Common use of Infringement by Others Clause in Contracts

Infringement by Others. PROSECUTION UNDER THE DIRECTION OF THE JOINT STEERING Committee. EPIX and Schering shall each promptly notify the other in writing of any alleged or threatened infringement in the Field of patents or patent applications included in the EPIX Patent Rights licensed hereunder to Schering of which they become aware, and the Joint Steering Committee shall consider the action to be taken. In the event that the Joint Steering Committee elects to prosecute said infringement in the Field, it will determine which Party shall do so using counsel selected by such Party and approved by the Joint Steering Committee, such approval not to be unreasonably withheld or delayed. No settlement, consent judgment or other voluntary final disposition of the infringement or suit may be entered into by either of the Parties without the consent of the Joint Steering Committee, such consent not to be unreasonably withheld or delayed. The Costs of any settlement activities, prosecution or settlement will be considered Development Costs if incurred during the Development Phase of any Licensed Product and Costs of Goods Sold if incurred thereafter. Any recoveries, damages or other revenues derived from such settlement or action will be treated as Net Sales. If the Joint Committee cannot agree as to whether to prosecute an alleged infringement in the Field, the issue shall not be subject to dispute resolution pursuant to Section 14.6, but shall be resolved by not prosecuting the alleged infringement unless EPIX desires to prosecute the alleged infringement, in which case EPIX shall have the right to prosecute the alleged infringement in its sole discretion and at its sole expense, and if EPIX is successful in prosecuting any such infringement in its sole discretion, any recovery will belong to EPIX.

Infringement by Others. PROSECUTION UNDER THE DIRECTION OF THE JOINT STEERING Committee. EPIX and Schering shall each Each party agrees to promptly notify the ---------------------- other in writing of any infringement, imitation or unauthorized use of the LGE Technology, IGS Technology, the Improvements or the Products by others promptly following such party's becoming aware of such event. The Company shall have the initial right to determine whether or not to bring infringement or unfair competition proceedings on account of any such infringement, limitation or unauthorized use or variation or any other matter involving the IGS Technology, IGS Improvements or the Products. LGE shall cooperate fully with the Company in any legal action taken by the Company against any party alleged to be infringing upon the IGS Technology, IGS Improvements or threatened the Products. LGE shall have the initial right to determine whether or not to bring infringement or unfair competition proceedings on account of any such infringement, imitation or unauthorized use or variation, or any other matter involving the LGE Technology and LGE Improvements. The Company shall cooperate fully with LGE in any legal action taken by LGE against any party alleged to be infringing upon the Field of patents or patent applications included in the EPIX Patent Rights licensed hereunder LGE Technology and LGE Improvements. Any amount awarded with respect to Schering of which they become aware, any legal action shall be first allocated between LGE and the Joint Steering Committee Company in reimbursement of expenses and the remainder shall consider be equitably apportioned between LGE and the action Company pursuant to be takentheir mutual agreement as to their respective damages. In the event that the Joint Steering Committee elects to prosecute said infringement in the Field, it will determine which Party shall do so using counsel selected by such Party and approved by the Joint Steering Committee, such approval If either party decides not to be unreasonably withheld institute any suit or delayed. No settlementtake any action in connection with any potential infringement, consent judgment imitation or unauthorized use, the other voluntary final disposition of party may institute such action, at its sole cost and expense, upon obtaining the infringement or suit may be entered into by either of the Parties without the prior written consent of the Joint Steering Committee, such consent not * Certain material (indicated by an asterisk) has been omitted from this document pursuant to be unreasonably withheld or delayeda request for confidential treatment. The Costs of any settlement activities, prosecution or settlement will be considered Development Costs if incurred during omitted material has been filed separately with the Development Phase of any Licensed Product Securities and Costs of Goods Sold if incurred thereafterExchange Commission. Any recoveries, damages or other revenues derived from party to do so and such settlement or action will be treated as Net Sales. If the Joint Committee cannot agree as to whether to prosecute an alleged infringement in the Field, the issue shall not be subject to dispute resolution pursuant to Section 14.6, but party shall be resolved by not prosecuting entitled to retain any and all recoveries therefrom without any obligation to the alleged infringement unless EPIX desires to prosecute the alleged infringement, in which case EPIX shall have the right to prosecute the alleged infringement in its sole discretion and at its sole expense, and if EPIX is successful in prosecuting any such infringement in its sole discretion, any recovery will belong to EPIXother party.

