INTELLECTUAL PROPERTY LOAN AGREEMENT
Corindus Vascular Robotics, Inc. S-1/A
Exhibit 10.06
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
INTELLECTUAL PROPERTY LOAN AGREEMENT
This INTELLECTUAL PROPERTY LOAN AGREEMENT (“IP Security Agreement”), dated as of June 11, 2014, is made by the CORINDUS, INC., a Delaware corporation and CORINDUS SECURITY CORPORATION, a Delaware corporation (collectively, the “Grantors”) in favor of ▇▇▇▇▇▇▇ CAPITAL HOLDINGS, LP, a Delaware limited partnership, and its successors and assigns (together with its successors and assigns, the “Lender”).
WHEREAS, Grantors have entered into a Loan and Security Agreement dated as of [DATE] (the “Loan Agreement”), with the Lender.
WHEREAS, under the terms of the Loan Agreement, the Grantors have granted to the Lender a security interest in, among other property, certain intellectual property of the Grantors, and have agreed to execute and deliver this IP Security Agreement, for recording with national, federal and state government authorities, including, but not limited to, the United States Patent and Trademark Office and the United States Copyright Office.
NOW THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, each Grantor agrees with the Lender as follows:
1. Grant of Security. Each Grantor hereby pledges and grants to the Lender for the ratable benefit of the Secured Parties a security interest in and to all of the right, title and interest of such Grantor in, to and under the following, wherever located, and whether now existing or hereafter arising or acquired from time to time (the “IP Collateral”):
(a) the patents and patent applications set forth in Schedule 1 hereto and all reissues, divisions, continuations, continuations-in-part, renewals, extensions and reexaminations thereof and amendments thereto (the “Patents”);
(b) the trademark registrations and applications set forth in Schedule 2 hereto, together with the goodwill connected with the use of and symbolized thereby and all extensions and renewals thereof (the “Trademarks”), excluding only United States intent-to-use trademark applications to the extent that, and solely during the period in which, the grant, attachment or enforcement of a security interest therein would, under applicable federal law, impair the registrability of such applications or the validity or enforceability of registrations issuing from such applications;
(c) the copyright registrations, applications and copyright registrations and applications exclusively licensed to each Grantor set forth in Schedule 3 hereto, and all extensions and renewals thereof (the “Copyrights”);
(d) all rights of any kind whatsoever of such Grantor accruing under any of the foregoing provided by applicable law of any jurisdiction, by international treaties and conventions and otherwise throughout the world;
(e) any and all royalties, fees, income, payments and other proceeds now or hereafter due or payable with respect to any and all of the foregoing; and
(f) any and all claims and causes of action, with respect to any of the foregoing, whether occurring before, on or after the date hereof, including all rights to and claims for damages, restitution and injunctive and other legal and equitable relief for past, present and future infringement, dilution, misappropriation, violation, misuse, breach or default, with the right but no obligation to ▇▇▇ for such legal and equitable relief and to collect, or otherwise recover, any such damages.
2. Recordation. Each Grantor authorizes the Commissioner for Patents, the Commissioner for Trademarks and the Register of Copyrights and any other government officials to record and register this IP Security Agreement upon request by the Lender.
3. Loan Documents. This IP Security Agreement has been entered into pursuant to and in conjunction with the Loan Agreement, which is hereby incorporated by reference. The provisions of the Loan Agreement shall supersede and control over any conflicting or inconsistent provision herein. The rights and remedies of the Lender with respect to the IP Collateral are as provided by the Loan Agreement and related documents, and nothing in this IP Security Agreement shall be deemed to limit such rights and remedies.
4. Execution in Counterparts. This IP Security Agreement may be executed in counterparts (and by different parties hereto in different counterparts), each of which shall constitute an original, but all of which when taken together shall constitute a single contract. Delivery of an executed counterpart of a signature page to this IP Security Agreement by facsimile or in electronic (i.e., “pdf” or “tif” format) shall be effective as delivery of a manually executed counterpart of this IP Security Agreement.
5. Successors and Assigns. This IP Security Agreement will be binding on and shall inure to the benefit of the parties hereto and their respective successors and assigns.
