INTELLECTUAL PROPERTY SECURITY AGREEMENT
Dated as of March 9, 2023
by
LUMOS ANALYTICS INC., a Delaware corporation, as Grantor,
in favor of
RIDGELINE NATIONAL BANK, NATIONAL ASSOCIATION, in its capacity as Collateral Agent for the benefit of the Secured Parties
This intellectual Property Security Agreement is being delivered pursuant to that certain Revolving Credit Agreement dated as of March 9, 2023 (the "Credit Agreement"), among Lumos Analytics Inc., as Borrower, the Lenders party thereto from time to time, and Ridgeline National Bank, National Association, as Administrative Agent, Collateral Agent, and sole initial Lender, and that certain Security Agreement dated as of March 9, 2023 (the "Security Agreement"), by Lumos Analytics Inc. in favor of Ridgeline National Bank, National Association, as Collateral Agent. This Agreement supplements the Security Agreement and is delivered pursuant to the requirements of the Credit Agreement and the Security Agreement. This Agreement is structured for recording with the United States Patent and Trademark Office ("USPTO") and the United States Copyright Office.
INTELLECTUAL PROPERTY SECURITY AGREEMENT
This INTELLECTUAL PROPERTY SECURITY AGREEMENT (this "Agreement") is dated as of March 9, 2023, and is made by LUMOS ANALYTICS INC., a Delaware corporation (the "Grantor"), in favor of RIDGELINE NATIONAL BANK, NATIONAL ASSOCIATION, a national banking association, in its capacity as collateral agent (in such capacity, together with its successors and assigns in such capacity, the "Collateral Agent") for the ratable benefit of the Secured Parties (as defined below).
RECITALS
A. Lumos Analytics Inc. is a corporation duly organized, validly existing, and in good standing under the laws of the State of Delaware, with its principal place of business at 2180 Gateway Boulevard, Suite 400, San Jose, California 95110.
B. Grantor (as Borrower), the Lenders party thereto from time to time, and Ridgeline National Bank, National Association (as Administrative Agent, Collateral Agent, and sole initial Lender) have entered into that certain Revolving Credit Agreement dated as of March 9, 2023 (as it may be amended, restated, supplemented, or otherwise modified from time to time, the "Credit Agreement"), pursuant to which the Lenders have agreed to make available to Grantor a senior secured revolving credit facility in an aggregate principal amount of up to Thirty Million Dollars ($30,000,000) (the "Revolving Credit Facility"), subject to the terms and conditions set forth in the Credit Agreement.
C. Pursuant to the Credit Agreement and that certain Security Agreement dated as of March 9, 2023, by Grantor in favor of Collateral Agent (as it may be amended, restated, supplemented, or otherwise modified from time to time, the "Security Agreement"), Grantor has agreed to grant to Collateral Agent, for the ratable benefit of the Secured Parties (as defined in the Credit Agreement), a continuing security interest in and lien upon all of Grantor's right, title, and interest in and to certain intellectual property, including all registered and applied-for patents, trademarks, and copyrights, and all proceeds thereof, as more fully described herein.
D. This intellectual Property Security Agreement is intended to be filed and recorded with the United States Patent and Trademark Office and the United States Copyright Office to record the security interest granted herein and to provide notice of such security interest to third parties. This Agreement supplements (but does not limit, restrict, or replace) the security interest granted under the Security Agreement, and nothing herein shall be construed to narrow the scope of the collateral granted thereunder.
E. Capitalized terms used but not otherwise defined herein shall have the meanings assigned to such terms in the Security Agreement or, if not defined therein, the Credit Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual covenants and agreements set forth herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Grantor hereby agrees with Collateral Agent as follows:
ARTICLE I — DEFINITIONS
Section 1.1 — Defined Terms
As used in this Agreement, the following terms shall have the following meanings:
"Collateral Agent" means Ridgeline National Bank, National Association, a national banking association, in its capacity as collateral agent for the benefit of the Secured Parties under the Credit Agreement, together with its successors and assigns in such capacity.
"Copyright Collateral" means all Copyrights listed on Schedule C hereto, together with all copyrights hereafter acquired, created, or arising, and all copyright applications, copyright registrations, and recordings thereof, and all renewals, extensions, restorations, and reversions thereof, and all proceeds of any and all of the foregoing, including any claims by Grantor against third parties for past, present, or future infringement or unauthorized use of any Copyright included therein.
"Copyrights" means all registered and unregistered copyrights in both published and unpublished works, all copyright applications, and all copyright registrations, whether registered or applied for with the United States Copyright Office or any similar office or agency in any other jurisdiction, including all rights therein provided by multiparty international treaties or conventions, and all moral rights, mask work rights, database rights, design rights, and other rights of authorship that may exist under applicable law.
"Credit Agreement" means that certain Revolving Credit Agreement dated as of March 9, 2023, among Grantor, the Lenders party thereto from time to time, and Ridgeline National Bank, National Association, as Administrative Agent and Collateral Agent, as such agreement may be amended, restated, amended and restated, supplemented, or otherwise modified from time to time in accordance with its terms.
"Grantor" means Lumos Analytics Inc., a Delaware corporation (EIN: 82-4917356; State of Delaware file number: 6284501), together with its successors and permitted assigns.
"IP Collateral" means, collectively, the Patent Collateral, the Trademark Collateral, and the Copyright Collateral, together with all other intellectual property collateral described in Section 2.1 hereof.
