Common use of Infringement Litigation Clause in Contracts

Infringement Litigation. (a) In the event that "substantial" Infringing Third Party Sales are occurring in a country in which ROCHE or its Affiliates or an Authorized Distributor is selling a CHIRON Licensed Product (in each such country, the "Impacted Product"), and ROCHE has notified CHIRON pursuant to Section 13.1 of the existence of such infringement in [**] (an "Infringement Notice"), then the provisions of this Section 13.2 shall apply. For purposes of this Section 13.2, "Major Country" shall mean [**]. (b) For purposes of this Section 13.2, an Infringing Third Party Sale shall be considered substantial in a country if the infringing third party achieves market share, in the case of Blood Screening of at [**], and in the case of Plasma Fractionation of at [**] of the Aggregated Products in such country [**]. For purposes of this Section 13.2, "Aggregated Products" means the number of Units of CHIRON Licensed Products of the applicable Field Category plus the number of Competitive Products sold (or used, in the case of Plasma Fractionation) in a country, and "Competitive Products" means the number of Units of Products which are sold (or used, in the case of Plasma Fractionation) of the applicable Field Category and which compete with a CHIRON Licensed Product sold or used by ROCHE or its Affiliates in a country. (c) If the Infringement Notice identifies an Impacted Product in a Major Country and CHIRON fails to institute legal action in a Major Country or other country acceptable to ROCHE [**] following receipt by CHIRON of the Infringement Notice and infringement is not otherwise abated, then ROCHE shall be relieved of the obligation to pay the portion of Earned Royalties set forth in Section 13.2(d) with respect to the Impacted Product until such time as CHIRON institutes such legal action as described in this Section 13.2(c); provided, however, that CHIRON need not initiate or continue any such legal action, if, after reasonably diligent effort (including reasonably diligent effort by ROCHE if requested by CHIRON), CHIRON is unable to acquire admissible evidence sufficient to establish a prima facia case of infringement under the law of the applicable country; and provided further, that CHIRON shall not be obligated to institute or maintain more than one such action [**] of this Agreement nor more than three such actions at any time with regard to Impacted Products in Plasma Fractionation. (d) If CHIRON has not instituted such legal action at the end of such [**], to the extent required under Section 13.2(c), and such infringement is not otherwise abated, the Earned Royalty with respect to an Impacted Product in Blood Screening shall be reduced by [**] from the amount otherwise payable under Paragraph 1 of Exhibit A (excluding the effect of any reduction in Earned Royalty Amounts triggered by operation of Paragraph 2 of Exhibit A) and with respect to an Impacted Product in Plasma Fractionation shall be reduced by [**]. If, at the end of [**] thereafter, CHIRON has not instituted such legal action, to the extent so required, and infringement is not otherwise abated, Earned Royalties on such Impacted Product shall be reduced by an [**] of the original Earned Royalties, such that if legal action required under Section 13.2(c) has not commenced and the infringement is not otherwise abated by, in the case of an Impacted Product in Blood Screening the end of the [**] following receipt by CHIRON of the Infringement Notice and in the case of an Impacted Product in Plasma Fractionation the end of the [**] following receipt by CHIRON of the Infringement Notice, [**] shall be payable hereunder with respect to the Impacted Product. (e) The obligations to pay Earned Royalties shall be reinstated on a prospective basis at such time as ROCHE receives written notice of the institution of legal action in accordance with Section 13.2(c) or the infringement is otherwise abated, all subject to Section 13.2(f). (f) If legal action required under Section 13.2(c) has not been instituted and the infringement is not otherwise abated in the case of an Impacted Product in Blood Screening for more than [**] following receipt by CHIRON of the Infringement Notice and in the case of an Impacted Product in Plasma Fractionation for more than [**] following receipt by CHIRON of the Infringement Notice, and if, as a result of the infringement, sales of the Impacted Product [**] by ROCHE, its Affiliates or an Authorized Distributor have declined by [**] or more during the preceding [**], then upon reinstatement of Earned Royalties pursuant to Section 13.2(e), the parties shall meet and confer regarding possible adjustments to the Earned Royalties for the Impacted Product in view of such degradation of the market. The parties will discuss possible rate reductions, as well as a plan for reinstating the original economic expectations of the parties. It is expected that any agreement for reduction of Earned Royalties will be phased out over time, so as to return to the Earned Royalties set forth in Exhibit A. If the parties fail to reach agreement on any such adjustment, the matter shall be submitted for resolution by ADR, except that in the event of ADR, each party shall submit to the neutral a proposal with respect to adjustments pursuant to this Section 13.2(f). The neutral shall be empowered to choose one proposal or the other, but shall not be empowered to order any such adjustment other than as proposed by one of the parties.

