Common use of Challenges of Patent Rights Clause in Contracts

Challenges of Patent Rights. If, during the Term, DS (a) commences or participates in any action or proceeding (including any patent opposition or re-examination proceeding), or otherwise asserts any claim, challenging or denying the validity or enforceability of any claim of any Esperion Patent Rights that have been specifically identified to DS in writing (including as of the Effective Date, as set forth and identified on Schedule 10.2.4) or (b) actively assists any other Person in bringing or prosecuting any action or proceeding (including any patent opposition or re-examination proceeding) challenging or denying the validity or enforceability of any claim of such Esperion Patent Rights (each of (a) and (b), a “Patent Challenge”), then, to the extent permitted by the applicable Laws, Esperion shall have the right, exercisable within [***] days following receipt of notice regarding such Patent Challenge, in its sole discretion, to give notice to DS that Esperion may terminate the license(s) granted under such Esperion Patent Right(s) to DS pursuant to this Agreement [***] days following such notice (or such longer period as Esperion may designate in such notice), and, unless DS withdraws or causes to be withdrawn all such challenge(s) (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges that DS does not have the power to unilaterally withdraw or cause to be withdrawn, DS ceases actively assisting any other party to such Patent Challenge and, to the extent DS is a party to such Patent Challenge, it withdraws from such Patent Challenge) within such [***]-day period, Esperion shall have the right to terminate the license(s) granted under such Esperion Patent Right(s) to DS pursuant to this Agreement by providing written notice thereof to DS.

Challenges of Patent Rights. If, If during the Term, DS Term Genzyme or any of its Affiliates (a) commences or participates in any action or proceeding (including any patent opposition or re-examination proceeding), or otherwise asserts any claim, challenging or denying the validity or enforceability of any Alnylam Patent or any claim of any Esperion Patent Rights that have been specifically identified to DS in writing (including as of the Effective Date, as set forth and identified on Schedule 10.2.4) thereof or (b) actively assists any other Person person or entity in bringing or prosecuting any action or proceeding (including any patent opposition or re-examination proceeding) challenging or denying the validity or enforceability of any claim of such Esperion Patent Rights or any claim thereof (each of (a) and (b), a “Patent Challenge”), then, to the extent permitted by the applicable Laws, Esperion Alnylam shall have the right, exercisable within [***] days following receipt of notice regarding such Patent Challenge, in its sole discretion, to give notice to DS Genzyme that Esperion Alnylam may terminate the license(s) granted under such Esperion Patent Right(s) to DS pursuant to this Agreement [***] ninety (90) days following such notice (or such longer period as Esperion Alnylam may designate in such notice), and, unless DS Genzyme or such Affiliate withdraws or causes to be withdrawn all such challenge(s) (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges that DS does Genzyme or Genzyme’s Affiliates do not have the power to unilaterally withdraw or cause to be withdrawn, DS ceases Genzyme and Genzyme’s Affiliates cease actively assisting any other party to such Patent Challenge and, to the extent DS Genzyme or a Genzyme Affiliate is a party to such Patent Challenge, it withdraws from such Patent Challenge) within such [***]-day ninety (90)-day period, Esperion shall Alnylam will have the right to terminate the license(s) granted under such Esperion Patent Right(s) to DS pursuant to this Agreement by providing written notice thereof to DSGenzyme. The foregoing sentence shall not apply (i) with respect to any Alnylam Patent that Alnylam first asserts against Genzyme or any of its Affiliates where the Patent Challenge is made in defense of such assertion, (ii) with respect to any Patent Challenge commenced by a Third Party that after the Effective Date acquires or is acquired by Genzyme or its Affiliates or its or their business or assets, whether by stock purchase, merger, asset purchase or otherwise, but only with respect to Patent Challenges commenced prior to the closing of such acquisition.

