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EXHIBIT 10.10
AGREEMENT
(PATENTS)
THIS AGREEMENT (PATENTS) (this "AGREEMENT"), dated as September 15,
1997, is made by PACKAGED ICE, INC., a Texas corporation ("GRANTOR"), in favor
of THE FROST NATIONAL BANK, a national banking association, as agent (in such
capacity, the "AGENT") for the Banks (defined below).
W I T N E S S E T H:
WHEREAS, pursuant to a Credit Agreement, dated as of September 15,
1997 (together with all amendments and other modifications, if any, from time
to time thereafter made thereto, the "CREDIT AGREEMENT") by and among Grantor,
the various financial institutions (individually a "BANK" and collectively the
"BANKS") as are, or may from time to time become, parties thereto, and Agent,
the Banks have extended "Commitments" (as defined in the Credit Agreement) to
make "ADVANCES" (as defined in the Credit Agreement) to Grantor;
WHEREAS, in connection with the Credit Agreement, Grantor has executed
and delivered a Security Agreement dated as of the date hereof (together with
all amendments and other modifications, if any, from time to time thereafter
made thereto, the "SECURITY AGREEMENT");
WHEREAS, as a condition precedent to the making of Advances under the
Credit Agreement, Grantor is required to execute and deliver this Agreement and
to grant to Agent a continuing security interest in all of the Patent
Collateral (as defined below) to secure the Obligations; and
WHEREAS, Grantor has duly authorized the execution, delivery and
performance of this Agreement;
NOW, THEREFORE, for good and valuable consideration, the receipt of
which is hereby acknowledged, and in order to induce the Banks to make Advances
to Grantor pursuant to the Credit Agreement, Grantor agrees, for the benefit of
each of the Bank, as follows:
SECTION 1. Definitions. Unless otherwise defined herein or the
context otherwise requires, terms used in this Agreement, including its
preamble and recitals, have the meanings provided in the Security Agreement.
SECTION 2. Grant of Security Interest. For good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, to
secure all of the Obligations, Grantor does hereby mortgage, pledge and
hypothecate to Agent, and grant to Agent a security interest in, for its
benefit and the benefit of each of the Banks, all of the following property
(the "PATENT COLLATERAL"), whether now owned or hereafter acquired or existing:
(a) all patents (the "PATENTS"), now existing anywhere in the
world or hereafter acquired, whether currently in use or not, all
records thereof and all patent applications prepared now or hereafter,
including divisional, continuation, and continuation-in-part
applications, whether pending or in preparation for filing, including
applications in the United States
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Patent and Trademark Office or any foreign country, including, but not
limited to those referred to in ITEM A of SCHEDULE I attached hereto;
(b) all Patent licenses, including each Patent license referred to
in ITEM B of SCHEDULE I attached hereto;
(c) all reissues, extensions, or renewals of any of the items
described in clauses (a) and (b);
(d) all proceeds of, and rights associated with, the foregoing,
including any claim by Grantor against third parties for past, present
or future infringement of any Patent, whether owned by or licensed to
Grantor, and any violation or breach of any conditions of any Patent
license, including, but not limited to any Patent or Patent license
referred to in ITEM A and ITEM B of SCHEDULE I attached hereto.
SECTION 3. Security Agreement. This Agreement has been executed and
delivered by Grantor for the purpose of registering the security interest of
Agent in the Patent Collateral with the United States Patent and Trademark
Office and corresponding offices in other countries of the world. The security
interest granted hereby has been granted as a supplement to, and not in
limitation of, the security interest granted to Agent for its benefit and the
benefit of each of the Banks under the Security Agreement. The Security
Agreement (and all rights and remedies of Agent and each of the Banks
thereunder) shall remain in full force and effect in accordance with its terms.
SECTION 4. Release of Security Interest. Upon payment in full of all
Obligations and the termination of all Commitments, Agent shall, at Grantor's
expense, execute and deliver to Grantor all instruments and other documents as
may be necessary or proper to release the lien on and security interest in the
Patent Collateral which has been granted hereunder.
