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PATENT SECURITY AGREEMENT
EXHIBIT 10.29C
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PATENT SECURITY AGREEMENT
THIS PATENT SECURITY AGREEMENT ("Security Agreement"), dated
as of November ___, 1995, is executed by XIRCOM, INC., a California corporation
("Grantor"), in favor of THE CIT GROUP/CREDIT FINANCE, INC. ("Lender").
RECITALS
A. Pursuant to a Loan and Security Agreement of even
date herewith (the "Loan Agreement"), between Grantor and Lender, Lender has
extended or agreed to extend certain credit facilities to Grantor upon the
terms and subject to the conditions set forth therein.
B. Lender's obligation to extend or continue to extend
the credit facilities to Grantor under the Loan Agreement is subject, among
other conditions, to receipt by Lender of this Security Agreement duly executed
by Grantor.
AGREEMENT
NOW, THEREFORE, in consideration of the above recitals and for
other good and valuable consideration, the receipt and adequacy of which are
hereby acknowledged, Grantor hereby agrees with Lender as follows:
1. Definitions and Interpretation. When used in this
Security Agreement, the following terms shall have the following respective
meanings:
"Affiliate" shall mean any person or entity
controlling, controlled by or under common control with another person
or entity.
"Collateral" shall have the meaning given to that
term in Paragraph 2 hereof.
"Obligations" shall mean and include all loans,
advances, debts, liabilities and obligations, howsoever arising, owed
by Grantor to Lender of every kind and description (whether or not
evidenced by any note or instrument and whether or not for the payment
of money), direct or indirect, absolute or contingent, due or to
become due, now existing or hereafter arising pursuant to the terms of
the Loan Agreement or any of the other Loan Documents, including
without limitation all interest, fees, charges, expenses, attorneys'
fees and accountants' fees chargeable to and payable by Grantor
hereunder and thereunder.
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"Patent and Trademark Office" shall mean the United
States Patent and Trademark Office or any successor office or agency
thereto.
"Patent Applications" means and refers to all
applications made by, or on behalf of, the Company to the Patent and
Trademark Office or to any similar office or agency of any foreign
country or political subdivision thereof for the registration of a
Patent.
"Patent Registrations" means and refers to all
Patents registered with the Patent and Trademark Office or with any
similar office or agency of any foreign country or political
subdivision and all Patent Applications.
"Patents" shall have the meaning given to that term
in Attachment I hereto.
"UCC" shall mean the Uniform Commercial Code as in
effect in the State of California from time to time.
Unless otherwise defined herein, all other capitalized terms used herein and
defined in the Loan Agreement shall have the respective meanings given to those
terms in the Loan Agreement, and all terms defined in the UCC shall have the
respective meanings given to those terms in the UCC.
2. Grant of Security Interest. As security for the
Obligations, Grantor hereby pledges, mortgages and grants to Lender a security
interest in the property described in Attachment I annexed hereto (collectively
and severally, the "Collateral"), which Attachment I is incorporated herein by
this reference.
3. Representations and Warranties. Grantor represents
and warrants to Lender that:
(a) Grantor is the owner of the Collateral (or,
in the case of after-acquired Collateral, at the time Grantor acquires
rights in the Collateral, will be the owner thereof) and that no other
Person has (or, in the case of after-acquired Collateral, at the time
Grantor acquires rights therein, will have) any right, title, claim or
interest (by way of Lien or otherwise) in, against or to the
Collateral;
(b) Lender has (or in the case of after-acquired
Collateral, at the time Grantor acquires rights therein, will have) a
first priority perfected security interest in the Collateral;
(c) Grantor has full corporate power and
authority to grant the security interest herein granted, and the
execution and delivery of this Security Agreement by Grantor and the
performance of its obligations hereunder,
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have been duly authorized by all necessary corporate action on the
part of Grantor;
(d) Grantor does not own any Patents registered
in, or the subject of pending applications in, the Patent and
Trademark Office or any similar offices or agencies in any other
country or any political subdivision thereof, other than those
described inSchedule A or Schedule B to Attachment I hereto;
(e) Grantor has the sole and full right, title
and interest in and to each of the Patents shown on Schedule A to
Attachment , unencumbered except as set forth in Schedule C to
Attachment I, and the registrations thereof are valid and enforceable
and in full force and effect, and none of the Patents has been
abandoned or dedicated;
(f) There is no claim by any third party that any
Patents are invalid or unenforceable or do or may violate the rights
of any Person;
(g) All licenses of Patents which Grantor has
granted to any Person are set forth in Schedule C to Attachment I
hereto;
(h) All licenses of Patents which any Person has
granted to Grantor are set forth in Schedule D to Attachment I hereto;
and
(i) Grantor has obtained from each employee who
may be considered the inventor of patentable inventions (invented
within the scope of such employee's employment) an assignment to
Grantor of all rights to such inventions, including, without
limitation, Patents.