"Loan Documents" has the meaning ascribed to such term in the Credit Agreement.
"Obligations" has the meaning ascribed to such term in the Credit Agreement, and encompasses all obligations of Grantor and any other Loan Party arising under or in connection with the Credit Agreement, the Security Agreement, this Agreement, and all other Loan Documents, including all principal, interest (including post-petition interest), fees, expenses, indemnification obligations, reimbursement obligations, and other amounts from time to time owing thereunder.
"Patent Collateral" means all Patents listed on Schedule A hereto, together with all patents and patent applications hereafter acquired, created, or arising, including all divisionals, continuations, continuations-in-part, reissues, reexaminations, inter partes reviews, post-grant reviews, supplemental examinations, extensions, and improvements thereof, and all rights corresponding thereto throughout the world, and all proceeds of any and all of the foregoing, including any claims by Grantor against third parties for past, present, or future infringement or misappropriation of any Patent included therein.
"Patents" means all letters patent of the United States or any other country, all registrations and recordings thereof, and all applications for letters patent of the United States or any other country, including all provisional applications, utility applications, design applications, plant patent applications, and PCT international applications designating the United States, and all rights therein provided by multiparty international treaties or conventions, including the Paris Convention for the Protection of Industrial Property, and all improvements to the inventions described in any of the foregoing.
"Secured Parties" has the meaning ascribed to such term in the Credit Agreement and includes, without limitation, the Administrative Agent, the Collateral Agent, and each Lender (each as defined in the Credit Agreement), together with their respective successors and assigns.
"Security Agreement" means that certain Security Agreement dated as of March 9, 2023, by Grantor in favor of Collateral Agent, as such agreement may be amended, restated, amended and restated, supplemented, or otherwise modified from time to time in accordance with its terms.
"Trademark Collateral" means all Trademarks listed on Schedule B hereto, together with all trademarks, service marks, trade names, and trade dress hereafter acquired, created, or arising, and all applications and registrations therefor, and all renewals thereof, together with the goodwill of the business connected with the use of and symbolized by such Trademarks, and all proceeds of any and all of the foregoing, including any claims by Grantor against third parties for past, present, or future infringement, dilution, or misappropriation of any Trademark included therein.
"Trademarks" means all trademarks, service marks, trade names, trade dress, logos, designs, slogans, Internet domain names, social media identifiers, and other source identifiers, whether registered or unregistered, and all registrations, recordings, and applications for registration thereof in the United States or any other country, including all rights therein provided by multiparty international treaties or conventions, including the Paris Convention for the Protection of Industrial Property, the Madrid Protocol, and the Nice Agreement, and all goodwill associated therewith and symbolized thereby.
Section 1.2 — Terms Defined in Security Agreement or Credit Agreement
Any capitalized term used but not otherwise defined in this Agreement shall have the meaning ascribed to such term in the Security Agreement, and if such term is not defined in the Security Agreement, such term shall have the meaning ascribed to it in the Credit Agreement. Any terms defined in the Uniform Commercial Code as in effect from time to time in the State of California (the "UCC"), as such term is defined in the Security Agreement, that are not otherwise defined herein, in the Security Agreement, or in the Credit Agreement shall have the meanings set forth in the UCC; provided, however, that if a term is defined in Article 9 of the UCC differently than in another Article of the UCC, the term shall have the meaning set forth in Article 9.
Section 1.3 — Rules of Construction
Unless the context otherwise requires: (a) references to "Sections," "Articles," "Schedules," and "Exhibits" are to the Sections, Articles, Schedules, and Exhibits of and to this Agreement, unless otherwise specified; (b) the words "include," "includes," and "including" shall be deemed to be followed by the phrase "without limitation"; (c) words importing the singular include the plural and vice versa; (d) the word "or" is not exclusive; (e) references to any Person include such Person's successors and permitted assigns; (f) references to any statute, rule, or regulation include all statutory and regulatory provisions consolidating, amending, replacing, supplementing, or interpreting such statute, rule, or regulation; (g) references to "herein," "hereof," "hereunder," and words of similar import refer to this Agreement as a whole and not to any particular Section or provision hereof; and (h) references to any agreement or document shall mean such agreement or document as amended, restated, supplemented, or otherwise modified from time to time in accordance with its terms.
