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Common use of Defense of Infringement Claims Clause in Contracts

Defense of Infringement Claims. 7.7.1 Each Party shall promptly notify the other Party in writing of any allegation by a Third Party in the Territory that the making, having made, using, selling or offering for sale or importing of any Licensed Product, or the conduct of any activities under this Agreement infringe or misappropriate or may infringe or misappropriate the Intellectual Property Rights of such Third Party (a “Third Party Infringement Claim”). The Patent Liaisons shall discuss which Party shall defend the Third Party Infringement Claim, and absent mutual agreement otherwise, each Party shall have the right to control the defense of any such Third Party Infringement Claim brought against it in the Territory, by counsel of its own choice. If a Third Party Infringement Claim is brought against one Party (the “Defending Party”) but not the other Party, the non-Defending Party shall have the right, at its own expense, to be represented in such Third Party Infringement Claim by counsel of its own choice, at its own expense. 7.7.2 The Patent Liaison for the Defending Party shall keep the Patent Liaison for the other Party reasonably informed of all material developments in connection with any Third Party Infringement Claim. Each Defending Party agrees to provide the other Party ‘s Patent Liaison with copies of all pleadings filed in any suit or proceeding relating to such Third Party Infringement Claim. The Defending Party may enter into a settlement or compromise of any Third Party Infringement Claim; provided, that if such settlement or compromise would admit liability on the part of the non-Defending Party or any of its Affiliates or would otherwise have a material adverse effect on the rights or interests of the non-Defending Party or its Affiliates, the Defending Party shall not enter into such settlement or compromise without the prior written consent of the non-Defending Party. In the event a proposed settlement involves obtaining a license under Third Party Intellectual Property Rights, the provisions of Section 9.6 shall apply. Notwithstanding the foregoing, as between the Parties, solely to the extent permitted under Section 7.4 and 7.5 above, the Parties shall have the right to determine whether to assert any counterclaim under any patent applications or patents comprising Joint Foreground or Immunocore Foreground and to control any such counterclaim, and to control the defence of any matters involving the validity or enforceability of any such patent applications or patents, including the right to make substantive and procedural decisions relating to any such counterclaim or defence and settle, compromise or dispose of any such counterclaim or defence.

Appears in 2 contracts

Samples: Collaboration and License Agreement (Immunocore LTD), Collaboration and License Agreement (Immunocore LTD)

