Common use of Alleged Infringement of Third Party Patents Clause in Contracts

Alleged Infringement of Third Party Patents. In the event ZARS or TALISKER learns that TALISKER’s making, using or selling of Licensed Product within the Territory will infringe or is alleged by a third party to infringe a third-party patent, the party becoming aware of the same shall promptly notify the other. Where such infringement claim is a result of the use of the ZARS Technology, ZARS shall have the right, unless otherwise covered by Section 14.2, in which case ZARS shall have the obligation, to defend such suit by counsel of its choice at its own expense and shall be responsible for all damages incurred as a result thereof. In accordance with ZARS’ right to defend against an infringement claim, any appropriate response to such a claim which is aimed at resolving the issue is available to ZARS, including without limitation: (a) where possible, modifying the Licensed Product or its use and manufacture so as to be non-infringing; (b) obtaining a license or assignment from said third party; (c) filing a declaratory judgment action against such third party; (d) ignoring such third party until a lawsuit is filed; (e) filing for re-examination or challenging the patent of the third-party in an appropriate administrative hearing; or (f) obtaining a competent opinion of counsel regarding non-infringement or invalidity of the third-party patent. TALISKER hereby agrees to assist and cooperate with ZARS, at ZARS’ reasonable request and expense, in the defense of any suit related to the ZARS Technology. Unless otherwise covered by Section 14.2, if ZARS fails to proceed in a timely fashion with regard to the defense of any such claims regarding any of the ZARS Technology, TALISKER shall have the right to defend such suit by counsel of its choice at TALISKER’s expense, and ZARS shall have the right, at its own expense, to be represented in any such action by counsel of its own choice.

Alleged Infringement of Third Party Patents. In (a) If either Party becomes aware that the event ZARS or TALISKER learns that TALISKER’s development, making, using packaging, labelling, handling, storage, importation, transportation, use, distribution, promotion, offer for sale, marketing or selling sale of a Licensed Product within the Territory will infringe infringes or is alleged by a third party to infringe a third-party patentpatent of a Third Party (each, an “ Alleged Infringement ”), it shall promptly, but in any event no later than […***…] after becoming aware, notify the party becoming aware other Party. (b) The Parties shall thereafter attempt to agree upon a course of action which may include, without limitation: […***…]. In the event that the Parties do not agree upon a course of action pursuant to the preceding sentence within […***…] after learning of such Alleged Infringement, NBIX […***…]; provided however, that with respect to an Alleged Manufacturing Infringement, […***…]. If NBIX declines to assume control of the same defense of any Alleged Infringement in the Territory, then NBIX shall promptly notify the other. Where such infringement claim is a result of the use of the ZARS Technologyprovide an explanation to BIAL regarding its decision to decline to assume control, ZARS and then BIAL shall have the right, unless otherwise covered by Section 14.2, in which case ZARS shall have but not the obligation, to defend assume such suit by counsel of its choice defense, at its own expense and shall be responsible for all damages incurred as a result thereofBIAL’s expense. In accordance with ZARS’ right to defend against an infringement claim, any appropriate response to such a claim which is aimed at resolving the issue is available to ZARS, including without limitation: (a) where possible, modifying the Licensed Product or its use and manufacture so as to be non-infringing; (b) obtaining a license or assignment from said third party; (c) filing a declaratory judgment action against such third party; (d) ignoring such third party until a lawsuit is filed; (e) filing for re-examination or challenging the patent Upon request of the third-party in an appropriate administrative hearing; or (f) obtaining a competent opinion of counsel regarding non-infringement or invalidity of the third-party patent. TALISKER hereby agrees to assist and cooperate with ZARS, at ZARS’ reasonable request and expense, in the defense of any suit related to the ZARS Technology. Unless otherwise covered by Section 14.2, if ZARS fails to proceed in a timely fashion with regard to Party controlling the defense of any such claims regarding action, the other Party shall, at the controlling Party’s expense, join in any of such litigation and will have the ZARS Technologyobligation to reasonably cooperate with the controlling Party (including giving testimony and producing documents lawfully requested, TALISKER and using its reasonable efforts to make available to the other such employees who may be helpful with respect to such suit, investigation, claim or other proceeding). The controlling Party shall only have the right to defend settle any Alleged Infringement and agree the terms of such suit settlement (which may include a license), with the other Party’s consent, which shall not be unreasonably withheld. (c) In the event that (i) the development, making, packaging, labelling, handling, storage, importation, transportation, use, distribution, promotion, offer for sale, marketing or sale of a Licensed Product is deemed by counsel a court of competent jurisdiction to infringe a claim of a patent(s) owned or controlled by a Third Party in the Territory, or (ii) NBIX or its choice at TALISKERAffiliate obtains a license under such patent(s) in settlement