Exhibit 10.151
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AMENDED AND RESTATED
PATENT COLLATERAL ASSIGNMENT
This Amended and Restated Patent Collateral Assignment (this
"Agreement") is made this 12th day of April, 2005, by and between COMMODORE
APPLIED TECHNOLOGIES, INC. ("Assignor"), which maintains an address at Suite
3238, 000 Xxxx 00xx Xxxxxx, Xxx Xxxx, Xxx Xxxx; and THE SHAAR FUND, LTD.
("Secured Party"), which maintains an address at c/o SS&C Fund Services N.V.,
Xxxxxxxxx 00, Xxxxxxx, Xxxxxxxxxxx Antilles.
BACKGROUND FACTS
Assignor has executed and delivered a 10% Convertible Secured Note (the
"Note") to the Secured Party in the aggregate principal amount of Four Million
Six Hundred Thousand Seven Hundred Thirty-Three ($4,600,733) Dollars and has
entered into an Amended and Restated Security Agreement, of even date herewith
("Security Agreement"), with the Secured Party. In order to induce the Secured
Party to execute and deliver the Security Agreement and to make the loan and
future advances under the Note, Assignor has agreed, inter alia, to assign to
Secured Party certain patent rights.
NOW, THEREFORE, in consideration of the premises, Assignor hereby
agrees with Secured Party as follows:
1. To secure the complete and timely satisfaction of all Obligations,
Assignor hereby grants, assigns and conveys to Secured Party the entire right,
title and interest in and to the patent applications and patents listed in
Schedule A hereto, including without limitation all proceeds thereof (such as,
by way of example, 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 reissues, divisions,
continuations, renewals, extensions and continuations-in-part thereof
(collectively, the "Patents"). Terms used herein but not otherwise defined shall
have the meanings given to such terms in the Security Agreement and the Note.
2. Assignor represents, warrants and covenants that:
(a) The Patents are subsisting and have not been adjudged invalid or
unenforceable, in whole or in part and such Patents represent all of the Patents
owned by Assignor;
(b) To the best of Assignor's knowledge, each of the Patents that has
been issued is valid and enforceable;
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(c) Assignor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the Patents, free and
clear of any liens, charges and encumbrances, including without limitation
pledges, assignments, licenses, shop rights and covenants by Assignor not to xxx
third persons; and
(d) Assignor has the unqualified right to enter into this Agreement and
perform its terms.
3. Assignor agrees that until all of the Obligations shall have been
satisfied in full, it will not enter into any agreement (for example, a license
agreement) which is inconsistent with Assignor's obligations under this
Agreement, without Secured Party's prior written consent.
4. If, before the Obligations shall have been satisfied in full,
Assignor shall obtain rights to any new patentable inventions, or become
entitled to the benefit of any patent application or patent for any reissue,
division, continuation, renewal, extension or continuation-in-part of any Patent
or any improvement on any Patent, the provisions of paragraph 1 shall
automatically apply thereto and Assignor shall give to Secured Party prompt
notice thereof in writing hereof.
5. Assignor authorizes Secured Party to modify this Agreement by
amending Schedule A to include any future patents and patent applications which
are Patents under paragraph 1 or paragraph 4 hereof. Secured Party authorizes
Assignor to abandon any of the Patents if, in Assignor's sole and exclusive
determination, such Patent is not commercially viable. Provided, however, that
Assignor shall give Secured Party not less than thirty (30) days written notice
of its intention to abandon any such Patent whereupon Secured Party may assume
the unconditional ownership of such Patent at its sole cost and expense.
6. Unless and until there shall have occurred and be continuing an
Event of Default, Secured Party hereby grants to Assignor the exclusive,
nontransferable right and license under the Patents to make, have made for it,
use, sell and have sold the inventions disclosed and claimed in the Patents for
Assignor's own benefit and account and for none other. Assignor agrees not to
sell or assign its interest in, or grant any sublicense under, the license
granted to Assignor in this paragraph 6, without the prior written consent of
Secured Party, which consent shall not be unreasonably withheld.