6. Governing Law. This IP Security Agreement and any claim, controversy, dispute or cause of action (whether in contract or tort or otherwise) based upon, arising out of or relating to this IP Security Agreement and the transactions contemplated hereby and thereby shall be governed by, and construed in accordance with, the laws of the United States and the State of Missouri, without giving effect to any choice or conflict of law provision or rule (whether of the State of Missouri or any other jurisdiction).
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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[SIGNATURE PAGE FOLLOWS]
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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IN WITNESS WHEREOF, each Grantor has caused this IP Security Agreement to be duly executed and delivered by its officer thereunto duly authorized as of the date first above written.
| CORINDUS, INC. | ||||
| Signature: | /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇ | |||
| Print Name: | ▇▇▇▇▇ ▇▇▇▇▇▇▇ | |||
| Title: | CEO | |||
| CORINDUS SECURITY CORPORATION | ||||
| Signature: | /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇ | |||
| Print Name: | ▇▇▇▇▇ ▇▇▇▇▇▇▇ | |||
| Title: | CEO | |||
| Accepted in | : | |||
| LENDER: | ||||
| ▇▇▇▇▇▇▇ CAPITAL HOLDINGS, LP | ||||
| By: | /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇ | |||
| ▇▇▇▇▇▇ ▇. ▇▇▇▇▇, Vice President/CFO | ||||
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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SCHEDULES
Schedule 1
Patents and Patent Applications
Schedule 2
Trademark Registrations and Applications
Schedule 3
Copyright Registrations and Applications
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
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| EXHIBIT D | ||
| Borrowers Patents, Trademarks, Copyrights And Licenses | Corindus
IP Schedule Granted Patents 5-13-14 |
| AttorneyRef | Title | Country | IssueDate | PatentNum | ExpiredDate |
| 060541-0184 | CATHETER CONTROL SYSTEM AND GRAPHICAL USER INTERFACE | United States | 4/8/2014 | 8,694,157 | 2/24/2031 |
| 060541-0149 | CATHETER SYSTEM | United States | 7/9/2013 | 8,480,618 | 3/10/2032 |
| 060541-0152 | CATHETER SYSTEM | United States | 2/15/2011 | 7,887,549 | 5/4/2029 |
| 060541-0174 | CATHETER SYSTEM CASSETTE | United States | 4/23/2013 | D680645 | 4/23/2027 |
| ▇▇▇▇-▇▇▇ | ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ | ▇▇▇▇▇▇ ▇▇▇▇▇▇ | 1/15/2013 | D674484 | 1/15/2027 |
| ▇▇▇▇-▇▇▇ | ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ | ▇▇▇▇▇▇ ▇▇▇▇▇▇ | 7/2/2013 | D685,468 | 7/2/2027 |
| 060541-0132 | IMAGE-GUIDED NAVIGATION FOR CATHETER-BASED INTERVENTIONS | United States | 12/3/2013 | 8,600,477 | 3/3/2027 |
| 060541-0165 | MEDICAL RADIATION PROTECTED WORKSTATION | United States | 10/26/2010 | D626250 | 10/26/2024 |
| 060541-0111 | METHODS AND APPARATUSES FOR TREATMENT OF HOLLOW ORGANS | European Patent Office | 11/21/2012 | 1928337 | 9/29/2025 |
| C130-122 | METHODS AND APPARATUSES FOR TREATMENT OF HOLLOW ORGANS | France | 11/21/2012 | 1928337 | 9/29/2025 |
| C130-123 | METHODS AND APPARATUSES FOR TREATMENT OF HOLLOW ORGANS | Germany | 11/21/2012 | 602005037109.5 | 9/29/2025 |