Infringement Litigation. (a) In the event that "substantial" Infringing Third Party Sales are occurring in a country within the Region in which ROCHE or its Affiliates or an Authorized Distributor is selling a CHIRON Licensed Product (in each such country, the "Impacted Product"), and ROCHE has notified CHIRON pursuant to Section 13.1 of the existence of such infringement in [***] (an "Infringement Notice"), then the provisions of this Section 13.2 shall apply. For purposes of this Section 13.2, "Major Country" shall mean [**]. (b) For purposes of this Section 13.2, an Infringing Third Party Sale shall be considered substantial in a country if the infringing third party achieves market share, in the case of Blood Screening share of at least [**], and in the case of Plasma Fractionation of at [**] of the Aggregated Products in such country [***]. For purposes of this Section 13.2, [***]. For purposes of this Section 13.2, "Aggregated Products" means the number of Units of CHIRON Licensed Products of the applicable Field Product Category plus the number of and Competitive Products sold (or used, in the case of Plasma Fractionation) in a country, and "Competitive Products" means the number of Units of Products which are sold (or used, in the case of Plasma Fractionation) of the applicable Field Category and which compete with a CHIRON Licensed Product sold or used by ROCHE or its Affiliates in a country. (cb) If the Infringement Notice identifies identified an Impacted Product in a Major Country and CHIRON fails to institute legal action in a Major Country or other country acceptable to ROCHE against the infringing party [***], [***] following receipt by CHIRON of the Infringement Notice and infringement is not otherwise abated, ; then ROCHE shall be relieved of the obligation to pay the portion of Earned Royalties set forth in Section 13.2(d13.2(c) and all [***], with respect to the Impacted Product until such time as CHIRON institutes such legal action as described in this Section 13.2(c13.2(b); provided, however, that CHIRON need not initiate or continue any such legal action, if, after reasonably diligent effort (including reasonably diligent effort by ROCHE if requested by CHIRON), CHIRON is unable to acquire admissible evidence sufficient to establish a prima facia case of infringement under the law of the applicable country; and provided further, that CHIRON shall not be obligated to institute or maintain more than one such action [**] of this Agreement nor more than three such actions at any time with regard to Impacted Products in Plasma Fractionation. (dc) If CHIRON has not instituted such legal action at the end of such [***], to the extent required under Section 13.2(c13.2(b), and such infringement is not otherwise abated, the Earned Royalty with respect to an Impacted Product in Blood Screening shall be reduced by [**] from the amount otherwise payable under Paragraph 1 of Exhibit A (excluding the effect of any reduction in Earned Royalty Amounts triggered by operation of Paragraph 2 of Exhibit A) and with respect to an Impacted Product in Plasma Fractionation shall be reduced by [**]. If, at the end of each [***] thereafter, CHIRON has not instituted such legal action, to the extent so required, and infringement is not otherwise abated, such Earned Royalties on such Impacted Product shall be reduced by an [***] of the original Earned Royalties, such that if legal action required under Section 13.2(c13.2(b) has not commenced and the infringement is not otherwise abated by, in the case of an Impacted Product in Blood Screening by the end of the [***] following receipt by CHIRON of the Infringement Notice and in the case of an Impacted Product in Plasma Fractionation the end of the [**] following receipt by CHIRON of the Infringement Notice, [**] shall be payable hereunder with respect to the Impacted Product. (ed) The obligations to pay Earned Royalties and Minimum Royalties shall be reinstated on a prospective basis at such time as ROCHE receives written notice of the institution of legal action in accordance with Section 13.2(c13.2(b) or the infringement is otherwise abated, all subject to Section 13.2(f13.2(e). (fe) If legal action required under