INTELLECTUAL PROPERTY SECURITY AGREEMENT
Exhibit 10.2
INTELLECTUAL PROPERTY SECURITY AGREEMENT
This Intellectual Property Security Agreement is entered into as of March 29, 2016 by and between HERITAGE BANK OF COMMERCE, a California corporation (“Bank”) and USA TECHNOLOGIES, INC. (“Borrower”).
RECITALS
Bank has agreed to make certain advances of money and to extend certain financial accommodations to Borrower under that certain Loan and Security Agreement by and between Bank and Borrower dated of even date herewith (as amended from time to time, the “Loan Agreement”). Capitalized terms used herein are used as defined in the Loan Agreement. Pursuant to the terms of the Loan Agreement, Borrower has granted to Bank a security interest in the Collateral.
NOW, THEREFORE, Borrower agrees as follows:
AGREEMENT
To secure its Obligations under the Loan Agreement, Borrower grants to Bank a security interest in all of Borrower’s right, title and interest in, its Intellectual Property (including without limitation those Copyrights, Patents and Trademarks listed on Schedules A, B and C hereto) and all proceeds thereof (such as, by way of example but not by way of limitation, license royalties and proceeds of infringement suits), the right to xxx for past, present and future infringements, all rights corresponding thereto throughout the world and all re-issues, divisions, continuations, renewals, extensions and continuations-in-part thereof. Borrower represents and warrants that Schedules A, B and C attached hereto set forth any and all Intellectual Property in connection to which Borrower has registered or filed an application with either the United States Patent and Trademark Office or the United States Copyright Office, as applicable. Bank shall release and terminate its security interest in Borrower’s Intellectual Property upon satisfaction of Borrower’s Obligations (other than inchoate indemnity obligations and any other obligations which, by their terms, are to survive the termination of the Loan Agreement), and shall execute and deliver such further instruments and take such further action as may reasonably be requested by Borrower to effect the release and termination of such security interest and to re-vest in Borrower the full title to the Intellectual Property. This Agreement may be executed in two or more counterparts, each of which shall be deemed an original but all of which together shall constitute the same instrument.
[signature page follows]
IN WITNESS WHEREOF, the parties have caused this Intellectual Property Security Agreement to be duly executed by its officers thereunto duly authorized as of the first date written above.
| BORROWER: | |||
| USA TECHNOLOGIES, INC. | |||
| Address of Borrower: | |||
| By: | /s/ Xxxxxxx X. Xxxxxxx | ||
| 000 Xxxxxxxxx Xxxx, Xxxxx 000 | Name: | Xxxxxxx X. Xxxxxxx | |
| Xxxxxxx, XX 00000 | Title: | Chairman and Chief Executive Officer | |
| Attn: Chief Financial Officer | |||
| Fax: 000-000-0000 | |||
| Email: xxxxxxxx@xxxxxxx.xxx | |||
| BANK: | |||
| Address of Bank: | |||
| HERITAGE BANK OF COMMERCE | |||
| 000 Xxxxx Xxxxxxx Xxxx. | |||
| Xxx Xxxx, XX 00000 | By: | /s/ Xxxxx Xxxxxxxx | |
| Attn: Xxxx Xxxxxx | Name: | Xxxxx Xxxxxxxx | |
| Fax: (000) 000-0000 | Title: | VP | |
| Email: Xxxx.Xxxxxx@xxxxxxx.xxx | |||
SCHEDULE A
Copyrights
If None, check this box: þ
SCHEDULE B
Patents
| Description |
Patent / Application Number | |
| An in-vehicle device for wirelessly connecting a vehicle to the internet and for transacting e-commerce and e-business | 6,856,820 | |
| Apparatus and methods for monitoring and communicating with a plurality of networked vending machines | 5,844,808 | |
| Apparatus, system, and methods for retrofitting vending systems with wireless communication |
Serial #: 14/681,463 | |
| Card reader assembly | 7,690,495 | |
| Cashless vending transaction management by a vend assist mode of operation | 7,693,602 | |
| Cashless vending transaction management by a vend assist mode of operation | 7,076,329 | |
| Cashless vending system with tethered payment interface | 7,464,867 | |
| Communicating interactive digital content between vehicles and internet based data processing resources for the purpose of transacting e-commerce or conducting e-business | 6,615,186 | |