| C130-124 | METHODS AND APPARATUSES FOR TREATMENT OF HOLLOW ORGANS | Italy | 3/9/1999 | EP1061990 | 3/9/2019 |
| C130-125 | METHODS AND APPARATUSES FOR TREATMENT OF HOLLOW ORGANS | Netherlands | 9/25/2005 | 05790770.1 | 9/29/2025 |
| ▇▇▇▇-▇▇▇ | ▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ | ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ | 9/25/2005 | 05790770.1 | 9/29/2025 |
| 060541-0116 | PROTECTED CONTROL CONSOLE APPARATUSES | United States | 3/19/2013 | 8,399,871 | 3/9/2027 |
| 060541-0103 | REMOTE CONTROL CATHETERIZATION | United States | 4/27/2004 | 6,726,675 | 3/9/2019 |
| 060541-0117 | REMOTE CONTROL CATHETERIZATION | Israel | 9/1/2010 | 123646 | 3/11/2018 |
| 060541-0119 | REMOTE CONTROL CATHETERIZATION | European Patent Office | 9/1/2004 | 1061990 | 3/9/2019 |
| 060541-0120 | REMOTE CONTROL CATHETERIZATION | Germany | 9/29/2005 | 69919851.8 | 3/9/2019 |
| 060541-0121 | REMOTE CONTROL CATHETERIZATION | France | 3/9/1999 | EP1061990 | 3/9/2019 |
| 060541-0122 | REMOTE CONTROL CATHETERIZATION | United Kingdom | 3/9/1999 | EP1061990 | 3/9/2019 |
| 060541-0123 | REMOTE CONTROL CATHETERIZATION | Ireland | 3/9/1999 | EP1061990 | 3/9/2019 |
| 060541-0124 | REMOTE CONTROL CATHETERIZATION | Italy | 9/1/2004 | EP1061990 | 3/9/2019 |
| 060541-0104 | TRANSMISSION FOR A REMOTE CATHETERIZATION SYSTEM | United States | 11/10/2009 | 7,615,042 | 5/5/2025 |
| 060541-0128 | TRANSMISSION FOR A REMOTE CATHETERIZATION SYSTEM | Israel | 11/30/2011 | 162318 | 6/3/2024 |
| 060541-0131 | TRANSMISSION FOR A REMOTE CATHETERIZATION SYSTEM | European Patent Office | 1/11/2012 | 1755727 | 5/10/2025 |
| C130-102 | TRANSMISSION FOR A REMOTE CATHETERIZATION SYSTEM | Germany | 5/10/2005 | 1755727 | 5/10/2025 |
| C130-103 | TRANSMISSION FOR A REMOTE CATHETERIZATION SYSTEM | France | 5/10/2005 | 1755727 | 5/10/2025 |
| C130-104 | TRANSMISSION FOR A REMOTE CATHETERIZATION SYSTEM | United Kingdom | 5/10/2005 | 1755727 | 5/10/2025 |
| C130-105 | TRANSMISSION FOR A REMOTE CATHETERIZATION SYSTEM | Italy | 5/10/2005 | 1755727 | 5/10/2025 |
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Corindus IP Schedule
Granted Patents 5-13-14
| AttorneyRef | Title | Country | IssueDate | PatentNum | ExpiredDate |
| 060541-0109 | USER INTERFACE FOR REMOTE CONTROL CATHETERIZATION | United States | 9/4/2012 | 8,257,302 | 5/31/2027 |
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Corindus IP Schedule
Pending Applications 5-13-14
| AttorneyRef | Title | Country | FilingDate | ApplicationNum |
| C130-150 | 3-D MAPPING FOR GUIDANCE OF DEVICE ADVANCEMENT OUT OF A GUIDE C... | United States | 8/12/2013 | 13/964,385 |
| C130-152 | [***] | United States | 8/12/2013 | 61/864,808 |
| 060541-0182 | CATHETER CONTROL SYSTEM AND GRAPHICAL USER INTERFACE | European Patent Office | 3/4/2011 | 09810642.0 |
| C130-167 | CATHETER CONTROL SYSTEM AND GRAPHICAL USER INTERFACE | United States | 2/19/2014 | 14/184,118 |
| C130-120 | CATHETER FORCE MEASUREMENT APPARATUS AND METHOD | World Intellectual Property Organization | 9/20/2012 | PCT/US2012/056229 |
| ▇▇▇▇-▇▇▇ | ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇ | ▇▇▇▇▇▇ ▇▇▇▇▇▇ | 3/20/2014 | 14/220,717 |
