Common use of Infringement of Licensed Patents by Third Parties Clause in Contracts

Infringement of Licensed Patents by Third Parties. 8.4.2.1 Subject at all times to the rights granted by Licensor under the Existing License Agreements, in the case of any infringement of any Licensed Patent in the Field by any third party, Licensee will have the first right, but not the obligation, to cause such third party to cease infringement and to otherwise enforce such Licensed Patent or to defend the Licensed Patent in any declaratory judgment action brought by third party(ies) which alleges the invalidity, unenforceability or non-infringement of the rights associated with the Licensed Patent. Before commencing any such enforcement action, Licensee shall consult in good faith with Licensor. Licensee shall not compromise or settle any such enforcement action in a way that (i) could reasonably be expected to affect the validity or enforceability of any Licensed Patents, (ii) change the scope of the claims of any Licensed Patents, or (iii) result in an admission of liability on the part of Licensor, in each case, without Licensor’s prior written consent. All costs and expenses associated with enforcing the Licensed Patent in any such action will be borne by Licensee. Licensor will, at Licensee’s cost and expense, cooperate and provide reasonable assistance in any action described in this Section 8.4.2.1. Except for providing such cooperation and reasonable assistance, Licensor will have no obligation regarding the legal actions described herein; provided that if required to enable Licensee to initiate or continue such action, Licensor will join such action at Licensee’s request and expense, or allow where required by law for Licensee to proceed in Licensee’s name. Any recovery or compensation resulting from such proceeding will first be used to reimburse Licensor for any unreimbursed expenses incurred in connection with providing assistance or joining the proceeding at Licensee’s request, and thereafter to reimburse Licensee for any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ fees, expert witness fees, court fees, and related charges), and the remainder, if any, will be considered Sublicense Fees and shared between Licensee and Licensor in accordance with Section 5.1. 8.4.2.2 If Licensee does not, within a reasonable period after becoming aware of a third party infringement of the Licensed Patents in the Field, but in any event no less than ninety (90) calendar days from becoming aware of the third party infringement, (i) initiate legal proceedings against such threatened or actual infringement, or defend legal proceedings brought by a third party, as provided in Section 8.4.2.1 above, or (ii) take other reasonable steps to cause such infringement to terminate (for example, by initiating licensing discussions), Licensor may deliver written notice to Licensee that it intends to take action to cause such infringement to terminate, and subject to consultation with Licensee, Licensor may take such action as it deems reasonably necessary to enforce its rights in the Licensed Patents in the Field, including, to bring, at its own expense, an infringement action or file any other appropriate action or claim related to such infringement against any third party, provided that Licensor shall not compromise or settle any such enforcement action in a way that (i) could reasonably be expected to affect the validity or enforceability of any Licensed Patents, (ii) change the scope of the claims of any Licensed Patents, or (iii) result in an admission of liability on the part of Licensee, in each case, without Licensee’s prior written consent. All costs and expenses associated with enforcing the Licensed Patent in any such action will be borne by Licensor. Licensee will, at the reasonable request of Licensor, cooperate and provide reasonable assistance in any action taken by Licensor and described in this Section 8.4.2.2 and, if required to enable Licensor to initiate or continue such action, will join such action at Licensor’s reasonable request, all at Licensor’s cost and expense. Any recovery or compensation resulting from such proceeding undertaken by Licensor will first be used to reimburse Licensee for any unreimbursed expenses in connection with providing assistance or joining the proceeding at Licensor’s request, and thereafter to reimburse Licensor for any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ fees, expert witness fees, court fees, and related charges), and the remainder, if any, will be retained solely by Licensor.

