Common use of Infringement Actions by Third Parties Clause in Contracts

Infringement Actions by Third Parties. (a) If INNOVIVE, or to its knowledge any of its SUBLICENSEES or customers, shall be sued by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in the TERRITORY, INNOVIVE shall promptly notify SHINYAKU in writing of the institution of such a suit. In such occasions, SHINYAKU shall cooperate in the defense of such a suit and furnish to INNOVIVE available evidence and assistance in its control. INNOVIVE agrees to keep SHINYAKU informed with respect to all material developments in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuit. In the event that INNOVIVE shall be sued by a third party for infringement of a patent or shall receive threat of suit, then INNOVIVE shall be entitled to control the defense of and/or settle such suit or claim in its sole discretion. SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES or customers, by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE shall have the right to credit against the royalty and other payments to be paid by INNOVIVE to SHINYAKU with respect to the sale of the PRODUCTS under ARTICLE 5 all (i) damages or costs awarded against INNOVIVE, and royalties or other payments that INNOVIVE is ordered to or agrees to pay, with respect to a suit or claim by a third party for patent infringement, including without limitation any settlement amounts paid, and (ii) any costs (including reasonable attorney fees) incurred by INNOVIVE in the defense or settlement of such suit or claim (together, the “Offset Amount”); provided, however, that such offset shall not exceed [*] percent ([*]%) of such payments otherwise due to SHINYAKU in each QUARTER pursuant to Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS. [*] Confidential treatment requested; certain information omitted and filed separately with the SEC.

Infringement Actions by Third Parties. (a) If INNOVIVEEach Party shall notify the other Party promptly in writing of any claim of, or to its knowledge any of its SUBLICENSEES or customersaction for, shall be sued by a third party for infringement of a patent because any patents belonging to Third Parties which is threatened, made or brought against either Party by reason of either Party’s performance under the development, Research Program or manufacture, import, use or sale of any Products. (b) In the COMPOUND event that an action for infringement is commenced solely against a Party, its Affiliates or its Sublicensees and such action is not covered by a right of indemnification from the PRODUCT in other Party under clause (c) of Section 11.1 or clause (c) of Section 11.2, the TERRITORYfirst Party shall defend such action at its own expense, INNOVIVE shall promptly notify SHINYAKU in writing of and the institution of such a suit. In such occasionsother Party hereby agrees to assist and cooperate with the defending Party, SHINYAKU shall cooperate at the other Party’s expense, to the extent necessary in the defense of such a suit and furnish to INNOVIVE available evidence and assistance in its controlsuit. INNOVIVE agrees to keep SHINYAKU informed with respect to all material developments in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuit. In the event that INNOVIVE shall be sued by a third party for infringement of a patent or shall receive threat of suit, then INNOVIVE shall be entitled to control the defense of and/or settle such suit or claim in its sole discretion. SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES or customers, by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE The defending Party shall have the right to credit against settle the royalty suit or consent to an adverse judgment thereto, and the consent of the other payments Party shall not be required unless such settlement or consent: (A) imposes any obligation on such other Party, or (B) materially impairs such other Party’s rights in or to any Patent or ICAgen Technology (in the case of ICAgen) or YAMANOUCHI Technology (in the case of YAMANOUCHI), in which event such other Party’ s consent shall not be unreasonably withheld. During the pendency of such action, all royalties due hereunder shall continue to be paid by INNOVIVE the defending Party. The defending Party shall assume full responsibility for the payment of any award for damages, or any amount due pursuant to SHINYAKU any settlement entered into by such Party with respect to the sale of the PRODUCTS under ARTICLE 5 all such Third Party. (ic) damages If such action is commenced against both Parties or costs awarded against INNOVIVE, their Affiliates or Sublicensees jointly and royalties or other payments that INNOVIVE such action is ordered to or agrees to pay, with respect to a suit or claim not covered by a third party for patent infringement, including without limitation any settlement amounts paid, and right of indemnification under clause (iic) any costs of Section 11.1 or clause (including reasonable attorney feesc) incurred by INNOVIVE in the defense or settlement of such suit or claim (togetherSection 11.2, the “Offset Amount”); providedParties shall enter into a joint defense strategy agreement which will set forth how the Parties intend to proceed, howeverwho will be selected as counsel and what the allocation of costs and damages will be between the Parties. If the Parties cannot agree on such a joint defense strategy, that such offset the matter shall not exceed [*] percent ([*]%) of such payments otherwise due to SHINYAKU in each QUARTER be resolved by arbitration pursuant to Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS. [*] Confidential treatment requested; certain information omitted and filed separately with the SEC15.14.

