Common use of Enforcement by BMS Clause in Contracts

Enforcement by BMS. In the event that management or in-house counsel for either Party becomes aware of a suspected infringement by a Third Party of a PDL Licensed Patent that claims the composition of matter (including formulation), manufacture or use of one or more Products that are being Developed or Commercialized using Diligent Efforts and which is co-exclusively or exclusively licensed to BMS under Section 7.1(a), such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. Each Party shall provide the same level of disclosure to the other Party’s in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Agreement. Provided that the suspected infringement involves the Third Party’s manufacture, use, offer for sale, sale or import of an Antibody or a product containing an Antibody, BMS shall have the right, but shall not be obligated, to bring an infringement action against such Third Party or to defend such proceedings at its own expense, in its own name and entirely under its own direction and control. PDL shall reasonably assist BMS (at BMS’ expense) in such actions or proceedings if so requested, and shall lend its name to such actions or proceedings if requested by BMS or required by law, and BMS shall hold PDL harmless from any liability incurred by PDL arising out of any such proceedings or actions at BMS’ request. PDL shall have the right to participate and be represented in any such suit by its own counsel at its own expense. No settlement of any such action or defense which restricts the scope, or adversely affects the enforceability, of any such PDL Licensed Patent may be entered into by BMS without the prior consent of PDL (such consent to not be unreasonably withheld, delayed or conditioned).

Enforcement by BMS. In the event that management BMS or in-house counsel for either Party ITI becomes aware of a suspected infringement by a Third Party of a PDL Licensed any BMS Patent that claims Right in the composition of matter (including formulation), manufacture or use of one or more Products that are being Developed or Commercialized using Diligent Efforts and which is co-exclusively or exclusively licensed to BMS under Section 7.1(a)Field, such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. Each Party shall provide the same level of disclosure to the other Party’s in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Agreement. Provided that the suspected infringement involves the Third Party’s manufacture, use, offer for sale, sale or import of an Antibody or a product containing an Antibody, BMS shall have the right, but shall not be obligated, to bring an infringement action against such Third Party or to defend such proceedings for suspected infringement in the Field at its own expense, in its own name and entirely under its own direction and control, subject to the following. PDL BMS shall include in any such action a claim agreed upon by the Parties for reasonable damages suffered by ITI as a result of such infringement in an amount to be agreed upon by the Parties (“ITI Infringement Damages”). ITI shall reasonably assist BMS (at BMS’ expense) in such actions any action or proceedings proceeding being prosecuted for suspected infringement in the Field if so requested, and shall lend its name including by being named or joined as a plaintiff to such actions or proceedings if requested by BMS or required by law, and BMS shall hold PDL harmless from any liability incurred by PDL arising out of any such proceedings or actions at BMS’ requestLaw. PDL ITI shall have the right to participate and be represented in any such suit by its own counsel at its own expense. No settlement of any such action or defense proceeding which restricts the scope, or adversely affects the enforceability, of any such PDL Licensed a BMS Patent Right in the Field may be entered into by BMS without the prior written consent of PDL (such ITI, which consent to shall not be unreasonably withheld, delayed or conditioned). Further, no settlement of any such action or proceeding which pertains to the infringement of the BMS Patent Rights by virtue of the Development or Commercialization of a Licensed Compound in the Field by a Third Party that is not a Sublicensee may be entered into by BMS without the prior written consent of ITI, which consent shall not be unreasonably withheld, delayed or conditioned.

Enforcement by BMS. In the event that management or in-house counsel for either Party becomes aware of a suspected infringement by a Third Party of a PDL Licensed Patent claiming a Joint Invention that claims pertains to the composition of matter (including formulation)matter, manufacture or use of one or more Products that are is being Developed developed or Commercialized commercialized using Diligent Efforts and which is co-exclusively or exclusively licensed to BMS under Section 7.1(a5.1 (for purposes of this Section 8.4(c) only, a “Joint Product Patent”), such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. Each Party shall provide the same level of disclosure to the other Party’s its in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed a Joint Product Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Agreement. Provided that the suspected infringement involves the Third Party’s manufacture, use, offer for sale, sale or import of an Antibody or a product containing an Antibody, BMS shall have the right, but shall not be obligated, to bring an infringement action against such Third Party or to defend such proceedings at its own expense, in its own name and entirely under its own direction and control. PDL Exelixis shall reasonably assist BMS (at BMS’ expense) in such actions or proceedings if so requested, and shall lend its name to such actions or proceedings if requested by BMS or required by law, and BMS shall hold PDL harmless from any liability incurred by PDL arising out of any such proceedings or actions at BMS’ request[ * ]. PDL Exelixis shall have the right to participate and be represented in any such suit by its own counsel at its own expense. No settlement of any such action or defense which restricts the scope, scope or adversely affects the enforceability, enforceability of any such PDL Licensed a Joint Product Patent may be entered into by BMS without the prior consent of PDL Exelixis (such consent to not be unreasonably withheld, delayed or conditioned).

