EXECUTION VERSION
INTELLECTUAL PROPERTY SECURITY AGREEMENT
Dated as of March 28, 2025
among
NEXFORD INDUSTRIAL HOLDINGS INC., as Borrower,
GRANITE PEAK NIH HOLDINGS, LLC, as Holdings Guarantor,
THE SUBSIDIARY GUARANTORS PARTY HERETO,
and
CRESCENT HARBOR BANK, N.A., as Collateral Agent
Right-click to update Table of Contents
This INTELLECTUAL PROPERTY SECURITY AGREEMENT (as amended, restated, supplemented, or otherwise modified from time to time, this "Agreement") is entered into as of March 28, 2025, among NEXFORD INDUSTRIAL HOLDINGS INC., a Delaware corporation (EIN: 36-4178552; Delaware Secretary of State File No. 5765432) (the "Borrower"), GRANITE PEAK NIH HOLDINGS, LLC, a Delaware limited liability company (EIN: 85-3291047; Delaware Secretary of State File No. 7234891) (the "Holdings Guarantor"), each of the Subsidiary Guarantors identified on the signature pages hereto and listed on Schedule A (each, a "Subsidiary Guarantor" and, together with the Borrower and the Holdings Guarantor, the "Grantors" and each individually, a "Grantor"), and CRESCENT HARBOR BANK, N.A., a national banking association, in its capacity as Collateral Agent for the benefit of the Secured Parties (as defined below) (in such capacity, the "Collateral Agent"), with its principal office at 320 Federal Street, Boston, Massachusetts 02110.
RECITALS
WHEREAS, the Borrower, the Guarantors party thereto, Crescent Harbor Bank, N.A., as Administrative Agent and Collateral Agent, Ironwood Capital Markets, LLC and Northvane Securities, Inc., as Joint Lead Arrangers and Joint Bookrunners, and the Lenders from time to time party thereto have entered into that certain Credit Agreement dated as of March 28, 2025 (as amended, restated, amended and restated, supplemented, or otherwise modified from time to time, the "Credit Agreement"), providing for, among other things, a $1,400,000,000 senior secured Term Loan B facility (the "Term Loan B Facility");
WHEREAS, the Grantors and the Collateral Agent have entered into that certain Security Agreement dated as of March 28, 2025 (as amended, restated, amended and restated, supplemented, or otherwise modified from time to time, the "Security Agreement"), pursuant to which the Grantors have granted to the Collateral Agent, for the benefit of the Secured Parties, a continuing security interest in certain property and assets of the Grantors as more particularly described therein;
WHEREAS, the Grantors and the Collateral Agent have entered into that certain Guarantee Agreement dated as of March 28, 2025 (as amended, restated, amended and restated, supplemented, or otherwise modified from time to time, the "Guarantee Agreement"), pursuant to which the Guarantors have unconditionally guaranteed the prompt and complete payment and performance of all Obligations under the Credit Agreement and the other Loan Documents;
WHEREAS, it is a condition to the effectiveness of the Credit Agreement and the making of the initial borrowings under the Term Loan B Facility that the Grantors execute and deliver this Agreement to the Collateral Agent;
WHEREAS, this Agreement is delivered pursuant to the requirements of Section 6.12 of the Credit Agreement and Section 4.5 of the Security Agreement to grant, confirm, and record the security interests granted therein with respect to intellectual property rights of the Grantors with the United States Patent and Trademark Office (the "USPTO") and the United States Copyright Office (the "Copyright Office"); and
WHEREAS, the Grantors have determined that the execution, delivery, and performance of this Agreement directly benefits, and is in the best interests of, each Grantor.
NOW, THEREFORE, in consideration of the premises and the mutual covenants herein contained, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the parties hereto agree as follows:
ARTICLE I — DEFINITIONS
Section 1.1 — Defined Terms
As used in this Agreement, the following terms shall have the meanings set forth below:
"Borrower" means Nexford Industrial Holdings Inc., a Delaware corporation.
"Collateral Agent" means Crescent Harbor Bank, N.A., a national banking association, in its capacity as Collateral Agent under the Credit Agreement, and its successors and assigns in such capacity.
"Copyright Collateral" means all Copyrights, Copyright Licenses, and related rights of each Grantor, including, without limitation, those Copyrights and Copyright Licenses listed on Schedule C hereto, and all rights, privileges, and protections related thereto, including, without limitation, all rights to recover for any past, present, or future infringement or violation thereof.
"Copyright License" means any written agreement, whether now existing or hereafter arising, granting to any Person any right to use any Copyright or any interest therein, including, without limitation, any right to produce, reproduce, distribute, display, perform, prepare derivative works of, or otherwise exploit any work subject to Copyright protection, whether any such Grantor is a licensor or a licensee under any such agreement.
"Copyrights" means all copyrights of any Grantor, whether registered or unregistered, in both published and unpublished works, including, without limitation: (a) all copyright registrations and recordings thereof, and all applications for registration thereof, in the United States or any other jurisdiction, including those listed on Schedule C hereto; (b) all renewals and extensions thereof; (c) all rights corresponding thereto throughout the world; (d) all rights to recover for any past, present, or future infringement or violation thereof; and (e) all other rights of any kind whatsoever of such Grantor accruing thereunder or pertaining thereto throughout the world.