| Communication interface device for managing wireless data transmission between a vehicle and the internet | 7,003,289 | |
| Credit and bank issued debit card operated system and method for controlling a prepaid card encoding/dispensing machine |
5,637,845 (Expired) | |
| Credit and bank issued debit card operated system and method for controlling a vending machine |
6,152,365 (Expired) | |
| Credit card and bank issued debit card operated system and method for controlling and monitoring access of computer and copy equipment |
5,619,024 (Expired) | |
| Credit card, smart card and bank issued debit card operated system and method for processing electronic transactions |
6,119,934 (Expired) | |
| Dataport |
D423,474 (Expired) | |
| Devices and Methods for Providing Cashless Payment and Diagnostics for Vending Machines | 8,373,558 | |
| Dynamic identification interchange method for exchanging one form of identification for another | 6,754,641 | |
| Electronic commerce terminal enclosure |
D428,047 (Expired) | |
| Electronic commerce terminal enclosure with brackets |
D441,401 (Expired) | |
| Electronic commerce terminal enclosure for a vending machine |
D428,444 (Expired) | |
| Electronic commerce terminal enclosure for a vending machine |
D437,890 (Expired) | |
| External power management device with current monitoring precluding shutdown during high current | 6,243,626 |
| Laptop data port enclosure |
D415,742 (Expired) | |
| MDB transaction string effectuated cashless vending | 7,131,575 | |
| Method and Apparatus for Conserving Power Consumed by a Refrigerated Appliance Utilizing Audio Signal Detection | 7,286,907 | |
| Method and apparatus for conserving power consumed by a vending machine utilizing audio signal detection | 7,856,289 | |
| Method and Apparatus for Power Management Control of a Compressor-Based Appliance that Reduces Electrical Power Consumption of an Appliance | 6,975,926 | |
| Method and Apparatus for Power Management Control of a Compressor-Based Appliance that Reduces Electrical Power Consumption of an Appliance | 7,200,467 | |
| Method of constructing a digital content play list for transmission and presentation on a public access electronic terminal | 7,805,338 | |
| Method of transacting an electronic mail, an electronic commerce, and an electronic business transaction by an electronic commerce terminal operated on a transportation vehicle | 6,622,124 | |
| Method to obtain customer specific data for public access electronic commerce services | 6,606,605 | |
| Mounting bracket for mounting a cashless payment terminal to a vending machine | D480,948 | |
| Paper guide for a point of sale terminal | D475,750 | |
| Point of Sale Terminal Mountable on a Vending Machine | D543,588 | |
| Power-conservation system for computer peripherals |
5,477,476 (Expired) | |
| Power conservation system based on indoor/outdoor and ambient-light determination | 6,801,836 | |
| Printer bracket for point of sale terminal | D475,414 | |
| Printer bracket for point of sale terminal | D476,036 | |
| Refrigerated vending machine exploiting expanded temperature variance during power-conservation mode | 6,389,822 | |
| Refrigerated vending machine exploiting expanded temperature variance during power-conservation mode | 6,581,396 | |
| Refrigerated vending machine exploiting expanded temperature variance during power-conservation mode | 6,898,942 | |
| Refrigerated vending machine exploiting expanded temperature variance during power-conservation mode | 6,931,869 | |
| Sign holder |
D418,878 (Expired) | |
| System and method for networking and controlling vending machines |
6,056,194 (Expired) | |
| System and method for networking and controlling vending machines |
6,321,985 (Expired) | |
| System for Providing Remote Audit, Cashless Payment, and Interactive Transaction Capabilities in a Vending Machine | 6,505,095 |
| Systems and methods for sending information to mobile devices utilizing mobile device identifiers |
Serial #: 14/681,294 | |
| Systems and methods for wireless authorization of transactions with mobile payment devices |
Serial #: 14/499,796 | |
| Transacting E-commerce and Conducting E-business Related to Identifying and Procuring Automotive Service and Vehicle Replacement Parts | 6,389,337 | |
| Transceiver base unit | D478,577 | |
| Unattended retail systems, methods and devices for linking payments, loyalty, and rewards | 9,245,269 | |
