FILED: NEW YORK COUNTY CLERK 01/22/2024 06:38 PM
`NYSCEF DOC. NO. 14
`
`INDEX NO. 655566/2023
`
`RECEIVED NYSCEF: 01/22/2024
`
`-~Mil
`INTELLECTUAL PROPERTY SECURITY AGREEMENT
`
`s Intellectual Property Security Agreement ("IP Security Agreement") dated as of
`22, is made and entered into by and among Carmell Therapeutics Corporation, a Delaware
`January
`corporation (the "Company"), any subsidiary of the Company that is a signatory hereto either now joined
`or joined in the future (such subsidiaries, together with the Company, the "Debtors"), and Puritan
`-e--.""'°' ... rt.!;!.n!::e:_,_rs "' LLC, as lender and agent on behalf of the Holders of the 10% Senior Secured Notes due
`, 2023 in aggregate principal amount ofup to $2,222,222.22 (the "Notes") of the Company
`January
`(the "Agent", which term shall include any successor Agent appointed in accordance with the terms of
`the Security Agreement (as defined below)).
`
`WHEREAS, the Company has entered into a Securities Purchase Agreement, dated as of the
`date hereof and as may be amended from time to time (the "Securities Purchase Agreement"), with
`those investors listed on the signature pages thereof (the "Lenders"), and the Company, the Lenders and
`the Agent have entered into a Security Agreement dated as of the date hereof and as may be amended
`from time to time (the "Security Agreement");
`WHEREAS, the Lenders have purchased or will purchase from the Company, among other
`things, the Notes pursuant to the provisions of the Securities Purchase Agreement; and
`
`WHEREAS, under the terms of the Securities Purchase Agreement and the Security
`Agreement, the Company and the other Debtors have granted to Agent, for the benefit of the Secured
`Lenders, a first priority security interest in, among other Collateral, certain Intellectual Property of the
`Debtors (i.e., all of its patents and trademarks that are wholly owned by Debtors), and the Company has
`agreed as a condition thereof to execute this IP Security Agreement for recording with the United States
`Patent and Trademark Office, the United States Copyright and other governmental authorities.
`
`NOW, THEREFORE, for good and valuable consideration, both the receipt and sufficiency of
`which are hereby acknowledged, the Debtors hereby agrees as follows:
`
`SECTION 1. Definitions. The following terms have the meanings set forth below:
`
`(a) "Copyrights" means all of the following now owned or hereafter adopted or acquired by any of the
`Debtors: (i) all copyrights (whether statutory or common law, whether established or registered in the
`United States or any other country or political subdivision thereof, whether registered or unregistered and
`whether published or unpublished), rights and interests in copyrights, works protectable by copyright, and
`General Intangibles oflike nature, all registrations and recordings thereof, and all applications in
`connection therewith, including all registrations, recordings, and applications in the United States
`Copyright Office or in any similar office or agency of the United States, any state or territory thereof, or
`any other country or any political subdivision thereof and all research and development relating to the
`foregoing, (ii) all reissues, extensions, continuations, and renewals thereof and amendments thereto, (iii)
`income, fees, royalties, damages, claims, and payments now or hereafter due and/or payable with respect
`thereto, including damages and payments for past, present and future infringements thereof, (iv) rights
`corresponding thereto throughout the world and (v) rights to sue for past, present, and future
`infringements thereof.
`(b) "Copyright License" means any and all rights now owned or hereafter acquired by Debtors under any
`written or oral agreement granting any right to use any Copyright or Copyright registration, in each case
`to the extent assignable by any of the Debtors; provided, that, the Company has identified on Schedule C
`
`

