Patent Security Agreement between Registrant and Mintz Levin dated September 11, 2018
Exhibit 10.1
Patent Security Agreement
Patent Security Agreement, dated as of September 11, 2018, by ParkerVision Inc., a Florida corporation ("Pledgor"), in favor of Mintz Levin Cohn Ferris Glovsky and Popeo, P.C. (the "Recipient").
WITNESSETH:
WHEREAS, the Pledgor is party to a fee agreement dated as of February 25, 2016 (as amended, amended and restated, supplemented or otherwise modified from time to time, including the fee agreement dated August 17, 2018 regarding the second phase of the monetization program, and the fee agreements dated August 20, 2018 regarding (i) the New Jersey district court action, (ii) support of German litigation and (iii) the IPR appeal (collectively, the "Fee Agreement") and desires to grant a security interest in certain of Pledgor’s patents to Recipient.
Now, THEREFORE, in consideration of the promises and to induce the Recipient to enter into further dealings, the Pledgor hereby agrees with the Recipient as follows:
SECTION 1. Grant of Security Interest. As security for prompt and complete payment of the Secured Promissory Note dated August 20, 2018, made by Pledgor in favor of Recipient (the “Note”) and for future invoices issued by Recipient under the Fee Agreement, Pledgor does hereby pledge, collaterally assign and grant to the Recipient, its successors and assigns, a continuing security interest in all of its right, title or interest in, to or under all of the following assets, regardless of where located (collectively, the “IP Collateral”):
(a) Patents of the Pledgor listed on Schedule I attached hereto; and
(b) all proceeds of any and all of the foregoing.
SECTION 2. Security Agreement. The security interests granted to the Recipient herein are granted in furtherance, and not in limitation of, the interests granted to the Recipient in the Fee Agreement. In the event of any conflict between the terms of this Agreement and the Fee Agreement, the terms of the Fee Agreement shall govern.
SECTION 4. Termination. Upon the payment in full of the Note and of future invoices issued by Recipient under the Fee Agreement, the Recipient shall promptly execute, acknowledge, and deliver to the Pledgor an instrument or instruments (in recordable form, if necessary) releasing the collateral pledge, grant, assignment, lien and security interest in the IP Collateral.
SECTION 5. Counterparts. This Patent Security Agreement may be executed in any number of counterparts, all of which shall constitute one and the same instrument, and any party hereto may execute this Patent Security Agreement by signing and delivering one or more counterparts.
SECTION 6. Governing Law. This Patent Security Agreement and the transactions contemplated hereby, and all disputes between the parties under or relating to this Patent Security Agreement or the facts or circumstances leading to its execution, whether in contract, tort or otherwise, shall be construed in accordance with and governed by the laws (including statutes of limitation) of the State of New York, without regard to conflicts of law principles that would require the application of the laws of another jurisdiction.
IN WITNESS WHEREOF, the Pledgor and the Recipient have caused this Patent Security Agreement to be duly executed and delivered by their duly authorized officer as of the date first set forth above.
| | PARKERVISION, INC., as Pledgor | |
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| | By: | /s/ Jeffrey Parker |
| | Name: | Jeffrey L. Parker |
| | Title: | Chief Executive Officer |
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| | MINTZ LEVIN COHN FERRIS GLOVSKY & POPEO, P.C., | |
| | as Recipient | |
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| | By: | /s/ Michael McNamara |
| | Name: | Michael McNamara |
| | Title: | Member |
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SCHEDULE 1
to
PATENT SECURITY AGREEMENT
PATENT REGISTRATIONS AND PATENT APPLICATIONS
United States Patent Registrations:
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| Title | Country | Patent Number | Grant Date |
| Systems And Methods For Vector Power Amplification | United States | 7,327,803 | 2/5/2008 |
| Orthogonal Signal Generation Using Vector Spreading And Combining | United States | 7,746,764 | 6/29/2010 |
| Systems And Methods For Vector Power Amplification | Germany | 1813069 | 7/31/2013 |
