Infringement. 12.1 Each party will promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld. 12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action. 12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest. 12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties. 12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld. 12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***]. 12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights. 12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties. 12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld. 12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***]. 12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld. 12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***]. 12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***]. 12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable. 12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: License Agreement (Kinetic Concepts Inc /Tx/), License Agreement (Kinetic Concepts Inc /Tx/)
Infringement. 12.1 Each party will (a) TMC and Biogen shall each promptly inform the other in writing of any alleged infringement of the Biogen Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, which such party has notice and provide such the other party with any available information about evidence of infringement.
(b) In the infringement event TMC, alone or declaratory actionwith an Affiliate or Sublicensee, as the case might be. Following such notice, KCI may place [***] first accruing wishes to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or take action in a manner that imposes suit to enforce any restrictions or obligations on Wake Forest without Wake Forest's written consentBiogen Patent Rights against infringement, which consent will not be unreasonably withheld.
12.2.1 During the term of this AgreementTMC may take action and, KCI will prosecute [***] at its option and expense, join Biogen as a plaintiff. In determining whether to bring an action to enforce any infringements of the Biogen Patent Rights, andTMC shall act in a commercially reasonable manner, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] giving due consideration to Wake Forestthe threat represented by the infringement and the potential risk to the Biogen Patent Rights involved. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, If within 6 six (6) months after having been notified by Biogen of any alleged infringement or providing notice to Biogen of the Patent Rightsan alleged infringement, KCI will have TMC has been unsuccessful in persuading the alleged infringer to desist and will has not have brought and will brought, and/or is not be diligently prosecuting an infringement action, or if KCI TMC notifies Wake Forest Biogen at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] Biogen may take action and, at its option, join TMC as a plaintiff in any suit.
(bc) [***]. No settlement, consent judgment, The party which institutes any suit to protect or other voluntary fiscal disposition enforce a Biogen Patent Right shall have sole control of that suit and shall bear the reasonable expenses of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to not including legal fees incurred by the extent such suit other party, in providing any assistance and cooperation as is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights requested pursuant to this AgreementSection. As between Wake Forest The party initiating or carrying on such legal proceedings shall keep the other party informed of the progress of such proceedings and KCI, [***]such other party shall be entitled to counsel in such proceedings but at its own expense.
12.4.2 Each party will promptly inform (d) Any award paid by third parties (whether by way of settlement or otherwise) as the other in writing result of any proceedings initiated by TMC under this Section 7 shall first be applied to reimbursement of the commencement unreimbursed legal fees and expenses incurred by either party and then the remainder shall be divided between the parties as follows:
(i) If the amount is based on lost profits, (x) TMC shall receive an amount equal to the damages the court determines it has suffered as a result of the infringement, less the amount of any royalties (and/or payments on Sublicense Royalty Income) that would have been due to Biogen on sales of Product lost by TMC and/or its Affiliates, Distributors and Sublicensees as a result of the infringement had they made such infringement action sales; and (y) Biogen shall receive an amount equal to the royalties (and/or payments on Sublicense Royalty Income) that it would have received if such sales had been made by a third party. Following such noticeTMC and/or its Affiliates, KCI may place up Distributors and Sublicensees; and
(ii) As to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations awards other than those based on Wake Forest without Wake Forest's written consentlost profits, which consent will not be unreasonably withheld3/4 to TMC and 1/4 to Biogen.
12.4.3 [***] (e) Any award paid by third parties (whether by way of settlement or otherwise) as the result of any such infringement action proceedings initiated by any third party [***]. All remaining escrowed litigation royalties will Biogen under this Section 7 shall first be promptly returned applied to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise reimbursement of the rights granted KCI herein infringe unreimbursed legal fees and expenses incurred by either party and then shall be divided between the rights of a third partyparties, Wake Forest may elect 1/4 to pursue a license from such third party that would permit KCI TMC and 3/4 to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableBiogen.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: License Agreement (Medicines Co/ Ma), License Agreement (Medicines Co/ Ma)
Infringement. 12.1 Each party will promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition If either party shall learn of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim or assertion that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement Product in the Territory infringes or otherwise violates the intellectual property rights of any such infringement action Third Party or that any Third Party violates the intellectual property rights owned or Controlled by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action (i) Depomed in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, Product and the terms of such a license provide for royalties Depomed Trademarks in the Territory or other payments by KCI to such third party(ii) King in the King Trademarks, then the parties will negotiate party becoming so informed shall promptly, but in good faithall events within fifteen (15) business days thereof, a royalty reduction notify the other party to this Agreement of the claim or assertion.
(b) If warranted in the earned royalty rate set forth opinion of Depomed, after consultation with the JCC, Depomed shall take such legal action as is advisable in Section 4.2 Depomed’s opinion to restrain infringement of such Depomed patent rights or the Depomed Trademarks. King shall cooperate fully with, and the minimum royaltyas reasonably requested by, Depomed in Depomed’s attempt to restrain such infringement, and Depomed shall reimburse King for its out-of-pocket expenses incurred in providing such cooperation. King may be represented by counsel of its own selection at its own expense in any suit or proceeding brought to restrain such infringement, but not Depomed shall have the floor royalty, set forth in Section 4.3 such that right to control the total royalties payable are commercially reasonablesuit or proceeding.
12.4.6 (c) If warranted in the exercise opinion of King, King shall take such legal action as is advisable in King’s opinion to restrain such infringement of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealedKing Trademarks. Depomed shall cooperate fully with, and neither Wake Forest nor KCI are able as requested by, King in King’s attempt to secure a license from restrain such third partyinfringement, all remaining escrowed litigation royalties will and King shall reimburse Depomed for its out-of-pocket expenses incurred in providing such cooperation. Depomed may be given represented by counsel of its own selection at its own expense in any suit or proceeding brought to KCIrestrain such infringement, provided that KCI provides written notice but King shall have the right to Wake Forest of KCI's election to terminate control the License under this Agreementsuit or proceeding.
Appears in 2 contracts
Samples: Promotion Agreement (Depomed Inc), Promotion Agreement (King Pharmaceuticals Inc)
Infringement. 12.1 Each party will promptly inform If either Party discovers the infringement of any of Licensor’s Patent Rights licensed under this Agreement, that Party shall give written notice of such claim to the other in writing of any alleged infringement of Party. Licensee shall then use Commercially Reasonable Efforts to terminate such infringement. In the Patent Rights by a event Licensee fails to xxxxx the infringing activity within [†] after such written notice or to bring legal action against the third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide Licensor may bring suit for patent infringement. Licensor agrees to join any such other party with any available information about the infringement or declaratory legal action, as necessary to pursue the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements enforcement of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, judgment or other voluntary fiscal final disposition of the suit may be entered into without the consent of KCILicensor, which consent will shall not be unreasonably be or untimely withheld.
12.3.1 In 12.2 Any such legal action shall be at the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any expense of the Patent Rights will be brought against KCI or Wake ForestParty by whom suit is filed, [***].
12.3.2 As a first option for KCI, [***]hereinafter referred to as the “Litigating Party”. Upon settlement or final termination After reimbursement of such action, provided reasonable attorneys’ fees and legal expenses incurred by Licensee and Licensor in such action does not result or proceeding, Licensee shall be entitled to any damages or settlements attributable to lost sales (as shall be allocated † DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION by the court or reasonable allocation by mutual agreement of Licensee and Licensor) and shall be subject to Section 4.1 hereof. Any other damages or costs recovered by the Litigating Party in connection with a final non-appealable legal action filed by it hereunder, shall be divided as follows: (i) first to reimburse reasonable attorneys’ fees and legal expenses incurred by Licensee and Licensor in such action or non-appealed decision that the subject patent(sproceeding, as provided above, and then (ii) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***†] percent ([†]%) of the remainder shall go to the Litigating Party and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition †] percent ([†]%) of the suit may be entered into without remainder shall go to the consent of KCI, which consent will not unreasonably be withheldother Party.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest 12.3 Licensee and KCI, [***].
12.4.2 Each party will promptly inform the Licensor shall cooperate with each other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCIproceedings instituted hereunder, provided that KCI provides written notice to Wake Forest such cooperation shall be at the expense of KCI's election to terminate the License under this AgreementLitigating Party, and such litigation shall be controlled by the Litigating Party.
Appears in 2 contracts
Samples: Exclusive License Agreement (NanoString Technologies Inc), Exclusive License Agreement (NanoString Technologies Inc)
Infringement. 12.1 Each party will promptly inform (a) LICENSOR agrees to enforce its patents within the other PATENT RIGHTS from infringement and xxx infringers when in writing its sole judgement such action may be reasonably necessary, proper and justified.
(b) Notwithstanding the provisions of any alleged Article 9(a) above, provided LICENSEE shall have supplied LICENSOR with evidence comprising a prima facie case of infringement of the Patent Rights PATENT RIGHTS by a third partyparty hereto SELLING significant quantities of products in competition with LICENSEE’s, an AFFILIATE’s, or SUBLICENSEE’s SALE of LICENSED PRODUCTS hereunder, LICENSEE shall be entitled to notify LICENSOR in writing requesting LICENSOR to take steps to enforce the assertion of a declaratory judgment action alleging invalidity or noninfringement, PATENT RIGHTS and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements LICENSOR shall within three (3) months of the Patent Rights, and, in furtherance receipt of such written request either:
(i) cause said infringement to terminate (including termination for whatever cause); or
(ii) initiate legal proceedings against the infringer; or
(iii) grant LICENSEE the right, KCM may join Wake Forest as a party in any such suitat LICENSEE’s sole expense, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against the infringer for infringement of the PATENT RIGHTS.
(c) In no event shall LICENSEE be entitled to invoke Article 9(b) above with respect to more than one alleged infringer in any one country listed with the PATENT RIGHTS at any given time even though there be more than one such infringer in such country and the provisions of Article 9(b) hereof shall not come into effect or continue in effect as to such country while LICENSOR is carrying on any such legal proceeding therein.
(d) In the event either party hereto shall initiate or carry on legal proceedings to enforce the PATENT RIGHTS against an alleged infringer, then (a) [***] andas provided herein, (b) [***]. No settlement, consent judgment, the other party hereto shall fully co-operate with the party initiating or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheldcarrying on such proceedings.
12.3.1 (e) In the event that a Declaratory Judgment Action alleging invalidity LICENSOR shall institute suit or nonother legal proceedings to enforce the PATENT RIGHTS, it shall have sole control of such suit.
(f) In the event LICENSEE shall institute suite or other legal proceedings under Article 9(b) above to enforce the PATENT RIGHTS, LICENSOR shall be entitled to be represented by counsel of its choosing, at its sole expense, and LICENSEE shall be entitled to retain for it as damages, an amount corresponding to its actual out-infringement of any of-pocket legal expenses paid to third parties for conducting such suit or other legal proceedings and shall pay to LICENSOR TWENTY-FIVE PERCENT (25%) of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination balance of such action, provided recovery. LICENSEE shall not discontinue or settle any such action does not result proceedings brought by it without obtaining the concurrence of LICENSOR and giving LICENSOR a timely opportunity to continue such proceedings in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will notits own name, under any circumstancesits sole control, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a licenseat its sole expense. In the event Wake Forest authorizes KCI LICENSOR does not concur in such settlement, it must continue such proceeding in its own name, under its sole control and expense within three (3) months of being given notice by LICENSEE of its desire to secure such a license, and the terms of such a license provide for royalties settle or other payments by KCI LICENSEE shall be entitled to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablesettle without LICENSOR’s concurrence.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: Sublicense Agreement, Sublicense Agreement (Sangamo Biosciences Inc)
Infringement. 12.1 Each party will promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During If during the term of this Agreement, KCI will prosecute [***] either party becomes aware of a third party infringement or threatened infringement of any infringements of Licensed Patents, the Patent Rightsfollowing provisions shall apply:
(a) Introgen shall have the right, andbut not the obligation, to bring suit (itself or through a designee) to enforce the Licensed Patents, and/or to defend any declaratory judgment action with respect thereto, in furtherance each case with respect to the manufacture, sale or use of a product within the Field; provided, however, that Introgen shall keep Corixa reasonably informed as to the defense and/or settlement of such right, KCM may join Wake Forest as a party action. Corixa shall have the right to participate in any such action with counsel of its own choice at its own expense. Without limiting the provisions of Section 7.3 below, Corixa agrees to cooperate with Introgen with respect to actions brought by Introgen under this Section 7.2(a) at Introgen's request and expense. If Introgen decides to undertake such suit, then [***] received by Introgen in such Action with respect to Wake Forest. As between wake Forest and KCI, KCI will infringement that occurred prior to the judgment awarding such amounts shall be liable for [***] in ].
(b) If Introgen elects not to so initiate an action to enforce the Licensed Patents against a commercially significant infringement by a Third Party within the Field, within one hundred eighty (180) days of a request by Corixa to do so, Corixa may initiate such action and KCI will be responsibleat its expense; provided, except however, that Corixa shall keep Introgen reasonably informed as provided in Section 12.2.3, for to the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon defense and/or settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties as requested from time to Wake Forest.
12.2.3 As an alternative optiontime by Introgen, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event provided that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI there is not diligently prosecuting or defending then ongoing a litigation in any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, country with respect to the extent such suit is based upon a claim that Licensed Technology. Introgen shall have the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant right to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other participate in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action with counsel of its own choice at its own expense. Introgen agrees to cooperate with Corixa with respect to actions brought by Corixa under this Section 7.2(b) at Corixa's request and expense. If Corixa undertakes such suit, then, after deducting the costs incurred by Corixa in a manner that imposes connection with such Action, Introgen shall be entitled to receive [*] of any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldamounts received by Corixa in such action.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned (c) Upon Introgen's reasonable request, Corixa agrees to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If use reasonable efforts, including, but not limited to, with respect to the exercise of rights under the rights granted KCI herein infringe the rights of a third partyColumbia Agreement (as defined in Section 10.1) to cause Columbia (as defined in Section 10.1) to cooperate in any suit, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties action or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License proceeding under this AgreementSection 7.2, at Introgen's expense.
Appears in 2 contracts
Samples: Exclusive License Agreement (Introgen Therapeutics Inc), Exclusive License Agreement (Introgen Therapeutics Inc)
Infringement. 12.1 Each (a) The Vendor agrees that it shall defend, indemnify and hold harmless, at its own expense, all suits and claims against the Owner for infringement or violation of any patent, trademark, copyright, trade secret or other intellectual property rights of any third party will promptly inform enforceable in the United States or in any other territory where Vendor has approved the deployment or use of Products under this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to cover, the Products or any component thereof. The Vendor agrees that it shall pay all sums, including without limitation, reasonable attorneys' fees and other costs incurred at Vendor's written request or authorization, which, in defense of, by final judgment or decree, or in settlement of any suit or claim to which the Vendor agrees, may be assessed against, or incurred by, the Owner on account of such infringement or violation, provided that the Owner shall cooperate in all reasonable respects with the Vendor and its attorneys in the investigation, trial and defense of such lawsuit or action and any appeal arising therefrom; provided, however, that the Owner may, at its own cost, participate in the investigation, trial and defense of 37 52 such lawsuit or action and any appeal arising therefrom. The parties shall cooperate with each other in writing any notifications to insurers. If a claim for Losses (a "Claim") is to be made by a party entitled to indemnification hereunder against the Vendor, the party claiming such indemnification shall give written notice (a "Claim Notice") to the Vendor as soon as practicable after the party entitled to indemnification becomes aware of any alleged infringement fact, condition or event which may give rise to Losses for which indemnification may be sought under this Agreement, provided, however, no delay on the part of the Patent Rights by a third partyOwner in notifying the Vendor shall relieve the Vendor from any obligation hereunder unless (and then solely to the extent) the Vendor is thereby materially prejudiced. If any lawsuit or enforcement action is filed against any party entitled to the benefit of indemnity hereunder, written notice thereof shall be given to the Vendor as promptly as practicable (and in any event within twenty (20) calendar days after the service of the citation or summons). The Vendor shall be entitled, if it so elects to: (i) defend such lawsuit or action; (ii) employ and engage attorneys of its own choice to handle and defend the assertion of a declaratory judgment action alleging invalidity same, at the Vendor's cost, risk and expense; and (iii) compromise or noninfringement, and provide settle such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentClaim, which compromise or settlement shall be made only with the written consent will of the Owner (which may not be unreasonably withheld.
12.2.1 During ), unless such compromise or settlement includes an unconditional release of any claims against the term of this Agreement, KCI will prosecute [***] any infringements Owner in which event such written consent of the Patent Rights, and, in furtherance Owner shall not be required. If the Vendor fails to assume the defense of such rightClaim within twenty (20) calendar days after receipt of the Claim Notice, KCM may join Wake Forest as a party in the Owner against which such Claim has been asserted will (upon delivering notice to such effect to the Vendor) have the right to undertake, at the Vendor's cost and expense, the defense, compromise or settlement of such Claim on behalf of and for the account and risk of the Vendor. In the event the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such suitdefense, [***] to Wake Forestcompromise or settlement. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, The Vendor shall be liable for any amounts settlement of any action effected pursuant to and in excess accordance with this Agreement and for any final judgment (subject to any right of appeal), and the escrowed litigation royaltiesVendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] furnished by third parties and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of where any such infringement action combination was not installed, recommended or approved by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldthe Vendor.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: Memorandum of Agreement (Leap Wireless International Inc), Memorandum of Agreement (Leap Wireless International Inc)
Infringement. 12.1 Each party will promptly inform the other in writing of DBTS shall defend or settle, at its own expense, any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, Licensee to the extent such suit is based upon a claim that a Product infringes any valid United States patent issued as of the infringement arises from the manufactureEffective Date or worldwide copyright or trade secret of an unaffiliated third party and will pay such damages or costs as are finally awarded against Licensee attributable to such claim, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will provided that Licensee (i) notifies DBTS promptly inform the other in writing of any such action, gives DBTS sole control of the commencement defense and/or settlement of such action, and (iii) gives DBTS all reasonable information and assistance (at DBTS’s expense, excluding time spent by Licensee’s employees or consultants). Should the Product become, or in the opinion of DBTS be likely to become, the subject of such an infringement claim, DBTS may, at its option: (i) procure for Licensee the right to use the Product free of any liability; replace or modify, in whole or in part, the Product to make it non-infringing; or (iii) discontinue the Product, or part thereof, in which case DBTS shall reimburse Licensee for any fees paid for a period in which the Product is not available to Licensee. DBTS assumes no liability hereunder for: (i) any method or process in which the Product may be used; (ii) any compliance with Licensee's specifications; (iii) use of other than a current unaltered release of the Product; (iv) modification of the Product by anyone other than DBTS; or (v) the combination, operation or use of the Product with non-DBTS programs or data if such infringement action would have been avoided by a third party. Following such noticethe combination, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle operation or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise use of the rights granted KCI herein infringe the rights of a third partyProduct with other programs or data. THIS SECTION 7 SETS FORTH DBTS’S ENTIRE LIABILITY AND OBLIGATION AND LICENSEE’S SOLE REMEDY FOR ANY CLAIM OF INFRINGEMENT OF PATENT, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCICOPYRIGHT, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseTRADEMARK, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableTRADE SECRET OR OTHER INTELLECTUAL PROPERTY RIGHTS BY THE PRODUCT OR ITS REPRODUCTION OR USE.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: Master Services Agreement, Master Services Agreement
Infringement. 12.1 9.1 Each party will promptly inform Party agrees to provide prompt written notice to the other in writing Party of any alleged infringement of the Patent Rights by a third party, or the assertion and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory actionevidence thereof, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldit becomes aware.
12.2.1 9.2 During the term Term of this Agreement, KCI will Licensee, to the extent permitted by law, shall have the right, but shall not be obligated, to prosecute [***] any at its own expense all infringements of the Patent Rights, Rights and, in furtherance of such right, KCM Northwestern hereby agrees that Licensee may join Wake Forest include Northwestern as a party plaintiff in any such suit, [***] without expense to Wake ForestNorthwestern, provided, however, that such right to bring such infringement action shall remain in effect only for so long as the license granted herein remains exclusive. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of Prior to commencing any such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess Licensee shall consult with Northwestern and shall consider the view of Northwestern regarding the advisability of the escrowed litigation royalties.
12.2.4 Ifproposed action and its effect on the public interest. No settlement, within 6 months after having been notified consent judgment or other voluntary final disposition of any alleged the suit may be entered into without the prior written consent of Northwestern, which shall not be unreasonably withheld. If it is determined that Licensee does not have the right to prosecute an infringement of the Patent Rights, KCI will and Licensee notifies Northwestern of its desire to have such infringement action pursued, Northwestern agrees to prosecute such infringement of the Patent Rights on Licensee’s behalf and at Licensee’s sole expense, and Northwestern shall consult with Licensee on any such infringement action. Licensee shall indemnify Northwestern against any order for costs that may be made against Northwestern in any such proceedings. Any recovery resulting from an action brought by Licensee shall be distributed as follows: (a) each Party shall be reimbursed for any expenses it incurred in the action; (b) as to ordinary damages for past infringement, Licensee shall receive an amount equal to either (i) its lost profits, (ii) a reasonable royalty on the infringing sales, or (iii) whatever alternative measure of such damages the court shall have applied, and such amount shall be treated as Net Sales for the purpose of calculating running royalties under Section 5.3(b).
9.3 If [***] after having become aware of any alleged infringement Licensee has been unsuccessful in persuading the alleged infringer to desist and will either has not have brought and will or is not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest Licensee shall notify Northwestern at any time prior thereto of its intention not to bring suit against any such alleged infringer, then Northwestern shall have the right, at its sole discretion, to prosecute such infringement of the Patent Rights under its sole control and at its sole expense. In the event Northwestern elects to prosecute an infringement of any Patent Rights as set forth in this Section 9.3, then (a) [***] andNorthwestern shall keep any recovery or damages for past infringement derived therefrom, and (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of Licensee shall not offer to sublicense the suit may be entered into infringed Patent Rights to the alleged infringer without the consent of KCI, which consent will not unreasonably be withheldNorthwestern’s written consent.
12.3.1 9.4 In the event that a Declaratory Judgment Action declaratory judgment action alleging invalidity invalidity, unenforceability, or non-infringement noninfringement of any of the Patent Rights will shall be brought against KCI Northwestern or Wake ForestLicensee, [***].
12.3.2 As a first option for KCINorthwestern, [***]. Upon settlement or final termination of such actionat its option, provided such action does not result in a final non-appealable or non-appealed decision that shall have the subject patent(s) are invalid or unenforceableright, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, within [***] if valid patents covering after it receives notice of the commencement of such products or processes still remain within action, to intervene and take over the sole defense of the action (but only to the extent of the Patent Rights.
12.3.3 As an alternative option) at its own expense. If Northwestern does not exercise this right, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess Licensee may take over the sole defense of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]action at Licensee’s sole expense. No settlement, consent judgment or other voluntary fiscal final disposition of the suit action may be entered into without the prior written consent of KCINorthwestern, which consent will shall not be unreasonably be withheld.
12.4.1 KCI will have a duty 9.5 In any infringement suit that either Party may institute to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within enforce the Patent Rights pursuant to this Agreement. As between Wake Forest Agreement and KCIin any declaratory judgment action that one Party is defending, [***].
12.4.2 Each party will promptly inform the other in writing Party hereto shall, at the request and expense of the commencement of any Party initiating or defending such infringement action suit, cooperate in all reasonable respects (including joining as a party if required by a third party. Following such noticelaw) and, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentthe extent possible, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third partyhave its employees testify when requested and make available relevant records, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCIpapers, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseinformation, samples, specimens, and the like.
9.6 For so long as the license granted herein remains exclusive during the Term of this Agreement, Licensee shall have the sole right to sublicense any alleged infringer for future use of the Patent Rights in accordance with the terms and conditions of such a license provide for royalties or other payments by KCI this Agreement relating to such third partysublicenses, then the parties will negotiate in good faithprovided, a royalty reduction in the earned royalty rate however, as set forth in Section 4.2 9.3 above for any alleged infringer against whom Northwestern is pursuing an infringement action, Licensee shall not offer to sublicense the infringed Patent Rights to such alleged infringer without Northwestern’s written consent. Any upfront fees as part of such a sublicense shall be shared equally between Licensee and the minimum royalty, but Northwestern (such upfront payments will not the floor royalty, set forth also be subject to payments to Northwestern under Section 5.4 in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found addition to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able this equal sharing); other revenues to secure a license Licensee resulting from such third party, all remaining escrowed litigation royalties will a sublicense shall be given treated pursuant to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this AgreementSections 5.3 and 5.4.
Appears in 2 contracts
Samples: License Agreement (Oncorus, Inc.), License Agreement (Oncorus, Inc.)
Infringement. 12.1 Each party will promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [Mayne Pharma shall have the first right to enforce any patent within PATENT RIGHTS against any infringement or alleged infringement thereof within LICENSED FIELD in the TERRITORY. Subject to Paragraph 4.5A, ***] and, * will pay all reasonable costs and expenses (bincluding reasonable attorney fees for litigation and opinion) [incurred by ***]* in connection with such enforcement (Enforcement Costs). No Before Mayne Pharma commences an action with respect to any infringement of such patents, HPPI acknowledges and agrees that Mayne Pharma shall give careful consideration to the views of JHU and to potential effects on the public interest in making its decision whether or not to xxx. HPPI acknowledges and agrees that no settlement, consent judgment, judgment or other voluntary fiscal final disposition of the suit may be entered into without the prior written consent of KCIJHU, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will shall not be unreasonably withheld.
12.4.3 [***] any such . This right to xxx for infringement action by any third party [***]shall not be used in an arbitrary or capricious manner. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI HPPI shall reasonably cooperate in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [at ***]* expense, including in accordance with Paragraph 4.6. Should HPPI seek the first right to enforce any patent within PATENT RIGHTS against any infringement or alleged infringement thereof within LICENSED FIELD in the TERRITORY, then it shall notify Mayne Pharma who will seek the consent of JHU (which consent HPPI acknowledges may be withheld or granted subject to conditions by JHU acting in its discretion).
12.4.5 (b) If the exercise of the rights granted KCI herein infringe the rights HPPI elects not to pay Enforcement Costs in respect of a third partyparticular infringement in the TERRITORY, Wake Forest may elect then it shall so notify Mayne Pharma in writing within *** of receiving notice that an infringement exists, and Mayne Pharma may, in its sole judgment and at its own expense, take steps to pursue enforce any patent and control, settle, and defend such suit in a license from such third party that would permit KCI to exercise manner consistent with the rights granted herein without limitation terms and provisions hereof, and recover, for its own account, any damages, awards or interruption and without payments by KCIsettlements resulting therefrom, or Wake Forest may authorize KCI allow JHU to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonabledo so.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: Sublicense Agreement (HedgePath Pharmaceuticals, Inc.), Sublicense Agreement (HedgePath Pharmaceuticals, Inc.)
Infringement. 12.1 14.1 In the event that either party shall learn of an infringement of any PATENT or TRADEMARK (including any act of unfair competition), that party shall call the other party's attention thereto in writing and shall provide such other party with reasonable evidence of such infringement. Both parties shall use their best efforts in cooperation with each other to terminate such infringement without litigation. If the efforts of the parties are not successful in abating the infringement within sixty (60) days after the infringer has been formally notified of the infringement, LICENSEE shall have the right to:
14.1.1 Commence suit on LICENSEE's own account for infringement of its exclusive rights, subject to LICENSOR's right to fully participate in such suit, at its own cost, in order to protect its rights;
14.1.2 Join with LICENSOR in such suit if LICENSOR brings suit pursuant to Section 14.2 below or;
14.1.3 Refuse to bring such suit; and LICENSEE shall give notice in writing to LICENSOR within thirty (30) days after said sixty (60) day period of Section 14.1.
14.2 LICENSOR may bring suit for PATENT or TRADEMARK infringement on its own account, if LICENSEE elects not to commence or join in any suit.
14.3 Such legal action as is decided upon shall be at the expense of the party bringing suit, and all recoveries recovered thereby shall belong to such party, provided, however, that legal action brought jointly by LICENSOR and LICENSEE and fully participated in by both shall be at the joint expense of the parties, and all recoveries up to the amount of such expense, shall be shared jointly by them in proportion to the share of expense paid by each party, and in the event such recoveries include damages or royalties in excess of expenses, the amount in excess of expenses shall be shared by the parties on a proportional basis as to their actual losses (for LICENSEE, lost gross profit; for LICENSOR, lost royalties). *CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR REDACTED PORTIONS 11
14.4 Each party will promptly inform agrees to cooperate, in all reasonable respects as requested by the other party in writing of any alleged infringement litigation proceedings instituted hereunder and, upon request of the Patent Rights party bringing suit, the other party shall make available to the party bringing suit all relevant records, papers, information, samples, specimens, and the like which may be relevant and in its possession. The party bringing suit and incurring the majority of the associated costs shall have the right to control such litigation.
14.5 In the event the making, using or selling of PRODUCTS is determined by a court of competent jurisdiction to infringe one or more claims of a patent(s) owned by a third party, no royalty payments shall be due LICENSOR from the date such lawsuit is filed with respect to NET SALES in the territory where such third party's patent rights are applicable. All royalty payments shall be placed in an interest-bearing escrow account from the date that the lawsuit is filed and maintained therein until final judgment. Provided, however, that if such infringement results in a license to LICENSEE which enables LICENSEE to continue making, using, or selling such PRODUCT in such part of the assertion of a declaratory judgment action alleging invalidity or noninfringementterritory, and provide then the royalty payments due to LICENSOR with respect to NET SALES in such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest territory following the expiration of a thirty day period after date such notice into an escrow account as escrowed litigation royalties. KCI will not settle lawsuit is filed or compromise any claim such settlement is reached shall be reduced by the damages and/or royalty payments paid or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned paid to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI and the royalty payments to exercise LICENSOR shall commence only after the rights granted herein without limitation or interruption full recovery by LICENSEE of its reasonable costs and without payments by KCI, or Wake Forest may authorize KCI to pursue expenses in defending such a licensesuit. In the no event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the shall LICENSOR's earned royalty rate set forth in Section 4.2 and the minimum royaltybe reduced to less than [*] due to earned royalty payments made to third parties by LICENSEE. Should LICENSEE, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found be required to infringe the rights of make additional payments to a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this AgreementSection 14.5, the minimum royalty requirements provided for in section 3.3 shall not longer apply.
Appears in 2 contracts
Samples: License Agreement (Steri Oss Inc), License Agreement (Steri Oss Inc)
Infringement. 12.1 (a) Each party Licensee will promptly inform Licensor in writing of any potential or actual infringement, of which it has knowledge, of the Licensor Technology or Selected Non-Ethanol Technology (as applicable to a Licensee), by one or more third parties and will provide Licensor with readily-available information relating to such infringement. In the event Licensor becomes aware of any potential or actual infringement of the Licensor Technology or Selected Non-Ethanol Technology (as applicable to a Licensee) in the Territory, Licensor will promptly inform the other applicable Licensees thereof in writing of writing. After any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such aforementioned notice, KCI may place [***] first accruing the applicable parties will promptly confer to Wake Forest following the expiration of a thirty day period attempt to determine, within 45 days after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in (the Conference Period), a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term mutually agreed course of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As (b) In the event all the applicable parties mutually agree to pursue a course of action other than legal proceedings, such parties will share equally in the costs of such action, and any recovery will be distributed to the parties first option for KCI, to recover their costs and then divided among the parties as follows: [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties % to Wake Forest.
12.2.3 As an alternative option, Licensor and [***]. All remaining escrowed litigation royalties % (in the aggregate) to the applicable Licensee(s).
(c) In the event all the applicable parties mutually agree to pursue legal proceedings, such parties will share equally in the costs of such proceedings, and any recovery will be immediately returned distributed to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of parties first to recover their costs and then divided among the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) parties as follows: [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, % to Licensor and [***]% (in the aggregate) to the applicable Licensee(s).
12.3.2 As (d) If the parties are unable to mutually agree upon a first option for KCIcourse of action, [***]then:
(i) Licensor will have the right and option, but not the obligation, to bring and prosecute an infringement action, with counsel of its own choosing, to enforce its rights therein. Upon settlement or final termination of If Licensor determines not to pursue such action, provided such action does not result in a final non-appealable Licensor will so notify the applicable Licensee(s) within 45 days after the expiration or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess termination of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment ActionConference Period, then (aLicensor will notify the applicable Licensee(s) [***] of its decision whether to bring and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged prosecute an infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a licenseaction. In the event Wake Forest authorizes KCI Licensor fails to secure so notify, Licensor will be deemed to have elected not to exercise its option under this Section 7.3(d)(i). Licensor will keep the applicable Licensee(s) informed as to any such action which it undertakes. The costs and expenses incurred pursuant to this Section 7.3(d)(i) (including fees of attorneys and other professionals) will be borne by Licensor. The applicable Licensee(s) will cooperate with Licensor in the prosecution of such action to the extent reasonably necessary, including, without limitation, being joined as a licenseparty under F.R.C.P. 19 or other equivalent rule or law. Any award obtained in such an infringement action (whether by way of settlement or otherwise) will be paid first to Licensor and the applicable Licensee(s) to the extent of the expenses incurred by them, and then will be paid to Licensor or its licensors, as applicable.
(ii) In the terms of such a license provide for royalties or other payments by KCI event Licensor elects not to such third partyexercise its option under Section 7.3(d)(i), then the parties applicable Licensee(s) will negotiate in good faith, a royalty reduction in have the earned royalty rate set forth in Section 4.2 right and the minimum royaltyoption, but not the floor royaltyobligation, set forth to bring and prosecute an infringement action with counsel of its/their own choosing. The applicable Licensee(s) will keep Licensor informed as to the prosecution of any such action or of its determination not to pursue such action. The costs and expenses of any action instituted pursuant to this Section 7.3(d)(ii) (including fees of attorneys and other professionals) will be borne by the applicable Licensee(s). Licensor will cooperate with the applicable Licensee(s) in Section 4.3 the prosecution of such that action to the total royalties payable are commercially reasonable.
12.4.6 If extent reasonably necessary, including, without limitation, being joined as a party under F.R.C.P. 19 or other equivalent rule or law. Any award obtained in such an infringement action (whether by way of settlement or otherwise) will be paid first to the exercise applicable Licensee(s) and Licensor to the extent of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealedexpenses incurred by them, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties then will be given paid to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreementapplicable Licensee(s) as agreed between them.
Appears in 2 contracts
Samples: Joint Development and Technology Transfer Agreement (Diversa Corp), Joint Development and Technology Transfer Agreement (Diversa Corp)
Infringement. 12.1 Each party will promptly inform 9.1 ALLIANCE and HMRI shall each promptly, but in any event no later than ten (10) business days after receipt of notice of such action, notify the other in writing of any patent nullity actions, any declaratory judgment actions or any alleged or threatened infringement of patents or patent applications or misappropriation of intellectual property comprising the Patent Rights by a third Patents or if either party, or the assertion any of their respective Affiliates, shall be individually named as a defendant in a legal proceeding by a Third Party alleging infringement of a declaratory judgment action patent or other intellectual property right as a result of the manufacture, production, use, development, manufacturing, marketing, selling or distribution of Products, or of any other information or notification regarding the Patents.
9.2 HMRI shall have the first right to respond to, defend or prosecute any actions, challenges, infringements, misappropriations or proceeding by a Third Party alleging invalidity or noninfringementinfringement described in Section 9.1. In the event HMRI elects to do so, ALLIANCE will cooperate with HMRI and its legal counsel, join in such suits as may be brought by HMRI, and provide be available at HMRI's reasonable request to be an expert witness or otherwise to assist in such other party proceedings. HMRI will cooperate with any available information about ALLIANCE and its legal counsel and keep ALLIANCE and its counsel reasonable informed at all times as to the infringement status of HMRI's response or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI defense.
9.3 HMRI will not settle any suit or compromise any claim or action involving the Patents in a manner that imposes would compromise any restrictions or obligations on Wake Forest rights of ALLIANCE without Wake Forest's obtaining the prior written consent, which consent will not be unreasonably withheldof ALLIANCE.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 9.4 In the event that HMRI elects to respond to, defend or prosecute any actions, challenges, infringements, misappropriations or proceeding by a Declaratory Judgment Action Third Party alleging invalidity infringement described in Section 9.1, then: (i) legal fees and other costs and expenses of HMRI associated with such response or non-infringement defense shall be paid by HMRI; (ii) legal fees and other costs and expenses associated with such response or defense incurred by ALLIANCE at HMRI's request, shall be paid by ALLIANCE; (iii) costs of acquiring Third Party patents or licenses and any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent court award, judgment or other voluntary fiscal disposition damages will be **__________________; and (iv) amounts recovered from Third Parties in connection with such response or defense shall first be applied, **__________________________________ ________________________________________________________________________________ _______________________________________________________________________________. HMRI shall advance all costs required to be paid by ALLIANCE pursuant to clauses (ii) and (iii) of this subsection 9.4 and shall recover such advanced costs through credits against up to ** of the suit may be entered into without royalties otherwise payable by HMRI to ALLIANCE hereunder, until the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will amount so advanced by HMRI is fully recovered. ALLIANCE shall have a duty no obligation to defend repay HMRI any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, amounts previously paid by HMRI to the extent ALLIANCE hereunder to cover such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreementcosts. As between Wake Forest and KCI, [***].______ ____________________________________________________________________________ ____________________________________________________________________________
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. 9.5 In the event Wake Forest authorizes KCI that HMRI elects not to secure such respond to, defend or prosecute any actions, challenges, infringements, misappropriations or proceeding by a license, and the terms Third Party alleging infringement described in Section 9.1 within sixty (60) days of becoming aware of or being notified of such a license provide for royalties actions, challenges, infringements, misappropriations or other payments by KCI proceedings or abandons such response, then, in such event, ALLIANCE shall have the option to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCIdo so at ALLIANCE's sole cost, provided that KCI provides written notice HMRI shall cooperate with and provide assistance to Wake Forest ALLIANCE at HMRI's expense. All amounts so recovered from any Third Party shall be retained by ALLIANCE, subject to reimbursement of KCI's election both parties for expenses and ALLIANCE shall have no further obligations to terminate HMRI with respect to the License under this Agreementresponse or defense thereof; provided further that the royalty rate payable by HMRI shall not be adjusted downward due to an adverse judgment.