Infringement of Licensed Patents by Third Parties. 8.4.2.1 Subject at all times to the rights granted by Licensor under the Existing License Agreements, in (a) In the case of any infringement within the Fields of any Licensed Patent in the Field by any third partyparty during the Term, Licensee will have the first right, but not the obligation, at Licensee’s expense, to cause such third party to cease infringement and to otherwise enforce such Licensed Patent Patent, or to defend the Licensed Patent, or to defend the Licensed Patent in any declaratory judgment action brought by third party(ies) which parties that alleges the invalidity, unenforceability or non-infringement of the rights associated with the Licensed Patent. Before commencing any such enforcement actionPatent in the Fields; provided, however, that Licensee shall consult in good faith with Licensor. Licensee shall not compromise or settle any such enforcement action in a way that will (i) could use counsel reasonably be expected acceptable to affect the validity or enforceability of any Licensed PatentsLicensor, (ii) change keep Licensor reasonably informed regarding the scope of the claims progress of any Licensed Patentslitigation and settlement discussions with any alleged infringer, or and (iii) result copy Licensor on, or provide Licensor with copies of, all external documents and correspondence (i.e., documents and correspondence sent by Licensee to a third party or received by Licensee from a third party). Licensee will have control of the conduct of any such action that it brings, provided that Licensor will have the right to provide ongoing comments on documents prior to submission and advice regarding its position and interests in an admission such action, which advice and comments will be considered in good faith by Licensee and incorporated or adopted by Licensee to the extent they are reasonable or support the validity, enforceability or scope of liability on claims of a Licensed Patent, and (y) Licensee will not enter into any settlement, consent judgment or other voluntary disposition of any such action without the part prior written consent of Licensor, in each casewhich consent will not be unreasonably withheld, delayed or conditioned. For the purposes of this Section 6.4.2 (and without Licensor’s prior written consent. All costs and expenses associated with enforcing limiting generality of the Licensed Patent foregoing) it will be reasonable to Licensor to withhold consent to a settlement if the settlement would admit the invalidity or unenforceability of or limit in any such action will be borne way any patent owned by LicenseeLicensor. Licensor will, at the request and expense of Licensee’s cost and expense, cooperate and provide reasonable cooperation and assistance in any action described in this Section 8.4.2.16.4.2. Except for providing such cooperation and reasonable assistance, Licensor will have no obligation regarding the legal actions described herein; provided provided, however, that Licensor will join such action at Licensee’s request and expense if such joinder is, in the opinion of Licensee’s counsel, required to enable Licensee to initiate or continue such action. Licensor, Licensor however, will join have the right to participate in any such action at Licensee’s request and expensethrough its own counsel and, or allow where required by law for Licensee to proceed except as provided in Licensee’s name. Any recovery or compensation resulting from such proceeding will first be used to reimburse Licensor for any unreimbursed expenses incurred in connection with providing assistance or joining the proceeding at Licensee’s request, and thereafter to reimburse Licensee for any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ fees, expert witness fees, court fees, and related chargesthis Section 6.4.2(a), and the remainder, if any, will be considered Sublicense Fees and shared between Licensee and Licensor in accordance with Section 5.1at its own expense. 8.4.2.2 (b) If Licensee does not, within a reasonable period after becoming aware of a third party such infringement of the Licensed Patents in the Field, but in any event no less than ninety (90) calendar days *** from becoming aware the date of the third party infringementInfringement Notice, (i) initiate legal proceedings against such threatened or actual infringement, or defend legal proceedings brought by a third party, as provided in Section 8.4.2.1 above6.4.2(a), or (ii) take other reasonable steps to cause such infringement to terminate (for example, by initiating licensing discussions), Licensor may deliver written notice to Licensee that it intends to take action to cause such infringement to terminate, and subject to consultation with Licensee, Licensor may thereafter take such action as it deems reasonably necessary to enforce its rights in the Licensed Patents in Patent, including the Fieldright, includingbut not the obligation, to bring, at its own expense, an infringement action or file any other appropriate action or claim related to such infringement against any third party; provided, provided however, that Licensor shall not compromise have no obligation to bring any suit, action or settle other proceeding against any such enforcement action in a way that (i) could reasonably be expected to affect the validity or enforceability alleged infringer of any Licensed PatentsPatent. Licensee shall and hereby does irrevocably and unconditionally waive any objection to Licensor's joinder of Licensee to any proceeding described in Section 6.4.2(a) on any grounds whatsoever, (ii) change the scope of the claims of any Licensed Patents, or (iii) result in an admission of liability including on the part grounds of Licenseepersonal jurisdiction, in each case, without Licensee’s prior written consentvenue or forum non conveniens. All costs and expenses associated with enforcing the Licensed Patent in If Licensor brings or defends any such action will be borne by Licensor. proceeding, Licensee will, at shall reasonably cooperate in all respects with Licensor in the reasonable request of Licensor, cooperate and provide reasonable assistance in any action taken by Licensor and described in this Section 8.4.2.2 and, if required to enable Licensor to initiate or continue such action, will join such action at Licensor’s reasonable request, all at Licensor’s cost and expense. Any recovery or compensation resulting from such proceeding undertaken by Licensor will first be used to reimburse Licensee for any unreimbursed expenses in connection with providing assistance or joining the proceeding at Licensor’s requestconduct thereof, and thereafter to reimburse Licensor assist in all reasonable ways, including having its employees testify when requested and make available for any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ feesdiscovery or trial exhibit relevant records, expert witness feespapers, court feesinformation, and related charges)samples, specimens, and the remainder, if any, will be retained solely by Licensorlike at Licensee's own cost.

