Patent Security Agreement, dated September 9, 2004

EX-4.5 27 g93674exv4w5.txt PATENT SECURITY AGREEMENT, DATED SEPTEMBER 9, 2004 Exhibit 4.5 EXECUTION VERSION PATENT SECURITY AGREEMENT This PATENT SECURITY AGREEMENT (this "Patent Security Agreement") is made this 9th day of September, 2004, among the Grantors listed on the signature pages hereof (the "Grantors"), and The Bank of New York Trust Company, N.A., in its capacity as trustee under the Indenture (as defined below) (the "Trustee"). WITNESSETH: WHEREAS, pursuant to (a) that certain Indenture dated as of September 9, 2004 (as amended, restated, supplemented or otherwise modified from time to time, the "Indenture") among Securus Technologies, Inc., a Delaware corporation, as issuer (the "Company"), the subsidiaries of the Company party thereto as guarantors (the "Guarantors") and the Trustee, and (b) the Purchase Agreement dated as of August 18, 2004 (the "Purchase Agreement"), among the Company, the Guarantors, Credit Suisse First Boston LLC and Morgan Stanley & Co. Incorporated (the "Initial Purchasers"), the Company is issuing $154,000,000 aggregate principal amount of its Second-Priority Senior Secured Notes Due 2011 (the "Notes") which will be guaranteed on a senior secured basis by the Guarantors; WHEREAS, in order to induce the Initial Purchasers to enter into the Purchase Agreement and to induce the Initial Purchasers to purchase the Notes, the Grantors have agreed to grant a continuing Lien on the Collateral in order to secure the prompt and complete payment, observance and performance of the Secured Obligations, by the granting of the security interest contemplated by the Security Agreement (as defined below); WHEREAS, the Trustee is willing to enter into the Indenture, but only upon the condition, among others, that the Grantor shall have executed and delivered to the Trustee, for the benefit of the Noteholders, that certain Security Agreement dated as of September 9, 2004 (including all annexes, exhibits or schedules thereto, as from time to time amended, restated, supplemented or otherwise modified, the "Security Agreement"); and WHEREAS, pursuant to the Security Agreement, the Grantor is required to execute and deliver to the Trustee, for the benefit of the Noteholders, this Patent Security Agreement. NOW, THEREFORE, in consideration of the premises and mutual covenants herein contained and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Grantor hereby agrees as follows: 1. DEFINED TERMS. All capitalized terms used but not otherwise defined herein have the meanings given to them in the Security Agreement. 2. GRANT OF SECURITY INTEREST IN PATENT COLLATERAL. The Grantor hereby grants to the Trustee, for the benefit of the Noteholders, a continuing security interest in all of the Grantor's right, title and interest in, to and under the following, whether presently existing or hereafter created or acquired (collectively, the "Patent Collateral"): (a) all of its Patents and Patent Intellectual Property Licenses to which it is a party including those referred to on Schedule I hereto; (b) all reissues, continuations or extensions of the foregoing; and (c) all products and proceeds of the foregoing, including, without limitation, any claim by the Grantor against third parties for past, present or future infringement of any Patent or any Patent licensed under any Intellectual Property License. 3. SECURITY AGREEMENT. The security interests granted pursuant to this Patent Security Agreement are granted in conjunction with the security interests granted to the Trustee, for the benefit of the Noteholders, pursuant to the Security Agreement. The Grantor hereby acknowledges and affirms that the rights and remedies of the Trustee with respect to the security interest in the Patent Collateral made and granted hereby are more fully set forth in the Security Agreement, the terms and provisions of which are incorporated by reference herein as if fully set forth herein. 4. AUTHORIZATION TO SUPPLEMENT. If any Grantor shall obtain rights to 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 Patent Security Agreement shall automatically apply thereto. The Grantors shall give prompt notice in writing to the Trustee with respect to any such new patent rights. Without limiting the Grantors' obligations under this Section 4, the Grantors hereby authorize the Trustee unilaterally to modify this Patent Security Agreement by amending Schedule I to include any such new patent rights of such Grantor. Notwithstanding the foregoing, no failure to so modify this Patent Security Agreement or amend Schedule I shall in any way affect, invalidate or detract from the Trustee's continuing security interest in all Collateral, whether or not listed on Schedule I. 5. COUNTERPARTS. This Patent Security Agreement may be executed in any number of counterparts, each of which shall be deemed to be an original, but all such separate counterparts shall together constitute but one and the same instrument. In proving this Patent Security Agreement or any other Note Document in any judicial proceedings, it shall not be necessary to produce or account for more than one such counterpart signed by the party against whom such enforcement is sought. Any signatures delivered by a party by facsimile transmission or by e-mail transmission shall be deemed an original signature hereto. 6. Notwithstanding anything herein to the contrary, (i) the liens and security interests granted to the Trustee pursuant to this Patent Security Agreement are expressly subject and subordinate to the liens and security interests granted to the Administrative Agent (and its permitted successors and assigns), for the benefit of the credit parties, pursuant to the Credit Agreement and the related security documents dated as of September 9, 2004 (as further amended, restated, refinanced, replaced, supplemented or otherwise modified from time to time), by and among the Company, the Administrative Agent, the lenders and the other credit parties party thereto and the other parties party thereto and (ii) the exercise of any right or remedy by the Trustee hereunder is subject to the limitations and provisions of the Intercreditor Agreement. In the event of any conflict between the terms of the Intercreditor Agreement and the terms of this Patent Security Agreement, the terms of the Intercreditor Agreement shall govern. [SIGNATURE PAGE FOLLOWS] IN WITNESS WHEREOF, each Grantor has caused this Patent Security Agreement to be executed and delivered by its duly authorized officer as of the date first set forth above. GRANTORS: SECURUS TECHNOLOGIES, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------ Name: Lewis Schoenwettek Title: Vice President T-NETIX, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------- Name: Lewis Schoenwettek Title: Vice President TELEQUIP LABS, INC., a Nevada corporation By: /s/ Lewis Schoenwettek ------------------------------------- Name: Lewis Schoenwettek Title: Vice President T-NETIX TELECOMMUNICATIONS SERVICES, INC., a Texas corporation By: /s/ Lewis Schoenwettek ------------------------------------- Name: Lewis Schoenwettek Title: Vice President SPEAKEZ, INC., a Colorado corporation By: /s/ Lewis Schoenwettek ------------------------------------- Name: Lewis Schoenwettek Title: Vice President T-NETIX MONITORING CORPORATION, a Colorado corporation By: /s/ Lewis Schoenwettek ------------------------------------- Name: Lewis Schoenwettek Title: Vice President EVERCOM HOLDINGS, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------- Name: Lewis Schoenwettek Title: Vice President EVERCOM, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------- Name: Lewis Schoenwettek Title: Vice President EVERCOM SYSTEMS, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------- Name: Lewis Schoenwettek Title: Vice President FORTUNELINX, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------- Name: Lewis Schoenwettek Title: Vice President EVERCONNECT, INC., a Delaware corporation By: /s/ Lewis Schoenwettek ------------------------------------- Name: Lewis Schoenwettek Title: Vice President ACCEPTED AND ACKNOWLEDGED BY: THE BANK OF NEW YORK TRUST COMPANY, N.A., as Trustee By: /s/ George W. Bemister ------------------------------------- Name: George W. Bemister Title: ASSISTANT VICE PRESIDENT SCHEDULE I TO PATENT SECURITY AGREEMENT PATENT REGISTRATIONS/ APPLICATIONS T-NETIX, INC. AND SUBSIDIARIES:

3 EVERCOM HOLDINGS, INC. AND SUBSIDIARIES:

Categories for Patent Applications Filed:

4 PATENT LICENSES T-NETIX, INC. AND SUBSIDIARIES: Licensing Agreements: Intellectual Property Licenses (Inbound): 2/25/94 Technology Licensing Agreement - People's Telephone, Intellicall 8/10/94 Gateway and DNA Enterprises, Inc. (amended 6/26 and 9/29, 2003) 12/22/94 Gateway and Datalight, Incorporated 11/28/95 T-Netix, Inc. and Communications Equipment and Engineering Corporation 4/3/96 Ameritech Services, Inc. and Gateway 8/8/00 T-Netix Monitoring and Sentencing Alternatives, a division of CSSS, Inc. 11/2/00 T-Netix Monitoring and Tracking Systems Corporation 7/22/02 T-Netix and Speech Works International License Agreement 9/30/02 TELEQUIP and Scansoft, Inc. 12/10/02 CCH Incorporated and T-Netix, Inc. 9/29/03 T-Netix, Inc. and Fast-Talk Communications, Inc. Intellectual Property Licenses (Outbound): 10/26/94 Settlement and Patent License Agreement - Elcotel, Intellicall, Gateway 3/31/94 T-Netix, Inc., TTS and Ameritech Services, Inc. (amended 3/31/99, 7/1/99 and 2/14/03). 4/2/96 Patent License Agreement - Gateway, Intellicall, MCI 8/20/96 Patent License Agreement - Gateway, VAC 12/1/96 Gateway Technologies, Inc. Patent Licensing Agreement - Gateway, Ameritech 12/1/96 Gateway and Ameritech Services, Inc. 9/6/00 T-Netix Monitoring and CSSS Incorporated 5 10/19/00 T-Netix Monitoring and Global Watch Incorporated 10/25/00 T-Netix, Inc. and Voicebank AG 5/16/01 Patent Purchase and Grantback Agreements - T-Netix, Inc., Wireless WebConnect! Inc. 4/3/02 T-Netix, Inc. and an unidentified license (Agreement not dated. The fax record indicates that the document was faxed on 4/3/02). 4/25/02 T-Netix, Inc. and Digital Technologies 2000 10/2/02 T-Netix, Inc. and Innovative Alternatives to Incarceration 10/27/02 T-Netix, Inc. and Benchmark Detention Systems, Inc. 7/17/03 TELEQUIP and Cincinnati Bell Public Communications LLC 9/5/03 Patent License Agreement - T-Netix, Inc., Global Tel*Link Corp. Intellectual Property Licenses (Cross): 4/17/93 Gateway and Intellicall, Inc. (Amended 6/3/94 and 6/3/97) 9/26/94 Patent Cross-License Agreement - Protel, Intellicall, Gateway EVERCOM HOLDINGS, INC. AND SUBSIDIARIES: Pursuant to the terms of the Asset Purchase Agreement, dated as of December 22, 2003, by and between Evercom Systems, Inc. and Science Dynamics, Inc., Science Dynamics assigned to Evercom Systems their patented Three-way Call Detection System and Public Telephone with Voice Over Internet Protocol Transmission and related software. Software License Agreement, dated as of December 22, 2003, by and between Evercom Systems and Science Dynamics, Inc. pursuant to which Science Dynamics designed certain software for Evercom on a work-for-hire basis and Evercom granted specific rights in such software to Science Dynamics. License-Back Agreement, dated as of December 22, 2003, by and between Evercom Systems and Science Dynamics, Inc. pursuant to which Evercom licenses back to Science Dynamics certain rights in their patented Three-way Call Detection System and Public Telephone with Voice Over Internet Protocol Transmission and related software. 6