ARTICLE II — GRANT OF SECURITY INTEREST
Section 2.1 — Grant
As collateral security for the prompt and complete payment and performance when due (whether at stated maturity, by required prepayment, by acceleration, by demand, or otherwise) of all Obligations, Grantor hereby grants, assigns, pledges, hypothecates, and conveys to Collateral Agent, for the ratable benefit of the Secured Parties, a continuing first-priority security interest in and lien upon all of Grantor's right, title, and interest in, to, and under the following property, whether now owned or existing or hereafter acquired, created, or arising, and wherever located (collectively, the "IP Collateral"):
(a) Patent Collateral. All Patent Collateral, including all patents and patent applications listed on Schedule A attached hereto, together with all divisionals, continuations, continuations-in-part, reissues, reexaminations, inter partes reviews, post-grant reviews, extensions, and improvements thereof, all inventions and improvements described and claimed therein, all rights corresponding thereto throughout the world, and all rights to sue or recover at law or in equity for any past, present, and future infringement, misappropriation, or other violation thereof, including all rights to collect damages and profits therefor;
(b) Trademark Collateral. All Trademark Collateral, including all trademarks, service marks, trade names, and trade dress listed on Schedule B attached hereto, together with all applications and registrations therefor, all renewals thereof, and together with the goodwill of the business connected with the use of and symbolized by such Trademarks, and all rights corresponding thereto throughout the world, and all rights to sue or recover at law or in equity for any past, present, and future infringement, dilution, misappropriation, or other violation thereof, including all rights to collect damages and profits therefor;
(c) Copyright Collateral. All Copyright Collateral, including all copyrights and copyright registrations and applications listed on Schedule C attached hereto, together with all renewals, extensions, restorations, and reversions thereof, and all rights corresponding thereto throughout the world, and all rights to sue or recover at law or in equity for any past, present, and future infringement or other violation thereof, including all rights to collect damages and profits therefor;
(d) Licenses and Agreements. All licenses, sublicenses, coexistence agreements, settlement agreements, and other agreements with respect to any of the foregoing to which Grantor is a party or under which Grantor has any right (in each case, to the extent assignable or pledgeable without violation of applicable law or the terms thereof after giving effect to Sections 9-406, 9-407, 9-408, and 9-409 of the UCC);
(e) Income and Royalties. All income, royalties, damages, claims, and payments now or hereafter due or payable with respect to any of the foregoing, including damages and payments for past, present, or future infringement, dilution, or misappropriation thereof, and all rights to sue for and collect such damages and payments; and
(f) Proceeds. All proceeds of any and all of the foregoing, including insurance proceeds, condemnation awards, and all rights to sue for past, present, and future infringement, dilution, or misappropriation of any of the foregoing.
Section 2.2 — Supplement to Security Agreement
The security interest granted hereunder is granted in addition to, and supplements, the security interest granted by Grantor in favor of Collateral Agent under the Security Agreement. This Agreement is intended to be recorded with the USPTO and the United States Copyright Office in order to provide notice of the security interest of Collateral Agent in the IP Collateral and to satisfy the requirements for the recordation of security interests under applicable federal law. In the event of any conflict or inconsistency between the terms of this Agreement and the terms of the Security Agreement, the terms of the Security Agreement shall control and govern in all respects, except with respect to the recordation provisions set forth herein, which are intended to comply with the filing and recordation requirements of the USPTO and the United States Copyright Office and which shall be given effect as stated herein. Nothing contained in this Agreement shall be deemed to limit, restrict, or otherwise narrow the scope of the security interest granted by Grantor under the Security Agreement, and the collateral description set forth in the Security Agreement shall be fully effective and enforceable in accordance with its terms irrespective of any provision of this Agreement.
Section 2.3 — Secured Obligations
The IP Collateral secures the prompt and complete payment and performance of all Obligations as defined in the Credit Agreement. Without limiting the generality of the foregoing, the IP Collateral secures the payment and performance of all principal, interest (including interest accruing after the filing of any petition in bankruptcy or the commencement of any insolvency, reorganization, or similar proceeding, whether or not a claim for post-petition interest is allowed in such proceeding), fees, costs, expenses, indemnities, reimbursement obligations, and all other amounts owing under or in connection with the Credit Agreement, the Security Agreement, this Agreement, and all other Loan Documents, in each case whether direct or indirect, absolute or contingent, due or to become due, now existing or hereafter arising.
Section 2.4 — Exclusions
Notwithstanding anything in this Agreement to the contrary, the IP Collateral shall not include:
(a) any intent-to-use trademark application filed pursuant to Section 1(b) of the Lanham Act (15 U.S.C. § 1051(b)) to the extent, and only for so long as, the grant of a security interest therein would impair the validity or enforceability of such application under applicable federal trademark law; provided that such exclusion shall automatically cease to apply, and such intent-to-use application shall automatically become part of the IP Collateral subject to the security interest granted hereunder, immediately upon the filing of a verified statement of use or an amendment to allege use with respect to such application with the USPTO; and
(b) certain immaterial foreign intellectual property rights as determined in good faith by Grantor and reasonably agreed to by Collateral Agent in writing, which foreign intellectual property rights are not material to the conduct of the business of Grantor as conducted as of the date hereof.
The foregoing exclusions are consistent with and supplementary to the exclusions set forth in the Security Agreement, and nothing in this Section 2.4 shall be construed to expand or modify the exclusions set forth therein. For the avoidance of doubt, the trademark applications identified on Schedule B hereto are use-based applications filed under Section 1(a) of the Lanham Act and are therefore included in the Trademark Collateral without limitation.
ARTICLE III — REPRESENTATIONS AND WARRANTIES
Grantor hereby represents and warrants to Collateral Agent, for the benefit of the Secured Parties, as of the date hereof, as follows:
Section 3.1 — Title and Ownership
Grantor is the sole and exclusive owner of the entire right, title, and interest in and to all IP Collateral listed on the Schedules hereto, free and clear of all liens, claims, security interests, encumbrances, restrictions, options, charges, and adverse claims of any nature whatsoever, except for (a) the security interest granted to Collateral Agent under this Agreement and the Security Agreement and (b) Permitted Liens (as defined in the Credit Agreement). No effective financing statement, security agreement, license, or other document filed, recorded, or registered with the USPTO, the United States Copyright Office, or any other governmental authority covers any of the IP Collateral other than the financing statements and agreements filed by or on behalf of Collateral Agent.