Defense of Infringement Claims. 7.7.1 Each Party shall promptly notify 10.6.1 If the other Party in writing manufacture, sale or use of a Licensed Product pursuant to this Agreement results in, or may result in, any allegation claim, suit, or proceeding by a Third Party alleging patent infringement by Kyowa Kirin (or its Affiliates), Kyowa Kirin will promptly notify Reata thereof in writing. Subject to the Territory that the makingprovisions of Section 10.6.2, having made, using, selling or offering for sale or importing of any Licensed Product, or the conduct of any activities under this Agreement infringe or misappropriate or may infringe or misappropriate the Intellectual Property Rights of such Third Party (a “Third Party Infringement Claim”). The Patent Liaisons shall discuss which Party shall defend the Third Party Infringement Claim, and absent mutual agreement otherwise, each Party shall Kyowa Kirin will have the right first right, but not the obligation to defend and control the defense of any such Third Party Infringement Claim brought against it in the Territoryclaim, by suit or proceeding at its own expense, using counsel of its own choice. If a Third Party Infringement Claim is brought against one Party (the “Defending Party”) but not the other PartyReata may participate in any such claim, the non-Defending Party shall have the right, suit or proceeding with counsel of its choice at its own expense. If Kyowa Kirin elects (in a written communication submitted to Reata within a reasonable amount of time after notice of the alleged patent infringement) not to defend or control the defense of, or otherwise fails to be represented in initiate and maintain the defense of, any such Third Party Infringement Claim claim, suit or proceeding, within such time periods so that Reata is not prejudiced by counsel any delays, Reata may conduct and control the defense of its own choiceany such claim, suit or proceeding at its own expense. 7.7.2 The Patent Liaison for the Defending . Each Party shall will keep the Patent Liaison for the other Party reasonably informed of all material developments in connection with any Third Party Infringement Claimsuch claim, suit, or proceeding. Each Defending Party agrees to provide the other Party ‘s Patent Liaison with copies of all pleadings filed in such action and to allow the other Party reasonable opportunity to participate in the defense of the claims. If Kyowa Kirin is controlling the defense of any such claim, suit or proceeding, it agrees to provide English translations, or summaries thereof, of all pleadings, discovery-requests, and key documents filed with the court reasonably promptly. Kyowa Kirin shall be entitled to deduct [***] percent ([***]%) of the out-of-pocket costs of defending such claim, suit or proceeding relating from the Sales Royalties due to Reata pursuant to Section 7.3 of this Agreement; provided that such deductions (together with the reductions under Section 7.4.2 if applicable) shall in no event exceed either [***]% cap set forth in Section 7.4.2, and if any such costs cannot be applied (due to such cap or the absence of Sales Royalties in the applicable period) such unapplied amounts shall accrue and be used to reduce Sales Royalties in future periods subject to the same overall cap until all such costs are applied against the Sales Royalties. Any recoveries by Kyowa Kirin of attorneys fees or cost in defense of a claim under this Section 10.6, and any sanctions awarded to Kyowa Kirin and against a party asserting a claim being defended under this Section 10.6, shall be divided evenly between the parties. 10.6.2 In addition to the Kyowa Kirin obligations set out in the preceding paragraph, and regardless of whether Reata elects to participate as a Party in the claim, suit or proceeding, Kyowa Kirin further agrees that, in the event the claim, suit or preceding under 10.6.1 is brought by a Third Party Infringement Claim. The Defending Party may that is pursuing or has threatened in writing to the knowledge of Kyowa Kirin to pursue similar claims outside the Territory against Reata, its Affiliates, agents or marketing or development partners and such claim is related to any Licensed Compound or member of the RTA 402 Class, including any form or formulation thereof, Kyowa Kirin shall: (i) provide to Reata English translation drafts of all official papers or other statements (whether written or oral) prior to their submission to the court in the lawsuit, in sufficient time to allow Reata to review, consider and substantively comment thereon; (ii) reasonably consider taking action to incorporate Reata comments on all such official papers and statements, (iii) not take positions in its defense that are inconsistent or at odds with positions that Reata is taking in defense, or anticipated defense, of related claims outside the Territory, to the extent such positions have been communicated to Kyowa Kirin; (iv) allow Reata the opportunity to participate in preparation of witnesses or other participants in the claim, suit or proceeding; (v) not settle any such claim, suit or proceeding without Reata’s prior consent, which consent shall not be unreasonably withheld or delayed, and (vi) enter into a settlement or compromise of any Third Party Infringement Claim; providedreasonable and customary joint defense agreement with Reata, that if such settlement or compromise would admit liability on the part of the non-Defending Party or any of its Affiliates or would otherwise have a material adverse effect on the rights or interests of the non-Defending Party or its Affiliates, the Defending Party shall not enter into such settlement or compromise without the prior written consent of the non-Defending Party. In the event a proposed settlement involves obtaining a license under Third Party Intellectual Property Rights, the provisions of Section 9.6 shall apply. Notwithstanding the foregoing, as between the Parties, solely upon request to the extent permitted under Section 7.4 and 7.5 above, the Parties shall have the right to determine whether to assert any counterclaim under any patent applications or patents comprising Joint Foreground or Immunocore Foreground and to control any such counterclaim, and to control the defence of any matters involving the validity or enforceability of any such patent applications or patents, including the right to make substantive and procedural decisions relating to any such counterclaim or defence and settle, compromise or dispose of any such counterclaim or defencedo so by Reata.

Appears in 2 contracts

Samples: Exclusive License and Supply Agreement (Reata Pharmaceuticals Inc), Exclusive License and Supply Agreement (Reata Pharmaceuticals Inc)