Infringement Actions by Third Parties. (a) If INNOVIVEEach Party shall notify the other Party promptly in writing of any claim of, or to its knowledge action for, infringement of any Patents owned or licensed by Third Parties which is threatened, made or brought against either Party by reason of either Party’s performance of its SUBLICENSEES obligations under this Agreement or customers, shall be sued by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT any Licensed Products in the TERRITORY, INNOVIVE shall promptly notify SHINYAKU in writing of the institution of such a suit. In such occasions, SHINYAKU shall cooperate Territory in the defense of such a suit and furnish to INNOVIVE available evidence and assistance Field. (b) Except as provided in its control. INNOVIVE agrees to keep SHINYAKU informed with respect to all material developments Section 13.1 in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuit. In the event that INNOVIVE shall be sued by a third party such an action for infringement of is commenced solely against a patent Party or shall receive threat of suit, then INNOVIVE shall be entitled to control the defense of both Parties jointly and/or settle such suit or claim in its sole discretion. SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES their respective Affiliates or customersSublicensees, by a third party for infringement of a patent because of as the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE shall have the right to credit against the royalty and other payments to be paid by INNOVIVE to SHINYAKU with respect to the sale of the PRODUCTS under ARTICLE 5 all (i) damages or costs awarded against INNOVIVE, and royalties or other payments that INNOVIVE is ordered to or agrees to paycase may be, with respect to any Licensed Product Developed and Commercialized by Sanofi, its Affiliates and/or Sublicensees, Sanofi shall defend such action at its own expense, and IMDZ hereby agrees to assist and cooperate with Sanofi to the extent reasonably necessary, provided that Sanofi shall ***. (c) The costs and expenses of defending any infringement action with respect to a suit Licensed Product Developed and Commercialized by Sanofi, its Affiliates, Sublicensees and/or Service Providers shall be ***. (d) During the pendency of any such action, Sanofi shall continue to pay all royalties due hereunder. Subject to Section 7.4, Sanofi shall be fully liable for the payment of any award for damages, or any amount due pursuant to any settlement entered into by Sanofi, to the extent that any such action pertains to a Licensed Product Developed and Commercialized by Sanofi and/or its Affiliates, Sublicensees or Service Providers. (f) Notwithstanding any provision of this Agreement to the contrary, Sanofi shall not, as a settlement or compromise of any claim by a third party for patent infringementThird Party that a Patent licensed to Sanofi hereunder is infringed, including not infringed, invalid or unenforceable, grant any sublicense, covenant not to xxx or agree to any similar arrangement, without limitation any settlement amounts paidthe prior consent of IMDZ, and (ii) any costs (including reasonable attorney fees) incurred by INNOVIVE in the defense or settlement of such suit or claim (together, the “Offset Amount”); provided, however, that such offset which consent shall not exceed [*] percent ([*]%) of such payments otherwise due to SHINYAKU in each QUARTER pursuant to Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS. [*] Confidential treatment requested; certain information omitted and filed separately with the SECunreasonably withheld or delayed.

Infringement Actions by Third Parties. (a) If INNOVIVEEach Party shall notify the other Party promptly in writing of any claim of, or to its knowledge action for, infringement of any Patents owned or licensed by Third Parties which is threatened, made or brought against either Party by reason of either Party’s performance of its SUBLICENSEES obligations under this Agreement or customers, shall be sued by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT any Licensed Product in the TERRITORYTerritory in the Field. (b) Except as provided in Section 17.1, INNOVIVE in the event that such an action for infringement is commenced solely against a Party or both Parties jointly and/or any of their respective Affiliates or Sublicensees, as the case may be, with respect to any Licensed Product developed and commercialized by [***], its Affiliates and/or Sublicensees, [***] shall promptly notify SHINYAKU in writing of defend such action at [***], and [***] hereby agrees to assist and cooperate with [***] to the institution of such a suit. In such occasions, SHINYAKU shall cooperate extent necessary in the defense of such a suit suit, subject to [***] and furnish to INNOVIVE available evidence and assistance in its control. INNOVIVE agrees to keep SHINYAKU informed [***] incurred by [***] with respect to all material developments in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuitthereto (including for [***]). In the event that INNOVIVE shall be sued by a third party for infringement of a patent or shall receive threat of suit, then INNOVIVE shall be entitled to control the defense of and/or settle such suit or claim in its sole discretion. SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES or customers, by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE [***] shall have the right to credit against the royalty settle any such action or consent to an adverse judgment thereto, and other payments to [***]’s written consent shall not be paid by INNOVIVE to SHINYAKU with respect to the sale of the PRODUCTS under ARTICLE 5 all required unless such settlement or consent: (i) damages imposes any material obligation on [***] (including under Section 17.2(d), (ii) falls within the scope of Section 17.1(e), or (iii) materially impairs [***]’s rights in or to any [***], in which event [***]’s written consent shall not be unreasonably withheld. (c) The costs awarded against INNOVIVE, and royalties or other payments that INNOVIVE is ordered to or agrees to pay, of defending any infringement action with respect to a suit Licensed Product developed and commercialized by [***], its Affiliates and/or Sublicensees shall be borne [***]. (d) During the pendency of any such action, [***] shall continue to pay all royalties due hereunder. Subject to Section 12.4(b), [***] shall be fully liable for the payment of any award for damages, or claim by a third party for patent infringement, including without limitation any amount due pursuant to any settlement amounts paid, and (ii) any costs (including reasonable attorney fees) incurred entered into by INNOVIVE in the defense or settlement of such suit or claim (together, the “Offset Amount”); provided, however, that such offset shall not exceed [*] percent (**], to the extent that any such action pertains to a Licensed Product developed and commercialized by [*]%) of such payments otherwise due to SHINYAKU in each QUARTER pursuant to Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS**] and/or its Affiliates or Sublicensees. [***] Confidential treatment requested; certain Certain information in this document has been omitted and filed separately with the SECSecurities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. (e) Except to the extent that the provisions of Section 17.1 shall apply to any portion thereof, [***] shall retain any award or compensation (including the fair market value of non-monetary compensation) received by [***] as a result of any such action (i.e., as a result of a counterclaim).

