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 Development Costs for the Collaboration Product(s) that are the subject of such Action and shall not be subject to the limitations of Sections 1.11, 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 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 Development 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 1.111.9, 4.2 and 5.1.3 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, delayed or conditioned.

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 Development Costs for the Collaboration Product(s) that are the subject of such Action and shall not be subject to the limitations indemnification provisions of clause (iv) of Sections 1.1114.1 or 14.2, 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 conditionedas applicable.

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”) Allergan shall have the exclusive first right (but not the obligation) to defend against any Third Party Infringement Claim at its sole cost and control the defense of any such Action expense, using counsel of its own choice; provided. The Party having the right under this Section 9.3.2 to defend against a Third Party Infringement Claim shall be the “Defending Party”. If Allergan does not take commercially reasonable steps to defend against a Third Party Infringement Claim by the earlier of (w) ninety (90) days after notice of such Third Party Infringement Claim, howeverand (x) ten (10) Business Days before the time limit, that if such Action is directed any, under applicable Law for taking any action with respect to the subject defense of such Third Party Infringement Claim, then (y) Allergan shall so notify Assembly and (z) Assembly shall have the Patent Rights right (but not the obligation) to defend against such Third Party Infringement Claim at its sole cost and expense, using counsel of its choice, and shall thereafter be deemed the other Defending Party (i.e., the BioMarin Patent Rights or the Genzyme Patent Rights), with respect to such other Third Party Infringement Claim. The non-Defending Party may participate in the defense and/or settlement thereof of any Third Party Infringement Claim, at its own sole cost and expense with and using counsel of its choice. Except as agreed in writing by Genzyme and BioMarin; provided, that, the Controlling Defending Party shall not enter into any settlement relating retain the right to a Collaboration Product, if such settlement admits control 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 defense of such Action shall be included in Development Costs for Third Party Infringement Claim. [* * *] The confidential content of this Exhibit 10.1 has been omitted and filed separately with the Collaboration Product(s) that are the subject of such Action Securities and shall not be subject Exchange Commission. Confidential treatment has been requested with respect to the limitations of Sections 1.11omitted portions. CONFIDENTIAL TREATMENT REQUESTED BY ASSEMBLY BIOSCIENCES, 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 conditionedINC.

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 Development Costs Operating Expenses for the Collaboration Product(s) that are involved in such Action (or, if the subject Action is brought prior to the First Commercial Sale of such Action Collaboration Product(s), such amounts shall be included in Development Costs incurred by the Controlling Party and in either case shall not be subject to the limitations of Sections 1.11, 4.2 and 5.1.3 above provided that the other Party consents to incurrence of such cost, liability Section 1.44 or expense, with such consent not to be unreasonably withheld, delayed or conditionedSection 6.1.5 above).

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 in the Territory results in a claim, suit or proceeding other than any such claim, suit or proceeding subject to the provisions of Section 19.2 or 19.3 hereof (collectively, the “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 MG or, if applicable, its Additional Partner, if any (if the Action is brought outside the Territory) and Pharmion (for purposes of this Section 9.6, if the “Controlling Party”Action is brought in the Territory) shall have [***] = 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 24b-2 of the Securities Exchange Act of 1934, as amended. 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., shall be kept informed of all material developments in connection with any such Action and the BioMarin Patent Rights or the Genzyme Patent Rights), such other Party may shall have the right to participate in the defense and/or settlement thereof at its own expense with counsel of its choiceown choice (at its sole cost and expense) and shall reasonably cooperate with the Controlling Party in the defense or settlement of such Action. Except as agreed in writing by Genzyme and BioMarin, the The Controlling Party shall not enter into any settlement relating to a Collaboration Productany patent right or technology licensed under this Agreement (for purposes of this Section 17.5 and Section 17.6, if such settlement the “Licensed Technology” and “Licensed Patents”) that admits the invalidity invalidity, unenforceability or unenforceability non-infringement of any Licensed Patent Rights within the BioMarin Patent Rights or the Genzyme Patent Rights, as applicable, of Field without the other Party’s approval, which shall not be withheld or delayed unreasonably. The Controlling Party agrees to keep the other Party hereto reasonably informed of all material developments in connection with any such Action. Any costcosts, liability or expense and expenses (including attorneys’ and experts’ fees and amounts paid in settlement) incurred by the Controlling Party as a result in respect of such Action Actions (together, “Liabilities”) shall (i) to the extent it relates to licenses or rights in North America and provided MG has not exercised its MG Opt-out Right, be included as part of Development Costs or Commercialization Costs, as the case may be and (ii) to the extent it relates (a) solely to licenses or rights in the Territory other than North America or (b) to North America provided MG has exercised its MG Opt-out Right, be assumed by Pharmion, in which case Pharmion shall be included entitled to treat its Liabilities as royalties paid to a third party under Article 11 in Development Costs consideration for the Collaboration Product(s) that are the subject of such Action and shall not be subject to the limitations of Sections 1.11, 4.2 and 5.1.3 above provided that the other Third Party consents to incurrence of such cost, liability or expense, with such consent not to be unreasonably withheld, delayed or conditionedIP under Section 11.3.

Defense of Third Party Infringement Claims. If any Product that is Commercialized by DexCom or its Affiliates becomes the subject of a Third Party’s claim or assertion of infringement of a Patent relating to the manufacture, productionuse, sale, offer for sale or use importation of any Collaboration Product pursuant to this Agreement results in a claimsuch Product, suit the Party first having notice of the claim or proceeding (collectively, “Actions”) alleging patent infringement against BioMarin or Genzyme (or their respective Affiliates), such Party assertion shall promptly notify the other Party, and the Parties shall promptly confer to consider the claim or assertion and the [***] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS AND ASTERISKS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED INFORMATION. appropriate course of action. Except as provided in Section 11.4.4, or by separate written agreement of the Parties, each 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 itself against a suit that names it as a defendant (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“Defending Party”), such other Party may participate in the defense and/or settlement thereof at its own expense with counsel of its choice. Except as agreed provided in writing by Genzyme and BioMarinSection 11.4.4, the Controlling neither 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 claim described in this Section 9.3 that adversely affects the other Party’s rights or interests without such other Party’s written consent, which consent shall not be unreasonably conditioned, withheld or delayed. The Controlling Party agrees to keep In any event, the other Party hereto shall reasonably informed of all material developments assist the Defending Party and cooperate in connection with any such Action. Any cost, liability or expense (including amounts paid in settlement) incurred by litigation at the Controlling Party as a result of such Action shall be included in Development Costs for the Collaboration Product(s) that are the subject of such Action Defending Party’s request and shall not be subject to the limitations of Sections 1.11, 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. [ * ] = 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. 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 (together, “Expenses”) shall be 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) the total amount deducted shall not exceed [ * ] thereunder, and (ii) notwithstanding (i) above, Astellas’ right to deduct Expenses incurred shall be 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 a result set forth in Section 14.5, exceed [ * ] hereunder, and, provided further, that if FG is the Controlling Party, it shall be entitled to reimbursement by Astellas of [ * ] of such Action Expenses, as incurred. Notwithstanding the foregoing, Astellas shall be included in Development Costs solely responsible (without right of deduction) for the Collaboration Product(s) that are the subject of such all Expenses related to any Action and shall not be subject relating to the limitations of Sections 1.11, 4.2 and 5.1.3 above provided that the other Preexisting Third Party consents to incurrence of such cost, liability or expense, with such consent not to be unreasonably withheld, delayed or conditionedIntellectual Property.