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EXHIBIT 10.63
PATENT AND TRADEMARK SECURITY AGREEMENT
This PATENT AND TRADEMARK SECURITY AGREEMENT ("Agreement"), dated as of October
24, 1997, is entered into between ACCUMED INTERNATIONAL, INC., a Delaware
corporation ("Grantor"), which has a mailing address at 000 X. Xxxxxxxx Xxxxxx,
Xxxxx 000, Xxxxxxx, Xxxxxxxx 00000, and TRANSAMERICA BUSINESS CREDIT
CORPORATION, a Delaware corporation, ("TBCC") having its principal office at
0000 Xxxx Xxxxxxx Xxxx, Xxxxx 000, Xxxxxxxx, Xxxxxxxx 00000 and having an office
at 00000 Xxxxxxx Xxxx., Xxxxx 000, Xxxxxx, Xxxxxxxxxx 00000.
RECITALS
A. Grantor and TBCC are, contemporaneously herewith, entering into that
certain Loan and Security Agreement ("Loan Agreement") and other instruments,
documents and agreements contemplated thereby or related thereto (collectively,
together with the Loan Agreement, the "Loan Documents"); and
B. Grantor is the owner of certain intellectual property, identified
below, in which Grantor is granting a security interest to TBCC.
NOW THEREFORE, in consideration of the mutual promises, covenants,
conditions, representations, and warranties hereinafter set forth and for other
good and valuable consideration, the parties hereto mutually agree as follows:
1. DEFINITIONS AND CONSTRUCTION.
1.1 DEFINITIONS. The following terms, as used in this Agreement, have
the following meanings:
"Code" means the Illinois Uniform Commercial Code, as amended and
supplemented from time to time, and any successor statute.
"Collateral" means all of the following, whether now owned or
hereafter acquired:
(i) Each of the trademarks and rights and interest which are
capable of being protected as trademarks (including trademarks, service
marks, designs, logos, indicia, tradenames, corporate names, company
names, business names, fictitious business names, trade styles, and
other source or business identifiers, and applications pertaining
thereto), which are presently, or in the future may be, owned, created,
acquired, or used (whether pursuant to a license or otherwise) by
Grantor, in whole or in part, and all trademark rights with respect
thereto throughout the world, including all proceeds thereof (including
license royalties and proceeds of infringement suits), and rights to
renew and extend such trademarks and trademark rights;
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(ii) Each of the patents and patent applications which are
presently, or in the future may be, owned, issued, acquired, or used
(whether pursuant to a license or otherwise) by Grantor, in whole or in
part, and all patent rights with respect thereto throughout the world,
including all proceeds thereof (including license royalties and proceeds
of infringement suits, but not including royalty payments due to the
Grantor pursuant to the License Agreement dated as of October 10, 1995
between Grantor and Becton Xxxxxxxxx), foreign filing rights, and rights
to extend such patents and patent rights;
(iii) All of Grantor's right to the trademarks and trademark
registrations listed on Exhibit A attached hereto, as the same may be
updated hereafter from time to time (but not including royalty payments
due to the Grantor pursuant to the License Agreement dated as of October
10, 1995 between Grantor and Becton Xxxxxxxxx);
(iv) All of Grantor's right, title, and interest, in and to
the patents and patent applications listed on Exhibit B attached hereto,
as the same may be updated hereafter from time to time (but not
including royalty payments due to the Grantor pursuant to the License
Agreement dated as of October 10, 1995 between Grantor and Becton
Xxxxxxxxx);
(v) All of Grantor's right, title and interest to register
trademark claims under any state or federal trademark law or regulation
of any foreign country and to apply for, renew, and extend the trademark
registrations and trademark rights, the right (without obligation) to
xxx or bring opposition or cancellation proceedings in the name of
Grantor or in the name of TBCC for past, present, and future
infringements of the trademarks, registrations, or trademark rights and
all rights (but not obligations) corresponding thereto in the United
States and any foreign country;
(vi) All of Grantor'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
Grantor or in the name of TBCC 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;
(vii) the entire goodwill of or associated with the businesses
now or hereafter conducted by Grantor connected with and symbolized by
any of the aforementioned properties and assets;
(viii) All general intangibles relating to the foregoing and
all other intangible intellectual or other similar property of the
Grantor of any kind or nature, associated with or arising out of any of
the aforementioned properties and assets and not otherwise described
above; and
(ix) All products and proceeds of any and all of the foregoing
(including, without limitation, license royalties and proceeds of
infringement suits, but not including royalty payments due to the
Grantor pursuant to the License Agreement dated as of October 10, 1995
between Grantor and Becton Xxxxxxxxx) and, to the extent not otherwise
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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.