`

`FILED: NEW YORK COUNTY CLERK 01/22/2024 06:38 PM
`NYSCEF DOC. NO. 14
`
`INDEX NO. 655566/2023
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`RECEIVED NYSCEF: 01/22/2024
`
`attached hereto whether or not any of the Debtors' Copyrights or Copyright registrations are not
`assignable.
`(c) "Patents" shall mean one or all of the following (i) now or hereafter owned by any of the Debtors or
`in which any of the Debtors now has or hereafter acquires any rights; and (ii) which Debtors possess or
`otherwise own 100% of the right, title, and interest thereof: (A) all letters patent of the United States or
`any other country, all registrations, and recordings thereof, and all applications for letters patent of the
`United States or any other country, (B) all reissues, continuations, continuations-in-part, divisions,
`reexaminations, or extensions of any of the foregoing and ( C) all inventions disclosed in and claimed in
`the Patents and any and all trade secrets and know-how related thereto. For avoidance of doubt, patent
`rights that are not owned 100% by Debtors do not constitute "Patents" for purposes of this Agreement.
`
`( d) "Patent License" shall mean all of the following now owned or hereafter acquired by any of the
`Debtors or in which any of the Debtors now has or hereafter acquires any rights: to the extent assignable
`by any Debtor, any written agreement granting any right to make, use, sell, and/or practice any invention
`or discovery that is the subject matter of a Patent, in each case to the extent assignable by any Debtor;
`provided, that, the Company has identified on Schedule A attached hereto whether or not any of the
`Debtors' Patents or Patent registrations are not assignable.
`(e) "Trademarks" shall mean one or all of the following now owned or hereafter acquired by any of the
`Debtors or in which any of the Debtors now has or hereafter acquires any rights: (i) all trademarks
`(whether registered or unregistered), trade names, corporate names, business names, trade styles, service
`marks, logos, other source or business identifiers, prints, and labels on which any of the foregoing have
`appeared or appear, designs and general intangibles of like nature, now existing or hereafter adopted or
`acquired, all registrations and recordings thereof, and all applications in connection therewith, including,
`without limitation, registrations, recordings, and applications in the United States Patent and Trademark
`Office or in any similar office or agency of any State of the United States or any other country or any
`political subdivision thereof, (ii) all reissues, extensions, or renewals thereof and (iii) the goodwill
`associated with or symbolized by any of the foregoing.
`
`(f) "Trademark License" shall mean all of the following now owned or hereafter acquired by any of the
`Debtors or in which any of the Debtors now has or hereafter acquires any rights: any written agreement
`granting any right to use any Trademark or Trademark registration, in each case to the extent assignable
`by any Debtor; provided, that, the Company has identified on Schedule B attached hereto whether or not
`any of the Debtors' Trademarks or Trademark registrations are not assignable.
`SECTION 2. Grant of Security. Each of the Debtors hereby grants to Agent, for the benefit
`of the Secured Lenders, a first priority security interest in all of such Debtor's right, title, and interest in
`and to the following (the "Collateral"):
`
`(i)
`
`(ii)
`
`all of its Patents and all Patent Licenses to which it is a party, including, but not limited to,
`those set forth on Schedule A hereto;
`
`all of its Trademarks and all Trademark Licenses to which it is a party, including, but not
`limited to, those set forth on Schedule B hereto, together with all goodwill of the business
`connected with the use of, and symbolized by, each Trademark and each Trademark License;
`
`(iii)
`
`all of its Copyrights and all Copyright Licenses to which it is a party, including, but not
`limited to, those set forth on Schedule C hereto;
`
`