4. Covenants of Grantor. Grantor hereby agrees:
(a) Grantor shall perform all acts and execute
all documents, including, without limitation, Grants of Security
Interest substantially in the form of Attachment II annexed hereto,
that may be necessary or desirable to record, maintain, preserve,
protect and perfect Lender's interest in the Collateral, the Lien
granted to Lender in the Collateral and the first priority of such
Lien;
(b) Except to the extent that Lender shall give
its prior written consent,
(i) Grantor shall not do any act, or omit to
do any act whereby the Patent Registrations may become
abandoned or dedicated or the remedies available against
potential infringers weakened and shall notify Lender
immediately if it knows of any reason or has reason to know
that any application or registration may become abandoned or
dedicated;
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(ii) Grantor shall not assign, sell,
mortgage, lease, transfer, pledge, hypothecate, grant a
security interest in or Lien upon, encumber, grant an
exclusive or non-exclusive license, or otherwise dispose of
any of the Collateral, and nothing in this Security Agreement
shall be deemed a consent by Lender to any such action except
as expressly permitted herein;
(c) Grantor shall promptly pay Lender for any and
all sums, costs, and expenses which the Lender may pay or incur
pursuant to the provisions of this Security Agreement or in enforcing
the Obligations, the Collateral or the security interest granted
hereunder, including, without limitation, all filing or recording
fees, court costs, collection charges, travel, and reasonable
attorneys' fees and expenses, all of which together with interest at
the highest rate then payable on the Obligations shall be part of the
Obligations and be payable on demand;
(d) Grantor shall promptly notify Lender upon the
filing, either by Grantor or through any agent, employee, licensee or
designee of Grantor, of (i) an application for the registration of any
Patent with the Patent and Trademark Office or any similar office or
agency in any other country or any political subdivision thereof or
(ii) any assignment to Grantor of any patent, which Grantor may
acquire from a third party, with the Patent and Trademark Office or
any similar office or agency in any other country or any political
subdivision thereof. Upon the request of Lender, Grantor shall
execute and deliver any and all documents, instruments and agreements
as Lender may request to evidence Lender's security interest in such
Patent, and Grantor authorizes Lender to amend an original counterpart
of the notice of security interest executed pursuant toSubparagraph
4(a) of this Security Agreement without first obtaining Grantor's
approval of or signature to such amendment and to record such security
interest with the Patent and Trademark Office;
(e) Grantor shall keep the Collateral free of all
Liens, except in favor of Lender;
(f) Grantor shall take all necessary steps in any
proceeding before the Patent and Trademark Office or any similar
office or agency in any other country or any political subdivision
thereof, to diligently prosecute or maintain, as applicable, each
application and registration of the Patents;
(g) So long as any of the Obligations are
outstanding, Grantor shall make application to the Patent and
Trademark Office to register any material unpatented but patentable
inventions developed by Grantor or its employees (within the scope of
their employment), unless Grantor, in
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the exercise of its prudent business judgment, deems any such Patent
not to have any significant commercial value or determines that its
rights thereunder are better preserved as a trade secret;
(h) Grantor shall use proper statutory notice in
connection with its use of the Patents;
(i) Grantor shall at all times keep at least one
complete set of its records concerning the Collateral at its chief
executive office and shall make such records available for inspection
by Lender at such times as Lender may reasonably request.
