INTELLECTUAL PROPERTY SECURITY AGREEMENT
EX-10.6 7 q1100430_ex10-6.htm INTELLECTUAL PROPERTY SECURITY AGREEMENT, DATED APRIL 5, 2012, BY AND BETWEEN INSPIREMD, INC., INSPIREMD LTD., INSPIRE MD GMBH AND THE BUYERS Unassociated Document
INTELLECTUAL PROPERTY SECURITY AGREEMENT
THIS INTELLECTUAL PROPERTY SECURITY AGREEMENT is entered into as of April 5, 2012, among Inspire M.D Ltd, a company formed under the laws of the State of Israel (the “Company”) and the holders (together with their endorsees, transferees and assigns, the “Secured Parties”) of the 8% Original Issue Discount Senior Secured Convertible Debentures (collectively, the “Debentures”) issued by InspireMD, Inc., a Delaware corporation and the sole shareholder of the Company (“Parent”).
RECITALS
WHEREAS, pursuant to the Purchase Agreement (as defined in the Debentures), the Secured Parties have severally agreed to extend the loans to the Company evidenced by the Debentures;
WHEREAS, pursuant to a certain Subsidiary Guarantee, dated as of the date hereof (the “Guarantee”), the Company has agreed to guarantee and act as surety for payment of such Debentures; and
WHEREAS, in order to induce the Secured Parties to extend the loans evidenced by the Debentures, the Company has agreed to execute and deliver to the HUG Funding LLC (the “Agent”) this Agreement and to grant the Agent, for the benefit of the Secured Parties, a security interest in certain copyrights, trademarks and patents (as each term is described below) of the Company to secure the prompt payment, performance and discharge in full of all of the Parent’s obligations under the Debentures and the Company’s obligations under the Subsidiary Guarantee.
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 Subsidiary Guarantee, the Company hereby represents, warrants, covenants and agrees as follows:
AGREEMENT
| | 1. | Grant of Security |
To secure its obligations under the Subsidiary Guarantee and subject to the terms set forth therein and in the Security Agreement, the Company grants to the Agent, for the benefit of the Secured Parties, a security interest in all of the Company’s rights, priorities and privileges relating to intellectual property, whether arising under United States, multinational or foreign laws or otherwise (all of which shall collectively be called the “Intellectual Property Collateral”), including, without limitation, the following:
(i) all copyright rights throughout the universe (whether now or hereafter arising) in any and all media (whether now or hereafter developed), in and to all original works of authorship fixed in any tangible medium of expression, acquired or used by the Debtor, whether registered or unregistered and whether published or unpublished, all applications, registrations and recordings thereof (including, without limitation, applications, registrations and recordings in the United States Copyright Office or in any similar office or agency of the United States, any other union of countries, country or any political subdivision thereof), including without limitation those set forth on Exhibit A;
(ii) domestic and foreign letters patent, design patents, utility patents, industrial designs, inventions, trade secrets, ideas, concepts, methods, techniques, processes, proprietary information, technology, know-how, formulae, rights of publicity and other general intangibles of like nature, now existing or hereafter acquired, all applications, registrations and recordings thereof (including, without limitation, applications, registrations and recordings in the United States Patent and Trademark Office, or in any similar office or agency of the United States or union of countries, any other country or any political subdivision thereof), and all reissues, divisions, continuations, continuations in part and extensions or renewals thereof, , including without limitation the patents and patent applications set forth on Exhibit B attached hereto;
(iii) all trademarks, trade names, corporate names, company names, business names, fictitious business names, trade dress, service marks, logos, domain names and other source or business identifiers, and all goodwill associated therewith, now existing or hereafter adopted or acquired, all registrations and recordings thereof, and all applications in connection therewith, (including, without limitation, applications, registrations and recordings in the United States Patent and Trademark Office, or in any similar office or agency of the United States or union of countries, any other country or any political subdivision thereof), and all reissues, divisions, continuations, continuations in part and extensions or renewals thereof, and all common law rights related thereto, together with all goodwill of the business symbolized by such marks and all customer lists, formulae and other records of the Debtor relating to the distribution of products and services in connection with which any of such marks are used, including without limitation those set forth on Exhibit C attached hereto;
(iv) all trade secrets arising under the laws of the United States, any other union of countries, country or any political subdivision thereof;
(v) all rights to obtain any reissues, renewals or extensions of the foregoing;
(vi) all licenses for any of the foregoing; and
(vii) all causes of action for infringement of the foregoing.