7. If any Event of Default shall have occurred and be continuing, and
in addition to and not in lieu of any rights or remedies granted to Secured
Party in the event of default as set forth in the Security Agreement, which is
deemed incorporated herein by reference and which such rights and remedies may
be exercised cumulatively by Secured Party, the Secured Party may transfer or
assign Assignor's license under the Patents as set forth in paragraph 6, upon
thirty (30) days written notice to Assignor, and Secured Party shall have, in
addition to all other rights and remedies given it by this Agreement, those
allowed by law and the rights and remedies of a secured party under the Uniform
Commercial Code as enacted in any jurisdiction in which the Patents may be
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located and, without limiting the generality of the foregoing, the Secured Party
may immediately, without demand of performance and without other notice (except
as set forth below) or demand whatsoever to Assignor, all of which are hereby
expressly waived, and without advertisement, sell at public or private sale or
otherwise realize upon, in New York, New York, or elsewhere, the whole or from
time to time any part of the Patents, or any interest which the Assignor may
have therein, and after deducting from the proceeds of sale or other disposition
of the Patents all expenses (including all reasonable expenses for brokers' fees
and legal services), shall apply the residue of such proceeds toward the payment
of the Obligations. Any remainder of the proceeds after payment in full of the
Obligations shall be paid over to the Assignor. Notice of any sale or other
disposition of the Patents shall be given to Assignor at least twenty (20) days
before the time of any intended public or private sale or other disposition of
the Patents is to be made, which Assignor hereby agrees shall be reasonable
notice of such sale or other disposition. At any such sale or other disposition,
Secured Party may, to the extent permissible under applicable law, purchase the
whole or any part of the Patents sold, free from any right of redemption on the
part of Assignor, which right is hereby waived and released.
8. If any Event of Default shall have occurred and be continuing,
Assignor hereby authorizes and empowers Secured Party to make, constitute and
appoint any officer or agent of Secured Party, as Secured Party may select in
its exclusive discretion, as Assignor's true and lawful attorney-in-fact, with
the power to endorse Assignor's name on all applications, documents, papers and
instruments necessary for Secured Party to use the Patents, or to grant or issue
any exclusive or nonexclusive license under the Patents to any third person, or
necessary for Secured Party to assign, pledge, convey or otherwise transfer
title in or dispose of the Patents to any third person. Assignor hereby ratifies
all that such attorney shall lawfully do or cause to be done by virtue hereof.
This power of attorney shall be irrevocable for the life of this Agreement.
9. At such time as Assignor shall completely satisfy all of the
Obligations, this Agreement shall terminate and Secured Party shall execute and
deliver to Assignor all deeds, assignments and other instruments as may be
necessary or proper to re-vest in Assignor full title to the Patents, subject to
any disposition thereof which may have been made by Secured Party pursuant
hereto.
10. Any and all fees, costs and expenses, of whatever kind or nature,
including the reasonable attorney's fees and legal expenses incurred by Secured
Party in connection with the preparation of this Agreement and all other
documents relating hereto and the consummation of this transaction, 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 protecting, maintaining or preserving the
Patents, shall be borne and paid by Assignor on demand by Secured Party and
until so paid shall be added to the principal amount of the Obligations and
shall bear interest at the highest rate prescribed in the Note.
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11. Subject to Assignor's rights to voluntarily abandon any Patent, as
set forth in Section 5 hereof, Assignor shall have the duty, through counsel
reasonably acceptable to Secured Party, to prosecute diligently any patent
applications of the Patents pending as of the date of this Agreement or
thereafter until the Obligations shall have been paid in full to preserve and
maintain all rights in patent applications and patents of the Patents, including
without limitation the payment of all maintenance fees. Any expenses incurred in
connection with such an application shall be borne by Assignor.
12. Assignor shall have the right, with the consent of Secured Party,
which shall not be unreasonably withheld, to bring suit in its own name, and to
join Secured Party, if necessary, as a party to such suit so long as Secured
Party is satisfied that such joinder will not subject it to any risk of
liability, to enforce the Patents and any licenses thereunder. Assignor shall
promptly, upon demand, reimburse and indemnify Secured Party for all damages,
costs and expenses, including legal fees, incurred by Secured Party pursuant to
this Agreement and the Security Agreement.