Section 3.2 — Validity and Enforceability
To Grantor's knowledge, all registrations and applications listed on Schedules A, B, and C hereto are valid, subsisting, and enforceable, and have not been abandoned, cancelled, expired, or dedicated to the public (except as otherwise specifically noted on such Schedules). All necessary registration, maintenance, renewal, and other fees and filings required to maintain the IP Collateral listed on the Schedules hereto in full force and effect have been timely made or paid by Grantor. To Grantor's knowledge, there are no pending or threatened oppositions, interferences, inter partes reviews, post-grant reviews, reexamination proceedings, cancellation proceedings, or other adversarial proceedings before the USPTO, the United States Copyright Office, the Trademark Trial and Appeal Board, the Patent Trial and Appeal Board, or any court of competent jurisdiction with respect to any of the IP Collateral, except as have been disclosed to Collateral Agent in writing prior to the date hereof.
Section 3.3 — No Infringement
To Grantor's knowledge, none of the IP Collateral, and the use thereof by Grantor in connection with its business as presently conducted, infringes, misappropriates, dilutes, or otherwise violates the intellectual property or other proprietary rights of any third party. To Grantor's knowledge, no third party is currently infringing, misappropriating, diluting, or otherwise violating any of the IP Collateral in any material respect, and no written claim of such infringement, misappropriation, or violation has been received by Grantor as of the date hereof that remains unresolved.
Section 3.4 — Completeness of Schedules
Schedules A, B, and C hereto set forth a true, correct, and complete list of all (i) issued patents and pending patent applications, (ii) registered trademarks and pending trademark applications, and (iii) registered copyrights and pending copyright applications, in each case owned by Grantor as of the date hereof and registered or applied for with the USPTO or the United States Copyright Office, as applicable. Grantor's exact legal name as it appears on its certificate of incorporation filed with the Secretary of State of the State of Delaware is "Lumos Analytics Inc." Grantor has not changed its name, identity, state of organization, organizational structure, or form of organization during the five (5) years preceding the date hereof, except as disclosed in the Perfection Certificate delivered by Grantor to Collateral Agent pursuant to the Security Agreement.
Section 3.5 — No Prior Assignments or Grants
Grantor has not previously assigned, transferred, pledged, hypothecated, or granted a security interest in any of the IP Collateral to any Person, except for security interests and liens that have been fully released, terminated, and discharged prior to the date hereof. No document evidencing any prior security interest in or assignment of any of the IP Collateral remains on file or of record with the USPTO or the United States Copyright Office, except for documents that have been superseded by releases or terminations of record.
Section 3.6 — Agreements with Third Parties
To Grantor's knowledge, no consent, approval, or authorization of, or notice to, any third party is required for the grant of the security interest herein or for the exercise of remedies by Collateral Agent with respect to the IP Collateral, except as otherwise provided in licenses or agreements that by their terms prohibit or restrict such assignment or pledge without the consent of the licensor or other party thereto, which licenses or agreements have been identified in the Perfection Certificate and are not, individually or in the aggregate, material to the business of Grantor. The execution, delivery, and performance of this Agreement by Grantor will not violate, conflict with, or result in a breach of, or constitute a default under, any material license, agreement, or instrument to which Grantor is a party or by which any of the IP Collateral is bound.
ARTICLE IV — COVENANTS
Grantor hereby covenants and agrees with Collateral Agent, for the benefit of the Secured Parties, as follows:
Section 4.1 — Maintenance and Protection of IP Collateral
Grantor shall, at its own cost and expense:
(a) maintain and preserve all IP Collateral that is material to the conduct of its business in full force and effect, including by timely paying all maintenance fees, renewal fees, annuities, and other charges required to keep such IP Collateral in good standing;
(b) diligently prosecute all pending patent applications and trademark applications listed on the Schedules hereto, and any future applications relating to IP Collateral, through issuance, registration, or final disposition, using counsel of recognized competence in the applicable field;
(c) take all steps necessary and proper to maintain the validity and enforceability of all registrations included in the IP Collateral, including timely filing all required declarations of use, affidavits of continued use, renewal applications, and similar filings with the USPTO and the United States Copyright Office, as applicable; and
(d) not abandon any registered patent, registered trademark, or registered copyright included in the IP Collateral without the prior written consent of the Collateral Agent; provided, however, that Grantor may abandon or permit the lapse of any patent, trademark, or copyright that Grantor has determined in good faith is no longer material to the conduct of its business, so long as Grantor provides not less than thirty (30) days' prior written notice to Collateral Agent of such intended abandonment or lapse, together with a reasonably detailed explanation of the basis for such determination.
Section 4.2 — No Transfers or Liens
Grantor shall not sell, assign, transfer, exclusively license, or otherwise dispose of any IP Collateral, or create, incur, assume, or permit to exist any lien, claim, encumbrance, or security interest on or with respect to any IP Collateral, except for:
(a) the security interest granted to Collateral Agent hereunder and under the Security Agreement;
(b) Permitted Liens (as defined in the Credit Agreement); and
(c) non-exclusive licenses of IP Collateral granted by Grantor in the ordinary course of Grantor's business to third-party customers, distributors, and partners, on commercially reasonable terms, which licenses do not materially impair the value of the IP Collateral or the ability of Collateral Agent to realize on the IP Collateral upon the exercise of remedies hereunder.