5. Authorized Action by Lender.
(a) Lender may, in its sole discretion, pay any
amount or do any act required of Grantor hereunder or requested by
Lender to preserve, defend, protect, maintain, record or enforce
Grantor's obligations contained herein, the Obligations, the
Collateral, or the right, title and interest granted Lender by this
Security Agreement, and which Grantor fails to do or pay, and any such
payment shall be deemed an advance by Lender to Grantor and shall be
payable on demand together with interest at the highest rate then
payable on the Obligations. Lender will promptly notify Grantor of
any payment by Lender referred to in this Section 5(a).
(b) Grantor agrees to execute and deliver to
Lender three originals of a Special Power of Attorney in substantially
the form ofAttachment III to this Agreement for the implementation of
the recording, giving of notice, preservation, assignment, sale or
other disposal of the Collateral pursuant toParagraph 2 and
Subparagraphs 5(a) and 7(a).
6. Litigation and Other Proceedings
(a) Grantor shall have the obligation to commence
and diligently prosecute such suits, proceedings or other actions for
infringement or other damage, or reexamination or reissue proceedings,
or opposition or cancellation proceedings as are reasonable, in
Grantor's exercise of its prudent business judgement, to protect any
of the Patents. No such suit, proceeding or other actions shall be
settled or voluntarily dismissed, nor shall any party be released or
excused of any claims of or liability for infringement, without the
prior written consent of Lender, which consent shall not be
unreasonably withheld.
(b) Upon the occurrence and during the
continuation of an Event of Default, Lender shall have the right but
not the obligation to bring suit or institute proceedings in the name
of Grantor or Lender to enforce any
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rights in the Collateral, including any license thereunder, in which
event Grantor shall at the request of Lender do any and all lawful
acts and execute any and all documents required by Lender in aid of
such enforcement. If Lender elects not to bring suit to enforce any
right under the Collateral, including any license thereunder, Grantor
agrees to use all reasonable measures, whether by suit, proceeding or
other action, to prevent the infringement of any right under the
Collateral by any Person and for that purpose agrees to diligently
maintain any action, suit or proceeding against any Person so
infringing necessary to prevent such infringement.
7. Default and Remedies.
(a) Grantor shall be deemed in default under this
Security Agreement upon the occurrence of an Event of Default. Upon
the occurrence and during the continuation of any such Event of
Default, Lender may, at its option, and (except if otherwise specified
below) without notice to or demand on Grantor, and in addition to all
rights and remedies available to Lender under the Loan Agreement or
the other Loan Documents, do any one or more of the following:
(i) upon ten (10) Business days' prior notice
to Grantor, direct Grantor not to make any further use of the
Patents for any purpose;
(ii) at any time and from time to time, upon
ten (10) Business days' prior notice to Grantor, license,
whether general, special or otherwise, and whether on an
exclusive or nonexclusive basis, any of the Patents,
throughout the world for such term or terms, on such
conditions, and in such manner, as Lender shall in its sole
discretion determine;
(iii) at any time and from time to time, enforce
(and upon notice to Grantor have the exclusive right to
enforce) against any licensee or sublicensee all rights and
remedies of Grantor in, to and under any one or more license
agreements with respect to the Collateral (without assuming
any obligations or liability thereunder), and take or refrain
from taking any action under any thereof;
(iv) at any time and from time to time, upon
ten (10) Business days' prior notice to Grantor, assign, sell,
or otherwise dispose of, the Collateral or any of it, either
with or without special or other conditions or stipulations,
with power to buy the Collateral or any part of it, and with
power also to execute assurances, and do all other acts and
things for completing the assignment, sale or disposition
which Lender shall, in its sole discretion, deem appropriate
or proper;
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(v) in addition to the foregoing, in order to
implement the assignment, sale or other disposal of any of the
Collateral pursuant to clause (a)(iv) hereof, Lender may, at
any time, pursuant to the authority granted in the Power of
Attorney executed pursuant to Subparagraph 5(b) hereof,
execute and deliver on behalf of Grantor, one or more
instruments of assignment of the Patents, in form suitable for
filing, recording or registration in any country; and
(vi) in furtherance of Lender's rights hereunder,
Grantor hereby grants to Lender an irrevocable, non-exclusive
license (exercisable without royalty or other payment by
Lender) to use, license or sublicense any Patent or other
intellectual property in which Debtor now or hereafter has any
right, title or interest, together with the right of access to
all media in which any of the foregoing may be recorded or
stored.