Infringement Actions by Third Parties. (a) If INNOVIVEEach Party shall notify the other Party promptly in writing of any claim of, or to its knowledge action for, infringement of any Patents owned or licensed by Third Parties which is threatened, made or brought against either Party by reason of either Party’s performance of its SUBLICENSEES obligations under this Agreement or customers, shall be sued by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT any Collaboration Products in the TERRITORYTerritory in the Field. (b) In the event that such an action for infringement is commenced solely against a Party or both Parties jointly and/or any of their respective Affiliates or Sublicensees, INNOVIVE as the case may be, with respect to any Collaboration Product developed and commercialized by CURAGEN, its Affiliates and/or Sublicensees, CURAGEN shall promptly notify SHINYAKU in writing of defend such action at its own expense, and TOPOTARGET hereby agrees to assist and cooperate with CURAGEN to the institution of such a suit. In such occasions, SHINYAKU shall cooperate extent necessary in the defense of such a suit and furnish to INNOVIVE available evidence and assistance in its control. INNOVIVE agrees to keep SHINYAKU informed with respect to all material developments in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuit. In the event that INNOVIVE shall be sued by a third party for infringement of a patent or shall receive threat of suit, then INNOVIVE shall be entitled to control the defense of and/or settle such suit or claim in its sole discretionaccordance with Section 13.2(c). SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES or customers, by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE CURAGEN shall have the right to credit against the royalty settle any such action or consent to an adverse judgment thereto, and other payments TOPOTARGET’s consent shall not be required unless such settlement or consent: (i) imposes any material obligation on TOPOTARGET (including under Section 13.2(d)), or (ii) materially impairs TOPOTARGET’s rights in or to any TOPOTARGET Licensed Technology, TOPOTARGET Collaboration Technology, CURAGEN Collaboration Technology and/or Joint Collaboration Technology, in which event TOPOTARGET’s consent shall not be paid by INNOVIVE to SHINYAKU unreasonably withheld or delayed. (c) The costs of defending any infringement action with respect to a Collaboration Product developed and commercialized by CURAGEN, its Affiliates and/or Sublicensees shall be borne solely by CURAGEN. (d) Subject to Section 9.6(b), during the sale pendency of any such action, CURAGEN shall continue to pay all royalties due hereunder and CURAGEN shall be fully liable for the PRODUCTS under ARTICLE 5 all payment of any award for damages, or any amount due pursuant to any settlement entered into by CURAGEN, to the extent that any such action pertains to a Collaboration Product developed and commercialized by CURAGEN and/or its Affiliates or Sublicensees. (ie) damages Except to the extent that the provisions of Section 13.1 shall apply to any portion thereof, CURAGEN shall retain any award or costs awarded compensation (including the fair market value of non-monetary compensation) received by CURAGEN as a result of any such action (i.e., as a result of a counterclaim). (f) In the event that such an action for infringement is commenced solely against INNOVIVEa Party or both Parties jointly and/or any of their respective Affiliates or sublicensees, and royalties or other payments that INNOVIVE is ordered to or agrees to payas the case may be, with respect to a suit or claim any Collaboration Product developed and commercialized by a third party for patent infringementTOPOTARGET, including without limitation any settlement amounts paidits Affiliates and/or sublicensees, TOPOTARGET shall defend such action at its own expense, and CURAGEN hereby agrees to assist and cooperate with TOPOTARGET to the extent necessary in the defense of such suit, in accordance with Section 13.2(g). TOPOTARGET shall have the right to settle any such action or consent to an adverse judgment thereto, and CURAGEN’s consent shall not be required unless such settlement or consent: (i) imposes any material obligation on CURAGEN (including under Section 13.2(h)), or (ii) materially impairs CURAGEN’s rights in or to any TOPOTARGET Licensed Technology, TOPOTARGET Collaboration Technology, CURAGEN Collaboration Technology and/or Joint Collaboration Technology, in which event CURAGEN’s consent shall not be unreasonably withheld or delayed. (g) The costs of defending any infringement action with respect to a Collaboration Product developed and commercialized by TOPOTARGET, its Affiliates and/or sublicensees shall be borne solely by TOPOTARGET. (h) During the pendency of any such action, TOPOTARGET shall continue to pay any royalties due hereunder. TOPOTARGET shall be fully liable for the payment of any award for damages, or any amount due pursuant to any settlement entered into by TOPOTARGET, to the extent that any such action pertains to a Collaboration Product developed and commercialized by TOPOTARGET and/or its Affiliates or sublicensees. (i) Except to the extent that the provisions of Section 13.1 shall apply to any portion thereof, TOPOTARGET shall retain any award or compensation (including reasonable attorney feesthe fair market value of non-monetary compensation) incurred received by INNOVIVE in the defense or settlement TOPOTARGET as a result of any such suit or claim action (togetheri.e., the “Offset Amount”as a result of a counterclaim); provided, however, that such offset shall not exceed [*] percent ([*]%) of such payments otherwise due to SHINYAKU in each QUARTER pursuant to Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS. [*] Confidential treatment requested; certain information omitted and filed separately with the SEC.