Section 4.3 — After-Acquired intellectual Property
If, at any time after the date hereof, Grantor shall obtain, create, or otherwise acquire rights in any new patents, patent applications, trademarks, trademark applications, copyrights, or copyright registrations (whether by filing, purchase, assignment, license, operation of law, or otherwise), Grantor shall promptly notify Collateral Agent in writing of such acquisition and shall, within thirty (30) days after acquiring such rights (or such longer period as Collateral Agent may agree in writing), execute and deliver to Collateral Agent a supplement to this Agreement substantially in the form of Exhibit A hereto (each, a "Supplement"), identifying such new intellectual property and updating the applicable Schedule or Schedules, in form and substance reasonably satisfactory to Collateral Agent, for recording with the USPTO and/or the United States Copyright Office, as applicable. All such after-acquired intellectual property shall automatically be subject to the security interest granted hereunder, immediately upon Grantor's acquisition of rights therein, without the need for any further grant, assignment, or other action by Grantor; provided, however, that the foregoing automatic grant shall not apply to intent-to-use trademark applications to the extent excluded under Section 2.4(a) hereof.
Section 4.4 — Prosecution and Defense of Claims
Grantor shall diligently pursue, prosecute, and defend all claims, actions, and proceedings related to the IP Collateral, including claims for infringement, misappropriation, dilution, or other violation of any IP Collateral by third parties, and shall take all commercially reasonable steps to protect and enforce its rights in and to the IP Collateral. Grantor shall notify Collateral Agent promptly, and in any event within ten (10) Business Days, of any material claim, action, or proceeding (whether initiated by or against Grantor) affecting or relating to the IP Collateral, including any opposition, cancellation, interference, reexamination, inter partes review, or post-grant review proceeding.
Grantor shall not settle, compromise, abandon, or consent to any judgment, decree, or order with respect to any material claim, action, or proceeding affecting the IP Collateral without the prior written consent of Collateral Agent, which consent shall not be unreasonably withheld, conditioned, or delayed. For purposes of this Section, a claim, action, or proceeding shall be considered "material" if it involves IP Collateral that is material to the business of Grantor or if the potential adverse outcome would reasonably be expected to have a material adverse effect on the value of the IP Collateral as a whole.
Section 4.5 — Use of Trademarks
Grantor shall use (or cause to be used under appropriate quality control standards) each material Trademark included in the Trademark Collateral in interstate commerce in a manner sufficient to maintain such Trademark's validity and registrability under applicable law and to prevent it from becoming generic, abandoned, or otherwise unenforceable. Without limiting the foregoing, Grantor shall maintain appropriate quality control standards with respect to all licensed uses of the Trademarks and shall require all licensees to use the Trademarks only in connection with goods and services that meet Grantor's quality standards. Grantor shall display appropriate trademark notices (including the ® symbol for registered marks and the ™ symbol for unregistered marks) in connection with its use of the Trademarks in all material marketing, advertising, and promotional materials.
Section 4.6 — Notices
Grantor shall promptly, and in any event within ten (10) Business Days, notify Collateral Agent in writing of:
(a) any event, occurrence, or circumstance that could reasonably be expected to materially impair the value of any material IP Collateral, including any final, non-appealable adverse determination by the USPTO, the United States Copyright Office, or any court of competent jurisdiction with respect to the validity, enforceability, or ownership of any material IP Collateral;
(b) any filing or application made by any third party for the registration of any intellectual property that would reasonably be expected to materially conflict with or adversely affect any IP Collateral, including any trademark application that is confusingly similar to any Trademark included in the Trademark Collateral;
(c) any material change in the status of any registration or application listed on the Schedules hereto, including the issuance, registration, allowance, publication, abandonment, cancellation, expiration, or final rejection of any such registration or application; and
(d) any event of default or material breach under any material license agreement to which Grantor is a party that relates to any IP Collateral.
ARTICLE V — AUTHORIZATION; FURTHER ASSURANCES
Section 5.1 — Authorization to File
Grantor hereby authorizes Collateral Agent, at Grantor's sole cost and expense, to file, record, and register this Agreement (or a copy, summary, or abstract hereof) with the USPTO and the United States Copyright Office as a record of the security interest granted herein. Grantor further authorizes Collateral Agent to file, record, and register any Supplement hereto with the USPTO and the United States Copyright Office in the same manner. Grantor hereby further authorizes Collateral Agent to file, at Grantor's sole cost and expense, any and all UCC financing statements (including initial financing statements, amendments, assignments, and continuation statements), and any other documents, instruments, or notices, as Collateral Agent may deem necessary or desirable to perfect, maintain, continue, or protect the security interest granted herein and the priority thereof, including filings with the Secretary of State of the State of Delaware and the Secretary of State of the State of California. Grantor hereby ratifies and confirms any UCC financing statements previously filed by or on behalf of Collateral Agent with respect to the IP Collateral.
Section 5.2 — Power of Attorney
Grantor hereby irrevocably constitutes and appoints Collateral Agent, and any officer or agent of Collateral Agent, as Grantor's true and lawful attorney-in-fact (which appointment is coupled with an interest), with full power of substitution and subrogation, exercisable only upon the occurrence and during the continuance of an Event of Default (as defined in the Credit Agreement), to do any of the following in Grantor's name or otherwise:
(a) execute and file any documents, instruments, certificates, or notices necessary or desirable to perfect, maintain, or protect the security interest granted herein, including filings with the USPTO, the United States Copyright Office, the Delaware Secretary of State, or any other governmental authority;
(b) execute assignments, transfers, and other documents or instruments to give effect to the remedies provided herein and in the Security Agreement, including the assignment or transfer of the IP Collateral or any part thereof;
(c) endorse checks, drafts, and other instruments of payment received in respect of the IP Collateral;
(d) commence, prosecute, settle, or discontinue any suit, action, or proceeding relating to the IP Collateral; and
(e) take any and all other actions reasonably necessary or desirable to protect the IP Collateral and the interests of the Secured Parties therein.
