Common use of Infringement and Defense Clause in Contracts

Infringement and Defense. 7.1 LICENSEE agrees, itself or through its designee, to use reasonable efforts generally to enforce the PATENT RIGHTS with respect to substantial continuing infringements of the PATENT RIGHTS within the LICENSED FIELD, by initiating legal action, sublicensing the infringing activities or otherwise. It is understood, however, that such obligation shall not be deemed to require LICENSEE to take such actions with respect to each such infringement, and LICENSEE may take into account reasonable strategic and other considerations in determining which infringers to take action against, as well as when and whether to do so. If LICENSEE or its designee commences an action to enforce the PATENT RIGHTS, LICENSEE shall have the right during the pendency of the action [*]. Any amounts recovered from third parties by LICENSEE or a SUBLICENSEE with respect to the PATENT RIGHTS in such action or proceeding shall be applied [*] 7.2 In the event that [*] does not fulfill its obligations under Paragraph 7.1 above,[*] shall have the right to enforce the PATENT RIGHTS relating to infringement by such a substantial infringer on behalf of [*]; and in such event [*] shall have the right [*]. Any amounts recovered or received 7.3 In the event that LICENSEE, an AFFILIATE or SUBLICENSEE receives a claim from a third party alleging an infringement of intellectual property rights of a third party based upon the manufacture, sale or use of a LICENSED PRODUCT, LICENSEE shall have the right [*]. 7.4 In any suit or dispute involving the enforcement or defense of PATENT RIGHTS, the parties shall cooperate fully, including without limitation, subject to the statutory authority of the Attorney General of the State of Texas as applicable to BOARD and MDA, by joining as a party plaintiff and executing such documents as the party prosecuting such suit, action or other proceeding may reasonably request, all at such requesting party's expense. Upon the request and at the expense of the party bringing suit, the other party shall make available to the party bringing suit at reasonable times and under appropriate conditions all relevant personnel, records, papers, information, samples, specimens, and the like which are in its possession.

Infringement and Defense. 7.1 LICENSEE agrees, itself or through its designee, to use reasonable efforts generally to enforce the PATENT RIGHTS with respect to substantial continuing infringements of the PATENT RIGHTS within the LICENSED FIELD, by initiating legal action, sublicensing the infringing activities or otherwise. It is understood, however, that such obligation shall not be deemed to require LICENSEE to take such actions with respect to each such infringement, and LICENSEE may take into account reasonable strategic and other considerations in determining which infringers to take action against, as well as when and whether to do so. If LICENSEE or its designee commences an action to enforce the PATENT RIGHTS, LICENSEE shall have the right during the pendency of the action to withhold up to, but not more than, [***] ([***]%) of the royalties payable to BOARD hereunder based on the SALE of the LICENSED PRODUCTS covered by the patent within the PATENT RIGHTS in dispute to offset LICENSEE’s and its SUBLICENSEE’s out-of-pocket legal expenses incurred in connection with such action or proceeding. Any portion of such withheld *** Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions royalties that is not so applied, shall be promptly paid to BOARD after such action or proceeding is resolved or abandoned. Any amounts recovered from third parties by LICENSEE or a SUBLICENSEE with respect to the PATENT RIGHTS in such action or proceeding shall be applied [*]first to reimburse any outstanding legal expenses of the action or proceeding incurred by LICENSEE or such SUBLICENSEE, and then to reimburse BOARD for any royalties or fees withheld under this Paragraph 7.1 with respect to such action or proceeding. Any amounts remaining shall be included in NET SALES of LICENSEE or such SUBLICENSEE (as the case may be) for purposes of calculating royalties owed pursuant to Paragraph 5.1(a). 7.2 In the event that [*] LICENSEE does not fulfill its obligations under Paragraph 7.1 above,[*] , MDA shall have the right to enforce the PATENT RIGHTS relating to infringement by such a substantial infringer on behalf of [*]MDA and LICENSEE; and in such event [*] MDA shall have the right [*]to grant a nonexclusive license, under the PATENT RIGHTS that are the subject of such action, to the claimed infringer to make, use and sell the infringing products in the countries where such products are being sold at the time the action is commenced. Any amounts recovered or receivedreceived from third parties by MDA with respect to the PATENT RIGHTS in such action, proceeding or license shall be retained by MDA. 7.3 In the event that LICENSEE, an AFFILIATE or SUBLICENSEE receives a claim from a third party alleging an infringement of intellectual property rights of a third party based upon the manufacture, sale or use of a LICENSED PRODUCT, LICENSEE shall have the right to withhold [***] ([***]%) [***] payable to BOA.RD hereunder arid apply such amounts against LICENSEE’s and such AFFILIATES’ or SUBLICENSEES’ out-of-pocket expenses incurred in defending such claim. Any and all withheld amounts that are not so used shall promptly be reimbursed to BOARD after the resolution of such claim. 7.4 In any suit or dispute involving the enforcement or defense of PATENT RIGHTS, the parties shall cooperate fully, including without limitation, subject to the statutory authority of the Attorney General of the State of Texas as applicable to BOARD and MDA, by joining as a party plaintiff and executing such documents as the party prosecuting such suit, action or other proceeding may reasonably request, all at such requesting party's ’s expense. Upon the request and at the expense of the party bringing suit, the other party shall make available to the party bringing suit at reasonable times and under appropriate conditions all relevant personnel, records, papers, information, samples, specimens, and the like which are in its possession.