SECTION 5. Acknowledgment. Grantor does hereby further acknowledge
and affirm that the rights and remedies of Agent with respect to the security
interest in the Patent Collateral granted hereby are more fully set forth in
the Security Agreement, the terms and provisions of which (including the
remedies provided for therein) are incorporated by reference herein as if fully
set forth herein.
SECTION 6. Loan Paper, etc. This Agreement is a Loan Paper executed
pursuant to the Credit Agreement and shall (unless otherwise expressly
indicated herein) be construed, administered and applied in accordance with the
terms and provisions of the Credit Agreement.
SECTION 7. Counterparts. This Agreement may be executed by parties
hereto in several counterparts, each of which shall be deemed to be an original
and all of which shall constitute together but one and the same agreement.
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly
executed and delivered by their respective officers thereunto duly authorized
as of the day and year first above written.
PACKAGED ICE, INC., a Texas corporation
By:
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▇▇▇▇▇ ▇. ▇▇▇▇▇▇, Chief Executive Officer
THE FROST NATIONAL BANK, a national
banking association
By:
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▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇, Senior Vice President
PII Agreement (Patent)
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SCHEDULE I
TO
PATENT AGREEMENT
ITEM A.
REGISTERED PATENTS
Country Patent Registration No. Registration Date
------- ------ ---------------- -----------------
United States 1 5,109,651 10/05/90
Taiwan 1 UM-89642 10/15/91
Taiwan 1 UM-87144 10/15/91
Mexico 1 178614 10/04/91
Australia 1 646999 10/01/91
Brazil 1 9106944-0 10/01/91
United States 2 5,458,851 10/29/93
United States 3 5,630,310 10/10/95
United States 4 5,581,982 10/10/95
PENDING PATENT APPLICATIONS
Country Patent Serial No. Filing Date
------- ------ ---------- -----------
China 1 91110837.8 10/05/91
India 1 1006/Del/91 10/22/91
Patent Cooperation 1 PCT/US91/07214 10/01/91
Treaty
Canada 1 2093337 10/01/91
European Patent Office 92900332.5 10/01/91
Japan 1 04-501236 10/01/91
Patent Cooperation ▇▇▇▇▇▇ ▇, ▇, & ▇ ▇▇▇/▇▇▇▇/▇▇▇▇▇ ▇▇/▇▇/▇▇
▇▇▇▇▇ 2, 3, & 4 94 1 94331.3 10/29/94
▇▇▇▇▇▇ ▇, ▇, & ▇ ▇▇ ▇▇▇▇ ▇▇/▇▇/▇▇
▇▇▇▇▇▇ 2, 3, & 4 PI 9407927-7 10/29/94
Australia 2, 3, & 4 10850/95 10/29/94
▇▇▇▇▇ ▇, ▇, & ▇ ▇▇▇▇▇▇/▇▇ ▇▇/▇▇/▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇ 08/751,403 11/18/96
1 Automatic Ice Bagger.
2 Automatic Ice Bagger with Self-Contained Sanitizing System.
3 Method for Automatically Bagging Ice Using a Timer and
Multi-Positional Electronic Scale.
4 Method for Automatically Bagging Ice Using a Timer and
Multi-Positional Electronic Scale.
5 Grip for a Grasping Device
PII Agreement (Patent)
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PATENT APPLICATIONS IN PREPARATION
Country Patent Docket No. Expected Filing Process/Machine
------- ------ ---------- Date ---------------
----
NONE
ITEM B. PATENT LICENSES
Country or Patent Licensor Licensee Effective Expiration
Territory ------ -------- -------- Date Date
--------- ---- ----
United States 5,440,863 Hoshizaki Electric Packaged Ice, Inc. 5/28/93 Perpetual
Co., Ltd. and
Hoshizaki America,
Inc.
United States 5,473,865 Hoshizaki Electric Packaged Ice, Inc. 5/28/93 Perpetual
Co., Ltd. and
Hoshizaki America,
Inc.
United Kingdom 0 518 382 Hoshizaki Electric Packaged Ice, Inc. 5/28/93 Perpetual
Co., Ltd. and
Hoshizaki America,
Inc.
