indemnification obligations) and the Loan Agreement has been
terminated. Grantor acknowledges and agrees that this Security Agreement is not
intended to limit or restrict in any way the rights and remedies of Grantee
under the Loan Agreement but rather is intended to facilitate the exercise of
such rights and remedies. Grantee shall have, in addition to all other
- 6 -
rights and remedies given it by the terms of this Security Agreement and the
Loan Agreement, all rights and remedies allowed by law, in equity, and the
rights and remedies of a secured party under the Uniform Commercial Code as
enacted in Illinois.
16. Intentionally Omitted.
17. Binding Effect; Benefits. This Security Agreement shall be
binding upon Grantor and its respective successors and assigns, and shall inure
to the benefit of Grantee, its successors, nominees and assigns; provided,
however, Grantor shall not assign this Security Agreement or any of Grantor's
obligations hereunder without the prior written consent of Grantee.
18. Governing Law. This Security Agreement shall be governed by,
enforced and construed in accordance with the internal laws of the State of
Illinois, without regard to choice of law or conflict of law principles.
19. Headings; Counterparts. Paragraph headings used herein are for
convenience only and shall not modify the provisions which they precede. This
Security Agreement may be signed in one or more counterparts, but all of such
counterparts shall constitute and be deemed to be one and the same instrument.
Any fax signature shall be deemed to be as legally enforceable and effective as
a signed original.
20. Further Assurances. Grantor agrees to execute and deliver such
further agreements, instruments and documents, and to perform such further acts,
as Grantee shall reasonably request from time to time in order to carry out the
purpose of this Security Agreement and agreements set forth herein. Grantor
acknowledges that a copy of this Security Agreement will be filed by the Grantee
with the United States Patent and Trademark Office and, if applicable, the
United States Copyright Office, at the sole cost and expense of Grantor.
21. Survival of Representations. All representations and warranties
of Grantor contained in this Security Agreement shall survive the execution and
delivery of this Security Agreement and shall be remade on the date of each
borrowing under the Loan Agreement.
22. Foreign Patents, Copyrights and Trademarks. Upon the occurrence
and during the continuance of an Event of Default, at the request of Grantee and
at the sole cost and expense (including, without limitation, reasonable
attorneys' fees) of Grantor, Grantor shall take all actions and execute and
deliver any and all instruments, agreements, assignments, certificates and/or
documents, reasonably required by Grantee to collaterally assign any and all of
Grantor's foreign patent, copyright and trademark registrations and applications
now owned or hereafter acquired to and in favor of Grantee. Upon the execution
and delivery of any such collateral assignments or documents, the terms
"Patents", "Copyrights", and "Trademarks" as used herein shall automatically be
deemed amended to include such foreign patent, copyright and trademark
registrations and applications without any action required by any person or
entity.
23. VENUE: JURY TRIAL WAIVER. (a) THE PARTIES AGREE THAT ALL ACTIONS
OR PROCEEDINGS ARISING IN CONNECTION WITH THIS SECURITY AGREEMENT SHALL BE TRIED
AND LITIGATED ONLY IN THE STATE AND FEDERAL COURTS LOCATED IN THE COUNTY OF
XXXX, STATE OF ILLINOIS OR,
- 7 -
AT THE SOLE OPTION OF GRANTEE, IN ANY OTHER COURT IN WHICH GRANTEE SHALL
INITIATE LEGAL OR EQUITABLE PROCEEDINGS AND WHICH HAS SUBJECT MATTER
JURISDICTION OVER THE MATTER IN CONTROVERSY.
(b) TO THE FULLEST EXTENT PERMITTED BY LAW, AND AS SEPARATELY
BARGAINED FOR CONSIDERATION TO GRANTEE, GRANTOR HEREBY WAIVES ANY RIGHT TO TRIAL
BY JURY (WHICH GRANTEE ALSO WAIVES) IN ANY ACTION, SUIT, PROCEEDING OR
COUNTERCLAIM OF ANY KIND ARISING OUT OF OR OTHERWISE RELATING TO THIS SECURITY
AGREEMENT. GRANTOR HEREBY EXPRESSLY ACKNOWLEDGES THE INCLUSION OF THIS JURY
TRIAL WAIVER AND ACKNOWLEDGES THAT IT HAS HAD THE OPPORTUNITY TO CONSULT WITH
INDEPENDENT LEGAL COUNSEL REGARDING ITS MEANING.
24. Intercreditor Agreement. (a) The Liens granted hereunder in
favor of the Grantee for the benefit of itself and the Bank Product Providers in
respect of the Intellectual Property and the exercise of any right related
thereto thereby shall be subject, in each case, to the terms of the
Intercreditor Agreement (as defined in the Loan Agreement). (b) In the event of
any direct conflict between the express terms and provisions of this Security
Agreement and of the Intercreditor Agreement, the terms and provisions of the
Intercreditor Agreement shall control.
[Signature Page Follows]
IN WITNESS WHEREOF, Grantor has duly executed this Intellectual Property
Security Agreement in favor of Grantee, as of the date first written above.
VISKASE COMPANIES, INC.
By: /s/ Xxxxxx X. Xxxxxxx
Name: Xxxxxx X. Xxxxxxx
Its: Vice President
Agreed and Accepted as of this
29th, day of June, 2004
XXXXX FARGO FOOTHILL, INC.
By: /s/ Xxxxx X. Xxxx
Name: Xxxxx X. Xxxx
Its: Vice President
-8-