"Credit Agreement" has the meaning set forth in the recitals hereto.
"Grantors" means, collectively, the Borrower, the Holdings Guarantor, and each Subsidiary Guarantor party hereto and listed on Schedule A, and their respective successors and assigns.
"Guarantee Agreement" has the meaning set forth in the recitals hereto.
"Holdings Guarantor" means Granite Peak NIH Holdings, LLC, a Delaware limited liability company.
"IP Collateral" means, collectively, the Patent Collateral, the Trademark Collateral, and the Copyright Collateral, together with all trade secrets, proprietary information, know-how, formulae, processes, technical data, customer lists, and confidential business information of each Grantor, and all rights, privileges, licenses, and protections related to any of the foregoing.
"Obligations" has the meaning assigned to such term in the Credit Agreement, and includes, without limitation, all obligations, indebtedness, and liabilities of the Borrower and each Guarantor arising under or in connection with the $1,400,000,000 Term Loan B Facility provided pursuant to the Credit Agreement, whether direct or indirect, absolute or contingent, due or to become due, or now existing or hereafter incurred.
"Patent Collateral" means all Patents, Patent Licenses, and related rights of each Grantor, including, without limitation, those Patents and Patent Licenses listed on Schedule B hereto, and all rights, privileges, and protections related thereto, including, without limitation, all rights to recover for any past, present, or future infringement or violation thereof.
"Patent License" means any written agreement, whether now existing or hereafter arising, granting to any Person any right with respect to any Patent or any interest therein, including, without limitation, any right to make, have made, use, sell, offer to sell, import, or otherwise practice any invention, process, or method covered by any Patent, whether any such Grantor is a licensor or a licensee under any such agreement.
"Patents" means all letters patent, design patents, utility patents, plant patents, industrial designs, inventions, and discoveries of any Grantor, including, without limitation: (a) all registrations and recordings thereof, and all applications therefor (including, without limitation, provisional applications, non-provisional applications, continuation applications, continuation-in-part applications, divisional applications, and reissue applications), in the United States or any other jurisdiction, including those listed on Schedule B hereto; (b) all reissues, re-examinations, inter partes reviews, post-grant reviews, extensions, supplementary protection certificates, and renewals thereof; (c) all rights corresponding thereto throughout the world; (d) all rights to recover for any past, present, or future infringement or violation thereof; and (e) all other rights of any kind whatsoever of such Grantor accruing thereunder or pertaining thereto throughout the world.
"Secured Parties" has the meaning assigned to such term in the Credit Agreement, and includes the Administrative Agent, the Collateral Agent, and the Lenders.
"Security Agreement" has the meaning set forth in the recitals hereto.
"Subsidiary Guarantors" means each of the following entities party hereto:
(a) Nexford Precision Components, Inc., a Delaware corporation;
(b) Nexford Engineered Systems, LLC, a Delaware limited liability company;
(c) Nexford Coatings & Surface Technologies, Inc., a Delaware corporation;
(d) Nexford Manufacturing Services, LLC, an Illinois limited liability company;
(e) Nexford Properties, LLC, a Delaware limited liability company;
(f) Nexford International Holdings, Inc., a Delaware corporation;
(g) Clearfield Tool & Die, Inc., a Pennsylvania corporation;
(h) Summit Industrial Fabrication Co., a South Carolina corporation;
(i) Ridgepoint Specialty Coatings, LLC, a Texas limited liability company; and
(j) Lakeshore Precision Engineering, Inc., a Michigan corporation.
"Trademark Collateral" means all Trademarks, Trademark Licenses, and related rights of each Grantor, including, without limitation, those Trademarks and Trademark Licenses listed on Schedule D hereto, and all rights, privileges, and protections related thereto, including, without limitation, all rights to recover for any past, present, or future infringement, dilution, or violation thereof.
"Trademark License" means any written agreement, whether now existing or hereafter arising, granting to any Person any right to use any Trademark or any interest therein, whether any such Grantor is a licensor or a licensee under any such agreement.
"Trademarks" means all trademarks, trade names, corporate names, company names, business names, fictitious business names, trade styles, service marks, certification marks, collective marks, logos, other source or business identifiers, trade dress, and domain names (including all Internet domain name registrations) of any Grantor, together with all goodwill of the business associated therewith and symbolized thereby, including, without limitation: (a) all registrations and recordings thereof, and all applications for registration therefor, in the United States or any other jurisdiction, including those listed on Schedule D hereto; (b) all renewals, extensions, and modifications thereof; (c) all rights corresponding thereto throughout the world; (d) all rights to recover for any past, present, or future infringement, dilution, or violation thereof; and (e) all other rights of any kind whatsoever of such Grantor accruing thereunder or pertaining thereto throughout the world.
