PATENT COLLATERAL ASSIGNMENT AND SECURITY AGREEMENT
PATENT COLLATERAL SECURITY AND PLEDGE AGREEMENT dated as of August 13,
1999 (the "Patent Agreement"), between REPUBLIC TECHNOLOGIES INTERNATIONAL, LLC,
a Delaware limited liability company having its principal place of business at
0000 Xxxxxxx Xxxxxxx, Xxxxx, XX 00000, (the "Borrower"), and BANKBOSTON, N.A., a
national banking association having an office at 000 Xxxxxxx Xxxxxx, Xxxxxx,
Xxxxxxxxxxxxx 00000, as administrative agent (hereinafter, in such capacity, the
"Agent") for itself and other lending institutions (hereinafter, collectively,
the "Banks") which are, or may in the future become, parties to a Revolving
Credit Agreement of even date herewith (as amended and in effect from time to
time, the "Credit Agreement"), among the Borrower, the Banks, the Agent and the
other parties thereto.
WHEREAS, it is a condition precedent to the Banks' making any loans or
otherwise extending credit to the Borrower under the Credit Agreement that the
Borrower execute and deliver to the Agent, for the benefit of the Banks and the
Agent, a patent agreement in substantially the form hereof;
NOW, THEREFORE, in consideration of the premises contained herein and for
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties hereto hereby agree as follows:
1. DEFINITIONS.
Capitalized terms used herein and not otherwise defined herein shall have
the respective meanings provided therefor in the Credit Agreement. In addition,
the following terms shall have the meanings set forth in this Section 1 or
elsewhere in this Patent Agreement referred to below:
Cast-Roll Patents. All Patents relating to equipment of the Borrower or
any of its Subsidiaries that is used exclusively or primarily at the Canton
Cast-Roll Facility.
Patent Agreement. This Patent Collateral Assignment and Security
Agreement, as amended and in effect from time to time.
Patent Collateral. All of the Borrower's right, title and interest in and
to all of the Pledged Patents, the Patent License Rights, and all other Patent
Rights, and all additions, improvements, and accessions to, all substitutions
for and replacements of, and all products and Proceeds (including insurance
proceeds) of any and all of the foregoing, and all books and records and
technical information and data describing or used in connection with any and all
such rights, interests, assets or property.
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Patent License Rights. Any and all past, present or future rights and
interests of the Borrower pursuant to any and all past, present and future
licensing agreements in favor of the Borrower, or to which the Borrower is a
party, pertaining to any Pledged Patents, or Patent Rights, owned or used by
third parties in the past, present or future, including the right in the name of
the Borrower or the Agent to enforce, and xxx and recover for, any past, present
or future breach or violation of any such agreement.
Patent Rights. Any and all past, present or future rights in, to and
associated with the Pledged Patents throughout the world, whether arising under
federal law, state law, common law, foreign law, or otherwise, including but not
limited to the following: all such rights arising out of or associated with the
Pledged Patents; the right (but not the obligation) to register claims under any
federal, state or foreign patent law or regulation; the right (but not the
obligation) to xxx or bring opposition or bring cancellation proceedings in the
name of the Borrower or the Agent for any and all past, present and future
infringements of or any other damages or injury to the Pledged Patents or the
Patent Rights, and the rights to damages or profits due or accrued arising out
of or in connection with any such past, present or future infringement, damage
or injury; and the Patent License Rights.
Patents. All patents and patent applications, whether United States or
foreign, that are owned by the Borrower or in which the Borrower has any right,
title or interest, now or in the future, including, without limitation;
(a) all letters patent of the United States or any other country,
and all applications for letters patent of the United States or any other
country;
(b) all re-issues, continuations, divisions, continuations-in-part,
renewals or extensions thereof;
(c) the inventions disclosed or claimed therein, including the right
to make, use, practice and/or sell (or license or otherwise transfer or
dispose of) the inventions disclosed or claimed therein; and
(d) the right (but not the obligation) to make and prosecute
applications for such Patents.
Pledged Patents. All Patents, including, without limitation, the Cast-Roll
Patents and the patents and patent applications listed on Schedule A hereto (as
the same may be amended pursuant hereto from time to time).
Proceeds. Any consideration received from the sale, exchange, license,
lease or other disposition or transfer of any right, interest, asset or property
which constitutes all or any part of the Patent Collateral, any value received
as a consequence of the ownership, possession, use or practice of any Patent
Collateral, and any payment received from any insurer or other person or entity
as a result of the destruction or the loss, theft or other involuntary
conversion of whatever nature
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of any right, interest, asset or property which constitutes all or any part of
the Patent Collateral.