Infringement Actions by Third Parties. (a) If INNOVIVEEach Party shall notify the other Party promptly in writing of any claim of, or to its knowledge action for, infringement of any Patents owned or licensed by Third Parties which is threatened, made or brought against either Party by reason of either Party's performance of its SUBLICENSEES obligations under this Agreement or customers, shall be sued by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT any Covered Products in the TERRITORYTerritory in the Field. (b) Except as provided in Section 13.3, INNOVIVE in the event that such an action for infringement is commenced solely against a Party or both Parties jointly and/or any of their respective Affiliates or Sublicensees, as the case may be, with respect to any Covered Product developed and commercialized by GPC, its Affiliates and/or Sublicensees, GPC shall promptly notify SHINYAKU in writing of defend such action at its own expense, and NEOTHERAPEUTICS hereby agrees to assist and cooperate with GPC to the institution of such a suit. In such occasions, SHINYAKU shall cooperate extent necessary in the defense of such a suit and furnish to INNOVIVE available evidence and assistance in its control. INNOVIVE agrees to keep SHINYAKU informed with respect to all material developments in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuit. In the event that INNOVIVE shall be sued by a third party for infringement of a patent or shall receive threat of suit, then INNOVIVE shall be entitled to control the defense of and/or settle such suit or claim in its sole discretionaccordance with Section 13.2(c). SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES or customers, by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE GPC shall have the right to credit against the royalty settle any such action or consent to an adverse judgment thereto, and other payments to NEOTHERAPEUTICS's consent shall not be paid by INNOVIVE to SHINYAKU with respect to the sale of the PRODUCTS under ARTICLE 5 all required unless such settlement or consent: (i) damages imposes any material obligation on NEOTHERAPEUTICS (including under Section 13.2(d)), or (ii) materially impairs NEOTHERAPEUTICS's rights in or to any J-X Licensed Technology, NEOTHERAPEUTICS Licensed Technology, NEOTHERAPEUTICS Development Technology and/or Joint Development Technology, in which event NEOTHERAPEUTICS's consent shall not be unreasonably withheld or delayed. (c) The costs awarded against INNOVIVE, and royalties or other payments that INNOVIVE is ordered to or agrees to pay, of defending any infringement action with respect to a suit Covered Product developed and commercialized by GPC, its Affiliates and/or Sublicensees shall be borne solely by GPC. (d) During the pendency of any such action, GPC shall continue to pay all royalties due hereunder. Subject to Section 9.5(b), GPC shall be fully liable for the payment of any award for damages, or claim by a third party for patent infringement, including without limitation any amount due pursuant to any settlement amounts paidentered into by GPC, to the extent that any such action pertains to a Covered Product developed and commercialized by GPC and/or its Affiliates or Sublicensees. (iie) Except to the extent that the provisions of Section 13.1 shall apply to any costs portion thereof, GPC shall retain any award or compensation (including reasonable attorney feesthe fair market value of non-monetary compensation) incurred received by INNOVIVE in the defense or settlement GPC as a result of any such suit or claim action (togetheri.e., the “Offset Amount”as a result of a counterclaim); provided, however, that such offset shall not exceed [*] percent ([*]%) of such payments otherwise due to SHINYAKU in each QUARTER pursuant to Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS. [*] Confidential treatment requested; certain information omitted and filed separately with the SEC.

