Corindus Vascular Robotics, Inc. S-1/A




 


Exhibit 10.06


 


[***] Certain information
in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has
been requested with respect to the omitted portions.




 


INTELLECTUAL PROPERTY LOAN AGREEMENT


 


This INTELLECTUAL PROPERTY LOAN AGREEMENT (“IP Security Agreement”),
dated as of June 11, 2014, is made by the CORINDUS, INC., a Delaware corporation and CORINDUS SECURITY CORPORATION, a Delaware
corporation (collectively, the “Grantors”) in favor of STEWARD CAPITAL HOLDINGS, LP, a Delaware limited partnership,
and its successors and assigns (together with its successors and assigns, the “Lender”).


 


WHEREAS, Grantors have entered into a Loan and Security Agreement dated as of [DATE]
(the “Loan Agreement”), with the Lender.


 


WHEREAS, under the terms of the Loan Agreement, the Grantors have granted to the Lender
a security interest in, among other property, certain intellectual property of the Grantors, and have agreed to execute and deliver
this IP Security Agreement, for recording with national, federal and state government authorities, including, but not limited
to, the United States Patent and Trademark Office and the United States Copyright Office.


 


NOW THEREFORE, for good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, each Grantor agrees with the Lender as follows:


 


1.          Grant of Security.
Each Grantor hereby pledges and grants to the Lender for the ratable benefit of the Secured Parties a security interest in and
to all of the right, title and interest of such Grantor in, to and under the following, wherever located, and whether now existing
or hereafter arising or acquired from time to time (the “IP Collateral”): 


 


(a)          the patents and patent
applications set forth in Schedule 1 hereto and all reissues, divisions, continuations, continuations-in-part, renewals,
extensions and reexaminations thereof and amendments thereto (the “Patents”);


 


(b)          the trademark registrations
and applications set forth in Schedule 2 hereto, together with the goodwill connected with the use of and symbolized thereby
and all extensions and renewals thereof (the “Trademarks”), excluding only United States intent-to-use trademark
applications to the extent that, and solely during the period in which, the grant, attachment or enforcement of a security interest
therein would, under applicable federal law, impair the registrability of such applications or the validity or enforceability
of registrations issuing from such applications;


 


(c)          the copyright registrations,
applications and copyright registrations and applications exclusively licensed to each Grantor set forth in Schedule 3
hereto, and all extensions and renewals thereof (the “Copyrights”);


 



    	 



    	 



    

 


(d)          all rights of any kind
whatsoever of such Grantor accruing under any of the foregoing provided by applicable law of any jurisdiction, by international
treaties and conventions and otherwise throughout the world;


 


(e)          any and all royalties,
fees, income, payments and other proceeds now or hereafter due or payable with respect to any and all of the foregoing; and


 


(f)          any and all claims and
causes of action, with respect to any of the foregoing, whether occurring before, on or after the date hereof, including all rights
to and claims for damages, restitution and injunctive and other legal and equitable relief for past, present and future infringement,
dilution, misappropriation, violation, misuse, breach or default, with the right but no obligation to sue for such legal and equitable
relief and to collect, or otherwise recover, any such damages.


 


2.          Recordation. Each
Grantor authorizes the Commissioner for Patents, the Commissioner for Trademarks and the Register of Copyrights and any other
government officials to record and register this IP Security Agreement upon request by the Lender.


 


3.          Loan Documents.
This IP Security Agreement has been entered into pursuant to and in conjunction with the Loan Agreement, which is hereby incorporated
by reference. The provisions of the Loan Agreement shall supersede and control over any conflicting or inconsistent provision
herein. The rights and remedies of the Lender with respect to the IP Collateral are as provided by the Loan Agreement and related
documents, and nothing in this IP Security Agreement shall be deemed to limit such rights and remedies.


 


4.          Execution in Counterparts.
This IP Security Agreement may be executed in 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 to this IP Security Agreement by facsimile or in electronic (i.e., “pdf” or “tif”
format) shall be effective as delivery of a manually executed counterpart of this IP Security Agreement.


 


5.          Successors and Assigns.
This IP Security Agreement will be binding on and shall inure to the benefit of the parties hereto and their respective successors
and assigns.