Section 1.2 — Terms Defined in the UCC
Unless otherwise defined herein or in the Credit Agreement, terms used herein that are defined in Article 9 of the Uniform Commercial Code as in effect from time to time in the State of New York (the "UCC") are used herein as so defined. In the event that a term is defined both herein and in the UCC, the definition set forth herein shall control.
Section 1.3 — Terms Defined in the Credit Agreement
Capitalized terms used but not otherwise defined herein shall have the meanings assigned to such terms in the Credit Agreement or, if not defined therein, in the Security Agreement. The rules of construction and interpretation set forth in Section 1.03 of the Credit Agreement shall apply to this Agreement, mutatis mutandis.
ARTICLE II — GRANT OF SECURITY INTEREST
Section 2.1 — Grant
Each Grantor hereby grants to the Collateral Agent, for the ratable benefit of the Secured Parties, a continuing first-priority security interest in, and a lien upon, all of such Grantor's right, title, and interest in, to, and under the following property, whether now owned or existing or hereafter acquired or arising and wherever located (collectively, the "IP Collateral"):
(a) All Patents and Patent Licenses, including, without limitation, those listed on Schedule B hereto, and all reissues, divisions, continuations, continuations-in-part, extensions, renewals, and re-examinations thereof, together with all proceeds thereof;
(b) All Trademarks and Trademark Licenses, including, without limitation, those listed on Schedule D hereto, together with the goodwill of the business connected with the use of, and symbolized by, each such Trademark, and all proceeds thereof;
(c) All Copyrights and Copyright Licenses, including, without limitation, those listed on Schedule C hereto, and all renewals and extensions thereof, together with all proceeds thereof;
(d) All trade secrets, proprietary information, know-how, formulae, processes, technical data, manufacturing techniques, customer lists, supplier lists, algorithms, source code, object code, databases, and confidential business information of every kind and description;
(e) All licenses, permits, franchises, and agreements related to any of the foregoing IP Collateral, whether the applicable Grantor is a licensor, licensee, franchisor, or franchisee thereunder, to the extent permitted by applicable law;
(f) All claims for damages by way of any past, present, or future infringement, dilution, misappropriation, unauthorized use, or other violation of any of the foregoing, and all rights to sue for and to collect and receive all such damages and to settle and compromise all such claims on such terms as the Collateral Agent (acting at the direction of the Required Lenders) may determine after the occurrence and during the continuance of an Event of Default;
(g) All rights to receive income, royalties, damages, claims, and payments under or with respect to any of the foregoing IP Collateral, and all rights to receive payments under insurance (whether or not the Collateral Agent is the loss payee thereof) or any indemnity, warranty, or guaranty payable by reason of loss or damage to, or otherwise with respect to, any of the foregoing IP Collateral;
(h) All books, records, ledger cards, files, correspondence, computer programs, tapes, disks, papers, and other documents, whether in physical or electronic form, relating to any of the foregoing; and
(i) All products and proceeds of any and all of the foregoing, in whatever form, including, without limitation, cash, deposit accounts, insurance proceeds, negotiable instruments, and other instruments for the payment of money, chattel paper, security agreements, and documents.
Section 2.2 — Security for Obligations
The security interest created and granted pursuant to this Agreement secures the prompt and complete payment and performance when due (whether at stated maturity, by acceleration, or otherwise) of all Obligations under the Credit Agreement, including, without limitation, all principal, interest (including post-petition interest, whether or not allowed in any bankruptcy or insolvency proceeding), premium, fees, costs, charges, expenses, reimbursements, indemnifications, and all other amounts due or to become due under or in connection with the Credit Agreement (including the $1,400,000,000 Term Loan B Facility at a rate of Adjusted Term SOFR plus 400 basis points per annum, with a final maturity date of March 28, 2032), the Guarantee Agreement, the Security Agreement, this Agreement, and all other Loan Documents.
Section 2.3 — Supplement to Security Agreement
This Agreement supplements and is in addition to (and does not limit, modify, or supersede) the Security Agreement dated as of March 28, 2025. The security interest granted herein is in addition to, and not in substitution for, the security interest granted in the Security Agreement. To the extent of any conflict between the terms and provisions of this Agreement and the terms and provisions of the Security Agreement, the Security Agreement shall control and govern; provided, however, that the provisions of this Agreement specifically addressing the form, substance, and mechanics of recordation of the security interests granted herein with the USPTO and the U.S. Copyright Office shall control to the extent inconsistent with the Security Agreement.
ARTICLE III — REPRESENTATIONS AND WARRANTIES
Each Grantor hereby represents and warrants to the Collateral Agent, for the benefit of the Secured Parties, as of the date hereof and as of the date of each Security Agreement Supplement delivered pursuant to Section 5.3, that:
Section 3.1 — Title and Ownership
Such Grantor is the sole and exclusive owner of, or has valid and enforceable rights in, all IP Collateral listed on the Schedules hereto opposite such Grantor's name, free and clear of all liens, encumbrances, charges, security interests, and adverse claims of any kind, except for Permitted Liens (as defined in the Credit Agreement). Without limiting the generality of the foregoing, no Person other than such Grantor possesses any right, title, or interest in or to any such IP Collateral (other than licensees under licenses granted in the ordinary course of business), and such Grantor has the full right, power, and authority to grant the security interest contemplated herein in such IP Collateral.