PTO. The United States Patent and Trademark Office.
2. GRANT OF SECURITY INTEREST.
To secure the payment and performance in full of all of the Obligations,
the Borrower hereby unconditionally grants to the Agent, for the benefit of the
Banks, a continuing security interest in and first priority lien on the Patent
Collateral; and in furtherance thereof, the Borrower hereby grants, assigns,
transfers and conveys to the Agent, for the benefit of the Banks and the Agent,
BY WAY OF COLLATERAL SECURITY, all of the Patent Collateral. NEITHER THE AGENT
NOR ANY OF THE BANKS ASSUMES ANY LIABILITY ARISING IN ANY WAY BY REASON OF ITS
HOLDING SUCH COLLATERAL SECURITY.
Notwithstanding the foregoing provisions of this Section 2, such grant of
security interest shall not extend to, and the term "Patent Collateral" shall
not include, any chattel paper, general intangibles and any intellectual
property which are now or hereafter held by the Borrower as licensee, lessee or
otherwise, to the extent that (i) such chattel paper, general intangibles and
such intellectual property are not assignable or capable of being encumbered as
a matter of law or under the terms of the license, lease or other agreement
applicable thereto (but solely to the extent that any such restriction shall be
enforceable under applicable law), without the consent of the licensor or lessor
thereof or other applicable party thereto and (ii) such consent has not been
obtained; provided, however, that the foregoing grant of security interest shall
extend to, and the term "Patent Collateral" shall include, (A) any and all
proceeds of such chattel paper, general intangibles and such intellectual
property to the extent that the assignment or encumbering of such proceeds is
not so restricted and (B) upon any such licensor, lessor or other applicable
party consent with respect to any such otherwise excluded chattel paper, general
intangibles and such intellectual property being obtained (including, without
limitation, any such consent contained in the Other Asset Intercreditor
Agreement), thereafter such chattel paper, general intangibles and such
intellectual property as well as any and all proceeds thereof that might have
theretofore have been excluded from such grant of a security interest and the
term "Patent Collateral".
3. REPRESENTATIONS, WARRANTIES AND COVENANTS.
The Borrower represents, warrants and covenants that: except, to the
extent the failure of the following to be true would not have a Material Adverse
Effect, (i) Schedule A attached hereto sets forth a true and complete list of
all of the subsisting patents (federal and foreign) and pending patent
applications (federal and foreign) owned by the Borrower (the "Section 3
Patents"); (ii) the issued Section 3 Patents are subsisting and have not been
adjudged invalid or unenforceable, in whole or in part, and there is no
litigation or proceeding pending concerning the validity or enforceability of
the issued Section 3 Patents; (iii) to the best of the Borrower's knowledge,
each of the issued Section 3 Patents is valid and enforceable; (iv) to the best
of the Borrower's knowledge, there
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is no infringement by others of the issued Section 3 Patents or Patent Rights;
(v) no claim is pending that the use by the Borrower, or to the knowledge of the
Borrower, any licensee of the Borrower, of any of the Section 3 Patents does or
may violate the rights of any third person, and to the best of the Borrower's
knowledge there is no infringement by the Borrower of the patent rights of
others; (vi) the Borrower owns the Section 3 Patents, free and clear of any
liens, charges, encumbrances and adverse claims, including without limitation
pledges, assignments, licenses, shop rights and covenants by the Borrower not to
xxx third persons, other than the security agreement and mortgage created by the
Security Agreement and this Patent Agreement and other security interests
permitted by the Credit Agreement; (vii) the Borrower has the right to enter
into this Patent Agreement and perform its terms and has entered and will enter
into appropriate agreements with all relevant present and future employees,
agents, consultants, licensors and licensees which will enable it to comply with
the covenants herein contained; (viii) this Patent Agreement, together with the
Security Agreement, will create in favor of the Agent, for the benefit of the
Banks, a valid and perfected first priority security interest in the Section 3
Patents upon making the filings referred to in clause (ix) of this Section 3;
and (ix) except for the filing of financing statements in the State of Ohio
under the Uniform Commercial Code and the filing of this Patent Agreement with
the PTO, no authorization, approval or other action by, and no notice to or
filing with, any governmental or regulatory authority, agency or office is
required either (1) for the grant by the Borrower or the effectiveness of the
security interest and assignment granted hereby or for the execution, delivery
and performance of this Patent Agreement by the Borrower, or (2) for the
perfection of or the exercise by the Agent of any of its rights and remedies
hereunder.