9.6 In the event that ALLIANCE and HMRI determine that it is necessary or desirable for HMRI to acquire any Third Party patent or license in connection with the development or manufacture of Products covered by the Patents in the Territory, **_______________________________________________________________ ____________________________________________________________________________ ____________________________________________________________________________
Appears in 2 contracts
Samples: License Agreement (Alliance Pharmaceutical Corp), License Agreement (Alliance Pharmaceutical Corp)
Infringement. 12.1 (a) Each party will promptly inform Party shall report in writing to the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During Party during the term of this AgreementAgreement any known or suspected infringement of any Patent Rights owned by a Party, KCI or unauthorized use or misappropriation of any Know-How owned by a Party, and will prosecute provide the other Party with all available evidence supporting such infringement or unauthorized use or misappropriation.
(b) PHARMAENGINE shall have the right to initiate an infringement or other appropriate suit anywhere in the Territory against any third party who at any time has infringed, or is suspected of infringing, any of HERMES Patent Rights or jointly made Patent Right in this Article 9 during the term of this Agreement applicable to the Licensed Products in the Territory, or has used without proper authorization all or any portion of the Know-How of HERMES applicable to the Licensed Products in the Territory. HERMES shall cooperate fully with and provide all necessary assistance to PHARMAENGINE in the proceeding of such claim, at the expense of PHARMAENGINE. HERMES may initiate such claim at its sole discretion only if PHARMAENGINE fails to initiate such claim within [**] days after receipt of a written request from HERMES which stating the infringer (or suspected infringer) and the relevant fact.
(c) HERMES shall have the right to initiate an infringement or other appropriate suit anywhere in the Retained Territory against any third party who at any time has infringed, or is suspected of infringing, any of PHARMAENGINE Patent Rights or jointly made Patent Right in this Article 9 during the term of this Agreement applicable to the Licensed Products in the Retained Territory, or has used without proper authorization all or any portion of the Know-How of PHARMAENGINE applicable to the Licensed Products in the Retained Territory. PHARMAENGINE shall cooperate fully with and provide all necessary assistance to HERMES in the proceeding of such claim, at the expense of HERMES. PHARMAENGINE may initiate such claim at its sole discretion only if HERMES fails to initiate such claim within [**] days after receipt of a written request from PHARMAENGINE which stating the infringer (or suspected infringer) and the relevant fact.
(d) Neither Party shall settle any infringements claims or suits involving Patent Rights of the Patent Rightsother Party without obtaining the prior written consent of the other Party, and, in furtherance of such right, KCM may join Wake Forest as which consent shall not be unreasonably held.
(e) Any recovery realized from pursuing an infringement claim against a third party in any such suit, shall be distributed and allocated (i) first to reimburse [**] percents ([**]%) of the [**] costs incurred to pursue the infringement action, and (ii) the remainder shall be distributed and allocated between the Parties [**] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an actiondamages caused to each Party by the infringement.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: License Agreement (Merrimack Pharmaceuticals Inc), License Agreement (Merrimack Pharmaceuticals Inc)
Infringement. 12.1 Each party will promptly inform Company shall have the other in writing of first right, but not the obligation, to enforce any patent within PATENT RIGHTS against any infringement or alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringementthereof, and provide such other party shall at all times keep JHU informed as to the status thereof. Before Company commences an action with respect to any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such rightpatents, KCM may join Wake Forest as a party Company shall give careful consideration to the views of JHU and to potential effects on the public interest in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement making its decision whether or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring xxx. Thereafter, Company may, at its own expense, institute suit against any such infringer or alleged infringerinfringer and control and defend such suit in a manner consistent with the terms and provisions hereof and recover any damages, then (a) [***] andawards or settlements resulting therefrom, (b) [***]subject to Paragraph 4.5. No However, no settlement, consent judgment, judgment or other voluntary fiscal final disposition of the suit may be entered into without the prior written consent of KCIJHU, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will shall not be unreasonably withheld.
12.4.3 [***] any such . This right to xxx for infringement action by any third party [***]shall not be used in an arbitrary or capricious manner. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI JHU shall reasonably cooperate in any such infringement action litigation at Company's expense, including the joining of JHU and its AFFILIATED COMPANIES as a party to such action, as may be required by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise law of the rights granted KCI herein infringe particular forum where enforcement is being sought. If Company elects not to enforce any patent within the rights PATENT RIGHTS, then it shall so notify JHU in writing within ninety (90) days of a third party, Wake Forest may elect to pursue a license from such third party receiving notice that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licensean infringement exists, and JHU may, in its sole judgment and at its own expense, take steps to enforce any patent and control, settle, and defend such suit in a manner consistent with the terms and provisions hereof, and recover, for its own account, any damages, awards or settlements resulting therefrom. Portions of such a license provide for royalties or other payments by KCI to such third party, then this Exhibit were omitted and have been filed separately with the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise Secretary of the rights granted KCI herein are found Commission pursuant to infringe the rights Company’s application requesting confidential treatment under Rule 406 of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this AgreementSecurities Act.
Appears in 2 contracts
Samples: Exclusive License Agreement (Rosetta Genomics Ltd.), Exclusive License Agreement (Rosetta Genomics Ltd.)
Infringement. 12.1 Each party will promptly inform Company shall have the other in writing of first right, but not the obligation, to enforce any patent within the PATENT RIGHTS against any infringement or alleged infringement of thereof in the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringementLICENSED FIELD, and provide such other party shall at all times keep JHU informed as to the status thereof. Before Company commences an action with respect to any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such rightpatents, KCM may join Wake Forest as a party Company shall give careful consideration to the views of JHU and to potential effects on the public interest in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement making its decision whether or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring xxx. Thereafter, Company may, at its own expense, institute suit against any such infringer or alleged infringerinfringer and control and defend such suit in a manner consistent with the terms and provisions hereof and recover any damages, then (a) [***] andawards or settlements resulting therefrom, (b) [***]subject to Paragraph 4.5. No However, no settlement, consent judgment, judgment or other voluntary fiscal final disposition of the suit may be entered into without the prior written consent of KCIJHU, which consent will shall not be unreasonably withheld unless such settlement amounts to a permitted sublicense hereunder. This right to xxx for infringement shall not be withheld.
12.3.1 In the event that used in an arbitrary or capricious manner. JHU shall reasonably cooperate in any such litigation (including, without limitation, joining such action as a Declaratory Judgment Action alleging invalidity party plaintiff if necessary or non-infringement of any of the Patent Rights will be brought against KCI desirable for initiation or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination continuation of such action, provided such action does not result in a final non) at Company’s expense for JHU’s out-appealable or nonof-appealed decision that the subject patent(s) are invalid or unenforceable, [***]pocket expenses. If the subject patents are found Company elects not to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain enforce any patent within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment ActionPATENT RIGHTS, then it shall so notify JHU in writing within six (a6) [***] months of receiving notice that an infringement exists, and (b) [***]. No settlementif such infringement is commercially material, consent JHU may, in its sole judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCIand at its own expense, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty take steps to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of enforce any patent of any third partyand control, to the extent settle, and defend such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and consistent with the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableprovisions hereof.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: Exclusive License Agreement (BIND Therapeutics, Inc), Exclusive License Agreement (BIND Therapeutics, Inc)
Infringement. 12.1 Each party will promptly inform the other in writing Licensor agrees to indemnify and hold Licensee and its directors, officers, employees and agents, harmless against any and all claims, demands, actions, losses, liabilities, judgments, settlements, awards and costs (including reasonable attorneys' fees and expenses) (collectively, "Liabilities") arising out of or related to any alleged infringement of the Patent Rights claim against Licensee by a third party, party that Licensee's use or possession of the Application Software (or the assertion of a declaratory judgment action alleging invalidity license granted to Licensee hereunder with respect thereto), infringes or noninfringementviolates any United States patent, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, copyright or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent proprietary right of any third party, to the extent such suit is based upon a claim ; provided that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement Licensee gives Licensor prompt notice of any such infringement claim of which it has actual knowledge and cooperates fully with Licensor in the defense of such claim. Licensor shall have the exclusive right to defend and settle at its sole discretion and expense all suits or proceedings arising out of the foregoing. Licensee shall not have the right to settle any action, claim or threatened action without the prior written consent of Licensor (at Licensor's sole and absolute discretion). In case use of the Application Software is forbidden by a third party. Following such noticecourt of competent jurisdiction because of proprietary infringement, KCI may place up Licensor shall promptly, at its option, (i) procure for Licensee the rights to a maximum continue using the Application Software; (ii) replace the infringing Application Software with non-infringing Application Software of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, equal performance and quality which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If are materially the exercise functional equivalent of the rights granted KCI herein infringe infringing Application Software; (iii) modify the rights infringing Application Software so it becomes non-infringing while materially maintaining the functionality thereof; or (iv) if none of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable foregoing are commercially reasonable.
12.4.6 If practicable, remove the exercise System and terminate the Marketing Agreement and this License Agreement Licensor will then be released from any further obligation whatsoever to Licensee with respect to the infringing part of the rights granted KCI herein are found Application Software. Nothing in this Section shall be deemed to infringe make Licensor liable for any patent or copyright infringement suits that arise in connection with (a) designs, modifications, use, integration or data furnished by Licensee if infringement would have been avoided by not using or combining the rights Application Software with such other programs or data or (b) if infringement would have been avoided by the use of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able an updated version made available to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this AgreementLicensee.
Appears in 2 contracts
Samples: Software License Agreement (Preferred Voice Inc), Software License Agreement (Preferred Voice Inc)
Infringement. 12.1 Each party will Party shall promptly inform provide written notice to the other in writing Party during the Agreement Term of any alleged (i) known infringement or suspected infringement by a Third Party of any Patent Rights, it is Handling hereunder to the extent that such Patent Rights cover a Degronimid or Product, or (ii) known or suspected unauthorized use or misappropriation by a third partyThird Party of any C4T Know-How, Roche Know-How or the assertion of Joint Know-How pertaining to a declaratory judgment action alleging invalidity Degronimid or noninfringementProduct, and shall provide the other Party with all evidence in its possession supporting such other party with any available information about the infringement or declaratory action, as the case might beunauthorized use or misappropriation. Following such notice, KCI may place Within [***] first accruing after Roche provides or receives such written notice (“Decision Period”), Roche, in its sole discretion, shall decide whether or not to Wake Forest following the expiration of initiate a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim suit or action in the Territory regarding such infringement or unauthorized use or misappropriation and shall notify C4T in writing of its decision in writing (“Suit Notice”). If Roche decides to bring a manner that imposes any restrictions suit or obligations on Wake Forest without Wake Forest's written consenttake action, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreementonce Roche provides Suit Notice, KCI will prosecute [***] any infringements Roche may immediately commence such suit or take such action. Roche shall keep C4T informed of the Patent Rightsstatus of any such suit or action and shall provide C4T with copies, to the extent Roche is lawfully permitted to do so, of all substantive documents or communications filed in such suit or action. Roche shall have the sole and exclusive right to select counsel for any such suit or action. Roche shall, except as provided below, pay all expenses of the suit or action, including Roche’s attorneys’ fees and court costs. Any damages, settlement fees or other consideration received as a result of such suit or action shall be allocated as follows:
(a) First, to reimburse Roche for its costs and, in furtherance of such rightif any remains, KCM may join Wake Forest as a party in to C4T for any such suitadvisory counsel fees and costs; and
(b) Second, the balance, if any, shall be allocated [***] to Wake Forest. As between wake Forest Roche, and KCI, KCI will be liable for [***] in to C4T. If Roche believes it is reasonably necessary or desirable to obtain an effective remedy, upon written request C4T agrees to be joined as a party to the suit or action but shall be under no obligation to participate except to the extent that such action and KCI will be responsible, except participation is required as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto result of its intention not being a named party to bring the suit against or action. At Roche’s written request, C4T shall offer reasonable assistance to Roche in connection therewith at no charge to Roche except for reimbursement of reasonable out-of-pocket expenses incurred by C4T in rendering such assistance. C4T shall have the right to participate and be represented in any such alleged infringer, then (a) [***] and, (b) [***]suit or action by its own counsel at its own expense. No settlementRoche may settle, consent judgment, judgment or other voluntary fiscal disposition otherwise voluntarily dispose of the suit may be entered into or action (“Settlement”) without the written consent of KCIC4T but only if such Settlement can be achieved without adversely affecting C4T (including any of its Patent Rights and including by resulting in a reduction in royalties or milestones payable hereunder). If a Settlement could adversely affectC4T, then the written consent of C4T would be required, which consent will shall not be unreasonably be withheld.
12.3.1 . In the event that a Declaratory Judgment Action alleging invalidity Roche (i) does not in writing advise C4T within the Decision Period that Roche will commence suit or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such take action, provided or (ii) fails to commence suit or take action within a reasonable time after providing Suit Notice, Roche shall assign such Patent Right to C4T and C4T shall thereafter have the right to commence suit or take action does not result in a final non-appealable the Territory with respect to such infringement or non-appealed decision that suspected infringement. In such situation and, notwithstanding anything in this Agreement to the subject patent(s) are invalid contrary, C4T shall have full discretion as to how it wishes to handle such suit and may reach settlement and retain all damages, settlement fees or unenforceable, [***]other consideration under any terms and conditions it desires. If the subject patents are found C4T believes it is reasonably necessary or desirable to obtain an effective remedy, upon written request, Roche agrees to be invalid or unenforceable in joined as a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned party to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may or action but shall be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty under no obligation to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, participate except to the extent that such participation is required as the result of its being a named party to the suit or action. For any Roche Patent Right that Covers a Roche Compound, Roche, in its sole discretion, shall decide whether or not to initiate such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in the Territory. Roche shall have full discretion as to how it wishes to handle such suit and may reach Settlement and retain all damages, settlement fees or other consideration under any terms and conditions it desires. However, if a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action Settlement could adversely affect C4T by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI resulting in any such infringement action by any third party a reduction in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third partymilestones payable hereunder or adversely affect a C4T Patent Right or Collaboration Patent Right, then the parties will negotiate in good faithwritten consent of C4T shall be required, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 for such that the total royalties payable are commercially reasonablesettlement.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: License Agreement (C4 Therapeutics, Inc.), License Agreement (C4 Therapeutics, Inc.)
Infringement. 12.1 This Section 7.4 is subject to the rights of UBC in Section 11.1(a).
(a) Each party will Party shall promptly inform report in writing to the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During Party during the term of this Agreement, KCI will prosecute [***] Agreement any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement (i) known infringement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-suspected infringement of any of the Patent Rights will be brought against KCI Licensed Patents in the Territory, or Wake Forest(ii) unauthorized use or misappropriation of Know-How or Confidential Information by a third party in the Territory of which it becomes aware, [***]and shall provide the other Party with all available evidence supporting said infringement, suspected infringement or unauthorized use or misappropriation.
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlementExcept as provided in subsection (c) below, ESPERION shall have, upon receiving the prior written consent judgment of INEX, not to be unreasonably withheld, the right anywhere in the Territory to defend an allegation of invalidity of one or more Licensed Patents, and to initiate an infringement or other voluntary fiscal disposition appropriate suit against any third party who at any time has infringed, or is suspected of infringing, or is anticipated to infringe any of the suit may Licensed Patents or of using without proper authorization all or any portion of the Confidential Information and/or Know-How. Provided that it has first granted its prior written consent, not to be entered into without the consent of KCIunreasonably withheld, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty INEX agrees to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, co- operate to the extent of executing all necessary documents and to vest in ESPERION the right to institute any such suit is based upon a claim that suits, in the infringement arises from name of ESPERION or INEX or both, so long as all the manufacture, use direct or sale indirect costs and expenses of bringing and conducting any such litigation or settlement shall be borne by KCI ESPERION and in such event all recoveries shall inure to ESPERION. For purposes of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other if ESPERION requests in writing INEX's prior written consent to any matter, as required hereby, and INEX does not either grant or deny such consent within ten (10) days of receiving such request from ESPERION, INEX shall be deemed to have granted the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written requested consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI of any litigation:
i) Each Party shall keep the other fully informed of the actions and positions taken or proposed to secure be taken by such a license, Party and the terms of such a license provide for royalties or actions and positions taken by all other payments by KCI parties to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.litigation;
Appears in 2 contracts
Samples: License Agreement (Esperion Therapeutics Inc/Mi), License Agreement (Esperion Therapeutics Inc/Mi)
Infringement. 12.1 Each party will 8.1 ALIMERA shall promptly inform the other in writing notify EMORY, and EMORY shall promptly notify ALIMERA, of any alleged suspected infringement of any Licensed Patents in the Patent Rights by a third party, or the assertion Licensed Field of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might beUse. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute EMORY and ALIMERA shall have the right to institute an action for infringement of the Licensed Patents against a third party in accordance with the following: [**] shall have the first right, but not the obligation, to enforce any Licensed Patents in the Licensed Field of Use against such infringement, including without limitation by initiation of proceedings, settlement or compromise, and shall bear the entire cost of such action, including defending any counterclaims brought against [*] and paying any infringements of judgments rendered against [*]. To the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in extent [*] takes any such suitaction, [*] shall control such action, and [*] may, upon prior written notice to [*], enter into settlements, stipulated judgments or other arrangements with respect to such infringement; provided that if such proposed settlement, stipulated judgment or other arrangement adversely affects [*] interests and/or adversely affects a field of use other than the Licensed Field of Use, [*] shall not enter into such settlement, stipulated judgment or other arrangement without [*] prior written consent, such consent not to be unreasonably withheld or delayed. The parties acknowledge that it may be reasonable for [*] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [*] * Certain information has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. [*]. [*] shall cooperate with [*] in such effort, at [*] reasonable expense, including being joined as a party to such action, if necessary. Any recovery or settlement received as the result of such action (whether for punitive or exemplary damages, or any other recovery or settlement received, including compensatory damages or damages based on a loss of revenues (hereinafter referred to as “Recovery”)), shall first be used to reimburse the documented out-of-pocket costs and KCI will be responsibleexpenses incurred by ALIMERA and EMORY in pursuing such action, except as provided in Section 12.2.3and to the extent any portion of the balance of the Recovery represents [*] damages directly related to the Licensed Field of Use, for the example, [*], such portion shall be deemed to be [*], and ALIMERA shall pay to EMORY an amount representing [*]. Any remaining amounts of such Recovery that represents, for example, [*] damages (such as [*] or [*] damages) shall be paid [*] to ALIMERA and [*] EMORY. If [*] shall fail, within [*] after receiving notice from [*] of a potential infringement in the Licensed Field of Use, or providing [*] with notice of such infringement, to either (i) terminate such infringement or (ii) institute an action to prevent continuation thereof and thereafter to prosecute such action diligently or (iii) obtain [*] consent not to institute an action to prevent continuation thereof, or if [*] notifies [*] that it does not plan to terminate the infringement or institute such action, then [*] shall have the right to do so at its own expense. [*] shall cooperate with [*] in such an action.
12.2.2 As a first option for KCIeffort, at [***]] reasonable expense, including being joined as a party to such action if necessary. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As 8.2 Should either EMORY or ALIMERA commence a first option for KCIsuit under the provisions of this Article 8 and thereafter elect to abandon such suit, [***]. Upon settlement or final termination the abandoning party shall give timely notice to the other party who may, if it so desires, continue prosecution of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCIsuit, provided that KCI provides written notice to Wake Forest the sharing of KCI's election to terminate the License under this Agreementexpenses and any recovery in such suit shall be as agreed upon between EMORY and ALIMERA.
Appears in 2 contracts
Samples: License Agreement (Alimera Sciences Inc), License Agreement (Alimera Sciences Inc)
Infringement. 12.1 Each In the event that either party will promptly inform the other in writing becomes aware of any alleged actual or suspected infringement of the any Licensed Patent Rights by a third partyparty as a result of the manufacture, sale, distribution, offer for sale or use of any Product in any business channel and territory covered by Article II, paragraph 1 of this Agreement, it shall promptly notify the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about in writing. AVON shall have the infringement or declaratory actionsole initial right, as the case might be. Following such noticein its sole discretion, KCI may place to bring THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION, CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION. and prosecute suit against such third party, and OMP shall cooperate, at AVON’s sole expense, in any such suit. Except to the extent provided for herein, all expenses of such suit shall be borne by, and any recovery obtained or awarded shall belong to, AVON. After AVON has recovered all of its attorneys’ fees, court costs and damages for infringing sales made by such third party (calculated using the royalty rate set forth in Article III herein), AVON shall pay to OMP out of such remaining, if any, recovery or award, all of OMP’s damages as a result of the infringement by such third party. Notwithstanding the foregoing, AVON shall not be required to pay to OMP any amount above such remaining, if any, recovery or award. In the event that AVON elects not to bring suit against such third party within three (3) months after learning of the actual or suspected infringement, and diligently prosecute such suit thereafter, OMP may, at OMP’s sole expense, and with AVON’s reasonable approval, bring suit against such third party and join AVON as a co-plaintiff. AVON agrees to cooperate with OMP in the prosecution of such suit at no cost or expense to AVON. OMP shall bear the full cost and expense of such suit, including enforcing and defending the Licensed Patents, and shall be entitled to retain recovery from such suit, provided that, after OMP has recovered all of its attorney’s fees and court costs, OMP shall first accruing pay to Wake Forest following AVON all the expiration royalties due for sales of a thirty day period after such notice into an escrow account as escrowed litigation royaltiesthe infringing products at the royalty rate set forth in Article III herein. KCI will OMP shall not settle such suit in any way that shall affect the rights of AVON or compromise the scope, validity or any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During other aspect of the term of this Agreement, KCI will prosecute Licensed Patents. THE SYMBOL [***] any infringements of the Patent RightsIS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an actionCONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: Patent License Agreement (Obagi Medical Products, Inc.), Patent License Agreement (Obagi Medical Products, Inc.)
Infringement. 12.1 Each party will 8.1 ALIMERA shall promptly inform the other in writing notify EMORY, and EMORY shall promptly notify ALIMERA, of any alleged suspected infringement of any Licensed Patents in the Patent Rights by a third party, or the assertion Licensed Field of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might beUse. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute EMORY and ALIMERA shall have the right to institute an action for infringement of the Licensed Patents against a third party in accordance with the following: [**] shall have the first right, but not the obligation, to enforce any Licensed Patents [*] any infringements of * Certain Information has been omitted and filed separately with the Patent Rights, andCommission Confidential treatment has been requested with respect to the omitted portions. [*], in furtherance the Licensed Field of Use against such rightinfringement, KCM may join Wake Forest as a party in any such suitincluding without limitation by initiation of proceedings, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination compromise, and shall bear the entire cost of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, including defending any counterclaims brought against [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under ] and paying any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit judgments rendered against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents [*] are found implicated in any such enforcement action, ALIMERA and EMORY shall use good faith and commercially reasonable efforts to promptly agree in writing the rights between the parties under any such enforcement action. If the parties are unable to promptly agree regarding the rights between the parties under any such enforcement action, then such dispute shall be invalid or unenforceable settled in a final non-appealable or non-appealed decisionaccordance with the arbitration provisions under Article 14. To the extent [*] takes any such action, [**] shall control such action, and [*] may, upon prior written notice to [*], enter into settlements, stipulated judgments or other arrangements with respect to such infringement; provided that if valid patents covering such products proposed settlement, stipulated judgment or processes still remain within other arrangement adversely affects [*] interests and/or adversely affects [*] a field of use other than the Patent Rights.
12.3.3 As an alternative optionLicensed Field of Use, [*] shall not enter into such settlement, stipulated judgment or other arrangement without [*] prior written consent, such consent not to be unreasonably withheld or delayed. The parties acknowledge that it may be reasonable for [*] to [*]. All remaining escrowed litigation royalties will [*] shall cooperate with [*] in such effort, at [*] reasonable expense, including being joined as a party to such action, if necessary. Any recovery or settlement received as the result of such action (whether for punitive or exemplary damages, or any other recovery or settlement received, including compensatory damages or damages based on a loss of revenues (hereinafter referred to as “Recovery”)), shall first be immediately returned used to Wake Forest. Wake Forest will notreimburse the documented out-of-pocket costs and expenses incurred by ALIMERA and EMORY in pursuing such action, under and to the extent any circumstances, be liable for any amounts in excess portion of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) balance of the Recovery represents [***] and (b) damages directly related to the Licensed Field of Use, for example, [*], such portion shall be deemed to be [*], and ALIMERA shall pay to EMORY an amount representing [*]. No settlementAny remaining amounts of such Recovery that represents, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCIexample, [*] damages (such as [*] or [*].
12.4.2 Each party will promptly inform ] damages) shall be paid [*] to ALIMERA and [*] to EMORY. If [*] shall fail, within [*] after receiving notice from [*] of a potential infringement in the other in writing Licensed Field of the commencement Use, or providing [*] with notice of any such infringement, to either (i) terminate such infringement or (ii) institute an action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldprevent * Certain Information has been omitted and filed separately with the Commission Confidential treatment has been requested with respect to the omitted portions.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: License and Option Agreement (Alimera Sciences Inc), License and Option Agreement (Alimera Sciences Inc)
Infringement. 12.1 Each party will promptly inform Newgen shall defend, indemnify, and hold You harmless from and against any claims, actions, and other proceedings (“Claims”), and shall pay all losses, damages, liabilities, settlements, judgments, awards, interest, civil penalties, and reasonable expenses (collectively, “Losses,” and including reasonable attorneys’ fees and court costs), to the other in writing extent arising out of any alleged infringement Claims by any third party that a Solution (excluding any Customer Content and other material provided by You or included at Your direction) infringes a valid Indian copyright as of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements date of the Patent Rights, and, in furtherance applicable Order. In the event of such righta Claim, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such if Newgen determines that an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement actionaffected Solution is likely, or if KCI notifies Wake Forest at any time prior thereto the Solution is determined in a final, non-appealable judgment by a court of competent jurisdiction, to infringe a valid Indian copyright as of the date of the applicable Order, Newgen will, in its intention not to bring suit against any such alleged infringer, then discretion: (a) [***] and, replace the affected Solution; (b) [***]modify the affected Solution to render it non-infringing; or (c) terminate this Agreement or the applicable Order with respect to the affected Solution and refund to You any prepaid fees for the then-remaining or unexpired portion of the Subscription Order Term. No settlementNotwithstanding the foregoing, consent judgmentNewgen shall have no obligation to indemnify, defend, or other voluntary fiscal disposition of hold You harmless from any Claim to the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that extent it is based upon: (i) a Declaratory Judgment Action alleging invalidity modification to any Solution by You (or non-infringement by anyone under Your direction or control or using logins or passwords assigned to You); (ii) a modification made by Newgen pursuant to Your required instructions or specifications or in reliance on materials or information provided by You; or (iii) Your use (or use by anyone under Your direction or control or using logins or passwords assigned to You) of any of the Patent Rights will be brought against KCI or Wake ForestSolutions other than in accordance with this Agreement. This Section 11.1 sets forth Your sole and exclusive remedy, [***].
12.3.2 As a first option and Our entire liability, for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision any Claim that the subject patent(s) are invalid Solutions or unenforceable, [***]. If any other materials provided by Us violate or infringe upon the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent rights of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Samples: Master Cloud Subscription Agreement, Master Cloud Subscription Agreement
Infringement. 12.1 Each party will 6.1 LICENSEE acknowledges and agrees that other than as expressly provided for in this Agreement, [* * *]. LICENSOR and LICENSEE shall promptly inform notify the other party in writing of with respect to any alleged infringement of the Patent Rights claim, suit or other action brought by a third partyparty alleging that the composition of matter, manufacture, use, import, offer for sale or the assertion sale of a declaratory LICENSED PRODUCT infringes or misappropriates any third party intellectual property rights. In the event of a third party infringement action against either party with respect to any LICENSED PRODUCTS that are developed, manufactured, marketed or sold by or on behalf of LICENSEE, LICENSEE will, subject to subsections (i) through (iii) of Section 9.5, defend LICENSOR, [* * *]. LICENSEE shall indemnify, defend and hold VCU, VA and LICENSOR harmless from any judgment action alleging invalidity to the extent resulting from the infringement of third party intellectual property rights by LICENSED PRODUCTS that are developed, manufactured, marketed or noninfringementsold by or on behalf of LICENSEE, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [*** * *] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise shall pay any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party damages awarded in any such suitjudgment against Indemnitee (as defined in Section 9.5), except where such damages are attributable to the negligence, intentional misconduct, violation of law or regulation or breach of this Agreement by any Indemnitee or VCU/VA Personnel. LICENSOR will cooperate as requested by LICENSEE, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [*** * *]. No settlement, consent judgment, or other voluntary fiscal final disposition of any suit that would affect the suit validity, scope or enforceability of the LICENSED PATENT RIGHTS, by estoppel, admission or otherwise, or the LICENSOR’s rights in or to same, may be entered into without the consent of KCILICENSOR, which consent will not to be unreasonably be withheld, delayed or conditioned such as upon additional consideration.
12.3.1 In 6.2 LICENSEE and LICENSOR shall promptly inform each other in writing of any alleged infringement of the event LICENSED PATENT RIGHTS by a third party.
6.3 During the term of this Agreement, LICENSEE will have the primary right, but shall not be obligated, to prosecute at its own expense all enforcement actions against alleged or actual infringements of the LICENSED PATENT RIGHTS and, in furtherance of such right, LICENSEE may include LICENSOR, as a party plaintiff in any such suit, provided that a Declaratory Judgment Action alleging invalidity or [* * *]. LICENSEE’s right also includes without limitation, the right to defend any action for declaratory judgment of non-infringement or invalidity, and instituting, defending and settling all infringement and declaratory judgment actions [* * *] and through counsel of its own choosing. LICENSOR shall provide reasonable assistance to LICENSEE with respect to any such suits. If LICENSOR is not requested by LICENSEE to be included in any such suit, LICENSOR shall have the right to participate with counsel of its own choosing and at its own expense, in any action or suit under this Section 6.3. If LICENSOR makes any statements other than to LICENSEE or LICENSOR’s counsel regarding the infringement of LICENSED PATENT RIGHTS, LICENSOR shall be solely responsible for the costs and expenses of any of the Patent Rights will be brought against KCI or Wake Forest, [***]declaratory judgment action relating thereto.
12.3.2 As a first option for KCI, 6.4 LICENSEE shall have [* * ***]. Upon settlement ] after having been notified of any alleged infringement to investigate whether infringement can be established or final termination of such action, provided such if an enforcement action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]should be taken. If the subject patents are found to LICENSEE determines that infringement exists, or that any action should be invalid or unenforceable in a final non-appealable or non-appealed decisiontaken, then it shall have an additional [*** * *] if valid patents covering such products or processes still remain within to negotiate in good faith with the Patent Rights.
12.3.3 As alleged infringer to resolve the dispute or, at LICENSEE’s election, to commence prosecuting an alternative option, [***]infringement action (the filing period). All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then LICENSEE (a) [***] and at any time decides not to pursue an action against the alleged infringer, or (b) [***]fails to commence negotiating or prosecuting an action before the end of the filing period, then LICENSEE shall notify LICENSOR of its intention not to bring suit against any alleged infringer. In those events only, LICENSOR shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the LICENSED PATENT RIGHTS, and LICENSEE hereby agrees at its discretion and upon terms to be mutually agreed by the parties, to either be named as a plaintiff in any such proceedings or to assign its rights to xxx for infringement. LICENSOR shall pay all of LICENSOR’s costs and reasonable attorney fees incurred in such action brought by LICENSOR under this Section 6.4. No settlement, consent judgment judgment, or other voluntary fiscal final disposition of the suit may shall be entered into without the prior written consent of KCILICENSEE, which consent will shall not be unreasonably withheld, and LICENSOR may not settle any such action whereby LICENSOR grants a license to a third party under any LICENSED PATENT RIGHTS without the prior written consent of LICENSEE, which consent may be withheldwithheld by LICENSEE in its sole discretion.
12.4.1 KCI 6.5 In the event that LICENSOR shall undertake the enforcement and/or defense of the LICENSED PATENT RIGHTS by litigation, any monetary recovery by LICENSOR shall be [* * *] between LICENSOR and LICENSEE, after each party recovers its attorneys fees and court costs and other related outside documented costs and expenses. In the event that LICENSEE undertakes the enforcement and/or defense of the LICENSED PATENT RIGHTS by litigation, any monetary recovery by LICENSEE shall be [* * *].
6.6 Each party will have a duty promptly notify the other party in writing if such party institutes any action or suit with regard to defend any suit or counterclaim brought against Wake Forest or KCI for alleged third party infringement of the LICENSED PATENT RIGHTS, and will in a timely manner keep the other party informed with regard to such action or suit and any patent related proceedings. [* * *] Distribution of any third partyrecovered amounts shall be governed by Section 6.5. In any infringement suit that either party may institute to enforce the LICENSED PATENT RIGHTS pursuant to this Agreement, the other party hereto shall, at the request of the party initiating such suit and upon reasonable notice, cooperate in all respects and, to the extent such suit is based upon a claim that possible, have its employees testify when requested and make available relevant records, papers, information samples, models, specimens and the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***]like.
12.4.2 Each party will promptly inform 6.7 LICENSEE shall have the other in writing of the commencement of any such infringement action sole right, subject to approval by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentLICENSOR, which consent will shall not be unreasonably withheld, delayed or conditioned such as upon additional consideration, in accordance with the terms and conditions herein, to grant a SUBLICENSE to any alleged infringer under the LICENSED PATENT RIGHTS. Prior to the payment by LICENSEE to LICENSOR of any SUBLICENSING REVENUE based on amounts received from an alleged infringer as specified in Article III, LICENSOR shall be reimbursed for any and all documented out-of-pocket expenses incurred by it, if any, in connection with any suit or action against the alleged infringer, prior to the grant of the SUBLICENSE to the alleged infringer.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. 6.8 In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments that any legal action brought by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that alleging invalidity or noninfringement of any of the LICENSED PATENT RIGHTS is final brought against LICENSEE or LICENSOR or VCU, LICENSEE, at its option, shall have the right within [* * *], to intervene and non-appealable or non-appealedtake over the sole defense of the action at its own expense. If LICENSEE chooses not to intervene, LICENSOR shall have the option to intervene and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate take over the License under this Agreementsole defense at its own expense.
Appears in 1 contract
Infringement. 12.1 Each party will Party shall promptly inform provide written notice to the other in writing Party during the Agreement Term of any alleged known infringement or suspected infringement of the any Memory Patent Rights Right or Collaboration Patent Right by a third partyThird Party making, using, offering for sale, selling, or importing a PDE4 inhibitor or a product containing a PDE4 inhibitor (collectively "PDE4 Infringement"). Roche shall have the assertion first right to bring and control any action or proceeding with respect to such PDE4 Infringement at its own expense and by counsel of a declaratory judgment action alleging invalidity or noninfringementits own choice, and provide such other party with any available information about Memory shall have the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party at its own expense, to be represented in any such suit, [***] action by counsel of its own choice. If Roche fails to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in bring any such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties proceeding with respect to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, PDE4 Infringement within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, days following the notice of alleged infringement or (b) [***]] days before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, Memory shall have the right to bring and control any such action at its own expense and by counsel of its own choice, and Roche shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. No settlementA Party that elects to bring and control an infringement action pursuant to this Section 13.4 shall provide prompt written notice to the other Party of any such suit commenced or action taken by such Party. Upon written request, consent judgmentthe Party bringing suit or taking action ("Initiating Party") shall keep the other Party informed of the status of any such suit or action and shall provide the other Party with copies of all substantive documents and communications filed in such suit or action. The Initiating Party shall have the sole and exclusive right to select counsel for any such suit or action. The Initiating Party shall, or other voluntary fiscal disposition except as provided below, pay all expenses of the suit may or action, including, without limitation, the Initiating Party's attorneys' fees and court costs. After deducting the Parties' attorneys fees and court costs in connection with any such suit or action, [*] CONFIDENTIAL TREATMENT IS REQUESTED any damages, settlement fees or other consideration received as a result of such suit or action shall belong to the Initiating Party, except to the extent such damages, settlement fees or other consideration are attributable to lost profits with respect to Products in the Territory, which shall form part of the Net Sales for determining amounts due to Memory in any calendar year. If the Initiating Party believes it reasonably necessary, upon written request to the other Party, the other Party shall join as a party to the suit or action but shall be under no obligation to participate except to the extent that such participation is required as the result of its being a named party to the suit or action. At the Initiating Party's written request, the other Party shall offer reasonable assistance to the Initiating Party at no charge to the Initiating Party except for reimbursement of reasonable out-of-pocket expenses incurred by the other Party in rendering such assistance. The other Party shall have the right to participate and have its own representation in any such suit or action at its own expense. The Initiating Party shall have the right to control settlement; provided, however, that no settlement shall be entered into without the written consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such noticeParty, KCI may place up not to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery For the avoidance of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If doubt, Memory shall have the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royaltyright, but not the floor royaltyobligation, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final bring and non-appealable control and action or non-appealedproceeding with respect to any Memory Patent Right relating to infringement other than PDE4 Infringement, and neither Wake Forest nor KCI are able to secure a license from such third partyat its own expense, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written without obligation or notice to Wake Forest of KCI's election to terminate the License under this AgreementRoche.
