Common use of Claimed Infringement Clause in Contracts

Claimed Infringement. In the event that a Party becomes aware of any Claim that the practice by either Party of Aversion Technology in the Development, manufacture or Commercialization of a Product infringes the intellectual property rights of any Third Party, such Party shall promptly notify the other Party. In any such instance, the Parties shall cooperate with one another. Each Party shall provide to the other Party copies of any notices it receives from Third Parties regarding any patent nullity actions, any declaratory judgment actions and any alleged infringement or misappropriation of Third Party intellectual property relating to the Development, manufacture or Commercialization of a Product. Such notices shall be provided promptly, but in no event after more than ten (10) days following receipt thereof. Notwithstanding anything else to contrary under this Agreement, and without limiting any right or remedy King may otherwise have under this Agreement or at law or in equity: (a) King shall, after consulting with Acura, have the right (but not the obligation) to enter into intellectual property license agreements with such Third Parties as King reasonably believes to be necessary to avoid or settle allegations or claims regarding freedom to operate (other than for trademarks or copyrights) against a Product (other than the [***] formulation characteristics or technology of a Product) by such Third Party against either Party to this Agreement and (b) King may deduct from and set off against any royalties owed to Acura hereunder fifty percent (50%) of any royalties and other license payments paid under such license agreements to such Third Parties, up to a maximum amount such that the resulting royalties shall not be less than eighty percent (80%) of what would otherwise be payable to Acura hereunder at the Applicable Royalty Rate (for example, when the Applicable Royalty Rate is 5%, then deductions pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate payable to Acura below 4%, or for example if the Applicable Royalty Rate is 20%, then deductions pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate below 16%.

Claimed Infringement. In the event (a) If a Third Party asserts that a Party becomes aware of any Claim that the practice Patent Right or other intellectual property right owned or otherwise controlled by either Party of Aversion Technology in it is infringed by the Development, manufacture Manufacture or Commercialization of a Product, excluding Namenda (a “Third Party Infringement Claim”), the Party first made aware of such a claim shall promptly provide the other Party written notice of such claim along with the related facts in reasonable detail. (b) As between the Parties, Forest shall have the sole right, but not the obligation, to defend and resolve any Third Party Infringement Claim that is asserted against Forest or any of its Affiliates or Sublicensees (including, subject to Section 7.7(e), by entering into any settlement agreement with such Third Party); provided that the provisions of Section 7.4 shall govern the right to assert a counterclaim of infringement of any Adamas Patent Rights in connection with such defense, and the costs of any such defense or resolution shall be at Forest’s expense (except as otherwise provided in ARTICLE X). If Forest is required, based on a final judgment in any such Third Party Infringement Claim against Forest or settlement thereof, to pay a royalty or other amount with respect to the Development, Manufacture or Commercialization of a Product infringes in the intellectual property rights Field in the Territory, such amounts may be offset as set forth in Section 6.4(c)(vii) with respect to such Product, as applicable. [*] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. (c) As between the Parties, Adamas shall have the sole right, but not the obligation, to defend and resolve any Third Party Infringement Claim that is asserted against Adamas or any of its Affiliates (including, subject to Section 7.7(e), by entering into any settlement agreement with such Third Party); provided that the provisions of Section 7.4 shall govern the right to assert a counterclaim of infringement of any Adamas Patent Rights in connection with such defense, and the costs of any such defense or resolution shall be at Adamas’ expense (except as otherwise provided in ARTICLE X). [*] (d) With respect to any Third Party Infringement Claim that is asserted against both Adamas or any of its Affiliates or (sub)licensees, on the one hand, and Forest or any of its Affiliates, on the other hand, Adamas and Forest shall cooperate through the JIPWG with respect to developing and coordinating a strategy for the defense of any such Third Party Infringement Claim (including, subject to Section 7.7(e), by entering into any settlement agreement with such Third Party) and shall use Commercially Reasonable Efforts to comply with any such strategy developed by the JIPWG; provided that each Party shall have the sole right to defend and resolve of any Third Party, such Party Infringement Claim that is asserted against it or its Affiliates at its discretion. (e) Neither Party shall promptly notify enter into a settlement with respect to a Third Party Infringement Claim without the other Party. In any such instance, the Parties shall cooperate with one another. Each Party shall provide to prior consent of the other Party copies if (i) such settlement would adversely affect or diminish the rights and benefits of any notices it receives from Third Parties regarding any patent nullity actions, any declaratory judgment actions and any alleged infringement or misappropriation of Third the other Party intellectual property relating to the Development, manufacture or Commercialization of a Product. Such notices shall be provided promptly, but in no event after more than ten (10) days following receipt thereof. Notwithstanding anything else to contrary under this Agreement, and without limiting or impose any right new obligations or remedy King may otherwise have adversely affect any rights or obligations of the other Party under this Agreement or at law or (ii) in equity: (a) King shall, after consulting with Acura, have the right (but not the obligation) to enter into intellectual property license agreements connection with such Third Parties as King reasonably believes to be necessary to avoid settlement, a Party makes an admission regarding the infringement, validity or settle allegations or claims regarding freedom to operate (other than for trademarks or copyrights) against a Product (other than the [***] formulation characteristics or technology enforceability of a Product) by such Third Party against either Party Party’s Patent Rights that would be reasonably expected to this Agreement and (b) King may deduct from and set off against any royalties owed to Acura hereunder fifty percent (50%) have a material adverse effect on the Commercialization of any royalties and the Products in the Field in the other license payments paid under such license agreements to such Third Parties, up to a maximum amount such that the resulting royalties shall not be less than eighty percent (80%) of what would otherwise be payable to Acura hereunder at the Applicable Royalty Rate (for example, when the Applicable Royalty Rate is 5%, then deductions pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate payable to Acura below 4%, or for example if the Applicable Royalty Rate is 20%, then deductions pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate below 16%Party’s respective territory.

Claimed Infringement. In the event that a Third Party becomes aware at any time provides written notice of a claim to, or brings an action, suit or proceeding against, a Party, or any Claim that of its Affiliates or Sublicensees, claiming infringement of such Third Party’s Patent Rights or unauthorized use or misappropriation of such Third Party’s Know-How, based upon an assertion or claim arising out of the practice by either Party of Aversion Technology in the research, Development, manufacture Manufacture, Commercialization or Commercialization other use of a Royalty Bearing Product infringes the intellectual property rights of any by such Party (a “Third PartyParty Infringement Claim”), such Party shall promptly notify the other PartyParty of the claim or the commencement of such action, suit or proceeding, enclosing a copy of the claim and/or all papers served. In any such instanceSubject to Section 7.5, the Parties shall cooperate with one another. Each Party shall provide to the other Party copies of any notices it receives from Third Parties regarding any patent nullity actions, any declaratory judgment actions and any alleged infringement or misappropriation of its Affiliate or Sublicensee against which such Third Party intellectual property relating to the Development, manufacture or Commercialization of a Product. Such notices Infringement Claim is brought shall be provided promptly, but in no event after more than ten (10) days following receipt thereof. Notwithstanding anything else to contrary under this Agreement, and without limiting any right or remedy King may otherwise have under this Agreement or at law or in equity: (a) King shall, after consulting with Acura, have the right (sole right, but not the obligation) , to enter into intellectual property license agreements with such Third Parties as King reasonably believes to be necessary to avoid or settle allegations or claims regarding freedom to operate (other than for trademarks or copyrights) against a Product (other than the [***] formulation characteristics or technology of a Product) by defend such Third Party against either Infringement Claim. When calculating any royalties due hereunder to the other Party, the sued Party may deduct from Net Sales with respect to this Agreement a calendar quarter (a) all reasonable out-of-pocket litigation expenses incurred by such Party, its Affiliate or Sublicensee in the defense of such Third Party Infringement Claim during such calendar quarter, and (b) King may deduct from any amounts paid by the sued Party or its Affiliates in settlement or as damages with respect to such Third Party Infringement Claim with respect to past infringement (and set off any settlement shall reflect a reasonable allocation of payments for past infringement and royalties on future sales in proportion to the past infringing sales and the anticipated future sales); provided, however, that (1) the sued Party shall not settle a claim for non-monetary consideration unless (A) the sued Party solely bears the cost of such settlement or (B) the Parties agree to the allocation of the fair market value of such consideration against any royalties owed to Acura hereunder Net Sales, (2) in no event will a deduction under this Section 7.4 reduce Net Sales by more than fifty percent (50%) of any royalties and other license payments paid under such license agreements with respect to such Third Parties, up to a maximum amount such calendar quarter and (3) any deduction that the resulting royalties shall is not be less than eighty percent (80%) of what would otherwise be payable to Acura hereunder at the Applicable Royalty Rate (for example, when the Applicable Royalty Rate is 5%, then deductions usable pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate payable to Acura below 4%, or subclause (2) may be carried forward for example if the Applicable Royalty Rate is 20%, then deductions pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate below 16%use in a future period.

Claimed Infringement. (a) In the event that a Party becomes aware of third party at any Claim that the practice by either Party of Aversion Technology in the Development, manufacture or Commercialization time provides a written notice of a claim to, or brings an action, suit or proceeding against, either Party, or any of their respective Affiliates or Sub-licensee, claiming infringement of its patent rights or unauthorized use or misappropriation of its know-how, based upon an assertion or claim arising out of the development, use, manufacture, distribution, importation or sale of Licensed Product infringes the intellectual property rights of any under this Agreement (“Third PartyParty Claim”), such Party shall promptly notify the other Party. In any Party of such instanceThird Party Claim or the commencement of the action, the Parties shall cooperate with one anothersuit or proceeding thereof, enclosing a copy of such Third Party Claim and all papers served. Each Party shall provide agrees to make available to the other Party copies its advice and counsel regarding the technical merits of any notices it receives from Third Parties regarding any patent nullity actions, any declaratory judgment actions and any alleged infringement or misappropriation of such Third Party intellectual property relating Claim at no cost to the Developmentother Party and to offer reasonable assistance to the other Party at no cost to the other Party. (b) Except as otherwise decided by JDC, manufacture or Commercialization of a Productthe Party against which such Third Party Claim is brought shall defend against such Third Party Claim at its sole expense and the other Party shall have the option to participate in any such suit at its own expense. Such notices other Party shall be provided promptlyreasonably cooperate with the Party conducting the defense against such Third Party Claim. (c) If, but in no event after more than ten any country in the Territory, PHARMAENGINE is required (10either by final judgment from a court of competent jurisdiction or pursuant to the terms of any settlement that complies with the provisions of Article 9.4) days following receipt thereof. Notwithstanding anything else to contrary under this Agreement, and without limiting pay a third party a royalty or make any right or remedy King may otherwise have under this Agreement or at law or in equity: (a) King shall, after consulting with Acura, have payment of any kind for the right to practice HERMES Intellectual Property in said country (but not the obligationPayment to Third Party), except as otherwise negotiated with good faith and determined by both Parties in JDC, an amount: (1) equal to enter into intellectual property license agreements with such Third Parties as King reasonably believes to be necessary to avoid or settle allegations or claims regarding freedom to operate (other than for trademarks or copyrights) against a Product (other than the [**] percent ([**] formulation characteristics or technology of a Product) by such Third Party against either Party to this Agreement and (b) King may deduct from and set off against any royalties owed to Acura hereunder fifty percent (50%) of any royalties and other license payments paid Payment to Third Party shall be deducted on a [**] basis from the Royalties payable in said country under Article 8 to the extent that such license agreements to such Third Partiesdeduction shall be not more than [**] percents ([**] %) of the Royalties payable in said country under Article 8, up to a maximum amount such in the event that the resulting royalties infringed patent right of such third party is a prior art of the technology at issue, or that the claim(s) of HERMES Patent Rights at issue is invalid or may be invalidated by such third party; and (2) equal to the Royalty to Third Party shall be deducted on a [**] basis from the Royalties payable in said country under Article 8 to the extent that such deduction shall be not more than [**] percents ([**] %) of the Royalties payable in said country under Article 8, in the event that PHARMAENGINE is necessary to acquire the license(s) from such third party while practicing the technology in accordance with HERMES Intellectual Property; However, in no case shall the Royalties payable in said country after said deductions be less than [**] percent ([**] %) of Net Sales in said country. (d) Neither Party shall settle any Third Party Claim involving rights of the other Party without obtaining the prior written consent of the other Party, which consent shall not be less than eighty percent (80%) of what would otherwise be payable to Acura hereunder at the Applicable Royalty Rate (for example, when the Applicable Royalty Rate is 5%, then deductions pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate payable to Acura below 4%, or for example if the Applicable Royalty Rate is 20%, then deductions pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate below 16%unreasonably withheld.

Claimed Infringement. In the event (a) If a Third Party asserts that a Party becomes aware of any Claim that the practice Patent Right or other intellectual property right owned or otherwise controlled by either Party of Aversion Technology in it is infringed by the Development, manufacture Manufacture or Commercialization of a Product, excluding Namenda (a “Third Party Infringement Claim”), the Party first made aware of such a claim shall promptly provide the other Party written notice of such claim along with the related facts in reasonable detail. (b) As between the Parties, Forest shall have the sole right, but not the obligation, to defend and resolve any Third Party Infringement Claim that is asserted against Forest or any of its Affiliates or Sublicensees (including, subject to Section 7.7(e), by entering into any settlement agreement with such Third Party); provided that the provisions of Section 7.4 shall govern the right to assert a counterclaim of infringement of any Xxxxxx Patent Rights in connection with such defense, and the costs of any such defense or resolution shall be at Forest’s expense (except as otherwise provided in ARTICLE X). If Forest is required, based on a final judgment in any such Third Party Infringement Claim against Forest or settlement thereof, to pay a royalty or other amount with respect to the Development, Manufacture or Commercialization of a Product infringes in the intellectual property rights Field in the Territory, such amounts may be offset as set forth in Section 6.4(c)(vii) with respect to such Product, as applicable. [*] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. (c) As between the Parties, Xxxxxx shall have the sole right, but not the obligation, to defend and resolve any Third Party Infringement Claim that is asserted against Adamas or any of its Affiliates (including, subject to Section 7.7(e), by entering into any settlement agreement with such Third Party); provided that the provisions of Section 7.4 shall govern the right to assert a counterclaim of infringement of any Adamas Patent Rights in connection with such defense, and the costs of any such defense or resolution shall be at Adamas’ expense (except as otherwise provided in ARTICLE X). [*] (d) With respect to any Third Party Infringement Claim that is asserted against both Adamas or any of its Affiliates or (sub)licensees, on the one hand, and Forest or any of its Affiliates, on the other hand, Adamas and Forest shall cooperate through the JIPWG with respect to developing and coordinating a strategy for the defense of any such Third Party Infringement Claim (including, subject to Section 7.7(e), by entering into any settlement agreement with such Third Party) and shall use Commercially Reasonable Efforts to comply with any such strategy developed by the JIPWG; provided that each Party shall have the sole right to defend and resolve of any Third Party, such Party Infringement Claim that is asserted against it or its Affiliates at its discretion. (e) Neither Party shall promptly notify enter into a settlement with respect to a Third Party Infringement Claim without the other Party. In any such instance, the Parties shall cooperate with one another. Each Party shall provide to prior consent of the other Party copies if (i) such settlement would adversely affect or diminish the rights and benefits of any notices it receives from Third Parties regarding any patent nullity actions, any declaratory judgment actions and any alleged infringement or misappropriation of Third the other Party intellectual property relating to the Development, manufacture or Commercialization of a Product. Such notices shall be provided promptly, but in no event after more than ten (10) days following receipt thereof. Notwithstanding anything else to contrary under this Agreement, and without limiting or impose any right new obligations or remedy King may otherwise have adversely affect any rights or obligations of the other Party under this Agreement or at law or (ii) in equity: (a) King shall, after consulting with Acura, have the right (but not the obligation) to enter into intellectual property license agreements connection with such Third Parties as King reasonably believes to be necessary to avoid settlement, a Party makes an admission regarding the infringement, validity or settle allegations or claims regarding freedom to operate (other than for trademarks or copyrights) against a Product (other than the [***] formulation characteristics or technology enforceability of a Product) by such Third Party against either Party Party’s Patent Rights that would be reasonably expected to this Agreement and (b) King may deduct from and set off against any royalties owed to Acura hereunder fifty percent (50%) have a material adverse effect on the Commercialization of any royalties and the Products in the Field in the other license payments paid under such license agreements to such Third Parties, up to a maximum amount such that the resulting royalties shall not be less than eighty percent (80%) of what would otherwise be payable to Acura hereunder at the Applicable Royalty Rate (for example, when the Applicable Royalty Rate is 5%, then deductions pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate payable to Acura below 4%, or for example if the Applicable Royalty Rate is 20%, then deductions pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate below 16%Party’s respective territory.

Claimed Infringement. In the event (a) If a Third Party asserts that a Party becomes aware of any Claim that the practice Patent Right or other intellectual property right owned or otherwise controlled by either Party of Aversion Technology in it is infringed by the Development, manufacture Manufacture or Commercialization of a Product, excluding Namenda (a “Third Party Infringement Claim”), the Party first made aware of such a claim shall promptly provide the other Party written notice of such claim along with the related facts in reasonable detail. (b) As between the Parties, Forest shall have the sole right, but not the obligation, to defend and resolve any Third Party Infringement Claim that is asserted against Forest or any of its Affiliates or Sublicensees (including, subject to Section 7.7(e), by entering into any settlement agreement with such Third Party); provided that the provisions of Section 7.4 shall govern the right to assert a counterclaim of infringement of any Adamas Patent Rights in connection with such defense, and the costs of any such defense or resolution shall be at Forest’s expense (except as otherwise provided in ARTICLE X). If Forest is required, based on a final judgment in any such Third Party Infringement Claim against Forest or settlement thereof, to pay a royalty or other amount with respect to the Development, Manufacture or Commercialization of a Product infringes in the intellectual property rights Field in the Territory, such amounts may be offset as set forth in Section 6.4(c)(vii) with respect to such Product, as applicable. (c) As between the Parties, Adamas shall have the sole right, but not the obligation, to defend and resolve any Third Party Infringement Claim that is asserted against Adamas or any of its Affiliates (including, subject to Section 7.7(e), by entering into any settlement agreement with such Third Party); provided that the provisions of Section 7.4 shall govern the right to assert a counterclaim of infringement of any Adamas Patent Rights in connection with such defense, and the costs of any such defense or resolution shall be at Adamas’ expense (except as otherwise provided in ARTICLE X). [ * ] (d) With respect to any Third Party Infringement Claim that is asserted against both Adamas or any of its Affiliates or (sub)licensees, on the one hand, and Forest or any of its Affiliates, on the other hand, Adamas and Forest shall cooperate through the JIPWG with respect to developing and coordinating a strategy for the defense of any such Third Party [*] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. Infringement Claim (including, subject to Section 7.7(e), by entering into any settlement agreement with such Third Party) and shall use Commercially Reasonable Efforts to comply with any such strategy developed by the JIPWG; provided that each Party shall have the sole right to defend and resolve of any Third Party, such Party Infringement Claim that is asserted against it or its Affiliates at its discretion. (e) Neither Party shall promptly notify enter into a settlement with respect to a Third Party Infringement Claim without the other Party. In any such instance, the Parties shall cooperate with one another. Each Party shall provide to prior consent of the other Party copies if (i) such settlement would adversely affect or diminish the rights and benefits of any notices it receives from Third Parties regarding any patent nullity actions, any declaratory judgment actions and any alleged infringement or misappropriation of Third the other Party intellectual property relating to the Development, manufacture or Commercialization of a Product. Such notices shall be provided promptly, but in no event after more than ten (10) days following receipt thereof. Notwithstanding anything else to contrary under this Agreement, and without limiting or impose any right new obligations or remedy King may otherwise have adversely affect any rights or obligations of the other Party under this Agreement or at law or (ii) in equity: (a) King shall, after consulting with Acura, have the right (but not the obligation) to enter into intellectual property license agreements connection with such Third Parties as King reasonably believes to be necessary to avoid settlement, a Party makes an admission regarding the infringement, validity or settle allegations or claims regarding freedom to operate (other than for trademarks or copyrights) against a Product (other than the [***] formulation characteristics or technology enforceability of a Product) by such Third Party against either Party Party’s Patent Rights that would be reasonably expected to this Agreement and (b) King may deduct from and set off against any royalties owed to Acura hereunder fifty percent (50%) have a material adverse effect on the Commercialization of any royalties and the Products in the Field in the other license payments paid under such license agreements to such Third Parties, up to a maximum amount such that the resulting royalties shall not be less than eighty percent (80%) of what would otherwise be payable to Acura hereunder at the Applicable Royalty Rate (for example, when the Applicable Royalty Rate is 5%, then deductions pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate payable to Acura below 4%, or for example if the Applicable Royalty Rate is 20%, then deductions pursuant to this Section 11.5 shall not reduce the Applicable Royalty Rate below 16%Party’s respective territory.