(b) Grantor agrees to pay when due all reasonable
costs incurred in any such transfer of the Patents, including, without
limitation, any taxes, fees and reasonable attorneys' fees and
expenses, and all such costs shall be added to the Obligations.
Lender may apply the proceeds actually received from any such license,
assignment, sale or other disposition to the reasonable costs and
expenses thereof, including, without limitation, reasonable attorneys'
fees and all legal, travel and other expenses which may be incurred by
Lender, and then to the Obligations, in such order as to principal or
interest as Lender may desire; and Grantor shall remain liable and
will pay Lender on demand any deficiency remaining, together with
interest thereon at a rate equal to the highest rate then payable on
the Obligations and the balance of any expenses unpaid. Nothing
herein contained shall be construed as requiring Lender to take any
such action at any time. In the event of any such license,
assignment, sale or other disposition of the Collateral, or any of it,
after the occurrence or continuation as hereinabove provided of an
Event of Default, Grantor shall supply its know-how and expertise
relating to the manufacture and sale of the products bearing or in
connection with which the Patents are used, and its consumer or
customer lists and other records relating to the Patents and to the
distribution of products or the provisions of services, to Lender or
its designee.
(c) In furtherance of Lender's rights hereunder, Grantor
hereby grants to Lender an irrevocable, non-exclusive license
(exercisable without royalty or other payment by Lender) to use,
license or sublicense any Patent in which Grantor now or hereafter has
any right, title or interest together with the right of access to all
media in which any Patent may be recorded or stored. Such license
shall be exercisable only upon the occurrence and during the
continuation of an Event of Default.
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8. Indemnification and Release.
(a) Grantor assumes all responsibility and
liability arising from the use of the Patents, and Grantor hereby
indemnifies and holds Lender and its directors, officers, employees,
agents and any of their respective Affiliates ("Indemnitees") harmless
from and against any claim, suit, loss, damage or expense (including,
without limitation, reasonable attorneys' fees and expenses) arising
out of or in connection with any alleged infringement of any patent or
alleged defect in any product manufactured, promoted or sold by
Grantor (or any Affiliate of Grantor) in connection with any Patent or
out of the manufacture, promotion, labeling, sale or advertisement of
any product or service by Grantor (or any Affiliate of Grantor).
Grantor agrees that Lender does not assume, and shall have no
responsibility for, the payment of any sums due or to become due under
any agreement or contract included in the Collateral or the
performance of any obligations to be performed under or with respect
to any such agreement or contract by Grantor, and Grantor hereby
agrees to indemnify and hold each Indemnitee harmless with respect to
any and all claims by any Person relating thereto.
(b) Grantor agrees to indemnify and hold each
Indemnitee harmless and against any claim, suit, loss, damage or
expense (including, without limitation, reasonable attorneys' fees and
expenses) arising out of or in connection with any action taken or
omitted to be taken by Lender pursuant toclause 7(a)(iii) hereof
with respect to any license agreement of Grantor.
(c) Grantor agrees to indemnify and hold each
Indemnitee harmless from and against any claim, suit, loss, damage or
expense (including, without limitation, reasonable attorneys' fees and
expenses) arising out of or in connection with (i) any claim, suit or
proceeding instituted by Grantor or (ii) any action taken or omitted
to be taken by Lender pursuant to Subparagraph 6(b).
(d) Grantor hereby releases from any claims,
causes of action and demands at any time arising out of or with
respect to any actions taken or omitted to be taken by the Indemnitees
under the powers of attorney granted under the Special Power of
Attorney executed pursuant toSubparagraph 5(b) herein, other than
actions taken or omitted to be taken through the willful misconduct of
such Indemnitees.
(e) Grantor agrees to cause Lender to be named as
an additional insured with respect to any policy of insurance held by
Grantor from time to time covering product liability or intellectual
property infringement risk.
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9. Miscellaneous.
(a) Notices. Except as otherwise provided
herein, all notices, requests, demands or other communications to or
upon Lender or Grantor hereunder shall be addressed to Lender or
Grantor at the respective addresses indicated below or at such other
address as Lender or Grantor may designate by written notice to the
other party, and shall be deemed to have been given (i) in the case of
notice by letter, three (3) days after deposited in the mails
registered and return receipt requested, or (ii) in the case of notice
given by telecommunication, when sent with appropriate confirmation
received:
Lender: The CIT Group/Credit Finance, Inc.
