InspireMD, Inc. - FORM 8-K - EX-10.6 - INTELLECTUAL PROPERTY SECURITY AGREEMENT, DATED APRIL 5, 2012, BY AND BETWEEN INSPIREMD, INC., INSPIREMD LTD., INSPIRE MD GMBH AND THE BUYERS - April 6, 2012

Attached files

file filename
8-K - InspireMD, Inc.q1100430_8k-inspire.htm
EX-10.7 - DEPOSIT ACCOUNT CONTROL AGREEMENT, DATED APRIL 5, 2012, AMONG INSPIREMD, INC., THE BUYERS AND BANK LEUMI USA - InspireMD, Inc.q1100430_ex10-7.htm
EX-10.4 - REGISTRATION RIGHTS AGREEMENT, DATED APRIL 5, 2012, BY AND BETWEEN INSPIREMD, INC. AND THE BUYERS - InspireMD, Inc.q1100430_ex10-4.htm
EX-10.2 - FORM OF SENIOR SECURED CONVERTIBLE NOTE ISSUED APRIL 5, 2012 - InspireMD, Inc.q1100430_ex10-2.htm
EX-99.1 - PRESS RELEASE DATED APRIL [ ], 2012 - InspireMD, Inc.q1100430_ex99-1.htm
EX-10.8 - SUBSIDIARY GUARANTEE, DATED APRIL 5, 2012, BY INSPIREMD LTD. AND INSPIRE MD GMBH, IN FAVOR OF THE BUYERS - InspireMD, Inc.q1100430_ex10-8.htm
EX-10.9 - FIXED AND FLOATING CHARGE DEBENTURE, DATED APRIL 5, 2012, BY AND BETWEEN INSPIREMD LTD. AND THE BUYERS - InspireMD, Inc.q1100430_ex10-9.htm
EX-10.1 - SECURITIES PURCHASE AGREEMENT, DATED APRIL 5, 2012, BY AND BETWEEN INSPIREMD, INC. AND THE BUYERS THERETO - InspireMD, Inc.q1100430_ex10-1.htm
EX-10.3 - FORM OF COMMON STOCK PURCHASE WARRANT ISSUED APRIL 5, 2012 - InspireMD, Inc.q1100430_ex10-3.htm
EX-10.10 - FORM OF LOCK-UP AGREEMENT - InspireMD, Inc.q1100430_ex10-10.htm
EX-10.5 - SECURITY AGREEMENT, DATED APRIL 5, 2012, BY AND BETWEEN THE COMPANY, INSPIREMD LTD., INSPIRE MD GMBH AND THE BUYERS - InspireMD, Inc.q1100430_ex10-5.htm
 
INTELLECTUAL PROPERTY SECURITY AGREEMENT
 
THIS INTELLECTUAL PROPERTY SECURITY AGREEMENT is entered into as of April 5, 2012, among Inspire M.D Ltd, a company formed under the laws of the State of Israel (the “Company”) and the holders (together with their endorsees, transferees and assigns, the “Secured Parties”) of the 8% Original Issue Discount Senior Secured Convertible Debentures (collectively, the “Debentures”) issued by InspireMD, Inc., a Delaware corporation and the sole shareholder of the Company (“Parent”).
 
RECITALS
 
WHEREAS, pursuant to the Purchase Agreement (as defined in the Debentures), the Secured Parties have severally agreed to extend the loans to the Company evidenced by the Debentures;
 
WHEREAS, pursuant to a certain Subsidiary Guarantee, dated as of the date hereof (the “Guarantee”), the Company has agreed to guarantee and act as surety for payment of such Debentures; and
 
WHEREAS, in order to induce the Secured Parties to extend the loans evidenced by the Debentures, the Company has agreed to execute and deliver to the HUG Funding LLC (the “Agent”) this Agreement and to grant the Agent, for the benefit of the Secured Parties, a security interest in certain copyrights, trademarks and patents (as each term is described below) of the Company to secure the prompt payment, performance and discharge in full of all of the Parent’s obligations under the Debentures and the Company’s obligations under the Subsidiary Guarantee.
 
