Intellectual Property Security Agreement - Silicon Valley Bank, Gold Hill Venture Lending 03 LP and Vringo Inc.
INTELLECTUAL PROPERTY SECURITY AGREEMENT
This Intellectual Property Security Agreement is entered into as of December 29, 2009 by and among SILICON VALLEY BANK, a California corporation and with a loan production office located at One Newton Executive Park, Suite 200, 2221 Washington Street, Newton, Massachusetts 02462 ("SVB"), in its capacity as collateral agent for the Lenders ("Agent"), and in its capacity as a "Lender" (SVB in such capacity and the other Lenders listed on Schedule 1.1 to the Loan Agreement (as hereinafter defined) or party thereto from time to time, including, without limitation, GOLD HILL VENTURE LENDING 03, L.P., each a "Lender" and collectively, "Lenders"), and VRINGO, INC., a Delaware corporation ("Grantor").
RECITALS
A. Lenders have agreed to make certain advances of money and to extend certain financial accommodation to Grantor (the "Loans") in the amounts and manner set forth in that certain Loan and Security Agreement by and among Lenders, the Agent and Grantor, dated January 29, 2008, as amended by that certain First Loan Modification Agreement by and among Lenders, the Agent and Grantor of even date herewith (as the same may be amended, modified or supplemented from time to time, the "Loan Agreement"; capitalized terms used herein are used as defined in the Loan Agreement). Lenders are willing to make the Loans to Grantor, but only upon the condition, among others, that Grantor shall grant to Agent, for the ratable benefit of the Lenders, and to each Lender a security interest in certain Copyrights, Trademarks, Patents, and Mask Works (as each term is described below) to secure the obligations of Grantor under the Loan Agreement.
B. Pursuant to the terms of the Loan Agreement, Grantor has granted to Agent, for the ratable benefit of the Lenders, and to each Lender a security interest in all of Grantor's right, title and interest, whether presently existing or hereafter acquired, in, to and under all of the Collateral.
NOW, THEREFORE, for good and valuable consideration, receipt of which is hereby acknowledged, and intending to be legally bound, as collateral security for the prompt and complete payment when due of its obligations under the Loan Agreement, Grantor hereby represents, warrants, covenants and agrees as follows:
AGREEMENT
To secure its obligations under the Loan Agreement, Grantor grants and pledges to Agent, for the ratable benefit of the Lenders, and to each Lender a security interest in all of Grantor's right, title and interest in, to and under its intellectual property (all of which shall collectively be called the "Intellectual Property Collateral"), including, without limitation, the following:
1. Any and all copyright rights, copyright applications, copyright registrations and like protections in each work or authorship and derivative work thereof, whether published or unpublished and whether or not the same also constitutes a trade secret, now or hereafter existing, created, acquired or held, including without limitation those set forth on Exhibit A attached hereto (collectively, the "Copyrights");
2. Any and all trade secrets, and any and all intellectual property rights in computer software and computer software products now or hereafter existing, created, acquired or held;
3. Any and all design rights that may be available to Grantor now or hereafter existing, created, acquired or held;
4. All patents, patent applications and like protections including, without limitation, improvements, divisions, continuations, renewals, reissues, extensions and continuations-in-part of the same, including without limitation the patents and patent applications set forth on Exhibit B attached hereto (collectively, the "Patents");
5. Any trademark and servicemark rights, whether registered or not, applications to register and registrations of the same and like protections, and the entire goodwill of the business of Grantor connected with and symbolized by such trademarks, including without limitation those set forth on Exhibit C attached hereto (collectively, the "Trademarks");
6. All mask works or similar rights available for the protection of semiconductor chips, now owned or hereafter acquired, including, without limitation those set forth on Exhibit D attached hereto (collectively, the "Mask Works");
7. Any and all claims for damages by way of past, present and future infringements of any of the rights included above, with the right, but not the obligation, to sue for and collect such damages for said use or infringement of the intellectual property rights identified above;
8. All licenses or other rights to use any of the Copyrights, Patents, Trademarks, or Mask Works and all license fees and royalties arising from such use to the extent permitted by such license or rights;
9. All amendments, extensions, renewals and extensions of any of the Copyrights, Trademarks, Patents, or Mask Works; and
10. All proceeds and products of the foregoing, including without limitation all payments under insurance or any indemnity or warranty payable in respect of any of the foregoing.
This security interest is granted in conjunction with the security interest granted to the Agent and the Lenders under the Loan Agreement. The rights and remedies of the Agent and the Lenders with respect to the security interest granted hereby are in addition to those set forth in the Loan Agreement and the other Loan Documents, and those which are now or hereafter available to the Agent and the Lenders as a matter of law or equity. Each right, power and remedy of the Agent and the Lenders provided for herein or in the Loan Agreement or any of the Loan Documents, or now or hereafter existing at law or in equity shall be cumulative and concurrent and shall be in addition to every right, power or remedy provided for herein and the exercise by the Agent and the Lenders of any one or more of the rights, powers or remedies provided for in this Intellectual Property Security Agreement, the Loan Agreement or any of the other Loan Documents, or now or hereafter existing at law or in equity, shall not preclude the simultaneous or later exercise by any person, including the Agent or any Lender, of any or all other rights, powers or remedies.
