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

Infringement of Licensed Patents by Third Parties. (a) In the case of any infringement within the Fields of any Licensed Patent by any third party 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, or to defend the Licensed Patent, or to defend the Licensed Patent in any declaratory judgment action brought by third parties that alleges the invalidity, unenforceability or non-infringement of the rights associated with the Licensed Patent in the Fields; provided, however, that Licensee will (i) use counsel reasonably acceptable to Licensor, (ii) keep Licensor reasonably informed regarding the progress of any litigation and settlement discussions with any alleged infringer, and (iii) 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 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 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 prior written consent of Licensor, which consent will not be unreasonably withheld, delayed or conditioned. For the purposes of this Section 6.4.2 (and without limiting generality of the 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 way any patent owned by Licensor. Licensor will, at the request and expense of Licensee, provide reasonable cooperation and assistance in any action described in this Section 6.4.2. Except for providing such reasonable assistance, Licensor will have no obligation regarding the legal actions described herein; 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, however, will have the right to participate in any such action through its own counsel and, except as provided in this Section 6.4.2(a), at its own expense.

Infringement of Licensed Patents by Third Parties. (a) In 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 within the Fields of any Licensed Patent in the Field by any third party during party, 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, or to defend the Licensed Patent, Patent or to defend the Licensed Patent in any declaratory judgment action brought by third parties that party(ies) which alleges the invalidity, unenforceability or non-infringement of the rights associated with the Licensed Patent Patent. Before commencing any such enforcement Action, Licensee shall consult in the Fields; provided, however, good faith with Licensor. Licensee shall not compromise or settle any such enforcement action in a way that Licensee will (i) use counsel could reasonably acceptable be expected to Licensoraffect the validity or enforceability of any Licensed Patents, (ii) keep Licensor reasonably informed regarding change the progress scope of the claims of any litigation and settlement discussions with any alleged infringerLicensed Patents, and or (iii) copy Licensor onresult in an admission of liability on the part of Licensor, or provide Licensor in each case, without Licensor’s prior written consent. All costs and expenses associated 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 enforcing the conduct of Licensed Patent in 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 such action, which advice and comments will be considered in good faith borne by Licensee and incorporated or adopted by Licensee to the extent they are reasonable or support the validity, enforceability or scope of 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 prior written consent of Licensor, which consent will not be unreasonably withheld, delayed or conditioned. For the purposes of this Section 6.4.2 (and without limiting generality of the 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 way any patent owned by LicensorLicensee. Licensor will, at the request Licensee’s cost and expense of Licenseeexpense, cooperate and provide reasonable cooperation and assistance in any action described in this Section 6.4.28.4.2.1. Except for providing such cooperation and reasonable assistance, Licensor will have no obligation regarding the legal actions described herein; providedprovided that if required to enable Licensee to initiate or continue such action, however, that Licensor will join such action at Licensee’s request and expense if such joinder isexpense, or allow where required by law for Licensee to proceed in the opinion of Licensee’s counselname. 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, required and thereafter to enable reimburse Licensee to initiate or continue such action. Licensorfor any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ fees, howeverexpert witness fees, court fees, and related charges), and the remainder, if any, will have the right to participate be considered Sublicense Fees and shared between Licensee and Licensor in any such action through its own counsel and, except as provided in this accordance with Section 6.4.2(a), at its own expense5.1.

Infringement of Licensed Patents by Third Parties. (a) In 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 within the Fields of any Licensed Patent in the Field by any third party during the Termparty, 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, or to defend the Licensed Patent, Patent or to defend the Licensed Patent in any declaratory judgment action brought by third parties that party(ies) which alleges the invalidity, unenforceability or non-infringement of the rights associated with the Licensed Patent Patent. Before commencing any such enforcement action, Licensee shall consult in the Fields; provided, however, good faith with Licensor. Licensee shall not compromise or settle any such enforcement action in a way that Licensee will (i) use counsel could reasonably acceptable be expected to Licensoraffect the validity or enforceability of any Licensed Patents, (ii) keep Licensor reasonably informed regarding change the progress scope of the claims of any litigation and settlement discussions with any alleged infringerLicensed Patents, and or (iii) copy Licensor onresult in an admission of liability on the part of Licensor, or provide Licensor in each case, without Licensor’s prior written consent. All costs and expenses associated 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 enforcing the conduct of Licensed Patent in 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 such action, which advice and comments will be considered in good faith borne by Licensee and incorporated or adopted by Licensee to the extent they are reasonable or support the validity, enforceability or scope of 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 prior written consent of Licensor, which consent will not be unreasonably withheld, delayed or conditioned. For the purposes of this Section 6.4.2 (and without limiting generality of the 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 way any patent owned by LicensorLicensee. Licensor will, at the request Licensee’s cost and expense of Licenseeexpense, cooperate and provide reasonable cooperation and assistance in any action described in this Section 6.4.28.4.2.1. Except for providing such cooperation and reasonable assistance, Licensor will have no obligation regarding the legal actions described herein; providedprovided that if required to enable Licensee to initiate or continue such action, however, that Licensor will join such action at Licensee’s request and expense if such joinder isexpense, or allow where required by law for Licensee to proceed in the opinion of Licensee’s counselname. 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, required and thereafter to enable reimburse Licensee to initiate or continue such action. Licensorfor any other unreimbursed expenses incurred in connection with the proceeding (including attorneys’ fees, howeverexpert witness fees, court fees, and related charges), and the remainder, if any, will have the right to participate be considered Sublicense Fees and shared between Licensee and Licensor in any such action through its own counsel and, except as provided in this accordance with Section 6.4.2(a), at its own expense5.1.