4. NO TRANSFER OR INCONSISTENT AGREEMENTS.
Without the Agent's prior written consent, and except for the license of
Patent Collateral in the ordinary course of the Borrower's business or as
permitted by the Credit Agreement, the Borrower will not (i) mortgage, pledge,
assign, encumber, grant a security interest in, transfer, license or alienate
any of the Patent Collateral, or (ii) enter into any agreement (for example, a
license agreement) that is inconsistent with the Borrower's obligations under
this Patent Agreement or the Security Agreement.
5. AFTER-ACQUIRED PATENTS, ETC.
5.1. After-acquired Patents. If, before the Obligations shall have been
finally paid and satisfied in full, the Borrower shall obtain any right, title
or interest in or to any other or new patents, patent applications or patentable
inventions or become entitled to the benefit of any patent application or patent
or any reissue, division, continuation, renewal, extension, or
continuation-in-part of any of the Patent Collateral or any improvement on any
of the Patent Collateral, the provisions of this Patent Agreement shall
automatically apply thereto and the Borrower shall provide to the Agent on a
quarterly basis a written notice of any new or additional patents (federal or
foreign) and patent applications (federal or foreign) of the Borrower in writing
and execute and deliver to the Agent such documents or
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instruments as the Agent may reasonably request further to transfer title
thereto to the Agent, for the benefit of the Banks and the Agent to validate the
Agent's rights hereunder.
5.2. Amendment to Schedule. The Borrower authorizes the Agent to modify
this Patent Agreement, without the necessity of the Borrower's further approval
or signature, only to amend Schedule A hereto to include any future or other
Pledged Patents or Patent Rights under Section 2 or Section 5 hereof.
6. PATENT PROSECUTION.
6.1. Borrower Responsible. The Borrower shall assume full and complete
responsibility for the prosecution, grant, enforcement or any other necessary or
desirable actions in connection with the Patent Collateral, and shall hold the
Agent and the Banks harmless from any and all reasonable costs, damages,
liabilities and expenses which may be incurred by the Agent or any of the Banks
in connection with the Agent's title to any of the Patent Collateral or any
other action or failure to act in connection with this Patent Agreement or the
transactions contemplated hereby. In respect of such responsibility, the
Borrower shall retain qualified counsel.
6.2. Borrower's Duties, etc. The Borrower shall have the duty, consistent
with its reasonable business judgment through qualified counsel, to prosecute
diligently any patent applications of the Patents pending as of the date of this
Patent Agreement or thereafter that constitute Pledged Patents, to make
application for unpatented but reasonably patentable inventions and to preserve
and maintain all rights in the Pledged Patents, including without limitation the
payment when due of all maintenance fees and other fees, taxes and other
expenses which shall be incurred or which shall accrue with respect to any of
the Pledged Patents. Any expenses incurred in connection with such applications
and actions shall be borne by the Borrower. Except in the exercise of its
reasonable business judgment, the Borrower shall not abandon any filed patent
application, or any pending patent application or patent, without the consent of
the Agent, which consent shall not be unreasonably withheld. The Agent hereby
appoints the Borrower as its agent for all matters referred to in the foregoing
provisions of this Section 6 and agrees to execute any documents necessary to
confirm such appointment. Upon the occurrence and during the continuance of an
Event of Default, the Agent may terminate such agency by providing written
notice of termination to the Borrower.
6.3. Borrower's Enforcement Rights. The Borrower shall have the right and
the duty, consistent with its reasonable business judgment, to bring suit or
other action in the Borrower's own name to enforce the Pledged Patents and the
Patent Rights. The Agent shall be required to join in such suit or action as may
be necessary to assure the Borrower's ability to bring and maintain any such
suit or action in any proper forum so long as the Agent is completely satisfied
that such joinder will not subject the Agent or any of the Banks to any risk of
liability. The Borrower shall promptly, upon demand, reimburse and indemnify the
Agent and the
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Banks for all damages, costs and expenses, including reasonable legal fees,
incurred by the Agent and any of the Banks pursuant to this Section 6.
