Common use of Defense of Third Party Infringement Claims Clause in Contracts

Defense of Third Party Infringement Claims. If the manufacture, ------------------------------------------ production, sale or use of any Collaboration Product pursuant to this Agreement results in a claim, suit or proceeding (collectively, "Actions") alleging patent ------- infringement against BioMarin or Genzyme (or their respective Affiliates), such Party shall promptly notify the other Party hereto in writing. The Party subject to such Action (for purposes of this Section 9.6, the "Controlling ----------- Party") shall have the exclusive right to defend and control the defense of any such Action using counsel of its own choice; provided, however, that if such Action is directed to the subject of the Patent Rights of the other Party (i.e., the BioMarin Patent Rights or the Genzyme Patent Rights), such other Party may participate in the defense and/or settlement thereof at its own expense with counsel of its choice. Except as agreed in writing by Genzyme and BioMarin, the Controlling Party shall not enter into any settlement relating to a Collaboration Product, if such settlement admits the invalidity or unenforceability of any Patent Rights within the BioMarin Patent Rights or the Genzyme Patent Rights, as applicable, of the other Party. The Controlling Party agrees to keep the other Party hereto reasonably informed of all material developments in connection with any such Action. Any cost, liability or expense (including amounts paid in settlement) incurred by the Controlling Party as a result of such Action shall be included in Commercialization Costs for the Collaboration Product(s) that are the subject of such Action (or, if the Action is brought prior to the first commercial sale of such Collaboration Product(s), such amounts shall be included in Development Costs incurred by the Controlling Party) and shall not be subject to the limitations of Sections 1.9, 4.2, 5.1.3, 6.1.2 or 6.4 above provided that the other Party consents to incurrence of such cost, liability or expense, with such consent not to be unreasonably withheld.

Defense of Third Party Infringement Claims. If the manufacture, ------------------------------------------ production, sale or use of any Collaboration Product pursuant to this Agreement results in a claim, suit or proceeding (collectively, "“Actions"”) alleging patent ------- infringement against BioMarin or Genzyme (or their respective Affiliates), such Party shall promptly notify the other Party hereto in writing. The Party subject to such Action (for purposes of this Section 9.6, the "“Controlling ----------- Party"”) shall have the exclusive right to defend and control the defense of any such Action using counsel of its own choice; provided, however, that if such Action is directed to the subject of the Patent Rights of the other Party (i.e., the BioMarin Patent Rights or the Genzyme Patent Rights), such other Party may participate in the defense and/or settlement thereof at its own expense with counsel of its choice. Except as agreed in writing by Genzyme and BioMarin, the Controlling Party shall not enter into any settlement relating to a Collaboration Product, if such settlement admits the invalidity or unenforceability of any Patent Rights within the BioMarin Patent Rights or the Genzyme Patent Rights, as applicable, of the other Party. The Controlling Party agrees to keep the other Party hereto reasonably informed of all material developments in connection with any such Action. Any cost, liability or expense (including amounts paid in settlement) incurred by the Controlling Party as a result of such Action shall be included in Commercialization Development Costs for the Collaboration Product(s) that are the subject of such Action (or, if the Action is brought prior to the first commercial sale of such Collaboration Product(s), such amounts shall be included in Development Costs incurred by the Controlling Party) and shall not be subject to the limitations of Sections 1.91.11, 4.2, 5.1.3, 6.1.2 or 6.4 4.2 and 5.1.3 above provided that the other Party consents to incurrence of such cost, liability or expense, with such consent not to be unreasonably withheld, delayed or conditioned.