Infringement Actions by Third Parties. (a) If INNOVIVEEach Party shall notify the other Party promptly in writing of any claim of, or to its knowledge action for, infringement of any Patents owned or licensed by Third Parties which is threatened, made or brought against either Party by reason of either Party’s performance of its SUBLICENSEES obligations under this Agreement or customers, shall be sued by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT any Covered Products in the TERRITORYTerritory in the Field. (b) Except as provided in Section 13.3, INNOVIVE in the event that such an action for infringement is commenced solely against a Party or both Parties jointly and/or any of their respective Affiliates or Sublicensees, as the case may be, with respect to any Covered Product developed and commercialized by GPC, its Affiliates and/or Sublicensees, GPC shall promptly notify SHINYAKU in writing of defend such action at its own expense, and NEOTHERAPEUTICS hereby agrees to assist and cooperate with GPC to the institution of such a suit. In such occasions, SHINYAKU shall cooperate extent necessary in the defense of such a suit and furnish to INNOVIVE available evidence and assistance in its control. INNOVIVE agrees to keep SHINYAKU informed with respect to all material developments in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuit. In the event that INNOVIVE shall be sued by a third party for infringement of a patent or shall receive threat of suit, then INNOVIVE shall be entitled to control the defense of and/or settle such suit or claim in its sole discretionaccordance with Section 13.2(c). SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES or customers, by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE GPC shall have the right to credit against the royalty settle any such action or consent to an adverse judgment thereto, and other payments to NEOTHERAPEUTICS’s consent shall not be paid by INNOVIVE to SHINYAKU with respect to the sale of the PRODUCTS under ARTICLE 5 all required unless such settlement or consent: (i) damages imposes any material obligation on NEOTHERAPEUTICS (including under Section 13.2(d)), or (ii) materially impairs NEOTHERAPEUTICS’s rights in or to any J-X Licensed Technology, NEOTHERAPEUTICS Licensed Technology, NEOTHERAPEUTICS Development Technology and/or Joint Development Technology, in which event NEOTHERAPEUTICS’s consent shall not be unreasonably withheld or delayed. (c) The costs awarded against INNOVIVE, and royalties or other payments that INNOVIVE is ordered to or agrees to pay, of defending any infringement action with respect to a suit Covered Product developed and commercialized by GPC, its Affiliates and/or Sublicensees shall be borne solely by GPC. (d) During the pendency of any such action, GPC shall continue to pay all royalties due hereunder. Subject to Section 9.5(b), GPC shall be fully liable for the payment of any award for damages, or claim by a third party for patent infringement, including without limitation any amount due pursuant to any settlement amounts paidentered into by GPC, to the extent that any such action pertains to a Covered Product developed and commercialized by GPC and/or its Affiliates or Sublicensees. (iie) Except to the extent that the provisions of Section 13.1 shall apply to any costs portion thereof, GPC shall retain any award or compensation (including reasonable attorney feesthe fair market value of non-monetary compensation) incurred received by INNOVIVE in the defense or settlement GPC as a result of any such suit or claim action (togetheri.e., the “Offset Amount”as a result of a counterclaim); provided, however, that such offset shall not exceed [*] percent ([*]%) of such payments otherwise due to SHINYAKU in each QUARTER pursuant to Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS. [*] Confidential treatment requested; certain information omitted and filed separately with the SEC.

Infringement Actions by Third Parties. (a) If INNOVIVEEach Party shall notify the other Party promptly in writing of any claim of, or to its knowledge action for, infringement of any Patents owned or licensed by Third Parties which is threatened, made or brought against either Party by reason of either Party's performance of its SUBLICENSEES obligations under this Agreement or customers, shall be sued by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT any Covered Products in the TERRITORYTerritory in the Field. (b) Except as provided in Section 11.3, INNOVIVE in the event that such an action for infringement is commenced solely against a Party or both Parties jointly and/or any of their respective Affiliates or Sublicensees, as the case may be, with respect to any Covered Product developed and commercialized by VIACELL, its Affiliates and/or Sublicensees, VIACELL shall promptly notify SHINYAKU in writing of defend such action at its own expense, and GAMETE hereby agrees to assist and cooperate with VIACELL to the institution of such a suit. In such occasions, SHINYAKU shall cooperate extent necessary in the defense of such a suit and furnish to INNOVIVE available evidence and assistance in its control. INNOVIVE agrees to keep SHINYAKU informed with respect to all material developments in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuit. In the event that INNOVIVE shall be sued by a third party for infringement of a patent or shall receive threat of suit, then INNOVIVE shall be entitled to control the defense of and/or settle such suit or claim in its sole discretionaccordance with Section 11.2(c). SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES or customers, by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE VIACELL shall have the right to credit against the royalty settle any such action or consent to an adverse judgment thereto, and other payments to GAMETE's consent shall not be paid by INNOVIVE to SHINYAKU with respect to the sale of the PRODUCTS under ARTICLE 5 all required unless such settlement or consent: (i) damages imposes any material obligation on GAMETE or limits VIACELL's obligations to GAMETE under this Agreement (including under Sections 8.4(b) or 11.2(d)), or (ii) materially impairs GAMETE's rights in or to any MGH Patent Rights, GAMETE Development Technology and/or Joint Development Technology, in which event GAMETE's consent shall not be unreasonably withheld or delayed. (c) The costs awarded against INNOVIVE, and royalties or other payments that INNOVIVE is ordered to or agrees to pay, of defending any infringement action with respect to a suit Covered Product developed and commercialized by VIACELL, its Affiliates and/or Sublicensees shall be borne solely by VIACELL. (d) During the pendency of any such action, VIACELL shall continue to pay all royalties due hereunder. Subject to Section 8.4(b), VIACELL shall be fully liable for the payment of any award for damages, or claim by a third party for patent infringement, including without limitation any amount due pursuant to any settlement amounts paidentered into by VIACELL, to the extent that any such action pertains to a Covered Product developed and commercialized by VIACELL and/or its Affiliates or Sublicensees. (iie) Except to the extent that the provisions of Section 11.1 shall apply to any costs portion thereof, VIACELL shall retain any award or compensation (including reasonable attorney feesthe fair market value of non-monetary compensation) incurred received by INNOVIVE in the defense or settlement VIACELL as a result of any such suit or claim action (togetheri.e., the “Offset Amount”as a result of a counterclaim); provided, however, that such offset shall not exceed [*] percent ([*]%) of such payments otherwise due to SHINYAKU in each QUARTER pursuant to Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS. [*] Confidential treatment requested; certain information omitted and filed separately with the SEC.