Section 13.2(c13.2(b) has not been instituted and the infringement is not otherwise abated in the case of an Impacted Product in Blood Screening for more than [**] following receipt by CHIRON of the Infringement Notice and in the case of an Impacted Product in Plasma Fractionation for more than [**] following receipt by CHIRON of the Infringement Notice, and if, as a result of the infringement, sales of the Impacted Product [**] in a Major Country by ROCHE, its Affiliates or an Authorized Distributor have declined by [***] or more during the preceding [***], then upon reinstatement of Earned Royalties and Minimum pursuant to Section 13.2(e13.2(d), the parties shall meet and confer regarding possible adjustments to the Earned Royalties and Minimum Royalties for the Impacted Product in view of such degradation of the market. The parties will discuss possible rate reductions, as well as a plan for reinstating the original economic expectations of the parties. It is expected that any agreement for reduction of Earned Royalties and Minimum Royalties will be phased out over time, so as to return to the Earned Royalties and Minimum Royalties set forth in Exhibit A. If the parties fail to reach agreement on any such adjustment, the matter shall be submitted for resolution by ADR, except that in the event of ADR, each party shall submit to the neutral a proposal with respect to adjustments pursuant to this Section 13.2(f13.2(e). The neutral shall be empowered to choose one proposal or the other, but shall not be empowered to order any such adjustment other than as proposed by one of the parties.

Infringement Litigation. (a) In the event that "substantial" Infringing Third Party Sales are occurring in a country within the Region in which ROCHE or its Affiliates or an Authorized Distributor is selling a CHIRON Licensed Product (in each such such, country, the "Impacted Product"), and ROCHE has notified CHIRON pursuant to Section 13.1 of the existence of such infringement in [***] (an "Infringement Notice"), then the provisions of this Section 13.2 shall apply. For purposes of this Section 13.2, "Major Country" shall mean [***]. (b) For purposes of this Section 13.2, an Infringing Third Party Sale shall be considered substantial in a country if the infringing third party achieves market share, in the case of Blood Screening of at [***], and in the case of Plasma Fractionation of at [***] of the Aggregated Products in such country [***]. For purposes of this Section 13.2, "Aggregated Products" means the number of Units of CHIRON Licensed Products of the applicable Field Category plus the number of Competitive Products sold (or used, in the case of Plasma Fractionation) in a country, and "Competitive Products" means the number of Units of Products which are sold (or used, in the case of Plasma Fractionation) of the applicable Field Category and which compete with a CHIRON Licensed Product sold or used by ROCHE or its Affiliates in a country. (c) If the Infringement Notice identifies an Impacted Product in a Major Country and CHIRON fails to institute legal action in a Major Country or other country acceptable to ROCHE [***] following receipt by CHIRON of the Infringement Notice and infringement is not otherwise abated, then ROCHE shall be relieved of the obligation to pay the portion of Earned Royalties set forth in Section 13.2(d) with respect to the Impacted Product until such time as CHIRON institutes such legal action as described in this Section 13.2(c); provided, however, that CHIRON need not initiate or continue any such legal action, if, after reasonably diligent effort (including reasonably diligent effort by ROCHE if requested by CHIRON), CHIRON is unable to acquire admissible evidence sufficient to establish a prima facia case of infringement under the law of the applicable country; and provided further, that CHIRON shall not be obligated to institute or maintain more than one such action [**] of this Agreement nor more than three such actions at any time with regard to Impacted Products in Plasma Fractionation. (d) If CHIRON has not instituted such legal action at the end of such [***], to the extent required under Section 13.2(c), and such infringement is