Defense of Third Party Infringement Claims. If the development, manufacture, ------------------------------------------ production, sale or use of any Collaboration Product Lead Compound pursuant to this Agreement results in a claim, suit or proceeding (collectively, "“Actions"”) alleging patent ------- infringement against BioMarin FG or Genzyme Astellas (or their respective AffiliatesAffiliates or Sublicensees), such Party party shall promptly notify the other Party party hereto in writing. The Party party subject to such Action (for purposes of this Section 9.614.3, the "“Controlling ----------- Party"”) shall have the exclusive right to defend and control the defense of any such Action using counsel of its own choice; provided, however, that if such Action is directed to the subject matter of the Patent Rights a patent of the other Party party (i.e., the BioMarin Patent Rights or the Genzyme Patent Rightsfor Astellas, a FG Patent), such other Party party may participate in the defense and/or settlement thereof at its own expense with counsel of its choice. Except as agreed in writing by Genzyme Astellas and BioMarinFG, the Controlling Party Astellas shall not enter into any settlement relating to a Collaboration ProductLead Compound, if such settlement admits the invalidity or unenforceability unenforceability, or limits any claim, of any Patent Rights patent within the BioMarin Patent Rights or the Genzyme Patent Rights, as applicable, of the other PartyFG Technology. The Controlling Party agrees to keep the other Party party hereto reasonably informed of all material developments in connection with any such Action. Any cost, liability or expense associated with such action (including amounts paid in settlement) incurred by the Controlling Party as a result of such Action (together, “Expenses”) shall be included in Commercialization Costs for the Collaboration Product(s) that are the subject of such Action (or, if the Action is brought prior to the first commercial sale of such Collaboration Product(s), such amounts shall be included in Development Costs incurred borne by the Controlling Party; provided, that if Astellas is the Controlling Party, and the Action is related to Future Third Party Intellectual Property, with respect to Expenses related solely to such Future Third Party Intellectual Property, it shall be entitled to deduct up to [ * ] of the Expenses incurred on an annual basis from [ * ] in such year under this Agreement, provided, however, that (i) and the total amount deducted shall not exceed [ * ] thereunder, and (ii) notwithstanding (i) above, Astellas’ right to deduct Expenses incurred shall be subject further limited such that in no event shall the sum of (a) the Expenses deducted by Astellas under this Section 14.3, and (b) the consideration FG contributes for the acquisition of intellectual property from Third Party Licensors for the Astellas Territory as set forth in Section 14.5, exceed [ * ] hereunder, and, provided further, that if FG is the Controlling Party, it shall be entitled to the limitations reimbursement by Astellas of Sections 1.9, 4.2, 5.1.3, 6.1.2 or 6.4 above provided that the other Party consents to incurrence [ * ] of such costExpenses, liability or expenseas incurred. Notwithstanding the foregoing, with such consent not Astellas shall be solely responsible (without right of deduction) for all Expenses related to be unreasonably withheldany Action relating to Preexisting Third Party Intellectual Property.

Defense of Third Party Infringement Claims. If the research, development, manufacture, ------------------------------------------ production, sale or use of any Collaboration Product pursuant to this Agreement within the Field results in a claim, suit or proceeding (collectively, "“Actions"”) alleging patent ------- infringement against BioMarin or Genzyme either Party (or their its respective AffiliatesAffiliates or Sublicensees), such Party shall promptly notify the other Party hereto in writing. The Party subject to such MethylGene (if the Action is brought in a MethylGene Assigned Territory against Collaboration Products for which it is the Marketing Party) and EVP (if the Action is brought in an EVP Assigned Territory against Collaboration Products for purposes of this Section 9.6, which it is the "Controlling ----------- Marketing Party") shall have the exclusive right to defend and control the defense of any such Action using counsel of its own choicechoice (the “Controlling Party”); provided, however, that if such Action is directed to the subject of the Patent Rights of the other Party (i.e., the BioMarin Patent Rights or the Genzyme Patent Rights), such other Party may participate in the defense and/or settlement thereof at its own expense with counsel of its choice. Except as agreed in writing by Genzyme and BioMarin, the Controlling Party shall not enter into any settlement relating to a Collaboration Product, if such settlement admits the invalidity or unenforceability of any Patent Rights within the BioMarin Patent Rights or the Genzyme Patent Rights, as applicable, of the other Party. The Controlling Party agrees to keep the other Party hereto reasonably be kept informed of all material developments in connection with any such Action. The Controlling Party shall not enter into any settlement relating to the Technology or Patent Rights licensed hereunder (for purposes of this Section 12.4 and Section 12.5, the “Licensed Technology” and “Licensed Patents”) that admits the invalidity, unenforceability or non-infringement of any Licensed Patent within the Field without the other Party’s approval, which shall not be withheld or delayed unreasonably. Any cost, liability or expense (including amounts paid in settlement) incurred by the Controlling Party as a result of such Action (together, “Liabilities”) shall be included in Commercialization Costs for the Collaboration Product(s) that are the subject of such Action (or, if the Action is brought prior to the first commercial sale of such Collaboration Product(s), such amounts shall be included in Development Costs incurred by the Controlling Party) and shall not be subject to the limitations indemnification provisions of clause (iv) of Sections 1.914.1 or 14.2, 4.2, 5.1.3, 6.1.2 or 6.4 above provided that the other Party consents to incurrence of such cost, liability or expense, with such consent not to be unreasonably withheldas applicable.