Section 3.2 — Validity and Enforceability
To the knowledge of such Grantor, all registrations of and applications for Patents, Trademarks, and Copyrights listed on Schedules B, C, and D hereto are valid, subsisting, and enforceable. Without limiting the generality of the foregoing: (a) no Patent, Trademark registration, or Copyright registration listed on the Schedules has been adjudged invalid or unenforceable, in whole or in part, by any court, tribunal, or governmental authority of competent jurisdiction in a final, non-appealable decision; (b) no claim of invalidity, unenforceability, or cancellation with respect to any such Patent, Trademark, or Copyright is pending before any court, tribunal, governmental authority, or patent or trademark office; and (c) no interference, opposition, reexamination, inter partes review, post-grant review, or cancellation proceeding is pending or, to the knowledge of such Grantor, threatened in writing with respect to any such Patent, Trademark, or Copyright.
Section 3.3 — Completeness of Schedules
Schedules B, C, and D hereto set forth a complete and accurate list, as of the date hereof (March 28, 2025), of all Patents, Patent applications, Trademarks, Trademark applications, Copyrights, and Copyright applications that are registered with or applied for at the USPTO or the U.S. Copyright Office and that are owned by such Grantor. Schedule E hereto sets forth a complete and accurate list of all material IP Licenses (whether such Grantor is the licensor or the licensee thereunder) that are in effect as of the date hereof. Such Grantor acknowledges that the Schedules may be supplemented from time to time in accordance with Section 5.3 hereof to reflect after-acquired intellectual property.
Section 3.4 — No Infringement
To the knowledge of such Grantor, the conduct of such Grantor's business as presently conducted and as presently proposed to be conducted does not infringe, misappropriate, or otherwise violate any intellectual property rights of any third party in any material respect. To the knowledge of such Grantor, no third party is infringing, misappropriating, or otherwise violating any IP Collateral in any material respect.
Section 3.5 — No Third-Party Claims
No claim, action, suit, proceeding, or investigation is pending or, to the knowledge of such Grantor, threatened in writing by any Person alleging that the use of any IP Collateral by such Grantor infringes, dilutes, misappropriates, or otherwise violates the intellectual property rights of any third party. No claim, action, suit, proceeding, or investigation is pending or, to the knowledge of such Grantor, threatened in writing by any Person challenging the ownership, validity, registerability, or enforceability of any IP Collateral.
Section 3.6 — IP Licenses
Each IP License (whether such Grantor is the licensor or the licensee thereunder) listed on Schedule E hereto is in full force and effect, and constitutes a legal, valid, and binding obligation of such Grantor and, to the knowledge of such Grantor, of each other party thereto. No default or event of default, and no event that with the giving of notice or the lapse of time or both would constitute a default or event of default, exists on the part of such Grantor or, to the knowledge of such Grantor, any other party under any such IP License. No IP License contains any restriction, prohibition, or consent requirement on the grant of the security interest contemplated by this Agreement that has not been waived or consented to as of the date hereof, except to the extent that the enforcement of any such restriction, prohibition, or consent requirement would be rendered ineffective under Section 9-408 of the UCC or other applicable law.
Section 3.7 — No Prior Security Interests
No Grantor has previously granted any security interest in any of the IP Collateral to any Person, other than the security interest granted to Atlas Meridian Bank, N.A., as collateral agent, under that certain Security Agreement and intellectual Property Security Agreement, each dated as of June 14, 2019, entered into in connection with that certain Credit Agreement dated as of June 14, 2019, as amended (the "Existing Credit Agreement"), among the Borrower, Atlas Meridian Bank, N.A., as administrative agent and collateral agent, and the lenders party thereto, which liens and security interests are being terminated and released on the date hereof upon the repayment in full of all outstanding obligations under the Existing Credit Agreement in the aggregate principal amount of $879,375,000, together with all accrued and unpaid interest, fees, and other amounts due thereunder.