NOW, THEREFORE, for good and valuable consideration, receipt of which is hereby acknowledged, and intending to be legally bound, as collateral security for the prompt and complete payment when due of its obligations under the Subsidiary Guarantee, the Company hereby represents, warrants, covenants and agrees as follows:
 
AGREEMENT
 
 
1.
Grant of Security
 
To secure its obligations under the Subsidiary Guarantee and subject to the terms set forth therein and in the Security Agreement, the Company grants to the Agent, for the benefit of the Secured Parties, a security interest in all of the Company’s rights, priorities and privileges relating to intellectual property, whether arising under United States, multinational or foreign laws or otherwise (all of which shall collectively be called the “Intellectual Property Collateral”), including, without limitation, the following:
 
 (i)           all copyright rights throughout the universe (whether now or hereafter arising) in any and all media (whether now or hereafter developed), in and to all original works of authorship fixed in any tangible medium of expression, acquired or used by the Debtor, whether registered or unregistered and whether published or unpublished, all applications, registrations and recordings thereof (including, without limitation, applications, registrations and recordings in the United States Copyright Office or in any similar office or agency of the United States, any other union of countries, country or any political subdivision thereof), including without limitation those set forth on Exhibit A;
 
 
 
 
 
(ii)           domestic and foreign letters patent, design patents, utility patents, industrial designs, inventions, trade secrets, ideas, concepts, methods, techniques, processes, proprietary information, technology, know-how, formulae, rights of publicity and other general intangibles of like nature, now existing or hereafter acquired, all applications, registrations and recordings thereof (including, without limitation, applications, registrations and recordings in the United States Patent and Trademark Office, or in any similar office or agency of the United States or union of countries, any other country or any political subdivision thereof), and all reissues, divisions, continuations, continuations in part and extensions or renewals thereof, , including without limitation the patents and patent applications set forth on Exhibit B attached hereto;
 
(iii)           all trademarks, trade names, corporate names, company names, business names, fictitious business names, trade dress, service marks, logos, domain names and other source or business identifiers, and all goodwill associated therewith, now existing or hereafter adopted or acquired, all registrations and recordings thereof, and all applications in connection therewith, (including, without limitation, applications, registrations and recordings in the United States Patent and Trademark Office, or in any similar office or agency of the United States or union of countries, any other country or any political subdivision thereof), and all reissues, divisions, continuations, continuations in part and extensions or renewals thereof, and all common law rights related thereto, together with all goodwill of the business symbolized by such marks and all customer lists, formulae and other records of the Debtor relating to the distribution of products and services in connection with which any of such marks are used, including without limitation those set forth on Exhibit C attached hereto;
 
(iv)           all trade secrets arising under the laws of the United States, any other union of countries, country or any political subdivision thereof;
 
(v)           all rights to obtain any reissues, renewals or extensions of the foregoing;
 
(vi)           all licenses for any of the foregoing; and
 
(vii)            all causes of action for infringement of the foregoing.
 
This security interest is granted in conjunction with the security interest granted to the Agent, for the benefit of the Secured Parties, pursuant to that certain Security Agreement, dated as of even date herewith, by the Parent and the Company for the benefit of the Agent and the Secured Parties.  The rights and remedies of the Agent with respect to the security interest granted hereby are in addition to those set forth in the Security Agreement and the Subsidiary Guarantee, and those which are now or hereafter available to the Agent and the Secured Parties as a matter of law or equity.  Each right, power and remedy of the Agent or the Secured Parties provided for herein or in the Security Agreement or the Subsidiary Guarantee, or now or hereafter existing at law or in equity shall be cumulative and concurrent and shall be in addition to every right, power or remedy provided for herein and the exercise by the Agent of any one or more of the rights, powers or remedies provided for in this Intellectual Property Security Agreement, the Security Agreement or the Subsidiary Guarantee, or now or hereafter existing at law or in equity, shall not preclude the simultaneous or later exercise by any person, including the Agent, of any or all other rights, powers or remedies. In the event of any contradiction between this Intellectual Property Security Agreement and the Security Agreement, the provisions of the Security Agreement will prevail.
 
 
 
 
 
 
2.
Miscellaneous
 
This Intellectual Property Security Agreement may be executed in any number of counterparts and by different parties on separate counterparts, each of which, when executed and delivered, is an original, and all taken together, constitute one Intellectual Property Security Agreement.
 
[Signature Page Follows.]
 
 
 
 
 
IN WITNESS WHEREOF, the parties have caused this Intellectual Property Security Agreement to be duly executed by its officers thereunto duly authorized as of the first date written above.
 

   
GRANTOR:
Address of Grantor:
    
   
INSPIRE M.D LTD
4 Menorat Hamaor St.
    
Tel Aviv, Israel
    
67448
  
By: /s/ Ofir Paz
   
Name: Ofir Paz
Attn:  Craig Shore
  
Title: Chief Executive Officer
     

[Signature Page of Secured Parties Follows]
 
 
 
[Company Signature Page – Intellectual Property Security Agreement]
 
 
 
 
 
 
SECURED PARTIES:
   
 
HUG FUNDING LLC
   
   
 
By: /s/ Daniel Saks
   
Name: Daniel Saks
   
Title: Managing Member
   
   
 
GENESIS OPPORTUNITY FUND LP
   
   
 
By: /s/ Daniel Saks
   
Name: Daniel Saks
   
Title: Managing Member
   
   
 
GENESIS ASSET OPPORTUNITY FUND LP
   
   
 
By: /s/ Daniel Saks
   
Name: Daniel Saks
   
Title: Managing Member
   
   
 
AYER CAPITAL PARTNERS MASTER
 
FUND, L.P.
   
