Exhibit 4.5
EXECUTION VERSION
PATENT SECURITY AGREEMENT
This PATENT SECURITY AGREEMENT (this "Patent Security Agreement") is made
this 9th day of September, 2004, among the Grantors listed on the signature
pages hereof (the "Grantors"), and The Bank of New York Trust Company, N.A., in
its capacity as trustee under the Indenture (as defined below) (the "Trustee").
WITNESSETH:
WHEREAS, pursuant to (a) that certain Indenture dated as of September 9,
2004 (as amended, restated, supplemented or otherwise modified from time to
time, the "Indenture") among Securus Technologies, Inc., a Delaware corporation,
as issuer (the "Company"), the subsidiaries of the Company party thereto as
guarantors (the "Guarantors") and the Trustee, and (b) the Purchase Agreement
dated as of August 18, 2004 (the "Purchase Agreement"), among the Company, the
Guarantors, Credit Suisse First Boston LLC and Xxxxxx Xxxxxxx & Co. Incorporated
(the "Initial Purchasers"), the Company is issuing $154,000,000 aggregate
principal amount of its Second-Priority Senior Secured Notes Due 2011 (the
"Notes") which will be guaranteed on a senior secured basis by the Guarantors;
WHEREAS, in order to induce the Initial Purchasers to enter into the
Purchase Agreement and to induce the Initial Purchasers to purchase the Notes,
the Grantors have agreed to grant a continuing Lien on the Collateral in order
to secure the prompt and complete payment, observance and performance of the
Secured Obligations, by the granting of the security interest contemplated by
the Security Agreement (as defined below);
WHEREAS, the Trustee is willing to enter into the Indenture, but only upon
the condition, among others, that the Grantor shall have executed and delivered
to the Trustee, for the benefit of the Noteholders, that certain Security
Agreement dated as of September 9, 2004 (including all annexes, exhibits or
schedules thereto, as from time to time amended, restated, supplemented or
otherwise modified, the "Security Agreement"); and
WHEREAS, pursuant to the Security Agreement, the Grantor is required to
execute and deliver to the Trustee, for the benefit of the Noteholders, this
Patent Security Agreement.
NOW, THEREFORE, in consideration of the premises and mutual covenants
herein contained and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Grantor hereby agrees as
follows:
1. DEFINED TERMS. All capitalized terms used but not otherwise defined
herein have the meanings given to them in the Security Agreement.
2. GRANT OF SECURITY INTEREST IN PATENT COLLATERAL. The Grantor hereby
grants to the Trustee, for the benefit of the Noteholders, a continuing security
interest in all of the Grantor's right, title and interest in, to and under the
following, whether presently existing or hereafter created or acquired
(collectively, the "Patent Collateral"):
(a) all of its Patents and Patent Intellectual Property Licenses to which
it is a party including those referred to on Schedule I hereto;
(b) all reissues, continuations or extensions of the foregoing; and
(c) all products and proceeds of the foregoing, including, without
limitation, any claim by the Grantor against third parties for past, present or
future infringement of any Patent or any Patent licensed under any Intellectual
Property License.
3. SECURITY AGREEMENT. The security interests granted pursuant to this
Patent Security Agreement are granted in conjunction with the security interests
granted to the Trustee, for the benefit of the Noteholders, pursuant to the
Security Agreement. The Grantor hereby acknowledges and affirms that the rights
and remedies of the Trustee with respect to the security interest in the Patent
Collateral made and granted hereby are more fully set forth in the Security
Agreement, the terms and provisions of which are incorporated by reference
herein as if fully set forth herein.
4. AUTHORIZATION TO SUPPLEMENT. If any Grantor shall obtain rights to 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 Patent Security Agreement shall automatically apply
thereto. The Grantors shall give prompt notice in writing to the Trustee with
respect to any such new patent rights. Without limiting the Grantors'
obligations under this Section 4, the Grantors hereby authorize the Trustee
unilaterally to modify this Patent Security Agreement by amending Schedule I to
include any such new patent rights of such Grantor. Notwithstanding the
foregoing, no failure to so modify this Patent Security Agreement or amend
Schedule I shall in any way affect, invalidate or detract from the Trustee's
continuing security interest in all Collateral, whether or not listed on
Schedule I.