 


6.          Governing Law. This
IP Security Agreement and any claim, controversy, dispute or cause of action (whether in contract or tort or otherwise) based
upon, arising out of or relating to this IP Security Agreement and the transactions contemplated hereby and thereby shall be governed
by, and construed in accordance with, the laws of the United States and the State of Missouri, without giving effect to any choice
or conflict of law provision or rule (whether of the State of Missouri or any other jurisdiction).


 


[***]
Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential
treatment has been requested with respect to the omitted portions. 



    	2



    	 



    

 


[SIGNATURE PAGE FOLLOWS]


 


[***]
Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential
treatment has been requested with respect to the omitted portions. 



    	3



    	 



    

 


IN WITNESS WHEREOF, each Grantor has caused this IP Security Agreement to
be duly executed and delivered by its officer thereunto duly authorized as of the date first above written.


 


	 	 	 	CORINDUS, INC.
	 	 	 	 	 
	 	 	 	Signature:	/s/ David Handler
	 	 	 	 	
	 	 	 	Print Name:	David Handler
	 	 	 	 	 
	 	 	 	Title:	CEO
	 	 	 	 	 
	 	 	 	CORINDUS SECURITY CORPORATION
	 	 	 	 	 
	 	 	 	Signature:	/s/ David Handler
	 	 	 	 	 
	 	 	 	Print Name:	David Handler
	 	 	 	 	 
	 	 	 	Title:	CEO
	 	 	 	 	 
	Accepted in	 	:	 	 
	 	 	 	 	 
	 	 	 	LENDER:	 
	 	 	 	 	 
	 	 	 	STEWARD CAPITAL HOLDINGS, LP
	 	 	 	 	 
	 	 	 	By:	/s/ Donald P. Johns
	 	 	 	 	Donald P. Johns, Vice President/CFO



 


[***]
Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential
treatment has been requested with respect to the omitted portions. 



    	4



    	 



    

 


SCHEDULES


 


Schedule 1


 


Patents and Patent Applications


 


Schedule 2


 


Trademark Registrations and Applications


 


Schedule 3


 


Copyright Registrations and Applications


 


[***]
Certain information in this
document has been omitted and filed separately with the Securities and Exchange
Commission. Confidential treatment
has been requested with respect to the omitted portions. 


    	5



    	 



    

 





 


	EXHIBIT
    D	 	 
	Borrowers Patents,
    Trademarks, Copyrights And Licenses	Corindus
    IP Schedule

    Granted Patents 5-13-14	 


 