 
By: /s/ Jay Venkatesan
   
Name: Jay Venkatesan
   
Title: Managing Member
   
   
 
AYER CAPITAL PARTNERS KESTREL
 
FUND, LP
   
 
By: /s/ Jay Venkatesan
   
Name: Jay Venkatesan
   
Title: Managing Member
     
     
 
EPWORTH-AYER CAPITAL
     
     
 
By: /s/ Jay Venkatesan
   
Name: Jay Venkatesan
   
Title: Managing Member
 
 
[Secured Party Signature Page – Intellectual Property Security Agreement]
 
 
 
 
 
EXHIBIT A

Copyrights

None.
 
 
 
 
 
EXHIBIT B

Patents


Title
Patent/Patent Application  Number (Publication Number)
Issue/Filing Date
STENT WITH SHEATH AND METAL WIRE RETAINER (PCT)
PCT/IB2011/055758
12/18/2011
OPTIMIZED STENT JACKET (USA)
12/791,008
06/01/2010
OPTIMIZED STENT JACKET (EUROPE)
07827415.6
11/21/2007
OPTIMIZED STENT JACKET (ISRAEL)
198,665
11/21/2007
OPTIMIZED STENT JACKET (CANADA)
2670724
11/21/2007
OPTIMIZED STENT JACKET (CHINA)
200780043259.2
11/21/2007
OPTIMIZED STENT JACKET (INDIA)
4088DELNP2009
11/21/2007
BIFURCATED STENT ASSEMBLIES  (USA)
11/797,168
05/01/2007
BIFURCATED STENT ASSEMBLIES  (ISRAEL)
198188
10/18/2007
BIFURCATED STENT ASSEMBLIES (USA)
12/445,968
04/17/2009
BIFURCATED STENT ASSEMBLIES (CANADA)
2666706
10/18/2007
BIFURCATED STENT ASSEMBLIES (EUROPE)
07827227.5
10/18/2007
BIFURCATED STENT ASSEMBLIES (CHINA)
200780046676.2
10/18/2007
BIFURCATED STENT ASSEMBLIES (INDIA)
3113DELNP2009
10/18/2007
 
 
 
 
 
IN VIVO FILTER ASSEMBLY (USA)
8,043,323 / 11/582,354
10/25/2011 / 10/18/2006
IN VIVO FILTER ASSEMBLY  (USA)
13/237,977
09/21/2011
STENT APPARATUSES FOR TREATMENT VIA BODY LUMENS AND METHODS OF USE  (USA)
11/920,972
11/23/2007
STENT APPARATUSES FOR TREATMENT VIA BODY LUMENS AND METHODS OF USE (EUROPE)
06745069.2
05/24/2006
STENT APPARATUSES FOR TREATMENT VIA BODY LUMENS AND METHODS OF USE (CANADA)
2,609,687
05/24/2006
STENT APPARATUSES FOR TREATMENT VIA BODY LUMENS AND METHODS OF USE (SOUTH AFRICA)
2007/10751  / 2007/10751
05/24/2006 / 10/27/2010
STENT APPARATUSES FOR TREATMENT VIA BODY LUMENS AND METHODS OF USE (ISRAEL)
187516
05/24/2006
FILTER ASSEMBLIES  (USA)
12/445,972
04/17/2009
FILTER ASSEMBLIES (EUROPE)
07827228.3
10/18/2007
FILTER ASSEMBLIES (ISRAEL)
198189
10/18/2007
FILTER ASSEMBLIES (CANADA)
2666712
10/18/2007
FILTER ASSEMBLIES (CHINA)
200780046659.9
10/18/2007
FILTER ASSEMBLIES (INDIA)
3114DELNP2009
10/18/2007
KNITTED STENT JACKETS  (USA)
12/445,980
04/17/2009
KNITTED STENT JACKETS (ISRAEL)
198190
10/18/2007
KNITTED STENT JACKETS (EUROPE)
07827229.1
10/18/2007
 
 
 
 
 
KNITTED STENT JACKETS (CANADA)
2666728
10/18/2007
KNITTED STENT JACKETS (CHINA)
200780046697.4
10/18/2007
KNITTED STENT JACKETS (INDIA)
3171DELNP2009
10/18/2007
 
 
 
 
 
EXHIBIT C

Trademarks

Description
Registration/
Application
Number
Registration/
Application
Date
INSPIREMD (wordmark) (EUROPE)
008642118
10/27/2009
MGUARD (wordmark) (EUROPE)
008642175
10/27/2009



 

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