5. COUNTERPARTS. This Patent Security Agreement may be executed in any
number of counterparts, each of which shall be deemed to be an original, but all
such separate counterparts shall together constitute but one and the same
instrument. In proving this Patent Security Agreement or any other Note Document
in any judicial proceedings, it shall not be necessary to produce or account for
more than one such counterpart signed by the party against whom such enforcement
is sought. Any signatures delivered by a party by facsimile transmission or by
e-mail transmission shall be deemed an original signature hereto.
6. Notwithstanding anything herein to the contrary, (i) the liens and
security interests granted to the Trustee pursuant to this Patent Security
Agreement are expressly subject and subordinate to the liens and security
interests granted to the Administrative Agent (and its permitted successors and
assigns), for the benefit of the credit parties, pursuant to the Credit
Agreement and the related security documents dated as of September 9, 2004 (as
further amended, restated, refinanced, replaced, supplemented or otherwise
modified from time to time), by and among the Company, the Administrative Agent,
the lenders and the other credit parties party thereto and the other parties
party thereto and (ii) the exercise of any right or remedy by the Trustee
hereunder is subject to the limitations and provisions of the Intercreditor
Agreement. In the event of any conflict between the terms of the Intercreditor
Agreement and the terms of this Patent Security Agreement, the terms of the
Intercreditor Agreement shall govern.
[SIGNATURE PAGE FOLLOWS]
IN WITNESS WHEREOF, each Grantor has caused this Patent Security Agreement
to be executed and delivered by its duly authorized officer as of the date first
set forth above.
GRANTORS: SECURUS TECHNOLOGIES, INC., a Delaware
corporation
By: /s/ Xxxxx Schoenwettek
------------------------------------
Name: Xxxxx Schoenwettek
Title: Vice President
T-NETIX, INC., a Delaware corporation
By: /s/ Xxxxx Schoenwettek
-------------------------------------
Name: Xxxxx Schoenwettek
Title: Vice President
TELEQUIP LABS, INC., a Nevada corporation
By: /s/ Xxxxx Schoenwettek
-------------------------------------
Name: Xxxxx Schoenwettek
Title: Vice President
T-NETIX TELECOMMUNICATIONS
SERVICES, INC., a Texas corporation
By: /s/ Xxxxx Schoenwettek
-------------------------------------
Name: Xxxxx Schoenwettek
Title: Vice President
SPEAKEZ, INC., a Colorado corporation
By: /s/ Xxxxx Schoenwettek
-------------------------------------
Name: Xxxxx Schoenwettek
Title: Vice President
T-NETIX MONITORING CORPORATION, a
Colorado corporation
By: /s/ Xxxxx Schoenwettek
-------------------------------------
Name: Xxxxx Schoenwettek
Title: Vice President
EVERCOM HOLDINGS, INC., a Delaware
corporation
By: /s/ Xxxxx Schoenwettek
-------------------------------------
Name: Xxxxx Schoenwettek
Title: Vice President
EVERCOM, INC., a Delaware corporation
By: /s/ Xxxxx Schoenwettek
-------------------------------------
Name: Xxxxx Schoenwettek
Title: Vice President
EVERCOM SYSTEMS, INC., a Delaware
corporation
By: /s/ Xxxxx Schoenwettek
-------------------------------------
Name: Xxxxx Schoenwettek
Title: Vice President
FORTUNELINX, INC., a Delaware corporation
By: /s/ Xxxxx Schoenwettek
-------------------------------------
Name: Xxxxx Schoenwettek
Title: Vice President
EVERCONNECT, INC., a Delaware corporation
By: /s/ Xxxxx Schoenwettek
-------------------------------------
Name: Xxxxx Schoenwettek
Title: Vice President
ACCEPTED AND ACKNOWLEDGED
BY:
THE BANK OF NEW YORK TRUST
COMPANY, N.A., as Trustee
By: /s/ Xxxxxx X. Xxxxxxxx
-------------------------------------
Name: Xxxxxx X. Xxxxxxxx
Title: ASSISTANT VICE PRESIDENT
SCHEDULE I
TO
PATENT SECURITY AGREEMENT
PATENT REGISTRATIONS/ APPLICATIONS
T-NETIX, INC. AND SUBSIDIARIES:
APPLICATN /
OWNER COUNTRY TYPE CATEGORY NAME/TITLE REGSTRN # DATE INIT. DATE ISS.