not otherwise abated, the Earned Royalty with respect to an Impacted Product in Blood Screening shall be reduced by [***] from the amount otherwise payable under Paragraph 1 of Exhibit A (excluding the effect of any reduction in Earned Royalty Amounts triggered by operation of Paragraph 2 of Exhibit A) and with respect to an Impacted Product in Plasma Fractionation shall be reduced by [***]. If, at the end of [***] thereafter, CHIRON has not instituted such legal action, to the extent so required, and infringement is not otherwise abated, Earned Royalties on such Impacted Product shall be reduced by an [***] of the original Earned Royalties, such that if legal action required under Section 13.2(c) has not commenced and the infringement is not otherwise abated by, in the case of an Impacted Product in Blood Screening the end of the [***] following receipt by CHIRON of the Infringement Notice and in the case of an Impacted Product in Plasma Fractionation the end of the [***] following receipt by CHIRON of the Infringement Notice, [***] shall be payable hereunder with respect to the Impacted Product. (e) The obligations to pay Earned Royalties shall be reinstated on a prospective basis at such time as ROCHE receives written notice of the institution of legal action in accordance with Section 13.2(c) or the infringement is otherwise abated, all subject to Section 13.2(f). (f) If legal action required under Section 13.2(c) has not been instituted and the infringement is not otherwise abated in the case of an Impacted Product in Blood Screening for more than [***] following receipt by CHIRON of the Infringement Notice and in the case of an Impacted Product in Plasma Fractionation for more than [***] following receipt by CHIRON of the Infringement Notice, and if, as a result of the infringement, sales of the Impacted Product [***] by ROCHE, its Affiliates or an Authorized Distributor have declined by [***] or more during the preceding [***], then upon reinstatement of Earned Royalties pursuant to Section 13.2(e), the parties shall meet and confer regarding possible adjustments to the Earned Royalties for the Impacted Product in view of such degradation of the market. The parties will discuss possible rate reductions, as well as a plan for reinstating the original economic expectations of the parties. It is expected that any agreement for reduction of Earned Royalties will be phased out over time, so as to return to the Earned Royalties set forth in Exhibit A. If the parties fail to reach agreement on any such adjustment, the matter shall be submitted for resolution by ADR, except that in the event of ADR, each party shall submit to the neutral a proposal with respect to adjustments pursuant to this Section 13.2(f). The neutral shall be empowered to choose one proposal or the other, but shall not be empowered to order any such adjustment other than as proposed by one of the parties.

Infringement Litigation. (a) In the event that "substantial" Infringing Third Party Sales are occurring in a country within the Region in which ROCHE or its Affiliates or an Authorized Distributor is selling a CHIRON Licensed Product (in each such country, the "Impacted Product"), and ROCHE has notified CHIRON pursuant to Section 13.1 of the existence of such infringement in [***] (an "Infringement Notice"), then the provisions of this Section 13.2 shall apply. For purposes of this Section 13.2, "Major Country" shall mean [***]. (b) For purposes of this Section 13.2, an Infringing Third Party Sale shall be considered substantial in a country if the infringing third party achieves market share, in the case of Blood Screening of at [***], and in the case of Plasma Fractionation of at [***] of the Aggregated Products in such country [***]. For purposes of this Section 13.2, "Aggregated Products" means the number of Units of CHIRON Licensed Products of the applicable Field Category plus the number of Competitive Products sold (or used, in the case of Plasma Fractionation) in a country, and "Competitive Products" means the number of Units of Products which are sold (or used, in the case of Plasma Fractionation) of the applicable Field Category and which compete with a CHIRON Licensed Product