This security interest is granted in conjunction with the security interest granted to the Agent, for the benefit of the Secured Parties, pursuant to that certain Security Agreement, dated as of even date herewith, by the Parent and the Company for the benefit of the Agent and the Secured Parties. The rights and remedies of the Agent with respect to the security interest granted hereby are in addition to those set forth in the Security Agreement and the Subsidiary Guarantee, and those which are now or hereafter available to the Agent and the Secured Parties as a matter of law or equity. Each right, power and remedy of the Agent or the Secured Parties provided for herein or in the Security Agreement or the Subsidiary Guarantee, 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 of any one or more of the rights, powers or remedies provided for in this Intellectual Property Security Agreement, the Security Agreement or the Subsidiary Guarantee, or now or hereafter existing at law or in equity, shall not preclude the simultaneous or later exercise by any person, including the Agent, of any or all other rights, powers or remedies. In the event of any contradiction between this Intellectual Property Security Agreement and the Security Agreement, the provisions of the Security Agreement will prevail.
| | 2. | Miscellaneous |
This Intellectual Property Security Agreement may be executed in any number of counterparts and by different parties on separate counterparts, each of which, when executed and delivered, is an original, and all taken together, constitute one Intellectual Property Security Agreement.
[Signature Page Follows.]
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: | ||
| INSPIRE M.D LTD | ||
| 4 Menorat Hamaor St. | ||
| Tel Aviv, Israel | ||
| 67448 | By: /s/ Ofir Paz | |
| Name: Ofir Paz | ||
| Attn: Craig Shore | Title: Chief Executive Officer | |
[Signature Page of Secured Parties Follows]
[Company Signature Page – Intellectual Property Security Agreement]
| SECURED PARTIES: | ||
| HUG FUNDING LLC | ||
| By: /s/ Daniel Saks | ||
| Name: Daniel Saks | ||
| Title: Managing Member | ||
| GENESIS OPPORTUNITY FUND LP | ||
| By: /s/ Daniel Saks | ||
| Name: Daniel Saks | ||
| Title: Managing Member | ||
| GENESIS ASSET OPPORTUNITY FUND LP | ||
| By: /s/ Daniel Saks | ||
| Name: Daniel Saks | ||
| Title: Managing Member | ||
| AYER CAPITAL PARTNERS MASTER | ||
| FUND, L.P. | ||
| By: /s/ Jay Venkatesan | ||
| Name: Jay Venkatesan | ||
| Title: Managing Member | ||
| AYER CAPITAL PARTNERS KESTREL | ||
| FUND, LP | ||
| By: /s/ Jay Venkatesan | ||
| Name: Jay Venkatesan | ||
| Title: Managing Member | ||
| EPWORTH-AYER CAPITAL | ||
| By: /s/ Jay Venkatesan | ||
| Name: Jay Venkatesan | ||
| Title: Managing Member | ||
[Secured Party Signature Page – Intellectual Property Security Agreement]
EXHIBIT A
Copyrights
None.
EXHIBIT B
Patents
| Title | Patent/Patent Application Number (Publication Number) | Issue/Filing Date |
| STENT WITH SHEATH AND METAL WIRE RETAINER (PCT) | PCT/IB2011/055758 | 12/18/2011 |
| OPTIMIZED STENT JACKET (USA) | 12/791,008 | 06/01/2010 |
| OPTIMIZED STENT JACKET (EUROPE) | 07827415.6 | 11/21/2007 |
| OPTIMIZED STENT JACKET (ISRAEL) | 198,665 | 11/21/2007 |
| OPTIMIZED STENT JACKET (CANADA) | 2670724 | 11/21/2007 |
| OPTIMIZED STENT JACKET (CHINA) | 200780043259.2 | 11/21/2007 |
| OPTIMIZED STENT JACKET (INDIA) | 4088DELNP2009 | 11/21/2007 |
| BIFURCATED STENT ASSEMBLIES (USA) | 11/797,168 | 05/01/2007 |
| BIFURCATED STENT ASSEMBLIES (ISRAEL) | 198188 | 10/18/2007 |
| BIFURCATED STENT ASSEMBLIES (USA) | 12/445,968 | 04/17/2009 |
| BIFURCATED STENT ASSEMBLIES (CANADA) | 2666706 | 10/18/2007 |
| BIFURCATED STENT ASSEMBLIES (EUROPE) | 07827227.5 | 10/18/2007 |
| BIFURCATED STENT ASSEMBLIES (CHINA) | 200780046676.2 | 10/18/2007 |
| BIFURCATED STENT ASSEMBLIES (INDIA) | 3113DELNP2009 | 10/18/2007 |
| IN VIVO FILTER ASSEMBLY (USA) | 8,043,323 / 11/582,354 | 10/25/2011 / 10/18/2006 |
| IN VIVO FILTER ASSEMBLY (USA) | 13/237,977 | 09/21/2011 |
| STENT APPARATUSES FOR TREATMENT VIA BODY LUMENS AND METHODS OF USE (USA) | 11/920,972 | 11/23/2007 |
| STENT APPARATUSES FOR TREATMENT VIA BODY LUMENS AND METHODS OF USE (EUROPE) | 06745069.2 | 05/24/2006 |
| STENT APPARATUSES FOR TREATMENT VIA BODY LUMENS AND METHODS OF USE (CANADA) | 2,609,687 | 05/24/2006 |
| STENT APPARATUSES FOR TREATMENT VIA BODY LUMENS AND METHODS OF USE (SOUTH AFRICA) | 2007/10751 / 2007/10751 | 05/24/2006 / 10/27/2010 |
| STENT APPARATUSES FOR TREATMENT VIA BODY LUMENS AND METHODS OF USE (ISRAEL) | 187516 | 05/24/2006 |
| FILTER ASSEMBLIES (USA) | 12/445,972 | 04/17/2009 |
| FILTER ASSEMBLIES (EUROPE) | 07827228.3 | 10/18/2007 |
| FILTER ASSEMBLIES (ISRAEL) | 198189 | 10/18/2007 |
| FILTER ASSEMBLIES (CANADA) | 2666712 | 10/18/2007 |
| FILTER ASSEMBLIES (CHINA) | 200780046659.9 | 10/18/2007 |
| FILTER ASSEMBLIES (INDIA) | 3114DELNP2009 | 10/18/2007 |
| KNITTED STENT JACKETS (USA) | 12/445,980 | 04/17/2009 |
| KNITTED STENT JACKETS (ISRAEL) | 198190 | 10/18/2007 |
| KNITTED STENT JACKETS (EUROPE) | 07827229.1 | 10/18/2007 |
| KNITTED STENT JACKETS (CANADA) | 2666728 | 10/18/2007 |
| KNITTED STENT JACKETS (CHINA) | 200780046697.4 | 10/18/2007 |
| KNITTED STENT JACKETS (INDIA) | 3171DELNP2009 | 10/18/2007 |
EXHIBIT C
Trademarks
| Description | Registration/ Application Number | Registration/ Application Date |
| INSPIREMD (wordmark) (EUROPE) | 008642118 | 10/27/2009 |
| MGUARD (wordmark) (EUROPE) | 008642175 | 10/27/2009 |