---------- ------- ---- ------------------ --------------------------------------------- ------------- ---------- ---------
T-NETIX Canada P Attomated Phone Automatic Generation of Billing Records at a 2,007,838 12/14/99
Attendant Telephone Paystation
T-NETIX Canada P Three Way Call Method and Apparatus for Detecting a 2,291,678 05/29/98
Detection Secondary Destination of a Telephone Call
Based on Changes in Telephone Signal Path
("Dolphin")
T-NETIX US P Automated Phone Automatic Validation of Telephone Account 4,890,317 01/23/89 12/26/89
Attendant Numbers
T-NETIX US P Automated Phone Method and Apparatus for Altering the Access 4,908,852 01/23/89 03/13/90
Attendant Format of Telephone Calls
T-NETIX US P Automated Phone Method and Apparatus for Downloading Speech 4,920,558 01/23/89 04/24/90
Attendant Files
T-NETIX US P Automated Phone Automatic Generation of Billing Records at a 4,920,562 01/23/90 04/24/90
Attendant Telephone Paystation
T-NETIX US P Automated Phone Short Time Validity Storage of a Billing 4,933,965 01/23/89 06/12/90
Attendant Account Number at a Local Telecommunications
Station
T-NETIX US P Automated Phone Method and Apparatus for Performing an 4,933,966 01/23/89 06/12/90
Attendant Automated Collect Call
Telequip US P Automated Phone Automated Public Phone Control for Charge and 4,935,956 04/20/89 06/19/90
Attendant Collect Billings
T-NETIX US P Automated Phone SMDR Translator 5,048,079 08/10/00 09/10/91
Attendant
T-NETIX US P Automated Phone Method and Apparatus for Performing an 5,093,858 06/11/90 03/03/92
Attendant Automated Collect Call
T-NETIX US P Automated Phone Method and Apparatus for Altering the Access 5,113,433 08/29/90 05/12/92
Attendant Format of Telephone Calls
T-NETIX US P Automated Phone Short Time Validity Storage 5,131,027 06/11/90 07/14/92
Attendant
T-NETIX US P Automated Phone Method and Apparatus for Performing an 5,319,701 03/04/93 06/07/94
Attendant Automated Collect Call
T-NETIX US P Three Way Call Methods and Apparatus for Detecting and 5,319,702 07/29/92 06/07/94
Detection Responding to Hook Flash Events Occurring on
a Remote Telephone
T-NETIX US P Automated Phone Method and Apparatus for Performing an 5,483,581 06/06/94 01/09/96
Attendant Automated Collect Call
T-NETIX US P Integrated Integrated Commissary Systems 5,485,507 04/12/94 01/16/96
Commissary
T-NETIX US P Integrated Real Selectively Activated Integrated Real-Time 5,535,261 08/20/93 07/09/96
Time Recording Recording of Telephone Conversations
T-NETIX US P Three Way Call Method and Apparatus for Detecting an 5,539,812 11/08/94 07/23/96
Detection Attempted Three Way Conference Call on a
Remote Telephone
T-NETIX US P Automated Phone Computer-Based M&A for Controlling, 5,655,013 08/05/97 08/05/97
Attendant Monitoring, Recording and Reporting Telephone
Access "GOTU" Original
T-NETIX US P Three Way Call Three Way Call Detection 5,796,811 03/11/96 08/18/98
Detection
T-NETIX US P Three Way Call Three Way Call Detection By Counting Signal 5,805,685 11/15/95 09/08/98
Detection Characteristics
APPLICATN /
OWNER COUNTRY TYPE CATEGORY NAME/TITLE REGSTRN # DATE INIT. DATE ISS.
