PATENT COLLATERAL ASSIGNMENT
Exhibit
10.6
This
Agreement is made on this 8th day of November, 2007, by and among Nature
Vision,
Inc., a Minnesota corporation, and Nature Vision Operating, Inc., a Minnesota
corporation, each having a mailing address at 0000 Xxxxxxxx Xxxxxxx Xxxx,
Xxxxxxxx, XX 00000 (individually and collectively the “Assignor”) and
M&I Business Credit, LLC, a Minnesota limited liability company, having a
mailing address at Xxxxx 000, 000 Xxxxxxxx Xxxx, Xxxxxxxxxxx, Xxxxxxxxx 00000
(“Lender”).
Background. Assignor
has executed and delivered to Lender a Credit and Security Agreement dated
as of
the date hereof whereby Lender may make loans to Assignor (said Credit and
Security Agreement as amended from time to time is referred to herein as
the
“Credit Agreement”). In order to induce the Lender to execute and
deliver the Credit Agreement, Assignor has agreed to assign to Lender certain
Patent rights.
NOW,
THEREFORE, in consideration of the premises, each Assignor hereby agrees
with
Lender as follows:
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1.
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To
secure the complete and timely satisfaction of all Obligations
(as defined
in the Credit Agreement), Assignor hereby grants, assigns, and
conveys to
Lender all of its right, title and interest, if any, 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 called
the
“Patents”).
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2. Assignor
covenants and warrants that:
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a.
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The
Patents are subsisting and have not been adjudged invalid or
unenforceable, in whole or in part;
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b.
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To
the best of Assignor’s knowledge, each of the Patents is valid and
enforceable and Assignor has notified Lender in writing of all
prior art
(including public uses and sales) of which it is
aware;
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c.
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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
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d.
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Assignor
has the unqualified right to enter into this Agreement and perform
its
terms and has entered and will enter into written agreements with
each of
its present and future employees, agents and consultants which
will enable
it to comply with the covenants herein
contained.
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3.
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Assignor
agrees that, until all of the Obligations (as defined in the Credit
Agreement) 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 Lender’s prior
written consent.
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4.
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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 Lender
prompt
notice thereof in writing hereof.
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5.
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Assignor
authorizes Lender 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.
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6.
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Unless
and until there shall have occurred and be continuing an Event
of Default
(as defined in the Credit Agreement), Lender hereby grants to Assignor
the
exclusive, nontransferable right and license under the Patents
to make,
have made for it, use and sell 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
Lender.
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7.
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If
any Event of Default shall have occurred and be continuing, Assignor’s
license under the Patents as set forth in paragraph 6, shall terminate
forthwith, and the Lender 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 located
and,
without limiting the generality of the foregoing, the Lender may
immediately, without demand of performance and without other notice
(except as set forth next 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 Minneapolis,
Minnesota, 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 reasonable 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 ten (10) 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, any holder of any Note (as defined in the Credit Agreement)
or Lender may, to the extent permissible under applicable law,
purchase
the whole or any part of the Patents sold, free from any right
or
redemption on the part of Assignor, which right is hereby waived
and
released.
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8.
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At
such time as Assignor shall completely satisfy all of the Obligations,
this Agreement shall terminate and Lender shall execute and deliver
to
Assignor all deeds, assignments and other instruments s 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 Lender pursuant
hereto.
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9.
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Any
and all reasonable fees, costs and expenses, of whatever kind or
nature,
including the reasonable attorneys’ fees and legal expenses incurred by
Lender in connection with 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 in otherwise protecting,
maintaining or preserving the Patents, or in defending or prosecuting
any
actions or proceedings arising out of or related to the Patents,
shall be
borne and paid by Assignor on demand by Lender 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 Credit
Agreement.
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10.
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Assignor
shall have the duty, through counsel reasonably acceptable to Lender,
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 and 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. The Assignor shall not abandon any right to file any
pending Patent application or Patent without the consent of the
Lender,
which consent shall not be unreasonably
withheld.
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11.
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Assignor
shall have the right, with the consent of Lender, which shall not
be
unreasonably withheld, to bring suit in its own name, and to join
Lender,
if necessary, as a party to such suit so long as Lender 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 Lender for all damages, costs
and
expenses, including legal fees, incurred by Lender pursuant to
this
paragraph 11.
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12.
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No
course of dealing between Assignor and Lender, nor any failure
to
exercise, nor any delay in exercising, on the part of Lender, any
right,
power or privilege hereunder or under the Credit 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.
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13.
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All
of Lender’s rights and remedies with respect to the Patents, whether
established hereby or by the Credit Agreement, or by any other
agreements
or by law shall be cumulative and may be exercised singularly or
concurrently.
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14.
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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 of this Agreement in any
jurisdiction.
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15.
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This
Agreement is subject to modification only by a writing signed by
the
parties, except as provided in paragraph
5.
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16.
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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.
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17.
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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
Minnesota.
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IN
WITNESS WHEREOF, this Agreement has been duly executed and delivered on the
day
and year first above written.
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By:
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/S/
Xxxxxxx X. Xxxxxx
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Xxxxxxx
X. Xxxxxx, President and CEO
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NATURE
VISION OPERATING, INC.
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By:
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/S/
Xxxxxxx X. Xxxxxx
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Xxxxxxx
X. Xxxxxx, President and CEO
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M&I
BUSINESS CREDIT, LLC
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By:
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/S/
Xxxxxx X. Xxxxxxx
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Its:
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Vice
President
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STATE
OF
MINNESOTA )
)
ss.
COUNTY
OF
HENNEPIN )
The
foregoing instrument was executed and acknowledged before me on this 8th
day of
November, 2007, by Xxxxxxx X. Xxxxxx, the President and CEO of Nature Vision,
Inc., a Minnesota corporation, on behalf of said corporation.
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/S/
Xxxxxx X.
Xxxxxxx
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Notary
Public
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STATE
OF
MINNESOTA )
)
ss.
COUNTY
OF
HENNEPIN
)
The
foregoing instrument was executed and acknowledged before me on this 8th
day of
November, 2007, by Xxxxxxx X. Xxxxxx, the President and CEO of Nature Vision
Operating, Inc., a Minnesota corporation, on behalf of said
corporation.
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/S/
Xxxxxx X.
Xxxxxxx
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Notary
Public
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STATE
OF
MINNESOTA )
)
ss.
COUNTY
OF
HENNEPIN )
The
foregoing instrument was executed and acknowledged before me on this 8th
day of
November, 2007, by Xxxxxx X. Xxxxxxx, the Vice President of M&I Business
Credit, LLC, a Minnesota limited liability company, on behalf of said
company.
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/S/
Xxxxxx X.
Xxxxxxx
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Notary
Public
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SCHEDULE
A
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Patent
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Patent
Number
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Video
display/cord dispenser
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D529,884
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Clip-on-light
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D524,974
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Video
fish camera
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D513,029
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Vibrating
fishing rod
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6,836,995
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Underwater
viewing camera
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D489,387
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Viewing
monitor
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D488,826
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Lighted
fishing lure
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D480,445
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Submersible
video viewing system
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6,476,853
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Submersible
video viewing system
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6,262,761
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Underwater
viewing monitor housing
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D439,589
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Underwater
viewing monitor
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D438,881
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Underwater
viewing monitor housing
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D429,744
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Submersible
video viewing system
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6,097,424
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Bird
feeder
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D426,352
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