ARTICLE IV — COVENANTS
Each Grantor covenants and agrees with the Collateral Agent, for the benefit of the Secured Parties, that so long as any of the Obligations remain outstanding or any Lender has any commitment under the Credit Agreement:
Section 4.1 — Protection of IP Collateral
Each Grantor shall:
(a) Use commercially reasonable efforts to maintain and preserve the IP Collateral, including, without limitation, by diligently prosecuting all pending patent applications, trademark applications, and copyright applications, paying all maintenance fees, annuities, renewal fees, and other fees when due with respect to all issued Patents and registered Trademarks and Copyrights, and filing all required affidavits of use, declarations of continued use, statements of use, and similar filings with the USPTO and the U.S. Copyright Office, as applicable, in a timely manner;
(b) Not abandon, dedicate to the public, or permit to lapse or become unenforceable any material Patent, Trademark, or Copyright constituting IP Collateral without the prior written consent of the Collateral Agent (such consent not to be unreasonably withheld, conditioned, or delayed); provided, however, that such Grantor may abandon, dedicate to the public, or permit to lapse any Patent, Trademark, or Copyright if such Grantor determines in its reasonable business judgment that such abandonment, dedication, or lapse is in the best interests of its business and would not reasonably be expected to have a Material Adverse Effect (as defined in the Credit Agreement);
(c) Take all commercially reasonable steps to maintain the quality of goods and services manufactured, sold, or otherwise provided under or in connection with its Trademarks, including, without limitation, adequate quality control of all goods and services offered under such Trademarks, sufficient to preserve the validity and enforceability of such Trademarks and the goodwill associated therewith; and
(d) Not settle or compromise any material pending or threatened litigation, claim, or proceeding involving its IP Collateral without the prior written consent of the Collateral Agent (such consent not to be unreasonably withheld, conditioned, or delayed) if the terms of such settlement or compromise would materially impair the value of the IP Collateral or result in the loss, abandonment, or unenforceability of any material IP Collateral; provided that the foregoing consent requirement shall not apply to any settlement or compromise that (i) does not involve any admission of invalidity, unenforceability, or non-infringement with respect to any material IP Collateral, (ii) involves only the payment of monetary damages not in excess of $5,000,000 individually or $15,000,000 in the aggregate, and (iii) does not result in any injunction or restriction on the use of any material IP Collateral.
Section 4.2 — Prosecution and Defense
Each Grantor shall diligently prosecute and defend all of its material IP Collateral against infringement, counterfeiting, dilution, misappropriation, or other violation by third parties, and shall take all commercially reasonable actions to stop any such infringement, counterfeiting, dilution, misappropriation, or violation, including, without limitation, initiating and prosecuting legal proceedings where appropriate, except where failure to take such actions would not reasonably be expected to have a Material Adverse Effect. Each Grantor shall provide the Collateral Agent with prompt written notice of any material infringement, counterfeiting, dilution, or misappropriation of any IP Collateral of which such Grantor becomes aware.
Section 4.3 — No Transfer or Encumbrance
No Grantor shall sell, assign, transfer, convey, abandon, exchange, or otherwise dispose of, or grant an exclusive license in, or create or permit to exist any lien or encumbrance upon, any IP Collateral, except:
(a) Permitted Liens (as defined in the Credit Agreement);
(b) Sales, transfers, licenses, and other dispositions permitted by the Credit Agreement, including, without limitation, the negative covenants on dispositions and liens set forth in Sections 7.04 and 7.05 of the Credit Agreement;
(c) Non-exclusive licenses granted in the ordinary course of business consistent with past practice; and
(d) Transactions in connection with Permitted Investments, Permitted Acquisitions, or other transactions expressly permitted under the Credit Agreement.
Section 4.4 — Maintenance of Records
Each Grantor shall maintain complete and accurate records of all IP Collateral, including, without limitation, all registration numbers, application numbers, filing dates, issuance dates, renewal dates, maintenance fee deadlines, jurisdictions of registration, and current status of each Patent, Trademark, and Copyright included within the IP Collateral. Such records shall be maintained at such Grantor's chief executive office or at such other location as such Grantor may designate in a written notice to the Collateral Agent. The Collateral Agent and its representatives shall have the right, upon reasonable prior notice and during normal business hours, to inspect and audit such records.
Section 4.5 — Notices
Each Grantor shall promptly (and in any event within fifteen (15) Business Days) notify the Collateral Agent in writing of:
(a) Any claim, action, suit, proceeding, investigation, or other adverse proceeding commenced or, to the knowledge of such Grantor, threatened in writing against such Grantor concerning any material IP Collateral, including, without limitation, any claim of infringement, invalidity, unenforceability, dilution, misappropriation, or other violation;
(b) Any application for, or registration or issuance of, any Patent, Trademark, or Copyright acquired or filed by such Grantor after the date hereof, whether by application, assignment, purchase, license, or otherwise; and
(c) Any change in ownership, status, validity, or enforceability of any registered IP Collateral, including, without limitation, any abandonment, cancellation, expiration, or lapse of any Patent, Trademark registration, or Copyright registration.
ARTICLE V — FURTHER ASSURANCES; SUPPLEMENTS
Section 5.1 — Further Assurances
Each Grantor shall, at its own cost and expense, promptly execute and deliver all further instruments, documents, and agreements, and take all further actions, that the Collateral Agent may from time to time reasonably request, in order to perfect, protect, maintain, and continue the first priority of the security interests granted herein, and to enable the Collateral Agent to exercise and enforce its rights and remedies hereunder and under the other Loan Documents with respect to the IP Collateral. Without limiting the generality of the foregoing, each Grantor shall: (a) execute and deliver to the Collateral Agent such assignments, security agreements, instruments, and other documents as the Collateral Agent may reasonably request for filing with the USPTO, the U.S. Copyright Office, and any other applicable governmental authority, domestic or foreign; (b) execute and deliver financing statements and continuation statements as the Collateral Agent may reasonably request for filing under the UCC; and (c) cooperate with the Collateral Agent in obtaining any consents, waivers, or approvals that may be required in connection with the perfection or enforcement of the security interests granted herein.