6.4. Protection of Patents, etc. In general, the Borrower shall take any
and all such actions (including but not limited to institution and maintenance
of suits, proceedings or actions) consistent with its reasonable business
judgment as may be necessary or appropriate to properly maintain, protect,
preserve, care for and enforce the material Patent Collateral. The Borrower
shall not knowingly take or fail to take any action, nor knowingly permit any
action to be taken or not taken by others under its control, which would
materially affect the validity, grant or enforcement of any of the Patent
Collateral.
6.5. Notification by Borrower. Promptly upon obtaining knowledge thereof,
the Borrower will notify the Agent in writing of the institution of, or any
final adverse determination in, any proceeding in the PTO or any similar office
or agency of the United States or any foreign country, or any court, regarding
the validity of any of the Pledged Patents or the Borrower's rights, title or
interests in and to any of the Patent Collateral, and of any event which does or
reasonably could materially adversely affect the value of any of the Patent
Collateral, the ability of the Borrower or the Agent to dispose of any of the
Patent Collateral or the rights and remedies of the Agent and the Banks in
relation thereto (including but not limited to the levy of any legal process
against any of the Patent Collateral).
7. LICENSE BACK TO BORROWER.
Unless and until there shall have occurred and be continuing an Event of
Default and the Agent has notified the Borrower that the license granted
hereunder is terminated, the Agent hereby grants to the Borrower the sole and
exclusive, nontransferable, royalty-free, worldwide right and license under the
Patent Collateral to make, have made for it, use, sell and otherwise practice
the inventions disclosed and claimed in the Patent Collateral for the Borrower's
own benefit and account and for none other; provided, however, that the
foregoing right and license shall be no greater in scope than, and limited by,
the rights assigned to the Agent, for the benefit of the Banks and the Agent, by
the Borrower hereby. Except as permitted under the Credit Agreement, the
Borrower agrees not to sell, assign, transfer, encumber or sublicense its
interest in the license granted to the Borrower in this Section 7, without the
prior written consent of the Agent. Except as permitted under the Credit
Agreement, any such sublicenses granted on or after the date hereof shall be
terminable by the Agent upon termination of the Borrower's license hereunder.
8. REMEDIES.
If any Event of Default shall have occurred and be continuing, then at the
discretion of the Agent, or upon instructions by the Majority Banks to the
Agent, and upon notice by the Agent to the Borrower: (i) the Borrower's license
with respect to the Patents as set forth in Section 7 shall terminate; (ii) the
Borrower shall immediately cease and desist from the practice, manufacture, use
and sale of the inventions
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claimed, disclosed or covered by the Patents; and (iii) the Agent shall have, in
addition to all other rights and remedies given it by this Patent Agreement, the
Credit Agreement, the Security Agreement, and the other Loan Documents, those
allowed by law and the rights and remedies of a secured party under the Uniform
Commercial Code as enacted in the Commonwealth of Massachusetts and, without
limiting the generality of the foregoing, the Agent may immediately, without
demand of performance and without other notice (except as set forth next below)
or demand whatsoever to the Borrower, all of which are hereby expressly waived,
and without advertisement, sell or license at public or private sale or
otherwise realize upon the whole or from time to time any part of the Patent
Collateral, or any interest which the Borrower may have therein, and after
deducting from the proceeds of sale or other disposition of the Patent
Collateral all expenses (including all reasonable expenses for broker's fees and
legal services), shall apply the residue of such proceeds toward the payment of
the Obligations as set forth in the Security Agreement. Notice of any sale,
license or other disposition of any of the Patent Collateral shall be given to
the Borrower at least ten (10) days before the time that any intended public
sale or other disposition of such Patent Collateral is to be made or after which
any private sale or other disposition of such Patent Collateral may be made,
which the Borrower hereby agrees shall be reasonable notice of such public or
private sale or other disposition. At any such sale or other disposition, the
Agent may, to the extent permitted under applicable law, purchase or license the
whole or any part of the Patent Collateral or interests therein sold, licensed
or otherwise disposed of.
9. COLLATERAL PROTECTION.
If the Borrower shall fail to do any act that it has covenanted to do
hereunder, or if any representation or warranty of the Borrower shall be
breached, the Agent, in its own name or that of the Borrower (in the sole
discretion of the Agent), may (but shall not be obligated to) do such act or
remedy such breach (or cause such act to be done or such breach to be remedied),
and the Borrower agrees promptly to reimburse the Agent for any reasonable cost
or expense incurred by the Agent in so doing.