`

`FILED: NEW YORK COUNTY CLERK 01/22/2024 06:38 PM
`NYSCEF DOC. NO. 14
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`INDEX NO. 655566/2023
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`RECEIVED NYSCEF: 01/22/2024
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`(iv)
`
`(v)
`
`(vi)
`
`all reissues, divisions, continuations, continuations-in-part, extensions, renewals, and
`reexaminations of any of the foregoing, all rights in the foregoing provided by international
`treaties or conventions, all rights corresponding thereto throughout the world and all other
`rights of any kind whatsoever of the Debtors accruing thereunder or pertaining thereto;
`
`any and all claims for damages and injunctive relief for past, present, and future infringement,
`dilution, misappropriation, violation, misuse, breach, or injury with respect to any of the
`foregoing, with the right, but not the obligation, to sue for and collect, or otherwise recover,
`such damages; and
`
`any and all products and proceeds of, collateral for, income, royalties, and other payments
`now or hereafter due and payable with respect to, and supporting obligations relating to, any
`and all of the Collateral of or arising from any of the foregoing. Debtor is the sole owner of
`the Collateral, free and clear of any liens, security interests, encumbrances, rights or claims,
`and is fully authorized to grant the first priority security interest in the Collateral. There is not
`on file in any governmental or regulatory authority, agency or recording office an effective
`financing statement, security agreement, license or transfer or any notice of any of the
`foregoing ( other than those that will be filed in favor of the Secured Party pursuant to this
`Agreement) covering or affecting the Collateral. So long as this Agreement shall be in effect,
`the Debtor shall not execute and shall not knowingly permit to be on file in any such office or
`agency any such financing statement or other document or instrument ( except to the extent
`filed or recorded as of the date hereof or in favor of the Secured Party pursuant to the terms of
`this Agreement).
`
`Notwithstanding the foregoing, nothing herein shall be deemed to constitute an assignment of any asset
`which, in the event of an assignment, becomes void by operation of applicable law or the assignment of
`which is otherwise prohibited by applicable law (in each case to the extent that such applicable law is not
`overridden by Sections 9-406, 9-407 and/or 9-408 of the UCC or other similar applicable law); provided,
`however, that, to the extent permitted by applicable law, this Agreement shall create a valid security
`interest in such asset and, to the extent permitted by applicable law, this IP Security Agreement shall
`create a valid security interest in the proceeds of such asset.
`
`SECTION 3. Security for Obligations. The grant of a first priority security interest in the
`Collateral by the Debtors under this IP Security Agreement and associated intercreditor agreement
`secures the prompt and complete payment and performance when due of all of the Obligations, whether
`direct or indirect, now existing or hereafter arising, absolute or contingent, and whether for principal,
`reimbursement obligations, interest, premiums, penalties, fees, guarantee obligations, indemnifications,
`contract causes of action, costs, expenses, or otherwise.
`
`SECTION 4. Recordation. Each of the Debtors authorizes and requests that the Register of
`Copyrights, the Commissioner for Patents, the Commissioner for Trademarks and any other applicable
`governmental authority record this IP Security Agreement.
`
`SECTION 5. Grants, Rights and Remedies. This IP Security Agreement has been entered
`into in conjunction with the provisions of the Securities Purchase Agreement and the Security Agreement.
`Each Debtor does hereby acknowledge and confirm that the grant of the first priority security interest
`hereunder and under the associated intercreditor agreement between the parties to, and the rights and
`remedies of, Agent with respect to the Collateral are more fully set forth in the Security Agreement, the
`terms and provisions of which are incorporated herein by reference as if fully set forth herein.
`
`

`

`FILED: NEW YORK COUNTY CLERK 01/22/2024 06:38 PM
`NYSCEF DOC. NO. 14
`
`INDEX NO. 655566/2023
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`RECEIVED NYSCEF: 01/22/2024
`
`SECTION 6. Future Acquisitions. The Company represents and warrants that Schedules A
`Band C attached hereto sets forth all patent, trademark and copyright rights in connection to which (a)
`the Company has registered or filed an application with either the United States Patent and Trademark
`Office or the United States Copyright Office, as applicable and (b) Debtor owns 100% of such patent and
`trademark rights. The Company shall give the Agent prior written notice of no less than five (5) Business
`Days before filing any additional application for registration of any trademark and prompt notice in
`writing of any additional trademark registrations, patent registration, or copyright registrations granted
`therefor after the date hereof. Without limiting the Company's obligations under this paragraph, each of
`the Debtors hereby authorizes the Agent unilaterally to modify this IP Security Agreement by amending
`Schedule A, B or C to include any future patents, trademarks, copyrights, licenses thereto or applications
`therefor of any Debtor. Notwithstanding the foregoing, no failure to so modify this IP Security Agreement
`or amend Schedule A, B or C shall in any way affect, invalidate or detract from Secured Lender's
`continuing first priority security interest in all Collateral, whether or not listed on Schedule A B or C.
`
`SECTION 7. Remedies. If there occurs an Event of Default, the Agent on behalf of the Secured
`Lenders shall be entitled to exercise any and all remedies available to the Secured Lenders under the
`Security Agreement for the benefit of all Secured Lenders only upon the written consent or authorization
`of the Majority in Interest (as defined in the Notes).
`
`SECTION 8. Term of Agreement. This IP Security Agreement shall terminate on the date on
`which all payments under the Notes have been indefeasibly paid in full. Upon termination of this IP
`Security Agreement, the Agent shall promptly execute such documents or instruments and take such
`further actions as the Company or any Debtor may reasonably request for the purposes of releasing the
`security interests granted herein. Debtor may file any terminations with any applicable office upon such
`termination date.
`
`SECTION 9. Miscellaneous. Section 19 of the Security Agreement is hereby incorporated
`herein by reference as if fully set forth herein, mutatis mutandis.
`
`SECTION 10. Governing Law. This IP Security Agreement shall be governed by, and
`construed and interpreted in accordance with the internal laws of the State of New York, without giving
`effect to its choice oflaw provisions that would require the application of another state's laws.
`
`SECTION 11. Execution in Counterparts. This IP Security Agreement may be executed in
`any number of counterparts, each of which when so executed shall be deemed to be an original and all of
`which taken together shall constitute one and the same agreement
`
`