Section 5.2 — Recordation
Each Grantor hereby authorizes the Collateral Agent to record this Agreement (or a short-form version or memorandum hereof in form reasonably acceptable to the Collateral Agent) with the USPTO and the U.S. Copyright Office and with any other applicable governmental authority, including, without limitation, any foreign patent, trademark, or copyright office, as the Collateral Agent may deem necessary or desirable to evidence, perfect, and protect the security interests granted herein. Each Grantor further authorizes the Collateral Agent to execute and file, on behalf of such Grantor, any documents necessary to effect such recordation. All filing fees, recording fees, search fees, and related costs and expenses incurred in connection with the foregoing shall be for the account of the Grantors and shall constitute Obligations secured hereunder.
Section 5.3 — Supplements and Updates to Schedules
Each Grantor shall, within thirty (30) days after acquiring or filing any new Patent, Trademark, or Copyright registration or application (or such longer period as the Collateral Agent may agree in writing):
(a) Notify the Collateral Agent in writing, identifying each such new Patent, Trademark, or Copyright (including applicable registration numbers, application numbers, filing dates, and descriptions);
(b) Execute and deliver to the Collateral Agent a supplement to this Agreement (a "Security Agreement Supplement") in substantially the form of Exhibit A hereto, identifying such new IP Collateral and confirming that the security interest granted herein extends to, and encumbers, such new IP Collateral; and
(c) Take all actions reasonably necessary to perfect the Collateral Agent's first-priority security interest in such new IP Collateral, including, without limitation, filing appropriate documents with the USPTO, the U.S. Copyright Office, or any other applicable governmental authority, and filing any amended or new financing statements or continuation statements as may be required under the UCC.
The Collateral Agent is hereby authorized to attach each Security Agreement Supplement to this Agreement, and each such supplement shall be deemed to form a part of this Agreement for all purposes.
ARTICLE VI — REMEDIES
Section 6.1 — Remedies Upon Event of Default
Upon the occurrence and during the continuance of an Event of Default under the Credit Agreement, the Collateral Agent shall have, in addition to all other rights and remedies granted under the Security Agreement, the Credit Agreement, and the other Loan Documents, and in addition to all other rights and remedies available at law or in equity (including, without limitation, the rights and remedies of a secured party under the UCC as in effect in the State of New York), the following rights and remedies, all of which may be exercised without notice to any Grantor (except as required by applicable law that cannot be waived):
(a) The right to use, practice, operate under, license, sublicense, or otherwise exploit the IP Collateral and the associated goodwill of the business, in the name of any Grantor or otherwise, for the purpose of completing, manufacturing, advertising, promoting, marketing, and selling any inventory, goods, work in progress, or other products, and for any other purpose reasonably relating to the realization of value from the IP Collateral and the other collateral securing the Obligations;
(b) The right to sell, assign, transfer, or otherwise dispose of the IP Collateral (including all associated goodwill) at public or private sale, on such terms and in such manner as the Collateral Agent may determine, in one or more lots, with or without any of the other collateral securing the Obligations, and the Collateral Agent may be the purchaser at any such public sale;
(c) The right to demand that each Grantor execute and deliver such documents and instruments, and take such actions, as may be necessary or desirable to transfer ownership of any or all of the IP Collateral to the Collateral Agent, its designee, or any purchaser, including, without limitation, assignments in recordable form for filing with the USPTO, the U.S. Copyright Office, and any other applicable governmental authority; and
(d) The right to notify any licensee, sublicensee, or other counterparty under any IP License to make all payments of royalties, license fees, and other amounts otherwise payable to any Grantor directly to the Collateral Agent, and to exercise all rights and remedies of the applicable Grantor under each such IP License, including the right to enforce compliance therewith and to exercise any termination rights of the applicable Grantor.
Each Grantor acknowledges and agrees that any such disposition of IP Collateral may be made without regard to any commercially unreasonable restriction on the sale or transfer of such IP Collateral contained in any license agreement to which such Grantor is a party, to the fullest extent permitted by applicable law. Each Grantor further agrees that ten (10) Business Days' prior written notice of any public sale or of the date after which any private sale may be made shall constitute commercially reasonable notice.
Section 6.2 — License to Collateral Agent
Each Grantor hereby grants to the Collateral Agent, for the benefit of the Secured Parties, effective upon the occurrence and during the continuance of an Event of Default under the Credit Agreement, an irrevocable (until such time as all Obligations have been paid in full and all commitments under the Credit Agreement have been terminated), non-exclusive, worldwide, royalty-free license (with the right to sublicense to any third party, including any purchaser of collateral) to use, practice, operate under, display, perform, reproduce, distribute, prepare derivative works of, and otherwise exploit the IP Collateral, solely for the purpose of exercising any and all remedies available to the Collateral Agent under this Agreement, the Security Agreement, the Credit Agreement, and the other Loan Documents, including, without limitation, selling, completing, manufacturing, distributing, advertising, and marketing inventory, goods, work in progress, and other products, and completing and performing contracts for goods and services.