of such claims with the consent of BIAL (such consent shall not be unreasonably withheld or delayed), or (iii) NBIX determines that it is commercially necessary to pay royalties or other fees to a Third Party to obtain a license to practice any Third Party’s expenserights in order for NBIX to carry out the activities envisaged by this Agreement in the Territory as well as to avoid the infringement of a claim of a patent(s) owned or controlled by a Third Party in the Territory (“ Third Party License ”), during the Term, then […***…]. (d) In the event there is an Alleged Manufacturing Infringement, (i) if BIAL determines it is commercially necessary to modify the process(es) for making or packaging the relevant Licensed Product to avoid the Alleged Manufacturing Infringement, all costs related to such modification (hereinafter “ Process Modification Costs ”), and/or (ii) if the Parties determine that it is commercially necessary to pay royalties or other fees to obtain Third Party License to avoid the Alleged Manufacturing Infringement in the Territory, then all such costs, license fees and royalties for such Third Party License, and ZARS (iii) all Losses (as defined in Section 16.1 hereof) resulting from such Alleged Manufacturing Infringement in the Territory (such costs, fees, and Losses described in clauses (i), (ii), and (iii) of this sentence shall have be referred to as “ Alleged Manufacturing Infringement Costs ”), then, notwithstanding any other provision of this Agreement, any and all Alleged Manufacturing Infringement Costs shall […***…]; provided however that, in the rightevent there is also an alleged manufacturing infringement outside the Territory which requires the incurrence of Process Modification Costs, at its own expensethen the Process Modification Costs […***…]: […***…]: NBIX Portion = […***…] NBIX Portion = […***…] NBIX Portion = […***…] NBIX Portion = […***…] In addition, if BIAL determines the appropriate action to take in response to an Alleged Manufacturing Infringement is to modify the process(es) for making or packaging a Licensed Product to avoid the Alleged Manufacturing Infringement, then such activities will be represented in any such action undertaken as a collaborative effort between the Parties and overseen by counsel of its own choicethe JSC.

Alleged Infringement of Third Party Patents. (a) If either Party learns that the making, packing, labeling, handling, storage, importation, transportation, use, distribution, promotion, offer for sale, marketing or sale of a Licensed Product within Field and Territory infringes or is alleged to infringe a Third Party patent, it will promptly notify the other Party. The Parties will thereafter attempt to agree upon a course of action which may include, without limitation: [**]. (b) In the event ZARS the Parties do not agree upon a course of action, [**]. (c) Subject to SEPRACOR's indemnity obligations of Section 15.1(d), BIAL agrees to pay to SEPRACOR [**] percent ([**]%) of any license fees, settlement payments, milestone payments, and royalties due by SEPRACOR to a Third Party, to enable SEPRACOR to [**] in the Territory, provided, however (i) that BIAL's obligation under this Section 12.2 (c) is contingent on [**]. Any amounts payable by BIAL under this Section 12.2 (c) will [**]. Should the amount payable by BIAL under this Section 12.2 (c) exceed the [**] in any given calendar year, the amount by which [**] will not be exceeded in any calendar year. For the avoidance of doubt, BIAL's obligation hereunder applies only to [**]. (d) Except as expressly provided in Section 12.2 (c), any costs incurred by SEPRACOR in connection with the actions that it may take pursuant to this Section 12.2, or TALISKER learns that TALISKER’s makingany license fees, using milestones, royalties or selling other payments due to a Third Party as consideration for a license of intellectual property rights used to develop, import, distribute, sell or offer for sale any Licensed Product within Products in the Territory will infringe or is alleged by a third party to infringe a third-party patent, the party becoming aware of the same shall promptly notify the other. Where such infringement claim is a result of the use of the ZARS Technology, ZARS shall have the right, unless otherwise covered by Section 14.2, in which case ZARS shall have the obligation, to defend such suit by counsel of its choice at its own expense and shall be responsible for all damages incurred as a result thereof. In accordance with ZARS’ right to defend against an infringement claim, any appropriate response to such a claim which is aimed at resolving the issue is available to ZARS, including without limitation: (a) where possible, modifying the Licensed Product or its use and manufacture so as to be non-infringing; (b) obtaining a license or assignment from said third party; (c) filing a declaratory judgment action against such third party; (d) ignoring such third party until a lawsuit is filed; (e) filing for re-examination or challenging the patent of the third-party in an appropriate administrative hearing; or (f) obtaining a competent opinion of counsel regarding non-infringement or invalidity of the third-party patent. TALISKER hereby agrees to assist and cooperate with ZARS, at ZARS’ reasonable request and expense, in the defense of any suit related to the ZARS Technology. Unless otherwise covered by Section 14.2, if ZARS fails to proceed in a timely fashion with regard to the defense of any such claims regarding any of the ZARS Technology, TALISKER shall have the right to defend such suit by counsel of its choice at TALISKER’s expense, and ZARS shall have the right, at its own expense, to be represented in any such action by counsel of its own choice[**].