Enforcement by BMS. In the event that management or in-house counsel for either Party becomes aware of a suspected infringement infringement, by a Third Party of a PDL Licensed Patent that claims the composition claiming a Sole Invention of matter (including formulation), manufacture or use of one or more Products that are being Developed or Commercialized using Diligent Efforts and which is co-exclusively or exclusively licensed to BMS under Section 7.1(a)Exelixis [ * ], such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. Each Party shall provide the same level of disclosure to the other Party’s its in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed a Exelixis Sole Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Amended and Restated Agreement. Provided that the Where such suspected infringement involves the such Third Party’s development, manufacture, use, offer for sale, use or sale or import of an Antibody or a small molecule oncology product containing an Antibodyagainst such BMS Selected Target, BMS shall have the right, but shall not be obligated, to bring an infringement action against any such Third Party or to defend such proceedings at its own expense, in its own name and entirely under its own direction and control; provided, that this right shall not apply to utility patents in a defined field to which BMS exercised an option under Section 5.2(b). PDL shall Exelixis will reasonably assist BMS (at BMS’ expense) [ * ] in such actions or proceedings if so requested, and shall will lend its name to such actions or proceedings if requested by BMS or required by law, and BMS shall hold PDL harmless from any liability incurred by PDL arising out of any such proceedings or actions at BMS’ request[ * ]. PDL Exelixis shall have the right to participate and be represented in any such suit by its own counsel at its own expense. No settlement of any such action or defense which restricts the scope, or adversely affects the enforceability, of any such PDL Licensed Exelixis Sole Patent may be entered into by BMS without the prior consent of PDL (such Exelixis, which consent to shall not be unreasonably withheld, delayed or conditioned).

Enforcement by BMS. In the event that management or in-house counsel for of either Party becomes aware of a suspected infringement by a Third Party of a PDL Licensed Patent that claims the composition of matter (including formulation), manufacture or use of one or more Products that are being Developed or Commercialized using Diligent Efforts and which is co-exclusively or exclusively licensed to BMS under Section 7.1(a)claiming a Target Invention [ * ], such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. Each Party shall provide the same level of disclosure to the other Party’s its in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed a BMS Target Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Amended and Restated Agreement. Provided that the Where such suspected infringement involves the such Third Party’s development, manufacture, use, offer for sale, use or sale or import of an Antibody or a small molecule oncology product containing an Antibodyagainst such BMS Selected Target, BMS shall have the right, but shall not be obligated, to bring an infringement action against such Third Party or to defend such proceedings at its own expense, in its own name and entirely under its own direction and control. PDL shall Exelixis will reasonably assist BMS (at BMS’ expense) [ * ] in such actions or proceedings if so requested, and shall will lend its name to such actions or proceedings if requested by BMS or required by law, and BMS shall hold PDL harmless from any liability incurred by PDL arising out of any such proceedings or actions at BMS’ request[ * ]. PDL Exelixis shall have the right to participate and be represented in any such suit by its own counsel at its own expense. No settlement of any such action or defense which restricts the scope, or adversely affects the enforceability, of any such PDL Licensed a BMS Target Patent may be entered into by BMS without the prior consent of PDL (such Exelixis, which consent to shall not be unreasonably withheld, delayed or conditioned).