10. POWER OF ATTORNEY.
If any Event of Default shall have occurred and be continuing, the
Borrower does hereby make, constitute and appoint the Agent (and any officer or
agent of the Agent as the Agent may select in its exclusive discretion) as the
Borrower's true and lawful attorney-in-fact, with the power to endorse the
Borrower's name on all applications, documents, papers and instruments necessary
for the Agent to use any of the Patent Collateral, to practice, make, use or
sell the inventions disclosed or claimed in any of the Patent Collateral, to
grant or issue any exclusive or nonexclusive license of any of the Patent
Collateral to any third person, or necessary for the Agent to assign, pledge,
convey or otherwise transfer title in or dispose of the Patent Collateral or any
part thereof or interest therein to any third person, and, in general, to
execute and deliver any instruments or documents and do all other acts which the
Borrower is obligated to execute and do hereunder. The Borrower hereby
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ratifies all that such attorney shall lawfully do or cause to be done by virtue
hereof, and releases the Agent from any claims, liabilities, causes of action or
demands arising out of or in connection with any action taken or omitted to be
taken by the Agent under this power of attorney (except for the Agent's or any
Such Person's gross negligence or willful misconduct). This power of attorney
shall be irrevocable for the duration of this Patent Agreement.
11. FURTHER ASSURANCES.
The Borrower shall, at any time and from time to time, and at its expense,
make, execute, acknowledge and deliver, and file and record as necessary or
appropriate with governmental or regulatory authorities, agencies or offices,
such agreements, assignments, documents and instruments, and do such other and
further acts and things (including, without limitation, obtaining consents of
third parties), as the Agent may request as necessary to implement and effect
fully the intentions, purposes and provisions of this Patent Agreement, or to
assure and confirm to the Agent the grant, perfection and priority of the
Agent's security interest in any of the Patent Collateral.
12. TERMINATION.
At such time as all of the Obligations have been finally paid and
satisfied in full, this Patent Agreement shall terminate and the Agent shall,
upon the written request and at the expense of the Borrower, execute and deliver
to the Borrower all deeds, assignments and other instruments as may be necessary
or proper to reassign and reconvey to and re-vest in the Borrower the entire
right, title and interest to the Patent Collateral previously granted, assigned,
transferred and conveyed to the Agent and the Banks by the Borrower pursuant to
this Patent Agreement, as fully as if this Patent Agreement had not been made,
subject to any disposition of all or any part thereof which may have been made
by the Agent and the Banks pursuant hereto or the Security Agreement.
13. COURSE OF DEALING.
No course of dealing among the Borrower, the Banks and the Agent, nor any
failure to exercise, nor any delay in exercising, on the part of the Agent or
any of the Banks, any right, power or privilege hereunder or under the Security
Agreement shall operate as a waiver thereof; nor shall any single or partial
exercise of any right, power or privilege hereunder or thereunder preclude any
other or further exercise thereof or the exercise of any other right, power or
privilege.
14. EXPENSES.
Any and all reasonable fees, costs and expenses, of whatever kind or
nature, including the reasonable attorneys' fees and legal expenses incurred by
the Agent in connection with the preparation of this Patent Agreement and all
other documents relating hereto, the consummation of the transactions
contemplated hereby or the enforcement hereof, the filing or recording of any
documents (including all taxes in
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connection therewith) in public offices, the payment or discharge of any taxes,
counsel fees, maintenance fees, encumbrances or otherwise protecting,
maintaining or preserving any of the Patent Collateral, or in defending or
prosecuting any actions or proceedings arising out of or related to any of the
Patent Collateral, shall be borne and paid by the Borrower.
15. OVERDUE AMOUNTS.
Until paid, all amounts due and payable by the Borrower hereunder shall be
a debt secured by the Patent Collateral and other Collateral and shall bear,
whether before or after judgment, interest at the rate of interest for overdue
principal set forth in the Credit Agreement.