13 No course of dealing between Assignor and Secured Party, nor any
failure to exercise, nor any delay in exercising, on the part of Secured Party,
any right, power or privilege hereunder or under the Security 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.
14. All of Secured Party's rights and remedies with respect to the
Patents, whether established hereby or by the Security Agreement, or by any
other agreements or by law shall be cumulative and may be exercised singularly
or concurrently.
15. The provisions of this 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 clause
or provision of this Agreement in any jurisdiction.
16. This Agreement is subject to modification only by a writing signed
by the parties, except as provided in paragraph 5.
17. 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.
18. The validity and interpretation of this Agreement and the rights
and obligations of the parties shall be governed by the laws of the State of New
York.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first above written.
ASSIGNOR:
COMMODORE APPLIED
TECHNOLOGIES, INC.
By: /s/ Xxxxx X. XxXxxxxxx
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Xxxxx X. XxXxxxxxx
Chief Financial Officer
SECURED PARTY:
THE SHAAR FUND, LTD.
By: SS&C Fund Services BVI
By: /s/ Maarten Xxxxxxxx
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Name: Maarten Xxxxxxxx
Title: Director
By: /s/ Xxxxx Ijsseling
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Name: Xxxxx Ijsseling
Title: Director
STATE OF RHODE ISLAND )
) SS:
COUNTY OF NEWPORT )
On this 9th day of April, 2005, before me, a Notary Public in and for
the jurisdiction aforesaid, personally appeared Xxxxx X. XxXxxxxxx, to me known,
who being by me duly sworn, did depose and say that he is the Chief Financial
Officer of Commodore Applied Technologies, Inc., and that he is duly authorized
to execute same; and that he subscribed, swore to and acknowledged the same in
his capacity as such officer and as the authorized and binding act and deed of
said corporation.
/s/ Xxxxx Xxxxxxx - Bank of America
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Notary Public
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PATENTS AND PATENT APPLICATIONS
COMMODORE APPLIED TECHNOLOGIES, INC.
PATENT PORTFOLIO
(March 22, 2005)
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Case Country Title Filed Issued Patent No./ Pending/
Number Serial No. Action
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SPP:103 US United States PROCESSES FOR DECONTAMINATING POLLUTED 03/30/1987 08/01/1989 4,853,040 Maintenance
SUBSTRATES fees paid-
Expires 8/01/06
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SPP:104 US United States EXPANDED "SET" PROCESSES 07/27/1989 05/05/1992 5,110,364 Expires 7/27/09
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SPP:111 EA Eurasia DESTRUCTION OF CHEMICAL WARFARE AGENTS 06/08/1998 10/10/1996 000631
(Russia) (CHEM DEMIL)
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SPP:111 KW Kuwait " " 11/02/1996 PA 134/96 Pending
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SPP:111 LY Libya " " 11/07/1996 428/96 Pending
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SPP:111 SA Saudi Arabia " " 11/27/1996 96 17 0460 Pending
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SPP:111 US United States " " 04/16/1998 12/07/1999 5,998,691
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SPP:112 PK Pakistan " " 12/11/1997 12/11/1997 136,129
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SPP:112 US United States " " 06/10/1999 09/19/2000 6,121,506
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SPP:114 CA Canada METHOD FOR REMEDIATING SITES CONTAMINATED 02/10/2000 08/24/2004 2,362,469
WITH TOXIC WASTE (IMPROVED SET PROCESS)
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SPP:114 EP Europe " " 02/10/2000 00 921 323.2 Pending
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SPP:114 IL Israel " " 08/09/2001 144,825 Pending
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SPP:114 JP Japan " " 08/13/2001 2000-599038 Pending
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SPP:114 MX Mexico " " 08/07/2001 PA/a/2001007958 Pending
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SPP:114 US United States " " 02/11/1999 04/11/2000 6,049,021
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SPP:115 US United States METHOD FOR OXIDIZING ORGANOPHOSPHORUS 05/27/2003 6,570,048
COMPOUNDS (PEROXYSULFATES)
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SPP:119 US United States DEACTIVATION OF METAL LIQUID COOLANTS 04/04/2000 01/16/2001 6,175,051
USED IN NUCLEAR REACTOR SYSTEMS
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End of Description of Collateral and Exhibit A.
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