Appears in 1 contract
Samples: Collaboration and License Agreement (Memory Pharmaceuticals Corp)
Infringement. 12.1 Each party will promptly inform 21.1. Licensee shall have the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During right during the term of this Agreement, KCI will prosecute [***] any infringements Agreement to commence an action for infringement of the Patent RightsPatents against any third party for any infringement occurring within the Field of Use, and, in furtherance provided that Licensee shall provide IITK days' prior written notice of such right, KCM may join Wake Forest as a party in any infringement and of Licensee's intent to file such suit, [***] action. IITK shall have the right at its own expense to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] appear in such action by counsel of its own selection. If required by the jurisdictional laws of the forum that any such action be prosecuted in the name of the owner of the Patent, IITK shall voluntarily appear at Licensee's expense; provided that if such appearance subjects IITK to any unrelated action or claim of a third party or Licensee in such jurisdiction, then IITK shall have the right to decline such appearance. Settlement of any action brought by Licensee shall require the consent of IITK and KCI will Licensee, which neither shall unreasonably withhold from the other, and any settlement amount or recovery for damages shall be responsibleapplied as follows: (i) first, except as provided to reimburse the parties for their expenses in Section 12.2.3connection with the litigation; and (ii) second, IITK shall receive compensation for the [***] time of any IITK personnel involved in such an actionthe action and (iii) third, IITK shall receive x percent (x%) of any monies remaining.
12.2.2 As a first option 21.2. IITK shall have the right in its absolute discretion during the term of this Agreement to commence an action for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent RightsPatents against any third party for any infringement occurring anywhere in the world, KCI will provided that, before commencing any such action concerning the Field of Use, IITK shall provide Licensee not less than days' prior written notice of such infringement and of IITK's intent to file such action. Licensee shall have been unsuccessful the right at its own expense to appear in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto such action by counsel of its intention not own selection. If IITK provides Licensee with such notice before instituting an action concerning the Field of Use and Licensee fails to bring suit initiate an action against any such alleged infringerthird party prior to the commencement of an action by IITK, then (a) [***] and, (b) [***]. No settlement, consent judgment, any settlement amount or other voluntary fiscal disposition of the suit recovery for damages shall belong entirely to IITK and IITK may be entered into settle said action without the consent of KCI, which consent will not unreasonably be withheldLicensee.
12.3.1 In 21.3. Notwithstanding the event that a Declaratory Judgment Action alleging invalidity or non-infringement pendency of any infringement (or other) claim or action by or against Licensee, Licensee shall have no right to terminate or suspend (or escrow) payment of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found any amounts required to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned paid to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights IITK pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Technology Transfer Agreement
Infringement. 12.1 10.1 Each party will promptly inform Party agrees to provide prompt written notice to the other in writing Party of any alleged infringement of the Patent Rights by a third party, or the assertion and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory actionevidence thereof, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldit becomes aware.
12.2.1 10.2 During the term of this Agreement, KCI will Licensee, to the extent permitted by law, shall have the right, but shall not be obligated, to prosecute [***] any at its own expense all infringements of the Patent Rights, Licensed Technology and, in furtherance of such right, KCM Northwestern hereby agrees that Licensee may join Wake Forest include Northwestern as a party plaintiff in any such suit, [***] without expense to Wake ForestNorthwestern, provided, however, that such right to bring such infringement action shall remain in effect only for so long as the license granted herein remains exclusive. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of Prior to commencing any such action, KCI will immediately pay all escrowed litigation Licensee shall consult with Northwestern and shall consider the view of Northwestern regarding the advisability of the proposed action and its effect on the public interest. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the prior written consent of Northwestern. Licensee shall indemnify Northwestern against any order for costs that may be made against Northwestern in such proceedings. Any recovery resulting from an action brought by Licensee shall be distributed as follows:
(a) each Party shall be reimbursed for any expenses it incurred in the action; (b) as to ordinary damages for past infringement , Licensee shall receive an amount equal to either (i) its lost profits, (ii) a reasonable royalty on the infringing sales, or (iii) whatever alternative measure of such damages the court shall have applied, and such amount shall be treated as Net Sales for the purpose of calculating running royalties to Wake Forestunder Section 5.5; and (c) the Parties shall share equally in any additional award, including any special or punitive damages.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 10.3 If six (6) months after having been notified become aware of any alleged infringement of the Patent Rights, KCI will have Licensee has been unsuccessful in persuading the alleged infringer to desist and will either has not have brought and will or is not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest Licensee shall notify Northwestern at any time prior thereto of its intention not to bring suit against any such alleged infringer, then Northwestern shall have the right, at its sole discretion, to prosecute such infringement of the Licensed Technology under its sole control and at its sole expense. In the event Northwestern elects to prosecute an infringement of any Licensed Technology as set forth in this Section 10.3, then (a) [***] andNorthwestern shall keep any recovery or damages for past infringement derived therefrom, and (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of Licensee shall not offer to sublicense the suit may be entered into infringed Licensed Technology to the alleged infringer without the consent of KCI, which consent will not unreasonably be withheldNorthwestern’s written consent.
12.3.1 10.4 In the event that a Declaratory Judgment Action declaratory judgment action alleging invalidity invalidity, unenforceability, or non-infringement noninfringement of any of the Patent Rights will Licensed Technology shall be brought against KCI Northwestern or Wake ForestLicensee, [***].
12.3.2 As a first option for KCINorthwestern, [***]. Upon settlement or final termination at its option, shall have the right, within thirty (30) days after it receives notice of the commencement of such action, provided such to intervene and take over the sole defense of the action (but only to the extent of the Licensed Technology) at its own expense. If Northwestern does not result in a final non-appealable or non-appealed decision that exercise this right, Licensee may take over the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess sole defense of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]action at Licensee's sole expense. No settlement, consent judgment or other voluntary fiscal final disposition of the suit action may be entered into without the prior written consent of KCINorthwestern, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will shall not be unreasonably withheld.
12.4.3 [***] 10.5 In any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned suit that either Party may institute to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI enforce the Licensed Technology pursuant to this Agreement and in any such infringement declaratory judgment action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If that one Party is defending, the exercise other Party hereto shall, at the request and expense of the rights granted KCI herein infringe Party initiating or defending such suit, cooperate in all reasonable respects (including joining as a party if required by law) and, to the rights of a third partyextent possible, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption have its employees testify when requested and without payments by KCImake available relevant records, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licensepapers, information, samples, specimens, and the like.
10.6 For so long as the license granted herein remains exclusive during the term of this Agreement, Licensee shall have the sole right to sublicense any alleged infringer for future use of the Licensed Technology in accordance with the terms and conditions of this Agreement relating to sublicenses. Any upfront fees as part of such a license provide for royalties or sublicense shall be shared equally between Licensee and Northwestern; other payments by KCI revenues to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license Licensee resulting from such third party, all remaining escrowed litigation royalties will a sublicense shall be given treated pursuant to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this AgreementSection 5.6.
Appears in 1 contract
Samples: License Agreement
Infringement. 12.1 Each party will promptly inform 7.1 The LICENSOR and the other in writing LICENSEE shall notify one another as soon as they become aware of any alleged infringement of the Patent Rights AGREEMENT PATENTS by a third partyTHIRD PARTY. They shall supply one another with all items available to them in order to examine the nature and extent of this.
7.2 If one of the Parties believes that the observed infringement is liable significantly to disrupt the LICENSEE’S use of the AGREEMENT PATENTS, or they shall approach the assertion other Party in order to discuss the most appropriate measures in order to bring the infringement to an end.
7.3 If the Parties decide, by joint agreement, that they shall initiate legal proceedings against the THIRD PARTY they shall determine if these legal proceedings should be initiate jointly. The proceedings shall be dealt with jointly. For any issues pertaining to the protection of the AGREEMENT PATENTS, the LICENSOR shall be nominated as the “leader” and shall act following consultation with the LICENSEE and shall take account of any reasonable comments made by the latter. For any matters pertaining to the protection of the LICENSEE’S commercial interests, in particular the assessment of their damages, the latter shall be nominated as “leader” and shall act following consultation with the LICENSOR and shall take account of any reasonable comments made by the latter. The Parties to the proceedings shall ascertain the fees to be paid between them in advance. The indemnities that may be awarded by the courts to both parties to the AGREEMENT shall be shared between them in the same proportion as their respective external costs incurred in the course of these legal proceedings
7.4 If the LICENSEE would like to initiate legal proceedings and the LICENSOR does not wish to, the LICENSEE may, after having given formal notice to the LICENSOR for which no response has been received, pursue action at its own initiative and in its own name. The fees for such proceedings shall be payable by the sole LICENSEE. The awards, including any possible damages of a declaratory judgment action alleging invalidity or noninfringementpunitive nature, and provide such other party with any available information about shall be irrevocably acquired by the infringement or declaratory actionLICENSEE. It is, as however, agreed that after deducting external costs incurred by the case might be. Following such noticeLICENSEE for successfully win the legal proceedings, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third partyindemnities, to the extent such suit exclusion of indemnities of a punitive nature, allocated to LICENSEE shall be included in the NET INCOME and shall be subject to payment of royalty to the LICENSOR at the applicable rate in accordance with this AGREEMENT. It is based upon a claim furthermore agreed that the infringement arises from LICENSOR reserves the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant right to this Agreement. As between Wake Forest intervene at their cost and KCI, [***]risk.
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform the other in writing If either Party learns of (i) any alleged infringement or potential infringement of the Patent Rights Licensed Intellectual Property in the Field of Use by a third partyparty and/or (ii) any claim by a third party that a patent of the Licensed Intellectual Property in the Field of Use is invalid, or it shall promptly notify the assertion of a declaratory judgment action alleging invalidity or noninfringementother Party. In that event, and provide as long as Licensee enjoys the exclusive license granted under Section 3.1 herein, Licensee shall have the first right, but not the obligation, at its own expense, to prosecute such other party with any available information about the infringement or declaratory actionto compromise or settle such claim (an “Action”). If Licensee cannot prosecute or defend such Action in its own name, as Xxxxxxxx agrees to sign and deliver to Licensee the case might bedocuments necessary for Licensee to prosecute or defend such Action in the name of Licensor. Following Licensee shall not compromise or settle such noticeAction in any way that directly and adversely affects the scope, KCI may place [***] first accruing to Wake Forest following validity or enforceability of the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest Licensed Intellectual Property, without Wake Forest's the Licensor’s prior written consent, which consent will shall not be unreasonably withheld.
12.2.1 During umeasonably withheld or delayed. Licensor shall reasonably cooperate with Licensee in connection with such Action, at Licensee’s expense. Any recovery that Licensee receives from such Action or the term compromise or settlement thereof, shall be used to first reimburse Licensee for its out of this Agreement, KCI will prosecute [***] any infringements pocket costs of prosecuting or defending the Patent Rights, and, in furtherance Action (but not such expenses as employee salary or overhead). The sum remaining after deduction of such right, KCM may join Wake Forest Licensee’s out of pocket expenses shall be treated as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then follows: (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts recovery which is based upon lost sales or lost profits, Licensee shall pay to Licensor royalties in excess of accordance with Section 5.2, based upon the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] Net Selling Price used to compute the recovery and (b) for any recovery based upon treble damages, Licensee shall pay Licensor [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, ] percent ([***].
12.4.2 Each party will promptly inform the other in writing %) of the commencement of any such infringement action by a third partyrecovery. Following such noticeIf Licensee elects to not pursue an Action, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentLicensor may, which consent will but shall not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third partyrequired, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseAction on its own, and the terms of such a license provide for royalties or other payments by KCI to such third partyat its own expense, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license keeping any proceeds from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this AgreementAction for itself.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform the other in writing of With respect to any alleged actual or suspected infringement of the Idenix Patent Rights or Joint Patent Rights by a third partyThird Party in the Field:
(i) GSK shall have the initial right to initiate a legal action against such Third Party with respect to such infringement, at GSK’s expense. Idenix shall join in such action as a party at GSK’s request and expense in the event that an adverse party asserts, the court rules or other Laws provide, or the assertion of GSK determines in good faith, that a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations court would lack jurisdiction based on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest Idenix’s absence as a party in any such suit. Idenix may also at any time join in such action and may be represented by counsel of its choice, at Idenix’s expense; but in any event control of such action shall remain with GSK. At GSK’s reasonable request Idenix shall provide reasonable assistance to GSK in connection with such action, provided that GSK will reimburse Idenix for any reasonable out-of-pocket costs associated with such cooperation. GSK shall, through the IP Committee and otherwise upon Idenix’s reasonable request, keep Idenix reasonably informed of the progress and status of such action. Any recoveries resulting from such an action (by settlement or otherwise) shall be applied as follows:
(A) First, to reimburse each Party for all out-of-pocket costs in connection with such proceeding (on a pro rata basis, based on each Party’s respective out-of-pocket costs, to the extent the recovery was less than all such costs); and
(B) Second, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for percent ([**]%) of any remainder shall be paid to Idenix.
(ii) If GSK does not commence and vigorously pursue a legal action to enjoin such infringement within [**] of being notified or otherwise becoming aware of such infringement (or such shorter period of time as necessary to ensure that Idenix may reasonably protect the Idenix Patent Rights or Joint Patent Rights), Idenix may, at its expense, commence the action. GSK shall join in such action as a party at Idenix’s request and KCI will be responsible, except as provided expense in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of an adverse party asserts, the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment court rules or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCILaws provide, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate Idenix determines in good faith, that a royalty reduction court would lack jurisdiction based on GSK’s absence as a party in the earned royalty rate set forth in Section 4.2 and the minimum royaltysuch suit, but not the floor royaltycontrol of such action shall remain with Idenix. At Idenix’s reasonable request, set forth GSK shall provide reasonable assistance to Idenix in Section 4.3 connection with such action provided that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and nonIdenix will reimburse GSK for any reasonable out-appealable or nonof-appealed, and neither Wake Forest nor KCI are able to secure a license pocket costs associated with such cooperation. Any recoveries resulting from such third party, all remaining escrowed litigation royalties will an action shall be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreementretained by Idenix.
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Infringement. 12.1 Each party will promptly inform 14.1. In the other in writing event that LICENSEE shall learn of the infringement of any alleged infringement of patent licensed under this Agreement, LICENSEE shall call LICENSOR’S attention thereto. LICENSEE shall use reasonable efforts to terminate such infringement. If LICENSEE files a lawsuit for patent infringement, LICENSOR shall also be named as a plaintiff. In the Patent Rights by a third party, or event LICENSEE fails to xxxxx the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place infringing activity within [***] first accruing to Wake Forest following the expiration of LICENSOR may itself file a thirty day period after such notice into an escrow account lawsuit for patent infringement, naming LICENSEE as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldnominal party plaintiff.
12.2.1 During 14.2. Each party agrees to cooperate with the term of this Agreement, KCI will prosecute [***] any infringements other in litigation proceedings instituted hereunder but at the expense of the Patent Rightsparty on account of whom suit is brought. Such litigation shall be controlled by the party bringing the suit. LICENSOR at its own expense, and, may be represented by counsel of its choice pursuant to LICENSOR’S determination in furtherance any suit brought by LICENSEE.
14.3. LICENSEE may withhold royalties payable to LICENSOR during the pendency of the suit and until said suit has been finally concluded. To the extent that LICENSEE does not recover attorney’s fees and other out-of-pocket costs as a result of such rightlitigation, KCM such withheld royalties may join Wake Forest be applied to LICENSEES expenses (out-of-pocket and in-house) incurred in connection with such suit and the balance of such withheld royalties, if any, shall be paid to LICENSOR upon disposition of the suit; provided, however, that if as a party in any result of such suit, [***] to Wake Forest. As between wake Forest and KCIall claims of patents included within LICENSOR’S PATENT RIGHTS under which LICENSEE is selling a LICENSED PRODUCT shall be held invalid, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for LICENSEE may retain the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination balance of such action, KCI will immediately pay all escrowed litigation withheld royalties which pertain to Wake Forest.
12.2.3 As such LICENSED PRODUCT until such decision shall be finally reversed by an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, unappealed or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights unappealable decree of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption court of competent jurisdiction and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablehigher dignity.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party (A) Indemnifying Party will promptly inform the other in writing of defend, at its expense, Indemnified Party and its Customers against any alleged infringement of the Patent Rights action, suit or proceeding brought against Indemnified Party or such Customers by a third partyparty alleging infringement or misappropriation of Intellectual Property arising from Indemnified Party’s or such Customers’ use of Indemnifying Party’s Seller-Branded Products, Deliverables or Intellectual Property licensed pursuant to Additional Terms, or the assertion receipt of a declaratory judgment action alleging invalidity or noninfringementIndemnifying Party’s Services (such Seller-Branded Products, Deliverables, Intellectual Property and Services, collectively “Seller-Provided Resources”), and provide will indemnify Indemnified Party and its Customers for all amounts finally awarded by a court or agreed in a settlement and reasonable attorney’s fees resulting from such other party with any available information about action, suit or proceeding, except to the extent that the infringement or declaratory actionmisappropriation arises out of (1) third-party content within such Seller-Provided Resources; (2) a modification of such Seller-Provided Resources other than by Indemnifying Party (unless such modification was authorized by Indemnifying Party); (3) a modification of such Seller-Provided Resources by Indemnifying Party in accordance with Indemnified Party’s specifications or instructions; (4) combination, as operation or use of such Seller-Provided Resources with non-Seller-Provided Resources if the case might be. Following claim of infringement or misappropriation could have been avoided had such noticecombination, KCI may place [***] first accruing operation or use not occurred; (5) use of such Seller-Provided Resources for purposes not contemplated by the Master Agreement, applicable Transaction Documents or applicable Specifications and documentation provided by the Seller; or (6) a Seller-Branded Product or Deliverable that is not at the most current release level if the most current release level is non-infringing and has been made available to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldIndemnified Party at no additional cost.
12.2.1 During (B) If the term Buyer or a Customer is enjoined from, or if the Seller believes the Buyer or a Customer may be enjoined from, using any Seller-Provided Resource as a result of this Agreementany action or proceeding brought by a third party alleging infringement or misappropriation, KCI will prosecute [***] any infringements of or if the Patent RightsSeller believes that such a claim may arise, andthe Seller will, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] addition to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except indemnifying the Buyer as provided in Section 12.2.3this Section, for (1) promptly, at Indemnifying Party’s expense, secure the [***] right to continue using such Seller-Provided Resource, or (2) if this cannot be accomplished with commercially reasonable efforts, then, at Indemnifying Party’s cost and expense, replace or modify such Seller-Provided Resource to make it non-infringing, provided that any such replacement or modification will not degrade the performance or quality of such Seller-Provided Resource, or (3) if neither of the foregoing can be accomplished by Indemnifying Party with commercially reasonable efforts, and only in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringerevent, then the Buyer will, as applicable (a) [***] andreturn the applicable Seller-Branded Product or Deliverable and receive a refund of the amount paid for the affected Product if the claim is brought in the first year after purchase or the depreciated value if the claim is brought thereafter, (b) [***]. No settlementcease use of the applicable Intellectual Property, consent judgmentin which case the Seller will refund any amounts paid for such Intellectual Property, or other voluntary fiscal disposition (c) cease use of the suit may be entered into without applicable Service, in which case the consent of KCISeller will, which consent will not unreasonably be withheld.
12.3.1 In with respect to (i) Support Services, refund any prepaid amounts for the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of applicable Service and the Patent Rights ongoing fees will be brought against KCI or Wake Forestequitably adjusted to reflect such removal, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (bii) [***]Professional Services, refund the amount paid for the applicable Professional Services. No settlement, consent judgment or other voluntary fiscal disposition of The remedies set forth in this Section state the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseSeller’s entire liability, and the terms Buyer’s sole and exclusive remedies, with respect to any infringement or misappropriation by Seller-Provided Resources of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third any third-party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Intellectual Property rights. Master Commercial Agreement.
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Samples: Master Commercial Agreement
Infringement. 12.1 Each party will promptly A. Licensee and CMCC shall each inform the other promptly in writing of any alleged infringement by a third party of the Patent Rights by a third party, or in the assertion Field of a declaratory judgment action alleging invalidity or noninfringement, Use and provide such other party with of any available information about evidence thereof. Confidential materials omitted and filed separately with the infringement or declaratory action, as the case might beSecurities and Exchange Commission. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldAsterisks denote omissions.
12.2.1 B. During the term of this Agreement, KCI will CMCC shall have the right, but shall not be obligated, to prosecute [***] at its own expense any infringements infringement of the Patent Rights, Rights and, in furtherance of such right, KCM Licensee hereby agrees that CMCC may join Wake Forest include Licensee as a party plaintiff in any such suit, without expense to Licensee. The total cost of any such infringement action commenced or defended solely by CMCC shall be borne by CMCC. CMCC shall keep any recovery or damages for past infringement derived therefrom.
C. If within [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rightsinfringement, KCI will CMCC shall have been unsuccessful in persuading the alleged infringer to desist and will shall not have brought and will shall not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest CMCC shall notify Licensee at any time prior thereto of its intention not to bring suit against any alleged infringer then, and in those events only, Licensee shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights in the Field of Use, and Licensee may, for such alleged infringerpurposes, then (a) [***] anduse the name of CMCC as party plaintiff; provided, (b) [***]however, that such right to bring such an infringement action shall remain in effect only for so long as the license granted hereunder remains exclusive. No settlement, consent judgment, judgment or other voluntary fiscal final disposition of the suit may be entered into without the consent of KCICMCC, which consent will shall not be unreasonably withheld. Licensee shall indemnify CMCC against any order for costs that may be withheldmade against CMCC in such proceedings.
12.3.1 D. In the event Licensee shall undertake the enforcement and/or defense of the Patent Rights in the Field of Use by litigation, Licensee may withhold up to [**] percent ([**]%) of the payments otherwise thereafter due to CMCC under Article IV above and apply the same toward reimbursement of up to [**] percent ([**]%) of Licensee's expenses, including reasonable attorney's fees, in connection therewith. Any recovery of damages by Licensee for each such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of Licensee relating to such suit and next toward reimbursement of CMCC for any payments under Article IV past due or withheld and applied pursuant to this Article VII. The balance remaining from any such recovery shall be treated as sublicensing income.
E. In the event that a Declaratory Judgment Action declaratory judgment action alleging invalidity or non-infringement noninfringement of any of the Patent Rights will shall be brought against KCI or Wake ForestLicensee, [***].
12.3.2 As a first option for KCICMCC, [***]. Upon settlement or final termination at its option, shall have the right, within thirty (30) days after commencement of such action, provided such to intervene and participate in the defense of the action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rightsat its own expense.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned F. In any infringement suit which either party may institute to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within enforce the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing party hereto shall, at the request and the expense of the commencement of any party initiating such infringement action by a third party. Following such noticesuit, KCI may place up cooperate in all reasonable respects and, to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentthe extent reasonably possible, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third partyhave its employees testify when requested and make available relevant records, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCIpapers, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseinformation, samples, specimens, and the like.
G. Licensee shall during the exclusive period of this Agreement have the sole right subject to the terms and conditions hereof to sublicense any alleged infringer for future use of the Patent Rights. Any upfront fees paid to Licensee as part of such a license provide for sublicense shall be shared equally between Licensee and CMCC. Any other royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate shall be treated as set forth in Section 4.2 Article IV, Paragraph A.5. Confidential materials omitted and filed separately with the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableSecurities and Exchange Commission. Asterisks denote omissions.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each 6.1 In the event that any Party determines that a third party is making, using or selling a product that may infringe Patents, it will promptly inform notify the other Parties in writing writing. LICENSEE may elect, with the prior written consent of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, FOUNDATION (and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or IRCM if KCI notifies Wake Forest at any time prior thereto of its intention not applicable) to bring suit against any such alleged infringer, then (a) . Such election must be made within [***] and, days of receipt of said written consent from FOUNDATION (band IRCM if applicable). All recoveries in such suit shall belong to LICENSEE except that FOUNDATION (and IRCM if applicable) shall have the right to elect to pay up to [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, ] percent ([***].
12.3.2 As %) of the litigation costs and receive a first option for KCI, percentage of any recovery equal to the percentage of litigation costs paid. FOUNDATION (and IRCM if applicable) must make such election within [***]] days of its receipt of notice that LICENSEE has elected to bring suit. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that FOUNDATION (and IRCM if applicable) shall also have the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found right to choose to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale represented by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI separate counsel in any such infringement action by suit at its own expense. Such expense for separate counsel shall not be considered as part of “litigation costs” for purposes of determining FOUNDATION’s share of any third party recovery in accordance with the sentence above. If LICENSEE elects not to bring a suit against the alleged infringer, it shall promptly notify FOUNDATION of that fact and FOUNDATION (and IRCM if applicable) shall have the right to commence such actions at its own cost and expense, in which escrowed litigation royalties case any recoveries shall belong to FOUNDATION (and IRCM if applicable). In such suits by FOUNDATION (and IRCM if applicable), LICENSEE shall have rights of Wake Forest were used by KCI [***]participation and recovery that are the same as FOUNDATION rights as provided above when LICENSEE elects to xxx.
12.4.5 If the exercise 6.2 Regardless of the rights granted KCI herein infringe the rights of which Party controls a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third partysuit brought against an infringer, all remaining escrowed litigation royalties Parties shall participate in any settlement discussions and each will be given a signatory to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreementany settlement agreement.
Appears in 1 contract
Samples: Exclusive License Agreement (Stealth BioTherapeutics Corp)
Infringement. 12.1 Each party of the EPMG Group and E & R will promptly inform the other promptly in writing of any alleged infringement of the Patent Rights Software by a third party, or the assertion party and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about evidence thereof. E & R shall have the infringement first right, but not the obligation, to enforce any rights held by it in the Software against such infringement, at its own expense and by any means appropriate, including filing suit or declaratory action, as the case might beby obtaining a settlement. Following Any recovery received by E & R pursuant to such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim suit or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not shall be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 retained by E & R. If, within 6 months 90 days after having been notified of an alleged infringement, or any such shorter period if necessary to avoid materially prejudicing EPMG's rights with respect to any response to such alleged infringement of the Patent Rightsinfringement, KCI will have been unsuccessful in persuading the alleged infringer to desist and will E & R has not have brought and will not be brought, or no longer is diligently prosecuting prosecuting, an infringement actionaction against such infringement, and has not otherwise caused the infringement to cease (such as by settlement or grant of a sublicense), or if KCI E & R notifies Wake Forest EPMG at any time prior thereto of its intention not to bring or continue suit against any such alleged infringer, then (aand only under such circumstances) [***] andEPMG will have the right, (b) [***]. No settlementbut will not be obligated, consent judgment, or other voluntary fiscal disposition to prosecute at its own expense any action with respect to such infringement of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-Software. If EPMG brings such an infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such E & R will have the right to participate in that action does not result in a final non-appealable or non-appealed decision at its own expense; provided, however, that the subject patent(s) are invalid or unenforceableregardless of E & R's participation, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No no settlement, consent judgment or other voluntary fiscal final disposition of the suit or action may be entered into that negatively and materially affects E & R's use of the Software without E & R's prior written consent. Any recovery received by EPMG pursuant to such an action shall be used to reimburse EPMG and E & R (if it participates in the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest action), pari passu, for their costs and expenses of the action, and the balance shall be retained 75% by EPMG and 25% by E & R. In any infringement suit or KCI for alleged infringement action, the other party not defending or bringing such suit or action will, at the request and expense of any patent of any third partythe party initiating or defending such suit or action, cooperate in all respects and, to the extent such suit is based upon a claim that the infringement arises from the manufacturepossible, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest have its employees testify when requested and KCImake available relevant records, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such noticepapers, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentinformation, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third partysamples, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, specimens and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablelike.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Settlement Agreement (Innovative Software Technologies Inc)
Infringement. 12.1 Each party will 7.1 LICENSEE shall inform M.I.T. promptly inform the other in writing of any alleged infringement of the Patent Rights PATENT RIGHTS by a third party, or the assertion party and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldevidence thereof.
12.2.1 7.2 During the term of this Agreement, KCI will LICENSEE shall have the right, but shall not be obligated, to prosecute [***] at its own expense any such infringements of the Patent Rights, PATENT RIGHTS and, in furtherance of such right, KCM M.I.T. hereby agrees that LICENSEE may join Wake Forest M.I.T. as a party plaintiff in any such suit, [***] without expense to Wake ForestM.I.T. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, LICENSEE may, for such purposes, use the name of M.I.T. as party plaintiff; provided, however, that such right to bring an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. As between wake Forest No settlement, consent judgement or other voluntary final disposition of the suit may be entered into without the consent of M.I.T. which consent shall not unreasonably be withheld. LICENSEE shall indemnify M.I.T. against any order for costs that may be made against M.I.T. in proceedings commenced and KCIdefended solely by LICENSEE. * CONFIDENTIAL TREATMENT REQUESTED
7.3 In the event that LICENSEE shall undertake the enforcement and/or defense of the PATENT RIGHTS by litigation, KCI will LICENSEE may withhold up to * of the royalties otherwise thereafter due M.I.T. hereunder and apply the same toward reimbursement of up to * of LICENSEE's expenses, including reasonable attorneys' fees, in connection therewith. Any recovery of damages by LICENSEE for any such suit shall be liable applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to the suit, and next toward reimbursement of M.I.T. for [***] in any royalties past due or withheld and applied pursuant to this Article VII. The balance remaining from any such action and KCI will recovery attributable to damages for lost sales shall be responsible, except as provided divided according to the royalty percentages set forth in Section 12.2.3, for the [***] in such an action4.1; any remaining balance shall be paid to LICENSEE.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, 7.4 If within 6 six (6) months after having been notified of any alleged infringement of the Patent Rightsinfringement, KCI will LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and will shall not have brought and will shall not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest LICENSEE shall notify M.I.T. at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] then, and in those events only, M.I.T. shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the PATENT RIGHTS, and, (b) [***]in furtherance of such right, LICENSEE hereby agrees that M.I.T. may include LICENSEE as a party plaintiff in any such suit, without expense to LICENSEE. No settlementThe total cost of any such infringement action commenced or defended solely by M.I.T. shall be borne by M.I.T., consent judgment, and M.I.T. shall keep any recovery or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withhelddamages for past infringement derived therefrom.
12.3.1 7.5 In the event that a Declaratory Judgment Action declaratory judgment action alleging invalidity or non-infringement noninfringement of any of the Patent Rights will PATENT RIGHTS shall be brought against KCI or Wake ForestLICENSEE, [***].
12.3.2 As a first option for KCIM.I.T., [***]. Upon settlement or final termination at * CONFIDENTIAL TREATMENT REQUESTED 11 its option, shall have the right, within sixty (60) days after commencement of such action, provided such to join in the defense of the action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rightsat its own expense.
12.3.3 As an alternative option7.6 In any infringement suit as either party may institute to enforce the PATENT RIGHTS pursuant to this Agreement, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will notthe other party hereto shall, under any circumstances, be liable for any amounts in excess at the request and expense of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Actionparty initiating such suit, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third partycooperate in all respects and, to the extent such suit is based upon a claim that possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens and the infringement arises from like.
7.7 LICENSEE, during the manufacture, use or sale by KCI period of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest , shall have the sole right in accordance with the terms and KCI, [***].
12.4.2 Each party will promptly inform the other in writing conditions herein to sublicense any alleged infringer for future use of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldPATENT RIGHTS.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: License Agreement (Metabolix Inc)
Infringement. 12.1 Each party 6.1 PAC will promptly inform the other protect its PATENT RIGHTS from infringement and prosecute infringers when, in writing of any alleged its sole judgement, such action may be reasonably necessary, proper and justified.
6.2 If COMPANY shall have supplied PAC with written evidence demonstrating to PAC's reasonable satisfaction prima facie infringement of the Patent Rights a claim of a PATENT RIGHT by a third partyparty in the LICENSE FIELDs, or COMPANY may by notice request PAC to take steps to protect the assertion PATENT RIGHT. PAC shall notify COMPANY within three (3) months of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration receipt of a thirty day period after such notice into an escrow account as escrowed litigation royaltieswhether PAC intends to prosecute the alleged infringement. KCI will not settle or compromise any claim or action in a manner If PAC notifies COMPANY that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentit intends to so prosecute, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 IfPAC shall, within 6 three (three) months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not notice to bring suit COMPANY either (i) cause infringement to terminate or (ii) initiate legal proceedings against any such alleged the infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event PAC notifies COMPANY that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action PAC does not result intend to prosecute said infringement COMPANY may, upon notice to PAC, initiate legal proceedings against the infringer at COMPANY's expense and in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] PAC's name if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]so required by law. No settlement, consent judgment or other voluntary fiscal final disposition of the suit which invalidates or restricts the claims of such PATENT RIGHTS may be entered into without the consent of KCIPAC, which consent will shall not unreasonably be unreasonable withheld. COMPANY shall indemnify PAC against any order for payment that may be made against PAC in such proceedings.
12.4.1 KCI will have a duty 6.3 In the event one party shall initiate or carry on legal proceedings to defend enforce any PATENT RIGHT against any alleged infringer in the LICENSE FIELDs, the other party shall fully cooperate with and supply all assistance reasonably requested by the party initiating or carrying on such proceedings. The party which institutes any suit to protect or counterclaim brought against Wake Forest or KCI for alleged infringement enforce a PATENT RIGHT shall have sole control of any patent of any third party, to that suit and shall bear the extent reasonable expenses (excluding legal fees) incurred by said other party in providing such suit assistance and cooperation as is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights requested pursuant to this Agreementparagraph. As between Wake Forest and KCI, [***].
12.4.2 Each The party will promptly inform initiating or carrying on such legal proceedings shall keep the other in writing party informed of the commencement progress of such proceedings and said other party shall be entitled to counsel in such proceedings but at its own expense. Any award paid by third parties as the result of such proceedings (whether by way of settlement or otherwise) shall first be applied to reimbursement of the unreimbursed legal fees and expenses incurred by either party and then the remainder shall be divided between the parties as follows:
(a) (i) If the amount is based on lost profits, COMPANY shall receive an amount equal to the damages the court determines COMPANY has suffered as a result of the infringement less the amount of any such infringement action royalties that would have been due PAC on sales of LICENSED PRODUCT lost by COMPANY as a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise result of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from infringement had COMPANY made such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.sales; and
Appears in 1 contract
Samples: Merger Agreement (Synbiotics Corp)
Infringement. 12.1 8.1. Each party will to this Agreement shall promptly inform notify the other in writing of any alleged material infringement of Licensed Product Patents or Alternative Product Patents or misappropriation of Licensed Product Technology or Alternative Product Technology of which it becomes aware within the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringementTerritory, and shall provide such the other party with any available information about evidence thereof. ImClone shall have the right, but not the obligation, to bring, defend and maintain any appropriate suit, action or proceeding involving any such infringement or declaratory action, as the case might be(an "Infringement Action"). Following ImClone shall give Merck notice of its intention to commence any such notice, KCI Infringement Action and Merck may place [at any time elect to participate in such Infringement Action in accordance with Section 8.2. ***] first accruing Confidential Treatment Requested
8.2. In an Infringement Action brought in accordance with Section 8.1(a), Merck shall, upon the reasonable request of ImClone, cooperate with and assist ImClone by, for example, executing all papers and performing such other acts as reasonably may be required and, at its option, may be represented by counsel of its choice at Merck's expense. Should ImClone lack standing or jurisdiction to Wake Forest following bring any Infringement Action, Merck shall do so at ImClone's request, at ImClone's expense.
8.3. Subject to the expiration right of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle Merck to be represented by counsel of its choice, ImClone shall have the exclusive right to control any Infringement Action brought, defended or compromise any claim maintained by ImClone pursuant to this Section 8.3 or action in a manner by Merck pursuant to the last sentence of Section 8.2; provided, however, that imposes any restrictions or obligations on Wake Forest ImClone may not, without Wake Forest's the prior written consent, consent of Merck (which consent will may not be unreasonably withheld), enter into any agreement or other arrangement effecting a settlement of such Infringement Action.
12.2.1 During 8.4. Subject to Section 8.5 hereof, any damages collected pursuant to this Article VIII (whether by judgment or settlement) first shall be applied to reimburse the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable parties for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed their respective litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]expenses. If the subject patents damages are found insufficient to be invalid or unenforceable in a final non-appealable or non-appealed decisionreimburse both parties for such litigation expenses, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]parties shall receive reimbursement pro rata. All Any remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption shall be justly and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then equitably distributed between the parties will negotiate in good faithorder to reflect the relative benefits, a royalty reduction as reflected in the earned royalty rate royalties provisions set forth in Section 4.2 and hereof, the minimum royalty, parties would have received hereunder but not for the floor royalty, set forth in Section 4.3 such infringement or misappropriation that was the total royalties payable are commercially reasonablesubject of the Infringement Action.