16. NO ASSUMPTION OF LIABILITY; INDEMNIFICATION.
NOTWITHSTANDING ANYTHING TO THE CONTRARY CONTAINED HEREIN, NEITHER THE
AGENT NOR ANY BANK ASSUMES ANY LIABILITIES OF THE BORROWER WITH RESPECT TO ANY
CLAIM OR CLAIMS REGARDING THE BORROWER'S OWNERSHIP OR PURPORTED OWNERSHIP OF, OR
RIGHTS OR PURPORTED RIGHTS ARISING FROM, ANY OF THE PATENT COLLATERAL OR ANY
PRACTICE, USE, LICENSE OR SUBLICENSE THEREOF, OR ANY PRACTICE, MANUFACTURE, USE
OR SALE OF ANY OF THE INVENTIONS DISCLOSED OR CLAIMED THEREIN, WHETHER ARISING
OUT OF ANY PAST, CURRENT OR FUTURE EVENT, CIRCUMSTANCE, ACT OR OMISSION OR
OTHERWISE. ALL OF SUCH LIABILITIES SHALL BE EXCLUSIVELY BORNE BY THE BORROWER,
AND THE BORROWER SHALL INDEMNIFY THE AGENT AND THE BANKS FOR ANY AND ALL COSTS,
EXPENSES, DAMAGES AND CLAIMS, INCLUDING LEGAL FEES, INCURRED BY THE AGENT OR ANY
BANK WITH RESPECT TO SUCH LIABILITIES.
17. RIGHTS AND REMEDIES CUMULATIVE.
All of the Agent's and the Banks' rights and remedies with respect to the
Patent Collateral, whether established hereby or by the Security Agreement or by
any other agreements or by law, shall be cumulative and may be exercised
singularly or concurrently.
18. NOTICES.
All notices and other communications made or required to be given pursuant
to this Patent Agreement shall be in writing and shall be delivered in hand,
mailed by United States registered or certified first-class mail, postage
prepaid, or sent by telegraph, telecopy or telex and confirmed by delivery via
courier or postal service, addressed as set forth in Section 20 of the Credit
Agreement.
Any such notice or demand shall be deemed to have been duly given or made
and to have become effective (i) if delivered by hand to a responsible officer
of the party to which it is directed, at the time of the receipt thereof by such
officer, (ii) if
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sent by registered or certified first-class mail, postage prepaid, two (2)
Business Days after the posting thereof, and (iii) if sent by telegraph,
telecopy, or telex, at the time of the dispatch thereof, if in normal business
hours in the country of receipt, or otherwise at the opening of business on the
following Business Day.
19. AMENDMENT AND WAIVER.
This Patent Agreement is subject to modification only by a writing signed
by the Agent (with the consent of the Majority Banks) and the Borrower, except
as provided in Section 5.2. The Agent shall not be deemed to have waived any
right hereunder unless such waiver shall be in writing and signed by the Agent
and the Majority Banks. A waiver on any one occasion shall not be construed as a
bar to or waiver of any right on any future occasion.
20. GOVERNING LAW; CONSENT TO JURISDICTION.
THIS PATENT AGREEMENT IS INTENDED TO TAKE EFFECT AS A SEALED INSTRUMENT
AND SHALL BE GOVERNED BY, AND CONSTRUED IN ACCORDANCE WITH, THE LAWS OF THE
COMMONWEALTH OF MASSACHUSETTS. The Borrower agrees that any suit for the
enforcement of this Patent Agreement may be brought in the courts of the
Commonwealth of Massachusetts or any federal court sitting therein and consents
to the non-exclusive jurisdiction of such court and to service of process in any
such suit being made upon the Borrower by mail at the address specified in
Section 18. The Borrower hereby waives any objection that it may now or
hereafter have to the venue of any such suit or any such court or that such suit
is brought in an inconvenient court.
21. WAIVER OF JURY TRIAL.
THE BORROWER WAIVES ITS RIGHT TO A JURY TRIAL WITH RESPECT TO ANY ACTION
OR CLAIM ARISING OUT OF ANY DISPUTE IN CONNECTION WITH THIS PATENT AGREEMENT,
ANY RIGHTS OR OBLIGATIONS HEREUNDER OR THE PERFORMANCE OF ANY SUCH RIGHTS OR
OBLIGATIONS. Except as prohibited by law, the Borrower waives any right which it
may have to claim or recover in any litigation referred to in the preceding
sentence any special, exemplary, punitive or consequential damages or any
damages other than, or in addition to, actual damages. The Borrower (i)
certifies that neither the Agent or any Bank nor any representative, agent or
attorney of the Agent or any Bank has represented, expressly or otherwise, that
the Agent or any Bank would not, in the event of litigation, seek to enforce the
foregoing waivers, and (ii) acknowledges that, in entering into the Credit
Agreement and the other Loan Documents to which the Agent or any Bank is a
party, the Agent and the Banks are relying upon, among other things, the waivers
and certifications contained in this Section 21.