`

`FILED: NEW YORK COUNTY CLERK 01/22/2024 06:38 PM
`NYSCEF DOC. NO. 14
`
`INDEX NO. 655566/2023
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`RECEIVED NYSCEF: 01/22/2024
`
`IN WITNESS WHEREOF, each Debtor 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.
`
`CARMELL THERAPEUTICS CORPORATION
`
`Randolph W. Hubbell
`Chairman of the Board, CEO & President
`
`PURITAN PARTNERS LLC, AS LENDER AND COLLATERAL AGENT
`
`wa
`
`Richard Smithline
`Managing Member
`
`

`

`FILED: NEW YORK COUNTY CLERK 01/22/2024 06:38 PM
`NYSCEF DOC. NO. 14
`
`INDEX NO. 655566/2023
`
`RECEIVED NYSCEF: 01/22/2024
`
`SCHEDULE A
`
`PATENTS
`
`COUNTRY
`us
`
`FILING DATE
`
`APPLICATION NO.
`
`ISSUE DATE
`
`STATUS
`
`1/25/2012
`
`13/357,835
`
`Abandoned
`
`CA
`
`1/25/2012
`
`2825580
`
`9/25/2018
`
`Issued
`
`DE
`
`1/25/2012
`
`602012029850.2
`
`3/15/2017
`
`Issued
`
`EP
`
`FR
`
`1/25/2012
`
`12739063.1
`
`3/15/2017
`
`Issued
`
`1/25/2012
`
`12739063.1
`
`3/15/2017
`
`Issued
`
`GB
`
`1/25/2012
`
`12739063.1
`
`3/15/2017
`
`Issued
`
`IT
`
`1/25/2012
`
`502017000054505
`
`3/15/2017
`
`Issued
`
`US PROV
`
`1/26/2011
`
`61/436,412
`
`Expired
`
`PCT
`
`1/25/2012
`
`PCT/US2012/022534
`
`Expired
`
`TITLE
`
`BARBS FOR
`FIXATION OF
`BIOLOGIC PLASTICS
`
`BARBS FOR
`FIXATION OF
`BIOLOGIC PLASTICS
`
`BARBS FOR
`FIXATION OF
`BIOLOGIC PLASTICS
`
`BARBS FOR
`FIXATION OF
`BIOLOGIC PLASTICS
`
`BARBS FOR
`FIXATION OF
`BIOLOGIC PLASTICS
`
`BARBS FOR
`FIXATION OF
`BIOLOGIC PLASTICS
`
`BARBS FOR
`FIXATION OF
`BIOLOGIC PLASTICS
`
`BARBS FOR
`FIXATION OF
`BIOLOGIC PLASTICS
`
`BARBS FOR
`FIXATION OF
`BIOLOGIC PLASTICS
`
`

`

`FILED: NEW YORK COUNTY CLERK 01/22/2024 06:38 PM
`NYSCEF DOC. NO. 14
`
`INDEX NO. 655566/2023
`
`RECEIVED NYSCEF: 01/22/2024
`
`SCHEDULEB
`
`TRADEMARKS
`
`M ark
`
`Country
`
`Filing Date
`
`Application
`No.
`
`Reg. Date
`
`Reg. No.
`
`Class(es)
`
`Status
`
`CARM ELL
`
`CARM ELL
`
`us
`us
`
`10/8/2020
`
`90/242,932
`
`10
`
`Allowed
`
`4/20/2017
`
`87/418,881
`
`11/07/2017
`
`5,329,469 44
`
`Registered
`
`

`

`FILED: NEW YORK COUNTY CLERK 01/22/2024 06:38 PM
`NYSCEF DOC. NO. 14
`
`INDEX NO. 655566/2023
`
`RECEIVED NYSCEF: 01/22/2024
`
`SCHEDULE C
`COPYRIGHTS AND COPYRIGHT LICENSES
`
`None
`
`