12.4.6 8.5. If the exercise of the rights granted KCI herein are found to infringe the rights Merck shall have given notice of a third party material infringement of Licensed Product Patents or Alternative Product Patents in a decision that is final and non-appealable or non-appealedaccordance with Section 8.1, and neither Wake Forest nor KCI are able ImClone shall have failed to secure bring such an Infringement Action within thirty (30) calendar days of receiving such notice, Merck, at Merck's expense, shall have the right to bring and maintain an Infringement Action; provided, however, that Merck may not, without the prior written consent of ImClone, which consent shall not be unreasonably withheld, enter into any agreement or other arrangement effecting a license from settlement of such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.Infringement ***Confidential Treatment Requested
Appears in 1 contract
Samples: Development and License Agreement (Imclone Systems Inc/De)
Infringement. 12.1 Each party will promptly inform Company shall have the other first right, but not the obligation, to enforce any patent within PATENT RIGHTS and in writing of the LICENSED FIELD against any infringement or alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringementthereof, and provide shall at all times keep JHU informed as to the status thereof. Before Company commences an action with respect to any infringement of such other party with patents, Company shall give careful consideration to the views of JHU and to potential effects on the public interest in making its decision whether or not to xxx. Thereafter, Company may, at its own expense, institute suit against any available information about the infringement such infringer or declaratory action, as the case might be. Following alleged infringer and control and defend such notice, KCI may place suit in a [***] first accruing = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED BECAUSE THE INFORMATION (I) IS NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. manner consistent with the terms and provisions hereof and recover any damages, awards or settlements resulting therefrom, subject to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royaltiesParagraph 4.5. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentHowever, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No no settlement, consent judgment or other voluntary fiscal final disposition of the suit that limits the scope of any PATENT RIGHTS in any material respect or which places an affirmative obligation on JHU may be entered into without the prior written consent of KCIJHU, which consent will shall not be unreasonably withheld or delayed. This right to xxx for infringement shall not be withheld.
12.4.1 KCI will have used in an arbitrary or capricious manner. JHU shall reasonably cooperate in any such litigation at Company’s expense, including joining such litigation if JHU is a duty necessary party to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of the litigation, without whose joinder, Company may not pursue such action. If Company elects not to enforce any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCIPATENT RIGHTS, [***].
12.4.2 Each party will promptly inform the other Company shall so notify JHU in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of within [***] into of receiving notice that an escrow account as escrowed litigation royalties. KCI will not settle or compromise infringement exists, and JHU may, at its own expense, take steps to enforce any patent and control, settle, and defend such action suit in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If consistent with the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption terms and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseprovisions hereof, and the terms of such a license provide recover, for royalties its own account, any damages, awards or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablesettlements resulting therefrom.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will Party shall promptly inform provide written notice to the other in writing Party during the Agreement Term of any alleged known infringement or suspected infringement of the any patent or patent application under NPS Patent Rights by a third partyThird Party (hereinafter “Infringement”). Each Party shall promptly provide written notice to the other Party during the Agreement Term of any known infringement or suspected infringements of any patent or patent application under NPS Patent Rights by a Third Party making, using, offering for sale, selling, or importing a 5-HT6 receptor antagonist or a product containing a 5-HT6 receptor antagonist (hereinafter “5-HT6 Infringement”). Memory shall have the assertion first right to bring and control any action or proceeding with respect to such 5-HT6 Infringement [*] and by counsel of a declaratory judgment action alleging invalidity or noninfringementits own choice, and provide such other party with any available information about NPS shall have the infringement or declaratory actionright, as the case might be. Following such notice, KCI may place [***] first accruing ], to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party represented in any such suit, [***] action by counsel of its own choice. If Memory fails to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in bring any such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties proceeding with respect to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, 5-HT6 Infringement within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, days following the notice of alleged infringement or (b) [*] days before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, NPS shall have the right, but not the obligation, to bring and control any such action [*] and by counsel of its own choice, and Memory shall have the right, [*], to be represented in any such action by counsel of its own choice. A Party that elects to bring and control an infringement action pursuant to this Section 13.4 shall provide prompt written notice to the other Party of any such suit commenced or action taken by such Party. Upon written request, the Party bringing suit or taking action (“Initiating Party”) shall keep the other Party informed of the status of any such suit or action and shall provide the other Party with copies of all substantive documents and communications filed in such suit or action. The Initiating Party shall have the sole and exclusive right to select counsel for any such suit or action. The Initiating Party shall, except as provided below, [*] If the Initiating Party believes it reasonably necessary, upon written request to the other Party, the other Party shall join as a party to the suit or action but shall be under no obligation to participate except to the minimal extent that such participation is required as the result of its being a named party to the suit or action and provided the Initiating Party provides [*]. No At the Initiating Party’s written request, the other Party shall offer reasonable assistance to the Initiating Party at no charge to the Initiating Party except for [*]. The other Party shall have the right to participate and have its own representation in any such suit or action at its own expense. The Initiating Party shall have the right to control settlement; provided, consent judgmenthowever, or other voluntary fiscal disposition of the suit may that no settlement shall be entered into without the written consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such noticeParty, KCI may place up not to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party 7.1. LICENSOR shall defend, at its own expense, any action against either LICENSOR or LICENSEE based on a claim that the LICENSED INTELLECTUAL PROPERTY infringes a United States or foreign patent, or United States or foreign copyright or involves misappropriation of a trade secret. LICENSOR will promptly inform the other in writing pay such damages or costs as are finally awarded against LICENSOR or LICENSEE for such infringement or misappropriation provided that LICENSEE gives LICENSOR: (a) prompt written notice of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for of all prior related claims; (b) sole control of the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon defense and settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]; and (c) full cooperation (at LICENSOR’s expense) in any defense or settlement. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, LICENSOR shall not be liable for any amounts fees, costs or damages incurred without such prior written notice, control and cooperation.
7.2. Exclusive Remedy. Should any LICENSED INTELLECTUAL PROPERTY become, or in excess LICENSEE's opinion be likely to become, the subject of a claim of infringement or trade secret misappropriation as set forth in Article 7.1 above, LICENSEE shall give prompt written notice to LICENSOR of the escrowed litigation royalties.
12.2.4 Ifexistence or likelihood of filing of a claim for infringement or trade secret misappropriation. Upon receipt of such written notice, within 6 months after having been notified of any alleged infringement of the Patent RightsLICENSOR, KCI will have been unsuccessful in persuading the alleged infringer to desist at its option and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then expense shall either: (a) [***] and, obtain for LICENSEE the right to continue using the LICENSED INTELLECTUAL PROPERTY free of any claim of infringement or misappropriation; (b) [***]. No settlement, consent judgment, replace or other voluntary fiscal disposition modify the LICENSED INTELLECTUAL PROPERTY so its use becomes non-infringing or otherwise lawful; or (c) terminate this License Agreement with respect to the infringing portion of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 LICENSED INTELLECTUAL PROPERTY. In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election LICENSOR elects to terminate the this License under this Agreement, LICENSEE shall proceed to return any and all Intellectual Property provided to LICENSEE by LICENSOR.
Appears in 1 contract
Infringement. 12.1 Each A: If MDM considers or becomes aware that a third party will promptly inform is infringing a patent with respect to the PRODUCT, it shall immediately notify OV and provide it with any evidence of such infringement which is reasonably available. OV shall have the right but not the obligation, at its own expense, to attempt to remove such infringement by commercially appropriate steps, including a lawsuit. If required by law, MDM shall join such suit as a party, at its expense. In the event OV notifies MDM of its election not to enforce the patent rights, or fails to take commercially appropriate steps with respect to such infringement within six (6) months following notice of such infringement, MDM shall have the right to do so at its expense.
B: Any amounts recovered by the party(ies) enforcing the patent rights pursuant to Section 14A, whether by settlement or judgment, shall be allocated between MDM and OV in such a manner as to reflect the parties' respective economic interests in the cessation of the infringement and the monetary damages that resulted from such infringement, after deduction of the enforcing party's(ies') reasonable expenses in making such recovery.
C: A party not enforcing the patent rights pursuant to Section 14A shall provide reasonable assistance to the other in writing party, including providing access to relevant documents and other evidence and making its employees available, subject to the enforcing party's reimbursement of any alleged out-of-pocket expenses incurred by the other party.
D: Nothing contained herein shall be construed as a warranty or representation that any PRODUCT will be free from infringement of the Patent Rights patents of third parties. If any warning letter or other notice of infringement is received by a third party, or the assertion an action, suit, proceeding, inquiry or investigation is brought against a party alleging infringement of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from party in the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement PRODUCT (an "Action"), the parties shall promptly discuss and decide the best way to respond. OV shall have the option to assume the defense of any such infringement action by a third partyAction upon the delivery to MDM of written notice of its election so to do. Following After delivery of such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent OV will not be unreasonably withheld.
12.4.3 [***] liable to MDM for any such infringement action fees of counsel subsequently incurred by any third party [***]. All remaining escrowed litigation royalties will be promptly returned MDM with respect to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI the same Action; provided that: (i) MDM shall have the right to employ MDM's counsel in any such infringement action Action at MDM's expense and (ii) if (A) the employment of counsel by MDM has been previously authorized by OV or (B) MDM shall have reasonably concluded that there may be a conflict of interest between OV and MDM in the conduct of any third party such defense. The costs incurred by OV in defending the Action will be allocated between MDM and OV in such a manner as to reflect the parties' respective economic interests in the patent rights at issue. If such Action results in a judgment or settlement which escrowed litigation royalties prevents the sale by MDM of Wake Forest were used by KCI [***]the PRODUCT, this AGREEMENT shall terminate immediately and MDM shall cease all promotion, sale and advertising of the PRODUCT.
12.4.5 If E: The provisions of this Section 14 shall survive the exercise expiration or sooner termination of the rights granted KCI herein infringe the rights Term of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablethis AGREEMENT.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Development and Distribution Agreement (Orthovita Inc)
Infringement. 12.1 Each 7.1 CONSORTIUM shall inform NEOMAGIC promptly in writing of any alleged or potential infringement of the Patent Rights by a third party will which comes to its attention and of any available evidence thereof. Similarly, NEOMAGIC shall inform CONSORTIUM promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion party which comes to its attention and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about evidence thereof.
7.2 NEOMAGIC shall have the infringement or declaratory actionright, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will but shall not be unreasonably withheld.
12.2.1 During the term of this Agreementobligated, KCI will to prosecute [***] at its own expense, at any infringements of the Patent Rightstime, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful and NEOMAGIC may, for such purposes, use the name of CONSORTIUM as party plaintiff in persuading any such suit, without expense to CONSORTIUM. The total cost of any such infringement action commenced or defended by NEOMAGIC shall be borne by NEOMAGIC and any recovery or damages derived therefrom shall be divided between NEOMAGIC and CONSORTIUM as follows: eighty-four percent (84%) to NEOMAGIC and sixteen percent (16%) to CONSORTIUM (or eighty-nine percent (89%) to NEOMAGIC and eleven percent (11%) to CONSORTIUM, if CONSORTIUM was not involved, in any way, in the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement actionintroduction of, or if KCI notifies Wake Forest at any time prior thereto of its intention not negotiation with, the third party), provided that all expenses described in 1.8(i) - (iv) related to bring suit such recovery paid or payable by NEOMAGIC shall first be reimbursed to NEOMAGIC. CONSORTIUM shall assist NEOMAGIC in defending against any counter suit resulting from such alleged infringerproceedings, then (a) [***] while NEOMAGIC will be responsible for paying any costs resulting from an order or judgment that may be made against NEOMAGIC or CONSORTIUM in such proceedings. Other than reimbursement for expenses and payments as described above in this Section 7.2, Consortium will receive no fees or other compensation for services rendered in support of any litigation or court action. Consortium further agrees that any settlement in NEOMAGIC’s favor related to its current litigation with Trident Microsystems, Inc. will be fully excluded from any payment or settlement and, (b) [***]. No settlementas such, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheldis fully excluded from all consideration under this Agreement.
12.3.1 7.3 In the event that a Declaratory Judgment Action alleging invalidity or non-any infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found suit either party may institute to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within enforce the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing party hereto shall, at the request of the commencement of any party initiating such infringement action by a third party. Following such noticesuit, KCI may place up cooperate in all respects and, to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentthe extent possible, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third partyhave its employees testify when requested and make available relevant records, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCIpapers, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseinformation, samples, specimens, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablelike.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 i. Each party will promptly Party shall inform the other Party promptly in writing if it (or its Affiliates) becomes aware of any alleged infringement actual, threatened or suspected infringement, misuse or challenge of any Joint IP in the Patent Rights Territory.
ii. Without prejudice to clause 15 (Confidentiality), further to Clause 4.4.1, each Party (for purposes of this sub-clause a “First Party”) shall have the right but not the obligation to take action, file suit and enforce the Joint IP against such infringing third party, and to defend an action filed by a third party seeking to declare its rights as to any Joint IP in the Territory and to bring counterclaims to enforce the Joint IP against such third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place at its [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action ], in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute its [**] and under its [**] any infringements and [**] (with the other Party (for purposes of this sub-clause a “Second Party”) having the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party right to participate in any such suit, action and be represented at its [***] ], if it so desires, by counsel of its own selection therein to Wake Forest. As between wake Forest and KCIthe extent legally permissible), KCI will be liable for save that the First Party electing to take any action shall consult with the 37155043.2 [**] = CERTAIN CONFIDENTIAL INFORMATION OMITTED Second Party with regard to any material aspect of enforcement, shall have due regard to any reasonable representations made by the Second Party and shall not acknowledge Third Party rights or claims, and shall not settle any action, proceeding or dispute without the Second Party’s prior written consent (such consent not to be unreasonably withheld or delayed). The Second Party shall in any case assist, and join in any action as requested or required to maintain the action, subject to being indemnified in a reasonable manner as to any costs, damages, expenses or other liability and shall have the right to be separately represented by its own counsel at its own expense. If any damages or other sums are received by the First Party taking action (whether awarded by a court or paid by or on behalf of the infringing third party in an out-of-court settlement) as a result of any action that the First Party may take, suit it may file or other enforcement activity, the Second Party shall be entitled to retain from such damages or other sums paid an amount equal to its [**] and [**] which it has incurred in assisting in such action and KCI will be responsibleaction, except as provided in Section 12.2.3, for suit or enforcement activity together with a sum equal to [**] per cent of the monies so recovered by the First Party. Any remaining sum shall go to the [**] taking such action, provided that if the sum received is insufficient to cover the First and Second Party’s [**] in such an action.
12.2.2 As a first option for KCI, and [**] which were incurred in taking such action, then the First and Second Parties shall [**] the sum received [**] according to their [**] and [**]. Upon settlement or final termination of However, where both Parties have elected to participate in such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, such action shall be managed in accordance with clause and the proceeds so recovered shall be allocated [***]. All remaining escrowed litigation royalties will be immediately returned % to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist USWM and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and]% to BPL in respect of any infringement directly arising in respect of the Territory, (b) or, where the claim against such third party is in respect of an infringement of Joint IP arising with respect to the Territory and an infringement of equivalent Intellectual Property Rights in the Reserved Territory, the proceeds so recovered shall be allocated [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, % to BPL and [***]% to USWM (in each case, after each Party has recovered its respective out of pockets costs and expenses or shared them pro rata).
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Distribution, Development, Commercialization & Supply Agreement (Supernus Pharmaceuticals, Inc.)
Infringement. 12.1 Each party will promptly inform (a) If either Party shall learn of a claim or assertion that the other manufacture, use or sale of the Product in writing the Territory infringes or otherwise violates the intellectual property rights of any alleged infringement of Third Party or that any Third Party violates the Patent Rights intellectual property rights owned or Controlled by a third party, (i) Zogenix in the Product or the assertion of a declaratory judgment action alleging invalidity Zogenix Trademarks in the Territory or noninfringement(ii) Mallinckrodt in the Mallinckrodt Trademarks, then the Party becoming so *** Certain information on this page has been omitted and provide such other party filed separately with any available information about the infringement or declaratory actionCommission. Confidential treatment has been requested with respect to the omitted portions. informed shall promptly, as the case might be. Following such notice, KCI may place but in all events within [***] first accruing thereof, notify the other Party to Wake Forest following this Agreement of the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in assertion. In the event Zogenix receives a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's notice under Paragraph IV of the U.S. Federal Drug Price Competition and Patent Term Restoration Act of 1984, as amended, also known as the Xxxxx-Xxxxxx Act, with respect to the Product, Zogenix shall provide Mallinckrodt with written consent, which consent will not be unreasonably withheld.
12.2.1 During the term notice of this Agreement, KCI will prosecute such Paragraph IV notice [***] (each, a “Paragraph IV Notice”).
(b) In the event of any infringements infringement of Zogenix patent rights related to the Patent RightsProduct or its manufacture, anduse or sale, or the Zogenix Trademarks in the Territory, which infringement involves a product that could or does compete with the Product or could adversely affect the Parties’ interests in the Product under this Agreement, Zogenix shall, in furtherance of its sole discretion determine to take the appropriate legal action (as to any Party to redress a Third Party infringement, an “Enforcement Action”), if any. In the event such rightan Enforcement Action is initiated, KCM may join Wake Forest Zogenix shall use commercially reasonable efforts to prosecute such matter and shall [***]. At Zogenix’s reasonable request, Mallinckrodt shall cooperate fully with Zogenix with respect to any such Enforcement Action, and Zogenix shall [***]. Any recovery received as a party in result of any such suitEnforcement Action [***], and any amounts remaining thereafter allocable as compensation for [***] during the Term shall be [***] to Wake Forest. As between wake Forest Mallinckrodt and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an actionto Zogenix.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (ac) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment of an Enforcement Action alleging invalidity or non-infringement of by Mallinckrodt with respect to any of the Patent Rights will be brought against KCI or Wake ForestMallinckrodt Trademark, [***].
12.3.2 As a first option for KCIat Mallinckrodt’s reasonable request, [***]. Upon settlement or final termination of Zogenix shall cooperate fully with Mallinckrodt with respect to any such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Enforcement Action, then (a) [***] and (b) [***]Mallinckrodt shall reimburse Zogenix for its reasonable out-of-pocket expenses incurred in providing such cooperation. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages achieved by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI Mallinckrodt with respect to such third party, then Enforcement Action shall be solely for the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableaccount of Mallinckrodt.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 (a) Each party will Party shall promptly inform report in writing to the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During Party during the term of this Agreement, KCI will prosecute [***] any infringements with respect to the Licensed Diagnostic Products and the subject matter of the Patent RightsCollaboration, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement (i) known infringement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-suspected infringement of any of the Patent Rights will be brought against KCI Rights, (ii) known infringement or Wake Forestsuspected infringement of any of the Copyrights, [***]or (iii) unauthorized use or misappropriation of Know-How or Confidential Information by a third party of which it becomes aware, and shall provide the other Party with all available evidence supporting said infringement, suspected infringement or unauthorized use or misappropriation.
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment Each Party shall have the right to initiate an infringement or other voluntary fiscal disposition of the appropriate suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third partyparty who at any time has infringed, or is suspected of infringing, any of such Party's solely owned Patent Rights or Copyrights or of using without proper authorization all or any portion of such Party's solely owned Know-How. Except as provided in subsection (d) below, AFFX shall have the first right to the extent such initiate an infringement or other appropriate suit against any third party who at any time has infringed, or is based upon a claim that the infringement arises from the manufacturesuspected of infringing, use or sale by KCI any of products and/or processes within the Patent Rights pursuant constituting Joint Collaboration Technology or Copyrights constituting Joint Collaboration Technology or of using without proper authorization all or any portion of the Know-How constituting Joint Collaboration Technology. With respect to this Agreementany suit involving such Joint Collaboration Technology, AFFX shall give BMX sufficient advance notice of its intent to file said suit and the reasons therefor, and shall provide BMX with an opportunity to make suggestions and comments [ * ] Confidential Treatment Requested by Affymetrix, Inc.
(c) AFFX shall have the sole and exclusive right to select counsel for any suit involving the Joint Collaboration Technology referred to in subsection (b) above and shall, except as provided below, pay all expenses of the suit, including without limitation attorneys' fees and court costs. As between Wake Forest and KCIBMX, [***].
12.4.2 Each party will promptly inform the other in writing of its sole discretion, may elect, within sixty (60) days after the commencement of any such infringement action by litigation, to contribute a third party. Following such notice, KCI may place fixed percentage of up to a maximum of [***[ * ] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe costs incurred by AFFX in connection with such litigation, including, without limitation, reimbursement of AFFX's expenses hereunder. If it so elects, any damages, royalties, settlement fees or other consideration received by AFFX or any of its Affiliates for past infringement or misappropriation as a result of such litigation shall be shared by the rights Parties pro-rata based on their respective sharing of a third party, Wake Forest may elect to pursue a license from the costs of such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a licenselitigation. In the event Wake Forest authorizes KCI that BMX elects not to secure contribute to the costs of such litigation, AFFX and/or its Affiliates shall be entitled to retain any damages, royalties, settlement fees or other consideration for past infringement or misappropriation resulting therefrom. If necessary or desirable, BMX shall join as a licenseparty to the suit but shall be under no obligation to participate except to the extent that such participation is required as the result of being a named party to the suit. If AFFX requires BMX to join in such suit and BMX has not elected to contribute to the costs of such
(d) In the event that AFFX elects not to initiate an infringement or other appropriate suit involving the Joint Collaboration Technology pursuant to subsection (b) above, AFFX shall promptly advise BMX of its intent not to initiate such suit, and BMX shall have the terms right, at its expense, of initiating an infringement or other appropriate suit against any third party who at any time has infringed, or is suspected of infringing, any of the Patent Rights constituting Joint Collaboration Technology or Copyrights constituting Joint Collaboration Technology or of using without proper authorization all or any portion of the Know-How constituting Joint Collaboration Technology. In exercising its rights pursuant to this subsection (d), BMX shall have the sole and exclusive right to select counsel and shall, except as provided below, pay all expenses of the suit including without limitation attorneys' fees and court costs. AFFX in its sole discretion, may elect, within sixty (60) days after the commencement of such litigation, to contribute a license provide for royalties or other payments fixed percentage [ * ] Confidential Treatment Requested by KCI to such third partyAffymetrix, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.Inc.
Appears in 1 contract
Infringement. 12.1 (a) Each party will promptly inform Party shall give the other in writing Party notice of any alleged infringement or threatened infringement of the Patent Rights by a third party, or the assertion any of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party Party's Trademarks used in connection with any available information about the Product. Each Party shall determine in its sole discretion what action, if any, to take in response to the infringement or declaratory actionthreatened infringement of that Party's Trademark, as other than the case might bePrimary Brand Trademark, which shall be subject to subsection (b) below. Following In the event that one Party chooses to take enforcement action in response to the infringement or threatened infringement of its Trademark, the other Party shall reasonably cooperate in such noticeenforcement; provided, KCI may place however, the enforcing Party shall reimburse the other Party for reasonable expenses incurred by the other Party that are related to such enforcement.
(b) As to the Primary Brand Trademark only, Aviron shall have the initial right to institute legal proceedings against such Third Party, which proceedings shall be at [***] first accruing Wyeth-Ayerst shall reasonably coordinate with Aviron in the prosecution of such proceedings. Should Aviron elect not to Wake Forest institute proceedings against such Third Party within [***] following a notice thereof in response to the expiration infringement or threatened infringement of a thirty day period after the Primary Brand Trademark, Wyeth-Ayerst shall then be entitled to institute proceedings in its own name [***]. Aviron shall reasonably cooperate with Wyeth-Ayerst in the prosecution of such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldproceedings.
12.2.1 During (c) The Parties shall cooperate in good faith with respect to all Trademark enforcement actions hereunder, and each Party shall notify the term other Party promptly of this Agreementall substantive developments with respect to such Trademark enforcement actions, KCI will prosecute including, but not limited to, all material filings, court papers and other related documents. Each Party shall consider the timely given, reasonable comments and advice of the other Party with respect to the strategy employed and submissions made relative to any Trademark enforcement actions. [***] any infringements of the Patent Rights, and, damages or other monetary relief obtained in furtherance of such right, KCM may join Wake Forest as a party in any such suit, connection therewith. -------- [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action= CONFIDENTIAL TREATMENT REQUESTED.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform (a) LICENSOR agrees to enforce its patents within the other PATENT RIGHTS from infringement and sue xxxringers when in writing its sole judgement such action may be reasonably necessary, proper and justified.
(b) Notwithstanding the provisions of any alleged Article 8(a) above, provided LICENCEE shall have supplied LICENSOR with evidence comprising a prima facie case of infringement of the Patent Rights PATENT RIGHTS by a third partyparty hereto SELLING significant quantities of products in competition with LICENCEE's or an AFFILIATE's or a SUBLICENCEE's SALE of LICENCED PRODUCTS hereunder, or LICENCEE shall be entitled to notify LICENSOR in writing requesting LICENSOR to take steps to enforce the assertion of a declaratory judgment action alleging invalidity or noninfringement, PATENT RIGHTS and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements LICENSOR shall within three (3) months of the Patent Rights, and, in furtherance receipt of such written request either:
(i) cause said infringement to terminate (including termination for whatever cause); or
(ii) initiate legal proceedings against the infringer; or
(iii) grant LICENCEE the right, KCM may join Wake Forest as a party in any such suitat LICENCEE's sole expense, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against the infringer for infringement of the PATENT RIGHTS.
(c) the provisions of Article 8(b) hereof shall not come into effect or continue in effect as to such country while LICENSOR is carrying on any such legal proceeding against two such parties therein.
(d) In the event either party hereto shall initiate or carry on legal proceedings to enforce the PATENT RIGHTS against an alleged infringer, then (a) [***] andas provided herein, (b) [***]. No settlement, consent judgment, the other party hereto shall fully co-operate with the party initiating or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheldcarrying on such proceedings.
12.3.1 (e) In the event that a Declaratory Judgment Action alleging invalidity LICENSOR shall institute suit or non-infringement other legal proceedings to enforce the PATENT RIGHTS, it shall have sole control of any of the Patent Rights will be brought against KCI or Wake Forest, [***]such suit.
12.3.2 As a first option for KCI(f) In the event LICENCEE shall institute suit or other legal proceedings under Article 8(b) above to enforce the PATENT RIGHTS, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found LICENSOR shall be entitled to be invalid represented by counsel of its choosing, at its sole expense, and LICENCEE shall be entitled to retain all damages. LICENCEE shall not discontinue or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of settle any such infringement action proceedings brought by a third party. Following such noticeit without obtaining the concurrence of LICENSOR, KCI may place up not to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of giving LICENSOR a timely opportunity to continue such a license provide for royalties or other payments by KCI to such third partyproceedings in its own name, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealedunder its sole control, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreementat its sole expense.
Appears in 1 contract
Samples: Licence Agreement (Leukosite Inc)
Infringement. 12.1 Each party will 7.1 Either Party shall promptly inform the other Party in writing of any alleged infringement of the Patent Rights by a third party, or party and shall provide the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party Party with any available information about evidence thereof. Neither Party shall notify a third party of the infringement or declaratory action, as of Patent Rights without first consulting with the case might beother Party. Following such notice, KCI may place [***] first accruing Both Parties shall use reasonable efforts and cooperation to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest terminate infringement without Wake Forest's written consent, which consent will not be unreasonably withheldlitigation.
12.2.1 7.2 During the term of this AgreementTerm, KCI will Licensee shall have the first right, but not the obligation, to prosecute [***] any at its own expense all infringements of the Patent Rights, Rights and, in furtherance of such right, KCM Foundation hereby agrees that Licensee may join Wake Forest include Foundation and the Other Institutions as a party plaintiff in any such suit, [***] without expense to Wake ForestFoundation and the Other Institutions provided, however, that such right to bring such an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. As between wake Forest The total cost of any such infringement action commenced or defended solely by Licensee shall be borne by Licensee. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of Foundation, which consent shall not unreasonably be withheld. Licensee shall indemnify Foundation and KCI, KCI will the Other Institutions against any order for costs that may be liable for [***] made against Foundation or the Other Institutions in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an actionproceedings.
12.2.2 As a 7.3 In the event that Licensee shall undertake the enforcement and/or defense of the Patent Rights by litigation, Licensee may withhold up to fifty percent (50%) of the payments otherwise due Foundation under Article 4 herein and apply the same toward reimbursement of up to half of Licensee’s third-party litigation expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery of damages by Licensee for each such suit shall be applied first option in satisfaction of any unreimbursed expenses and legal fees of Licensee relating to such suit, and next toward reimbursement of Foundation for KCIany payments under Article 4 past due or withheld and applied pursuant to this Article 7. Licensee shall receive sixty percent (60%), [***]. Upon and Foundation shall receive forty percent (40%) of the balance of any recovery, damages, or settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forestproceeds after the foregoing allocation is performed.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, 7.4 If within 6 six (6) months after having been notified of any alleged infringement of the Patent Rightsinfringement, KCI will Licensee shall have been unsuccessful in persuading the alleged infringer to desist and will shall not have brought and will shall not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest Licensee shall notify Foundation at any time prior thereto of its intention not to bring suit against any alleged infringer then, and in those events only, Foundation shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and Foundation may, for such alleged infringerpurposes, then use the name of Licensee as party plaintiff.
7.5 In the event that Foundation shall undertake enforcement and/or defense of the Patent Rights litigation, any recovery, damages or settlement derived from such action shall be applied first in satisfaction of any unreimbursed expenses and legal fees of Foundation. Foundation shall receive sixty percent (a60%), and Licensee shall receive forty percent (40%) [***] andof the balance of any recovery, (b) [***]. No settlement, consent judgmentdamages, or other voluntary fiscal disposition of settlement proceeds after the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheldforegoing allocation is performed.
12.3.1 7.6 In the event that a Declaratory Judgment Action declaratory judgment action alleging invalidity or non-infringement noninfringement of any of the Patent Rights will shall be brought against KCI or Wake ForestLicensee, [***].
12.3.2 As a first option for KCIFoundation, [***]. Upon settlement or final termination at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action at its own expense, provided that Foundation consults with and keeps Licensee promptly informed regarding such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rightsdeclaratory judgment action.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned 7.7 In any infringement suit as either Party may institute to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within enforce the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing Party hereto shall, at the request and expense of the commencement of any Party initiating such infringement action by a third party. Following such noticesuit, KCI may place up cooperate in all respects and, to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentthe extent possible, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise have its employees (and employees of the rights granted KCI herein infringe the rights of a third partyUniversity) testify when requested and make available relevant records, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCIpapers, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseinformation, samples, specimens, and the like.
7.8 Licensee shall have the sole right in accordance with the terms and conditions herein to sublicense any alleged infringer for future use of the Patent Rights. Any upfront fees as part of such a license provide for royalties or other payments by KCI sublicense shall be first be used to such third party, then reimburse the parties will negotiate in good faith, a royalty reduction in costs of the earned royalty rate set forth in Section 4.2 Party bringing the infringement action against the infringer and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties balance will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.shared with Foundation in accordance with Section 4.l(e); other royalties shall be treated per Article
Appears in 1 contract
Infringement. 12.1 Each party (a) Go2Group will defend or settle, at its expense, any action brought against Licensee based upon the claim that the Software, if used within the scope of the License granted under this XXXX, directly infringe a registered United States, European Union or Commonwealth patent or copyright; provided, however, that: (i) Licensee shall notify Go2Group promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with claim; (ii) Licensee shall not enter into any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle settlement or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake ForestGo2Group's prior written consent, which consent will not be unreasonably withheld.
12.2.1 During the term ; (iii) Go2Group shall have sole control of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsiblesettlement negotiations; and (iv) Licensee shall provide Go2Group with information and assistance, except as at Go2Group's request and expense, necessary to settle or defend such claim. Go2Group agrees to pay all damages and costs finally awarded against Licensee attributable to such claim. The foregoing states the sole liability of Go2Group and the exclusive remedy of Licensee for any infringement of intellectual property rights by the Software or any other items provided in Section 12.2.3, for the [***] in such an actionby Go2Group hereunder.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgmentIf the Software becomes, or other voluntary fiscal disposition in the opinion of Go2Group may become, the suit may be entered into without the consent subject of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-claim of infringement of any third party right, Go2Group may, at its option and in its discretion: (i) procure for Licensee the right to use the Software free of any liability; (ii) replace or modify the Software to make it non-infringing; or (iii) refund the License Fee.
(c) Licensee will defend or settle, at its expense, any action brought against Go2Group based upon the claim that any modifications to the Software by Licensee or combination or use by Licensee of the Patent Rights will be brought against KCI Software with other products infringes or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of violates any third partyparty right; provided, to the extent such suit is based upon a claim that the infringement arises from the manufacturehowever, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will that: (i) Go2Group shall notify Licensee promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] claim; (ii) Go2Group shall not enter into an escrow account as escrowed litigation royalties. KCI will not settle any settlement or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest claim without Wake ForestLicensee's prior written consent; (iii) Licensee shall have sole control of any such action and settlement negotiations; and
(iv) Go2Group shall provide Licensee with information and assistance, which consent will at Licensee's request and expense, necessary to settle or defend such claim. Licensee agrees to pay all damages and costs finally awarded against Go2Group attributable to such claim. Go2Group’s remedies under this subsection are in addition to and not be unreasonably withheldin lieu of other available remedies for unauthorized modification of the Software or any other breach by Licensee of Section 10 of this XXXX.
12.4.3 [***] (d) Notwithstanding subparagraph (a) of this paragraph, Go2Group assumes no liability hereunder for, and shall have no obligation to defend Licensee or to pay costs, damages or attorney's fees in connection with, any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise claim based upon Licensee’s use of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third Software in combination with third-party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments software not approved by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableGo2Group.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: End User License Agreement
Infringement. 12.1 Each party 8.1 GENERAL will promptly inform the other protect its PATENT RIGHTS from infringement and prosecute infringers when, in writing of any alleged its sole judgment, such action may be reasonably necessary, proper and justified.
8.2 If NYMOX shall have supplied GENERAL with written evidence demonstrating to GENERAL's reasonable satisfaction prima facie infringement of the Patent Rights a claim of a PATENT RIGHT by a third party, or NYMOX may by notice request GENERAL to take steps to protect the assertion of a declaratory judgment action alleging invalidity or noninfringementPATENT RIGHT, and provide such other party with any available information about unless GENERAL shall within three (3) months of the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration receipt of a thirty day period after such notice into an escrow account as escrowed litigation royaltieseither (i) cause infringement to terminate or (ii) initiate legal proceedings against the infringer, NYMOX may, upon notice to GENERAL, initiate legal proceedings against the infiinger at NYMOX's expense and in GENERAL's name if so required by law. KCI will not settle or compromise NYMOX's reasonable and customary expenses for such legal proceedings shall be fully creditable against royalties owed to GENERAL hereunder, provided that in no event shall any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not royalty payment to GENERAL be unreasonably withheldreduced by more than 50%.
12.2.1 During 8.3 In the term of this Agreement, KCI will prosecute [***] event one party shall initiate or carry on legal proceedings to enforce any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit PATENT RIGHT against any such alleged infringer, and the other party shall fully cooperate with and supply all assistance reasonably requested by the party initiating or carrying on such proceedings. The party which institutes any suit to protect or enforce a PATENT RIGHT shall have sole control of that suit and shall bear the reasonable expenses (excluding legal fees) incurred by said other party in providing such assistance and cooperation as is requested pursuant to this paragraph. The party initiating or carrying on such legal proceedings shall keep the other party informed of the progress of such proceedings and said other party shall be entitled to counsel in such proceedings but at its own expense. Any award paid by third parties as the result of such proceedings (whether by way of settlement or otherwise) shall first be applied to reimbursement of the unreimbursed legal fees and expenses incurred by either party and then to the payment to GENES of the amount of royalties which were applied to the expense of legal proceedings in accordance with paragraph 8.2 above and then the remainder shall be divided between the parties as follows;
(ai) [***] If the amount is lost profits, NYMOX shall receive an amount equal to the damages the court determines NYMOX has suffered as a result of the infringement less the amount of any royalties that would have been due GENERAL on sales of PRODUCT lost by NYMOX as a result of the infringement had NYMOX made such sales; and,
(ii) GENERAL shall receive an amount equal to the royalties it would have received if such sales had been made by NYMOX; or
(b) [***]. No settlementAs to awards other than lost profits, consent judgment, or seventy (70) percent to the party initiating such proceedings and thirty (30) percent to the other voluntary fiscal disposition party.
8.4 For the purpose of the suit proceedings referred to in this paragraph 8, GENERAL and NYMOX shall permit the use of their names and shall execute such documents and carry out such other acts as may be entered into without the consent of KCI, which consent will not unreasonably be withheldnecessary.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Research and License Agreement (Nymox Pharmaceutical Corp)
Infringement. 12.1 Each party will promptly inform In the event that any claim, suit, or other legal proceeding is threatened or commenced against Distributor that is founded, in writing of whole or in part, on an allegation that the SAHARA Product infringes any alleged infringement of the Patent Rights by trade secret, trademark, patent or other intellectual property rights belonging to a third party, Distributor will give Hologic prompt written notice of such legal proceeding and Hologic may elect to assume sole control of the defense to or the assertion settlement of a declaratory judgment action alleging invalidity or noninfringementsuch dispute. Distributor shall cooperate fully with Hologic in any defense, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle settlement or compromise made by Hologic. Distributor shall not enter into any claim settlement agreement or action other voluntary resolution of any such claim, suit, or other legal proceeding without obtaining Hologic's prior written consent thereto. If Distributor has complied with the procedures set forth in this Section 9(c), Hologic will indemnify and hold Distributor harmless from and against any loss, cost, damage, or other expenses incurred by Distributor as a manner that imposes any restrictions result of such claim, suit or obligations on Wake Forest without Wake Forestlegal proceeding. If a final injunction is obtained against Distributor's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements use of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement actionSAHARA Product, or if KCI notifies Wake Forest in the opinion of Hologic the SAHARA Product is likely to become the subject of a successful claim of infringement, Hologic may, at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] andoption and expense, (bi) [***]. No settlementprocure for Distributor the right to continue distributing and/or using the SAHARA Product, consent judgment(ii) replace or modify the SAHARA Product so that it becomes non-infringing, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity (iii) if neither (i) or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s(ii) are invalid reasonably available, accept return of SAHARA Product held by Distributor and grant a credit therefor as depreciated, and terminate this Agreement without further obligation or unenforceable, [***]liability. If the subject patents are found to This indemnification provision shall be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] null and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will void and Hologic shall have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, no liability to the extent such suit that any claim is based upon a claim that the infringement arises from the manufacture, on any use by or sale expressly approved by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing Distributor of the commencement of SAHARA Product in combination with any such infringement action item not supplied or approved for use by a third party. Following such noticeHologic, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions if the SAHARA Product has been modified or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI tampered with in any such infringement action way by any third party in which escrowed litigation royalties or with Distributor's approval without the express written consent of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCIHologic, or Wake Forest may authorize KCI if Distributor, any of its subsidiaries or affiliates, or customer has any interest in said claim, suit or legal proceeding. or any license to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableany right so asserted.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Distribution Agreement (Hologic Inc)
Infringement. 12.1 Each party will promptly inform 7.1 Notwithstanding anything to the other contrary in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [****] to Wake Forest. As between wake Forest and KCI, KCI will be liable for or [****] successor in such action and KCI will be responsible, except as provided in Section 12.2.3, for interest to the [****] Agreement, has the sole and exclusive right to take, at its sole discretion and at its own expense, any action that it considers appropriate in such an action.