Infringement by Others. PROSECUTION UNDER THE DIRECTION OF THE JOINT STEERING Committee. EPIX and Schering shall each promptly notify the other in writing of any alleged or threatened infringement in the Field of patents or patent applications included in the EPIX Schering Patent Rights licensed hereunder to Schering of which they become aware, and the Joint Steering Committee shall consider the action to be taken. In the event that the Joint Steering Committee elects to prosecute said infringement in the Field, it will determine which Party shall will do so using counsel selected by such Party and approved by the Joint Steering Committee, such approval not to be unreasonably withheld or delayed. No settlement, consent judgment or other voluntary final disposition of the infringement or suit may be entered into by either of the Parties without the consent of the Joint Steering Committee, such consent not to be unreasonably withheld or delayed. The Costs of any settlement activities, prosecution or settlement will be considered Development Costs if incurred during the Development Phase of any Licensed Product and Costs Cost of Goods Sold if incurred thereafter. Any recoveries, damages or other revenues derived from such settlement or action will be treated as Net Sales. If the Joint Steering Committee cannot agree as to whether to prosecute an alleged infringement in the Field, the issue shall not be subject to dispute resolution pursuant to Section 14.6, but shall be resolved by not prosecuting the alleged infringement unless EPIX Schering desires to prosecute the alleged infringement, in which case Schering shall have the right to prosecute the alleged infringement in its sole discretion and at its sole expense, and if Schering is successful in prosecuting such infringement in its sole discretion, any recovery shall belong to Schering. In the event that Schering is successful in prosecuting any such infringement in its sole discretion, any recovery will belong to Schering. The foregoing notwithstanding, if Schering determines not to prosecute an alleged infringement of the Schering Patent Rights covering Schering Program Technology which is a process, method, use, modification, derivative or formulation of Compound MS-325, then EPIX shall have the right to prosecute the alleged infringement in its sole discretion and at its sole expense, and if EPIX is successful in prosecuting any such infringement in its sole discretioninfringement, any recovery will belong to EPIX.

Infringement by Others. PROSECUTION UNDER THE DIRECTION OF THE JOINT STEERING CommitteeDuring the six month term, and only during that ---------------------- term referenced in Section 2.1(a), Licensee may notify AT&T of what Licensee in good faith believes is an infringement of any claim of the Licensed Tier 1 Patents by a Tellium Competitor. EPIX Together with such notice, Licensee shall provide AT&T credible evidence establishing that at least one claim of the Licensed Tier 1 Patents is infringed by such unauthorized use by the Tellium Competitor. AT&T shall analyze the evidence to determine whether at least one claim of the Licensed Tier 1 Patents is infringed. AT&T shall have the option, but not the obligation, to seek redress for such infringement at its own expense and Schering shall each promptly notify be entitled to any recovery therefor. In any action for such infringement, Licensee shall reasonably cooperate with AT&T at AT&T's reasonable expense. Licensee shall have no right, authority or standing to bring any action against any third party relating to the third party's infringement of the Licensed Patents. If AT&T determines that Licensee's evidence does not establish infringement and Licensee desires an independent assessment of the evidence provided to AT&T, the Parties shall agree to submit the issue of infringement to outside patent counsel, mutually acceptable to the Parties, for an opinion as to whether or not infringement exists. The outside patent counsel shall agree to represent both Parties in the matter of the opinion and shall render its opinion based solely on the evidence previously provided by Licensee to AT&T. The opinion shall be rendered within a short time frame, with the cost shared equally by the Parties. Both Parties shall maintain the opinion and all information concerning any alleged infringement in strict confidence and shall not provide information regarding the opinion, including the fact that an opinion was sought and rendered, to any third party without the express written consent of the other in writing of any alleged or threatened infringement in the Field of patents or patent applications included in the EPIX Patent Rights licensed hereunder to Schering of which they become aware, and the Joint Steering Committee shall consider the action to be takenParty. In the event that AT&T or the Joint Steering Committee elects to prosecute said infringement in outside patent counsel determines that the Field, it will determine which Party shall do so using counsel selected evidence provided by such Party and approved by the Joint Steering Committee, such approval not to be unreasonably withheld or delayed. No settlement, consent judgment or other voluntary final disposition of the infringement or suit may be entered into by either of the Parties without the consent of the Joint Steering Committee, such consent not to be unreasonably withheld or delayed. The Costs of any settlement activities, prosecution or settlement will be considered Development Costs if incurred during the Development Phase of any Licensed Product and Costs of Goods Sold if incurred thereafter. Any recoveries, damages or other revenues derived from such settlement or action will be treated as Net Sales. If the Joint Committee cannot agree as to whether to prosecute an alleged infringement in the Field, the issue shall not be subject to dispute resolution pursuant to Section 14.6, but shall be resolved by not prosecuting the alleged infringement unless EPIX desires to prosecute the alleged Licensee establishes infringement, in which case EPIX shall have the right to prosecute the alleged infringement in its sole discretion and at its sole expenseAT&T, and if EPIX is successful in prosecuting any such infringement in its sole discretion, determines not to seek redress for such infringement during the six month term referenced in Section 2.1(a), those shares, and only those shares, held in escrow as set forth in Section 3.4 in the Stock Purchase Agreement shall be returned to Licensee, as set forth in Exhibit B to the Escrow Agreement. However, in the event that during the six month term referenced in Section 2.1(a) herein (i) Licensee fails to provide evidence of infringement of the Licensed Tier 1 Patents, (ii) AT&T determines that Licensee's evidence of infringement does not establish infringement and Licensee does not desire an outside patent counsel opinion of the evidence provided to AT&T, (iii) outside patent counsel has opined that Licensee's evidence of infringement is not established, or (iv) AT&T has sought redress for infringement of the Licensed Tier 1 Patents, in a manner consistent with normal AT&T practice, those shares, and only those shares, held in escrow shall be delivered to AT&T, as set forth in Exhibit A to the Escrow Agreement. For the avoidance of doubt, in the event of a transfer of shares, such transfer shall occur only once regardless of the number of infringements identified by Licensee during such six month term. Notwithstanding any recovery will belong other provision in this Agreement, (a) AT&T shall have no obligation to EPIXseek redress for any infringement of any of the Licensed Patents and (b) AT&T shall have sole discretion as to the conduct of any action (including settlement) against any infringer of the Licensed Patents.