Infringement Actions by Third Parties. (a) If INNOVIVE, or to its knowledge any of its SUBLICENSEES or customers, shall be sued by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in the TERRITORY, INNOVIVE shall promptly notify SHINYAKU in writing of the institution of such a suit. In such occasions, SHINYAKU shall cooperate in the defense of such a suit and furnish to INNOVIVE available evidence and assistance in its control. INNOVIVE agrees to keep SHINYAKU informed with respect to all material developments in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuit. In the event that INNOVIVE a complaint alleging infringement or violation of any patent or other proprietary rights is made against the Licensee with respect to the use of the Technology or the Patent Rights after the Effective Date, the following procedure shall be sued adopted: (a) the Licensee shall promptly notify the University upon receipt of any such complaint and shall keep the University fully informed of the actions and positions taken by the complainant and taken or proposed to be taken by the Licensee; (b) subject to this section, all costs and expenses incurred by the Licensee in investigating, resisting, litigating and settling such a complaint, including the payment of any award of damages and/or costs to any third party for infringement party, shall be borne by the Licensee; (c) no settlement or compromise of a patent the complaint shall be taken without full consultation with and approval by the University, which approval shall not be unreasonably withheld or delayed; (d) the University may elect to participate formally in any litigation involving the complaint, to the extent that the court may permit, but any additional expenses generated by such formal participation shall receive threat be borne entirely by the University (subject to the possibility of suitrecovery of some or all of such additional expenses from the complainant); and (e) if the complainant is willing to accept an offer of settlement and one of the parties to this Agreement is willing to make or accept such offer and the other is not, then INNOVIVE the unwilling party shall conduct all further proceedings at its own expense, and shall be responsible for the full amount of any damages, costs, accounting of profits and settlement costs in excess of those provided in such offer, but shall be entitled to control retain unto itself the defense benefit of and/or settle any litigated or settled result entailing a lower payment of costs, damages, accounting of profits and settlement costs than that provided in such suit or claim in its sole discretion. SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES or customers, by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE shall have the right to credit against the royalty and other payments to be paid by INNOVIVE to SHINYAKU with respect to the sale of the PRODUCTS under ARTICLE 5 all (i) damages or costs awarded against INNOVIVE, and royalties or other payments that INNOVIVE is ordered to or agrees to pay, with respect to a suit or claim by a third party for patent infringement, including without limitation any settlement amounts paid, and (ii) any costs (including reasonable attorney fees) incurred by INNOVIVE in the defense or settlement of such suit or claim (together, the “Offset Amount”); provided, however, that such offset shall not exceed [*] percent ([*]%) of such payments otherwise due to SHINYAKU in each QUARTER pursuant to Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS. [*] Confidential treatment requested; certain information omitted and filed separately with the SECoffer.