	AttorneyRef	Title	Country	IssueDate	PatentNum	 ExpiredDate 
	060541-0184	CATHETER
    CONTROL SYSTEM AND GRAPHICAL USER INTERFACE	United
    States	4/8/2014	8,694,157	2/24/2031
	060541-0149	CATHETER
    SYSTEM	United
    States	7/9/2013	8,480,618	3/10/2032
	060541-0152	CATHETER
    SYSTEM	United
    States	2/15/2011	7,887,549	5/4/2029
	060541-0174	CATHETER
    SYSTEM CASSETTE	United
    States	4/23/2013	D680645	4/23/2027
	C130-110	CATHETER
    SYSTEM CASSETTE	United
    States	1/15/2013	D674484	1/15/2027
	C130-111	CATHETER
    SYSTEM CASSETTE	United
    States	7/2/2013	D685,468	7/2/2027
	060541-0132	IMAGE-GUIDED
    NAVIGATION FOR CATHETER-BASED INTERVENTIONS	United
    States	12/3/2013	8,600,477	3/3/2027
	060541-0165	MEDICAL
    RADIATION PROTECTED WORKSTATION	United
    States	10/26/2010	D626250	10/26/2024
	060541-0111	METHODS
    AND APPARATUSES FOR TREATMENT OF HOLLOW ORGANS	European
    Patent Office	11/21/2012	1928337	9/29/2025
	C130-122	METHODS
    AND APPARATUSES FOR TREATMENT OF HOLLOW ORGANS	France	11/21/2012	1928337	9/29/2025
	C130-123	METHODS
    AND APPARATUSES FOR TREATMENT OF HOLLOW ORGANS	Germany	11/21/2012	602005037109.5	9/29/2025
	C130-124	METHODS
    AND APPARATUSES FOR TREATMENT OF HOLLOW ORGANS	Italy	3/9/1999	EP1061990	3/9/2019
	C130-125	METHODS
    AND APPARATUSES FOR TREATMENT OF HOLLOW ORGANS	Netherlands	9/25/2005	05790770.1	9/29/2025
	C130-126	METHODS
    AND APPARATUSES FOR TREATMENT OF HOLLOW ORGANS	United
    Kingdom	9/25/2005	05790770.1	9/29/2025
	060541-0116	PROTECTED
    CONTROL CONSOLE APPARATUSES	United
    States	3/19/2013	8,399,871	3/9/2027
	060541-0103	REMOTE
    CONTROL CATHETERIZATION	United
    States	4/27/2004	6,726,675	3/9/2019
	060541-0117	REMOTE
    CONTROL CATHETERIZATION	Israel	9/1/2010	123646	3/11/2018
	060541-0119	REMOTE
    CONTROL CATHETERIZATION	European
    Patent Office	9/1/2004	1061990	3/9/2019
	060541-0120	REMOTE
    CONTROL CATHETERIZATION	Germany	9/29/2005	69919851.8	3/9/2019
	060541-0121	REMOTE
    CONTROL CATHETERIZATION	France	3/9/1999	EP1061990	3/9/2019
	060541-0122	REMOTE
    CONTROL CATHETERIZATION	United
    Kingdom	3/9/1999	EP1061990	3/9/2019
	060541-0123	REMOTE
    CONTROL CATHETERIZATION	Ireland	3/9/1999	EP1061990	3/9/2019
	060541-0124	REMOTE
    CONTROL CATHETERIZATION	Italy	9/1/2004	EP1061990	3/9/2019
	060541-0104	TRANSMISSION
    FOR A REMOTE CATHETERIZATION SYSTEM	United
    States	11/10/2009	7,615,042	5/5/2025
	060541-0128	TRANSMISSION
    FOR A REMOTE CATHETERIZATION SYSTEM	Israel	11/30/2011	162318	6/3/2024
	060541-0131	TRANSMISSION
    FOR A REMOTE CATHETERIZATION SYSTEM	European
    Patent Office	1/11/2012	1755727	5/10/2025
	C130-102	TRANSMISSION
    FOR A REMOTE CATHETERIZATION SYSTEM	Germany	5/10/2005	1755727	5/10/2025
	C130-103	TRANSMISSION
    FOR A REMOTE CATHETERIZATION SYSTEM	France	5/10/2005	1755727	5/10/2025
	C130-104	TRANSMISSION
    FOR A REMOTE CATHETERIZATION SYSTEM	United
    Kingdom	5/10/2005	1755727	5/10/2025
	C130-105	TRANSMISSION
    FOR A REMOTE CATHETERIZATION SYSTEM	Italy	5/10/2005	1755727	5/10/2025


 


[***]
Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential
treatment has been requested with respect to the omitted portions. 



    	 



    	 



    

 


Corindus IP Schedule


Granted Patents 5-13-14


 


	AttorneyRef	Title	Country	IssueDate	PatentNum 	 ExpiredDate 
	060541-0109	USER INTERFACE FOR REMOTE CONTROL
    CATHETERIZATION	United
    States	9/4/2012	8,257,302	5/31/2027


 


[***]
Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential
treatment has been requested with respect to the omitted portions. 



    	 



    	 



    







 


Corindus IP Schedule


Pending Applications
5-13-14


 