---------- ------- ---- ------------------ --------------------------------------------- ------------- ---------- ---------
T-NETIX US P Three Way Call Computer-Based M&A for Controlling, 5,926,533 10/04/96 07/20/99
Detection Monitoring, Recording and Reporting Telephone
Access
T-NETIX US P Automated Phone Method and Apparatus for Altering the Access 5,960,072 03/04/93 09/28/99
Attendant Format of Telephone Calls
T-NETIX US P Voice Recognition Automatic Key Word or Phrase Speech 6,064,963 12/17/97 05/16/00
Recognition for the Corrections Industry
T-NETIX US P Three Way Call Method and Apparatus for Detecting a 6,141,406 05/30/97 10/31/00
Detection Secondary Destination of a Telephone Call
Based on Changes in the Telephone Signal Path
("Dolphin")
T-NETIX US P Digital Switch Telecommunication Resource Allocation System 6,381,321 05/04/98 04/30/02
Platform and Method
T-NETIX US P Computer-Based M&A for Controlling, 6,560,323 08/01/97 05/06/03
Monitoring, Recording and Reporting Telephone
Access
T-NETIX US P Digital Switch Telecommunication Resource Allocation System 6,560,325 04/02/02 05/06/03
Platform and Method
T-NETIX US P Three Way Call Computer-Based M&A for Controlling, 6,611,583 12/29/98 08/26/03
Detect Monitoring, Recording and Reporting Telephone
Access
Telequip US P Integrated Real System and Method for Remotely Controlling 6,647,096 04/11/00 11/11/03
Time Recording Automated Call Placement Call Monitoring
Functions
T-NETIX US P Integrated Real Improved Selectivity Activated Integrated 6,665,376 10/23/98 12/16/03
Time Recording Real-time Recording of Telephone
Conversations with Automated Documentation
Consent to Call Recording
T-NETIX US P Inmate Messaging Inmate Messaging System and Method 6,665,380 01/11/99 12/16/03
System
Telequip US P Automated Phone Message Screening, Delivery, and Billing 6,668,045 10/30/00 12/23/03
Attendant/Voice System
Mail Sys
T-NETIX US P Three Way Call Advanced Three Way Call Detection System and 6,763,099 11/05/99 07/13/04
Detection Method Using Spread Spectrum Techniques
T-NETIX PCT/US P Three Way Call Method and Apparatus for Detecting a 98/010954 05/29/98
Detection Secondary Destination of a Telephone Call
Based on Changes in Telephone Signal Path
("Dolphin")
T-NETIX PCT/US P Off-Site Detention Off-Site Detention Monitoring System 00/40286 06/30/00
Monitoring Monitoring
T-NETIX US P Three Way Call Computer-Based M&A for Controlling, 09/131,348
Detection Plus Monitoring, Recording and Reporting Telephone
Recording Access
+ Keyword
Recognition
T-NETIX US P Three Way Call Computer-Based M&A for Controlling, 09/144,313 08/31/98
Detection + Monitoring, Recording and Reporting Telephone
recording + key Access
word recognition
Telequip US P File Maintenance System and Method for Ex Post Facto 09/596,298 06/16/00
Preserving a Recorded Conversation
T-NETIX US P Off-Site Detention Off-Site Detention Monitoring System 09/607,668 07/01/99
Monitoring Monitoring
T-NETIX US P Three Way Call Method and Apparatus for Detecting a 09/659,366 09/12/00
Detection Secondary Destination of a Telephone Call
Based on Changes in Telephone Signal Path
("Dolphin")
T-NETIX US P Computer-Based M&A for Controlling, 10/327,248 12/19/02
Monitoring, Recording and Reporting
Telephone Access
T-NETIX US P Digital Switch Telecommunication Resource Allocation System 10/421,990 04/22/03
Platform and Method
T-NETIX US P Three Way Call Computer Based M&A for Controlling, 10/606,011 06/24/03
Detect Monitoring, Recording and Reporting Telephone
Access
T-NETIX US P New Directions Biometric Voice Identification no number yet 06/24/04
2
APPLICATN /
OWNER COUNTRY TYPE CATEGORY NAME/TITLE REGSTRN # DATE INIT. DATE ISS.