Challenges of Patent Rights. If, during the Term, DS Genzyme or any of its Affiliates (a) commences or participates in any action or proceeding (including any patent opposition or re-examination proceeding), or otherwise asserts any claim, challenging or denying the validity or enforceability of any claim of the Alnylam Core Technology Patents (as defined in any Esperion Patent Rights that have been specifically identified to DS in writing (including as of the Effective Date, as set forth and identified on Schedule 10.2.4License Terms) that Covers any siRNA in any Option Product or Collaboration Product or is licensed by Genzyme under any License Terms or (b) actively assists any other Person in bringing or prosecuting any action or proceeding (including any patent opposition or re-examination proceeding) challenging or denying the validity or enforceability of any claim of such Esperion Patent Rights (each of (a) and (b), a “Patent Challenge”), then, to the extent permitted by the applicable Laws, Esperion Alnylam shall have the right, exercisable within [***] sixty (60) days following receipt of notice regarding such Patent Challenge, in its sole discretion, to give notice to DS Genzyme that Esperion Alnylam may terminate the license(sCollaboration Agreement ninety (90) granted under such Esperion Patent Right(s) to DS pursuant to this Agreement [***] days following such notice (or such longer period as Esperion Alnylam may designate in such notice), and, unless DS Genzyme or such Affiliate withdraws or causes to be withdrawn all such challenge(s) (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges that DS does Genzyme or Genzyme’s Affiliates do not have the power to unilaterally withdraw or cause to be withdrawn, DS ceases Genzyme and Genzyme’s Affiliates cease actively assisting any other party to such Patent Challenge and, to the extent DS Genzyme or a Genzyme Affiliate is a party to such Patent Challenge, it withdraws from such Patent Challenge) within such [***]-day ninety (90)-day period, Esperion Alnylam shall have the right to terminate the license(s) granted under such Esperion Patent Right(s) to DS pursuant to this Collaboration Agreement by providing written notice thereof to DSGenzyme. The foregoing sentence shall not apply (i) with respect to any claim of an Alnylam Core Technology Patent that Covers any siRNA in any Option Product or Collaboration Product or is licensed by Genzyme under any License Terms that Alnylam first asserts against Genzyme or any of its Affiliates where the Patent Challenge is made in defense of such assertion, or (ii) with respect to any Patent Challenge commenced by a Third Party that after the Execution Date acquires or is acquired by Genzyme or its Affiliates or its or their business or assets, whether by stock purchase, merger, asset purchase or otherwise, but only with respect to Patent Challenges commenced prior to the closing of such acquisition.

Challenges of Patent Rights. If, during the Term, DS DSE (a) commences or participates in any action or proceeding (including any patent opposition or re-examination proceeding), or otherwise asserts any claim, challenging or denying the validity or enforceability of any claim of any Esperion Patent Rights that have been specifically identified to DS DSE in writing (including as of the Effective Date, as set forth and identified on Schedule 10.2.4) 10.2.5 or (b) actively assists any other Person in bringing or prosecuting any action or proceeding (including any patent opposition or re-examination proceeding) challenging or denying the validity or enforceability of any claim of such Esperion Patent Rights (each of (a) and (b), a “Patent Challenge”), then, to the extent permitted by the applicable Laws, Esperion shall have the right, exercisable within [***] days following receipt of notice regarding such Patent Challenge, in its sole discretion, to give notice to DS DSE that Esperion may terminate the license(s) granted to under such Esperion Patent Right(s) to DS DSE pursuant to this Agreement [***] days following such notice (or such longer period as the Esperion may designate in such notice), and, unless DS DSE withdraws or causes to be withdrawn all such challenge(s) (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges that DS DSE does not have the power to unilaterally withdraw or cause to be withdrawn, DS DSE ceases actively assisting any other party to such Patent Challenge and, to the extent DS DSE is a party to such Patent Challenge, it withdraws from such Patent Challenge) within such [***]-day period, Esperion shall have the right to terminate the license(s) granted to under such Esperion Patent Right(s) to DS DSE pursuant to this the Agreement by providing written notice thereof to DSDSE.

Challenges of Patent Rights. If, during the Term, DS AbbVie or any of its Affiliates (a) commences or participates as a party in any claim, demand, action or proceeding before any administrative or regulatory body (including any patent opposition or opposition, re-examination or invalidation proceeding), or otherwise asserts any claim, challenging or denying the validity or enforceability of any Voyager Background Patent Right that Covers a Licensed Product as Exploited by AbbVie or any of its Affiliates or Sublicensees under this Agreement, Collaboration Patent Right or Joint Patent Right, or any claim of any Esperion Patent Rights that have been specifically identified to DS in writing (including as of the Effective Datethereof, as set forth and identified on Schedule 10.2.4) or (b) actively assists any other Person in bringing bringing, prosecuting or prosecuting participating in any claim, demand, action or proceeding before any administrative or regulatory body (including any patent opposition or opposition, re-examination or invalidation proceeding) challenging or denying the validity or enforceability of any such Voyager Background Patent Right, Collaboration Patent Right or Joint Patent Right, or any claim of such Esperion Patent Rights thereof (each of (a) and (b), a “Patent Challenge”), then, to the extent permitted by the applicable LawsLaw and except as otherwise set forth in this Section 16.2.2, Esperion Voyager shall have the right, exercisable within [***] days following receipt of notice regarding such Patent Challenge, in its sole discretion, to give terminate this Agreement upon at least twenty (20) days prior written notice to DS AbbVie; provided that Esperion may Voyager shall not have the right to terminate the license(s) granted under such Esperion Patent Right(s) to DS pursuant to this Agreement [***] days following such notice (or such longer period if AbbVie and each of its Affiliates, as Esperion may designate in such notice)applicable, and, unless DS withdraws or causes to be withdrawn all such challenge(s) Patent Challenges (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges that DS AbbVie or such Affiliate does not have the power to unilaterally withdraw or cause to be withdrawn, DS AbbVie and each of its Affiliates, as applicable, ceases actively assisting any other party Person with respect to such Patent Challenge and, to the extent DS AbbVie or any of its Affiliates, is a party to such Patent Challenge, it withdraws from such Patent Challenge) within twenty (20) days after Voyager provides AbbVie notice regarding such [***]-day periodPatent Challenge. Notwithstanding the foregoing, Esperion nothing in this Section 16.2.2 shall: (i) prevent AbbVie or its Affiliates from asserting any defense or counterclaim in, or otherwise responding to, an action for infringement of intellectual property in a court proceeding or in an administrative or regulatory proceeding against AbbVie or any of its Affiliates brought by, or, with respect to administrative or regulatory proceedings, triggered by the actions of, Voyager or any of its Affiliates or its or their sublicensees; or (ii) allow Voyager to terminate this Agreement if AbbVie or its Affiliates assert their rights as provided in clause (i). In addition, notwithstanding the foregoing, Voyager shall not have the right to terminate the license(s) granted under such Esperion Patent Right(s) to DS this Agreement pursuant to this Agreement by providing written Section 16.2.2 if any Affiliate that first becomes an Affiliate of AbbVie after the Effective Date was undertaking activities in connection with a Patent Challenge prior to such Affiliate first becoming an Affiliate of AbbVie if AbbVie causes such Patent Challenge to be withdrawn (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges that such Affiliate does not have the power to unilaterally withdraw or cause to be withdrawn, such Affiliate ceases actively assisting any Person with respect to such Patent Challenge and, to the extent such Affiliate is a party to such Patent Challenge, it withdraws from such Patent Challenge) within [**] of the later of (x) the date such Affiliate first becomes an Affiliate of AbbVie and (y) the date Voyager provides AbbVie notice thereof to DSregarding such Patent Challenge.

Challenges of Patent Rights. If, during the Term, DS Alnylam or any of its Affiliates (a) commences or participates in any action or proceeding (including any patent opposition or re-examination proceeding), or otherwise asserts any claim, challenging or denying the validity or enforceability of any claim of any Esperion within the Genzyme Patent Rights that have been specifically identified to DS in writing (including as of the Effective Date, as set forth and identified on Schedule 10.2.4) or (b) actively assists any other Person in bringing or prosecuting any action or proceeding (including any patent opposition or re-examination proceeding) challenging or denying the validity or enforceability of any claim of such Esperion Patent Rights (each of (a) and (b), a “Patent Challenge”), then, to the extent permitted by the applicable Laws, Esperion Genzyme shall have the right, exercisable within [***] days following receipt of notice regarding such Patent Challenge, in its sole discretion, to give notice to DS Alnylam that Esperion Genzyme may terminate the license(s) granted under such Esperion Patent Right(s) to DS pursuant to this Agreement [***] days following such notice (or such longer period as Esperion Genzyme may designate in such notice), and, unless DS Alnylam or such Affiliate withdraws or causes to be withdrawn all such challenge(s) (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges that DS does Alnylam or Alnylam’s Affiliates do not have the power to unilaterally withdraw or cause to be withdrawn, DS ceases Alnylam and Alnylam’s Affiliates cease actively assisting any other party to such Patent Challenge and, to the extent DS Alnylam or an Alnylam Affiliate is a party to such Patent Challenge, it withdraws from such Patent Challenge) within such [***]-day period, Esperion Genzyme shall have the right to terminate the license(s) granted under such Esperion Patent Right(s) to DS pursuant to this Agreement by providing written notice thereof to DSAlnylam. The foregoing sentence shall not apply with respect to any Patent Challenge commenced by a Third Party that after the Effective Date acquires or is acquired by Alnylam or its Affiliates or its or their business or assets, whether by stock purchase, merger, asset purchase or otherwise, but only with respect to Patent Challenges commenced prior to the closing of such acquisition.