12.2.2 As a first option for KCI, connection with any actual or threatened infringement of the [***]. Upon settlement or final termination *] PATENT RIGHTS to defend the validity and enforceability of such action, KCI will immediately pay all escrowed property in any litigation royalties to Wake Forest.
12.2.3 As an alternative option, as provided in Section 5.1 of the [***]*] Agreement. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) ---------------- [****] andREPRESENTS MATERIAL WHICH HAS BEEN REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT PURSUANT TO RULE 24B-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, (b) [***]. No settlementAS AMENDED.
7.2 COMPANY, consent judgmentto the extent it has an exclusive license regarding PATENT RIGHTS, or other voluntary fiscal disposition of shall have first obligation to protect the suit GENERAL PATENT RIGHTS and JOINT PATENT RIGHTS from infringement and prosecute infringers in the LICENSE FIELD when, in its judgement, such action may be entered into without the consent of KCIreasonably necessary, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity proper and justified. GENERAL and NYCOMED may join COMPANY in such action or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of if COMPANY fails to take such action, provided GENERAL may separately initiate such action does not result action, at its discretion and at its own expense.
7.3 If GENERAL shall have supplied COMPANY with written evidence demonstrating prima facie infringement of a claim of a GENERAL PATENT RIGHT or JOINT PATENT RIGHT by a third party in a final non-appealable the LICENSE FIELD, GENERAL may by notice request COMPANY to take steps to protect the GENERAL PATENT RIGHT or non-appealed decision that JOINT PATENT RIGHT. COMPANY shall notify GENERAL within three (3) months of the subject patent(s) are invalid or unenforceable, [***]receipt of such notice whether COMPANY intends to prosecute the alleged infringement. If COMPANY notifies GENERAL that it intends to so prosecute, COMPANY shall, within three (3) months of its notice to GENERAL either (i) cause infringement to terminate or (ii) initiate legal proceedings against the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]infringer. No settlement, consent judgment or other voluntary fiscal final disposition of the any suit may by either COMPANY or GENERAL shall be entered into without the mutual consent of KCICOMPANY and GENERAL, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will shall not be unreasonably withheld.
12.4.3 7.4 If COMPANY elects to commence an action as described above, COMPANY may deduct from its royalty payments to GENERAL with respect to the GENERAL PATENT RIGHTS or JOINT PATENT RIGHTS subject to suit an amount not exceeding [***] any such infringement action by any third party *]percent [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. *] of COMPANY's expenses and costs of such action, including reasonable attorneys' fees; provided, however, that such reduction together with the offset against royalty payable under Section 5.1(i) shall not exceed [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI *] percent [***].
12.4.5 If the exercise *] of the rights granted KCI herein infringe total royalty due to GENERAL with respect to the rights NET SALES of a third partyPRODUCTS utilizing the GENERAL PATENT RIGHTS or JOINT PATENT RIGHTS subject to suit for each calendar year. If such [****] percent [****] of COMPANY's expenses and costs and offset under Section 5.1(i) exceeds the amount of royalties deducted by COMPANY for ---------------- [****] REPRESENTS MATERIAL WHICH HAS BEEN REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT PURSUANT TO RULE 24B-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, Wake Forest AS AMENDED. any calendar year, COMPANY may elect to pursue a license that extent reduce the royalties due to GENERAL from such third party that would permit KCI COMPANY in succeeding calendar years, but never by more than [****] percent [****] of the total royalty due GENERAL in any one year with respect to exercise the rights granted herein without limitation GENERAL PATENT RIGHTS or interruption and without payments by KCI, or Wake Forest may authorize KCI JOINT PATENT RIGHTS subject to pursue such a licensesuit. In the event Wake Forest authorizes KCI to secure such a licensethat COMPANY shall recover its expenses and costs, and the terms by settlement or judgment of such action, the same will be shared equally by the COMPANY and GENERAL, to the extent necessary for GENERAL to recoup the royalty payments which GENERAL contributed to the cost of such action pursuant to this Section.
7.5 For the purpose of the proceedings referred to in this Article 7, GENERAL, NYCOMED and COMPANY shall permit the use of their names and shall execute such documents and carry out such other acts as may be necessary to prosecute or defend any such proceeding, including joining into such proceeding. The party initiating or carrying on such legal proceedings shall keep the other party informed of the progress of such proceedings and said other party shall be entitled to counsel in such proceedings but at its own expense, said expenses to be off-set against any damages received by the party bringing suit in accordance with the foregoing paragraph 7.3.
7.6 In the event a license provide for royalties party hereto shall initiate or carry on legal proceedings to enforce any GENERAL PATENT RIGHT or JOINT PATENT RIGHT against any alleged infringer, the other payments party (including NYCOMED) shall fully cooperate with and supply all assistance reasonably requested by KCI the party initiating or carrying on such proceedings. The party which institutes any suit to protect or enforce a GENERAL PATENT RIGHT or JOINT PATENT RIGHT shall have sole control of that suit and subject to paragraph 7.3 shall bear the reasonable expenses (excluding legal fees) incurred by said other party in providing such assistance and cooperation as is requested pursuant to this paragraph. The party initiating or carrying on such legal proceedings shall keep the other party informed of the progress of such proceedings and said other party shall be entitled to counsel in such proceedings but at its own expense. Any award paid by third partyparties as the result of such proceedings (whether by way of settlement or otherwise) shall first be applied as provided in Section 7.3, if applicable, to reimbursement of the unreimbursed legal fees and expenses incurred by either party and then the remainder shall be divided between the parties will negotiate in good faithas follows: ---------------- [****] REPRESENTS MATERIAL WHICH HAS BEEN REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT PURSUANT TO RULE 24B-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableAS AMENDED.
12.4.6 (a) (i) If the exercise amount is based on lost profits, COMPANY shall receive an amount equal to the damages the court determines COMPANY has suffered as a result of the rights granted KCI herein are found to infringe infringement less the rights amount of any royalties that would have been due GENERAL on sales of PRODUCT lost by COMPANY as a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from result of the infringement had COMPANY made such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.sales; and
Appears in 1 contract
Infringement. 12.1 (a) Each party will shall promptly inform report in writing to the other in writing party during the term of this Agreement any known infringement or suspected infringement of any alleged infringement of the Patent Rights CIMA Patents in the Territory by a third partymanufacture, use or the assertion sale of a declaratory judgment action alleging invalidity or noninfringementProduct on a commercial scale in derogation of the rights granted to ESI hereunder (hereinafter, a "Related Infringement") of which it becomes aware, and shall provide such the other party with any all available information about the evidence supporting said infringement or declaratory actionsuspected infringement.
(b) Except as provided in paragraph (d) below, as CIMA shall have the case might beright to initiate an infringement or other appropriate suit anywhere in the Territory against any Third Party who at any time has infringed, or is suspected of infringing, any of the CIMA Patents. Following CIMA shall give ESI sufficient advance notice of its intent to file any suit on account of a Related Infringement and the reasons therefor, and shall provide ESI with an opportunity to make suggestions and comments regarding such notice, KCI may place [suit. CIMA shall keep ESI promptly ***] first accruing TEXT OMITTED AND FILED SEPARATELY CONFIDENTIAL TREATMENT REQUESTED UNDER 17 C.F.R. SECTIONS 200.80(B)(4), 200.83 AND 240.24B-2 informed, and shall from time to Wake Forest following time consult with ESI regarding the expiration status of any such suit on account of a thirty day period Related Infringement and shall provide ESI with copies of all documents filed in, and all written communications relating to, such suit.
(c) CIMA shall have the sole and exclusive right to select counsel for any suit referred to in subsection (b) above and shall, except as provided below, pay all expenses of the suit, including without limitation attorneys' fees and court costs. ESI, in its sole discretion, may elect, within 60 days after the commencement of such notice into an escrow litigation on account of a Related Infringement, to contribute to the costs incurred by CIMA in connection with such litigation and, if it so elects, any damages, royalties, settlement fees or other consideration received by CIMA as escrowed a result of such litigation shall be shared by CIMA and ESI pro rata based on their respective sharing of the costs of such litigation provided that such pro rata share shall not exceed fifty percent (50%) unless CIMA has consented to a higher share in writing. In the event that ESI elects not to contribute to the costs of such litigation, CIMA shall be entitled to retain any damages, royalties, settlement fees or other consideration for infringement resulting therefrom. KCI will If necessary, ESI shall join as a party to the suit but shall be under no obligation to participate except to the extent that such participation is required as the result of being a named party to the suit. ESI shall offer reasonable assistance to CIMA therewith at no charge to CIMA except for reimbursement of reasonable out-of-pocket expenses incurred in rendering such assistance. ESI shall have the right to participate and be represented in any such suit by its own counsel at its own expense. CIMA shall not settle or compromise any claim or action such suit on terms which grant any license to any other ***TEXT OMITTED AND FILED SEPARATELY CONFIDENTIAL TREATMENT REQUESTED UNDER 17 C.F.R. SECTIONS 200.80(B)(4), 200.83 AND 240.24B-2 party in a manner that imposes any restrictions or obligations on Wake Forest derogation of the rights granted to ESI hereunder without Wake Forest's obtaining the prior written consentconsent of ESI, which consent will shall not be unreasonably withheld.
12.2.1 During (d) In the term event that CIMA elects not to initiate an infringement or other appropriate suit pursuant to subsection (b) above on account of this Agreementa Related Infringement after reasonable efforts to abatx xxxh Related Infringement without litigation have failed, KCI will prosecute [***] any infringements but in no event later than ninety (90) days after ESI's notice to CIMA under Section 9.3(a), CIMA shall promptly advise ESI of its intent not to initiate such a suit, ESI shall have the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a at the expense of ESI, of initiating an infringement or other appropriate suit against the party in any or parties committing such suitRelated Infringement. In exercising its rights pursuant to this subsection (d), [***] ESI have the sole and exclusive right to Wake Forest. As between wake Forest select counsel and KCI, KCI will be liable for [***] in such action and KCI will be responsibleshall, except as provided in Section 12.2.3below, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition expenses of the suit including without limitation attorneys' fees and court costs. CIMA, in its sole discretion, may elect, within 60 days after the commencement of such litigation, to contribute to the costs incurred by ESI in connection with such litigation, and, if it so elects, any damages royalties, settlement fees or other consideration received by ESI as a result of such litigation shall be entered into without shared by ESI and CIMA pro rata based on their respective sharing of the consent costs of KCI, which consent will such litigation provided that such pro rata share shall not unreasonably be withheld.
12.3.1 exceed fifty percent (50%) unless ESI has consented to a higher share in writing. In the event that CIMA elects not to contribute to the costs of such litigation, ESI shall be entitled to retain any damages, royalties, settlement fees or other consideration for infringement resulting therefrom. If necessary, CIMA shall join as a Declaratory Judgment Action alleging invalidity or non-infringement of any of party to the Patent Rights will be brought against KCI or Wake Forest, [suit but shall ***].
12.3.2 As a first option for KCITEXT OMITTED AND FILED SEPARATELY CONFIDENTIAL TREATMENT REQUESTED UNDER 17 C.F.R. SECTIONS 200.80(B)(4), [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found 200.83 AND 240.24B-2 be under no obligation to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, participate except to the extent that such suit participation is based upon required as a claim that result of being named a party to the infringement arises from suit. At ESI's request, CIMA shall offer reasonable assistance to ESI in connection therewith at no charge to ESI except for reimbursement of reasonable out-of-pocket expenses incurred in rendering such assistance. CIMA shall have the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant right to this Agreement. As between Wake Forest participate and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI represented in any such infringement action suit by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***]its own counsel at its own expense.
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 (a) Each party will shall promptly inform report in writing to the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During during the term of this AgreementAgreement any known infringement or suspected infringement of any Product, KCI will prosecute [***] IDI Intellectual Property or IDI Products by a third party of which it becomes aware, and shall provide the other party with all available evidence supporting said infringement or suspected infringement.
(b) Except as provided in paragraph (d), the Corporation shall have the right to initiate an infringement or other appropriate suit against any infringements third party who at any time has infringed, or is suspected of infringing, any Product, IDI Intellectual Property or IDI Products. The Corporation shall give IDI sufficient advance notice of its intent to file said suit and the reasons therefor, and shall provide IDI with an opportunity to make suggestions and comments regarding such suit. The Corporation shall keep IDI properly informed, and shall from time to time consult with IDI, regarding the status of any such suit.
(c) The Corporation shall have the sole and exclusive right to select counsel for any suit referred to in paragraph (b) and shall pay all expenses of the Patent Rightssuit, andincluding without limitation attorney's fees and court costs. If necessary, in furtherance of such right, KCM may IDI shall join Wake Forest as a party to the suit but shall be under no obligation to participate except to the extent that such participation is required as the result of being a named party to the suit. IDI shall offer reasonable assistance to the Corporation in connection therewith at no charge to the Corporation except for reimbursement of reasonable out-of-pocket expenses (not including 6 -6- salaries of IDI personnel) incurred in rendering such assistance. IDI shall have the right to participate and be represented in any such suit, [***] to Wake Forestsuit by its own counsel at its own expense. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will The Corporation shall not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against settle any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition suit involving rights of IDI without obtaining the suit may be entered into without the prior written consent of KCIIDI, which consent will shall not unreasonably be withheldunreasonably.
12.3.1 (d) In the event that a Declaratory Judgment Action alleging invalidity the Corporation elects not to initiate an infringement or non-other appropriate suit pursuant to paragraph (b), the Corporation shall promptly advise IDI of its intent not to initiate such suit, and IDI shall have the right, at the expense of IDI, of initiating an infringement or other appropriate suit against any third party who at any time has infringed, or is suspected of infringing, any Product, IDI Intellectual Property or IDI Products. In exercising its rights pursuant to this paragraph (d), IDI shall have the sole and exclusive right to select counsel and shall pay all expenses of the Patent Rights will suit, including without limitation, attorney's fees and court costs, and shall be brought against KCI entitled to receive and retain any damages, royalties, settlement fees or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]other consideration. If necessary, the subject patents are found Corporation shall join as a party to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may but shall be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty under no obligation to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, participate except to the extent that such suit participation is based upon required as a claim that the infringement arises from the manufacture, use or sale by KCI result of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each being a named party will promptly inform the other in writing of the commencement suit. At IDI's request, the Corporation shall offer reasonable assistance to IDI at no charge to IDI except for reimbursement of any reasonable out-of-pocket expenses (not including salaries of the Corporation personnel) incurred in rendering such infringement action by a third partyassistance. Following such notice, KCI may place up The Corporation shall have the right to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not participate and be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI represented in any such infringement action suit by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***]its own counsel at its own expense.
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will (a) The provisions of this Section 14.5 shall apply to all Infringements (as hereinafter defined) that are not Xxxxx-Xxxxxx Suits (as defined in Section 14.6 below).
(b) During the Agreement Term, each Party shall promptly inform provide written notice to the other in writing Party of any known or suspected infringement of any ArQule Patent Right or Joint Patent Right in the Field by a Third Party (an "Infringement").
(c) Prior to the Option Exercise, ArQule shall have the first right to bring and control any action or proceeding with respect to an Infringement of an ArQule Patent Right at ArQule's own expense and by counsel of its own choice, and Roche shall have the right, at its own expense, to be represented in any such action or proceeding by counsel of its own choice. Notwithstanding the foregoing, if ArQule fails to bring any such action or proceeding with respect to an Infringement within (a) thirty (30) days following the notice of alleged infringement or (b) ninety (90) days before the time limit, if any, set forth in the applicable laws and regulations for the filing of such actions, whichever comes first, Roche shall have the right to bring and control any such action or proceeding at its own expense and by counsel of its own choice, and ArQule shall have the right, at its own expense, to be represented in any such action or proceeding by counsel of its own choice.
(d) After the Option Exercise, Roche shall have the first right to bring and control any action or proceeding with respect to an Infringement of an ArQule Patent Right at Roche's own expense and by counsel of its own choice; at all times, Roche shall have the first right to bring and control any action or proceeding with respect to an Infringement of any Joint Patent Right at Roche's own expense and by counsel of its own choice. However, ArQule shall have the right, at its own expense, to be represented in any such action or proceeding by counsel of its own choice. Notwithstanding the foregoing, if Roche fails to bring any such action or proceeding with respect to an Infringement within (a) * following the notice of alleged infringement or (b) * before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, ArQule shall have the right to bring and control any such action or proceeding at its own expense and by counsel of its own choice, and Roche shall have the right, at its own expense, to be represented in any such action or proceeding by counsel of its own choice.
(e) A Party that elects to bring and control an Infringement action or proceeding pursuant to this Section 14.5 (the "Initiating Party") shall provide prompt written notice to the other Party of any such proceeding commenced or action taken in connection with such proceeding by such Initiating Party.
(f) The Initiating Party shall keep the other Party informed of the status of any such proceeding or action and shall provide the other Party with copies of all substantive documents and communications filed in such proceeding or action concurrent with filing such documents.
(g) The Initiating Party shall have the sole and exclusive right to select counsel for any such proceeding or action. The Initiating Party shall, except as provided below, pay all expenses of the proceeding or action, including the Initiating Party's attorneys' fees and court costs. Prior to the Option Exercise, ArQule shall pay its own attorneys' fees and court costs and shall be entitled to retain all damages, settlement payments and other consideration received as a result of such proceeding or action. After the Option Exercise, the Parties' attorneys' fees and court costs in connection with any such proceeding or action shall be reimbursed and deducted from any damages, settlement payments and other consideration received as a result of such proceeding or action, and the balance thereof shall belong to the Initiating Party, except to the extent such damages, settlement payments or other consideration are attributable to lost profits with respect to Products in the Territory, in which case the Parties shall share the balance of such recovery as follows: ArQule shall receive the royalty that it would have been paid pursuant to Article 5 and the milestone payments that it would have been paid pursuant to Article 6 had the infringing sales been made by Roche, and Roche shall receive the remaining balance thereof.
(h) If the Initiating Party believes it reasonably necessary, upon written request to the other Party, the other Party shall join as a party to any proceeding or action brought pursuant to this Section 14.5 but shall be under no obligation to participate in such proceeding or action except to the extent that participation is required as the result of its being a named party to the proceeding or action. At the Initiating Party's written request, the other Party shall offer reasonable assistance to the Initiating Party in connection with any proceeding or action brought pursuant to this Section 14.5 at no charge to the Initiating Party, except that the Initiating Party shall reimburse the other Party for reasonable out-of-pocket expenses incurred by such other Party in rendering such assistance. The other Party shall have the right to participate and have its own representation in any such proceeding or action at its own expense.
(i) Prior to the Option Exercise, ArQule shall have the sole right to control any settlement and all negotiations relating to any proceeding or action brought with respect to an Infringement of an ArQule Patent Rights by a third partyRight, and Roche shall have the sole right to control any settlement and all negotiations relating to any proceeding or the assertion action brought with respect to an Infringement of a declaratory judgment action alleging invalidity or noninfringementJoint Patent Right. After the Option Exercise, the Initiating Party shall have the right to control settlement and provide such all negotiations relating to an Infringement; provided, however, that the Initiating Party shall not enter into a settlement without the written consent of the other party with any available information about the infringement or declaratory actionParty, as the case might be. Following such notice, KCI may place [***] first accruing not to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During (j) For the term avoidance of this Agreementdoubt, KCI will prosecute [***] any infringements of ArQule shall have the Patent Rights, and, in furtherance of such sole right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royaltyobligation, set forth to bring, control and settle any action or proceeding with respect to any ArQule Patent Right relating to an infringement not in Section 4.3 such that the total royalties payable are commercially reasonableField, at its own expense, without notice or any other obligation to Roche.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform Except as specifically provided otherwise under this Paragraph 4.6, COMPANY shall initially have the other sole and exclusive right, but not the obligation to initiate and carry on legal proceedings, at COMPANY’s sole expense and in writing JHU’s and HHMI’s name, if so required by law, against any infringer or alleged infringer of any alleged patent or patent application within PATENT RIGHTS. Such right shall include the right to bring suit and collect damages for past infringement of any patent within the Patent Rights by a third partyPATENT RIGHTS. COMPANY shall control all aspects of any such proceeding, or including, without limitation, the assertion of a declaratory judgment action alleging invalidity or noninfringementstrategy, defense, and provide settlement of such other party with any available information about the infringement or declaratory actionproceeding, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action and shall do so in a manner that imposes consistent with the terms and provisions hereof. Subject to Paragraph 4.8, any restrictions damage, cost, award, fee, recovery, or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] compensation paid by any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a third party in connection with any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon proceeding initiated or carried on at COMPANY’S expense (whether by way of settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]otherwise) shall be retained by the COMPANY. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under The COMPANY shall not enter into any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or any other voluntary fiscal final disposition of the suit may be entered into any infringement action under this Paragraph 4.6 without the prior written consent of KCIJHU, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will shall not be unreasonably withheld.
12.4.3 [***] , conditioned or delayed. Company’s right to xxx for infringement hereunder shall not be used in an arbitrary or capricious manner. If COMPANY elects not to enforce any patent within the PATENT RIGHTS, then it shall so notify JHU in writing within ninety (90) days of EXACT’s receipt of a notice of infringement pursuant to Paragraph 4.5, whereupon the right to initiate and carry on legal proceedings in respect of the particular infringement shall then vest solely in JHU, and JHU may, in its sole judgment and at its own expense, in Company’s or its AFFILIATES name if so required by law, initiate and carry on legal proceedings to enforce any patent and control, settle, and defend such proceeding in a manner consistent with the terms and provisions hereof, and recover, for its own account, any damages, awards or settlements resulting therefrom. JHU shall not enter into any settlement, consent judgment, or any other voluntary final disposition of any infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If under this Paragraph 4.6 without the exercise prior written consent of the rights granted KCI herein infringe the rights of a third partyCOMPANY, Wake Forest may elect which shall not be unreasonably withheld, conditioned or delayed. JHU’s right to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation xxx for infringement hereunder shall not be used in an arbitrary or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablecapricious manner.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 7-1. Each party will promptly Party shall inform the other Party promptly in writing of any alleged infringement of the Patent Rights PATENT RIGHTS by a third party, or the assertion party and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might beevidence thereof. Following such notice, KCI may place [***] first accruing Prior to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise prosecuting any claim or for infringement, each Party shall consult with the other Party regarding such infringement action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentand shall consider such Party’s business relationships before proceeding.
7-2. LICENSEE shall have the right, which consent will but shall not be unreasonably withheld.
12.2.1 During the term of this Agreementobligated, KCI will to prosecute [***] any at its own expense all infringements of the Patent RightsPATENT RIGHTS, or take other appropriate actions and, in furtherance of such right, KCM USCRF hereby agrees that LICENSEE may join Wake Forest include USCRF as a party plaintiff in any such suitaction for infringement, [***] to Wake Forestmisuse, misappropriation, theft or breach of confidence of the PATENT RIGHTS or TECHNOLOGY, with reasonable reimbursement of USCRF’s costs. As between wake Forest The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and KCI, KCI will LICENSEE shall keep any recovery or damages for past infringement or other action derived therefrom. LICENSEE shall indemnify USCRF against any order for costs or other damages that may be liable for [***] made against USCRF in such proceedings. Notwithstanding the foregoing, and in USCRF’s sole discretion and expense, USCRF shall be permitted to participate through counsel of its own choosing in any legal action and KCI will be responsible, except as provided in Section 12.2.3, for involving the [***] in such an actionPATENT RIGHTS.
12.2.2 As a first option for KCI, [***]7-3. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, If within 6 six (6) months after having been notified of any an alleged infringement of infringement, LICENSEE fails to bring an action against the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement actionthird-party, or if KCI notifies Wake Forest LICENSEE shall notify USCRF at any time prior thereto of its intention not to bring suit against any alleged infringer in the TERRITORY for the FIELD, then, and in those events only, USCRF shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the PATENT RIGHTS in the FIELD in the TERRITORY. The total cost of any such alleged infringerinfringement action commenced or defended solely by USCRF shall be borne by USCRF, then (a) [***] andand USCRF shall keep any recovery or damages for past infringement or other action derived therefrom. USCRF may, (b) [***]for such purposes, use the name of LICENSEE as party plaintiff, provided that USCRF shall protect and reimburse LICENSEE from damages asserted by any third party as a result of USCRF action under this section. Notwithstanding the foregoing, and in LICENSEE’S sole discretion and expense, LICENSEE shall be permitted to participate through counsel of its own choosing in any legal action involving the PATENT RIGHTS.
7-4. No settlement, consent judgmentconsent, judgment or other voluntary fiscal final disposition of the any suit may be entered into by either Party without the consent of KCIthe other Party, which consent will shall not unreasonably be withheld.
12.3.1 7-5. In any action brought pursuant to Article 7-2 or 7-3 that either Party may institute pursuant to this Agreement, the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result Parties shall cooperate in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third partyall reasonable respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like. If USCRF is a necessary party to any such suit litigation or other enforcement action, then at LICENSEE’S request and expense, USCRF shall join such litigation or other enforcement action. If LICENSEE is based upon a claim that the infringement arises from the manufacturenecessary party to any such litigation or other enforcement action, use then at USCRF’s request and expense, LICENSEE shall join such litigation or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***]other enforcement action.
12.4.2 Each 7-6. If LICENSEE or any of its Affiliates or sublicensees or USCRF shall be sued by a third party will for infringement of a third party’s patent in the Territory because of the use of the Technology, LICENSEE or USCRF, as applicable, shall promptly inform notify the other in writing of the commencement institution of any such infringement action by a third partysuit. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise allegedly infringing process, method or composition is contained within the LICENSED PATENTS and LICENSEE is a party to such suit, LICENSEE shall have the right, in its sole discretion, to control the defense of such suit at its own expense. USCRF shall cooperate reasonably in the rights granted KCI herein infringe the rights defense of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseaction, and LICENSEE shall reimburse USCRF for any out-of-pocket expenses incurred in providing such assistance. USCRF shall have the terms right to be represented by advisory counsel of such a license provide for royalties or other payments by KCI to such third partyits own selection, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableat its own expense.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each AGU will defend Xxxxxxxxx from and against third party claims (and will pay any resulting damages, costs or liabilities awarded by a court of final jurisdiction) arising solely from a claim that the SDC infringes any United States or Canadian patent or any copyright rights (in or of countries that are signatories to the Berne Convention) of a third party. AGU’s obligation is subject to Purchaser’s compliance with the following procedures: (a) Purchaser will promptly inform the other notify AGU in writing of any alleged infringement of the Patent Rights by a third party, claim or the assertion commencement of a declaratory judgment action alleging invalidity any suit, action, proceeding or noninfringementthreat that Purchaser believes will result in losses for which it will be entitled to defense, provided however, that the failure to give such prompt written notice shall not affect the indemnification provided hereunder except to the extent that such failure shall have actually prejudiced AGU; (b) Purchaser will tender to AGU (and provide its insurer) full authority to defend or settle any such other party claim; and (c) Purchaser shall cooperate in the defense of such claim. AGU has no obligation to indemnify Purchaser in connection with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest settlement made without Wake Forest's AGU’s prior written consent, which consent . AGU will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit defend Purchaser against any such alleged infringerclaim brought against Purchaser by counsel retained at AGU’s own expense and of AGU’s own choosing. This section shall not apply to infringement claims arising in whole or in part from (2) the combination of the SDC or any part thereof with other equipment, then (a) [***] andsoftware or products not supplied by AGU if such infringement or misappropriation would not have occurred but for such combination, or (b) [***]Purchaser’s failure to install an update, where same would have avoided such claim. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement SDC is enjoined, or, in AGU’s judgment, may be enjoined, AGU will either: (i) procure for Purchaser the right to continue to use the SDC, (ii) replace the infringing portion of the SDC with a functionally equivalent product or modify it so that it becomes non- infringing without materially compromising functionality, or (iii) terminate the license granted hereunder and reimburse Purchaser for the price originally paid by Purchaser therefore, reduced by five year straight line depreciation. Upon AGU’s fulfillment of the alternatives set out in this section, AGU shall be relieved of any further obligation or liability to Purchaser as a result of any such infringement action by a third partyinfringement. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldTHIS SECTION STATES AGU’S ENTIRE LIABILITY TO PURCHASER AND PURCHASER’S SOLE REMEDY FOR ANY INFRINGEMENT CLAIMS CONCERNING THE SDC.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: End User License Agreement
Infringement. 12.1 Each party will promptly inform the other in writing 16.1 Should either Party become aware of any alleged infringement or potential infringement of the Patent Rights Patents it shall give the other Party written notice thereof detailing the facts concerning such infringement or potential infringement and KATANA, upon notice to Transfert Plus, shall have the first right to initiate and prosecute legal action against such infringement, by a third partycounsel of its choice, at KATANA’s expense and in the name of Transfert Plus and KATANA, or to control the assertion defense of a any declaratory judgment action alleging invalidity or noninfringementrelating to the Technology and arising in the context of such legal action. KATANA, and provide such other party with any available information about at its own expense, shall be deemed to have the infringement or declaratory actionright, as authorized pursuant to the case might be. Following appropriate statutes (i) to initiate such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or legal action in a manner that imposes any restrictions or obligations its own name or, if required by law, jointly with Transfert Plus (which may be represented by its own counsel), at KATANA’s expense and on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements its own behalf for infringement of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party Patent(s); (ii) in any such suit, [***] to Wake Forest. As between wake Forest enjoin infringement, and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess infringing use of the escrowed litigation royalties.
12.2.4 IfPatents, within 6 months after having been notified to collect damages, profits, and awards of whatever nature recoverable for such infringement; and (iii) to settle any alleged claim or suit for infringement of the Patents, provided that Transfert Plus shall have the opportunity to timely review and make suggestions regarding any such settlement.
16.2 Should KATANA advise Transfert Plus in writing that it does not intend to enforce any Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer or should KATANA fail to desist and will not have brought and will not be diligently prosecuting enforce such Patent within a delay of [REDACTED: Time Period] from its reception of a notice from Transfert Plus advising KATANA of an infringement actionof the Technology, or if KCI notifies Wake Forest then Transfert Plus shall have the right, at any time prior thereto of its intention not own expense and for its own benefit, to bring suit against any action it deems necessary to stop the infringement and recover any damages, profits, and awards which might be obtained.
16.3 For any action to terminate any such alleged infringerinfringement, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In in the event that a Declaratory Judgment Action alleging invalidity Party is unable to initiate or non-infringement of prosecute such action solely in its own name, the other Party will join such action voluntarily and will execute and cause its Affiliates to execute all documents necessary for such other Party to initiate litigation to prosecute and maintain such action. In connection with any of the Patent Rights action, Transfert Plus and KATANA will be brought against KCI cooperate fully and will provide each other with any information or Wake Forest, [***]assistance that either may reasonably request.
12.3.2 As a first option for KCI16.4 Without prejudice to any other right they may have, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon should a claim that KATANA’s practice under the infringement arises from the manufactureTechnology directly infringe a Third Party’s intellectual property rights be threatened or made against KATANA, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest KATANA shall give Transfert Plus prompt written notice detailing as many facts as possible concerning such claim and KCI, [***].
12.4.2 Each party will promptly inform each Party shall cooperate fully with the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms defense of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableclaim.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Exclusive License Agreement (Theratechnologies Inc.)
Infringement. 12.1 Each party will 7.1 LICENSEE shall inform M.I.T. promptly inform the other in writing of any alleged infringement of the Patent Rights PATENT RIGHTS by a third party, or the assertion party and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might beevidence thereof. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.* CONFIDENTIAL TREATMENT REQUESTED
12.2.1 7.2 During the term of this Agreement, KCI will LICENSEE shall have the right, but shall not be obligated, to prosecute [***] at its own expense any such infringements of the Patent Rights, PATENT RIGHTS and, in furtherance of such right, KCM M.I.T. hereby agrees that LICENSEE may join Wake Forest M.I.T. as a party plaintiff in any such suit, [***] without expense to Wake ForestM.I.T. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, LICENSEE may, for such purposes, use the name of M.I.T. as party plaintiff; provided, however, that such right to bring an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. As between wake Forest No settlement, consent judgement or other voluntary final disposition of the suit may be entered into without the consent of M.I.T. which consent shall not unreasonably be withheld. LICENSEE shall indemnify M.I.T. against any order for costs that may be made against M.I.T. in proceedings commenced and KCIdefended solely by LICENSEE.
7.3 In the event that LICENSEE shall undertake the enforcement and/or defense of the PATENT RIGHTS by litigation, KCI will LICENSEE may withhold up to * of the royalties otherwise thereafter due M.I.T. hereunder and apply the same toward reimbursement of up to * of LICENSEE's expenses, including reasonable attorneys' fees, in connection therewith. Any recovery of damages by LICENSEE for any such suit shall be liable applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to the suit, and next toward reimbursement of M.I.T. for [***] in any royalties past due or withheld and applied pursuant to this Article VII. The balance remaining from any such action and KCI will recovery attributable to damages for lost sales shall be responsible, except as provided divided according to the royalty percentages set forth in Section 12.2.3, for the [***] in such an action.4.1; any remaining balance shall be paid to LICENSEE. * CONFIDENTIAL TREATMENT REQUESTED
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, 7.4 If within 6 six (6) months after having been notified of any alleged infringement of the Patent Rightsinfringement, KCI will LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and will shall not have brought and will shall not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest LICENSEE shall notify M.I.T. at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] then, and in those events only, M.I.T. shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the PATENT RIGHTS, and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination in furtherance of such actionright, provided LICENSEE hereby agrees that M.I.T. may include LICENSEE as a party plaintiff in any such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceablesuit, [***]without expense to LICENSEE. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement The total cost of any such infringement action commenced or defended solely by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not M.I.T. shall be unreasonably withheld.
12.4.3 [***] any such infringement action borne by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.M.I.T.,
Appears in 1 contract
Samples: License Agreement (Metabolix, Inc.)
Infringement. 12.1 (a) Each party will shall promptly inform report in writing to the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During during the term of this Agreement, KCI will prosecute [***] Agreement any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement known infringement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-suspected infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result CIMA Patents in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the Territory by manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other a Product on a commercial scale in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise derogation of the rights granted KCI herein infringe to ESI hereunder (hereinafter, a "Related Infringement") of which it becomes aware, and shall provide the rights other party with all available evidence supporting said infringement or suspected infringement.
(b) Except as provided in paragraph (d) below, CIMA shall have the right to initiate an infringement or other appropriate suit anywhere in the Territory against any Third Party who at any time has infringed, or is suspected of infringing, any of the CIMA Patents. CIMA shall give ESI sufficient advance notice of its intent to file any suit on account of a third partyRelated Infringement and the reasons therefor, Wake Forest may elect and shall provide ESI with an opportunity to pursue make suggestions and comments regarding such suit. CIMA shall keep ESI promptly informed, and shall from time to time consult with ESI regarding the status of any such suit on account of a license from Related Infringement and shall provide ESI with copies of all documents filed in, and all written communications relating to, such third party that would permit KCI suit.
(c) CIMA shall have the sole and exclusive right to exercise select counsel for any suit referred to in subsection (b) above and shall, except as provided below, pay all expenses of the rights granted herein suit, including without limitation attorneys' fees and court costs. ESI, in its sole discretion, may elect, within 60 days after the commencement of such litigation on account of a Related Infringement, to contribute to the costs incurred by CIMA in connection with such litigation and, if it so elects, any damages, royalties, settlement fees or interruption other consideration received by CIMA as a result of such litigation shall be shared by CIMA and without payments by KCI, or Wake Forest may authorize KCI ESI pro rata based on their respective sharing of the costs of such litigation provided that such pro rata share shall not exceed fifty percent (50%) unless CIMA has consented to pursue such a licensehigher share in writing. In the event Wake Forest authorizes KCI that ESI elects not to secure such a license, and contribute to the terms costs of such a license provide for royalties litigation, CIMA shall be entitled to retain any damages, royalties, settlement fees or other payments by KCI consideration for infringement resulting therefrom. If necessary, ESI shall join as a party to the suit but shall be under no obligation to participate except to the extent that such third party, then participation is required as the parties will negotiate in good faith, result of being a royalty reduction in named party to the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.suit. ESI shall offer
Appears in 1 contract
Infringement. 12.1 9.1 Each party will promptly inform Party agrees to provide prompt written notice to the other in writing Party of any alleged infringement of the Patent Rights by a third party, or the assertion and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory actionevidence thereof, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldit becomes aware.