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇, Esq.
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
Grantor: Xircom, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: General Counsel
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
(b) Nonwaiver. No failure or delay on Lender's
part in exercising any right hereunder shall operate as a waiver
thereof or of any other right nor shall any single or partial exercise
of any such right preclude any other further exercise thereof or of
any other right.
(c) Amendments and Waivers. Except with respect
to action by the Lender pursuant to Subparagraph 4(d), this Security
Agreement may not be amended or modified, nor may any of its terms be
waived, except by written instruments signed by Grantor and Lender as
required by the Loan Agreement. Each waiver or consent under any
provision hereof shall be effective only in the specific instances and
for the purpose for which given.
(d) Assignments. This Security Agreement shall
be binding upon and inure to the benefit of Lender and Grantor and
their respective successors and assigns; provided, however, that
Grantor and Lender may sell, assign and delegate their respective
rights and obligations hereunder only as permitted by the Loan
Agreement.
(e) Cumulative Rights, etc. The rights, powers
and remedies of Lender under this Security Agreement shall be in
addition to all rights, powers and remedies given to
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Lender by virtue of any applicable law, rule or regulation of any
governmental authority, the Loan Agreement, any other Loan Document or
any other agreement, all of which rights, powers, and remedies shall
be cumulative and may be exercised successively or concurrently
without impairing Lender's rights hereunder. Grantor waives any right
to require Lender to proceed against any Person or to exhaust any
Collateral or to pursue any remedy in Lender's power.
(f) Payments Free of Taxes, Etc. All payments
made by Grantor under this Security Agreement shall be made by Grantor
free and clear of and without deduction for any and all present and
future taxes, levies, charges, deductions and withholdings. In
addition, Grantor shall pay upon demand any stamp or other taxes,
levies or charges of any jurisdiction with respect to the execution,
delivery, registration, performance and enforcement of this Security
Agreement. Upon request by Lender, Grantor shall furnish evidence
satisfactory to Lender that all requisite authorizations and approvals
by, and notices to and filings with, governmental authorities and
regulatory bodies have been obtained and made and that all requisite
taxes, levies and charges have been paid.
(g) Partial Invalidity. If at any time any
provision of this Security Agreement is or becomes illegal, invalid or
unenforceable in any respect under the law of any jurisdiction,
neither the legality, validity or enforceability of the remaining
provisions of this Security Agreement nor the legality, validity or
enforceability of such provision under the law of any other
jurisdiction shall in any way be affected or impaired thereby.
(h) Governing Law. This Security Agreement shall
be governed by and construed in accordance with the laws of the State
of California without reference to conflicts of law rules.
(i) Submission to Jurisdiction. Grantor hereby
irrevocably and unconditionally:
(i) Submits for itself and its property in
any legal action or proceeding relating to this Security
Agreement, or for recognition and enforcement of any judgment
in respect thereof, to the non-exclusive jurisdiction of the
courts located in Los Angeles County, California and consents
and agrees to suit being brought in such courts as Lender may
elect;
(ii) Waives any objection that it may now or
hereafter have to the venue of any such action or proceeding
in any such court or that such proceeding was brought in an
inconvenient court and agrees not to plead or claim the same;
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(iii) Agrees as an alternate means of service
of process in any such legal action or proceeding to service
by mailing of copies thereof (by registered or certified mail,
if practicable) postage prepaid, to the then active agent or
to Grantor at its address set forth in Subparagraph 9(a)
hereof or at such other address of which Lender shall have
been notified pursuant thereto, and agrees that failure to
receive such copy or notice shall not affect or impair the
validity of such service or of any judgment rendered in any
action or proceeding based thereon; and
(iv) Agrees that nothing herein shall
affect Lender's right to effect service of process in any
other manner permitted by law, and that Lender shall have the
right to bring any legal proceedings (including a proceeding
for enforcement of a judgment entered by any of the
aforementioned courts) against Grantor in such courts or in
any other court or jurisdiction in accordance with applicable
law.