Infringement of Licensed Patents by Third Parties. 8.4.2.1 Subject at all times to the rights granted by Licensor under the Existing License Agreements, in the case of any infringement of any Licensed Patent in the Field by any third party, the Licensee will have the first right, but not the obligation, to cause such third party to cease infringement and to otherwise enforce such Licensed Patent or to defend the Licensed Patent in any declaratory judgment action brought by third party(ies) which alleges the invalidity, unenforceability or non-infringement of the rights associated with the Licensed Patent. Before commencing any such enforcement actionAction, Licensee shall consult in good faith with Licensor. Licensee shall not compromise or settle any such enforcement action in a way that (i) could reasonably be expected to affect the validity or enforceability of any Licensed Patents, (ii) change the scope of the claims of any Licensed Patents, or (iii) result in an admission of liability on the part of Licensor, in each case, without Licensor’s prior written consent. All costs and expenses associated with enforcing the Licensed Patent in any such action will be borne by Licensee. Licensor will, at Licensee’s cost and expense, cooperate and provide reasonable assistance in any action described in this Section 8.4.2.1. Except for providing such cooperation and reasonable assistance, Licensor will have no obligation regarding the legal actions described herein; provided that if required to enable Licensee to initiate or continue such action, Licensor will join such action at Licensee’s request and expense, or allow where required by law for Licensee to proceed in Licensee’s name. Any recovery or compensation resulting from such proceeding will first be used to reimburse Licensor for any unreimbursed expenses incurred in connection with providing assistance or joining the proceeding at Licensee’s request, and thereafter to reimburse Licensee for any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ fees, expert witness fees, court fees, and related charges), and the remainder, if any, will be considered Sublicense Fees and shared between Licensee and Licensor in accordance with Section 5.1. 8.4.2.2 If Licensee does not, within a reasonable period after becoming aware of a third party infringement of the Licensed Patents in the Field, but in any event no less than ninety (90) calendar days from becoming aware of the third party infringement, (i) initiate legal proceedings against such threatened or actual infringement, or defend legal proceedings brought by a third party, as provided in Section 8.4.2.1 above, or (ii) take other reasonable steps to cause such infringement to terminate (for example, by initiating licensing discussions), Licensor may deliver written notice to Licensee that it intends to take action to cause such infringement to terminate, and subject to consultation with Licensee, Licensor may take such action as it deems reasonably necessary to enforce its rights in the Licensed Patents in the Field, including, without limitation, to bring, at its own expense, an infringement action or file any other appropriate action or claim related to such infringement against any third party, provided that Licensor shall not compromise or settle any such enforcement action in a way that (i) could reasonably be expected to affect the validity or enforceability of any Licensed Patents, (ii) change the scope of the claims of any Licensed Patents, or (iii) result in an admission of liability on the part of Licensee, in each case, without Licensee’s prior written consent. All costs and expenses associated with enforcing the Licensed Patent in any such action will be borne by Licensor. Licensee will, at the reasonable request of Licensor, cooperate and provide reasonable assistance in any action taken by Licensor and described in this Section 8.4.2.2 and, if required to enable Licensor to initiate or continue such action, will join such action at Licensor’s reasonable request, all at Licensor’s cost and expense. Any recovery or compensation resulting from such proceeding undertaken by Licensor will first be used to reimburse Licensee for any unreimbursed expenses in connection with providing assistance or joining the proceeding at Licensor’s request, and thereafter to reimburse Licensor for any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ fees, expert witness fees, court fees, and related charges), and the remainder, if any, will be retained solely by Licensor.