12.2.1 9.2 During the term of this Agreement, KCI will Licensee, to the extent permitted by law, shall have the right, but shall not be obligated, to prosecute [***] any at its own expense all infringements of the Patent Rights, Rights and, in furtherance of such right, KCM Northwestern hereby agrees that Licensee may join Wake Forest include Northwestern as a party plaintiff in any such suit, [***] without expense to Wake ForestNorthwestern, provided, however, that such right to bring such infringement action shall remain in effect only for so long as the license granted herein remains exclusive. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of Prior to commencing any such action, KCI will immediately pay all escrowed litigation Licensee shall consult with Northwestern and shall consider the view of Northwestern regarding the advisability of the proposed action and its effect on the public interest. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the prior written consent of Northwestern. Licensee shall indemnify Northwestern against any order for costs that may be made against Northwestern in such proceedings. Any recovery resulting from an action brought by Licensee shall be distributed as follows:
(a) each Party shall be reimbursed for any expenses it incurred in the action; (b) as to ordinary damages for past infringement , Licensee shall receive an amount equal to either (i) its lost profits, (ii) a reasonable royalty on the infringing sales, or (iii) whatever alternative measure of such damages the court shall have applied, and such amount shall be treated as Net Sales for the purpose of calculating running royalties to Wake Forestunder Section 5.5; and (c) the Parties shall share equally in any additional award, including any special or punitive damages.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 9.3 If six (6) months after having been notified become aware of any alleged infringement of the Patent Rights, KCI will have Licensee has been unsuccessful in persuading the alleged infringer to desist and will either has not have brought and will or is not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest Licensee shall notify Northwestern at any time prior thereto of its intention not to bring suit against any such alleged infringer, then Northwestern shall have the right, at its sole discretion, to prosecute such infringement of the Patent Rights under its sole control and at its sole expense. In the event Northwestern elects to prosecute an infringement of any Patent Rights as set forth in this Section 9.3, then (a) [***] andNorthwestern shall keep any recovery or damages for past infringement derived therefrom, and (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of Licensee shall not offer to sublicense the suit may be entered into infringed Patent Rights to the alleged infringer without the consent of KCI, which consent will not unreasonably be withheldNorthwestern’s written consent.
12.3.1 9.4 In the event that a Declaratory Judgment Action declaratory judgment action alleging invalidity invalidity, unenforceability, or non-infringement noninfringement of any of the Patent Rights will shall be brought against KCI Northwestern or Wake ForestLicensee, [***].
12.3.2 As a first option for KCINorthwestern, [***]. Upon settlement or final termination at its option, shall have the right, within thirty (30) days after it receives notice of the commencement of such action, provided such to intervene and take over the sole defense of the action does not result in a final non-appealable or non-appealed decision that (but only to the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within extent of the Patent Rights.
12.3.3 As an alternative option) at its own expense. If Northwestern does not exercise this right, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess Licensee may take over the sole defense of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]action at Licensee's sole expense. No settlement, consent judgment or other voluntary fiscal final disposition of the suit action may be entered into without the prior written consent of KCINorthwestern, which consent will shall not be unreasonably be withheld.
12.4.1 KCI will have a duty 9.5 In any infringement suit that either Party may institute to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within enforce the Patent Rights pursuant to this Agreement. As between Wake Forest Agreement and KCIin any declaratory judgment action that one Party is defending, [***].
12.4.2 Each party will promptly inform the other in writing Party hereto shall, at the request and expense of the commencement of any Party initiating or defending such infringement action suit, cooperate in all reasonable respects (including joining as a party if required by a third party. Following such noticelaw) and, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentthe extent possible, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third partyhave its employees testify when requested and make available relevant records, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCIpapers, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseinformation, samples, specimens, and the like.
9.6 For so long as the license granted herein remains exclusive during the term of this Agreement, Licensee shall have the sole right to sublicense any alleged infringer for future use of the Patent Rights in accordance with the terms and conditions of this Agreement relating to sublicenses. Any upfront fees as part of such a license provide for royalties or sublicense shall be shared equally between Licensee and Northwestern; other payments by KCI revenues to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license Licensee resulting from such third party, all remaining escrowed litigation royalties will a sublicense shall be given treated pursuant to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this AgreementSection 5.6.
Appears in 1 contract
Samples: License Agreement
Infringement. 12.1 Each party will promptly The PARTIES shall mutually inform the each other in writing as quickly as possible of any alleged acts of infringement of upon the Patent Rights PATENTS by a third partyparty of which they become aware and/or any claims or actions for patent infringement brought against them.
12.2 In case of infringement upon one or more of the PATENTS by a third party in the FIELD, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, so long as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following of the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentPATENTS hereunder, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] ], to the extent permitted by law, shall have the first right, under its own control and at its own expense, to prosecute any infringements third-party infringement of the Patent Rights, and, PATENTS in furtherance of such right, KCM may join Wake Forest as a party the FIELD in any such suitthe TERRITORY. If required by law, [***] and [***], as applicable, shall permit any action under this Section 12.2 to Wake Forest. As between wake Forest and KCIbe brought in its or their name, KCI will be liable for including being joined as a party-plaintiff, provided that [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the shall hold [***] and [***], as applicable, harmless from, and indemnify [***], as applicable, against any costs, expenses, or liability that [***], as applicable, incur in connection with such an action.
12.2.2 As a first option for KCI. Prior to [***] under Section 12.2 hereunder, [***] shall consult with [***] and shall consider the views of [***] regarding the advisability of the proposed action and its effect on the public interest. [***] shall not enter into any settlement, consent judgment, or other voluntary final disposition of any infringement action under Section 12.2 without the prior written consent of [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable Any monetary recovery for any amounts damages in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, documented expenses in enforcing the PATENTS and (b) amounts reimbursed by [***]. No settlement] under Section 12.2, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, shall [***].
12.3.2 As a first option for KCI, 12.3 [***], subject to the legal rules in force, may bring at its expense proceedings against an infringing third party outside the FIELD, whereby any compensation and damages awarded by the court shall be fully and irrevocably acquired by it. Upon settlement or final termination of such action, provided such In an enforcement action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decisionunder this Section 12.3, [***] if valid patents covering such products or processes still remain within may be involved in the Patent Rightsproceedings, at its expense, in order to obtain compensation for the prejudice it suffers.
12.3.3 As 12.4 a) If [***] brings no action against an alternative optioninfringer in the FIELD under Section 12.2, [***]] will have the right but not the obligation, to bring in its own name, and the names of [***] as permitted below, an infringement action, subject to notice [***] to join such action. All remaining escrowed litigation royalties will The absence of a response from [***] within [***] from receipt of formal notice means not wishing to prosecute, subject to the terms below in this Section 12.4. In this case, the procedural costs shall be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) solely payable by [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of any compensation and damages awarded by the suit may court shall be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale fully and irrevocably acquired by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, it [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Patents Sub License Agreement (Sana Biotechnology, Inc.)
Infringement. 12.1 Each party will promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition If either Party shall learn of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim or assertion that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement Product in the Territory infringes or otherwise violates the intellectual property rights of any such infringement action Third Party or that any Third Party violates the intellectual property rights owned or Controlled by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action (i) Depomed in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, Product and the terms of such a license provide for royalties Depomed Trademarks in the Territory or other payments by KCI to such third party(ii) Xxxxxx in the Xxxxxx Trademarks, then the parties will negotiate Party becoming so informed shall promptly, but in good faithall events within fifteen (15) business days thereof, a royalty reduction notify the other Party to this Agreement of the claim or assertion.
(b) If warranted in the earned royalty rate set forth opinion of Depomed, after consultation with the JSC, Depomed shall take such legal action as is advisable in Section 4.2 Depomed’s opinion to restrain infringement of such Depomed patent rights or the Depomed Trademarks. Xxxxxx shall cooperate fully with, and the minimum royaltyas reasonably requested by, Depomed in Depomed’s attempt to restrain such infringement, and Depomed shall reimburse Xxxxxx for its out-of-pocket expenses incurred in providing such cooperation. Xxxxxx may be represented by counsel of its own selection at its own expense in any suit or proceeding brought to restrain such infringement, but not Depomed shall have the floor royalty, set forth in Section 4.3 such that right to control the total royalties payable are commercially reasonablesuit or proceeding.
12.4.6 (c) If warranted in the exercise opinion of Xxxxxx, Xxxxxx shall take such legal action as is advisable in Xxxxxx’x opinion to restrain such infringement of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealedXxxxxx Trademarks. Depomed shall cooperate fully with, and neither Wake Forest nor KCI are able as requested by, Xxxxxx in Xxxxxx’x attempt to secure a license from restrain such third partyinfringement, all remaining escrowed litigation royalties will and Xxxxxx shall reimburse Depomed for its out-of-pocket expenses incurred in providing such cooperation. Depomed may be given represented by counsel of its own selection at its own expense in any suit or proceeding brought to KCIrestrain such infringement, provided that KCI provides written notice but Xxxxxx shall have the right to Wake Forest of KCI's election to terminate control the License under this Agreementsuit or proceeding.
Appears in 1 contract
Samples: Promotion Agreement (Depomed Inc)
Infringement. 12.1 Each party will promptly 7.1 The parties shall inform the each other promptly, in writing writing, of any alleged infringement of the Patent Rights by a third party, or the assertion and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldevidence thereof.
12.2.1 7.2 During the term of this Agreement, KCI will LICENSEE shall have the right, subject only to approval not unreasonably withheld of RESEARCH FOUNDATION, but shall not be obligated, to prosecute [***] at its own expense any such infringements of the Patent Rights, Rights and, in furtherance of such right, KCM RESEARCH FOUNDATION hereby agrees that LICENSEE may join Wake Forest RESEARCH FOUNDATION as a party plaintiff in any such suit, [***] without expense to Wake ForestRESEARCH FOUNDATION. As between wake Forest and KCI, KCI will be liable for [***] in The total cost of any such infringement action and KCI will be responsible, except as provided in Section 12.2.3paragraph 7.4 hereof, commenced or defended solely by LICENSEE shall be borne by LICENSEE and LICENSEE shall keep any recovery or damages for the [***] in such an actionpast infringement derived therefrom.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, 7.3 If within 6 six (6) months after having been notified of any alleged infringement of the Patent Rightsinfringement, KCI will LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and will shall not have brought and will shall not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest LICENSEE shall notify RESEARCH FOUNDATION at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] andthen, (b) [***]and in those events only, RESEARCH FOUNDATION shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and RESEARCH FOUNDATION may, for such purposes, use the name of LICENSEE as party plaintiff. No settlement, consent judgment, judgment or other voluntary fiscal final disposition of the suit may be entered into without the consent of KCIthe other party, which consent will shall not unreasonably be withheld.
12.3.1 7.4 In the event that LICENSEE shall undertake the enforcement and/or defense of the Patent Rights by litigation, LICENSEE may withhold up to [***] percent ([***]%) of the royalties otherwise thereafter due RESEARCH FOUNDATION hereunder and apply the same toward reimbursement of up to [***] percent ([***]%) of its expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery by LICENSEE of damages for past infringement in any such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to the suit, and next toward reimbursement of RESEARCH FOUNDATION for any royalties past due or withheld and applied pursuant to this Article VII. LICENSEE shall keep the balance remaining from any such recovery.
7.5 In the event that a Declaratory Judgment Action declaratory judgment action alleging invalidity or non-infringement noninfringement of any of the Patent Rights will shall be brought against KCI or Wake ForestRESEARCH FOUNDATION, [***].
12.3.2 As a first option for KCILICENSEE at Its option, [***]. Upon settlement or final termination shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action at its own expense except as provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rightsparagraph 7.4.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned 7.6 In any infringement suit as either party may institute to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within enforce the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing party hereto shall, at the request and expense of the commencement of any party initiating such infringement action by a third party. Following such noticesuit, KCI may place up cooperate in all respects and, to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentthe extent possible, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third partyhave its employees testify when requested and make available relevant records, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCIpapers, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseinformation, samples, specimens, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablelike.
12.4.6 If 7.7 RESEARCH FOUNDATION warrants and represents that it has the exercise lawful right to grant the license provided in this agreement and that it has not granted rights or licenses in derogation of this Agreement. RESEARCH FOUNDATION agrees that during the term of this Agreement, or any license granted hereunder, RESEARCH FOUNDATION shall not enter into any other agreements that conflict with the rights granted KCI herein are found to infringe the or obligations provided hereunder, including any rights and obligations provided hereunder, including any rights and obligations that survive termination of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 7.1 Each party will shall promptly inform notify the other in writing of any alleged infringement of the Patent Rights PATENT RIGHTS by a third party, or the assertion party and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldevidence thereof.
12.2.1 7.2 During the term of this Agreement, KCI will prosecute [***] BIOS shall have the right, but shall not be obligated, to bring any infringements legal action for infringement or for defending any counterclaim of the Patent Rights, and, in invalidity or action of a third party for declaratory judgment of non-infringement or interference relating to such PATENT RIGHTS. In furtherance of such right, KCM VGI hereby agrees that BIOS may join Wake Forest include VGI as a party plaintiff in any such suit, [***] and VGI agrees to Wake Forestfully cooperate with BIOS in the prosecution of such infringements. As between wake Forest and KCIIf BIOS decides not to exercise such rights to bring legal action within three (3) months of VGI giving notice thereof to BIOS, KCI will VGI shall be liable for [***] entitled to do so in its own right if legally permissible, provided, however, that BIOS through counsel of its own selection, shall oversee such legal action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay opportunity to approve all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]actions which are case dispositive. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will notfees, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist costs and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement expenses of any such infringement action shall be borne by a third partythe party bringing the action and such party shall obtain any recovery or damages, if any, whether by judgment, award, decree or settlement, including interest for past infringement. Following The excess of such noticerecoveries, KCI damages and interest over VGI's out of pocket expenses in connection with the prosecution or defense of such actions shall be included in VGI's NET SALES under this Agreement for the benefit of BIOS. VGI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action actions solely at its own expense and through counsel of its own selection; provided, however, that BIOS shall be entitled in a manner that imposes each instance to participate through counsel of its selection and at its own expense in any restrictions or obligations on Wake Forest without Wake Forest's written consentsuch settlement and to approve the terms of such settlement, which consent will such approval not to be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. 7.3 In the event Wake Forest authorizes KCI that BIOS is involved with the enforcement and/or defense of the PATENT RIGHTS by litigation, VGI may not withhold any payments otherwise deemed earned and due to secure such a licenseBIOS under Article 4 hereunder.
7.4 In any patent infringement suit that BIOS may institute to enforce the PATENT RIGHTS pursuant to this Agreement, VGI shall, at the request of BIOS, cooperate in all reasonable respects and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the terms like during the term of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: License Agreement (Genaissance Pharmaceuticals Inc)
Infringement. 12.1 10.1 Each party will promptly inform Party shall immediately give notice to the other in writing Party if any member of the Trust, the PTC Group or their Staff become aware of:
(a) any alleged infringement of the Patent Rights Background Intellectual Property or Programme Intellectual Property; or
(b) any claim by a third partyThird Party that an action carried out under the Programme infringes the Intellectual Property or other rights of any Third Party.
10.2 In respect of any Background Intellectual Property or Programme Intellectual Property, where any infringement or suspected infringement arises, or a claim by a Third Party alleging infringement of that Third Party’s Intellectual Property or other rights arises, then:
(a) As soon as possible after receiving the assertion notice required by Clause 10.1, the Parties will convene a meeting of the IPMG at which the IPMG shall discuss in good faith all available evidence with respect to the matters underlying the notice, and the appropriate manner of addressing such matters, including preventing or stopping infringing activities (for example, by seeking a preliminary injunction), preserving the Parties’ rights to past and future damages (for example, by sending a cease and desist letter) defending against declaratory judgment action alleging invalidity actions with respect thereto, or noninfringementtaking any other actions, and provide such other party with any available information about the infringement or declaratory actionno actions, as the case might beParties shall determine. Following The IPMG shall take into account each Party’s interest in formulating the response, if any, to infringement or threatened infringement of such noticeBackground Intellectual Property or Programme Intellectual Property, KCI including the relative merits of patent litigation versus the nature, scope and potential economic consequences of the Infringement.
(b) Unless otherwise determined by the IPMG as part of its consideration of an overall patent strategy, or pursuant to its evaluation of a notice pursuant to Clause 10.2(a), if a member of the PTC Group (or any licensee of a member of the PTC Group) is exploiting the relevant Programme Intellectual Property but PTC notifies the Trust that it does not intend to take such action, the Trust, at its discretion and cost may place [***] first accruing take such action as it shall consider to Wake Forest be necessary or appropriate to bring or defend an action on behalf of the relevant member of the PTC Group or licensee thereof and PTC shall (and shall procure that relevant members of the PTC Group shall) provide all reasonable assistance to Trust as the Trust may request (at the Trust’s cost); and
(c) Unless otherwise determined by the IPMG as part of its consideration of an overall patent strategy, or pursuant to its evaluation of a notice pursuant to Clause 10.2(a), if the Trust (or any licensee of the Trust) is exploiting the relevant Programme Intellectual Property following exercise of its rights pursuant to Clause 12, the Trust may take such action as it shall consider to be necessary or appropriate at its discretion and expense to bring or defend an action on behalf of the relevant member of the PTC Group. PTC shall (and PTC shall procure that the relevant member of the PTC Group shall) give the Trust all reasonable assistance as the Trust may request (at the Trust’s cost) in relation to such action, including granting the Trust the right to bring such action in PTC’s name.
10.3 In the event that any enforcement or defence action whether by a member of the PTC Group and/or the Trust results in the recovery of legal costs and/or an award of damages, such sums shall be distributed in accordance with the following the expiration following order of priority: (a) first, to reimburse each Party for all litigation costs in connection with such proceeding paid by that Party and not otherwise recovered (on a thirty day period after pro rata basis based on each Party’s respective litigation costs, to the extent the recovery was less than all such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suitcosts); and (b) second, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for percent ([**]%) to the enforcing Party and [**] in such action and KCI will be responsiblepercent ([**]%) to the non-enforcing Party.
10.4 Notwithstanding the above, except as provided in Section 12.2.3may be agreed otherwise by the Parties following good-faith discussions, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, no Party shall enforce their rights under any circumstances, be liable Programme Intellectual Property for any amounts in excess of the escrowed litigation royalties.infringement or potential infringement by:
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, any organisation operating on a Not for Profit Basis or any charitable organisation which is conducting non- commercially sponsored research; and/or
(b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or any person carrying out non-infringement commercially sponsored research on behalf of any of the Patent Rights will be brought against KCI organisation operating on a Not for Profit basis or Wake Forest, [***]any charitable organisation.
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will promptly 7.1. The parties shall inform the each other promptly, in writing writing, of any alleged infringement of the Patent Rights by a third party, or the assertion and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might beevidence thereof. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties* Confidential Treatment Requested
7.2. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will LICENSEE shall have the right, subject only to approval not unreasonably withheld of RESEARCH FOUNDATION, but shall not be obligated, to prosecute [***] at its own expense any such infringements of the Patent Rights, Rights and, in furtherance of such right, KCM RESEARCH FOUNDATION hereby agrees that LICENSEE may join Wake Forest RESEARCH FOUNDATION as a party plaintiff in any such suit, without expense to RESEARCH FOUNDATION. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE and any recovery realized from such infringement action, after reimbursing LICENSEE for its costs and expenses in prosecuting the infringement, shall be treated as if it were a royalty received by LICENSEE from a sublicensee for Net Sales of Licensed Product and the provisions of Section 4.1(b) shall apply.
7.3. If within [...***...] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified notifying an alleged infringer of any alleged infringement of the Patent Rightsinfringement, KCI will LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and will shall not have brought and will shall not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest LICENSEE shall notify RESEARCH FOUNDATION at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] andthen, (b) [***]and in those events only, RESEARCH FOUNDATION shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and RESEARCH FOUNDATION may, for such purposes, use the name of LICENSEE as party plaintiff. No settlement, consent judgment, judgment or other voluntary fiscal final disposition of the suit may be entered into without the consent of KCIthe other party, which consent will shall not unreasonably be withheld.
12.3.1 7.4. In the event that a Declaratory Judgment Action declaratory judgment action alleging invalidity or non-infringement noninfringement of any of the Patent Rights will shall be brought against KCI or Wake ForestRESEARCH FOUNDATION, LICENSEE at its option, shall have the right within [...***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination ...] after commencement of such action, provided such to intervene and take over the sole defense of the action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rightsat its own expense.
12.3.3 As an alternative option, [***]7.5. All remaining escrowed litigation royalties will be immediately returned In any infringement suit as either party may institute to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within enforce the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing party hereto shall, at the request and expense of the commencement of any party initiating such infringement action by a third party. Following such noticesuit, KCI may place up cooperate in all respects and, to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentthe extent possible, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third partyhave its employees testify when requested and make available relevant records, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCIpapers, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseinformation, samples, specimens, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablelike.
12.4.6 If 7.6. RESEARCH FOUNDATION warrants and represents that it has the exercise lawful right to grant the license provided in this Agreement and that it has not granted rights or licenses in derogation of this Agreement. RESEARCH FOUNDATION agrees that during the term of this Agreement, or any license granted hereunder, RESEARCH FOUNDATION shall not enter into any other agreements that conflict with the rights granted KCI herein are found to infringe the or obligations provided hereunder, including any rights and obligations that survive termination of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.. * Confidential Treatment Requested
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform (a) Bio-Products and UAH shall notify the other in writing Licensee, and the Licensee shall notify Bio-Products and UAH, of any alleged actual or threatened infringement claims or suits that are or may be brought or made against any Party to this Agreement relating to the patents assigned to UAH (a "Third Party Patent Claim") within five (5) days after learning of the Patent Rights by a third partyexistence thereof. Bio-Products and/or UAH shall defend Licensee, at its or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory actiontheir, as the case might may be, cost and expense from and against all infringement suits relating to any Third Party Patent Claims. Following In connection with the defense by Bio-Products and/or UAH of any Third Party Patent Claim, the Licensee, at the request and expense of Bio-Products and/or UAH, shall take all such notice, KCI may place [***] first accruing reasonable actions as are necessary or desirable to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party assist Bio-Products and/or UAH in any such suit, [***] to Wake Forestaction. As between wake Forest and KCI, KCI Licensee will be liable reimbursed by Bio-Products and/or UAH for [***] in such action its actual and KCI will be responsiblereasonable out-of-pocket expenses, except including its reasonable attorneys' fees, incurred as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination result of such action, KCI will immediately pay within ninety (90) days of the receipt of invoice thereof. Any recoveries or settlements resulting from any such defenses pursuant to this Section 7.1(a) shall be (1) subject to the approval of all escrowed litigation royalties Parties, and (2) shall be (i) first applied to Wake Forestall Parties' actual and reasonable out-of-pocket expenses incurred as a result of such defense, (ii) next applied to the actual damages incurred by each respective Party on a prorated basis, if any, and (iii) lastly, all remaining recoveries shall be payable to Bio-Products and/or UAH.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of Bio-Products shall notify the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseLicensee, and the terms Licensee shall notify Bio-Products, of such any actual or threatened infringement claims or suits that are or may be brought or made against any Party to this Agreement relating to the Technology as defined herein and occurring within the USA that was not assigned to UAH (a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise "Non-Patent Third Party Claim") within five (5) days after learning of the rights granted KCI herein are found existence thereof. Bio-Products shall defend Licensee, at Bio-Products' cost and expense, from and against all infringement suits relating to infringe the rights of a third party in a decision that is final and nonNon-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.Patent Third
Appears in 1 contract
Samples: Technology License Agreement (World Waste Technologies Inc)
Infringement. 12.1 Each party will promptly inform (i) With respect to the other in writing Patent Rights only, when information comes to the attention of Licensor or Licensee to the effect that any alleged infringement of the Patent Rights have been or are threatened to be infringed by a third party, Licensor or Licensee, as the assertion of a declaratory judgment action alleging invalidity or noninfringementcase may be, and provide such shall notify the other party with in writing of any available information about the such infringement or declaratory threatened infringement of which it becomes aware. If such infringement or threatened infringement relates to any Patent Rights within the Field of Use, Licensee shall have the initial right but not the obligation to take any action to stop such infringement or otherwise enforce Licensee’s rights. In the event Licensee takes no action to stop such infringement within ninety (90) days of receipt of any notice from Licensor or within ninety (90) days of it otherwise becoming aware of such infringement, Licensor shall have the right to commence an action against such infringement, at its own expense and in its own name. The party controlling any such action is referred to below as the “Controlling Party” and the other party, with respect to such action, as the case might be“Cooperating Party.”
(ii) The Cooperating Party shall cooperate with the Controlling Party in any action, suit or proceeding brought under Section 6(b)(i). Following such notice, KCI may place [***] first accruing If a Controlling Party determines that it is necessary or desirable for a Cooperating Party to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] action or proceeding, the Cooperating Party shall, at the Controlling Party’s expense, execute all documents and perform such other acts as may be reasonably required. If the Controlling Party initiates suit hereunder it shall have the exclusive right to Wake Forestemploy counsel of its own selection and to direct and control the litigation or any settlement thereof (subject to the penultimate sentence hereof), shall pay all of the Cooperating Party’s reasonable, out of pocket costs, if any, promptly upon the Controlling Party’s receipt of a request for reimbursement (accompanied by sufficient supporting documentation). As between wake Forest and KCISubject to such reimbursement of the Cooperating Party’s reasonable, KCI will out-of-pocket expenses, the Controlling Party shall be liable for [***] entitled to reimburse itself out of any sums recovered in such action suit or in settlement thereof for all costs and KCI will expenses, including reasonable attorneys’ fees, necessarily involved in the prosecution of such suit, and any funds that shall remain from said recovery shall be responsibleused to reimburse the Cooperating Party for all of its other reasonable costs and expenses, except as provided in Section 12.2.3addition to the out-of-pocket costs already reimbursed, for the [***] necessarily involved in its participation in such an action.
12.2.2 As a first option for KCIsuit, [***]and any balance remaining thereafter shall be distributed to the Controlling Party subject, in the case of Licensee as Controlling Party, to the royalty obligations herein. Upon settlement or final termination of In any such action, KCI will immediately pay all escrowed litigation royalties the Cooperating Party shall, at it own expense, have the right to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto non-controlling participation through counsel of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]own selection. If the subject patents are found Controlling Party desires to be invalid settle such claim or unenforceable in a final non-appealable or non-appealed decisionsuit, [***] if valid patents covering such products or processes still remain within it shall first give the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess Cooperating Party written notice of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 proposed settlement and the minimum royalty, but not Cooperating Party shall have the floor royalty, set forth in Section 4.3 right to approve or reject such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise proposal. The failure of the rights granted KCI herein are found Cooperating Party to infringe respond to a notice of settlement within fifteen (15) business days following the rights giving of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest by the Controlling Party shall automatically constitute an approval of KCI's election to terminate the License under this Agreementterms of the proposed settlement contained therein.
Appears in 1 contract
Samples: License Agreement (American Medical Systems Holdings Inc)
Infringement. 12.1 Each party will promptly inform 23.1 Licensee shall have the other in writing right during the term of any alleged this Agreement to commence an action for infringement of the Patent Rights against any third party for any infringement occurring within the Field of Use, provided that Licensee shall provide CASE thirty (30) days’ prior written notice of such infringement and of Licensee’s intent to file such action. CASE shall have the right at its own expense to appear in such action by counsel of its own selection. If required by the jurisdictional laws of the forum that any such action be prosecuted in the name of the owner of the Patent Right, CASE shall voluntarily appear at Licensee’s expense; provided that if such appearance subjects CASE to any unrelated action or claim of a third partyparty or Licensee in such jurisdiction, or then CASE shall have the assertion right to decline such appearance. Settlement of a declaratory judgment any action alleging invalidity or noninfringementbrought by Licensee shall require the consent of CASE and Licensee, which neither shall unreasonably withhold from the other, and provide such other party any settlement amount or recovery for damages shall be applied as follows: (i) first, to reimburse the parties for their expenses in connection with the litigation; and (ii) second, CASE shall receive compensation for the time of any available information about CASE personnel involved in the infringement or declaratory action; and (iii) third, as the case might be. Following such notice, KCI may place CASE shall receive [********] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldmonies remaining.
12.2.1 During 23.2 CASE shall have the right in its sole discretion during the term of this Agreement, KCI will prosecute [***] any infringements Agreement to commence an action for infringement of the Patent RightsRights against any third party for any infringement occurring anywhere in the world, andprovided that, in furtherance of such right, KCM may join Wake Forest as a party in before commencing any such suitaction concerning products within the Field of Use, [***] CASE shall provide Licensee with the first right to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except xxx as provided in Section 12.2.323.1 and, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention Licensee determines not to bring suit suit, with not less than thirty (30) days’ prior written notice of such infringement and of CASE’s intent to file such action. Licensee shall have the right at its own expense to appear in such action by counsel of its own selection. If CASE provides Licensee with such notice before instituting an action concerning products within the Field of Use and Licensee fails to initiate an action against any such alleged infringerthird party prior to the commencement of an action by CASE, then (a) [***] and, (b) [***]. No settlement, consent judgment, any settlement amount or other voluntary fiscal disposition of the suit recovery for damages shall belong entirely to CASE and CASE may be entered into settle said action without the consent of KCILicensee; provided, which consent will however, that the terms of any such settlement do not unreasonably be withheldimpose any obligations on Licensee or limit any rights Licensee would otherwise have under this Agreement.
12.3.1 In 23.3 Notwithstanding the event that a Declaratory Judgment Action alleging invalidity or non-infringement pendency of any infringement (or other) claim or action by or against Licensee, Licensee shall have no right to terminate or suspend (or escrow) payment of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found any amounts required to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned paid to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights CASE pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will 9.1 LICENSOR and LICENSEE shall promptly inform notify the other in writing of if any alleged infringement of the Patent Rights PATENT RIGHTS by a third partyparty is discovered or comes to its attention.
9.2 Provided LICENSEE shall have supplied LICENSOR with reasonable evidence of infringement of the PATENT RIGHTS by a third party hereto SELLING material quantities of products in competition with LICENSEE's, an AFFILIATE's, or SUBLICENSEE's SALE of LICENSED PRODUCTS hereunder, LICENSEE shall have the assertion of a declaratory judgment action alleging invalidity or noninfringementright, and provide such other party with any available information about at LICENSEE's sole expense, to bring suit against the infringer for infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent RightsPATENT RIGHTS. In the event that LICENSEE has not caused such infringement to terminate (for whatever cause) or initiated legal proceedings against the infringer within three (3) months following receipt or giving of notice pursuant to this Article 9.2, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suitLICENSOR shall have the right (but not the obligation), [***] to Wake Forestbring suit against the infringer for unfringement of the PATENT RIGHTS. As between wake Forest [***] Confidential treatment requested. [***]
9.3 In the event either party hereto shall initiate or carry on legal proceedings to enforce the PATENT RIGHTS against an alleged infringer, as provided herein, the other party hereto shall render reasonable assistance to and KCIcooperate with the party initiating or carrying on such proceedings.
9.4 In the event that either party shall institute suit or other legal proceedings to enforce the PATENT RIGHTS, KCI will it shall have sole control of such suit and the other party shall be liable for entitled to be represented in any such suit by counsel of its choosing, at its sole expense.
9.5 [***]
9.6 All damages, settlements and awards made or obtained in connection with any suit or other legal proceeding under this Article 9 shall be shared among the parties as follows:
(a) The party initiating the suit shall [***] in such action and KCI will be responsiblethe event that the suit or other legal proceeding is initiated by LICENSEE but is later assumed, except as provided in Section 12.2.3under Article 9.5, for the by LICENSOR, LICENSEE shall [***] in such an action.]
12.2.2 As a first option for KCI(b) If the LICENSEE initiated the suit and prosecuted it to its conclusion, [***]. Upon settlement or final termination of such action
(c) In all other circumstances other than that described in Article 9.6 (b) above, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of LICENSOR and LICENSEE shall divide the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified balance of any alleged infringement of the Patent Rightsdamages, KCI will have been unsuccessful in persuading the alleged infringer to desist settlements and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) awards [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, LICENSOR and [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]to LICENSEE. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake ForestConfidential treatment requested. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform Company shall have the other in writing of first right, but not the obligation, to enforce any patent within the PATENT RIGHTS against any infringement or alleged infringement of thereof in the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringementLICENSED FIELD, and provide such other party shall at all times keep SDRMI informed as to the status thereof. Before Company commences an action with respect to any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such rightpatents, KCM may join Wake Forest as a party Company shall give careful consideration to the views of SDRMI and to potential effects on the public interest in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement making its decision whether or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring xxx. Thereafter, Company may, at its own expense, institute suit against any such infringer or alleged infringerinfringer and control and defend such suit in a manner consistent with the terms and provisions hereof and recover any damages, then (a) [***] andawards or settlements resulting therefrom, (b) [***]subject to Paragraph 4.5. No However, no settlement, consent judgment, judgment or other voluntary fiscal final disposition of the suit may be entered into without the prior written consent of KCISDRMI, which consent will shall not be unreasonably withheld unless such settlement amounts to a permitted sublicense hereunder. This right to xxx for infringement shall not be withheld.
12.3.1 In the event that used in an arbitrary or capricious manner. SDRMI shall reasonably cooperate in any such litigation (including, without limitation, joining such action as a Declaratory Judgment Action alleging invalidity party plaintiff if necessary or non-infringement of any of the Patent Rights will be brought against KCI desirable for initiation or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination continuation of such action, provided such action does not result in a final non) at Company expense for SDRMI out-appealable or nonof-appealed decision that the subject patent(s) are invalid or unenforceable, [***]pocket expenses. If the subject patents are found Company elects not to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain enforce any patent within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment ActionPATENT RIGHTS, then it shall so notify SDRMI in writing within six (a6) [***] months of receiving notice that an infringement exists, and (b) [***]. No settlementif such infringement is commercially material, consent SDRMI may, in its sole judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCIand at its own expense, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty take steps to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of enforce any patent of any third partyand control, to the extent settle, and defend such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentconsistent with the terms and provisions hereof. In such event, which consent will not be unreasonably withheld.
12.4.3 [***] Company shall cooperate fully with SDRMI in connection with any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***]action.
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each 9.1 The Licensee shall promptly notify the Licensor if it believes, or believes that it is likely, that any third party will promptly inform is performing any activity that may infringe, misappropriate or otherwise violate the PHEV IP or any Intellectual Property Rights therein which have been licensed by the Licensee under this Agreement. The Licensee shall moreover provide the Licensor reasonable assistance in relation to such alleged infringement, misappropriation or violation, as requested by the Licensor at the Licensor’s expense. The Licensee shall furthermore have no right to prosecute, defend or take any other in writing of actions regarded such alleged infringement, misappropriation or violation.
9.2 The Licensor shall indemnify and hold harmless the Licensee from any alleged infringement of the Patent Rights claim by a third party, or party alleging that the assertion use of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, PHEV IP licensed under this Agreement by the Licensee (as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of contemplated by this Agreement, KCI will prosecute [***] ) infringes any infringements Intellectual Property Rights of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to provided (i) the extent such suit Licensor is based upon a claim that promptly notified of the infringement arises claim; and (ii) the Licensor receives reasonable information and cooperation from the manufactureLicensee to perform the Licensor’s obligation hereunder, use and (iii) the Licensor has sole control over the defense and all negotiations fora settlement or sale by KCI of products and/or processes within the Patent Rights pursuant compromise. The Licensee shall make no admissions, and shall have no right to this Agreement. As between Wake Forest and KCIdefend or take any other action, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of relation to i. any such infringement action claim by a third party. Following The Licensee shall moreover provide the Licensor reasonable assistance in relation to such noticeclaim, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldrequested by the Licensor at the Licensor’s expense.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate 9.3 The obligation set forth in Section 4.2 and 9.2 above does not apply with respect to components or portions of such components (i) not provided by the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party Licensor; (ii) used in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under manner not expressly authorized by this Agreement.; (iii) made in accordance with the Licensee’s specifications; (iv) modified by the
Appears in 1 contract
Samples: Phev Ip Sub License Agreement (Polestar Automotive Holding UK LTD)
Infringement. 12.1 Each party will promptly inform The Contractor agrees to fully defend, indemnify, and hold harmless the Indemnified Persons against any demand, claim, cause of action, suit, proceeding, or judgment that any service or design, or product called for in any service or design, provided by any Contractor-Related Entity (herein called “deliverables”) that infringes or allegedly infringes any patent, copyright, trademark, service xxxx, trade dress, utility model, industrial design, mask work, trade secret or other in writing proprietary right of any alleged infringement of the Patent Rights by a third party. The Contractor shall pay any and all costs of such defense and settlement (including interest, or the assertion fines, penalties, costs of a declaratory judgment action alleging invalidity or noninfringementinvestigation, costs of appeals, and provide such other party with attorney 's fees), and will pay any available information about and all costs and damages finally awarded against any of the infringement or declaratory action, Indemnified Persons. The Authority shall have the right to employ separate counsel and participate in its defense. No settlement pertaining to the Authority's right to use the deliverables as provided herein shall be made without the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake ForestAuthority's prior written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity any deliverables furnished hereunder, or noncalled for in any design or services provided under this Contract, is in any suit, proceeding, or judgment held to constitute an infringement on any third party's right, and its use is enjoined, the Contractor shall use its best efforts immediately, and at its own expense to accomplish the following: Procure the fully paid-infringement of any up, irrevocable and perpetual right for the Authority to continue using the deliverable; Modify the deliverable; or Provide for the replacement of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision deliverable with an alternative product that is functionally equivalent to the subject patent(s) are invalid or unenforceable, [***]deliverable. If the subject patents are found Contractor is unable to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within provide the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess Authority with one of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Actionforms of relief described above, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, Contractor shall also reimburse to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that Authority the total royalties payable are commercially reasonable.