Enforcement by BMS. In the event that management or in-house counsel for either Party becomes aware of a suspected infringement infringement, by a Third Party of a PDL Licensed Patent that claims the composition claiming a Sole Invention of matter (including formulation), manufacture or use of one or more Products that are being Developed or Commercialized using Diligent Efforts and which is co-exclusively or exclusively licensed to BMS under Section 7.1(a), Exelixis [ * ] such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. Each Party shall provide the same level of disclosure to the other Party’s its in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed a Exelixis Sole Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Agreement. Provided that the Where such suspected infringement involves the such Third Party’s 's development, manufacture, use, offer for sale, use or sale or import of an Antibody or a small molecule oncology product containing an Antibodyagainst such BMS Selected Target, BMS shall have the right, but shall not be obligated, to bring an infringement action against any such Third Party or to defend such proceedings at its own expense, in its own name and entirely under its own direction and control; provided, that this right shall not apply to utility patents in a defined field to which BMS exercised an option under Section 5.2(b). PDL shall Exelixis will reasonably assist BMS (at BMS’ expense) [ * ] in such actions or proceedings if so requested, and shall will lend its name to such actions or proceedings if requested by BMS or required by law, and BMS shall hold PDL harmless from any liability incurred by PDL arising out of any such proceedings or actions at BMS’ request[ * ]. PDL Exelixis shall have the right to participate and be represented in any such suit by its own counsel at its own expense. No settlement of any such action or defense which restricts the scope, or adversely affects the enforceability, of any such PDL Licensed Exelixis Sole Patent may be entered into by BMS without the prior consent of PDL (such Exelixis, which consent to shall not be unreasonably withheld, delayed or conditioned).

Enforcement by BMS. In the event that management or in-house counsel for either Party becomes aware of a suspected infringement infringement, by a Third Party of a PDL Licensed Patent that claims the composition of matter (including formulation), manufacture or use of one or more Products that are being Developed or Commercialized using Diligent Efforts claiming [ * ] and which is co-exclusively or exclusively licensed to BMS under Section 7.1(a5.1 (for purposes of this Section 8.4(b) only, an “Exelixis Sole Patent”), such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. Each Party shall provide the same level of disclosure to the other Party’s its in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed an Exelixis Sole Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Agreement. Provided that the Where such suspected infringement involves the such Third Party’s development, manufacture, use, offer for sale, use or sale or import of an Antibody or a small molecule product containing an Antibodydirected against LXR, BMS shall have the right, but shall not be obligated, to bring an infringement action against any such Third Party or to defend such proceedings at its own expense, in its own name and entirely under its own direction and control. PDL Exelixis shall reasonably assist BMS (at BMS’ expense) in such actions or proceedings if so requested, and shall lend its name to such actions or proceedings if requested by BMS or required by law, and BMS shall hold PDL harmless from any liability incurred by PDL arising out of any such proceedings or actions at BMS’ request[ * ]. PDL Exelixis shall have the right to participate and be represented in any such suit by its own counsel at its own expense. No settlement of any such action or defense which restricts the scope, or adversely affects the enforceability, of any such PDL Licensed Exelixis Sole Patent may be entered into by BMS without the prior consent of PDL Exelixis (such consent to not be unreasonably withheld, delayed or conditioned).

Enforcement by BMS. In the event that management or in-house counsel for either Party becomes aware of a suspected infringement infringement, by a Third Party of a PDL Licensed an ATI Prosecuted Patent that claims the composition of matter (including formulation), manufacture or use of one or more Licensed Products that are is being Developed developed or Commercialized commercialized using Diligent Commercially Reasonable Efforts and which is co-exclusively or exclusively licensed to BMS under Section 7.1(a8.1 (for purposes of this Section 11.1(b) only, an “ATI Enforcement Patent”), such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. Each Party shall provide the same level of disclosure to the other Party’s its in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed an ATI Enforcement Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Agreement. Provided that such infringement falls within the suspected infringement involves the Third Party’s manufacture, use, offer for sale, sale or import exclusive scope of an Antibody or a product containing an Antibodysuch license to BMS, BMS shall have the first right, but shall not be obligated, to bring an infringement action against any such Third Party or to defend such proceedings at its own expense, in its own name and entirely under its own direction and control. PDL ATI shall reasonably assist BMS (at BMS’ expense) in such actions or proceedings if so requested, and shall lend its name to such actions or proceedings if requested by BMS or required by law, and BMS shall hold PDL ATI harmless from any liability incurred by PDL ATI arising out of any such proceedings or actions at BMS’ BMS request. PDL ATI shall have the right to participate and be represented in any such suit by its own counsel at its own expense. No settlement of any such action or defense which restricts the scope, or adversely affects the enforceability, of any such PDL Licensed ATI Enforcement Patent may be entered into by BMS without the prior consent of PDL ATI (such consent to not be unreasonably withheld, delayed or conditioned).