Infringement and Defense. 7.1 LICENSEE agrees, itself or through its designee, to use reasonable efforts generally to enforce the PATENT RIGHTS with respect to substantial continuing infringements of the PATENT RIGHTS within the LICENSED FIELD, by initiating legal action, sublicensing the infringing activities or otherwise. It is understood, however, that such obligation shall not be deemed to require LICENSEE to take such actions with respect to each such infringement, and LICENSEE may take into account reasonable strategic and other considerations in determining which infringers to take action against, as well as when and whether to do so. If LICENSEE or its designee commences an action to enforce the PATENT RIGHTS, LICENSEE shall have the right during the pendency of the action [*]. Any amounts recovered from third parties by LICENSEE or a SUBLICENSEE with respect to the PATENT RIGHTS in such action or proceeding shall be applied [*] 7.2 In the event that [*] does not fulfill its obligations under Paragraph 7.1 above,[*] shall have the right to enforce the PATENT RIGHTS relating to infringement by such a substantial infringer on behalf of [*]; and in such event [*] shall have the right [*]. Any amounts recovered or receivedreceived [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 7.3 In the event that LICENSEE, an AFFILIATE or SUBLICENSEE receives a claim from a third party alleging an infringement of intellectual property rights of a third party based upon the manufacture, sale or use of a LICENSED PRODUCT, LICENSEE shall have the right [*]. 7.4 In any suit or dispute involving the enforcement or defense of PATENT RIGHTS, the parties shall cooperate fully, including without limitation, subject to the statutory authority of the Attorney General of the State of Texas as applicable to BOARD and MDA, by joining as a party plaintiff and executing such documents as the party prosecuting such suit, action or other proceeding may reasonably request, all at such requesting party's expense. Upon the request and at the expense of the party bringing suit, the other party shall make available to the party bringing suit at reasonable times and under appropriate conditions all relevant personnel, records, papers, information, samples, specimens, and the like which are in its possession.

Infringement and Defense. 7.1 LICENSEE agrees, itself or through its designee, to use reasonable efforts generally to enforce the PATENT PAENT RIGHTS with respect to substantial continuing infringements of the PATENT RIGHTS within the LICENSED FIELD, by initiating legal action, sublicensing the infringing activities or otherwise. It is understood, however, that such obligation shall not be deemed deed to require LICENSEE to take such actions with respect to each such infringement, and LICENSEE may make take into account reasonable strategic and other considerations in determining which infringers to take action against, as well as when and whether to do so. If LICENSEE or its designee commences an action to enforce the PATENT RIGHTS, LICENSEE shall have the right during the pendency of the action [*]to withhold up to, but not more than, fifty percent (50%) of the royalties payable to BOARD hereunder based on the SALE of the LICENSED PRODUCTS covered by the patent within the PATENT RIGHTS in dispute to offset LICENSEE’s and its SUBLICENSEE’s out-of-pocket legal expenses incurred in connection with such action or proceeding. Any portion of such withheld royalties that is not so applied, shall be promptly paid to BOARD after such action or proceeding is resolved or abandoned. Any amounts recovered from third parties by LICENSEE or a SUBLICENSEE with respect to the PATENT RIGHTS in such action or proceeding shall be applied [*]first to reimburse any outstanding legal expenses of the action or proceeding incurred by LICENSEE or such SUBLICENSEE, and then to reimburse BOARD for any royalties or fees withheld under this Paragraph 7.1 with respect to such action or proceeding. Any amounts remaining shall be included in NET SALES of LICENSEE or such SUBLICENSEE (as the case may be) for purposes of calculating royalties owed pursuant to Paragraph 5.1(a). 7.2 In the event that [*] LICENSEE does not fulfill its obligations under Paragraph 7.1 above,[*] , MDA shall have the right to enforce the PATENT RIGHTS relating to infringement by such a substantial infringer on behalf of [*]MDA and LICENSEE; and in such event [*] MDA shall have the right [*]to grant a nonexclusive license, under the PATENT RIGHTS that are the subject of such action, to the claimed infringer to make, use and sell the infringing products in the countries where such products are being sold at the time the action is commenced. Any amounts recovered or receivedreceived from third parties by MDA with respect to the PATENT RIGHTS in such action, proceeding or license shall be retained by MDA. 7.3 In the event that LICENSEE, an AFFILIATE or SUBLICENSEE receives a claim from a third party alleging an infringement of intellectual property rights of a third party based upon the manufacture, sale or use of a LICENSED PRODUCT, LICENSEE shall have the right [*]to withhold fifty percent (50%) of the royalties payable to BOARD hereunder and apply such amounts against LICENSEE’s and such AFFILIATES’ or SUBLICENSEES’ out-of-pocket expenses incurred in defending such claim. Any and all withheld amounts that are not so used shall promptly be reimbursed to BOARD after the resolution of such claim. 