Infringement of Licensed Patents by Third Parties. 8.4.2.1 Subject at all times to the rights granted by Licensor under the Existing License Agreements, in the case (a) If either party becomes aware of any alleged, threatened or actual infringement of the Licensed Patents, it shall promptly notify the other party in writing and provide a full description thereof. (b) Subject to Section 5.5 below, if any Patent within the Licensed Patent in Patents is infringed or allegedly infringed by a Third Party, then LICENSOR (or its [REDACTED: description of licensees]** but, with respect to such licensees, solely with respect to enforcement against infringement through the Field by any third partymanufacture, Licensee will use or sale of a [REDACTED: description of a product]** ([REDACTED: description of licensees]**) shall have the first right, but not the obligation, to cause initiate, prosecute and control any legal action against such third Third Party infringement at LICENSOR’s sole expense. LICENSEE shall reasonably cooperate with LICENSOR at LICENSOR’s sole expense with respect thereto, including joining or being named in such action as a party plaintiff only if such joinder or naming is required by applicable law or by a governmental authority for LICENSOR or its sublicensees to pursue such action and to have proper standing to bring such lawsuit. In the event LICENSOR (or any Existing Out-Licensee or [REDACTED: description of licensee]**) fails to institute proceedings against any Third Party infringement within [REDACTED: term]** days after notice given by either party to cease the other of said Third Party infringement (or such longer period of time for so long as any Existing Out-Licensee has such enforcement rights under the Existing Out-License Agreements), LICENSEE (but not a sublicensee of LICENSEE) shall be entitled to enforce, at its discretion and to otherwise enforce at its sole expense, the Licensed Patents against such Third Party infringement by filing a lawsuit against the infringement of such Licensed Patent or Patents against such Third Party. LICENSOR will provide such reasonable assistance and cooperation to defend the Licensed Patent LICENSEE as may be necessary in any declaratory judgment action brought by third party(ies) which alleges the invalidity, unenforceability or non-infringement of the rights associated connection with the Licensed Patent. Before commencing any such enforcement action, Licensee shall consult in good faith with Licensorat LICENSEE’s sole expense, including joining such action as a party plaintiff if required by applicable law to pursue such action. Licensee shall not compromise Subject to Section 5.5 and the rights of the Existing Out-Licensees under the Existing Out-License Agreements or settle the rights of the [REDACTED: description of licensees]**, any awards or amounts received as a result of either LICENSOR or LICENSEE prosecuting any such enforcement action in a way that (i) could reasonably be expected to affect the validity or enforceability of any Licensed Patents, (ii) change the scope of the claims of any Licensed Patents, or (iii) result in an admission of liability on the part of Licensor, in each case, without Licensor’s prior written consent. All costs and expenses associated with enforcing the Licensed Patent in any such action will be borne by Licensee. Licensor will, at Licensee’s cost and expense, cooperate and provide reasonable assistance in any action described in this Section 8.4.2.1. Except for providing such cooperation and reasonable assistance, Licensor will have no obligation regarding the legal actions described herein; provided that if required to enable Licensee to initiate or continue such action, Licensor will join such action at Licensee’s request and expense, or allow where required by law for Licensee to proceed in Licensee’s name. Any recovery or compensation resulting from such proceeding will first be used to reimburse Licensor for any unreimbursed expenses incurred in connection with providing assistance or joining the proceeding at Licensee’s request, and thereafter to reimburse Licensee for any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ fees, expert witness fees, court fees, and related charges), and the remainder, if any, will be considered Sublicense Fees and shared between Licensee and Licensor in accordance with Section 5.1. 