Enforcement by BMS. In the event that management or in-house counsel for either Party becomes aware of a suspected infringement by a Third Party of a PDL Licensed Patent that claims the composition a Joint Invention but is not a Joint Product Patent or a Reverted Compound Patent (for purposes of matter (including formulation)this Section 8.4(c) only, manufacture or use of one or more Products that are being Developed or Commercialized using Diligent Efforts and which is co-exclusively or exclusively licensed to BMS under Section 7.1(aan “Other Joint Patent”), such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. Each Party shall provide the same level of disclosure to the other Party’s its in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed an Other Joint Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Agreement. Provided that the suspected infringement involves the Third Party’s manufacture, use, offer for sale, sale or import of an Antibody or a product containing an Antibody, BMS shall have the right, but shall not be obligated, to bring prosecute an infringement action against such Third Party or to defend such proceedings at its own expense, in its own name and entirely under its own direction and control. PDL Exelixis shall reasonably assist [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. BMS (at BMS’ expense) in such actions or proceedings if so requested, and shall lend its name to such actions or proceedings if requested by BMS or required by law, and BMS shall hold PDL harmless from any liability incurred by PDL arising out of any such proceedings or actions at BMS’ request[ * ]. PDL Exelixis shall have the right to participate and be represented in any such suit by its own counsel at its own expense. No settlement of any such action or defense which restricts the scope, scope or adversely affects the enforceability, enforceability of any such PDL Licensed an Other Joint Patent may be entered into by BMS without the prior consent of PDL Exelixis (such consent to not be unreasonably withheld, delayed or conditioned).

Enforcement by BMS. In the event that management Pharmacopeia or in-house counsel for either Party BMS becomes aware of a suspected infringement by a Third Party of a PDL Licensed any Pharmacopeia Program Patent that claims the composition of matter (including formulation), manufacture or use of one or more Products that are being Developed or Commercialized using Diligent Efforts and which is co-exclusively or exclusively licensed to BMS under pursuant to Section 7.1(a2.2 or Joint Patent, or any such Pharmacopeia Program Patent or Joint Patent is challenged in any action or proceeding (other than any interferences, reissue proceedings, oppositions or reexaminations, which are addressed above), such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. Each Party shall provide the same level of disclosure to the other Party’s in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Agreement. Provided that the suspected infringement involves the Third Party’s manufacture, use, offer for sale, sale or import of an Antibody or a product containing an Antibody, BMS shall have the right, but shall not be obligated, to defend any such action or proceeding or bring an infringement action against with respect to such Third Party or infringement to defend such proceedings the extent relevant to BMS’s exclusive rights hereunder at its own expense, in its own name and entirely under its own direction and control, or settle any such action, proceeding or dispute by license (to the extent such sublicense is permitted under this Agreement), subject to the following. PDL Pharmacopeia shall reasonably assist BMS (at BMS’ expense) in such actions any action or proceedings proceeding being defended or prosecuted if so requested, and shall lend its name to such actions or proceedings if reasonably requested by BMS or required by lawApplicable Law. BMS shall reimburse Pharmacopeia for the documented out-of-pocket costs Pharmacopeia reasonably incurs in providing such assistance requested by BMS. In the event Pharmacopeia is a required party to the proceeding or action, Pharmacopeia shall have the right to be represented by its own counsel (such selection to be subject to BMS’s approval, such approval not to be unreasonably withheld), and BMS shall hold PDL harmless from any liability incurred by PDL arising out reimburse Pharmacopeia for the documented out-of-pocket costs Pharmacopeia reasonably incurs that are reasonably related to the proceeding or action, including attorneys’ fees; provided that BMS shall retain overall responsibility for the prosecution of any such proceedings action or actions at BMS’ requestproceeding in such event. PDL In the event that Pharmacopeia is not a necessary party to the proceeding or action, Pharmacopeia shall have the right to participate and be represented in any such suit by its own counsel at its own expense, provided that BMS shall retain overall responsibility for the prosecution of such action or proceedings in such event. No settlement of any such action or defense which proceeding (a) that restricts the validity or scope, or adversely affects the enforceability, of any such PDL Licensed a (i) Joint Patent or (ii) Pharmacopeia Program Patent which, in each case (i) and (ii), is not exclusively licensed to BMS under Section 2.2, or (b) which could be reasonably expected to have a material adverse financial impact on Pharmacopeia, may be entered into by BMS without the prior written consent of PDL (such consent to not be unreasonably withheld, delayed or conditioned)Pharmacopeia.