---------- ------- ---- ------------------ --------------------------------------------- ------------- ----------- ---------
T-NETIX US P New Directions Spam Management System no number yet 12/16/03
T-NETIX US P automated phone Switching Call Types in Real Time no number yet Provisional
attendant filed
3/11/04
3
EVERCOM HOLDINGS, INC. AND SUBSIDIARIES:
APPLICATION/ APP/REG
GRANTOR COUNTRY PATENT REGISTRATION NO. DATE
------------- ------- --------------------------- ---------------- ----------
Evercom USA System and Method for 6,636,59t 10/21/2003
Systems, Inc. Affecting Inmate Conduct
with Good Behavior Discount
Telephone Rates
Evercom USA System and Method for 6,369,977 10/26/2003
Systems, Inc. Reverse Billing of a
Telephone Call
Evercom USA Method for Determining 6,639,978 10/28/2003
Systems, Inc. an Entity Responsible for
Billing a Called Party
Evercom USA Three-Way Call Detection 5,768,355 6/16/1998
Systems, Inc. System
Categories for Patent Applications Filed:
CATEGORY NUMBER FILED IDENTIFIER
------------------------------------ ------------ ---------------------------------------
Jail Processor 5 6. Unauthorized call detection
7. RCF
8. CAM Connect
9. Identification/Authentication
10. Unauthorized Call Detection II
Nodal/Central Architecture 3 4. Information Management and Movement
5. Dynamic Networking
6. Centralized Processing
Communications Throughput and Bad 10 10. Revenue Risk Management
Debt/Revenue Risk Management 11. Queued Revenue
12. Call Management
13. Enhanced Risk Management
14. Smart Rev-Up
15. Rev-Up
16. Encompass(TM)
17. EverReach(TM)
18. Commerce
11. Recidivism Reduction
Inter-Jail/Inter-Agency Applications 2 3. ElectronicDragnet(TM)
4. ElectronicDragnet(TM) II
4
PATENT LICENSES
T-NETIX, INC. AND SUBSIDIARIES:
Licensing Agreements:
Intellectual Property Licenses (Inbound):
2/25/94 Technology Licensing Agreement - People's Telephone, Intellicall
8/10/94 Gateway and DNA Enterprises, Inc. (amended 6/26 and 9/29, 2003)
12/22/94 Gateway and Datalight, Incorporated
11/28/95 T-Netix, Inc. and Communications Equipment and Engineering Corporation
4/3/96 Ameritech Services, Inc. and Gateway
8/8/00 T-Netix Monitoring and Sentencing Alternatives, a division of CSSS, Inc.
11/2/00 T-Netix Monitoring and Tracking Systems Corporation
7/22/02 T-Netix and Speech Works International License Agreement
9/30/02 TELEQUIP and Scansoft, Inc.
12/10/02 CCH Incorporated and T-Netix, Inc.
9/29/03 T-Netix, Inc. and Fast-Talk Communications, Inc.
Intellectual Property Licenses (Outbound):
10/26/94 Settlement and Patent License Agreement - Elcotel, Intellicall, Gateway
3/31/94 T-Netix, Inc., TTS and Ameritech Services, Inc. (amended 3/31/99, 7/1/99
and 2/14/03).
4/2/96 Patent License Agreement - Gateway, Intellicall, MCI
8/20/96 Patent License Agreement - Gateway, VAC
12/1/96 Gateway Technologies, Inc. Patent Licensing Agreement - Gateway,
Ameritech
12/1/96 Gateway and Ameritech Services, Inc.
9/6/00 T-Netix Monitoring and CSSS Incorporated
5
10/19/00 T-Netix Monitoring and Global Watch Incorporated
10/25/00 T-Netix, Inc. and Voicebank AG
5/16/01 Patent Purchase and Grantback Agreements - T-Netix, Inc., Wireless
WebConnect! Inc.
4/3/02 T-Netix, Inc. and an unidentified license (Agreement not dated. The fax
record indicates that the document was faxed on 4/3/02).
4/25/02 T-Netix, Inc. and Digital Technologies 2000
10/2/02 T-Netix, Inc. and Innovative Alternatives to Incarceration
10/27/02 T-Netix, Inc. and Benchmark Detention Systems, Inc.
7/17/03 TELEQUIP and Cincinnati Xxxx Public Communications LLC
9/5/03 Patent License Agreement - T-Netix, Inc., Global Tel*Link Corp.
Intellectual Property Licenses (Cross):
4/17/93 Gateway and Intellicall, Inc. (Amended 6/3/94 and 6/3/97)
9/26/94 Patent Cross-License Agreement - Protel, Intellicall, Gateway
EVERCOM HOLDINGS, INC. AND SUBSIDIARIES:
Pursuant to the terms of the Asset Purchase Agreement, dated as of December
22, 2003, by and between Evercom Systems, Inc. and Science Dynamics, Inc.,
Science Dynamics assigned to Evercom Systems their patented Three-way Call
Detection System and Public Telephone with Voice Over Internet Protocol
Transmission and related software.
Software License Agreement, dated as of December 22, 2003, by and between
Evercom Systems and Science Dynamics, Inc. pursuant to which Science Dynamics
designed certain software for Evercom on a work-for-hire basis and Evercom
granted specific rights in such software to Science Dynamics.
License-Back Agreement, dated as of December 22, 2003, by and between Evercom
Systems and Science Dynamics, Inc. pursuant to which Evercom licenses back to
Science Dynamics certain rights in their patented Three-way Call Detection
System and Public Telephone with Voice Over Internet Protocol Transmission and
related software.
6