sold or used by ROCHE or its Affiliates in a country. (c) If the Infringement Notice identifies an Impacted Product in a Major Country and CHIRON fails to institute legal action in a Major Country or other country acceptable to ROCHE [***] following receipt by CHIRON of the Infringement Notice and infringement is not otherwise abated, then ROCHE shall be relieved of the obligation to pay the portion of Earned Royalties set forth in Section 13.2(d) with respect to the Impacted Product until such time as CHIRON institutes such legal action as described in this Section 13.2(c); provided, however, that CHIRON need not initiate or continue any such legal action, if, after reasonably diligent effort (including reasonably diligent effort by ROCHE if requested by CHIRON), CHIRON is unable to acquire admissible evidence sufficient to establish a prima facia case of infringement under the law of the applicable country; and provided further, that CHIRON shall not be obligated to institute or maintain more than one such action [**] of this Agreement nor more than three such actions at any time with regard to Impacted Products in Plasma Fractionation. (d) If CHIRON has not instituted such legal action at the end of such [***], to the extent required under Section 13.2(c), and such infringement is not otherwise abated, the Earned Royalty with respect to an Impacted Product in Blood Screening shall be reduced by [***] from the amount otherwise payable under Paragraph 1 of Exhibit A (excluding the effect of any reduction in Earned Royalty Amounts triggered by operation of Paragraph 2 of Exhibit A) and with respect to an Impacted Product in Plasma Fractionation shall be reduced by [***]. If, at the end of [***] thereafter, CHIRON has not instituted such legal action, to the extent so required, and infringement is not otherwise abated, Earned Royalties on such Impacted Product shall be reduced by an [***] of the original Earned Royalties, such that if legal action required under Section 13.2(c) has not commenced and the infringement is not otherwise abated by, in the case of an Impacted Product in Blood Screening the end of the [**] *]following receipt by CHIRON of the Infringement Notice and in the case of an Impacted Product in Plasma Fractionation the end of the [***] following receipt by CHIRON of the Infringement Notice, [***] shall be payable hereunder with respect to the Impacted Product. (e) The obligations to pay Earned Royalties shall be reinstated on a prospective basis at such time as ROCHE receives written notice of the institution of legal action in accordance with Section 13.2(c) or the infringement is otherwise abated, all subject to Section 13.2(f). (f) If legal action required under Section 13.2(c) has not been instituted and the infringement is not otherwise abated in the case of an Impacted Product in Blood Screening for more than [***] following receipt by CHIRON of the Infringement Notice and in the case of an Impacted Product in Plasma Fractionation for more than [***] following receipt by CHIRON of the Infringement Notice, and if, as a result of the infringement, sales of the Impacted Product [***] by ROCHE, its Affiliates or an Authorized Distributor have declined by [***] or more during the preceding [**], *] then upon reinstatement of Earned Royalties pursuant to Section 13.2(e), the parties shall meet and confer regarding possible adjustments to the Earned Royalties for the Impacted Product in view of such degradation of the market. The parties will discuss possible rate reductions, as well as a plan for reinstating the original economic expectations of the parties. It is expected that any agreement for reduction of Earned Royalties will be phased out over time, so as to return to the Earned Royalties set forth in Exhibit A. If the parties fail to reach agreement on any such adjustment, the matter shall be submitted for resolution by ADR, except that in the event of ADR, each party shall submit to the neutral a proposal with respect to adjustments pursuant to this Section 13.2(f). The neutral shall be empowered to choose one proposal or the other, but shall not be empowered to order any such adjustment other than as proposed by one of the parties.