Grantor hereby ratifies all acts that Collateral Agent, or any officer or agent of Collateral Agent, shall lawfully take or do pursuant to this Section 5.2. This power of attorney is irrevocable and coupled with an interest and shall not be affected by the subsequent disability or incapacity of Grantor.
Section 5.3 — Further Assurances
Grantor shall, from time to time, at its own cost and expense, promptly execute, acknowledge, deliver, file, record, and register such additional instruments, documents, certificates, agreements, and other writings, and take such further actions, as Collateral Agent may reasonably request in order to carry out the purposes of this Agreement, to perfect, protect, maintain, and continue the security interest granted herein, and to enable Collateral Agent to exercise and enforce its rights and remedies hereunder with respect to the IP Collateral, including executing and delivering any additional security agreements, intellectual property security agreement supplements, assignments, powers of attorney, UCC financing statements, and other documents as may be required for filing with the USPTO, the United States Copyright Office, or any other governmental authority.
ARTICLE VI — REMEDIES
Section 6.1 — Remedies Upon Event of Default
Upon the occurrence and during the continuance of an Event of Default (as defined in the Credit Agreement), Collateral Agent may, in addition to all other rights and remedies available to the Secured Parties under this Agreement, the Security Agreement, the Credit Agreement, and the other Loan Documents, and in addition to all rights and remedies available under the UCC and all other applicable law, exercise any or all of the following rights and remedies, in its sole discretion and without any further consent or authorization of Grantor:
(a) Possession. Take immediate possession of the IP Collateral and any and all records, files, correspondence, and other documents (whether in physical or electronic form) relating thereto;
(b) License. License or sublicense any or all of the IP Collateral, on an exclusive or non-exclusive basis, to any third party, on such terms and conditions as Collateral Agent may determine in its commercially reasonable judgment, and apply any royalties, license fees, or other payments received in connection therewith in accordance with Section 6.2;
(c) Sale or Disposition. Assign, sell, or otherwise dispose of any or all of the IP Collateral, in whole or in part, at public or private sale, in one or more parcels, at such time or times, at such place or places, and upon such terms and conditions as Collateral Agent may determine, in a commercially reasonable manner, and execute and deliver to the purchaser or purchasers thereof all assignments, bills of sale, and other instruments as may be necessary or appropriate to effect such transfer;
(d) Collection. Demand, collect, receipt for, compromise, settle, and sue for all royalties, license fees, damages, claims, and other amounts now or hereafter due and payable to Grantor with respect to any of the IP Collateral;
(e) Recordation. Execute, record, and file with the USPTO and the United States Copyright Office, and with any other applicable governmental authority, one or more assignments of any or all of the IP Collateral, in whole or in part, from Grantor to Collateral Agent, any Secured Party, or any purchaser or transferee thereof, and any other documents necessary or appropriate to transfer or record ownership of the IP Collateral; and
(f) Other Remedies. Exercise any and all other rights and remedies available under the UCC, the Loan Documents, and applicable law.
Grantor acknowledges and agrees that a commercially reasonable sale of IP Collateral may include a sale of the IP Collateral as part of the sale of all or substantially all of the assets of Grantor or as part of a sale of the IP Collateral to one or more buyers in one or more transactions. Any amounts received by Collateral Agent upon any sale, lease, license, or other disposition of the IP Collateral may be applied by Collateral Agent to the Obligations in such order as set forth in the Credit Agreement and the Security Agreement.
Section 6.2 — Application of Proceeds
Any and all cash proceeds received by Collateral Agent in respect of any sale, lease, license, collection, or other disposition of, or realization upon, all or any part of the IP Collateral shall be applied (after payment of any and all costs and expenses of such sale, lease, license, collection, or other disposition, including reasonable attorneys' fees and disbursements, and the costs and expenses of Collateral Agent incurred in connection therewith) in accordance with the provisions of the Credit Agreement and the Security Agreement governing the application of proceeds of collateral.
Section 6.3 — Cumulative Remedies
All rights and remedies of Collateral Agent hereunder and under the Security Agreement, the Credit Agreement, and the other Loan Documents are cumulative, may be exercised simultaneously or successively, and are in addition to all other rights and remedies available to the Secured Parties at law, in equity, or otherwise. No failure or delay on the part of Collateral Agent in exercising any right or remedy hereunder shall operate as a waiver thereof, nor shall any single or partial exercise of any right or remedy preclude any other or further exercise thereof or the exercise of any other right or remedy.
ARTICLE VII — MISCELLANEOUS
Section 7.1 — Governing Law
This Agreement and the rights and obligations of the parties hereto shall be governed by, and construed and interpreted in accordance with, the laws of the State of California, without giving effect to any choice of law or conflicts of law provision or rule thereof (whether of the State of California or any other jurisdiction) that would cause the application of the laws of any jurisdiction other than the State of California; provided, however, that to the extent that the creation, attachment, perfection, priority, or enforcement of security interests in the IP Collateral, or the recording or filing of this Agreement (or any Supplement hereto) with the USPTO, the United States Copyright Office, or any other federal agency, is governed by federal law (including the Patent Act, 35 U.S.C. § 1 et seq., the Lanham Act, 15 U.S.C. § 1051 et seq., and the Copyright Act, 17 U.S.C. § 101 et seq.), such matters shall be governed by and construed in accordance with such applicable federal law.