(j) Jury Trial. EACH OF GRANTOR AND LENDER, AND
TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW, HEREBY IRREVOCABLY
WAIVES ALL RIGHT TO TRIAL BY JURY AS TO ANY ISSUE RELATING HERETO IN
ANY ACTION, PROCEEDING, OR COUNTERCLAIM ARISING OUT OF OR RELATING TO
THIS AGREEMENT.
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IN WITNESS WHEREOF, Grantor and Lender have caused this
Security Agreement to be executed as of the day and year first above written.
XIRCOM, INC.
By: ▇. ▇▇▇▇▇▇▇▇
-------------------------------
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
-------------------------
Title: Secretary
------------------------
THE CIT GROUP/CREDIT FINANCE, INC.
By: ▇▇▇▇▇▇ ▇▇▇▇▇
------------------------------
Name: ▇▇▇▇▇▇ ▇▇▇▇▇
------------------------
Title: Vice President
-----------------------
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ATTACHMENT I
TO PATENT SECURITY AGREEMENT
(a) All patentable inventions, patent rights, shop
rights, letters patent of the United States or any other country, all right,
title and interest therein and thereto, and all registrations and recordings
thereof, now or hereafter in effect, including, without limitation, (i) all
Patent Applications, Patent Registrations and recordings in the Patent and
Trademark Office or in any similar office or agency of the United States, any
State thereof or any other country or political subdivision thereof, all
whether now owned or hereafter acquired by Grantor, including, but not limited
to, those described in Schedules A and B to this Attachment I annexed hereto,
which Schedules A and B are incorporated herein by this reference, and (ii) all
reissues, continuations, continuations-in-part or extensions thereof and all
licenses thereof (collectively, the "Patents"); and
(b) All proceeds of the foregoing (including, without
limitation, whatever is receivable or received when Collateral or proceeds is
sold, collected, exchanged, licensed or otherwise disposed of, whether such
disposition is voluntary or involuntary, including rights to payment and return
premiums and insurance proceeds under insurance with respect to any Collateral,
and all rights to payment with respect to any cause of action affecting or
relating to the Collateral).
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SCHEDULE A TO ATTACHMENT I
TO PATENT SECURITY AGREEMENT
PATENTS
Title Number Date
----- ------ ----
1) ADAPTER FOR CONNECT- D336,467 6-15-93
ING AN ELECTRONIC
COMPUTER TO A LOCAL
AREA NETWORK
2) NETWORK ADAPTER FOR USE 5,299,314 3-29-94
WITH STANDARD PC
PARALLEL PORT
3) PARALLEL PORT MULTI- D339,116 9-7-93
PLEXOR FOR USE WITH
A COMPUTER
4) PARALLEL PORT MULTI- 5,276,443 ▇-▇-▇▇
▇▇▇▇▇▇ ▇▇▇ ▇▇ ▇▇▇▇▇-
▇▇▇ ▇▇▇▇
▇) MODEM ADAPTER FOR USE 5,408,614 4-18-95
WITH STANDARD PC PARAL-
LEL PORT
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SCHEDULE B TO ATTACHMENT I
TO PATENT SECURITY AGREEMENT
PATENT APPLICATIONS
Title Ser. Number Filing Date
----- ----------- -----------
1. Virtual Carrier 08/082,313 06/25/93
Detection for
Wireless Local
Area Network
1a. Divisional App- 08/439,083 05/11/95
lication of
above
2a. Divisional App- 08/440,436 05/12/95
lication of
above
3a. Divisional App- 08/439,563 05/11/95
lication of
above
4a. Divisional App- 08/439,337 05/11/95
lication of
above
2. Modem Adapter 08/308,601 09/19/94
Having Shared
Memory Interface
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SCHEDULE C TO ATTACHMENT I
TO PATENT SECURITY AGREEMENT
LICENSES GRANTED BY GRANTOR TO THIRD PARTIES
Various nonexclusive licenses have been granted to third parties
payments for which, in the aggregate, do not exceed $70,000.00 per year.
The forgoing include the following:
Licensee Date of License Subject
-------- --------------- -------
1. Accton Technology 09/30/94 Nonexclusive rights
Corporation to Parallel Port
Network Adapter
Patent (U.S. Patent
No. 5,299,314)
2. D-Link Systems 09/28/94 Nonexclusive rights
to Parallel Port
Network Adapter
Patent (U.S. Patent
No. 5,299,314)
3. Advanced Micro 02/23/94 Nonexclusive rights
Devises, Inc. to broad range of
Wireless LAN tech-
nology, to include
rights under U.S.