"Obligations" means all obligations, liabilities, and
indebtedness of Grantor to TBCC, as defined in the Loan Agreement.
1.2 CONSTRUCTION. Unless the context of this Agreement clearly requires
otherwise, references to the plural include the singular, references to the
singular include the plural, and the term "including" is not limiting. The words
"hereof," "herein," "hereby," "hereunder," and other similar terms refer to this
Agreement as a whole and not to any particular provision of this Agreement. Any
initially capitalized terms used but not defined herein shall have the meaning
set forth in the Loan Agreement. Any reference herein to any of the Loan
Documents includes any and all alterations, amendments, extensions,
modifications, renewals, or supplements thereto or thereof, as applicable.
Neither this Agreement nor any uncertainty or ambiguity herein shall be
construed or resolved against TBCC or Grantor, whether under any rule of
construction or otherwise. On the contrary, this Agreement has been reviewed by
Grantor, TBCC, and their respective counsel, and shall be construed and
interpreted according to the ordinary meaning of the words used so as to fairly
accomplish the purposes and intentions of TBCC and Grantor. Headings have been
set forth herein for convenience only, and shall not be used in the construction
of this Agreement.
2. GRANT OF SECURITY INTEREST.
To secure the complete and timely payment and performance of all
Obligations, and without limiting any other security interest Grantor has
granted to TBCC, Grantor hereby grants, assigns, and conveys to TBCC a security
interest in Grantor's entire right, title, and interest in and to the
Collateral.
3. REPRESENTATIONS, WARRANTIES AND COVENANTS.
Grantor hereby represents, warrants, and covenants that:
3.1 TRADEMARKS; PATENTS. A true and complete schedule setting forth all
federal and state trademark registrations owned or controlled by Grantor or
licensed to Grantor, together with a summary description and full information in
respect of the filing or issuance thereof and expiration dates is set forth on
Exhibit A; and a true and complete schedule setting forth all patent and patent
applications owned or controlled by Grantor or licensed to Grantor, together
with a summary description and full information in respect of the filing or
issuance thereof and expiration dates is set forth on Exhibit B.
3.2 VALIDITY; ENFORCEABILITY. Except as set forth in Schedule 3.2, to
the knowledge of Grantor, each of the patents and trademarks is valid and
enforceable, and Grantor is not presently aware of any past, present, or
prospective claim by any third party that any of the patents or trademarks are
invalid or unenforceable, or that the use of any patents or trademarks violates
the rights of any third person, or of any basis for any such claims.
3.3 TITLE. Except as set forth in Schedule 3.3, Grantor is the sole and
exclusive owner
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of the entire and unencumbered right, title, and interest in and to each of the
patents, patent applications, trademarks, and trademark registrations (in each
case listed as owned, as opposed to licensed by, Grantor), free and clear of any
liens, charges, and encumbrances, including pledges, assignments, licenses, shop
rights, and covenants by Grantor not to xxx third persons.
3.4 NOTICE. Grantor has used and will continue to use proper statutory
notice in connection with its use of each of the patents and trademarks, to the
extent a failure to do so would have a material adverse effect on Grantor or its
business.
3.5 QUALITY. Grantor has used and will continue to use consistent
standards of high quality (which may be consistent with Grantor's past
practices) in the manufacture, sale, and delivery of products and services sold
or delivered under or in connection with the trademarks, including, to the
extent applicable, in the operation and maintenance of its merchandising
operations, and will use commercially reasonable efforts to continue to maintain
the validity of the trademarks.
3.6 PERFECTION OF SECURITY INTEREST. Except for the filing of
appropriate financing statements (all of which filings have been made) and
filings with the United States Patent and Trademark Office necessary to perfect
the security interests created hereunder, and compliance by Borrower with the
"SEC Disclosure Requirements" (as defined in the Loan Agreement), no
authorization, approval, or other action by, and no notice to or filing with,
any governmental authority or regulatory body is required either for the grant
by Grantor of the security interest hereunder or for the execution, delivery, or
performance of this Agreement by Grantor or for the perfection of or the
exercise by TBCC of its rights hereunder to the Collateral in the United States.