8.4.2.2 If Licensee does not, within a reasonable period after becoming aware of a third party against Third Party infringement of the Licensed Patents shall be allocated first to reimburse any costs and expenses incurred by the parties and the remainder shall be allocated [REDACTED: percentage]** to the party undertaking action against the Third Party infringer and [REDACTED: percentage]** to the other party (provided that, in the Fieldevent that LICENSEE is ** Confidential Treatment Requested required to join or be named in such action in order for LICENSOR to pursue such action, but in then, to the extent any event no less than ninety (90) calendar days from becoming aware of the third party infringement, (i) initiate legal proceedings against such threatened or actual infringement, or defend legal proceedings brought action and corresponding remainder concerns infringement by a third party’s manufacture, as provided in Section 8.4.2.1 aboveuse or sale of a Licensed Product, or (ii) take other reasonable steps to cause such infringement to terminate (for exampleremainder shall be allocated [REDACTED: percentage]**, by initiating licensing discussions), Licensor may deliver written notice to Licensee that it intends to take action to cause such infringement to terminate, and subject to consultation with Licensee, Licensor may take such action as it deems reasonably necessary to enforce its the rights in the Licensed Patents in the Field, including, to bring, at its own expense, an infringement action or file any other appropriate action or claim related to such infringement against any third party, provided that Licensor shall not compromise or settle any such enforcement action in a way that (i) could reasonably be expected to affect the validity or enforceability of any Licensed Patents, (ii) change the scope of the claims Existing Out-Licensees under the Existing Out-License Agreements or the rights of any Licensed Patents, or (iii) result in an admission the [REDACTED: description of liability on the part of Licensee, in each case, without Licensee’s prior written consent. All costs and expenses associated with enforcing the Licensed Patent in any such action will be borne by Licensor. Licensee will, at the reasonable request of Licensor, cooperate and provide reasonable assistance in any action taken by Licensor and described in this Section 8.4.2.2 and, if required to enable Licensor to initiate or continue such action, will join such action at Licensor’s reasonable request, all at Licensor’s cost and expense. Any recovery or compensation resulting from such proceeding undertaken by Licensor will first be used to reimburse Licensee for any unreimbursed expenses in connection with providing assistance or joining the proceeding at Licensor’s request, and thereafter to reimburse Licensor for any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ fees, expert witness fees, court fees, and related chargeslicensees]**), and the remainder, if any, will be retained solely by Licensor.

Infringement of Licensed Patents by Third Parties. 8.4.2.1 Subject at all times to the rights granted by Licensor under the Existing License Agreements, in (a) In the case of any infringement within the Fields of any Licensed Patent in the Field by any third partyparty during the Term, Licensee will have the first right, but not the obligation, at Licensee’s expense, to cause such third party to cease infringement and to otherwise enforce such Licensed Patent Patent, or to defend the Licensed Patent, or to defend the Licensed Patent in any declaratory judgment action brought by third party(ies) which parties that alleges the invalidity, unenforceability or non-infringement of the rights associated with the Licensed Patent. Before commencing any such enforcement actionPatent in the Fields; provided, however, that Licensee shall consult in good faith with Licensor. Licensee shall not compromise or settle any such enforcement action in a way that will (i) could use counsel reasonably be expected acceptable to affect the validity or enforceability of any Licensed PatentsLicensor, (ii) change keep Licensor reasonably informed regarding the scope of the claims progress of any Licensed Patentslitigation and settlement discussions with any alleged infringer, or and (iii) result copy Licensor on, or provide Licensor with copies of, all external documents and correspondence (i.e., documents and correspondence sent by Licensee to a third party or received by Licensee from a third party). Licensee will have control of the conduct of any such action that it brings, provided that Licensor will have the right to provide ongoing comments on documents prior to submission and advice regarding its position and interests in an admission such action, which advice and comments will be considered in good faith by Licensee and incorporated or adopted by Licensee to the extent they are reasonable or support the validity, enforceability or scope of liability on claims of a Licensed Patent, and (y) Licensee will not enter into any settlement, consent judgment or other voluntary disposition of any such action without the part prior written consent of Licensor, in each casewhich consent will not be unreasonably withheld, delayed or conditioned. For the