Patent Application
08/082,213, and re-
lated divisional
applications
4. NEC Corporation 11/22/94 Nonexclusive rights
as supplemented to broad range of
by agreement Wireless LAN tech-
March 14, 1995 nology, to include
rights under U.S.
Patent Application
08/082,213 and
related divisional
applications
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SCHEDULE D TO ATTACHMENT I
TO PATENT SECURITY AGREEMENT
LICENSES GRANTED BY THIRD PARTIES TO GRANTOR
Licensor Date of License Subject
-------- --------------- -------
1. Aladdin Systems, Inc. 7/14/95 "InstallerMaker"
software
2. AT&T 2/16/94 AT&T "ETC"
software
3. British Tele- 8/3/93 V.42bis modems,
communications, Inc. Patent No.
5,153,591
4. Control Alt Design 8/31/93 "Tractor Grip"
U.S. Patent No.
5,098,312
5. Delrina Corporation 6/27/95 "WinFax LITE"
software
6. IBM 4/1/93 V.42bis modems,
U.S. Patent No.
4,814,746
7. ▇▇▇▇▇ 9/7/90 Software license
used in Token
Ring adapters
8. Shiva Corporation 6/12/95 "Shiva PPP"
software license
9. SPCO Management, Inc. 6/1/92 2.4ghz frequency
hopping radio
design for wire-
less LAN adapter
10. Symbionics 10/27/94 Wireless LAN
adapter radio
design
11. ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ 8/13/93 V.42bis modems,
U.S. Patent No.
4,558,302
12. Willemjin 12/1/89 Token Ring adap-
ter technology,
U.S. Patent No.
31,852 (Reissue)
[I]D-1
19
ATTACHMENT II TO PATENT SECURITY AGREEMENT
GRANT OF SECURITY INTEREST
(PATENTS)
THIS GRANT OF SECURITY INTEREST, dated as of November ___,
1995, is executed by XIRCOM, INC., a California corporation ("Grantor"), in
favor of THE CIT GROUP/CREDIT FINANCE, INC. ("Lender").
A. Pursuant to a Loan and Security Agreement of even
date (the "Loan Agreement"), between Grantor and Lender, Lender has agreed to
extend certain credit facilities to Grantor upon the terms and subject to the
conditions set forth therein.
B. Grantor owns the letters patent, and/or applications
for letters patent, of the United States, more particularly described on
Schedules 1-A and 1-B annexed hereto as part hereof (the "Patents");
C. Grantor has entered into a Patent Security Agreement
dated the date hereof (the "Security Agreement") in favor of Lender; and
D. Pursuant to the Security Agreement, Grantor has
granted to Lender a security interest in all right, title and interest of
Grantor in and to the Patents, together with any reissue, continuation,
continuation-in-part or extension thereof, and all proceeds thereof, including,
without limitation, any and all causes of action which may exist by reason of
infringement thereof for the full term of the Patents (the "Collateral"), to
secure the prompt payment, performance and observance of the Obligations, as
defined in the Security Agreement;
NOW, THEREFORE, for good and valuable consideration, receipt
of which is hereby acknowledged, Grantor does hereby further grant to Lender a
security interest in the Collateral to secure the prompt payment, performance
and observance of the Obligations.
Grantor does hereby further acknowledge and affirm that the
rights and remedies of Lender with respect to the security interest in the
Collateral granted hereby are more fully set forth in the Security Agreement,
the terms and provisions of which are hereby incorporated herein by reference
as if fully set forth herein.
II-1
20
Lender's address is:
THE CIT GROUP/CREDIT FINANCE, INC.
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇, Esq.
IN WITNESS WHEREOF, Grantor has caused this Grant of Security
Interest to be executed as of the day and year first above written.
XIRCOM, INC.
By:
---------------------------
Name:
---------------------
Title:
---------------------
II-2
21
STATE OF CALIFORNIA )
) SS.