	AttorneyRef	Title	Country	  FilingDate  	ApplicationNum
	C130-150	3-D
    MAPPING FOR GUIDANCE OF DEVICE ADVANCEMENT OUT OF A GUIDE C...	United
    States	8/12/2013	13/964,385
	[***]	[***]	[***]	[***]	[***]
	060541-0182	CATHETER
    CONTROL SYSTEM AND GRAPHICAL USER INTERFACE	European
    Patent Office	3/4/2011	09810642.0
	C130-167	CATHETER
    CONTROL SYSTEM AND GRAPHICAL USER INTERFACE	United
    States	2/19/2014	14/184,118
	C130-120	CATHETER
    FORCE MEASUREMENT APPARATUS AND METHOD	World
    Intellectual Property Organization	9/20/2012	PCT/US2012/056229
	C130-178	CATHETER
    FORCE MEASUREMENT APPARATUS AND METHOD	United
    States	3/20/2014	14/220,717
	060541-0183	CATHETER
    SIMULATION AND ASSISTANCE SYSTEM	United
    States	2/24/2011	13/034,618
	060541-0147	CATHETER
    SYSTEM	United
    States	11/25/2009	12/626,525
	060541-0148	CATHETER
    SYSTEM	United
    States	11/25/2009	12/626,531
	060541-0150	CATHETER
    SYSTEM	United
    States	11/25/2009	12/626,516
	060541-0175	CATHETER
    SYSTEM	World
    Intellectual Property Organization	5/4/2009	09743396.5
	060541-0177	CATHETER
    SYSTEM	India	5/4/2009	8670/DELNP/2010
	060541-0178	CATHETER
    SYSTEM	Japan	5/4/2009	2011-508579
	C130-147	CATHETER
    SYSTEM	United
    States	6/11/2013	13/914,976
	C130-176	CATHETER
    SYSTEM WITH MAGNETIC COUPLING	United
    States	3/14/2014	14/212,113
	060541-0167	CATHETER
    SYSTEM WITH PERCUTANEOUS DEVICE MOVEMENT ALGORITHM	World
    Intellectual Property Organization	10/11/2010	PCT/US10/52178
	C130-107	CATHETER
    SYSTEM WITH PERCUTANEOUS DEVICE MOVEMENT ALGORITHM	United
    States	4/11/2012	13/444,121
	C130-109	CATHETER
    SYSTEM WITH PERCUTANEOUS DEVICE MOVEMENT ALGORITHM	European
    Patent Office	5/9/2012	10823904.7
	[***]	[***]	[***]	[***]	[***]
	[***]	[***]	[***]	[***]	[***]
	[***]	[***]	[***]	[***]	[***]
	C130-171	GUIDE
    WIRE OR CATHETER WITH MODIFIED DRIVE SURFACE	World
    Intellectual Property Organization	3/14/2014	PCT/US2014/027836 
	[***]	[***]	[***]	[***]	[***]
	[***]	[***]	[***]	[***]	[***]
	060541-0134	IMAGE-GUIDED
    NAVIGATION FOR CATHETER BASED INTERVENTIONS	European
    Patent Office	8/16/2005	05764607.7
	060541-0193	OCCLUSION
    TRAVERSAL ROBOTIC CATHETER SYSTEM	World
    Intellectual Property Organization	9/28/2011	PCT/US2011/053642
	C130-141	OCCLUSION
    TRAVERSAL ROBOTIC CATHETER SYSTEM	United
    States	4/13/2013	13/862,388
	C130-145	OCCLUSION
    TRAVERSAL ROBOTIC CATHETER SYSTEM	European
    Patent Office	5/14/2013	11833036.4
	C130-137	PROTECTED
    CONTROL CONSOLE APPARATUSES	United
    States	3/18/2013	13/846,041
	C130-174	RADIATION
    SHIELDING COCKPIT CARRYING AN ARTICULATED ROBOTIC ARM	United
    States	3/14/2014	14/212,143
	060541-0188	REMOTE
    CATHETER PROCEDURE SYSTEM	United
    States	6/2/2011	13/152,168


 


[***]
Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential
treatment has been requested with respect to the omitted portions. 



    	 



    	 



    

 


Corindus IP Schedule


Pending Applications
5-13-14


 