Infringement Actions by Third Parties. (a) If INNOVIVEIn the event that any complaint alleging infringement or violation of any patent or other proprietary rights is made against LICENSEE with respect to the use of the Invention or Technology, or to its knowledge any of its SUBLICENSEES or customers, shall be sued by a third party for infringement of a patent because of the development, manufacture, import, use or sale of Products, the COMPOUND or the PRODUCT in the TERRITORY, INNOVIVE following procedure shall be adopted: (a) LICENSEE shall promptly notify SHINYAKU in writing UNIVERSITY upon receipt of any such complaint and shall keep UNIVERSITY fully informed of the institution of actions and positions taken by the complainant and taken or proposed to be taken by LICENSEE; (b) subject to this section, all costs and expenses incurred by LICENSEE in investigating, resisting, litigating and settling such a suit. In such occasionscomplaint, SHINYAKU including the payment of any award of damages and/or costs to any third party, shall cooperate in the defense of such a suit and furnish to INNOVIVE available evidence and assistance in its control. INNOVIVE agrees to keep SHINYAKU informed with respect to all material developments in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuitbe borne by LICENSEE. In the event that INNOVIVE LICENSEE successfully defends any such complaint, LICENSEE may offset all costs incurred by it against future royalty payments otherwise owed to UNIVERSITY until LICENSEE has fully recovered such costs; (c) no decision or action concerning or governing any final disposition of the complaint shall be sued taken without full consultation with and by a third party for infringement UNIVERSITY; (d) UNIVERSITY may elect to participate formally in any litigation involving the complaint, to the extent that the court may permit, but any additional expenses generated by such formal participation shall be borne entirely by UNIVERSITY (subject to the possibility of a patent recovery of some or shall receive threat all of suitsuch additional expenses from the complainant); and (e) if the complainant is willing to accept an offer of settlement and one of the parties to this Agreement is willing to make or accept such offer and the other is not, then INNOVIVE the unwilling party shall conduct all further proceedings at its own expense, and shall be responsible for the full amount of any damages, costs, accounting of profits and settlement costs in excess of those provided in such offer, but shall be entitled to control retain unto itself the defense benefit of and/or settle any litigated or settled result entailing a lower payment of costs, damages, accounting of profits and settlement costs than that provided in such suit or claim in its sole discretion. SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES or customers, by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE shall have the right to credit against the royalty and other payments to be paid by INNOVIVE to SHINYAKU with respect to the sale of the PRODUCTS under ARTICLE 5 all (i) damages or costs awarded against INNOVIVE, and royalties or other payments that INNOVIVE is ordered to or agrees to pay, with respect to a suit or claim by a third party for patent infringement, including without limitation any settlement amounts paid, and (ii) any costs (including reasonable attorney fees) incurred by INNOVIVE in the defense or settlement of such suit or claim (together, the “Offset Amount”); provided, however, that such offset shall not exceed [*] percent ([*]%) of such payments otherwise due to SHINYAKU in each QUARTER pursuant to Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS. [*] Confidential treatment requested; certain information omitted and filed separately with the SECoffer.

Infringement Actions by Third Parties. (a) If INNOVIVEEach Party shall notify the other Party promptly in writing of any claim of, or to its knowledge action for, infringement of any Patents owned or licensed by Third Parties which is threatened, made or brought against either Party by reason of either Party's performance of its SUBLICENSEES obligations under this Agreement or customers, shall be sued by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT any Covered Products in the TERRITORYTerritory in the Field. (b) Except as provided in Section 13.3, INNOVIVE in the event that such an action for infringement is commenced solely against a Party or both Parties jointly and/or any of their respective Affiliates or Sublicensees, as the case may be, with respect to any Covered Product developed and commercialized by GPC, its Affiliates and/or Sublicensees, GPC shall promptly notify SHINYAKU in writing of defend such action at its own expense, and NEOTHERAPEUTICS hereby agrees to assist and cooperate with GPC to the institution of such a suit. In such occasions, SHINYAKU shall cooperate extent necessary in the defense of such a suit and furnish to INNOVIVE available evidence and assistance in its control. INNOVIVE agrees to keep SHINYAKU informed with respect to all material developments in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuit. In the event that INNOVIVE shall be sued by a third party for infringement of a patent or shall receive threat of suit, then INNOVIVE shall be entitled to control the defense of and/or settle such suit or claim in its sole discretionaccordance with Section 13.2(c). SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES or customers, by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE GPC shall have the right to credit against the royalty settle any such action or consent to an adverse judgment thereto, and other payments to NEOTHERAPEUTICS's consent shall not be paid by INNOVIVE to SHINYAKU with respect to the sale of the PRODUCTS under ARTICLE 5 all required unless such settlement or consent: (i) damages imposes any material obligation on NEOTHERAPEUTICS (including under Section 13.2(d)), or (ii) materially impairs NEOTHERAPEUTICS's rights in or to any J- M Licensed Technology, NEOTHERAPEUTICS Licensed Technology, NEOTHERAPEUTICS Development Technology and/or Joint Development Technology, in which event NEOTHERAPEUTICS's consent shall not be unreasonably withheld or delayed. (c) The costs awarded against INNOVIVE, and royalties or other payments that INNOVIVE is ordered to or agrees to pay, of defending any infringement action with respect to a suit Covered Product developed and commercialized by GPC, its Affiliates and/or Sublicensees shall be borne solely by GPC. (d) During the pendency of any such action, GPC shall continue to pay all royalties due hereunder. Subject to Section 9.5(b), GPC shall be fully liable for the payment of any award for damages, or claim by a third party for patent infringement, including without limitation any amount due pursuant to any settlement amounts paidentered into by GPC, to the extent that any such action pertains to a Covered Product developed and commercialized by GPC and/or its Affiliates or Sublicensees. (iie) Except to the extent that the provisions of Section 13.1 shall apply to any costs portion thereof, GPC shall retain any award or compensation (including reasonable attorney feesthe fair market value of non-monetary compensation) incurred received by INNOVIVE in the defense or settlement GPC as a result of any such suit or claim action (togetheri.e., the “Offset Amount”as a result of a counterclaim); provided, however, that such offset shall not exceed [*] percent ([*]%) of such payments otherwise due to SHINYAKU in each QUARTER pursuant to Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS. [*] Confidential treatment requested; certain information omitted and filed separately with the SEC.