4. AFTER-ACQUIRED PATENT OR TRADEMARK RIGHTS.
If Grantor shall obtain rights to any new trademarks, 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 Agreement shall automatically apply thereto. Grantor shall give prompt
notice in writing to TBCC with respect to any such new trademarks or patents, or
renewal or extension of any trademark registration. Grantor shall bear any
expenses incurred in connection with future patent applications or trademark
registrations. Without limiting Grantor's obligation under this Section 4,
Grantor authorizes TBCC to modify this Agreement by amending Exhibits A or B to
include any such new patent or trademark rights. Notwithstanding the foregoing,
no failure to so modify this Agreement or amend Exhibits A or B shall in any way
affect, invalidate or detract from TBCC's continuing security interest in all
Collateral, whether or not listed on Exhibit A or B.
5. LITIGATION AND PROCEEDINGS.
Grantor 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 action for infringement or other damages as
are in its reasonable business judgment necessary to protect the Collateral.
Grantor shall provide to TBCC any information with respect thereto requested by
TBCC. TBCC shall provide at Grantor's expense all necessary cooperation in
connection with any such suits, proceedings, or action, including, without
limitation, joining as a necessary party.
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Following Grantor's becoming aware thereof, Grantor shall notify TBCC of the
institution of, or any adverse determination in, any proceeding in the United
States Patent and Trademark Office, or any United States, state, or foreign
court regarding Grantor's claim of ownership in any of the patents or
trademarks, its right to apply for the same, or its right to keep and maintain
such patent or trademark rights.
6. POWER OF ATTORNEY.
Grantor hereby appoints TBCC as Grantor's true and lawful attorney, with
full power of substitution, to do any or all of the following, in the name,
place and stead of Grantor: (a) file this Agreement (or an abstract hereof) or
any other document describing TBCC's interest in the Collateral with the United
States Patent and Trademark Office; (b) execute any modification of this
Agreement pursuant to Section 4 of this Agreement; (c) take any action and
execute any instrument which TBCC may deem necessary or advisable to accomplish
the purposes of this Agreement (except that TBCC may not register trademarks or
file patent applications without Grantor's prior written consent, except that no
such consent shall be required if an Event of Default (as defined in the Loan
Agreement) has occurred and is continuing); and (d) following an Event of
Default (as defined in the Loan Agreement), (i) endorse Grantor's name on all
applications, documents, papers and instruments necessary for TBCC to use or
maintain the Collateral; (ii) 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; (iii) file any claims or take any action
or institute any proceedings that TBCC may deem necessary or desirable for the
collection of any of the Collateral or otherwise enforce TBCC's rights with
respect to any of the Collateral, and (iv) assign, pledge, convey, or otherwise
transfer title in or dispose of the Collateral to any person.
7. RIGHT TO INSPECT.
Grantor grants to TBCC and its employees and agents the right, during
normal business hours, to visit Grantor's plants and facilities which
manufacture, inspect, or store products sold under any of the patents or
trademarks, and to inspect the products and quality control records relating
thereto at reasonable times during regular business hours (subject to the
confidentiality provisions set forth in the Loan Agreement).
8. SPECIFIC REMEDIES.
Upon the occurrence of any Event of Default (as defined in the Loan
Agreement), TBCC shall have, in addition to, other rights given by law or in
this Agreement, the Loan Agreement, or in any other Loan Document, all of the
rights and remedies with respect to the Collateral of a secured party under the
Code, including the following:
8.1 NOTIFICATION. TBCC may notify licensees to make royalty payments on
license agreements directly to TBCC (but this provision shall not apply to the
License Agreement dated as of October 10, 1995 between Grantor and Becton
Xxxxxxxxx);
8.2 SALE. TBCC may sell or assign the Collateral and associated goodwill
at public or private sale for such amounts, and at such time or times as TBCC
deems advisable. Any requirement
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of reasonable notice of any disposition of the Collateral shall be satisfied if
such notice is sent to Grantor five (5) days prior to such disposition. Grantor
shall be credited with the net proceeds of such sale only when they are actually
received by TBCC, and Grantor shall continue to be liable for any deficiency
remaining after the Collateral is sold or collected. If the sale is to be a
public sale, TBCC shall also give notice of the time and place by publishing a
notice one time at least five (5) days before the date of the sale in a
newspaper of general circulation in the county in which the sale is to be held.
To the maximum extent permitted by applicable law, TBCC may be the purchaser of
any or all of the Collateral and associated goodwill at any public sale and
shall be entitled, for the purpose of bidding and making settlement or payment
of the purchase price for all or any portion of the Collateral sold at any
public sale, to use and apply all or any part of the Obligations as a credit on
account of the purchase price of any Collateral payable by TBCC at such sale.
9. GENERAL PROVISIONS.
9.1 EFFECTIVENESS. This Agreement shall be binding and deemed effective
when executed by Grantor and TBCC.