7.4 In any suit or dispute involving the enforcement or defense of PATENT RIGHTS, the parties shall cooperate fully, including without limitation, subject to the statutory authority of the Attorney General of the State of Texas as applicable to BOARD and MDA, by joining as a party plaintiff and executing such documents as the party prosecuting such suit, action or other proceeding may reasonably request, all at such requesting party's ’s expense. Upon the request and at the expense of the party bringing suit, the other party shall make available to the party bringing suit at reasonable times and under appropriate conditions all relevant personnel, records, papers, information, samples, specimens, and the like which are in its possession.

Infringement and Defense. 7.1 LICENSEE agrees, itself or through its designee, to use reasonable efforts generally to enforce the PATENT RIGHTS with respect to substantial continuing infringements of the PATENT RIGHTS within the LICENSED FIELD, by initiating legal action, sublicensing the infringing activities or otherwise. It is understood, however, that such obligation shall not be deemed to require LICENSEE to take such actions with respect to each such infringement, and LICENSEE may take into account reasonable strategic and other considerations in determining which infringers to take action against, as well as when and whether to do so. If LICENSEE or its designee commences an action to enforce the PATENT RIGHTS, LICENSEE 5.1 Licensor shall have the sole right during to control the pendency prosecution and settlement of any action, suit or other proceeding (collectively, "Prosecution") respecting any infringement of the action [*]. Any amounts recovered from third parties by LICENSEE or Patents (hereinafter "Infringement"), including, without limitation, the decision whether to initiate a SUBLICENSEE with respect to the PATENT RIGHTS in such action or proceeding shall be applied [*]Prosecution. 7.2 In the event that [*] does not fulfill its obligations under Paragraph 7.1 above,[*] 5.2 Licensor shall have the right to enforce control the PATENT RIGHTS relating defense and settlement (collectively "Defense") of any allegation or claim by a third party of infringement of rights of such third party arising from Licensee's use of the Patents or a claim by a third party of invalidity or unenforceability of any of the Patents (collectively, "Claim") including, without limitation, the decision whether to infringement undertake a Defense, provided, however, that in the event Licensor undertakes any Defense, Licensor shall promptly: (a) notify Licensee of any material developments with respect to such Defense; (b) deliver to Licensee a copy of all pleadings, correspondence and other material documents respecting such Defense; and (c) notify Licensee of any offers of settlement related to such Defense which it receives or which it proposes to make. Licensor shall not offer, or accept any offer of a settlement that contains any material term or condition (other than the receipt or payment of money by Licensor) which would have a material adverse impact on Licensee's use of the Patents without the prior written consent of Licensee, which consent shall be not unreasonably withheld or delayed. 5.3 Licensee will promptly notify Licensor of any Claim or any Infringement that comes to its attention. Licensor shall within thirty (30) days from the date it receives notice from Licensee of a Claim or Infringement to notify Licensee of its decision as to whether it will undertake the Defense or Prosecution respecting such Claim or Infringement. If Licensor elects not to undertake the Defense or does not give timely notice to Licensee of its decision with regard thereto, Licensee shall be authorized to undertake the Defense of such Claim or Prosecution of such Infringement (provided Licensee's Prosecution will not, in Licensor's reasonable opinion, adversely effect Licensor's ownership or use of the Patents); provided however, that Licensee will promptly: (a) notify Licensor of any material developments with respect to such Defense or Prosecution; (b) deliver to Licensor a substantial infringer on behalf copy of [*]all pleadings, correspondence and other material documents respecting such Defense or Prosecution; and in and (c) notify Licensor of any offers of settlement related to such event [*] Claim or Infringement which it receives or which it proposes to make. Licensee shall have not offer, or accept any offer of, a settlement that contains any material term or condition other than the right [*]. Any amounts recovered receipt or receivedpayment of money by Licensee without the prior written consent of Licensor, which consent shall not be unreasonably withheld or delayed. 