Section 6.3 — Application of Proceeds
All cash proceeds received by the Collateral Agent in respect of any sale, collection, foreclosure, or other realization upon all or any part of the IP Collateral pursuant to the exercise of the Collateral Agent's rights and remedies hereunder shall be applied in accordance with the terms of the Credit Agreement and the Security Agreement, including, without limitation, the waterfall provisions set forth in Section 8.03 of the Credit Agreement.
ARTICLE VII — MISCELLANEOUS PROVISIONS
Section 7.1 — Governing Law
This Agreement and any claims, controversies, disputes, or causes of action (whether in contract, tort, or otherwise) based upon, arising out of, or relating to this Agreement and the transactions contemplated hereby shall be governed by, and construed in accordance with, the laws of the State of New York, without regard to conflicts of law principles thereof, other than Sections 5-1401 and 5-1402 of the New York General Obligations Law.
Section 7.2 — Jurisdiction; Waiver of Jury Trial
(a) Each party hereto irrevocably and unconditionally submits, for itself and its property, to the exclusive jurisdiction of the courts of the State of New York sitting in the Borough of Manhattan and of the United States District Court for the Southern District of New York, and any appellate court from any thereof, in any action or proceeding arising out of or relating to this Agreement, and each party hereto irrevocably and unconditionally agrees that all claims in respect of any such action or proceeding may be heard and determined in such New York state court or, to the fullest extent permitted by applicable law, in such United States federal court. Each party hereto agrees that a final judgment in any such action 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 Agreement shall affect any right that the Collateral Agent may otherwise have to bring any action or proceeding relating to this Agreement against any Grantor or its properties in the courts of any jurisdiction.
(b) EACH PARTY HERETO HEREBY IRREVOCABLY WAIVES, TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW, ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY IN ANY LEGAL PROCEEDING DIRECTLY OR INDIRECTLY ARISING OUT OF OR RELATING TO THIS AGREEMENT OR THE TRANSACTIONS CONTEMPLATED HEREBY (WHETHER BASED ON CONTRACT, TORT, OR ANY OTHER THEORY). EACH PARTY HERETO (i) CERTIFIES THAT NO REPRESENTATIVE, AGENT, OR ATTORNEY OF ANY OTHER PERSON HAS REPRESENTED, EXPRESSLY OR OTHERWISE, THAT SUCH OTHER PERSON WOULD NOT, IN THE EVENT OF LITIGATION, SEEK TO ENFORCE THE FOREGOING WAIVER AND (ii) ACKNOWLEDGES THAT IT AND THE OTHER PARTIES HERETO HAVE BEEN INDUCED TO ENTER INTO THIS AGREEMENT BY, AMONG OTHER THINGS, THE MUTUAL WAIVERS AND CERTIFICATIONS IN THIS SECTION 7.2(b).
Section 7.3 — Counterparts
This Agreement may be executed in one or more 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 of this Agreement by facsimile or other electronic imaging means (including in .pdf or .tif format) or by electronic signature (including any electronic signature complying with the New York Electronic Signatures and Records Act (N.Y. State Tech. §§ 301-309), as amended from time to time, or other applicable law, e.g., www.Brightwater Software.com) shall be effective as delivery of a manually executed counterpart of this Agreement.
Section 7.4 — Amendments and Waivers
No amendment, modification, supplement, or waiver of any provision of this Agreement, and no consent to any departure by any Grantor therefrom, shall be effective unless it is in writing and signed by the Collateral Agent and each Grantor affected thereby (or, in the case of a waiver, by the Collateral Agent), and each such waiver or consent shall be effective only in the specific instance and for the specific purpose for which given. Any amendment, modification, or waiver of this Agreement shall be subject to the requirements and limitations set forth in the Credit Agreement, including Section 10.01 thereof.
Section 7.5 — Termination and Release
(a) This Agreement and the security interests granted herein shall automatically terminate and be released upon the earliest to occur of:
(i) the payment in full in cash of all Obligations under the Credit Agreement (other than contingent indemnification and expense reimbursement obligations for which no claim has been made) and the termination or expiration of all commitments of the Lenders under the Credit Agreement; and
(ii) as otherwise provided in the Credit Agreement or the Security Agreement, including, without limitation, releases in connection with (A) any sale, transfer, or other disposition of property permitted under the Credit Agreement (in which case the security interest in the IP Collateral so sold, transferred, or disposed of, but not any other IP Collateral, shall be released), (B) any release of a Guarantor from its obligations under the Guarantee Agreement in accordance with the terms thereof, and (C) any other release or discharge expressly provided for in the Credit Agreement or the Security Agreement.
(b) Upon any termination of this Agreement or release of any IP Collateral pursuant to this Section 7.5, the Collateral Agent shall, at the Grantors' sole cost and expense, promptly execute and deliver to the applicable Grantor all instruments, documents, and agreements reasonably requested by such Grantor to evidence such termination or release, including, without limitation, UCC-3 termination statements, assignments, releases, and such other documents as may be necessary or appropriate for recording with the USPTO, the U.S. Copyright Office, and any other applicable governmental authority.