purposes of this Section 6.4.2 (and without Licensor’s prior written consent. All costs and expenses associated with enforcing limiting generality of the Licensed Patent foregoing) it will be reasonable to Licensor to withhold consent to a settlement if the settlement would admit the invalidity or unenforceability of or limit in any such action will be borne way any patent owned by LicenseeLicensor. Licensor will, at the request and expense of Licensee’s cost and expense, cooperate and provide reasonable cooperation and assistance in any action described in this Section 8.4.2.16.4.2. Except for providing such cooperation and reasonable assistance, Licensor will have no obligation regarding the legal actions described herein; provided provided, however, that Licensor will join such action at Licensee’s request and expense if such joinder is, in the opinion of Licensee’s counsel, required to enable Licensee to initiate or continue such action. Licensor, Licensor however, will join have the right to participate in any such action at Licensee’s request and expensethrough its own counsel and, or allow where required by law for Licensee to proceed except as provided in Licensee’s name. Any recovery or compensation resulting from such proceeding will first be used to reimburse Licensor for any unreimbursed expenses incurred in connection with providing assistance or joining the proceeding at Licensee’s request, and thereafter to reimburse Licensee for any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ fees, expert witness fees, court fees, and related chargesthis Section 6.4.2(a), and the remainder, if any, will be considered Sublicense Fees and shared between Licensee and Licensor in accordance with Section 5.1at its own expense. 8.4.2.2 (b) If Licensee does not, within a reasonable period after becoming aware of a third party such infringement of the Licensed Patents in the Field, but in any event no less than ninety (90) calendar days *** from becoming aware the date of the third party infringementInfringement Notice, (i) initiate legal proceedings against such threatened or actual infringement, or defend legal proceedings brought by a third party, as provided in Section 8.4.2.1 above6.4.2(a), or (ii) take other reasonable steps to cause such infringement to terminate (for example, by initiating licensing discussions), Licensor may deliver written notice to Licensee that it intends to take action to cause such infringement to terminate, and subject to consultation with Licensee, Licensor may thereafter take such action as it deems reasonably necessary to enforce its rights in the Licensed Patents in Patent, including the Fieldright, includingbut not the obligation, to bring, at its own expense, an infringement action or file any other appropriate action or claim related to such infringement against any third party; provided, provided however, that Licensor shall not compromise have no obligation to bring any suit, action or settle other proceeding against any such enforcement action in a way that (i) could reasonably be expected to affect the validity or enforceability alleged infringer of any Licensed PatentsPatent. Licensee shall and hereby does irrevocably and unconditionally waive any objection to Licensor’s joinder of Licensee to any proceeding described in Section 6.4.2(a) on any grounds whatsoever, (ii) change the scope of the claims of any Licensed Patents, or (iii) result in an admission of liability including on the part grounds of Licenseepersonal jurisdiction, in each case, without Licensee’s prior written consentvenue or forum non conveniens. All costs and expenses associated with enforcing the Licensed Patent in If Licensor brings or defends any such action will be borne by Licensor. proceeding, Licensee will, at shall reasonably cooperate in all respects with Licensor in the reasonable request of Licensor, cooperate and provide reasonable assistance in any action taken by Licensor and described in this Section 8.4.2.2 and, if required to enable Licensor to initiate or continue such action, will join such action at Licensor’s reasonable request, all at Licensor’s cost and expense. Any recovery or compensation resulting from such proceeding undertaken by Licensor will first be used to reimburse Licensee for any unreimbursed expenses in connection with providing assistance or joining the proceeding at Licensor’s requestconduct thereof, and thereafter to reimburse Licensor assist in all reasonable ways, including having its employees testify when requested and make available for any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ feesdiscovery or trial exhibit relevant records, expert witness feespapers, court feesinformation, and related charges)samples, specimens, and the remainder, if any, will be retained solely by Licensorlike at Licensee’s own cost.