| Systems And Methods For Vector Power Amplification | South Korea | 10-1171133 | 7/30/2012 |
| Systems And Methods For Vector Power Amplification | UK | 1813069 | 7/31/2013 |
| Systems And Methods For Vector Power Amplification | United States | 7,184,723 | 2/27/2007 |
| Rf Power Transmission, Modulation, And Amplification Using Multiple Input Single Output (Miso) Amplifiers To Process Phase Angle And Magnitude Information (As Amended 03/01/2010) | United States | 7,835,709 | 11/16/2010 |
1
| Title | Country | Patent Number | Grant Date |
| Systems And Methods Of Rf Power Transmission, Modulation, And Amplification, Including Embodiments For Amplifier Class Transitioning | United States | 7,355,470 | 4/8/2008 |
| Systems And Methods Of RF Power Transmission, Modulation, And Amplification, Including Architect7ural Embodiments Of Same | United States | 7,937,106 | 5/3/11 |
| Systems And Methods Of RF Power Transmission, Modulation, And Amplification, Including Waveform Distortion Compensation Embodiments | United States | 7,945,224 | 5/17/11 |
| Systems And Methods Of RF Power Transmission, Modulation, And Amplification, Including Embodiments For Compensating For Waveform Distortion | United States | 8,031,804 | 10/4/11 |
| RF Power Transmission, Modulation, And Amplification, Including A Cartesian 4-Branch Embodiments | United States | 7,526,261 | 4/28/2009 |
| Systems And Methods Of RF Power Transmission, Modulation, And Amplification, Including A Cartesian-Polar-Cartesian-Polar (Cpcp) Embodiment | United States | 8,406,711 | 3/26/2013 |
2
| Title | Country | Patent Number | Grant Date |
| RF Power Transmission, Modulation, And Amplification, Including Direct Cartesian 2-Branch Embodiments | United States | 8,428,527 | 4/23/2013 |
| Systems And Methods Of RF Power Transmission, Modulation, And Amplification, Including Cartesian-Polar-Cartesian-Polar (Cpcp) Embodiments | United States | 8,280,321 | 10/2/12 |
| Systems And Methods Of RF Power Transmission, Modulation, And Amplification, Including Cartesian 4-Branch Embodiments | United States | 8,351,870 | 1/8/2013 |
| A Multiple Input Single Output (Miso) Amplifier Having Multiple Transistors Whose Output Voltages Substantially Equal The Amplifier Output Voltage | United States | 8,433,264 | 4/30/2013 |
| RF Power Transmission, Modulation, And Amplification, Including Power Control Of Multiple Input Single Output (Miso) Amplifiers | United States | 8,447,248 | 5/21/2013 |
| Systems And Methods Of RF Power Transmission, Modulation, And Amplification, Including Output Stage Protection Circuitry | United States | 8,577,313 | 11/5/2013 |
3
| Title | Country | Patent Number | Grant Date |
| Multiple Input Single Output (Miso) Amplifier With Circuit Branch Output Tracking | United States | 7,647,030 | 1/12/2010 |
| Systems And Methods Of RF Power Transmission, Modulation, And Amplification, Including Multiple Input Single Output (Miso) Amplifier Embodiments Comprising Harmonic Control Circuitry | United States | 7,672,650 | 3/2/2010 |
| RF Power Transmission, Modulation, And Amplification, Including Harmonic Control Embodiments | United States | 7,844,235 | 11/30/2010 |
| RF Power Transmission, Modulation, And Amplification Embodiments, Including Control Circuitry For Controlling Power Amplifier Output Stages | United States | 8,233,858 | 7/31/2012 |
| Systems And Methods Of RF Power Transmission, Modulation, And Amplification | Germany | 2405277 | 5/14/2014 |
| Systems And Methods Of RF Power Transmission, Modulation And Amplification | Japan | 5486068 | 2/28/2014 |
| Systems And Methods Of RF Power Transmission, Modulation, And Amplification | UK | 2405277 | 5/14/2014 |
4
| Title | Country | Patent Number | Grant Date |
| Methods And Systems For Down-Converting A Signal Using A Complementary Transistor Structure | United States | 7376410 | 5/20/2008 |
| Wireless Local Area Network (WLAN) Using Universal Frequency Translation Technology Including Multi-Phase Embodiments | United States | 7072390 | 7/4/2006 |
| Wireless Local Area Network (WLAN) Technology And Applications Including Techniques Of Universal Frequency Translation | United States | 7054296 | 5/30/2006 |
| Method And Apparatus For Reducing DC Offsets In A Communication System | United States | 7072427 | 7/4/2006 |
| Wireless And Wired Cable Modem Applications Of Universal Frequency Translation Technology | United States | 7292835 | 11/6/2007 |
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