12.4.6 If paid by the exercise of Authority for the rights granted KCI herein are found to infringe the rights of a third party in a decision deliverable that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able held to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreementconstitute an infringement.
Appears in 1 contract
Samples: General Provisions Agreement
Infringement. 12.1 8.1. Each party will promptly shall inform the other promptly in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, party and provide such other party with any available information about the infringement or declaratory action, as the case might beevidence thereof. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [if: (a) Licensee is the only licensee under the Patent Rights within the Field; (b) all licensees elect to join with Licensee; or (c) the alleged infringement is limited to the Field, Licensee shall have the first right, but THE COMPANY HAS REQUESTED AN ORDER FROM THE SECURITIES AND EXCHANGE COMMISSION (THE “COMMISSION”) PURSUANT TO RULE 406 UNDER THE SECURITIES ACT OF 1933, AS AMENDED, GRANTING CONFIDENTIAL TREATMENT TO SELECTED PORTIONS. ACCORDINGLY, THE CONFIDENTIAL PORTIONS HAVE BEEN OMITTED FROM THIS EXHIBIT, AND HAVE BEEN FILED SEPARATELY WITH THE COMMISSION. OMITTED PORTIONS ARE INDICATED IN THIS EXHIBIT WITH “***] **”.
(a) each Party shall be reimbursed for any infringements of expenses it incurred in the Patent Rightsaction; (b) as to ordinary damages for past infringement, andLicensee shall receive an amount equal to either (i) its lost profits, in furtherance (ii) a reasonable royalty on the infringing sales, or (iii) whatever alternative measure of such rightdamages the court shall have applied, KCM may join Wake Forest and such amount shall be treated as a party Net Sales for the purpose of calculating running royalties under Section 5.1; and (c) the Parties shall share equally in any such suitadditional award, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an actionincluding any special or punitive damages.
12.2.2 As a first option for KCI, [***]8.2. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, If within 6 six (6) months after having been notified of any alleged infringement of the Patent Rightsinfringement, KCI will have Licensee has been unsuccessful in persuading the alleged infringer to desist and will or has not have otherwise brought and will not be diligently prosecuting is pursuing an infringement action, or if KCI Licensee notifies Wake Forest Northwestern at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] then, Northwestern shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights or defense of a declaratory judgment claim or counterclaim and may include Licensee as a party plaintiff in such action. The total cost of any infringement or declaratory judgment action commenced or defended solely by Northwestern, or where Licensee is joined involuntarily as a necessary party, shall be borne by Northwestern. Northwestern shall keep any recovery or damages derived therefrom, after reimbursing Licensee’s reasonable out-of-pocket legal costs and expenses incurred in the action, including attorneys’ fees for activities that are not substantially duplicative of those of Northwestern’s counsel, on a pro-rata basis with Northwestern’s reasonable out-of-pocket legal costs and expenses, including attorneys’ fees, incurred in the action.
8.3. In any infringement suit that either party may institute to enforce the Patent Rights pursuant to this Agreement, the other party hereto shall, at the request of the party initiating such suit, cooperate in all respects and, (b) [***]to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like. No settlement, consent judgment, judgment or other voluntary fiscal final disposition of the suit may be entered into without the consent of KCINorthwestern, which consent will shall not unreasonably be withheld. Licensee shall indemnify Northwestern against any order for costs and/or expenses that may be made against Northwestern unless such suit was brought by Northwestern pursuant to Section 8.2. While Licensee, during the term of this Agreement, shall have the right to consent to a sublicense Northwestern may propose to any alleged infringer for future use of the Patent Rights, Licensee shall not unreasonably withhold its consent.
12.3.1 8.4. In the event that a Declaratory Judgment Action declaratory judgment action alleging the invalidity or non-infringement of any of the Patent Rights will shall be brought against KCI other than in the context of a declaratory judgment action arising out of Northwestern’s enforcement pursuant to Section 8.2 or Wake Foresta counterclaim in an enforcement action pursuant to Section 8.2, [***].
12.3.2 As or there is a need to otherwise defend the Patent Rights, Northwestern shall have the first option for KCI, [***]. Upon settlement or final termination right within ninety (90) days receipt of notice to control the defense of such action, provided such action does not result proceeding or otherwise, and Licensee shall reimburse Northwestern’s reasonable out-of-pocket legal costs and expenses incurred in a final non-appealable or non-appealed decision that the subject patent(saction, including attorney’s fees. THE COMPANY HAS REQUESTED AN ORDER FROM THE SECURITIES AND EXCHANGE COMMISSION (THE “COMMISSION”) are invalid or unenforceablePURSUANT TO RULE 406 UNDER THE SECURITIES ACT OF 1933, [AS AMENDED, GRANTING CONFIDENTIAL TREATMENT TO SELECTED PORTIONS. ACCORDINGLY, THE CONFIDENTIAL PORTIONS HAVE BEEN OMITTED FROM THIS EXHIBIT, AND HAVE BEEN FILED SEPARATELY WITH THE COMMISSION. OMITTED PORTIONS ARE INDICATED IN THIS EXHIBIT WITH “***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights”.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license8.5. In the event Wake Forest authorizes KCI Licensee challenges the validity or enforceability of the Patent Rights, Licensee shall provide Northwestern ninety (90) days prior written notice and continue to secure such a license, make all payments required hereunder directly to Northwestern and the terms of such a license provide for royalties have no right to pay into escrow or other payments by KCI account any amounts due to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License Northwestern under this Agreement. For purposes of clarity, Licensee shall not be entitled to any refund or offset for any amounts paid under this Agreement, including any paid prior to or during the period of the challenge even if the Patent Rights are held invalid or unenforceable.
Appears in 1 contract
Samples: License Agreement (Exicure, Inc.)
Infringement. 12.1 Each party will (a) If either Party or its Affiliates receives a written notice from a Third Party alleging that the development or commercialization of a Product infringes or otherwise violates the intellectual property rights of such Third Party, then such Party shall promptly inform notify the other Party in writing of any alleged infringement the allegation. As soon as reasonably practicable after the receipt of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing the Parties shall meet and consider the appropriate course of action with respect to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royaltiesallegation. KCI will not settle or compromise any claim or action The Parties shall at all times cooperate, share all material notices and filings in a manner that imposes * Portions omitted pursuant to a request for confidential treatment and filed separately with the Securities and Exchange Commission. timely manner, provide all reasonable assistance to each other. Each Party shall have the right to defend any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM action naming it. Neither Party may join Wake Forest as enter into a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal final disposition of a suit under this Section that materially affects the suit may be entered into other Party’s rights or interests without the consent of KCIthe other Party, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will shall not be unreasonably withheld, - or delayed. For the sake of clarity, the rights and obligations in this Section relating to notice, cooperation and limitations on settlement shall apply even if only one Party defends the relevant action.
12.4.3 (b) SurModics shall inform Merck of any certification regarding any SurModics Patent Rights it has received pursuant to either 21 U.S.C. §§355(b)(2)(A)(iv) or (j)(2)(A)(vii)(IV) or its successor provisions, or any similar provisions in a country in the Territory other than the United States, and shall provide Merck with a copy of such certification within [**] of receipt. SurModics’ and Merck’s rights with respect to the initiation and prosecution of any legal action as a result of such certification or any recovery obtained as a result of such legal action shall be as defined in paragraphs 7.4(a)-(d); provided, however, that SurModics shall exercise its first right to initiate and prosecute any action and shall inform Merck of such decision within [*] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise receipt of the rights granted KCI herein infringe certification, after which time Merck shall have the rights right to initiate and prosecute such action. Regardless of a third partywhich Party has the right to initiate and prosecute such action, Wake Forest may elect both Parties shall, as soon as practicable after receiving notice of such certification, convene and consult with each other regarding the appropriate course of conduct for such action. The non-initiating Party shall have the right to pursue a license from be kept fully informed and participate in decisions regarding the appropriate course of conduct for such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseaction, and the terms of right to join and participate in such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableaction.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Exclusive License and Research Collaboration Agreement (Surmodics Inc)
Infringement. 12.1 Each party Section 12.01. Normandy University via Normandie Valorisation, on behalf of the Establishments and the Company, will promptly inform the each other in writing [**] of any alleged case of infringement by a third party in relation to the Patent of which they are aware and/or any claim or infringement action against them.
Section 12.02. In the event of an infringement of one or more Patents in the Patent Rights Field of Use by a third party, or the assertion Establishments may initiate legal proceedings against the infringing third party at their own expense, it being understood that the compensation and any damages awarded by the court will be fully and irrevocably acquired. This provision shall not prevent the Company from intervening in the proceeding, at its own expense, to obtain compensation for its own specific damages. SOPHiA GENETICS shall have full and irrevocable entitlement to any compensation and damages awarded to it as a result of such proceedings. If the Establishments decide not to initiate any infringement actions and if the Company wishes to act, the Company may, after a declaratory judgment action alleging invalidity or noninfringementformal notice sent by registered letter with acknowledgement of receipt to Normandy University via Normandie Valorisation on behalf of the Establishments has remained unanswered by the Establishments for more than [**], start a proceeding for infringement at its sole initiative, in its sole name and at its own expense. In countries where a legal provision prohibits it from initiating a proceeding, the Establishments shall provide, at the Company’s simple request and in a timely manner, all the powers that are necessary for it to act in the name and stead of the Establishments.
Section 12.03. If an infringement lawsuit were brought against the Company and/or its Affiliates during the use of the Products, due to the use of Patents in the Field, and provide such other party with any available information about if following this infringement lawsuit, the infringement or declaratory actionCompany and/or its Affiliates were condemned, the Company and/or its Affiliates, as the case might bemay be and in accordance with the provisions relating to Guarantees (Article 9), refrain from calling the Establishments as guarantee. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement It is agreed between the Parties that this indemnity clause is intuitu personae. In particular, any claim arising from the indemnity cannot therefore be assigned or final termination transferred to a third party. In the event of such actiona takeover, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative optionmerger, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will notabsorption, under any circumstances, be liable for any amounts in excess sale or transfer of the escrowed litigation royalties.
12.2.4 IfCompany or its activities, within 6 months after having been notified of respectively by, with or to another legal entity, or any alleged infringement other transformation of the Patent RightsCompany aimed at modifying the intuitu personae character of this clause (hereinafter referred to as the “Event(s)”), KCI this indemnity clause will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]fall. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-Transaction occurs between the Company and/or its Affiliates and the third party in infringement of any of the Patent Rights proceedings, this clause will not apply and will be brought against KCI or Wake Forestnull and void. In the event that compensation has already been paid by Normandy University via Normandie Valorisation, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties this compensation will be immediately returned to Wake Forest. Wake Forest automatically refundable on first request and will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, give rise to the extent application of interest at the legal interest rate. By “transaction” it is understood to mean any relationship between the Company and the third party in infringement proceedings, such suit is based upon as (without limitation) commercial relationship, shareholder relationship, financing, social etc., for a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum period of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery from the date of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties end of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Section 12.04. If the Patent is cancelled, the provisions relating to guarantees shall apply and may not be waived.
Section 12.05. The Parties undertake to provide each other with all the documents and elements they may need during the abovementioned procedures.
Appears in 1 contract
Infringement. 12.1
10.1 Each party will promptly inform Party shall immediately give notice to the other in writing Party if any member of the Trust, the PTC Group or their Staff become aware of:
(a) any alleged infringement of the Patent Rights Background Intellectual Property or Programme Intellectual Property; or
(b) any claim by a third partyThird Party that an action carried out under the Programme infringes the Intellectual Property or other rights of any Third Party.
10.2 In respect of any Background Intellectual Property or Programme Intellectual Property, where any infringement or suspected infringement arises, or a claim by a Third Party alleging infringement of that Third Party’s Intellectual Property or other rights arises, then:
(a) As soon as possible after receiving the assertion notice required by Clause 10.1, the Parties will convene a meeting of the IPMG at which the IPMG shall discuss in good faith all available evidence with respect to the matters underlying the notice, and the appropriate manner of addressing such matters, including preventing or stopping infringing activities (for example, by seeking a preliminary injunction), preserving the Parties’ rights to past and future damages (for example, by sending a cease and desist letter) defending against declaratory judgment action alleging invalidity actions with respect thereto, or noninfringementtaking any other actions, and provide such other party with any available information about the infringement or declaratory actionno actions, as the case might beParties shall determine. Following The IPMG shall take into account each Party’s interest in formulating the response, if any, to infringement or threatened infringement of such noticeBackground Intellectual Property or Programme Intellectual Property, KCI including the relative merits of patent litigation versus the nature, scope and potential economic consequences of the Infringement.
(b) Unless otherwise determined by the IPMG as part of its consideration of an overall patent strategy, or pursuant to its evaluation of a notice pursuant to Clause 10.2(a), if a member of the PTC Group (or any licensee of a member of the PTC Group) is exploiting the relevant Programme Intellectual Property but PTC notifies the Trust that it does not intend to take such action, the Trust, at its discretion and cost may place [***] first accruing take such action as it shall consider to Wake Forest be necessary or appropriate to bring or defend an action on behalf of the relevant member of the PTC Group or licensee thereof and PTC shall (and shall procure that relevant members of the PTC Group shall) provide all reasonable assistance to Trust as the Trust may request (at the Trust’s cost); and
(c) Unless otherwise determined by the IPMG as part of its consideration of an overall patent strategy, or pursuant to its evaluation of a notice pursuant to Clause 10.2(a), if the Trust (or any licensee of the Trust) is exploiting the relevant Programme Intellectual Property following exercise of its rights pursuant to Clause 12, the Trust may take such action as it shall consider to be necessary or appropriate at its discretion and expense to bring or defend an action on behalf of the relevant member of the PTC Group. PTC shall (and PTC shall procure that the relevant member of the PTC Group shall) give the Trust all reasonable assistance as the Trust may request (at the Trust’s cost) in relation to such action, including granting the Trust the right to bring such action in PTC’s name.
10.3 In the event that any enforcement or defence action whether by a member of the PTC Group and/or the Trust results in the recovery of legal costs and/or an award of damages, such sums shall be distributed in accordance with the following the expiration following order of priority: (a) first, to reimburse each Party for all litigation costs in connection with such proceeding paid by that Party and not otherwise recovered (on a thirty day period after pro rata basis based on each Party’s respective litigation costs, to the extent the recovery was less than all such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suitcosts); and (b) second, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for percent ([**]%) to the enforcing Party and [**] in such action and KCI will be responsiblepercent ([**]%) to the non-enforcing Party.
10.4 Notwithstanding the above, except as provided in Section 12.2.3may be agreed otherwise by the Parties following good-faith discussions, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, no Party shall enforce their rights under any circumstances, be liable Programme Intellectual Property for any amounts in excess of the escrowed litigation royalties.infringement or potential infringement by:
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, any organisation operating on a Not for Profit Basis or any charitable organisation which is conducting non-commercially sponsored research; and/or
(b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or any person carrying out non-infringement commercially sponsored research on behalf of any of the Patent Rights will be brought against KCI organisation operating on a Not for Profit basis or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]any charitable organisation. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Agreement for the Provision of Funding (PTC Therapeutics, Inc.)
Infringement. 12.1 Each If either LICENSEE or EMORY becomes aware of a product made, used or sold in the Licensed Territory, which it believes infringes a Licensed Patent, the party will obtaining such knowledge shall promptly inform advise the other party of all relevant facts and circumstances pertaining to the potential infringement. LICENSEE shall have the right to enforce any patent rights against such infringement, at its own expense. EMORY shall cooperate with LICENSEE in writing such effort, at LICENSEE'S expense, including being joined as a party to such action, if necessary. Any damages or costs recovered in connection with any action filed by LICENSEE hereunder which exceed LICENSEE'S out-of-pocket costs and expenses of any alleged infringement litigation, shall be deemed to be the proceeds of Sales of Licensed Products in the Patent Rights fiscal quarter received by LICENSEE, and royalties shall be payable by LICENSEE to EMORY thereon in accordance with the terms of this Agreement. If LICENSEE shall fail, within one hundred twenty (120) days after receiving notice from EMORY of a third partypotential infringement, or the assertion providing EMORY with notice of a declaratory judgment such infringement, to either (a) terminate such infringement or (b) institute an action alleging invalidity to prevent continuation thereof and, thereafter to prosecute such action diligently, or noninfringement, and provide such other party with any available information about if LICENSEE notifies EMORY that it does not plan to terminate the infringement or declaratory institute such action, as then EMORY shall have the case might beright to do so at its own expense. Following LICENSEE shall cooperate with EMORY in such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest effort including being joined as a party in any to such suit, [***] action if necessary. EMORY shall be entitled to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] retain all damages or costs awarded to EMORY in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform the other in writing Licensor agrees to indemnify and hold Licensee and its directors, officers, employees and agents, harmless against any and all claims, demands, actions, losses, liabilities, judgments, settlements, awards and costs (including reasonable attorneys' fees and expenses) (collectively, "Liabilities") arising out of or related to any alleged infringement of the Patent Rights claim against Licensee by a third party, party that Licensee's use or possession of the Application Software (or the assertion of a declaratory judgment action alleging invalidity license granted to Licensee hereunder with respect thereto), infringes or noninfringementviolates any United States patent, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, copyright or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent proprietary right of any third party, to the extent such suit is based upon a claim ; provided that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement Licensee gives Licensor prompt notice of any such infringement claim of which it has actual knowledge and cooperates fully with Licensor in the defense of such claim. Licensor shall have the exclusive right to defend and settle at its sole discretion and expense all suits or proceedings arising out of the foregoing. Licensee shall not have the right to settle any action, claim or threatened action without the prior written consent of Licensor (at Licensor's sole and absolute discretion). In case use of the Application Software is forbidden by a third party. Following such noticecourt of competent jurisdictionbecause of proprietary infringement, KCI may place up Licensor shall promptly, at its option, (i) procure for Licensee the rights to a maximum continue using the Application Software; (ii) replace the infringing Application Software with non-infringing Application Software of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, equal performance and quality which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If are materially the exercise functional equivalent of the rights granted KCI herein infringe infringing Application Software; (iii) modify the rights infringing Application Software so it becomes non- infringing while materially maintaining the functionality thereof; or (iv) if none of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable foregoing are commercially reasonable.
12.4.6 If practicable, remove the exercise System and terminate the Marketing Agreement and this License Agreement Licensor will then be released from any further obligation whatsoever to Licensee with respect to the infringing part of the rights granted KCI herein are found Application Software. Nothing in this Section shall be deemed to infringe make Licensor liable for any patent or copyright infringement suits that arise in connection with (a) designs, modifications, use, integration or data furnished by Licensee if infringement would have been avoided by not using or combining the rights Application Software with such other programs or data or (b) if infringement would have been avoided by the use of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able an updated version made available to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this AgreementLicensee.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform (a) In the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion event of a declaratory judgment action claim or suit against ASSOCIATE alleging invalidity (a) the PRODUCT(S) as sold by NECAM infringes any patent issued by or noninfringementcopyright registered in the country in which the PRODUCT(S) was sold to ASSOCIATE, NECAM shall defend ASSOCIATE to the extent the claim or suit concerns such infringement, provided ASSOCIATE gives NECAM prompt notice of such claim or suit and provide continuous cooperation in such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise defense.
(b) In any claim or action suit against ASSOCIATE that is defended by NECAM pursuant to paragraph 1, NECAM shall control the defense, shall pay all litigation costs, including reasonable attorney's fees incurred by NECAM in such defense, and shall indemnify ASSOCIATE for all damages awarded by a manner that imposes any restrictions court or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldsettlement payments approved by XXXXX.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and(c) If, in furtherance of such rightany claim or suit against ASSOCIATE that is defended by NECAM pursuant to paragraph 1, KCM may join Wake Forest as a party in any such suitresult of a court order not subject to further appeal or a settlement approved by NECAM, [***] to Wake Forest. As between wake Forest and KCIASSOCIATE is enjoined or otherwise prevented from using the PRODUCT(S) sold by NECAM, KCI will be liable for [***] in such action and KCI will be responsibleNECAM, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative at its option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then may (a) [***] andprocure for ASSOCIATE the right to continue using the PRODUCT(S), (b) [***]. No settlement, consent judgmentreplace or modify the PRODUCT(S) to avoid infringement, or other voluntary fiscal disposition (c) repossess the PRODUCT(S) in exchange for a refund of the suit may depreciated value of the PRODUCT(S). NECAM's option selected under this paragraph shall be entered into without the consent ASSOCIATE'S sole remedy for any prospective effects of KCI, which consent will not unreasonably be withheldany court order or settlement.
12.3.1 In (d) NECAM's total cumulative liability under paragraphs 2 and 3 shall be limited to the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of price paid to NECAM by ASSOCIATE for the Patent Rights will be brought against KCI or Wake Forest, [***]PRODUCT(S).
12.3.2 As a first option for KCI(e) Notwithstanding any other provision of this Article, [***]. Upon settlement or final termination of such action, provided such action does NECAM shall not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found be obligated to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, defend and shall not be liable for costs or damages awarded in any amounts claim or suit for infringement in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then which (a) [***] and the PRODUCT(S) was made by NECAM pursuant to specifications supplied by ASSOCIATE, or (b) [***]. No settlementthe alleged infringement is based on use by ASSOCIATE, consent judgment or other voluntary fiscal disposition without NECAM's permission, of the suit may be entered into without PRODUCT(S) as sold by NECAM in combination with another item not sold by NECAM, where the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use combination or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights from practice of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise method made possible by the rights granted herein without limitation or interruption and without payments by KCIcombination, or Wake Forest may authorize KCI to pursue such a license. In (c) the event Wake Forest authorizes KCI to secure such a license, and alleged infringement is based on the terms of such a license provide for royalties or other payments PRODUCT(S) as modified by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableASSOCIATE without NECAM's permission.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform 11.1 If any claim, suit, action, or other proceeding shall be brought against Genex and/or MacroMed involving any claim of patent infringement based on Genex’s permitted use of the Technology or the Licensed Patents, the Party who comes to know the facts first shall give the other Party prompt written notice of such claim, suit, action, or other proceeding and shall send the other Party copies of all papers served in writing connection therewith. However, failure to give such prompt notice will not relieve MacroMed of its duty herein to defend and indemnify. MacroMed shall, at its own expense, assume the defense of any alleged infringement of the Patent Rights by a third partysuch claim, suit, action, or the assertion of a declaratory judgment action alleging invalidity other proceeding and shall indemnify Genex with respect to any loss or noninfringementdamage incurred by Genex in connection with such claim, and provide such other party with any available information about the infringement or declaratory suit, action, as or other proceeding. Genex shall cooperate with MacroMed in all reasonable ways in the case might bedefense of such claim, suit, action, or proceeding; provided, however, that if MacroMed fails to assume such defense, then, Genex shall be authorized to defend such claim, suit, action, or other proceeding at MacroMed’s expense. Following In addition, even if MacroMed does properly assume such noticedefense, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentGenex may, which consent will not be unreasonably withheldat its discretion, retain its own counsel at its own expense.
12.2.1 During 11.2 If any other person, during the term of this Restated Agreement, KCI will prosecute [***] infringes any infringements of the Patent RightsTechnology in Designated Territory One during the time Genex continues to hold the license granted under Section 2.1, andthe Party learning of such infringement shall promptly notify the other thereof. MacroMed shall have the option, at its own expense, of instituting and prosecuting a claim, suit, action or other proceeding against such person for infringement, at its expense and through counsel of its choice, in furtherance which case Genex shall cooperate with MacroMed in all reasonable ways in the prosecution of such rightclaim, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of other proceeding against such infringement in Designated Territory One. If MacroMed gives up its intention not right to bring suit against any prosecute such alleged infringerclaim, then (a) [***] andsuit, (b) [***]. No settlement, consent judgmentaction, or other voluntary fiscal disposition proceeding, then Genex shall be authorized to prosecute such proceeding at MacroMed’s expense.
11.3 The rights, covenants, and obligations of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License Parties under this Section 11 will survive the termination or cancellation of this Restated Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be7.1. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that LICENSEE (including any Affiliate or sublicensee) or UFRFI receives a Declaratory Judgment Action alleging invalidity notice of claim, threat, or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forestsuit by a third party alleging, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action Licensed Technology infringes or is dominated by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle intellectual property rights owned or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action controlled by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate party receiving the notice shall promptly notify the other party to this Agreement in good faithwriting of such claim, threat or suit.
7.2. If notice of a royalty reduction claim, threat, or suit of the type described in Paragraph 7.1 herein is received by any party, LICENSEE shall consult with UFRFI regarding resolution of such claim, threat, or suit and may not reject UFRFI’S advice without reasonable justification thereof regarding negotiations with the Third Party, selection and supervision of counsel, filing of lawsuits or other proceedings, and settlement of the claim, threat, or suit. All costs and expenses, including attorneys’ fees, incurred in the earned course of resolving such claim threat, or suit shall be charged to LICENSEE. During the prosection of such legal action, LICENSEE shall be permitted to deduct the reasonable fees and expenses of the legal action from the royalties payable to UTRFI under the Article IV of this Agreement, up to [***] percent ([***]%) of said royalties. If LICENSEE prevails in such legal action such obligations by LICENSEE to pay royalties to UFRFI shall be fully and retroactively restored. Any monies except that excess which is attributable to trebled damages or award of attorneys’ fees, recovered by LICENSEE as a result of such legal action shall be treated as sales pursuant to Paragraph 4.1 for payment of royalties, after having deducted all previously undeducted expenses reasonably connected with the litigation. If the resolution of a claim, threat or suit of the type described in this Paragraph 7.2 results in the payment of royalties or other compensation to LICENSEE, this obligation by LICENSEE to pay royalties to UFRFI shall be fully and retroactively restored. Then, the remaining royalty rate set forth or other compensation paid to LICENSEE shall be treated as sales pursuant to Paragraph 4.1 for payment of royalties, after having deducted all previously undeducted expenses reasonably connected with the litigation and resolution. UFRFI and University of Florida personnel shall fully cooperate with LICENSEE in Section 4.2 the defense and resolution of any such claim, threat or suit, However, LICENSEE shall compensate UFRFI and University of Florida personnel for their actual out-of-pocket expenses (e.g., travel).
7.3. If the minimum royaltyresolution of a claim, treat, or suit of the type described in Paragraph 7.1 herein results in the payment of any royalties or other compensation by LICENSEE to a third party, then LICENSEE shall thereafter be permitted to deduct the amount of such payment from the royalties paid or payable by LICENSEE to UFRFI under Article IV of this Agreement, up to [***] percent ([***]%) of said royalties paid or payable to UFRFI; provided that the third parry intellectual property rights are infringed solely by virtue of the fact that the infringing product or process are part of the Licensed Technology licensed under the Patent Rights of this Agreement.
7.4. LICENSEE shall have the right, but not the floor royaltyobligation, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of initiate and prosecute legal action for infringement by a third party in a decision that is final and non-appealable of or non-appealedany claim of any patent within the Patent Rights. UFRFI shall voluntarily join such legal action, and neither Wake Forest nor KCI are able UFRFI and University of Florida personnel shall render necessary cooperation and shall promptly execute all documents as may be necessary and reasonable during the course of such legal action. During the prosecution of such legal action, LICENSEE shall be permitted to secure a license deduct the reasonable fees and expenses of the legal action from such third party, all remaining escrowed litigation the royalties will be given payable to KCI, provided that KCI provides written notice to Wake Forest UFRFI under the Article IV of KCI's election to terminate the License under this Agreement, up to [***] percent ([***]%) of said royalties. If LICENSEE prevails in such legal action, such obligations by LICENSEE to pay royalties to UFRFI shall be fully and retroactively restored. Any monies except that excess which is attributable to trebled damages or award of attorneys’ fees, recovered by LICENSEE as a result of such legal action shall be treated as sales pursuant to Paragraph 4.1 for payment of royalties, after having deducted all previously undeducted expenses reasonably connected with the litigation. If the resolution of a claim, threat or suit of the type described in this Paragraph 7.4 results in the payment of royalties or other compensation to LICENSEE, this obligation by LICENSEE to pay royalties to UFRFI shall be fully and retroactively restored. Then, the remaining royalty or other compensation paid to LICENSEE shall be treated as sales pursuant to Paragraph 4.1 for payment of royalties, after having deducted all previously undeducted expenses reasonably connected with the litigation and resolution.
Appears in 1 contract
Samples: License Agreement (Diversa Corp)
Infringement. 12.1 Each party will promptly inform (a) LICENSOR agrees to enforce its patents within the other PATENT RIGHTS from infringement and sue xxxringers when in writing its sole judgement such action may be reasonably necessary, proper and justified.
(b) Notwithstanding the provisions of any alleged Article 8(a) above, provided LICENCEE shall have supplied LICENSOR with evidence comprising a prima facie case of infringement of the Patent Rights PATENT RIGHTS by a third partyparty hereto SELLING significant quantities of products in competition with LICENCEE's or an AFFILIATE's or a SUBLICENCEE's SALE of LICENCED PRODUCTS hereunder, or LICENCEE shall be entitled to notify LICENSOR in writing requesting LICENSOR to take steps to enforce the assertion of a declaratory judgment action alleging invalidity or noninfringement, PATENT RIGHTS and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements LICENSOR shall within three (3) months of the Patent Rights, and, in furtherance receipt of such written request either:
(i) cause said infringement to terminate (including termination for whatever cause); or
(ii) initiate legal proceedings against the infringer; or
(iii) grant LICENCEE the right, KCM may join Wake Forest as a party in any such suitat LICENCEE's sole expense, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against the infringer for infringement of the PATENT RIGHTS.
(c) In no event shall LICENCEE be entitled to invoke Article 8(b) above with respect to more than two alleged infringers in any one country listed with the PATENT RIGHTS at any given time even though there be more than two such infringers in such country and the provisions of Article 8(b) hereof shall not come into effect or continue in effect as to such country while LICENSOR is carrying on any such legal proceeding against two such parties therein.
(d) In the event either party hereto shall initiate or carry on legal proceedings to enforce the PATENT RIGHTS against an alleged infringer, then (a) [***] andas provided herein, (b) [***]. No settlement, consent judgment, the other party hereto shall fully co-operate with the party initiating or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheldcarrying on such proceedings.
12.3.1 (e) In the event that a Declaratory Judgment Action alleging invalidity LICENSOR shall institute suit or non-infringement other legal proceedings to enforce the PATENT RIGHTS, it shall have sole control of any of the Patent Rights will be brought against KCI or Wake Forest, [***]such suit.
12.3.2 As a first option for KCI(f) In the event LICENCEE shall institute suit or other legal proceedings under Article 8(b) above to enforce the PATENT RIGHTS, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found LICENSOR shall be entitled to be invalid represented by counsel of its choosing, at its sole expense, and LICENCEE shall be entitled to retain all damages. LICENCEE shall not discontinue or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of settle any such infringement action proceedings brought by a third party. Following such noticeit without obtaining the concurrence of LICENSOR, KCI may place up not to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of giving LICENSOR a timely opportunity to continue such a license provide for royalties or other payments by KCI to such third partyproceedings in its own name, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealedunder its sole control, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreementat its sole expense.
Appears in 1 contract
Samples: Licence Agreement (Leukosite Inc)
Infringement. 12.1 (a) In case of MIP Intellectual Property is infringed, or threatened to be infringed by any third parties, Each party will Party shall promptly inform notify the other Party in writing of any alleged or threatened infringement of any MIP Intellectual Property in the Patent Rights Territory of which such Party becomes aware. MIP shall have the right to defend the MIP Intellectual Property against infringement or interference by third parties in any country, including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of a third party, or the assertion of a party for declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the of non-infringement or declaratory interference; provided, however, that FRI may be entitled in each instance to participate in any litigation in the Territory, through counsel of its selection and at MIP's cost. In the event MIP determines not to initiate and pursue or participate in such legal action in the Territory, FRI may, in FRI's discretion, initiate legal action to uphold the MIP Intellectual Property against third parties in the Territory. The Parties will cooperate in good faith with respect to any such action. MIP shall be entitled to deduct their respective costs and expenses incurred in connection with prosecuting or participating in such lawsuit from any damages that are awarded.
(b) In case of MIP Intellectual Property infringes or is threatened to infringe the patents of any third parties, as either Party shall promptly notify the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following other in writing in the expiration of event that a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any third party shall bring a claim or action of infringement related to MIP Intellectual Property against FRI or MIP in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not the Territory. MIP shall be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, entitled in furtherance of such right, KCM may join Wake Forest as a party each instance to participate in any litigation in the Territory, through counsel of its selection and at MIP's cost. The Parties will cooperate in good faith with respect to any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (ac) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, Japanese patents issuing from applications [***].
12.3.2 As ] are asserted against FRI by a first option for KCIthird party having the legal right to initiate such a suit or proceeding, provided FRI is [***]. Upon settlement or final termination ] then MIP agrees to act responsibly to solve the problems for the continuation of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, FRI's business at its expense to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such claims of infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldthese patents.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be7.1. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that LICENSEE (including any Affiliate or sublicensee) or UFRFI receives a Declaratory Judgment Action alleging invalidity notice of claim, threat, or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forestsuit by a third party alleging, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action Licensed Technology infringes or is dominated by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle intellectual property rights owned or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action controlled by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate party receiving the notice shall promptly notify the other party to this Agreement in good faithwriting of such claim, threat or suit.
7.2. If notice of a royalty reduction claim, threat, or suit of the type described in Paragraph 7.1 herein is received by any party, LICENSEE shall consult with UFRFI regarding resolution of such claim, threat, or suit and may not reject UFRFI’S advice without reasonable justification thereof regarding negotiations with the Third Party, selection and supervision of counsel, filing of lawsuits or other proceedings, and settlement of the claim, threat, or suit. All costs and expenses, including attorneys’ fees, incurred in the earned royalty rate set forth in Section 4.2 course of resolving such claim threat, or suit shall be charged to LICENSEE. During the prosection of such legal action, LICENSEE shall be permitted to deduct the reasonable fees and expenses of the minimum royalty, but not legal action from the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 to UTRFI under the Article IV of this Agreement, up to [***] percent ([***]%) of said royalties. If LICENSEE prevails in such legal action such obligations by LICENSEE to pay royalties to UFRFI shall be fully and retroactively restored. Any monies except that excess which is attributable to trebled damages or award of attorneys’ fees, recovered by LICENSEE as a result of such legal action shall be treated as sales pursuant to Paragraph 4.1 for payment of royalties, after having deducted all previously undeducted expenses reasonably connected with the litigation. If the exercise resolution of a claim, threat or suit of the rights granted KCI herein are found type described in this Paragraph 7.2 results in the payment of royalties or other compensation to infringe LICENSEE, this obligation by LICENSEE to pay royalties to UFRFI shall be fully and retroactively restored. Then, the rights remaining royalty or other compensation paid to LICENSEE shall be treated as sales pursuant to Paragraph 4.1 for payment of a third party royalties, after having deducted all previously undeducted expenses reasonably connected with the litigation and resolution. UFRFI and University of Florida personnel shall fully cooperate with LICENSEE in a decision that is final the defense and nonresolution of any such claim, threat or suit, However, LICENSEE shall compensate UFRFI and University of Florida personnel for their actual out-appealable or nonof-appealedpocket expenses (e.g., and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreementtravel).
Appears in 1 contract
Samples: License Agreement (Diversa Corp)
Infringement. 12.1 Each Sprint will defend, indemnify and hold Supplier Indemnitees harmless from and against any and all Losses related to claims or demands brought by any third party will promptly inform against any of them to the other in writing extent arising out of any actual or alleged infringement of any Intellectual Property Right, including misappropriation of trade secrets, to the Patent Rights extent based upon technology or other materials provided to Supplier by Sprint or a third partySprint Affiliate to the extent used by Supplier to provide the Services to Sprint or a Sprint Affiliate (each such claim or demand, a “Sprint Infringement Claim”). In the event of a Sprint Infringement Claim, Sprint may, in addition to its indemnification obligations above, either (a) procure a license to enable Supplier to continue to use or receive the benefit of such technology and other materials, or (b) develop or obtain a noninfringing substitute. Upon the assertion issuance of a declaratory judgment action alleging invalidity court order requiring Supplier to discontinue use of the infringing material or noninfringementupon Sprint’s election to require Supplier to discontinue use of the infringing material, and provide Supplier will be excused from performing to the extent such other party with discontinued use of the infringing material prevents Supplier from meeting any available information about the infringement of its performance obligations under this Agreement. Sprint will have no obligation to indemnify, defend, or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise hold Supplier Indemnitees harmless regarding any claim or action to the extent that it is based upon: (i) a modification of technology or materials by Supplier if the modification was not reasonably contemplated by the Parties and the infringement or violation would not have occurred but for that modification; (ii) Supplier’s combination, operation, or use of Sprint technology with apparatus, data, or programs if the combination was not reasonably contemplated by the Parties and the infringement or violation would not have occurred but for that combination; (iii) the use by Supplier of any technology provided by Sprint or any third party other than in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentaccordance with the applicable licenses; (iv) Sprint’s use, which consent will not be unreasonably withheld.