[Signature page follows.]
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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.
| GRANTOR: | ||||||||
| Address of Grantor: | VRINGO, INC. | |||||||
|
BIG Center, Bet Shemesh |
By: | /s/ Jon Medved | ||||||
|
1 Yigal Allon Blvd Bet Shemesh 00062 Israel Attn: David Corre |
Title: | Chief Executive Officer | ||||||
| AGENT: | ||||||||
| Address of Agent: |
SILICON VALLEY BANK, as Agent and a Lender |
|||||||
|
One Newton Executive Park, Suite 200 |
By: | /s/ authorized signatory | ||||||
|
2221 Washington Street Newton, Massachusetts 02462 Attn: Mr. Michael Fell |
Title: | Senior Advisor | ||||||
| LENDER: | ||||||||
| Address of Lender: | GOLD HILL VENTURE LENDING 03, L.P., as a Lender | |||||||
|
Two Newton Executive Park, Suite 203 |
By: | /s/ authorized signatory | ||||||
|
2227 Washington Street |
Title: | Manager | ||||||
|
Newton, MA 02462 Attn: Frank Tower |
||||||||
EXHIBIT A
Copyrights
|
Description |
Registration/ Application Number |
Registration/ Application Date |
||
|
No registered copyrights. |
EXHIBIT B
Patents
|
Description |
Registration/ Application Number |
Registration/ Application Date |
||
|
Synchronized Voice and Data System |
11/997,000 | January 28, 2008 | ||
|
Personalization Content Sharing System and Method (USA) |
11/544,938 | October 10, 2006 | ||
|
Personalization Content Sharing System and Method (USA) |
11/744,917 | May 7, 2007 | ||
|
Personalization Content Sharing System and Method (Europe) |
07706046.5 | January 25, 2007 | ||
|
Personalization Content Sharing System and Method (Europe) |
08738326.1 | December, 2009 | ||
|
Media Content at the End of a Communication |
11/549,658 | October 16, 2006 | ||
|
User-Chosen Media Content (USA) |
11/768,989 | June 27, 2007 | ||
|
User-Chosen Media Content (Europe) |
07766818.4 | June 27, 2007 | ||
|
Pushed Media Content Delivery (USA) |
11/775,249 | July 10, 2007 | ||
|
Pushed Media Content Delivery (Europe) |
07766888.7 | July 10, 2007 | ||
|
System and Method for Digital Rights Management |
11/773,417 | July 4, 2007 | ||
|
Advertisement-Based Dialing |
12/186,592 | August 6, 2008 | ||
|
Group Sharing of Media Content |
11/776,689 | July 12, 2007 | ||
|
Media Playing on Another Device |
11/853,117 | September 11, 2007 | ||
|
Personalized Installation Files |
11/858,193 | September 20, 2007 | ||
|
Method to Play Vendor Videos |
11/923,831 | October 25, 2007 | ||
|
Triggering Events for Video Ringtones |
12/028,938 | February 11, 2008 | ||
|
Smart Contact List |
12/043,974 | March 7, 2008 | ||
|
Mobile Video Dating Service |
12/186,547 | August 6, 2008 | ||
|
Roaming Detection |
12/193,785 | August 19, 2008 | ||
|
Contact Matching of Changing Content Across Platforms |
12/367,525 | February 8, 2009 | ||
|
Voting System with Content |
61/226,718 | July 19, 2009 | ||
|
Alternative Ringtones for Mobile Telephones |
61/289,454 | December 23, 2009 | ||
|
Web-Based Dialing |
11/775,248 | July 10, 2007 | ||
|
Drag and Drop Selection of Products |
11/772,873 | July 3, 2007 | ||
EXHIBIT C
Trademarks
|
Description |
Registration/ Application Number |
Registration/ Application Date |
||
|
Vringo |
78917479 | June 27, 2006 | ||
|
Show Me Your Vringo Vringo (US) |
77185488 | May 20, 2007 | ||
|
Vringo Logo Show Me Your Vringo (European Union) |
5951851 | April 17, 2008 | ||
|
Vringo Logo Show Me Your Vringo (India) |
1623116 | November 21, 2007 | ||
|
Vringo Logo Show Me Your Vringo (India) |
1623117 | November 21, 2007 | ||
EXHIBIT D
Mask Works
|
Description |
Registration/ Application Number |
Registration/ Application Date |
||
|
None. |