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22. OTHER ASSET INTERCREDITOR AGREEMENT.
This Agreement is subject to the terms of the Other Asset Intercreditor
Agreement.
23. MISCELLANEOUS.
The headings of each section of this Patent Agreement are for convenience
only and shall not define or limit the provisions thereof. This Patent Agreement
and all rights and obligations hereunder shall be binding upon the Borrower and
its respective successors and assigns, and shall inure to the benefit of the
Agent, the Banks and their respective successors and assigns. In the event of
any irreconcilable conflict between the provisions of this Patent Agreement and
the Credit Agreement, or between this Patent Agreement and the Security
Agreement, the provisions of the Credit Agreement or the Security Agreement, as
the case may be, shall control. If any term of this Patent Agreement shall be
held to be invalid, illegal or unenforceable, the validity of all other terms
hereof shall in no way be affected thereby, and this Patent Agreement shall be
construed and be enforceable as if such invalid, illegal or unenforceable term
had not been included herein. The Borrower acknowledges receipt of a copy of
this Patent Agreement.
[Remainder of Page Intentionally Left Blank]
IN WITNESS WHEREOF, this Patent Agreement has been executed as of the day
and year first above written.
REPUBLIC TECHNOLOGIES INTERNATIONAL, LLC
By:________________________________
Name:
Title:
BANKBOSTON, N.A., as Agent
By:________________________________
Name:
Title:
CERTIFICATE OF ACKNOWLEDGMENT
COMMONWEALTH OR STATE OF _______________________)
) ss.
COUNTY OF ______________________________________)
Before me, the undersigned, a Notary Public in and for the county
aforesaid, on this __ day of August, 1999, personally appeared
_______________________________ to me known personally, and who, being by me
duly sworn, deposes and says that he is the ______________________________ of
REPUBLIC TECHNOLOGIES INTERNATIONAL, LLC, and that said instrument was signed
and sealed on behalf of said corporation by authority of its [___________], and
said _______________________________ acknowledged said instrument to be the free
act and deed of said corporation.
______________________________
Notary Public
My commission expires:
SCHEDULE A
ISSUED AND PENDING PATENTS
Patents Issued by U.S. Patent
and Trademark Office
Patent No. Issue Date Inventor(s) Title
---------- ---------- ----------- -----
4,238,230 12/09/80 Xxxxxx, et al. Process for Producing
Free-Machining Steel [Casting]
4,289,548 09/15/81 Xxxxxx, et al. High Strength Cold Finished Bars
[Steels Containing Vanadium and
Nitrogen]
4,507,949 04/02/85 Xxxxxxxx Apparatus for Cooling a
Hot-Rolled Product
4,520,861 06/04/85 Xxxxxxxxxx, et al. Method and Apparatus for
Alloying Continuously Cast Steel
Products
4,538,669 09/03/85 Xxxxxxxxx, et al. Distortion Measurement in Casting
4,741,786 05/03/88 Birman, et al. Cold Drawn Free-Machining Steel
Bar Including Bismuth
4,806,177 02/21/89 Held, et al. As-Hot Rolled Bar Steel
4,880,479 11/14/89 Birman, et al. Cold Drawn Free-Machining
Resulfurized and Rephosphorized
Steel Bars Having Controlled
Mechanical Properties and
Controlled Machinability
[Tensile Strength]
5,854,749 12/29/98 Xxxxxxx, et al. Custom Quality Control
Monitoring Of A Steel Making
Process
5,820,364 10/13/98 Hazard Reheat Furnace Apparatus And
Method Of Use
5,833,044 11/10/98 Canzutti, et al. Method And Apparatus For
Manipulating The Orientation Of
Workpieces
PCT/US96/12648
Patents Pending with U.S. Patent
and Trademark Office
Serial No. Filing Date Inventor(s) Title
---------- ----------- ----------- -----
08/924,068
09/033,127
09/039,034
09/065,298
-2-
Serial No. Filing Date Inventor(s) Title
---------- ----------- ----------- -----
09/065,804
09/074,140
09/074,797
Foreign Patents and Patent Applications
CANADA
Patent No. Issue Date Inventor(s) Title
---------- ---------- ----------- -----
1,137,593 12/14/82 Xxxxxxxxx, et al. Control System for Bar Mill
Roll Housings
1,125,915 6/15/82 Xxxxxx, et al. Electro-optical gauging system
for dimensions and profile