9.2 NOTICES. Except to the extent otherwise provided herein, all
notices, demands, and requests that either party is required or elects to give
to the other shall be in writing and shall be governed by the notice provisions
of the Loan Agreement.
9.3 NO WAIVER. No course of dealing between Grantor and TBCC, nor any
failure to exercise nor any delay in exercising, on the part of TBCC, any right,
power, or privilege under this Agreement or under the Loan Agreement or any
other agreement, shall operate as a waiver. No single or partial exercise of any
right, power, or privilege under this Agreement or under the Loan Agreement or
any other agreement by TBCC shall preclude any other or further exercise of such
right, power, or privilege or the exercise of any other right, power, or
privilege by TBCC.
9.4 RIGHTS ARE CUMULATIVE. All of TBCC's rights and remedies with
respect to the Collateral whether established by this Agreement, the Loan
Agreement, or any other documents or agreements, or by law shall be cumulative
and may be exercised concurrently or in any order.
9.5 SUCCESSORS. The benefits and burdens of this Agreement shall inure
to the benefit of and be binding upon the respective successors and permitted
assigns of the parties; provided that Grantor may not transfer any of the
Collateral or any rights hereunder, without the prior written consent of TBCC,
except as specifically permitted hereby.
9.6 SEVERABILITY. The provisions of this Agreement are severable. If any
provision of this Agreement is held invalid or unenforceable in whole or in part
in any jurisdiction, then such invalidity or unenforceability shall affect only
such provision, or part thereof, in such jurisdiction, and shall not in any
manner affect such provision or part thereof in any other jurisdiction, or any
other provision of this Agreement in any jurisdiction.
9.7 AMENDMENT; ENTIRE AGREEMENT. This Agreement is subject to
modification only by a writing signed by the parties, except as provided in
Section 4 of this Agreement. To the extent that any provision of this Agreement
conflicts with any provision of the Loan Agreement, the
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provision giving TBCC greater rights or remedies shall govern, it being
understood that the purpose of this Agreement is to add to, and not detract
from, the rights granted to TBCC under the Loan Agreement. This Agreement, the
Loan Agreement, and the documents relating thereto comprise the entire agreement
of the parties with respect to the matters addressed in this Agreement.
9.8 FEES AND EXPENSES. Grantor shall pay to TBCC on demand all costs and
expenses that TBCC pays or incurs in connection with the negotiation,
preparation, consummation, administration, enforcement, and termination of this
Agreement, including: (a) reasonable attorneys' and paralegals' fees and
disbursements of counsel to TBCC; (b) costs and expenses (including reasonable
attorneys' and paralegals' fees and disbursements) for any amendment,
supplement, waiver, consent, or subsequent closing in connection with this
Agreement and the transactions contemplated hereby; (c) costs and expenses of
lien and title searches; (d) taxes, fees, and other charges for filing this
Agreement at the United States Patent and Trademark Office, or for filing
financing statements, and continuations, and other actions to perfect, protect,
and continue the security interest created hereunder; (e) sums paid or incurred
to pay any amount or take any action required of Grantor under this Agreement
that Grantor fails to pay or take; (f) costs and expenses of preserving and
protecting the Collateral; and (g) costs and expenses (including reasonable
attorneys' and paralegals' fees and disbursements) paid or incurred to enforce
the security interest created hereunder, sell or otherwise realize upon the
Collateral, and otherwise enforce the provisions of this Agreement, or to defend
any claims made or threatened against the TBCC arising out of the transactions
contemplated hereby (including preparations for the consultations concerning any
such matters). The foregoing shall not be construed to limit any other
provisions of this Agreement or the Loan Documents regarding costs and expenses
to be paid by Grantor. The parties agree that reasonable attorneys' and
paralegals' fees and costs incurred in enforcing any judgment are recoverable as
a separate item in addition to fees and costs incurred in obtaining the judgment
and that the recovery of such attorneys' and paralegals' fees and costs is
intended to survive any judgment, and is not to be deemed merged into any
jugment.
9.9 INDEMNITY. Grantor shall protect, defend, indemnify, and hold
harmless TBCC and TBCC's assigns from all liabilities, losses, and costs
(including without limitation reasonable attorneys' fees) incurred or imposed on
TBCC relating to the matters in this Agreement (except to the extent that any
loss is determined in a final and non-appealable judgment by a court of
competent jurisdiction to have directly resulted from TBCC's gross negligence or
willful misconduct).
9.10 FURTHER ASSURANCES. At TBCC's request, Grantor shall execute and
deliver to TBCC any further instruments or documentation, and perform any acts,
that may be reasonably necessary or appropriate to implement this Agreement, the
Loan Agreement or any other Loan Documents, including without limitation any
instrument or documentation reasonably necessary or appropriate to create,
maintain, perfect, or effectuate TBCC's security interests in the Collateral.