Defense of Infringement Claims. 7.7.1 Each Party shall promptly notify the other Party in writing of any allegation by a Third Party in the Territory that the making(i) As between Genzyme and EXACT, having made, using, selling or offering for sale or importing of any Licensed Product, or the conduct of any activities under this Agreement infringe or misappropriate or may infringe or misappropriate the Intellectual Property Rights of such Third Party (a “Third Party Infringement Claim”). The Patent Liaisons shall discuss which Party shall defend the Third Party Infringement Claim, and absent mutual agreement otherwise, each Party shall Genzyme will have the right sole and exclusive right, but not the obligation, to control the defense of any such Third Party Infringement Claim brought against it in the Territory, by counsel of its own choice. If a Third Party Infringement Claim is brought against one Party (the “Defending Party”) but not the other Party, the non-Defending Party shall have the right, at its own expense, to be represented in such Third Party Infringement Claim by counsel of its own choice, at its own expense. 7.7.2 The Patent Liaison for the Defending Party shall keep the Patent Liaison for the other Party reasonably informed of all material developments in connection with any Third Party Infringement Claim. Each Defending Party agrees to provide the other Party ‘s Patent Liaison with copies of all pleadings filed in any suit or proceeding relating to such Third Party Infringement Claim. The Defending Party may enter into a settlement or compromise of any Third Party Infringement Claim; provided, that if such settlement or compromise would admit liability on the part of the non-Defending Party Genzyme or any of its Affiliates or would otherwise licensees arising out of (A) the use of Optioned Technology in the Genzyme Core Field or (B) the use of all Technology other than the Optioned Technology in the Genzyme Field. As between Genzyme and EXACT, EXACT will have a material adverse effect on the rights sole and exclusive right, but not the obligation, to control the defense of any Infringement Claim brought against EXACT or interests any of its licensees arising out of the non-Defending Party use of Technology in the EXACT Field or its Affiliates, the Defending Party shall not enter into use of Optioned Technology in any field other than the Genzyme Core Field. Neither party will settle any such settlement Action in a manner that (I) admits the invalidity or compromise unenforceability of any Technology or that any use of the Technology in the other party’s field of exclusivity infringes or misappropriates a Third Party’s Intellectual Property Rights or (II) agrees to any injunction or other equitable remedy binding the other party without obtaining the prior written consent of the non-Defending Partyother party, which consent will not be unreasonably withheld or delayed. In addition, if applicable, prior to the event initiation of an Infringement Claim, either party has the right, but not the obligation, to bring a proposed settlement involves obtaining declaratory judgment action relating to any Patent Right that a license under Third Party Intellectual Property Rightshas alleged is infringed by use of the Technology in such party’s exclusive field; provided, however, no party will bring such declaratory judgment action without first consulting with the provisions other party. (ii) The party controlling the defense of Section 9.6 shall applyan Infringement Claim or bringing such declaratory judgment action will have the sole and exclusive right to select counsel for any Infringement Claim. Notwithstanding The party controlling the foregoingdefense of an Infringement Claim or bringing such declaratory judgment action will keep the other party informed, as between and will from time to time consult with the Partiesother party regarding the status of any such Action and will upon request provide the other party with copies of all documents filed in, solely to the extent permitted under Section 7.4 and 7.5 aboveall written communications relating to, the Parties shall any suit brought in connection with such Action. The other party will also have the right to determine whether to assert any counterclaim under any patent applications or patents comprising Joint Foreground or Immunocore Foreground participate and to control be represented in any such counterclaimAction, and to control the defence of any matters involving the validity or enforceability of any such patent applications or patents, including the right to make substantive and procedural decisions relating to any such counterclaim or defence and settle, compromise or dispose of any such counterclaim or defence[********].

Appears in 1 contract

Samples: Collaboration, License and Purchase Agreement (Exact Sciences Corp)