7.3 5.4 In the event that LICENSEELicensee undertakes any Defense or Prosecution, an AFFILIATE or SUBLICENSEE receives a claim from a third party alleging an infringement of intellectual property rights of a third party based upon the manufacture, sale or use of a LICENSED PRODUCT, LICENSEE shall have Licensor reserves the right [*]. 7.4 In at any suit time to assume said Defense or dispute involving the enforcement Prosecution at its own expense. If any Prosecution results in a monetary judgment in favor of Licensor or defense of PATENT RIGHTSLicensee, the parties shall cooperate fullywill negotiate in good faith an appropriate allocation of those proceeds, including without limitation, subject to the statutory authority after reimbursement of the Attorney General of the State of Texas as applicable to BOARD all attorneys' fees and MDA, by joining as a party plaintiff and executing such documents as the party prosecuting such suit, action or other proceeding may reasonably request, all at such requesting party's expense. Upon the request and at the expense of the party bringing suit, the other party shall make available costs incurred in connection with said Prosecution has been made to the party bringing suit at reasonable times bearing such fees and under appropriate conditions all relevant personnel, records, papers, information, samples, specimens, and the like which are in its possessioncosts.

Infringement and Defense. 7.1 LICENSEE agrees, itself or through its designee, to use reasonable efforts generally to enforce the PATENT RIGHTS with respect to substantial continuing infringements of the PATENT RIGHTS within the LICENSED FIELD, by initiating legal action, sublicensing the infringing activities or otherwise. It is understood, however, that such obligation shall not be deemed to require LICENSEE to take such actions with respect to each such infringement, and LICENSEE may take into account reasonable strategic and other considerations in determining which infringers to take action against, as well as when and whether to do so. If LICENSEE or its designee commences an action to enforce the PATENT RIGHTS, LICENSEE 5.1 Licensor shall have the sole right during to control the pendency prosecution and settlement of any action, suit or other proceeding (collectively, "Prosecution") respecting any infringement of the action [*]. Any amounts recovered from third parties by LICENSEE or Copyrights (hereinafter "Infringement"), including, without limitation, the decision whether to initiate a SUBLICENSEE with respect to the PATENT RIGHTS in such action or proceeding shall be applied [*]Prosecution. 7.2 In the event that [*] does not fulfill its obligations under Paragraph 7.1 above,[*] 5.2 Licensor shall have the right to enforce control the PATENT RIGHTS relating defense and settlement (collectively "Defense") of any allegation or claim by a third party of infringement of rights of such third party arising from Licensee's use of the Copyrights (collectively, "Claim") including, without limitation, the decision whether to infringement undertake a Defense, provided, however, that in the event Licensor undertakes any Defense, Licensor shall promptly: (a) notify Licensee of any material developments with respect to such Defense; (b) deliver to Licensee a copy of all pleadings, correspondence and other material documents respecting such Defense; and (c) notify Licensee of any offers of settlement related to such Defense which it receives or which it proposes to make. Licensor shall not offer, or accept any offer of a settlement that contains any material term or condition (other than the receipt or payment of money by Licensor) which would have a material adverse impact on Licensee's use of the Patents without the prior written consent of Licensee, which consent shall be not unreasonably withheld or delayed. 5.3 Licensee will promptly notify Licensor of any Claim or any Infringement that comes to its attention. Licensor will within thirty (30) days from the date it receives notice from Licensee of a Claim or Infringement notify Licensee of its decision as to whether it will undertake the Defense or Prosecution respecting such Claim or Infringement. If Licensor elects not to undertake the Defense or Prosecution or does not give timely notice to Licensee of its decision with regard thereto, Licensee shall be authorized to undertake the Defense of such Claim (at Licensor's cost and expense to the extent the Claim arises out of Licensee's right to use the Copyrighted Works in connection with the Business, and otherwise at Licensee's sole cost and expense) or Prosecution of such Infringement (provided Licensee's Prosecution will not, in Licensor's reasonable opinion, adversely effect Licensor's ownership or use of the Copyrighted Works) at its sole cost and expense; provided however, that Licensee will promptly: (a) notify Licensor of any material developments with respect to such Defense or Prosecution; (b) deliver to Licensor a substantial infringer on behalf copy of [*]all pleadings, correspondence and other material documents respecting such Defense or Prosecution; and in and (c) notify Licensor of any offers of settlement related to such event [*] Claim or Infringement which it receives or which it proposes to make. Licensee shall have not offer, or accept any offer of, a settlement that contains any material term or condition other than the right [*]. Any amounts recovered receipt or receivedpayment of money by Licensee without the prior written consent of Licensor, which consent shall not be unreasonably withheld or delayed. 