COUNTY OF LOS ANGELES )
On November ___, 1995, before me, ______________________, personally appeared
____________________________________________, personally known to me (or proved
to me on the basis of satisfactory evidence) to be the person(s) whose name(s)
is/are subscribed to the within instrument and acknowledged to me that
he/she/they executed the same in his/her/their authorized capacity(ies), and
that by his/her/their signature(s) on the instrument the person(s), or the
entity upon behalf of which the person(s) acted, executed the instrument.
WITNESS my hand and official seal.
Signature _________________________________ (Seal)
II-3
22
SCHEDULE 1-A TO ASSIGNMENT FOR SECURITY
PATENTS
Title Number Date
----- ------ ----
1) ADAPTER FOR CONNECT- D336,467 6-15-93
ING AN ELECTRONIC
COMPUTER TO A LOCAL
AREA NETWORK
2) NETWORK ADAPTER FOR USE 5,299,314 3-29-94
WITH STANDARD PC
PARALLEL PORT
3) PARALLEL PORT MULTI- D339,116 9-7-93
PLEXOR FOR USE WITH
A COMPUTER
4) PARALLEL PORT MULTI- 5,276,443 ▇-▇-▇▇
▇▇▇▇▇▇ ▇▇▇ ▇▇ ▇▇▇▇▇-
▇▇▇ ▇▇▇▇
▇) MODEM ADAPTER FOR USE 5,408,614 4-18-95
WITH STANDARD PC PARAL-
LEL PORT
II-4
23
SCHEDULE 1-B TO ASSIGNMENT FOR SECURITY
PATENT APPLICATIONS
Title Ser. Number Filing Date
----- ----------- -----------
None.
II-5
24
ATTACHMENT III TO PATENT SECURITY AGREEMENT
SPECIAL POWER OF ATTORNEY
STATE OF CALIFORNIA )
) ss.:
COUNTY OF LOS ANGELES )
KNOW ALL MEN BY THESE PRESENTS, THAT XIRCOM, INC., a
California corporation ("Grantor"), pursuant to a Patent Security Agreement,
dated as of November ___, 1995 (the "Security Agreement"), between Grantor and
Lender (as hereinafter defined), hereby appoints and constitutes THE CIT
GROUP/CREDIT FINANCE, INC. ("Lender"), its true and lawful attorney, with full
power of substitution, and with full power and authority to perform the
following acts on behalf of Grantor:
1. For the purpose of assigning, selling, licensing or
otherwise disposing of all right, title and interest of Grantor in and to any
letters patent of the United States or any other country or political
subdivision thereof, and all registrations, recordings, reissues,
continuations, continuations-in-part and extensions thereof, and all pending
applications therefor, and for the purpose of the recording, registering and
filing of, or accomplishing any other formality with respect to, the foregoing,
to execute and deliver any and all agreements, documents, instruments of
assignment or other papers necessary or advisable to effect such purpose;
2. For the purpose of evidencing and perfecting Lender's
interest in any patent not previously assigned to Lender as security, or in any
patent which Grantor may acquire from a third party, and for the purpose of the
recording, registering and filing of, or accomplishing any other formality with
respect to, the foregoing, to execute and deliver any and all agreements,
documents, instruments of assignment or other papers necessary or advisable to
effect such purpose.
3. To execute any and all documents, statements,
certificates or other papers necessary or advisable in order to obtain the
purposes described above as Lender may in its sole discretion determine.
III-1
25
This power of attorney is made pursuant to the Security
Agreement and takes effect solely for the purposes of Paragraph 2 and
Subparagraphs 5(a) and 7(a) thereof and is subject to the conditions thereof
and may not be revoked until the payment in full of all "Obligations" as
defined in the Security Agreement.
Dated: November ___, 1995
XIRCOM, INC.
By:
------------------------------
Name:
------------------------
Title:
-----------------------
III-2
26
STATE OF CALIFORNIA )
) SS.
COUNTY OF LOS ANGELES )
On November ___, 1995, before me, ______________________, personally appeared
____________________________________________, personally known to me (or proved
to me on the basis of satisfactory evidence) to be the person(s) whose name(s)
is/are subscribed to the within instrument and acknowledged to me that
he/she/they executed the same in his/her/their authorized capacity(ies), and
that by his/her/their signature(s) on the instrument the person(s), or the
entity upon behalf of which the person(s) acted, executed the instrument.
WITNESS my hand and official seal.
Signature _________________________________ (Seal)
III-3