Infringement Actions by Third Parties. (a) If INNOVIVEEach Party shall notify the other Party promptly in writing of any claim of, or to its knowledge any of its SUBLICENSEES or customersaction for, shall be sued by a third party for infringement of a patent because any patents belonging to Third Parties which is threatened, made or brought against either Party by reason of either Party’s performance under the development, Research Program or manufacture, import, use or sale of the COMPOUND or the PRODUCT any Products in the TERRITORYTerritory. (b) In the event that an action for infringement is commenced solely against a Party, INNOVIVE its Affiliates or its Sublicensees and such action is not covered by a right of indemnification under clause (iii) of Section 12.1 or Section 12.2(a)(iii), as applicable, such Party shall promptly notify SHINYAKU in writing of defend such action at its own expense, and the institution of other Party hereby agrees to assist and cooperate with such a suit. In such occasionsParty, SHINYAKU shall cooperate at its own expense, to the extent necessary in the defense of such a suit and furnish to INNOVIVE available evidence and assistance in its control. INNOVIVE agrees to keep SHINYAKU informed with respect to all material developments in such a lawsuit and to reasonably consult with SHINYAKU regarding the defense and any settlement of such a lawsuitsuit. In the event that INNOVIVE shall be sued by a third party for infringement of a patent or shall receive threat of suitsuch action involves an Excluded area compound and such Party does not defend such action, then INNOVIVE shall be entitled to control the defense of and/or settle such suit or claim in its sole discretion. SHINYAKU shall promptly notify INNOVIVE in writing of the institution of a suit against SHINYAKU, or to its knowledge any of its SUBLICENSEES or customers, by a third party for infringement of a patent because of the development, manufacture, import, use or sale of the COMPOUND or the PRODUCT in Japan. (b) INNOVIVE Lilly shall have the right to credit against defend such action pursuant to Section 8.1 of the royalty Lilly Agreement. The defending Party shall have the right to settle the suit or consent to an adverse judgment thereto, subject to the rights of Lilly under Section 8.1 of the Lilly Agreement, if any, and the consent of the other Party shall not be required unless such settlement or consent: (A) imposes any obligation on such other Party, or (B) materially impairs such other Party’s rights in or to any Patent, or any process, compound or composition of matter, that has utility outside the field of [**], or (C) in the event that such action involves an Excluded area compound or a Product consisting of an Excluded area compound or containing an Excluded area compound as an active ingredient, provides for the payment of any damages, settlement payments or awards to the defending Party (i.e., as a result of a counterclaim), in which event such other Party’s consent shall not be unreasonably withheld. During the pendency of such action, all royalties due hereunder shall continue to be paid by INNOVIVE the defending Party. The defending Party shall assume full responsibility for the payment of any award for damages, or any amount due pursuant to SHINYAKU any settlement entered into by such Party with such Third Party, subject to the provisions of Section 8.4 with respect to future royalties. Any and all damages, settlement payments and awards (including the sale fair market value of non-monetary consideration) received by the PRODUCTS under ARTICLE 5 all defending Party as a result thereof (i.e., as a result of a counterclaim) shall be applied as follows: (i) damages or costs awarded against INNOVIVEfirst, and royalties or other payments that INNOVIVE is ordered to or agrees to payfor reimbursement of the Parties, on a pro rata basis, for all expenses incurred by each in connection with respect to a suit or claim by a third party for patent infringement, including without limitation any settlement amounts paidsuch action, and (ii) second, any costs (including reasonable attorney fees) incurred by INNOVIVE in the defense or settlement of such suit or claim (togetherremaining balance shall be allocated [**]% to BMS and [**]% to ICAgen, the “Offset Amount”)except that with respect to Grant-Back Compounds and Grant-Back Products, any remaining balance shall be allocated [**]% to BMS and [**]% to ICAgen; provided, however, in the event that such offset action involves an Excluded area compound or a Product consisting of an Excluded area compound or containing an Excluded area compound as an active ingredient, then any remaining balance shall not exceed be allocated [*] percent (*]% to BMS and [**]%% to ICAgen, and with respect to Grant-Back Compounds and Grant-Back Products, any remaining balance shall be allocated [**]% to BMS and [**]% to ICAgen. (c) If such action is commenced against both Parties or their Affiliates or Sublicensees jointly and such action is not covered by a right of indemnification under clause (iii) of Section 12.1 or Section 12.2(a)(iii), the Parties shall enter into a joint defense strategy agreement which will set forth how the Parties intend to proceed, who will be selected as counsel and what the allocation of costs and damages will be between the Parties, subject to any rights of Lilly under the Lilly Agreement that are applicable thereto. If the Parties cannot agree on such payments otherwise due to SHINYAKU in each QUARTER a joint defense strategy, the matter shall be resolved pursuant to the arbitration provision set forth in Section 7.1 under this Agreement, and further provided that any portion of the Offset Amount that is not offset in a particular QUARTER may be carried forward for offset in subsequent QUARTERS. [*] Confidential treatment requested; certain information omitted and filed separately with the SEC16.14.