Section 7.6 — No Assumption of Obligations
The Collateral Agent shall have no obligation or liability under any IP License or any other agreement, contract, or instrument to which any Grantor is a party or by which any Grantor or any of its property is bound, by reason of or arising out of this Agreement or the receipt by the Collateral Agent of any payment relating to any IP Collateral pursuant hereto. The Collateral Agent shall not be required or obligated in any manner to perform or fulfill any of the obligations or duties of any Grantor under or pursuant to any IP License or other agreement included within the IP Collateral, or to make any payment, or to make any inquiry as to the nature or sufficiency of any payment received by it or the sufficiency of any performance by any party thereunder, or to present or file any claim, or to take any action to collect or enforce any performance or the payment of any amounts that may have been assigned to it or to which it may be entitled at any time or times.
Section 7.7 — Successors and Assigns
This Agreement shall be binding upon each Grantor, its successors and assigns (including, without limitation, any debtor-in-possession on behalf of such Grantor), and shall inure to the benefit of the Collateral Agent and its successors and assigns, including, without limitation, any successor Collateral Agent appointed pursuant to the provisions of the Credit Agreement. No Grantor may assign or delegate any of its rights or obligations hereunder without the prior written consent of the Collateral Agent (which consent may be granted or withheld in the Collateral Agent's sole discretion). The Collateral Agent may assign or delegate its rights and obligations hereunder in accordance with the provisions of the Credit Agreement governing the resignation and removal of the Collateral Agent and the appointment of a successor Collateral Agent.
Section 7.8 — Severability
If any provision of this Agreement is held to be illegal, invalid, or unenforceable, (a) the legality, validity, and enforceability of the remaining provisions of this Agreement shall not be affected or impaired thereby, and (b) the parties hereto shall endeavor in good faith negotiations to replace the illegal, invalid, or unenforceable provision with a valid provision the economic effect of which comes as close as possible to that of the illegal, invalid, or unenforceable provision. The invalidity of a provision in a particular jurisdiction shall not invalidate or render unenforceable such provision in any other jurisdiction.
Section 7.9 — Headings
The section headings and table of contents used herein are for convenience of reference only, are not part of this Agreement, and shall not affect the construction of, or be taken into consideration in interpreting, this Agreement.
Section 7.10 — Conflicts with Security Agreement
In the event of any conflict or inconsistency between the terms and provisions of this Agreement and the terms and provisions of the Security Agreement, the Security Agreement shall govern and control in all respects, except that the provisions of this Agreement that specifically address the form, substance, filing, and recording of security interests in intellectual property with the USPTO and the U.S. Copyright Office (including Section 5.2, Section 5.3, and Article VI to the extent relating to the transfer, assignment, or recording of IP Collateral with the USPTO or the U.S. Copyright Office) shall govern and control to the extent inconsistent with the Security Agreement.
Section 7.11 — Notices
All notices, requests, demands, consents, instructions, and other communications required or permitted to be given to or made upon any party hereto shall be in writing and shall be given in accordance with the notice provisions set forth in Section 10.02 of the Credit Agreement.
Notices to the Borrower (on behalf of itself and each other Grantor) shall be directed to:
Nexford Industrial Holdings Inc. 1400 Industrial Parkway Schaumburg, Illinois 60173
Attention: David Engstrom, General Counsel & Corporate Secretary
Telephone: (847) 555-4200
Email: dengstrom@nexfordindustrial.com
with a copy to:
Priya Mehta, Vice President, Treasury & Corporate Finance Telephone: (847) 555-4218
Email: pmehta@nexfordindustrial.com
Notices to the Collateral Agent shall be directed to:
Crescent Harbor Bank, N.A. 320 Federal Street Boston, Massachusetts 02110
Attention: Elaine Prescott, Managing Director, Leveraged Finance
Telephone: (617) 555-8300
Email: elaine.prescott@crescentharbor.com
or to such other address or person as either party may designate from time to time by notice in accordance with this Section 7.11.
[Remainder of this page intentionally left blank; signature pages follow.]
IN WITNESS WHEREOF, the parties hereto have caused this intellectual Property Security Agreement to be duly executed and delivered by their respective authorized officers as of the date first above written.
GRANTORS:
NEXFORD INDUSTRIAL HOLDINGS INC., as Borrower
By: ________
Name: Michelle Kaplan
Title: Chief Financial Officer
GRANITE PEAK NIH HOLDINGS, LLC, as Holdings Guarantor
By: Nexford Industrial Holdings Inc., its managing member
By: ________
Name: James Thornton
Title: Chief Executive Officer
NEXFORD PRECISION COMPONENTS, INC., as Subsidiary Guarantor
By: ________
Name: David Engstrom
Title: Vice President and Secretary
NEXFORD ENGINEERED SYSTEMS, LLC, as Subsidiary Guarantor
By: Nexford Industrial Holdings Inc., its sole member
By: ________
Name: David Engstrom
Title: Vice President and Secretary
NEXFORD COATINGS & SURFACE TECHNOLOGIES, INC., as Subsidiary Guarantor
By: ________
Name: David Engstrom
Title: Vice President and Secretary