Enforcement by BMS. In the event that management or in-house counsel for either any Party becomes aware of a suspected infringement infringement, by a Third Party of a PDL Licensed Patent claiming a Sole Invention owned by EPC that claims the composition of matter (including formulation), manufacture or use of one or more Products that are is being Developed or Commercialized using Diligent Efforts and which is co-exclusively or exclusively licensed to BMS under Section 7.1(a8.1 (for purposes of this Section 10.4(a)(i) only, an “Exelixis Sole Patent”), such Party shall notify the other Party Parties promptly, and following such notification, the Parties shall confer. As between EXEL and EPC, EXEL shall carry out the patent enforcement action on behalf of EPC under this Section 10.4, and shall pay costs and expenses on behalf of EPC in connection therewith. Each Party of EXEL and BMS shall provide the same level of disclosure to the other Party’s in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed an Exelixis Sole Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Agreement. Provided that the Where such suspected infringement involves the such Third Party’s development, manufacture, useuse or sale of a small molecule product directed against a target in a Collaboration Program, offer for sale, sale or import of an Antibody or a product containing an Antibody, BMS [*] shall have the right, but shall not be obligated, to bring an infringement action against any such Third Party or to defend such proceedings at its own expense, in its own name and entirely under its own direction and control. PDL [*] shall reasonably assist BMS [*] (at BMS[*]’ expense) in such actions or proceedings if so requested, and EPC shall lend its name to such actions or proceedings if requested by BMS [*] or required by law, and BMS [*] shall hold PDL [*] harmless from any liability incurred by PDL [*] arising out of any such proceedings or actions at BMS’ [*] request. PDL [*] shall each have the right to participate and be represented in any such suit by its own counsel at its own expense. No settlement of any such action or defense which restricts the scope, or adversely affects the enforceability, of any such PDL Licensed [*] Sole Patent may be entered into by BMS [*] without the prior consent of PDL [*] (such consent to not be unreasonably withheld, delayed or conditioned).

Enforcement by BMS. In the event that management or in-house counsel for either Party becomes aware of a suspected infringement infringement, by a Third Party of a PDL Licensed Patent claiming a Sole Invention of Exelixis that claims the composition of matter (including formulation), manufacture or use of one or more Products that are is being Developed or Commercialized using Diligent Efforts and which is co-exclusively or exclusively licensed to BMS under Section 7.1(a8.1 (for purposes of this Section 10.4(a)(i) only, an “Exelixis Sole Patent”), such Party shall notify the other Party promptly, and following such notification, the Parties shall confer. Each Party shall provide the same level of disclosure to the other Party’s in-house counsel (or designated outside counsel if such Party does not have in-house counsel at such time) concerning suspected infringement of such PDL Licensed an Exelixis Sole Patent as such Party would provide with respect to suspected infringement of its own issued Patent or an exclusively licensed issued Patent claiming a product it is developing or commercializing independent of this Agreement. Provided that the Where such suspected infringement involves the such Third Party’s development, manufacture, useuse or sale of a small molecule product directed against a target in a Collaboration Program, offer for sale, sale or import of an Antibody or a product containing an Antibody, BMS [ * ] shall have the right, but shall not be obligated, to bring an infringement action against any such Third Party or to defend such proceedings at its own expense, in its own name and entirely under its own direction and control. PDL [ * ] shall reasonably assist BMS [ * ] (at BMS[ * ]’ expense) in such actions or proceedings if so requested, and shall lend its name to such actions or proceedings if requested by BMS [ * ] or required by law, and BMS [ * ] shall hold PDL [ * ] harmless from any liability incurred by PDL [ * ] arising out of any such proceedings or actions at BMS’ [ * ] request. PDL [ * ] shall have the right to participate and be represented in any such suit by its own counsel at its own expense. No settlement of any such action or defense which restricts the scope, or adversely affects the enforceability, of any such PDL Licensed [ * ] Sole Patent may be entered into by BMS [ * ] without the prior consent of PDL [ * ] (such consent to not be unreasonably withheld, delayed or conditioned).