Section 7.2 — Submission to Jurisdiction
Each of the parties hereto hereby irrevocably and unconditionally submits, for itself and its property, to the exclusive jurisdiction of the courts of the State of California sitting in the County of Santa Clara and the United States District Court for the Northern District of California, and any appellate court from any thereof, in any action, suit, or proceeding arising out of or relating to this Agreement, or for recognition and enforcement of any judgment in respect thereof, and each of the parties hereto hereby irrevocably and unconditionally agrees that all claims in respect of any such action, suit, or proceeding may be heard and determined in such California state court or, to the fullest extent permitted by applicable law, in such federal court, consistent with the forum selection provisions of the Credit Agreement. Each of the parties hereto agrees that a final judgment in any such action, suit, or proceeding shall be conclusive and may be enforced in other jurisdictions by suit on the judgment or in any other manner provided by law. Nothing in this Section 7.2 shall affect any right that Collateral Agent or any other Secured Party may otherwise have to bring any action, suit, or proceeding relating to this Agreement against Grantor or its properties in the courts of any other jurisdiction. Each party hereto hereby irrevocably waives, to the fullest extent permitted by applicable law, any objection that it may now or hereafter have to the laying of venue of any such action, suit, or proceeding in any such court, and any claim that any such action, suit, or proceeding brought in any such court has been brought in an inconvenient forum.
Section 7.3 — Amendments
This Agreement may be amended, modified, supplemented, restated, or waived only by a written instrument duly executed by Grantor and Collateral Agent; provided, however, that supplemental schedules identifying after-acquired intellectual property in accordance with Section 4.3 hereof may be appended to this Agreement upon execution and delivery by Grantor of a Supplement substantially in the form of Exhibit A hereto, acknowledged by Collateral Agent, without the need for a formal amendment to this Agreement. No amendment, modification, supplement, restatement, or waiver shall be effective unless in writing and signed by the party or parties to be bound thereby.
Section 7.4 — Termination
This Agreement and the security interest granted herein shall terminate and be released, and shall be of no further force or effect, upon the earliest to occur of: (a) the Payment in Full (as defined in the Credit Agreement) of all Obligations and the termination, expiration, or cancellation of all commitments of the Lenders to make loans or extend credit under the Credit Agreement; and (b) such other circumstances as may give rise to a release of the security interest under the terms of the Security Agreement or the Credit Agreement.
Upon such termination, Collateral Agent shall, at Grantor's sole cost and expense, promptly execute and deliver to Grantor such termination statements, releases, assignments, and other documents and instruments as Grantor may reasonably request to evidence and effect the release and termination of the security interest granted hereunder, including UCC-3 termination statements for filing with the Secretary of State of the State of Delaware and any other applicable filing offices, and releases or assignments for recording with the USPTO and the United States Copyright Office, in each case in form and substance reasonably satisfactory to Grantor and Collateral Agent. All costs and expenses incurred by Collateral Agent in connection with the preparation, execution, and filing of such termination and release documents shall be borne by Grantor.
Section 7.5 — Notices
All notices, requests, demands, consents, instructions, and other communications required or permitted to be given under this Agreement shall be in writing and shall be given, delivered, and deemed received in accordance with the notice provisions set forth in the Credit Agreement, addressed as follows (or to such other address as a party may designate by notice given in accordance herewith):
If to Grantor:
Lumos Analytics Inc. 2180 Gateway Boulevard, Suite 400 San Jose, California 95110
Attention: Marcus Delaney, General Counsel
Telephone: (408) 555-7200
Email: mdelaney@lumosanalytics.com
with a copy to (which shall not constitute notice):
Calderwood & Harkness LLP 555 Mission Street, Suite 3100 San Francisco, California 94105
Attention: Stephanie Okafor
Telephone: (415) 555-3400
Email: sokafor@calderwoodharkness.com
If to Collateral Agent:
Ridgeline National Bank, National Association 600 Lexington Avenue, 22nd Floor New York, New York 10022
Attention: Sarah Whitfield, Senior Vice President, Technology Lending
Telephone: (212) 555-6100
Email: swhitfield@ridgelinebank.com
with a copy to (which shall not constitute notice):
Whitmore Graves & Fitch LLP 51 West 52nd Street, 34th Floor New York, New York 10019
Attention: Thomas A. Rennick
Telephone: (212) 555-8300
Email: trennick@wmgflaw.com
Section 7.6 — Successors and Assigns
This Agreement shall be binding upon Grantor and its successors and assigns, and shall inure to the benefit of Collateral Agent and its successors and assigns and the other Secured Parties and their respective successors and assigns; provided that Grantor may not assign or transfer any of its rights or obligations hereunder without the prior written consent of Collateral Agent (and any purported assignment or transfer without such consent shall be null and void). Collateral Agent may assign or transfer its rights and obligations hereunder in connection with any assignment or transfer of its role as Collateral Agent under the Credit Agreement in accordance with the terms thereof.