| 060541-0183 | CATHETER SIMULATION AND ASSISTANCE SYSTEM | United States | 2/24/2011 | 13/034,618 |
| 060541-0147 | CATHETER SYSTEM | United States | 11/25/2009 | 12/626,525 |
| 060541-0148 | CATHETER SYSTEM | United States | 11/25/2009 | 12/626,531 |
| 060541-0150 | CATHETER SYSTEM | United States | 11/25/2009 | 12/626,516 |
| 060541-0175 | CATHETER SYSTEM | World Intellectual Property Organization | 5/4/2009 | 09743396.5 |
| 060541-0177 | CATHETER SYSTEM | India | 5/4/2009 | 8670/DELNP/2010 |
| 060541-0178 | CATHETER SYSTEM | Japan | 5/4/2009 | 2011-508579 |
| C130-147 | CATHETER SYSTEM | United States | 6/11/2013 | 13/914,976 |
| C130-176 | CATHETER SYSTEM WITH MAGNETIC COUPLING | United States | 3/14/2014 | 14/212,113 |
| 060541-0167 | CATHETER SYSTEM WITH PERCUTANEOUS DEVICE MOVEMENT ALGORITHM | World Intellectual Property Organization | 10/11/2010 | PCT/US10/52178 |
| C130-107 | CATHETER SYSTEM WITH PERCUTANEOUS DEVICE MOVEMENT ALGORITHM | United States | 4/11/2012 | 13/444,121 |
| C130-109 | CATHETER SYSTEM WITH PERCUTANEOUS DEVICE MOVEMENT ALGORITHM | European Patent Office | 5/9/2012 | 10823904.7 |
| C130-140 | [***] | United States | 6/26/2013 | 61/839,827 |
| ▇▇▇▇-▇▇▇ | [***] | ▇▇▇▇▇▇ ▇▇▇▇▇▇ | 10/16/2013 | 61/891,389 |
| C130-177 | [***] | United States | 3/14/2014 | 61/952,872 |
| C130-171 | GUIDE WIRE OR CATHETER WITH MODIFIED DRIVE SURFACE | World Intellectual Property Organization | 3/14/2014 | PCT/US2014/027836 |
| ▇▇▇▇-▇▇▇ | [***] | ▇▇▇▇▇▇ ▇▇▇▇▇▇ | 9/6/2013 | 14/020,496 |
| C130-177 | [***] | United States | 9/6/2013 | 14/020,487 |
| 060541-0134 | IMAGE-GUIDED NAVIGATION FOR CATHETER BASED INTERVENTIONS | European Patent Office | 8/16/2005 | 05764607.7 |
| 060541-0193 | OCCLUSION TRAVERSAL ROBOTIC CATHETER SYSTEM | World Intellectual Property Organization | 9/28/2011 | PCT/US2011/053642 |
| C130-141 | OCCLUSION TRAVERSAL ROBOTIC CATHETER SYSTEM | United States | 4/13/2013 | 13/862,388 |
| C130-145 | OCCLUSION TRAVERSAL ROBOTIC CATHETER SYSTEM | European Patent Office | 5/14/2013 | 11833036.4 |
| C130-137 | PROTECTED CONTROL CONSOLE APPARATUSES | United States | 3/18/2013 | 13/846,041 |
| C130-174 | RADIATION SHIELDING COCKPIT CARRYING AN ARTICULATED ROBOTIC ARM | United States | 3/14/2014 | 14/212,143 |
| 060541-0188 | REMOTE CATHETER PROCEDURE SYSTEM | United States | 6/2/2011 | 13/152,168 |
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Corindus IP Schedule
Pending Applications 5-13-14
| AttorneyRef | Title | Country | FilingDate | ApplicationNum |
| 060541-0189 | REMOTE CATHETER PROCEDURE SYSTEM | European Patent Office | 7/12/2011 | 09832554.1 |
| 060541-0166 | REMOTE CATHETER SYSTEM WITH STEERABLE CATHETER | United States | 9/14/2011 | 13/232,660 |
| 060541-0191 | REMOTE CATHETER SYSTEM WITH STEERABLE CATHETER | European Patent Office | 3/17/2010 | 10754060.1 |
| 060541-0190 | ROBOTIC CATHETER SYSTEM | United States | 9/14/2011 | 13/232,624 |
| C130-106 | ROBOTIC CATHETER SYSTEM INCLUDING IMAGING SYSTEM CONTROL | World Intellectual Property Organization | 3/22/2012 | PCT/US2012/030068 |
| C130-131 | ROBOTIC CATHETER SYSTEM INCLUDING IMAGING SYSTEM CONTROL | United States | 3/15/2013 | 13/833,874 |
| C130-161 | ROBOTIC CATHETER SYSTEM INCLUDING IMAGING SYSTEM CONTROL | European Patent Office | 10/22/2013 | 12761249.7 |
| C130-112 | ROBOTIC CATHETER SYSTEM WITH VARIABLE DRIVE MECHANISM | United States | 8/31/2012 | 13/600,816 |
| C130-114 | ROBOTIC CATHETER SYSTEM WITH VARIABLE DRIVE MECHANISM | European Patent Office | 9/14/2012 | 11751139.4 |
| C130-113 | ROBOTIC CATHETER SYSTEM WITH VARIABLE SPEED CONTROL | United States | 8/31/2012 | 13/600,824 |
| C130-115 | ROBOTIC CATHETER SYSTEM WITH VARIABLE SPEED CONTROL | European Patent Office | 9/14/2012 | 11751138.6 |
| C130-149 | [***] | United States | 6/26/2013 | 61/839,459 |
| C130-173 | ROBOTICALLY SHAPING A GUIDE WIRE TIP | United States | 3/17/2014 | 14/216,728 |
| C130-159 | SYSTEM FOR GUIDE CATHETER CONTROL | United States | 9/6/2013 | 14/020,538 |
| C130-160 | SYSTEM FOR GUIDE CATHETER CONTROL | World Intellectual Property Organization | 9/6/2013 | PCT/US2013/058536 |
| ▇▇▇▇-▇▇▇ | [***] | ▇▇▇▇▇▇ ▇▇▇▇▇▇ | 12/13/2013 | 14/106,638 |
| C130-156 | [***] | United States | 12/17/2013 | 61/916,900 |
| 060541-0127 | USER INTERFACE FOR REMOTE CONTROL CATHETERIZATION | European Patent Office | 3/12/2008 | 05740564.9 |
| ▇▇▇▇-▇▇▇ | ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ AND METHOD FOR ROBOTIC CATHETE... | World Intellectual Property Organization | 9/20/2012 | PCT/US2012/056336 |
| ▇▇▇▇-▇▇▇ | ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ AND METHOD FOR ROBOTIC CATHETE... | United States | 3/20/2014 | 14/220,740 |
| 060541-0192 | WHEEL FOR ROBOTIC CATHETER SYSTEM DRIVE MECHANISM | World Intellectual Property Organization | 9/14/2011 | PCT/US11/51542 |
| C130-132 | WHEEL FOR ROBOTIC CATHETER SYSTEM DRIVE MECHANISM | United States | 3/15/2013 | 13/836,017 |
| C130-138 | WHEEL FOR ROBOTIC CATHETER SYSTEM DRIVE MECHANISM | United States | 3/15/2013 | 13/838,780 |
| C130-142 | WHEEL FOR ROBOTIC CATHETER SYSTEM DRIVE MECHANISM | European Patent Office | 4/16/2013 | 11825849.0 |
| C130-175 | [***] | United States | 3/17/2014 | 14/216,076 |
| C130-151 | [***] | United States | 8/12/2013 | 13/964,388 |
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Corindus IP Schedule
Pending and Granted Trademarks
5-21-14
| FilingDate | AttorneyRef | Title | Country | PatentNum | ApplicationNum |
| 11/8/2005 | 060541-0102 | CORINDUS | United States | 3,791,581 | 78749090 |
| 1/5/2006 | 060541-0105 | CORPATH | United States | 3,786,259 | 78785567 |
| 3/9/2006 | 060541-0106 | CORINDUS | European Union Trademark and Designs Office | 00490011 | 004950011 |
| 3/9/2006 | 060541-0107 | CORPATH | European Union Trademark and Designs Office | 4950036 | 004950036 |
| 2/15/2013 | ▇▇▇▇-▇▇▇ | ▇▇▇▇▇▇▇ | ▇▇▇▇▇▇ ▇▇▇▇▇▇ | 85851475 | |
| 2/15/2013 | ▇▇▇▇-▇▇▇ | ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ | ▇▇▇▇▇▇ ▇▇▇▇▇▇ | 85851473 |
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Corindus IP Schedule
License Agreement 5/21/14
| Date | Atty Ref. No. | Title |
| October 12, 2003 | 060541-0101 | License
Agreement – ▇▇▇▇▇▇▇ Medical, Inc. and Navicath Ltd for US Patent No. 5,540,649 and 5,779,623 (both of which have expired) |
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.