Alleged Infringement of Third Party Patents. In (a) If either Party becomes aware that the event ZARS or TALISKER learns that TALISKER’s development, making, using packaging, labelling, handling, storage, importation, transportation, use, distribution, promotion, offer for sale, marketing or selling sale of a Licensed Product within the Territory will infringe infringes or is alleged by a third party to infringe a third-party patentpatent of a Third Party (each, an “Alleged Infringement”), it shall promptly, but in any event no later than […***…] after becoming aware, notify the party becoming aware other Party. (b) The Parties shall thereafter attempt to agree upon a course of action which may include, without limitation: […***…]. In the event that the Parties do not agree upon a course of action pursuant to the preceding sentence within […***…] after learning of such Alleged Infringement, NBIX […***…]; provided however, that with respect to an Alleged Manufacturing Infringement, […***…]. If NBIX declines to assume control of the same defense of any Alleged Infringement in the Territory, then NBIX shall promptly notify the other. Where such infringement claim is a result of the use of the ZARS Technologyprovide an explanation to BIAL regarding its decision to decline to assume control, ZARS and then BIAL shall have the right, unless otherwise covered by Section 14.2, in which case ZARS shall have but not the obligation, to defend assume such suit by counsel of its choice defense, at its own expense and shall be responsible for all damages incurred as a result thereofBIAL’s expense. In accordance with ZARS’ right to defend against an infringement claim, any appropriate response to such a claim which is aimed at resolving the issue is available to ZARS, including without limitation: (a) where possible, modifying the Licensed Product or its use and manufacture so as to be non-infringing; (b) obtaining a license or assignment from said third party; (c) filing a declaratory judgment action against such third party; (d) ignoring such third party until a lawsuit is filed; (e) filing for re-examination or challenging the patent Upon request of the third-party in an appropriate administrative hearing; or (f) obtaining a competent opinion of counsel regarding non-infringement or invalidity of the third-party patent. TALISKER hereby agrees to assist and cooperate with ZARS, at ZARS’ reasonable request and expense, in the defense of any suit related to the ZARS Technology. Unless otherwise covered by Section 14.2, if ZARS fails to proceed in a timely fashion with regard to Party controlling the defense of any such claims regarding action, the other Party shall, at the controlling Party’s expense, join in any of such litigation and will have the ZARS Technologyobligation to reasonably cooperate with the controlling Party (including giving testimony and producing documents lawfully requested, TALISKER and using its reasonable efforts to make available to the other such employees who may be helpful with respect to such suit, investigation, claim or other proceeding). The controlling Party shall only have the right to defend settle any Alleged Infringement and agree the terms of such suit settlement (which may include a license), with the other Party’s consent, which shall not be unreasonably withheld. (c) In the event that (i) the development, making, packaging, labelling, handling, storage, importation, transportation, use, distribution, promotion, offer for sale, marketing or sale of a Licensed Product is deemed by counsel a court of competent jurisdiction to infringe a claim of a patent(s) owned or controlled by a Third Party in the Territory, or (ii) NBIX or its choice at TALISKERAffiliate obtains a license under such patent(s) in settlement of such claims with the consent of BIAL (such consent shall not be unreasonably *** Confidential Treatment Requested withheld or delayed), or (iii) NBIX determines that it is commercially necessary to pay royalties or other fees to a Third Party to obtain a license to practice any Third Party’s expenserights in order for NBIX to carry out the activities envisaged by this Agreement in the Territory as well as to avoid the infringement of a claim of a patent(s) owned or controlled by a Third Party in the Territory (“Third Party License”), during the Term, then […***…]. (d) In the event there is an Alleged Manufacturing Infringement, (i) if BIAL determines it is commercially necessary to modify the process(es) for making or packaging the relevant Licensed Product to avoid the Alleged Manufacturing Infringement, all costs related to such modification (hereinafter “Process Modification Costs”), and/or (ii) if the Parties determine that it is commercially necessary to pay royalties or other fees to obtain Third Party License to avoid the Alleged Manufacturing Infringement in the Territory, then all such costs, license fees and royalties for such Third Party License, and ZARS (iii) all Losses (as defined in Section 16.1 hereof) resulting from such Alleged Manufacturing Infringement in the Territory (such costs, fees, and Losses described in clauses (i), (ii), and (iii) of this sentence shall have be referred to as “Alleged Manufacturing Infringement Costs”), then, notwithstanding any other provision of this Agreement, any and all Alleged Manufacturing Infringement Costs shall […***…]; provided however that, in the rightevent there is also an alleged manufacturing infringement outside the Territory which requires the incurrence of Process Modification Costs, at its own expensethen the Process Modification Costs […***…]: […***…]: NBIX Portion = […***…] *** Confidential Treatment Requested NBIX Portion = […***…] NBIX Portion = […***…] NBIX Portion = […***…] In addition, if BIAL determines the appropriate action to take in response to an Alleged Manufacturing Infringement is to modify the process(es) for making or packaging a Licensed Product to avoid the Alleged Manufacturing Infringement, then such activities will be represented in any such action undertaken as a collaborative effort between the Parties and overseen by counsel of its own choicethe JSC.