Defense of Infringement Claims. 7.7.1 Each Party shall promptly notify 10.6.1 If the other Party in writing manufacture, sale or use of a Licensed Product pursuant to this Agreement results in, or may result in, any allegation claim, suit, or proceeding by a Third Party alleging patent infringement by Kyowa Kirin (or its Affiliates), Kyowa Kirin will promptly notify Reata thereof in writing. Subject to the Territory that the makingprovisions of Section 10.6.2, having made, using, selling or offering for sale or importing of any Licensed Product, or the conduct of any activities under this Agreement infringe or misappropriate or may infringe or misappropriate the Intellectual Property Rights of such Third Party (a “Third Party Infringement Claim”). The Patent Liaisons shall discuss which Party shall defend the Third Party Infringement Claim, and absent mutual agreement otherwise, each Party shall Kyowa Kirin will have the right first right, but not the obligation to defend and control the defense of any such Third Party Infringement Claim brought against it in the Territoryclaim, by suit or proceeding at its own expense, using counsel of its own choice. If a Third Party Infringement Claim is brought against one Party (the “Defending Party”) but not the other PartyReata may participate in any such claim, the non-Defending Party shall have the right, suit or proceeding with counsel of its choice at its own expense. If Kyowa Kirin elects (in a written communication submitted to Reata within a reasonable amount of time after notice of the alleged patent infringement) not to defend or control the defense of, or otherwise fails to be represented in initiate and maintain the defense of, any such Third Party Infringement Claim claim, suit or proceeding, within such time periods so that Reata is not prejudiced by counsel any delays, Reata may conduct and control the defense of its own choiceany such claim, suit or proceeding at its own expense. 7.7.2 The Patent Liaison for the Defending . Each Party shall will keep the Patent Liaison for the other Party reasonably informed of all material developments in connection with any Third Party Infringement Claimsuch claim, suit, or proceeding. Each Defending Party agrees to provide the other Party ‘s Patent Liaison with copies of all pleadings filed in such action and to allow the other Party reasonable opportunity to participate in the defense of the claims. If Kyowa Kirin is controlling the defense of any such claim, suit or proceeding, it agrees to provide English translations, or summaries thereof, of all pleadings, discovery-requests, and key documents filed with the court reasonably promptly. Kyowa Kirin shall be entitled to deduct [***] percent ([***]%) of the out-of-pocket costs of defending such claim, suit or proceeding relating from the Sales Royalties due to Reata pursuant to Section 7.3 of this Agreement; provided that such deductions (together with the reductions under Section 7.4.2 if applicable) shall in no event exceed either [***]% cap set forth in Section 7.4.2, and if any such costs cannot be applied (due to such cap or the absence of Sales Royalties in the applicable period) such unapplied amounts shall accrue and be used to reduce Sales Royalties in future periods subject to the same overall cap until all such costs are applied against the Sales Royalties. Any recoveries by Kyowa Kirin of attorneys fees or cost in defense of a claim under this Section 10.6, and any sanctions awarded to Kyowa Kirin and against a party asserting a claim being defended under this Section 10.6, shall be divided evenly between the parties. 10.6.2 In addition to the Kyowa Kirin obligations set out in the preceding paragraph, and regardless of whether Reata elects to participate as a Party in the claim, suit or proceeding, Kyowa Kirin further agrees that, in the event the claim, suit or preceding under 10.6.1 is brought by a Third Party Infringement Claimthat is pursuing or has threatened in writing to the knowledge of Kyowa Kirin to pursue similar claims outside the Territory against Reata, its Affiliates, agents or marketing or development partners and such claim is related to any Licensed Compound or member of the RTA 402 Class, including any form or formulation thereof, Kyowa Kirin shall: (i) provide to Reata English translation drafts of all official papers or other statements (whether written or oral) prior to their submission to the court in the lawsuit, in sufficient time to allow Reata to review, consider and substantively comment thereon; (ii) reasonably consider taking action to incorporate Reata comments on all such official papers and statements, (iii) not take positions in its defense that are inconsistent or at odds with positions that Reata is taking in defense, or anticipated defense, of related claims outside the Territory, to the extent such positions Specific terms in this Exhibit have been redacted because such terms are both not material and are of the type that the Company treats as private or confidential. The Defending Party may These redacted terms have been marked in this Exhibit with three asterisks [***]. have been communicated to Kyowa Kirin; (iv) allow Reata the opportunity to participate in preparation of witnesses or other participants in the claim, suit or proceeding; (v) not settle any such claim, suit or proceeding without Reata’s prior consent, which consent shall not be unreasonably withheld or delayed, and (vi) enter into a settlement or compromise of any Third Party Infringement Claim; providedreasonable and customary joint defense agreement with Reata, that if such settlement or compromise would admit liability on the part of the non-Defending Party or any of its Affiliates or would otherwise have a material adverse effect on the rights or interests of the non-Defending Party or its Affiliates, the Defending Party shall not enter into such settlement or compromise without the prior written consent of the non-Defending Party. In the event a proposed settlement involves obtaining a license under Third Party Intellectual Property Rights, the provisions of Section 9.6 shall apply. Notwithstanding the foregoing, as between the Parties, solely upon request to the extent permitted under Section 7.4 and 7.5 above, the Parties shall have the right to determine whether to assert any counterclaim under any patent applications or patents comprising Joint Foreground or Immunocore Foreground and to control any such counterclaim, and to control the defence of any matters involving the validity or enforceability of any such patent applications or patents, including the right to make substantive and procedural decisions relating to any such counterclaim or defence and settle, compromise or dispose of any such counterclaim or defencedo so by Xxxxx.