Defense of Third Party Infringement Claims. If the manufactureProduct or a Party becomes the subject of a Third Party’s claim or assertion of infringement of the Patents of a Third Party relating to the Manufacture of the Licensed Molecule or the Product or to the Commercialization of the Product in the Field in the TPTX Territory (each, ------------------------------------------ production, sale or use of any Collaboration Product pursuant to this Agreement results in a claim, suit or proceeding (collectively, "Actions") alleging patent ------- infringement against BioMarin or Genzyme (or their respective Affiliates“Third Party Infringement Claim”), such the Party shall first becoming aware of the Third Party Infringement Claim will promptly notify the other Party hereto in writing. The Party subject to such Action (for purposes of this Section 9.6, the "Controlling ----------- Party") shall [***] will have the exclusive sole right to defend and control the defense of any such Action using Third Party Infringement Claim involving alleged infringement of Third Party rights by [***] activities at its own expense and by counsel of its own choice; provided, howeverand [***] will have the right, at its own expense, to be represented in any such action by counsel of its own choice. [***] will have the sole right to control the defense of any Third Party Infringement Claim involving alleged infringement of Third Party rights by [***] activities at its own expense and by counsel of its own choice, and [***] will have the right, at its own expense, to be represented in any such action by counsel of its own choice. Neither Party will enter into any settlement of any Third Party Infringement Claim: (i) in a manner that if such Action is directed to would diminish the subject of the Patent Rights rights or interests of the other Party (i.e., with respect to the BioMarin Patent Rights or Product without the Genzyme Patent Rights), written consent of such other Party may participate in Party, which will not be unreasonably withheld; or (ii) that would impose any cost, obligation, or liability on the defense and/or settlement thereof at its own expense with counsel of its choice. Except as agreed in writing by Genzyme and BioMarinother Party, the Controlling Party shall not enter into any settlement relating to a Collaboration Product, if such settlement admits or admit the invalidity or unenforceability of any Patent Rights within the BioMarin Patent Rights or the Genzyme Patent Rights, as applicable, of that is Controlled by the other Party. The Controlling Party agrees to keep the , without such other Party hereto reasonably informed of all material developments Party’s prior written consent, which may be withheld in connection with any such Action. Any cost, liability or expense (including amounts paid in settlement) incurred by the Controlling Party as a result of such Action shall be included in Commercialization Costs for the Collaboration Product(s) that are the subject of such Action (or, if the Action is brought prior to the first commercial sale of such Collaboration Product(s), such amounts shall be included in Development Costs incurred by the Controlling other Party) and shall not be subject to the limitations of Sections 1.9, 4.2, 5.1.3, 6.1.2 or 6.4 above provided that the other Party consents to incurrence of such cost, liability or expense, with such consent not to be unreasonably withheld’s sole discretion.