7.3 5.4 In the event that LICENSEELicensee undertakes any Defense or Prosecution, an AFFILIATE or SUBLICENSEE receives a claim from a third party alleging an infringement of intellectual property rights of a third party based upon the manufacture, sale or use of a LICENSED PRODUCT, LICENSEE shall have Licensor reserves the right [*]. 7.4 In at any suit time to assume said Defense or dispute involving the enforcement Prosecution at its own expense. If any Prosecution results in a monetary judgment in favor of Licensor or defense of PATENT RIGHTSLicensee, the parties shall cooperate fullywill negotiate in good faith an appropriate allocation of those proceeds, including without limitation, subject to the statutory authority after reimbursement of the Attorney General of the State of Texas as applicable to BOARD all attorneys' fees and MDA, by joining as a party plaintiff and executing such documents as the party prosecuting such suit, action or other proceeding may reasonably request, all at such requesting party's expense. Upon the request and at the expense of the party bringing suit, the other party shall make available costs incurred in connection with said Prosecution has been made to the party bringing suit at reasonable times bearing such fees and under appropriate conditions all relevant personnel, records, papers, information, samples, specimens, and the like which are in its possessioncosts.

Infringement and Defense. 7.1 LICENSEE agrees, itself or through its designee, to use reasonable efforts generally to enforce the PATENT RIGHTS with respect to substantial continuing infringements of the PATENT RIGHTS within the LICENSED FIELD, by initiating legal action, sublicensing the infringing activities or otherwise. It is understood, however, that such obligation shall not be deemed to require LICENSEE to take such actions with respect to each such infringement, and LICENSEE may take into account reasonable strategic and other considerations in determining which infringers to take action against, as well as when and whether to do so. If LICENSEE or its designee commences an action to enforce the PATENT RIGHTS, LICENSEE shall have the right during the pendency of the action [*]. Any amounts recovered from third parties by LICENSEE or a SUBLICENSEE with respect to the PATENT RIGHTS in such action or proceeding shall be applied [*]first to reimburse any outstanding legal expenses of the action or proceeding incurred by LICENSEE or such SUBLICENSEE, and then to reimburse BOARD for any royalties or fees withheld under this Paragraph 7.1 with respect to such action or proceeding. Any amounts remaining shall be included in NET SALES of LICENSEE or such SUBLICENSEE (as the case may be) for purposes of calculating royalties owed pursuant to Paragraph 5.1(a). 7.2 In the event that [*] LICENSEE does not fulfill its obligations under Paragraph 7.1 above,[*] , MDA shall have the right to enforce the PATENT RIGHTS relating to infringement by such a substantial infringer on behalf of [*]MDA and LICENSEE; and in such event [*] MDA shall have the right [*]to grant a nonexclusive license, under the PATENT RIGHTS that are the subject of such action, to the claimed infringer to make, use and sell the infringing products in the countries where such products are being sold at the time the auction is commenced. Any amounts recovered or receivedreceived [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 7.3 In the event that LICENSEE, an AFFILIATE or SUBLICENSEE receives a claim from a third party alleging an infringement of intellectual property rights of a third party based upon the manufacture, sale or use of a LICENSED PRODUCT, LICENSEE shall have the right [*]. 7.4 In any suit or dispute involving the enforcement or defense of PATENT RIGHTS, the parties shall cooperate fully, including without limitation, subject to the statutory authority of the Attorney General of the State of Texas as applicable to BOARD and MDA, by joining as a party plaintiff and executing such documents as the party prosecuting such suit, action or other proceeding may reasonably request, all at such requesting party's expense. Upon the request and at the expense of the party bringing suit, the other party shall make available to the party bringing suit at reasonable times and under appropriate conditions all relevant personnel, records, papers, information, samples, specimens, and the like which are in its possession.