	AttorneyRef	Title	Country	  FilingDate  	ApplicationNum
	060541-0189	REMOTE
    CATHETER PROCEDURE SYSTEM	European
    Patent Office	7/12/2011	09832554.1
	060541-0166	REMOTE
    CATHETER SYSTEM WITH STEERABLE CATHETER	United
    States	9/14/2011	13/232,660
	060541-0191	REMOTE
    CATHETER SYSTEM WITH STEERABLE CATHETER	European
    Patent Office	3/17/2010	10754060.1
	060541-0190	ROBOTIC
    CATHETER SYSTEM	United
    States	9/14/2011	13/232,624
	C130-106	ROBOTIC
    CATHETER SYSTEM INCLUDING IMAGING SYSTEM CONTROL	World
    Intellectual Property Organization	3/22/2012	PCT/US2012/030068
	C130-131	ROBOTIC
    CATHETER SYSTEM INCLUDING IMAGING SYSTEM CONTROL	United
    States	3/15/2013	13/833,874
	C130-161	ROBOTIC
    CATHETER SYSTEM INCLUDING IMAGING SYSTEM CONTROL	European
    Patent Office	10/22/2013	12761249.7
	C130-112	ROBOTIC
    CATHETER SYSTEM WITH VARIABLE DRIVE MECHANISM	United
    States	8/31/2012	13/600,816
	C130-114	ROBOTIC
    CATHETER SYSTEM WITH VARIABLE DRIVE MECHANISM	European
    Patent Office	9/14/2012	11751139.4
	C130-113	ROBOTIC
    CATHETER SYSTEM WITH VARIABLE SPEED CONTROL	United
    States	8/31/2012	13/600,824
	C130-115	ROBOTIC
    CATHETER SYSTEM WITH VARIABLE SPEED CONTROL	European
    Patent Office	9/14/2012	11751138.6
	[***]	[***]	[***]	[***]	[***]
	C130-173	ROBOTICALLY
    SHAPING A GUIDE WIRE TIP	United
    States	3/17/2014	14/216,728
	C130-159	SYSTEM
    FOR GUIDE CATHETER CONTROL	United
    States	9/6/2013	14/020,538
	C130-160	SYSTEM
    FOR GUIDE CATHETER CONTROL	World
    Intellectual Property Organization	9/6/2013	PCT/US2013/058536 
	[***]	[***]	[***]	[***]	[***]
	[***]	[***]	[***]	[***]	[***]
	060541-0127	USER
    INTERFACE FOR REMOTE CONTROL CATHETERIZATION	European
    Patent Office	3/12/2008	05740564.9
	C130-121	VARIABLE
    DRIVE FORCE APPARATUS AND METHOD FOR ROBOTIC CATHETE...	World
    Intellectual Property Organization	9/20/2012	PCT/US2012/056336
	C130-179	VARIABLE
    DRIVE FORCE APPARATUS AND METHOD FOR ROBOTIC CATHETE...	United
    States	3/20/2014	14/220,740
	060541-0192	WHEEL
    FOR ROBOTIC CATHETER SYSTEM DRIVE MECHANISM	World
    Intellectual Property Organization	9/14/2011	PCT/US11/51542
	C130-132	WHEEL
    FOR ROBOTIC CATHETER SYSTEM DRIVE MECHANISM	United
    States	3/15/2013	13/836,017
	C130-138	WHEEL
    FOR ROBOTIC CATHETER SYSTEM DRIVE MECHANISM	United
    States	3/15/2013	13/838,780
	C130-142	WHEEL
    FOR ROBOTIC CATHETER SYSTEM DRIVE MECHANISM	European
    Patent Office	4/16/2013	11825849.0
	[***]	[***]	[***]	[***]	[***]
	[***]	[***]	[***]	[***]	[***]


 


[***]
Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential
treatment has been requested with respect to the omitted portions. 



    	 



    	 



    

 


Corindus IP Schedule


Pending and Granted Trademarks


5-21-14


 


	FilingDate	AttorneyRef  	Title	Country	PatentNum	ApplicationNum 
	11/8/2005	060541-0102	CORINDUS	United
    States	3,791,581	78749090
	1/5/2006	060541-0105	CORPATH	United
    States	3,786,259	78785567
	3/9/2006	060541-0106	CORINDUS	European
    Union Trademark and Designs Office	00490011	004950011
	3/9/2006	060541-0107	CORPATH	European
    Union Trademark and Designs Office	4950036	004950036
	2/15/2013	C130-129	CORPATH	United
    States	 	85851475
	2/15/2013	C130-130	CORPATH
    ANGIOPLASTY	United
    States	 	85851473


 


[***]
Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential
treatment has been requested with respect to the omitted portions. 



    	 



    	 



    

 


Corindus IP Schedule


License Agreement 5/21/14


 


	Date	Atty
    Ref. No.	Title
	October
    12, 2003	060541-0101	License
    Agreement – Leonard Medical, Inc. and Navicath Ltd for US

    Patent No. 5,540,649 and 5,779,623 (both of which have expired)



 



[***]
Certain information in this
document has been omitted and filed separately with the Securities and Exchange
Commission. Confidential treatment
has been requested with respect to the omitted portions.