12.2.1 During the term of in accordance with this Agreement, KCI will prosecute [***] any infringements of Supplier software or other Supplier-provided materials; (v) the Patent Rights, and, in furtherance failure of such right, KCM may join Wake Forest as a party in any such suit, [***] Supplier to Wake Forest. As between wake Forest use corrections or modifications provided by Sprint offering equivalent features and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months functionality after having been notified Sprint provides Supplier with reasonable advance written notice of any alleged potential infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or provides non-infringement infringing replacement technology to Supplier at no charge; or (vi) the failure of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As Supplier to obtain a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third partyRequired Consent, to the extent that it was Supplier’s obligation to obtain such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake ForestRequired Consent hereunder. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect ] Confidential — Subject to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.Nondisclosure Obligations SPRINT AND SUPPLIER CONFIDENTIAL
Appears in 1 contract
Infringement. 12.1 8.1. Each party will shall promptly inform and fully notify the other in writing of:
8.1.1. any actual, threatened or suspected infringement which comes to its notice of any alleged infringement of the Patent Rights by a third party, Individual’s Background IPR or of any Foreground IPR or of any of the assertion Company’s Patents irrespective of a declaratory judgment action alleging invalidity when such infringement occurred; and
8.1.2. any proceedings threatened or noninfringement, and provide commenced against it in which the validity of any Individual’s Background IPR or of any Foreground IPR or any of the Company’s Patents is challenged irrespective of when such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldchallenge arose.
12.2.1 During 8.2. As soon as practicable after any such notification has been given pursuant to Clause 8.1, the term of this Agreement, KCI will prosecute [***] Company shall notify the Individual whether or not it has decided that the proceedings shall be defended in the circumstances referred to in Clause 8.1.2 limited to any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an actionIndividual’s Background IPR.
12.2.2 As a first option for KCI, [***]8.3. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement the Company notifies the Individual that it has decided not to defend any proceedings pursuant to Clause 8.2., the Individual shall be entitled to take such action as it sees fit subject to informing the Company of any its proposed action and advising the Company of the Patent Rights outcome.
8.4. Any action taken pursuant to Clause 8.2 will be brought against KCI or Wake Forest, [***]at the Company's sole expense and any action taken pursuant to Clause 8.3 will be at the Individual’s sole expense.
12.3.2 8.5. As exclusive owner the Company shall be free to take such actions as contemplated by Clause 8.2 above (and irrespective of when the challenge occurred) in its own name provided that it consults reasonably with the Individual in this regard prior to such action being taken.
8.6. Where the Company takes action as provided for in 8.2 above, any award, damages or settlement monies awarded shall accrue to the benefit of the Company, provided that any reasonable and properly validated costs incurred by the Individual in a first option court action shall be fully reimbursed by the Company.
8.7. If for KCIany reason (other than lack of funds) the Company cannot take such action as is contemplated by Clause 8.2 above but does wish to defend or commence proceedings or if the Company, [***]as exclusive owner, is unable to pursue any proceedings unless the Individual is joined as a pursuer or defender, the Company can require the Individual to take such action in the Individual’s own name, subject to the following:
8.7.1. Upon the costs reasonably and necessarily incurred by the Individual shall be met by the Company as they fall due (and the Individual shall keep the Company fully advised of the extent and nature of all such costs as soon as the Individual becomes aware of the same);and
8.7.2. any award, damages or settlement monies awarded to the Individual shall accrue to the benefit of the Company and, if received by the Individual, shall be held by the Individual as agent for the Company. For the avoidance of doubt, if the Individual takes such action pursuant to Clause 8.3., any award, damages, or final termination settlement monies awarded to the Individual as a result of such action, provided such action does not result in a final non-appealable or non-appealed decision that shall accrue to the subject patent(s) are invalid or unenforceable, [***]. If benefit of the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent RightsIndividual.
12.3.3 As an alternative option, [***]8.8. All remaining escrowed litigation royalties will The Individual shall do all such things and execute all such documents as may reasonably be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable required of it by the Company for any amounts the purpose of assisting the Company in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting bringing or defending any Declaratory Judgment Actionproceedings as contemplated by Clause 8.2, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition the Company shall bear the cost of the suit may be entered into without the consent provision of KCI, which consent will not unreasonably be withheldsuch assistance.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement 8.9. For the avoidance of any patent of any third partydoubt, in no circumstances can the Individual agree to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement settlement of any such infringement action as contemplated by a third party. Following such noticeClause 8.2 above, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's the prior written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableCompany.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Acquisition Agreement (China Northern Medical Device Inc)
Infringement. 12.1 Each party will promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] andEach Party shall promptly give Notice to the other of any infringement, (b) [***]. No settlement, consent judgment, imitation or other voluntary fiscal disposition act by Third Parties inconsistent with the ownership of and rights to the suit may be entered into without the consent Intellectual Property provided for in this Agreement or any act of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of unfair competition by Third Parties relating to any of the Patent Rights will Intellectual Property (any of the foregoing shall be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]referred to as an “infringement”). If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the involves manufacture, use or sale by KCI of products and/or processes a Third Party which is within the Patent Rights scope of Valeant’s exclusive rights pursuant to Section 2.1 (hereinafter an “Exclusivity Infringement”), Valeant shall have the first right and obligation to proceed to restrain such infringement in its own name and/or in the name of any of its Affiliates, and if the infringement involves manufacture, use or sale by a Third Party which is outside the scope of Valeant’s exclusive rights pursuant to Section 2.1 (hereinafter an “Other Infringement”), Senetek shall have the first right and obligation to proceed to restrain such infringement in its own name and/or in the name of any of its Affiliates. The Party having the first right and obligation to proceed as above provided is hereinafter called the “Primary Party” and the other Party is hereinafter called the “Secondary Party”.
(b) Promptly upon receiving knowledge or Notice of an infringement, the Primary Party shall promptly commence commercially reasonable action to restrain such infringement or otherwise enforce its rights, and the Secondary Party shall cooperate fully in such action, if so requested shall join as a party to any appropriate legal proceedings for such purpose, and shall have the right to participate in, but not control, any such proceedings through counsel of its choice and at its expense. If within thirty (30) days after the Primary Party becomes aware of such infringement it fails to commence commercially reasonable action as above described, the Secondary Party shall have the right to institute such action, in its own name or in the name of the Primary Party or any of their respective Affiliates, as appropriate, and the Primary Party shall cooperate fully in such action and shall have the right to participate in but not control such proceeding, through counsel of its choice and at its expense, all as above described.
(c) Any recovery by either Party as a result of any claim, demand, legal proceeding or other action contemplated by this Section 6.2 or any settlement thereof shall first be applied to reimburse each Party for the reasonable costs of the actions taken by such party pursuant to this Agreement. As Section 6.2 (or, if the recovery is less than the aggregate reasonable costs of the Parties, the same shall be distributed between Wake Forest and KCI, [***]the Parties in proportion to the reasonable costs borne by them).
12.4.2 Each party will promptly inform (d) To the other extent that the infringement involved only an Exclusivity Infringement, then (i) if Valeant undertook such proceeding within the time prescribed by clause (b) above, any recovery in writing excess of the commencement of any such infringement action reasonable costs reimbursable to the Parties as above provided shall be retained by a third party. Following such notice, KCI may place up Valeant or (ii) if Valeant failed to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any undertake such action and Senetek undertook the actions with respect thereto prescribed by clause (b) above, any recovery in a manner that imposes any restrictions or obligations excess of the reasonable costs reimbursable to the Parties as above provided shall be divided between the Parties ratably based on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldthe relative loss suffered by the two Parties.
12.4.3 [***] (e) To the extent that the infringement involved only an Other Infringement, then (i) if Senetek undertook such proceeding within the time prescribed by clause (b) above, any recovery in excess of the reasonable costs reimbursable to the Parties as above provided shall be retained by Senetek or (ii) if Senetek failed to undertake such infringement action and Valeant undertook the actions with respect thereto prescribed by clause (b) above, any third party [***]. All remaining escrowed litigation royalties will recovery in excess of the reasonable costs reimbursable to the Parties as above provided shall be promptly returned to Wake Forest. [***]divided between the Parties ratably based on the relative loss suffered by the two Parties.
12.4.4 Any recovery of damages (f) In the event the Parties agree that Valeant’s practicing the rights licensed to it by KCI this Agreement in any such infringement action by any third party accordance with the terms hereof would infringe a Third Party patent, the Parties shall negotiate in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If good faith with respect to the reasonable royalty or other consideration that a Person in the exercise of the rights granted KCI herein infringe the rights of Commercially Reasonable Efforts would pay for a third party, Wake Forest may elect to pursue a non-exclusive license from such third party that would Third Party sufficient to permit KCI Valeant to exercise practice the rights granted herein without limitation licensed to it by this Agreement in accordance with the terms hereof. If the Parties are unable to reach agreement with respect thereto within thirty (30) days, the matter shall be referred to a panel of the World Intellectual Property Organization selected in accordance with the procedures of such organization, and such panel’s decision shall be final and binding on the parties. Once such amount has been agreed or interruption and without payments determined by KCIsuch panel, or Wake Forest may authorize KCI Valeant may, in its sole discretion, seek to pursue obtain a license of the nature described above from the Third Party on such a licenseterms as it shall determine in its sole discretion. In the event Wake Forest authorizes KCI to secure Valeant obtains such a license, in addition to any other remedies which may be available to Valeant under this Agreement or otherwise, Senetek shall reimburse Valeant up to the amount of the royalty or other consideration agreed or determined by such panel, when and the terms as Valeant is contractually obligated to pay royalty or other consideration to such Third Party, and any payments due from Valeant in connection with such license that are in excess of such a license provide for royalties or other payments amount shall be borne by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableValeant.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: License and Intellectual Property Acquisition Agreement (Senetek PLC /Eng/)
Infringement. 12.1 Each party will 5.1 LICENSEE shall mxxx, and shall cause its sublicensees to mxxx, all Licensed Products that are manufactured or sold under this Agreement with the number of each issued patent under the Patents Rights that applies to such Licensed Product.
5.2 LICENSEE shall notify INVENTORS promptly inform the other in writing of any alleged known production, sale, marketing, distribution, or use of Licensed Product by unauthorized persons. Notification of such infringement shall include reasonable details that would enable INVENTORS to investigate and prosecute such infringement in accordance with this Article 5.
5.3 Pursuant to this Agreement and to the provisions of the 35 U.S.C. Section 29 or other applicable law, for Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, for which consent will not be unreasonably withheld.
12.2.1 During the term of it has exclusive rights under this Agreement, KCI will prosecute [***] any infringements of LICENSEE has the Patent Rightsfirst right to initiate a suit in its own name, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then own expense: (a) [***] and, to prosecute for infringement of presumably valid claims in Patent Rights; (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action to defend against claims alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights; (c) to defend against a counterclaim alleging invalidity; or (d) overcome an affirmative defense in an infringement suit. In any such suit LICENSEE shall exercise total control over the manner of its prosecution, and may, with the prior written permission of INVENTORS, such permission not to be unreasonably withheld, settle any such claim or suit. LICENSEE shall notify INVENTORS of its intent to file suit in accordance with this Section 5.3 fourteen (14) days prior to such filing.
12.3.3 As an alternative option5.4 INVENTORS may, [***]within seven (7) days from receipt of notice from LICENSEE that it intends to prosecute a suit in accordance with this Article 5, elect to participate in a suit brought in accordance with Section 5.3. All remaining escrowed If INVENTORS elects to participate, they shall then be responsible for fifty (50%) of all litigation expenses and shall be entitled to fifty (50%) of all damages or awards recovered. LICENSEE shall exercise full control of such litigation, but shall require the written consent of INVENTORS to settle any suit. Any awards or damages recovered pursuant to this Section 5.4 shall not be treated as Net Sales and no royalties will shall be immediately returned payable on such sums to Wake ForestINVENTORS.
5.5 LICENSEE agrees to keep INVENTORS reasonably apprised of the status and progress of any litigation in regards to the Patent Rights. Wake Forest will notINVENTORS shall cooperate fully with LICENSEE in connection with any infringement action or legal defense initiated by LICENSEE under this Article 5, and INVENTORS agree promptly to provide reasonable access to all necessary documents and to render reasonable assistance in response to a written request by LICENSEE.
5.6 If within sixty (60) days from LICENSEE’s knowledge of infringement LICENSEE fails to file suit against such infringer, INVENTORS shall have the right to file suit in their own name, and at their own expense. Should INVENTORS initiate suit in accordance with this Section 5.6, they shall exercise full control of the prosecution of such suit and may settle the suit on such terms as INVENTORS shall determine, except that INVENTORS shall not reach any settlement whereby they grant a license to a third party under any circumstances, be liable for any amounts Patents Rights in excess the Territory or Field of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into Use without the consent of KCILICENSEE, which consent will not unreasonably be withheldLICENSEE can withhold for any reason.
12.4.1 KCI will have 5.7 In the event that LICENSEE bears the full cost of any litigation relating to the Patent Rights, it shall be entitled to deduct the full amount of such costs from any recovery. After deducting for such litigation costs, any remaining recovery shall be treated as Net Sales and LICENSEE shall pay to INVENTORS a duty royalty upon such excess as specified in section 3.2 and to defend be payable as specified under section 3.8 of this Agreement.
5.8 Nothing contained in this Agreement shall be construed to obligate INVENTORS or LICENSEE to bring any suit, or to enforce any rights, under this Agreement. Except as expressly stated, nothing contained in this Agreement shall be construed to limit the ability of INVENTORS to bring any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of to enforce any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Exclusive License Agreement (Pipex Pharmaceuticals, Inc.)
Infringement. 12.1 Each (a) The Vendor agrees that it shall defend, indemnify and hold harmless, at its own expense, all suits and claims against the Owner for infringement or violation of any patent, trademark, copyright, trade secret or other intellectual property rights of any third party will promptly inform enforceable in the United States or in any other territory where Vendor has approved the deployment or use of Products under this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to cover, the Products or any component thereof. The Vendor agrees that it shall pay all sums, including without limitation, reasonable attorneys' fees and other costs incurred at Vendor's written request or authorization, which, in defense of, by final judgment or decree, or in settlement of any suit or claim to which the Vendor agrees, may be assessed against, or incurred by, the Owner on account of such infringement or violation, provided that the Owner shall cooperate in all reasonable respects with the Vendor and its attorneys in the investigation, trial and defense of such lawsuit or action and any appeal arising therefrom; provided, however, that the Owner may, at its own cost, participate in the investigation, trial and defense of such lawsuit or action and any appeal arising therefrom. The parties shall cooperate with each other in writing any notifications to insurers. If a claim for Losses (a "Claim") is to be made by a party entitled to indemnification hereunder against the Vendor, the party claiming such indemnification shall give written notice (a "Claim Notice") to the Vendor as soon as practicable after the party entitled to indemnification becomes aware of any alleged infringement fact, condition or event which may give rise to Losses for which indemnification may be sought under this Agreement, provided, however, no delay on the part of the Patent Rights by a third partyOwner in notifying the Vendor shall relieve the Vendor from any obligation hereunder unless (and then solely to the extent) the Vendor is thereby materially prejudiced. If any lawsuit or enforcement action is filed against any party entitled to the benefit of indemnity hereunder, written notice thereof shall be given to the Vendor as promptly as practicable (and in any event within fifteen (15) calendar days after the service of the citation or summons). The Vendor shall be entitled, if it so elects, (i) to defend such lawsuit or action, (ii) to employ and engage attorneys of its own choice to handle and defend the assertion of a declaratory judgment action alleging invalidity or noninfringementsame, at the Vendor's cost, risk and expense, and provide (iii) to compromise or settle such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentClaim, which compromise or settlement shall be made only with the written consent will of the Owner (which may not be unreasonably withheld.
12.2.1 During ), unless such compromise or settlement includes an unconditional release of any claims against the term of this Agreement, KCI will prosecute [***] any infringements Owner in which event such written consent of the Patent Rights, and, in furtherance Owner shall not be required. If the Vendor fails to assume the defense of such rightClaim within fifteen (15) calendar days after receipt of the Claim Notice, KCM may join Wake Forest as a party in the Owner against which such Claim has been asserted will (upon delivering notice to such effect to the Vendor) have the right to undertake, at the Vendor's cost and expense, the defense, compromise or settlement of such Claim on behalf of and for the account and risk of the Vendor. In the event the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such suitdefense, [***] to Wake Forestcompromise or settlement. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, The Vendor shall be liable for any amounts settlement of any action effected pursuant to and in excess accordance with this Agreement and for any final judgment (subject to any right of appeal), and the escrowed litigation royaltiesVendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] furnished by third parties and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of where any such infringement action combination was not installed, recommended or approved by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldthe Vendor.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: System Equipment Purchase Agreement (Leap Wireless International Inc)
Infringement. 12.1 Each party will promptly inform the other in writing of (a) If, at any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During time during the term of this Agreement, KCI will prosecute [***] a claim is asserted or an action is commenced by a third person in which it is alleged that the TECHNOLOGY infringes upon the property rights of such third person, then the party against whom the claim is asserted or the action is commenced shall promptly notify the other party hereto. At such time or any infringements time thereafter, if reasonably asked to do so by LICENSOR, LICENSEE shall promptly discontinue use of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake ForestTECHNOLOGY. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in In such an actioninfringement situation, LICENSOR shall defend, indemnify and hold LICENSEE harmless from and against any and all demands, claims, actions, liability, losses, damages, costs or expenses, including reasonable attorneys' fees, resulting from LICENSEE'S use of the TECHNOLOGY up until the time LICENSOR notified LICENSEE to discontinue said activities.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlementIf LICENSEE continues to use the TECHNOLOGY after it has been notified by LICENSOR, consent judgmentpursuant to Section 6(a) hereof, or other voluntary fiscal disposition to discontinue such use, such action shall be considered a breach of the suit may Agreement pursuant to Section 6(a) hereof, all licenses granted to LICENSEE hereunder shall immediately and automatically terminate and LICENSOR shall no longer be entered into without the consent obligated to indemnify and hold LICENSEE harmless from that point on. Thereafter, LICENSEE shall indemnify and hold LICENSOR harmless from and against any and all demands, claims, actions, liability, losses, damages, costs or expenses, including reasonable attorneys' fees, arising out of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any in connection with LICENSEE'S continued use of the Patent Rights will be brought against KCI or Wake ForestTECHNOLOGY. Nevertheless, [***]LICENSOR'S obligation to indemnify and hold LICENSEE harmless up until the point of notification shall remain in effect.
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform (a) In the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion event of a declaratory judgment action claim or suit against ASSOCIATE alleging invalidity or noninfringement, and provide such other party with any available information about (a) the infringement or declaratory actionPRODUCT(S), as sold by NECAM infringes any patent issued by or copyright registered in the case might be. Following country in which the PRODUCT(S) was sold to ASSOCIATE, NECAM shall defend ASSOCIATE to the extent the claim or suit concerns such noticeinfringement, KCI may place [***] first accruing to Wake Forest following the expiration provided ASSOCIATE gives NECAM prompt notice of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle claim or compromise suit and continuous cooperation in such defense.
(b) In any claim or action suit against ASSOCIATE that is defended by NECAM pursuant to paragraph (a), NECAM shall control the defense, shall pay all litigation costs, including reasonable attorney's fees incurred by NECAM in such defense, and shall indemnify ASSOCIATE for all damages awarded by a manner that imposes any restrictions court or obligations on Wake Forest without Wake Forest's written consentsettlement payments approved by NECAM, which consent will not be unreasonably withheldprovided the ASSOCIATE has incorporated the warranty exclusions and liability limitations provided for in Sections 20, 21, 22 and 31 of this AGREEMENT.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and(c) If, in furtherance of such rightany claim or suit against ASSOCIATE that is defended by NECAM pursuant to paragraph (a), KCM may join Wake Forest as a party in any such suitresult of a court order not subject to further appeal or a settlement approved by NECAM, [***] to Wake Forest. As between wake Forest and KCIASSOCIATE is enjoined or otherwise prevented from using the PRODUCT(S) sold by NECAM, KCI will be liable for [***] in such action and KCI will be responsibleNECAM, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative at its option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then may (a) [***] andprocure for ASSOCIATE the right to continue using the PRODUCT(S), (b) [***]. No settlement, consent judgmentreplace or modify the PRODUCT(S) to avoid infringement, or other voluntary fiscal disposition (c) repossess the PRODUCT(S) in exchange for a refund of the suit may depreciated value of the PRODUCT(S). NECAM's option selected under this paragraph shall be entered into without the consent ASSOCIATE's sole remedy for any prospective effects of KCI, which consent will not unreasonably be withheldany court order or settlement.
12.3.1 In (d) NECAM's total cumulative liability under paragraphs (b) and (c) shall be limited to the event that a Declaratory Judgment Action alleging invalidity price paid to NECAM by ASSOCIATE for the PRODUCTS(S) together with payment of all litigation costs or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***]as provided for in paragraph 20(b).
12.3.2 As a first option for KCI(e) Notwithstanding any other provision of this Article, [***]. Upon settlement or final termination of such action, provided such action does NECAM shall not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found be obligated to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, defend and shall not be liable for costs or damages awarded in any amounts claim or suit for infringement in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then which (a) [***] and the PRODUCT(S) was made by NECAM pursuant to specifications supplied by ASSOCIATE, or (b) [***]. No settlementthe alleged infringement is based on use by ASSOCIATE, consent judgment or other voluntary fiscal disposition without NECAM's permission, of the suit may be entered into without PRODUCT(S) as sold by NECAM in combination with another item not sold by NECAM, where the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use combination or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights from practice of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise method made possible by the rights granted herein without limitation or interruption and without payments by KCIcombination, or Wake Forest may authorize KCI to pursue such a license. In (c) the event Wake Forest authorizes KCI to secure such a license, and alleged infringement is based on the terms of such a license provide for royalties or other payments PRODUCT(S) as modified by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonableASSOCIATE without NECAM's permission.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: Associate Agreement (Vicom Inc)
Infringement. 12.1 Each party will promptly 7.1 The parties shall inform the each other promptly, in writing writing, of any alleged infringement of the Patent Rights by a third party, or the assertion and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldevidence thereof.
12.2.1 7.2 During the term of this Agreement, KCI will LICENSEE shall have the right, subject only to approval not unreasonably withheld of RESEARCH FOUNDATION, but shall not be obligated, to prosecute [***] at its own expense any such infringements of the Patent Rights, Rights and, in furtherance of such right, KCM RESEARCH FOUNDATION hereby agrees that LICENSEE may join Wake Forest RESEARCH FOUNDATION as a party plaintiff in any such suit, [***] without expense to Wake ForestRESEARCH FOUNDATION. As between wake Forest and KCI, KCI will be liable for [***] in The total cost of any such infringement action and KCI will be responsible, except as provided in Section 12.2.3paragraph 7.4 hereof, commenced or defended solely by LICENSEE shall be borne by LICENSEE and LICENSEE shall keep any recovery or damages for the [***] in such an actionpast infringement derived therefrom.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, 7.3 If within 6 six (6) months after having been notified of any alleged infringement of the Patent Rightsinfringement, KCI will LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and will shall not have brought and will shall not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest LICENSEE shall notify RESEARCH FOUNDATION at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] andthen, (b) [***]and in those events only, RESEARCH FOUNDATION shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and RESEARCH FOUNDATION may, for such purposes, use the name of LICENSEE as party plaintiff. No settlement, consent judgment, judgment or other voluntary fiscal final disposition of the suit may be entered into without the consent of KCIthe other party, which consent will shall not unreasonably be withheld.
12.3.1 7.4 In the event that LICENSEE shall undertake the enforcement and/or defense of the Patent Rights by litigation, LICENSEE may withhold up to [***] percent ([***]%) of the royalties otherwise thereafter due RESEARCH FOUNDATION hereunder and apply the same toward reimbursement of up to [***] percent ([***]%) of its expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery by LICENSEE of damages for past infringement in any such suit shall be applied first In satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to the suit, and next toward reimbursement of RESEARCH FOUNDATION for any royalties past due or withheld and applied pursuant to this Article VII. LICENSEE shall keep the balance remaining from any such recovery.
7.5 In the event that a Declaratory Judgment Action declaratory judgment action alleging invalidity or non-infringement noninfringement of any of the Patent Rights will shall be brought against KCI or Wake ForestRESEARCH FOUNDATION, [***].
12.3.2 As a first option for KCILICENSEE at its option, [***]. Upon settlement or final termination shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action at its own expense except as provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rightsparagraph 7.4.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned 7.6 In any infringement suit as either party may institute to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within enforce the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing party hereto shall, at the request and expense of the commencement of any party initiating such infringement action by a third party. Following such noticesuit, KCI may place up cooperate in all respects and, to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentthe extent possible, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third partyhave Its employees testify when requested and make available relevant records, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCIpapers, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseinformation, samples, specimens, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablelike.
12.4.6 If 7.7 RESEARCH FOUNDATION warrants and represents that it has the exercise lawful right to grant the license provided in this agreement and that ft has not granted rights or licenses in derogation of this Agreement. RESEARCH FOUNDATION agrees that during the term of this Agreement, or any license granted hereunder, RESEARCH FOUNDATION shall not enter into any other agreements that conflict with the rights granted KCI herein are found to infringe the or obligations provided hereunder, including any rights and obligations provided hereunder, including any rights and obligations that survive termination of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each AGU will defend Purchaser from and against third party claims (and will pay any resulting damages, costs or liabilities awarded by a court of final jurisdiction) arising solely from a claim that the SDC infringes any United States or Canadian patent or any copyright rights (in or of countries that are signatories to the Berne Convention) of a third party. AGU’s obligation is subject to Purchaser’s compliance with the following procedures: (a) Purchaser will promptly inform the other notify AGU in writing of any alleged infringement of the Patent Rights by a third party, claim or the assertion commencement of a declaratory judgment action alleging invalidity any suit, action, proceeding or noninfringementthreat that Purchaser believes will result in losses for which it will be entitled to defense, provided however, that the failure to give such prompt written notice shall not affect the indemnification provided hereunder except to the extent that such failure shall have actually prejudiced AGU; (b) Purchaser will tender to AGU (and provide its insurer) full authority to defend or settle any such other party claim; and (c) Purchaser shall cooperate in the defense of such claim. AGU has no obligation to indemnify Purchaser in connection with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest settlement made without Wake Forest's AGU’s prior written consent, which consent . AGU will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit defend Purchaser against any such alleged infringerclaim brought against Purchaser by counsel retained at AGU’s own expense and of AGU’s own choosing. This section shall not apply to infringement claims arising in whole or in part from (2) the combination of the SDC or any part thereof with other equipment, then (a) [***] andsoftware or products not supplied by AGU if such infringement or misappropriation would not have occurred but for such combination, or (b) [***]Purchaser’s failure to install an update, where same would have avoided such claim. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement SDC is enjoined, or, in AGU’s judgment, may be enjoined, AGU will either: (i) procure for Purchaser the right to continue to use the SDC, (ii) replace the infringing portion of the SDC with a functionally equivalent product or modify it so that it becomes non- infringing without materially compromising functionality, or (iii) terminate the license granted hereunder and reimburse Purchaser for the price originally paid by Purchaser therefore, reduced by five year straight line depreciation. Upon AGU’s fulfillment of the alternatives set out in this section, AGU shall be relieved of any further obligation or liability to Purchaser as a result of any such infringement action by a third partyinfringement. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldTHIS SECTION STATES AGU’S ENTIRE LIABILITY TO PURCHASER AND PURCHASER’S SOLE REMEDY FOR ANY INFRINGEMENT CLAIMS CONCERNING THE SDC.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Samples: End User License Agreement
Infringement. 12.1 Each party will Party shall promptly inform provide written notice to the other in writing Party during the Agreement Term of any alleged known infringement or suspected infringement of the any Memory Patent Rights Right or Collaboration Patent Right by a third partyThird Party making, using, offering for sale, selling, importing or exporting a compound which is a nicotinic alpha-7 agonist [*] or a product containing a compound which is a nicotinic alpha-7 agonist [*] (collectively “NA7 Infringement”). With respect to each Product Roche shall have the assertion first right to bring and control any action or proceeding with respect to NA7 Infringement relating to a Memory Patent Right or Collaboration Patent Right Covering such Product at Roche’s own expense and by counsel of a declaratory judgment action alleging invalidity or noninfringementits own choice, and provide such other party with any available information about Memory shall have the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute [***] any infringements of the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party at its own expense, to be represented in any such suitaction by counsel of its own choice. Prior to Roche’s exercising its right to obtain a License with respect to 3454 Products pursuant to Section 2.1 hereof, [***] Memory shall have the first right to Wake Forest. As between wake Forest bring and KCIcontrol any action or proceeding with respect to NA7 Infringement relating to a Memory Patent Right Covering any such 3454 Product at Memory’s own expense and by counsel of its own choice, KCI will and Roche shall have the right, at its own expense, to be liable for [***] represented in any such action and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto by counsel of its intention not own choice. If the Party with the right to bring suit against and control a proceeding fails to bring any such alleged infringer, then action or proceeding with respect to NA7 Infringement within (a) [***] and, days following the notice of alleged infringement or (b) [***]] days before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, the other Party shall have the right to bring and control any such action at its own expense and by counsel of its own choice, and the Party that had the initial right to bring and control any action or proceeding shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. No settlementA Party that elects to bring and control an infringement action pursuant to this Section 13.5 shall provide prompt written notice to the other Party of any such suit commenced or action taken by such Party. Upon written request, consent judgmentthe Party bringing suit or taking action (“Initiating Party”) shall keep the other Party informed of the status of any such suit or action and shall provide the other Party with copies of all substantive documents and communications filed in such suit or action. The Initiating Party shall have the sole and exclusive right to select counsel for any such suit or action. The Initiating Party shall, or other voluntary fiscal disposition except as provided below, pay all expenses of the suit may or action, including, without limitation, the Initiating Party’s attorneys’ fees and court costs. With respect to 3454 Products, prior to Roche exercising its right to obtain a License with respect to such 3454 Product that is the subject of the suit or action, Memory shall pay attorneys’ fees and court costs and shall be entitled to retain any damages, settlement fees or other consideration received as a result of such suit or action. With respect to any other Product which is the subject of such suit or action, the Parties’ attorneys’ fees and court costs in connection with any such suit or action shall be deducted from any damages, settlement fees or other consideration received as a result of such suit or action and the balance thereof shall belong to the Initiating Party, except to the extent such damages, settlement fees or other consideration are attributable to lost profits with respect to Products in the Territory, in which case the Parties shall share in such recovery as follows: (i) in the case of any 3454 Product where Roche has exercised its right to obtain a License with respect to 3454 Products pursuant to Section 2.1 hereof and Memory has exercised its co-promotion right with respect thereto, Memory shall receive [*] percent ([*]%) of the lost profits for such 3454 Product and Roche shall receive the remaining [*] percent ([*]%) or (ii) in any other case, Memory shall receive the royalty that it would have pursuant to Article 5 had the infringing sales been made by the Parties, and Roche would receive the balance of the recovery. If the Initiating Party believes it reasonably necessary, upon written request to the other Party, the other Party shall join as a party to the suit or action but shall be under no obligation to participate except to the extent that such participation is required as the result of its being a named party to the suit or action. At the Initiating Party’s written request, the other Party shall offer reasonable assistance to the Initiating Party at no charge to the Initiating Party except for reimbursement of reasonable out-of-pocket expenses incurred by the other Party in rendering such assistance. The other Party shall have the right to participate and have its own representation in any such suit or action at its own expense. Prior to Roche obtaining a License with respect to any 3454 Product which is the subject of such suit or action, Memory shall have the sole right to control any settlement and all negotiations relating to any such suit or action. After Roche has exercised its right to obtain a License with respect to any 3454 Product which is the subject of suit or action, Roche shall have the right to control settlement; provided, however, that no settlement shall be entered into without the written consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such noticeParty, KCI may place up not to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery For the avoidance of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If doubt, Memory shall have the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royaltyright, but not the floor royaltyobligation, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final bring and non-appealable control any action or non-appealedproceeding with respect to any Memory Patent Right relating to infringement other than NA7 Infringement, and neither Wake Forest nor KCI are able to secure a license from such third partyat its own expense, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written without obligation or notice to Wake Forest of KCI's election to terminate the License under this AgreementRoche.
Appears in 1 contract
Samples: Strategic Alliance Agreement (Memory Pharmaceuticals Corp)
Infringement. 12.1 Each party will promptly 7.1 The parties shall inform the each other promptly, in writing writing, of any alleged infringement of the Patent Rights by a third party, or the assertion and of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] first accruing to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheldevidence thereof.
12.2.1 7.2 During the term of this Agreement, KCI will LICENSEE shall have the right, subject only to approval not unreasonably withheld of RESEARCH FOUNDATION, but shall not be obligated, to prosecute [***] at its own expense any such infringements of the Patent Rights, Rights and, in furtherance of such right, KCM RESEARCH FOUNDATION hereby agrees that LICENSEE may join Wake Forest RESEARCH FOUNDATION as a party plaintiff in any such suit, [***] without expense to Wake ForestRESEARCH FOUNDATION. As between wake Forest and KCI, KCI will be liable for [***] in The total cost of any such infringement action and KCI will be responsible, except as provided in Section 12.2.3paragraph 7.4 hereof, commenced or defended solely by LICENSEE shall be borne by LICENSEE and LICENSEE shall keep any recovery or damages for the [***] in such an actionpast infringement derived therefrom.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, 7.3 If within 6 six (6) months after having been notified of any alleged infringement of the Patent Rightsinfringement, KCI will LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and will shall not have brought and will shall not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest LICENSEE shall notify RESEARCH FOUNDATION at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] andthen, (b) [***]and in those events only, RESEARCH FOUNDATION shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and RESEARCH FOUNDATION may, for such purposes, use the name of LICENSEE as party plaintiff. No settlement, consent judgment, judgment or other voluntary fiscal final disposition of the suit may be entered into without the consent of KCIthe other party, which consent will shall not unreasonably be withheld.
12.3.1 7.4 In the event that LICENSEE shall undertake the enforcement and/or defense of the Patent Rights by litigation, LICENSEE may withhold up to [***] percent ([***]%) of the royalties otherwise thereafter due RESEARCH FOUNDATION hereunder and apply the same toward reimbursement of up to fifty percent (50%) of its expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery by LICENSEE of damages for past infringement in any such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to the suit, and next toward reimbursement of RESEARCH FOUNDATION for any royalties past due or withheld and applied pursuant to this Article VII. LICENSEE shall keep the balance remaining from any such recovery.
7.5 In the event that a Declaratory Judgment Action declaratory judgment action alleging invalidity or non-infringement noninfringement of any of the Patent Rights will shall be brought against KCI or Wake ForestRESEARCH FOUNDATION, [***].
12.3.2 As a first option for KCILICENSEE at its option, [***]. Upon settlement or final termination shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action at its own expense except as provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rightsparagraph 7.4.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned 7.6 In any infringement suit as either party may institute to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within enforce the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing party hereto shall, at the request and expense of the commencement of any party initiating such infringement action by a third party. Following such noticesuit, KCI may place up cooperate in all respects and, to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentthe extent possible, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third partyhave its employees testify when requested and make available relevant records, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCIpapers, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseinformation, samples, specimens, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablelike.
12.4.6 If 7.7 RESEARCH FOUNDATION warrants and represents that it has the exercise lawful right to grant the license provided in this agreement and that it has not granted rights or licenses In derogation of this Agreement. RESEARCH FOUNDATION agrees that during the term of this Agreement, or any license granted hereunder, RESEARCH FOUNDATION shall not enter into any other agreements that conflict with the rights granted KCI herein are found to infringe the or obligations provided hereunder, including any rights and obligations provided hereunder, including any rights and obligations that survive termination of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
Infringement. 12.1 Each party will promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. Following such notice, KCI may place [***] shall have the first accruing right to Wake Forest following the expiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle enforce any patent within PATENT RIGHT(S) against any infringement or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consentalleged infringement thereof for LICENSED FIELD A and for LICENSED FIELD B, which consent will not be unreasonably withheld.
12.2.1 During the term of this Agreement, KCI will prosecute but only for [***] for [***], and shall at all times keep [***] informed as to the status thereof. Before [***] commences an action with respect to any infringements infringement of any patent within the Patent Rights, and, in furtherance of such right, KCM may join Wake Forest as a party in any such suitPATENT RIGHT(S), [***] shall give careful consideration to Wake Forest. As between wake Forest [***] and KCI, KCI will be liable for to [***] in making its decision whether or not to xxx. Thereafter, [***] institute suit against any such action infringer or alleged infringer and KCI will control and defend such suit in a manner consistent with the terms and provisions hereof and recover any damages, awards or settlements resulting therefrom, subject to Paragraph 4.5. However [***] This right to xxx for infringement shall not be responsibleused in [***] shall reasonably cooperate in any such litigation [***]. *** Certain information in this agreement has been omitted and filed separately with the Securities and Exchange Commission. [***] indicates that text has been omitted and is the subject of a confidential treatment request. If [***] elects not to enforce any patent within the PATENT RIGHT(S), except as provided in Section 12.2.3, for the then it shall so notify [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, writing within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] andof receiving notice that an infringement exists, (b) and [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit ] may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination after receipt of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decisionnotice, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) and [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty take steps to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of enforce any patent of any third partyand control, to the extent settle, and defend such suit is based upon a claim that the infringement arises from the manufacture, use or sale by KCI of products and/or processes within the Patent Rights pursuant to this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If consistent with the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption terms and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a licenseprovisions hereof, and the terms of such a license provide recover, for royalties its own account, any damages, awards or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonablesettlements resulting therefrom.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party in a decision that is final and non-appealable or non-appealed, and neither Wake Forest nor KCI are able to secure a license from such third party, all remaining escrowed litigation royalties will be given to KCI, provided that KCI provides written notice to Wake Forest of KCI's election to terminate the License under this Agreement.
Appears in 1 contract