9.11 RELEASE. At such time as Grantor shall completely satisfy all of
the Obligations and the Loan Agreement shall be terminated, the security
interests granted herein shall terminate, and TBCC shall execute and deliver to
Grantor all assignments and other instruments as may be reasonably necessary or
proper to perfect such termination TBCC's security interest in the Collateral,
subject to any disposition of the Collateral which may have been made by TBCC
pursuant to this
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Agreement. For the purpose of this Agreement, the Obligations shall be deemed to
continue if Grantor enters into any bankruptcy or similar proceeding at a time
when any amount paid to TBCC could be ordered to be repaid as a preference or
pursuant to a similar theory, and shall continue until it is finally determined
that no such repayment can be ordered.
9.12 GOVERNING LAW. THE VALIDITY, INTERPRETATION AND ENFORCEMENT OF THIS
AGREEMENT AND ANY DISPUTE ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT,
WHETHER SOUNDING IN CONTRACT, TORT, EQUITY OR OTHERWISE, SHALL BE GOVERNED BY
THE INTERNAL LAWS AND DECISIONS OF THE STATE OF ILLINOIS. ALL DISPUTES BETWEEN
THE GRANTOR AND TBCC, WHETHER SOUNDING IN CONTRACT, TORT, EQUITY OR OTHERWISE,
SHALL BE RESOLVED ONLY BY STATE AND FEDERAL COURTS LOCATED IN CHICAGO, ILLINOIS,
AND THE COURTS TO WHICH AN APPEAL THEREFROM MAY BE TAKEN; PROVIDED, HOWEVER,
THAT TBCC SHALL HAVE THE RIGHT, TO THE EXTENT PERMITTED BY APPLICABLE LAW, TO
PROCEED AGAINST THE GRANTOR OR ITS PROPERTY IN ANY LOCATION REASONABLY SELECTED
BY TBCC IN GOOD FAITH TO ENABLE TBCC TO REALIZE ON SUCH PROPERTY, OR TO ENFORCE
A JUDGMENT OR OTHER COURT ORDER IN FAVOR OF TBCC. THE GRANTOR AGREES THAT IT
WILL NOT ASSERT ANY PERMISSIVE COUNTERCLAIMS, SETOFFS OR CROSS-CLAIMS IN ANY
PROCEEDING BROUGHT BY TBCC. THE GRANTOR WAIVES ANY OBJECTION THAT IT MAY HAVE TO
THE LOCATION OF THE COURT IN WHICH TBCC HAS COMMENCED A PROCEEDING, INCLUDING,
WITHOUT LIMITATION, ANY OBJECTION TO THE LAYING OF VENUE OR BASED ON FORUM NON
CONVENIENS.
9.13 WAIVER OF RIGHT TO JURY TRIAL. TBCC AND GRANTOR EACH HEREBY WAIVE
THE RIGHT TO TRIAL BY JURY IN ANY ACTION OR PROCEEDING BASED UPON, ARISING OUT
OF, OR IN ANY WAY RELATING TO: (I) THIS AGREEMENT; OR (II) ANY OTHER PRESENT OR
FUTURE INSTRUMENT OR AGREEMENT BETWEEN TBCC AND GRANTOR; OR (III) ANY CONDUCT,
ACTS OR OMISSIONS OF TBCC OR GRANTOR OR ANY OF THEIR DIRECTORS, OFFICERS,
EMPLOYEES, AGENTS, ATTORNEYS OR ANY OTHER PERSONS AFFILIATED WITH TBCC OR
GRANTOR; IN EACH OF THE FOREGOING CASES, WHETHER SOUNDING IN CONTRACT OR TORT OR
OTHERWISE.
IN WITNESS WHEREOF, the parties have executed this Agreement on the
date first written above.
TRANSAMERICA BUSINESS CREDIT ACCUMED INTERNATIONAL, INC.
CORPORATION
By_________________________ By_________________________
Title_______________________ Xxxxxxx X. Xxxxxx, Chief Operating
Officer and Chief Financial Officer
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Exhibit "A"
REGISTERED TRADEMARKS
Trademark Registration Date Registration No.
PENDING TRADEMARKS
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Exhibit "B"
PATENTS
Patent Description/Title Issue Date Patent No. Name of Inventor
PATENT APPLICATIONS
Description Filing Date Serial No. Name of Inventor
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SCHEDULE 3.2
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SCHEDULE 3.3
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