Defense of Third Party Infringement Claims. If a Third Party asserts that a patent or other right Controlled by it is infringed by activities in the manufacture, ------------------------------------------ production, sale Field or use a Party becomes aware of any Collaboration Product pursuant to this Agreement results in a patent or other right that might form the basis for such a claim, suit the Party first obtaining knowledge of such a claim or proceeding (collectively, "Actions") alleging patent ------- infringement against BioMarin or Genzyme (or their respective Affiliates), such Party potential claim shall promptly notify immediately provide the other Party hereto with notice thereof and the related facts in writingreasonable detail. The Parties shall discuss the merits of such claim or potential claims and shall attempt, if they determine doing so to be reasonably appropriate, in good faith to mutually agree whether to obtain a license from such Third Party. If the intellectual property pertains to ZFP Products both inside and outside the Field, then, as between the Parties, Sangamo shall be the party that enters into any license agreement with such Third Party subject and Sigma shall be entitled to a sublicense in the Field under such Action license agreement (for purposes of this or any license agreement entered into by Sangamo hereunder that pertains to ZFP Products in the Field) if it follows the procedures therefor set forth in Section 9.62.6(d) and/or 2.6(e) (as applicable). If the intellectual property pertains to ZFP Product inside but not outside the Field, the "Controlling ----------- Party"then Section 2.6(b) shall have apply. In the exclusive right event that Sigma is the party that enters into a license agreement with such Third Party, Sigma shall be responsible for amounts payable with respect to defend and control the defense of any such Action using counsel of its own choicelicense; provided, however, that if royalties paid by Sigma pursuant to such Action is directed license shall be creditable pursuant to Section 7.8 to the subject of extent such royalties satisfy the Patent Rights of the terms thereof. Neither Party shall be required to conduct any work under this Agreement which it believes in good faith may infringe Third Party patent or other Party (i.e., the BioMarin Patent Rights or the Genzyme Patent Rights), such other Party may participate in the defense and/or settlement thereof at its own expense with counsel of its choiceintellectual property rights. Except as set forth in Article 12 or otherwise agreed in writing by Genzyme and BioMarinthe Parties, the Controlling each Party shall not enter into any settlement relating to a Collaboration Product, if control and bear the expense of its own defense of such settlement admits the invalidity or unenforceability of any Patent Rights within the BioMarin Patent Rights or the Genzyme Patent Rights, as applicable, of the other PartyThird Party claim. The Controlling Party agrees parties shall discuss with each other on a regular basis all actions under and pursuant to keep the other Party hereto this Section 8.9 in order to endeavor in good faith to resolve any situation hereunder in a manner reasonably informed of all material developments in connection with any such Action. Any cost, liability or expense (including amounts paid in settlement) incurred by the Controlling Party as a result of such Action shall be included in Commercialization Costs for the Collaboration Product(s) that are the subject of such Action (or, if the Action is brought prior satisfactory to the first commercial sale of such Collaboration Product(s), such amounts shall be included in Development Costs incurred by the Controlling Party) and shall not be subject to the limitations of Sections 1.9, 4.2, 5.1.3, 6.1.2 or 6.4 above provided that the other Party consents to incurrence of such cost, liability or expense, with such consent not to be unreasonably withheldboth parties.

Defense of Third Party Infringement Claims. If the development, manufacture, ------------------------------------------ production, sale or use of any Collaboration Product pursuant to this Agreement results in a claim, suit or proceeding -------------------- * Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portion. 49 (collectively, "Actions") alleging patent ------- infringement against BioMarin CG or Genzyme JT (or their respective AffiliatesAffiliates or Marketing Distributor), such Party party shall promptly notify the other Party party hereto in writing. The Party party subject to such Action (for purposes of this Section 9.614.3, the "Controlling ----------- Party") shall have the exclusive right to defend and control the defense of any such Action using counsel of its own choice; provided, however, that if such Action is directed to the subject of the Patent Rights a patent of the other Party party (i.e., the BioMarin a CG Patent Rights or the Genzyme Patent Rightsa JT Patent), such other Party party may participate in the defense and/or settlement thereof at its own expense with counsel of its choice. Except as agreed in writing by Genzyme JT and BioMarinCG, the Controlling Party shall not enter into any settlement relating to a Collaboration Product, if such settlement admits the invalidity or unenforceability of any Patent Rights patent within the BioMarin Patent Rights CG Technology or the Genzyme Patent RightsJT Technology, as applicable, of the other Partyparty. The Controlling Party agrees to keep the other Party party hereto reasonably informed of all material developments in connection with any such Action. Any Subject to Section 19.3.3 below, any cost, liability or expense (including amounts paid in settlement) incurred by the Controlling Party Party, as a result of such Action Action, shall be included in Commercialization Costs Operating Expenses for the Collaboration Product(s) that are the subject of involved in such Action (or, if the Action is brought prior to the first commercial sale First Commercial Sale of such Collaboration Product(s), such amounts shall be included in Development Costs incurred by the Controlling Party) Party and in either case shall not be subject to the limitations of Sections 1.9, 4.2, 5.1.3, 6.1.2 Section 1.44 or 6.4 above provided that the other Party consents to incurrence of such cost, liability or expense, with such consent not to be unreasonably withheldSection 6.1.5 above).