Infringement Litigation. (a) In the event that "substantial" Infringing Third Party Sales are occurring in a country within the Region in which ROCHE or its Affiliates or an Authorized Distributor is selling a CHIRON Licensed Product (in each such country, the "Impacted Product"), and ROCHE has notified CHIRON pursuant to Section 13.1 of the existence of such infringement in [***] (an "Infringement Notice"), then the provisions of this Section 13.2 shall apply. For purposes of this Section 13.2, "Major Country" shall mean [**]. (b) For purposes of this Section 13.2, an Infringing Third Party Sale shall be considered substantial in a country if the infringing third party achieves market share, in the case of Blood Screening share of at least [**], and in the case of Plasma Fractionation of at [**] of the Aggregated Products in such country [***]. For purposes of this Section 13.2, "[***]. For purposes of this Section 13.2, "Aggregated Products" means the number of Units of CHIRON Licensed Products of the applicable Field Applicable Product Category plus the number of and Competitive Products sold (or used, in the case of Plasma Fractionation) in a country, and "Competitive Products" means the number of Units of Products which are sold (or used, in the case of Plasma Fractionation) of the applicable Field Category and which compete with a CHIRON Licensed Product sold or used by ROCHE or its Affiliates in a country. (cb) If the Infringement Notice identifies identified an Impacted Product in a Major Country and CHIRON fails to institute legal action in a Major Country or other country acceptable to ROCHE against the infringing party [***] following receipt by CHIRON of the Infringement Notice and infringement is not otherwise abated, ; then ROCHE shall be relieved of the obligation to pay the portion of Earned Royalties set forth in Section 13.2(d13.2(c) and all [***], with respect to the Impacted Product until such time as CHIRON institutes such legal action as described in this Section 13.2(c13.2(b); provided, however, that CHIRON need not initiate or continue any such legal action, if, after reasonably diligent effort (including reasonably diligent effort by ROCHE if requested by CHIRON), CHIRON is unable to acquire admissible evidence sufficient to establish a prima facia case of infringement under the law of the applicable country; and provided further, that CHIRON shall not be obligated to institute or maintain more than one such action [**] of this Agreement nor more than three such actions at any time with regard to Impacted Products in Plasma Fractionation. (dc) If CHIRON has not instituted such legal action at the end of such [***], to the extent required under Section 13.2(c13.2(b), and such infringement is not otherwise abated, the Earned Royalty with respect to an Impacted Product in Blood Screening shall be reduced by [**] from the amount otherwise payable under Paragraph 1 of Exhibit A (excluding the effect of any reduction in Earned Royalty Amounts triggered by operation of Paragraph 2 of Exhibit A) and with respect to an Impacted Product in Plasma Fractionation shall be reduced by [**]. If, at the end of each [***] thereafter, CHIRON has not instituted such legal action, to the extent so required, and infringement is not otherwise abated, such Earned Royalties on such Impacted Product shall be reduced by an [***] of the original Earned Royalties, such that if legal action required under Section 13.2(c13.2(b) has not commenced and the infringement is not otherwise abated by, in the case of an Impacted Product in Blood Screening by the end of the [**] following receipt by CHIRON of the Infringement Notice and in the case of an Impacted Product in Plasma Fractionation the end of the [**] following receipt by CHIRON of the Infringement Notice, [***] shall be payable hereunder with respect to the Impacted Product. (ed) The obligations to pay Earned Royalties and Minimum Royalties shall be reinstated on a prospective basis at such time as ROCHE receives written notice of the institution of legal action in accordance with Section 13.2(c13.2(b) or the infringement is otherwise abated, all subject to Section 13.2(f13.2(e). (fe) If legal action required under Section 13.2(c13.2(b) has not been instituted and the infringement is not otherwise abated in the case of an Impacted Product in Blood Screening for more than [**] following receipt by CHIRON of the Infringement Notice and in the case of an Impacted Product in Plasma Fractionation for more than [**] following receipt by CHIRON of the Infringement Notice, and if, as a result of the infringement, sales of the Impacted Product [**] in a Major Country by ROCHE, its Affiliates or an Authorized Distributor have declined by [***] or more during the preceding [***], then upon reinstatement of Earned Royalties and Minimum pursuant to Section 13.2(e13.2(d), the parties shall meet and confer regarding possible adjustments to the Earned Royalties and Minimum Royalties for the Impacted Product in view of such degradation of the market. The parties will discuss possible rate reductions, as well as a plan for reinstating the original economic expectations of the parties. It is expected that any agreement for reduction of Earned Royalties and Minimum Royalties will be phased out over time, so as to return to the Earned Royalties and Minimum Royalties set forth in Exhibit A. If the parties fail to reach agreement on any such adjustment, the matter shall be submitted for resolution by ADR, except that in the event of ADR, each party shall submit to the neutral a proposal with respect to adjustments pursuant to this Section 13.2(f13.2(e). The neutral shall be empowered to choose one proposal or the other, but shall not be empowered to order any such adjustment other than as proposed by one of the parties.