Appears in 1 contract

Samples: Exclusive License and Supply Agreement (Reata Pharmaceuticals Inc)

Defense of Infringement Claims. 7.7.1 Each If any Third Party asserts a claim, demand, action, suit or proceeding against a Party (or any of its Affiliates), alleging that any Product, the use or practice of the INVO Intellectual Property, INVO’s Sole Inventions or the Joint Inventions infringes, misappropriates or violates the intellectual property rights of any Person (any such claim, demand, action, suit or proceeding being referred to as an “Infringement Claim”), the Party first having notice of the Infringement Claim shall promptly notify the other Party thereof in writing of specifying the facts, to the extent known, in reasonable detail. With respect to any allegation by a Third Party Infringement Claim in the Territory that Field in the makingTerritory, having made, using, selling or offering for sale or importing of any Licensed Product, or the conduct of any activities under this Agreement infringe or misappropriate or may infringe or misappropriate Parties shall negotiate in good faith a resolution with respect thereto. If the Intellectual Property Rights of Parties cannot settle such Third Party (a “Third Party Infringement Claim”). The Patent Liaisons shall discuss which Party shall defend Claim with the Third Party within thirty (30) days after receipt of the notice pursuant to the notice pursuant to this Section 9.6, then subject to indemnification requirements of ARTICLE 10, the following shall apply: (a) In the case of any such Infringement Claim against either Party individually or against both Ferring and INVO during the Term, in each case, with respect to the Product in the Field in the Territory, Ferring shall assume control of the defense of such Infringement Claim. INVO, upon request of Ferring and if required by Applicable Law, agrees to join in any such litigation at Ferring’s expense, and in any event to reasonably cooperate with Ferring at Ferring’s expense. INVO will have the right to consult with Ferring concerning such Infringement Claim and to participate in and be represented by independent counsel in any litigation in which INVO is a party, at its own expense. Ferring shall have the exclusive right to settle any Infringement Claim against Ferring alone or against both Parties without the consent of INVO, unless such settlement requires INVO to perform or refrain from performing any activity or disclaim any Patent (in which case the consent of INVO shall be required). If Ferring fails to assume control of the defense of such Infringement Claim, and absent mutual agreement otherwise, each Party INVO shall have the right (but not the obligation) to control the defense of such Infringement Claim, and Ferring upon request of INVO and if required by Applicable Law, agrees to join in any such Third Party Infringement Claim brought against it in the Territory, by counsel of its own choice. If a Third Party Infringement Claim is brought against one Party (the “Defending Party”) but not the other Party, the non-Defending Party shall have the right, litigation at its own expense, to be represented in such Third Party Infringement Claim by counsel of its own choice, at its own INVO’s expense. 7.7.2 The Patent Liaison for (b) If either Party individually shall control of the Defending Party shall keep the Patent Liaison for defense of any such Infringement Claim described in this Section 9.6, the other Party reasonably informed of shall cooperate, and shall cause its and its Affiliates’ employees to cooperate, with the controlling Party in all material developments reasonable respects in connection therewith, including giving testimony and producing documents lawfully requested, and using its reasonable efforts to make available to the controlling Party, at the controlling Party’s cost, such employees who may be helpful with any Third Party Infringement Claim. Each Defending Party agrees to provide the other Party ‘s Patent Liaison with copies of all pleadings filed in any suit or proceeding relating respect to such Third Party Infringement Claim. The Defending Party may enter into a settlement suit, investigation, claim or compromise of any Third Party Infringement Claim; provided, that if such settlement or compromise would admit liability on the part of the non-Defending Party or any of its Affiliates or would otherwise have a material adverse effect on the rights or interests of the non-Defending Party or its Affiliates, the Defending Party shall not enter into such settlement or compromise without the prior written consent of the non-Defending Party. In the event a proposed settlement involves obtaining a license under Third Party Intellectual Property Rights, the provisions of Section 9.6 shall apply. Notwithstanding the foregoing, as between the Parties, solely to the extent permitted under Section 7.4 and 7.5 above, the Parties shall have the right to determine whether to assert any counterclaim under any patent applications or patents comprising Joint Foreground or Immunocore Foreground and to control any such counterclaim, and to control the defence of any matters involving the validity or enforceability of any such patent applications or patents, including the right to make substantive and procedural decisions relating to any such counterclaim or defence and settle, compromise or dispose of any such counterclaim or defenceother proceeding.

Appears in 1 contract

Samples: Distribution Agreement (INVO Bioscience, Inc.)