| Universal interactive advertising and payment system for public access electronic commerce and business related products and services | 6,609,102 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,604,085 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,601,038 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,601,037 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,611,810 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,604,086 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,601,039 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,606,602 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,615,183 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,604,087 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,601,040 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,609,103 |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,629,080 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 7,089,209 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,643,623 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,684,197 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,807,532 | |
| Universal interactive advertising and payment system network for public access electronic commerce and business related products and services | 6,763,336 | |
| User interface bracket for a point of sale terminal | D475,751 | |
| User interface bracket for a point of sale terminal | D476,037 | |
| Vehicle related wireless scientific instrumentation telematics | 6,895,310 | |
| Vehicle related wireless scientific instrumentation telematics | 6,853,894 | |
| Vending approval systems, methods, and apparatus using card readers | 9,159,182 | |
| Vending interface controller | D727,428 | |
| Vending machine cashless payment terminal | D477,030 | |
| Vending machine nutritional information display system using standard inventory control system components | 8,788,341 | |
| Vending machine nutritional information display system using standard inventory control system components | 8,583,280 | |
| Wireless system for communicating cashless vending transaction data and vending machine audit data to remote locations | 7,593,897 | |
| Wireless system for communicating cashless vending transaction data and vending machine audit data to remote locations | 7,865,430 | |
| Wireless system for communicating cashless vending transaction data and vending machine audit data to remote locations | 7,630,939 | |
| Wireless system for communicating cashless vending transaction data and vending machine audit data to remote locations | 8,596,529 | |
| Wireless system for communicating cashless vending transaction data and vending machine audit data to remote locations |
Serial #: 14/071,021 | |
| Wireless Vehicle Diagnostics Device and Method with Service and Part Determination Capabilities (as amended) | 7,502,672 |
SCHEDULE C
Trademarks
| Description |
Serial / Registration Number |
Application / Date | ||
| BLUELIGHT SEQUENCE | 3352247 | 12/11/2007 | ||
| ENERGYMISER | 3424496 | 5/6/2008 | ||
| SNACKMISER | 2920610 | 1/25/2005 | ||
| CM2IQ | 3130829 | 8/15/2006 | ||
| VM2IQ | 3130828 | 8/15/2006 | ||
| VENDINGMISER | 2628447 | 10/1/2002 | ||
| EPORT |
77948652 (Abandoned) (Dead) |
3/2/2010 | ||
| PAYDOT |
77597651 (Abandoned) (Dead) |
10/22/2008 | ||
| EPORT EDGE | 3764912 | 3/23/2010 | ||
| CREATING VALUE THROUGH | 4139315 | 5/8/2012 | ||
| EPORT CONNECT | 3462181 | 7/8/2008 | ||
| USALIVE | 2845393 | 5/25/2004 | ||
| E-PORT | 2724498 | 6/10/2003 | ||
| E-PORT | 2700645 | 3/25/2003 | ||
| THE OFFICE THAT NEVER SLEEPS |
2552992 (Cancelled) (Dead) |
3/23/1999 | ||
| TRANSACT | 2598187 | 7/23/2002 | ||
| PC EXPRESS | 2520390 | 12/18/2001 | ||
| USA TECHNOLOGIES | 2020215 | 12/3/1996 | ||
| BLUELIGHT SEQUENCE | 85907829 | 4/18/2013 | ||
| BUSINESS EXPRESS | 2234770 | 3/23/1999 | ||
| EPORT | 86070271 | 9/20/2013 | ||
| EPORT GO | 4513884 | 4/15/2014 | ||
| EPORT MOBILE | 4542131 | 6/3/2014 | ||
| EPORT MOBILE & DESIGN | 4713726 | 3/31/2015 | ||
| ESUDS | 4354183 | 6/18/2013 | ||
| INTELLIGENT VENDING | 3641380 | 6/16/2009 | ||
| QUICK CONNECT |
86068891 (Abandoned) (Dead) |
9/19/2013 | ||
| USA TECHNOLOGIES | 4903734 | 2/23/2016 | ||
| USA TECHNOLOGIES | 4903756 | 2/23/2016 | ||
| VENDSCREEN | 4716736 | 4/7/2015 | ||
| VENDSCREEN | 4827283 | 10/6/2015 |