Section 7.7 — Severability
If any provision of this Agreement is found by a court of competent jurisdiction to be invalid, illegal, or unenforceable in any respect, such invalidity, illegality, or unenforceability shall not affect any other provision of this Agreement, and this Agreement shall be construed as if such invalid, illegal, or unenforceable provision had never been contained herein, but only to the extent of such invalidity, illegality, or unenforceability. The parties hereto shall endeavor in good faith negotiations to replace any invalid, illegal, or unenforceable provision with a valid, legal, and enforceable provision that, to the greatest extent possible, achieves the economic, business, and other purposes of the invalid, illegal, or unenforceable provision.
Section 7.8 — Waiver
No failure or delay by Collateral Agent or any other Secured Party in exercising any right, power, privilege, or remedy hereunder shall operate as a waiver thereof, nor shall any single or partial exercise of any such right, power, privilege, or remedy preclude any other or further exercise thereof or the exercise of any other right, power, privilege, or remedy. The rights, powers, privileges, and remedies of Collateral Agent and the other Secured Parties hereunder are cumulative and are not exclusive of any rights, powers, privileges, or remedies that they may otherwise have. No waiver of any provision of this Agreement or consent to any departure by Grantor therefrom shall in any event be effective unless the same shall be in writing and signed by Collateral Agent, and then such waiver or consent shall be effective only in the specific instance and for the specific purpose for which given.
Section 7.9 — Headings
The headings and captions appearing in this Agreement are included solely for convenience of reference and are not intended to affect the interpretation or construction of any provision of this Agreement. The table of contents, if any, and the headings of the Articles, Sections, Schedules, and Exhibits of this Agreement are for convenience of reference only, shall not be deemed to be a part of this Agreement, and shall not be referred to in connection with the construction or interpretation of this Agreement.
Section 7.10 — Counterparts
This Agreement may be executed in any number of counterparts, each of which shall be deemed to be an original, and all of which, when taken together, shall constitute one and the same instrument. Delivery of an executed counterpart of a signature page of this Agreement by facsimile transmission or by electronic transmission in portable document format (.pdf) or any other electronic format shall be effective as delivery of a manually executed original counterpart of this Agreement. The words "execution," "signed," "signature," and words of similar import in or relating to this Agreement shall be deemed to include electronic signatures and the keeping of records in electronic form, each of which shall be of the same legal effect, validity, and enforceability as a manually executed signature, physical delivery thereof, or the use of a paper-based recordkeeping system, as applicable, to the extent and as provided for in any applicable law, including the Federal Electronic Signatures in Global and National Commerce Act, the New York State Electronic Signatures and Records Act, or any other similar state laws based on the Uniform Electronic Transactions Act.
Section 7.11 — Entire Agreement
This Agreement, together with the Security Agreement, the Credit Agreement, and the other Loan Documents, constitutes the entire agreement among the parties hereto with respect to the subject matter hereof and thereof and supersedes all prior agreements, arrangements, negotiations, discussions, understandings, and representations, whether written or oral, relating to the subject matter hereof. There are no representations, warranties, covenants, or agreements among the parties hereto with respect to the subject matter hereof other than those expressly set forth or referred to herein or in the other Loan Documents.
[Remainder of this page intentionally left blank. Signature pages follow.]
[SIGNATURE PAGE TO INTELLECTUAL PROPERTY SECURITY AGREEMENT]
IN WITNESS WHEREOF, the parties hereto have caused this intellectual Property Security Agreement to be duly executed and delivered as of the date first above written.
GRANTOR:
LUMOS ANALYTICS INC.
By: ________
Name: Arjun Malhotra
Title: Chief Executive Officer
Date: March 9, 2023
By: ________
Name: Catherine Lindgren
Title: Chief Financial Officer
Date: March 9, 2023
[SIGNATURE PAGE TO INTELLECTUAL PROPERTY SECURITY AGREEMENT]
COLLATERAL AGENT:
RIDGELINE NATIONAL BANK, NATIONAL ASSOCIATION, as Collateral Agent
By: ________
Name: Sarah Whitfield
Title: Senior Vice President, Technology Lending
Date: March 9, 2023
SCHEDULE A
to intellectual Property Security Agreement dated March 9, 2023 by Lumos Analytics Inc. in favor of Ridgeline National Bank, N.A., as Collateral Agent
PATENTS AND PATENT APPLICATIONS
The following is a complete list of all patents and patent applications owned by Grantor as of the date of this Agreement:
SCHEDULE B
to intellectual Property Security Agreement dated March 9, 2023 by Lumos Analytics Inc. in favor of Ridgeline National Bank, N.A., as Collateral Agent
TRADEMARKS, SERVICE MARKS, AND TRADEMARK APPLICATIONS
The following is a complete list of all trademarks, service marks, and trademark applications owned by Grantor as of the date of this Agreement:
Note: Application Serial No. 97/724,618 is a use-based application filed under Section 1(a) of the Lanham Act (15 U.S.C. § 1051(a)) and is therefore included in the Trademark Collateral. Any intent-to-use applications filed under Section 1(b) of the Lanham Act (15 U.S.C. § 1051(b)) are excluded from the IP Collateral under this Agreement until such time as a verified statement of use or an amendment to allege use has been filed with the USPTO with respect to such application, as provided in Section 2.4 of this Agreement.
SCHEDULE C
to intellectual Property Security Agreement dated March 9, 2023 by Lumos Analytics Inc. in favor of Ridgeline National Bank, N.A., as Collateral Agent
COPYRIGHTS AND COPYRIGHT REGISTRATIONS
The following is a complete list of all registered copyrights and copyright applications owned by Grantor as of the date of this Agreement: