Common use of Covenant Not to Challenge Clause in Contracts

Covenant Not to Challenge. After the Effective Date and for so long as Agilent’s license is in force, Agilent further covenants that, except as (1) required by law or (2) in defense of an action for infringing a Licensed Enzo Patent brought against it or its Affiliates, or against its or their agents, representatives, suppliers, vendors, contractors, manufacturers, distributors, licensees, resellers, licensees, users, and customers (direct or indirect) involving any Licensed Agilent Products, it shall not knowingly and voluntarily contest (or assist in the contest) in any forum, including Federal Courts, whether under 28 U.S.C. §§ 2201-2202 or not, the United States Patent and Trademark Office, and/or the International Trade Commission, that the Licensed Enzo Patents are valid and enforceable; provided, however, nothing in this Agreement shall prevent Agilent or its Affiliates from complying with or responding to any court or governmental order or subpoena relating to the Licensed Enzo Patents. Notwithstanding the foregoing, nothing in this Agreement will preclude Agilent and its Affiliates from making any disclosure, providing information or producing documents as required by law, court order or legal process (including, without limitation, litigation related to discovery and/or subpoena), even if made in connection with a proceeding challenging the validity or enforceability of one or more of the Licensed Enzo Patents, and any such disclosure will not be considered a breach of this Agreement. It is understood that Agilent’s and its Affiliates’ providing factual statements regarding Licensed Agilent Products or any Third Party products containing them in response to a validly propounded subpoena will not be considered as assisting in the contest as used above. Agilent reserves the right to raise any and all defenses and counterclaims, including, but not limited to, invalidity and unenforceability of the Licensed Enzo Patents, and to otherwise contest the validity and enforceability of the Licensed Enzo Patents in any forum, that it could have raised in the Litigation, if a Licensed Enzo Patent is asserted based on Licensed Agilent Products or Third Party products containing them against Agilent, its Affiliates, customers, licensees, partners or users after the Effective Date; and Enzo reserves the right to raise any and all claims and defenses in opposition.

Covenant Not to Challenge. After the Effective Date and for so long as Agilent’s Siemens’ license is in force, Agilent Siemens further covenants that, except as (1) required by law or (2) in defense of an action for infringing a the Licensed Enzo Patent Patents brought against it or its Affiliates, or against its or their agents, representatives, suppliers, vendors, contractors, manufacturers, distributors, licensees, resellers, licensees, users, and customers (direct or indirect) involving any Licensed Agilent Siemens Products, it shall not knowingly and voluntarily contest (contest, or assist in the contest) , or encourage any other Person to contest, in any forum, including Federal Courts, whether under 28 U.S.C. §§ 2201-2202 or not, the United States Patent and Trademark Office, and/or the International Trade Commission, that the Licensed Enzo Patents are valid and enforceable; provided, however, nothing in this Agreement shall prevent Agilent Siemens or its Affiliates from complying with or responding to any court or governmental order or subpoena relating to the Licensed Enzo Patents. Notwithstanding the foregoing, nothing in this Agreement will preclude Agilent Siemens and its Affiliates from making any disclosure, providing information or producing documents as required by law, court order or legal process (including, without limitation, litigation related to discovery and/or subpoena), even if made in connection with a proceeding challenging the validity or enforceability of one or more of the Licensed Enzo Patents, and any such disclosure will not be considered a breach of this Agreement. It is understood that Agilent’s Siemens’ and its Affiliates’ providing factual statements regarding Licensed Agilent Siemens Products or any Third Party products containing them in response to a validly propounded subpoena will not be considered as assisting in the contest as used above. Agilent Siemens reserves the right to raise any and all defenses and counterclaims, including, but not limited to, invalidity and unenforceability of the Licensed Enzo Patents, and to otherwise contest the validity and enforceability of the Licensed Enzo Patents in any forum, that it could have raised in the Litigation, if a any of the Licensed Enzo Patent Patents is asserted based on Licensed Agilent Siemens Products or Third Party products containing them against AgilentSiemens, its Affiliates, customers, licensees, partners partners, distributors, manufacturers, suppliers, vendors, contractors, resellers, or users after the Effective Date; and Enzo reserves the right to raise any and all claims and defenses in opposition.

Covenant Not to Challenge. After the Effective Date and for so long as AgilentAffymetrix’s license is in force, Agilent Affymetrix further covenants that, except as (1) required by law or (2) in defense of an action for infringing a the Licensed Enzo Patent brought against it or its Affiliates, or against its or their agents, representatives, suppliers, vendors, contractors, manufacturers, distributors, licensees, resellers, licensees, users, and customers (direct or indirect) involving any Licensed Agilent Affymetrix Products, it shall not knowingly and voluntarily contest (or assist in the contest) in any forum, including Federal Courts, whether under 28 U.S.C. §§ 2201-2202 or not, the United States Patent and Trademark Office, and/or the International Trade Commission, that the Licensed Enzo Patents are Patent is valid and enforceable; provided, however, nothing in this Agreement shall prevent Agilent Affymetrix or its Affiliates from complying with or responding to any court or governmental order or subpoena relating to the Licensed Enzo PatentsPatent. Notwithstanding the foregoing, nothing in this Agreement will preclude Agilent Affymetrix and its Affiliates from making any disclosure, providing information or producing documents as required by law, court order or legal process (including, without limitation, litigation related to discovery and/or subpoena), even if made in connection with a proceeding challenging the validity or enforceability of one or more of the Licensed Enzo PatentsPatent, and any such disclosure will not be considered a breach of this Agreement. It is understood that AgilentAffymetrix’s and its Affiliates’ providing factual statements regarding Licensed Agilent Affymetrix Products or any Third Party products containing them in response to a validly propounded subpoena will not be considered as assisting in the contest as used above. Agilent Affymetrix reserves the right to raise any and all defenses and counterclaims, including, but not limited to, invalidity and unenforceability of the Licensed Enzo PatentsPatent, and to otherwise contest the validity and enforceability of the Licensed Enzo Patents Patent in any forum, that it could have raised in the Litigation, if a the Licensed Enzo Patent is asserted based on Licensed Agilent Affymetrix Products or Third Party products containing them against AgilentAffymetrix, its Affiliates, customers, licensees, partners or users after the Effective Date; and Enzo reserves the right to raise any and all claims and defenses in opposition.

Covenant Not to Challenge. After the Effective Date and for so long as AgilentLuminex’s license is in force, Agilent Luminex further covenants that, except as (1) required by law or (2) in defense of an action for infringing a the Licensed Enzo Patent Patents brought against it or its Affiliates, or against its or their agents, representatives, suppliers, vendors, contractors, manufacturers, distributors, licensees, resellers, licensees, users, and customers (direct or indirect) involving any Licensed Agilent Luminex Products, it shall not knowingly and voluntarily contest (contest, or assist in the contest) , or encourage any other Person to contest, in any forum, including Federal Courts, whether under 28 U.S.C. §§ 2201-2202 or not, the United States Patent and Trademark Office, and/or the International Trade Commission, that the Licensed Enzo Patents are valid and enforceable; provided, however, nothing in this Agreement shall prevent Agilent Luminex or its Affiliates from complying with or responding to any court or governmental order or subpoena relating to the Licensed Enzo Patents. Notwithstanding the foregoing, nothing in this Agreement will preclude Agilent Luminex and its Affiliates from making any disclosure, providing information or producing documents as required by law, court order or legal process (including, without limitation, litigation related to discovery and/or subpoena), even if made in connection with a proceeding challenging the validity or enforceability of one or more of the Licensed Enzo Patents, and any such disclosure will not be considered a breach of this Agreement. It is understood that AgilentLuminex’s and its Affiliates’ providing factual statements regarding Licensed Agilent Luminex Products or any Third Party products containing them in response to a validly propounded subpoena will not be considered as assisting in the contest as used above. Agilent Luminex reserves the right to raise any and all defenses and counterclaims, including, but not limited to, invalidity and unenforceability of the Licensed Enzo Patents, and to otherwise contest the validity and enforceability of the Licensed Enzo Patents in any forum, that it could have raised in the Litigation, if a any of the Licensed Enzo Patent Patents is asserted based on Licensed Agilent Luminex Products or Third Party products containing them against AgilentLuminex, its Affiliates, customers, licensees, partners partners, distributors, manufacturers, suppliers, vendors, contractors, resellers, or users after the Effective Date; and Enzo reserves the right to raise any and all claims and defenses in opposition.

Covenant Not to Challenge. After the Effective Date and for so long as AgilentIllumina’s license is in force, Agilent Illumina further covenants on behalf of itself and its Affiliates that, except as (1i) required by law or (2ii) in defense of an action for infringing a the Licensed Enzo Patent Rights brought against it or Illumina, its Affiliates, or against its Affiliates or their agents, representatives, suppliers, vendors, contractors, manufacturers, distributors, licensees, resellers, licensees, users, and customers respective Related Persons (direct or indirect) involving any Licensed Agilent Illumina Products or Covered Third Party Products, it neither Illumina nor its Affiliates shall not knowingly and voluntarily contest (or assist in the contest) in any forum, including Federal Courts, whether under 28 U.S.C. §§ 2201-2202 or not, the United States Patent and Trademark Office, and/or the International Trade Commission, that the Licensed Enzo Patents Patent Rights are valid and enforceable; provided, however, nothing in this Agreement shall prevent Agilent Illumina or its Affiliates from complying with or responding to any court or governmental order or subpoena relating to the Licensed Enzo PatentsPatent Rights. Notwithstanding the foregoing, nothing in this Agreement will preclude Agilent Illumina and its Affiliates from making REVIEWED BY LEGAL Initials: RHS Date: 6/29/16 ILLUMINA 5 SUBJECT TO FRE 408 any disclosure, providing information or producing documents as required by law, court order or legal process (including, without limitation, litigation related to discovery and/or subpoena), even if made in connection with a proceeding Claim challenging the validity or enforceability of one or more of the Licensed Enzo PatentsPatent Rights, and any such disclosure will not be considered a breach of this Agreement. It is understood that AgilentIllumina’s and its Affiliates’ providing factual statements regarding Licensed Agilent Illumina Products or any Covered Third Party products containing them Products in response to a validly propounded subpoena will not be considered as assisting in the contest context as used above. Agilent Illumina reserves the right to raise any and all defenses and counterclaims, including, but not limited to, invalidity and unenforceability of the Licensed Enzo PatentsPatent Rights, and to otherwise contest the validity and enforceability of the Licensed Enzo Patents Patent Rights in any forum, that it could have raised in the Litigation, if a the Licensed Enzo Patent is Rights are asserted based on Licensed Agilent Illumina Products or Covered Third Party products containing them Products against AgilentIllumina, its Affiliates, customers, licensees, Related Persons and partners or users after the Effective Date; and Enzo reserves the right to raise any and all claims and defenses in opposition.

Covenant Not to Challenge. After the Effective Date and for so long as AgilentIllumina’s license is in force, Agilent Illumina further covenants on behalf of itself and its Affiliates that, except as (1i) required by law or (2ii) in defense of an action for infringing a the Licensed Enzo Patent Rights brought against it or Illumina, its Affiliates, or against its Affiliates or their agents, representatives, suppliers, vendors, contractors, manufacturers, distributors, licensees, resellers, licensees, users, and customers respective Related Persons (direct or indirect) involving any Licensed Agilent Illumina Products or Covered Third Party Products, it neither Illumina nor its Affiliates shall not knowingly and voluntarily contest (or assist in the contest) in any forum, including Federal Courts, whether under 28 U.S.C. §§ 2201-2202 or not, the United States Patent and Trademark Office, and/or the International Trade Commission, that the Licensed Enzo Patents Patent Rights are valid and enforceable; provided, however, nothing in this Agreement shall prevent Agilent Illumina or its Affiliates from complying with or responding to any court or governmental order or subpoena relating to the Licensed Enzo PatentsPatent Rights. Notwithstanding the foregoing, nothing in this Agreement will preclude Agilent Illumina and its Affiliates from making REVIEWED BY LEGAL Initials: RHS Date: 6/29/16 ILLUMINA any disclosure, providing information or producing documents as required by law, court order or legal process (including, without limitation, litigation related to discovery and/or subpoena), even if made in connection with a proceeding Claim challenging the validity or enforceability of one or more of the Licensed Enzo PatentsPatent Rights, and any such disclosure will not be considered a breach of this Agreement. It is understood that AgilentIllumina’s and its Affiliates’ providing factual statements regarding Licensed Agilent Illumina Products or any Covered Third Party products containing them Products in response to a validly propounded subpoena will not be considered as assisting in the contest context as used above. Agilent Illumina reserves the right to raise any and all defenses and counterclaims, including, but not limited to, invalidity and unenforceability of the Licensed Enzo PatentsPatent Rights, and to otherwise contest the validity and enforceability of the Licensed Enzo Patents Patent Rights in any forum, that it could have raised in the Litigation, if a the Licensed Enzo Patent is Rights are asserted based on Licensed Agilent Illumina Products or Covered Third Party products containing them Products against AgilentIllumina, its Affiliates, customers, licensees, Related Persons and partners or users after the Effective Date; and Enzo reserves the right to raise any and all claims and defenses in opposition.

Covenant Not to Challenge. After the Effective Date and for so long as AgilentLife’s license is in force, Agilent Life further covenants that, except as (1) required by law or (2) in defense of an action a threatened or actual action, suit or proceeding of any kind alleging a claim for infringing a infringement of any Licensed Enzo Patent Patents brought against it or its Affiliates, or against its or their agents, representatives, suppliers, vendors, contractors, manufacturers, distributors, licensees, resellers, licensees, users, and customers (direct or indirect) involving any Licensed Agilent ProductsLife Released Parties, it shall not knowingly and voluntarily contest (contest, or assist in the contest) , or encourage any other Person to contest, in any forum, including Federal Courts, whether under 28 U.S.C. §§ 2201-2202 or not, the United States Patent and Trademark Office, and/or the International Trade Commission, that the Licensed Enzo Patents are valid and enforceable; provided, however, nothing in this Agreement shall prevent Agilent Life or its Affiliates from complying with or responding to any court or governmental order or subpoena relating to the Licensed Enzo Patents. Notwithstanding the foregoing, nothing in this Agreement will preclude Agilent Life and its Affiliates from making any disclosure, providing information or producing documents as required by law, court order or legal process (including, without limitation, litigation related to discovery and/or subpoena), even if made in connection with a proceeding challenging the validity or enforceability of one or more of the Licensed Enzo Patents, and any such disclosure will not be considered a breach of this Agreement. It is understood that AgilentLife’s and its Affiliates’ providing factual statements regarding Licensed Agilent Life Products or any Third Party products containing them in response to a validly propounded subpoena subpoena, will not be considered as assisting in the contest as used above. Agilent reserves Life and its Affiliates reserve the right to raise any and all defenses and counterclaims, including, but not limited to, invalidity and unenforceability of the Licensed Enzo Patents, and to otherwise contest the validity and enforceability of the Licensed Enzo Patents in any forum, that it could have raised in the Litigation, if a any of the Licensed Enzo Patent Patents is asserted based on Licensed Agilent Life Products or Third Party products containing them against Agilent, its Affiliates, customers, licensees, partners or users Life Released Parties after the Effective Date; and Enzo reserves the right to raise any and all claims and defenses in opposition.